Listening to Obama’s inauguration speech today, I noted two portions that could relate to patent law and innovation policy. In thinking about governmental offices and programs, Obama is looking to (1) consider whether programs work and (2) change (or eliminate programs that don’t work). Along this same line, government programs should be prepared to act transparently:
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The question we ask today is not whether our government is too big or too small, but whether it works. . . . Where the answer is yes, we intend to move forward. Where the answer is no, programs will end. And those of us who manage the public’s dollars will be held to account – to spend wisely, reform bad habits, and do our business in the light of day – because only then can we restore the vital trust between a people and their government. |
Of course, the patent office remains in need of both a dramatic increase in transparency and focused reform in a few key areas.
As Lincoln did, Obama also recognized the value of the spirit of invention as one of the key and ongoing strengths of the American people:
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Our workers are no less productive than when this crisis began. Our minds are no less inventive, our goods and services no less needed than they were last week or last month or last year. Our capacity remains undiminished. But our time of standing pat, of protecting narrow interests and putting off unpleasant decisions – that time has surely passed. Starting today, we must pick ourselves up, dust ourselves off, and begin again the work of remaking America. |
me me me =
me + me + me =
m+e + m+e + m+e =
1+1 + 1+1 + 1+1 =
6
“Under Clinton: The February 26, 1993 bombing of the World Trade Center (WTC I); the June 26, 1996 attack on the U.S. military barracks Khobar Towers, in Saudi Arabia; the August 7, 1998 attacks on U.S. Embassies in Africa; the October 12, 2000 attack on U.S.S. Cole.
In Bush’s first year: the Sept. 11, 2001 attack on the WTC and the Pentagon. Since then, Bush committed to the war on terror, and we have been safe. He should be praised for keeping us safe.”
WTC 93, 6 killed. Attacks on US miltary and government targets overseas: Khobar, 20 killed. USS Cole, 17 killed. Embassy attacks, 12 Americans killed plus 100s of locals.
WTC 9/11, 2974 killed. War on terror, 4000 US dead in Iraq alone, at least 10s of thousands, possibly over a million civilians killed.
Go figure.
Social Security works great. I just love giving away a fat chunk of my paycheck on the off chance that someday someone in a government hospital might take care of me.
“The rest of us are just bored. You know very well you’re not going to be adding 101/Bilski rejections against unamended claims and making the rejection final.”
You must be joking because the claims being amended or not makes 0 difference to me. My OA being correct in the first place however does make a difference. And it was. A genuine issue has now arisen. They can take it to the board.
“How long is it really going to take you to insert whatever 101-Bilski form paragraphs the PTO comes up with into your Office Actions?
Give us a break.”
Are you rtarded? I have to make a FULL OA ON THE MERITS. That means, all the time spent rejecting your silly arse claims on art is “on the house”.
“”Apparently that guy is sending out supplemental actions. Not a bad idea.”
And how many counts is that guy getting for all those supplemental actions?
Hmm?
So he’s working free I guess.
LOL”
He’s a better man than me. I wonder, let’s ask him, how long will it take him to send ~25 cases a supplemental action?
Also, I doubt if he actually exists. If he does, he should come to my office and we will discuss this matter.
“She made a 101 rejection of a claim, then suggested the magic language she wants to see to make the 101 rejection go away.”
Lowly, I never said I wouldn’t make any suggestions, but the truth is that in my cases they hardly need help, they actually have some pretty particular devices they can insert, as well as transformations. It doesn’t take a rocket scientist to figure out how they want to make it stat, they have plenty of ways.
Social Security works great. I am not sure where some of you heard otherwise, but you would be mistaken.
Actually, Lincoln represented someone McCormick accused of infringing his patents. See:
link to blog.modernmechanix.com
Re: Lincoln and McCormick, Lincoln actually represented someone McCormick accused of infringing his patents. See:
link to blog.modernmechanix.com
“By the way, how this all could end is for the Supremes to hold that processing information is a physical transformation, which it is.”
Or the Supremes could go the other way and immediately reduce the PTO backlog and practically eliminate patent trolls.
“Though, I do think that some (not all or probably not even most) lawyers know that they have some claims that are now not statutory & purposely do not amend them in any way to ‘make’ the examiner have to give them a 2NF. Analogous to some of the games some examiner play to ‘force’ an RCE. Not really kosher, but not technically improper, either.”
I’m a rabbi. I know kosher. And that, my friends, IS kosher.
LOL
“Apparently that guy is sending out supplemental actions. Not a bad idea.”
And how many counts is that guy getting for all those supplemental actions?
Hmm?
So he’s working free I guess.
LOL
You’re doing a great job baiting some of those on this site who still think it’s worth the time and effort to respond to you.
The rest of us are just bored. You know very well you’re not going to be adding 101/Bilski rejections against unamended claims and making the rejection final.
You can stop any time now.
Thanks.
“I just received an office action from an examiner who is clearly not 6k. She made a 101 rejection of a claim, then suggested the magic language she wants to see to make the 101 rejection go away.”
What was the magic language?
“Look me in the eye and tell me that you will do 2 months of free work (or more)”
How long is it really going to take you to insert whatever 101-Bilski form paragraphs the PTO comes up with into your Office Actions?
Give us a break.
So guys, I’m reading the memo (thx for link I was being lazy) and I am definitely not seeing anywhere where it says that I should go nonf.
If you want to say “well, in some cases you should have brought a bilski rejection before that case was decided based on a memo”. Could be true, but I would have been stuck making a new 101 on second action anyway. There’s going to be a period that this must be done.
Apparently that guy is sending out supplemental actions. Not a bad idea.
I just received an office action from an examiner who is clearly not 6k. She made a 101 rejection of a claim, then suggested the magic language she wants to see to make the 101 rejection go away. WOW IMAGINE THAT.
“6, where does the ethical duty to go final as quickly as possible come from?”
The same place all other ethical duties come from. It is completely a figment of our imaginations.
Seriously though, you don’t believe that I have an ethical duty to reach a final disposition on the case asap? Wait wait, you’re kidding right?
“You are servicing the applicant.”
Idk who the f told you that, just get it out of your head already. The only servicing I provide is calling you back.
“”Further, your note about withholding issues WOULD add to the que and waste resources. How can you think otherwise?””
I didn’t say it wouldn’t dmbas. I said that I didn’t choose that one specifically because it would add to the que. Although in our hypothetical that applicant probably isn’t going anywhere near an allowance anytime soon so sending the 101 out in the RCE action would hardly matter.
“The applicant did not change the law either, but you would choose the level of ethics that place yourself, the servant, above the customer.”
Look me in the eye and tell me that you will do 2 months of free work (or more) just for the sake of “doing it right”. Then do it. Come back in 2 mo. and show me irrefutably that you did, and I will do likewise. Until then, can you just stfu? thx.
“. You indicate rather, a desire to have your own fiefdom and have NO dialogue with the applicant in certain conditions.”
I have a lot of dialogue thx. You don’t know wtf you’re talking about.
“Were you picked on as a child?”
Everyone was mor on. I did more of my fair share of picking on I would say.
Seriously, you see someone doing something you don’t like because, well, no real reason, and then you feel like you need to attack them personally for just doing what they need to do at their job? That is ridiculous.
If anyone else has anything to say about “OMFG send teh nonf because it da rit thing ta do!” Then spare us and simply write down that you’d work for 2 months for free. Ok? It is like one line, just write that.
“By the way, how this all could end is for the Supremes to hold that processing information is a physical transformation, which it is. That would be the ultimate slap down of the Fed. Cir. and the PTO.”
I call parody.
“Take a step back and think: a mental process is not something we want to grant patents for? What? We don’t want to encourage the innovation of machines that can process information the way we do.”
Nice logical leap there, buddy.
Pathetic. Get some sleep and stop ranting.
“ChoiceStream software.
It is a classic start-up with angel funding and then venture funding. It employs 100 people. It has received something like $40 million dollars. It has MIT professors ”
Wow. That sounds so awesome! By the way, there’s this guy named Madoff who made a lot of money for some people. You should give your financial adviser a call. It’s best to get in on the ground floor.
Meanwhile, I heard some computer company in Seattle just laid off some people. I’m sure it’s a direct result of Bilski.
Under Clinton: The February 26, 1993 bombing of the World Trade Center (WTC I); the June 26, 1996 attack on the U.S. military barracks Khobar Towers, in Saudi Arabia; the August 7, 1998 attacks on U.S. Embassies in Africa; the October 12, 2000 attack on U.S.S. Cole.
The war against us started under Clinton. He chose to do nothing meaningful. Clinton’s National Security Adviser Sandy Berger was sentenced and fined for illegally removing highly classified documents from the National Archives and intentionally destroying some of them. The documents apparently dealt with terror threats known to the Clinton administration.
In Bush’s first year: the Sept. 11, 2001 attack on the WTC and the Pentagon. Since then, Bush committed to the war on terror, and we have been safe. He should be praised for keeping us safe.
Under Obama: Most of his advisors/cabinet members are Clintonistas. Leon Panetta is head of the CIA.
Sleep tight.
6 wrote:
“I will check this memo and we will see. I should add that these “memos” aren’t even distributed and I shouldn’t have to go a begging for memos that should be sent TO ME.”
link to uspto.gov
It was as distributed to you as it was to me. Buried on your Office’s website, findable only by google.
By the way, how this all could end is for the Supremes to hold that processing information is a physical transformation, which it is.
That would be the ultimate slap down of the Fed. Cir. and the PTO.
By the way, how this all could end is for the Supremes to hold that processing information is a physical transformation, which it is.
That would be the ultimate slap down of the Fed. Cir. and the PTO.
>>But the problem is disclosure. When, like in >>the majority of software and business method >>applications, the spec is a recitation of the >>end-result of the product/method, why should a >>patent be granted? An inventor should NOT get >>a patent until he actually discloses the >>invention, right?
Of course. And that is what 102 and 103 are for. The patent applications that have been used to exclude real innovation are incredibly broad with little or no disclosure.
It would be very simple to reject these patent applications under 102 and 103. It is like a claim going to the Fed. Cir. such as “an automobile comprising: an axel connected to a motor.” Then the Fed. Cir. saying this is outrageous we should grant no patents for automobiles.
Take a step back and think: a mental process is not something we want to grant patents for? What? We don’t want to encourage the innovation of machines that can process information the way we do. Does that make any sense?
2600 states:
“Giving an extra non-final wastes more resources than waiting to bring up a 101 until a claim is otherwise allowable.”
So,… an “extra” non-final (which by the way, is the right thing to do per the Office directions) wastes more resources than waiting?
Simply stating does not make it so. The point is to bring the 101 argument up front and center. IF there are other arguments, add the 101 issue. IF there are no other arguments, the NEW 101 issue SHOULD BE a non-final. The appliant should be able to respond to the change in law (or at least in the change of the Office’s interpretation of the law). Separating the finality portion of the 101 issue from the late-bringing up (“gotcha”) is at point here.
You propose that there is less waste than waiting until all other issues are resolved and then adding another round by then putting forth the 101 issue. You are adding a round in order to play “gotcha” and then putting forth logic that this has less waste than addressing the 101 issue earlier. This is an indefensible position.
Night Writer, the product is very probably worthy of protection. But the problem is disclosure. When, like in the majority of software and business method applications, the spec is a recitation of the end-result of the product/method, why should a patent be granted? An inventor should NOT get a patent until he actually discloses the invention, right?
Well, food, thanks for confirming that this is a left-wing political sight where “right-wing” political comments are not welcome. Not that my comments were necessarily intended to be “right wing.” In that case, you and looney Mooney and all of the other personalities in the puppet show can carry on with your left-wing love fest. I’m guessing things will be getting pretty swishy.
Recently, Mooney was making fun of claims for something that recommended videos for consumers to watch.
Here is a whole company that has researchers from MIT that is attempting to improve the ability of companies to recommend products to consumers: ChoiceStream software.
It is a classic start-up with angel funding and then venture funding. It employs 100 people. It has received something like $40 million dollars. It has MIT professors working on the software to improve the ability of the software to recommend products to consumers.
How can anyone believe that the product of this company is not worth patent protection?
The fact that a broad claim can be written, for example recommend a video based on a consumers previous choices, means very little. The point is how it is accomplishing the recommendation. This is a very difficult problem. An information processing problem that has a great deal of value. The claims that have been shot down at the Fed. Cir. are ones that are so broad to be outrageous. They are similar to an apparatus including two axels and a motor for a automobile.
I for one want really good software that will recommend products for me and I for one want this country to continue to fund and encourage the growth of companies like this. They innovate, they employ people, they encourage science, they do mainly good things.
It will be harder for these types of companies to exist without patent protection.
Under the Mooeny, Moore, Dudas, Cheney, Michel sphere we can group all these innovations as mere mental processors or pick your incantation that has no meaning. Mere mental processes is such an outrageous incantation. The difference between Mooney and a chimp is his ability to carry out mere mental processes.
Dudas is just like Bush reversing the argument. The problem with the PTO and patents is that the PTO wasn’t doing a good job and isn’t doing a good job of applying the right prior art. That simple. There isn’t a patent that has become one of these big cases that I –if I were in the patent office–couldn’t have rejected under 102 or 103.
“Further, your note about withholding issues WOULD add to the que and waste resources. How can you think otherwise?”
Most of the time 101 issues are overcome as easily as claim objections. Giving an extra non-final wastes more resources than waiting to bring up a 101 until a claim is otherwise allowable.
6’s idea of going final with a new 101 is wrong. A new ground is a new ground. I don’t really have an issue with waiting to make a 101 (a new non-final is basically something for nothing), but have had to make a few actions non-final and also sent out a bunch of supplemental actions adding 101s. The office should be giving other time for the inconvenience of this especially since we were frequently forbidden making 101s that we’re now told to make. Pre-Bilski I wanted to 101 a claim that was like “presenting with a first field…presenting with a second field…combining the first and second field” and was shot down by two separate TQASs. That claim is now in a patent.
Regarding:
and continue outsourcing our manufacturing to China?
Posted by: curious | Jan 21, 2009 at 04:00 PM
(sarcasm follows)
Of course. If an Inventor could invent something patentable, get a patent and then slap an infringer with an injunction, the Inventor could prevent manufacturing in cheap countries.
However, since everything patentable has already been invented and injunctions are horribly unfair, corporations are forced to take ideas published and developed by Inventors and to make products where it is cheap to manufacture.
6 states: “I have an ethical duty to make the action final as quickly as possible, and thus reach a final disposition on the case quickly, as well tho :(”
More delusional, self-made Law from 6.
6, where does the ethical duty to go final as quickly as possible come from? Your ethical duty is to follow the rules and progress to a final disposition. Your focus on yourself is telling. It’s all about you. You are not getting “paid” for a 2nd non-final (actually you are getting paid – just not getting paid a bonus). You did not change the law (well, at least not offically).
However, my public servant, the focus should not be on you. You are servicing the applicant. The applicant did not change the law either, but you would choose the level of ethics that place yourself, the servant, above the customer.
Progressing to a final disposition is NOT the same as a pre-mature final.
Progress means dialouge and actually working with the applicant. You indicate rather, a desire to have your own fiefdom and have NO dialogue with the applicant in certain conditions.
Further, your note about withholding issues WOULD add to the que and waste resources. How can you think otherwise?
Were you picked on as a child?
AllSeeingEye — there are plenty of rightwing blogs where your non-patent, political comments would find a better home.
“Then they will take away our right to torture people who know the code to stop the nuclear explosion that will occur in Salt Lake City in 30 minutes. And what’s this?”
I would guess that o would make the call to torture them vigorously in that event.
“If government workers and bureaucracy were indeed the engine of the growth”
Gaze upon the March of the Never-ending Strawmen.
The wingnuts are so predictable. We all know the next Timmy McVeigh is already out there somewhere, his hands shaking as he fingers a greasy neo-Nazi pamphlet that advertises itself as the last truly freethinking document in America. First “they” ban us from carrying our guns in National Parks! Next they will tell us how we must apply for health insurance! Then they will take away our right to torture people who know the code to stop the nuclear explosion that will occur in Salt Lake City in 30 minutes. And what’s this? Glenn Beck has been fired?!?! Our voices are being drowned by women and immigrants?!?!? Next thing you know people will be marrying their turtles. OH, NOOOOOOoooooooooo…..
And those were just the whines we heard during the Bush Administration! Imagine the whining we’re in for during Obama’s administration.
“The state” (e.g. government for you m0r0ns) is a great fiction by which everyone tries to live at everyone else’s expense
To take issue with Obama’s posit…
More public sector workers now than ever before:
link to tinyurl.com
favorite quote:
“If government workers and bureaucracy were indeed the engine of the growth, as some in Washington argue, then the Soviet Union would still be intact, East Germany would have a model economy and China would not be moving away from communism.”
To Babble “check yo-self before your wreck yo-self” Boyee,
You, like “Nah Man” 6, are starting to sound like a bunch of ghetto punks. I loved the scene in Gran Tornino where Eastwood draws down on the homeys and sends the wannabe white boy home with his tail between his legs. Classic.
Babel Boy is that wannabe.
Katrina? give me break. Apparently presidents are supposed to use their super powers to stop hurricanes dead in their tracks and planes from flying into buildings. Obama will save us…
BB you are an idolatrist loser. You couldn’t self-help your way out of a damp knapsack.
Hey 6 – If you really are an examiner and this is really something you have to deal with, it probably makes sense to hook up with an SPE and flesh out the situation specifically. 101 stuff can be pontificated in almost any direction absent specific technical facts.
In general, if you need to make a new rejection, not necessitated by something new the applicant has done, the applicant should not be penalized.
If you want to be formal about it – go second action non-final and let the applicant get back to you. If you want to be a good guy about it, call the applicant and let them know where you are heading. They might be willing to stick some language in there that attaches their code to a machine or something similar. If that’s all that is needed, you can allow the case, get the count, and get the case off your docket. Hopefully the applicant would not care about a minor amendment and you won’t have to waste time with second action non-final etc.
That’s what I would want anyway.
Thanks,
EMG
“Sounds like a terrible system, leaving all the power in the hands of the examiner with no check on that power. Especially when the applicant may end up with an examiner like you, who believes he is infallible and never wrong, who sees his job as to reject applications rather than to work with applicants.
You’re certainly a better writer than most examiners, and I’m betting you even find better art than most, but I still think you have a piss poor attitude and approach your job all kinds of wrong. ”
Nah man, I don’t think I’m infallible, I just simply get LOADS of responses that are so terrible that I get the feeling that I’m all but infallible. If I made a mistake I’m willing to admit it and send a nonf. And come on man, it’s not that I see my job as being to reject, it’s that I get apps that have to be rejected. I see my job as sitting here an allowing things all day. Unfortunately applicants don’t do their part and give me something patentable at the outset. To be 100% honest with you Lowly, I really do feel cheated by applicants because I have to reject so much. I haven’t had a first action allowance in I don’t know how long. Then again, I don’t pick up many new apps lately.
“You may have created this problem by not following your management’s guidance. You should’ve rejected the “hypothetical” claims on 101 the first time — see the 5/15/08 Love memo.
I think you were pointed to this memo several months ago — maybe not hypothetically in time for your hypothetical first NF rejection.”
Hypothetically you’re right, it wouldn’t have been in time.
“If he did his job properly, he wouldn’t be able to play “gotcha”, or milk the system for RCE’s and egad, may even have to “follow a procedure that hasn’t accounted for such situations? B S.” in doing the right thing.”
Apparently you haven’t been paying attention. It wasn’t me that handed myself a “gotcha” it was the CAFC.
Lest we forget, the memo you reference, which explicitly accounts for such situations as the hypothetical 6 proposes may fall into the procedurelol category that 6 has deemed that he does not have to actually follow.”
I will check this memo and we will see. I should add that these “memos” aren’t even distributed and I shouldn’t have to go a begging for memos that should be sent TO ME.
“Yes, we see the conflict in your ethics 6 – You have been directed to do something that hits you in the wallet.”
I don’t think you “get it” having to do 25 nonfinals would practically assure that I was fired for lack of production, and I would surely be on oral warning. This isn’t a little chink taken out of my big ol’ stack of money.
Imagine someone told you that you’d be working for free for the next 2 months. Would you say “well, ethically I should work for free for the next two months” or would you say “um, yes, better to find another job”.
As for Mgmt reading, they probably would, except that according to them these boards are usually just a bunch of malcontents. I see why they get that impression.
Abraham Lincoln was a general attorney, and a good one, but NOT a patent attorney, despite his interest in and respect for the patent system. His relationshp with Edwin Stanton began badly but, as history records, ripened over the years.
So what should President Obama give the Examining Corps? The training to do the job well, the salary to keep them in their post and the freedom to get on with the job. what more is needed?
“Would it be sensible to cut away a ton of claim scope in order to comply with today’s (already very fluid) law?”
LOL. With that “logic”, why not file on the frigging moon. After all, the law might change and allow you to claim it! Wouldn’t it suck to be caught off guard when that happens?
At least some people here aren’t afraid to come right out and admit to their greediness.
I hope that PTO management is reading this blog and immediately puts out a memo to the examiners instructing them as to how they should handle the situation 6 raises, and of course make that memo available to the public
“Submitting a claim that they know is not statutory is grounds for disciplinary action I thought.”
What if the client wants to violate the statute in order to contest its validity under the law? For example, what about submitting claims that do not conform to Bilski in order to challenge the CAFC’s reading of 101?
More realistically – some of my clients still intend to file software claims as per State Street. Their rationale is that 101 practice is changing daily… but thanks to the backlog, their applications won’t get examined for FIVE YEARS. Who knows where the law will be then? Would it be sensible to cut away a ton of claim scope in order to comply with today’s (already very fluid) law?
– David Stein
“Starting today, we must pick ourselves up, dust ourselves off, and begin again the work of remaking America.”
and continue outsourcing our manufacturing to China?
That’s a legitimate question. What should happen is you present new ground in a non-final and are given other time since its outside your control. The production system being what it is, I would go final if you can and wait til RCE to bring up Bilski.
Dear Mr. Tazistan Jen,
Re: “I have some hope of positive changes in patent practice. Al Gore’s reinventing government thingy made some positive changes as I recall.”
With all due respect, my interaction with exVP Gore’s Office was a huge disappointment.
I came to believe Mr. Gore is a real bullshitter, as phony as they come.
I have some hope of positive changes in patent practice. Al Gore’s reinventing government thingy made some positive changes as I recall.
Malcolm Mooney, do you also post on the Washington Post.com comment boards? Your political jargon looks quite familiar to some posts I’ve seen there.
I love how 6 says he/she has an ethical duty to go final, as opposed an ethical duty to follow the rules that govern when he/she can or cannot go final.
Anon E. Mouse,
Do you mean the note about:
“A complete examination of the pending claims should be made so that all potential rejections and objections are raised normally in the first Office action on the merits.”
contained in the 5/15/08 Love memo?
You do realize that you are trying to correct 6, who is notorious for violating the Law and would rather decide what is law and what is lawlol and wantonly does only what he wants instead of doing his actual job?
If he did his job properly, he wouldn’t be able to play “gotcha”, or milk the system for RCE’s and egad, may even have to “follow a procedure that hasn’t accounted for such situations? B S.” in doing the right thing. Lest we forget, the memo you reference, which explicitly accounts for such situations as the hypothetical 6 proposes may fall into the procedurelol category that 6 has deemed that he does not have to actually follow.
“See, it’s not “irritating”, it is blatantly taking away promos etc. Ridiculous. Not happening.
I’m not working for free here.”
Yes, we see the conflict in your ethics 6 – You have been directed to do something that hits you in the wallet. Why I am not surprised that you keep your ethics there?
6,
You may have created this problem by not following your management’s guidance. You should’ve rejected the “hypothetical” claims on 101 the first time — see the 5/15/08 Love memo.
I think you were pointed to this memo several months ago — maybe not hypothetically in time for your hypothetical first NF rejection.
“I’m not even sure why we allow responses to such an action with those kinds of rejections. They’re not ‘adverse’ in any respect, therefor why would the applicant ever want to reply to them?”
OK, you’ve had your fun. I’m surprised you didn’t go further – since MPEP 707 only requires that you state reasons for “adverse actions,” you presumably don’t even need to give a reason for your rejection, since you’re just doing the Applicant a favor.
Of course, “adverse action” refers to an action that is adverse to a claim for patent rights, whether or not the claim is justified. Thus, even if your flawless 102(b) rejection is accompanied by a $14B check from the U.S. Treasury and includes lifesaving lifestyle tips for the inventor and his family, it is still an adverse action.
I think your time would be better spent sending out all those second nonfinal Bilski rejections.
“there have been no acts of indiscretion in the oval office.”
I wonder if these members of the 20% Approval club will ever disappear. At least they aren’t asking for Pretzelcoatl to be carved into Mt. Rushmore.
“Either me or the applicant can be the one to say. Let’s say in this instance that the applicant wants to traverse, he does so, I smack down his weak attempts and then remove the whole discussion from the record since he wasn’t even allowed to respond.
Sounds like a good sys to me. ”
Sounds like a terrible system, leaving all the power in the hands of the examiner with no check on that power. Especially when the applicant may end up with an examiner like you, who believes he is infallible and never wrong, who sees his job as to reject applications rather than to work with applicants.
You’re certainly a better writer than most examiners, and I’m betting you even find better art than most, but I still think you have a piss poor attitude and approach your job all kinds of wrong.
In re the poster above (harborcruise) mentioning Lincoln–I was stunned I hadn’t heard that Lincoln was a patent attorney before. A little research reveals he wasn’t. Yes, he had a patent (I’d heard that), and was co-counsel on a patent case, but he wasn’t a patent attorney by any stretch. Also, on the case where he was co-counsel, it looks like he was not McCormick’s lawyer, but was defending an infringement action brought by McCormick.
“If they’re really good 102’s, the applicant would want to amend. 😉 You’re suggesting that the applicant not be allowed to amend?”
Not allowed to even respond it would seem like to me. Amending would imply that you had to respond first. No adverse action was ever sent.
“Who is to say the action is 100% correct? I can’t count how many times I’ve traversed 102’s without amendment. ”
Either me or the applicant can be the one to say. Let’s say in this instance that the applicant wants to traverse, he does so, I smack down his weak attempts and then remove the whole discussion from the record since he wasn’t even allowed to respond.
Sounds like a good sys to me.
In any event, after having discussed the first hypo with my buds from the academy I see no reason why I should pretend that I understand what the statements in the MPEP actually refer to since they obviously don’t. They believe the final is good to go with the new 101 np and say it is what they’d do, with them believing their actions are fully supported by the MPEP. In their view, “it is when you (the examiner) have made a mistake that you go nonfinal, all other times, it is a final”.
I like my buds tho, always good for a laugh. Mind you, one of them has passed the bar and is a registered agent. The other one will be taking it in not too terribly long I expect. And he’ll pass.
Yes I would suppose so LB. Not that I would begrudge any given attorney a given 101 known to be unstat claim. His fellows routinely submit claims that they know will fail 103, if not 102, so it would be like punishing the one monkey just because I caught him improperly throwing away a banana peel while the rest of the monkeys burn down the city.
“No successful terrorist acts in the US” during Bush’s watch – HAHAHAHA!
He ignored all the warnings from the out-going Clinton administration and those in his daily briefings, etc., etc.
I think he learned his lesson from not only ignoring Clinton warnings but also trying to be the anti-Clinton, that he has worked hard on transitioning Obama.
We’ll just have to wait and see what direction they will go for the IP area.
“This brings me to the next hypothetical. Let’s say you’re an examiner, you send out an action full of good 102b’s and that is all. I’m not even sure why we allow responses to such an action with those kinds of rejections. They’re not “adverse” in any respect, therefor why would the applicant ever want to reply to them?”
If they’re really good 102’s, the applicant would want to amend. 😉 You’re suggesting that the applicant not be allowed to amend?
“Why do we allow responses to actions that are 100% correct? They are not adverse actions. ”
Who is to say the action is 100% correct? I can’t count how many times I’ve traversed 102’s without amendment.
“Actually, submitting a claim that they know is not statutory is grounds for disciplinary action I thought.”
It is, “except that a practitioner may advance such claim or defense if it can be supported by good faith argument for an extension, modification, or reversal of existing law.” (37 CFR 10.85) Given the “fluid” nature of Section 101 post-Bilski, and especially given that most of Bilski is dicta, it would be the rare claim that couldn’t be supported by a good faith argumet for one of these.
Harborcruise – was there a special registration for patent attorneys in Lincoln’s time? Did he do much patent work? I don’t know the answers, just curious – even if no, still interesting…
“””The applicant is put on notice that the claims may not currently meet 101, but in view of the current fluid nature of 101, and since the claims are rejected on prior art, the issue is not raised at this time. It is suggested that the applicant review the claims to ensure that they comply with the statutory requirements of 101 as currently interpreted in view of the Bilski decision.”) ”
I thought about doing that too, but frankly, who is “blindsided” by a Bilski? Besides the way everyone was blindsided? Give me a break, either there is a machine/transformation or there is not it isn’t exactly rocket science to determine.
“Not really kosher, but not technically improper, either.”
Actually, submitting a claim that they know is not statutory is grounds for disciplinary action I thought. ”
“In some other parts they are doing it differently. If the examiner could make the rejection final normally & the ONLY issue that would prevent the action from being final is adding a 101 where there previously was no 101 issue, they are letting the examiner make the final & NOT include the 101. However, the SPEs are being informed of which cases these are so that if returned from OPQA (or they get a call from a lawyer) it is not held against the examiner. ”
See, and here I am trying to help out little mr applicant man, while at the same time just doing mah job and getting all harr assed.
“Whatever you do, I would check with your SPE 1st. Hopefully they will have your back.”
I’m guessing he signed the action so that’ll have to do for now.
“You insult attorneys and claim that we add to the backlog, yet you sit here and contemplate taking a course of action that would add to the backlog…”
I was just giving hypothetical options in a hypothetical situation. Then I hypothetically made a decision. You will note that I went with the option that does not increase the backlog. So far as we are concerned the case is done, fini. However, “you” will still submit some claims today that I will google and reject with a 102b tomorrow.
Tell me again who is increasing the backlog? I always have my eye on keeping it down, and take actions accordingly, you always have yours on keeping it up, and take actions accordingly.
And what do you mean anyway? Do the right thing because he won’t get credit for it? “The right thing” is to follow a procedure that hasn’t accounted for such situations? B S. There’s got to be some logic behind what you’re saying, but it isn’t readily apparent. The whole point to finals is to reach a point where there are genuine issues between the examiner and applicant. Guess what, we’ve reached that point. The case is ready for appeal or abandonment.
I should add, that yes, the applicant did amend. But no, he didn’t all of a sudden take out a machine/transformation. He just never had one in it. My being willing to advise him of the upcoming legality he will face outside the PTO is to his benefit, not his detriment.
This brings me to the next hypothetical. Let’s say you’re an examiner, you send out an action full of good 102b’s and that is all. I’m not even sure why we allow responses to such an action with those kinds of rejections. They’re not “adverse” in any respect, therefor why would the applicant ever want to reply to them? Such actions are not contrary to the applicant’s interests, such actions are completely consistent with the applicant’s interests. Presumably the applicant’s interest is to not have a patent that will be invalidated later, correct?
Why do we allow responses to actions that are 100% correct? They are not adverse actions.
6,
I agree with your sentiments & have been there myself, before. I do know that different areas of the office are handling this in different ways.
In some parts they are making the examiners do the 2nfs & add in the 101 even where it was not an issue previously. I have one friend (a longtime primary) that really struggled to meet production last FY because his TC made them all send out new non-finals with 101s (because of Love’s 5/15/08 memo). And this is in an area that doesn’t usually have to deal with 101 issues.
In some other parts they are doing it differently. If the examiner could make the rejection final normally & the ONLY issue that would prevent the action from being final is adding a 101 where there previously was no 101 issue, they are letting the examiner make the final & NOT include the 101. However, the SPEs are being informed of which cases these are so that if returned from OPQA (or they get a call from a lawyer) it is not held against the examiner. This is in an area that often makes 101s & the 5/15 memo & then Bilski have changed things such that things that were previously statutory are now rejectable under 101. (I think some of these examiners are making a note to the applicant in the action of the possibility of a 101.)
Whatever you do, I would check with your SPE 1st. Hopefully they will have your back.
Personally, & just speaking for myself, I think that the latter approach is the fairest to all. However, this is not “by the book”. But, if the applicant is at least put on notice of the possibility (maybe saying something like “The applicant is put on notice that the claims may not currently meet 101, but in view of the current fluid nature of 101, and since the claims are rejected on prior art, the issue is not raised at this time. It is suggested that the applicant review the claims to ensure that they comply with the statutory requirements of 101 as currently interpreted in view of the Bilski decision.”) then they would not be “blindsided” with it being raised in a 101.
Again, not a perfect solution but maybe a middle ground we can ALL live with?
Though, I do think that some (not all or probably not even most) lawyers know that they have some claims that are now not statutory & purposely do not amend them in any way to “make” the examiner have to give them a 2NF. Analogous to some of the games some examiner play to “force” an RCE. Not really kosher, but not technically improper, either.
Good luck.
thanks,
LL
MM Wrote:
>>but also realizing that it is going to take a >>great deal of time and energy to crawl out of >>the hole we’re in.
Yes, like the hole that has been created by the USPTO and the Fed. Cir. in regards to 101 and trying to eliminate information processing from eligibility.
The same type of people that have ripped our financial system down and us with it are the same ones that are tearing down the patent system. Look at examples of the actors: Judge Moore and Former Director Dudas. Neither one wrote or prosecuted a patent before becoming the decision maker. I wish Judge Rich had been alive to slap these people down.
Know that patents for information processing are vital to innovation. Those of us that have lived through first no patents for software and then patents for software are keenly aware of this. Oh boy, we are going to enter the days again where no one discloses how their algorithms work and when people figure out how to prevent decompiling so that they can keep their inventions a secret. Oh boy. Joy to life.
No disclosure. No capital. No incentives. Oh boy. Back to the Carter era. Oh boy.
But, there are the few that will benefit. Just like with the financial system where 100’s of billions of our tax dollars are lining the pockets of the few. I wonder how Mooney fits into that few.
How many who regularly blog on here can actually say that they work with start-ups and write and prosecute patents for high technology companies in the EE and CS areas? How many people here have helped start-ups get money?
Oh boy what a good job these Judge Moore and Dudas did. But for whom? The few.
“One of the hopes I have for the new administration is that it will pass the Patent Fairness Act of 2009 that gives applicants the power to go after the salaries of examiners and participating supervisors to recoup legal fees for grossly negligent and/or malicious office actions. ”
You’ll have loads of fun when there are no examiners left working here.
“My real question is this though. Surely this happens in arts all the time when the 101 law changes. What did they do then? Don’t even try to tell me they just all went “O, well forget finals boys, we’ll just be issuing nonfinals for another 5 months, for no credit lolz!”. ”
Can ANYONE claim the count system isn’t broken when you have an examiner refusing to do what’s proper because he won’t get credit for it?
6,
The fact that you would even considering holding in that 101 until a RCE is incredibly unprofessional and unethical. If I were your SPE, I’d fire you on the spot for that. of course, with the PTO being what it is, you’re probably more likely to get a raise and a pat on the back for that kind of thinking.
Do the right thing. Non-final because the issue wasn’t caused by applicant’s amendment. If there are some ‘magic words’ you want to see that would make you lift the 101, let the applicant know.
You insult attorneys and claim that we add to the backlog, yet you sit here and contemplate taking a course of action that would add to the backlog…
“You should raise the 101 issue and, assuming that the 101 was not created by the applicant’s amendment, make it NON-final.”
LL, the real issue is that I would be sending out 25+ 2nd action nonfinals I would bet over the next 4 months.
That is not going to happen. End of story. Either the 101 goes out post RCE, or I go final now. I don’t mind if they pick their poison, but we’re either chewing gum or poisoning them, and I’m all out of bubble gum.
“It may be irritating, but that is the law/rules.)”
See, it’s not “irritating”, it is blatantly taking away promos etc. Ridiculous. Not happening.
I’m not working for free here.
My real question is this though. Surely this happens in arts all the time when the 101 law changes. What did they do then? Don’t even try to tell me they just all went “O, well forget finals boys, we’ll just be issuing nonfinals for another 5 months, for no credit lolz!”.
“Do you not have an ethical duty to “show all your cards” in order to prosecute the application as quickly as possible?”
I have an ethical duty to make the action final as quickly as possible, and thus reach a final disposition on the case quickly, as well tho 🙁
Ethical duties conflict.
My final disposition is that the case is not in condition for allowance.
And what is this BS that the CAFC is just raising new points of patentability in the middle of prosecution making me not go final? I’m not raising the issue, THEY RAISED THE ISSUE, I’m merely informing the applicant as messenger boy in this circumstance. If they reset all of my nonfinals to nonfinals F this job. Seriously, I will quit tomorrow, in the middle of the recession. Or perhaps I should just feign ignorance until after RCE. The thing is this, the ethical duty can be resolved up front, if I have a 101 issue we could solve it over the phone in my cases, I don’t work with the computer related/biz method “do do” all that often.
As to my “withholding”, well, yes, I’m not going to do it because I figured it was the wrong thing to do, but, I still went final. Sue meh.
Frankly I think there should be an explicit exception in the MPEP because this most certainly is not a “malicious action” it is a “benevolent action” informing you of a new development in patent law before your brand spanking new patent issues as an invalid piece of garbage.
Also, technically the applicant’s amendments are the reason for the new grounds. Specifically the date on the amendment is the reason for the new grounds. Before the amendment everything was cool n rejected.
My first “hope” for Obama is that his is not another Jimmy Carter. We cannot deal with 4 years of ineffective leadership, I know that some will say we have recently had 8 years of that.
My second “hope” is that he puts someone who knows something about patnets and trademarks law in the leadership of the PTO. The PTO is so screwed up I’m not sure Superman could fix it but it is seriously important to the US to try.
Lastly, the PTO does issue new final rejections that are not based on anything the applicant did “recently.” I got one on a reopening after appeal basd on the fact that I had amended the claims 3 actions ago!!!
6,
You should raise the 101 issue and, assuming that the 101 was not created by the applicant’s amendment, make it NON-final.
This issue has come up on some recent sig. panels (where the examiner newly raised the 101 & still made it final without an applicant amendment) and the cases were held as errors (as they should be).
Making the case final is clearly wrong since it is not necessitated by the applicant’s amendments (Just like if all they did was swear behind your reference or perfect foreign priority. If you make a new grounds of rejection you can not make it final. It may be irritating, but that is the law/rules.)
As for not raising the 101 now, I would not agree with that, either. I would make _very_ sure that the 101 is proper & not borderline, however. If it is questionable, it may not be worth raising at this time in view of the quicksand that is 101 of late. If it is clearly a 101 issue it should be raised as soon as it is discovered even if that means a 2NF.
thanks,
LL
In light of the current state of the global economy, the much touted “triumph of capitalism” at the end of the Cold War now looks a lot like Bush’s “Mission Accomplished”, n’est-ce-pas?
On the other hand, maybe “Mission Accomplished” was actually a message from the New World Order, referring to the mission that started on 9/11.
IQ = 6
Go ahead and go final, WTFk. It’s been done to my clients at least 3 times in the last year by cretin examiners who think like you.
One of the hopes I have for the new administration is that it will pass the Patent Fairness Act of 2009 that gives applicants the power to go after the salaries of examiners and participating supervisors to recoup legal fees for grossly negligent and/or malicious office actions.
All aboard the RCE gravy train.
choo choo!
Note:
President Lincoln was a patent attorney and in fact was Cyrus McCormick’s patent attorney.
6,
Is this a rhetorical question or do you think that the 101 issue is directly due to any amendment that the applicant made and thus liable to go final?
I believe that you cannot go final on an issue that is not prompted by an applicant’s response and thus is a matter you are bringing up for the first time.
Also, I would question the ethical basis for you to withhold any point on patentability that you are aware of for later prosecution (“get him” on RCE). Do you not have an ethical duty to “show all your cards” in order to prosecute the application as quickly as possible? What would be the point of having the applicant go through the RCE process while you are holding back on a patentability issue? Are you purposely wasting time, money, resources, bloating the que in order to play “gotcha”?
Well, Eye, you may be right in what you choose to “believe” (loaded word, that) about the way the man at the top sets the tone, in Russia, and in China, and in India, and in Korea, and in Japan and, come to think of it, more or less everywhere one observes a human heirarchy. I was thinking more about the archetypal behaviour of a big successful all-American corporation, under a charismatic CEO who sets the tone, usually (but not always) to the general benefit of all who sail in that particular happy ship. Or do you persist in your rampant self-delusion, that the “setting the tone” issue is one found only in Communist States?
And, 6, no idea what action of yours, in the current state of the “law”, is proper and what is improper. It’s clear what “natural justice” dictates though, isn’t it? I have the feeling that natural justice stands more of a chance, under an intelligent collegiate Presidency.
I have a bit of a problem here that perhaps someone can help me out on.
Let’s say you are an examiner. Let’s say you got back a response in an application that does not appear to pass 101 per Bilski. Let’s also say that you did not raise 101 preBilski. Do you 1. Raise new grounds and go final? 2. Fail to tell the applicant that his claims now fail 101 (maybe get him on RCE)? 3. Raise new grounds and go non-final?
Which is proper? And why would it be unproper to go final since the only reason you’re now raising the grounds is in view of a change in the law?
Bush-monkey says
“Its funny though, how under Bush’s watch, there have been no significant successful acts of terrorism in major U.S. cities. The idea of being able to hold an inauguration the likes of this one would not have been possible but for the vigilance of the Bush administration.”
Check it, baby, 9-11 was on Bush’s watch. A pretty “significant successful act of terrorism” in most people’s opinion. Katrina was on Bush’s watch, too — a hurricane with 4 days advance warning. Oh, my yes, that man was a paragon of preparedness.
Yee-ha, sending 100,000 suckers to Iraq really made the inauguration safer for us. Instead of troops they had to import cops from all over the country — how do you think that affected local crime rates for the day? What made it safer was the realization of what the possibilities are. Since 9-11 even a brain-dead administration like Bush’s could figure it out. Besides, Feinstein and the joint inaugural planning committee called the shots.
You are obviously one of those Limbaugh dittoheads who can argue with a straight face that because 9-11 wasn’t repeated Bush did something right.
You are, intellectually speaking, an Iraqi weapon of mass destruction, man.
I’m sure everything bad, including terrorist attacks, hurricanes, rainy days, cows that won’t milk, and spoiled fruit are all Bush’s fault.
Its funny though, how under Bush’s watch, there have been no significant successful acts of terrorism in major U.S. cities. The idea of being able to hold an inauguration the likes of this one would not have been possible but for the vigilance of the Bush administration.
And there have been no acts of indiscretion in the oval office. My, how refreshing the last 8 years have been in that regard.