Whether Prior Art Should be Presumed Enabled

Finjan v. Rea (Supreme Court 2013)

In its recently filed petition for certiorari, Finjan asks the court to determine whether "prior art should be presumed enabled" when being applied during prosecution before the United States Patent and Trademark Office. The Government's response in opposition alters the question somewhat by asking "Whether, in proceedings to determine whether a patent application should be granted, the [USPTO] bears the burden of demonstrating that a prior art printed publication that anticipates the invention for which the patent is sought enables a person of skill in the art to practice the invention."

The PTO Argues:

The presumption of enablement is consistent with the general rule that the examiner need not raise and explain every possible issue surrounding each ground of rejection. Because the primary purpose of the prima facie showing is to provide notice, an examiner "is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling." Antor. When an examiner identifies anticipation as a ground of rejection, that notification informs the applicant that he may raise lack of enablement in his response.

The presumption of enablement also reflects the Federal Circuit's recognition that requiring the examiner preemptively to make the detailed findings necessary to verify enablement would be "manifestly inefficient," "burdensome," and "entirely unnecessary." Jung. Because the enablement inquiry requires an analysis of the degree of experimentation necessary to implement an invention, "an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible." Antor. … The applicant is better positioned than the PTO to gather evidence supporting his contention that the prior art is not enabling.

153 thoughts on “Whether Prior Art Should be Presumed Enabled

  1. Ned — while an expert opinion is a good idea, if one follows the post-Antor Fed Cir’s guidance and my approach in challenging a press release (In re Steve Morsa), argument should be enough.

    Press releases rarely, if ever, enable claims.

  2. Wow, stench of desperation is getting intense. Set theory; please. That’s just plain weeeeeeeeeeeaaaaaaaaaak……

  3. I heard Renee Quinn’s father just passed. Why don’t you be your usual classy self and insult her.

    Weirdest. Bl0gtr0ll. Ever.

  4. Leopold,

    Open your eyes, if you can.

    My defense is most definitely NOT ‘Malcolm did it first.’

    Quite simply because I am not doing what Malcolm did. I need NO defense at all as I am pointing out to you that your ‘beloved hero’ for whom you cheer is the type of slime to actually do what you WRONGLY accuse me of doing.

    I need NO defense for pointing this little fact out, either to him or to you.

  5. Sorry Leopold but once again you are shooting your arrow at the wrong target as it was your dear Malcolm that has insulted the dead and those grieving for the recently departed.

    Slime? Yes, but not who you shoot at.

    Open your eyes.

  6. That’s pretty low class, anon, even for you. I’m pretty sure Ms. Quinn didn’t ask to be a weapon in your one-man slime-fest.

  7. Sorry, I should have mentioned that the claim wasn’t to a product, but to a combination of machinery to make the product. The examiner was stating, “See, Competitor built this factory to make the product, therefore your claims are anticipated.” Except that (A) there’s no evidence that the plant was going to have the same arrangement, and (B) the plant was never built to begin with.

  8. you leapt to his “defense” (for no reason).

    LOL – How dare anyone defend anyone that Malcolm maligns (given that that person does not even post here (Quinn), or rarely post here (Boundy)).

    Are you serious?

    No, really. Did you seriously just try to justify yourself?

    And you call me a t001?

    LOL – the accuse-others-of-that-which-you-are game in high gear.

    Hey, I heard Renee Quinn’s father just passed. Why don’t you be your usual classy self and insult her.

  9. How about Keeping It Real, Robert, Francis, Shrivan, Vivika M., Friend(S) of the Court, and Joe Public – Are they svckies? (and remember – no 1ying)

    LOL.

    Ready to have the nuts yet to own up to the very behavior that you QQ ed incessantly about and considered ‘the worst thing evah?’

    LOL. Thought not.

  10. It’s pretty obvious that you meant it as an insult Malcolm.

    LOL – you trying to spin your own spin. Lovely.

  11. Are you serious

    Evidently, you are not, as you continue to have a CRP fest here.

    And I have already ‘let you know’ just how to control the posts that you don’t like: Don’t CRP in the first place, then I won’t have anything to rub your nose in.

    As for ‘tr011in,’ take a gander at who started this evening’s ‘tr011in.’ Hint: that would be you. Gee, Malcolm accusing others of that which he does.

    Shockers.

    /eyeroll

  12. The failure of disclosure is concealment.

    Maybe. Maybe not. As with cold fusion, there was in fact no concealment. “Not having it” is something that concealment cannot reach.

    And please, Ned, use better examples than isolation – you are just begging to kick up a dust cloud like that. Star Trek is a good example (plus the archives have some great pics of Star Trek facepalms for Malcolm).

  13. that is his ‘specialty.’

    Another vacuous post by Tr0 llb0y.

    @ta boy.

    Fun game, Tr0 llb0y!

    What’s next? Want to recycle one of your old insults or accuse me of “running away” from you? Reach into your hat, Tr0 llb0y. The suspense is killing me.

  14. Please also let me know if referring to Gene Quinn as a “patent apologist” is an insult to Gene Quinn.

    This is important to know. Is calling Gene Quinn a “patent apologist” an insult to Gene or not? I know what Gene thinks. What do you think, Tr0 llb0y? Because you seem to really like the guy and share many if not all of his views about what the “real problems” with our patent system are. Insult or mainly accurate? I want to know what you think, and why.

  15. MM,  THE fundamental law is that a disclosure that is not enabling is not prior art.  One can announce in a press release that one has discovered cold fusion, for example, but that does not block a later patent on cold fusion where the first inventor has not disclosed to the public how to do it.  The failure of disclosure is concealment.  If the Feds have overturned that fundamental law, then let us say the reason that it is not prior invention prior art is lack of enablement.
     
    I say I have isolated Adrenalin.  But, even if that were in fact true, that disclosure would no anticipate a later patent on Adrenalin unless one or ordinary skill knew how to isolate Adrenalin.  The real invention in the Adrenalin case was the process of purification of Adrenalin from extracts.   The patent on the compound should go to the first who disclosed how to make it.
     
    We see Kirk using a transporter.  That demonstration does not anticipate the later discovery of the transporter.

     
     

  16. Tr0 llb0y: you insinuate a connection of me with them

    No, I asked you a question about your involvement after you leapt to his “defense” (for no reason).

    you cannot even use the correct moniker for me

    LOL. Are you serious, Tr0 llb0y? Are you ready to stop tr0llin this blog with your infantile insults and barely comprehensible horsesh*t that you can’t be bothered to explain? Let me know. Let everyone know. Just say it.

    And then we’ll give you a week and see if you can make it that long before you go right back to your same old tr0llin ways. Are you up for that, Tr 0ll b0y? Just say so. If you can make it a week, I’ll stop calling you Tr0ll boy. Please please please please say you’ll give it a try, Tr0 llb0y.

  17. Need I start posting definitions for you again?,

    No. You could start reading them yourself, though. Better yet, maybe ask your mommy to read them to you and explain them (after she’s soberered up, of course, and can make it down the basement stairs to your room).

    “It’s called an analogy”

    And trs is not me,

    That’s nice. I’ll let you correct trs, then. Thanks.

  18. Patent Meds., if one of ordinary skill would not know how to make the Product from the press release in combination with ordinary skill, then I would agree.

    But I think you really need an expert opinion on that point — evidence. Otherwise what your say is argument alone. I don’t think that is enough.

  19. Tr0 llb0y: you now think everyone else is a svckie?,

    Nope. Nice try, though, Tr0 llb0y! Just keep on tr0llin. It’s what you do, Tr0 llb0y. It’s your specialty.

  20. it was ‘in-house’ that asked the question and was ‘haha’ that did not llike your answer.

    I missed that. Here’s my answer to “haha”:

    In-house asked a question and in-house got an answer. You don’t like the answer because you believe that it won’t apply to your specific situation as often as you’d like? Gee, that’s too bad. Maybe if you want a different answer you should ask a different question.

  21. Tr0 llb0y: Again you impliedly say I have 1ied.

    You have YET to provide a single example of such.

    Sure I have, Tr0 llb0y, and so has LB: your assertion that a firm can ethically use its mailroom staff to screen registered letters to attorneys and throw out the ones that refer to prior art that is relevant to a case that the attorney is prosecuting.

    That was a pretty big l i e. Also your continued assertion that “i don’t answer questions”. Also your continued assertions that [oldsteps]+[newthought] claims are not per se ineligible (of course they are). Also your continued assertions that I “torched” this “theory” (not a theory) with some “admissions” or the other (that never happened and it’s impossible to understand what the f *ck you are talking about). Also your continued assertions that I “voluntarily admitted” that “configured to” is a structural term, in all contexts (never happened and you’ve been informed of this so why repeat it?). Also your continued assertions that I never addressed your bogus irrelevant “point” that it is possible for a claim to comprise all old steps and still be eligible for patenting (addressed many times). And this is all relatively recent stuff. I won’t even get into the cr *p you wrote when you were posting here for years using dozens of aliases everday and pretending to be railing against a “vocal minority” who you falsely accused of (get ready for it) spreading misinformation about “patent law”, a subject which you insist on knowing more about than anyone else even as you flail miserably about every day when asked to explain what the f – ck you are talking about.

    Even this statement about “not providing a single example” is one of your oft-repeated l i e s, because I’ve answered this exact question before. You just say “You’re wrong” and then you go right back to your same old tr 0ll behavior.

    As I already noted, Dennis doesn’t enforce this “no l i e” “rule” very well. If he did, you’d be long gone because there never was a more disengenuous t 0 0 l than you, at least not in the world of patent blogs. You’re just a lame blogtr 0ll, dude, and you choose to tr 0ll this blog with your endless insults and mostly incomprehensible innuendo every day because you don’t like the views espoused by the blow owners, nor those of many of the commenters and, for whatever reason, Dennis lets you do it. Over at IP Watchdog, you’ve got Big Gene holding your hand and banning any commenter who dares to take you or him to task for the endless stream of familiar insults directed at anyone who dares cross the “pro-patent” party line without genuflecting before the Altar of His Greatness first.

  22. Is the PTO asking that they need not respond to an applicant’s argument that the reference is non-enabling?

    No. The PTO is saying it doesn’t need to respond to the mere assertion by the applicant that a reference is non-enabling.

    If so, that’s a dangerous precedent.

    Well, it’s not what the PTO is saying. And the Federal Circuit at least has upheld the PTO already on this issue and nobody seems to be complaining about it except the folks who always complain when they can’t what they want (= more claims and broader claims, that are obtained faster, and are easier to enforce). And of course the main concern espoused by these folks is that they want “better examination.” Sure they do.

    An even more interesting question is whether a patent publication … if it has failed to issue, should be presumed “enabling” … as to another’s claims against which it is cited.

    It’s the same question. It’s just an issue of what constitutes a prima facie case of anticipation. Why shouldn’t be enough for an examiner to find a prior art publication where all the elements in the claim are described as set forth in the claim? If the patentee still insists they should be entitled to a patent in that circumstance, gee, it doesn’t seem unreasonable for them to explain why (i.e., show some evidence that the prior art was “not enabled”).

  23. If a prior inventor can block a later patent without providing an enabling disclosure to the public, then prior invention sweeps away all other statutes and all other case law that had been with us or well more than 100 years.

    Again, only the future patent on the composition that was made and reduced to practice and described is blocked. This is not contrary to “other case law”. Those were the findings of fact in the case we are talking about (please correct me I’m wrong).

    Also, the patent on a new method of making that composition is still available.

    There is no “fundamental flaw” in Fox and it is good law.

    I would never issue an opinion that a patent was invalid based upon that case because it is tragically wrong.

    Even if the facts were identical to the facts in that case? Gee, Ned, I’m not so sure that’s a good idea.

  24. Again you impliedly say I have 1ied.

    You have YET to provide a single example of such.

    Sure I have and so has LB: your assertion that a firm can ethically use its mailroom staff to screen registered letters to attorneys and throw out the ones that refer to prior art that is relevant to a case that the attorney is prosecuting.

    That was a pretty big l i e. Also your continued assertion that “i don’t answer questions”. Also your continued assertions that [oldsteps]+[newthought] claims are not per se ineligible (of course they are). Also your continued assertions that I “torched” this “theory” (not a theory) with some “admissions” or the other (that never happened and it’s impossible to understand what the f *ck you are talking about). Also your continued assertions that I “voluntarily admitted” that “configured to” is a structural term, in all contexts (never happened and you’ve been informed of this so why repeat it?). Also your continued assertions that I never addressed your bogus irrelevant “point” that it is possible for a claim to comprise all old steps and still be eligible for patenting (addressed many times). And this is all relatively recent stuff. I won’t even get into the cr *p you wrote when you were posting here for years using dozens of aliases everday and pretending to be railing against a “vocal minority” who you falsely accused of (get ready for it) spreading misinformation about “patent law”, a subject which you insist on knowing more about than anyone else even as you flail miserably about every day when asked to explain what the f – ck you are talking about.

    Even this statement about “not providing a single example” is one of your oft-repeated l i e s, because I’ve answered this exact question before. You just say “You’re wrong” and then you go right back to your same old tr 0ll behavior.

    As I already noted, Dennis doesn’t enforce this “no l i e” “rule” very well. If he did, you’d be long gone because there never was a more disengenuous t 0 0 l than you, at least not in the world of patent blogs. You’re just a lame blogtr 0ll, dude, and you choose to tr 0ll this blog with your endless insults and mostly incomprehensible innuendo every day because you don’t like the views espoused by the blow owners, nor those of many of the commenters and, for whatever reason, Dennis lets you do it. Over at IP Watchdog, you’ve got Big Gene holding your hand and banning any commenter who dares to take you or him to task for the endless stream of insults directed at him or anyone else who dares cross the party line without genuflecting before the Altar of His Greatness first.

  25. Funny that, Malcolm, it was ‘in-house’ that asked the question and was ‘haha’ that did not llike your answer.

    Two different posters.

    Reading comprehension taking a day off, or maybe like a 1iar always thinks everyone else 1ies, you now think everyone else is a svckie?

    LOL – “worst thing evah” (and yet rampant use by Malcolm – the word still for you: hypocrite).

  26. Not figured out what a strawman is?

    LOL – Need I start posting definitions for you again?

    Like I did before with ‘strawman,’ and ‘dissembling?’
    Like your pal Leopold did with’effectively?’

    LOL – like that?

    (I have one picked out: svckpuppet)

    LOL

    It’s called an analogy

    And trs is not me, but hey, feel free to malign anyone who posts negatively of you (that just fits into your rather stale accuse-others-of-that-which-you-do rhetorical t001set. Or maybe reading comprhension isn’t included in your ‘English as a first language’ moments.

    LOL

  27. It has been reduced to requiring that the reference doing the “teaching away” pretty much name the specific teaching being taught away and saying “don’t do that” — a fact pattern that RARELY arises.,

    You asked a question and you got an answer. You don’t like the answer because you believe that it won’t apply to your specific situation as often as you’d like? Gee, that’s too bad. Maybe if you want a different answer you should ask a different question.

  28. whom I call out on a daily basis

    LOL – you mean your QQ fest, Malcolm?

    As to your questions, you are keen to say that you are not insulting people, but you insinuate a connection of me with them (at the same time you cannot even use the correct moniker for me – talk about childish – but on par with your feeble mental state), and want me to explain how you view that as not an insult. That would take me crawling into your mind. Thanks, I’ll pass.

    You still need to change your game Malcolm. Maybe you can phone a Friend (of the Court).

    LOL

  29. No one is saying that it is hardly a strawman to discuss them.

    What? Looks like Tr0 llb0y is having one of those “English is my second language” moments again.

    you are in fact using strawmen.

    Sorry, Tr 0llb0y, but I’m not. I still think you haven’t quite figured out what a strawman is. Or, more likely, you pretend not to because it’s a favorite rhetorical t 0 0 l of yours.

    On one hand, he talks about a new candy comprising peanuts, gum, and pineapple junks

    It’s called an analogy, you s0ci0pathic d*psh*t.

  30. proven themselves to be pro-patent (and correctly so)

    More gibberish from the blogtroll.

    ‘fling pieces of poopy’ at people not even involved in the conversation

    Please explain how I “insulted” David Boundy by referring to you “preaching from the tip of Boundy Mountain.”

    Assuming it was an “insult” (wasn’t meant to be one), please also explain why it matters to you. Are you involved with him in some capacity or what?

    Please also let me know if referring to Gene Quinn as a “patent apologist” is an insult to Gene Quinn.

    Please also explain why “denying human nature” and ignoring flaws in a system is such a terrible thing when it comes to the behavior of Examiners and the PTO (whom I call out on a daily basis) but apparently is just fine when it comes to patent applicants and patent owners (whom I call out on a daily basis but whom you seek to defend with religious zeal).

    Go ahead, Tr0ll b0y. Surprise everyone.

  31. Tr0 llb0y: thanks for the attention

    It’s what Tr0 llb0y craves. Obtaining it by any means necessary … that’s his speciality.

  32. Tr0 llb0y: As nearly half of applicants these days

    *click*

    Tr0 llb0y just be tr0llin’. That’s no surprise. That’s his specialty.

  33. I see that simple set theory escapes you, “said in reply.”

    With your baby-bear approach, I cannot tell if this is because it is too old or too young for you.

  34. ” the fact that money paid by inventors will not be used for that purpose.”

    Nice backpeddlin’ there, Winnie. Everyone is already aware, from the beginning, what they were NOT used for. Even the guy you decided to “correct” above with “It is not a guess” knows they were not used for the intended purpose.

    Yet another example of the innumerable examples of you belittling another commenter, claiming you know something that they don’t, then backing off and playing coy about providing any info.

  35. Maybe I’m missing something, perhaps because of the subject matter of the claims, but I don’t see what the PTO is asking for to be any different than what the current situation is; i.e. references are presumed enabling for what they teach. Is the PTO asking that they need not respond to an applicant’s argument that the reference is non-enabling? If so, that’s a dangerous precedent.

    Additionally, I find the entire concept of prior art enablement to be often misunderstood and misapplied by the PTO. A PATENT should be considered to be enabled for the invention disclosed therein: that which is claimed. Whether it is enabled for anything else set forth therein is irrelevant…a PATENT must enable the CLAIMED invention. Does the presumption necessarily imply that the patent, when cited as a reference against another’s claimed invention should be presumed to enable that later invention? I don’t see how that would follow unless the later filed claims were identical to the patented claims.

    “While reference to the patent application is appropriate for purposes of determining what the claimed invention is, i.e., what falls within the scope of the claims, the anticipation exercise must assess the enabling nature of a prior art reference in light of the proposed claims. In re Steve Morsa, slip opinion 2012-1609 at 10 (Fed. Cir. 2013).”

    As to whether a scientific journal disclosure (or otherwise) should be presumed to be legally enabling against patent claims, again I don’t think that the general rule that a patent is considered to be enabled has any applicability to such a non-patent disclosure.

    An even more interesting question is whether a patent publication, as yet to issue, or especially if it has failed to issue, should be presumed “enabling”, either as to its own unpatented claims or as to another’s claims against which it is cited.

  36. I’m dealing with a 102/103 rejection based upon a competitor’s press release that they were planning to built a factory to produce Product. They never built the factory. I think I’ve got a pretty good argument that the reference is not enabled.

  37. MM, think.
     
    First to invent provides that the patent goes to the first inventor.  This implies that both are seeking a patent.  If one is not seeking a patent, then the normal rules of prior art "should" apply.  In other words do ordinary rules require that enabling disclosure be available to the public.
     
    If a prior inventor can block a later patent without providing an enabling disclosure to the public, then prior invention sweeps away all other statutes and all other case law that had been with us or well more than 100 years.
     
    The panel decision in that case was fundamentally flawed.  It is not, and cannot be good law.  I would never issue an opinion that a patent was invalid based upon that case because it is tragically wrong.

     
     

  38. you provide evidence that the combination of at least one of the elements with another element was ‘taught away’ from in the prior art

    Taught away? Taught away? When was the last time you practiced? 1975? Teaching away is about the weakest of all arguments non-obviousness arguments. It has been reduced to requiring that the reference doing the “teaching away” pretty much name the specific teaching being taught away and saying “don’t do that” — a fact pattern that RARELY arises.

  39. Nice attempt at dissembling, Malcolm.
    It is sad that he thinks he is actually presenting a real argument.

    On one hand, he talks about a new candy comprising peanuts, gum, and pineapple junks, and on the other hand, he says that he is talking about the patents of Finjan and Altor.

    I change my mind, you actually have to work hard to present such feeble arguments.

  40. …and let’s see those talleys

    (oh wait, this is Malcolm, and he just does not have the nuts to face the truth)

  41. That theory has been tested, Tr0 llb0y. You failed miserably.

    It’s opposite day for Malcolm.

    And yes, showing proper respect for past presidents and NOT using them as fodder for bizarre sexxul jokes is very much equivalent to my so-called “s0ci0pathic” behavior (especially in regards to just whose opinion that is being based).

    As they say, svcks to be you.

  42. Tr0 llb0y: You stop your CRP and you won’t have to see me rubbing your nose in it.

    That theory has been tested, Tr0 llb0y. You failed miserably.

    Tally up the insults to dead presidents,

    The fact that you find “insulting a dead president” remotely equivalent to the s0ci0pathic behavior you exhibit here on a daily basis just goes to show how f—-cked in the head you are.

  43. My case rests on the fact that money paid by inventors will not be used for that purpose.

    You are trying WAY too hard to shoot arrows at me.

  44. “pointless and unconnected to any of the conversation or legal points.”

    LOL, thanks, I really needed the laugh. That is an apt description for approximately 89% of your posts. (Being generous, perhaps.)

  45. IOW, Winnie, you claim to know what the money generated from the increased fees was used for, yet you can’t say what it was used for.

    What, like will the CIA come a-knockin’ on your door if you divulge this state secret to us mere humans?

    Or, could it be that you’ve overstated your case, as per usual?

  46. Tally up the unearned insults Malcolm.

    If you have the nuts.

    Tally up the insults to people that do not even post her,
    Tally up the insults to first time posters recovering from cancer,
    Tally up the insults to grieving sons of recently departed fathers,
    Tally up the insults to dead presidents,
    Tally up the insulting posts wherein misrepresentations of fact, law or what others have said or willfully, even gleefully made – even after key admissions as to certain controlling law or claim constructions have been made.
    Talley up the words avoiding answers in the Myriad case.

    Tally up the posts by you that do not include insults or prevarications or spin of fact, law or what others have posted, or any of these other flaws.

    You will not (and cannot) find more than a small handful (and far under 2% to be sure.

    I have said all along Malcolm, the ability to improve the blogging quality is in your hands. You stop your CRP and you won’t have to see me rubbing your nose in it. The insults I give you – you have fully earned. I have told you the easy way to stop that.

  47. Again you impliedly say I have 1ied.

    You have YET to provide a single example of such.

    You are going to pieces, Malcolm – quite. literally.

    Get into a line of work you can believe in. Patent law is not working for you.

  48. As nearly half of applicants these days are foreigners, the line quite well fits Malcolm.

    Try to think beyond the red cape of ‘anon said.”

    Well, CRP, just try to think.

  49. Insult? As my post is accurate, any perceived insult is fully earned.

    Why not just post something you believe is “accurate” and explain why you believe it’s accurate without the personal insult? Exactly like I did in my 3:12 comment, to which you responded with a personal insult.

    Oh, right, I forgot: you can’t help yourself because you’re a s0ci0path blogtr0ll who is incapable of very little except insulting people. That’s your speciality, Tr0 llb0y. It’s what you do here, every day.

  50. Prof. Crouch explicitly said that 1ies are not allowed

    We all know that can’t be the case, Tr0 llb0y. After all, you’re still here and there never was a bigger purveyor of psychotic self-serving horsesh*t in the patent blogosphere.

  51. money is still taken out of the patent system for the purposes of general government (e.g. taxes) to NOT be a very funny ‘joke.’

    That wasn’t the “joke” part. The “joke” is that it’s “taxation without representation”. Evidently Mama Tea Party vomited that line into your baby bird mouth and you couldn’t resist sharing it with us all.

  52. Tr0 llb0y: Except for one

    *click*

    Recess is over. Time to put your pants back on, Tr0 llb0y. No, don’t cry. We didn’t see anything.

  53. my comment DOES apply to a conversation – one you started. Sure, it may not deal with the thread itself

    *click*

    The Home for Damaged Blogtr0lls called. They’re looking for some —hole named “Tr0 llb0y.”

  54. And speaking of being ‘busted,’ how about you and your svckies? You outright blatantly 1ie about on Dr. Noonan’s blog, but here where the same question is put to you (with the reminder that Prof. Crouch explicitly said that 1ies are not allowed, you first dodge the question, then you appear to (tentatively) take ownership, but in the end, merely try to kick up some pretty dust.

    All this has done is highlight your very own dissembling and hypocrisy.

    Still have ‘no ideas,’ Malcolm?

    Well, you can try your usual [shrug] and stand by routine.

  55. Like just as your comments often have nothing to do with the conversations you reply to (see below on this very thread), Malcolm? Like that?

    LOL – except for the fact that my comment DOES apply to a conversation – one you started. Sure, it may not deal with the thread itself, but my comments do deal with your ‘spin’ and misrepresentations.

    Poor baby, your liddle soapbox gets kicked out from under you again, you fall down and go boom and now want a pretty bandaid for your scraped knees.

    And yes, what I do IS a kindness to everyone. Just like the kindness of highlighting your hypocrisy regarding svckies (the worst thing evah) and you anti-patent agenda and your tendencies to throw your ‘theories’ onto bonfires when you venture into substantive discussions. Tell me, Malcolm how such substantive things as the controlling law regarding the exceptions to the printed matter doctrine, ‘configured to’ being structural language, and the controlling law regarding the fact that eligible claims can have elements that are mental steps (as opposed to claims being completely mental steps – one of your strawmen).

    What? What? I cannot here you on substantive matters?

    Then (if you have yet found the nuts), tell us about the Myriad case and that I was right and WHY I was right.

    What? What? I cannot here you on substantive matters?

    LOL – C’mon Malcolm, try to NOT play the f001 yet again.

  56. Most everyone I know that is serious about patents finds the fact that money is still taken out of the patent system for the purposes of general government (e.g. taxes) to NOT be a very funny ‘joke.’

    But please Malcolm, please feel free to try to spin this into some type of positive thing for anyone that pays their fees to the patent office and then sees that money be taken from the Office.

    LOL – having your list of svckies paraded around showing you to be the ultimate hypocrite really is affecting you badly, isn’t it?

    As they say, svcks to be you.

  57. LOL – I don’t need to name any. Oh wait, this is Malcolm, the guy who denies reality and thinks that Kappos did not state (or need to state): “Quality does not equal reject” and the same guy who cannot abide by the FACT that the historical grant rate dropped inexplicably from around 70% to a near 30% at the exact same time of that Office Reject-Reject-Reject era, or that the RCE reward system was explicitly changed to defuse the gravy train.

    Nice tinfoil hat Malcolm. You sure know how to pick a ‘winner.’ Maybe next time try to ‘spin’ facts that might do more than make you look like an @$$ (if possible).

  58. Boundy Mountain

    LOL – feel free to, how do you put it? ‘fling pieces of poopy’ at people not even involved in the conversation, but have proven themselves to be pro-patent (and correctly so).

    You cannot but help prove that you (once again) do that accuse-others-of-what-you-do rhetorical tactic.

    It does not work for you. I suggest you change your game.

  59. so it’s hardly a “strawman” to discuss them

    No one is saying that it is hardly a strawman to discuss them.

    But that is neither here nor there as you are in fact using strawmen.

    Nice attempt at dissembling, Malcolm.

  60. You have not yet found the nuts to actually own up to your svckies at PatentDocs, Malcolm.

    LOL – we both know why.

    The wod for you STILL: hypocrite.

  61. Smear? There is no smear as my post is accurate.
    Insult? As my post is accurate, any perceived insult is fully earned.
    Vacuous? Yes, your reply is your typical nonsensical and vacuous reply.

    Don’t like it? It’s in your hands to do better. I suggest you try again.

  62. Tr0 llb0y: Your reply is that you supplied an answer. My reply to that was to put my finger in my bunghole and fling pieces of poopy at you.

    Fixed for accuracy.

  63. Tr0 llb0y: Another vacuous post

    Smear. Insult. Wait for response. Characterize response as “vacuous.” Rinse, recycle, repeat.

    Tr0 llb0y does what he does. That’s Tr0 llb0y’s speciality.

    He knows the “actual point” of every case and every blog post and every comment. And when Tr0 llb0y tells you that you missed the “actual point” you’re supposed to thank Tr0 llb0y. Because he’s such a nice thougtful blogtr0ll, after you ignore the endless stream of personal —hole insults that he launches at you for no reason except that he’s identified you as someone with an “anti-patent agenda.”

    The weird thing is that he and Gene Quinn seem to wear the same cologne. I wonder what’s up with that.

  64. a troubled obsession

    This from the professional blogtr0ll who (1) keeps a list of names that he believes that I use at other blogs; and (2) spent years here posting endless streams of insults and little else at other commenters here, dozens of times a day using dozens of pseudonyms, while claiming to be responding to a “vocal minority” … until he was busted. Now he just does the same exact thing under one pseudonym.

    You’re a funny little guy, Tr0 llb0y. Keep it up. We’ll all look back someday and remember fondly your thoughtful, reasoned (and always deserved and pin-point accurate) comments on so many different subjects … the “imputing”, the “projection”, the “strawman”, the “squinting”, the “Examiner bias”, the “arrows at your feet”, the “calvinball spikes”, the “pools of blood”, the “toasty marshmallows”, the “no intelligence there”, the “right back at you”, the “actual point”, the “missing the point [that is never explained”, the “obvious anti-patent agenda”, and (who could ever forget?) the “spam filter”. Rinsed, recycled and repeated.

    Unfortunately, we don’t have the luxury of merely remembering you now, Tr0 llb0y. But someday … ah, we can only dream.

  65. If my claim has 5 elements, and the Examiner uses five different pieces of prior art to meet those element and concludes that it would be obvious to combine them (an implied – its enabled), as a poster pointed out above, how am I to prove that the combination is not enabled?

    The same way that you can always rebut a prima facie case of obviousness (assuming that a prima facie case has been made): you provide evidence that the combination of at least one of the elements with another element was ‘taught away’ from in the prior art, i.e., skilled artisans as of your critical date did not believe that your claimed combination was possible to achieve. Or you can attack the prima facie case itself. The details will change depending on the claim (composition and method claims are certainly quite different in this regard, as the courts have recognized).

  66. [Klingon] “What the increased fees were used for is anybody’s guess.”

    [anon] “It is not a guess.”

    Huh. Tr0 llb0y says “it’s not a guess” what they fees were used for. But he won’t tell us what they were used for, although he apparently knows.

    What were they used for, Tr0 llb0y? Why the sudden silence on this topic you seemed to have so much to say about just a moment before.

    Kinda reminds me of your “mailroom” strategy for avoiding prior art. Remember when you brought that up to show everyone how cool you were and how “unethical” everybody else was? And then you got reaaaaaalll quiet about it. Pretty funny stuff.

  67. Tr 0llb0y: my post has nothing at all to do with Antor.

    Right, because you just wanted to hurl an insulting comment quickly so you could get to work posting other insults in other comments. That’s your specialty.

    It was silly to believe that your comment had anything to do with the topic or cases being discussed here. That’s a very occurance indeed. Thanks for the reminder, Tr0 llb0y! You did everyone a kindness, probably without realizing it.

  68. Your reply is that you supplied an answer. My reply to that was (of course) accurate.

    There was no intelligence in your post at 2:47.

    Your follow up post employs your (rather stale) accuse-others-of-that-which-you-do.

    Can you try something else? This is not working for you.

  69. this is a general tax levied on innovators only and innovators are in essence paying taxes ‘without representation’ – something that our government in particular should be cognizant of.

    This is a joke, right?

  70. Tr0 llb0y preachin’ it from the tip of Boundy Mountain:

    It is one thing to ignore human nature and build a system with such flaws. It is quite another to try to deny the flaws exist and close your eyes to reality.

    Right, the reality is that those lazy human Examiners just can’t help themselves when they see a way to take advantage of the rules and blasphemously deny the Constitutional mandated rights of the righteous superhuman American Inventors who are the very soul of our nation and without whom we’d all be shoveling man ure in a gulag in exchange for a glass of water and some stale bread.

  71. t’s exactly like the RCE gravy train – something that many vocal examiners refused to acknowledge existed all the while milking it for all they could.

    Name one.

  72. f all inventions were as simple as your strawman, then perhaps you would have a point.

    Perhaps? Too funny.

    As you surely know, many, many claimed inventions (including the ones at issue in Finjan and Altor) are certainly “that simple” (indeed, they are not patentable because they are pure j*nk) so it’s hardly a “strawman” to discuss them, particularly in this context where a single reference in the prior art discloses every element, as set forth in the claims.

  73. Try again.

    No need, Tr0 llb0y. I answered the question you asked about the evidence needed to rebut the presumption that otherwise anticipatory prior art is enabled. If you do not think the answer is “intelligent”, you can do one of three things: (1) keep your mouth shut (always a great choice for you); (2) explain in your best possible English (ask your mom to help) exactly why you believe the answer is “not intelligent”; or (3) just hurl one of your recycled insults.

    You chose (3). That’s your specialty, Tr0 llb0y. It’s what you do.

  74. right back at you

    Tr0 llb0y thinks we’re on the schoolyard apparently. I guess that’s not surprising given how much time he spends near such places, hiding in the bushes in his bathrobe, taking pictures, when he’s not policing the patent blogs for potential “enemies”.

    you seem to have such a hard time with my accurate portrayals of you.

    Right, just like you have a hard time when your parole officer catches you by the schoolyard. The last time he caught you, you soiled yourself and he had to get his car cleaned after you drove you to your parents house. They offered to pay for it but he just told them to do a better job at keeping an eye on you.

    Fun game, Tr 0llb0y. I look forward to you starting the next round. Again.

  75. the actual point of the case.

    LOL. There Tr 0llb0y goes again, with his “actual” this and “actual” that nonsense. Now Tr 0llb0y thinks he knows the “actual point” of Fox Group. He’s so sure of it. And so he blows his shiny whistle at any “offender” who would dare to “impute” that the “actual” point might be something different from what Tr 0llb0y imagines it to be.

    Please take your meds, Tr 0llb0y. You really do need to take them. Your parole officer told you so.

  76. if all inventions were as simple as your strawman, then perhaps you would have a point. However, VERY FEW are and your strawman is about as relevant as most of your posts — NOT AT ALL.

  77. Completely ignore the concept of enablement Malcolm. It’s only the actual point of the case.

    But please, [shrug] and stand by.

  78. As hard as I squint at your 2:47 post, Malcolm, there is not an intelligent thought there for me to respond to.

    Try again.

  79. The Office has to “prove” to you that the claim is “enabled”?

    Malcolm, are you even remotely interested in the actual topic and not your petty strawmen?

  80. The patent needs to go to the first person who discloses to the public how to make and use the invention.

    Not if someone else invented and reduced the claimed composition to practice first and didn’t conceal that fact from the public. That’s what Fox Group is about.

    Note you can still get a patent on your awesome method of making that composition, if it’s non-obvious.

  81. I never said the job was easy. But it does need to be done right. And the burden belongs to the Office

    You claim a new candy comprising peanuts, gum, and pineapple junks. The Office searches your claim and provides a reference that desribes “a sugary confection comprising peanuts, gum, pineapple and mango.” It shows drawings of each ingredient and a drawing of the confection.

    That isn’t enough for you to amend your claim and move on? The Office has to “prove” to you that the claim is “enabled”? Just because you say it isn’t?

    What if the reference teaches that “the pineapple can be picked from trees growing with the mangos”. Does the reference no longer anticipate your claimed candy bar (note: not a claimed method of making such a candy bar) because “one skilled in the art wouldn’t know how to pick a pineapple off a tree”? That seems to be Rader’s position in In re Morsa. I wonder if he realized he was driving a truck through years of case law concerning anticipation when he wrote that opinion?

  82. LOL right back at you – my post is accurate.

    Sorry you seem to have such a hard time with my accurate portrayals of you.

    Wait.

    No. I am not sorry.

    LOL

  83. Tr 0llb0y: their job of examination does not stop at any establishing of a prima facie case.

    Again we see what the patentistas really mean when they state that the solution to j*nk patents (and the assertion therof of “monetizing entities”) is “better examination”. It doesn’t mean “tougher” or “more rigourous” examination. It means “put more roadblocks in the way of Examiners so their job is even harder to do.”

    If a presumption of enablement is established merely by the examiner citing a reference without more, how much weight in a reply from an applicant is necessary – or should be necessary – to tip the scales back to the examiner?

    “Substantial evidence” of non-enablement would seem to suffice. A mere self-serving declaration by one of the invetors would certainly fail that test.

    Some type of ‘proof’ is out of proportion to of just who has responsibility (again, see Tafas) of the overall examination.

    Anybody ever notice how the softie-woftie crowd really seems to believe that it shouldn’t have to do anything to get a patent except tell the PTO what type of “new” information their imaginary computer can process?

  84. Not only is this an attempted hijack and strawman

    It’s neither, Tr0 llb0y.

    the actual conversation

    LOL. There you go again. What a f* ing t 0 0 l.

    • The issue is not whether the reference in which the molecule is disclosed could be made by following the instructions disclosed in that particular reference. The issue is whether one skilled in the art could have made that molecule given the teaching in the reference of the structure of the molecule and given all other knowledge possessed by the skilled artisan.

    Not only is this an attempted hijack and strawman to redefine the actual conversation – it is dead wrong on the issue being discussed (enablement).

    It appears that you want to talk about something else than what InventingPatents has started talking about, and you jump to assumptions about what is available under the “all other knowledge possessed by the skilled artisan” and seek to conflate (again) novelty and obviousness (you know, like in the other thread that you are digging furiously when I pointed out that you forgot a few fundamental aspects of patent law).

  85. The Patent Office wants to presume that any miserable scribbling is also enabled (or valid, whatever term you want to use) and doesn’t have to explain why.

    They did a pretty good of explaining why in their brief, I think.

    The Applicant argues, in detail, that the cited miserable scribbling is not enabled.

    That’s not what happened in Finjan’s case. See the first comments in this thread.

  86. Adding here a thought about this In re Steve Morsa case referred to below. This is a pretty jacked case and seems to contradict the law set forth recently in In re Gleave (also precedential; 2009).

    Here’s Gleave discussing In re Wiggins, a case in which a reference disclosing a theoretical structure was found non-enabled:

    The Wiggins court stated that “[t]he mere naming of a compound in a reference, without more, cannot constitute a description of the compound.” 488 F.2d at 543. We agree. The mere naming of a theoretical compound, without more, cannot constitute a description under § 102(b). “Without more” is the key phrase, and read as a whole Wiggins makes clear just what this something “more” is–a person of ordinary skill in the art’s ability to make the claimed compound. See also Donohue, 766 F.2d at 533-34; In re Samour, 571 F.2d 559, 562-64 (CCPA 1978); In re Brown, 329 F.2d 1006, 1009-10 (CCPA 1964) (discussing In re Von Bramer, 127 F.2d 149 (CCPA 1942)), cannot constitute a description under § 102(b). “Without more” is the key phrase, and read as a whole Wiggins makes clear just what this something “more” is–a person of ordinary skill in the art’s ability to make the claimed compound. See also Donohue, 766 F.2d at 533-34; In re Samour, 571 F.2d 559, 562-64 (CCPA 1978); In re Brown, 329 F.2d 1006, 1009-10 (CCPA 1964) (discussing In re Von Bramer, 127 F.2d 149 (CCPA 1942)).

    That was Michel, Prost and Moore (opinion written by Michel).

    Again, it’s stunning to me that these same issues are being raised in the context of programming a computer to process information about … user benenfits? viruses? In claims that are drafted from 50,000 feet? Rader is pulling hard but I’m afraid he isn’t going to finish strong …

  87. From In re Steve Morris:

    Since Morsa identified specific, concrete reasons why he believed the PMA was not enabling, the Court held that the Board had erred in not addressing these arguments.

    These facts are rather different from those at issue in Finjan where the applicant made a conclusory statement of non-enablement without providing any concrete reasons.

    Again, I’m amazed that Morris is yet another completely j*nky computer-implemented case (“a method and apparatus for receiving a benefit information request from a user, searching a benefit information database for benefits matching the user’s request, and then returning benefit information to the user” <— good freeking l*rd what a pile of s-=**t!). On the other hand, the smell of desperation has been growing for some time. Nobody can predict where all this is leading …

  88. My inventor showed (by reproducing the procedure) that it could not possibly be made as taught in the reference. But, the Examiner would not concede that the art was NOT enabled.

    The issue is not whether the reference in which the molecule is disclosed could be made by following the instructions disclosed in that particular reference. The issue is whether one skilled in the art could have made that molecule given the teaching in the reference of the structure of the molecule and given all other knowledge possessed by the skilled artisan. Put another way, a reference disclosing a new composition need not teach anything about making the composition if one skilled in the art would know how to make it without undue experimentation.

    Although this doesn’t seem to be the issue in your case, it’s worth rememering that a reference can disparage a method it discloses as being useless but it still anticipates and renders unpatentable a later attempt to claim that method. It doesn’t matter that the reference was “wrong” and the method actually works awesomely.

    Before you waste any more of your client’s money, I assume you understand the major obviousness issues you are likely to face if all your horses are riding on this “unitary reference fails to teach how to make” argument (either at the PTO when this issue is “resolved” or when you try to assert the patent and it gets tossed into re-exam and/or it gets crumpled up and tossed into the trash by someone who knows better).

  89. Why do you insist on projecting onto me that something ‘must be the matter?’

    I simply don’t care for your oddity, it’s not humorous, witty, or amusing. It is rather pointless and unconnected to any of the conversation or legal points. It’s rather like the mumblings of the homeless guys pushing their shopping carts of worldly possessions.

  90. Well, NH – you’ve got me there. The pony express was indeed much faster than the Conestoga. (The genesis for that joke was my youngest/sixth child asking me if I had ridden a covered wagon and fought “Indians” when I was his age…).

  91. [Klingon] “What the increased fees were used for is anybody’s guess.”

    [anon] “It is not a guess.”

    Please don’t leave us hanging, neighbor. What precisely were the increased fees used for?

  92. An issued patent is presumed to be valid, so it is presumed to be enabled. After all, it was examined in an adversarial process with an Applicant.

    The Patent Office wants to presume that any miserable scribbling is also enabled (or valid, whatever term you want to use) and doesn’t have to explain why. An easy Count for the Examiner.

    The Applicant argues, in detail, that the cited miserable scribbling is not enabled.

    The Examiner says he has considered the Applicant’s arguments but does not find them persuasive. And the Examiner doesn’t have to say why. Then he does a cut-and-paste of his rejection. Another easy Count.

    Another way of looking at it is that the Patent Office considers the patents it issues to be as enabled (valid) as any unexamined miserable scribbling.

    Fire everyone at the Patent Office and start over with people who can take at least some small amount of pride in their work.

    Start with the Director because a fish rots from the head back.

  93. I like this whole discussion regarding enablement. It underscores a principle that has sustained patent law centuries. In order for an invention to be in the public domain, the public must know how to make and use it. Otherwise, the invention, even if made privately by others, remains the private and not public.

    The patent needs to go to the first person who discloses to the public how to make and use the invention. This is why I so strongly objected that recent case where the Federal Circuit held, in a panel decision, that the mere announcement that an invention had been made without describing how to make and use it or providing an example to the public that they may reverse engineer was sufficient to anticipate. That case had a blistering dissent by, I believe, O’Malley that pointed out that the decision was fundamentally incorrect because historically prior art had to be enabling in order to anticipate.

    Anyone who could remember the name of this case, I would appreciate it if they could post its name here that the panel members may live in infamy.

  94. Ned,

    I never said the job was easy. But it does need to be done right. And the burden belongs to the Office (I will refer you to again review the Tafas debacle (debacle from the Office attempted off-loading of its duties perspective).

  95. Ah, come on Mr. Reply, it wasn’t that bad.  After all, we had pony express in those days and two years to respond to an Action.

     
    Sent from Windows Mail
     

  96. Anon, I think you are asking a lot of a FAOM.  I think there needs to be some back and forth between the examiner and the applicant before the examiner conducts his “real search with the applicant’s explanation in mind.
     
    Perhaps we should have some automated system that provided a literal search to the examiners based upon the specification and claims, at any IDS information provided. For example the specification and claims  (and any IDS references) could be plugged into a search engine to form a moderately intelligent search for prior art. (In order for this to work well, the applicant needs to use the same terminology for both claim elements and specification.) The results of the search could be provided to the examiner and the applicant as well before a first action on the merits. The applicant could take this opportunity to give the examiner a call if the search was producing references that are not all that relevant.

     
     

  97. The burden has shifted back to the examiner with your submission. It is now up to him to ‘prove’ that the sum total weight of evidence supports enablement.

    Call his SPE and explain that the examiner is weighing a mere unsupported (original) supposition** as heavier than the actually produced and ‘validated’ experimental data and affidavit that you have supplied. Remind the SPE that you have indeed met the proposed rational for the prima facie burden shift by performing the very experiment the examiner is not to be ‘taxed’ with.

    **a caveat, as you do not disclose what the nature of the prior art is. If that prior art is a patent, then your burden might be different, given that patents have a legal presumption of validity and that you may have to provide evidentiary basis rising to a clear and convincing standard rather than merely a preponderance standard.

    Note that this is not nor is intended to be construed as legal advise.

  98. “Submit declaration from one skilled in art with experimental data showing that not enabled.” Yes, that would seem to be exactly the right idea. We submitted a declaration and data supporting the position but that wouldn’t bring the examiner past the notion that a drawing of a molecule was anticipatory, even after we proved that the drawing was a mistake as to what the reference procedure actually produced.

  99. I am curious as to how everyone feels that the burden shifting should occur. I have been working with a client in a chemical case. The examiner sited old art depicting a molecule. But that molecule was never made. My inventor showed (by reproducing the procedure) that it could not possibly be made as taught in the reference. But, the Examiner would not concede that the art was NOT enabled.

    It seems like prior art should be presumed enabling unless evidence is shown otherwise. Experimental proof should qualify to shift the burden.

    Has anyone had a similar experience?

  100. with fewer appeals and fewer second non-finals

    Sorry Apotu, your examiner bias is showing as this ‘fewer’ aspect actually hurts your (the royal you and not you in particular) ability to obtain easy counts – quite the opposite of what you are trying to imply.

    It’s exactly like the RCE gravy train – something that many vocal examiners refused to acknowledge existed all the while milking it for all they could.

    It is one thing to ignore human nature and build a system with such flaws. It is quite another to try to deny the flaws exist and close your eyes to reality.

    “Wishing” for goodness while measuring widgets won’t get you goodness. You will still get widgets.

  101. There actually is an incentive to do a good job during examination, just as you’ve noted: faster disposal of the case, with fewer appeals and fewer second non-finals. Those of us who try to do a good job up-front have been stressing the importance of this (as does management), but it ends up being the difference between a small amount of instant gratification versus a large benefit down the road.

    Unfortunately, examiners who are pressed for time can’t afford to go for the larger but later benefit, because they need counts now.

    Part of this could be helped by giving us more time. The point isn’t to give examiners so much time that nothing gets done, but rather, to give enough time that examiners don’t go into panic mode.

  102. What the increased fees were used for is anybody’s guess.

    It is not a guess. Clearly (see any information on the sequester) this is a general tax levied on innovators only and innovators are in essence paying taxes ‘without representation’ – something that our government in particular should be cognizant of.

    This danger was actively discussed during the AIA process, and I personally followed the advice of some notable people and directly contacted my House and Senate representatives (to no avail).

    As I mentioned elsewhere, it is a shame that the true impediment to improving the patent system was not the focus of the AIA. Give thanks to the special interest groups that captured Congress for that.

  103. If my claim has 5 elements, and the Examiner uses five different pieces of prior art to meet those element and concludes that it would be obvious to combine them (an implied – its enabled), as a poster pointed out above, how am I to prove that the combination is not enabled? i.e., how much effort will I need to show that I can’t do it? (the irony is that I didn’t do it b/c that’s my invention!)

    why don’t we apply the same analysis to prior art as the examiner does for newly filed applications? E.g. new matter issues, scope of ranges, etc.?

  104. Filing fees were just significantly increased. Zero went to reducing examiner quotas.

    What the increased fees were used for is anybody’s guess.

  105. Les, your post mirrors mine to some degree.

    I would also remind the government that their job of examination does not stop at any establishing of a prima facie case.

    There is a prima facie case step, but that is a planned step in a back and forth exchange, and the step is in no way a dispositive one.

    Although, it is interesting to ponder what should be the required level of response to overcome what amounts to be a mere assertion by the examiner.

    If a presumption of enablement is established merely by the examiner citing a reference without more, how much weight in a reply from an applicant is necessary – or should be necessary – to tip the scales back to the examiner?

    A mere citation without ANY notion of enablement being ‘earned’ is a gossamer position, and should merely take a statement by the applicant to burst that presumption. Some type of ‘proof’ is out of proportion to of just who has responsibility (again, see Tafas) of the overall examination.

  106. YIKES!

    “The presumption of enablement is consistent with the general rule that the examiner need not raise and explain every possible issue surrounding each ground of rejection. Because the primary purpose of the prima facie showing is to provide notice, an examiner “is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling.” Antor. When an examiner identifies anticipation as a ground of rejection, that notification informs the applicant that he may raise lack of enablement in his response.”

    Well, would it be too much of a burden to require that when an Examiner is relying on the filing date of a provisional application to call a reference “prior art”, that the Examiner make her citations TO the PROVISIONAL application and not to portions of a subsequently filed document that may or may NOT be supported in the provisional application?

    The presumption of enablement also reflects the Federal Circuit’s recognition that requiring the examiner preemptively to make the detailed findings necessary to verify enablement would be “manifestly inefficient,” “burdensome,” and “entirely unnecessary.” Jung. Because the enablement inquiry requires an analysis of the degree of experimentation necessary to implement an invention, “an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible.” Antor. … The applicant is better positioned than the PTO to gather evidence supporting his contention that the prior art is not enabling.

    What about that bit in the statute that reads: SHALL be entitled to a Patent therefore, UNLESS:”. Doesn’t the nonsense above shift the burden of proof to the applicant? Wouldn’t requiring the office to make a thoughtful prima facie case tend to eliminate bad rejections, based on word search hits identified with paragraph numbers and no explanation, and therefore tend to eliminate bad first rejections and tend to provide compact prosecution and first action allowances?

    How many applications are eventually allowed without substantive claim amendments?

    How many of those are first action allowances?

    Why so few?

  107. Thanks trs, in the general sense, you do get what you measure. It’s a shame that this was not the focus of ‘patent reform.’

  108. A good office action is one that I can present to the client with a recommendation to abandon the application or narrow the claims.

    We have only four real choices: (1) take the allowable claims; (2) argue without amendment; (3) narrow the claims; (4) abandon. If the examiner rejects the application and doesn’t give us enough information to do either (3) or (4), we are going to argue.

    If an examiner is going to use some convoluted BRI (without writing anything down on paper), don’t expect the client to keel over. If the examiner is going to cite the same 2 columns of text for five separate limitations (and you’ve done some fancy footwork to convince yourself that they are the same), don’t expect the client to acquiesce.

    The problem with the USPTO is that (many/most) examiners do just enough to get their count – nothing more. There is no incentive for them to do anything more. Like rational actors (and not necessarily professionals), they are going to act in their own best interest, which means maximizing their efficiency in order to gain more compensation and/or leisure time.

    I’m sure most examiners are capable of doing a proper examination. However, they have been given no reason to do so. This is the underlying flaw in the U.S. patent examination system. There is a disconnect between the level of examination needed in order to efficiently advance prosecution and the level of examination currently being incentivized by the USPTO. Fix that problem, and we’ll get reduced backlogs, shorter pendency, and better examination.

  109. Antor was not sanctioned for their endless (and thankfully ineffective) dust-kicking.

    LOL – can we bring sanctions for Malcolm’s own ‘endless (and thankfully ineffective) dust-kicking’ here on the blog?

    Unfortunately, we do not have to guess how mind-numbingly awful those arguments ‘must have been,’ as the zombie retreads are posted despite his own volunteered admissions that torch his agenda.

  110. Nice baby bear syndrome there “said in reply.”

    Or is the three little bears reference too old for you?

  111. Ned,

    There was a time that examiners knew their art and did not merely use form paragraphs and ‘cut-n-paste’ after a key-word search of the claims (as 6 has in the past proclaimed that was a perfectly valid form of examination that he was trained to do by his SPE).

    Neither form works today. Either leads to my explanation to the client that the rejection by the Office easily does not hold water, thus leading directly to the bloated queues at the Office in any one of the three decks (of the Titanic): First class deck of new applications, second class deck of appeals, third class deck of applications in process, and fourth class deck of RCEs.

    An examination done right the first time, as directed by the MPEP (and not some silly SPE – that is, AFTER the specification is read and understood…), yields either on-point art that can be addressed (or not) – with either product of a well examined application leading to a much shorter (over-all) processing time span.

  112. Doesn’t the fact that examination fall to the Office preclude the Office from shifting the examination (in effect) to the applicant?

    Is not Tafas implicated here?

  113. The applicant is better positioned than the PTO to gather evidence supporting his contention that the prior art is not enabling.

    Is that similar to proving a negative?

  114. Prior art should absolutely be considered enabled if it is being applied in a 102 or 103 rejection. If the applicant wants to assert that the reference is not enabled, then why is HIS invention enabled?

    However, if the rejection (by the examiner) is lack of enablement, then yes, the reference should be enabled.

  115. “…if the PTO were required to do this, it would just turn into the same hand-waving exercise that the examining corps’ implementation of KSR has become, most of which fail any reasoned rationale test…”
    _________________

    Would applicants be better off if the filing fees were significantly increased so that the examiner quotas could then be reduced?

    It’s all about tradeoffs.

  116. ” I started life when that is how they did it: ”

    Well, yeah, but it really takes too long to get your stone-tablet inscribed delivered by Conestoga wagon….

  117. All the examiner has to do, IMHO, is cite the prior art, the claim, and the statute, and that can be implied. I started life when that is how they did it: Simply list the references and then apply them using reference numbers, e.g., claim 1, A v. B. We could figure out the rest.

  118. Beg pardon, please read beginning of 3rd graph as: “That’s not to say that the obviousness rationale has always been improved after being challenged,…”

  119. I don’t want the PTO having to recite reasons why allegedly anticipatory art is enabled. I’d rather begin that process by arguing, myself, why it is not.

    In any event, if the PTO were required to do this, it would just turn into the same hand-waving exercise that the examining corps’ implementation of KSR has become, most of which fail any reasoned rationale test until after having been challenged in response to the prior office action.

    That’s not to say that the obviousness rationale has been improved after being challenged, when it is next presented in the final rejection – probably 60% do not, and wasting time/money on appeal is necessary to fix those.

  120. Here’s the unanimous Federal Circuit case (In re Antor; Rader, Lourie and Bryson), which concerned another computer-implemented pile of anticipated and obvious j*nk, and which effectively tanked Finjan’s efforts in that venue:

    /media/docs/2012/07/11-1465.pdf

    It’s one of those enduring mysteries that Antor was not sanctioned for their endless (and thankfully ineffective) dust-kicking. The case ends with the following: We have considered Antor’s remaining arguments and conclude that they are without merit. One can only guess how mind-numbingly awful those arguments must have been given the ones that the Federal Circuit actually does discuss.

  121. PTO’s brief is here:

    link to justice.gov

    The fact that this is some genuine computer-implemented j*nk that is surely obvious even if it’s not anticipated is worthy of a chuckle or two. Nobody skilled in the art could have enabled that invention but we don’t want to prove it? Gee, I wonder why. Maybe it’s because the claims cover methdods that are no less “non-enabled” than the the prior art.

    At some point the proponents of functionally claimed softie-woftie nonsense are going to have to get their scripts in order. Are all “new” concepts relating to “a computing device that processes THIS kind of information” fully enabled by a flow-chart and a general description of how a computer works (first you receive the data, then you process it, then you transmit some other data)? For all operating systems, in existence at the time of the patent and for the duration of the patent? That certainly seems to be one of the party lines.

    Here’s the claim ( US Pat No. 6167520; priority Nov. 8, 1996)

    1. A computer-based method, comprising:

    monitoring the operating system during runtime for an event caused from a request made by a Downloadable;

    interrupting processing of the request;

    comparing information pertaining to the Downloadable against a predetermined security policy; and

    performing a predetermined responsive action based on the comparison, the predetermined responsive action including storing results of the comparison in an event log.

    Pretty ridiculous. Computer viruses were old at the time this j*nk was filed. So was the idea that if there were dangerous elements in a system (any system) it was prudent to keep track of them and, when a suspect element was identified, to compare information about that element to the known elements in the list. You know, kind of like how doctors would identify viruses in people.

    The bigger joke here is that Finjan apparently believes that there is something very tricky and difficult about determining that the virus is in an operating system. Does anybody see any of that very special magic in their claim? I don’t. It’s just a broad description of the general concept.

    Here’s the really impressive non-enablement argument Finjan made:

    “There is nothing in the reference which would allow a skilled artisan to make the Virex Programs without undue experimentation.”)

    Try to believe it. Of course, their application also includes this familiar gem:

    The embodiments described herein have been presented for purposes of illustration and are not intended to be exhaustive or limiting.

    “Because the presumption of non-enablement in the softiewoftie arts only applies to the prior art! It certainly doesn’t apply to us when we assert the claim against people who do things that we didn’t specifically describe. After all, we can’t be expected to do much more than provide a few flow charts and such. Now, please give us the broad claim we are entitled to.”

    I think a simple “cert denied” will suffice here.

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