The BPAI’s Standard of Review for Examiner Rejections

Ex Parte Frye (BPAI 2010) (precedential opinion)

In a newly issued precedential opinion, the Board of Patent Appeals and Interferences (BPAI) has ruled that examiner findings are given no deference when challenged on appeal.

“[T]he Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.”

However, examiner findings that are not specifically challenged will not normally be disturbed by the BPAI.

“If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. . . .  For example, if an appellant contests an obviousness rejection only on the basis that a cited reference fails to disclose a particular limitation, the Board need not review the other, uncontested findings of fact made by the examiner underlying the rejection, such as the presence of uncontested limitations in the prior art.”

The BPAI opinion is also notable because its signatories include the USPTO Director (Kappos) and Deputy Director (Barner). Although it is unusual for the PTO director to take part in BPAI decisions, the Director is a statutory member of the BPAI under 35 U.S.C. 6(a). Based on the 2008 “Duffy amendments” to Section 6, the Deputy Director apparently now has the same status. I say “apparently” because Westlaw claims that the amendment was technically deficient.

Director Kappos has written a blog post about the opinion.

pic-87.jpg

Frye’s claim is directed to a shoe having a reverse-incline. On the merits of the appeal, the BPAI reversed the examiner rejection — finding that the examiner had interpreted the prior art in a manner that was “unreasonably broad.”

133 thoughts on “The BPAI’s Standard of Review for Examiner Rejections

  1. I must have missed a meeting – who is it that NWPA isn’t?

    NWPA is concerned that he will be sued for defamation by Martin Goetz, apparently because his (NWPA’s) repeated use of the b-word might cause damage to Mr. Goetz’s reputation if enough credulous Patently-O readers doubt NWPA’s emphatic denial that he (NWPA) is, in fact, Mr. Goetz.

    In other news, NWPA is NOT Dr. Martin Luther King, Jr., either.

    Now you’re completely caught up.

  2. “stop commenting”

    …because that’s what these message boards are for!

    Translation: get off of my playground.

  3. Wow, that one comment from Dennis has really got the babune squad in a tizzy hasn’t it?

    “it places me in a position where I could then be in the middle of a libel suit. The real person could say that I did not do enough to disassociate myself from their real name or even that I was in allegience with 6 and MM.”

    That’s ridiculous, but if you’re that worried about it, stop commenting.

  4. I would add that I do not think that either 6 or MM is a lawyer and I suggest that you consult with a lawyer before continuing this behavior.

  5. awful alliterations
    b*boons of banality
    denizens of debauchery

    Hey we missed the C’s – how about

    Crouch-ing collusion?

  6. 6 wrote: >>4. out yourself and prove him wrong.

    Actually, this behavior of 6 and MM is really quite serious. I think any decent human being would understand why this is wrong. Consider the position it puts the real person and me in. 6 and Mooney are claiming I am a person who I am not. Now who does this hurt? And what could happen? First, the person may become offended by comments that I make and not want to be associated with me. It may rise to the level of them believing that this is libel and that their character is being defamed by being associated with an online blog pseudonym. Image quotes being taken from this blog and being associated with this real person in print media.

    That is just plain wrong and should rise to the level of at least the comments being deleted. Additionally, it places me in a position where I could then be in the middle of a libel suit. The real person could say that I did not do enough to disassociate myself from their real name or even that I was in allegience with 6 and MM.

    I think, that any decent person would recognize that 6 and MM trying to associate me repeatedly and despite my protestations with a real person is very wrong. It is the sort of tactic that should get a person permanently banned from a blog.

  7. MaxDrei,

    You make me laugh. “the menace of drivel” was being combat-ted, not by Dennis, but by those who took the time to point out the inanities and shoved into the light the deleterious material that is simply not as you put it quietly, unobtrusively and unannounced, [removed].

    Announcing a ban on a common word is anything but unobtrusive. I leave for a few weeks and return to see that the Trainwreck is still the Trainwreck. It is not a Trainwreck because of the use of the word added to the filter. It is a trainwreck precisely because that word aptly characterized the truly offensive behavior and because Dennis does NOT “exercise discretion, quietly, unobtrusively and unannounced, remove offending material.”, others are compelled to speak up.

    This is Dennis’s blog and he can do what he wants, but please, let’s not kid ourselves exactly what slant is being taken here. The only other time that anything rose to the level of objectionableness that I can think of is 6′s unrepentant use of the “N” word. Is the “B” word on par with that? Most assuredly not, if not for at least the reason that the “B” word was justly earned. The only other blog banning I am aware of was 6 being banned from IPWatchdog because of shear stupidity.

    I am not saying that Dennis should ban the denizens of debauchery, the b*boons of banality, but a measured response to those that seek to defeat such debauchery and banality without mention of the just cause for such use only highlights a subtle and pernicious bias.

    Much like a patent whose only target would be the mass users of the patent, Dennis is impotent when it comes to truly marshaling decorum on this site. Mudslinging will not stop when the chief mudslingers sling with impunity.

  8. Bread I think over the last months we have seen the useful effect that is achieved when the party running the blog freely exercises discretion, quietly, unobtrusively and unannounced, to remove offending material.

    The perpetrators know then their hard thought out works of literary genius have been denied a readership. It hurts their feelings, as we have seen recently.

    Of course it hurts, to find that your opinion of your carefully constructed contribution, that it is a witty, biting gem of a comment, is misconceived. With that pain comes a useful gain.

    Dennis, keep it up. In your absolute discretion, you be the judge of what is offensive, and bin it. I’m sure it’s the best way to maintain the vitality of this brilliant site, to earn the gratitude of readers, and to counter the menace of drivel that would otherwise rapidly pollute it.

  9. 6,
    I find myself in the admittedly rare position of agreeing with you (at least for the most part). “omfg who cares?” if b*boon is used?

    I guess the answer is to 4 of 5 of 6′s points of “omfg who cares” is the prime person who runs this blog and who in action has said – “I care”.

    Apparently, the “not so big deal” is a big enough deal to place b*boon on par with words that should not be uttered.

    Personally, I think placing the restriction is penalizing the wrong person. Several posters have hit the mark in that the truly offensive behavior is hardly in the word that is being excised. I would offer Dennis that the biggest offender of “decorum” was not the word. Much more offensive was what prompted the word.

    Granted, a word filter cannot eliminate such behavior, but it truly is a bit much to think that adding the word to the filter will in any way change the decorum on this site.

  10. LOL NWPA, latest inductee into the Albritton Crybaby Club, you seem so wounded by the loss of the b-word. Is it really that big of a deal? Mooney’s not that bad.

  11. “(1) he regularly uses vulgar language, (2) he uses multiple names, (3) he uses other people’s names (including mine) and writes offensive comments, (4) he trys to associate the name I use on this board with a real life person that is not me. He does (4) to other people on this board too. And, (5) he reguarly attacks people’s character and intelligence on this blog and takes a particularly delight in attacking new people. For (5) he resorts to calling people names such as slime ball. ”

    I have some suggestions for you sir that might help you get along better with others.
    1. omfg who cares?
    2. omfg who cares?
    3. omfg who cares?
    4. out yourself and prove him wrong.
    5. omfg who cares? Also, don’t be a slime ball.

    One final one that addresses your behavior rather than Mooney’s. Don’t repetitiously call someone a bad name.

  12. YEA – one man’s problem is another man’s bloated indicator of blog success.

    Where’s my Divinyl’s record…

  13. We don’t need censoring, just an “ignore” feature like the one fark.com has.

    “Additionally, he floods the blog with the same arguments over and over again…”

    And you keep flooding the blog with your repetitive MM-obsessed rantings on every. single. thread. And the rest of us have to slog through it all to find that one post that is actually related to patent law.

    You’re part of the problem.

  14. I second Robert K S.

    Readers, we suffer a stark choice. Either we go on as we are, stoically wading through the puerile trash, or we see this blog go the way of all the others, filtered.

    What I like about this blog is that it’s so active and so immediate. If we all have to wait for comments to get posted, till Dennis has policed them, we will lose all that precious vitality.

    I see no middle way.

  15. The fact is that Mooney is very aggressive and attacks people that do not agree with him by using the tactics I disccussed above.

  16. >>Respectfully, Professor Crouch, they are not >>words that need banning, but participants.

    I call Mooney a b*boon. Why is it that that word has cut so deep into him? It is because that word has come to represent his behavior. The word b*boon has become so offensive because Mooney himself is so offensive. What sort of behavior does Mooney engage in on this board that is offensive: (1) he regularly uses vulgar language, (2) he uses multiple names, (3) he uses other people’s names (including mine) and writes offensive comments, (4) he trys to associate the name I use on this board with a real life person that is not me. He does (4) to other people on this board too. And, (5) he reguarly attacks people’s character and intelligence on this blog and takes a particularly delight in attacking new people. For (5) he resorts to calling people names such as slime ball.

    Additionally, he floods the blog with the same arguments over and over again without addressing substantive arguments that refute the arguments he is making. After a few rounds with Mooney, you learn to ignore him. But, what you notice is that new people on the board engage him in arguments and then leave the board assuming that Mooney is represenative of the type of person on this blog. I suspect that Mooney has canned answers to question that he cuts and pastes into threads with minor editing.

    To this behavior I hung the name b*boon and the word has become a vulgarity. Mainly, I used the word to indicate that the comments from this person were not worth considering.

  17. JAOI it’s hilarious how indoctrinated they have you. That thing prattles on and on about our armed forces holding the fate of our country in their hands. The last time a war was fought where this country’s fate was truly at stake was something like 1945. The rest of the “wars” have been political hogwash. Vietnam, Korea, Gulf (the only one of these I do support, as Kuwait’s fate was truly at stake) and now the outlandish nonsense going on in Iraq and Afghanistan. That program prattles on and on about how Obama is subverting the consistution, lolololololololol, how’s that? They say things, but none of it is addressed by the constitution. And what’s worse is that Bush is responsible for the currency mess, and most of the other things they cite. Apparently you guys have too short a memory to remember.

    But you’re right, there is a constitutional emergency going on. More specifically it has to do with the proposed “rights” that be added by a president a couple of decades ago (I forget who it was). We need to make some constitutional amendments for sure, but the one that is in existence isn’t being harmed one bit.

  18. Dear True Patriot,

    Re:
    “Oh right, the new guy’s not white.”

    There was nothing in the five-minute presentation about race. How did you come off of the cockamamie notion that the presentation has anything whatsoever to do with race?

    Re:
    “By the way, the numbers don’t lie:”

    Incredible that anybody with even half a brain would make such a ridiculous a statement.
    Talk about lying, President Obama takes the cake. But I won’t get into a political debate with a pinhead.

    By the way, Mr. true patriot pinhead, you were told that the link was definitely not for pinheads.
    But no, you had to read it anyway!

  19. “How do you spell “I m p e a c h”?”

    Since you apparently weren’t interested in learning to spell it while Dubya was at the helm, why the sudden interest in grammar now? Oh right, the new guy’s not white.

    And is it really necessary to spam this on 3 different threads? By the way, the numbers don’t lie: link to barackobama.com

  20. Warning – off-topic subject matter below – Warning.

    Below is one of the best “sum-up” links I’ve seen.

    Please take time to watch it.
    It’s not very long,
    and it’s very well done.

    However, it definitely is not for pinheads.

    link to patriotsforamerica.ning.com

    How do you spell “I m p e a c h”?

  21. I think it’s hilarious that since Dennis banned the B-word, NWPA apparently hasn’t been able to get a single comment through the filter.

  22. I demand equal treatment of Ba-Banns with sharks.

    If you are going to filter one , you need to filter the other. Sharks are dangerous.

    Especially sharks with lasers.

  23. “Hoping for a bit of decorum, I am going to ban the use of the word “b*****”…”

    But that wipes out half of NWPA’s vocabulary. Actually Dennis, if your obscenity filter will replace certain “bad” words with other words of your choosing, you could have it change b***** to “my mother” or something. Hilarity would ensue.

  24. “Hoping for a bit of decorum”

    Prof. Crouch, how about banning all the useless ad homenims, trolling, and general poo flinging we get here? It’d be nice to be able to have a thread without slogging through the usual juvenile 6k/Mooney/JohnDarling/NAL circus.

  25. But please, especially if you’re Mooney, feel free to disparage dead presidents and talk about “teabaggers”

    Franklin Pierce was a horrible president, if you ask me.

  26. “hoping for decorum”

    But please, especially if you’re Mooney, feel free to disparage dead presidents and talk about “teabaggers”

  27. I sense some confusion about the meanings of “burden of proof” and “prima facie case.”

    I sense a similar confusion about the meaning of the word “wrong”. And, while we’re at it, “burden of proof” where I think you mean “standard of proof”.

  28. IANAE wrote:
    “It’s not clear that the wrong standard was necessarily applied in those cases. If the examiner said the claims were invalid, and the examiner wasn’t wrong…”

    I sense some confusion about the meanings of “burden of proof” and “prima facie case.”

  29. Now that is definitely the funniest line of the week.

    Nothing wrong with hoping. If he’d said “expecting”, that would have been pure comedy cold.

  30. My friends at the BPAI have told me that the Board votes on whether to make a decision precedential after it is mailed to the appellant. Maybe if the BPAI circulated a potential ‘precedential’ opinion to all the judges before it is mailed, rather than after, the opinion might be improved by the collective group input.
    Director Kappos may want to consider changing the BPAI policy that purportedly only allows a ‘yes or no’ vote after mailing, with no written comments or discussion allowed. Some persons argue that the current policy prohibiting discussion is reasonable since the voices of those not authoring the opinion don’t matter after an opinion has been mailed. This policy is perhaps meant to save BPAI resources.
    Another tidbit about current procedures — If a judge is uncomfortable voting ‘no’ with all of his bosses signing onto the opinion, and he therefore abstains, that will be counted as a vote in favor of making the opinion precedential.

  31. Passing through: I can see where that might appeal to a handful of firms, but for the vast, vast majority of firms, that will be the signal that you’ve been permanently tainted by working at the USPTO.

    I can’t imagine an anti-patent view on software appealing to any real patent firm, except, of course, the imaginary one Mr. Moonie works for.

  32. “Lulz. You went to an interview and informed them that felt software applications were invalid, and that you would not work on them?”

    Not in so many words.

    “One, never refuse work”

    Thanks for the advice. Just sell out, I gotcha.

    What you are proposing is like suggesting that the CEO of PETA should take over day to day operations of a factory farm. Sure, he could do it, but really?

    Let’s be clear guys, I was led to that firm under false pretenses. Specifically, I was told that they did work in my area and that was what I would be working on. If not for that, I would have been happy to work for them on a wide variety of subject matter. Excluding only business methods and software.

    And let’s also be clear that I’m not saying all applications that are related to software/biz methods are invalid. Nor did I say such a thing in an interview. I’m pretty sure that my views on the subject are pretty well known.

    But seriously, thanks for the advice about how to actually go ahead and get a job in “the industry”.

  33. “Lulz. You went to an interview and informed them that felt software applications were invalid, and that you would not work on them?”

    You are right. He did say that. Whenever possible, I ignore 6′s mega-posts, so I just skipped right over it.

    6 — let me first to give you real mentoring. One, never refuse work — the next time, it won’t be offered, and your value as an attorney rests upon your ability to do work, and lots of it. The partners already know what you cannot do, you don’t need to reinforce the fact. They want to know what you can do and what you would be willing to try to do (which is just about everything). You can be a prima donna later in your career, but not as a patent agent with no experience.

    Two, never opine on subject matter when you don’t know the law. The fact that you’ve ranted about software patents on this blog for several years does not mean you know much about the law. This blog is akin to a bunch of guys at the bar talking about an NFL football game. Although they may seem like they know what they are talking about, a conversation (about the same game) by NFL coaches breaking the game down would sound entirely different. Granted, this blog does draw in the equivalent of NFL coaches to shop, but it doesn’t bar the drunk guy in the stands from opining as well. Speaking of which, where is that moon-face baboon?

    Just because you can talk about something doesn’t mean you are knowledgable about it.

    Get through the first year of law school and learn the difference between dicta and a holding, and then you might have a start.

    Regardless, if you never want to get hired, ever, in private practice, just throw in the phrase “I think all software patents are invalid” within your interview. I can see where that might appeal to a handful of firms, but for the vast, vast majority of firms, that will be the signal that you’ve been permanently tainted by working at the USPTO.

  34. If examiner findings are given no deference when challenged on appeal, then why didn’t the court also write:

    “If an examiner fails to present arguments on a particular issue – or, more broadly, on a particular claim limitation – the Board will not, as a general matter, unilaterally review those omitted aspects of the rejection. . . .

    Because not reviewing an aspect of a rejection means the examiner wins.

    Remember, the BPAI hears appeals from rejections, not from allowances.

  35. It is amazing that the examiner and the application are supposed to be on equal footing at the BPAI, but the BPAI never comes out with rules about the examiner. It always is framed in the context of the appellant.

    If examiner findings are given no deference when challenged on appeal, then why didn’t the court also write:

    “If an examiner fails to present arguments on a particular issue – or, more broadly, on a particular claim limitation – the Board will not, as a general matter, unilaterally review those omitted aspects of the rejection. . . . For example, if an examiner makes an obviousness rejection only on the basis that a cited reference discloses a particular limitation, the Board need not review the other, findings of fact made by the examiner underlying the rejection or the presence of contested limitations in the prior art.”

  36. It is too late for me to reconsider MM as a human. After viewing the baboon picture here, a talking baboon is cemented in my mind’s eye.

  37. I wonder though IANAE, if I should open my own firm then I wonder which firm clients would choose, the one overcharging them for nonsense, or the one getting them patents quickly and efficiently?

    Sadly, most of them would probably choose the firm overcharging them for nonsense.

    There are a few sophisticated companies that know what patent prosecution is all about, and can tell when their outside agent is doing a lousy job. They outsource for some business reason or other – lack of manpower in-house, specialization in a particular area of technology, headcount, whatever. Those will hire the firm that gives them constructive advice and gets them good patents quickly.

    Most companies hire patent agents because they don’t know how to do patent agency. It follows that they don’t know how to review patent agency work, and they don’t know good from bad, even if they have some garden variety lawyers in-house. Same reason you can’t critically evaluate your doctor’s medical opinion without asking another doctor. An agent who bills for six OAs and an appeal looks like he can handle complex cases, especially if he wins on appeal after the first time he actually talked to someone at the PTO instead of pasting the same unconvincing text into a letter. If your case takes six OAs, your case is presumptively complicated and correspondingly expensive. You pay the bills, and if the agent is lucky you pat yourself on the back for having such awe-inspiring inventions that even examiners don’t understand them. You don’t get your patent right away, but then again your agent did tell you this could take a while because examiners are none too bright.

  38. “each use so many sockpuppets”

    Another absolutely hilarious line, when it is so easy to see who uses the most sockpuppets. The bloody hands are everywhere. I am pretty sure this person has been nailed doing so. It is comical to the extreme.

  39. Does it seem to anyone else that the board was directing the examiner how to properly reject these claims on page 15, where they note the examiner didn’t base a rejection on the proposition that it would have been obvious to one of skill in the art to locate the point “substantially halfway?”

  40. I was not thrilled about the subject matter I’d be working on in the least, and let them know that it was not my field of expertise anyway.

    I think Aesop had a fable about this. Something about grapes, as I recall.

  41. “No, I proposed that I not work on invalid software applications as they had those and more traditional ones. I never was wondering why I didn’t get hired. I was not thrilled about the subject matter I’d be working on in the least, and let them know that it was not my field of expertise anyway.”

    Lulz. You went to an interview and informed them that felt software applications were invalid, and that you would not work on them?

    Do you understand that with your attitude, you will never EVER get a private sector job? Dear god.

  42. @ Some Guy
    My theory is that NWPA started with the baboon bit, JD latched onto it, and then because they each use so many sockpuppets, they each think there are hundreds of readers who think calling someone a baboon is witty. Thus we got where we are today. It’s been interesting to watch it evolve over time, as their own subconscious tendencies get added to the mix, leading to the parts about lingerie, sewer grates, etc.

  43. < <... the BPAI reversed the examiner rejection -- finding that the examiner had interpreted the prior art in a manner that was "unreasonably broad.">>

    My interpretation of the Board opinion is that the examiner interpreted THE CLAIM, not the prior art, in a manner that was “unreasonably broad.

  44. >>>he’ll be amending all but 1 claim, he seemed shocked when i told him NOT to file the RCE even though it’s after-final<<<

    Is “After Final” practice BACK ???

    I’ve been unable to get simple and easy amendments on a AF basis for years now….. Ringing the RCE cash register has long seemed to be the only approved procedure….

  45. I get really tired of the people on here calling Malcolm Mooney a baboon. If you like monkeys so much, go to the zoo. Mooney’s contrarian, but one of the more original posters on the blog, if not contrarian. E6k’s posts are irritating sometimes, but they don’t have the same corrosive tone as those of certain people.

  46. “Some have it, some don’t — no amount of mentoring is going to help that. ”

    What is it, if you could be specific, that they don’t have? Is it a problem being able to put in enough billables or do they just have a hard time competently preparing work? Combination of the two? Or perhaps is it moreso the politics?

  47. to me, the biggest issue here seems to be that no one on either side can admit when a bad rejection or bad argument/amendment is made

    is it really that hard?

    i did that just today in an interview – discussed the rejection (a final), attorney made some good points, and he’ll be amending all but 1 claim, he seemed shocked when i told him NOT to file the RCE even though it’s after-final

  48. “Newbie was gone in about three months.”

    Sometimes, you cannot make a silk purse out of a sow’s ear — an analogy that 6 could appreciate.

    Most patent prosecution associates in big law don’t make it past 2 years, and when they do leave, you wish you let them go after 3 months. Some have it, some don’t — no amount of mentoring is going to help that. Mentoring is far more useful in teaching an associate how to deal with firm politics — a tricky subject to say the least.

  49. “6, too bad the examiner cannot request a rehearing.”

    I think she can if her director will sign off on it. I’m pretty sure I’ve seen some cases like that before.

  50. “I remember being assigned to mentor a 6tard-like newbie associate at a former firm.” “Newbie was gone in about three months.”

    Like all other aspects of his job, JD approaches mentoring with a can-do attitude and the utmost professionalism.

  51. 6, too bad the examiner cannot request a rehearing. Perhaps Kappos or one of his minions will read this thread and realize their mistake.

  52. FYI — that is one ugly Appeal Brief.

    I can see where 6′s criticism of certain practitioners has some basis (albeit very little) in fact.

    Whoever drafted that Appeal Brief needs to take a course in legal writing. If an associate brought that to me, I would crumple it in a ball and tell him “this time, write like you went to law school, not engineering school.”

  53. 6 has the drive to make it. He just needs to break down and figure out that he is ignorant.

  54. I’m surprised nobody mentioned MPEP 2125:

    PROPORTIONS OF FEATURES IN A DRAWING ARE NOT EVIDENCE OF ACTUAL PROPORTIONS WHEN DRAWINGS ARE NOT TO SCALE
    When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”).

  55. “appeared speak English as a second language”

    heh.

    But seriously 6, I would love for a big pros firm like Oblon, BSKB, Sughrue, etc to hire you. You argue with such ardor in these forums. You would be a great advocate for the patent attorney bar once you saw the realities of this side.

  56. Oh and let’s be clear Ned, in a hypothetical case that doesn’t exist the board itself didn’t mischaracterize the examiner’s rejection themselves, they simply never paid any attention to what the actual rejection was. They never addressed it what so ever. Apparently they simply read the applicant’s summary and agreed with the.

  57. “But it still held that the claim term “substantially halfway” had to be located almost exactly halfway. Clearly, even if you are totally right on what the examiner held, the Board still would have reversed as the leftmost area of the “ball center,” just left of point 28, is nowhere near the longitudinal center of the shoe.”

    Remember you said “almost”.

    Now Ned, the exact centerpoint of a hypothetical shoe that doesn’t exist would be slightly to the right of the top of the little “hill” right in the middle. Check it with a ruler if you like. Go even a smidgen, the barest smidgen, any at all, more to the right of that and you are definitely in “ball center” 28 or whatever you want to call that little dip that is the ball area 28. The bottom line is, designate the decline off that hill going towards the right hand side (i.e. the location near 28) and a hypothetical case that doesn’t exist goes goodnight.

    Whether you take issue with it being called the region near 28, the left most part of ball cup 28, or the slope coming down off the hill near the middle is irrelevant. The fact of the matter is that the point she wants to designate is almost exactly in the middle of the shoe. And if you want to get picky about the designation, then fine, tell me how far it is permissible to go from the center in the direction to the right such that it is still “substantially halfway” and I will tell you the point that is designated. That is unless you want to say that I can’t designate anywhere except the exact halfway point. Fact of the matter is, there is a point in there that falls within the hypothetical claim that doesn’t exist.

    Even if, for some reason that nobody will ever be able to enunciate because what they are saying is false, that wouldn’t meet the hypothetical claim term that doesn’t exist then the decision should be based upon that and should explain that. They never explain that. As is, they made it very clear that their holding was limited to the specific dispute before them, whether or not designation of 29 as being substantially in the middle was proper or not. As soon as the next dispute (which was actually the original dispute if the board had realized it) arises then the whole mess will start over. Great appeals process guys.

    In fact, if anything, in a hypothetical case that doesn’t exist you could say that the applicant waived the right to argue whether or not a portion just left of 28 meets the claim limitation since they never argued it lol. That’s what I woulda put in my Answer in a hypothetical case that doesn’t exist. Simply state that the applicant hasn’t addressed the actual rejection yet and has simply made up their own rejection to argue against. Furthermore I’d state that they have thus waived the right to actually address x specific merit of the rejection in that appeallol since they didn’t raise that issue.

    As an aside for other examiners, I have noticed great success in noting that the applicant hasn’t actually addressed the rejection and has instead addressed a rejection that has never been made. Practicioners seem to take note of this and you usually don’t hear back much lip.

    And JD I doubt they’re laughing much, their whole office was rather cheerless for the few hours I was there. You guys need to liven your workplaces up a bit.

    “Those who can, do, those who can’t… ”

    Become a lawyer? Litigate? What are you looking for here?

    “Is this what you proposed at your last interview? Are you still wondering why you didn’t get hired?”

    No, I proposed that I not work on invalid software applications as they had those and more traditional ones. I never was wondering why I didn’t get hired. I was not thrilled about the subject matter I’d be working on in the least, and let them know that it was not my field of expertise anyway.

    Although sure, I’ll propose it right now, make a name for yourself as a firm that doesn’t waste their client’s money on ridiculous nonsense.

    As for myself, I’d say that I’ll bring in a lot of revenue for the firm. I can process cases quickly and persuasively. What it takes JD 6 hours to argue against and 5 years to have reviewed I could have withdrawn in a few minutes, the case is allowed, the client is happy and brings in more business. How the firm chooses to bill for what I do is their business. They could have an option called “send your case to 6 and have it allowed next week” that costs 20k dollars and makes clients happy, and put an option that says “send your case to JD and maybe have it allowed 5 years from now” for 10k dollars that makes clients unhappy. Their choice.

    “The real winner here was Baker Botts.”

    Exactly.

    Even so, they could be even more of a winner by making their clients more happy by persuading the examiner that the limitation couldn’t be met in the reference, or putting a word or two in to amend. Happy clients are rumored to pay well. I’ve had a small time advising service myself before I started here and it always seemed to me like the people who consulted with me and were happy with my service were more than willing to pay more than I really woulda charged.

    I wonder though IANAE, if I should open my own firm then I wonder which firm clients would choose, the one overcharging them for nonsense, or the one getting them patents quickly and efficiently?

    “That may well be the case, but a single arrow drawn anywhere on Figure 2 would have shown the applicant exactly what point the examiner had in mind, making it very easy to convincingly argue against that specific rejection without going to the Board.”

    All I can say is that such a thing could be true, but I do that in my own cases. If not an arrow, I make dam sure they know what I’m talking about. The hypothetical girl who doesn’t exist in a case appeared speak English as a second language. If I was her I’d file suit after having been discriminated against based on her national origin. From what I hear it is unlawful for the PTO to do such.

  58. I remember being assigned to mentor a 6tard-like newbie associate at a former firm. One of the first things this associate brought to me was a letter reporting a FAOM. Typical FAOM. Very clear the examiner had not read either the application or the applied prior art. The newbie told the client we agreed with the examiner and advised they let the application go abandoned.

    Great job of mentoring.

  59. “I’ve gotten Notices of Allowance on the strength of such declarations before.”

    Serial number, please.

  60. Sockpuppet: “It’s true, you won’t get far in a law firm interview by offering to cost the firm $280-300k. Usually they ask how well you can do the opposite – get more clients to pay the firm more money.”

    You don’t get far advising clients to abandon applications in response to lame rejections.

    I remember being assigned to mentor a 6tard-like newbie associate at a former firm. One of the first things this associate brought to me was a letter reporting a FAOM. Typical FAOM. Very clear the examiner had not read either the application or the applied prior art. The newbie told the client we agreed with the examiner and advised they let the application go abandoned. Newbie was gone in about three months.

  61. Fixed your dialogue for you:

    I’ll bet This guy’s a buffoon
    Posted by: ping | Mar 11, 2010 at 03:04 PM

    You’d be making a good bet.
    Posted by: 6 | Mar 11, 2010 at 03:25 PM

  62. 6: Seriously, I could save your clients 200k$ in prosecution fees in about 2 months and take home a salary of 80-100k$ then simply take the other 10 mo. off.

    Sockpuppet: Is this what you proposed at your last interview? Are you still wondering why you didn’t get hired?

    It’s true, you won’t get far in a law firm interview by offering to cost the firm $280-300k. Usually they ask how well you can do the opposite – get more clients to pay the firm more money.

  63. “Hire 6k to work at your firm saving your clients thousands upon thousands today! Or keep ripping them off, I don’t care either way.

    Seriously, I could save your clients 200k$ in prosecution fees in about 2 months and take home a salary of 80-100k$ then simply take the other 10 mo. off.”

    Classic 6tard “logic” here.

    He’s going to find a firm to pay him $80-100k to advise clients that are facing half-baked, lame arse rejections to abandon their applications.

    Is this what you proposed at your last interview? Are you still wondering why you didn’t get hired?

    BWWWAAAAAHHHHHHAAAAAAAHHHHHHAAAAAAAHHHHHHAAAAAAA

  64. Oh yeah, right. Because we all know that the examiner would have issued a Notice of Allowance immediately if the applicant had filed such a declaration.

    You’re joking, right? Please tell me you’re joking. Because if you actually believe that a one page declaration from the applicant would have gotten the examiner to withdraw that rejection, you’re beyond help. Way beyond help.

    I’ve gotten Notices of Allowance on the strength of such declarations before.

    You go ahead and bill for six OA responses, three RCEs and an appeal with pre-appeal over a period of six years and counting. I’m far too busy getting claims allowed to deal with any of that nonsense.

  65. “At the absolute worst, the applicant would have filed a one-page declaration from the inventor saying that nobody skilled in the art would consider where the examiner put the arrow to be ‘substantially halfway’, and that would have been the end of it.”

    Oh yeah, right. Because we all know that the examiner would have issued a Notice of Allowance immediately if the applicant had filed such a declaration.

    BWWWWWAAAAAAAHHHHHHHHHHHAAAAAAAAAAAAAHHHHHHAAAAAAAA

    You’re joking, right? Please tell me you’re joking. Because if you actually believe that a one page declaration from the applicant would have gotten the examiner to withdraw that rejection, you’re beyond help. Way beyond help.

    “That may well be the case…”

    It is the case. There’s intepretation, however stretched, of Snabb that was going to be affirmed. None.

  66. So you think the examiner would have been affirmed if she had only drawn on arrow on Fig. 2 of Snabb?

    Can’t say for sure. I can say for sure that the Board wouldn’t have been as dismissive of the argument if they didn’t think the relevant point was at the toe of the shoe. As it stands, nobody argued with any particularity that the relevant point was anywhere other than the labeled points 28 or 29 of Snabb, so it’s not surprising that the Board didn’t consider the possibility.

    So if the examiner had drawn an arrow on Fig. 2 of Snabb, you think the applicant would have done what? Filed her express abandonment immediately?

    Right, because abandonment is the only way to respond to a rejection.

    This was a not-atypical case of the examiner and the agent arguing at cross-purposes. If each understood what the other was talking about, this never would have reached the Board. At the absolute worst, the applicant would have filed a one-page declaration from the inventor saying that nobody skilled in the art would consider where the examiner put the arrow to be “substantially halfway”, and that would have been the end of it.

    In case you didn’t notice, Professor, the applicant won the appeal.

    In case you didn’t notice, Professor, I did point out that the examiner lost the argument. It also cost the applicant a big pile of money and over five years of pendency since Snabb was first cited in 2004. The real winner here was Baker Botts.

    There’s no arrow that can be drawn on Fig. 2 of Snabb that’s going to establish a prima facie case of anticipation, obviousness, or anything else.

    That may well be the case, but a single arrow drawn anywhere on Figure 2 would have shown the applicant exactly what point the examiner had in mind, making it very easy to convincingly argue against that specific rejection without going to the Board.

  67. “On the contrary, there’s no justification for losing an argument when you could have won it by adding an arrow to a picture that already existed.”

    So you think the examiner would have been affirmed if she had only drawn on arrow on Fig. 2 of Snabb?

    BWWWWWAAAAAAHHHHHHHHHAAAAAAAAHHHHHHHHHAAAAAAAAA

    “This is exactly what I mean when I say examiners should better articulate their rejections, so that applicants can respond to them in a way that addresses the examiner’s actual point. An arrow on a picture could have saved $10k at the Board too, or at least freed up the Board’s time so someone else could waste their $10k instead.”

    So if the examiner had drawn an arrow on Fig. 2 of Snabb, you think the applicant would have done what? Filed her express abandonment immediately?

    In case you didn’t notice, Professor, the applicant won the appeal.

    There’s no arrow that can be drawn on Fig. 2 of Snabb that’s going to establish a prima facie case of anticipation, obviousness, or anything else.

    The people who wasted $10,000 in this case were 1) the examiner, 2) the SPE, and 3) the QAS by sending this dog up to the BPAI.

    No phone call was going to save $10,000.

  68. “Very well thanks.”

    I’m sure it did. I’m sure it worked out even bettter for them. They’re probably still laughing over there. Two to three years of entertainment from one interview. That’s pretty good.

  69. 6, I agree with you that the Board mischaracterized the examiner’s rejection. But it still held that the claim term “substantially halfway” had to be located almost exactly halfway. Clearly, even if you are totally right on what the examiner held, the Board still would have reversed as the leftmost area of the “ball center,” just left of point 28, is nowhere near the longitudinal center of the shoe.

  70. You can argue she should have been more specific to help out people who are mentally challenged, but come on, only so much hand holding should be required.

    On the contrary, there’s no justification for losing an argument when you could have won it by adding an arrow to a picture that already existed.

    This is exactly what I mean when I say examiners should better articulate their rejections, so that applicants can respond to them in a way that addresses the examiner’s actual point. An arrow on a picture could have saved $10k at the Board too, or at least freed up the Board’s time so someone else could waste their $10k instead.

  71. I’m out of here for awhile, I have some work to do educating some rtards that “practice” before me. I think they should have to “practice” a little bit more in front of someone else before they’re allowed to “practice” in front of me. When you come before me it’s game time btches, practice is over.

  72. “See the last page of the examiner’s answer.”

    LOL, you mean the part that says SPECIFICALLY “the location shown AS BEING NEAR REFERENCE NUMBER 28″?

    You mean that part of a hypothetical examiner’s answer that doesn’t exist? The part that says that we’re looking at the location NEAR reference number 28? Kind of like I just got through telling you?

    You people are rtards if you can’t see that the designation in a hypothetical case that doesn’t exist was clearly different than what the board thought it was, and that the actual facts found were true and required no special BRI to interpret them. She didn’t want to designate 29, or “point” 28. She wanted the location near 28, i.e. the ball cup. And more specifically, the left portion of the ball cup. You can argue she should have been more specific to help out people who are mentally challenged, but come on, only so much hand holding should be required. Grown ups shouldn’t require such hand holding. If she refers to a point that is substantially halfway, then fin believe her, find the point that is substantially halfway and know that is what she is talking about.

    The board needs to pay attention to what it is doing in hypothetical cases that don’t exist.

  73. “Hire 6k to work at your firm…”

    I think you already tried that once, didn’t you?

    How’d that work out for ya?

    BWWWWAAAAAAAHHHHHHHHAAAAAAAHHHHHHAAAAAAAAHHHHHHAAAAAAA

  74. Ten minutes on the phone is worth ten thousand dollars at the board.

    Great advice, though some may point out that ten minutes on the phone is not worth ten thousand dollars on the client’s bill.

    Funny thing, perverse incentives.

  75. “You shouldn’t speak ill of your intellectual betters.”

    This from a tard who examined toilet paper holders for years. Don’t try to spit my own advice to you back to me JD.

  76. Ned, the leftmost part of the ball cup 28 (not the “point” 28) is blatantly the halfway mark. Look again. And no, the board wasn’t holding that even 28 couldn’t be considered that. Why on earth would it not be able to be considered that? They provided no explanation for that, they premised their whole decision on a supposed fact that was made up by the applicant and never found by the examiner. Plainly your hypothesis is based upon nothing but conjecture, and false conjecture at that.

    “The examiner stated that the point designated by reference number 28 in Fig. 2 of Snabb was substantially half way. ”

    Where did the examiner make such a horrendously stpid designation? WHARE?!!!!!!!!!!!!!!!!!!!!!!!?????????????????
    IN WUT DOCUMENT?!!!!!!!!!!!!!!!!!!
    Designating the ball cup 28 and the point 28 are two different things sir.

    Like I said, even if they did make such a designation of the “point” 28 (which I can find no documentation of) in a hypothetical case that doesn’t exist then I’m going to lol my arse off when they simply do make a designation of the “ball cup” 28 and say: rejected.

    If the board is going to review “de novo” then they should bother to do a good job.

    Ten thousand dollars spent to have the examiner clarify in a hypothetical case that doesn’t exist that they meant to designate the ball cup 28, IF they didn’t already designate such a thing.

    Ten minutes on the phone is worth ten thousand dollars at the board.

    Hire 6k to work at your firm saving your clients thousands upon thousands today! Or keep ripping them off, I don’t care either way.

    Seriously, I could save your clients 200k$ in prosecution fees in about 2 months and take home a salary of 80-100k$ then simply take the other 10 mo. off.

    “I’ll bet.”

    You’d be making a good bet.

  77. “…they are in fact referring to the halfway point that isn’t designated with a number within the reference’s figure but is plainly there for all to see.”

    It’s plain for all to see in Fig. 2 of Snabb?

    BWWWAAAAHHHHHHAAAAAAAAHHHHHHHAAAAAAAA

    Right. It’s plain for anybody looking to reject the claim to see that.

    “…you’ll quickly see why having a board of mentally challenged folks review the work of examiners is kind of a bad idea.”

    You shouldn’t speak ill of your intellectual betters. Maybe if you make it to the BPAI some day, the Director will personally come to your office and tutor you in the law too.

    Something to strive for there.

    Better get cracking. You’ve only got the rest of your life.

  78. “I spend hours every week saying this same kind of thing.”

    I’ll bet.

    This has got to be the most hilarious line of the week.

    This guy’s a buffoon – to steal slightly from the running baboon commentary.

  79. 6, yeah the Board was wrong in locating the transition at point 29 of the reference. The transition was actually at 28, much nearer the halfway point. But still, even this is not substantially near the halfway point unless BRI wouls allow such an interpretation. I think the Board was ruling that BRI could not be stretched even as far as point 28.

  80. “Imma lol my arse off also if an examiner simply states ‘ya rtards, I designated the leftmost portion of ball cup 28 through the whole right side of the insole as the portion that meets the inclined back portion’ and a hypothetical claim that doesn’t exist is rejected.”

    “Why in the f would they think the examiner designated the point shown as 29 as the meeting point is beyond me.”

    But that’s not what the examiner designated as meeting the substantially half way feature of claim 1. The examiner stated that the point designated by reference number 28 in Fig. 2 of Snabb was substantially half way. See the last page of the examiner’s answer. And the examiner was wrong. Snabb does not disclose the identical invention recited in claim 1. Game over. Reversed.

    Imma lol my arse off when the Board tries to decipher your jibberish writing and just says, “Ah, screw it, let’s just reverse.”

  81. Business investment in Europe is lower because they don’t grant enough patents on shoe soles that are thin at the heel.

  82. “Fig. 10 looks like a typical old shoe with wear on the heel. Is the claim at issue limited to a previously unworn shoe?”

    That’s nice. But claim 1 is direcetd to the insole of the shoe, shown by reference number 816 in Fig. 14, not to the outsole of the shoe shown in Fig. 10.

    You’d know that if you actually read the decision. But I know that actually reading the decision is not something you need to do to arrive at your typically wrong conclusions. Wouldn’t want to slow yourself down when dispensing those opinions of yours that everything’s facially invalid.

  83. “A from-scratch review of an applicants’ and examiner’s arguments without any bias or authority given either side (i.e., de novo review) will necessarily show if the examiner has erred.”

    Yeah, but is the reverse true? Does the reversable error standard always show/reverse what the de novo standard will show/reverse?

    “De novo” sounds like, “we’re going to examine the claim feature you argue ourselves, and if our conclusion isn’t the same as the examiner’s, reverse.” Whereas “reversable error” sounds like, “we’re going to look at the Examiner’s conclusions and reverse them only if you can show they are more likely than not in error.” As an appellant, I would always prefer the former review.

  84. Also, if you bother yourself enough to take a look at a hypothetical case that doesn’t exist and the board’s findings within that hypothetical case you’ll quickly see why having a board of mentally challenged folks review the work of examiners is kind of a bad idea.

    In a different hypotethetical case that doesn’t exist, a hypothetical examiner that does not exist did not designate the point where the incline changes in a hypothetical Fig. 2 of Snabb which does not exist as being the point marked by 29, rather the entire forward section past the BEGINNING of ball portion 28 (rather than the exact spot shown as being 28). The place designated was certainly the point very near the halfway point of the shoe that lacks a designation but which is clearly visible. The only contention that one could make would be the that thickness of the forward section from there on would not be said to have a substantially constant thickness. But that’s rubish the reference obviously states otherwise and you can see as much from the figure if nothing else.

    The problem in a hypothetical case that doesn’t exist is probably simply a miscommunication between the examiner and the board who apparently has a hard time reading and has a hard time understanding that nobody is “stretching” the halfway point to be 29, they are in fact referring to the halfway point that isn’t designated with a number within the reference’s figure but is plainly there for all to see. Why in the f would they think the examiner designated the point shown as 29 as the meeting point is beyond me. Maybe if they weren’t so concerned with the standard of review and were more concerned with the merits of the case before them then things like this wouldn’t happen in a hypothetical case that doesn’t exist.

    Imma lol my arse off also if an examiner simply states “ya rtards, I designated the leftmost portion of ball cup 28 through the whole right side of the insole as the portion that meets the inclined back portion” and a hypothetical claim that doesn’t exist is rejected.

    “Appellant contends that the Examiner erred in finding that Snabb’s
    forward section of substantially constant thickness, i.e., the section of the
    insole having a slope of zero degrees, meets the rearward section of the
    insole “at a point substantially halfway” with respect to the upper surface or
    the outsole as called for in independent claims 1, 11, and 16. Appellant
    contends that this erroneous underlying finding of fact pervades the
    Examiner’s finding of anticipation of claims 1, 5, and 11 and the Examiner’s
    ultimate conclusions of obviousness of claims 8, 14-16, 19, and 20.”

    This was never found by a hypothetical examiner that doesn’t exist in a hypothetical case that doesn’t exist. No wonder it was never found because it would be erroneous to find that fact. However, since a fact quite different from that fact was found, the board should pay attention to the facts actually found rather than facts that a hypothetical applicant simply dreamed up out of thin air.

    You have to watch out for this nonsense, applicants dreaming up facts that were never found as supposedly being ones found and then arguing that THOSE FACTS ARE WRONG. Yeah, no kidding? Nobody ever found your dreamt up facts in the first place, now lets take a look at the facts that were found shall we? AMAZINGLY those facts actually are correct!

    I spend hours every week saying this same kind of thing.

  85. “Idk, imma lol my arse off if the CAFC comes back here shortly and says otherwise.”

    You get stoopider with each post. Simply amazing. Just when we think you couldn’t get any stoopider, you prove us wrong. Bless you and your tireless efforts.

  86. Dennis, on the merits, the BPAI reversed on the grounds that the examiner’s claim construction was unreasonably broad, not on his interpretation of the prior art.

    The issue was the claim term “substantially halfway.” The Board held that this term could not be so broadly construed as to encompass the prior art “transition point” that was under the toes.

    We had heard that Kappos was going to try to reign in BRI. This decision is very consistent with that rumor.

  87. There are white people that are so caught up in ethnicity,that they have a special moniker. And last time I looked HRB was not mooney. They call that play obfuscation. Who are you trying to impress?

  88. “multiple recent BPAI decisions statements like “The appellant hasn’t shown the examiner erred.” These statements came as a surprise to me at the time, and I’m glad it’s been fixed.”

    I’m not so sure a de novo review of issues raised is incompatible with the “showing the examiner erred” standard. A from-scratch review of an applicants’ and examiner’s arguments without any bias or authority given either side (i.e., de novo review) will necessarily show if the examiner has erred. In the end, both standards vindicate the side with the better arguments (to say nothing of facts).

  89. I noticed in multiple recent BPAI decisions statements like “The appellant hasn’t shown the examiner erred.” These statements came as a surprise to me at the time, and I’m glad it’s been fixed.

    It’s not clear that the wrong standard was necessarily applied in those cases. If the examiner said the claims were invalid, and the examiner wasn’t wrong…

  90. Idk, imma lol my arse off if the CAFC comes back here shortly and says otherwise.

    That’s fair, 6. But here’s a homework assignment for you: Come up with a fact pattern that would result in the CAFC even addressing this question, given that this is now the official policy of the PTO.

  91. Frye’s claim is directed to a shoe having a reverse-incline.

    Fig. 10 looks like a typical old shoe with wear on the heel. Is the claim at issue limited to a previously unworn shoe?

  92. NWPA, do you get a check from some baboon rescue organization every time you use the word “baboon” in a comment? That seems like the only rational reason why you use it so compulsively on these boards.

  93. >>Mooney’s Mom did tell me that Mooney has >>managed to alienate everyone on the planet, >>including hippies.

    >>>Get a life, JD.

    He is even an outcast among baboons.

  94. “I noticed in multiple recent BPAI decisions statements like ‘The appellant hasn’t shown the examiner erred.’ These statements came as a surprise to me at the time, and I’m glad it’s been fixed.”

    Mr. Wegner has already noted that problem with numerous BPAI decisions.

    link to cafezine.com

  95. I’m glad Kappos clarified this. I noticed in multiple recent BPAI decisions statements like “The appellant hasn’t shown the examiner erred.” These statements came as a surprise to me at the time, and I’m glad it’s been fixed.

  96. The BPAI review has another controversial component, namely the requirement that the appellant prove harmful error by the examiner.

  97. Mooney’s Mom did tell me that Mooney has managed to alienate everyone on the planet, including hippies.

    Get a life, JD.

  98. From Kappos blog:

    Secondly, the Frye opinion cautions, however, that “[i]f an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection,” and such unasserted arguments may be deemed to have been waived. This concept is hardly new to litigators or to the patent bar. The well-established rule of “waiver” has long applied to Board proceedings.

    Just fyi for the commenter in the previous thread on the topic of waiver who questioned why they should bother raising all their arguments against invalidity on appeal.

  99. As a patent search I agree that there appears to be some art out there that may have led to a stronger of a case on the examiner’s part. Classification searching by image flipping is quite simple in an art such as this. However, this just goes to show that tips and tricks are advantageous when faced with certain situations Re:BPAI.

    For those interested in learning some of these tricks and tips, you might be interested in checking out Patent Resources Group’s related one-day class: link to patentresources.com

    Happy searching!

  100. One small comment: this application is being prosecuted by Baker Botts? That’s some expensive work, and it appears this person is an individual inventor.

  101. understood rc, my sincere apologies…

    Mooney’s Mom did tell me that Mooney has managed to alienate everyone on the planet, including hippies.

  102. This is a prime example of why the BPAI backlog is so large, and growing larger. It’s abundantly clear from reviewing the file history that the examiner and the two dolts who signed off on both the pre-appeal and the appeal conferences haven’t the faintest clue as to what a prima facie case of anticipation or obviousness requires. Having three people of this level of “experience” at the PTO who couldn’t figure out that this case was a loser on appeal is very troubling. But I see it all the time. Examiners who get reversed when using cr$pola like “design choice” and “routine experimentation and optimization” go right back to those crutches in the next office action after getting reversed. It’s pathetic.

    What are the consequences for the SPE and the QAS (Quality Assurance Specialist, let the irony of that soak in for a bit) for their role in this debacle? What is their decision going to be next time they’re sitting in a pre-appeal or appeal conference for some application where the rejections are premised on ridiculously stretched readings of references and the broadest unreasonable interpretation of the claims, and when even that isn’t enough, the examiner goes to the well of “Official Notice” and “inherency”? I’m sure their decision will be, “Yeah, this looks a winner to us!!! Send it up!!!!”

    Friggin’ ridiculous.

    Keep those appeals flowing folks. Maybe Kappos will get sick and tired of this nonsense and instruct the examiners, SPE’s, QAS’s, “appeal specialists” and “subject matter experts” and all of the rest of the dregs over there to knock it off and allow the applications where they can’t even a make a rejection that passes the straight face test.

    I can dream, can’t I?

  103. you guys remember the “earth shoe” from the late ’60s and early ’70s?

    Public Searcher: good points, classification, classification, classification!

  104. I feel bad for the applicant with regard to a major issue here outside of the BPAI/APJ stuff. This is a poster child case for an examiner probably not doing a thorough search.

    There a slew of particularly relevant US and non-US references with publication dates prior to 1976 that were not cited by the examiner. And why is this? Probably because when an examiner limits their classification search with key words, only art since 1976 is found.

    Ms. Frye might want to look in either 36/43 or A43B13/38 and limit her query to pre 1976 art to find prior art before she starts protecting her rights…

    Signed,

    A searcher with lots of shoe searching experience.

  105. Many thanks to Director Kappos and Deputy Barner for instructing the legally ignorant APJ’s of the BPAI on the law.

  106. A very important decision clarifying the standard of review and especially relevant to patent applicants who appeal to the BPAI. That Kappos was part of the BPAI panel says as much.

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