Patently-O bits and bytes in its

USPTO's Deputy Director Sharon Barner has announced her resignation. Deputy Director Barner has been Director Kappos's second-in-command since October of 2009. Prior to joining the USPTO, Barner was a senior partner at the Foley law firm in Chicago. She has not announced publicly whether she will return to private practice. Barner is leaving government service with a number of important accomplishments in-hand and without any major scandal on her tail. She remains a likely candidate for a potential nomination to the Court of Appeals for the Federal Circuit if another opening arises during President Obama's time in office. Congratulations Deputy Director Barner!

Under the law, the USPTO Director David Kappos has the power to nominate a new Deputy, but the actual appointment is done by the Secretary of Commerce (Locke). 35 U.S.C. 3 requires that "The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law." Within current PTO inner circle, Chief Communication Officer Peter Pappas has been suggested for the position as has Patent Commissioner Bob Stoll. Traditionally, the Patent Commissioner serves as interim deputy director until the office is filled. However, Director Kappos has full control over the interim organization. Peggy Focarino is currently the Deputy Commissioner of Patents.

Patenting Methods of Treatment. After deciding Bilski, the Supreme Court asked Fed. Cir. to take a fresh look at the case of Prometheus v. Mayo. In Prometheus, the patent in question is directed toward an iterative method of determining the correct dosing of a drug by injecting a quantity of the drug and then measuring the level of the drug found in the body. The Mayo Clinic and its supporters argue that the patent should be held invalid under 35 U.S.C. 101 as lacking patentable subject matter. The Federal Circuit has now released its new opinion on the case, holding once again that the claims are patentable. More to come.

Silence Implies Consent. A reader sent me a copy of the recent BPAI rehearing decision ex parte Njo involving a Pitney Bowes patent application. In the original appeal, the patent applicant had not filed a reply brief to directly contest the examiners arguments. The BPAI made clear that failure to respond should be seen as acquiescence. "This absence does, in our view, also suggest that such inaction may constitute acquiescence in the Examiner's arguments. "Silence implies assent." Harper and Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)." Consequently, the Board refused to allow the applicant to present new counter arguments that could have been raised in the reply brief.

Hands free typing. This week I had a successful shoulder surgery. The folks at Nuance were nice enough to give me a free copy of their voice transcription software known as Dragon NaturallySpeaking 11 (legal). I am now writing the blog hands free!

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