Ex parte Yamaguchi (BPAI 2008)(Precedential Opinion)
In prosecution, the Examiner cited the Narayanan reference against a Texas Instruments patent application filed by Yamaguchi. The rejection identified Narayanan as prior art under 35 U.S.C. § 102(e). The issue on appeal to the BPAI was whether the Narayanan reference can be considered 102(e) prior art as of the filing date of its provisional application.
Section 102(e) allows for submarine prior art – these are typically pending US patent applications that, when published or patented, suddenly become prior art as of their filing date. The statute allows that “[a] person shall be entitled to a patent unless . . .the invention was described in . . .a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.. . .” 35 U.S.C. § 102(e).
102(e) Provisional: The issue here is whether Narayanan’s provisional application can be used in 102(e) analysis. The expanded BPAI panel agreed with the examiner that the 102(e) prior art date does reach-back to the date of provisional filing. This result is based on their analysis of 35 U.S.C. § 111(b). Section 111(b) requires that “provisions of this title relating to applications for patent shall apply to provisional applications for patent.”
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“Based on this express intent to apply the provisions of Title 35 relating to “applications for patent” to provisional applications (except for four enumerated sections noted in §111(b)(8)), a provisional application can therefore be reasonably considered an “application for patent” within the meaning of §102(e). The plain meaning of these provisions of Title 35 as noted above is outlined in MPEP 2136.03(111) for establishing the critical reference date under §102(e) of a U.S. patent or U.S. application publication that is entitled to the benefit of the filing date of a provisional application under §119(e). Based on the statutory scheme of Title 35, we hold that Appellants have not shown harmful error in the rejections on appeal.” |
This holding is in tension with the controlling precedent of In re Wertheim, 646 F.2d 527 (CCPA 1981). In Wertheim, the CCPA held that for a continuation-in-part application, the parent’s filing date may serve as a §102(e) date, but only if the parent contains full §§120 and 112 support for the disclosure.
In this case the Examiner found that the Narayanan provisional application fully supported the eventual publication – and thus that the 102(e) date for narayanan was the filing date of the provisional. The applicant was unable to disprove these findings and the BPAI affirmed the rejection.
You are not going to win on either point.
Sincerly,
6
P.S. If you would like to place a wager, you may reach me at examiner6k@yahoo.com. I will wager up to 10k dollars. This is not a joke.
P.P.S. If you do place a wager with me, I would like to file an amicus brief.
I am appealing In re Yamaguchi at the CAFC, and taking the positions that:
(1) a provisional application has an effective date as a reference under 102(e) not as its filing date, but either (i) as of the filing date of the non-provisional if the provisional is incorporated by reference, or (ii) as of the publication or issue date of the non-provisional if the provisional is not incorporated by reference.
(2) if only the provisional has an effective date before my claim, that the PTO must compare the provisional to my claim — not the non-provisional and then “assert” that the limitations are “supported” by the non-provisional. In other words, if the provisional date beats my date, assert the provisional against me — not the non-provisional.
If you would like to help me with this appeal or if you would like to file an Amicus brief, please call me at my office – 732-578-0103 x211.
Jason Paul DeMont, Patent Attorney & Member
DeMont & Breyer, LLC
jpdemont@dblaw.com
“1. Section 102(e) expressly requires that the cited patent be “a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” The application filed is not the Provisional, because no patent can be granted from a Provisional.”
Um so what? You were rejected because of the 102e reference not the provisional that gave that reference a great date.
“2. Section 111(b) requires “a specification as prescribed by the first paragraph of section 112 of this title.” If the spec of the Provisional is different than the application filed, then 102(e) requirements aren’t necessarily met.”
No kidding?
“3. The Patent Office has taken the position that the 102(e) reference gets the Provisional filing date, no exceptions. ”
Um no we don’t. Unless someone that sent you an action did. In that case, that particular examiner was wrong. If there is a substantive difference that affects the elements of your claims then bring that difference up, and the rejection will be withdrawn.
There is no issue to argue. You all straight skipper?
“I think the PTO’s interpretation of the statute is wrong.”
I think their interpretation of 35 USC 111(b)(8) is correct. A provisional application is an “application for patent” for all sections of 35 USC except sections 115, 131, 135 and 157.
“3. The Patent Office has taken the position that the 102(e) reference gets the Provisional filing date, no exceptions.”
I agree with Mooney. That is not the PTO’s position. The PTO’s position is that any subject matter in the non-provisional that is supported by the provisional will have an effective filing date as of the provisional.
“I would love to argue this issue in court some day.”
Why? It’s a loser.
“3. The Patent Office has taken the position that the 102(e) reference gets the Provisional filing date, no exceptions.”
That’s not my experience.
Skipping all the babble above, I’ve encountered this situation many times, and raise the following points:
1. Section 102(e) expressly requires that the cited patent be “a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” The application filed is not the Provisional, because no patent can be granted from a Provisional.
2. Section 111(b) requires “a specification as prescribed by the first paragraph of section 112 of this title.” If the spec of the Provisional is different than the application filed, then 102(e) requirements aren’t necessarily met.
3. The Patent Office has taken the position that the 102(e) reference gets the Provisional filing date, no exceptions. To the extent the BPAI backs it up, but that doesn’t mean that the Patent Office will win this issue in court, especially if the Provisional has a different written description from the application.
The way I’ve handled this issue is to point out the conflict in dates (when the application is filed after, but the Provisional is filed before the applicant’s EFD), cite to the Provisional when arguing to overcome the reference, and completely ignore the publication/patent cited.
I would love to argue this issue in court some day. I think the PTO’s interpretation of the statute is wrong.
Does anybody know of any supporting cases?
There you go again, Eye. You’re not thinking dispassionately. Any patent system under the sun promotes the progress by getting “invention” out to the public as early as it is possible to achieve. If a FTF disclosure is non-enabling or insufficient, the filing is invalid. Skimpy US provisionals won’t survive under FTF. It is US FTI, not FTF, that mischievously leads inventors on, to file non-enabling disclosures. FTF is consistent with the public policy objectives of a patent system: FTI doesn’t. If ever the academics needed an example of the “confirmation bias” to show how it affects not just individual politicians but also an entire profession of highly intelligent people (US patent lawyers) they could look at the way FTI is defended.
Babble Boy, I predict a big future for you in grammar checking posts. Guess if you can’t make law review, it’ll have to do.
Too bad you can’t put a little more of that kind of critical effort into your thinking. FTF, even by your own analysis, is taking the easy way out, something I try never to do. There is always a high price to pay for taking the easy way out. In this case its giving credit to the proper party, based on evidence and due process, for actual invention.
When the facts are on your side, argue the facts.
When the law is on your side, argue the law.
When neither is, argue procedure?
I suggest that if the PTO is not going to include a copy of the provisional application with the OA that it include a form paragraph advising the Applicant (not all of whom are patent attorneys) how one can be obtained.
“This is dumb.”
I have to agree with this first part
“The non-provisional pub. or patent is a reference. It has a date as an application and as a pub.”
Can’t argue with that.
“The provisional is a reference (because the app. exposed it and gets it published). It has a date as an application only.”
I think you have that backwards. I assume you were trying to say it has a date as a 102(b) reference only. The Board just found it has a date as a 102(e) application, too, oddly.
“They don’t get each other’s dates.”
119 and 120 say otherwise. Of course, the court in In re Hilmer forever ago said that “shall have the same effect” in 119 doesn’t mean what it says, i.e., it doesn’t apply to 102(e).
“The Examiner applied the disclosure of the non-provisional using the date of the provisional, arguing the later disclosure was fully supported.
That’s dumb. The only rational, defensible, procedurally sound way to do that is to use the actual provisional disclosure directly with its own date. There is no reason not to do that.”
Provisional applications aren’t published under 122(b) and, thus, aren’t 102(e) art all by themselves.
“So that’s what should have been sent back for a redo. The Examiner applied the wrong reference. If he applies the right one, the rejection is good. But he didn’t do that.
This appeal really was a time waster (all the defenses ultimately doomed), but it looks like the BPAI whipped up some bad law too.”
I have to agree with that last part, too.
“Terse and conclusory statements are not findings of fact. They are certainly not sufficient to shift the burden to applicant.”
LOLOLOLOLOL, what do you want?
“As another poster noted, if the examiner’s “finding of fact” was sufficient, why did BPAI feel the need to perform the analysis for the examiner?”
Oh, so you want an ANALYSIS of the prov matching up to the nonp? You sir are out of your mind. The way he said it is irrelevant “It’s all there and matches up” or “I have found that each and every item in the provisional that was relied upon in the nonp and thus conclude from these facts that the rejection is proper under 102e, btw, here’s a chart”. I bet you do this dmb sht in your practice too don’t you? Quickest way to a final and a trip to the board where you will be summarily executed.
Here for your sake I’ll spell out for you the reason the BPAI felt the need to provide an analysis. It was because the applicant specifically challenged, even after he saw the prov, that it had all the elements relied upon in the rejection. And NOTE, he did not say what specific thing were missing, this whole board case spawned out of the examiner not holding this guy to the fire and holding his response noncompliant. If it were me, I would have responded to the applicant that he must state the specific things missing in the prov when I wrote the final just so that I was generous and didn’t hold him noncompliant without warning, and then, when he AF responded then I would match up the items he felt were missing, or hold him noncompliant depending on if he complied or not. But that’s just me.
For a lawyer, your ability to grasp what was going on in caselaw seems rather weak since even I, totally untrained, am running circles around you. Then again, I’ve made a habit doing that for lawyers lately, so don’t feel bad. I’m still waiting on some Bilski satisfaction as well as an overturning of Judge C’s nonsensical analysis of the final rules.
You’ll notice that I’m purposefully not responding to your comments about my being cavalier because they have been addressed at length on this board already.
See this?
“The Examiner indicates that Appellants failed to show any inconsistencies between the subject matter relied upon to make the rejections
and the provisional application.”
That means it was time for noncompliance, not time for an examiner’s answer.
Also, your thinking that an analysis is the only way to fact find is rather hilarious. As has been put down many a times on here, if the fact is put on the record, in any shape form or fashion, it has been found. This includes official notice. This also includes citing references but not applying them in a rejection. It probably even includes making a statement in an interview summary.
Don’t know who that “somebody” above is, but it’s not me. So I’ll respond to e-dummy-k.
Terse and conclusory statements are not findings of fact. They are certainly not sufficient to shift the burden to applicant.
As another poster noted, if the examiner’s “finding of fact” was sufficient, why did BPAI feel the need to perform the analysis for the examiner?
BTW, I noticed you didn’t respond to me regarding your cavalier attitude when it comes to wasting the applicant’s time with improper rejections. Probably because that’s how you make your production. Pump out garbage and expect the applicant to clean up after you.
You’re exactly what you’ve been trained to be. A lazy, ignorant, and insolent “public servant.”
Congratulations.
This is dumb.
The non-provisional pub. or patent is a reference. It has a date as an application and as a pub.
The provisional is a reference (because the app. exposed it and gets it published). It has a date as an application only.
They don’t get each other’s dates.
The Examiner applied the disclosure of the non-provisional using the date of the provisional, arguing the later disclosure was fully supported.
That’s dumb. The only rational, defensible, procedurally sound way to do that is to use the actual provisional disclosure directly with its own date. There is no reason not to do that.
So that’s what should have been sent back for a redo. The Examiner applied the wrong reference. If he applies the right one, the rejection is good. But he didn’t do that.
This appeal really was a time waster (all the defenses ultimately doomed), but it looks like the BPAI whipped up some bad law too.
Halloweenie,
Re: “… the sentence is intended to thank you …”
You were kidding about that, right?
Dear Mr. Halloweenie,
Let me add that litigation is my sport-of-choice, much more exciting than baseball, or even football (¢¿©).
I’m not saying pissant Babbel Babel Boy, who doesn’t even spell his pen name consistently yet he corrects other’s grammar, is worth suing, but he may be. If it turns out he is Just a poor smuck with no money, which I suspect is the case, why, that would reduce the value of the lawsuit.
“The point, 6k, is that in order to shift the burden, the examiner MUST look at the provisional.”
Where does the BPAI say anything differently? Nowhere.
I’ll quote this for you so that you’ll stop shtting your pants.
“Although the Examiner’s statement regarding the correspondence between the Narayanan patent and its underlying provisional application is
somewhat terse and conclusory, the Examiner nonetheless found that both documents “clearly show the same subject matterm-a factual finding. By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.”
Also, I believe you’ve now given up on your original argument.
“At the bottom of page 18, the BPAI states that the examiner is not required to provide the applicant with a copy of the provisional application. Huh? Have these dolts ever read 35 USC 132(a)? The examiner can simply allege (i.e. make a terse and conclusory statement) that the portions of the non-provisional being relied on are supported by the provisional’s filing date, but doesn’t have to supply the evidence that proves it? The arrogance and laziness of these unworthy “public servants” is simply astonishing.”
As we can very well see, none of your statements point out anything wrong about the system and all is well. Except perhaps your head. Take the rest of your trolling elsewhere alright?
Dear Mr. Halloweenie,
Re:
“There’s simply no false statement here.”
Wrong – the statement is pejorative, and it is false.
Calling a rightfully proud inventor a “troll” is wrong, a tort. Even if I didn’t win my case, I may feel compelled to litigate to attempt to clear my pen name, my pseudonym, and the case might set precedent.
And besides, it would make for an interesting chapter in my forthcoming book, perhaps to be titled:
“I’m Just an ordinary inventor™
&
I have ‘the exclusive Right’”
JAOI, I see no libelous smear in the use of the word “JAOTroll”. There’s simply no false statement here. In fact, he states he was wrong about Arial and you had sharp eyes. You would never win this case, especially when the sentence is intended to thank you for correcting his error.
I recommend more of the alcohol for you, so that you can take these comments the way they should be taken – as someone else’s random thoughts that they’re willing to waste time typing out.
Dear Mr. Babel Boy,
Re:
“As one obsessed with defamation, did you ever wonder if your maledictions are actionable?”
Of course I did. With all due respect, calling a jerk an asswhole is defensible – especially if he is dumb enough to put his defamation in writing.
Slurring an accomplished inventor and business man a “troll” is not defensible. Admit it, you don’t know squat about libel – you are a genuine dyed-in-the-wool asswhole!, aren’t you?
As far as revealing my identity, please, you first, by all means. Then I’ll call you and reveal my identity, and that’s a promise.
Here’s what I wrote to SF on the tediously long thread:
* * * * *
Dear SF,
Re:
“JAOI: Did it occur to you, before launching into your off-topic rants, that the term “troll” has multiple meanings?
link to en.wikipedia.org
”
Your point is well taken, touché. I admit, I have been known to go off topic, as do many other interesting commenters. However, I was directly on topic, Professor Crouch’s new format, and I was most respectful at that, when Babel Boy first libeled my pseudonym, and he repeatedly made libelous remarks.
In context, Babel Boy’s initial use of “JAOTroll” was clearly to sully one of my obviously-related two pseudonyms with “patent troll,” and his smear came out of the blue without rhyme or reason to an undeniably appropriate response to I made to his comment. I corrected his spelling error. I guess that miffed him – some people are so frail and feeble minded they cannot take correction.
I wrote:
“Dear Mr. Boy,
With all due respect, there are no fonts named “Ariel.”
link to en.wikipedia.org
“Monotype’s Arial, designed in 1982, while different from Helvetica in some few details, has identical character widths, and is indistinguishable by most non-specialists.”
(From: link to en.wikipedia.org)
Posted by: Just an ordinary white rabbit(TM) | Oct 05, 2008 at 06:34 PM ”
And Babel Boy responded with this libelous smear:
“(BTW, thanks to JAOTroll for correcting me on ‘Arial.’ Sharp eye, that guy.)”
Thank you SF for your comment.
It gave me the opportunity to make my case and hopefully begin to restore my good pseudonyms.
I now rest my case.
Does anybody know if there has ever been a case of interstate libel in regard to pseudonyms?
Not to rattle JAOTroll’s ™ cage again, but, whew, to quote the Stranger in The Big Lebowski: “Do ya’ have ta’ use so many cuss-words?” You certainly do employ a foul vocabulary, Troll. As one obsessed with defamation, did you ever wonder if your maledictions are actionable?
Besides, I have it on good authority that you are a fake. You keep moaning about all of these patents you have obtained, but you have never given us a single example. Please post a patent number of one of your terrific advances in technology so we can check your self-aggrandizing claims to be an “inventor,” ordinary or not.
As for AllSeethingEye, who said:
“Babble Boy, you have no idea what you’re talking about do you. ”
You badly need someone skilled in 4th grade grammar to proof your posts. Did you mean to say:
“Babble Boy, you have no idea what you’re talking about, do you?”
AllSeething, please give us your opinions — grammatical or not — as how my views of the f-t-i system are flawed. If you need cuss-words to make your points clear, you may call JAOTroll(tm) for one of your lifelines.
“Let us not forget that it is, after all, the examiner’s burden to prove that the claimed invention is not patentable.”
Not anymore, according to BPAI.
A non-provisional may be as different from the provisional as a CIP may be from the parent. I had one case where the examiner cited a CIP patent and, of course, the parent filing date. I had to obtain a copy of the abandoned parent case just to show that there was no support in the parent. If the examiner is going to rely on the provisional filing date then he should provide a copy of the provisional. Let us not forget that it is, after all, the examiner’s burden to prove that the claimed invention is not patentable.
Dear SF,
Re:
“JAOI: Did it occur to you, before launching into your off-topic rants, that the term “troll” has multiple meanings?
link to en.wikipedia.org
”
Your point is well taken, touché. I admit, I have been known to go off topic, as do many other interesting commenters. However, I was directly on topic, Professor Crouch’s new format, and I was most respectful at that, when Babel Boy first libeled my pseudonym, and he repeatedly made libelous remarks.
In context, Babel Boy’s initial use of “JAOTroll” was clearly to sully one of my obviously-related two pseudonyms with “patent troll,” and his smear came out of the blue without rhyme or reason to an undeniably appropriate response to I made to his comment. I corrected his spelling error. I guess that miffed him – some people are so frail and feeble minded they cannot take correction.
I wrote:
“Dear Mr. Boy,
With all due respect, there are no fonts named “Ariel.”
link to en.wikipedia.org
“Monotype’s Arial, designed in 1982, while different from Helvetica in some few details, has identical character widths, and is indistinguishable by most non-specialists.”
(From: link to en.wikipedia.org)
Posted by: Just an ordinary white rabbit(TM) | Oct 05, 2008 at 06:34 PM ”
And Babel Boy responded with this libelous smear:
“(BTW, thanks to JAOTroll for correcting me on ‘Arial.’ Sharp eye, that guy.)”
Thank you SF for your comment.
It gave me the opportunity to make my case and hopefully begin to restore my good pseudonyms.
I now rest my case.
Does anybody know if there has ever been a case of interstate libel in regard to pseudonyms?
“So you get a 2nd action non-final. Ooooo noes. I actually do look at the prov to see if it’s supported. And of course the BPAI says you can look and see if it’s in there. The same way you can look and see if your subject matter was in the non-prov. If you think this is an invitation to not look it up as an examiner you sir, are as rtarded as you allegedly have found one examiner to be. The difference being, you haven’t demonstrated incontrovertibly that the examiner was as bad as you are here. Bad rejections happen. Worse responses happen. Get over it.”
The point, 6k, is that in order to shift the burden, the examiner MUST look at the provisional. If the material in the published app or patent is not supported by the provisional, the first rejection should never be made, let alone the second non-final action.
Your pathetic attitude is exactly why the backlog is a million cases and pendency is 3+ years.
So what’s the big deal about a second action non-final? The big deal is applicants’ patent terms should not be shortened by examiner laziness.
“Provisional applications are never published. They become available through PAIR, but they are never published.”
Dear Dinosaur: Available through (public) PAIR = published.
Welcome to the 21st century! (How was the snooze?)
AllSeeingMooney — Truce?
Steve M upthread (Oct 23 at 09.23) pointed out the puzzle that, if the Exr spots a possible attack on a claim, you would think Applicant would say thanks and patch the weakness. But, not a bit of it. Applicant (Texas Instruments) leaves the claim untouched and writes back to the Exr some non sequitur about the provisional being not word for word identical with its own later non-pro. Would you want to be the author of a lame file history is that, when it goes under the litigation spotlight? And then our prosecutor embarks on his journey to the BPAI. I can imagine what the TI prosecutor running this case, would say to Steve M, if they were ever to discuss the case in real life, face to face, but can the TI prosecutor justify his fees to his client, and is the Presumption of Validity really a “good thing”?
“JTS, they are secret unless someone claims back to them. You will not be able to find them.”
Wrong again, 6000. JTS specifically referred to provisionals that were referenced in a published application, but not were not claimed as priority documents. Why don’t you go look up what the real rules are regarding this situation before you comment.
By the way, do your superiors know that you’re handing out advice on patent office regulations and policy?
nice try duckworth. Its not working. Everyone can tell that, if anything, Mooney is pulling your strings and has nothing to do with me. As I’ve said before, I can understand you both trying to co-opt my piercing vision. Now go back to your crappy website or you wont get those checks from RIM.
“mind-numbing stupid1ty of the first to invent system”
Babble Boy, you have no idea what you’re talking about do you. As much as I would tend to give you a lot of credibility when it comes to things related to mind-numbing stupidity, I’d say in the case of U.S. first to invent system however, you are being characteristically mind-numbingly stup1d.
“I have spent 30 minutes trying to find the PPAs of some of our cases that have published and I don’t see a thing on PAIR that hints of a PPA.”
The problem, I expect, is at the data-entry level at the USPTO.
I recommend claiming priority using the USPTO’s form-fillable Application Data Sheet, which (usually) auto-loads the priority information so that the continuity data tab in PAIR links to the PPA. It’s pretty slick and, being something provided by the USPTO, it’s pretty impressive.
Of course, you should also claim the same priority in the specification. But if you only do it in the specification, you’re leaving it up to the data-entry people at the USPTO to get the priority (and thus the continutity data tab) correct.
JAOI: Did it occur to you, before launching into your off-topic rants, that the term “troll” has multiple meanings?
link to en.wikipedia.org
Hello metoo,
Re: “he called you names.”
Oh yes it is; perhaps you’d like to join the fray to voice your opinion?, who ever you are?
Actually, JAOI, you are precisely one of the people I was talking about. Some of your posts in this thread are clearly inappropriate and evidence a lack of civility. I undertand that another poster made you angry – he called you names. But that is no justification for your posts.
Hi metoo,
I couldn’t agree more; you make my case regarding some jerk calling a well-known pseudo-named commenter a “troll”, clearly a pejorative term, especially in this IP blog context.
And this jerk Babel Boy claims to be a hi-priced lawyer, while he libels on repeatedly against Just an ordinary inventor™.
Wow. And here I thought this was a blog for mature individuals with an interest in patent law. I guess I was mistaken. There aree a few posters here who really need to learn civility. And I could care less who called who what name. Good grief, this place has become the patent law version of Daily Kos or Free Republic. Start acting like mature professionals.
As usual, more great analysis…
But in the big picture, does it really make any “real world” difference?
Does anyone really want a patent so bad that; presuming here that the provisional does/did in fact support its non-provisional at least with regard to the disputed claims; they’re willing to go through all this knowing that even if issued, an interference or lawsuit will knock their patent/ claims out in the end?
Especially if there’s any commercial value and/or either patent is infringed by others?
Am I missing something here?
Dear commenters other than asswhole Babel Boy,
When you work as hard as I’ve done all my life, it is Just so infuriating for some asswhole Jerk like Babel Boy to cast careless unfounded actionable calumnious aspersions against you on some stupidity of a whim.
So Babel Boy,
Just clam up you dipshit farkin’ asshole– fine by me. Just as along as everyone here knows you are a chickenshit, and have backed off your false libelous accusations.
But if you flaunt you libelous accusations again, nothing you have libelously done is fine by me. You are hereby put on notice.
Max, I believe most of us who call in on this blog from time to time would vote for you for president if you would promise to scrap the US Patent Act, fire the USSCt, and start over. Even if that Tina Fey look-alike were your running mate.
What this world needs is a patent reform wiki where patent prosecutors and examiners can collectively re-write the patent laws.
6000 — With regards to pulling a PPA off PAIR, to quote Walter in the Big Lebowski: “I did not know that.” In fact, I still don’t know it. I have spent 30 minutes trying to find the PPAs of some of our cases that have published and I don’t see a thing on PAIR that hints of a PPA. Do you have to be somebody special? Like an Orin Hatch supporter?
BTW, I grit my teeth every time I have to check that wee box saying I’ve read some bone-head statute about exporting intellectual property. This strikes me as illegal, but I can’t put my finger on a reason why.
Dear anonymous,
I think I did, but I’d guess Babel Boy is Just a chickenshit.
“How dare you! Just who do you think you are to cast an untrue “troll” aspersion against my character? I don’t have to take your kind of crap from anyone, never did!”
Why don’t you challenge him to a duel, Zell?
“As another poster noted, examiners don’t do this.”
So you get a 2nd action non-final. Ooooo noes. I actually do look at the prov to see if it’s supported. And of course the BPAI says you can look and see if it’s in there. The same way you can look and see if your subject matter was in the non-prov. If you think this is an invitation to not look it up as an examiner you sir, are as rtarded as you allegedly have found one examiner to be. The difference being, you haven’t demonstrated incontrovertibly that the examiner was as bad as you are here. Bad rejections happen. Worse responses happen. Get over it.
“Right. Nobody’s ever slammed the DMV or the IRS.”
I didn’t say you have never seen it before, but it’s nowhere near as prolific as the ridiculousness routinely spouted against the office on here.
“e6k, I don’t think it’s enough that Applicants have the ability to access provisionals via PAIR”
Tell it to congress.
“My understanding of 35 U.S.C. § 132(a) requires the Office to provide a copy of the provisional in this case.”
Your understanding is wrong until you get someone with authority to back you up. Why? Because someone with authority says otherwise.
“Since provisionals do not qualify as “published,””
publish: prepare and issue for public distribution or sale;
Figure the past tense out for yourself.
“e6k, I don’t think it’s enough that Applicants have the ability to access provisionals via PAIR.”
As other posters have noted, that isn’t the only way to obtain a copy.
Jaoi are you troll-threatening another poster in a highly troll like fashion?
JTS, they are secret unless someone claims back to them. You will not be able to find them.
“As another poster noted, examiners don’t do this.”
So you get a 2nd action non-final. Ooooo noes. I actually do look at the prov to see if it’s supported. And of course the BPAI says you can look and see if it’s in there. The same way you can look and see if your subject matter was in the non-prov. If you think this is an invitation to not look it up as an examiner you sir, are as rtarded as you allegedly have found one examiner to be. The difference being, you haven’t demonstrated incontrovertibly that the examiner was as bad as you are here. Bad rejections happen. Worse responses happen. Get over it.
“Right. Nobody’s ever slammed the DMV or the IRS.”
I didn’t say you have never seen it before, but it’s nowhere near as prolific as the ridiculousness routinely spouted against the office on here.
“e6k, I don’t think it’s enough that Applicants have the ability to access provisionals via PAIR”
Tell it to congress.
“My understanding of 35 U.S.C. § 132(a) requires the Office to provide a copy of the provisional in this case.”
Your understanding is wrong until you get someone with authority to back you up. Why? Because someone with authority says otherwise.
“Since provisionals do not qualify as “published,””
publish: prepare and issue for public distribution or sale;
Figure the past tense out for yourself.
“e6k, I don’t think it’s enough that Applicants have the ability to access provisionals via PAIR.”
As other posters have noted, that isn’t the only way to obtain a copy.
Jaoi are you troll-threatening another poster in a highly troll like fashion?
JTS, they are secret unless someone claims back to them. You will not be able to find them.
regarding publication of a provisional … isn’t a provisional only made available (published) if an application ultimately claims priority to it? I have tried to find provisionals (e.g., mentioned in apps but never used for priority), never with any luck.
a provisional can be converted to a regular application, which the Board made a note of…
Lionel:
You are correct. When a provisional application is made available online (or otherwise), it is indeed considered a “publication.” For that reason, the provisional application is 102(b) prior art as of the date it is made publicly available. But, that does not mean it’s prior art as of its filing date pursuant to 102(e).
Precisely, BJ. 102(e) is clear in that regard.
Like others, I’ve faced this issue before. It’s an important issue in view of increasing PTO reliance on 102(e) and publications. There is not doubt that a reference patent’s (or pub’s) provisional date can be used with 102(e). The statute is so clear it’s a wonder why the Board spent so much time on this issue.
The tension with Wertheim is not with the applicability of the provisional, but rather the burden of proof. The importance of this opinion is on who has the burden of proof. On this, the opinion is not clear. On one hand the opinion states at its crux:
“In the anticipation rejection, the Examiner’s factual findings pertaining to Narayanan relied principally on Figures 2, 3, and 7 of the reference (Ans. 4). Furthermore, in response to Appellants’ challenge (App. Br. 4) that no showing was made as to whether the provisional application properly supported the subject matter relied upon to make the rejection in
compliance with 5 112, first paragraph, the Examiner found that the provisional application “clearly shows the same subject matter as applied from the Narayanan et al. patent in the art rejections of the present
application” (Ans. 7; emphasis added). The Examiner also noted that the provisional application was readily available in the PAIR system (Id.)
Although the Examiner’s statement regarding the correspondence between the Narayanan patent and its underlying provisional application is
somewhat terse and conclusory, the Examiner nonetheless found that both documents “clearly show the same subject matterm-a factual finding. By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.”
Here the Board seems to accept that the Examiner met his burden of proof of showing how the provisional supports the rejection. Yet on the other hand, the Board goes on to actually perform the analysis of the provisional and demonstrate factual support in the provisional.
WHY would the Board do this if the Examiner’s burden had been met? My take on the case is:
1) the Examiner doesn’t meet the Wertheim duty of showing support in the provisional with a conclusory statement
2) if the Examiner doesn’t meet the Wertheim duty, the issue is *petitionable*
3) practically, the Applicant must obtain the provisional if possible and perform the analysis before arguing the issue (whether on appeal or with the Examiner). As seen in this appeal, IF the Examiner’s rejection is correct but incomplete/conclusory, it is viewed as harmless error. This is what an Applicant ought to do anyway if they have any concern for the validity of the resulting patent.
It all leaves me wondering: if you show one claim feature is not found in the provisional, does the burden shift to the Examiner to show detailed support in the provisional for the other claim features? Because, as the Board said, the Examiner’s conclusory finding of support “shifted the burden to Appellants to show why such a factual finding was erroneous”. Can you meet this burden without doing the lengthy analysis performed by the Board?
If so, then the burden imposed by Wertheim is effectively erased, which could really be problematic in some cases, especially where the reference patent is in long chain of priority that includes one or more CIPs.
“Provisional applications are never published. They become available through PAIR, but they are never published.”
Online posting counts as publication.
Sorry for the follow-up, but 102(e) applies to “an application for patent, published under section 122(b)…”
Section 122(b) specifically states “An application shall not be published if that application is … (iii) a provisional application filed under section 111(b) of this title”
I must be missing something if that doesn’t state that provisional applications are not published under 122(b) and thus not “an application for patent published under 122(b)” and thus not prior art under 102(e). The fact that they may be published is irrelevant, since they are not “published under 122(b),” being specifically excluded by 122(b)(2)(A)(iii).
Insofar as applications claiming priority under 119(a)-(d) can’t be used for a 102(e) rejections as of their earliest priority, it seems a bit weird that as application claiming priority under 119(e) CAN be.
Of course, 102(e) says “an application for patent… by another filed in the United States.” So, the question boils down to whether a “provisional application for patent” as defined by 35 USC 111, is considered an “application for patent” as defined by 35 USC 102(e). In construing “patent” with respect to 102(a),(b), and (d), the CCPA held “it is the substance of the rights conferred and the way information within the ‘patent’ is controlled that is determinative. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).”
To reconcile the idea that 102(e) shouldn’t apply with 35 USC 111 which states “provisions of this title relating to applications for patent shall apply to provisional applications for patent” which the board found to be controlling, I would point out that 35 USC 111 also states “provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.” 35 USC 131, relating to examination, states “the Director shall issue a patent therefor” thereby statutorily providing the well-known result that a patent cannot issue from a provisional application for patent. Thus, one could argue that a “provisional application for patent” is NOT an “application for patent” under 35 USC 102(e), which requires an application for specific exclusionary rights.
“Because prov filing is going up and as those ref’s are cited in rejections more and more rejections will want to use that earlier fd. ”
No doubt and provisional filing is only going to go up as the economy goes down.
This is a message to Mr. Babel Boy:
Dear Mr. Boy, i.e., Cat-got-your-big-shot-tongue Boy?,
Cat got your smartass, can’t-afford-your-big-fat-fee, libelous tongue Babel Boy? Did you wait till Tuesday to come out from hiding because I said I’d be away?
Maybe you wanna dance?, or will your partners think that you were an ashole for your unfounded, untrue, inflammatory, ignorant remarks?
How dare you! Just who do you think you are to cast an untrue “troll” aspersion against my character? I don’t have to take your kind of crap from anyone, never did!
With all due respect, I’m not gonna wait forever for you to make amends as I offered! Please respond to my comment on this link (you may have to hit the annoying “next – next” to see my angry, accusatorial, post):
link to patentlyo.com
“Well SF, with the examiners being given an invitation by BPAI to be even lazier than they are now, expect to see quite a few more.”
I don’t see it as an invitation because the Board expressly found that the discussion in provisional was substantially the same as the discussion in the non-provisional. If anything, this will let examiners know that, next time, they need to check the provisional to ensure at least substantial similarity of disclosure. In my case (and apparently in your case), there isn’t any question about similarity because the disclosure relied upon was new, not merely a revision of what was in the provisional.
This case is not really in tension with In re Wertheim – it effectively kills it (at least in the eyes of this panel at the BPAI). This decision is also contrary to In re Lund, another CCPA case. Lund stands for the proposition that subject matter in a parent application which is not included in an issued CIP is prior art on the date the patent issues, rather than the original filing date of the parent. In contrast, the BPAI is now saying that a provisional application is prior art “for all that it teaches” as of its filing date (provided that a non-provisional application claiming priority to the provisional is ultimately published or issued). That’s just plain wrong. Yet, that’s what the BPAI says in this decision.
The BPAI reached this bizarre conclusion that a provisional can be prior art for whatever is in it by calling the filing of a provisional application a “constructive reduction to practice” and therefore the provisional “serves as prima facie evidence that the applicant was in possession of the subject matter disclosed in the provisional application when it was filed.”
Regarding the purported “publication” of provisionals, 37 CFR § 1.211(b) states, inter alia: “Provisional applications under 35 U.S.C. 111(b) shall not be published.”
Since provisionals do not qualify as “published,” it would seem that any provisional relied upon in a rejection would be required to be furnished to applicants as per 35 U.S.C. § 132(a). Accordingly, it appears that the Examiner never met his initial burden, as the provisional was never supplied to Applicant by the Office.
e6k, I don’t think it’s enough that Applicants have the ability to access provisionals via PAIR. My understanding of 35 U.S.C. § 132(a) requires the Office to provide a copy of the provisional in this case.
Well SF, with the examiners being given an invitation by BPAI to be even lazier than they are now, expect to see quite a few more.
“I’m dealing with the exact same situation in one of my cases.”
Me too. It seems to happen every year or two for me.
“The PTO is an administrative agency. DMV f’s up all the time, do you hear people slamming it for their mistakes? Not hardly, they happen. Same goes for the IRS and etc. etc. etc. You just take special offense to the office messing up because you’re jaded, and sometimes they cost money.”
Right. Nobody’s ever slammed the DMV or the IRS.
6k, you’re the dopiest.
“What’s your point?”
Provisional applications are never published. They become available through PAIR, but they are never published.
My point is: if the examiner wants to rely on the provisional priority date of a published non-provisional application or patent, the examiner is required to review the provisional application to determine if it supports the material in the published application or patent that is relied on in making the rejection. That’s called the burden to establish a prima facie case. That burden is not shifted until the examiner establishes that the subject matter in the non-provisional that is relied on is supported by the provisional.
As another poster noted, examiners don’t do this. As I noted, this is because they are lazy. And dumb, I’ll add.
I’m dealing with the exact same situation in one of my cases. 102(e) rejection where the examiner states in the OA that the provisional app date is relied on. Of course, the provisional app does not include any of the subject matter that is in the non-provisional application that the examiner is relying on to reject. The examiner would have seen that if the examiner had bothered to review the provisional. The rejection should never have been made. Typical garbage OA. Of course, BPAI has now sanctioned that garbage with its, “Well, the applicant can get the provisional for themselves and see if the disclosure is in there” decision.
Examining corps: lazy and ignorant.
BPAI: lazy and arrogant.
“Provisionals do not publish with the publication of the non-provisional. You cannot determine what subject matter of a published app or patent is supported by a provisional unless you obtain a copy of the provisional. ”
They do, and just fyi you cannot determine what subject matter of a published nonp app supports a rejection unless you obtain a copy of the published nonp app. What’s your point? That you can’t find prov’s Google patents? That prov’s don’t publish separately from the non? Or can you simply not find a prov that you’re looking for because you do not understand where to look?
“If the examiner is relying on the disclosure of a provisional application to reject, the examiner is required to provide a copy.”
Nobody ever promised you that. Why you assume such a thing is beyond me.
I will agree about the lazy part though. Man, some of those guys could use a little gymin for sure.
“Really? – so your stand is that the Office has done nothing to merit being slammed? Do you really want to lose your credibility with a comment like that?”
The PTO is an administrative agency. DMV f’s up all the time, do you hear people slamming it for their mistakes? Not hardly, they happen. Same goes for the IRS and etc. etc. etc. You just take special offense to the office messing up because you’re jaded, and sometimes they cost money.
“I’ve had to address similar issues several times, where I pulled the provisional from PAIR ”
OH LOOK! Someone found a way to find published provisionals! O M G!
“Congress should amend 111(b) or whatever to give filers of PPAs the option to publish the PPA”
The publishing is a consequence of getting the FD, if they don’t want the prov published there already is an option, don’t reference priority to it. There is no way they get the option to get priority and not publish it. And of course no app in their right mind would give up the earlier FD to simply not publish (unless in some very weird situation).
Babel, what are you waiting on me to explain? You don’t know where to find a prov that published along with its non? The same place as you find anything else that is part of the record of the patent. Are you kidding me? Here I thought you were an attorney who’d been in practice for more than a few years.
I will explain that this is an issue that needs to be decided, firmly (read fed circ), soon. Because prov filing is going up and as those ref’s are cited in rejections more and more rejections will want to use that earlier fd.
Where in the heck is Bilski anyway? That thing is due and I need some lulz.
I always get my published provisionals from PAIR. You guys can petition and whine and fight the power all you like, but really, it’s not that hard to open IE and click a few links.
I wonder what AllSeeingEye will have to say about this? Probably just parrot what his BFF Mooney says.
Babel, I would express your point like this: Everybody knows what a patent system is there for. There’s no dispute about that. Everybody knows that the present US Statute is incompatible (in this day and age) with that public policy objective. So, why not (like Europe did in 1973) just write a brand new Statute that accords with the real world today? Why is it that the aspirations for “patent law reform” amount to no more than sticking a Band-Aid here and there, on a bonkers Statute that cannot withstand rational scrutiny? It’s actually much harder to fashion the Band-Aid than to start with a clean white sheet of paper. Is “transformation” beyond the capabilities of the Land of Unlimited Possibility? Surely not.
somebody wrote, “Provisionals do not publish with the publication of the non-provisional.”
They don’t have to be automatically made public, but the USPTO can [under 37 CFR 1.14(a)(1)(iv)] and usually does make them public. If the USPTO does not, one can file a written request under 37 CFR 1.14(a)(1)(iv).
“35 USC 132(a) requires that the PTO provide the information”
Provisionals can be readily downloaded from public PAIR once a non-provisional claiming the benefit is published.
I believe that what we’re missing here, gentlemen and 6000, is that the entire issue is the result of the mind-numbing stupid1ty of the first to invent system. In a first to file system, there would be no issue as to whether a provision patent application (PPA) establishes a 102 PA date.
Some have complained that such submarine PPAs are a good reason not to have f-t-f in the US. Wrong. This case shows they are a problem with both systems.
Congress should amend 111(b) or whatever to give filers of PPAs the option to publish the PPA. If they choose not to, then the PPA cannot be used as 102 or 103 PA. This might not be valid in a f-t-i system, but it would sure tidy up the problem in a f-t-f.
I am curious about 6000’s assertion that a PPA is published when the non-PPA is published. “somebody” says, rather rudely, tain’t so. I’ve never heard that myself. (Of course the PTO can’t keep PAIR up long enough for anyone to check the record, so the issue is almost moot.)
6000? We’re all waiting for you to explain or eat crow.
I believe that what we’re missing here, gentlemen and 6000, is that the entire issue is the result of the mind-numbing stupid1ty of the first to invent system. In a first to file system, there would be no issue as to whether a provision patent application (PPA) establishes a 102 PA date.
Some have complained that such submarine PPAs are a good reason not to have f-t-f in the US. Wrong. This case shows they are a problem with both systems.
Congress should amend 111(b) or whatever to give filers of PPAs the option to publish the PPA. If they choose not to, then the PPA cannot be used as 102 or 103 PA. This might not be valid in a f-t-i system, but it would sure tidy up the problem in a f-t-f.
I am curious about 6000’s assertion that a PPA is published when the non-PPA is published. “somebody” says, rather rudely, tain’t so. I’ve never heard that myself. (Of course the PTO can’t keep PAIR up long enough for anyone to check the record, so the issue is almost moot.)
6000? We’re all waiting for you to explain or eat crow.
“I’ve had to address similar issues several times, where I pulled the provisional from PAIR and analyzed whether the rejections were supported by teachings in the provisional itself. In most cases, where it is not, the Examiner withdrawn that rejection.”
The examiner should be pulling the provisional and doing that analysis, not the applicant or attorney or agent. If the provisional does not support the rejection, the rejection shouldn’t be made and applicant’s time should not be wasted.
Of course, the examiners are lazy too. They take their cue from the BPAI.
I’ve had to address similar issues several times, where I pulled the provisional from PAIR and analyzed whether the rejections were supported by teachings in the provisional itself. In most cases, where it is not, the Examiner withdrawn that rejection. I’ve got one case currently pending on appeal (IIRC, filed the appeal several months ago) where the Exr maintained the rejection on matter only in the non-provisional, not supported by the 102e provisional. We’ll see what happens.
Sorry to chime in but (a) it was always intended that a provisional application be 102(e)/103 art as of its filing date once the formal application claiming the benefit of the provisional application was published [so this Board challenge was a sure loser], and (b) a prior [parent or grandparent] application of any kind is only a reference for what it actually contains (teaches) as compared to what is being currently claimed in the subject application being examined.
DC,
“This holding is in tension with the controlling precedent of In re Wertheim, 646 F.2d 527 (CCPA 1981). In Wertheim, the CCPA held that for a continuation-in-part application, the parent’s filing date may serve as a §102(e) date, but only if the parent contains full §§120 and 112 support for the disclosure.”
Dennis, I have to disagree with you.
As the opinion points out, “Wertheim was decided in 1981 well before the statutory framework implementing publication of U.S. patent applications 18 months after filing under 35 U.S.C. § 122(b) and the establishment of provisional applications under § 111(b).”
I submit there can be no tension in this case where the statutory framework between the two cases differ.
Also, as the concurring opinion points out, “Wertheim requires a strained reading of statute and precedent to address a misplaced concern about secret prior art. Were we to follow Wertheim, we would reverse. Instead, I join my colleagues in their decision to affirm.”
6000, aka e6k, has no credibility.
“Basically like everyone who slams the office for pretty much anything.”
Really? – so your stand is that the Office has done nothing to merit being slammed? Do you really want to lose your credibility with a comment like that?
“They publish with the publication of the child.”
Provisionals do not publish with the publication of the non-provisional. You cannot determine what subject matter of a published app or patent is supported by a provisional unless you obtain a copy of the provisional. 35 USC 132(a) requires that the PTO provide the information it is relying on to reject an application. If the examiner is relying on the disclosure of a provisional application to reject, the examiner is required to provide a copy.
The BPAI says that the examiner established a prima facie case and shifted the burden to applicant. Nonsense. The examiner didn’t supply the evidence that was being relied on, and by the BPAI’s own admission only made a terse and conclusory statement that the portions of the non-provisional that were being relied on were supported by the provisional. That’s not sufficient to shift the burden.
The BPAI is a sad bunch of arrogant and lazy dolts.
Wertheim (CCPA 1981) sets up two inquiries. The holding is arguably not in tension with the first, i.e., whether or not relied upon disclosure appears in BOTH the reference patent and the prior application. The Board does sweep this issue under the rug as merely a factual issue on which Applicant failed to carry its burden.
However, the holding is in tension with the second inquiry. In that second inquiry, Judge Rich articulated §§120,112 analysis with respect to the INVENTION CLAIMED in the reference patent. In essence, unless a claim found full 112 support in the reference patent, no basis existed (under 120) to accord the reference patent with the earlier date (for any purpose, priority or effective date as a reference) of the prior application.
So, at least with respect to 119(e) and the second inquiry articulated (in a 120 context) by the CCPA, the Board finds Wertheim not applicable.
Not entirely clear to me how 119(e) and 120 are distinguishable in this regard and therefore, how the Board may ignore the precedent of its reviewing court. Time will tell …
“At the bottom of page 18, the BPAI states that the examiner is not required to provide the applicant with a copy of the provisional application. Huh? Have these dolts ever read 35 USC 132(a)? The examiner can simply allege (i.e. make a terse and conclusory statement) that the portions of the non-provisional being relied on are supported by the provisional’s filing date, but doesn’t have to supply the evidence that proves it? The arrogance and laziness of these unworthy “public servants” is simply astonishing.”
They publish with the publication of the child. We don’t have to give you a copy of the child, so why should we give you a copy of the prov? I don’t think you’re thinking this through before you just slam the office for no real reason. Basically like everyone who slams the office for pretty much anything.
The opinion mentions several figures in the non-provsional that were not included in the provisional, but is silent about whether those figures support anything not support by the provisional. The only thing the BPAI is clear about is that the material relied on by the examiner was supported in the provisional. The careful wording implies that the non-provisional at least arguable does have additional subject matter.
There is additional tension in that Wertheim outlines the theory that someone filing non-provisional has done his best to get the filing issued and published immediately despite the fact that the PTO is not going to work quite so fast. This theory does not extend quite so well to provisionals because a person filing a provisional knows that it cannot be published or even examined until a non-provisional is filed.
Accordingly, Wertheim might be read to suggest that the filing date of the provisional should not be used. However, 102(e) and 119 can be interpreted as the PTO does to give the contrary result.
At the bottom of page 18, the BPAI states that the examiner is not required to provide the applicant with a copy of the provisional application. Huh? Have these dolts ever read 35 USC 132(a)? The examiner can simply allege (i.e. make a terse and conclusory statement) that the portions of the non-provisional being relied on are supported by the provisional’s filing date, but doesn’t have to supply the evidence that proves it? The arrogance and laziness of these unworthy “public servants” is simply astonishing.
At the bottom of page 18, the BPAI states that the examiner is not required to provide the applicant with a copy of the provisional application. What? Have these dolts ever read 35 USC 132(a)? The examiner can simply allege (i.e. make a terse and conclusory statement) that the portions of the non-provisional being relied on are supported by the provisional’s filing date, but doesn’t have to supply the evidence that proves it? The arrogance and laziness of these unworthy “public servants” is simply astonishing.
At the bottom of page 18, the BPAI states that the examiner is not required to provide the applicant with a copy of the provisional application. Huh? Have these dolts ever read 35 USC 132(a)? The examiner can simply allege (i.e. make a terse and conclusory statement) that the portions of the non-provisional being relied on are supported by the provisional’s filing date, but doesn’t have to supply the evidence that proves it? The arrogance and laziness of these unworthy “public servants” is simply astonishing.
At the bottom of page 18, the BPAI states that the examiner is not required to provide the applicant with a copy of the provisional application. Huh? Have these dolts ever read 35 USC 132(a)? The examiner can simply allege (i.e. make a terse and conclusory statement) that the portions of the non-provisional being relied on are supported by the provisional’s filing date, but doesn’t have to supply the evidence that proves it? The arrogance and laziness of these unworthy “public servants” is simply astonishing.
Haven’t yet had the opportunity to read the Decision but would somebody be good enough to confirm that this Decision is interesting to students of the Paris Convention, in that those who file their provisionals at the USPTO enjoy a 102(e) date effect, but those who are careless enough to file their provisionals at any other Patent Office don’t. In this respect, US patent law reminds me of Henry Ford: you can file your Paris Convention priority document anywhere you like. As long as it’s in the USPTO. Will patent reform next term be addressing 35USC102(e)?