by Dennis Crouch
In the non-precedential Cutsforth v. MotivePower decision, the Federal Circuit has vacated a PTAB inter partes review (IPR) final decision — holding that “the Board did not adequately describe its reasoning for finding the claims obvious.”
The patent at issue is directed to a brush-assembly used to maintain an electric current with a rotating mechanism. US Patent No. 7,990,018.
The Federal Circuit requires that the PTAB “articulate articulate its reasoning for making its decision.” See In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002). Along these lines, the board must explain the factual bases for its findings and must go well beyond “conclusory statements.” Most PTAB decisions are related to the question of obviousness and the Federal Circuit particularly requires the Board to “explain why a person of ordinary skill in the art would modify the prior art references to create the claimed invention.” See In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) and In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998).
Here, the Board apparently recited the challenger’s (MotivePower’s) arguments and the ultimate conclusion of obviousness, but did not “formally” adopt the arguments as its own conclusions. See MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274. On appeal, the Federal Circuit rejected this approach. Some key quotes:
The Board’s decision appears to assume this combination is obvious. It offers no explanation for why a person of ordinary skill in the art would adjust Bissett and Kartman to create the claimed mounting block of the ’018 patent. The Board only states that MotivePower argued it was obvious to do so. Merely reciting MotivePower’s argument does not satisfy the Board’s responsibility to explain its own reasoning. The decision must explain why a person of ordinary skill in the art would find it obvious. The Board gives no such explanation. . . .
For claim 5, which requires that the mounting block include a spring, the Board explains that the placement of the spring on the mounting block is simply a design choice. . . . This statement alone is not enough to explain why the Board found claim 5 obvious. Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice to locate the spring on the mounting block. Here, it does not.
On remand, I expect that the Board will simply rewrite its 33-page decision – better explaining its holdings – but we shall see. [PTAB Final Decision: final decision-31].
To be clear, although the PTAB is held to this high standard, patent examiners are not. Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation. Update: I just looked at the comment section and note that a number of folks raise the important point that my off-the-cuff statement an examiner’s notice burden is limited to the introductory rejection and establishing a prima facie case as the Federal Circuit explained in Packard. Once a prima facie case is established, the patent applicant has the opportunity to rebut that case. And, once rebutted, the examiner’s burden is then raised actually prove the case if possible.
This basically just says that In re Sang Su Lee applies to the Board. Having cited that precedent to the Board myself (albeit in an Appeal, not an IPR), and thus getting a remand to the Examiner to write a new Office Action that actually complied with that decision, I was already pretty sure of that.
Of course, some may say that In re Sang Su Lee is just a reiteration of Zurko, and there may be some truth to that.
Alun,
You are correct – within In re Snag Su Lee is this:
“Tribunals of the PTO are governed by the Administrative Procedure Act, and their rulings receive the same judicial deference as do tribunals of other administrative agencies. D1ckinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 144 L.Ed.2d 143, 50 USPQ2d 1930 (1999).“
Boundy: in IPR/PGR/CBMs, throwing in curve ball grounds of rejection in final decisions when the patent owner has no realistic opportunity to rebut
As if that’s some kind of major systemic problem.
Does anyone have any idea how often that is happening, on a percentage basis?
Out-and-out applicant lying and misrepresentation of the law probably exceeds the bona fide “curve balls” tossed by the PTAB by an order of magnitude or two. But I guess that’s something the public just has to live with.
How many individuals has the PTO banned from participation in the patent system in the last, say, five years?
“As if that’s some kind of major systemic problem.”
Does it have to be some kind of major systemic problem?
If the means are clearly wrong, does the ends desired somehow make it “OK”…?
(that’s a rhetorical question, by the way)
Court decisions once were fairly clear on separate “findings of fact” and “conclusions of law.” Adopting that paradigm at the examination level would go a long way to finding a resolution.
Simply reciting references depicting each separate reference with hindsight conclusions on teaching, motivation and suggestion is incomplete. It is not just the elements, it is the arrangement, and that’s what many examiners don’t grasp.
Sorry, “separate reference” should have been “separate element.”
Richard,
The jab I use at these people who attempt the “logic” that you see as deficient is the Big Box of Protons, Neutrons, and Electrons.
These elementary particles are not eligible in and of themselves.
Knowing these particles (and knowing the natural law of how they interact) simply does NOT make ineligible all of the configurations of these elementary particles.
But what you see is the “logic” of those wanting to use that selfsame “logic” – with hindsight (or with ‘creativity’ [read that as inventive capability]) somehow baked in to PHOSITA.
103 is NOT a law of “synergy.”
103 is NOT a law of “could have.”
“anon” Richard, The jab I use at these people who attempt the “logic” that you see as deficient is the Big Box of Protons, Neutrons, and Electrons.
Richard, “anon” has been jabbing himself in the face for at least five solid years now. By all means feel free to join his “Big Box of Popcorns” chorus. That’ll make two of you (okay, three, if you count Les and his box of “wood, glue and canvas”).
MM Since you want to get personal, it seems you are a bitter, bitter bureaucrat who for some reason can’t accept the law as it is. Justice Douglas hated patents, but loved copyrights probably because he was receiving royalties on his book publications.
“inventive concept,” “unexpected results,” “synergism?” Nowhere do these criteria appear in statutory law, as far as I know.
RP: Simply reciting references depicting each separate reference with hindsight conclusions on teaching, motivation and suggestion is incomplete.
So is distinguishing a claimed device/composition from the prior art on the basis of its function.
Let me know when the PTO starts kicking all that junk to the curb and I’ll start caring about “incomplete” rejections that, in most cases, are infinitely more atriculate and complete than the claimed “innovation” being rejected.
It is not just the elements, it is the arrangement, and that’s what many examiners don’t grasp
What many applicants don’t grasp is that the “arrangement” isn’t inventive if there aren’t any unexpected results.
But go ahead and pretend otherwise. Then whine and cry when your junk gets tanked in a predictable fashion.
>Simply reciting references depicting each separate reference with hindsight conclusions on teaching, motivation and suggestion is incomplete. It is not just the elements, it is the arrangement, and that’s what many examiners don’t grasp.
See, the thing is, I’ve seen so many bad “improper hindsight” arguments from attorneys that I don’t know if you’re actually serious (disclosure: I have a doctorate and research experience in the field I examine in, so I can usually see through the BS pretty quickly).
The other thing is attorneys often hate KSR-type rejections, and they routinely argue that “there isn’t motivation” even though you’re using one of the explicit rationales.
I understand there are bad examiners at the PTO, and I understand the frustration they cause. But, based on who I know at the office, there are a lot of really good examiners with a ton of experience in their respective fields. And while I see bad office actions from unskilled examiners, I also see bad amendments that make it clear the attorneys didn’t read the prior art of record used in the grounds of rejection, don’t have even an elementary understanding of the basics of the field of the application. For example I see attorneys deliberately missing things from the prior art or misrepresenting the prior art (i.e. if the prior art gives options X and Y, saying the application doesn’t teach X, but instead teaches Y), wasting the applicants’ time and money.
I see attorneys cross out the “found” elements of a list of “ors” one by one when it is obvious that they are equivalents (very often obvious over the prior art of record used in the grounds of rejection), wasting the applicants’ time and money.
I’ve had interviews with attorneys where I’ve said “Listen, your applicant published this NPL two years prior to filing, and the NPL is pretty much your entire specification; I don’t think it makes sense to continue”, and they file an RCE with obvious modifications, wasting the applicants’ time and money.
For most of the above listed scenarios, I can’t imagine the inventors are the ones wanting to continue/RCE (as opposed to the applicants, maybe under ), because the inventors would know better.
Honestly, the process would be a whole lot easier and save a ton of money if I dealt with the applicant directly instead of most of the attorneys I’ve dealt with.
Yes, I understand that “examining is our job”, and wastes the applicants’ time and money when you receive bad examination, but it’s not like we can call up your applicants and tell them to drop you guys for bad prosecution when you’re wasting the inventors/applicants time and money.
patentcat,
I hear you.
To the extent that such behavior by the applicants’ representative is not in the interests of the client, your gripe is legitimate.
I too would agree that there are quality examiners at the Office.
But when you read the (typical) dross put forth by examiners on these boards, and you deal with the lack of quality examination at the levels that most (I daresay) applicants’ representatives DO deal with, it would appear that the scales are not tipped to what you see, but very much are tipped in the opposite direction.
Further, when the discussion concerns changes to the law and the aim is to what the Office can (and necessarily conversely, cannot) control, the focus will be – and must be – on the relatively more abundant p00r examination.
The problems you see are dealt with as a natural result of good examination, and on this side of the fence, clients do have the power of the market to choose their representatives. On the government side of the fence, there is NO such availability of choice.
Yes, this does create a disparate system, and one that has seen examiner types whine to me about “the unfairness of it all,” but such whining does not, will not, and cannot change the fact that the mechanisms affecting one set of people (applicant’s representative) are different than those affecting another set of people (examiners).
And lastly, but not as an excuse, do keep in mind that continuing prosecution – or not – is the call of the client – not the call of the representative. Every response is vetted to the client for their approval in one way or another.
Are there “bad” representatives who may “churn” the client for extra fees? I am certain that there are – like in all professions – people of such nature. But can the response mechanism to such “bad people” be the same for attorneys as for examiners? Clearly, no.
I think a lot of the problems are systemic with how the office is structured, and not just “bad examiners”. Lame responses that put the blame on the examiner don’t help, because examiners have no control over the systemic problems, which, in my opinion, contribute a lot to the problems attorneys complain about.
Application transfer can be hit or miss; I know I’ve written a few bad actions when I get things that aren’t mine, and the art unit they belong in is not accepting transfers.
Regardless of how good the examiner is at their own art, you’re going to get poorer quality examination if you’re not giving people cases in the same art area.
They expect people to be generalists in many areas, which doesn’t work like it may have 20-30 years ago. Transitioning art units to CPC would help.
For interdisciplinary applications, which are common, they need to have people work together like they do at WIPO, but would fall flat as soon as you group someone who doesn’t care mixed in with someone who does.
There is nothing “lame” about responses that appropriately place the issue on the holder of the issue, patentcat.
So while you may (and do) have some worthwhile points “about the other side,” such points cannot be used as any type of excuse of the shortcomings on the Office side.
You just don’t get to not take notice as the providing of such notice is both accurate and meaningful.
For example, when examiners attempt to make their problems into the problems of applicants, you have crossed the line. It really does not matter whether your problems are “systemic” or not, or as 6 wanted to put it: “too big to handle,” they remain your problems and it is up to you (you know, the notions of responsibility and accountability) to NOT try to shift them to someone else.
Here you bring up a few more (strictly) internal problems that you should take the responsibility for and have your union make an issue: examining outside of one’s capability in the sense of working on an art field that you are not capable of.
This lack of capability may arise both within one art field and as you have noted across several art fields, for those (it takes a village type of inventions). Hey – this impetus was only heightened by the Supreme Court in its KSR decision (you know, the jigsaw puzzle effect). Bottom line is that it simply matters not that it “is difficult” (akin to the almost fifty year whine from Malcolm related to the software arts). There is NO excuse – no legitimate excuse – that sounds in “but it’s difficult.”
You do not have the option of “cherry-picking” only the non-difficult applications to examine. Even those selfsame difficult ones have been agreed to be examined fully and you are the agent of that deal that includes your job of examination.
(…and oh yes, my not-required-but-volunteered ideas to help you with your problem – previously supplied – did include handling cross-art inventions in such a non-uniform-widget group examination mode).
You are welcome.
I’ve brought this up many times with POPA and in surveys.
Complain to the office or just deal with it.
You are not paying attention, patentcat.
A “you” problem is yours.
I do not need to deal with it, or even complain to the Office. The deal with the Office remains as I have pointed out.
I will complain TO you when you attempt to dodge YOUR problem.
You need to take ownership of that “you” problem, friend.
I appreciate that you have gone to POPA several times – at least you didn’t try the ineffectual “6-why-bother” route. Maybe you need to gather more voices in your dealings with POPA…
“Maybe you need to gather more voices in your dealings with POPA…”
He’s not a leader. And like I said, those that are have more pressing issues to deal with than such matters.
…and in case MaxDrei (or anyone else) needs some irony…
“Out-and-out applicant lying and misrepresentation of the law probably exceeds the bona fide “curve balls” tossed by the PTAB by an order of magnitude or two. But I guess that’s something the public just has to live with.”
but such (by Malcolm) in this ec(h)osystem is celebrated by certain sAmeones that align with the desired Ends….
“Go figure, Folks”
Boundy: in IPR/PGR/CBMs, throwing in curve ball grounds of rejection in final decisions when the patent owner has no realistic opportunity to rebut/i>
As if that’s some kind of major systemic problem.
Does anyone have any idea how often that is happening, on a percentage basis?
Out-and-out applicant lying and misrepresentation of the law probably exceeds the bona fide “curve balls” tossed by the PTAB by an order of magnitude or two. But I guess that’s something the public just has to live with.
How many individuals has the PTO banned from participation in the patent system in the last, say, five years?
MM I’m not sure of your point. After a second rejection which typically includes a new reference as an alleged result of the applicant’s amendment, the applicant has an opportunity to respond after final. In fifty years of practice, I’d say the odds of changing the examiner’s mind are one in a hundred. But because that one is so rewarding, should a practitioner forgo that opportunity, lost cause as it is?
Also, maybe times have changed, but I believe that registered patent attorneys, steeped in science and technology are perhaps the most honest and pragmatic of all attorneys. Engineers feel real uncomfortable about lying. When we shift inventorship from inventors to enterprises we invite corruption.
Do you wonder, Richard, why a certain phrase was stripped out of the statue with the AIA (at the same time making “enterprises” more capable of doing away with actual inventors)?
Do you also wonder, Richard, that it was Mark Lemley advocating for this type of “it takes a village” change to the law?
Do you wonder, Richard, that it was Ron Katznelson who took Mark Lemley to task for the “logic” that Lemley attempted to use?
“Update: I just looked at the comment section and note that a number of folks raise the important point that my off-the-cuff statement an examiner’s notice burden is limited to the introductory rejection and establishing a prima facie case as the Federal Circuit explained in Packard. Once a prima facie case is established, the patent applicant has the opportunity to rebut that case. And, once rebutted, the examiner’s burden is then raised actually prove the case if possible.”
The burden of persuasion is on the examiner. Always.
AAA JJ, correct me if I am wrong on this, but is the PTAB bound or not bound by the record established by the examiner?
This is that due process issue – that if the PTAB believes the examiner is wrong, but that the patent claims are nevertheless unpatentable on alternative theories, they have to remand the case back to the examiner.
…Ned – once again the point that you wish to avoid raises its head.
At initiation – critically separate from any further merits decision – your granted patent is no longer has its full bundle of sticks of property rights.
Try (really really try) to grasp the separateness here.
Once you do that, then you can see that the “normal” activities that the PTAB was accustomed to pre-AIA (and reaching back to the historical roots of being “Super-Examiners“) are – rightly or wrongly – what is in play.
Since you ask about “record before the examiner, ” I assume that question 15.1 is about ex parte appeals (or appeals from inter partes reexams), not IPR/PGR/CBM (which is not the context of the Cutsforth case).
On ex parte appeals, the PTAB is not bound in any respect by the examiner.
PTAB can inject new evidence.
PTAB can raise new grounds of rejection. (That’s not a remand.)
Many PTAB members believe they can’t inject their own theories of patentability, only unpatentabilty. That view is simply wrong. The PTAB is not an Article III Court of Appeals. The PTAB is an administrative tribunal, and always has authority to act in favor of an applicant in the interest of justice. Administrative law procedural rules are asymmetric–they can almost always be bent in favor of the public, almost never against a party or in favor of the agency.
MPEP 1200-something says that the only grounds for remand are to request additional information or clarification from the examiner, so that the Board can reach a final decision — remand can’t negate the Board’s obligation under 5 USC § 555(b) to “conclude the matter presented to it.”
On the other hand, in IPR/PGR/CBMs, throwing in curve ball grounds of rejection in final decisions when the patent owner has no realistic opportunity to rebut (no opportunity to adduce new evidence, etc.) is wrong. It’s way beyond the pale. Basic principles of administrative law due process, constitutional right to notice of issues to be decided….
I think, David, that the PTAB is finding it hard to separate its hats. With ex parte, it has a free hand. With the IPR, it does not.
But the law on the latter is not well established — at least in the patent office.
It’s well established in the administrative law that applies to all agencies.
I’ve stated my opinion of the PTO’s basic competence and respect for the rule of law elsewhere. The deviation between the law and PTO practice that you note speaks for itself.
“PTAB can inject new evidence.”
Yeah but they voluntarily started restricting themselves from doing so a few years back.
” but is the PTAB bound or not bound by the record established by the examiner?’
They elected to voluntarily restrict themselves to the references of record (and presumably anything they’d be willing to take notice of). But they can modify the grounds of rejection using references made of record by the examiner.
D’s comment is of course limited to a very limited situation.
And what very limited situation is that?
“the patent applicant has the opportunity to rebut that case”
^when they actually manage to do that.
Such a rare thing these days. What I see in practice with rejections that originate from me is in the vast majority of times amendments, the occasional claim construction squabble (sometimes hidden) that I’m ultimately going to “win” via the magic of BRI or settlement of language if I so choose, occasional exclusion of references, people “rebutting” a case agin them that wasn’t actually ever made, and people off in la la land talking about something not even close to relevant (happens more than you might think).
Actual rebuttals of the rejections themselves (factual 102 issues, legal 103 issues etc) that originated with me that I need to substantively address? Very rare. I’m not even sure if I’ve had one this year. Maybe a couple minor ones. But then, I can admit that’s probably not your standard prosecutions.
Thank you for this addendum:
“Update: I just looked at the comment section and note that a number of folks raise the important point that my off-the-cuff statement an examiner’s notice burden is limited to the introductory rejection and establishing a prima facie case as the Federal Circuit explained in Packard. Once a prima facie case is established, the patent applicant has the opportunity to rebut that case. And, once rebutted, the examiner’s burden is then raised actually prove the case if possible.” (emphasis added)
I chuckle at the likes of 6 – whose job it is to know this, and apparently, does not.
Whereas I chuckle at anon, whose imaginary job it is to know this, but apparently doesn’t realize that his comment is very limited to a very particular case, where a valid rebuttal is actually made. I have seen barely hide nor hair of such a thing over the last few years. The vaaaast majority of things I see are amendments, and the remaining “arguments” are generally nothing but claim construction disputes or claim construction disputes in disguise. The occasional arguments I see that aren’t that noted above are out in la la land talking about something not yet claimed, a designation of parts not even made etc. and aren’t even pertinent to the rejection (this happens more often than you might think, especially with foreign applicants/attorneys). Setting aside technicalities like applicant excluding a reference or something with the new exclusions.
Not sure why you would be chuckling at me – read again my posts (what I actually state).
There is no error on my part.
You on the other hand, are now dancing furiously to try to make it appear that only a tiny and inconsequential fraction exists outside of your statements and that that tiny and inconsequential fraction does not puncture your (wrong) statements of examination as a whole – as opposed to merely the first (prima facie) step in the process.
So while you share a half truth that sometimes the prima facie case is not overcome, or is overcome with other steps, you quite miss the fact that everything that I said was indeed correct, and that your statements were indeed not correct for their (obvious) lack of completeness.
But please, throw up some meaningless ad hominem and attack the person while what the person says is accurate – be par for the course with your additions to this “ecosystem.”
“are now dancing furiously to try to make it appear that only a tiny and inconsequential fraction exists outside of ”
That’s just reality bro. At least in my office. I don’t have to make it “appear” that way.
“that everything that I said was indeed correct”
Not in this entire thread.
Your dancing is the reality, 6 – and yes – everything that I have said in this thread is indeed correct.
“…where a valid rebuttal is actually made. I have seen barely hide nor hair of such a thing over the last few years. ”
A rebuttal is merely a showing of facts supporting the opposite conclusion. See Piasecki. So I’m sure you’ve seen many. The fact that you didn’t understand the rebuttal doesn’t mean it wasn’t a rebuttal.
“A rebuttal is merely a showing of facts supporting the opposite conclusion. See Piasecki. ”
Yeah, and I very rarely see such a thing. In the very very few instances I see of them showing facts supporting the opposite conclusion they’re usually addressing a grounds of rejection not even made, or are relying entirely on a different claim construction (in which case the issue is the claim construction, not the facts they’re spouting about). We can’t really count those as “rebuttals” as they’re not actually a showing of facts that support the opposite conclusion.
“So I’m sure you’ve seen many.”
No I can say with a straight face, not really. I don’t even see many fighting the claim construction or addressing a grounds of rejection not even of record.
That speaks to the general deterioration of both the examination branch, and the patent bar. Why, using the same arguments, as in a response (not even in an after final) in the formality of an appeal brief to the board, does the applicant get and allowance of all claims on appeal? Waste of time and client’s money.
(is everyone in D.C. still snowbound?)
I should like to read comments on the following proposition, found below, at 11.2.1.3.2
“…. what happens when you get a lazy examiner that just allows all the claims.
Congrats! You just got your client an invalid patent. Now because you refused to file claims that accurately reflected the scope of the invention, you need to spend your client’s money on a reexam/reissue proceeding to ensure that the patent doesn’t get knocked out in litigation”
In Europe, for sure, going to issue with claims that are all covetous or over-broad is doing your client no favours at all. But that is because of the nightmare ahead of you, if you want to amend, after the patent issues.
Is that now the case also, in the USA, I wonder. So is IPR prompting those drafting claims for the USDA to include a nicely graded set of carefully thought-through dependent claims that exhibits a step-wise increasing degree of patentability (by which I mean, of course, non-obviousness) evidenced by a specification which matches each successive enhancement of non-obviousness to a technical effect enhanced in one or other respect? After all, as Paul Cole has said, novelty (a “difference”) isn’t enough to qualify for a patent. What you need is “a difference that makes a difference” ie a technical effect. Claim the difference, and complement it in the specification with a description of what difference the claimed difference makes.
Or (I suspect more likely) is IPR having no effect at all on claim drafting?
OK, let’s get theoretical for a moment. If you file two patents using the same disclosure and focused on the same subject matter, one with very broad claims and one with claims narrowly tailored to the “invention” (same invention in both), then where should both claims end up for both patents? They should be exactly the same. If they’re not exactly the same, then something is wrong with the patent office and its procedures.
But that has nothing to do with filing over broad claims, and everything to do with the procedures at the patent office. To say that the claim scope for patents will somehow be better if attorneys, agents, and clients start filing narrower claims simply does not make sense to me, if the patent office actually works as it should. And if it doesn’t work as it should, then don’t blame the attorneys, agents, and clients — blame the patent office.
The PTO is run be human beings. It is unreasonable to expect an office full of thousands of examiners to operate at that level of precision.
So the attorneys do deserve some blame. They are operating on flawed idealistic assumptions about the capbilities of the office and refuse to adapt accordingly–to the detriment of their clients.
One big Wah from you Ryan.
Let’s get this straight: you do not want to be held accountable for YOUR job, AND you want to blame the applicants.
That would be a sweet deal.
It’s the easiest gig in the federal gubment, no doubt.
Not sure that I agree with you, AAA JJ.
That is, to do the job right, it is not necessarily easy. I have utmost respect for those examiners who are diligent (and yes, I have been fortunate to have dealt with a few).
To game the job, to “get by” once entrenched and to avoid accountability, well, unfortunately, such is indeed possible, and yes, I have experienced this type as well.
But, then to come on to blogs and whinge about things and try to make the internal employee/employer problems into problem of the applicants and their representatives, well, that clearly crosses the line.
“Not sure that I agree with you, AAA JJ.”
That’s fine. I did it for several years, and it was a piece of cake. From what I’ve seen the past 16+ years, nothing’s changed.
“you do not want to be held accountable for YOUR job”
What patentbob put in his comment is nowhere in the examiner’s job description. All we technically are required to do is to eval the claims before us and decide allowable or not. Maybe in some candyland version of the office more is required.
“eval the claims before us and decide allowable or not.”
You are (again) missing what this actually entails.
Righhhhhtt, because only anon knows “what this actually entails” and its a secrit that is withheld from all examiners in their agreements with management.
Nice mis-characterization 6 – this is NOT an “only anon knows” thing – this is just a “6 does not know” thing.
Your ego and propensity to project are slipping through.
Bob can you say more. I’m not following your thinking.
Suppose you have invented an alloy of Al-Mg-Si that is great for car body panels. Open the Link below, and see all the Al-Mg-Si alloys already registered. You need to look for all the “6000” series alloys in the Aluminum Association’s industry standard Teal Sheets.
How will you claim your dispersion-hardenable alloy so your claim is allowable? At what level of generality?
Do you suppose you have no choice, in defining each range, of each alloying element in your “new” alloy?
Now suppose your competitor in Japan also comes up with an improved 6000 series Al-Mg-Si alloy and files its patent application on the same day. You and your JP competitor are going after the same market so have more or less the same composition, to deliver more or less the same performance enhancements (paint bake response, for example) but the experiments you conducted , and included in your specification, were not identical with theirs in Japan.
This is the real world. What you envisage (if I understand it right) is not real world so no help to real inventors, patent attorneys or PTO Examiners. Would you like to say more about the deficiencies in the patent granting system that you perceive?
link to aluminum.org
link to en.wikipedia.org
MaxDrei,
I think the hypo “from your own backyard,” has limited ability to make the legal point here.
At least the point being advanced by PatentBob. Perhaps, though, a different point could be made.
In such metallurgical arts (crowded as they are), your hypo seems to neglect the possibility that the Japanese invention is in fact nor the same as the claimant’s invention (and not just merely “not identical”).
I do think that you are addressing the same thing that PatentBob addresses.
However, we could take you example and explore the “popular” notion of “objective physical structure” if we add a few facets to the hypo.
For example, let’s add the word “comprising” and let’s pay particular attention to your provided set of ranges of each alloying element.
These of course provide breadth.
But – of necessity – that very same breadth forestalls and prevents you from having a single patent on a single “objective physical structure.”
Should you be forced to file different patent applications for each individual “objective physical structure,” and should the use of “comprising” be allowed (since using that phrase necessarily means that you have not supplied ANY complete objective physical structure)?
THe sentence:
“I do think that you are addressing the same thing that PatentBob addresses.”
should read:
“I do not think that you are addressing the same thing that PatentBob addresses.“
You have the advantage on me here, anon. You know what Bob’s “thing” is, what his “point” is, but I don’t. Lucky you.
Perhaps Bob could help me out here?
“Should you be forced to file different patent applications for each individual “objective physical structure,” and should the use of “comprising” be allowed (since using that phrase necessarily means that you have not supplied ANY complete objective physical structure)?”
Not if you can find some claims to generic recitations that are allowable over the art of record. That’s how the pros get multi-species in.
And yet again, you quite miss the point here 6 – this one being a jab at the singular “objective physical structure” canard.
When you want to claim more than one singular structure for your invention you have (gasp) climbed a rung on the ladder of abstraction.
This directly flies in the face of certain sAmeones here that like to pretend that such an option as mere picture claims to singular “objective physical structure” are somehow de facto the only “real” legal way to claim an invention.
“When you want to claim more than one singular structure for your invention you have (gasp) climbed a rung on the ladder of abstraction.”
Not necessarily. You could have just used more generalized language to describe something still “on the same level, rung or whatever of abstraction anon is bsing about”. Especially if the “level of abstraction” is pretty much 0 throughout.
Once again 6, your lack of understanding of what the ladders of abstraction are highlights the 1nanity of your posts.
“They should be exactly the same. If they’re not exactly the same, then something is wrong with the patent office and its procedures.”
Not at all and not at all.
Some folks would be willing to accept the less broad patent and go about their business. And the people that came in with the less broad claims don’t get a chance to amend to make them broader if it goes straight to allowance without filing a CON etc.
“To say that the claim scope for patents will somehow be better if attorneys, agents, and clients start filing narrower claims simply does not make sense to me,”
I tend to think, personally, that merely being a shade more precise in how things are being said in the claim already under a broad drafting usually makes all the difference in my art.
“To say that the claim scope for patents will somehow be better if attorneys, agents, and clients start filing narrower claims simply does not make sense to me, if the patent office actually works as it should. And if it doesn’t work as it should, then don’t blame the attorneys, agents, and clients — blame the patent office.”
That’s ridiculous, the patent office isn’t magic. We could, in theory, improve what we give people in terms of patents by requiring examiners to present to the applicants the broadest manner of drafting they’d feel comfortable allowing that is somewhat near what the applicant appears to be attempting to claim. But even that would be hit and miss. Because again, the PTO is not magic. And that’s kind of against the spirit of the law requiring the applicant to claim his invention.
“Some folks would be willing to accept the less broad patent and go about their business. And the people that came in with the less broad claims don’t get a chance to amend to make them broader if it goes straight to allowance without filing a CON etc.‘
This is true – to a point.
I have previously shared that one tactic (among several optional tactics) is to start with the lowest possible hanging fruit of such a “picture claim,” – in order to obtain a grant – and then continue to develop the full legitimate scope of protection that an invention deserves.
There are external factors that can be considered for the vantage point of the client that would make this optional path the better one to take.
But I don’t think that such tactical moves were what PatentBob was getting at. Instead, I think that a premise of his (albeit unstated) was that at the end of the day, the applicant would obtain the proper and full scope of protection. Read again his post with this premise in mind to better understand what he is saying.
So while it is true that picture claims will obtain protection, it is also true that for well over 95% of inventions, such picture claim protections come up short when it comes to protecting what was actually invented. This is exactly why the ladders of abstraction are used in nearly ALL art fields.
You see, the logic in your own argument of “the PTO is not magic” applies equally to the applicants. That is why there is a back and forth. That is part of your task is to know and provide that state of the art that will constrain the claims. While in a small number of case it might be true that the applicant has the best knowledge of the state of the art and can draw his claims with the best precision, such is simply NOT a part of the patent system – and cannot be so – on the global basis. This is one of the reasons why Tafas prevailed. Your version of “spirit of the law” has been shown to be incorrect. Your version wants the applicant to be the magician and wants the applicant to be a type of self-examiner. Your version wants to offload an admittedly difficult part of examination. You don’t have to like that part of your task – but you do have to realize that it is a part of your task.
Interesting, but topsy turvy. For administrative efficiency, shouldn’t a practitioner go with the broadest claim first, with multiple dependent claims, ending up with a “picture claim?” Even offering the “picture claim” is a submission, often granted, but with limited protectability.
Richard, one needs to claim the invention as broadly as possible on initial filing, and retreat slowly in the face of prior art. But that does not mean that one should not include in the initial filing picture claims, and take those claims when they are initially allowed. The good practitioner files a continuation on the non-allowed claims and continues the argument.
Ned,
You are wrong.
Sorry, but your thinking here is the thinking of a dinosaur, lacking agility. When was the last time you were actively engaged in prosecution?
That one size simply does NOT meet the diversity of client needs, and you really need to be aware of optional tactics.
Another aspect in your approach can be a messier written record. there are times where a quick first strike with a clean written record is much more preferable.