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.
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.”
“Crouching Sockpuppet Hidden Babboonn”
Now, that’s what these message boards are for!
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.
I must have missed a meeting – who is it that NWPA isn’t?
Alright already Hil I’m off
“stop commenting”
…because that’s what these message boards are for!
Translation: get off of my playground.
shamelessly stolen
indebted IANAE
link to xkcd.com
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.
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.
awful alliterations
b*boons of banality
denizens of debauchery
Hey we missed the C’s – how about
Crouch-ing collusion?
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.
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.
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.
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.
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.
“(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.
YEA – one man’s problem is another man’s bloated indicator of blog success.
Where’s my Divinyl’s record…
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.
I must have a case of it myself. I mispelled choo choo spelled backwards. All ABOARD.
I miss the Choo Choo call.
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.
The fact is that Mooney is very aggressive and attacks people that do not agree with him by using the tactics I disccussed above.
>>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.
Sarah’s
Not
A
Ba
Boon after all
Papio arubis
Papio arubis
How about Gorilla.
Shark Shark oops it’s a school of Cyprindae.
to you
Respectfully, Professor Crouch, they are not words that need banning, but participants.
Mooney: all your whining and crying got dad to come in and save you.
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.
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!
“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
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”?
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.
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.
I wanna try too:
Babbboon
Babbbbbbbboon
Ba-Boon
Behboon
Biboon
Maybe if I fax this in…
OK, I can’t resist; I gotta try out the filter.
Babboon
Babboon
Chimp
Interesting that the acronym for Yet another examiner is YEA.
there are many simian species names to choose from. will you ban us all?
“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.
“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.
I had almost 15 years of cranky. And not one person gave a rats patouti.
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.
“hoping for decorum”
But please, especially if you’re Mooney, feel free to disparage dead presidents and talk about “teabaggers”
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”.
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.”
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.
“Hoping for a bit of decorum”
Now that is definitely the funniest line of the week.
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.
Hoping for a bit of decorum, I am going to ban the use of the word “baboon”…
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.
“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”.
“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.
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.
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.”
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.
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.
“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.
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?”
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.
“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.
“some guy”
Hey, hey, your nom de plume is too close too mine—Trademark infringement!!!
@ 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.
<<... 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.
>>>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....
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.
“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?
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
“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.
“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.
“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.
6, too bad the examiner cannot request a rehearing. Perhaps Kappos or one of his minions will read this thread and realize their mistake.
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.”
6 has the drive to make it. He just needs to break down and figure out that he is ignorant.
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.”).
“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.
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.
“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.
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.
“I’ve gotten Notices of Allowance on the strength of such declarations before.”
Serial number, please.
Sockpuppet: “It’s true, you won’t get far in a law firm interview by offering to cost the firm $280-300k. Usually they ask how well you can do the opposite – get more clients to pay the firm more money.”
You don’t get far advising clients to abandon applications in response to lame rejections.
I remember being assigned to mentor a 6tard-like newbie associate at a former firm. One of the first things this associate brought to me was a letter reporting a FAOM. Typical FAOM. Very clear the examiner had not read either the application or the applied prior art. The newbie told the client we agreed with the examiner and advised they let the application go abandoned. Newbie was gone in about three months.
Fixed your dialogue for you:
I’ll bet This guy’s a buffoon
Posted by: ping | Mar 11, 2010 at 03:04 PM
You’d be making a good bet.
Posted by: 6 | Mar 11, 2010 at 03:25 PM
How is this case “precedential”??
6: Seriously, I could save your clients 200k$ 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 $280-300k. Usually they ask how well you can do the opposite – get more clients to pay the firm more money.
“Hire 6k to work at your firm saving your clients thousands upon thousands today! Or keep ripping them off, I don’t care either way.
Seriously, I could save your clients 200k$ 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