1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their reasoning.
2) Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101.
3) The practice of compact prosecution when 35 U.S.C. §101 rejections are made. This study will determine whether all appropriate rejections are being made in a first Office action when a subject matter eligibility issue is also identified.
4) Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections. This study will evaluate whether reasons for combining references set forth in rejections under 35 U.S.C. §103 are being set forth clearly and with correct motivation to combine statements.
5) Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description.
6) Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and treated.
http://www.uspto.gov/blog/director/entry/topics_announced_for_case_studies
6 –
Your post at 8.0 and pasted herein below for convenience raises a related question (or issue) in my mind.
“Guys, I have a question re prior art status. I have a ref with a date that is a month after my applicants filing date. However, the reference itself explicitly states that x feature I need was made at size z as of 2012 (that’s all I need from the ref). Question is, I can haz reference legit used in rejection?”
The issue, is a fact patter which I have seen many times.
A single reference is cited, we’ll call it “The Reference.” The Reference is a patent or patent application, which, as you know, has a background section, summary and detailed description section. The Background section discusses the prior art. The Summary and detailed description address something allegedly new and different from the prior art.
The rejection cites portions of the background in combination with portions of the summary or detailed description.
Yet the rejection is under 102.
Even if the citations are correct and relevant, it is improper to say that The Reference anticipates the claims because the same invention is not disclosed. The cited alleged invention does not include the elements the Examiner found in the Background and the prior art does not include the elements from the alleged invention of The Reference. It is only the claimed invention includes both.
The proper rejection here (I say) is a 103 based on a combination of the prior art (Background section) and the newer detailed description.
It matters because a 103 rejection affords access to the related arguments: teaching away, long felt need, even the inventor of the reference didn’t think to combine…. so not obvious.
So, how should I react to such a 102 rejection?
The scenario seems extremely analogous to a 102 referencing multiple embodiments. Sometimes proper, sometimes improper.
You note that the invention must necessarily be ‘different’ from the prior art/background. But the publication’s invention can incorporate elements from the prior art. Further, the background might disclose those elements most clearly because they are not a point of novelty for the publication’s invention. In such a case it would be reasonable to reference the background in a 102 rejection.
Best thing to do is get an interview…
It is a rare Examiner indeed that will commit to anything in an interview or withdraw a rejection and issue a new one.
Yes but you can better plan your response once you understand their position better.
“The scenario seems extremely analogous to a 102 referencing multiple embodiments. Sometimes proper, sometimes improper.”
Never proper. But good luck with that argument.
I see a lot of references that start nearly every descriptive paragraph with “In one embodiment … “, with nothing actually suggesting those embodiments are separate. Such embodiments do not actually define distinct embodiments and may read on the claims in combination for the purposes of 102.
Bob, I see a lot of that too. I see it in patents filed since 2000. Do you know where this began. Some PLI course?
Nope. Sorry.
Bob – NO disclosure that the embodiments are NOT combined or combinable is NOT disclosure that the embodiments are combined or combinable.
I disagree. I think it depends on the particular disclosure.
Are you hoping to be appointed to the CAFC? I only ask because you seem to like hard and fast rules which just make your job easier.
Yeah AAA JJ is mistaken on this one, like he usually is, likely because he’s not familiar with the situation you’re talking about. There are plenty of references nowadays that like to label things different embodiments when they’re just steps def that come after steps abc. And maybe the reference also had alternative steps def that might be an alternate embodiment to the original steps def. Happens all the time lately, it’s poor drafting is what it is.
No, I’m not mistaken. If the reference doesn’t describe the invention identically as claimed, the reference doesn’t anticipate. If the examiner has to combine embodiments, or whatever it is the reference is calling them, then it’s an obviousness rejection, not anticipation. I get these sh!tty rejections all the time. And I get them withdrawn all the time.
“And I get them withdrawn all the time.”
Never have withdrawn one, never will.
“If the examiner has to combine embodiments, or whatever it is the reference is calling them, then it’s an obviousness rejection, not antici”
That’s a big ol if.
“If the reference doesn’t describe the invention identically as claimed, the reference doesn’t anticipate”
Correct, but many “embodiments” nowadays aren’t actually separate embodiment “or whatever the reference calls them”. They’re all just parts of the whole. And whether it is a fair reading of the ref that they are together or separate is a factual question.
Right. And your post at 8 demonstrates the command you have of evidence and facts. Which is to say, not much.
Facts are a lot easier than evidence, as I have been trained vastly moreso on the former than the later.
“Facts” are a lot easier if – as you do – you simply make them up to suit your fancy.
(Reminiscent of your old “law is entirely subjective and in the mind” spiel).
Down below, you STILL have not accepted the plain facts as I have so selflessly laid them out for you.
“law is entirely subjective and in the mind”
Law is not facts idi ot.
Law – especially statutory law – is objective rather than subjective.
It does not bend as you would have it bend.
…and there be facts as well.
Also:
>>even the inventor of the reference didn’t think to combine…. so not obvious.
LOL. Good luck with that argument.
AAAJJ’s comment made me regret the empty snark of this comment. Sorry.
An omission of a combination does not look like evidence of anything but that omission. And taken to its logical extension, your argument would rule out any omitted combinations involving combinations with the prior art that the inventor would be familiar with… and suddenly everything is non-obvious.
Snark? I thought you were wishing me luck.
Wow. That is some serious BS. Omission of a combination does not look like evidence of anything but that omission? Unless you have some evidence and articulated reasoning that it would have been obvious to combine embodiments then you got nothing.
I never suggested that the omission of the combination itself would be enough for a rejection. You’re attacking a strawman.
Les is suggesting that the omission of a combination should constitute some sort of secondary consideration serving as evidence of non-obviousness. That is plainly not the current law.
“The issue, is a fact patter which I have seen many times.”
That’s interesting to hear, but your proposed situation is a tad different than the one I was really getting at in my post. The one you’re talking about is very similar though.
End part 1.
“The rejection cites … Yet the rejection is under 102.”
That happens sometimes where the background’s disclosure is implicitly carrying over into the detailed description because of laz iness on the part of the drafter.
End part 2
Implicitly carrying over? You funny. But not in the good way of being funny.
“Even if the citations are correct and relevant … [the] invention is not disclosed. ”
Some people find the same, some courts disagree and find facts the other way. It’s a factual question.
End part 3
“The cited alleged invention does not include the elements ….”
It is a highly fact dependent situation, obviously there are situations where there certainly is no implied carry over disclosure. And in those situations obviously it is inappropriate to find such as a fact.
“The proper rejection here … is a 103 ”
Yes, in some situations that is certainly so.
But, what you’re talking about is a purely fact finding issue, my issue was more about the sufficiency of the evidence to establish a date for x being disclosed.
End part 4
“So, how should I react to such a 102 rejection?”
If you truly think that the background’s disclosure is not implied to carry over to the “invention” portion of the spec, when the paper is read in context, then explain that and explain that it is inappropriate to find such as a fact. Further, you can go ahead and note why you would take issue with any such 103 combo being made. Or, if you (your client rather) notes that a 103 likely would issue anyway, then you just amend. And yes, an interview can help see why it is they think the disclosure carries over implicitly.
Rescued from being placed in the moderation zone:
Point out as you have done here that the 102 rejection is
f
a
t
a
l
l
y
flawed.**
I would then put forth a response to the rather obvious (but unmade) 103 rejection, although I do know some “cohorts” that would not do even that and force the examiner to put that on the record.
**see my comment below on the “veracity” – or lack thereof – of an admission of what would be prior art and the fact that such an admission ONLY can be held by the reference applicant (and is held against that reference applicant even if the admission turns out to have been made in error).
“force the examiner to put that on the record.”
Does that work? If all I did was say this is a flawed rejection and explain why I thought so, I would fully expect to receive a Final OA with the same rejection.
I’m I wrong? Do your cohorts get new non-finals with a 103 in scenarios like this?
Often enough that I was able to convince my “cohorts” to actually engage in a preventive manner (overcoming the resistance to anything “extra” on the written record – which is no small feat, given how “patent profanity” can be so problematic years down the road).
Granted, we were talking about cases where the 102 was so obviously “bad,” and that the (missing) 103 was so obviously what was what should have been made.
I see the parallel to your hypo – and the “pre-emptive” reply has typically yielded faster overall processing (all the examples that fit this scenario had favorable final results of grants). I do realize that each individual situation may be fact-dependent, but as a typical approach, when the 103 was the obvious rejection that should have been made, I have found that pre-emptively overcoming that rejection has worked well.
…and this is contrasted to my cohort’s lack of success – so to answer your post, yes, my “cohorts” DID see the 103’s that should have been made being made on the next round with the accompanying impacts on production time and sequencing.
“anon” The travesty of course is that things do not become 101 rejectable because of prior art.
I assume that’s not what you’re telling your clients unless you’re wishing for them to sue you for malpractice.
LOL – quite the opposite Malcolm – unless you want to volunteer an actual piece of law to support your “view” (and no, I do not mean you v0m1ting your typical feelings on the topic, but actual law dealing with actual prior art making something that prior to the prior art was patent eligible *** into something NOT patent eligible AFTER the prior art.
***and explicitly distinguishing elegibility from patentability.
Feel free to showcase your “legal prowess and acumen.”
I won’t be holding my breath.
feelings
LOL
It’s called “common sense” and “logic.” It’s actually a huge aspect of “the law”. No doubt that will come as a terrific shock to you, assuming you can pull your head out of the sand long enough to let the simple facts speak for themselves.
Your “argument” (such as it is) doesn’t get off the ground because the patent eligibility analysis doesn’t focus “things” but with claims that describe those things. That’s why a new fangled computing machine claimed in objective structural terms is patent eligible but a later claim to that same machine “modified” by the recitation of some ineligible functionality (“wherein said new fangled comp00ter is configured to manage bingo games”) is ineligible.
This isn’t too difficult for most people to understand. Of course, you’ve got to get all that toxic k00l-aid out of your system before you have a chance.
“It’s called “common sense” and “logic.”
No. It is nothing more than your “feelings”
(“Logic”…? I thought you reserved that for software – are you software…?)
I do not see in any other part of your ramlbings any sense of you showcasign your “legal prowess and acumen” by giving me what I explicitly asked for.
What’s wrong Malcolm – did I use words too big for you?
Let’s see you do more than your usual short script mumbling. Let’s see you use with actual law dealing with actual prior art that making something that prior to the prior art was patent eligible *** but because of that prior art is somehow not made into something NOT patent eligible AFTER the prior art..
***and explicitly distinguishing eligibility from patentability.
Use those short declarative sentences you are always on about.
Point out the item that would be eligible but for a specific piece of prior art.
Point out the prior art.
Point out why the prior art makes the item which if it had come first would have been patent eligible, not is somehow not patent eligible.
And do you best to point out exactly how – under the law this is a 101 and not a 102/103 matter (try NOT to kick up dust and conflate things).
Your shot at “showing off” – Let’s see you even try.
(malpractice my @$$ – you chump)
…the typical “running away” by Malcolm.
“Go figure Folks”
Guys, I have a question re prior art status. I have a ref with a date that is a month after my applicants filing date. However, the reference itself explicitly states that x feature I need was made at size z as of 2012 (that’s all I need from the ref). Question is, I can haz reference legit used in rejection?
Does the reference say that size z was disclosed/used publicly/sold/offered for sale/otherwise available to the public in 2012? If not, what’s your evidence that size z was in the prior art?
Yeah that’s what I was thinking about. Though it definitely is implying that it was used throughout the whole industry in 2012, and I only need a 14′ date. Still, it doesn’t matter as there was a hundred other refs to use so I just used one with a 1999 date or something.
Did the reference imply that, or did you infer that? My guess is the latter.
Just saying.
That’s because you’re a ta rd bro.
Says the ta rd asking the question to begin with…
???????
6 quips:
“ However, the reference itself explicitly states that x feature I need was made at size z as of 2012 (that’s all I need from the ref). Question is, I can haz reference legit used in rejection?
The short and direct answer is: No.
An admission (without more) of what is prior art in an item that you want to use as a itself a prior art reference for another application is not acceptable.
Such an admission (true OR not) IS permissible to serve as prior art in an application that directly makes such an admission.
Otherwise 6, we can have some schmucks filing willy nilly (after the fact) claiming all kinds of things have much early priority dates than reality.
How long have you been an examiner? Or are you just Tr011ing with this question?
“Otherwise 6, we can have some schmucks filing willy nilly (after the fact) claiming all kinds of things have much early priority dates than reality.”
Nah we couldn’t have that, because then we’d have to turn them over to justice if they lied to the office. It’s agin the law, and they would have even sworn to the truth of their disclosure. But the instant ref wasn’t a patent or app, it was just NPL.
Schmucks be believing what they want to believe and the oath be only that they believe what they be writing.
Further / the critical point remains: the answer remains No.
we can have some schmucks filing willy nilly (after the fact) claiming all kinds of things have much early priority dates than reality.
Which is t0tally different than some schmucky lawyer broadly claiming some logical “functionality” on a 30 year old programmable computer designed for the sole purpose of carrying out logical operations.
Oh but wait! This computer stored data remotely! And the content of the emails is about new DVD releases, which is t0tally different from baseball rankings.
But he’s a serious person. Super seriously concerned about “schmucks” in the patent biz. Sure he is.
You quite missed the point of law in your hurry to Wah, Malcolm.
They wouldn’t have to lie to the Office. They would just have to publish an article in The Journal of Copying Coders including the lie. You would then dutifully find it in your thorough search.
That is true, but I would have to consider the nature of the publication.
The “nature of the publication” in and of itself does not help you 6.
This is really not that difficult 6 – you need a bona fide properly dated reference.
Tell me this anon, if that ref was all you had, and your client stood to lose a million dollars (if you actually had clients), what do then?
Your question is neither clear, nor pertinent to the discussion.
His question is clear enough and pertinent.
He is asking what your position would be were the shoe on the other foot.
If you needed evidence of the prior art in 2012 to defend against an infringement suit and all you had was a 2014 article alleging the needed prior art as of 2012, would your position change.
I think 6 suspects that it would and that you would find precedent to support that position.
His question is not clear – am I the examiner? The one accused of infringement?
It is also not pertinent: the issue here is explicitly what can serve properly for a reference establishing timing and he wants to use a later timed reference for what that later timed reference merely claims as the the timing of prior art (rather than any actual timing of any actual prior art).
He simply cannot do that.
His question IS clear:
If YOU needed evidence of the prior art in 2012 to defend against an infringement suit and all YOU had was a 2014 article alleging the needed prior art as of 2012, would YOUR position change?
“The one accused of infringement?”
You’re the hypothetical attorney for the accused infringer ta rd. Your client stands to lose a million dollars. Does your position change or do you just pay up? Make it 10 million your client stands to lose since the cost of trial is a million anyway.
“I think 6 suspects that it would and that you would find precedent to support that position.”
Obviously so Les.
I find an actual properly dated reference.
And yes, it is that simple.
(Hint: if the improper dated reference cannot be backed up with a proper dated reference, then how good was the wrong dated reference to begin with?
All this is is 6 tr011ing for a L A Z Y “gee, I better choose poorly with his bad reference example” Br’er Rabbit invitation.
Silly rabbit – those tricks don’t f00l anyone.
“I find an actual properly dated reference.
And yes, it is that simple.”
You spend 500k trying to find that properly dated reference and fail. Do you pay up your 10 mil?
All this is is 6 tr011ing for a L A Z Y “gee, I better choose poorly with his bad reference example” Br’er Rabbit invitation.
Silly rabbit – those tricks don’t f00l anyone.
You don’t get to even try to use such a bad reference.
“You don’t get to even try to use such a bad reference.”
And what about you anon? Do you break all bad and save 10 mil or do you pay up?
6,
You already have my answer: I find an actual properly dated reference.
And yes, it is that simple.
What part of my response are you having trouble with?
Do you not understand the part of the reply as to the veracity of your post-dated reference? Do you feel that a large amount of money should permit you to believe in what amounts to fairy tales?
You are pursuing a painfully obvious loaded scenario.
Stop while you are behind – Silly rabbit – those tricks don’t f00l anyone.
Let me reiterate:
It is also not pertinent: the issue here is explicitly what can serve properly for a reference establishing timing
No amount of gamy “bribery” changes the basic question – and the answer.
All 6 is doing with his “would you take a BILLION dollars to try” is kicking up dust.
NO amount of money – no amount of “try” changes the correct answer.
As the reference isn’t even enough to meet the preponderance standard during examination, it’s not going to meet the clear and convincing standard in litigation. I would tell the client to get a reference with a date clearly in the prior art.
Thank you for a sage response. Tell me though, would it also be possible in a trial to have the author of the ref testify as to when x feature was publicly known in the art?
I assume it would. The author would have to present something more than his say-so or opinion as to when the feature was in the prior art, or I would expect an objection from the other side. If I was representing the patentee I certainly would object if the author was being submitted as a witness and all the accused infringer could provide was, “The author will testify as to when the feature was in the prior art.”