The PTO has announced implementation of “final rules” that govern the procedure of ex parte appeals before the PTO’s Board of Patent Appeals and Interferences (BPAI). A year ago, I commented on the rise of of “technical rejections” of appeal filings. Most of these involved issues such as failing to list non-appealed claims; failing to include an appendix page (even if you have no appendix); and the use of a section headings that varied (in form but not substance) from the required heading. In my 2007 sample of 720 appeals, I found that a full 25% had been rejected as ‘defective’ based on these formalities. [Link]
With this large number of defective briefs in mind, the BPAI developed the new rules:
A major objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board, along with the resulting delays in application and appeal pendency. The requirements of the amended rules are believed to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required, thereby minimizing, if not eliminating, a need to hold appeal briefs defective.
In reality, the new rules appear to significantly increase the number of formalities. This increase in formalities will likely increase the time required to prepare an appeal. The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.
Some changes:
- The most substantive change may be the requirement that non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI. “Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered.”
- Instead of filing a summary of the invention, the applicant must file “a claims analysis.” This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed.”
- 30 page limit for the Grounds of Rejection, Statement of Facts, and Arguments. (14 point font).
- A complete appeal brief will include each of the following (in the correct order):
- Statement of the real party in interest,
- statement of related cases,
- jurisdictional statement,
- table of contents,
- table of authorities,
- [reserved],
- status of amendments,
- grounds of rejection to be reviewed,
- statement of facts,
- argument, and
- an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section.
- new grounds of rejection are no longer permitted in an examiner’s answer,
the examiner’s response to a reply brief is eliminated, - petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,
- petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and
- a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.
Fun game 6K … however, you are always on the losing end.
“good to know that you know how to cheat the argument.”
The whole point is that “subject matter” does not have to refer to a single thing. The subject matter of a speech, a test, a book, a contract does not have to refer a single thing.
BTW: If a dependent claim is is always directed to exactly the same subject matter (or should be as you believe), why is that the examiner must establish the separate (un)patentability of the dependent claims?
You’ve never answered my question about the purpose of dependent or multiple dependent claims? They appear to be useless in your regime.
What about more than one independent claims? Are they OK? Do they have to recite exactly the same subject matter? If so, what is the purpose of them?
“While we’re talking about failing grammar I believe I should point out that if you’re refering to “the air” etc then you’re referring to it in the singular, though it may be made up of many parts.”
No … you aren’t too bright are you?
“One is the subject matter involving the whole of the study of geology, geometry and geography and one is the subject matter of granite, triangles and africa.”
Thanks for proving my point!!!!!
“the equipment”
A good example of a word that encompases many things within a singular word, but good to know that you know how to cheat the argument. “Subject “matter”” however is “What a speech, piece of writing, or artistic work is about: argument, matter, point, subject, text, theme, topic.” or “Matter under consideration in a written work or speech”. It is explicitely used in the singular to describe the the entirety of the work, or portion thereof, under discussion.
This is why the courts have held that indeed all of the stuff within claims is one big recitation of subject matter. Funny enough, even you can see this in your little timmy example, but despite it smacking you in the face you still cannot see the forest for the trees.
Here’s a quick clue for you since you forgot to buy one, timmy might say “geology, geography, geometry”, but when he then says, “more specifically we talked about granite, triangles, and africa” then he ceases to have been refering to the subject matter of “geology, geography, geometry” because they are two distinct topics with different boundaries. One is the subject matter involving the whole of the study of geology, geometry and geography and one is the subject matter of granite, triangles and africa.
And, further, if someone wants to say “I’d like to talk about Iraq, Iran, and Saudi Arabia and also about energy” and then says “Specifically, I’d like to touch on Oil, Coal, and Natural Gas” then you know that they were not talking about the subject matter of energy as a whole, and that they did not believe that they were.
Also, if you’re going to play, at least remember that we’re talking about dependents. I am not disputing the ability to make multiple ind. claims all pointing out the exact same subject matter, and the ability to shorthand them with deps.
As I’ve already told you, I’ve had this conversation already against more skilled players than you are and the right conclusion has already been reached for more reasons than I care to repeat for you. Go read the other topic, who knows, you might learn something, there were more people talking than me.
While we’re talking about failing grammar I believe I should point out that if you’re refering to “the air” etc then you’re referring to it in the singular, though it may be made up of many parts.
“Exactly how many subject matters does it refer to?” One your honor.
The mistake your house of cards rests upon. There is no requirement for “one” subject matter.
6K: “Little Timmy, what was the subject matter of your test today?”
Little Timmy: “Geology, Geography, and Geometry.”
6K: “Danm you, danm you Little Timmy!!!”
6K: “Senator McCain, what is the subject matter of your speech today?”
Senator McCain: “Well, on the straight-talk express today, I’m going to talk about the global war on terror and America’s need for independence from sources of foreign oil.”
6K: “Danm you, danm you McCain!!!”
“Let me ask you this PDS, do you make a habit of treating the word “the” in your applications as if it indicates multiple things? ”
Well, let’s see ….
the advice
the air
the equipment
the furniture
the garbage
the grass
the information
the music
oooops … you must have flunked basic grammar.
Tell me again when you want to play this game.
Hmmm, I didn’t even have to enter a code for the 2nd posting I thought it got caught by NTCP network error.
You cannot get around “the” before “subject matter”. It is impossible PDS. Not only is it impossible, you don’t even need to for your argument to continue. Eventually you will argue, as you should have started out arguing, that all of the subject matter claimed in the application is one whole subject matter (A is part of B, or even that A totally separate from B is still delineating a part of the “whole of subject matter” which is bounded by A and B together) because it is the claims that are the subject matter which the applicant regards as his invention. Don’t worry, once you figure out that is how the courts already interpret it and make that argument I will respond. Overall, I don’t see how your law school training could possibly leave you so wanting for insight. Then again, see discussion on Zurko …
If this were chess I’m about 2 moves ahead of you. Don’t worry, you already won, because it’s tradition for your queen to be picked up by an outsider and placed such that my king is check mated. Your move.
Let me ask you this PDS, do you make a habit of treating the word “the” in your applications as if it indicates multiple things? “The wheel” thus means all the wheels? “The attorney” thus means all attorneys?
You cannot get around “the” before subject matter, it is impossible. Your only hope is to argue that all of the subject matter claimed in an application is one whole subject matter. Don’t worry, I’ll address that argument when you finally see the need for it.
Looking past the blatant problems with taking the inventors parroting at face value we come to:
Third Question to client: “Are A and B the same subject matter?” Nope. “How many subject matters does 112 specifically tell us to claim?” One. “Is there any possible way to describe the subject matter in B by describing the subject matter in A?” Nope. “Hmm, then how are we going to particularly point it out? We seem to be beset by problems, but we will overcome them because it’s tradition!”
Quick aside, Lawyer to client: “Also, a quick question, does your property at home also include my property in the neighboring county?” Yup. “Ok, I thought so, glad we got that taken care of” No problem, I also own the PTO and the White House. “Alright I’ll see you in court for the appeal.” K.
Judge to attorney: “Does 112 refer to any particular subject matter which is to be claimed?” Yes your honor. “Exactly how many subject matters does it refer to?” One your honor. “Which one is it?” The one the inventor regards as his invention. “Does the statute specify anywhere that there is any hint of the possibility that there should be additional subject matters claimed in the application?” No your honor I cannot find any. “Given that there is only one subject matter which the application is to be claiming, how many subject matters should be claimed in a patent?” One your honor. “Then how many should this court rule that there are to be claimed in a patent?” One your honor. “I concur. And which subject matter does the statute indicate that should be?” The subject matter the applicant regards as his invention. “I concur. One subject matter, the one the applicant regards as his invention.”
PDS dies of a heart attack at this display of basic logical thought. Being judge would be such a sweet job, just ask questions, get answers and make decisions.
Cannot give up on a loser argument?
Using your two circles example. Circle A is entirely within B (or perhaps Circle A is partially within B).
First question to inventor: “Is circle A the subject matter that you regard as your invention?”
Answer by inventor: “Yup”
Second question to inventor: “Is circle B the subject matter that you regard as your invention?”
Answer by inventor: “Yup”
Judge to attorney: “Does 112 read ‘the one and only subject matter which the applicant regards as his invention’ or ‘the subject matter which the applicant regards as his invention’?”
Answer by attorney: “The later your honor.”
Judge to courtroom: “Cased closed, inventor prevails.”
6k is later shown to the door and the ROTW is awarded attorneys fee for having to put up with his circus act.
“Also, the chair could have been a piece of art, not meant to sit in, but looks like a chair.”
Even I, as a mean ol’ examiner, don’t take such an unreasonable interpretation of claims. It either is a chair or it is not a chair.
“Come up with a great new product, and if you don’t have patent protection, EXPECT someone to knock it off and try to sell it cheaper.”
I have no doubt of this, none what so ever PDS. What happens when they’ve got their product all ready to go and it turns out 3 years later that the exact embodiment was 102bed? That doesn’t necessarily make them just say “O noes, we r to not be having patent, STOP THE LINES!”. The only person here who seems to be suffering from extreme ignorance, and perhaps an extremely weighty head, is you. Bottom line is, if you lack a patent you actually have to compete with people. That, in and of itself hardly ruins a useful product line.
Or is it your position that competition discourages production? Here I was thinking this was a capitalistic nation, a principle based on the belief that competition is good.
Your chief example is products being made cheaper in China etc. You’re absolutely right, that’s a large problem. One that tariffs solve QUITE NICELY. Our ancestors possessed most of the remedies to today’s problems and yet we REFUSE to employ them.
Your next example is small business. I happen to like small businesses, but that in and of itself does not entitle someone to a small business. Even so, I agree, patents help to incubate small businesses. I believe it was Cave that brought up that point several times already. So, you have one thing justifying the current use of patents. Incubating small business. Man, what a noble and worthwhile cause. Somehow I think there are probably much easier ways to implement this idea of encouraging small businesses than patents.
“Unless the USPTO messes up, these patents wouldn’t issue anyway. The number of enforceable patents being reduced would be caused by inventors will legitimate inventions not be able to file because of the increased costs.”
Unless? You’re implying that invalid patents aren’t flying off the presses at a truly astounding rate even at 40% issued. The number of patents issued will decrease with any extra searching that takes place, no matter who does it. I agree that there might be some people that wouldn’t be able to file, but then again, if you can’t raise 5k dollars or do your own search, just how great is this idea of theirs? Remember, you can do your own search. Also remember, provisionals will still exist.
“Presuming that we take your example to show what you think it shows, you didn’t limit the claim one bit. Moreover, the question I’ve asked before, which you haven’t answered … “what is the purpose of these dependent claims?” Why would anybody write such a claim?”
You’re missing the key difference between our interpretations, as I’ve mentioned before, the difference lies in the definitions of “limitation” (and by association “limit”), and “claim”. If you care to look into the matter you will find that your interpretation, which is the commonly held one, is woefully off base in terms of the definition of the word and mine hits the nail squarely on the head.
Briefly, limitation = restriction = something that restricts. Now, couple that with what we are allegedly restricting, the boundaries of the subject matter which the applicant regards as his invention, and you see that it is an impossibility to “provide a further restriction” on the subject matter which the applicant believes to be his invention at any one given point in time. To put it in terms of “circles” of subject matter drawn on a page, like everyone likes to draw a claimed subject matter as, the applicant cannot at one point in time (the time of filing) believe that two differently sized circles are what bounds his invention. It is possible for him to believe that one circle or the other MAY be his invention, but that is not what 112 requires. 112 requires that the claims particularly point out and distinctly claim the subject matter which the applicant regards as his invention.
To put this in RL terms, just to humor your inability to understand what I am saying, one cannot believe that their land ends at the stake in the backyard AND believe it ends 20 ft. behind the stake in the backyard at the same time. It is impossible to believe that, otherwise the term “boundary” becomes meaningless. Keeping that in mind, IP shouldn’t be anything “special” in that you can just arbitrarily say that you believe your property is a chair and it’s also a chair with a cushioned seat. You believe it to be one thing or the other, in this case the chair with a cushioned seat, and you are merely trying to extend your property by claiming a chair. This is equivalent to knowing that your property ends at the stake in your backyard, and claiming that your property extends 20 ft beyond the stake when you go to tell the gov. about it. That said, if you really believed from the beginning that your property ended 20 ft behind the stake then that would be fine to claim. Just like if you really believe your invention to be the generic chair then that is fine as well, but it is impossible to believe your property to have two separate boundaries.
Now, if we simply interpret “claim” as a “description of the boundary” rather than the “boundary” itself, and “limitation” as relating to further restricting the description only, rather than the actual boundary itself, as everyday language seems to insist, then we come to an interpretation where 112 3rd and 4th require dependents to further restrict the “description of the boundary” (i.e. claim). Funny enough, this interpretation jives VERY well with the rest of the statutes. Perfectly in fact. Too perfectly some would say. Restriction practice gets back to what it should be, 101 is easily construed, etc. etc. All just based on having a proper interpretation of 112. Having the claims be “a description of the invention” rather than “the invention” makes the whole system cake compared to what it is now.
This is why I had several supporters speaking up in the other thread. Bottom line, the above dependent claim does indeed further limit the claim. It further limits it such that the description of the invention is limited in its ability to be construed different ways.
Why would someone write such a claim? Because they wish to tell people in no uncertain terms what they are claiming. They want to be “good” users of the system rather than “I don’t really want to tell you which of these is the subject matter which is my invention but one of them is”. That is, they want to be clear. But at the same time, they don’t want to have to clutter the first claim with 100 extra words, thus, it makes it possible to see what the subject matter claimed clearer is, very clearly, IF such clarity is needed by supplying it in a subsequent, separate claim. In other words, this is a statute that specifically allows people to use a shorthand for the benefit of all present in the process such that the subject matter is laid out in all of the claims to varying degrees of clarity in each. This stands in stark contrast to the system we current utilize where the benefit is all but strictly to the applicant by allowing the morphing of the subject matter which they are claiming as their invention.
“When you used the word consisting you excluded from your chair example all sorts of possible elements”
I’m aware, I did that on purpose to demonstrate what I was saying but you still didn’t get it.
“Question: What do you think about multiple (i.e., more than one) independent claim?
Another Question: What is the purpose of a multiple dependent claim?”
They’re fine if implemented just like the deps should be, to further clarify the subject matter, not to change it. I’ve forgotten what the purpose of multiples are, but I was told it a long time ago. I’ve only examined ~2 cases that even had some in them in my nearly 2 years here. I admit, I thought it was improperly used when I first saw it, but I looked it up and it was good to go.
PDS, I’ve seen a lot of people put up a fight against this interpretation, but none have given any real reason for misinterpreting the statute the way we have other than tradition. Tradition is the only reason the argument is a loser.
“Who are these people, besides pharmas, that would magically stop making better products through RD without an overly strong patent system? I’m not saying they don’t exist, but I am saying they’re rarer than you make out.”
Yet again, 6K evidences his EXTREME ignorance. I’ve got clients that prove you very wrong. Because you apparently haven’t worked in the real world, a vast number of the products people buy can be easily and cheaply made elsewhere (e.g., China). Come up with a great new product, and if you don’t have patent protection, EXPECT someone to knock it off and try to sell it cheaper. The following happens even to the big companies. However, if you are a small company whose company is based upon this great new idea, you don’t even have to worry about the overseas companies knocking you off. The big boys in your industry will take care of that.
“You, like many before you, don’t seem to understand that AQS’s will not get rid of the office’s obligation to search. You guys act like the search is something that magically happens for no real reason other than you pay for it. Wrong, the statute mandates it.”
Just like there is nothing in the statute that mandates applicant performs a search … but statutes can be changed. Also, this doesn’t prevent the USPTO higher-ups to say that examiners will do a search (but just an “update” search for any prior art that may have appeared between when the application was searched and when it is examined.
“Even if we accept your conspiracy theory your point was obvious from the beginning. AQS’s = less ignorant people submitting applications = less patents issued. Period. The number of enforceable patents is reduced.”
I don’t follow your logic. The reduction in “ignorant people submitting applications” should not decrease the number of enforceable patents since I assume that when you mean “ignorant” you mean people filing applications on anticipated/obvious subject matter. Unless the USPTO messes up, these patents wouldn’t issue anyway. The number of enforceable patents being reduced would be caused by inventors will legitimate inventions not be able to file because of the increased costs.
“I’ve explained this in previous threads. Ones that I believe you read. But since your memory is so bad, an example.”
It is more likely that I just ignored the post … as I’ve noted before, many times I’ve come across one of your diatribes and stop reading.
“Claim 1 A chair with 4 legs and a seat” “The chair of claim 1 wherein the chair is a piece of furniture consisting of a seat, legs, back, and designed to accommodate one person.”
You cannot even get your example right … let me give you a hint … it involves the word “consisting”
“What did I do? I just limited what a chair is without changing the scope of claim 1 by merely reciting what the definition of a chair is. In other words, I clarified exactly what I was talking about in claim 1.”
Presuming that we take your example to show what you think it shows, you didn’t limit the claim one bit. Moreover, the question I’ve asked before, which you haven’t answered … “what is the purpose of these dependent claims?” Why would anybody write such a claim?
“We, the American people, are under no obligation to provide for your best interests. Happy?”
Delusional again … get elected, then you can assert that you represent the American people. Until then, we, the people on this board, know that you are doing little more than representing your own selfish interests.
“I bet I could find a quote from 50 years ago that says “pshaw, 20 claims on avg? That’ll never happen for simple reason x”
You are on. Let me know when you found one.
BTW: When you used the word consisting you excluded from your chair example all sorts of possible elements … thereby changing the scope of the subject matter. Also, the chair could have been a piece of art, not meant to sit in, but looks like a chair. You’ve excluded that as well. How about a chair meant for a dog? a gerbil? a doll? You’ve excluded these as well.
Just because they work with claims all the time, an examiner thinks he/she really knows them …. not. Then again, a lot of patent attorneys don’t understand claim language at all.
Question: What do you think about multiple (i.e., more than one) independent claim?
Another Question: What is the purpose of a multiple dependent claim?
“It would be nice, wouldn’t it, if each application only included one narrow independent claim — a picture claim — and no dependent claims. Each day, you could spend a couple of hours working, a couple of hours at lunch and the rest of the day posting on PATENTLYO, but then you wouldn’t have that much to say (not that would stop you).”
I’m going to let you in on something that might astound you. I’ve had a few apps that had like 1-3 claims. One of them specifically amended it thus before examination. On every last one of them I’m more motivated to search for the actual invention, produce for them all results and all possible rejections than ones that are not done this way. I’m not kidding, I’ve spent more time on those than I have on many others.
“And those patents wouldn’t be worth much to the inventors so they would stop investing in R&D and filing patent applications, and you would only have to spend one hour instead of two working each day.”
Who are these people, besides pharmas, that would magically stop making better products through RD without an overly strong patent system? I’m not saying they don’t exist, but I am saying they’re rarer than you make out. Companies build better products to compete in the market place, not just for innovations sake. Or are you talking strictly about “think-tank” innovation firms? Has anyone bothered to measure how much such firms actually contribute that weren’t 103 obvious?
“I am not aware of any case law that has interpreted that particular phrase, or a similar phrase, in any context. ”
That’s because you’re more ignorant on the subject than I happen to be. I’d cite you the case but it’s more fun to act like all the lawyers on here and not produce anything to support my statements. Suffice to say for you though, they ruled that it means “any fing application allows it hur, congress didn’t really mean anything by that”. You might want to step away from your Star Trek for a bit so that you can realize that if a modern case is ever to get up there based on that then an examiner would likely be the one that would have to have produced it.
“hey … you’ve already got the search so no excuse for wasting time on a new search”
You, like many before you, don’t seem to understand that AQS’s will not get rid of the office’s obligation to search. You guys act like the search is something that magically happens for no real reason other than you pay for it. Wrong, the statute mandates it.
“AQS is about drastically reducing the number of enforceable patents.”
Even if we accept your conspiracy theory your point was obvious from the beginning. AQS’s = less ignorant people submitting applications = less patents issued. Period. The number of enforceable patents is reduced.
AQS’s are not just there to force an initial “tightening up of claims”, they’re there in many cases to make you realize on your own that you didn’t invent sht before I have to examine it.
“This is the whole purpose of the examiner …. to be the fact finder.”
And we’ve already been over this, capacity is overloaded. Gotta bring in people from the outside. AQS.
“You’ve yet to explain how the subject matter can be exactly the same and limited at the same time. ”
I’ve explained this in previous threads. Ones that I believe you read. But since your memory is so bad, an example. All you have to do is restate what is in the original claim in more specific terms. “Claim 1 A chair with 4 legs and a seat” “The chair of claim 1 wherein the chair is a piece of furniture consisting of a seat, legs, back, and designed to accommodate one person.” What did I do? I just limited what a chair is without changing the scope of claim 1 by merely reciting what the definition of a chair is. In other words, I clarified exactly what I was talking about in claim 1. You can argue that claim 1 is not limited to chairs with a back, but the definition of the word disagrees with you. I would give you more examples but they’re hardly needed.
I have no issue with people using deps to contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. My issue is with them using deps to contain a reference to a claim previously set forth and then specify a further limitation bounding different subject matter claimed.
“Stop using “we” when you mean “you” because there is nobody else making your outlandish interpretation. If they are, they are too embarrassed to make them public because, unlike you, they know how cockamamie and stretched these arguments really are.”
We, the American people, are under no obligation to provide for your best interests. Happy?
“will never occur for the simple reason of cost. ”
I bet I could find a quote from 50 years ago that says “pshaw, 20 claims on avg? That’ll never happen for simple reason x”
Another role of dependent claims should be considered in the light of the disclosure-dedication rule (if you disclose but don’t claim subject matter, the disclosure is dedicated to the public). If there’s any question as to whether something is dedicated to the public, a dependent claim can answer the question in the negative. This may be important for auxiliary aspects that the inventor doesn’t consider important at the time, but become important later.
pds, it’s time to ignore e6k’s comments. You already know what s/he thinks and that s/he’s wrong. You don’t need e6k to recognize that s/he is wrong. Just know that you’re right and get back to the rest of your life.
That said, I can give e6k one point regarding dependent claims. e6k’s argument is based on the clause “if the nature of the case admits.” I am not aware of any case law that has interpreted that particular phrase, or a similar phrase, in any context. So, until a case that depends on the interpretation of this clause gets before a judicial tribunal, the argument can be made. That being said, in the non-judicial tribunal of reality and practicality, the argument has failed.
Om. Live long and prosper. Peace and long life. I grok you.
“In other words, you’ve got to further specify, i.e. limit, what it is you’re talking about in the parent claim, but you must still be talking about the exact same subject matter.”
You’ve yet to explain how the subject matter can be exactly the same and limited at the same time. A claim to A, B, and C and a dependent claim to wherein C is C’ changes the subject matter the applicant’s regard as the invention. The subject matter no longer broadly encompasses C. Instead, the subject matter is now just to C’.
The problem with you is you just don’t know a loser argument when it smacks you in the face like a 20 pound dead, rotten fish. One would think you recognize the smell, but it appears that you have olfactory problems.
“What you don’t seem to get is that we have no obligation to make the system work for your best interests, we have an obligation to make a functioning system available to all. If your best interests continue to detract from the functionality of the system then you are well aware what will happen. Your methods of pursuing your best interests will no longer be accomodated.”
Stop using “we” when you mean “you” because there is nobody else making your outlandish interpretation. If they are, they are too embarrassed to make them public because, unlike you, they know how cockamamie and stretched these arguments really are.
” Don’t get me wrong PDS, I love me some good deps if you’ve included only important things (things that actually stand a chance of being patented if the ind falls) and there’s about 5 of them, and even up to around 20. Past that you’re just getting ridiculous.”
Sorry … you are the least important part of the system, the system doesn’t work for your best interests, it works for the interests of the people providing the benefit to society … the inventors. You are an (albeit imperfect) fact finder and a stand-in for the BPAI with regard to legal determinations. If you job was so danm important and fulfilling the USPTO wouldn’t be having the first year turnover problems that exist.
“Deps lead to WAY SLOWER examination, portions of the application which are trivial, or very complex, require the examiner to find a reference and make a rejection.”
Boo f’ing hoo. Tito … why don’t you get 6k a tissue as he is QQing all over the place.
“You may not be aware of this PDS, but there’s this little thing being mentioned here lately: information glut. You should look into it. It’s part of what is dragging the system down.”
QQing about the system now??? Examiners have been examining claims this way since before your daddy was a gleam in your granddad’s eye. In case you haven’t realized it, there is a lot more technology out there today than there was 10, 25, 50, 100, 150 years ago. I know you pine for the days of when buggy whips had their own art unit but wake up and smell the coffee (or Red Bull).
There are those of us who embrace the complexities because we recognize all the wonderful things that we are able to do because of them. I have this word processor that allows me to do things that I couldn’t even dream possible 25 years ago. For being a Luddite, you definitely picked the wrong profession.
“We want information in the form of disclosures, but you’ve got to put it into smaller, relevant, well organized chunks or you just end up needlessly glutting the office with information. Strangely, this is what 101 and 121 actually says to do, but nobody is listening.”
I cannot help it if you are easily confused and your reading comprehension stinks. Try reading some books … real books with real words and grammar instead of texting your friends all the time. Although I was destined to be an engineer because of my love and math and science, my love of reading is what enabled to become a successful attorney. Honestly, you really should read more.
BTW: What 101 has to do with anything you are writing about is a complete mystery to me (it is probably to you too, but that never stopped you from writing something). As for 121 (i.e., divisional applications), I don’t understand how this supports any of your arguments. What an applicant invents doesn’t necessary fall into the cute little cubbyholes into which the PTO likes to divide inventions. As such, the law recognizes that in describing one invention, an applicant may also describe another inventions.
“That needs to be kept at a minimum, not allowed to grow out of control into avg applications having 100’s of deps. 20 years at the same rate of growth we saw over the last 20 years will land us at what? 1000 deps on avg? 200 page specs on avg? There is a reasonable balance to be sought, and that reasonable balance is not inf.”
Oh please … there is a puddle on the ground from all your QQing. If you could transport your sorry self outside your little universe, you would realize that 200 page average-sized specs and an 1000 dependents, on average, will never occur for the simple reason of cost. Writing a 100 page spec with 100 claims is a LOT more expensive than writing a 15 page spec with 20 claims. Only a select few clients will ever be able to pay for that size of an application. Also, you seem to have forgotten that the USPTO imposes a fairly heft charge for the amount of claims over 20. Stop QQing about things that will NEVER happen and try to make arguments based upon reality.
“In any case, the article then talks about adding structure by filtering data from information. The PTO has a limited amount of filtering capacity. We’re going over that capacity. Either you put more money in the slot or you hire an outside filter. Thus, AQS.”
We’ve already gone over this … the people best trained and best equipped to perform a search is the EPO (err, I mean the USPTO). This is the whole purpose of the examiner …. to be the fact finder. If you aren’t finding facts, then let’s get rid of the examining corp. Also, where else are we going to find a group of 6000 searchers that are separated into particular specialties and many of which have had years to year their particular niche? If I hire a searcher, odds are that 95 times out of a 100 that searcher will have less experience than the examiner (in the art unit in which the application will be examined) in the application.
Let’s face it, since you are definitely not destined to be an attorney, the only reason you are pushing for AQS is that such a requirement will cause massive hiring by search firms, who will likely pay much better than the USPTO, which will cause mass defections from the USPTO to do the same work. Sounds like the independent contractors over in Iraq, we pay them much, much more than we pay the soldiers but they are essentially doing the same job. In Iraq, the ones getting screwed are the taxpayers who are either overpaying them directly or indirectly (via the contracts with companies who then hire the independent contractors).
Actually, even if the AQS gets passed, I suspect that it will be short lived for the reasons I just outlined above. Once examiners get wind of the higher production requirements (hey … you’ve already got the search so no excuse for wasting time on a new search) and the higher pay from the outside search firms, the numbers of defections from the USPTO will be massive. Also, considering the stress that will be placed on those that stay (and are forced to train an even less-qualified class … got to lower standards to increase the number of new examiners), the whole system could be in danger of collapsing in on itself. This, of course, is exactly what the people advocating the AQS are really looking for. They want to make it more expensive on applicants (less applications filed), destabilize the patent office (less patents granted), and provide a gold mine for asserting inequitable conduct (more patents rendered unenforceable). AQS isn’t about having better examination. AQS is about drastically reducing the number of enforceable patents.
“Wherein the box is a shoe box”
Mr. e6k
It would be nice, wouldn’t it, if each application only included one narrow independent claim — a picture claim — and no dependent claims. Each day, you could spend a couple of hours working, a couple of hours at lunch and the rest of the day posting on PATENTLYO, but then you wouldn’t have that much to say (not that would stop you).
But then it would be easy for competitors to design around and/or invalidate 99% of the patents which issued from those applications (at least for mechanical and electrical inventions, you will have to check with Mr. Mooney as to the “real” inventions — the chemical and biotech inventions). And those patents wouldn’t be worth much to the inventors so they would stop investing in R&D and filing patent applications, and you would only have to spend one hour instead of two working each day. And the U.S. would further lose its commercial and technological edge and its standard of living would drop further. And then you would not only lose your job as a patent examiner but be unable to find any work. And then the entire world would implode (or would it explode.)
Don’t forget that the inventors pay extra to have more than 20/3 claims examined. And those extra fees go to pay your salary.
I do appreciate the need for the PTO to improve its classification system and to develop/buy/license better searching software. But current PTO management says that the only way to improve the patent system is to burden inventors and not to improve from within. (Just imagine, Mr. e6k, if the only way you could search was by manually flipping through paper documents in a box, wherein the box is a wooden box, wherein the box is an elongated wooden box, wherein the box has an open top, wherein the box is housed in an opening in a cabinet and removable therefrom, wherein the paper documents in the box have numerical sequencing indicia and arranged in the box in a numerical sequence, wherein the box has sides, ends and a floor — I can’t stop myself, Mr. e6k)
I see you just got back to me.
“The subject matter is defined by the inventor, not by anybody else”
ORLY? Guess what is defined by someone else? What is protected under statute.
I am “construing this to be”: whatever the government says it will offer protection for.
“If it is the EXACT same subject matter, then how could it be described differently”
I have already given several examples. And they are limited in number, unlike the millions upon millions, perhaps infinite examples of other examples where the current system leads to. Strangely that fits right in with “where the nature of the case admits”, where dependent claims are restricted to where the nature of the case permits rather than any application ever submitted can do it.
“Instead, realism (6K … welcome to the real world) dictates that flexibility in claiming allows for different versions of the “subject matter which the application regards as his invention” to be examined so as to speed up prosecution. Dependent claims, when properly used, should speed the process of drawing a line between what is patentable and what is not.”
What you don’t seem to get is that we have no obligation to make the system work for your best interests, we have an obligation to make a functioning system available to all. If your best interests continue to detract from the functionality of the system then you are well aware what will happen. Your methods of pursuing your best interests will no longer be accomodated.
Reality dictates not only the one thing you profess, but two things. Not only do deps lead to a faster prosecution IF there is patentable subject matter within them and the applicant is willing to settle for it. Deps lead to WAY SLOWER examination, portions of the application which are trivial, or very complex, require the examiner to find a reference and make a rejection. If the time Textraexamine is >>>>>>>>>>> than the time Tsavedbysettling as it is when the deps start getting very numerous while being very complex OR trivial then Deps are no longer a good thing.
Don’t get me wrong PDS, I love me some good deps if you’ve included only important things (things that actually stand a chance of being patented if the ind falls) and there’s about 5 of them, and even up to around 20. Past that you’re just getting ridiculous. I’ve had about meh, 5 applications or so that have actually warranted having around 20 dependent claims. The rest were just bs thrown in like the kitchen sink and were often probably only there to Differentiate. The recent admission by a practicioner on the record that a claim was put in only to differentiate (rather than to claim the subject matter that they regarded as their invention) might earn the newly moved up dep a 112 under the ordinary interpretation.
“sometimes the rules/laws we work with reflect these complexities. Have you ever wondered why you haven’t been able to put your head around a concept that has been easily understood by scores of patent practitioners (agents, attorneys, examiners, and judges) before you?”
Orly? Exactly why do those laws need to reflect those complexities? Tell me how, exactly, Japan gets through their patent business without “reflecting those complexities”? You may not be aware of this PDS, but there’s this little thing being mentioned here lately: information glut. You should look into it. It’s part of what is dragging the system down. We want information in the form of disclosures, but you’ve got to put it into smaller, relevant, well organized chunks or you just end up needlessly glutting the office with information. Strangely, this is what 101 and 121 actually says to do, but nobody is listening. The ever increasing number of claims rejected as being not worthwhile for one reason or another is evidence that the office is necessarily being glutted with data.
For you:
Information Glut
Increase in the Amount of Information Available
The increase in the amount of information on the World Wide Web has been increasing at an exponential rate. A driving force in this rapid growth is the ability of anyone with access to a Web server to publish.
Inability to determine quality amidst the quantity of information
First, we need to discuss if this is really information that is bombarding everyone. Data does not equal information. One of the definitions of “information” is that it is new. The redundancy of the information that inundates the info-rich is astronomical. It is only information, in this sense, the first time they see it. The rest is, at best, data; at worst, “noise.” Furthermore, the information often arrives with no authentication as to source, validity of data, etc. “The mere fact that a resource is available on the Internet does not provide any guarantee of importance, accuracy, utility or value.” [3] And lastly, it comes undigested and as a hodgepodge. “I draw a distinction between the terms of data and information: data is raw, unfiltered, and generally not so useful to our small human brains. We need data to be converted to information before we can really use it. That happens by adding structure.” [4]
Every day I, and 6000 other examiners am inundated with “data” from examining slews of deps. Usually unusable pieces of sht that merely detract minutes/hours from the examination of anything that might happen to be inventive in the application, and worse, detracting from the time spent on the only claims that have a chance of passing to issue: inds. That needs to be kept at a minimum, not allowed to grow out of control into avg applications having 100’s of deps. 20 years at the same rate of growth we saw over the last 20 years will land us at what? 1000 deps on avg? 200 page specs on avg? There is a reasonable balance to be sought, and that reasonable balance is not inf.
In any case, the article then talks about adding structure by filtering data from information. The PTO has a limited amount of filtering capacity. We’re going over that capacity. Either you put more money in the slot or you hire an outside filter. Thus, AQS.
And for the last time PDS, I understand your position, ffs r tard stop saying “hur, you don’t understand what everybody else does”. I “get” what everyone believes quite well. And I also say that it is a less reasonable interpretation than a straight forward reading dictates.
Anyway, I’ll see you guys later, gotta work, break time is past over.
I meant to add “Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers” where the “specific” statement relied upon to justify making claims further limiting of the subject matter does not actually say “dependent claims must further limit the subject matter claimed” what it says is that they shall specify an additional limitation of THE subject matter claimed. Not claim a whole new subject matter. In other words, you’ve got to further specify, i.e. limit, what it is you’re talking about in the parent claim, but you must still be talking about the exact same subject matter.
“Are you trying to say that subassembly claims are not permitted?”
I presume you mean a claim that reads on a subassembly within an assembly which is separately claimed. Well that depends, does the assembly as a whole require that subassembly? If it does then you’d have to put that subassembly in for the whole to have utility right? If it doesn’t then claim away, but be warned that you may be talking about a different invention if that isn’t even required for the overall assembly invention.
“My argument is that anything resembling a proper grammatical analysis reveals that there is to be only one subject matter and that it is to be pointed out and distinctly claimed by every claim. I’m sorry I thought that was apparent on its face.”
Only apparent to you and you alone. Yet again you are reading “[only one] subject matter” into the phrase “subject matter.” Of course, I would be interested to see your “proper grammatical analysis.” Given your history of twisted grammar when posting on this board, this should be a hoot.
“THE subject matter may only involve one statutory category at a time.”
The subject matter is defined by the inventor, not by anybody else (i.e., “the subject matter which the applicant regards as his invention”). You are construing this to be “the subject matter which the USPTO deems to be one of applicant’s inventions).
“invent ONE of these and you may obtain a patent for it. Not invent a couple, or all of these and you may obtain a patent for THEM.”
Yet again, you are reading more into the language of the statute than is exactly there.
“Describe it in as many ways as you want so long as you are still describing only the exact same subject matter.”
If it is the EXACT same subject matter, then how could it be described differently? What about 37 CFR 1.75(c), which states “One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application.” If the dependent claim is “further limiting,” then the subject matter is NOT the exact same subject matter.
“Where prey tell does that say that a claim may change the scope of the singular subject matter under discussion? Answer, it doesn’t.”
See above. What exactly is the purpose of a dependent claim then? What did the drafters of 35 USC 112 have in mind when they added dependent claims? Come on … give us another one of your asinine explanations. Once one claim has identified the EXACT subject applicant regards as the invention, what is the purpose of another claim???
“Instead we have a statute that seems to acknowledge that they are not to be allowed in every case.”
And where is this again? You are a piece of work.
“it requires the statutes to reflect reality for all who would like to use the system rather than only a select few who want to pay someone to teach them just wtf shinanigans have been going on in the system for the last 100 years.”
Only you appear to have recognized these shenanigans that have gone on the last 100 years. Only you (and perhaps some other examiners) who are too lazy to examine all claims want the statutes to reflect your reality that you cannot seem to get your job done in the time allotted, which is why you are begging for relief.
Only you appear to be someone who cannot seem to grasp the concept that in a great many instances there is a difference between what applicant regards as the invention and what is a patentable invention and that to FOSTER INNOVATION, applicant shouldn’t be tasked with having perfect knowledge of the prior art or how an examiner may construe the claims in order to obtain a patent. Instead, realism (6K … welcome to the real world) dictates that flexibility in claiming allows for different versions of the “subject matter which the application regards as his invention” to be examined so as to speed up prosecution. Dependent claims, when properly used, should speed the process of drawing a line between what is patentable and what is not.
“And conforming to them as written would be just the breath of fresh air this system needs and also allow ordinary people, like my dad, sister, and the rest of my family, to better understand what patents are all about. Even if that means rewriting them to reflect what goes on.”
Sorry … life isn’t as simple as your mind. Life involves a lot of complexities and sometimes the rules/laws we work with reflect these complexities. Have you ever wondered why you haven’t been able to put your head around a concept that has been easily understood by scores of patent practitioners (agents, attorneys, examiners, and judges) before you?
Honestly, if you cannot understand this very basic concept, you shouldn’t be examining. In fact, you shouldn’t be working at any job that requires much independent thought.
I will admit that I only quickly skimmed your long comment. Are you trying to say that subassembly claims are not permitted?
“There is nothing that prevents 35 USC 112 from being interpreted as allowing an applicant can claim a portion of the subject matter which they regard as their invention.”
Hmmm, except for, oh, I don’t know, English.
Sorry, I ignored your argument. You’re totally right. Your argument is that the sentence can be read as broadly as it is currently read because there is nothing stopping it from being read in such a manner. My argument is that anything resembling a proper grammatical analysis reveals that there is to be only one subject matter and that it is to be pointed out and distinctly claimed by every claim. I’m sorry I thought that was apparent on its face.
“How do you reconcile restriction practice with your interpretation? ”
Restriction is the act of separating multiple inventions from one another within one application. THE subject matter may only involve one statutory category at a time. That is what restriction practice should be doing. Breaking off processes inventions from the product inventions etc. It is what, by statute, is mandated the pto be allowed to do. Yet even that has been made a mockery of by the courts. A more literal approach to interpreting the statutes eliminates 90% of today’s litigation and examination problems.
“So, is restriction practice now a means for the USPTO to create a 112 rejection?”
The inventions are seperated and can be pursued in DIV’s. Technically, according to 101 inventions cannot be “all of the above statutory classes”, but they rather belong to one at a time. But we’ve destroyed that portion of the law as well so we can make 112 2nd what it is.
A simple quick breakdown of easily construed patent law:
101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
I.e. invent ONE of these and you may obtain a patent for it. Not invent a couple, or all of these and you may obtain a patent for THEM. Patents are issued for single inventions directed to one of those categories. There are no plurals used on process, machine, manufactur, composition, or improvement and there certainly is no clause that supports giving a patent to more than one of them in one patent.
103 “If the difference between the subject matter and the prior art would have been obvious to a person having ordinary skill then a patent may not be obtained, and we won’t negate patentability by the manner you made the invention”.
If your sht is obvious then it’s obvious. If it’s not then it’s not. It’s a judgment call. Every. Single. Time. Thank you KSR, but you still haven’t done enough.
112 1st “teach us how to make it the best way at time of filing”
112 2nd “Conclude the spec with claims pointing out and claiming the subject matter which the applicant regards as his invention”.
Fin tell us THE subject matter that you regard as your invention. Not part of it, not some of it, tell us what IT is. Describe it in as many ways as you want so long as you are still describing only the exact same subject matter.
112 3rd “If your case should permit, though we don’t see how it would, then a claim may be written in dependent or multiple dependent form”
If you can figure out a way to point out THE subject matter in dependent form from an independent then go right ahead.
There’s a basic breakdown, that if adhered to strictly, boil down pretty much all cases to nothing more than a call of judgment to be made within a few days, cure the backlog, and protect IP in America. /bow /bow, thank you thank you.
“35 USC 112 also expresses recognizes dependent claims? Since a dependent claim changes the scope of the subject matter being claimed, then how is this acceptable in your interpretation of 35 USC 112?”
There is no requirement in the statute for a dependent claim to change the scope. Read this:
“A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.”
Where prey tell does that say that a claim may change the scope of the singular subject matter under discussion? Answer, it doesn’t. The only reason people interpret dependents to have to be further limiting is because of decisions rendered before the patent act was established. However, even given what we know the previous caselaw to have allowed dependents to do, we have to look at wtf “if the nature of the case admits” is doing in there since it is obvious that any case admits a claim to be written in dep form.
Bottom line is, dependent claims functions were determined by courts years before the patent act and their function was not clearly enunciated in amended 112 when they got shoved in. Instead we have a statute that seems to acknowledge that they are not to be allowed in every case. Probably that line is there because congress could tell the inventor doesn’t really believe that his invention is split up amongst 100 species nor broken down in the standard dependent claim heavy ways used today. He believes his invention to be an amalgamation of probably all the dependent claims and the ind. He might believe that one way of describing it might be in that abstracted compartmentalized manner, but what he really believes is his invention is the consolidated whole. This is of course to his own “peril”, but it is none the less how the statute seems to be treating the situation.
Basically what we have is a grand ol’ case of courts ruling that something (deps) were permitted, and then those rulings being jimmied into the statute later without regard for what doing so does to the rest of the statute, nor the abuses it would bring in the future. Standard congressional drafting from the time period. This is a more modern day, it requires the statutes to reflect reality for all who would like to use the system rather than only a select few who want to pay someone to teach them just wtf shinanigans have been going on in the system for the last 100 years.
“There is a difference between someone discovering that the government has failed to meet a certain requirement, and the concept of stare decisis et non quieta movere (stare decisis for short).”
Now tell me the legal phrase for when the applicant fails to meet a certain requirement. For now we can just use “Rejected under U.S.C 112 2nd bia bia”.
In short PDS, our current system is a mockery of the statutory words when read as they are instead of being read “in light of the history of patents” and the “(mis)interpretations of statute over the years”. And conforming to them as written would be just the breath of fresh air this system needs and also allow ordinary people, like my dad, sister, and the rest of my family, to better understand what patents are all about. Even if that means rewriting them to reflect what goes on. If we want a TSM, put it in the statute. If we want the statutory class requirement to be a joke, put it in. If not, put that in the statute. This is the same reason that they enacted the patent act in the 50’s. Time for a clarification.
Can you imagine the amounts of saved paperwork if we only interpreted the statutes thus? Paperwork Reduction Act compliance to say the least.
6K:
Your deficiencies are too numerable to easily count or list, but we can add statutory construction as to one of them.
“Well that’s strange, I don’t see a portion of the statute that says that they are to claim a portion of the subject matter which they regard as their invention.”
Like a classic examiner, you ignore my arguments and proceed to prattle on displaying your ignorance for all to see. There is nothing that prevents 35 USC 112 from being interpreted as allowing an applicant can claim a portion of the subject matter which they regard as their invention. Your interpretation is reading something into the statute that doesn’t exist.
How do you reconcile restriction practice with your interpretation? What if the “THE” subject matter involves a process, a device for perform the process, and an article made by the process. Once restricted, Applicants are no longer claiming “THE” subject matter, by your definition. So, is restriction practice now a means for the USPTO to create a 112 rejection?
Also, 35 USC 112 refers to “one or more claims.” If your interpretation was correct in that a claim had to be directed to “THE” subject matter (i.e., all the subject matter), then how can you have more than one claim? The first claim would have to claim all the subject matter. Any other claim, to be different, would have to claim something other than all the subject matter. How does that work given your interpretation?
35 USC 112 also expresses recognizes dependent claims? Since a dependent claim changes the scope of the subject matter being claimed, then how is this acceptable in your interpretation of 35 USC 112?
As to your Prof. Duffy example, you yet again evidence your ignorance. There is a difference between someone discovering that the government has failed to meet a certain requirement, and the concept of stare decisis et non quieta movere (stare decisis for short).
“because they only are directed to a portion of the subject matter.”
Actually I was referring to your bragging about how most claims aren’t really what the applicant believes to be his invention at all. But, we can go with this as well. So, now we see that deps are directed to only a portion of the subject matter. Presumably a portion of the subject matter which they regard as their invention. Well that’s strange, I don’t see a portion of the statute that says that they are to claim a portion of the subject matter which they regard as their invention. What I do see is a portion of the statute that says they are to claim the subject matter which they regard as their invention. In the singular. “THE”. Now we can go on all day as to whether a dep claims the same subject matter as the ind. but it is obvious that it does not, because according to you guys it is but a portion of that subject matter. That is not the same subject matter.
“It seems to me that the only person who is interpreting 35 USC 112 this way is you.”
It seems to me that the only person who said that BPAI judges were unconsitutional was Prof Duffy. His argument gained supporters quickly because they liked it “omg the gov is doing something illegal and I might benefit from them having done so OMG!”. Of course, if you embrace my position, you lose out. Horribly. Only the most honest would care to read it in such a way. And I have had more than one person say they agree, so it’s not ONLY me. I can assure you the layman agrees with me, and that is whom the law imho, should endeavor to be written for. If they want it to say some ridiculous malarky about how you can claim just a portion etc. then they should write it out in plain english for all to undeniably understand without having to be taught about it.
Oh, and a quick reminder, the reason they’ve read it differently was because of what it was written to encompass. Funny though, the justifications for writting it are all arse backwards now. See previous threads.
“I don’t know.”
I don’t know either, but at least they’re doing something instead of sitting on their hands saying “I wish”. That sht is RL, it takes money and will to make your dreams come true. And I know you patent attorneys have both, so how about putting it to a good, not completely, but partially self serving use for once? Instead you’d rather quibble about rules trying to deal with the symptoms of the problems rather than attacking the problems. I’ll go so far as to agree with you if you say that examination time is part of the problem, along with the practice of intentionally overclaiming. Why is it part of the problem? Because bad patents get through more often with less time spent. Then this along with overclaiming lead to the public humiliation that spurs the q=rrr which cannot be good for the backlog as so many enunciate. Then again, spending more time per app per se can’t be good for the backlog either. Overall the system cries out for the balance that used to be, reasonable claiming, reasonable time for examination, reasonable concessions, and reasonable allowances. Getting rid of the first two may have ruined the rest.
“some time you might try filing a reexam against these terrible patents, especially now with our post KSR, two pair of eyes, reject, reject, reject USPTO”
Tell me something I don’t already know.
“the prevailing attitude at my firm is don’t bother with business methods, you won’t get a patent.”
That’s a lot of potential malpractice claims! You must have a lot of insurance.
/True Believer Off
“If we do I might have to remind everyone that you don’t even know that you Are Required to claim the subject matter which The Applicant regards as their invention. Or that you do know it and that you flaunt that you do not do it.”
Still on that kick again. Looking at the language of 35 USC 112, I don’t see it reading “one or more claims particularly pointing out and distinctly claiming [all] the subject matter which the applicant regards as his invention.” I don’t see it reading “one or more claims particularly pointing out and distinctly claiming the [full extent of the] subject matter which the applicant regards as his invention.” As such, nothing in 35 USC 112 prevents a claim being directed to a portion of the subject matter which applicant regards as his invention … hence, why dependent claims are OK … because they only are directed to a portion of the subject matter.
You happen to be reading into 35 USC 112 more than what is actually there (common for an examiner used to reading into prior art more than what actually exists). Moreover, it isn’t as if 35 USC 112 has been construed different ways by different courts. It seems to me that the only person who is interpreting 35 USC 112 this way is you. Let’s see …. Lady Justice balancing 6K’s statutory construction versus every other interpretation as to 35 USC 112 by every court in the land …. I’m guessing that 6K is going to lose on this on.
One of the (many) reasons why many people tune you out is your penchant for championing loser causes.
e6k
I was not in any way implying that I agree with any of the changes which the Coalition is trying to enact. In fact, I oppose most of them. I was only trying to say that they are the ones with enough money and influence to change things (for the worse IMHO) with the current congress and pto administration.
Is the Coalition in favor of changing the count system? I don’t know.
“The professional advocates today as far as changing USPTO practices are the companies who have the resources to buy the politicians. Rumor has it that many of them are members of the so-called Coalition of Patent Fairness.”
I’m aware, and that’s why I’m not totally against the Coalition. Even if some of their goals are obviously a bit biased towards them at least they’re getting something done. Perhaps a rally or two of 25000 prosecutors here at the capital would do the trick.
Maybe a few more years of the complication rising will open everyone’s eyes. The complication of patents is going nowhere but up, and some people refuse to acknowledge this. It’s things like this that the claims/con rules indirectly help to address, though I do admit that such rules result in a grevious loss to the applicant’s ability to use the PTO as a public search firm. And that just shouldn’t be allowed, it’s ILLEGAL, right? The public needs a cheap search firm to do it’s work for it. It also needs a cheap lottery to play where the jackpots are overclaims.
Anyway, the new BPAI rules are so teh sux right?
“Inserting form paragraphs takes 1-2 hours??!!!!”
Would you prefer every examiner used primary style limitation mapping (i.e. “see column 2 line 8-column 5 line 9”)?
e6k
The professional advocates today as far as changing USPTO practices are the companies who have the resources to buy the politicians. Rumor has it that many of them are members of the so-called Coalition of Patent Fairness.
“And I wish that the PTO would acknowledge this and adjust the count system.”
You “wish”. You guys are the professional advocates. You guys need to advocate your own wishes and get the PTO to change it already. With a coordinated three prong POPA/bar/inventor assault surely the congress will respond.
Even if they respond by making you do AQS’s and/or limiting the page/claim count of applications at least something was accomplished to address the issue.
“So, an issued patent with a broad claim is bad? You have gone from complaining about broad claims in applications to complaining about broad claims in issued appts?”
Since when does broad claim=overclaim? Hmmm? Did I ever say that?
I know very well what makes patents valuable. Let’s not even go down the road of what the other doesn’t know. If we do I might have to remind everyone that you don’t even know that you Are Required to claim the subject matter which The Applicant regards as their invention. Or that you do know it and that you flaunt that you do not do it.
Also, I’ll go one better, what makes a patent even more valuable is having valid claims that can withstand the strongest litigation and will appear on their face to be able to withstand said litigation.
“Every prosecutor knows that inserting boilerplate takes five to ten minutes, tops.”
And what about when you have to write a min 7 page treatise on the foundations of your art for every other OA that goes out thanks to “deps”? 10 min? An hour? 2? 7?
LL
The point I was trying to make in my 2:51 post is that often (all too often) an over-rejection is issued, and the examiner wasted his time formulating it instead of just sending out a Notice of Allowance.
I fully appreciate that understanding the claims and making a quality a search is very time consuming and challenging task. And I wish that the PTO would acknowledge this and adjust the count system. Applications over the past two decades have become much longer, more complicated and include many more claims; and the amount of prior art which has to be searched is more voluminous (just compare the number of issued patents now with those of 20 years ago).
Malcolm
some time you might try filing a reexam against these terrible patents, especially now with our post KSR, two pair of eyes, reject, reject, reject USPTO
it will save your client the $1M in attorneys fees for those silly litigation discovery battles
Just a thought.
“You still don’t understand what makes a patent valuable at all.”
Answer: The cost of defending a lawsuit wherein said patent is presumed valid regardless of the absurdity of the claims or prosecution history.
“Inserting form paragraphs takes 1-2 hours??!!!! ROFLMAO”
Every prosecutor knows that inserting boilerplate takes five to ten minutes, tops.
“The writing of the rejection takes minimal amounts of time (1-2 hours).”
Inserting form paragraphs takes 1-2 hours??!!!!
ROFLMAO
“the prayer rug made out of blue corn tortillas solves the problem of getting hungry while praying, and simultaneously offers an unexpected relaxation benefit from the blue color and pleasant scent.”
I like that! You now have one year to file your application in the United States, if you haven’t already done so. Would you like some help preparing the application?
“Of course, what he fails to realize is that these people doing things in stpid ways are in many cases likely the people trying to get around someone else’s patent on the good method so that manufacturing can continue without being stalled for the next 20 years by some jack arse overclaim.”
So, an issued patent with a broad claim is bad? You have gone from complaining about broad claims in applications to complaining about broad claims in issued appts?
You still don’t understand what makes a patent valuable at all.
“John Prosecutor”,
The writing of the rejection takes minimal amounts of time (1-2 hours). The searching for prior art and the evaluation of the prior art, including determining the best references, is what takes the vast majority of the time. Whether the claims are allowable or not, all of this analysis has to be done.
thanks,
LL
“And of course technically MM is right, not everything does look obvious in hindsight. Some things don’t even look obvious after a long while of hindsight viewing.”
In part, this is because some inventions are actually based on a discovery of something new and unexpected, rather than a dorky insight along the lines of “the prayer rug made out of blue corn tortillas solves the problem of getting hungry while praying, and simultaneously offers an unexpected relaxation benefit from the blue color and pleasant scent.”
“Dennis, can you take this quote and put it permanently at the top of the page? I think it will save us all a lot of time over the long run.”
Well it IS what everyone is telling me, from friends, to people on this board, to people in positions above mine. Also including my gf. It’s the whole world against me making proper rejections.
“Why roll over and give up if I’m right?”
I don’t expect you too I was just saying nobody has so far with me.
“You really seem to be suffering from the examiner bias of “nothing is patentable.” Everything seems obvious in hindsight. ”
I stopped alleging everything was obvious a long time ago, now I follow the rigid teaching suggestion motivation nearly 100% of the time and even still nigh on everything is obvious. Everyone wants to talk about hindsight, allegations of hindsight are bs when there is an explicit (or even implicit in some cases) motivation to do exactly what the applicant is claiming. And of course technically MM is right, not everything does look obvious in hindsight. Some things don’t even look obvious after a long while of hindsight viewing.
“IMO rejecting properly does/should not take long, just some good searching and good combinations of prior art with a few sentences of explanation.”
IMO you don’t know wtf you’re talking about. You have to “figure out how to justify combining them” for nearly any 103, it doesn’t usually jump right out and bite you even if it is somewhere in a publication. You have to find the motivation, and you have to realize it for what it is.
“I agree. I’ve seen plenty of inventions (rejected them anyway) where it would have been obvious to one of ordinary skill in the art not to make the combination applicant makes.”
QFT
“What?”
He means that some “inventionlol”‘s are obviously something that nobody in their right mind would do because it wouldn’t be an improvement over what already existed but would rather be doing things in a worse manner. Of course, what he fails to realize is that these people doing things in stpid ways are in many cases likely the people trying to get around someone else’s patent on the good method so that manufacturing can continue without being stalled for the next 20 years by some jack arse overclaim. And he also fails to realize there might be some hidden use for the overclaim that isn’t set forth in the application, but there is no evidence of concealment of the best mode.
“I’ve seen plenty of inventions (rejected them anyway) where it would have been obvious to one of ordinary skill in the art not to make the combination applicant makes.”
What?
John Prosecutor is correct. Making up nonsensical drivel just to reject claims is much more time consuming than just acknowledging the patentability of the claims and passing the application to issue.
“Not true.”
I agree. I’ve seen plenty of inventions (rejected them anyway) where it would have been obvious to one of ordinary skill in the art not to make the combination applicant makes.
I am not and have never been an examiner but have been a patent prosecutor for many many years. IMO rejecting properly does/should not take long, just some good searching and good combinations of prior art with a few sentences of explanation. Rejecting improperly (over-rejecting) is what must take time, trying to creatively cobble references together and figure out how to justify combining them, and when worst comes to worst, discounting the novel or non-obvious elements/limitations using some bogus 112 rejection or using the rejection du jour which is to call that element/limitation which is in the body of the claim an “intended use” or “functional” limitation and thereby accord it no patentable weight, i.e. ignore it in the patentability determination.
“Everything seems obvious in hindsight.”
Not true.
When I first started at the Patent Office, I did think I failed when I couldn’t reject all the claims. It took some time for me to realize that my failure to find something in the prior art was not necessarily a failure – it might just mean that something was patentable. It takes time for examiners to learn that obviousness is more than just finding all the disparate pieces in the prior art.
The problem for practitioners is that KSR, which many (especially new) examiners believe requires a conclusion of obviousness when all the disparate pieces are found in the prior art, was decided at a time when so many new examiners are being brought in. Think about it – perhaps KSR would have had much less of an effect during prosecution if the Patent Office was doubling in size at the same time.
6k,
I continue to argue all the time even though some dependents were indicated as allowable. I’ll continue unless I’m convinced that I have no valid argument. I’ve appealed where I have dependents with allowable subject matter (although that may be somewhat dangerous).
Why roll over and give up if I’m right? When I say I’m ‘right’ I mean that the art flat out doesn’t say what the Examiner claims it does, even under the broadest unreasonable interpretation used by the pto. Or, the examiner has combined references that are not at all properly combinable.
You really seem to be suffering from the examiner bias of “nothing is patentable.” Everything seems obvious in hindsight.
“In any case, I’ve got to start allowing more things, not because there aren’t proper rejections to be made, but that rejecting this sht properly takes so much more work than what I’m supposed to be putting in.”
Dennis, can you take this quote and put it permanently at the top of the page? I think it will save us all a lot of time over the long run.
Oh, and when I say something is finaled, it doesn’t mean that they just need to move up some deps to have it allowed since I’ve indicated IN AN OA probably ~5 applications as having allowable subject matter in a dep if it was moved up. So far, I haven’t had anyone take me up on an offer in an OA, but then again most of those 5 haven’t come back yet.
“For some reason, I suspect that you deal with electrical arts. If so, your allowance rate is really low… It’s usually software and business methods where the examiners are hardasses who won’t allow anything.”
I agree, and I agree because those examiners aren’t finding sht for art, as most of you allege on here everyday. A rough but fairly accurate breakdown is thus:
135 applications reviewed (I had meant to say ~150 before, my bad, still I believe you will think the allowance rate to be low).
7 applications allowed. I have made around 7 non-finals one of which was later expressly abandoned, and all but three of which is now past RCE. I issue non-finals generously, i.e. anytime when there is any reasonable doubt as to if I laid the case out appropriately.
Over 60% of applications amend after non-final, of the ones left out, about 32% are amended after final, the rest are appeals or allowances.
Of the 60% amended after non-final some 90%+ will go on to be finaled.
In the end I’ve had 1 appeal filed, and 3 appeals conferences, the appeal went forward and should be affirmed as it seems solid, and two of the appeals conferences had the spe’s/conferees suggesting that I reopen/allow because they were not convinced, one on a procedural issue, and one on an issue of art. The rest are either pending their filing of an appeal or have RCE’d and have been counted as a new case. I have recieved at least 15 RCE’s (probably more like 20-30) and have 3 abandonments. There are many finals that are solid that are pending and should be RCE’s shortly.
I recieved 5 RCE’s in the last 3 weeks (takes 1-2 to show up in Edan after they snail mail it) and that is just the tip of a huge final iceburg that hit months ago and should have replies back within 3 months at the latest.
In any case, I’ve got to start allowing more things, not because there aren’t proper rejections to be made, but that rejecting this sht properly takes so much more work than what I’m supposed to be putting in.
Well said Mad P. We are dealing with a cartel at the PTO. Except this cartel is moooronic because it only causes harm and does not cash in like the smart, and even mediocre criminals.
Prosecutor, I’m sure I don’t fully understand the problem. I read this blog in an effort to understand it better. I write stuff to provoke others into writing, so I can learn even more. Thanks for the answer.
Lowly:
While there is much truth in what you say, I have also seen a large drop in allowance rates for mechanical and electrical cases. Especially mechanical – the Examiners state “no unexpected results” without performing any analysis and realizing that KSR does not apply (MPEP 2143 is a good place where the Examiner should, but does not, start). Further, the Examiners think that regardless of whether the reference teaches away, etc., as long as there are “no unexpected results,” the analysis ends there.
Mad Prosecutor,
I’d like to see the allowance rate broken down by art unit. I think it’s somewhat artifically brought down by the PTO’s violent hatred of software and business methods which probably have allowance rates less than 10%.
Max:
I don’t think you fully understand the problem – when the Patent Office carefully applied TSM, the allowance rate was well above 60, 70%. In these post KSR days, coupled with unofficial mandates from management to severely restrict allowance, the allowance rate is 44% and drastically falling. It has nothing to do with the non-use of PSA (again, I worked doing concurrent prosecution in the U.S. and dozens of other patent offices throughout the world – in each case, I modified my TSM advantage/disadvantage into problem/solution terms, and received allowances in those foreign patent offices).
especially business methods. i don’t think i would ever counsel a client to try. the prevailing attitude at my firm is don’t bother with business methods, you won’t get a patent.
6K, only 6 allowances out of 150 applications. What happened to all other 144 applications? Abandoned? Appealed and therefore not decided yet?
For some reason, I suspect that you deal with electrical arts. If so, your allowance rate is really low… It’s usually software and business methods where the examiners are hardasses who won’t allow anything.
6K writes that only 6 of the myriad cases passing over his desk over a 2 year period received a Notice of Allowance. For an EPO practitioner that’s a startling statistic. With PSA in the EPO, most reps get most apps through to allowance, despite the determined efforts of the EPO’s finest. My hunch: imposing PSA on the Examiners of the USPTO would improve the quality of the claims allowed but also, paradoxically result in a surge of allowances. But then again, maybe not. The aggregate “quality” of what’s filed at the EPO is higher. Look at any patent family print out, for the filings out of just one priority filing, somewhere in the world. One finds an A publn for each country in the family. Except for the USA. Where typically there are of the order of 10 to 20 patent publications. So an EPO examiner has a x10 greater chance of writing a Notice of Allowance. 60 in two years sounds about right.
I have 16 allowances in 16 months at the PTO. I’d say most of them aren’t too valuable (but I suppose you never know). I’ll probably end up with well over 30 after 2 years.
“and of course nothing patentable ever comes across your desk…”
Come now, that’s not true. I have something like ~6 allowances to my name. That’s 2 years in. Over 150 patents examined. One of them probably not a good one. I allow stuff, and I’m hardly perfect.
I say I probably shouldn’t have allowed that one case because he submitted a DIV with very similar claims and I just couldn’t resist spending a little extra time on it. Lo and behold right as the search was coming to an end, a perfect basis for a 103. Only 30+ hours of searching in all told, including the parent. I could have used that art to 103 the first case as well most likely, but, alas, we will never know. Hopefully it being on record in the child will do enough good that the app won’t be too zealous with the parent.
Warning effect,
For myself, I did not read E6K’s comments, so I have no idea if they were wrong or not, and frankly I did not care. I just h@te these “tyranny of PC” ninnies.
E6K, you must be the most skilled examiner in the entire office. You’re always right, your rejections are never overcome, and you never make mistakes!
and of course nothing patentable ever comes across your desk…
thankfully all examiners aren’t as perfect as you, because i still get cases allowed.
Truth be told, with all the talk about the 1st amendment, I’m surprised everyone passed up the key inquiry: what was so gravely wrong with e6k’s original comment? The exact statement is reproduced here for convenience:
“While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time.”
The statement consists of the following statements:
1. Women are annoying.
2. He (that is, e6k) applauds those who would prefer not to be around women.
3. He personally finds attractive women “sufferable” and occasionally nice to have around.
Statement #2 directly follows from #1 – if you find anything annoying, you obviously would not enjoy its presence, especially not on your Caribbean vacation. Statement #3 is fair on its face – attractive women may indeed be nice to have around. Thus, the only potential challenge is of assertion #1. However, “annoying” is an entirely subjective assessment. Given that e6k is presumably a 20-something male straight out of college, his assessment fails to surprise me. From his statements, his experience comprises women of the “buy me this, buy me that, let’s get married today” variety. Opinions of women built from experiences such as these are not likely to be flattering. If there is blame to be assigned, to whom do we assign it?
“So how many counts did you score between 3:53 and 5:49 PM? ”
Sadly none, I was hoping this amendment wasn’t as full of sht as I thought it was on perusal. Sadly, it looks like I was right, as usual. So, I got to start a new case after finaling.
And you were right, I did miss your earlier post. Sorry.
RQ,
In response to your last comment, I don’t give a crap if people want to misinterpret what I was saying. However, for your edification, e6k was using the implication perjoratively, the implication tself is not inherently perjorative. Similarly, Canuck can be an insult if used in a derogatory sense, but there’s a comic starring a Canadian superhero named Captain Canuck as well.
It’s all in how the words are used. The exact same words in two different contexts can vary greatly from very offensive to not at all.
“gtg for awhile gang, got some counts to get done today. End of the quarter you know, need to see if I can allow some cases or something 🙂 Probably can’t :(”
So how many counts did you score between 3:53 and 5:49 PM?
“You can continue getting your panties in a bunch over ill-considered comments on the internet (just dreadful, I know), or we can drop the righteous indignation and discuss, you know, law.”
Funny, I actually said that.
Well, I feel like a dunce. “Do as I say, not as I do …” and all that. Ah, the bitter taste of hypocrisy.
Anyway, my sincere apologies to all involved; I’m done with this. Time for some deep reflection on self-control.
“Good times, except no new grounds :(” – E6k
I just noticed this. It’s good times at the PTO when asinine rules that punish applicants are promulgated, eh? WAHOO.
RQ,
I see your point. Your example of the principal is a fine one. However, in that case the principals comments were mislabelled. I agree that shouldn’t be done.
In this instance though, 6k’s comments were exactly what I said they were. I did not mislabel his comments in an attempt to get others to be offended. They can be offended, or not, all on their own.
I also understand his comments may have been an attempt to make a joke. I was just letting him know he’s not funny.
Well, he’s funny when he discusses the law. But in that context, he’s not trying to be funny. Or maybe he is. Who knows.
“I’d like to be able to trust the panel to have read and remembered that section from the first pass.”
Clive, I think the answer to your question is: what is the value in re-presenting the arguments? If the APJ’s weren’t buying it the first time around, what makes you think they’re gonna buy it simply by repeating it?
Draft the brief. Get out your copy of Strunk & White, do some serious editing. Pull every word processing trick you know. If you still need more than 30 pages, file your petition.
“We’re merely letting those who post offensive comments know that their comments are unappreciated and unwelcome.”
If it wasn’t unwelcome, unappreciated, and hopefully offensive then why do you think I would have made it in the first place? I dare say I don’t need you to point any of those things out for me.
Jebuz guys, I make a comment that started out as a jab to pds implying that he couldn’t get any women to go with his boat/beach/booze, implying that even if he had beach/booze then he still wasn’t on top of the world. Then it subsequently morphed into one saying that I might actually admire him if he didn’t have any by choice. This happened because as I was saying the first sentence it dawned on me that perhaps the addition of women to the mix were not necessarily a positive thing because they are often annoying, but even so I figured I would probably enjoy a few around. I’m no more woman hating than your avg. guy annoyed with his women.
That’s all, that’s it. End of story. We can move forward and you can get on with bashing the appeals rules now.
The best reason to not insult anyone with lawyers around: being spared having to sit through the discussion about why it was bad or wasn’t bad. Move on already.
Hit-ler would have liked this thread.
Somebody: Obfuscation. Labelling a comment as “racist” doesn’t explicitly state that everyone ought to be offended either. Let’s just say that the implication is rather strong.
You missed the point of my question on good manners and conscience – neither of these is objective. What happens when your collective disagrees (worse – what if you’re the *only* person that finds something offensive)? Restraint, as everyone knows, doesn’t have to be physical, legal, or absolute. In this case, I would agree that you alone have minimal restraining effect, but it’s the entire mindset of ‘how dare anyone say anything offensive’ that I was specifically addressing.
Finally, you’ll have to excuse me for sidestepping your question on the merits of e6k’s comment, because it is far too obvious a trap. Let’s just say that his comments are not in good form for appeal.
Riveting as it is discussing whether pds is straight and what role political correctness and the First Amendment have on this private blog, I’ll try again:
Regarding appeal briefs and a page limit, what’s the current thinking on the need to re-present an argument that applies equally to the first and second sets of rejected claims? I’d like to be able to trust the panel to have read and remembered that section from the first pass; but I’ve also seen briefs where appellant re-presented the arguments anew for the second/third sets of claims. The new page limit makes the first approach difficult if not impossible. Does anyone have experience with the second approach?
“Similarly, by labelling e6k’s comment as ‘misogynistic’, ‘somebody’ was suggesting that everyone ought to be offended by that comment.”
Never said that. I said that we probably haven’t seen the lowest of 6k.
I was offended. If you weren’t, that’s your problem, not mine.
BTW, I “labelled” 6k’s comments misogynistic because they were. As were his previous comments. And his comments in response to my comments.
“Who is the arbiter of what good manners and conscience are?”
I am. As are others who read and post here. But we’re not restraining anybody. We’re merely letting those who post offensive comments know that their comments are unappreciated and unwelcome.
“whenever anything is attributed to race or gender, the speaker/writer is immediately shouted down on the basis of bigotry without any consideration on the merits. This is nonsense, and societally dangerous.”
What exactly were the “merits” of 6k’s comments? Please, do tell.
Lionel: I was replying to Leopold in that post. My reply to you came later, which I think you missed in much the same manner as I missed yours.
Oh, I verified that story, exactly because it was so ridiculous. This was almost a decade ago, so I don’t remember the exact wording of the original comment or the apology, but suffice to say that the parents were in uproar. Nowadays, it may not seem like a particularly questionable issue because of the body of evidence available, but it was apparently far less acceptable at that time – or at least at that place.
Your last comment is telling. The difference is obviously that ‘racist’ has an inherently negative connotation, whereas ‘gay’ does not.
RQ,
It’s this general PC bogeyman of (mainly) Christian, white males I object to. It’s a reaction to a combination of (1) the irrational fears of others, and (2) people lashing out because others make them feel uncomfortable.
RQ,
One, the last comment was me, not Leo.
Two, I have never heard of anyone having to apologize for saying that black or hispanic students underperform white students. If there were a statement that they underperform because they are black or hispanic, that would be something I could see him being chastised for. Otherwise, I agree that there was no reason for the principal to apologize. I would verify that story.
Three, how would my referring to E6K as racist (even though I actually did not label anyone anything) be any different than his implying another guy was gay?
Lionel: sorry, didn’t see you there. If you read your post, particularly the last line, you’ll notice that it applies to all parties. Specifically, I’m not “legally restraining” anyone else from saying anything (exactly as it should be), and further, “be as _____ as you like, just don’t get PO’d when people tell you they don’t like it and you should shut the f$%^ up”.
Now I’m in the white pwace.
How many times do I have say —
Hey Guys, Why can’t we all Just get a long? Why can’t we channel our extra energy against Piracy Director Dufas and his main minions, the “Coalition for Patent Piracy” and its miserable members, e.g., (¢¿©isco), and any other Patent Reformers who have been screwin’ with us patent professionals by, e.g., rejections, returns, rejections, returns ad infinitum and would foist many other frustrations and levies on patent attorneys and their inventors alike, and threaten our very livelihoods.