I looked at the filing and issued dates of 15,000 utility patents issued in April and May of 2008 and created a statistic "Months in Prosecution." To create a histogram, I rounded up to the nearest whole month to plot the chart. The median time in prosecution is 39.5 months while the average is 41.8 months. This graph lumps together all the utility patents – A serious consideration of this data needs to separate out at least two major factors in the applicant's control that have a large impact the time in prosecution: (1) Is the application a continuation application or a new "original" application? As a general matter, continuation applications issue much more rapidly do than original applications. (2) What is the area of technology of the invention? The PTO examiner corps is divided by area of technology. Some have a large backlog of cases waiting prosecution while others have very few.
“but it seems fairly simple in concept”
Spoken like a true examiner.
“but it seems fairly simple in concept”
Spoken like a true examiner.
“I would take that”
D@mn skippy you would.
“You’re telling us you got it all down? ”
I have but a mere small portion of the high profile recent down, and a few of the old, but it seems fairly simple in concept. Don’t say false things, don’t say stupd things. Do either of these to the extent that you could be proven to have done them and you risk a slap on the wrist.
“I seem to recall one of your posts awhile back in which you claimed that you’d devised a strategy of taking Official Notice that could not be successfully traversed without the attorney committing inequitable conduct.”
This is true, I have a nigh on traverse proof format that I had taken to be traverse proof. However, I had not fully explored the issue to the point which I have today. There would be a way for them to traverse without significantly risking IC, I have outlined a few above that would probably be sufficient for the cases I examine, but they are not willing to do it apparently (or maybe they haven’t figured it out, it took me a hella long time to). Perhaps because even the act of writing down what is required seems absurd to them. Rightly so, as I’m noticing facts that would be deemed substantial evidence and to state otherwise is practically lying.
Risk vs. reward JD, you risk the whole case for the reward of being more fully rejected on one claim you don’t give a crp about as a potential ind. That’s not going to happen. As with AAPA situations, they’ll dance around saying anything that actually would get them off the hook i.e. “the stuff in the applicant’s background is work by the applicant and the applicant alone so far as applicant is aware and the work was not published a year or more before the filing of this application”. It’s painfully obvious that they know the background is other people’s work or was published but want to make me think they’re not admitting to it because they smell the doom of their claim and feel “punished”. They will spend literally a page and a half talking about the subject when one sentence that they do not want to say would take care of the whole thing. Strangely, during their afterfinal response all traces of arguments about the background have disappeared. Same goes for official notices.
As an aside, I had someone recently traverse my use of AAPA and they have argued that they were not teaching what I was using it for. However, the language in the background explicitly excludes their backwards reinterpretation of what they were teaching. Them trying to change what the background states may be a sin worth punishing since there is proof, don’t you think? 112 1st is might be coming down hard on them as well as a detailed explanation of the situation that any litigator should have a field day with. I strongly urge prosecutors to not lie during prosecution to save claims, even if they are the lifeblood of the case.
Also, I think I have several attorneys practicing before me that know who I am irl. It’s a small patent world, not hard to be recognized. I would not be surprised if I see some of my own traversals turning up in my responses lol.
“The undersigned respectfully submits that feature X is not well known as evidenced by the fact that the examiner, who’s supposedly an expert, who’s got access to search systems funded by millions, if not billions, of dollars of applicants’ user fees, who routinely boasts on blogs that he finds totally knock out prior art, not just on the application he’s examining, which, according to him, he knew, without even reading it, didn’t have any patentable claims, but also on 90% of the applications on his docket, with one 10 second google search, has not produced a single piece of documentary evidence, other than his pronouncement, that demonstrates that feature X is well known.”
I would take that, just for the lolz. Then I would do a 10 sec google search and 102 all of the subject matter in your entire application. Then you’d be like, “dam, that was one good two word google search, I think this anticipates these other cases over here I’m working on as well … and he also proved the pythagorean theorem and ended world hunger in his conclusion”. “This must be e6k”.
JohnDarling — your “adequate traversal” is clever
“DO you think that ALL official notices are improper?”
No. But every time I’ve seen it, it’s improper. What I usually see is, “The examiner takes Official Notice that it’s obvious to…”
Ugh. Still seeing that. But quality is 96.5%!!!!!!!!! WOOHOO!!!!!!
“Or do you think taking official notice according to 2144.03 is OK but to challenge it you just have to effectively say ‘I do not agree?’
Yes.
Here’s my next “adequate traversal”: The undersigned respectfully submits that feature X is not well known as evidenced by the fact that the examiner, who’s supposedly an expert, who’s got access to search systems funded by millions, if not billions, of dollars of applicants’ user fees, who routinely boasts on blogs that he finds totally knock out prior art, not just on the application he’s examining, which, according to him, he knew, without even reading it, didn’t have any patentable claims, but also on 90% of the applications on his docket, with one 10 second google search, has not produced a single piece of documentary evidence, other than his pronouncement, that demonstrates that feature X is well known.
How’s that?
6k, those of us who actually have to live under the inequitable conduct case law don’t understand it as it’s so hopelessly muddled.
You’re telling us you got it all down?
BTW, I seem to recall one of your posts awhile back in which you claimed that you’d devised a strategy of taking Official Notice that could not be successfully traversed without the attorney committing inequitable conduct.
Keep pushing that test case.
And when the Most Valuable Stooges that are your masters pull the rug out from under you, drop those law school applications in the mail.
All you lawyer-types. Question for you.
DO you think that ALL official notices are improper?
Or do you think taking official notice according to 2144.03 is OK but to challenge it you just have to effectively say “I do not agree”?
Two different things. Wanted to make sure I get what you are arguing.
You and PDS say that, but you fail to say anything about what it is that I don’t understand, each and every time, when apparently it’s such a simple concept that you should be able to enunciate it in less time than it takes you to type “I’m gonna book mark it”.
“You could say that, but if what you say is false, then you might be looking at IC later … which is of course what the whole point of MPEP making you traverse.”
If any posting you’ve ever made demonstrates your complete ignorance of inequitable conduct, it is this one.
I’m gonna book mark it.
I have a question, if the app’s rep says “well, dep claim 2 was just submitted to show that there might be other types of y species encompassed by the genus in the ind.” (read claim 2 was only submitted to differentiate by the doctrine of claim differentiation what claim 1 is directed to) then can I 112 2nd new claim 1 after claim 2 has been moved up for admitting on the record that old claim 2 (identical to current claim 1) was not filed to particularly point out and distinctly claim the subject matter which the applicant regards as his invention?
“X is not common knowledge because nobody’s published anything on it __to my knowledge__.”
“Then applicant’s representative ought to google x”
fixed
“X cannot be common knowledge because it didn’t come up in my pre-filing search, so how can the esteemed examiner say that it is common knowledge without even doing a search?”
Expect a request for information about that pre search and then, presuming a good faith pre search was done, expect the examiner to point out the noticed fact in the pre search and watch your whole case die instead of one little dep claim. Gj. As a child you liked to play with fire didn’t you?
“It is substantial evidence if (and only if) everyone (i.e., the examiner and the applicant) agrees. If they both agree, then it is. However, if applicant disagrees, then it isn’t substantial evidence.”
If he states why he feels that way then he’s in the clear, until then his reply is not complete because it is a mere conclusory statement “I the applicant do not agree that this is substantial evidence” instead of a reasoned statement “I the applicant do not agree that this is substantial evidence because x”. So simple a concept, yet apparently so hard for you to grasp.
“Here, I presume you are relying not on official notice not being “substantial evidence” but rather on it not being evidence at all. If that be true, how then can it ever be taken to be evidence?”
It is substantial evidence if (and only if) everyone (i.e., the examiner and the applicant) agrees. If they both agree, then it is. However, if applicant disagrees, then it isn’t substantial evidence.
So simple a concept, yet apparently so hard for you to grasp.
Or how about this:
X cannot be common knowledge because it didn’t come up in my pre-filing search, so how can the esteemed examiner say that it is common knowledge without even doing a search?
“X is not common knowledge because nobody’s published anything on it __to my knowledge__.”
Fixed.
“Can’t I just say that X is not common knowledge because nobody’s published anything on it? Kills the bird in the bush and the one in the hand.”
You could say that, but if what you say is false, then you might be looking at IC later … which is of course what the whole point of MPEP making you traverse.
“Can you contact the editor of the MPEP and tell him to correct this mistake?”
If you can show me something that definitively supports their position rather than explicitly supporting my own then sure, I can probably find out who authored it/will author future versions and suggest why this terrible injustice should be righted, and tell you any response. Perhaps it will be “master Dudas commands it to be written so” but I doubt it.
MPEP says: “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b).”
Can’t I just say that X is not common knowledge because nobody’s published anything on it? Kills the bird in the bush and the one in the hand.
Sorry about that, I hit post too soon and didn’t want to hit back.
________________________
Just let me have some time to compile the rest of these recent cases and conduct further inquiry fellas.
I will leave you however In Re Khan from 2006. In it, the CAFC analyzed the whether the “motivation” that the board used for an obviousness analysis was based on substantial evidence.
link to cafc.uscourts.gov
Which is a decision based in large part on Lee
link to bulk.resource.org
Wherein you will find probably the best caselaw line you ever will in support of your position “Common knowledge and common sense,” even if assumed to derive from the agency’s expertise, do not substitute for authority when the law requires authority.” But, even that is referring to the use of the mere phrases “common knowledge and common sense” as opposed to the enunciations of what is common knowledge/sense and perhaps even why it is so. And thus does not support your position, but rather, weakens it, because the court is imlicitely saying that what is required to have evidence is to have an objective analysis, proper authority, and reasoned findings. You will note that “concrete evidence” is suspiciously absent in a sentence that were it required would no doubt be included.
In fact, we then get to “Thus when they rely on what they assert to be general knowledge to negate patentability, that knowledge must be articulated and placed on the record.”
Now, of course, this is directed to the question of motivation to combine, a fact if you will, rather than the other important type of fact, elements found in the prior art. None the less, these cases do, indirectly, support my point by stating that the motivation must be substantial evidence, and that the board can rely on general knowledge derived from their expertise as substantial evidence so long as there is an objective analysis, has proper authority, and is based on reasoned findings.
Thus, if the board can pull substantial evidence “out of its behind” with regards to motivation, I do not see what is stopping it from pulling substantial evidence with regard to other factual inquiries from their behind as well. And of course, by association to the board, the examiner, we are all “the office”.
“The error in the examiner’s action (to be pointed out) is that the examiner did not rely upon substantial evidence”
Here, I presume you are relying not on official notice not being “substantial evidence” but rather on it not being evidence at all. If that be true, how then can it ever be taken to be evidence? I would surmise that it cannot be, yet, in case after case it is relied upon and the official notice itself is not struck down.
“What many in the examiner crowd don’t seem to understand is the potential for abuse if what is stated in the MPEP is correct”
Everyone understands it. Everyone accepts it. There is potential for abuse in any government function. Live with it or depose it.
“then applicant would be required to explain why these limitations aren’t within the prior art. ”
Hardly, as I’ve explained to you time and again, you merely have to point out the error, scroll up for a more detailed analysis.
“that assertions of Official Notice are basically nothing more than requests for admission”
Somehow I missed that memo, and I missed it in the entire history of official notice, within all agencies or even specifically the PTO. Perhaps you could point those parts out to me. What I did see was a old court case that allowed for applicants to contest official notices and have the examiner produce a reference.
“Applicant does not have to argue that the “facts” which the examiner takes Notice of are not well known. In other words, all that is required for the traversal to be adequate is for applicant to say, “Prove it.””
Nowhere that you can point to actually says that. The only thing you have is a old court case that you refuse to cite, which is now overruled by the SC in SC Zurko. I grant you JD, things were this way when you were an examiner. Sadly so, a court made a mockery out of an official function of an expert agency. Thankfully, that has been righted since you left.
If you please gentlemen, restrict yourself from rehashing the old and move forwards into some unexplained portion of your arguments, if there is any.
Just let me have some time to compile the rest of these recent cases and conduct further inquiry fellas.
I will leave you however In Re Khan from 2006. In it, the CAFC analyzed the whether the “motivation” that the board used for an obviousness analysis was based on substantial evidence.
link to cafc.uscourts.gov
Which is a decision based in large part on Lee
Wherein you will find probably the best caselaw line you ever will in support of your position “Common knowledge and common sense,” even if assumed to derive from the agency’s expertise, do not substitute for authority when the law requires authority.” But, even that is referring to the use of the mere phrases “common knowledge and common sense” as opposed to the enunciations of what is common knowledge/sense and perhaps even why it is so. And thus does not support your position, but rather, weakens it, because the court is imlicitely saying that what is required to have evidence is to have an objective analysis, proper authority, and reasoned findings. You will note that “concrete evidence” is suspiciously absent in a sentence that were it required would no doubt be included.
In fact, we then get to “Thus when they rely on what they assert to be general knowledge to negate patentability, that knowledge must be articulated and placed on the record.”
Now, of course, this is directed to the question of motivation to combine, a fact if you will, rather than the other important type of fact, elements found in the prior art. None the less, these cases do, indirectly, support my point by stating that the motivation must be substantial evidence, and that the board can rely on general knowledge derived from their expertise as substantial evidence so long as it is
“Applicant does not have to argue that the “facts” which the examiner takes Notice of are not well known. In other words, all that is required for the traversal to be adequate is for applicant to say, “Prove it.”
Dozens of kittens later …
You realize, of course, that these same points were made in this thread last week? Multiple times?
Just sayin’.
Can you contact the editor of the MPEP and tell him to correct this mistake?
“MPEP says: “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b).””
Like JD said, not required. A couple things, a good attorney will immediately notice the signal “See” of “See 37 CFR 1.111(b).” As noted by my Bluebook, “there is an inferential step between the authorty cited and the proposition it supports.” In other words, there is a little bit of hocus-pocus going on. Anyway, sometimes the “see” is justified, sometimes it is not.
In this case, it is not justified because stating why the noticed fact is not considered to be common knowledge or well-known in the art is overkill and not required by 1.111(b). The error in the examiner’s action (to be pointed out) is that the examiner did not rely upon substantial evidence (i.e., the examiner relied upon official notice). Also, since, presumably, the examiner relied upon the official notice to make the rejection, a prima facie case has not been made once applicant declined to stipulate to the officially noticed facts. Without a prima facie case being made, the burden doesn’t shift, and the examiner is left to find the evidence he/she should have found in the first place.
What many in the examiner crowd don’t seem to understand is the potential for abuse if what is stated in the MPEP is correct. What would happen if an examiner wants to take official notice that all the claim limitaions are common knowledge or well-known in the art? If a junior examiner does it, maybe the SPE steps in, but what if a primary examiner with signatory authority does it? By taking official notice of all the claim limitations, based upon MVS/6k’s interpretations, then applicant would be required to explain why these limitations aren’t within the prior art. Not only does this improperly shift the burden to applicants to prove patentability without the examiner first establishing a prima facie case of unpatentability, exactly how does one go about proving that a fact cannot be instantly and unquestionably demonstrated as being well-known? I can produce a hundred, a thousand, ten thousand references that do not show the officially-noticed fact; however, this doesn’t prove that the fact wasn’t capable of being instantly and unquestionable demonstrated as beeing well-known.
It is a lot easier to find a reference saying that X is well-known than to find a reference saying that X was not well-known.
“…which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.”
Not required.
MPEP says: “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b).”
“we actually have legal experts that set forth the policies in the MPEP”
Right. They’re the same experts who wrote the continuation and claim examination rules.
“JD ‘contests’ that examiner assertions aren’t documentary evidence, which is plainly false since if they aren’t, they could not magically become such in the event that they stand uncontested (which is what he asserts needs to happen for them to become evidence).”
I already explained to you, or was it Most Valuable Stooge, that assertions of Official Notice are basically nothing more than requests for admission. If the taking of Notice is not contested, then the facts are assumed to be admitted. If they are contested, the Notice is nothing more than a failed attempt by the examiner to take a shortcut.
As pds and I have explained to you numerous times, all that is required to prevent the Notice from becoming admitted is for Applicant to say, “I decline the examiner’s invitation to stipulate to these facts. Please provide some evidence that the facts are of such nature as to be capable of instant and unquestionable demonstration as being well known.”
Applicant does not have to argue that the “facts” which the examiner takes Notice of are not well known. In other words, all that is required for the traversal to be adequate is for applicant to say, “Prove it.”
Very simple. Almost too simple I guess.
PDS it was merely a showing of how FRE applies to board hearings. That’s just to clear JD up on the matter and to put it on record for all who will read this thread in the future. I have a couple of other things to add, but I can’t get full copies of some of them since I don’t have a full pass to JPLSIESD or some such law journal that wants 15$ for a reprint/access.
And besides, I hardly need to make any more meaningful conclusions since the conclusion that has already been reached stands uncontested. JD “contests” that examiner assertions aren’t documentary evidence, which is plainly false since if they aren’t, they could not magically become such in the event that they stand uncontested (which is what he asserts needs to happen for them to become evidence). Official notice was plainly documentary evidence that was not admissible as such until applicant failed to contest. It was with the stroke of a pen the SC ended the sufficiency of “contesting” of official notice from the office by making us subject to the APA standards of review. Thus what we are left with is Official notice being documentary evidence on the record that now must be “refuted” as per the APA in order for it to not be admissible as such.
Then JD has relapsed into bringing up that examiners aren’t expert witnesses, a topic that was put to rest long ago. Then he claimed lack of time to teach me evidence. Which is fine, and meaningless, but if he can’t teach me and the other lurkers then I don’t know what made him believe he had the time to present to us formally at the PTO.
Oh and also, I have no reason to doubt you that a class in evidence would likely change the tone of the discussion. Even so, fact is I haven’t had it and I’m relying on the writings of the SC, other courts, and legal journals. Keep in mind I would not bother to argue the subject at all except for the fact that, apparently unknown to JD and others, we actually have legal experts that set forth the policies in the MPEP, it’s not just a bunch of primaries/gs15’s that get together or some such. That isn’t to say that it’s perfect, but to assert that it is completely counter to the controlling law on this one issue where it adopts a position that is counter to the office’s “interests” in so many other portions because of controlling law is a long shot at best.
I have another couple of cases that are interesting, from 2006+ which I believe shows why the MPEP was changed from its last embodiment to the current form.
pds,
give up. you’re arguing with somebody who thinks that an examiner is an expert witness. it’s pointless.
wouldn’t it be fun to put examiners on the witness stand though?
one can only dream.
the world is overrun with kittens anyway.
6K
This discussion would be much more interesting after you take 4 credit hours of evidence. You could probably find some value with a little dab of constitutional law and administrative law.
With that under your belt, I very much doubt we would be having this drawn out conversation.
Regardless, thanks for confirming that you aren’t some inhouse USPTO lawyer masquerading as an examiner.
BTW: I hope your last post at 7:28PM was the first of a two-part post in which you actually have a conclusion worth sharing because as far as I can tell, your last post is little more than incoherant babbling.
I’m killing a kitten. Good to see you back Hutz.
§ 41.152 Applicability of the Federal Rules of Evidence.
(a) Generally . Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to contested cases.
(b) Exclusions . Those portions of the Federal Rules of Evidence relating to criminal proceedings, juries, and other matters not relevant to proceedings under this subpart shall not apply.
(c) Modifications in terminology . Unless otherwise clear from context, the following terms of the Federal Rules of Evidence shall be construed as indicated: Appellate court means United States Court of Appeals for the Federal Circuit or a United States district court when judicial review is under 35 U.S.C. 146.
Civil action , civil proceeding, action, and trial mean contested case.
Courts of the United States , U.S. Magistrate, court, trial court, and trier of fact mean Board.
Hearing means:
(i) In Federal Rule of Evidence 703, the time when the expert testifies.
(ii) In Federal Rule of Evidence 804(a)(5), the time for taking testimony.
Judge means the Board.
___________*
Judicial notice means official notice.
___________*
Trial or hearing means, in Federal Rule of Evidence 807, the time for taking
testimony.
(d) The Board, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
LL,
Patent attorneys have to meet all the requirements to be a patent examiner plus obtain a law degree.
However, they are generally expected to prosecute a wider array of technologies than an Examiner. There are times where it has gotten down to some nuance and I have to involve the inventor in a call with the Examiner, because the significance of the nuance was lost on me. Got the claims allowed though.
Malcolm,
I prefer dogs. 🙂
LL,
I’ll do my best to keep the conversation on a higher plane. Not gonna comply with Rule 3 though.
MVS is a stooge though. 6k completely outshined him.
There. It’s all out of my system. 🙂
You have a nice day too.
Every time someone posts a new comment to this thread, God kills a kitten.
jd,
you said “LL, you routinely claim technical superiority over members of the patent bar. To the point that you would make a completely uninformed comment that most members of the patent bar don’t even have technical degrees.”
You are mixing 2 different things. And one has nothing to do with the other.
If I misspoke about about patent lawyers not having to have tech. degrees, then I was wrong. OK.
Just some responses & interviews I have seen/had it was apparent that those lawyers did not at all understand the tech they were handling. (I am not referring to you as I have not examined your cases.)
And there are differences between understanding technology and understanding qualifications. Two different subjects. Get it?
“Is it even possible to have a rational discussion with somebody so woefully uninformed?
I don’t know. But I’ll try. :-)”
I keep trying to. I guess I have patience. That’s why I keep responding (at least if you have something worthwhile to respond to). Maybe there is hope for you yet buried under everything 🙂
Have a nice day!
thanks,
LL
“Your act is old & tired.”
Yet you keep responding to it.
Why don’t you plonk me?
LL, you routinely claim technical superiority over members of the patent bar. To the point that you would make a completely uninformed comment that most members of the patent bar don’t even have technical degrees.
Is it even possible to have a rational discussion with somebody so woefully uninformed?
I don’t know. But I’ll try. 🙂
And please spare us all the baby talk. Am I going to start receiving OA’s in leet speak?
jd,
Obviously, it is impossible to have a discussion with you without you taking everything personal & going on the attack. You CONSTANTLY attack people personally and professionally, but can not take a slight and veiled jab back. I didn’t know that they made skin THAT thin. What is it, like 1 molecule thick?
As for you comment that “Yeahh LL, examining diodes for 23+ years has made you a real expert in bio-chem.” you missed a couple points that I thought even someone of YOUR intellect would get. Guess it has to be spelled out for you.
Besides the fact that I don’t work in “diodes” OR “bio-chem”,
I AM NOT A LAWYER AND I DO NOT PREOSECUTE CASES IN ALL DIFFERENT ARTS!!!!
Clear enough for ya??
So, even IF I worked in diodes I would not need to know about bio-chem to do my job & do it well.
If you are insecure in YOUR OWN technical background then that is YOUR problem. No need to take your insecurities out on the rest of us.
And your response is a classic strawman argument (“an informal fallacy based on misrepresentation of an opponent’s position. To “set up a straw man” or “set up a straw man argument” is to describe a position that superficially resembles an opponent’s actual view but is easier to refute, then attribute that position to the opponent (for example, deliberately overstating the opponent’s position).”
jd, you really are a TRO11 in the classic Internet meaning of the word (“someone who posts controversial and usually irrelevant or off-topic messages in an online community, such as an online discussion forum or chat room, with the intention of baiting other users into an emotional response or to generally disrupt normal on-topic discussion”)
and MVS apparently was right in PLONK-ing you earlier. Since you apparently didn’t know that meaning, here it is
PLONK – a Usenet jargon term for adding a particular poster to one’s kill file such that the poster’s future postings are completely ignored. It was first used in 1989 and by 1994 was a commonly used term on Usenet regarding ki11 file additions.
The word is an example of onomatopoeia, intended to humorously represent the supposed sound of the user hitting the ki11 file. It is also sometimes given as an acronym standing for Please Log Off, Net K00k, though this is likely a backronym. Other used expressions are “put lamer on ki11file” and Please Leave Our Newsgroup: Ki11file!
It is also used as a verb: “I plonked that 1d10t Tom”. As a public repudiation of the plonked poster, it is appended to the end of one’s reply (or may constitute the entire reply).
The term’s usage later expanded to include the use of e-mail filters that delete incoming messages that meet certain filter criteria set by the receiving user, so block messages from annoying senders. It has also often been figuratively used on BBSes, webboards, blogs, and wikis (which usually do not actually have filters).
Now, I usually try to be reasonable here. So, lay off the personal stuff! Before this, I said NOTHING to you that attacked you directly nor did I disagree with your points (though I did not specifically agree with them, either).
You want to discuss things rationally, fine. Otherwise, just go away. Your act is old & tired.
thanks,
LL
“Both of these are of course plainly false, as every article from here to the moon states, the standards of evidence in cases governed by the APA are what it says it is. Any oral or documentary evidence.”
Examiner pronouncements in Office Actions as to what is commonly known are not “any oral or documentary evidence.” That’s been explained to you before. Are you still running with that theory that an examiner is like an expert witness in litigation? LOL
And no, I can teach you a semester’s worth of evidence in a blog post. You’re gonna have to learn it the hard way. I hope you do. If you don’t, you’re gonna end up like Most Valuable Stooge.
I traverse every taking of Official Notice that crosses my desk (even the ones that don’t come right out and say they’re taking Official Notice, they weasel it with, “Well, it’s well known…). By simply requesting documentary evidence. Haven’t had anybody foolish enough to “hold” my traversal “inadequate.”
When I find somebody foolish enought to “take the noticed of facts as admitted,” I’ll let you know.
He said (paraphrasing) “Unless you are trained as a lawyer (i.e., have a law degree) to never argue case law with a lawyer. When you do, you are giving them the ‘home field advantage’. Stick to the technology facts. You are better grounded in that and the lawyer is less prepared to argue that then they are the case law.”
Everyone’s primary says that. If I wanted to spend my days arguing about whether x reference showed y (when it probably really doesn’t) while someone else is talking about something remotely interesting then I’d stay here at the office. Since that is dumb as f ck, since I could really give a sht less if x ref shows y well known feature and that choice apparently leaves me with few career options later in life, as well as leaving me with a relatively smaller pay check, I think I’ll choose to try to poke through some law on my own for now. I’m starting at nothing you know, may as well get the lay of the land. I mean he ck, even being an agent purportedly better than this, and taking that test isn’t exactly rocket science. Let them twist my words, I’ll have to be used to it by some time.
Anyway LL, you can run circles around the ones that aren’t real sharp, observe:
“6k, one thing you’ll learn in law school is to lead with your best argument.”
I already noticed most lawyers do that already, but I haven’t really started doing it myself.
“Don’t see anything in there about the demand being an “adequate traversal.” Pretty much says any demand for the examiner to produce authority for his statement. Not exactly 100% on point, is it? Hhhm, LL?”
I want to be clear, this is supposed to be your best argument. This argument falls flat on its face, that sentence is only there to make it clear that if you don’t make the demand at all they will not hear you out later. As an added bonus it doesn’t even say that if you do make a demand that they will hear you out later. Ok, so the “best” argument is way off base. Let’s go to the next best. (btw, I know the case where they talk about the challenge…)
“If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. See 37 CFR 1.104(c)(2). See also Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 (“[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings” to satisfy the substantial evidence test).”
So let’s be honest, is citing this is your 2nd best argument or your first? Because I’m having a hard time figuring out what you’re trying to argue in any of your post. Either way, let’s turn our attention to this small matter. First, have you still not read the case of Zurko at all? The applicant MORE than adequately specifically pointed out the supposed errors in the examiner’s notice taken taken with the board’s common sense. Do you not remember the mountain of evidence against the examiner/board in Zurko? That quotation from Zurko is what must be done if the applicant adequately traverses. And of course, yes, if that happens then yes, the examiner needs concrete evidence, a situation that we’ve been over, and over, and over.
Here I was thinking you weren’t going to just waste my time and you were going to make some sort of attempt at a reply with some meaning, and possibly tell me all about how evidence is determined or some such. This was worse than the posts before. It turns out you’re shaky on the only points you can really argue, that there’s old caselaw evidence standards, and that the FRE is “over” the APA in some way, and that might affect what is evidence. Both of these are of course plainly false, as every article from here to the moon states, the standards of evidence in cases governed by the APA are what it says it is. Any oral or documentary evidence. What do we need additionally for official notice? Substantial evidence. Who defined that? SC. You’ve got nothing, zero. If my spe blocks me then it’s sure not because of any law that he, or you, or apparently anyone who’s reading can cite. And if he does block me, it won’t be without more than probably an hour of fighting over everything we’ve just been discussing. Which frankly, I think I could probably persuade him. He’s not unpersuadable like some people.
Oh and btw, I doubt it would be a precedent I think it’s probably already been decided right under our noses. All it takes is for one of the board cases where official notice wasn’t properly traversed to be upheld, especially if it was a dep claim that was noticed. And that probably wouldn’t make headlines.
Oh and also btw, yesterday (that’s right, sunday apparently) the 5th one came back after final with no repitition of the “objection” or “challenge” to the official notice. 0 for 5 JD, can’t wait to get someone with some balls and $$$ for a wasted appeal up here. I may have to start taking a glance at your cases and see if I can’t get buddy buddy with some fellow examiners who might be having some trouble with a hardliner attorney. Someone very close to you might get to be my test case, indirectly. Someone else taking the fall if I’m not right? Me knowing when you’re beaten at the board if I am? Perfect right? I’ll be sure to post case no.
Traverse your official notices wisely JD, you never know.
Get your reply in if you have one, I’m through with the thread until someone is ready to challenge me with something worth replying to that isn’t rehashed trashed arguments from above.
“Who, other than you, says they will not? A case could have been heard already with the issue we face having already been decided.”
Uhm, well, let’s see, the two cases MPEP 2144.03C cites are Chevenard and Zurko.
Chevenard was decided in 1943, about 4 years before the APA, 9 years before the 1952 patent act, and 19 years before SCOTUS established the four factual inquires for obviousness.
6k, one thing you’ll learn in law school is to lead with your best argument. If Chevenard is the PTO’s best argument, they’re in trouble. Here’s the snippet from Chevenard from the MPEP:
“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”
Don’t see anything in there about the demand being an “adequate traversal.” Pretty much says any demand for the examiner to produce authority for his statement. Not exactly 100% on point, is it? Hhhm, LL?
And MPEP 2144.03C clearly cites Zurko for the requirement that the examiner produce CONCRETE evidence. Want to modify that little dissertation of yours that substantial evidence doesn’t require concrete evidence? Or is your opinion that the MPEP (mis)editors got Zurko all wrong? LOL
6k, there’s clearly nothing I can say to you that’s gonna educate you, so I won’t bother to try. (I’ll just stick to making fun of you.) Your education will come when you’re sitting in the appeals conference with your carefully crafted test case, and you’re all excited how you’re gonna set some great precedent with your “inadequate traversal” and “facts taken as admitted” and then your SPE or whomever pulls the rug right out from under you and says, “Nah, you can’t send that up. Re-open and cite some evidence.” Your education begins right at that moment. Then you’ll be ready to see the light.
Yeahh LL, examining diodes for 23+ years has made you a real expert in bio-chem. LOL
Of course, you’re the examiner who claimed on JPE’s site that most patent attorneys don’t even have technical degrees.
6k, don’t worry, you’re still funnier than LL. But he’s in the running. I’m sure MVS (Most Valuable Stooge) is following this thread as intently as ever, so I don’t want to forget him. You’re funny too, MVS.
hey, 6K, I would like to pass on a little advise I was by my wise, old (actually not so old at the time) primary gave me shortly after starting at the office.
He said (paraphrasing) “Unless you are trained as a lawyer (i.e., have a law degree) to never argue case law with a lawyer. When you do, you are giving them the ‘home field advantage’. Stick to the technology facts. You are better grounded in that and the lawyer is less prepared to argue that then they are the case law.”
When you argue case law with a lawyer, they know it much better than you do, thus they have a big advantage in that arena. As seen in your above confrontation with JD, they can twist what you say and what the cases say and pick and choose decisions that support their position, and shoot holes in your positions, much easier that you can.
Stick to actual “facts” not opinions. And often the you can convince you are right on the technology (i.e, 102, 103) because you are talking high end computer systems or bio-chem and they have a background in something relatively simple. Like fishing reels or windings 😉
Take the advise. It can save you a lot of wasted time and energy.
thansk,
LL
PS to JD,
NO, I am NOT saying not to try to read and understand the law and court decisions, so don’t go there. The examiners should make every attempt to understand how the various important decisions apply and apply those decisions appropriately. I am saying not to ARGUE them.
LL
Why won’t PTO (mis)management let it be challenged?
Who, other than you, says they will not? A case could have been heard already with the issue we face having already been decided.
I’m trying to get that test case, but nobody wants claims that I officially notice enough, maybe because they’re worthless, maybe because they’re getting to be a pusy. But I really doubt the pusy thing. The guys I’m against will usually fight for a claim they genuinely feel they are entitled to get ivo the art. I simply cannot believe that not one of them has pushed back yet if it’s so easy. I suspect though that it’s not as easy as you’re putting on airs as to it being. Take your need to come back later and explain the whole thing and perhaps then recite some caselaw for instance, if it was so easy to write up these appeals then why couldn’t you outline it for me in a sentence or two? I know you know how to write this stuff up pretty easily.
But I will say this, my old boss would have been around a million times more likely to let the case go up than my current one likely is.
Also JD, everything seems in order in the new appeals rules. They even are granting themselves the power to make a “new rejection”. Though they’ve decided to not make it final for purposes of being appealed to a higher court. No substantial impact to official notice that I can see.
hey, JD,
I wasn’t on these docks a few days ago…
“why won’t PTO (mis)management let it be challenged?” Why ask me?? I don’t make those decisions. Why don’t you ask one of the Johns yourself. I sure they would be willing to respond to you 🙂
As for you saying “Nice attempted save on that whole “examiner as PHOSITA” thing. I’m not buying it though.”, you are wrong as you appear to have bought it earlier.
I’ll quote what you said “I’m not talking about their technical knowledge in an abstract sense. I’m talking about the law.” so you CLEARLY DID understand the distinction I was making. So, sorry but I don’t buy you not buying it. Nice try to recover though. 😉
thanks,
LL
LL,
The boat left the dock a few days ago. You’re still standing on the dock.
6k’s not dropping it. He’s gonna be the one who sends up the “inadequate traversal/facts taken as admitted” test case.
I hope he does. But when his SPE or TQAS or whomever tells him, “You can’t send this up. Re-open and provide the documentary evidence applicant requested,” I trust that he will post, “Well I tried to send up a case that’s 100% on point, but I got shot down by my SPE/whomever in the appeal conference exactly like JD said I would,” so that you’ll finally be able to see what I’ve been trying to get you to see.
LL, ask yourself, if MPEP 2144.03C is a legally correct interpretation, why won’t PTO (mis)management let it be challenged?
Nice attempted save on that whole “examiner as PHOSITA” thing. I’m not buying it though.
6k, please do try to get that test case. Only after you’re shot down by your own (mis)management will you see the light.
Hey, JD, still off your meds? Sounds like it 🙂 Take another shot. It’s early, yet.
You asked “LL, did you miss the numerous posts I made explaining why this will never happen?”
NO, I didn’t miss them. I am trying to get away from the pi$$ing contest you & 6K, et al. are having. That’s why I didn’t put in an opinion on either side for this issue. You apparently missed where I said you & they won’t be convinced & won’t convince the other side. So drop it, already. It is a waste of space & time.
And, NO! I did not “miss the boat” about an examiner & the relation to a PHOSITA. I was making a different point (maybe too subtle?) than you were. I AM talking about the actual level of skill and knowledge. I was not saying that the examiner IS a PHOSITA. There is a difference between those 2 points. And I am sure you know that and are just being difficult, as is evident by your response. Got it??
Of course, the examiner is a finder of facts. I never said anything contradictory to that. Read more carefully.
The analogy I often make is that an examiner is like a CSI (popular show that no one ever seems to admit to watch). They are there to find the facts and make determinations based on those facts. Allow or reject based on the FACTS. Not on opinions, feelings, or gut instincts or opinions about the applicant or the lawyer. Those things don’t matter.
Lawyers, however, all too often seem to forget that THEY (lawyers) ARE NOT an impartial parties but are ADVOCATES for their applicants. So they will naturally see things differently than an examiner does. Both are coming from different points of view and will necessarily have different opinions and values when it comes to the examination process. And this is exasberated by rules, laws, court decisions, and other “guidelines” that often leave much to be desired in clarity.
thanks,
LL
Dear Lionel,
“Out, dam’d spot!, out, I say! — ”
I’ve not been able to stop thinking about your last, most intellectually provocative comment above. Boy, you sure know how to tweak a guy down deep – Bravo.
Even Lincoln would have condoned slavery.
I find such concerns painful and disturbingly difficult to grapple with.
We live on a Planet of Predation — are We the People, possibly among the best People on our Planet, on a par with, say, army ants?
How can We “forgive” a Planet inhabited by Predators?, including We the People?
Must god come from our ever evolving human hearts and souls sometime later?
When/if Aliens swoop down and take our lands and enslave us to do their bidding, can they be forgiven? Is it conceivable that it might be compassionate to euthanize us all so We and our progeny are spared the suffering and humiliation and sped along to our way to our Maker?
Out, dam’d spot!, out, I say! —
I do not mean to offend anyone, you may Just as well, perhaps you all should, ignore my ramblings which are not entertaining today. If I need an excuse – I started Happy Hour on Bermuda time …
“Unless we get an explicit court opinion 100% on point neither will concede.”
LL, did you miss the numerous posts I made explaining why this will never happen? I’ll repeat it for your benefit: PTO (mis)management considers the “inadequate traversal/facts taken as admitted” nonsense of MPEP 2144.03C as a device or tool to, in their minds, hopefully frustrate applicants and (theoretically, I presume) make it easier for examiners to pump out high quality (96.5%!!!!) OA’s. It’s a shortcut. If the examiner takes the shortcut and applicant doesn’t call shenanigans on the examiner and make the examiner go back to the beginning and do it right, PTO (mis)management figures, “Sweet, another high quality FAOM was just launched!!!! Pretty soon our quality will be 100%!!!!!!! Another 14.3% bonus for the commissioner!!!!!”
PTO (mis)management is never going to allow this little tool to be subjected to judicial scrutiny. So there never will be a case “100% on point” as you seem to need.
BTW, most examiners don’t seem to be bothered that In re Aller, In re Japikse, etc. are not “100% on point” when they routinely punch up the form paragraphs with those case cites. And when I point out that those cases aren’t 100% on point, and in fact usually are about 0% on point, what I usually get is more boilerplate form paragraphs.
You’re hilarious. 100% on point. Keep ’em coming.
“JD, you are generally correct that an examiner is (usually) not a PHOSITA. A minor point of disagreement on that. For many (most) arts, particularly the simply mechanical stuff, examiners are considered as having more (or even much more) than ordinary skill. For highly complex (e.g., some bio-chem areas), the examiner may not actually be at the level of a PHOSITA (and this is not intended as a knock on those examiners; just an indication of the very high level a PHOSITA is at in those arts – e.g., masters, PhD, years of lab work, etc.)”
Wow, did you miss the boat on this one. Examiners are not PHOSITA. Never ever. Get it? I’m not talking about their technical knowledge in an abstract sense. I’m talking about the law. I said very clearly that examiners are fact finders and cannot resolve the factual inquire of the level of ordinary skill in the art simply by substituting themselves for PHOSITA. That’s not proper fact finding. Ever. Never has been. Never will be. Got that?
6k, I’ll try to answer you in more detail later. For the moment, you need to realize that “evidence” is a very broad concept. There was common law evidence before FRE. FRE is very useful, but does every section of it apply to every federal administrative agency and every procedure? I don’t know, but I seriously doubt it. Does 5 USC 556, with FRE on top, apply to ex parte patent prosecution? Again, I can’t say definitively that it does, because there are no hearings in ex parte procedure, but I do believe FRE applies in administrative agencies in contested matters. At the point where an appeal goes to BPAI, I believe that the “evidence” in the record does not include arguments. Attorney arguments are not evidence. Examiner arguments are not evidence.
You might want to review the proposed BPAI rules, particularly the sections on what constitutes the record and what constitutes evidence. Take a look at those and tell me if you think BPAI regards “official notice” as facts, or even as evidence of facts, particularly if the official notice is challenged.
Maybe I’ll write 28 pages of “wondering drivel” on the subject so that some mid-level (mis)management stooge can read it and conclude, “Yeahh, well, but the MPEP says…”
Man, go away from a few days, check back to see what’s been going on & it is a mess in here.
I think that it is about time for a “time-out” for a few individuals 🙂
Hey, JD, who stuck the bee in your bonnet? You are usually obstinant, but not as nasty & mean-spirited as you are in this thread.
For both JD & 6K, et al.: You won’t convince them & they won’t convince you. Like someone said, above, you guys are talking across & at each other. You see it one way; they see it another. Unless we get an explicit court opinion 100% on point neither will concede.
So let it go!! It is WAY past time to move on!!
JD, you are generally correct that an examiner is (usually) not a PHOSITA. A minor point of disagreement on that.
For many (most) arts, particularly the simply mechanical stuff, examiners are considered as having more (or even much more) than ordinary skill. For highly complex (e.g., some bio-chem areas), the examiner may not actually be at the level of a PHOSITA (and this is not intended as a knock on those examiners; just an indication of the very high level a PHOSITA is at in those arts – e.g., masters, PhD, years of lab work, etc.)
And, again, you are correct that the idea of “quality = reject, reject, reject” is wrong. I’ve said the same many times, myself. However, having outside lawers (patent bar?) come in and “teach” examiners, as you & John G appear to suggest, is probably not the best idea either. At least right now.
Unbiased classes could be very useful, but there are, unfortunately, very few instructors that are able to objectively teach a subject that they are intimately familiar with and NOT, purposefully or not, insert their own personal biases into the course. College professors do it all the time (I am sure we all remember courses, often liberal arts electives, where we had to tailor papers and opinions to the instructors if there was any real hope of getting a high grade. I know I do.). I would expect that law professors are no different. And I wouldn’t think that a rep from the patent bar would be any more above this fault than any other person.
However, an exchange of ideas could be useful. I always like talking to lawyers (informally) after interviews & get their take on things, both positive & not, going on at the office.
Remember, lawers & examiners, inherently because of the SYSTEM we all work in, are adversaries (opponents?) whether we like it or not (I, for one, don’t). So, the system being what it is, it would not now make sense for the bar to come to teach (preach?) to examiners.
To use an analogy (since we often, in jest, refer to examiners leaving to go to a law firm as “going to the dark side”, it would be like having Darth Vader teach aspiring Jedi Knights how to become a proper Jedi.
The 2 sides just have different objectives (because of the system) and different perspective on things. What makes sense for you, business wise, does not for an examiner, and vice verse. For you, most lawyers seem to agree that a 1st action allowance is a bad thing (claims drafter too narrowly). For an examiner, it is a good thing. 2 counts! And won’t have to worry about dealing with an amendment & further search.
Bottom-line, we need to change the SYSTEM, And the “system” has been in place for a few decades, and been in decline almost as long.
A lot said, but trying to get this in a more constructive direction from where it has been.
Thanks,
LL
O, pds took care of that did he? Seems his arguments were on their last leg. But I figured I’d drop you this pds, we see from here:
link to ftc.gov
Footnote 1 is where my investigation will lead further, if I can obtain this vol. Even if I cannot, the footnote itself is quite telling, as the observation is made that administrative agencies operating under the APA enjoy broader discretion to take notice of contested material facts than do courts operating under the FRE.
Hmm, perhaps those are the rules of evidence you’re refering to JD? Federal rules of Evidence? These?
link to law.cornell.edu
The rules that administrative agencies operating under APA specifically enjoy broader discretion as to what constitutes evidence than? You mean the ones specifically more restrictive than the ones that the PTO is to operate and be reviewed under?
Surely you remember
http://www.law.cornell.edu/uscode/5/usc_sec_05_00000556—-000-.html
part d sentence 2.
J e s u s C h r i s t, just spell out where you’re getting your evidenciary rules from. 28 USC? I sure as heck don’t see any rules of evidence in laws under 35 USC.
Sure doesn’t seem to be here under 115 117 or 119.
link to access.gpo.gov
I can hardly believe that there are this many attorneys mouthing off about standards or rules of evidence and/or what a “fact or “evidence” is that wont even show and tell the parts they feel are relevant portions of the law by now. Seriously, if you want to teach examiners something about evidence JD prepare your lesson plan. Post it. Post it again as the first post under one of d’s topics and you’ll have lurking examiners everywhere exposed. Instead of teaching a class of 20, you may just reach 100 or more. Stop thinking you need mgmts permission to teach examiners. Go ahead, you have a whole generation of examiners coming up that will be googling “official notice” “Obviousness” and etc. Get yourself up there at no. 1 and start watching the examiners change by themselves.
But watch it, say something ridiculous and we may have to call you on it.
“Serious and deeply practical question from that last commentator, for which I for one in Europe am grateful. The lawyer’s cry “prove it” should not be allowed to frustrate the objective of a patent system that meets the needs of the US public. BTW, never really understood the unique advantage the USA gets from having drafting and prosecuting done by attorneys at law. In ROW, patent practitioners struggle to pass the tough qualifying exams of a profession in its own right, and thereafter take pride in top professional standards, in a profession of their very own, in which we argue on Monday for allowance and, on Tuesday, in another case before the same tribunal, for revocation of the claim we say is invalid.”
In the US, you don’t need to be an attorney to be licensed to practice before the USPTO. You just need to meet certain educational standards, pass the registration exam, and pass a background check.
JohnG,
Before PTO (mis)management tries to teach the examiners evidence, the first thing they need to do, as I mentioned upstream a little bit, is explain to the examiners that they are not PHOSITA.
There’s no training, no classes, they can offer (force the examiners to attend?) that is going to be of any value until they drill that into the collective head of the corps.
Wouldn’t hurt if there were some courses taught by outside practitioners. A group I belong to (I think you belong(ed) too) offered to have practitioners come in and teach the examiners and PTO (mis)management refused. They have no interest in any message other than “quality = reject, reject, reject” getting through.
RQ, it’s not really that telling. PTO (mis)management has been telling the examiners for the past 4 years or so that 1) the law doesn’t matter and the PTO is not bound to obey the law; and 2) quality = reject, reject, reject. Given those two messages, 6k’s “approach” is entirely understandable. When in doubt, just make up some nonsense and send it out. Maybe you’ll get some RCE counts out of it.
I remember the PTO used to have a course in evidence available to the examiners, but it was never required. Maybe that is one of the things that should change.
e6k said: “if I say a fact which is true for the record as the examiner, it is substantial evidence if a reasonble person would believe it to be a fact”
That is a pretty telling statement from an examiner.
I should not speak so glibly. There were plenty of people back then who thought exterminating the Indians was a bad idea. They may not have objected to stealing their land, but there is a difference between conquering and a belief that the only good injun was a dead injun.
I can forgive manifest destiny and slavery, but I have a hard time forgiving active proponents of genocide.
6k,
How are those Ivy league law school applications coming? You better get them in soon. Your brain is starting to shrivel. If you don’t get out soon, it will soon be as small as some of the mid-level (mis)management stooges who post nonsense.
Examiner arguments as to what constitutes the scope and content of the prior art are no more substantial evidence than an attorney’s argument as to what does not constitute the scope and content of the prior art. Both are arguments, not evidence. pds went over this with you. I’ll defer to his excellent explanations.
“Thus we have that the official notice must have been a fact of record or it could not be subject to supporting evidence.”
You clearly don’t understand the difference between evidence and facts. They’ll cover that when you get to Harvard.
If I assert *a fact* for the record then it is a fact of record.
“knowledge and intelligence IP people”
How can you be percieved as being pompous when you write that?
JD has rejoined the fight with renewed vigor no doubt due to the weekend passing. It seems he has joined the camp that believes that somehow, incredulously, facts, whether they be known to be true by the applicant at hand or not, that have been added to the record magically are not facts of record. Guess what? If I assert for the record then it is a fact of record. Heck, if I even mistakenly assert a fact which I believe to be an undeniable fact, but then evidence is presented the contrary, which I then find better evidence in support of then I had made the fact of record in the first action, thus why I am able to make my final final. Even, even I say, in the event that I assert something that seems true to me (and is in fact true) when I write it, which then later is shown to perhaps not be true (maybe due to argument), and the case issues, then the fact has still been made of record.
In the end it boils down to if I say a fact which is true for the record as the examiner, it is substantial evidence if a reasonble person would believe it to be a fact, and what I say is for dam sure “of record”, and any true facts are “facts of record”. Perhaps you missed the part in the Zurko that was before the SC Zurko where the examiner’s official notice was taken as a fact of record? Heck, perhaps you missed the whole of Zurko? If you choose to not refute it (which is different than not conceding it), are then finaled, and you then choose to appeal to BPAI then their hands are free to further substantiate the fact asserted with supporting evidence. This is because the rejection they are maintaining is based on sustantial evidence provided by the examiner, that is now further supported. Or the BPAI can merely affirm if it feels the official notice is already supported enough, and have the CAFC decide the issue where the office’s representatives hands are then untied to present evidence to support the fact noticed without having to make a “new grounds of rejecton”. You notice, that was what the later Zurko was about, the tieing of the office’s (read commissioner) and BPAI’s hands to make a new grounds of rejection, or add completely new evidence during the appeal process that results in new evidence being relied on as the basis of the rejection instead of any substantial evidence already in the record being relied on. As you well know, finding and applying support for an officially noticed fact does not constitute a new grounds of rejection nor does it make the rejection based on anything but the evidence that was put forth already, it merely means the evidence that the rejection is based on is further supported. Thus we have that the official notice must have been a fact of record or it could not be subject to supporting evidence.
I cannot believe that you would even bother to take such a position JD, it’s beneath you. What now, do I need to dredge up the history of what makes a fact “of record” to show the error of this outlandish belief? I can make anything I want “of record”, including but not limited to, my birth certificate, by college degree, what I had for dinner last night and what I daydreamed last week. And then what next, am I going to have to dig up the history of what a “fact” is? Surely you have better points to make than this, put them forward already and stop overworking the red herrings. You’ll have PETA looking for you soon if you don’t.
Dear Lionel,
And George Washington had slaves.
And women have only recently been given voting rights (the 19th Amendment in 1919).
And look where America is today – a world leader in civil rights having spread democracy to 60% of the world, double in less than half a century.
If we step back and consider human nature, one might consider that to be blistering progress –
But, a word of caution about complacency; unless we check International Big Business’ concerted effort to infect and control our government from inside each of the three branches, We the People will become mere grist for its global mill —
“Common sense tells you where the burden should lie then.”
I think most agree that “official notice” is “official terminology” for “common sense.”
Andrew Jackson also supported genocide against American Indians
Some readers would do well to learn from you.
I have to say, it’s been a long time since I heard “this one takes the biscuit.” I found it refreshing.
Dear Eurodisnae,
Apology accepted, thank you. It takes a big man to apologize.
I could never figure out why, but some people simply find it impossible to apologize.
Old Hickory, Andrew Jackson, our 7th President, said:
“Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error.”
JAOI, sorry if I sounded “pompous”, but there are some “regulars” here at Pat-O who do seem to love arguing just for the sake of it, to the extent of re-stating each others’ positions in a way that is so blatantly selective and misrepresentative that if not purely mischevious must be pathological. A large part of the job of any patent professional is (or should be) to do with constructing rigorously logical technical arguments (and if that sounds pompous then I’m not sorry at all, because it’s a fact – official notice, whatever). That’s why the level of debate seen here too often is particularly annoying. I thought it was pretty clear that my remark wasn’t aimed at the general Pat-O community, but if not then I apologise.
My statement “That is just so wrong-headed … that I have to do something about it, but I haven’t decided what yet” was not directed at anyone here – it referred to the fact that I felt a professional obligation to raise the EPO issue I was discussing through some official channel.
JAOI,
Thanks. I’ve been in plenty of personal interviews with examiners where I’ve told them, in no uncertain terms, “You are not PHOSITA.” They all look at me like I have snakes crawling out of my eye sockets. The fact that none of them have ever been trained that their job is to determine PHOSITA, not just assume PHOSITA’s role, tells you all you need to know about PTO (mis)management’s “training” of its examiners.
Dear Eurodisnae,
I haven’t been following this thread, but, while you may think, “this one takes the biscuit” – if you don’t mind my saying so, and I say so with all due respect, I think your further remark is a bit beyond the pale. You wrote:
“How can any people with the knowledge and intelligence to even take an interest in this blog be capable of repeatedly missing a point? It doesn’t surprise me any more but it’s getting really tiresome.”
Regarding your last remark:
“That is just so wrong-headed … that I have to do something about it, but I haven’t decided what yet.”
I’m sure we who have repeatedly been missing the point will all wait with bated breath for your next shoe to drop (õ¿0).
* * * * *
Dear John,
Thank you for your comment.
You managed to express your frustration, which is shared by knowledge and intelligence IP people, without being pompous, if you catch my drift.
“Official notice: examiner asserts something to be a well known fact. Such mere assertion doesn’t make it a fact of record.”
A challenger appears … as always.
“Is that it? Am I missing something?”
That’s it. And you’re not missing anything.
It’s the mid-level (mis)management stooge from the PTO who is missing it. But as he doesn’t follow the PTO’s clearly incorrect policy anyway, it’s not a big deal.
“That is just so wrong-headed (while also explaining a lot that had been bothering me about EPO examination recently) that I have to do something about it, but I haven’t decided what yet.”
Substitute “USPTO examination” for “EPO examination” and you’ll have a pretty good idea of the nonsense we put up with every day. If I had a nickel for every OA that contains “analysis” to the tune of: “Well, I’m the examiner and I’m of ordinary skill in the art and I think it’s obvious” I’d be comfortably retired and would gladly delete my tiresome posts from this thread. But until there are renumerations to those of us who have to suffer such garbage on a daily basis, I’ll be here along with you.
Came into this thread late thinking “145 comments about prosecution timing? I wonder what that’s all about.” Well, you know, Pat-O threads are worse than soap operas – you get sucked in and just have to know what happens next. But this one takes the biscuit. How can any people with the knowledge and intelligence to even take an interest in this blog be capable of repeatedly missing a point? It doesn’t surprise me any more but it’s getting really tiresome.
Official notice: examiner asserts something to be a well known fact. Such mere assertion doesn’t make it a fact of record. If applicant concedes it’s a fact, it becomes a fact of record. If applicant doesn’t concede it’s a fact, it doesn’t become a fact of record unless the examiner does *something* to substantiate it.
Is that it? Am I missing something?
If applicant refuses to concede that grass is often green, should some sanction be available, or is it not easier just to substantiate the fact? If a stated fact can’t easily be substantiated, is the applicant not right not to concede it?
That whole Bigfoot/proving a negative riff is beside the point. The only time that’s likely to be an issue at the PTO is official notice to the effect of “claimed trans-dimensional hyperdrive does not exist and is not enabled by the disclosure”. Common sense tells you where the burden should lie then.
“The examiner is not the PHOSITA” is a very good point, because I recently had a senior EPO examiner telling me that EPO examiners are so specialised that they actually are the PHOSITAs in their fields of specialism. That is just so wrong-headed (while also explaining a lot that had been bothering me about EPO examination recently) that I have to do something about it, but I haven’t decided what yet.
“You may think an examiner taking official notice is substantial evidence, but like I mentioned earlier, any competant (or even incompetant) litigator would reveal the flaws in the notion that an examiner’s opinion qualifies as substantial evidence.”
Come come pds, I never said it wasn’t flawed. You hardly need a litigator to spell it out. It’s hugely flawed imho. Never the less we live in a flawed world and we need to do the best we can.
It was established, so far as I know, with the founding of the agency as many agencies seem to have this power, and they had it before the founding of the “PTO” as such. If you’d like a specific reference to at least its existence then you can look at the quotes from the APA above. I wouldn’t be half surprised if the APA itself mentions it being established. But, then again, iirc the article above discusses its creation and I don’t recall what specifically it was. So, I guess for its formal establishment you’ll have to tune in next week for “e6k does your hw for you”.
You really should read through that article, it reads like a great history lesson for all. It touches on a wide variety of issues of potential interest to you pds. One I recall had to do with how gov. functions that were once definitely a privilege, to be revoked at the whim of an agency, became fancied as being more of a right. How I do wish he would have gone into that topic further. It seems that many of our topics of conversation are indeed older than the hills, I wish the history were more widely available and easily accessible. Perhaps you guys know of some truly excellent law history sources, even in old school library form around DC?
“No, the only problem is that you’re attempting to overrule a properly established administrative tool that was specifically implemented to allow the office to serve the public more efficiently and prevent it from achieving its goal. Even when it was properly utilized it seems.”
Funny that … could you point to me where this “properly established administrative tool” is found in the CFR? Also, could you explain how this tool was “properly established”?
You may think an examiner taking official notice is substantial evidence, but like I mentioned earlier, any competant (or even incompetant) litigator would reveal the flaws in the notion that an examiner’s opinion qualifies as substantial evidence. Granted some examiners might be able to survive a good cross-examination without looking like a fool. However, most won’t.
“Is the agency deemed to have “expertise” in all the technologies being examined? No.”
Unfortunately, that’s a yes. But I agree that we fall far short of the mark in a huge number of instances. None the less, the gov is doing the best it can with what it is given. Iirc, the goal is to have a bunch of 15 yr+ examiners working in every AU and having been in that AU the whole time and to have them doing the majority of the work and looking over all the rest of the work. They’d have to try pretty hard to not be an expert in their field by that time. Believe it or not, even as is we at least try to have someone with the necessary expertise look over the app before allowance. As far as I’m aware, even primaries do this quite often if they know there is a good chance the app is outside their expertise. Remember, expertise is a big reason for applications being routed to the proper AU via transfers. Anyone can classify an application in anyone of the classes, but sending it to the right AU results in better examination. I can tell you this much, applications I go over are 95% of the time after all the transferring is done and it is my area of expertise. Also, you could put any primary from my unit on the stand as an expert any day of the week and I’m confident they’d do just fine.
“Let’s look at this from another point of view … if the PTO were experts, as you imply, then all examiners would ever have to do is prepare an affidavit, say that all the claimed elements were anticipated/obvious, and we would be done with examination.”
Remember, we’re not all experts, the office is fallible, but we try. Besides, we’re not “allowed” to view your case as an expert in that art would, especially in determining obviousness, and except in instances of wholly common knowledge instances. If we did that then we’d rofl our mao on nigh on every case (not that I don’t anyway). We have to view it as though we feel a POSHITA would. And, as you have rightly pointed out many times, we are Not POSHITA. Apparently even I, a recent grad, am far and away above a POSHITA in my art.
“I don’t have to disprove it, I just have to disagree.”
True, but best to explain that to the extent that it makes any sense beyond just being “I don’t agree”, or even “I don’t agree that’s instantly recognizable etc.”. That would be because, so far, all I’ve seen is law that states that substantial evidence must be something that a reasonable person would hold as a fact based on the “evidence” being presented to them. There may be a case talking about the instantly recognizable etc. being proper but that doesn’t preclude other instances of it being used being proper so far as I can tell.
“As for “why I’m disagreeing,” all I would ever write is that “Applicant disagrees that the Examiner’s assertion of X is capable of instant and unquestionable demonstration as being well-known.”
Heck, even that might suffice. But, then again, if you don’t say why you feel that way then it’s up to the examiner to decide what to do with you since that may or may not be kind of weak depending on the circumstance. And of course, if you said that, and the court deemed that you did not say that in good faith come litigation time … well, gl.
“If the fact is capable of “instant and unquestionable demonstration as being well-known,” then that shouldn’t be the problem.”
No, the only problem is that you’re attempting to overrule a properly established administrative tool that was specifically implemented to allow the office to serve the public more efficiently and prevent it from achieving its goal. Even when it was properly utilized it seems.
“I agree with most of what you say PDS, except that you must remember, the agency was established with the intent to create an agency with the expertise to treat the matters before it. That is, they were specifically created to be an expert institution. While attorneys may very well be experts, they are not entrusted with any sort of federal authority as the agency has been. Thus, the office’s word is specifically taken to be coming from an expert agency with authority. The attorney’s lack of authority is what kills his arguments being able to be substituted for factually supported objective evidence.”
I don’t have a problem with much of what you say but you import the agency’s expertise into too much. Is the agency deemed to have expertise in searching and examination? The answer is yes and yes. Is the agency deemed to have “expertise” in all the technologies being examined? No. Some examiner’s have expertise in certain technologies, but as an institution, the PTO is far from experts in the technology. What we are talking about is being an expert in the technology.
If I was to put the average examiner on the stand as an expert witness in a patent litigation trial, do you really think that the jury is going to believe that the examiner is an expert in the technology. I could imagine the field day that opposing counsel would have during cross. After opposing counsel got done, the average examiner would be reduced to a quivering mass of protoplasm.
Let’s look at this from another point of view … if the PTO were experts, as you imply, then all examiners would ever have to do is prepare an affidavit, say that all the claimed elements were anticipated/obvious, and we would be done with examination.
“I agree with this as well, except for the use of the word “object”. A more proper word would be refute. And, if my official notice is refuted I will withdraw it and find a ref.”
Refuse or object … regardless or the term … I don’t have to disprove it, I just have to disagree. The fact that I’ve disagreed means that a prima facie case has not been made, and thus, the burden has not been shifted to applicant.
“I agree with this, but they must say why they disagree. If they do, fine. To date, I have not had one app have the balls to even merely say they disagree with my official notice. I might even let them off with doing that. But they tip toe around it.”
When you say “they must say why they disagree,” you are making the assumption that the burden has shifted to applicant to rebut. I’m saying that the burden has not been shifted, which means that no explanation from applicant is necessary. As for “why I’m disagreeing,” all I would ever write is that “Applicant disagrees that the Examiner’s assertion of X is capable of instant and unquestionable demonstration as being well-known.” I haven’t asserted that the fact isn’t true, I’ve just asserted that I don’t believe that the officially noticed fact is of such a character that it is capable of being officially noticed.
“The applicant can object to these pronouncements but is the burden then on the office to “prove” to the applicant that the office’s “official notice” is reasonable? To whose satisfaction?”
Of course the burden is on the PTO to prove that the official notice is reasonable by producing evidence. Also, once the evidence is produced, there is no need for official notice. If the fact is capable of “instant and unquestionable demonstration as being well-known,” then that shouldn’t be the problem. It is to the applicant’s satisfaction … but once the evidence has been produced, it is evaluated like all the other evidence that has been presented.
“e6k, I’m talking about the situation where the Office takes official notice that “bigfoot does not exist.” If the applicant says “prove it,” then what is the Office to do?”
I see where you are taking this … saying that PTO has failed to produce evidence that “bigfoot does not exist” does not necessarily lead to the conclusion that “bigfoot does exist.”
“e6k, I’m talking about the situation where the Office takes official notice that “bigfoot does not exist.” If the applicant says “prove it,” then what is the Office to do?”
If the applicant says “prove it” then the office would stick with the official notice being substantial evidence and move ahead. If the applicant said “I don’t think that a reasonable person would believe that, and here’s why…” then the office would at least have to find some news article stating bigfoot doesn’t exist.
Serious and deeply practical question from that last commentator, for which I for one in Europe am grateful. The lawyer’s cry “prove it” should not be allowed to frustrate the objective of a patent system that meets the needs of the US public. BTW, never really understood the unique advantage the USA gets from having drafting and prosecuting done by attorneys at law. In ROW, patent practitioners struggle to pass the tough qualifying exams of a profession in its own right, and thereafter take pride in top professional standards, in a profession of their very own, in which we argue on Monday for allowance and, on Tuesday, in another case before the same tribunal, for revocation of the claim we say is invalid. Over here, we would be embarrassed to come out with all this absurd “Prove it” stuff. Any answers?
e6k, I’m talking about the situation where the Office takes official notice that “bigfoot does not exist.” If the applicant says “prove it,” then what is the Office to do?
can the applicant simply demand that the examiner provide support for his official notice without saying anything more?
I agree with most of what you say PDS, except that you must remember, the agency was established with the intent to create an agency with the expertise to treat the matters before it. That is, they were specifically created to be an expert institution. While attorneys may very well be experts, they are not entrusted with any sort of federal authority as the agency has been. Thus, the office’s word is specifically taken to be coming from an expert agency with authority. The attorney’s lack of authority is what kills his arguments being able to be substituted for factually supported objective evidence.
“Once applicant objects, however, the gig is up and the examiner has to rely upon factual evidence, not upon the examiner’s subjective belief as to what is a fact.”
I agree with this as well, except for the use of the word “object”. A more proper word would be refute. And, if my official notice is refuted I will withdraw it and find a ref.
“you, the examiner, have failed to establish a prima facie case because I disagree with your official notice.”
I agree with this, but they must say why they disagree. If they do, fine. To date, I have not had one app have the balls to even merely say they disagree with my official notice. I might even let them off with doing that. But they tip toe around it.
“What about the situations where the official notice relates to negative opinions that can’t be proven in the strict sense? e.g., “there are no such things as ghosts,” “bigfoot does not exist,” “third party prayer is not therapeutic” or “homeopathic dilutions are not active”?”
The applicant can refute the official notice and assert a reasonable person would not necessarily believe such things. I would say a SPE should be sufficient to get the examiner to get a reference in any of those situations. Indeed, I would think nearly all examiners would get a ref anyway as the off notice was not properly taken in the first place.
“The examiner’s officially noticed fact becomes “substantial evidence” only AFTER applicant has not objected.”
What about the situations where the official notice relates to negative opinions that can’t be proven in the strict sense? e.g., “there are no such things as ghosts,” “bigfoot does not exist,” “third party prayer is not therapeutic” or “homeopathic dilutions are not active”?
The applicant can object to these pronouncements but is the burden then on the office to “prove” to the applicant that the office’s “official notice” is reasonable? To whose satisfaction?
A nice little riddle for 6K and MVS …
If an examiner’s pronouncement as to facts (i.e., official notice) is (allegedly) substantial evidence, shouldn’t an attorney’s pronouncement as to facts should also be considered substantial evidence? Unlike an examiner, a patent attorney is subject to 37 CFR 10.85(4). This means that a patent attorney’s pronouncement as to a fact (which is knowingly false) has a serious consequence to the patent attorney.
After you’ve thought about this for awhile, I’ll direct your attention to MPEP 2145. The first paragraph is reproduced below:
>If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
You’ll notice that last part about “arguments of counsel.” The reason why arguments of counsel cannot take the place of factual evidence is the same reason why arguments of the examiner cannot take the place of factual evidence … because the law treats these subjective pronouncements as to facts with skepticism. However, if the examiner takes official notice as to a fact that is capable of instant and unquestionable demonstration as being well-known and applicant doesn’t object, then that official notice will be taken as a fact. Once applicant objects, however, the gig is up and the examiner has to rely upon factual evidence, not upon the examiner’s subjective belief as to what is a fact.
Getting back to my earlier-made point (which nobody addressed) is that the burden of establishing a prima facie case has not been made (and thus the burden to respond has not been shifted to applicant) until applicant accepts the examiner’s pronouncement as to official notice. If the applicant does not accept the examiner’s pronouncement as to official notice, then the prima facie case has not been made. Thus, there is no requirement for applicant to say anything other than “you, the examiner, have failed to establish a prima facie case because I disagree with your official notice.”
Let me distill this down even further.
The examiner’s officially noticed fact becomes “substantial evidence” only AFTER applicant has not objected.
I don’t plan to but I need $$$ for school you know. Make that $$$$$$$$$$$$$$$. Or find a firm I want to indentured servent my soul out to for ~8 years. I’m quite sure you know seeing as you spent quite some time here before making the switch yourself.