Accelerated Examination Case Study

The quickest patent issued in 2008: U.S. Patent No. 7,408,364 is assigned to Advanced Sensor Technologies, Inc. (King of Prussia, PA). When ASTi filed its application on a sensor for measuring moisture and salinity in May 2008, it included an accelerated examination petition, a statement of pre-examination search, and a set of examination support documents. Three weeks later, the PTO granted ASTi’s petition for accelerated examination. On June 19, the Examiner began his examination, and issued a notice of allowance for the single claim on June 20. The patent issued on August 5, 2008 – 76 days after the application was originally filed. ASTi has filed multiple continuations – at least one of which has already issued. The patent was prosecuted by longtime patent attorney Mike Catania. The median pendency for the art unit (2831) during the past year was 2.2 years – more than ten-times longer than it took ASTi to get its patent. The median pendency for the primary examiner handling the case during the same period was 2.7 years.

ASTi’s examination support documents include a discussion of nine prior art references. Catania steps through each of the cited references and explains what claim elements are missing from the references. This discussion very much parallels what an attorney would have written in an office action response. The document also discusses nonobviousness and asserts that a prima facie case of obviousness cannot be made because several claim elements are not found in any of the cited prior art references. The document then goes through each claim element and points to particular disclosure in the specification that describes and/or enables the element.

Inequitable Conduct & Cost: The two knocks against the accelerated examination system are the potential for inequitable conduct and the cost of the procedure. I have heard patent attorneys say they would never use the process because of the inherent risk. Part of the vehement reaction is historic. Before the accelerated examination process was created in August 2006, it was much easier for an applicant to put an application on the accelerated examination track through the process then known only as a petition to make special.

Inequitable conduct fears are related to potential charges of failure to conduct a proper search or misrepresentation of the prior art. Both of those are legitimate. Here, however, Catania explained the exact search terms used and the databases searched. This organized and transparent approach coupled with a competent search is unlikely to create inequitable conduct. Regarding discussion of the prior art, Catania’s write-up looks like a response to an office action. Almost every case includes at least one response to an obviousness rejection. Most cases include multiple such responses. It is difficult to tell how this strategy is more problematic than the standard approach. In fact, by providing the opening volley, Catania seems to have set the stage in a way that reduced further need to respond. The cost is certainly more because it requires a well done prior art search, search report and a discussion of the references in relation to the claims. The search & report should run under $1,000 and the discussion should be about the same cost as responding to a well reasoned office action. Although, the attorney will not need to step through the sometimes painful process of amending claims. Almost certainly, prosecution of this case was cheaper than the typical case that is allowed after an RCE and amendment. Of course, the process has a learning curve   [Mike - can you tell us how much did this cost here, and who did the search?].

What’s the Benefit: The greatest benefit of accelerated examination practice is that the patent issues much more quickly. For some clients early issuance is strategically important. From anecdotal evidence – such as this case – it appears that the PTO is more willing to immediately allow cases rather than going through the rejection churn. I believe that the PTO is assigning accelerated examination cases to primary examiners who are already more likely to allow cases quickly, without amendment, and without the notice of allowance being withdrawn because of a second-pair-of-eyes review.

For some firms, there may also be a benefit of getting the work done and paid for up front when the client is excited about the technology and the inventor still works at the company – rather than three years later when the traditional response to an office action would be done.

Documents:

106 thoughts on “Accelerated Examination Case Study

  1. “Someone could mistakenly determine that it does, but that is irrelevant.”

    No it’s not irrelevant. Because examiners make this mistake routinely.

    I see it all the time. The claim recites “wherein the element is anodized” and the examiner writes some drivel to the effect of, “with respect to the anodized element, as it is a product by process limitation it has been given no patentable weight” or whatever lame form paragraph they punch up says.

    Happens all the time. Wrong every time. Not irrelevant.

  2. JD just because an examiner makes a mistake as to a limitation and then makes another mistake as to it not getting weight is irrelevant to the discussion and you know it. Bottom line is, chrome plated wheel does not contain a process limitation. Someone could mistakenly determine that it does, but that is irrelevant.

  3. “You need to provide some rationale why you think the structures would be identical. Did you provide that? Or did you just state, “Applicant did not provide proof why the claimed structure is different, thus, the prior art structure anticipates the claimed invention”?”

    I told you what I did, I called to discuss the claims. I didn’t call to reject the claims. Maybe you weren’t aware that there is no burden of proof when merely discussing claims. Maybe you’re aware that there isn’t but you’re playing pretend that there is so that you can attempt to pull the wool over my eyes and act like you know something? Probably.

    Guess what? Sometimes I’m in your patent office telling people their claims will be invalid and getting them to abandon. Not once during these times has a burden of proof been required or met.

    Why this will not post I do not understand but I will keep posting it until it works.

  4. “Any device/product claim can be written with a combination of structural/product-by-process limitations. As such, ALL device/product claims would be subject to your hypothetical.”

    Doesn’t seem to me like just because a claim CAN be written in a certain way opens it up to attacks on things other than how it WAS written. Although it is my belief that the comprising language only applies to the structure in product by process claims otherwise they would be ash 102′d.

  5. Jd just because some examiners miss interpret claim limitations don’t make blatant structural limitations into method step limitations. That he said it didn’t get any patentable weight is evidence enough that the particular examiner you’re dealing with is either a novice or trying to be sly.

    I’m tacking a previous post onto this one to see if it will finally post.

    Man half my posts aren’t posting.

    “Okay, let’s try this one: “I had concluded that the claim was allowable previously because I didn’t have art on it.”

    Or maybe this one: “I did not have that same structure made by the process shown in my art”

    So because I concluded that a claim that had a method limitation in it was allowable I didn’t have art on the structure only ind claim? Wait a minute here… And let’s see here, because I didn’t have the same structure made by the process shown I didn’t have the structure made by a different process that wasn’t shown in the app? None of your conclusions follow from what I said JD, but then, you probably already realize that, attorneys see their own mistakes fairly quickly, some hate to own up to them though.

    “Any device/product claim can be written with a combination of structural/product-by-process limitations. As such, ALL device/product claims would be subject to your hypothetical.”

    Doesn’t seem to me like just because a claim CAN be written in a certain way opens it up to attacks on things other than how it WAS written. Although it is my belief that the comprising language only applies to the structure in product by process claims otherwise they would be ash 102′d.

    “You need to provide some rationale why you think the structures would be identical. Did you provide that? Or did you just state, “Applicant did not provide proof why the claimed structure is different, thus, the prior art structure anticipates the claimed invention”?”

    I told you what I did, I called to discuss the claims. I didn’t call to reject the claims. Maybe you weren’t aware that there is no burden of proof when merely discussing claims. Maybe you’re aware that there isn’t but you’re playing pretend that there is so that you can attempt to pull the wool over my eyes and act like you know something? Probably.

    Guess what? Sometimes I’m in your patent office telling people their claims will be invalid and getting them to abandon. Not once during these times has a burden of proof been required or met.

    Why this will not post I do not understand but I will keep posting it until it works.

  6. “Man half my posts aren’t posting.

    “Okay, let’s try this one: “I had concluded that the claim was allowable previously because I didn’t have art on it.”

    Or maybe this one: “I did not have that same structure made by the process shown in my art”

    So because I concluded that a claim that had a method limitation in it was allowable I didn’t have art on the structure only ind claim? Wait a minute here… And let’s see here, because I didn’t have the same structure made by the process shown I didn’t have the structure made by a different process that wasn’t shown in the app? None of your conclusions follow from what I said JD, but then, you probably already realize that, attorneys see their own mistakes fairly quickly, some hate to own up to them though.

    “Any device/product claim can be written with a combination of structural/product-by-process limitations. As such, ALL device/product claims would be subject to your hypothetical.”

    Doesn’t seem to me like just because a claim CAN be written in a certain way opens it up to attacks on things other than how it WAS written. Although it is my belief that the comprising language only applies to the structure in product by process claims otherwise they would be ash 102′d.

    “You need to provide some rationale why you think the structures would be identical. Did you provide that? Or did you just state, “Applicant did not provide proof why the claimed structure is different, thus, the prior art structure anticipates the claimed invention”?”

    I told you what I did, I called to discuss the claims. I didn’t call to reject the claims. Maybe you weren’t aware that there is no burden of proof when merely discussing claims. Maybe you’re aware that there isn’t but you’re playing pretend that there is so that you can attempt to pull the wool over my eyes and act like you know something? Probably.

    Guess what? Sometimes I’m in your patent office telling people their claims will be invalid and getting them to abandon. Not once during these times has a burden of proof been required or met.

    Why this will not post I do not understand but I will keep posting it until it works. ”

    Me from yesterday lol lets see if it will post now.

  7. “‘The “chrome-plated wheels’ is a product-by-process limitation

    No, it’s not. It’s funny that you would say this, given your misplaced reliance above re how ‘one skilled in the art’ would interpret the claim.”

    You really have never prosecuted an application outside your microniche of nucleic molecules and protein fragments, have you?

    Claim recitations like that are routinely deemed to be product-by-process limitations by examiners.

    I was reviewing an application the other day and the claim recited, inter alia, a tube having a pair of conductors helically wrapped around the tube. The examiner claimed it was a product-by-process claim and was not required to give the “helically wrapped around” limitation any patentable weight. (Guess what? That’s right, you guessed it, the examiner’s art didn’t have the limitation.)

    You really need to get out more.

    Then again, maybe you don’t.

  8. “The “chrome-plated wheels” is a product-by-process limitation”

    No, it’s not. It’s funny that you would say this, given your misplaced reliance above re how “one skilled in the art” would interpret the claim.

    ” there is no separate class of subject matter entitled “product-by-process.”

    Tell it to the CAFC which has developed a set of law directed specifically at such claims. These claims begin with preambles such as the following “The product formed by a process, wherein said process comprises steps: blah blah blah”

    “You also cannot have any possible step since certain of the ‘possible’ steps would destroy the characteristics of the structural limitation being claimed.”

    What characteristics? I thought it was impossible to describe the composition and that’s why product-by-process claims were “necessary.”

    “The “comprising” lets you add additional structural features, but it doesn’t let you add your “heating the xxxx until it turns to ash” step, because it isn’t a method claim.”

    Actually it effectively *is* a method claim and will be interpreted as such during litigation. But let’s not complicated this for you.

    Instead, let me ask this question: as an infringer, how do I know when an added step (added to the steps recited n the product-by-process claim) changes the product sufficiently that I no longer infringe?

    I expect an incredibly disappointing answer from you. Try surprising me for a change.

  9. “The product that meets the limitations being recited.”

    The problem here is that “comprising” is open ended. MM is technically right, another spe has brought this up before, but I don’t believe that was the way the judiciary intended it to work. They want only the structure to be modified by comprising rather than the structure and the method steps. Be clear though, there is no “product by process limitation” there are only structural and method step limitations in these types of claims.

    “Your pile of ash doesn’t meet the claimed limitations of a chrome-plated wheel.”

    He didn’t mean the actual pile of ash would anticipate, he meant the step of raising the heat could be inserted into the method step limitations because of the word comprising. And that method step is allowed to affect your product in any way shape or form, including turn it into ash. At least that is how the actual argument goes, he may have flubbed it somewhat.

    “You also cannot have any possible step since certain of the ‘possible’ steps would destroy the characteristics of the structural limitation being claimed.”

    But that’s not really true, because destruction of the structural limitation being claimed does not matter when you’re talking about method steps and be clear, chrome plating is a method step (though in your hypothetical you haven’t even created a real product by process claim, you need to say “chassis; and wheels where the wheels are formed by chrome plating” just saying chrome plated wheels is no different than saying gold plated wheels, you’re still describing pure structure, no method step). It is really and issue of of blending claim types, it just should never have been allowed. Different rules apply to different claim limitation types.

    I have a post right now that will not post and I keep trying to post. I’m going to see if this one will post.

  10. “First, I’m talking about a product-by-process claim with a comprising step.”

    First, there is no separate class of subject matter entitled “product-by-process.” Also, they aren’t method claims. Instead, you can have product-by-prcess limitations with both product claims and device claims. As such, your analysis is based upon a wrong premise.

    For example, consider the claim:

    A classic car comprising:
    a body with a cool paint job,
    a transmission,
    a chassis, and
    chrome-plated wheels.

    The “chrome-plated wheels” is a product-by-process limitation used within a device claim.

    The “comprising” lets you add additional structural features, but it doesn’t let you add your “heating the xxxx until it turns to ash” step, because it isn’t a method claim.

    “The product that results when ONLY the recited steps are followed? Or the product that results from ANY method that includes the recited steps?”

    The product that meets the limitations being recited. Your pile of ash doesn’t meet the claimed limitations of a chrome-plated wheel. However, it doesn’t exclude the chrome-plated wheel from also encompassing the step of buffing the wheel to acheive a certain specified brightness.

    So, to answer your question — neither is the correct answer. You don’t have to have only the steps listed. You also cannot have any possible step since certain of the ‘possible’ steps would destroy the characteristics of the structural limitation being claimed.

    “you are simply screwed because you haven’t conceived of all the structures that your claim purports to cover”
    That statement applies to any device that is claimed using the “comprising” language since, for example, it doesn’t exclude my classic car also comprising a hood ornament of a full-scale battleship or the back seat including a Finnish sauna.

    “I’m sure you see the problem”
    I see the problem, it is that certain posters on this board are so unused to struture claims that they trip over some pretty basic concepts.

  11. “So are you saying that all device/product claims are anticipated by a pile of ash?”

    Um, no. I’ll repeat myself since you’re having difficulty. First, I’m talking about a product-by-process claim with a comprising step. The claim purports to cover any products made by the process. The problem (and it’s a fatal one, so I apologize in advance if it hurts your feelings) is that inserting **any** of a billion different conceivable steps into your recited steps (which I am legally and literally allowed to do) changes the structural features of the resultant product.

    So the question is: which product that you can’t describe structurally are you claiming? The product that results when ONLY the recited steps are followed? Or the product that results from ANY method that includes the recited steps?

    Unless you want to create very ad hoc rules for product-by-process claims (a truly stoopit idea because they serve no purpose except as a crutch for lazy and/or greedy people) you are simply screwed because you haven’t conceived of all the structures that your claim purports to cover.

    I’m sure you see the problem, just as I’m sure you will pretend that it’s not a problem (because you appear to be somewhat dense and prone to ignoring issues even when they are laid out quite plainly before you).

  12. “You work in the coating arts and you don’t know the difference?”

    Technically no I don’t, but my art has some of it on the fringes.

    A riddle: If you brought most of all the traditional high tech areas together you would be sitting on it, what is it?

    Answer: 6′s art.

    I went to a university and was in the top 10%.

    Come on, out with it, the structural differences between cladded and electroplated items.

  13. “What is the structural difference between items that are cladded and items that are electroplated?

    Do tell, that might come in handy for me sometime.”

    You work in the coating arts and you don’t know the difference? I know the standards at the USPTO are low, but are they hiring directly out of the vocational high schools now?

    I can see the recruiting poster now:
    “Did you take welding as a junior in high school, then become an Examiner in the metalurgical arts. Did you ever want to stick it to those supposedly ‘intelligent’ classmates that went on to engineering and law school, then now is your chance to make their life miserable. Apply here: http://www.uspto.gov

  14. “Thus any prior art description of ‘ash’ is sufficient to tank the claim.”

    Are you daft?

    Any device/product claim can be written with a combination of structural/product-by-process limitations. As such, ALL device/product claims would be subject to your hypothetical.

    So are you saying that all device/product claims are anticipated by a pile of ash?

    When I use the term “bicycle,” I don’t have to describe all the elements of a bicycle. Similarly, when I use the term “nickel-plated widget,” I don’t need to describe the metalurgical properties of nickel plating. It isn’t necessary to distinctly claim the invention.

  15. “cladding and electro-plating”

    What is the structural difference between items that are cladded and items that are electroplated?

    Do tell, that might come in handy for me sometime.

  16. “And let’s face it: the PTO can just do whatever they want with product-by-process claims because the law on product-by-process claims is a joke.”

    Why is the law on these types of claims a joke? A joke just because you cannot understand some very basic concepts? Personally, I don’t find either the 2nd paragraph of 35 USC 112 or 35 USC 102 to be mentally taxing, but perhaps you do.

    The rationale underlying all your arguments on many topics is quite easy to see — if you don’t understand what is going on (the law, the technology, or both), you discredit it.

    “LOL. What an incredibly high hurdle to overcome!!!!”
    It isn’t that high of a hurdle, particularly for those skilled in the art. However, if you don’t understand the difference between, for example, cladding and electro-plating, then you are in sorry, sorry, sorry shape.

  17. Of course, once an Examiner provides “a rationale” for why the product resulting from the claimed process is “similar” to a prior art composition, then the Applicant is screwed because the poor Applicant is incapable of describing the impossible-to-describe product.

    By the way, did you ever what happens when a product-by-process claim uses “comprising” language? Because such a claim literally covers a method with the recited steps PLUS a final step of exposing the intermediate product to heat sufficient to turn the product to ash.

    Thus any prior art description of “ash” is sufficient to tank the claim.

    Sounds silly? It is silly. But not as silly as the idea that you can conceive of a composition that you can’t describe.

  18. “You need to provide some rationale why you think the structures would be identical. ”

    LOL. What an incredibly high hurdle to overcome!!!!

    And let’s face it: the PTO can just do whatever they want with product-by-process claims because the law on product-by-process claims is a joke.

    But an easy one to fix. Rader is waiting.

  19. “For example, extruded objects have a different molecular structure than objects that are, for example, injection molded.”

    If it’s impossible to describe the structure, then how do you know that it’s different?

    Or put another way: if you see my product on the market, how will you know it infringes your patent? How will you explain why you believe it infringes to a judge? After all, you admitted that you can’t describe it.

    We can cut this off at any time because there is no way for you to win this argument. Product-by-process claims are worthless. Claim your method and claim your composition. Don’t believe for a second that some 19th century Supreme Court opinion is going to persuade anybody. I’m betting that even Judge Newman has seen the light by now.

  20. “I did just say that it could not be described!). Besides if I was actually forced to do that the claim would be so narrow that people would realize that they are wasting money on my services. I’m better off convincing clients that product-by-process claiming is legitimate and useful, even when it’s clear that they are really method claims at the end of the day.”

    What is claimed is:

    1. A nickel-electroplated widget.

    2. A nickel-cladded widget.

    3. A nickel-dipped widget.

    4. A nickel ion-bombarded widget.

    All these are examples of product-by-process claims, and all of them distinctly describe the various structures being claimed.

    35 USC 112, 2nd paragraph talks about “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

    Does one having ordinary skill in the art need a detailed explanation of microstructural differences between these various widgets? NO!
    Do these claims particular point out and distinctly claim the respective subject matter? YES!
    Would a potential infringer know the difference between the scope encompassed by, e.g., claim 1 amd claim 2? Undoubtedly.
    Is MM’s tired rant about product-by-process claiming the product of a substandard education and poor knowledge of materials/processing/metallurgy? Without a doubt.

  21. “Maybe you can point out for me my admission that I didn’t have art on the structure.”

    Okay, let’s try this one: “I had concluded that the claim was allowable previously because I didn’t have art on it.”

    Or maybe this one: “I did not have that same structure made by the process shown in my art”

    Yes, pointing out ridiculousness is SOP. Fortunately, examiners like you make it exceedingly easy.

  22. “I indicated claim 2 as allowable (this was a mistake since claim 2 is a product by process that hasn’t been shown to be different from the product in the prior art, though it might be, at the same time though, shouldn’t the attorneys have known that the claim was invalid?”

    Still don’t understand burden of proof?

    From MPEP 2113:
    Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).

    You need to provide some rationale why you think the structures would be identical. Did you provide that? Or did you just state, “Applicant did not provide proof why the claimed structure is different, thus, the prior art structure anticipates the claimed invention”?

  23. “For example, extruded objects have a different molecular structure than objects that are, for example, injection molded. ”

    So claim the different molecular structure? What is so hard about that? Nothing, you just want more claim scope that the statute doesn’t really allow you. Maybe you don’t know what the different molecular structure is? You might have that problem that MM is stating above.

    Even assuming that you’re right, and there is a genuine need for it then the requirement should be for app to include a statement that there is simply no other way to claim it before being allowed to utilize the product by process. And proving that if the structure is found then the method limitation would distinguish the claim because there is proof that it will make a different structure. Have all of that taken care of BEFOREHAND not after the rejection is issued.

  24. “So why wasn’t the claim allowed?”

    /facepalm

    “But you just admitted that your art didn’t meet all of the structural limitations from the beginning of the claim, so what does it matter that the claim recited a product-by-process limitation?”

    No, I did not admit that. What I said was that I had all the structural limitations, and that I did not have them being made by y process. If I didn’t have art on the structure then the original ind would have been allowable.

    “And applicant doesn’t have to “prove” anything until you provide a reference that discloses the claimed structure.”

    I did.

    Here are the facts. Claims:

    1. A bicycle having a pedal
    2. the bicycle in claim 1 wherein the pedal is made by coinjecting molding of plastic.

    The art I had showed a bicycle with a pedal made by insert and outsert molding.

    I indicated claim 2 as allowable (this was a mistake since claim 2 is a product by process that hasn’t been shown to be different from the product in the prior art, though it might be, at the same time though, shouldn’t the attorneys have known that the claim was invalid? They’re the experts on the lawlol righto?).

    They moved claim 2 up and then the rest is as was related before.

    The only person that appears to need remedial training is you, remedial training in reading comprehension. Maybe you can point out for me my admission that I didn’t have art on the structure. Or maybe you’re like 90%+ of the responses I get and can’t point any such ridiculousness out. SOP at any big law firm amirite?

  25. Malcolm,

    Please explain to me how you would claim an element of an apparatus that is formed by extruding other than by reciting that it is extruded. Same with an element that is anodized. Or cast.

    You can use your powerful computer brain if you want to.

    Thanks.

  26. If you can’t describe the structure of a composition, then you do not have a fixed and permanent idea of the structure. If you lack a fixed and permanent idea of the structure, then you lack the conception required to legally invent that structure.

    In short, if you can’t draft a claim desribing the composition, you aren’t entitled to the invention.

    But do enjoy your method claim, assuming it’s novel.

    This is the law. Eventually the CAFC will deal with it, hopefully this year. Do you want to be caught with your pants down?

  27. “There is simply no other way to claim an extruded object/element/structure other than by claiming it is extruded. Another example is cast iron. Yet I constantly get ridiculous rejections of claims reciting such features.”

    Translation: I am too lazy to spend time trying to describe this composition (assuming it even is a composition — I did just say that it could not be described!). Besides if I was actually forced to do that the claim would be so narrow that people would realize that they are wasting money on my services. I’m better off convincing clients that product-by-process claiming is legitimate and useful, even when it’s clear that they are really method claims at the end of the day. That way I can take the client’s money and waste it on appeals and such, while engaging in chit chat with the client about how unfair and ridiculous the PTO is being. I hope the client doesn’t read this blog, though.

  28. “I had concluded that the claim was allowable previously because I didn’t have art on it.”

    So how did you have art on it when your attention was drawn to the product-by-process limitation?

    “That said, I did not have that same structure made by the process shown in my art that I had.”

    So why wasn’t the claim allowed?

    “it must be proven in the spec (or otherwise) that the product would be different from a prior art product meeting all structural limitations from the beginning of the claim.”

    But you just admitted that your art didn’t meet all of the structural limitations from the beginning of the claim, so what does it matter that the claim recited a product-by-process limitation?

    And applicant doesn’t have to “prove” anything until you provide a reference that discloses the claimed structure. As you didn’t have such a reference, why were you asking for “proof”?

    It’s clear you, and your SPE, need some remedial training.

    “Reason number 1,343,203 to end product-by-process claiming altogether.”

    Some products, or structures, cannot be claimed other than by the process by which they are made. For example, extruded objects have a different molecular structure than objects that are, for example, injection molded. There is simply no other way to claim an extruded object/element/structure other than by claiming it is extruded. Another example is cast iron. Yet I constantly get ridiculous rejections of claims reciting such features.

  29. “I then asked him if he could tell me how the process by which it was made would make the structure different from the prior art structure. He told me that off hand he could not but that he agreed that it would have to be different for the claim to be valid and so it would have to be shown to be different. So he said his assistant would call me back. His assistant called me back wondering why I thought it was a product by process claim. I told him, then he said he’d have to call me back because he couldn’t say off hand why it would make the structure different.”

    What an incredible waste of everybody’s time. Reason number 1,343,203 to end product-by-process claiming altogether.

  30. I had concluded that the claim was allowable previously because I didn’t have art on it. In other words, I didn’t pay enough attention to one of the thousands of other details that comes into play thanks to the needlessly complicated patent lawlol that goes beyond the standard 101/102/103/112.

    I didn’t “miss” the limitation, I “missed” that it was a process limitation tacked on to a product claim and that having it tacked on made it a product by process claim. The SPE pointed out that the limtitation made the claim a product by process claim and that therefore it must be proven in the spec (or otherwise) that the product would be different from a prior art product meeting all structural limitations from the beginning of the claim and he wanted to know if that could be shown before he signed it. Of course it wasn’t shown so I asked the attorney if it seemed to be a product by process claim, and after awhile of thinking he agreed that it was. I then asked him if he could tell me how the process by which it was made would make the structure different from the prior art structure. He told me that off hand he could not but that he agreed that it would have to be different for the claim to be valid and so it would have to be shown to be different. So he said his assistant would call me back. His assistant called me back wondering why I thought it was a product by process claim. I told him, then he said he’d have to call me back because he couldn’t say off hand why it would make the structure different. I said ok, and he called me back wanting to cancel the claim and all the deps coming from it so I said ok.

    That said, I did not have that same structure made by the process shown in my art that I had. So the purely method claim equivalent to the product claim at issue was allowed. The whole story basically just shows the mischief that is caused by even having product by process claims. And for that matter, product and process claims in the same application at all. All that allowing that mess to exist accomplishes is complicating an otherwise much simpler system.

  31. “It was kind of a trick claim, it was like here is this huge list of structure, and then at the end (because a dep was moved up) wherein x is formed by y step.”

    So you “missed” the product-by-process limitation, and concluded that the claim was allowable.

    Some donothingknownothinguselessdeadweightGS-15 points out the product-by-process limitation, and you conclude that the claim is now not patentable?

    Huh?

    How does that work?

  32. O Lawdy, is that me some tears? QQ moar. You don’t need for me to spell out that the state of the law previous to the (50′s? iirc) decision that settled the matter of whether or not the structure being acted upon in a method claim was limiting or not was that such limitations did not distinguish the method over a different product made by the exact same method (in so far as was claimed). You already know what I’m saying, and you don’t need for me to re-cite and re-cite and re-cite the case that did this. Even though I probably have it in a favorite right now. It is on PO already, lurk moar newbcake wakeup.

  33. “Call me a law purist.”

    You need to actually understand the law to be a “law purist.”

    “I should add, it is my personal opinion that the court all of a sudden about facing on structural elements such as the rake and can of soda in the above examples being limiting was an affront to the patent statutes and I’m surprised that everyone just accepted this major shift in patent law.”

    You need to explain exactly what “this major shift in patent law” actually consists of. While you are at it, you can establish your “law purity” by explainig what was the state of the law prior to the shift and what is the current state of the law.

    Case citations would be helpful as well. Not necessary, but it will establish your bonafides as a law purist since no law purist would ever make a statement about the law without providing a case cite for support.

  34. With respect to the statement “No disclosed features that are unclaimed at this time are currently seen as features that may be claimed later”, would filing a broader continuation so quickly be evidence that this statement was false at the time it was made. Not implying that is true in the instant case, but it seems one might have some explaining to do if litigating a case where the accused infringer is clear of the first case but covered by a continuation.

  35. “If the prior art rake that is provided has 18 tines, then it anticipates providing a rake that has 16 tines because a rake having 18 tines necessarily has 16 tines.”

    Not if the claim says “only 16 tines”. But now you’re getting into claim drafting.

    “The step of providing a soda can is a different step than the step of providing a rake. ”

    That is different than the current discussion. The step of “providing” is acting UPON the structure in question. When the step is acting upon the structure in question then you’re not doing the same thing as we are dicussing here. Here we are discussing apparatus limitations as used in claims where they are the thing performing the method step.

    Change your example claim to providing a rake using an XOrakemaker3000 and the comparison example claim to providing a soda can with an XOrakemaker3000. The soda can and the rake are both being acted upon, and are in effect “product” structural features and thus are limiting. The XOrakemaker3000 is not limiting because it is not being acted upon and does not distinguish the method of providing a rake from the method of providing a soda can.

    “Otherwise I’d appeal it and get the Examiner noticed in a bad way by his or her superiors.”

    The superiors, including one member of the board and one acting director, are on my side already. Gl.

    I should add, it is my personal opinion that the court all of a sudden about facing on structural elements such as the rake and can of soda in the above examples being limiting was an affront to the patent statutes and I’m surprised that everyone just accepted this major shift in patent law back when it happened. I guess since it is pro applicant the attorneys didn’t btch and the office just figured “no biggie”.

    Call me a law purist.

  36. “But you should have been aware that a product-by-process claim still must define a novel and unobvious product to be patentable.”

    Perhaps I should have been, and perhaps I was, but I didn’t recall it on that day. The real problem with that case wasn’t so much that I didn’t recall that immediately, but that I didn’t recognize a product by process claim immediately. It was kind of a trick claim, it was like here is this huge list of structure, and then at the end (because a dep was moved up) wherein x is formed by y step. I would feel worse about missing it but the attorney and his assistant didn’t realize right away that the claim was product by process either even when I brought it up. Only the GS 15 saved that particular claim that would be invalid from being issued. And that’s what we keep them around for :)

  37. If the prior art rake that is provided has 18 tines, then it anticipates providing a rake that has 16 tines because a rake having 18 tines necessarily has 16 tines. I think I saw that question on the LSAT in the logic section.

    But as to patentable weight, who cares what the prior art shows?

    Under the case law, functional limitations are not normally given patentable weight in an appratus claim (unless they specify how the structural components are operably connected). There is no need to pony up any prior art to make that rejection.

    But I don’t recall that the same applies to structural limitations in a method claim. The step of providing a soda can is a different step than the step of providing a rake. The limitation to the item being provided has to have patentable weight. It follows that the step of providing a rake having 16 tines is patentably distinguishable from the step of prividing a rake having 18 tines. It is a different thing being provided, and therefore a different step. That is why you have to pony up some art.

    And I would not flinch if an Examiner rejected my method claim limitations because the verbs have been used before, on the premise that the objects have no patentable weight. If he or she ponied up some art, then we would start to have a discussion. Otherwise I’d appeal it and get the Examiner noticed in a bad way by his or her superiors.

  38. I’m aware of what you were talking about. I was having some fun at your expense.

    But you should have been aware that a product-by-process claim still must define a novel and unobvious product to be patentable.

    You can find out handy tidbits like that in the MPEP.

    Let me know if you’re not aware of the MPEP yet and I’ll explain it to you.

  39. “So you were just made aware of the requirement that in order to be novel, the product must be different than the prior art?”

    I’m afraid that you’re missing something JD. We are talking about the ability of a method step to cause a product to be distinguished from the prior art. Not just that a product must be different from the prior art. But this is more complicated than you seem to be able to handle so I’m not going to bother to explain it to you further since you are blatantly concerned only with understanding basics, and barely grasping those. One day you’ll need to know something a little more advanced and someone with authority over your case will inform you.

    And it looks like a few posts of mine that should have popped up didn’t. One thing, the guy who says that irl people make 3+ ind’s in most cases so it is hard/impossible to make the case go where you want. That isn’t true. There is a method to classifying cases. Certain types of claims control where the case goes after having been classified by a human (they get presorted by machines). At least some attorneys that practice before me can readily tell where a case should go and there is a good chance it will make it there. Just because you fail at this doesn’t mean all attorneys should.

  40. It’s not a perfect solution. But a single claim application would require a substantially smaller search and analysis. I think that, if your inclined to seek accelerated examination, an application with one, two or three claims may be the best accelerated examination route.

  41. “However, that judicial exception comes with some conditionals, which I’m sure you’re aware of JD (one of which I just was made aware of myself the other day before I allowed my first product by process claim, namely that the product must be proven to be a different product than the prior art (that is structurally) when made by the specific steps in the claim, where this can’t be proven then the claim fails to properly distinguish itself).”

    So you were just made aware of the requirement that in order to be novel, the product must be different than the prior art?

    How long you been there?

    But when I criticize the “training” provided by PTO (mis)management, you blather, “Well JD, I’d like to see you do better.”

    LOL

    Yes, I was aware of that requirement. For like a billion years now.

    And I ask you again, given the “quality” of the “training” you’ve apparently received, how is it possible that I could do worse?

  42. I almost added SPI as a freebie for computer art, but I don’t really believe that it is as good as some commercial databases.

  43. Hi Deane, your website has some interesting sound effects, especially if you move the mouse back and forward quickly across the buttons!

    I would have thought that clicking on the EPO and JPO files on EAST before you search would satisfy the foreign art requirement, even though it’s incomplete and not full text? Do you have to cover non-patents though? If you do, then paying for commercial database time would be mandatory, with a few exceptions, e.g. Medline for medical art, etc.

    Alun

  44. 6, in response to what you wrote to me:

    I think that “Structural limitations of methods are provided patentable weight” got it basically right.

  45. BigGuy,

    Great form paragraph. But it needs to be modified to allow PTO-mid-level-(mis)management stooges to insert misspellings.

  46. “A word to the wise: claim such that the claims go where you want them to go for examination and don’t end up with someone that knows little about the subject matter.”

    I don’t believe it is possible to do this. In this case we have an application with one claim in it. In the typical case, the applicant files a claim with several claim types.

    No attention whatsoever should be paid to the PTOs neglected classification scheme when drafting claims.

  47. “The only thing that was even different than AAPA was one structural feature (we’re talking about the ind claim) of the apparatus”

    The case law states that the structural limitations limits the method, then it must be considered when determining if the method is identically disclosed under 102.

    If your claim a method of deposition using a deposition machine (e.g., a CVD coater) recites some type of mixer (not previously taught) that mixed the reactants in a different way than the prior art, then the inclusion of the mixer will change the method – perhaps the film will be more uniform in composition and/or thickness.

    However, if the claim recited a “switch,” which turned the deposition machine on and off, then the claim of the “switch” wouldn’t distinguish the method from the prior art.

  48. I am one of those who feel that the accelerated practice is a booby-trap, and this is a good example. With due respect, while Mr. Catania’s 53 page submission was a work of art, I believe he has inadvertently set himself up for at least one inequitable conduct charge and has significantly increased the likelihood that infringers will go after this patent for invalidity.

    First, at page 31 of his submission, Mr. Cantanio inadvertently misrepresents the law when he alleges that there must be a suggestion, motivation, or teaching in order to establish a prima facie case of obviousness. He then cites KSR. KSR clearly stated that the such a rigid application of the TSM test is neither sufficient nor necessary for establishing obviousness.

    Second, Mr. Cantania alleges that only 7 references — all US patents — are “most closely related to the subject matter of the claim.” OK, if I have to go after this patent in an infringement fight all I have to do is find a German patent or a non-patent reference that is much more closely related than at least one of Mr. Cantania’s 7 subjective choices, and I will have him doing one of those jigs like Clint Eastwood used to make the bad guys do with his 6-shooter.

    This is precisely my point — the applicant should not be put in the position of having to allege on the record what is the most relevant art. That is a call for the PTO, and only the PTO, to make. The applicant should, of course, by able to contest relevancy, but he should never have to allege that references A, B, and C are the most relevant. It is impossible to ever know that. This is a huge trap.

    By forcing the applicant to make the allegation about what is the most closely related art, the accelerated procedure invites litigation by opening a third door to challenge validity on art.

    The first is that they contest the PTO finding of lack of anticipation and/or obviousness, as always.

    The second is they find additional references that anticipate or make obvious, as always.

    But now they also find one reference that is more relevant than those cited by the applicant as “the most closely related”, or they find a misstatement of the law — and they have grounds for arguing inequitable conduct.

    I would also suggest that in addition to a multi-thousand dollar PA search, Mr. Catania’s client was on the hook for 53 pages of submission — AND THAT IS FOR A SINGLE CLAIM!!!! Dennis feels that all this up front work would have been done anyway in response to rejections, but I can’t remember the last time I wrote a 53 page response to the rejection of a single claim.

    The examiners and the patent searchers are the primary, and likely only, beneficiaries of this accelerated examination program. It’s toxic, IMHO.

  49. JD “This case [Netcraft Corp. v. Ebay, Inc. and Paypal] has absolutely nothing to do with the interpretation of the term “providing” as it is used in a method claim.”

    I also found that case irrelevant to the issue presented by the claim here, which is very straightforward. It either means “giving” or “presenting” or it means nothing. Doesn’t really change the outcome.

  50. “See, e.g., Netcraft Corp. v. Ebay, Inc. and Paypal, Inc.regarding interpretation of the term, ‘providing.’”

    This case has absolutely nothing to do with the interpretation of the term “providing” as it is used in a method claim.

    Did you actually read the case?

  51. Dennis writes -

    >> The search & report should run under $1,000 and
    >> the discussion should be about the same cost as
    >> as responding to a well reasoned office action.

    Emphaticly not true.

    Replying to a well-reasoned office action involves either (a) ensuring that the Action is correct and then amending the claim, or (b) comparing one claim element to the one feature of the reference that the examiner identified, and replying to that one issue. That’s usually two to six sentences. (Of course I have to skim the rest of the reference to make sure nothing more is there, but the choice of what to think about fully and to write is still VERY confined.)

    In contrast, writing an examination support document for references from scratch requires anticipating how any possible examiner – from the smartest to the dumbest – will look at the entirety of each and every reference, and how they might be combined. The mere task of choosing issues to discuss takes a long time per reference, and then framing arguments that have to be consistent across all ten or twelve refereces is an n**2 or n**3 task! It’s a HUGE amount of work, and totally intractible unless you’ve already done the work for another purpose, e.g., the patent is about to be asserted in litigation, and you’ve done the study in that context. Even the PTO doesn’t require that of its examiners – examiners are only responsible for addressing the one best ref, or one best combination of references – a far more tractible set of issues!

    The PTO based its cost estimates on uninformed speculation – the PTO’s record produced in Tafas indicates they NEVER consulted with a practicing attorney to get any objective information. What’s especially striking is that the PTO produced several accelerated exam support documents – so the PTO knew who to ask if they wanted informed estimates. I called these attorneys, they told me they had never been contacted by the PTO. Instead, the PTO just made up fiction. (In any other legal practice, a party that did this would be sanctioned for lying, but patent attorneys have come to accept uninformed speculation and refusal to investigate facts as normal if the PTO does it. How come is that?)

    The world does not need more uninformed, unresearched bloviation.

  52. “A word to the wise: claim such that the claims go where you want them to go for examination and don’t end up with someone that knows little about the subject matter.”

    Thanks for the advice, Examiner Dan, er, I mean 6. But given the current state of examination, I don’t think it’s really all that helpful.

  53. To Public Searcher DIP,
    You may want to modify your robots.txt file so that at least the front page of your website gets indexed by search engines. It may help folks find you … unless the word of mouth is doing the job. Just a thought.

  54. I should note also that by claiming the appratus like a method claim he got the claims bounced around so long that they were sent to someone that works on entirely different things and the examination I gave was undoubtably subpar. The novel feature on the line was probably an off the shelf part used specifically for doing things like he did and were I actually an examiner in the proper AU and was feeling bored that day it might have been grounds for Off notice. I on the other hand struggled to find a zeroed in spot on exact match.

    A word to the wise: claim such that the claims go where you want them to go for examination and don’t end up with someone that knows little about the subject matter.

  55. You aren’t rejected based on “non-distinguishment”. You’re rejected under 102 or 103. The reason that you are rejected under 102 or 103 is because the novel or nonobvious limitations are, for instance, a structural characteristic of the apparatus being used to perform a method step in a method claim.

    In the last case I had, which should not have been stuck with me as I do not work on this mess, I had a deposition machine. They were trying to claim a method of depositing a film using a specific arrangement of parts within the inner workings of a machine. The only thing that was even different than AAPA was one structural feature (we’re talking about the ind claim) of the apparatus.

    The claim reads basically:

    A method of depositing a film comprising:

    Providing material from a line with a *novel feature*
    Providing another material from a second line
    depositing a layer.

    AAPA teaches:

    Providing material from a line without a novel feature
    providing another material from a second line
    depositing a layer.

    2ndary ref teaches novel feature and provides motivation to combine.

    First, I note that yes a 103 can be made no matter what happens with regards to 102.

    Second I note that without the novel structural feature the claim fails to distinguish over AAPA at all. So the rejection can be a 102 directly over AAPA.

    In any case, the attorney realizes that the only thing he has in the case is the novel structural feature of the apparatus. Upon being made aware that he is attempting to distinguish a method claim by using the structural features of the appratus and that this is in all likelihood not proper and would lead to an invalid claim no matter how he phrases the method he is mulling over abandonment (he has ez ways to get around the 2ndary btw).

    I will be both happy and sad when he does, because the div is all apparatus and I know I should have that xferred even after I practically have all the art for the whole case already.

    In any event JD, like I said, I’ll wait until this is poised to hit you in the pocket book/make you look bad in front of the client. I still wonder how this attorney in this case is going to explain things to the client. I’ve worked with him on several cases and he’s a pretty decent lawyer imo.

  56. “6, you have two possibilities for rejecting a claim based on prior art: anticipation or obviousness.”

    Here’s a form paragraph you can use, 6:

    Claims 1-12 are rejected under the non-statutory, examiner-created doctrine of non-distinguishment. Each of the rejected claims are in fact directed to an apparatus, but include recitations that might possibly be directed to functional aspects of the claimed invention, which functional aspects vaguely remind the examiner of processes, a separate statutory category of invention, and because the examiner has neither the patience, the interest, nor the requisite level of pride in a job well done to actually attempt to understand the subject matter actually claimed and/or to formulate a proper statutory rejection, the subject claims are deemed “non-distinguished.” These rejections may be overcome with timely-filed arguments, but the examiner really hopes you’ll just go away, because that way he gets a bonus.

  57. 6, you have two possibilities for rejecting a claim based on prior art: anticipation or obviousness.

    Your attempts to create some third category, let’s call it “non-distinguishment,” are quite funny.

    Keep us laughing.

  58. JD if you can’t see the difference between an apple and an orange how better can I explain it?

    My guess is, I can get a case of yours with this problem and have it stare you right in the $.

  59. “One has to do with a legal determination of one subject matter being obvious to one of ordinary skill in the art. That would be obviousness.

    One has to do with the manner in which the claim must be different from the prior art (as well as perhaps obvious combinations). That would be the manner of distinguishing.”

    Thanks for the laugh.

  60. This study is really impressive. Thank you Mr. Catania for setting this example. I have a couple of queries: How much time (in hours) did you take for writing (i) description (ii) claims (iii) the 45-page pre-examination support document. Many thanks.

  61. Hi all. It’s Deane Elliott of IP Research. It’s nice to be recognized for providing a top quality search to Mr. Catania. One thing is certain in these matters; if you do not dot your i’s and cross your t’s during your search and in follow up documentation, your AE will petition will be denied. That is why it easily costs two to three times the usual amount of a standard novelty search.

  62. What is the meaning of this statement from the Support Document, and how would it affect a later filed continuation drawn to broader claims:

    “8(C): No disclosed features that are unclaimed at this time are currently seen as features that may be claimed later”

    I guess that “currently seen” is going to have to bear a heavy, heavy load? Does this mean a broader claim later is going to be limited to the features of the narrow claim?

  63. The real test will be how a patent received as a result of this AE procedure will hold up against a challenge in court.

  64. Although explaining the exact search terms used and the databases searched may be an excellent strategy in a few simple cases, this method breaks down pretty fast for most patents. There are so many alternate ways to phrase things, and the citation counts rapidly become unmanageable.

    We still need a rule that encourages diligent good-faith searching, and that takes into account real-world complexity and judgment issues.

    In the academic world, scientists writing research papers usually manage to do a decent job citing their colleagues. It’s a shame that the standards commonly used for a well written academic paper carry some negative baggage in the patent world.

  65. Paul, obtaining a narrow first patent with a fat prosecution history may not be so clever, if your attempts to broaden in later-filed continuations reveal art that reads on those claims. In the same situation in reverse — seek broadest possible claims first, and then narrower claims in continuations — is less likely to uncover art in the examination of the continuations that will compromise what you already obtained in the broadest possible claims.

  66. For the accelerated examination cases I’ve handled, the ESDs have been utter garbage. No offense to the good searchers out there, but for the stuff I’ve seen, the searchers tend to search for the claimed invention and not the claimed novelty.

    I recall one AE case in particular where the ESD listed 3-5 patent literature and an NPL or two. The invention was directed to an improvement of a certain well-known standardized telecommunications network. The first thing I noticed was that no publications from the well-known standardizing body were cited in the ESD. I was expecting at least one describing the standardized network. One would think you would compare your improvement to that of the standardized versions in the ESD, but this was not the case. IIRC the IDS did list a standardized network spec (makes you scratch your head).

    This case gets even better, though, because the ESD, IDS and spec all failed to mention that the alleged improvement was actually a slight improvement over an already standardized improvement. Unfortunately for the applicant, I already knew of the standardized improvement and knew the majority of their alleged improvement was fluff. And, once you subtracted all the fluff from the claim, the remaining novelty shrunk down to something fairly trivial and findable in 10 minutes.

  67. Paul,

    The current target for an AE Search is not quite as difficult as the original requirements made it out to be (this case did a Google Scholar search for example) and is not The Perfect Search. Yes, foreign art must be reviewed, but only so much as a PTO employee deems adequate (this is a key point!). A few relevant IPCs and the Derwent database included in your queries, and you’re usually home free.

    Cost is definitely more than a patentability search as Mike Catania noted. More like 2 or 3 times as much since you want to lower the probability of rejection and incurring of the 30 day reply window. Deane, myself and others treat the search as an “entry level” validity on the claims you give us. Problems only arise when we’re provided broad claims that are readily 102′d. Then we are stuck going: Do I finish the search or tell the attorney that the claims are hooey and who am I to decide that?

    Also, while the prosecution argues their case, the examiner still searches for art and makes the ultimate decision of validity… Just like any other application, only faster.

    I will readily admit to a strong bias with regard to these jobs. First, they put above average $ in my pocket, especially in comparison to a very optional patentability search. Second, they give a geographic advantage to those of us using the PTO’s EAST system for searching which I believe the examiners are more likely to approve when reviewing petitions. They know EAST and it’s syntax, they do not know other search engines. For example; this case study is littered with nears, withs and sames; and no explanation is given to their meaning.

  68. “Huh? What is this difference?”

    One has to do with a legal determination of one subject matter being obvious to one of ordinary skill in the art. That would be obviousness.

    One has to do with the manner in which the claim must be different from the prior art (as well as perhaps obvious combinations). That would be the manner of distinguishing.

    When an app comes in and files a claim the limitations are attempts to distinguish over the prior art. Different claim types do this in different ways. Apparatus claims distinguish in terms of structure. Product claims distinguish in terms of structure, and can be forced into being distinguished by steps through a judicially created exception to the normal rule called product by process claims. However, that judicial exception comes with some conditionals, which I’m sure you’re aware of JD (one of which I just was made aware of myself the other day before I allowed my first product by process claim, namely that the product must be proven to be a different product than the prior art (that is structurally) when made by the specific steps in the claim, where this can’t be proven then the claim fails to properly distinguish itself). Composition claims I assume are just like product claims in terms of distinguishing, but idk about a composition by method claim, there is no judicial exception yet.

    Finally we get to method claims. Method claims distinguish over the prior art in terms of method steps. And the courts have relatively recently held that they may also distinguish in terms of the structure which is acted on by the step. That is to say, when a novel or non obvious structure is claimed in a method for making that novel or non-obvious structure claim then it also distinguishes. The judiciary has yet to impermissibly expand method claims to be distinguishable by the structure of an apparatus used to practice it.

    But hey, imo you should file a claim like that, get rejected, and get them to, newer courts seem unfamiliar with the basics of law. Or at least they had been seeming to be. I think they’re getting their act together since the end of the 90′s.

    Who knows? Maybe at some point we’ll get our right to travel back. Judges just stopped recognizing it in the 1900-1910 period due to the violence caused by driving autos and a shift in public opinion coupled with those concerned with it (motorist groups) finally giving up appealing and striking down all the laws. I meant to post the link to the nice publication I found on the subject. “The right to travel: the orphaned right” was it iirc. It’s interesting to see how you old timers messed up the legal world so badly. To your credit, it appears you were bamboozled by your representation coupled with an apathetic court system.

  69. “I said that it did not DISTINGUISH over the other method using the other rake. Learn2distinguish. Distinguishing is different than obviousness.”

    Huh? What is this difference?

  70. Hmmm. a system case that’s incorp. by ref in the spec of this patent appears to be on a different journey through the USPTO. “here’s your speedy patent that you primed the pump on loyal always pay-on-time customer, forgive the grimy hand handing you the patent.”

  71. I have some difficulty seeing how the requisite prior art search can be done with real safety from later attack for only $1000 [even though Congress apparently thinks $500 is sufficient for PTO searches], given PTO “Search Template” language and other unrealistically onerous PTO comments in connection with the adoption of this rule suggesting that FOREIGN art should also be searched?
    [Perhaps expressly stating that you did NOT search for prior art in the patent offices of Tanatuva, Waziristan, etc. will suffice?]
    —–
    BTW, another possible advantage of this fast track tactic might be to help get venture capital funding in some cases, although a “picture claim” patent should not impress sophisticated investors?

  72. Congratulations Deane Elliott of ipresearch.biz for the public shout out from a client. I’m very jealous, but still excited to see you getting noticed! It sure beats the usual word-of-mouth we rely upon.

  73. “So if patentees are willing and able to do searches on a petition like this, why can’t they do them for ESDs?”

    TJ,

    You are using the term “patentees” too broadly. Patentees are an extroadinarily diverse group of people and organizations with equally diverse business and strategic objectives.

    In this particular case, the applicant felt the tradeoff was worth it for his particular objectives.

    For the vast majority of other applicants, however, the tradeoff is not worth it as evidenced by the very low participation rate in the accelerated examination program.

  74. You want to get a *very* accelerated examination? Put a single claim in the application. It’s brilliant. And the continuations should get picked up fast too since the examiner is reasonably familiar with the app.

  75. TJ,

    If you have to ask a question like that, you understand neither the impact of ESD’s nor the strategy as hinted at by Posted by: Paul F. Morgan at Feb 28, 2009 at 11:32 AM.

    Cost, liability, claim number and scope… so many factors that make the case in point and the wholesale application of ESD’s laughable that I don’t know where to begin to help you understand the lunacy of what you suggest.

  76. “And maybe going from 16 fingers to 18 fingers has an advantage. You are assuming it doesn’t and that going to 16 to 18 would be obvious. ”

    I did not say that it was obvious. I said that it did not DISTINGUISH over the other method using the other rake. Learn2distinguish. Distinguishing is different than obviousness. Although, yes, one might could throw obviousness at the 18 vs 16 fingers rake also.

    The advantage has nothing to do with distinguishing, although it may with obviousness.

  77. This is Mike Catania. I appreciate all of the comments, both positive and negative, for this patent with one intentionally specific claim. I do want to recognize Intellectual Property Research (contact: delliott@ipresearch.biz), the search firm that I used for this accelerated examination application. Anyone that has prosecuted an accelerated examination application knows that the petition will be denied if the pre-examination search does not meet the very high standards set by the quality assurance units. IP Research did a great job with this search, which was more than $1000 because I require them to meet the high standards set by the quality assurance units.

  78. Something else to consider is that this appears to be an efficiently run art unit.

    I looked at a number of recently issued patents in the same class/subclass as this one, and it typically only took one office action for the Applicant and Office to reach agreement on allowable claims. In fact, out of the 30 or so cases I looked at, not one of them required an appeal.

  79. The far more interesting aspect of this clever tactic was in getting a very fast narrow single claim for the client with the accelerated examination petition [which may be immediately useful against a slavish imitator, and for 102 defensive and interference avoidance value] AND THEN filing CONTINUATIONS for what will undoubtedly be both broader and greater numbers of method and apparatus claims. Were these continuations also filed with accelerated examination petitions? Very probably not, especially since their broader and more numerous claims would make both their prior art searches and the required statements about them for the accelerated examination petition grant far more dangerous.

  80. MM says: >>”What I will say is though that a claim to >>digging a hole with a rake that has 16 fingers >>does not distinguish over prior art showing >>digging a hole with a rake that has 18 fingers”

    >What if the 16 finger rake also has a POWERFUL >COMPUTER BRAIN?

    >Sorry, couldn’t resist.

    For MM if it doesn’t include him getting out his chemistry set and test tubes then it can’t be patentable. So, for MM, it would be patentable if it was a substitution of a molecule with 18 bonding sites instead of 16 bonding sites. Wow, a new molecule!!!!!!!! Wow! Wow!!! Get out the red ribbons!!!!!!!!!!!!!!!!!!!

    And maybe going from 16 fingers to 18 fingers has an advantage. You are assuming it doesn’t and that going to 16 to 18 would be obvious.

  81. You should qualify this announcement as being the quickest issuance in the U.S. in 2008. The JPO allowed a patent related to the iPS cells in 2 weeks.

  82. “What I will say is though that a claim to digging a hole with a rake that has 16 fingers does not distinguish over prior art showing digging a hole with a rake that has 18 fingers”

    What if the 16 finger rake also has a POWERFUL COMPUTER BRAIN?

    Sorry, couldn’t resist.

  83. “”providing …” step is sloppy claim drafting. No need for it.”

    There probably is a need for it, because without it, and all the structural limitations of the APPARATUS (as opposed to something that was being operated upon), the claim probably doesn’t even come close to distinguishing the invention from the prior art.

    You see, not everyone is cut out to deal with method claims. They astound and confuse some folks. Some folks think that just because words can be put into a claim that makes them proper in terms of limitations capable of distinguishing the invention. Newsflash, it doesn’t. And I’ve been telling you this for awhile now. I have convinced several attorneys of this already irl, idk why you interweb attoneys can’t get it straight. I suppose it is because you don’t have any $ on the line.

    “See, e.g., “Netcraft Corp. v. Ebay, Inc. and Paypal, Inc.” link to patenthawk.com regarding interpretation of the term, “providing.”"

    That is a very nice decision, one I could have used very much back when I had a method claim with just those types of terms used. It is getting popular amongst attorneys to use this method, there must be someone advocating this madness somewhere. They need to stop.

    “A claim to “digging a hole with a rake” is different than a claim to “digging a hole with a teaspoon.”"

    Maybe, maybe not. I won’t dispute that with you right now, but I tend to agree with you. What I will say is though that a claim to digging a hole with a rake that has 16 fingers does not distinguish over prior art showing digging a hole with a rake that has 18 fingers. And, I should add, a claim to digging a hole with a rake probably doesn’t distinguish over a claim to digging a hole with a teaspoon.

    And yes I do have caselaw to back it up, it is at work, and splattered all over patentlyo by now. I want to say that it was Ex Parte Forsythe, but my memory fails me atm.

    NM, here you are good sir.

    link to ipmall.info

    “A method or process, as indicated above, is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus must distinguish in terms of structure. This is so elemental as not to require citation of authorities. The Patent Act of 1952 did not abolish the then existing different classes of invention. It reaffirmed the same by Section 101 of USC 35. “”

  84. Questions for Peanut Gallery:

    (1) if a client came to you with a novel, non-obvious rake, would you consider first pursuing a method claim? If not, would you include method steps in the claim?

    (2) if a client came to you with a novel, non-obvious computer, would you consider first pursuing a method claim? If not, would you include method steps in the claim?

    All the contradictions in the contemporary patenting universe in a nutshell.

  85. “Claims have to distinguish the invention, not enable the invention — i.e., describe all the steps necessary to practice it. This is pretty basic stuff.”

    You know what’s “basic stuff”? Reading.

    After you read the claim, please get back to me regarding “all the steps necessary to practice.”

  86. “I’ll say one thing about the claim, the “providing …” step is sloppy claim drafting. No need for it.”

    LOL. So now method claims don’t require steps?

    “A claim to “digging a hole with a rake” is different than a claim to “digging a hole with a teaspoon.”

    But a claim to “providing a rake” isn’t any different than a claim to “providing a teaspoon”, i.e., both claims are equally invalid under 101.

    I’ll leave it to Our Resident Geniuses to tell everyone why this is the case.

  87. Malcom, you’re right. Who will infringe this claim? The person “providing” the sensor, or the person using the sensor to do the “calculating”?

    See, e.g., “Netcraft Corp. v. Ebay, Inc. and Paypal, Inc.” link to patenthawk.com regarding interpretation of the term, “providing.”

  88. “That primary probably was not aware that the claimed structural features of the apparatus being used to perform the method would not assist in distinguishing over the prior art. Pity.”

    Got any caselaw to support that assertion?

    A claim to “digging a hole with a rake” is different than a claim to “digging a hole with a teaspoon.”

  89. “Note that the calculating is not something that the practitioner of the method does. It’s something that the sensor does.”

    So what? Most steps are performed by something other than a user.

    “The claim does **not** recite a step of inserting the sensor into the soil.”
    Claims have to distinguish the invention, not enable the invention — i.e., describe all the steps necessary to practice it. This is pretty basic stuff.

    “i.e., A method, comprising: providing a thing that calculates.”
    I’ll say one thing about the claim, the “providing …” step is sloppy claim drafting. No need for it.

  90. That primary probably was not aware that the claimed structural features of the apparatus being used to perform the method would not assist in distinguishing over the prior art. Pity. Not that I’m saying the claim is invalid or anything of that sort … lol.

  91. Here is a big problem with an accelarated Examination: one misses unpublished art such as PCT or US applications filed 18 months after their filing date.

    If your patent issues too quickly, you could miss out on some critical art because of this.

  92. A couple points:

    1) How interesting that the choice was made to pursue a method claim. Isn’t contemporary lore that such claims are much more difficult to enforce than composition claims? Perhaps they are easier to prosecute for the same reasons … perhaps someone thinks they are being clever about wording a method claim in a way that it covers the sale of a composition recited in the claim …

    *ahem*

    Shall we look at this “method” claim before we get terribly excited? Please. I think we shall.

    A method of determining a moisture content value and a salinity value of a soil, the method comprising:

    providing a sensor, the sensor comprising [[long list of structural features pf the sensor deleted]]; calculating a capacitance of the soil as a function of (V3”-V3)/(V1′-V1) to obtain a soil moisture content value; and calculating a resistance of the soil as a function of (V3′-V3)/V2′-V2) to obtain a soil salinity value.

    Note that the calculating is not something that the practitioner of the method does. It’s something that the sensor does. The claim does **not** recite a step of inserting the sensor into the soil.

    So here’s the method claim, broken down for the peanut gallery:

    i.e., A method, comprising: providing a thing that calculates.

    Gee, I, uh … maybe Examiner Dole was a bit rushed when he got rolled on this one.

  93. It seems that Mr. Catania should be getting $$$ money from both the PTO and the inventor/assignee. Textbook example of teaching a novice-prosecutor as well as examiner, the procedure at the PTO.

    The “organized and transparent approach coupled with a competent search is unlikely to create inequitable conduct”.

    Private equity investors in tech areas would love this.
    Thank You Mr. Catania for the example and thank you DC for making it accessible.

  94. Here is a great article on why the gov is allegedly messed up in so many areas.

    link to sobran.com

    The author calls it tyranny, but it is a great history of how the good gov established has turned into the huge beast of today.

  95. Just incredible! They’re going to write songs about Catania. I’ve done a number of acc. exam searches with some clients being “hands-off” while others have been more involved in the search strategy development and re-focusing the search…really putting themselves in the examiner’s shoes.

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