Strictly Construing Amended Claims Against the Patentee

by Dennis Crouch

In Cioffi v. Google, the Federal Circuit sided with the patentee, Cioffi — holding that the district court erred in its construction of the asserted patent claims and thus vacated the holdings non-infringement and invalidity via indefiniteness. (Non-precedential opinion).  Now, Google has petitioned the court for an en banc rehearing asking the court to “strictly construe” claim amendments against the patentee.

1. When construing a patent claim, should courts generally consult the prosecution history as context for resolving ambiguities, or is prosecution history relevant only if it clearly and unmistakably disavows claim scope?
2. When a patent applicant has amended a claim to overcome the Patent and Trademark Office’s earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant, as the Supreme Court has held, or consider the amendment history to be relevant only to the extent that it clearly and unambiguously disavows claim scope, as this Court has held

The issues raised here are parallel to those raised in the failed Google v. Vederi petition for writ of certiori. In that case, the Google asked (but the Supreme Court refused to answer):

Whether, when an applicant for a patent amends a claim to overcome the PTOs earlier disallowance of the claim, a court should (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held.

In my 2015 discussion of Vederi, I wrote that the following:

[T]he Federal Circuit has strayed significantly from Pre-1952 disclaimer law exemplified by cases such as Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942); Keystone Driller Co. v. Nw. Eng’g Corp., 294 U.S. 42, 48 (1935); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789–90 (1931); I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443–44 (1926); and Hubbell v. United States, 179 U.S. 77, 84 (1900).

Google relies upon many of these as well as additional cases for its argument. It writes:

The Supreme Court has long held that amendments made to overcome disallowance must be strictly construed against the applicant and in favor of the public. E.g., Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37 (1942); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789-90 (1931); Hubbell v. United States, 179 U.S. 77, 84 (1900).

In its decision in the case, the Federal Circuit considered prosecution history statements and actions, but was ultimately swayed by a claim differentiation argument. “We do not find, moreover, that anything in the prosecution history overcomes the presumption created by these claim differentiation principles.”  For me, an important question (that I cannot answer at this point) is whether Google’s legal argument is actually relevant to the facts-on-the-ground.  That is, would this shift in the law also shift the outcome of the case? That question is critical.

= = = = =

I’ll note here that the Federal Circuit’s recent decision in Columbia University v. Symantec appears roughly follow the suggestions outlined by Google here. That case, was decided by Chief Judge Prost along with Judges Dyk and Huges.  It is not surprising to me that those three judges reached a different result than the Cioffi panel of Judges O’Malley, Plager, and Bryson.

For this petition, Google added known Supreme Court and appellate litigator Daryl Joseffer to the brief. Joseffer also filed the Google v. Vederi petition. The hiring of Joseffer suggests that Google will push this case to the Supreme Court if it fails at the Federal Circuit.

Asserted patents in the case are U.S. Patent Nos. RE43,103; RE43,500; RE43,528; and RE43,529.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

155 thoughts on “Strictly Construing Amended Claims Against the Patentee

  1. What does it mean when there is a “disallowance of a claim”? Does this mean that the USPTO allowed a claim and then withdrew the allowance for that claim, or does this refer to a rejection of the claim?

    1. Neither. The patents were reissue patents. They were “disallowed” because the applicant amended the previously allowed claims in a manner that allowed them to be rejected again.

      It is a rather strange/ confusing way of putting it though.

  2. I acknowledge UH Grad’s comment at 2, but permit me to try to understand Google’s Petition question no. 2 – “strictly construed” – using a numerical hypo. Suppose the original claim was to a range up to 10. The Examiner’s BRI includes up to 15 which overlaps prior art. Applicant amends with a range up to 5. (Assume all values from 1 to 10 are described, but 5 guarantees an allowance.) The examiner states in a reason for allowance that the BRI is up to 10 but this does not overlap prior art and the claim is allowed.

    With the examiner’s statement, it seems reasonable to me that the claim could be construed to include as much as 10. However, in this case, the summary does not give the reasons for allowance. Thus, Google argues that the claim is strictly construed to be 5 or less. However, there was no disavowal of a range of 5 to 10, so the CAFC did not limit the range to 5 or less.

    In support of the CAFC, assuming the examiner is doing their job even if BRI is not stated explicitly, should not all allowed claims be give their broadest reasonable interpretation?

    1. It is a plain (and deliberate) fact that BRI in the Office is meant to be different than the scope of claims for a granted patent.

      1. anon,

        Such seems to be the case, but why is that so? Applicants are allowed to claim as broadly as the prior art allows. Both applicant and examiner have some expertise in the art and there was some meeting of the minds on a reasonable claim construction before allowance. If the prosecution history is clear, both the applicant and the public should have notice of what the claims cover. Why should a do-over be required in court?

        One excuse could be that the prosecution history is never clear enough to understand what was actually allowed. (The PTO had a Pilot Glossary Initiative, now suspended for reasons I don’t know.) Are there other reasons?

        1. Such seems to be the case, but why is that so?

          Not “seems” – is.

          As I recall, the reason for this is explicitly because the Office feels that if it examines to a larger target, then “for sure” the claim that gets through will be “more certain” to be valid over any possible “real” reading of its scope.

          Yes, you would be correct in thinking that such a view might very well mean that claims with legitimately valid scope will be “denied” allowance at the Office because the Office “version” is not truly accurate.

          This is due in part because the applicant’s “views” do NOT count as to a “meeting of the minds” when it comes to the allowance/rejection of the examiner (this is NOT a contract type of situation where such “meeting of the minds” has legal effect).

          As to the “Pilot Glossary Initiative,” that was d00med to F A I L from the start, because ALL language is inherently inexact, and for ANY glossary, which would be made up of words, you would STILL have the same exact problem of needing to use words to further “clarify” those words – turtles of words all the way down.

          1. “anon” ALL language is inherently inexact, and for ANY glossary, which would be made up of words, you would STILL have the same exact problem of needing to use words to further “clarify” those words – turtles of words all the way down.

            That’s an argument against using words to describe inventions. I’m pretty sure that’s not the argument you want to make.

            A more likely explanation for the failure of the glossary initiative is the river of tears cried by applicants who either arent up to the task of defining terms or don’t want to define terms for some super mysterious reason about which it would irresponsible to speculate.

            1. Actually it is the argument that I want to make, and your “spin” of my argument is just not correct.

              We HAVE TO use words to describe inventions and I do NOT make an argument against using words.

              Instead (you might want to take notes), we must deal with the inherent limitations of words, which means (gasp) that you cannot be as anti-patent as you want to be.

              Further, your offer of “a more likely explanation: is STILL a F A I L, because my original post is indeed correct, and you have (conveniently?) ig nored the actual point in front of you that the words used are (still – Oh Noes) words.

              You had to try really really hard to get this so really really wrong.

        2. Yes. BRI is needed to determine whether the claim is allowable over the prior art. Determining whether a claim is allowable over the prior art requires deference to the prior art. Reason being that applicant can make up a new word for an old thing. BRI provides a buffer against this.

          In court, the patent holder seeks to hold an infringer liable for a product created after the patent issued. This requires the claim language to be construed more strictly to prevent post hoc constructions by the patent holder to twist the claim language beyond what was accepted at the time of invention to encompass the infringing product.

          The prosecution history estoppel aspect only comes into play when the patentee tries to expand the claim language to capture the infringing product.

          So the “do over” is not necessary to objectively determine the meaning of the term. The patent holder is asking for the do over in many cases because it did not foresee how the infringer would be able to design around the patent.

          Of course, the opposite is also true. The infringer will try to redefine terms after the fact so they don’t read on their product.

          The prosecution history rarely has anything to say about these unforseeable issues. It focuses on how the patent can get around the prior art, not some unknown future device.

          1. Determining whether a claim is allowable over the prior art requires deference to the prior art. Reason being that applicant can make up a new word for an old thing. BRI provides a buffer against this.

            Talk about an odd way of putting things….

            What does “deference to the prior art” even mean?

            Further, BRI is not about guarding against “new words.” BRI applies no matter whether the words are “new” or not.

            You have a decidedly biased anti-patent view here. Rather than “The patent holder is asking for the do over in many cases because it did not foresee how the infringer would be able to design around the patent.” you should take a more objective view that claim construction aims to provide the full protection of what was invented in light of the (necessary) limitations of language. You give some lip service to infringers “playing the game,” but you still have an implicit bias against the patentee.

    2. I’m very confused why this should be a problem. (Aside from that you will get Aller’d half the time anyways instead of the Examiner finding art). If you amend down to 1-5, you get 1-5, because if that’s not the case you have essentially tricked the public, as some guy can read your patent, happily produce 6-9, and then magically be infringing? Now, we know that isn’t often reality, but it represents a real obfuscation of the purposes of patent law.

      1. Alex,

        If this were a process patent, you are right. The plain meaning of 5 is 5 with a penumbra to 6. I should have said my numbers should be taken as measures of broadness. (Thus, 1 is a very detailed specific embodiment and so on.) That is how the examiner can say the BRI of 5 ranges up to 10.

        Also, if this were a process patent, if one wants to cover up to 9, then one has to claim it. But in a process patent, the BRI of 9 is at most 10. In my hypo, the BRI of 9 could be 14 which reads on prior art.

        1. LOL – and this does not even broach the fun p0ke-in-the-eye of those who want exacting “objective physical language” because the moment you allow a range, you leave behind the actual claim language of a singular objective physical language description of a single invented item and instead of claimed an up-a-rung abstraction of a set of things.

          1. “you leave behind the actual claim language of a singular objective physical language description of a single invented item and instead of claimed an up-a-rung abstraction of a set of things.”

            Nobody that adopts the view of requiring objective physical structure objects to “leaving behind the actual claim language of a singular objective physical language description”. They only object to the WAY in which that is done in some circumstances.

              1. Oh I understand it alright. Indeed, they went on about it at some length in sculpture class (my one and only “fun” elective I got to take in school). I note that I understand it so well that I know why it gets you and yours into trouble with the lawl.

                1. You say that you “understand it” but that is merely a claim, lacking any evidence on the record here.

                  In fact, your statements evidence a lack of understanding.

                  Still.

        2. Further troubled, your BRI is NOT necessarily stopped at 10 – and may very much depend on what you discuss int eh specification (think, for example different scales such as logarithmic or sinusoidal between different values or heck, even the pH scale….

    3. This hypo is ridiculous. Why would the applicant amend unnecessarily beyond what was agreed as allowable? Also, under Phillips, the court would never get to the prosecution history because the plain language of the claim is clear. The claim covers 1-5.

  3. DC: I’ll note here that the Federal Circuit’s recent decision in Columbia University v. Symantec appears roughly follow the suggestions outlined by Google here.

    I’m not sure about the “roughly following” (although that’s a wishywashy term) but I do think the CAFC got it right in Columbia University. Specifically, when the specification is internally inconsistent, patentees shouldn’t be able to cobble together post-hoc explanations in court as to why one would “figure out” which of the contradictory positions is “correct”. The fact that an argument made in prosecution is consistent with one of the positions is irrelevant. An ambiguity introduced by an internally contradictory usage or definitions of terms may be properly addressed by a reissue that admits and fixes the error, and that’s about it.

    As a policy matter, the patentee’s inconsistent positions on the scope of its own claims should always be dealt with by the court in a manner which promotes the invalidation of the patent. Note that this is not simply a matter of “construing the claim” in, say, a narrower manner that leads to a result of non-infringement with respect to a particular defendant.

    When, for instance, a patent asserts in court that a hundred different parties are infringing its patent with their five hundred different products, if there is no way a reasonable person can reconcile that positions taken with the asserted claims then the patent should simply be chucked in the trash. The point is that the patentee must know what it’s claims mean when it brings suit. How can it be otherwise? The patentee can be wrong, of course, in which case the patentee may lose a particular case for one reason or the other. But the patentee can’t file suit with the belief that its claims mean vastly different things until a court informs it otherwise. That’s an effective admission that the claims are ambiguous on their face. Allowing patentees to behave like that without severe penalty (invalidation of the patent, at a minimum) is absurd, unrealistic, and unfair. But it’s the way things have been working for quite a while.

    The bottom line is that contradictory positions should always be held against the patentee, wherever and whenever those positions are taken.

    As for the specific questions posed by Google:

    1. When construing a patent claim, should courts generally consult the prosecution history as context for resolving ambiguities, or is prosecution history relevant only if it clearly and unmistakably disavows claim scope?

    Like the specification, the prosecution history is always relevant to understanding whether the terms are, in fact, ambiguous. If ambiguity is introduced during prosecution as a result of a statement made by the prosecutor which contradicts an earlier position, then the patent should be found invalid as indefinite, full stop. Proecution is not the time to be introducing new terms into claims or employing experts to first introduce specialized technical definitions of terms based on some passing statement in the specification about the relationship of the invention to the prior art. That information belongs in the specification as filed.

    2. When a patent applicant has amended a claim to overcome the Patent and Trademark Office’s earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant, as the Supreme Court has held

    The answer is yes but if the amendment introduces ambiguity, you don’t “resolve the ambiguity” by choosing the narrower interpretation of the claim. You find the claim indefinite and you kiss the patent buh-bye.

    1. Specifically, when the specification is internally inconsistent, patentees shouldn’t be able to cobble together post-hoc explanations in court as to why one would “figure out” which of the contradictory positions is “correct”.

      I fully agree with Malcolm on this point.

      1. The examiner did not read the Provisional Applications. If he had, he would have issued an objection to the specification based on the inconsistency. The claims were allowed given the meaning given the meaning the Examiner understood from the utility application alone and which the Inventors now claim in court.

        That boilerplate incorporation by reference was included without going through the provisionals with a fine tooth comb is unfortunate, but given the limitations of time and money should not be unexpected and should not invalidate the patent. The patent office and the courts can make as many mistakes as they want without penalty. Why are applicants expected to be perfect 100 percent of the time?

    2. As a policy matter, the patentee’s inconsistent positions on the scope of its own claims should always be dealt with by the court in a manner which promotes the invalidation of the patent.

      This however, is simply anti-patent rubbish.

    1. Find one of Google’s many incredibly junky patents, practice it and tell them you are practicing it.

      See what they do. The bonus is that you’ll probably get a little taste of how awesome it feels when someone asserts some ridiculous junk patent against you.

        1. PatentBob,

          Don’t you know (yet), Malcolm is on record as feeling that ALL software patents are – per se invalid or ineligible (whatever)…?

          And don’t you also know (yet) that Malcolm has a real self-l0athing issue because (supposedly) he is a patent attorney that helps clients create property – personal property at that – that is something that does not belong to the commons, and that people (gasp) will try to make money off of that property or (Oh Noes) actually enforce the property rights by bringing a lawsuit…?

          These are NOT new things, PatentBob. In fact, this month we all are celebrating the Decade of Decadence that Malcolm has brought to this “ecosystem.”

    2. I hope someone/some company advocates for a patent that squarely places the issue of computer-implemented inventions in front of the CAFC and the Supreme Court. A nicely defined set of encryption claims, for instance, where everyone agrees the encryption scheme is new and useful, but the claims only capture the sender or receiver. That is, the sender takes in data, performs an encryption algorithm on the data, and the output is encrypted data. Also, it would be beneficial if the claims also had a system, where the system claims weren’t rejected under Alice but the claims directed to the sender or receiver were.

      1. I agree.

        Especially when one considers that in the FULL cycle (encrypt and decrypt) – the end result is NO different than what you started with, and yet, MASSIVE utility has been achieved.

      2. “Also, it would be beneficial if the claims also had a system, where the system claims weren’t rejected under Alice but the claims directed to the sender or receiver were.””

        Good luck finding that purple squirrel.

  4. The Court would have to re-write Phillips to account for what it means to strictly construe amendments and arguments against the patentee.

    Exhibit Supply, Keystone, Smith, Hubble, and ITS Rubber are obviously the root of the Festo doctrine. Their discussion of “strictly construing” seems to have more to do with establishing the rule that the patentee is stuck with claim limitations, even if they were more than was necessary to overcome the prior art before the examiner. Little is said beyond that which would set a different legal standard for determining what falls within the scope of a disclaimer.

  5. All examiners are aware of this bs. I’ve had hundreds, if not thousands of amendments following my prior art rejections and I have yet to have a single one which was for the purpose of limiting because my art read on your scope. I’m amazed at your collective goodwill to repeatedly cut your clients’ valuable scopes purely to keep me happy and move prosecution forward when I apparently haven’t made a proper 103 rejection in my entire career.

    As I’ve said before this is the biggest problem with the MPEP right now – the MPEP is premised on the notion that the applicant can do only one of two options: Either argue against the examiner’s theory or concede the examiner’s theory and amend to moot the theory. 90% of arguments ignore the theory and I have yet to a see a single amendment that said they were amending to get around the prior art. This opens up unconsidered (to the MPEP) third and fourth options – one where the theory is not attacked but the scope is not changed and one where the scope is changed but not in a manner to get around the theory. When rejections are withdrawn in the third and fourth circumstances it creates a problem for the record.

    The easy solution, of course, is to simply put in requirements that mandate the two originally considered options – 1) require a statement that the amendment is for the purpose of getting around the rejection or it will not be treated as a bona fide response and 2) Summarily uphold all rejections for arguments not directed to the examiner’s theory of rejection (which ought to be occurring at the appellate level anyway, it just doesn’t occur below it)

    The harder-but-more-appropriate response is to allow a third and fourth option but modify the compact prosecution rules to allow a rejection to be asserted in response to any applicant action so long as the rejection has a causal connection with the applicant’s act. So if, for example, the applicant argues that the example in the reference does not teach how to do step A, and applicant doesn’t teach how to do A either, Applicant’s argument would trigger an enablement rejection, because now the record shows that there is no teaching in the art of how to do A. This gives the applicant the freedom to speak how they want, but holds them to the consequences of their speech.

    What clearly cannot keep happening is what happens now – where the applicant says something to get around a rejection but then comes back later arguing just the opposite.

    1. RG – I’m trying to follow your argument here. I’m in favor of Applicants being unable to amend to overcome a rejection and then later argue that the claim covers the thing that was cited. That’s plain logic. However, I do believe that many Applicants amend claims to simply accept subject matter that the Examiner is willing to allow – and this should be acceptable. This approach not only reduces examination cost for the Applicant with respect to that application, but also frees up the Examiner. The Applicant can file a continuation if they want to fight for the broader scope.

      1. “However, I do believe that many Applicants amend claims to simply accept subject matter that the Examiner is willing to allow”

        It certainly should be allowed. The cost savings of not fighting tooth and nail over every limitation are gigantic, especially when the difference is scope is practically non-existent like it is in many cases.

      2. We amend claims all the time, even when we believe the Examiner is completely wrong. Many clients will not appeal, as appeal costs $2,800 just in fees and takes 3+ years. When it was cheap to appeal, we appealed all the time. Now, it’s completely different.

        I just completed a Response where I thought the Examiner’s arguments were complete gar bage (respectfully). We nonetheless amended the claims and filed an RCE instead of appealing.

        Plus, the current rules for 103 are such that it’s very difficult to argue against such rejections. Even for two references that no one would ever combine, it has become impossible to argue against this. And the Pre-Appeal Brief Conferences have become such that if you have a 103 argument, you lose. They seem to let those go to appeal.

        1. The danger of amending is facing a(nother) clear case of patent profanity (read that as not-so-unnoticed-“unforeseen” consequences) if a decision comes down with any sense of undue harshness towards applicants that amend.

          Those pesky “scriviners” will still fight for the full rights of their clients.

          1. That is true. This is highly client-dependent. There are clients who fight tooth and nail against amendments. Most do not, though. And even I look at the extreme cost of appeals and the length of time it takes appeals to get through and wonder if it’s worth it.

        2. I just completed a Response where I thought the Examiner’s arguments were complete gar bage (respectfully). We nonetheless amended the claims and filed an RCE instead of appealing.

          Which is fine, but that act is an admission that the rejection is proper. When a prima facie case is made and you don’t challenge the prima facie case, the conclusion stands. This underlying issue (that you think the examiner is wrong and want to move forward yet preserve the challenge) is the flaw in the procedure I’m talking about.

      3. However, I do believe that many Applicants amend claims to simply accept subject matter that the Examiner is willing to allow – and this should be acceptable

        Well this is a special situation. I have no problem with another claim being put forward (either in a continuation or as a different independent) when allowable subject matter is identified. I’m not talking about allowable subject matter in my main post – that is directed to where the Examiner makes a rejection and the applicant responds in a manner that may or may not overcome the rejection and may or may not require further search.

    2. RG, by “theory,” do you mean “construction” of the claim language? By reading the claims on a reference, you implicitly construe the claims.

      As I have argued, we two searches, a first to flesh out the claim construction/claim clarification issues, and the second to search the claim as clarified.

      1. “RG, by “theory,” do you mean “construction””

        He means the grounds of rejection (claim construction + designation of parts in the ref).

            1. Mmmm, sort of. Maybe. Somewhat.
              Good answer 6.

              A claim construction is, in essence, a definition of a term that identifies the necessary characteristics of the thing being described.

              When an examiner reads the claim on a reference (and presuming that the Examiner specifically identifies the alleged teaching being relied up to teach a particular claim limitation — something some Examiners do better than others), what the Examiner has provided is not a definition but an example.

              The problem with definition by example (particularly when only a single example is provided) is that you can only guess as to which one(s) of the characteristics of the example are relevant.

              Consider a claim to a motorcycle and a bicycle is presented as an example of a motorcycle. They both can have spoke wheels, but is that a defining characteristic? They both can have gears and a chain (or equivalent) driving the rear wheel, but is that a defining characteristic? They both can have handle bars for steering, but is that a defining characteristics?

              Now, instead of a bicycle, I trot out the latest tricked-out Harley Davidson. I could easily identify a hundred design features on that Harley Davidson yet only a few could be considered defining characteristics of a motorcycle.

              Simply put, an example is a poor excuse for a claim construction — particularly in the first example in which the example (i.e., a bicycle) and the claim limitation (i.e., motorcycle) share many of the same features but one does not define the other.

              1. That post pretty much hits the nail on the head in describing what is wrong with the lethal combination of BUI and requiring only “notice” from the examiner as to the reasons for rejection.

                1. But does not the legal definition of “notice” carry with it the fact that the notice itself must be sufficient?

                  If, as “Why 112 when 101” points out (and you and many others have pointed out the NON-sufficiency of “BUI”), what the examiner claims as “notice” is not in fact legally sufficient, has the government met even the first step (much less any semblance of a FULL examination) of establishing a prima facie case?

                  On the other hand, does “notice” change after a “first pass” by the office and a mere challenge by the applicant?

                  Yes, the duty of persuasion never leaves the Office – but how low is that first hurdle for the Office, and in fact, and in deed set very low, that self same low level is just how easily met by the applicant? This last point merely reflects that if examiners want that prima facie level set very low for their “ease” of a first pass, that self same low level does NOT rise for the applicant to overcome, and in the end, in a FULL examination, such initial back and forth does NOT change what the Office must do in its examination – which is why the previous thread sorely needed to be amended and note the actual duty of the Office for the full examination cycle.

                  1. I agree. My own personal view of the “prima facice” requirement (i.e. the burden of production) for examiners is that any gibberish they clack out on their keyboards is sufficient to make a “prima facie” case. Because if my client still wants the patent, I have to respond and point out the errors in the rejection. And as soon as I do that, the burden of persuasion (i.e. preponderance) is on the examiner. If they want to meet their burden of production and establish “prima facie” cases with nonsensical gibberish, that’s fine by me. I don’t reward, coddle, encourage, or embolden such shenanigans by the examiner, so it doesn’t affect me. If their second OA doesn’t meet their burden of persuasion, I appeal. Plain and simple.

                  2. Alas,

                    FAR too many on these boards (both attorney [supposed and otherwise], and examiner) do not seem able to grasp the legal requirements of examination.

                    Surely, many such “teaching moments” have been lost, and if it takes patent profanity – such as might develop in this case – to wake people up, well, then that might be bitter medicine to take.

                  3. “But does not the legal definition of “notice” carry with it the fact that the notice itself must be sufficient?”

                    You’re quite right about this anon. But the bar is rather low for notice, if because of nothing else historical precedent and bureaucratic necessity. You might think that it’s easy to forsee and explain what the applicant will not understand in an OA but only a true master will get that right consistently.

                  4. Keep reading 6 – as low as the bar may be for the examiner to set it – that is the same level of “low” that it is for the applicant to step over it.

                  5. “that is the same level of “low” that it is for the applicant to step over it.”

                    Eh, idk bro. There are a lot of caveats in there. Like that you have to make a rebuttal and all that, just like we discussed the other day. I tend to agree with the posters in here that, when push comes to shove generally the situation on the ground is that the standard is a bit more high for the response. Even if it is supposed to be that low, which is debatable in the first place. You’re fighting the federal government here anon, don’t expect the deck to be stacked equally on each side.

                  6. Eh, idk bro

                    LOL – then you better think about it a bit more.

                    There is only one bar in play – there simply is NOT “two bars” in play.

                    That one bar necessarily reflects the single item.

                    You want that bar to be considered “really low”…? Then you must accept that the same low bar is there for the applicants.

                    Caveats have nothing to do with your attempt to have (somehow) two different bars in play.

                    Your “only a true master will get that right consistently” has nothing to do with the single actual bar in play.

                    Your “fighting the federal government here” has nothing to do with the single actual bar in play.

                    If anything, as David Boundy shared with the administrative law angle, the field would be slightly tilted against the federal government (if you wanted to have any disparity). Your “sense” of bureaucratic necessity is opposite of the APA – your job just does not exist for the convenience of you.

                  7. “Then you must accept that the same low bar is there for the applicants.”

                    Well, there’s nobody here with a gun to my head. Or to anybody’s head here at the PTO.

                    “Caveats have nothing to do with your attempt to have (somehow) two different bars in play.”

                    Sure they do, because that’s a rather huge caveat. You have to submit upon dem facts usually from dat reference or other evidence, and then all your evidence has to meet evidentiary standards just like ours does. And it has to be relevant etc. etc. And on and on and on, and so in practice that bar gets “higher”.

                    Now, to be clear, I’m rather generous to people on their responses myself. If they have something they want considered I’m happy to hear them out. But not everyone is so giving of their time and happy to have their decision making challenged.

                    “Your “fighting the federal government here” has nothing to do with the single actual bar in play.”

                    Bro, your OCD is flaring up. Just chill. I get what you’re talking about, but I’m telling you things that affect “the bar” in real life. I know you don’t like that they do, but reality is here knock knock knockin on your door. If you don’t want to hear about it and put your hands in your ears then fine.

                2. I don’t know man, after a few years of observation I think the issue isn’t so much the standard that is “required” and is moreso just the culture at the office. Promulgate an entitlement culture and you wouldn’t have quite so many rejections. Promulgate a culture of rejections and you will have people stretching out to the limits of what they are allowed to get away with.

                  1. I think the “culture” that is promulgated at the PTO is pretty clear: 1) reject everything (because there are zero consequences for doing such); 2) make as many final rejections as possible (because, again, there are zero consequences for doing so improperly); 3) cross your fingers and hope that when faced with the irreparably broken petitions process and/or the ridiculously long appeal process the applicant will, in an attempt to “work with” the examiner, buy the examiner first class passage on the RCE gravy train; 4) rinse; and 5) repeat. As long as there are zero consequences for getting it wrong, and in fact very nice rewards for getting it wrong, the system we have now is never going to be changed. Take RG for example, he’s not satisfied with getting two counts for getting it wrong, he wants even more counts for getting it wrong. He wants counts ad infinitum with no expectation of ever getting it right.

                    That’s the “culture” you have over there. Those of us trying to navigate the process are just doing the best we can given that “culture.”

                  2. “I think the “culture” that is promulgated at the PTO is pretty clear: 1) reject everything (because there are zero consequences for doing such); ”

                    That right there is what I’m saying. But before Dudas (and especially wayyyyyy back when like the 40’s, 50’s n 60’s) the culture was the arse opposite. There may have still been a lot of rejections back then, but the culture promulgated certainly wasn’t the same. They were legit trying to promulgate a culture of entitlement. As no doubt they should have been, as back then men were men and inventions were hard n fast inventions, not this mamby pamby etherreal nonsense in verbiage. But that’s the price we pay for letting business methods and comps into the patent system. The system as a whole overreacts.

                    “2) make as many final rejections as possible (because, again, there are zero consequences for doing so improperly);”

                    This one at least the people at the top are making somewhat small steps to remedy. They want, according to themselves, in a perfect prosecution, 1 non-final and an allowance where appropriate, and only a final if we really can’t get to an agreeable allowance. That’s supposedly their perfect prosecution. Of course, the official training guidelines don’t say that. It’s under the table.

                    “; 3) cross your fingers and hope that when faced with the irreparably broken petitions process and/or the ridiculously long appeal process the applicant will, in an attempt to “work with” the examiner, buy the examiner first class passage on the RCE gravy train; 4) rinse; and 5) repeat. ”

                    Those aspects are only in some AU’s like mostly in business methods and comps as far as I can tell. Which might even be where they belong. Of course there are some other few AUs that follow this nonsense as well, probably from bleed over from the business methods and comps having influenced policy.

                    “As long as there are zero consequences for getting it wrong, and in fact very nice rewards for getting it wrong, the system we have now is never going to be changed.”

                    I somewhat agree with you there man, but on the other hand there literally cannot be “huge” consequences for getting it wrong. The reason is simple, the training is insufficient to make people know how to do it correctly in every instance, and the people in charge (at least at middle management level), aren’t necessarily on their game enough and or courageous enough to make the correct call each time. It really does take no small amount of backbone to stick your neck out for a handfull of juniors each week, every week signing cases. Not only that, but there really are legitimate issues that come up with simple human failures in either the applicant explaining what they’re talking about to the office, or the office understanding what the applicant is talking about. It would be rather insane to come down too harshly from a management perspective, otherwise you’d have an office staffed by nothing by air with no “examiners” in sight.

                  3. “Take RG for example, he’s not satisfied with getting two counts for getting it wrong, he wants even more counts for getting it wrong. He wants counts ad infinitum with no expectation of ever getting it right.”

                    Well, something like that anyway. He’s a bit of a character it is true. Though frankly I do agree with him to an extent. And the reason is because the office’s staff can only, as a maximum, perform their jobs up to the training level that they have, and on the information that they have up to the point that they can understand it. And not paying people for work they did in accordance with the training level that they have is kind of bs. And that shizzle goes on all the time.

                    You can sit and say “oh well examiner x was wrong this time” “oh well examiner x was wrong this other time” ad infinitum, but frankly you’re probably asking too much from the average examiner.

                  4. AAA JJ: “I think the “culture” that is promulgated at the PTO is pretty clear: 1) reject everything …

                    6: That right there is what I’m saying. But before Dudas (and especially wayyyyyy back when like the 40’s, 50’s n 60’s) the culture was the arse opposite. There may have still been a lot of rejections back then, but the culture promulgated certainly wasn’t the same. They were legit trying to promulgate a culture of entitlement. As no doubt they should have been, as back then men were men and inventions were hard n fast inventions, not this mamby pamby etherreal nonsense in verbiage. But that’s the price we pay for letting business methods and comps into the patent system. The system as a whole overreacts.

                    6: I thing there was a time before Dudas where the Office was eagerly handing out business method patents that they could not prove were disclosed by the prior art, which was and still his hard, given the paucity of public disclosure of business methods in patents.

                    Since the outcry over State Street Bank reached a fever peak and the courts lead by the Federal Circuit in Biski struck back against the Rich court (Lourie demarks the era’s of the Federal Circuit as before and after Rich), the PTO itself has gotten the message.

                    It is a shame that that one case is caused the patent system so much damage. Business method patents are primarily responsible for the troll phenomena. It is not an accident that eBay came out the way it did because the patent of concern was a business method patent. The need to crack down on bad patents is behind all the new PGR procedures, especially the CBMs procedures. And of course, the current activities in Congress to further weaken the patent system is primarily motivated because of “trolls,” which in turn is a phenomena caused by business method patents and State Street Bank. What a tragedy.

                  5. I somewhat agree with you there man, but on the other hand there literally cannot be “huge” consequences for getting it wrong. The reason is simple, the training is insufficient to make people know how to do it correctly in every instance, and the people in charge (at least at middle management level), aren’t necessarily on their game enough and or courageous enough to make the correct call each time.

                    Are you referring to the fact that many SPEs don’t have any experience in the art in which they supervise? Also, strangely enough, you end up with more senior examiners who didn’t end up learning the state of the art as a whole, because their SPE/the senior examiner they reported to didn’t understand the art, etc.

                    Couple this with applicants who sometimes use non-standard terms for fairly common things, and you can see why keyword matching is common.

                    Way back, when I first came from academia, I suggested to my then-SPE doing art-based training, in a sort of seminar series, where everyone could research and do a presentation, but it never really went forward; maybe I was too new and he didn’t want to do anything outside the box yet.

                    The technical training is pretty good as far as the individual sessions address specific topics, but horrible as technical training. The problem is it’s so specific, and there are only a few sessions a year, so only a very very small amount of examiners could actually apply it in their art area. Again, this is why I suggested a seminar series.

                    The office needs 5-6 sessions dedicated to each art unit/group of art units per year, not 5-6 dedicated to each TC, along with other types of continuing technical education so examiners can know the art well enough to look at an application and say “Oh, this is just a standard X with [what the applicant views as their invention]”, or “oh, they’re calling this Y but it’s more commonly known as Z”. Many examiners get there in a few years, but some manage to stumble along in ignorance for quite some time.

                  6. “Are you referring to the fact that many SPEs don’t have any experience in the art in which they supervise? ”

                    That’s part of it. But not the whole of it. There are plenty of people that can sneak up to SPE without understanding evidence, or any burdens, or any of the “advanced”/”basic building block nobody pays attention to” issues that would stop a rejection from issuing. It’s hard for people to be “caught” with the current clear error standard (which is probably appropriate) and unless someone eventually catches them and corrects them they just keep on keeping on.

                  7. just keep on keeping on.

                    The Alfred E Neuman of examination gone wrong…

                    …and exactly why MORE emphasis needs to be on fixing the quality of examination.

                    .

                    But please, 6, respond with some baseless ad hominem as that will really make your “point”…

                    Not.

                  8. “…and exactly why MORE emphasis needs to be on fixing the quality of examination.”

                    You can’t just put “more emphasis” on it and expect any of what I just talked about to get any better. That’s because first of all, the people in charge, and that do the training, often themselves don’t much bother with these “advanced things”, especially on first action prior to applicant’s response. And second of all, there’s already a large emphasis on “quality” it just isn’t the things that we’re discussing and which you want looked at which are being looked at in the “quality reviews”. The administrators are more concerned with “bureaucratic correctness” so to speak, and “making a record” and “issuing correct patents” and “not issuing invalid patents” than they are with the day to day ho hum issues of prosecution before final decision. And it may be proper for them to be focusing on those things, as they are most likely the bigger quality issues compared to the ones we’re discussing.

                  9. Brosef I’m not throwing up my hands,

                    That is exactly what you are doing.

                    Take a moment and read what you are actually writing 6. You may be aiming to say something different, but everything that you have said proves my point.

                3. 6,

                  Your lack of understanding as to a singular nature of a bar is rather stunning.

                  Merely repeating your errors won’t make them any less wrong.

                  Your view of “this is reality, just accept it” and then turning around and playing the ad hominem game when I tell you how the law really is does NOT make your position “correct” or make any such “reality” safe from correction.

                  Quite the opposite, in fact. Shining a spotlight on such bad practices is even more necessary to avoid such “throw up your hands” acceptance of bad practices.

                  1. “Shining a spotlight on such bad practices is even more necessary to avoid such “throw up your hands” acceptance of bad practices.”

                    Brosef I’m not throwing up my hands, I have no personal power to give you what you want. If I was running an AU then I would do my best to keep things in line. I’m not going to pick up a picket sign and march in the streets about this nor would I go door to door to “police” examiners up and down the halls. Further I should notify you that, by and large I think the directors and upper level folks likely do try to keep an eye on such, but it’s the least of their worries on a day to day basis and just isn’t on the front of their plates of things to btch about. And at their levels you trust the people you have below you to not do such, even though it’s obviously happening behind people’s backs. It’s hard to root that sht out, hard to even spot it in the first place.

          1. “When the examiner reads the claim on a reference, he tells us his construction.”

            That’s funny. You must be an expert in the art of reading crystal balls.

      2. RG, by “theory,” do you mean “construction” of the claim language? By reading the claims on a reference, you implicitly construe the claims.

        It can, but its usually more than that. When we’re talking about 103 the theory is the graham procedure and rationale. When we’re talking about judicial exceptions its the alice procedure. When we’re talking 112(a) its more nebulous, but each time it is the prima facie case – evidence and reasoning as to why something should be rejected.

        Applicant’s tend to not attack the theory and instead point to other things, as if the rejections are based upon some sort of totality of circumstances test rather than whether a particular objective standard was met by the examiner.

        1. RG, Applicant’s tend to not attack the theory and instead point to other things, as if the rejections are based upon some sort of totality of circumstances test rather than whether a particular objective standard was met by the examiner.

          I’ve seen that, and you can be the practitioners who do not take into account the theory of the examiner and meet it head on, or amend, are never going to get their claims allowed.

          1. I’ve seen that, and you can be the practitioners who do not take into account the theory of the examiner and meet it head on, or amend, are never going to get their claims allowed.

            Except I have seen it allowed all the time.

    3. “All examiners are aware of this bs. I’ve had hundreds, if not thousands of amendments following my prior art rejections and I have yet to have a single one which was for the purpose of limiting because my art read on your scope. I’m amazed at your collective goodwill to repeatedly cut your clients’ valuable scopes purely to keep me happy and move prosecution forward when I apparently haven’t made a proper 103 rejection in my entire career.”

      Oh come on. You’ve made a few surely. But yes, there is a lot of “goodwill” that prosecution floats upon. It’s actually super easy to capitalize on that to go to a first action allowance if you’re smooth.

      1. “Oh come on. You’ve made a few surely. ”

        Lulz. RG’s never received a single amendment to get around the “theory” of his prior art rejection, you’ve never gotten a proper rebuttal, and every examiner I’ve interviewed has told me, with their hand on a stack of bibles, that they’ve never lost a single appeal.

        Y’all are hilarious.

        1. Well you haven’t interviewed me but I’ve lost 1.5 appeals. Won 2 or 3 though. Have one pending from a long time ago.

          And to be clear, I’ve certainly had a lot of rebuttals in my career, I just don’t get a whole lot of late. Once you know how to properly find facts its rare that they’d have some facts on the record that go against the rejection in my art, especially if you go out of your way to acknowledge most such facts in the action that you sent the first time like I try to do.

          I think probably the main reason why there’s so many presentations of evidence that might indicate the rejection should be removed or not have been made is that so many examiners don’t even know how to find facts. This being due to sending rejections having been turned into a game of limitation matching rather than a simple exercise in fact finding.

          1. ” This being due to sending rejections having been turned into a game of limitation matching rather than a simple exercise in fact finding.”

            Agreed. But that is the fault of PTO management, who’ve turned examination into that game: 1) do a word search of the terms in the claim; 2) take the first reference, or the first two or three, or maybe even four, in the search results and cut and paste those portions that have the “kwic” (i.e. key word in context); and 3) select the “authorized rationale from KSR” and reject everything. And of course, 4) get promotion and/or bonus.

            Makes it hard to take them seriously when they claim they want to have “world class patent quality.”

            1. Let’s not forget the conversations with 6 and his denial that he has to actually examine the entire application (as opposed to that “word search of key words in a claim”).

              While 6 is attempting to be “polite” here, he is very much part of the problem.

            2. “But that is the fault of PTO management, who’ve turned examination into that game: 1) do a word search of the terms in the claim; 2) take the first reference, or the first two or three, or maybe even four, in the search results and cut and paste those portions that have the “kwic” (i.e. key word in context); and 3) select the “authorized rationale from KSR” and reject everything. And of course, 4) get promotion and/or bonus.”

              O absolutely.

              It’s a question of language used to convey to the examiners what they need to do, and frankly I don’t understand how this farce of “limitation matching” ever supplanted “find some fcking facts” since that is what we’re supposedly supposed to be doing.

              There was a primary the maybe a year or so ago who literally told me that he knew that nearly all the 103’s we make in my art shouldn’t be made because practically none of it is obvious under the statute nowadays (saving some trivial combos). BUT this guy went on to literally tell me that in his view our job is to make it “look obvious”. Literally. I swear to go d. I nearly shat a brick.

            3. Also I should note on somewhat of a positive note, that all the higher up folks I talk to about this sort of thing are immediately on board with doing things properly. But then, it makes me feel like all this whole issue is just one big huge leadership failure. Not that it is necessarily the “fault” of our leaders mind you, the issue likely arises, in my view, from the size of the organization.

          2. This being due to sending rejections having been turned into a game of limitation matching rather than a simple exercise in fact finding.

            One’s ability to avoid limitation matching is directly proportional to the applicant’s ability to properly meet 112(a) and (b), which is significantly different in some tech centers.

      2. It’s actually super easy to capitalize on that to go to a first action allowance if you’re smooth.

        Sure, if your goal is to get cases out the door rather than, you know, examine.

    4. “Applicant’s argument would trigger an enablement rejection, because now the record shows that there is no teaching in the art of how to do A.”

      There’s a problem with that. 1. that “situation” doesn’t meet the standard for an enablement rejection and 2. the applicant swore that he believes one of ordinary skill could do it in the oath (supposedly this goes along with the swearing).

      1. In almost 16 years of practice I have never received even a single non-enablement rejection that was even close to supported by a preponderance of the evidence.

        Lulz.

      2. There’s a problem with that. 1. that “situation” doesn’t meet the standard for an enablement rejection and 2. the applicant swore that he believes one of ordinary skill could do it in the oath (supposedly this goes along with the swearing).

        Of course it does. There is a reference. There is an argument that the reference does not read on the claim scope. There is nothing in the specification to independently enable the claim scope. So the record as a whole does not support the conclusion that one of skill could have made the claim scope.

    5. “What clearly cannot keep happening is what happens now – where the applicant says something to get around a rejection but then comes back later arguing just the opposite.”

      I don’t think I’ve ever had that happen in my whole time here. If it does happen then prosecution is not being skillfully lead.

          1. If/When I leave the office I already know of a handful of cases I intend to write posts about to provoke discussion, if the good professor will allow it.

    6. The Non-final straight to final system plus expensive and slow appeal to argue the “theory” (if its claim construction/102/103 you are talking about) means that adding generally insignificant, but placating language is the way to go most of the time.

      And really, there is no fix to this so long as its one examiner construing, searching, and applying the art. And he gets no points when you “successfully” point out that its not obvious to fry a ham sandwich and cover it in jelly.

            1. Did the frying result in something unusual or unexpected when the item came out of the fryer? Did the grape jelly do anything unusual or unexpected, either by itself or as an “ordered combination”?

              A fried Lego sandwich topped by melted Monopoly pieces that tastes great and is good for you ought to get past KSR….

    7. “The harder-but-more-appropriate response is to allow a third and fourth option but modify the compact prosecution rules to allow a rejection to be asserted in response to any applicant action so long as the rejection has a causal connection with the applicant’s act.”

      This is nothing more than the same old tired argument from you that examiners should be given an unlimited opportunity to get it wrong and still get credit (i.e. counts) for the “work” they do getting it endlessly wrong, all the while generating fees (i.e. RCE’s) for the Office. Not gonna happen.

      “As I’ve said before…”

      Your proclivity, and passion, for tilting at windmills is well known here.

      “…this is the biggest problem with the MPEP right now…”

      Lulz. The fact that 90% of the “case law summaries” and/or “holdings” of the cases discussed in the MPEP are fantastically wrong, and are nothing more than the wet dream of the lifers who edit the MPEP, isn’t the biggest problem?

      Could’ve fooled me.

        1. Can you imagine? “This action is final. The final was necessitated by the causal connection of the examiner not doing the job correctly the first time, and being called out on it by applicant’s representative.”

          Sheesh.

      1. “Not gonna happen.”

        Oh be real, it already happens a majority of the time here in reality land.

        “The fact that 90% of the “case law summaries” and/or “holdings” of the cases discussed in the MPEP are fantastically wrong, and are nothing more than the wet dream of the lifers who edit the MPEP, isn’t the biggest problem?”

        Indeed that might be a slightly larger problem. Though I think you would be surprised at how much the much higher up folks, even the ones appointed rather than “lifer”, have on the content of the MPEP.

        1. Outside of Michelle Lee give me the name of even of the “appointed much higher up folks” who has any input whatsoever on the content of the MPEP.

          One name.

          One.

          Just one.

      2. This is nothing more than the same old tired argument from you that examiners should be given an unlimited opportunity to get it wrong and still get credit (i.e. counts) for the “work” they do getting it endlessly wrong, all the while generating fees (i.e. RCE’s) for the Office. Not gonna happen.

        No, it is an argument for administrative economy. I’m not suggesting that when examiners put forward a wrong theory they be allowed to change it, I’m suggesting that when Examiners put forward a correct theory applicant cannot avoid it.

        Suppose I construe a phrase in a particular manner and reject it. You come back and argue it should be in this second manner. That second manner would necessitate a 101 or a 112 rejection. Every court in the country would consider the 101/112 issues as ancillary to the construction issue, because the argument being put forward (on construction) does not necessarily impact the ultimate issue (allowance).

        So sorry basic procedure escapes you.

        1. Lulz. Are you John Whealan? He too was under the delusion that the PTO was an Article I I I court.

          So sorry basic law escapes you.

          1. Lulz. Are you John Whealan? He too was under the delusion that the PTO was an Article I I I court.

            That’s right, there’s rules for Article III courts. There’s no rules for the PTO other than rules the PTO itself promulgates provided that they 1) have procedural due process (which general appellate procedure meets) and 2) don’t conflict with a statute (which they don’t). So when you say “Not gonna happen” what you really mean is “totally could happen so long as you convince your superiors within the office.” I agree.

            1. “There’s no rules for the PTO other than rules the PTO itself promulgates…”

              I guess you’ve never heard of the APA.

              “So when you say ‘Not gonna happen’ what you really mean is ‘totally could happen so long as you convince your superiors within the office.’ I agree.”

              Certainly you, a random examiner, are never going to convince “your superiors” to give you credit for “work” that turns out to be wrong. If you think differently, please let us all share in whatever it is you’re smoking and/or drinking.

              There’s no doubt in my mind that if the PTO were to propose some “rules” that would allow final rejections including new grounds of rejection not necessitated by amendment(s) they would get shot down in the same manner that the proposed continuation rules got shot down.

              I think you are John Whealan. I remember going to a Bar Association of DC lunch meeting back when comments were being accepted on the proposed continuation rules and Mr. Whealan was the guest speaker. One of the attendees stated that proposed rules were beyond the PTO’s rule making authority, and would be subject to challenge. Mr. Whealan responded, “We’ve considered that, but we think we’ve got a 50-50 chance. So go ahead and take your best shot.”

              Lulz

              1. Certainly you, a random examiner, are never going to convince “your superiors” to give you credit for “work” that turns out to be wrong.

                Haha – first I’m not talking about “wrong” work. Second even if I were that would be nothing different than paying the losing attorneys in a case which, you know, happens.

                What I am talking about is that to maximize quality you need to be able to adapt to the arguments your opposition makes. Currently there is no mechanism by which an examiner can adapt.

                Here I’ll give you an example where there clearly was no “wrongdoing” – I have Application A, someone else has co-owned Application B. Applicant A responds to my non-final without amending. Applicant B (which is not my case and I have no control over) amends his claims to be obvious variants of mine, necessitating a Double Patenting rejection. Under compact prosecution rules I cannot make that rejection without going non-final, which doesn’t mean I make the rejection and just eat the lost work/pay, it means I don’t make that rejection. If you don’t see a systemmatic problem there you’re crazy.

                From that unlikely situation it is a short hop to see that I can’t control what Applicant A does either, and sometimes Applicant A does things which do not involve amending his scope (the only time I can assert new rejections under the rules) yet necessitate rejections. Because my options are “take a time/pay hit to maximize quality in a manner nobody else will notice” or “perform bad examination by not making the rejection” I will simply not make the rejection.

                1. You keep thinking I’m trying to “get away with something” here, as if I have some sort of personal stake in whether you get your patent or not. I get paid whether it’s a good rejection or a bad allowance, kid. I’m suggesting making changes so that we do higher quality work – so that bad claims and bad argument get rejected as they should. It’s not my company that has to navigate around an improperly granted scope; that would be your client’s problem.

    8. 2) Summarily uphold all rejections for arguments not directed to the examiner’s theory of rejection (which ought to be occurring at the appellate level anyway, it just doesn’t occur below it).

      LOL.

      Yesterday I received a final office action. In response to my arguments discussing the fact that the relied-upon features of reference B have no apparent connection at all to the relied-upon features of reference A, and that the first action utterly failed to explain even how the features would have been combined, much less why, the examiner’s entire response was this: “under KSR examiners are encouraged to combine art directed to similar subject matter.”

      How much time should I spend responding to this examiner’s “theory of rejection” to avoid having it “summarily upheld” under your new regime?

      The sad part is that I guarantee that when I point this out in a pre-appeal review, this n0nsense will be affirmed by this (primary) examiner’s supervisor. When I file a full appeal brief, the rejection might get pulled, but I wouldn’t bet on it.

      1. I get “responses” like that from examiners all the time. Despite MPEP 707.07(f)’s directive to the examiners to answer the substance of the arguments, when you argue there’s no evidence to support the conclusion that it would have been obvious to modify/combine the prior art, what you usually get back is, in total, “It’s one of the rationales authorized by KSR” or some such non-responsive bs.

      2. “Yesterday I received a final office action. In response to my arguments discussing the fact that the relied-upon features of reference B have no apparent connection at all to the relied-upon features of reference A, and that the first action utterly failed to explain even how the features would have been combined, much less why, ”

        I don’t know bro, I think you could do better than this, and rely on much better “tactics” in your arguing than merely “the references aren’t related”. I mean, no matter how right you are, even if you get them to agree with you that still doesn’t necessarily mean the rejection gets taken away. Indeed, I probably entirely agree with applicant’s arguments probably 70%+ of the time (often noting that they’re obviously presuming a certain claim construction that I’m not giving the claims) but that just makes it more embarrassing for everyone involved when the rejection must be, and is, maintained. Though it often does help move prosecution forward, it was a rather expensive blunder to not just discuss it on the phone.

        1. I don’t know bro, I think you could do better than this, and rely on much better “tactics” in your arguing than merely “the references aren’t related”.

          If I had argued merely that “the references aren’t related” I would have deserved what I got. But that’s not what I did, and it’s not what I said above. In fact, the references as a whole were in the same general area. The problem was that the matching words in reference A related to a component that has no apparent relationship to the component corresponding to the other matching words in reference B. It was the same nonsensical keyword-matching BS that I almost see every day.

          Though it often does help move prosecution forward, it was a rather expensive blunder to not just discuss it on the phone.

          Right, call this guy so that he can tell me he’ll allow the case if I roll all of the features of claims 2-9 into claim 1?

          I’m more than happy to call the examiner to discuss those situations where it is apparent that there’s a genuine misunderstanding, or a genuine disagreement, e.g., about exactly what the claims mean. But I’ve found that there’s not much point when the rejections are of the phone-it-in variety from an unsupervised primary sitting at home, where you can tell that the examiner doesn’t even believe his own BS. In those cases it’s exactly as AAA JJ tells it – they’re milking the cases for RCEs, and the only way you get any action is to elevate it.

          1. Lol ok.

            “Right, call this guy so that he can tell me he’ll allow the case if I roll all of the features of claims 2-9 into claim 1?”

            At least you got an indication of allowable subject matter to put on the record. You can work from there. And, as an added bonus, you can put in this “super claim” as you’re writing the after nonfinal amend to get the reason for allowance on the record. Can’t hurt and took you like 5 mins.

          2. “But I’ve found that there’s not much point when the rejections are of the phone-it-in variety from an unsupervised primary sitting at home, where you can tell that the examiner doesn’t even believe his own BS.”

            Yeah you’re probably right about that. But, as they say, “primary examiners get wiiiiide latitude”. Maybe if you were all like “so can I get your spe to sit with us and discuss what would possibly constitute a clear error in such a case?” Lulz, might be overly antagonistic, but who knows.

      3. In response to my arguments discussing the fact that (1)the relied-upon features of reference B have no apparent connection at all to the relied-upon features of reference A, and that the first action utterly (2)failed to explain even how the features would have been combined, (3)much less why, the examiner’s entire response was this: “under KSR examiners are encouraged to combine art directed to similar subject matter.”

        The examiner is right, you are wrong, and he will be upheld. Arguing they have no connection is not arguing they are non-analogous arts. If they are analogous then (1)it is always obvious to combine two things the art knows about unless the combination itself is unenabled, see making integral in MPEP 2144.04 and aggregation of MPEP 2143(A) (which was, surprise surprise, from KSR). (3)Combination is its own rationale (that is why the examiner doesn’t have to explain “why” there is a combination) and (2)I’m betting your spec doesn’t explain and your claim doesn’t limit the manner in which they are combined, which suggests (exactly as I pointed out above) that one of two things is true – either the “how” is known and the claim is obvious or your subject matter is unenabled because the “how” wasn’t known. The presumption is that acts in your spec are enabled, and if your spec doesn’t say how to do the combination the assumption is that the combination was previously enabled in the art.

        So, just as I said above, you have a maximum (depending upon your claim language) of one valid 103 argument – that the combination may not have been enabled – and that argument likely would mean that a 112(a) is proper if your argument was correct. Exactly the kind of issue I’m talking about.

        1. The examiner is right, you are wrong, and he will be upheld.

          You’re hilarious.

          I’m betting your spec doesn’t explain and your claim doesn’t limit the manner in which they are combined

          Of course it does. More particularly, the claim links the various features in a particular way, to achieve a particular result. This is the part that’s completely ignored by the Office Action, which simply finds matching words in various references. That’s typical these days, I’m afraid.

          Combination is its own rationale.

          That’s nonsense. If you’re saying that it is always obvious for the person of ordinary skill in the art to consider the teachings from two references that are in the same art, then fine. The question, however, is not merely whether it’s obvious to combine the teachings of the references but is instead whether it’s obvious to combine those teachings in such a way that you end up with the invention as claimed. Unless the claim is a mere aggregation (which any decent process or apparatus claim is not), simply appending one reference to another is not likely to yield the claimed invention except in the most trivial of situations, even if all the words in the claim are found within the four corners of your combined references.

          But go ahead, keep justifying your 103 rejections on the grounds that “combination is its own rationale.” Let me know how that first appeal goes.

          1. The question, however, is not merely whether it’s obvious to combine the teachings of the references but is instead whether it’s obvious to combine those teachings in such a way that you end up with the invention as claimed.

            The “in such a way” is the key language.

            If that “way” is no more than the way that anybody seeking to combine those functions would have went about doing it, and there’s no unexpected results or synergy from the combination other than “combination”, and no teaching away in the art, you’ve still got an obvious claim.

            Obviousness does not mean “this thing was not previously described.” That’s 102. Combining things for the first time is not an automatic route to overcoming 103.

            1. Obviousness does not mean “this thing was not previously described.” That’s 102. Combining things for the first time is not an automatic route to overcoming 103.

              Gee, MM, thanks for the tip.

          2. More particularly, the claim links the various features in a particular way, to achieve a particular result. This is the part that’s completely ignored by the Office Action, which simply finds matching words in various references.

            Then it sounds like your complaint isn’t “the relied-upon features of reference B have no apparent connection at all to the relied-upon features of reference A” as you originally said but instead that a limitation is not taught. Your argument should be that a limitation is not taught. That has it’s own problems, see below.

            The question, however, is not merely whether it’s obvious to combine the teachings of the references but is instead whether it’s obvious to combine those teachings in such a way that you end up with the invention as claimed.

            Again, that’s dependent upon whether you’re claiming a particular linking, which you’re just saying in this post right now, not your original one.

            If you claim a system “comprising element A and element B” and the art knows of elements a and b, that system (absent unexpected results) is always obvious, regardless of what a and b are and whether there is motivation to put them together, because combination is its own rationale.

            simply appending one reference to another is not likely to yield the claimed invention except in the most trivial of situations, even if all the words in the claim are found within the four corners of your combined references.

            This depends on what you mean by “most trivial of situations” but I suspect you’re thinking about it wrong based on your implications here.

            If you are getting predictable results using a known method to perform the combination, the combination is obvious (MPEP 2143, which says nothing more than what KSR does). If you’re not using a known method, your specification would naturally have to either teach the method or the method would be unenabled. Simply describing the configuration the elements are in (which is what most specs do) is either obvious (as known methods could get you there) or unenabled (as there is no known method and you haven’t taught it either). Because the office presumes that what you are claiming is enabled, when there is no teaching as to the method to achieve the combination the assumption is that the method is known.

            Most practicioners misunderstand this and think an examiner has to cite a teaching to anticipate the particular linking configuration (which is what you seem to imply). Textual anticipation is certainly the strongest method of showing why a limitation is known, but not the only method. It is sufficient under KSR and MPEP 2143 to show that known methods would get you to the particular configuration (this is what KSR calls the application of ordinary skill) and the existence of sufficient known methods is suggested by the Applicant’s failure to independently enable a method for achievement. Your statement implies either that obviousness is a series of anticipation rejections – it is not – or that obviousness requires a textual motivation – it does not. There are a vast range of unanticipated structures which are none-the-less obvious and evidenced in ways other than citing prior art. (I admit the proper thing to do here is to make an in-the-alternative enablement rejection, which would make the issue super-clear, but the office virtually never does because it wants to preserve its presumption that the Applicant is enabled – that does not change KSR or the law.) Otherwise you would be giving the applicant a patent purely because he picked a particular needle out of the haystack of things the art could already do rather than because of the only valid reason – because he taught the art something it didn’t know.

            Concrete example: If you add a limitation saying “Elements A and B are connected by a hinge set at a 43.2 degree angle.” And your spec simply says that A and B are connected by a hinge at a 43.2 degree angle (rather than explaining how to use a hinge and set it at a 43.2 degree angle, which nobody ever does) I neither have to cite a hinge nor the elements being at a 43.2 degree angle. It is sufficient for me to cite elements A and B and state that the hinge use and angle are known connection methods in the art, which is evidenced by the fact that you seem to agree the level of skill in the art is such that there doesn’t need to be a teaching of how to set a hinge at 43.2 degrees.

            Is it smarter for me to make an enablement rejection alongside this, so you can’t attack my statement of level-of-skill for my entirely reasonable 103 rejection by making the ridiculous doublespeak argument that despite you relying upon prior enablement I don’t have a document saying art could have set a 43.2 degree hinge? Yeah, but the office generally doesn’t. Can I cite a hinge and/or the angle (preferably in a similar context) to make the obviousness more explicit? Sure. Is it necessary to be upheld? No. Does the fact that there are dozens of other connection methods and hundreds of different angles mean that this particular means of connection suddenly became non-obvious? No, because the existence of other options is irrelevant to whether the claimed subject matter could be achieved with ordinary skill. Can you receive a patent because you happened to be the first one to set a hinge at a 43.2 degree angle? No, and especially not when your spec is premised on prior knowledge of hinge application. Not even when there is no prior motivation for a 43.2 angle in particular. The only time when you can get a patent for the subject matter of this limitation is when the art could not have achieved a 43.2 angle hinge prior to any teaching in the specification.

            Now again, that’s for predictable results, if there are unpredictable results its a whole new ball game. There patentability is premised not on teaching of how to create a new structure, but on the teaching of the surprise benefit of using that structure. A 43.2 angle hinge might be entirely obvious to do, but if its use results in unpredictable results from the system the subject matter of the claim is non-obvious even if the structure is an obvious structure to build.

            1. “Concrete example: If you add a limitation saying “Elements A and B are connected by a hinge set at a 43.2 degree angle.” And your spec simply says that A and B are connected by a hinge at a 43.2 degree angle (rather than explaining how to use a hinge and set it at a 43.2 degree angle, which nobody ever does) I neither have to cite a hinge nor the elements being at a 43.2 degree angle. It is sufficient for me to cite elements A and B and state that the hinge use and angle are known connection methods in the art, which is evidenced by the fact that you seem to agree the level of skill in the art is such that there doesn’t need to be a teaching of how to set a hinge at 43.2 degrees.”

              Good luck with that.

            2. Then it sounds like your complaint isn’t “the relied-upon features of reference B have no apparent connection at all to the relied-upon features of reference A” as you originally said but instead that a limitation is not taught. Your argument should be that a limitation is not taught. That has it’s own problems, see below.

              Actually, it sounds like you made a whole bunch of unwarranted assumptions about my claims, my specification, and the Office Action when declaring “the examiner is right, you are wrong, and he will be upheld.”

              Again, that’s dependent upon whether you’re claiming a particular linking, which you’re just saying in this post right now, not your original one.

              Right, I only implied it in my original post, by discussing in the first place my argument that there needed to be some suggestion from the prior art that the elements in Reference A have some connection to the elements in Reference B.

              Most practicioners misunderstand this and think an examiner has to cite a teaching to anticipate the particular linking configuration (which is what you seem to imply).

              I doubt very much that you know “most practitioners,” and I implied nothing of the sort.

              And your spec simply says that A and B are connected by a hinge at a 43.2 degree angle (rather than explaining how to use a hinge and set it at a 43.2 degree angle, which nobody ever does) I neither have to cite a hinge nor the elements being at a 43.2 degree angle. It is sufficient for me to cite elements A and B and state that the hinge use and angle are known connection methods in the art, which is evidenced by the fact that you seem to agree the level of skill in the art is such that there doesn’t need to be a teaching of how to set a hinge at 43.2 degrees.

              Uh, you might want to establish that “hinge use” is known or obvious as applied to elements like A and B. Note that this particular use of hinges is definitely not established by the lack of a teaching of how to set the hinge at 42.3 degrees. As has been noted by others, you’re more than a bit off with your theories regarding the complementariness of enablement and obviousness.

              Is it smarter for me to make an enablement rejection alongside this, so you can’t attack my statement of level-of-skill for my entirely reasonable 103 rejection by making the ridiculous doublespeak argument that despite you relying upon prior enablement I don’t have a document saying art could have set a 43.2 degree hinge?

              What are you talking about? I think you’ve got me confused with some imaginary patent attorney that you’ve created.

              To bring this back to earth, if you want to use your “hinge” example, here’s what happened in my case. The examiner found element A in reference A, and element B in reference B. Let’s go ahead and say that he found a hinge in reference C, or took official notice of a hinge – that’s not one I’d complain about. What he failed to do is explain why one would want to connect element A and B in the first place.

              But, as you say, “combination is its own rationale,” right?

              1. Because if one of ordinary skill in the art wanted to arrive at the exact same configuration as you’re claiming, that’s what one of ordinary skill in the art would do. :-)

                Most of us call that “rationale” hindsight, but according to many examiners hindsight is one of the “explicitly authorized rationales of KSR.”

                When I get rejections like that, I usually respond that it’s either an incredible coincidence that one of ordinary skill in the art would modify/combine the prior art to arrive exactly at what I’m claiming, or it’s hindsight. I let the examiner decide which.

                1. And then you get the boilerplate response that “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In reMcLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).

                  When I mention hindsight in an office action response, I’ve started preemptively citing In re McLaughlin myself, just to let the examiner know that I’m on to him. Does it work? I don’t know, but I don’t usually get the boilerplate after that.

                2. ^ Precisely the kind of incorrect claptrap that the office needs to do a better job of disabusing practitioners of.

                  No one is saying the subject matter is obvious because the art would engage in the unlikely act of coming up only with your device. The subject matter is obvious because the teachings of the prior art render a whole range of devices obvious, of which your subject matter is one slice.

                  If the art knows of 50, 100 or 10 million ways of combining something, the fact that you have selected one of the known ways to claim does not make your subject matter non-obvious. The only thing that makes your subject matter non-obvious (again, assuming it generates predictable results) is if it is not one of the 10 million known ways of doing it. You can’t ever receive a patent for telling the art to do something it was already capable of doing unless the doing of it results in an unexpected outcome.

                  1. You can’t ever receive a patent for telling the art to do something it was already capable of doing unless the doing of it results in an unexpected outcome.

                    I misspoke here and want to self-correct – it should not be “was capable of doing” but “knows how to do.” The distinction lies in teaching away – you may be capable of doing something but taught away from it, but knowing you can do something renders the doing obvious unless there are unexpected results.

                  2. “You can’t ever receive a patent for telling the art to do something it was already capable of doing unless the doing of it results in an unexpected outcome.”

                    Sure you can. I get them all the time.

                  3. “Hahahaha. Yeah Teleflex had a patent too.”

                    True. But they got theirs before the court decided their case. I get mine after.

              2. “Is it smarter for me to make an enablement rejection alongside this, so you can’t attack my statement of level-of-skill for my entirely reasonable 103 rejection…”

                He also does not understand that his “statement of level-of-skill” is just that: his statement. It is not a factual determination of the level of ordinary skill in the art supported by a preponderance of evidence, and is nothing more than his opinion of what the level of ordinary skill is. In other words, it’s nothing but bs.

                1. Hush now AAA JJ, or else you will have Random once again whining how unfair it is that he has to deal with attorneys that actually know the law.

                  😉

                2. He also does not understand that his “statement of level-of-skill” is just that: his statement.

                  That is true, but it is a statement you’re estopped from attacking, as your enablement relies upon the same level of skill.

                  The same person cannot say the “I don’t have to teach how to do something because the level of skill is at least X”, and then come back on obviousness and argue that the level of skill is less than X.

                  1. “That is true, but it is a statement you’re estopped from attacking, as your enablement relies upon the same level of skill.”

                    You’re hilarious. And exactly as I suspected, you think you’ve discovered some clever trick. Of course, you haven’t. You remind me of 6 several years ago when he claimed he had a fool proof method of examining which consisted of him taking Official Notice, or simply making a “statement” that a claimed feature was within the prior art and then demanding that Applicant admit or deny his “statement.” Even he finally acknowledged the ridiculousness of that.

                    You cannot resolve the factual inquiry into the level of ordinary skill in the art by making a “statement” that “the level of ordinary skill is X” and then arguing that applicant is “estopped” from “attacking” your “finding” or “conclusion” or “determination” or whatever it is you think you’ve resolved or done. (BTW, it’s clear you have no understanding of the concept of estoppel either.)

                    “The same person cannot say the ‘I don’t have to teach how to do something because the level of skill is at least X’, and then come back on obviousness and argue that the level of skill is less than X.”

                    That’s not what Applicants are doing. You’ve tricked your ownself into believing that’s what they’re doing. Basically, you’ve outsmarted yourself. You should stop that.

                    Let’s return to your silly “concrete example” of A and B and the hinge at the 43.2 degree angle, in which you provided us with this insight into your thought process:

                    ” I neither have to cite a hinge nor the elements being at a 43.2 degree angle. It is sufficient for me to cite elements A and B and state that the hinge use and angle are known connection methods in the art, which is evidenced by the fact that you seem to agree the level of skill in the art is such that there doesn’t need to be a teaching of how to set a hinge at 43.2 degrees.”

                    Yes, you do have to cite some objective evidence that discloses, or at least suggests, that the hinge and the angle, or some angle, is within the scope and content of the prior art. See Graham. And no, it is not sufficient for you to just “state that the hinge use and angle are known connection methods in the art.” As for your attempt to conclude that the hinge and angle are known as “evidenced by the fact that you seem to agree the level of skill in the art is such that there doesn’t need to be a teaching of how to set a hinge at 43.2 degree,” that is classic hindsight.

                    And if you think that you can establish, by a preponderance of the evidence, that a claim is not enabled by citing as “evidence” that Applicant “seems to agree” that there doesn’t need to be a teaching of how to do it, you’re mistaken. Again. If you want to establish, by a preponderance of the evidence, you need: 1) evidence; and 2) to do the Wands analysis.

              3. What he failed to do is explain why one would want to connect element A and B in the first place. But, as you say, “combination is its own rationale,” right?

                That’s right – you’re confusing the TSM test for a rationale for obviousness. The only thing required to find obviousness is a rationale for why it is obvious. A TSM is one option for providing a rationale. There are other options for fulfilling the rationale requirement. When you say “he failed to explain why one would want to [do it]” you’re suggesting that he has to provide a reason or a motivation for doing something. He certainly has that option open to him, but that is not the only mechanism by which obviousness can be found. The previous ability to combine together with a predicted result is sufficient to fulfill the rationale according to the Supreme Court.

                KSR was a case where there was no motivation for locating the sensor particularly where it was claimed. The court stated that “obvious to try” was a sufficient rationale. In Anderson’s Blackrock the evidence was that there was no motivation for combining the paver and the heater, since it wouldn’t do anything special – the court found that obvious for precisely that reason: the art was enabled to make the combination, and the combination did exactly what the art thought it would do. These are two non-TSM examples of obviousness.

                Let me help you out with something at the office level (it holds true for the actual law too but the MPEP does a particularly good job of explaining) – If you go to MPEP 2143, you will see a list of options for fulfilling obviousness. A TSM is *Option* G. That is because rationales A-F render modifications obvious even without a reason for doing it. TSM is certainly an easy, widespread option, but it is not the only one. One of the other options is Option A, which is simple combination, and assuming it is met it provides its own rationale for the obviousness. If examiner asserts (or can assert) A-F as a rationale, it will not get you anywhere to argue that there is no G.

                I know I can superglue a pencil to a table. I know how to do it. That act is obvious. The fact that there is nobody telling me, suggesting that I or motivating me to do it is irrelevant from an obviousness standpoint. Certainly if you’re going to admit they taught A and B and took official notice (which you have no problem with) of a hinge, the use of a hinge to join A and B is obvious unless the art was not enabled to use the hinge to join A and B absent some sort of teaching you gave them. If they needed your teaching THEN (as AAA JJ says) it would be hindsight to find it obvious. If they did not need your teaching it is obvious because, as the Supreme Court said in KSR:

                “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”

                Not the combination may be obvious, not the combination is obvious if there is a motivation for doing it, but the combination is obvious. An arrangement of old elements which perform their known functions is obvious.

                “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. ” – KSR

                1. One again, Random, you are NOT using critical thinking and are overplaying your belief system – which can only result in the “Genius or oops” paradigm.

                  MPEP 2143 deals with Prima Facie case – which is NOT the entire examination cycle.

                  “likely to be” is NOT “must be”

                  “support a conclusion” is NOT “mandates a conclusion.”

                  You are artificially constraining yourself into a black or white situation which just is not so. You are doing this because of your belieb system which is rooted FAR too much in your “if possible, then must be” predictable fallacy. The “logic” you use is the exact same “logic” of the “Genius or Oops” paradigm, which as I have explicated** cannot be the meaning of the words of Congress.

                  **the Flash of Genius being expressly rejected by Congress, and the “Oops” failing to be integrated into the “promotion” aspect of having a Quid Pro Quo in the first place.

                  1. “likely to be” is NOT “must be”

                    “Likely to be” is sufficient to be a rejection and to be upheld by the Board, as all I need is a preponderance. But to take your statement at face value – of course the applicant is free to come back with secondary considerations, but DanH isn’t suggesting the claim will ultimately be non-obvious because he has some secondary consideration to show – he is arguing that the original prima facie case is not made, and he’s arguing its not made because a motivation is missing. KSR directly considered that issue and came down on the opposite side. It’s entirely proper to cite to MPEP 2143 because *that is all we are talking about here*. Though it’s always swell when you want to jump in and take my conversations with others on some sort of tangent.

                    You are doing this because of your belieb system which is rooted FAR too much in your “if possible, then must be” predictable fallacy. The “logic” you use is the exact same “logic” of the “Genius or Oops” paradigm, which as I have explicated** cannot be the meaning of the words of Congress.

                    I do not say if possible it must be predictable, I say if predictable then obvious. The only thing a patent can be granted on is an improvement in the art, and the only way the art is improved is to teach the art something it didn’t know to begin with. Those teachings generally come in only two manners: Either you teach how to do something that couldn’t be done before, or you teach that something that could be done before would result in something different than what you thought.

                    As for who is right about the meaning of law – scoreboard.

                2. “KSR was a case where there was no motivation for locating the sensor particularly where it was claimed.”

                  I guess, like many in the PTO, you’ve never actually read the case.

                  The Supreme Court very clearly stated, “The District Court was correct to conclude that, as of the time Engelgau designed the subject matter in claim 4, it was obvious to a person of ordinary skill to combine Asano with a pivot-mounted pedal position sensor. There then existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance.” 550 U.S. at 424.

                  So no, it wasn’t obvious to combine the prior art just because “combination is its own rationale.” The Supreme Court never, I repeat, never said that. They said it was obvious to combine the prior art to address a need in the marketplace.

                  The Supreme Court further said, “The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.” Id.

                  One more time, one of ordinary skill in the art has to have a reason to combine (and/or modify) the prior art. That is clear from the decision in KSR.

                  “The court stated that ‘obvious to try’ was a sufficient rationale.”

                  Yes they did. But what you’re doing is conveniently ignoring their explanation of the “obvious to try” “rationale.” The Court said, “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” 550 U.S. at 421.

                  Did you notice that they said one of ordinary skill has a “good reason” to pursue the known options? Did you also notice that the requirement for an “obvious to try” “rationale” is that 1) there is a design need or marketplace pressure to solve a problem (for which you need objective evidence of) and 2) there are a finite number of identified (i.e. known, again something requiring objective evidence of), predictable solutions (i.e .a reasonable expectation of success)?

                  So one more time, no, the Supreme Court did not “hold” or “say” or “decide” in KSR that “combination is its own rationale.” Never happened. No matter how many times you repeat it.

                  1. So no, it wasn’t obvious to combine the prior art just because “combination is its own rationale.” The Supreme Court never, I repeat, never said that. They said it was obvious to combine the prior art to address a need in the marketplace.

                    I agree that with respect to SOLELY THE KSR FACTS the court had two issues: Would you combine the references and would you place the sensor in the particular place claimed. They indeed cited a motivation for combining the references – market forces (and you would just flip your sh*t if the office just started asserting that as a motivation with no market evidence like the court did as that is not a TSM for the inventor). They did NOT cite a motivation for placing the sensor exactly where it was claimed. None of the references had a sensor at a fixed pivot point, which is what was claimed. That, they said, was “obvious to try.” There was no suggestion that the sensor be placed exactly where it was, only one that had it placed in a different fixed location and another that taught a fixed pivot point. The particular placing of the sensor is an example of a motivationless rationale.

                    But KSR did not deal solely with the KSR facts – they went over and explained other rationales they had previously applied. Anderson’s Black Rock is a case where the sole evidence in that case was people telling the inventor his combination would not work. There was no motivation at all. But it was still obvious because the art knew of element A (the paver) and element B (the radiant heat burner) and the combination by mounting them together did not result in a synergistic new function. That is the exact same situation that DanH is claiming.

                    So no, it wasn’t obvious to combine the prior art just because “combination is its own rationale.” The Supreme Court never, I repeat, never said that. They said it was obvious to combine the prior art to address a need in the marketplace.

                    The Supreme Court also said that “Neither the enactment of § 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.”” That is all DanH is claiming – uniting old elements with no change in their respective functions. The fact that he nominates a particular manner for uniting just means he’s taking a fraction of an obvious scope.

                    But to the point you are implicitly arguing for here – Section IIB explicitly forbids a TSM as a requirement for finding obviousness. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation…”

                    Did you notice that they said one of ordinary skill has a “good reason” to pursue the known options?

                    That’s right! Look you’ve figured it out. There is a rationale as to why it’s obvious. They are specifically saying that while there is motivation for using the sensor, there is no motivation for any particular placement option, but applying trial-and-error when it has a good chance of success is rational. That is what trial and error is – a lack of motivation for preferring any one of the choices before you. If you had a motivation for selecting one of the particular options in the class you wouldn’t need to talk about using trial and error.

                    In office parlance, for the limitation:

                    an electronic control attached to said support

                    You cannot cite Asano, as that has no control. You cannot cite any of the sensor patents, as they do not attach it to a support. Are you suggesting (and I would love for you to say yes) that the office could say “this limitation is obvious because the market motivates the electronic control be attached to the support”? Where’s the evidence for that? Can I say that with respect to every configuration limitation? Instead the answer is “The Asano pedal is known, and sensors have known utility. Placing the sensor on the control is obvious because, while there is no motivation for placing it there, there are only a handful of places the sensor could be placed, and one of skill could apply trial and error to reach the claimed subject matter, therefore this limitation is obvious to try.”

                    Again, you cannot confuse a reason for why something is obvious for a motivation given to the PHOSITA. A motivation for doing something is a good reason it is obvious, but it is not the only reason something is obvious. I have no motivation for jumping into freezing water, that does not mean the act is not obvious – I know how to do it, and I know what will happen when I do.

                  2. You’ve read the case, but you “apply case law” like just about everybody at the PTO – badly.

                    “None of the references had a sensor at a fixed pivot point, which is what was claimed.”

                    Wrong. The court noted that “Well before Engelgau applied for his challenged patent, some inventors had obtained patents involving electronic pedal sensors for computer-controlled throttles. These inventions, such as the device disclosed in U.S. Patent No. 5,241,936 (filed Sept. 9, 1991) (‘936), taught that it was preferable to detect the pedal’s position in the pedal assembly, not in the engine. The ‘936 patent disclosed a pedal with an electronic sensor on a pivot point in the pedal assembly.” 550 U.S. at 408-09.

                    The court also noted that “U.S. Patent No. 5,063,811 (filed July 9, 1990) (Smith) taught that to prevent the wires connecting the sensor to the computer from chafing and wearing out, and to avoid grime and damage from the driver’s foot, the sensor should be put on a fixed part of the pedal assembly rather than in or on the pedal’s footpad.” Id. at 409.

                    The court further noted that “One such sensor was disclosed in U.S. Patent No. 5,385,068 (filed Dec. 18, 1992) (‘068). In 1994, Chevrolet manufactured a line of trucks using modular sensors ‘attached to the pedal support bracket, adjacent to the pedal and engaged with the pivot shaft about which the pedal rotates in operation.'” Id.

                    So there was evidence of prior art configurations of an “electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot” as was recited in claim 4 of Teleflex’s patent.

                    “They did NOT cite a motivation for placing the sensor exactly where it was claimed.”

                    Sure they did. The court said “The District Court was correct to conclude that, as of the time Engelgau designed the subject matter in claim 4, it was obvious to a person of ordinary skill to combine Asano with a pivot-mounted pedal position sensor. There then existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance.” Id. at 424. The patents they discuss on pages 408-09 of the decision are the “number of methods” they refer to in combination with Asano. (See the paragraph spanning pages 424-25 where the court states, “For a designer starting with Asano, the question was where to attach the sensor. The consequent legal question, then, is whether a pedal designer of ordinary skill starting with Asano would have found it obvious to put the sensor on a fixed pivot point. The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau put it would have been obvious to a person of ordinary skill.” See also the last full sentence on page 420 where the court noted that “Regardless of Asano’s primary purpose, the design provided an obvious example of an adjustable pedal with a fixed pivot point; and the prior art was replete with patents indicating that a fixed pivot point was an ideal mount for a sensor.”) So yes, all of the claimed features, including the attachment point of the sensor, were within the prior art.

                    “But KSR did not deal solely with the KSR facts –…”

                    All precedents are limited by their facts to the degree that there must be a sufficiently similarity between the facts of the case at issue and the facts of the precedent before the decision maker can rely on the precedent. You love quoting the MPEP, so feel feel free to review MPEP 2144.04.

                    “…they went over and explained other rationales they had previously applied.”

                    You can still rely on all of those other rationales from all those other precedents. Assuming of course the facts are sufficiently similar.

                    “The Supreme Court also said that ‘Neither the enactment of § 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art.'”

                    However the court in KSR also “cautioned” that “As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” Id. at 419. Yet you consistently ignore that “caution” from the court. I wonder why you do that.

                    “But to the point you are implicitly arguing for here – Section IIB explicitly forbids a TSM as a requirement for finding obviousness.”

                    I’m not implying that TSM is a requirement at all, you’re inferring that. Incorrectly. I’ve never said or argued that TSM is a requirement for a finding of obviousness.

                  3. Let’s revisit some more of the innocent claptrap that we practitioners have to do a better job of disabusing examiners of, shall we?

                    “If the art knows of 50, 100 or 10 million ways of combining something, the fact that you have selected one of the known ways to claim does not make your subject matter non-obvious.”

                    If the claimed way of combining something is one of 50, 100, or 10 million ways of combining something, you should be able to provide objective evidence that the art knows the claimed way of combining something. If you can’t provide objective evidence that the claimed way is known, the claim is not obvious.

                    “Simply describing the configuration the elements are in (which is what most specs do) is either obvious (as known methods could get you there) or unenabled (as there is no known method and you haven’t taught it either). Because the office presumes that what you are claiming is enabled, when there is no teaching as to the method to achieve the combination the assumption is that the method is known.”

                    If “known methods could get you there,” then by all means provide objective evidence of those “known methods” and some reasoning that “could get you there” (i.e. to the elements arranged as claimed). Pretty simple. But if the only “evidence” you have is some “statement” from the examiner that “known methods could get you there,” Applicants demand that the examiner “prove it” is not an admission or an assumption that the claim is non-enabled, nor is Applicant “estopped” from demanding proof. Your little “trick” of “it’s either obvious or it’s non-enabled” is not going to work. They are separate requirements of the law, and require separate proofs. The lack of proof for one requirement is not evidence of proof for the other, and vise versa.

                  4. you should be able to provide objective evidence that the art knows the claimed way of combining something. If you can’t provide objective evidence that the claimed way is known, the claim is not obvious.

                    Let’s not change the subject – I’m not suggesting that a textual anticipating example from a publication is not the best evidence, it clearly is. The question being posed here is what is sufficient to meet the obviousness standard. As I’ve said above, if the claim is joining A and B by a hinge at a certain angle (for predictable results), I definitely don’t have to teach anything other than the art knew of A and B and could apply a hinge, and it’s questionable whether I even have to teach a hinge (based on my example). Things I definitely don’t have to show:

                    – A hinge being used with either A or B
                    – A hinge at the particular angle
                    – A motivation for joining A and B (<—what DanH said was necessary)
                    – A motivation for using a hinge as the joining mechanism

                    That's because if the art is familiar with the use of a hinge, throwing A, B and the hinge into a room (i.e. Asking the PHOSITA to use things he knows of) would require only the normal application of the PHOSITA's knowledge and skill to generate a system where A and B are connected by the hinge at the specified angle, which is the definition of obviousness. The fact that it would also generate other systems where the hinge isn't used to combine A and B, or where the angle is different, is irrelevant. That simply means that other systems are also obvious. I do not need a motivation for setting the hinge at a particular angle so long as I have a rationale for explaining why the system is obvious and I do – the PHOSITA knows of all the pieces and knew how to combine them and the combination would produce the claimed subject matter, because one of skill who knows of hinges knows you can set the hinge at any angle, of which the particularly claimed angle is a subset. I do not need a particular motivation for the particular angle.

                    Now let's discuss the phrase "objective evidence" since you seem to be having trouble with it: I think you understand that if your Background section states "The art already knows how to use a hinge" I get to use that statement as an admission under the MPEP (See MPEP 2129). I get to use that statement even if it isn’t actually true because that is how admissions work. And further you are estopped from arguging against your prior statement. So if you say “the art already knows how to use a hinge” not only do I not need to cite prior art to prove that fact, the Board won’t even hear an argument that there is no teaching of a hinge – I will be summarily upheld on the grounds of your admission. That’s because you’re not allowed to talk out of both sides of your mouth.

                    When your specification discusses the use of the hinge and does not teach how to attach the hinge or put the hinge at the proper angle – it simply says to do it without teaching how – that is objective evidence of your client’s view of the level of ordinary skill of the art. It is functionally no different from directly stating that the art knows how to do it in the background section. I am allowed to rely upon that characterization of the level of ordinary skill, and that matters when I apply the combination rationale.

                    But Applicants routinely (and it is routine) want to break their view of the level of ordinary skill as soon as they can attack a rejection by doing so. For example – if the examiner doesn’t cite a hinge being used to combine A and B, the first thing the Applicant is going to do is say that there is no evidence that the art knew of a hinge or could use it. There is, of course, evidence – it comes from his own specification. The applicant wants one level of ordinary skill set for the purposes of his enablement (one where the art knows of a hinge and how to use it) and another for the purposes of obviousness (one where the art doesn’t know how to use a hinge).

                    Not all evidence comes from the examiner citing it. The Applicant speaks too, and his speech has a preclusive effect.

                  5. “None of the references had a sensor at a fixed pivot point, which is what was claimed.”

                    The ‘936 patent did not have a fixed pivot, it had a sensor at a pivot. The ‘811 patent said that the pivot should be at a fixed place to prevent wire tangles, which according to you only motivates someone looking at ‘936 and ‘811 to not put the sensor at a pivot. The ‘068 similarly suggested sensors in other places. Nobody had a sensor at a fixed pivot because the only fixed pivot was at Asano, which had no sensor at all.

                    Instead, the cumulative teachings of the prior art was that 1) sensors are useful and 2) sensors can be placed in a whole host of places, each of which has various benefits and drawbacks. The court reasoned (here’s that ole rationale bit) that because (1) sensors are useful, one would be motivated to use a sensor (standard motivation to combine) and that (2) because sensors could be placed in a whole host of places, it would be obvious to try all those places (obvious to try). I can’t help you quote all of the limitations that aren’t the one I quoted, because there is nothing from any of those three patent to suggest that a sensor be placed on the fixed pivot. The closest is ‘811 which motivates one to place them on a fixed surface generally, not on the fixed pivot specifically. It would be akin to me saying that it is obvious to use a hinge to join A and B, therefore the prior art motivates putting the hinge at a specific angle. That’s simply not the case – general motivations and specific motivations are different things.

                    Read the Federal Circuit opinion and you’ll see it expanded out there. The Supremes simply point out it’s wrong to say “obvious to try” isn’t a rationale, but the fed cir explains why there is no motivation, and therefore KSR is asking for it to be obvious to try, and therefore (according to them) it is non-obvious because obvious to try is not a valid attack. The Supreme’s didn’t say there was a motivation, they agreed there is no motivation and then reversed the fed cir on whether obvious to try is a valid rationale.

                    However the court in KSR also “cautioned” that “As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.

                    This is true, because the secondary consideration of teaching away was present in Adams. Again, we are in agreement on that. But this is not a question of whether the applicant can come back with a secondary consideration which ultimately tips the conclusion to non-obviousness, this is a question of whether the initial showing is a prima facie case.

                    I’ve never said or argued that TSM is a requirement for a finding of obviousness.

                    Let’s be clear about what you’re saying here: DanH said a 1.8 (and following) that a rationale authorized by KSR (for example, combination under MPEP2143a) is not enough, and that he needs a motivation as to why you would do the combining. I have said he is wrong about that. You have said at 1.8.1 that you have received responses that said that their facts fit a rationale authorized by KSR, and that it was “non-responsive BS.”

                    So let’s make our disagreements absolutely clear – Question 1: If I meet the rationale under MPEP2143a, do I also need a motivation for the combination?

                    Question 2: If I teach, in my example, elements A and B and the hinge, is that sufficient to meet step 1 of the rationale?

                    Question 3: For the second step, do you think I am required to cite the known method of combination, and if so, am I required to cite it with particularity? i.e. Can I just show a hinge and then make a finding that a hinge is used to join things? If not, is it sufficient for me to show a hinge being used to join things or must I show a hinge being used to join things at the specified angle?

                    Question 4: Do you think that a failure to teach, by the applicant, of how to use the hinge and set it to the proper angle constitutes evidence of what the “known methods of combination” are in the art at the time of filing?

                    Question 5: Even if the answer to 4 is no, do you think estoppel applies to prevent an argument that hinge use was not a known method of combination, given that applicant is relying upon that face for purposes of enablement?

                    Question 6: Assuming the answers to 4 and 5 are No, given that the prior art does not evidence that hinge use was known, and given that you are asserting that the applicant does not argue that hinge use is known, and given that the specification itself does not teach how to use a hinge, based on the record, why is a conclusion that hinge use was NOT known to the art not a proper conclusion?

                    Question 7: Assuming I make a finding that nothing in the record indicates that hinge usage is known to the art (i.e. I assume your 103 argument is correct) and therefore, based on Wands, your hinge limitation renders the claim scope unenabled, what evidence do you point to to rebut my enablement rejection, keeping in mind that arguments of counsel cannot replace evidence where evidence is necessary and that a mere statement of patentability (i.e. simply say it is enabled without pointing to where the enablement comes from) is a per se insufficient argument? Again, the only thing your spec does is state that it is done, it does not teach how to do it.

                3. And as anon points out, the Supreme Court also stated, “In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” 550 U.S. at 421.

                  So even if you provide 1) a reason to combine and 2) a reasonable expectation of success, the claim still might not be obvious. That’s because secondary considerations may provide evidence that outweighs the evidence supporting the reason to combine/modify and the reasonable expectation of success.

                  1. Of course, but DanH isn’t arguing secondary considerations, he’s stating the prima facie case is insufficient. We’re in agreement that if convincing secondary considerations exist he’ll be entitled to a patent anyway.

                4. RG: Let’s be clear about what you’re saying here: DanH said a 1.8 (and following) that a rationale authorized by KSR (for example, combination under MPEP2143a) is not enough, and that he needs a motivation as to why you would do the combining.

                  I’ve said nothing of the sort, and you’ve repeatedly mischaracterized my positions throughout this thread, so I’m pretty much done with you. Have a great weekend.

    9. “So if, for example, the applicant argues that the example in the reference does not teach how to do step A, and applicant doesn’t teach how to do A either, Applicant’s argument would trigger an enablement rejection, because now the record shows that there is no teaching in the art of how to do A.”

      This is by far your favorite silly little example. You’ve repeated it ad naseum here, but I can’t imagine that it’s actually an issue in more than a handful of cases out of the hundreds of thousands that are filed every year.

      I very rarely argue a lack of a reasonable expectation of success when traversing 103 rejections, and I can count on one hand how may “non-enablement” arguments I’ve made in response to 102 rejections.

      I suspect that you are consistently misinterpreting the arguments you receive. Arguing that a reference doesn’t disclose step A is not the same as arguing that the prior art doesn’t teach how to do step A. Those are different arguments. You really should review the arguments more closely to determine what is being traversed.

      1. “I can’t imagine that it’s actually an issue in more than a handful of cases out of the hundreds of thousands that are filed every year.”

        I know right? How often does that even come up? Maybe it comes up more often because in his grounds of rejection he uses bizarre language like “one of ordinary skill WOULD KNOW HOW to do/make x combination” or something. They say that sort of thing in the EU a lot. Then the applicant just says but but primary ref doesn’t mention how. Then he presumes that this means that the applicant is arguing that one of ordinary skill doesn’t know how to make the actual invention (which of course isn’t the case). That’s the only way I could see this coming up often.

        “I very rarely argue a lack of a reasonable expectation of success when traversing 103 rejections, and I can count on one hand how may “non-enablement” arguments I’ve made in response to 102 rejections.”

        That is par for the course no doubt.

        “I suspect that you are consistently misinterpreting the arguments you receive.”

        I could be that, but he’s most likely leading prosecution down this path if it is actually happening in his cases. How the office leads the dance often determines how the dance goes.

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