Boehringer Ingelheim International GMBH v. Barr Laboratories, Inc. (Fed. Cir. 2010) (denial of en banc rehearing)
In January 2010, the Federal Circuit expanded the scope of the safe-harbor created by 35 USC 121 against double patenting allegations. Namely, the court held that a divisional-of-a-divisional still qualifies for the safe harbor so long as the later-filed applications do not violate the Examiner’s original grouping suggestions.
Now, the court has denied generic drugmaker Mylan request for rehearing en banc. Mylan had presented two questions:
1. Whether a divisional of a divisional patent application is a “result of a restriction requirement imposed on an original application, entitling a patentee to invoke 35 U.S.C. § 121’s safe harbor from invalidity due to double patenting, where the second divisional was filed voluntarily for strategic reasons and was not mandated by the original restriction requirement.”
2. Whether a divisional application is “consonant” with a restriction requirement, entitling a patentee to invoke the safe harbor of 35 U.S.C. § 121, where the divisional disregards the lines drawn by the examiner in imposing the restriction requirement.
Judges Gajarsa and Dyk dissented from the en banc denial. In the dissent, Judge Gajarsa wrote:
Because the majority’s decision improperly expands the statutory safe-harbor provision of 35 U.S.C. § 121 beyond Congress’s intended scope, I respectfully dissent from the court’s denial of Mylan’s petition for rehearing en banc. While the Supreme Court has not construed § 121, the majority’s expansive opinion is inconsistent with our longstanding precedent, and will work a major change in our jurisprudence. The purpose of § 121 is to prevent the inequity that resulted from an examiner’s improper restriction requirement (separating out supposedly patentably distinct inventions that were in fact the same or not patentably distinct), whereby a patentee’s compliance with an examiner’s incorrect restriction would result in the original application being used as a reference against the later divisional application and a rejection on double patenting grounds. See Pfizer, Inc. v. Teva Pharms. USA Inc., 518 F.3d 1353, 1361 (Fed. Cir. 2008); Studiengesellschaft Kohle mbH v. N. Petrochem. Co., 784 F.2d 351, 359 (Fed. Cir. 1986) (Newman, J., concurring). Thus, § 121 “effects a form of estoppel” against the PTO, “that shields the applicant from having to prove the correctness of the restriction requirement in order to preserve the validity of the second patent.” Studiengesellschaft, 784 F.2d at 361. In our past decisions, we have limited § 121 in accordance with its language and clear purpose to situations in which the patent applicant has been forced to divide his application by action of the PTO. We have interpreted the statute to include a requirement of consonance, requiring that the later application or applications follow the original examiner’s restriction requirement, and we have interpreted the statute to include a requirement that the later application or application be filed “as a result of” the original PTO restriction. In addressing § 121, the majority opinion commits two legal errors. First, it significantly undermines this court’s “consonance” precedence by permitting a patentee to ignore the examiner’s demarcation of independent and distinct inventions in subsequent divisional applications. Second, it engages in an impermissible and expansive reading of § 121’s “as a result of” language. Either error in isolation would be worthy of en banc review; coupled together, the errors threaten to significantly broaden § 121’s safe-harbor provision in clear defiance of this court’s “strict test for application of § 121.” Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1382 (Fed. Cir. 2003). |
Ned,
I have thoroughly trashed the case law you have presented. Unless you got more, you sound like Gajarsa – lame.
121 simply is not the monster that needs even near the cabining it did back in the submarine times. It is clearly meant to protect agains Office screw-ups, of which were plenty in this case – don’t forget that “but for” the Office violation of its guarantees amounting to four and a quarter years (which I haven’t seen any Office apologists care to defend or explain), the immediate case would be moot.
I would say your vastly overstate your version of the primary need. The majority simply got it right.
Let go.
6, I meant the unredoubtable, ping.
Well, 6, the courts, until the present case, uniformly held that Section 121 was to be narrowly construed as an exception to double patenting. The reason for this narrow construction was to strictly cabin the use of section 121 to prevent the unjustified extension of the patent monopoly in time. These concerns, once of great concern given that patents extended in time 17 years from issuance, are of less concern today given that patents expire 20 years from their US effective filing dates. But, given that terms can be extended up to 10 years, and the fact that without a terminal disclaimer, patents on the same invention could be owned by two different enities, the remaining concerns are not deminimis.
So the primary need remains to prevent double patenting. It is the public who needs to have Section 121 narrowly cabined. The current ruling seems to have thrown all prior case law on this issue into the trashcan by eviserating both the requirement of strict consonance and the statutory requirement that a divisional had to be filed as a result of the restriction.
Ned,
I will also offer the following observations:
Who is meant to be protected by 121?
From whom is the protection of 121 meant to be?
What is the originating action that is meant to initiate 121 protection?
Do you catch the drift that 6 misses from my hypo?
You also might go back and read the blistering dissent in your own case cite of Bristol-Meyers. Think of what that judge may have had to say on the immediate case’s fact pattern (hint: the Office wouldn’t be sitting for a week).
“I am uncertain of your position”
So?
“ I asked pong to clarify and he did.”
Goody for Pong. Goody for you.
“How would you answer?”
I done tol’ you – Homey don’t do answers.
Although I will offer the observation as I did at May 12, 2010 at 11:00 AM above concerning “implicit” and exclusive action by the Office concerning any alleged understanding in relation to which there is disagreement or doubt. What do you think that means?
6,
“Because we don’t restrict specs tard.”
And obviously you don’t write them either. And just as obviously you miss the drift on the whole B-C separation and consonance argument. Yous need to go back and pay attention to IANAE – he knows consonance.
Further, in essence you have just agreed that the actual case at hand was rightly decided. Talk about wasting your time Tard – try to actually think through your logic before making a stand.
ping, I am uncertain of your position. I asked pong to clarify and he did. How would you answer?
Pong quoting Ned “Now, what I do not know is your position on B vs. C in a case where B and C are filed in the same divisional, are not restricted, but are examined together and perhaps even allowed, and only thereafter, instead allowing granted C to issue, the applicant voluntarily, without requirement by the examiner, cancels claims to C and presents them in a third application. When the patent to B issues, can the examiner enter a ODP rejection of C vs. B?”
Pong replying to Ned: “Ned, my position is: no. B and C are independent or distinct as set forth in the restriction requirement. The fact that the examiner of the divisional containing B and C did not restrict them is meaningless. The failure to restrict is not an “implicit withdrawal” of the determination that A and B and C are all independent or distinct from one another. Only ftards like 6 think that. But what do you expect from somebody who can’t even grasp a simple concept like consonance?
Posted by: pong | May 12, 2010 at 01:57 PM”
“If someone wanted to follow the letter and spirit of a divisional request, why wouldn’t the spec and claims be equally separated?”
Because we don’t restrict specs tard.
I can’t believe I even wasted my time talking to you. I should have known from the outset that you had no point to make what so ever that was relevant to the issues here.
“Sure, if you leave out C in the spec of B then you’re fed. Anyone who is re tarded enough to do that deserves it.”
But 6 – point of the hypo was to show that your R-tarded “B must be separate from C” hypothosis was R-tarded. If someone wanted to follow the letter and spirit of a divisional request, why wouldn’t the spec and claims be equally separated? Or do you always recommend writing specifications to more than one distinct invention? You be all high and mighty about the applicant not f’ing up and trying to claim B and C in the second app cause that don’t follow your thinkin on consonance, yet you more than fine with lacking consonance in the spec – what happened to your spirit, bro?
Well I have B
And also C
And two attests,
I clearly agree.
it’s all there in the history.
WHAT UP WITH THAT?
” that means that C is not claimed and is not in the spec of the second application.”
AND IT IS NOT IN THE SPEC OF THE SECOND APP?
Why the f would it not be in the second apps spec? What kind of re tarded hypo are you trying to craft here? What is the point of it?
Sure, if you leave out C in the spec of B then you’re fed. Anyone who is re tarded enough to do that deserves it.
yah, what up?
One claim = name the same!
This ha_te filter gotsa go.
6,
I have pinpointed your error for you. You have conflated the real case with my hypo and you made a critically wrong ASS-U-mption.
Your statement of “ I already said the chain goes like this: File app 1. Get restriction to A B C. Pick A no traverse. File app 2 (implicitly with the same SPEC as app 1 you tardface) and claims only to B. is not the question I asked you. Pay attention sunshine.
So while you may have given an answer more than once, it was an answer to the wrong question.
When I state “that second application does not contain both inventions B and C.” that means that C is not claimed and is not in the spec of the second application. Your bridge is out of order.
B Call me.
Maybe it’s late but just call me.
Don’t be afraid,you can call me.
Call me and we will sit down.
If I’m what you were protecting,
maybe now I am detecting,
that you really were selecting
to help MEEEEEEEEEEEEEE.
Call me.
maybe it’s late, but just call me,
Don’t be afarid. You can call me.
Call me and we can sit down.
You know who else didn’t like restriction requirements?
Posted by: Malcolm Mooney | May 12, 2010 at 01:44 PM
I was going to guess Mike Godwin, but he doesn’t seem to have any patents.
Posted by: IANAE | May 12, 2010 at 01:57 PM
The correct answer is Hit-ler.
Ping’s idea of a “challenge” is: Ask someone to do something and then when they do it simply state that they didn’t without explanation or reason, and state that the challenge is still going!
You also have to say “since it’s your own fault you haven’t done what I asked, this challenge is made final”.
“And 6 – your handwaiving of 120 and 121 don’t meet the challenge. ”
What challenge you tard? Your “question” about “how” has already been answered, in DETAIL by the recitation of an entire procedure. Twice. Simply state what is the matter with my procedure in terms of what specific provision of law would prevent it from happening. It should take you less than a paragraph.
The only “challenge” remaining is for you to tell me what is wrong with my answer. Specifically. In terms of what would be wrong with the 3rd app and what would happen to it because of a specific provision in the law.
Ping’s idea of a “challenge” is: Ask someone to do something and then when they do it simply state that they didn’t without explanation or reason, and state that the challenge is still going!
“So, are we in agreement?”
We are in agreement that IANAE is the man! Nobody and I mean nobody spins a better response with absolutely no substance better than he.
Notwithstanding that, pong should take that volley and smash it like the worhtless crap non-answer, non-point gibberish that it is.
“I see you’ve elected the set of strawman claims for further prosecution on the merits.”
Acceptance at this point isn’t where the fun starts – it starts in the next app and what is included in the spec and claims – different ballgame (as long as no claims are repeated to this first acceptance).
And 6 – your handwaiving of 120 and 121 don’t meet the challenge. I hope this don’t turn into another Court adventure….
pong,
I see you’ve elected the set of strawman claims for further prosecution on the merits.
I hereby withdraw all the other claims I made, because responding to actual arguments seems to be a burden for you. Of course, I’m not admitting that any of them cause you any burden at all, and I’m not saying I agree with you in any way. Please note how I’m conspicuously not disagreeing with you while acting exactly like a person who agrees with you, at exactly the best possible time for a person who disagrees with you to voice any concerns he may have.
So, are we in agreement?
“Nobody even ever said they could.”
Uhm, I’m pretty sure you did.
“You’re not agreeing to that. You’re agreeing that there is a serious burden between any and all of them, not just 3 of them together.”
Incorrect.
“And, in the event that you think that is an issue, maybe I’ll have to get our FP writers to go ahead and specify that such is the case.”
I won’t hold my breath waiting for the FP writers to fish your suggestion out of the circular file it will be immediately placed into.
“Under the new IANAE/6tard legal theory of “implicit withdrawal”?
The answer to that could not be more clear: NO.”
Nobody even ever said they could. I know how you love straw men. From behind.
“I agree that there would be a serious burden to search and examine all 3 in one application”
You’re not agreeing to that. You’re agreeing that there is a serious burden between any and all of them, not just 3 of them together. And, in the event that you think that is an issue, maybe I’ll have to get our FP writers to go ahead and specify that such is the case.
“What is really happening is that the applicant is no longer being required to restrict in the way that he was previously. The PTO is letting him present two sets of claims in one application, but he is choosing to separate them into two separate applications. How can that action by the applicant logically be characterized as the result of any action by the PTO?”
What’s your point?
The issue is: using 6tard’s original example, if the applicant elects A without traverse, and then files ONE divisional application containing both B and C, can the examiner of the divisional application (regardless of whether it’s the same examiner as the parent or a different examiner) not restrict B and C and then reject the divisional application under ODP over the parent? Under the new IANAE/6tard legal theory of “implicit withdrawal”?
The answer to that could not be more clear: NO.
“Only ftards like 6 think that. But what do you expect from somebody who can’t even grasp a simple concept like consonance?”
I have already told you that I don’t think that it was implicitly withdrawn tardface. And apparently I understand consonance a fton better than you do.
In you two’s little hypo here there sure as f is no consonance in app 2 if the examiner fails to restrict. They are independent and distinct, as you noted, from the first app. And also, burden was previously established.
In fact, let me quote you the old form paragraph. The new one isn’t much different but I don’t have a copy off hand.
“Restriction for examination purposes as indicated is proper because ALL THESE inventions listed in this action are independent or distinct for the reasons given above AND there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. ”
Note the “all these” and “and” that I bolded.
“If the examiner is saying that the applicant must elect only one of A, B, C, he is saying that any two of those three would pose a serious burden if examined together.”
So? What if the examiner is incorrect about the burden of searching B and C together? If I’m electing A without traverse because I agree they are independent or distinct as claimed and I agree that there would be a serious burden to search and examine all 3 in one application, I’m not required to “traverse” the restriction between B and C. Only a f’in tard like 6 thinks that.
“If the examiner later allows B and C to be presented in the same child application without restricting, he is saying (one would think (if one didn’t sit on the CAFC bench)) that from that point forward no further divisional separating B and C is a result of any previous requirement for restriction, because the applicant no longer has any obstacle to presenting B and C together.”
So my first divisional application containing B and C issues with claims to B and C. I then file a third application (second divisional) with claims directed to B’. Yes, the third application (second divisional) can possibly be rejected under ODP over the second application (first divisional), but not over the first application (original application).
The failure to restrict is not an “implicit withdrawal” of the determination that A and B and C are all independent or distinct from one another.
That’s just one way you might try to understand it. It’s not what anybody claims is really happening.
What is really happening is that the applicant is no longer being required to restrict in the way that he was previously. The PTO is letting him present two sets of claims in one application, but he is choosing to separate them into two separate applications. How can that action by the applicant logically be characterized as the result of any action by the PTO?
“Now, what I do not know is your position on B vs. C in a case where B and C are filed in the same divisional, are not restricted, but are examined together and perhaps even allowed, and only thereafter, instead allowing granted C to issue, the applicant voluntarily, without requirement by the examiner, cancels claims to C and presents them in a third application. When the patent to B issues, can the examiner enter a ODP rejection of C vs. B?”
Ned, my position is: no. B and C are independent or distinct as set forth in the restriction requirement. The fact that the examiner of the divisional containing B and C did not restrict them is meaningless. The failure to restrict is not an “implicit withdrawal” of the determination that A and B and C are all independent or distinct from one another. Only ftards like 6 think that. But what do you expect from somebody who can’t even grasp a simple concept like consonance?
I was going to guess Mike Godwin, but he doesn’t seem to have any patents.
You know who else didn’t like restriction requirements?
pong, just for the record, I agree with you regarding the safe harbor of both B and C vs. A, even if B and C are filed in the same divisional.
Now, what I do not know is your position on B vs. C in a case where B and C are filed in the same divisional, are not restricted, but are examined together and perhaps even allowed, and only thereafter, instead allowing granted C to issue, the applicant voluntarily, without requirement by the examiner, cancels claims to C and presents them in a third application. When the patent to B issues, can the examiner enter a ODP rejection of C vs. B?
“No he didn’t you f’in tard. He established that there would be a serious burden to search and examine an application having claims to A, B, and C.”
Hardly. That is the stupidest fin interpretation of a restriction I’ve ever heard. The BURDEN must be established with respect to each group in relation to every other group in order for the restriction to be proper.
“As ping already explained to you, the PTO’s actions are based exclusively on the written record.”
The what causes a PTO action has nothing to do with whether or not the restriction is implicitly lifted. God you’re stup id as fu ck.
“There is no such thing as an “implicit finding” you tard.”
Fine with me, I hope they don’t make that implicit finding. Although dollars to pennies I bet they do. Whether or not you say they will or not.
“If the parent application contains a WRITTEN restriction requirement determining that A and B and C are independent or distinct from one another, than absent a WRITTEN retraction of that determination, A and B and C are independent or distinct from each other for eternity.”
So, you believe they’re independent and distinct, but since they were represented in app 2 as B and C, then they’re entitled to the examiner reevaluating burden between those two groups EVEN THOUGH HE ALREADY DID SO IN APP 1 in order for the restriction to even be proper. You sir are a re tard. What’s more, as IANAE points out, the “burden” nonsense is policy AT BEST, it has nothing to do with what the law requires or grants (ahem ODP protection). It is 100% irrelevant to the issues in the instant case.
“And the examiner can’t, in the divisional application, withdraw or retract, either “implicitly” or in writing, the restriction requirement made in the parent in order to reject the divisional over the parent using ODP. That’s exactly why section 121 was enacted.
”
Fine with me, doesn’t support your point about the instant app, or ping’s hypo in the least bit. It in fact supports mine.
Apparently you’re re tarded enough to believe that ping’s position with regard to the case at hand is correct based on nothing but the supposed fact that the examiner didn’t establish burden between B and C in app 1. You’re out of your mo fin gourd son.
He established that there would be a serious burden to search and examine an application having claims to A, B, and C. He didn’t establish squat about a serious burden for an application containing B and C.
If the examiner is saying that the applicant must elect only one of A, B, C, he is saying that any two of those three would pose a serious burden if examined together.
If the examiner later allows B and C to be presented in the same child application without restricting, he is saying (one would think (if one didn’t sit on the CAFC bench)) that from that point forward no further divisional separating B and C is a result of any previous requirement for restriction, because the applicant no longer has any obstacle to presenting B and C together.
Ping in response to your continual annoying posts I’m going to go ahead and breifly reply.
“really? – show me the lawl lol on this sunshine – especially given an application 2 that only has B.”
Applicant 2 has the same spec as app 1. It has A B C in the SPEC. It has B in the CLAIMS.
Here is the law as to how you can chain back applications.
link to uspto.gov
link to uspto.gov
If there is something specifically in these laws that you feel like would preclude filing in the fashion I’ve laid down then go ahead and spit it out lazy arse.
“Show me how a patent that cannot have children can now have a divisional through an active child when that child is absent the substance of the grandchild (this be like a virgin birth).”
It doesn’t “have a DIV” quote unquote “through an active child”. The grandchild DIV is a DIV of the child, where the restriction is still in force by the way the wording of 121 is stated.
“If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application.”
Do you see this? This means that if you file an appliction, for instance application 3, and call it a DIV, you may also put in a claim to the priority of app 2 and app 1.
“A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.”
Do you see this? This means that the original app cannot be used against app 3 in an ODP rejection.
Now, what, specifically, do you think prohibits someone from filing in the manner I laid out for you?
” that’s just it 6 – this can only happen if what you want in application 3 (invention C) is in application 2 (inventions B and C). No way no how can you depend on application 2 if that application does not contain B and C. Any use of application 2 that only has B cannot give this mythical bridge that you think it can. Now the question you still haven’t answered is how you do this – don’t give me no empty words that Iza can – tell me exactly how.”
App 2 has the same spec as app 1 and in that regard has C in it. App 2 however does not have C in the CLAIMS. Why you think this is some big ol’ hairy deal as to this being something that would prevent app 3 from getting the priority date and the ODP protection is strictly up to you to explain.
As to “how” I do this, I just laid out for you the procedure, what specifically do you think goes wrong at the 2nd stage?
“in case you missed it 6 – oh wait – you did.”
I’m pretty sure I didn’t miss jack sht you tard. I already said the chain goes like this:
File app 1. Get restriction to A B C. Pick A no traverse. File app 2 (implicitly with the same SPEC as app 1 you tardface) and claims only to B. Let app 1 issue. File app 3 with claims to C, claim priority to app 1 by claiming priority to app 2 and 1, and call it a DIV, you will get ODP protection.
That is the HOW you do this. That is the procedure. I’ve seen it happen tardface. And yes I will cite you some apps that do this. It won’t be like a fin virgin birth at all. It’ll be more like the 1000000 results I’ll get by searching “(which NEAR divisional) AND (which near divisional) AND (which NEAR divisional)” in EAST.
“He already ‘established’ that in the first app. Ya tard. You didn’t traverse.”
No he didn’t you f’in tard. He established that there would be a serious burden to search and examine an application having claims to A, B, and C. He didn’t establish squat about a serious burden for an application containing B and C.
“No reason, it’s a complete bullsht implicit finding like so many of the things the judiciary does, or would very likely do, to make up for incompetence on the part of applicants.”
There is no such thing as an “implicit finding” you tard. As ping already explained to you, the PTO’s actions are based exclusively on the written record. If the parent application contains a WRITTEN restriction requirement determining that A and B and C are independent or distinct from one another, than absent a WRITTEN retraction of that determination, A and B and C are independent or distinct from each other for eternity.
And the examiner can’t, in the divisional application, withdraw or retract, either “implicitly” or in writing, the restriction requirement made in the parent in order to reject the divisional over the parent using ODP. That’s exactly why section 121 was enacted.
Damm you iz dumm.
“Why can’t it simply “say” that the examiner can’t establish that a serious burden does not exist to search and examine both B and C in the same application?
”
He already “established” that in the first app. Ya tard. You didn’t traverse.
“Why would the examiner’s decision to not restrict B and C in a divisional “unsay” that? ”
No reason, it’s a complete bullsht implicit finding like so many of the things the judiciary does, or would very likely do, to make up for incompetence on the part of applicants.
“What seems clear is that one strongly held view has been shown to be wrong, but is still being clung to.”
I don’t know where you think you showed jack to be “wrong”. You ain’t showed sht son.
Apparently my post from last night did not post so I will retype it later.
“What is clear is that there seem to be two views on this topic, strongly held.”
What seems clear is that one strongly held view has been shown to be wrong, but is still being clung to. The call for en banc is clearly not needed, because the cases cited are distinguishable. Have you scheduled yourself for a class with the PTO disciplinary authorities yet?
As to anything “implicit”, the Office is forstalled from that avenue by some silly rule. Something about being clear on the record…
Oh yeah, “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.”
Shamelessly stolen, but at least I don’t need 4 pages to expound on it.
What is clear is that there seem to be two views on this topic, strongly held. The Feds should have taken this case en banc. But since they did not, the PTO needs to help, by rule.
I would suggest this:
1) The office will consider a restriction requirement to carry over to a granddaughter if and only if strict consonance is maintained in intervening applications.
2) If strict consonance is not maintained, the restriction requirement will carry over to a granddaughter application if and only if the restriction requirement is specifically referenced by the examiner in the daughter application and there reimposed.
3) Define consonance to mean strict and exclusive compliance with the examiner’s demarcation of groups. Claims in a non elected group will have to be set forth verbatim. New claims may be added, but such new claims are not presumed to be consonant.
“So pretend I said that.”
I could if I would. But you didn’t say that.
“In any case, it’s not important to my argument which of the conditions for restriction is implicitly absent when the PTO chooses not to restrict.”
It’s not? So, using 6tard’s example, if you elected A in the parent without traverse, and filed a divisional including both B and C and the examiner didn’t restrict, but gave you an ODP rejection over the parent, on the theory that he/she has “implicitly withdrawn” the restriction requirement (i.e. has “implicitly” determined that the original determination that A, B, and C were all independent or distinct is now no longer true), you’re telling me it’s not important why the examiner did not restrict B and C in the divisional?
This entire “implicit withdrawal” exchange between you and 6tard is really annoying. There is no such thing. If you had simply told him that in your reply then maybe the rest of us wouldn’t have to pretend that you know what you’re talking about.
There are TWO requirements for a proper restriction: 1) the inventions as claimed are independent or distinct AND 2) there would be a serious burden on the examiner if restriction was not required.
I’m pretty sure I’ve had this conversation once before.
Two inventions can properly be restricted under the statute for the sole reason that they are patentably distinct. The undue burden thing is only in the MPEP. Not that I mind it as a requirement, but I consider it a mere statement of policy that could be changed or ignored at any time. The actual law says that if you have two inventions you should be filing two applications.
Also, I’ve never had an examiner show me much in the way of undue burden. Usually just a conclusory statement or a (sometimes very general) suggestion that the claims would be in different art classes.
In any case, it’s not important to my argument which of the conditions for restriction is implicitly absent when the PTO chooses not to restrict. The important thing is that the PTO no longer requires restriction between B and C. So pretend I said that.
Nice return pong. I believe the point is yours.
“In your scenario, you wouldn’t be allowed to serial chain divisionals and applicants would haveta claim all divisionals offa Application 1 before Application 1 issues.
Serious lack o’ understandig the law there 6.”
Truer words were never spoken.
“the other INVENTION (SINGULAR) is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application.
The other invention (singular) is taken care of in a DIV one at time under 121 bucko.”
LOL
Your ability to “interpret” statute gets even more hilarious with time.
“That failure to restrict ‘un-says’ that B is a different invention from C.”
Why?
Why can’t it simply “say” that the examiner can’t establish that a serious burden does not exist to search and examine both B and C in the same application?
The examiner “found” in the parent that A was distinct from B and C, that B was distinct from A and C, and that C was distinct from A and B, and presumably presented reasons for those “findings.” Why would the examiner’s decision to not restrict B and C in a divisional “unsay” that?
There are TWO requirements for a proper restriction: 1) the inventions as claimed are independent or distinct AND 2) there would be a serious burden on the examiner if restriction was not required.
Regardless of whether the examiner of the divisional is the same as or different from the examiner of the parent who wrote the restriction requirement, the “official position” of the PTO is that A is independent or distinct from B and C, B is independent or distinct from A and C, etc.
So how does not restricting B and C in the divisional “unsay” that B and C are independent or distinct?
Please explain.
“Application 1 is allowed and prior to issue, applicant files a divisional application 2”
in case you missed it 6 – oh wait – you did.
“Naw, because of the way the filing date provisions in the law work out you’ll be fine.”
Is this addressing any point I made?
“stating that app A is closed from having any children is equivalent to the statement that no app could claim priority back to it. That is not the case.”
really? – show me the lawl lol on this sunshine – especially given an application 2 that only has B. Show me how a patent that cannot have children can now have a divisional through an active child when that child is absent the substance of the grandchild (this be like a virgin birth).
“App 2 can build a bridge for the priority to flow” – that’s just it 6 – this can only happen if what you want in application 3 (invention C) is in application 2 (inventions B and C). No way no how can you depend on application 2 if that application does not contain B and C. Any use of application 2 that only has B cannot give this mythical bridge that you think it can. Now the question you still haven’t answered is how you do this – don’t give me no empty words that Iza can – tell me exactly how.
Ned,
Don’t grant me anything – it’s the law you offended – She don’t like being mistreated, and mis-citing be mistreating (just a tad more than your crappy I purposely avoided that type of language argument that was, shall we say, self-evidently spurious.
ping, I checked 07/124,197 on PAIR. It does list a 1987 a preliminary amendment filed on 11/23/1987, the filing date of US’197, which seems to suggest they may have cancelled the claims elected in the parent on filing the divisional.
So, I will grant you this. The ‘197 was a divisional to the extent that filing claims not in consonance with the restriction requirement was proper.
I just wanted to stop by and say:
link to youtube.com
“NOW, how do you get both inventions B and C when Application 1 is closed to further children?”
Um, you don’t? If app 1 issued without you filing your app 2 or 3 then as far as I know you’re fed. Hopefully you at least filed app 2.
“In your scenario, you wouldn’t be allowed to serial chain divisionals and applicants would haveta claim all divisionals offa Application 1 before Application 1 issues.”
Naw, because of the way the filing date provisions in the law work out you’ll be fine.
“So, to restate my question, tell me how an applicant can obtain a third patent for invention C from the second application, if that second application does not contain both inventions B and C. Application 1 is no longer allowed to have children.”
Here’s the deal pingersloth, you can file whatever claims in whatever application whenever you want, and you can claim priority back to whatever the f you want. Whether or not you actually get your priority date and whether or not you get your 121 ODP protection depends on whether or not you meet certain req’s. Those reqs happen to be set out in the statute.
In your situation you’re trying to make the false argument that stating that app A is closed from having any children is equivalent to the statement that no app could claim priority back to it. That is not the case. App 2 can build a bridge for the priority to flow. And the restriction req can build the proper bridge to put C in app 3.
In your scenario you file app 3 after app 1 issued and make your claim back for priority, and you happen to get it because the law allows you to. You will also happen to get ODP protection because the law also allows that. If you disobey the laws on claiming back for priority and/or the laws on getting ODP protection then you do not recieve either or.
In the instant case at issue, it appears that the applicant broke the laws on getting ODP protection.
“The LAWL saw the problem and said, ya’know what – the Office is goin to screw the applicant and weza gotta protect ‘im. Thus 121 was born.”
Then they did a piss poor job o it then.
And ffs, note that the office didn’t screw anyone in any of these situations, your hypo or the instant case. In the instant case the applicant decided to blunder along like a big ol’ boob doing whatever he pleased rather than following the law to get the benefits he wanted. He could have perfectly easily gotten the benefits he wanted legitimately by filing DIVs properly. JUST LIKE THOUSANDS OF OTHER PEOPLE DO EVERY FRAKIN DAY I SHOULD ADD.
Be clear ping, you people arguing for this nonsensical reading of the law might have gotten a panel majority (we’ll see come friday when the decision issues) but you are by far in the minority so far as I can see from the way DIVs are filed in my cases. And I will not be surprised to see another case like this come along here shortly to straighten this sht right straight out.
Do you think that all those other people are less sophisticated than you? Do you think they simply want to file more apps at a substantial cost to themselves? I can only imagine we’re talking 100’s of thousands o dollars for individual apps. Why do you reckon most folks don’t want to try this risky business? They just want to string prosecution along longer? Could be, but from the numbers involved I’m doubting it.
6 the typo I have is that I was just plain lazy to get all cute with “app 1, app 2 app 3, invention A, invention B, invention C, app A, app B, app C, invention “A”, invention “B”, invention “C” – I just used A, B, and C for both app and invention, thinking that maybe you were a smart fella and could figure that out. I guess I was wrong about you being a smart fella.
You also do not answer the first question which prompted this hypo discussion which was about serial claiming. So let me get unlazy for a moment and put the question in language even you might understand.
Application 1 receives a restriction to invention A, invention B and invention C.
Applicant responds by choosing invention A for Application 1.
Application 1 is allowed and prior to issue, applicant files a divisional application 2 (we’ll hold off a moment before looking at what is filed in application 2).
Application 1 issues.
NOW, how do you get both inventions B and C when Application 1 is closed to further children?
As pong has bounced the ball off your noggin (nice game pong), you seem all bent out of shape that Application 2 may have been (and in the analogous case, was) filed with both inventions B and C. As my main man IANAE esplained to you – consonance is only required for the separation of the allowed patent and “everything else”, so that the first allowed patent don’t have no second patent coming up and claiming whats in the first allowed patent (it don’t say nothin about nothin else – as you only be too happy to point out – other examiners may feel different than the first).
In your scenario, you wouldn’t be allowed to serial chain divisionals and applicants would haveta claim all divisionals offa Application 1 before Application 1 issues.
Serious lack o’ understandig the law there 6.
So, to restate my question, tell me how an applicant can obtain a third patent for invention C from the second application, if that second application does not contain both inventions B and C. Application 1 is no longer allowed to have children.
“I can’t say that I know what the correct course of action for an examiner to take here is”
No duh.
You also says “ the later option that can get tricky because if that is assumed to be true then there might not be a basis for having restricted A from B and/or C in app 1 and if you withdraw that restriction as well, well idk, sht hits the fan.”
The LAWL saw the problem and said, ya’know what – the Office is goin to screw the applicant and weza gotta protect ‘im. Thus 121 was born.
Pong,
“Not really an answer.”
You expected a real answer from 6? I lol you.
“I thought you said you understood restriction.”
Why would you understand that?
Bottom line, your reliance on the implicit withdrawal is misplaced in a complicated restriction where the applicant simply went ho g wild with how he filed DIV’s and where there are way too many consequences to allow for the “oops” factor that you’re really relying on to make that implicit finding of withdrawal of the original restriction. If the examiner isn’t saying “oops” and is instead saying “w t f I need to get a case out”, then you shouldn’t be getting 121 ODP protection anyway.
And again, if you make that implicit withdrawal of restriction at the issuance of an action in the instant 2nd app, what makes us believe then that the original restriction should not have been done away with in total? What then would shield and provide for the filing of your new app 3?
Bottom line, your reliance on the implicit withdrawal is misplaced in a complicated restriction where the applicant simply went ho g wild with how he filed DIV’s and where there are way too many consequences to allow for the “oops” factor that you’re really relying on to make that implicit finding of withdrawal of the original restriction. If the examiner isn’t saying “oops” and is instead saying “w t f I need to get a case out”, then you shouldn’t be getting 121 ODP protection anyway.
And again, if you make that implicit withdrawal of restriction at the issuance of an action in the instant 2nd app, what makes us believe then that the original restriction should not have been done away with in total? What then would shield and provide for the filing of your new app 3?
Notice also that the fact of the matter is that you’re just trying to take advantage of any st upid examiners that you can find. If they wanted to withdraw the restriction of your claims then that shouldn’t be an implicit finding by way of them (perhaps accidentally) examining all claims, it should be a finding only if they state that they did such in their action.
BTW, in the instant case it has already apparently been fairly well established that the app didn’t do some simple, oh, well I’ll put a few claims in and see if he won’t restrict. He specifically tried to avoid an interference with his little manuevering. I see even less reason to make that implicit finding as you would have us make. We passed “no reason to make that implicit finding” a long time ago.
“We’ll take that as an implicit statement by the PTO that B and C aren’t so different after all.”
As I have already stated, I have little issue with that little assumption in the simplistic little case where it is ABC. And I say that even though there is no basis in the law or any reason to assume that implicit statement. It could very well be that the examiner needed to act on the case even if there was a burden and they were independent and distinct. In which case there is no reason to believe that he wished to withdraw the restriction as to the remaining groups. Perhaps he should ODP them and be done with them lol. Just forget I suggested that last thing lol 😉
Where, however, as in the instant case, you have applicant just jumbling sht all up however he feels like he wants to, he doesn’t get 121 protections from ODP as his claims are clearly not consonant at all, and what is more, you’d like to have me believe that the restriction was implicitly lifted before app 3 was even filed. He, by making up his own groups, clearly is not following the restriction, and he is not properly making a DIV. What “invention” according to the original restriction was app 3 in response to? None. He made up his own hypothetical grouping. He didn’t just present all claims and see what fell out like a re tard. He gets no implicit finding that he is a re tard and the examiner wanted to be his buddy (or however you want to state the flimsy implicit finding you’re relying on).
And if we assume that the restriction is lifted after what he got in App 2 then App 3 shouldn’t even be able to be a DIV of app 2, it would have to be a CON of app 2 if anything because there is no restriction req anymore.
There is thus even less reason to imply as you did in the simplistic case. Any smidgen of implication as you just did in the simplistic case is erased in total by the ramifications of allowing this nonsense to go on. Especially when there is a perfectly acceptable procedure that people should be following, and which many (most that I’ve had) people DO FOLLOW.
You people trying to scrimp and save a couple grand here and there and relying on b s “implications” that have no support in the lawl should recognize that you’re living dangerously and if the courts slap you down, so be it.
Ned,
I assume that you place a lot of credence in case citations. Instead of turning myself in to the PTO disciplinary authorities for some re-education, I suggest that after reading the following that you check your meds.
“Ping, you do realize, do you not, that in the present case, as in Bristol-Meyers, the applicant filed a continuation with all claims and presented all of them for examination”
592 F.3d 1340, 1343-44:
“The ‘812 patent is the third in a chain of related patents, all of which share a common specification.
While the ‘947 application was pending, the applicants filed U.S. Patent Application No. 07/124,197 (the “‘197 application”) as a divisional of the ‘947 application.
The respective claims of the ‘197 and ‘947 applications were therefore divided as between applications along the lines of demarcation drawn by the examiner in the restriction requirement.
The ‘671 application was filed as a division of the second application in the chain–the ‘197 application.”
Now unless you think that the CAFC should join me at the PTO disciplinary authorities for some re-education, I expect a thank you from you for setting you straight.
Or would that be self-evidently spuriouos?
My original restriction would say more than that. My restriction states that A is a different invention from B. My restriction states that A is a different invention from C. My restriction states that B is a different invention from C.
Yes, of course your restriction requirement says all those things.
Now, suppose I elect A without traverse and present B and C in a single divisional. Suppose you choose not to restrict between B and C. We’ll take that as an implicit statement by the PTO that B and C aren’t so different after all.
That failure to restrict “un-says” that B is a different invention from C. But it says nothing about the relationship of either invention with A. Your last word on the subject clearly states that each and every claim in my parent application is a different invention from each and every claim in my divisional. My parent and my divisional are clearly demarcated along a boundary that you set in your restriction requirement. That should be enough consonance that you can’t reject B and C over A for double patenting.
“Too bad, you’re wrong.”
IANAE is correct. You have no idea what consonance means.
“Whether the applicant is estopped from traversing, I couldn’t say.”
Why can’t you say? Under what theory would applicant be estopped from traversing?
“6, I would say that a divisional claiming both B and C is consonant with a restriction requirement between A, B, C.”
Too bad, you’re wrong.
“Your restriction requirement states that A is a different invention from B and C, and the divisional doesn’t cross the line demarcating between A and any other invention. ”
Now we see why you’re wrong.
My original restriction would say more than that. My restriction states that A is a different invention from B. My restriction states that A is a different invention from C. My restriction states that B is a different invention from C.
Otherwise my restriction was improperly written and/or issued. We are required to detail the relationship between all groups to each other group. You ever wonder why some of your restrictions (all the proper ones where there are a lot of groups) have a sht ton of paragraphs detailing the relationship between each group with each and every one of the other groups individually? This is why.
I assume in the instant case that the examiner did at least do this properly. If he didn’t but they didn’t traverse, then they still likely should be screwed as it is presumed that he is saying that they are independent and distinct, even if he didn’t detail it out, otherwise he wouldn’t be restricting from amongst them.
Now, considering what a proper restriction that I would write says and that we presume all examiners do in valid restrictions, consider your hypo IANAE.
6, I would say that a divisional claiming both B and C is consonant with a restriction requirement between A, B, C. Your restriction requirement states that A is a different invention from B and C, and the divisional doesn’t cross the line demarcating between A and any other invention. If B and C are presented together in a divisional, I think the most you can do is to again require restriction. Whether the applicant is estopped from traversing, I couldn’t say. I don’t believe you have valid recourse to a double-patenting rejection on these facts.
If you choose not to restrict between B and C, that’s your decision. You are free to assume the “burden” and examine both “inventions” B and C together. But none of that brings B and C any closer to A for the purpose of double patenting.
“Not really an answer.”
Ok, let me be more specific. I wouldn’t assume that myself because there is no reason to. But, if a court did it out of generosity in a case where a simple mistake was likely because people are st pid then I wouldn’t be so much against it.
“No longer considered to be distinct by who? ”
By the new examiner.
“If the examiner found that A and B and C are all independent or distinct from one another, and presented reasons for the independence or distinctness, that’s the end of the inquiry. ”
I agree. And yes I do understand it.
“Not really an answer.”
Ok, let me be more specific. I wouldn’t assume that myself because there is no reason to. But, if a court did it out of generosity in a case where a simple mistake was likely because people are st pid then I wouldn’t fight it.
“No longer considered to be distinct by who? ”
By the new examiner.
“If the examiner found that A and B and C are all independent or distinct from one another, and presented reasons for the independence or distinctness, that’s the end of the inquiry. ”
I agree. And yes I do understand it. But I’m also saying that I think there is a good chance that a judge would give them a break in an instance where incompe tence was likely the cause of the issue. And I wouldn’t fight it. I wouldn’t personally fight it because I don’t think the restriction law is a good one at all. Be that as it may, I can still read the law and understand how others apply it.
“If you reject B and C under ODP using the parent application, and you are appealed (petitioned?), you will lose.”
Maybe. Perhaps the best course of action is to hold the claims non-responsive. I can’t say that I know what the correct course of action for an examiner to take here is, I have not fully explored it myself. But, in either event, that presentation of claims is improper under the lawl that you so adore. Perhaps the office simply shouldn’t give the DIV the filing date of the parent since they failed to make the other invention the subject of a DIV.
“There is nothing in section 121 that requires that applicant file each group identified in the restriction requirement as a separate divisional.”
You’re absolutely right that there is nothing explicitly that states that. But then again, there is nothing in 121 that will provide you with a filing date should you fail to do as it says.
“the other INVENTION (SINGULAR) is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application.”
The other invention (singular) is taken care of in a DIV one at time under 121 bucko.
That is to say in effect, the language “the other invention” precludes you from making claims to two independent and distinct inventions as determined in the previous restriction requirement.
“The applicant believes there is a solid argumnent that there is no serious burden to search and examine all claims to B and C in a single application, but doesn’t have any argument that searching A, B, and C does not present a serious burden.”
Then that’s a prime example of when the app TRAVERSES IN THE ORIGINAL APPLICATION AS THAT IS WHERE THE RESTRICTION IS BEING MADE. Ya tardbrother.
“Applicant files ONE divisional application containing B and C. Applicant expects to receive a restriction, at which time Applicant will traverse the requirement on the grounds that there is no serious burden to search and examine B and C in the same application.”
This presents the exact same problem as I told you guys about wayyyyyyyyy up thread. You in effect nullified the stat period for replying to the restriction requirement in full. Bullsht. If that’s how you want to play it then we should sure as f be holding such responses as you present in A as non-responsive as not being fully responsive. You didn’t answer the rest of the restriction requirement. And if you want to say that your cancellation was sufficient to answer the restriction requirement then we should either not be listening to your bs and still holding you non-responsive or oblige you by rescending the restriction requirement because you’re no longer claiming two or more independent and distint inventions. And we can go around like this (if you choose to add back in the claims after our withdrawal) until you decide to answer the restriction. Or until your patent term is up. You can choose.
Under standard procedure today we assume that your “without traverse” means that you traverse none of the restriction requirement. Not that you’d like some more time to think about/respond to part of the restriction requirement. And if you did pull the stunt as in your example then you would just about sure as f lose the petition on your traversal in the 2nd app. They might even go ahead and tell you that you should have traversed it in App 1 and that the issue isn’t even ripe for petition any longer. Or they might just cite some consonance caselawl and deny your petition outright.
And if you’d like to make an issue of that particular nuance I’ll be happy to settle it for us all the next time I get such a bogus reply. Interesting situations like this I’m more than happy to oblige my services on.
“The patent issuing from the ONE divisional application is not subject to invalidity under ODP from the parent application claiming A. ”
We’ll see about that. Plainly the MPEP has stated for a long time, and courts acknowledge, that DIV’s without consonance do not get ODP protection.
See here:
link to scholar.google.com
“In addition to the express requirements of section 121, we have also construed the statute to require consonance: the applicant must maintain the line of demarcation between the independent and distinct inventions that prompted the restriction requirement. Gerber Garment Tech. v. Lectra Sys., Inc., 916 F.2d 683, 688 (Fed.Cir.1990). This consonance requirement prevents an applicant from amending [6 note, or simply presenting in the beginning] the claims in the divisional application in a way that would violate the originally imposed restriction requirement and thereby impermissibly extend the patent term as to that subject matter. Id.[4]”
See here:
link to scholar.google.com
“Compliance with a restriction requirement means the claims in a divisional application must be consonant with those not elected under that requirement. Noncompliance with the consonance requirement is normally detected by the PTO examiner. See Manual of Patent Examining Procedure (MPEP) § 804.01 (double patenting protection of Section 121 does not apply where the claims are not consonant with, i.e. “have been changed in material respects 686*686 from”, the claims subject to the restriction requirement). Examiners’ compliance with MPEP § 804.01 may account for the absence of court decisions on the precise fact pattern before us and the consequent “first impression” status of the case in this court.”
We see there that apparently examiners may have been ODP’ing people for quite awhile in accordance with 804.01.
“We are presented here also with that procedural quirk in the law whereby the nonappealable becomes reviewable and piecemeal litigation becomes permissible. ”
“The divisional application must have claims drawn only to the “other invention.” See Lerner v. Ladd, 216 F.Supp. 81, 84, 136 USPQ 624, 626 (D.D.C.1962) (same invention double patenting).”
That’s from your own lawl.
“That is not to say, however, that the elected claims may not be looked to in assessing compliance with the prohibition against claiming the same invention in two patents.[2] In this regard, the phrase “obviousness type” may have been an unfortunate choice, for, as here, the claims in the divisional application may be actually drawn (though in variant language) to the same invention as that set forth in the elected claims. As discussed below, that phenomenon may be viewed as a failure to keep the claims in the divisional application “consonant.””
“Consonance requires that the line of demarcation between the “independent and distinct inventions” that prompted the restriction requirement be maintained. Though the claims may be amended, they must not be so amended as to bring them back over the line imposed in the restriction requirement. Where that line is crossed the prohibition of the third sentence of Section 121 does not apply. Cf. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971) (Section 121’s prohibition does not apply where restriction requirement withdrawn because divisional application no longer filed “as a result of” the restriction).”
That’s your lawl, and while 121 might not go so far as to tell you, the uneducated reader about it, it sure as f does seem to tell some judges about it and some examiners. Gl in your panel when your case comes up.
Try:
link to scholar.google.com
for background, though I feel it is useless in the instant case.
My final thoughts after having read the cases on consonance and all are that you’re likely very wrong about your ODP rejection scenario.
“Because people are by and large, rtards and sometimes we can give them a small break. If a court decided not to, I’m fine with that too. In fact I would probably prefer that they didn’t.”
Not really an answer.
Using your example, why would you assume that if the applicant filed a divisional application containing both B and C, that “B and C are implicitly no longer considered to be distinct from one another.”
No longer considered to be distinct by who? The applicant? What difference does that make?
The examiner makes the determination of whether inventions as claimed are independent or distinct, not the applicant. If the examiner found that A and B and C are all independent or distinct from one another, and presented reasons for the independence or distinctness, that’s the end of the inquiry. The examiner cannot use the claims to A to reject the claims to B or C under ODP, and can’t use the claims to B to reject the claims to A or C under ODP, etc.
I thought you said you understood restriction.
“Why would you assume that?”
Because people are by and large, rtards and sometimes we can give them a small break. If a court decided not to, I’m fine with that too. In fact I would probably prefer that they didn’t.
“I suspect you are among those attorneys who actually believe that one can file a continuation, call it a divisional and have it be a divisional without satisfying the requirements of the statute.”
There are no “requirements of the statute” for a case to be a divisional. There are only statutory requirements to obtain the benefit of Section 121 for a divisional. A voluntary divisional is perfectly legal.
I file a case disclosing a novel eggbeater and a novel computer memory. I claim only the eggbeater. First case is allowed, I file a divisional with new claims to the computer memory. The second case is a voluntary divisional to a disclosed, but not claimed invention.
“The inventions are A B C. The apps are, for example 1, 2, 3. App 1 has claims to all of A B C. They all GET DIVIDED from one another in app 1. C is divided from B right then. App 2 comes in with B and C, it is improperly presented. Consonance was not maintained with the restriction.”
Incorrect. There is nothing in section 121 that requires that applicant file each group identified in the restriction requirement as a separate divisional. Like most of what you post, you’re making that up.
Using your example, the original application is filed with A, B, and C. The examiner issues a restriction requirement. The applicant believes there is a solid argumnent that there is no serious burden to search and examine all claims to B and C in a single application, but doesn’t have any argument that searching A, B, and C does not present a serious burden.
Applicants elects A without traverse. Cancels B and C.
Applicant files ONE divisional application containing B and C. Applicant expects to receive a restriction, at which time Applicant will traverse the requirement on the grounds that there is no serious burden to search and examine B and C in the same application.
No restriction is issued. Instead, a first action allowance is issued allowing all claims to B and C. The patent issuing from the ONE divisional application is not subject to invalidity under ODP from the parent application claiming A.
“The examiner can repeat the restriction between B and C or he can f the applicant with no ODP protection”
If you reject B and C under ODP using the parent application, and you are appealed (petitioned?), you will lose.
“I would be fine with simply assuming that B and C are implicitly no longer considered to be distinct from one another.”
Why would you assume that?
ping, I suspect you are among those attorneys who actually believe that one can file a continuation, call it a divisional and have it be a divisional without satisfying the requirements of the statute.
ping, you need to turn yourself in to the PTO disciplinary authorities for some re-education.
“Cept you haven’t – you havent told me how C got divided from B if B (sic, app 2?) didn’t have all of B and C to begin with. That was the question.”
You have a typo in there somewhere tardface. The inventions are A B C. The apps are, for example 1, 2, 3. App 1 has claims to all of A B C. They all GET DIVIDED from one another in app 1. C is divided from B right then. App 2 comes in with B and C, it is improperly presented. Consonance was not maintained with the restriction.
The examiner can repeat the restriction between B and C or he can f the applicant with no ODP protection, or in this simplistic case, I would be fine with simply assuming that B and C are implicitly no longer considered to be distinct from one another. However, in the later option that can get tricky because if that is assumed to be true then there might not be a basis for having restricted A from B and/or C in app 1 and if you withdraw that restriction as well, well idk, sht hits the fan.
Assuming the applicant cancelled C above or the examiner repeated the restriction then app 3 comes in with C having been properly restricted from A and B in App 1. If one of the other options was taken at app 2 stage then app is probably a little bit fed.
That is all a simplistic example though. In the instant case we have the applicant runnin buck wild over the restriction’s groupings all over the dam place.
“Uh-huh.
Ya gonna stick with that story?
”
Yes, read Gargarsa’s summary of the facts.
Ned – in the present case, the applicant filed a divisional, not a continuation. The further daughter was also a divisional (self chosen)
Ping, you do realize, do you not, that in the present case, as in Bristol-Meyers, the applicant filed a continuation with all claims and presented all of them for examination. It was examined without a restriction requirement. Only after receiving a FAOM rejection, did the applicant cancel the claims that he “elected” in the parent. He also cancelled the compound claims he thought would interfere with an Eli Lilly patent and claimed them instead in a still further daughter application.
Now, the examiner could have, but didn’t, in that FAOM, allow all the claims, including the claims still being prosecuted in the parent.
Now, ping, follow what I am saying carefully. I will go slow, just for you.
Assume the applicant paid the issue fee and all claims actually issued in the daughter case, could the PTO enter a double patenting rejection over the issued daughter patent for containing exactly the same claims still pending in the parent?
I hope you would agree that he could. But that means that the parent had no Section 121 benefit from the daughter, which means that the daughter application was not entitled to Section 121 benefit at all, ever, just as 6 previously contended.
“or one of 6 or 7”
Uh-huh.
Ya gonna stick with that story?
“already told you tard, C has already been “divided”.”
Cept you haven’t – you havent told me how C got divided from B if B didn’t have all of B and C to begin with. That was the question.
You said “from A”, but that wasn’t the question sunshine.
“There are principles of law that trancend your slightly different factual situations tard.”
You wouldn’t know a principle of law if it was the only thing in your hands. Care to explain the prinicple that allows you to grab a 121 protection when you use a continuation instead of a divisional? That be some trancendant hand waiving you got there.
Yous and Ned ought to get your trancend and self-evident spurious purposely avoid the real language of law findings together for a good ‘ol hoot-an-nanny good time.
“in the case at bar, as in Bristol-Meyers, all claims were filed in the daughter case.”
If you’re looking for a way to distinguish Bristol-Myers (which I’m not really, but we need a rule consistent with all the caselaw), Bristol-Myers seems to rely somewhat on a restriction in the child being inconsistent with the restriction made in the parent.
Seems like a divisional is only as good as the most recent restriction requirement in the family, and it doesn’t matter which claims are later presented together without restriction.
“If the second app issues with both B & C, am I safe?
Can I ask the Examiner to give me a restriction requirement if he doesn’t do it immediately?
”
I and the dissent say maybe maybe not. In the simplistic example you present it would appear that the restriction requirement is simply lifted. However, on the other hand you have not maintained consonance with the restriction requirement and I don’t recommend you do it as you just did as you very well might not be in the clear. I personally have different attorneys that do things both ways. Some file in serial/parallel each restricted group/species. On the other hand I just got someone who included all leftover claims in a DIV where they were previously restricted into many groups. I repeated the same restriction from before (save the previously elected and prosecuted invention) and thus he won’t have any issues. In the instant case however they kept on filing on different groupings of their own making. Clearly not a situation where the restriction was simply lifted implicitly and clearly not a situation where they got a different restriction requirement to justify their filings.
And yes to your last question. Unless of course he immediately allows the case before you ask.
“Neither case on point here”
There are principles of law that trancend your slightly different factual situations tard.
“6, yous better go back and check the facts of the immediate case agains the exact steps you list here homeboy”
Hardly. In the instant case they simply threw in everything in the second app and ended up with a few claims left (that happened to not be all directed to one of the examiners groups iirc). Be clear, the examiner made a total of 10 groups, not 3. He then made some wack instructions on what they could elect. The applicant flaunted the restriction requirement’s groupings and election options in the second app as well as in the third and simply filed on whatever groups comprising whichever claims he felt like.
If, in the case at bar he’d ended up with claims to only one group in the second app after having “realized his mistake” then I’d be fine with that app. If, in the case at bar, he’d ended up with claims to only one group in the third app after having “realized a further mistake” then I’d be fine with it. But the bottom line is he just decided to file and acquire DIVs on whatever groupings of claims he made up himself without paying any regard to the restriction itself.
Let’s be clear, here’s the facts at play here.
Examiner says: you have GROUPS 1-10 in this app. Pick one of the following pairings 1,8/1,9/1,10/2,8/2,9/2,10/3,8/3,9/3,10/4,8/4,9/4,10/5,8/5,9/5,10 or one of 6 or 7. Applicant did not traverse (like a fool) or his petition didn’t work out so this asinine restriction is what we’re working with.
Applicant picked, for example, the 1,8 groups to have examined in the first app.
He then files for 2-7, 9 and 10 in the second app but ends up with only claims to 9 and 10. (note that 9 and 10 were not grouped together in a grouping in the original groupings or in the election options of the restriction).
He then files for 2-5 in a third app and it issues that way. (note that 2, 3, 4, 5 are not grouped together in a grouping in the original groupings or in the election options of the restriction requirement).
“Besides, you aint done yet tell me how C can come from B without B having all that stuff finally in C. Tells me 6 – how do you rightly divide out somethin if that something aint there to be divided out?”
I already told you tard, C has already been “divided”. In app 1. I’m not sure how you’re having trouble understanding this.
The short story Ned – ya can’t ask for 121 protection from a restriction requirement that ya don’t divide from. That’s all your case stands for. And that’s not the matter here.
It’s not that you are at a loss to understand, it’s that your position is at a loss. Whether you understand that or not really don’t matta (except to keep ya from posting the same wrong crap again and again, embarassing yourself).
“as in Bristol-Meyers”
Ned, since you don’t read the Rules that I post, why should I expect you to read teh case law that I post?
Well, I’ll post anyways. From your errant case, I more than graciously provide the following cites from 1345-48:
“The applicants did not file a divisional application in response to either of the restriction requirements, but instead appealed the final rejection of the claims to the PTO Board of Appeals. In 1977, while that appeal was pending, the applicants filed a continuation application, Serial No. 778,955 (“the ‘955 application”), and abandoned the ‘989 application.
…Although the 1973 restriction requirement was issued against the ‘989 application, and not against the ‘955 application,…
…argues that the 1973 restriction requirement was not in effect at the time of the filing of the divisional application that matured into the ‘927 patent…
…We agree with Pharmachemie. The ‘955 continuation application , which was filed in 1977, began a new proceeding in which all of the original claims of the ‘989 application were once again presented for examination”
So ya see Ned, the fact that a continuation and not a divisional was the key linking point makes your little case cite not only distinguished, but non-precedent. Oh, you can go on fooling the simple-minded, but for anyone who can actually read, ya just barking up the wrong tree.
“If the second app issues with both B & C, am I safe?”
I don’t see why not. Both were restricted from A, and they can’t OTDP each other in the same application.
You also shouldn’t have a problem with filing B as a divisional of A, and C as a divisional of either A or B. Plus you save a restriction requirement and wasted claim fees, and you get the added benefit that the examiner doesn’t think you’re illiterate, since he did explain in writing that A, B, C are all separate inventions.
I’m still confused. If you want to file one app after another (in serial), how do you do it correctly?
Original has A, B, C and gets 3-way restriction. What do you file next? I would have always filed B & C in a second application. Is that not correct?
If the second app issues with both B & C, am I safe?
Can I ask the Examiner to give me a restriction requirement if he doesn’t do it immediately?
ping, in the case at bar, as in Bristol-Meyers, all claims were filed in the daughter case. Now you place major emphasis that Bristol-Meyers precedent does not apply here because there all claims were filed in the daughter case, but, since the same thing happened in the present case, I am at a loss to understand your point.
wow different browsers show the open tags differently.
this thread shows broke on firefox, but ok on explorer.
“priority date and 121 protections are two separate things sonny child.
Except bright boy, I wasn’t talking no priority date issue – I was talking about the app being active. Pay attention now and keep up.
“following accepted procedure”
Yes, we all would like the Office to follow accepted procedures now, wouldn’t we. But since they don’t, we gotta make lAW (catch those caps?) that protects the applicants for Office mistakes. That would be 121 in the present.
“where the applicant realized their mistake in presenting B and C subject matter claims in the second app and then cancelling the claims to C in the second app then filing another separate DIV to take care of C.” and That is not what happened in the instant case at all.
6, yous better go back and check the facts of the immediate case agains the exact steps you list here homeboy.
Besides, you aint done yet tell me how C can come from B without B having all that stuff finally in C. Tells me 6 – how do you rightly divide out somethin if that something aint there to be divided out? You be getting messed up and not answerin the right questions now.
Call it realizin their mistake (cause someone was going to call an interfere) – and which the majority says don’t matta (and the minority says squat), and yous got the same fact pattern.
“precedent flaunting”
I lol’s you – you without a clue using legal terms. Or are you listening to ‘ol Ned and his IMHO-Ned Law precedence? If you checked it out for yourself, you’d see that the “critical” link in Bristol was a continuation and not a divisional (hear that trumpet) and that in Zeigler the original restriction was changed and the applicant was given the chance to change the original app. Neither case on point here, and neither precedential to counter the rule that the majority rightly lay the smackdown on the Office with. Jus’ because ‘ol Ned can throw out a case cite don’t mean that he is citing real law.
“Sooo, you are saying that you can file a divisional referencing an application that is no longer active (A), but can file magically from the child (B) because B is active, even though B does not have an examiner restriction? That’s some creative interpretation.”
Yes. And btw, priority date and 121 protections are two separate things sonny child.
“funny guy – somehow you want to apply the restriction requirement of A in either or both of B and C. I say this because I am sure (that since you have mastered the facts) that the examiner(s) in B and C made no restriction, yet your short answer is “file C as a divisional from B”. That’s some serious handwaiving.”
I don’t see anything handwaiving about following accepted procedure. Yes, I most definitely would like to apply the restriction requirement that was issued. That’s why we issue them, so that they are followed and applied.
“- just like the majority said, then.”
That quote you just referenced was not regarding the majority’s position it was regarding a different hypothetical. Specifically where the applicant realized their mistake in presenting B and C subject matter claims in the second app and then cancelling the claims to C in the second app then filing another separate DIV to take care of C.
That is not what happened in the instant case at all. Had they have followed the examiner’s restriction then they wouldn’t be in the situation they’re in having to go to the CAFC to cry for a precedent flaunting decision.
“It has already been filed with all the materials in A. Where the restriction happened.”
Sooo, you are saying that you can file a divisional referencing an application that is no longer active (A), but can file magically from the child (B) because B is active, even though B does not have an examiner restriction? That’s some creative interpretation.
“The case at hand never (in either B or C to my knowledge) presented claims in accordance with the examiner’s restriction requirement.”
funny guy – somehow you want to apply the restriction requirement of A in either or both of B and C. I say this because I am sure (that since you have mastered the facts) that the examiner(s) in B and C made no restriction, yet your short answer is “file C as a divisional from B”. That’s some serious handwaiving.
“Yes that would appear to have been properly done.” – just like the majority said, then.