Patent Law Jobs by Patently-O

On July 1, Patently-O released its new job site: Patent Law Jobs by Patently-O. The site already has thirteen new job postings that have been viewed by several thousand patent law prospects. 

As usual with Patently-O, function predates style. We have job opportunities and patent professionals who need jobs. In the coming days, we’ll be working on a prettier design.

Hopefully, we can serve as a match-maker for each of these potential employers.

If you need patent help, please forward this info to your recruiting coordinator!

Notes:

  • Patent Law Jobs: www.patentlyo.com/jobs
  • Job Submissions: Post a patent law job
  • E-mail me comments (dcrouch@gmail.com)
  • Job postings are also going-out on the news wires via Google news. (not guaranteed…)
  • New job offers can always be found in the right sidebar on Patently-O. New jobs will also be included in the Patently-O e-mail service.

465 thoughts on “Patent Law Jobs by Patently-O

  1. 59

    Reposted:”Because the ARM core design and the chips based on that core are intended to be used in a wide variety of products, they often contain optional functionality not utilized nor enabled by every manufacturer.”A great way of putting it. And of course, all you have to do is opt to instruct it to enable that functionality and you’re good to go. The machine itself always had that functionality.”However, the Jazelle hardware on the accused devices cannot perform the functionality described in Nazomi’s asserted claims without software known as Jazelle Technology Enabling Kit (“JTEK”).”I think he means that they will not perform that functionality without being instructed to do so by appropriate instructions, one example of which is JTEK.”In July 2012 Western and Sling filed a motion for summary judgment contending that the claims should be construed to require that the device perform the claimed functions itself,”Hah! Apparently they’re unfamiliar with the the ridiculousness routinely adopted at the Fed Circ! And they’re also apparently unaware that if the claims were so construed, they would likely be invalid under 101/112 since they are apparatus claims. Mixing in method steps into your apparatus claims is bad news!”and that the accused products did not infringe the asserted claims because they included the Jazelle hardware but not the necessary JTEK software”Hah hah! Like all “faux logic” employed at the Fed. Circ. eventually it comes back to bite you in the ar se!”In opposing summary judgment, Nazomi argued that asserted claims 48 and 74 of the ’362 patent and claims 1 and 5 of the ’436 patent cover any generic hardware that “could process stack-based instructions regardless of whether the device ever actually does so.””Of course! So the “thought” goes at any rate!”, and construed the asserted claims to require a hardware and software combination capable of processing both register-based and stack-based instructions.”Haha!”The court concluded that without the enabling JTEK software, Jazelle hardware cannot process stack-based instructions at all.”HAHAHAHAHAHAHAHAHA! Unless of course you decided to instruct it yourself with some instructions that aren’t Jazelle!I love watching courts defend their house of cards! It’s hilarious!”For example, the italicized portions of claim 48 below recite specific claim functionalities that cannot be practiced in hardware alone and require enabling software:”Not really, you could just instruct it yourself if you wanted to. Especially in an embodiment that was specifically set up to recognize voice commands or whatever other instructions you wished to provide.”Since hardware cannot meet these limitations in the absence of enabling software,”A nice factual finding the DC and CAFC is making with zero evidence. And which they’re about to fold into their claim construction, which is supposedly a pure matter of lawl.”Further, the need for the specified functionality is confirmed by the ’362 patent specification”Reading limitations into a claim from the specification is now “confirmation” of a claim construction? HAHAHAHAHAHAHAHA!”For example, in Intel Corporation v. U.S. International Trade Commission, the claims only required“programmable selection means,” and the accused product infringed because it could be programmed to perform the infringing use. 946 F.2d 821, 832 (Fed.Cir. 1991). We held that the “programmable” claim language required only that the accused product could be programmed to perform the claimed functionality.””HAHAAHAHAAHAHAHAHAHAH! Guess they messed up their drafting eh? Yeah right! Defend that house of cards!”In contrast, Nazomi has not claimed an apparatus with hardware “pro grammable” to process stack-based instructions, it has claimed a combination of hardware and software capable of performing that function.”Though they obviously didn’t mean to be claiming that. Surely they want both!”Here, in contrast, the claims do not cover hardware that contemplates an environment where it could be combined with software,”Although they obviously wanted that from the get go. Just look at how the claims are drafted!”However, Nazomi points out that we have held that “an apparatus claim directed to a computer that is claimed in functional terms is nonetheless infringed so long as the product is designed in such a way as to enable the user of that [product] to utilize the function without having to modify the product.”Obviously!”The purchase and installation of theJTEK software clearly constitutes a “modification” of theaccused products.”Just as instructing it in everyday English would were the embodiment capable of understanding English instructions straight up! /boggle.” There, Typhoon made the same argument that Nazomi does here, that the accused devices infringe if they “ha[ve] the capability of being configured or programmed to perform the stated function,” even though the accused devices were not structured to perform that stated function as sold. “Because that is obviously what they were intending to claim! Someone really needs to come out and claim that straight up in easy to read English make an easy to read claim that is construable in such a way to explain the situation to the court.”Here, the structure (i.e., JTEK software) necessary to enable Jazelle hardware to process stack-based instructions (i.e., Java bytecodes) is not only inactive, it is not even present on the accused products. “HAHAHAHAAHAHAAHAHAAHA!”The installation of JTEK software is not unlocking exist-ing functionality, but adding new functionality not currently present.”DOUBLE, NAY TRIPLE HAHAAHAHAHAHAHAHAHAHAH!Keep it up CAFC, one of these days this is going on up! The slow wheels of government will churn slowly to life!

    1. 59.1

      That claptrap was definitely not worth reposting 6..But this is worth a double repeat, Malcolm’s quite obvious Accuse-Others-Of-That-Which-He-Does:.Worth repeating this post from another thread:Malcolm: “All you are doing is sticking your head in the sand and pretending that basic facts don’t exist”Me: LOL – beyond ironyMalcolm: “What kind of a person does that? A dishonest one. A person who can’t handle the truth. A coward.”Me: In other words, Malcolm.First principles first, Malcolm – before you even get to any patent whatsoever – answer the very very very simple questions that you keep running from. Let’s not see any of the cowardly dissembling and distraction.

      1. 57.1.2

        “Then the anti-software patent ‘belief’ system of 6’s will kick in”You can still make a lot of money selling them.

    1. 56.1

      Indeed.One wonders whether the reason for the acquisition in the first place was to acquire the patents?

      1. 56.1.1

        Yes, one does. I don’t know this industry well enough to say, but I do know that Medtronics is involved in a lot of patent litigation, on both sides, so it wouldn’t surprise me that the purchase was driven by the patents.

      2. 56.1.2

        Without the patents, there is very little to buy in a medical device start-up that cannot be taken by a competitor. FDA approval counts for something, some know-how for manufacturing might count, and some headway in the market helps. But as you can see, Medtronic can get those other things for itself. So I would think that the patents were the major (or only) reason for the acquisition, but they probably added a few dollars to the price tag for incidentals.

  2. 55

    It’s things like this that give me the willies about all things patent-related. It’s obvious-after-reading-and-thinking, to me (engineer/scientist, not a lawyer, someone who merely invents, but not someone who writes or interprets patents), that claim 48 is describing a polyglot cpu where the ISAs understood including at least one with a stack and at least one with a register file, and that the stack implementation has traps to handle both under and over flow (not unlike the the Sparc instruction set, though its instructions were register oriented, not stack oriented; for stack-oriented instructions, they are apparently thinking of something like Forth, Postscript, or Java bytecodes).That there would be a mode bit, perhaps under the control of software, or that there would be software involved in general, is obvious to the point of DUH. (What do we do with these CPUs, except run software? A few have worked better as space heaters, but they are fortunately the exception.) I do see that my definition of obviousness is at odds with the legal standard, and that is the entire cause of my discomfort. This is a legal theory (“he didn’t say software!”) at odds with the reality of engineers (“of course there is software, that’s obvious”), and it is a peculiar property of legal theories (unlike most scientifiic theories) that they can persist at odds with reality apparently indefinitely. It is very hard for an engineer to remember this in his day-to-day life. “Obviousness” generally requires only a few examples to prove, and if something looks that obvious to me and obvious to my peers, then it is obvious, we’re done. (This is not a case of a cranky engineer reading the abstract and thinking that someone re-patented the wheel; this is the claims, after all.)In other words, which hat am I supposed to be wearing? “Blank slate”, or “skilled in the art”?This says nothing about my opinion of the patent itself — depending upon when it was filed, it certainly looks more like a “well, if you asked me to do it, that’s what I’d do, but I never thought to do that before” patent, than a “lots of people wanted to solve this problem, it was hard, I found a way” patent. There are surely some annoying details regarding the intermapping of the register sets (are they views of the same register set? Are they separate register sets? Is one “register” set emulated and really in memory? is there a switch to a register-ISA when traps occur, or is there a second stack for “trap mode”?) and that is where things would get interesting.

  3. 54

    Trying to follow this.Jason: this is not a case where the software component already resided on the hardware and could be unlocked versus:Jason: ARM also designed its processors so that unused functionality would remain dormant unless activated Also this …Jason: this is not a case … where the claims recited programable software that also resided on the hardwareversusJason: the claims required both hardware and softwareMaybe it seems more confusing than it actually is because everyone knows that hardware is “equivalent” to software. Or so I was told.

    1. 54.1

      …or maybe it is ‘so confusing’ because you are trying so very hard not to understand.Here, confusing the equivalency of software and hardware with wanting the two to be exact – and exact in the given fact pattern – no such exactness has ever been the point of equivalency in the manner that you are so desperately trying to portray.How soon are you going to run away from the simple questions that lie at the heart of this issue, Malcolm? How soon are we ‘treated’ to one of your vacuous *clicks* or *Kenneths* or some such equally nonsensical non-answers?

        1. 54.1.1.1

          Night, do you understand the Jazelle hardware involved here? If you do, you might explain it to us because frankly, I do not understand where the hardware ends and the software begins in this case.

            1. 54.1.1.1.1.1

              No anon, I don’t know all that much about Jazelle. The opinion was a bit vague as well.

              1. 54.1.1.1.1.1.1

                There is nothing vague at all Ned about the opinion and how it mirrors the Grand Hall experiment – and how I have explained what that experiment means to you on these pages.Do you really need me to hold your hand one more time?

                1. Anon, what is not clear is what does the JTEK software do? Does it configure the Jazelle hardware, does it enable it, and if it configures it, how? It is loaded into ROM or if not, where? None of that is clear from he case. All we know is that “enablement” seems excluded.

                2. Do you realize Ned that your questions are immaterial to the point at hand?Take a baby step first.Look at the case from a First Principles point of view before you attempt to confuse yourself with any of your forced technical viewpoints.

                3. Anon, OK, I’ll listen to you for a moment. Just how could the patentee have claimed the invention to cover the Jazelle hardware that was shipped in accused devices?Sent from Windows Mail

                4. Ned,You want to talk about the wrong thing (still).Go back and review the Grand Hall experiment (you know, the challenge that you never seemed to want to take concerning the initial presentation of two new machines, each machine without any software, and then adding software to only one machine, and then asking if you have changed the machine and have a new machine)

                5. Anon, I take it that you agree with the opinion. More than that, I take that you agree that the defendants must sell its hardware with the software permanently installed to infringe?

                6. (sigh)Once again with the extra insertion of “permanently installed”Why the gamesmanship Ned?Further, the point is clearly not whether I agree with the decision, and much more so if you understand the logic of the decision.Do you? Do you understand the logic of the decision?Add: the silence is deafening.

          1. 54.1.1.1.2

            It’s fairly simple Ned, they made some special hardware (Jazelle) in a processor to help handle java virtual machines faster iirc. They used some software to run this extra special hardware in their processor. They named that software JTEK or similar iirc. Though you could make your own custom software to do the same thing. Edit: or, as you point out, some extra custom hardware.I note that the reason you’re having a hard time understanding the case, and also why the Federal Circuit had a hard time with the construction, is because the PTO did not require proper drawings of the supposed structure that is supposedly claimed.

        1. 54.1.2.1

          ? Not sure the LOL at the fact that “equivalent” is not the same as “exactly the same.” Leopold once tried to puff that smoke screen. Did not work for him either.

            1. 54.1.2.1.1.1

              The following is friendly advice, anon, and it’s free.Whatever the merits of MM’s posts, it is worth noting that MM, like most regulars here, doesn’t feel compelled to mention you or other commenters in the majority of his posts, and especially not in exchanges that don’t involve those other commenters. He also doesn’t refer back to real or imaginary past slights in such a way that demonstrates a weird and pathological inability to get over ANYTHING. I’m reasonably confident that if you printed out a couple dozen of the “conversations” that you engage in here and provided them to a licensed mental health counselor, he or she would at the very least counsel you to find a healthier way to exorcise those unquiet spirits that seem to be lurking in you.Peace be with you.

              1. 54.1.2.1.1.1.1

                Malcolm routinely involves the names of people who don’t even post herePresident Reagan called. He’s fine with it.

              2. 54.1.2.1.1.1.2

                Acknowledge the valid counterpoints made and integrate those points in any ensuing discussion on the merits…. and in that distant solar system is a planet called Earth, which revolves around the Sun.

                1. No he does not.MM may disagree with you, but he explains his position and reasoning if pressed. He is the best at this on this board.I think MM becomes disrespectfully only if you are first disrespectfully to him. Regardless, MM does not bash me, nor 6, nor IANAE, nor MaxDrei, nor that I can recall LB or anyone else that posts here and makes serious comments.

                2. Oh Ned please. That post was good for a belly laugh. So, you think I don’t make serious comments? Or that MM has not bashed me? Give me a break. MM misrepresents, evades, bashes, threatens, and is generally extremely unpleasant to deal with. And, please note, that I have asked him many times to not respond to my posts which seems to have the opposite affect. But, I agree with anon that the biggest problem is the refusal to deal in a linear manner with issues.

                3. Night, all I know is that MM and I have had serious and extended discussions on various points. He makes arguments. He does not attack me personally. Now if he attacks you personally, you might ask yourself why? I think I know why, but you tell me if you might.

                4. Night, as I said, MM and I disagree on numbers of issues, but he and I do not insult each other. I think that is because we explain our positions and listen to each other’s arguments.

                5. I think it takes two people willing to bash each other. On that point, MM has never even tried to attack me personally or question my motives and we have been posting here for years. Can you say the same thing about yourself when talking about me? I daresay, you have accused me of being a paid troll or something similar. But, to your credit, you haven’t done that in quite awhile.

                6. “but he explains his position and reasoning if pressed. He is the best at this on this board.”That is not even close to being remotely accurate.Ned, are you on drugs?(add: and NWPA, Ned suffers horribly from group-thinkitis. Do you remember the time that he compared 6 to Einstein only because 6 said something that agrees with Ned’s world view?Some nice dust-kicking by Ned – notice how the focus is moved from the case at hand?Still no answer from Ned as to whether or not he understand the logic being used in the case – emphasis added – the merry-go-round of CRP-run away from valid counterpoint and repeat the very same CRP again later is in play)

                7. “Ned suffers horribly from group-thinkitis”Said a member of the software patent religious right.Come on anon, we’re all in differing groups on differing issues.

                8. Unfortunately 6, the groups that Ned and you belong to impact your ability to reason, and even to understand the basics of law and fact.Witness the immediate case. LOL, as I recall you were the only regular to even try the Grand Hall experiment. You failed miserably, but hey, at least you tried. The other anti-software patent fanatics won’t even try – they just turn tail and run away.

                9. “Witness the immediate case. LOL, as I recall you were the only regular to even try the Grand Hall experiment. You failed miserably, but hey, at least you tried. The other anti-software patent fanatics won’t even try – they just turn tail and run away.”Because it isn’t an experiment and is rather just you blabbing.

                10. Is that why you failed miserably?LOL – Try again 6.(and 6, the form of the Grand Hall experiment is a classic experiment form. Your ‘belief’ system is [once again] getting in the way of your understanding)LOL – you tried the experiment and FAILED. Now trying to diss the experiment is only MORE FAIL.As for ‘blabbing’ – try reading the immediate case, my friend – the judges here get that ‘blabbing’ perfectly fine. Hmmm, why do you not? Hmmm, why is Malcolm and Ned and all the other anti’s so silent on the merits of this decision?LOL’s all around.

                11. “and 6, the form of the Grand Hall experiment is a classic experiment form.”Delusional person blabbing is a classic experiment “form”? I mean, okay, if you insist. But it isn’t very legit.

                12. “Regardless, MM does not bash me, nor 6, nor IANAE, nor MaxDrei, nor that I can recall LB or anyone else that posts here and makes serious comments.”Indeed, and I pissed him off quite a bit the other month.

              3. 54.1.2.1.1.1.4

                Hey, the best part about free advice is that you don’t need to feel compelled to take it. Shalom.

              4. 54.1.2.1.1.1.5

                By the way, you used Malcolm’s name 4 times in that one comment. That can’t be good for you.

                1. Oh how I wish that I did not have reason to use that name…(but you know, that legal realism thing keeps prodding the disingenuous like Malcolm to carry on his crusades)

              5. 54.1.2.1.1.1.6

                ” I’m reasonably confident that if you printed out a couple dozen of the “conversations” that you engage in here and provided them to a licensed mental health counselor, he or she would at the very least counsel you to find a healthier way to exorcise those unquiet spirits that seem to be lurking in you.”To say the least.

      1. 54.1.3

        Oh so here’s a word, “exact” or “exactness” that I’d be interested to know what you mean by.

      1. 53.1.1

        In the absence of software, isn’t it arguable that the Jazelle component is “configured to” not do anything? Isn’t the JTEK package what configures the Jazelle component?

        1. 53.1.1.1

          I don’t think so. “an execution unit and associated register file, the execution unit configured to execute instructions of a plurality of instruction sets, including a stack based and a register-based instruction set;”So, the execution unit can do both. Doesn’t say how to select which it does. Just that it is configured to do both.

      2. 53.1.3

        Not so sure about that. Would the processor be configured to … without without JTEK installed?

        1. 53.1.3.1

          Interesting that those on this board that want to make a distinction between hardware and software don’t see how this case illustrates there isn’t really a distinction at all.

          1. 53.1.3.1.1

            on top of that, this is a perfect illustration of the Grand Hall experiment.(add: not sure how any reasonable person could even dream of downvoting this post…)

          2. 53.1.3.1.2

            How does a case “illustrate” that? I think you mean delusional thinking displayed by some judges is “illustrating that in a fantasy world of some judges trying to hold their house of cards together”.

    1. 53.2

      Left, I think the main problem was that the claims were not really directed to hardware in the first place, but were described in terms of how the hardware operated — which is very much a characteristic of programming.I think the patentee could have described the hardware structure of their stack instruction to general purpose register execution unit. Whether the ARM processors had the same hardware is a separate question. This might be an example of two different inventors arriving at two different ways of accomplishing the same result. If one limits the claims to the “way,” there is no infringement. Thus one claims the result regardless of the way.Method claims would have done the trick nicely — but they too would have required the end user actually use the virtual machine, which, in this case, they did not.

        1. 53.2.1.1

          You might be right, anon. But I thought the Jazelle functionality was largely a creature of hardware. If it employed software components as well during operation, well bully for that. What I am saying is that there in fact is some hardware there that does have physical and logical structure that could be claimed making the processors infringe, literally, regardless of the use of JTEK software.I

    2. 53.3

      Different thought here, but if something infringes because it has hardware (or software) that isn’t even used and is unnecessary, I can’t imagine the damages would be very high.

      1. 53.3.1

        It is an interesting point. Can you build a mult-purpose piece of hardware and then only pay royalties for the customers that are going to be using different parts of it. But, you know it is easy to build in the hardware ways to self destruct functionality.

        1. 53.3.1.1

          Should we make the distinction that trafficking in a patented item (that has) the feature is no less patent infringement whether or not one then uses the item – in comparison to the actual case facts here that the item was found NOT to infringe because the mere hardware simply did not have the patented feature?

          1. 53.3.1.1.1

            Assuming that by “trafficking” you mean selling and/or offering to sell, then yes, I agree that’s an important distinction. If the product actually includes a patented instrumentality, you certainly don’t get off the hook just because your customers don’t care to use it.

    3. 53.4

      Exactly as they were. The courts should not have messed up the construction. Plainly there is not structure being talked about in re the software as none is shown in the drawings.

  4. 52

    Allowable dependent claims, if rewritten in independent form, should not count against the three base independent claims paid for at filing. They have already been examined and charging a fee for them is unjustified.

  5. 51

    > PCT Fees are now subject to the small and micro entity status discounts.To be accurate, SOME PCT fees are subject to the small and micro entity discounts. Some are subject only to small entity, and some are subject to neither.

  6. 50

    I’d also like to see them lower the terminal disclaimer fee to $0 when filed electronically, since approval of the TD is automatic.

  7. 49

    “One accounting trick”Hmmm,Still not seeing any discussion (nor analysis) of the legal requirement of this fee setting to be balanced in the aggregate….Many more accounting tricks in the bag. I wonder if the Office borrowed any personnel from Enron?

  8. 48

    Also, I don’t believe there is any such thing as a “virtual design”, to me that has no meaning.GUI’s are actual designs.

  9. 47

    GUI’s are interesting to consider.Briefly: In Hruby, water was given a particular shape that resulted in a particular visual appearance, and it was that ornamental visual appearance that was considered to have s-m eligibility.The “transitory” or “ephemeral” nature of the visual appearance was dealt with rather eloquently IMO, the upshot being that everything is essentially ephemeral, and that the appearance or even existence of everything is in part dependent on prevailing environmental conditions. Rather than drawing an arbitrary bright line or fashioning some judicially-abusable vague test for “ephemerality” or “environmental condition dependency”, the decision appears to deal in the absolute.This brings to mind 2 things for me:1) why is design patent protection afforded to only “visual” ornamental appearance? “Appearance”, grammatically speaking, is not limited to only visually sensible phenomena. And as any of you who know music will understand, the concept of “ornament” in music is fundamental. Can anybody provide a cogent argument for limiting design patent protection to visually sensible ornamental appearance?2) what is the minimum amount of time for which an ornamental appearance must manifest in order for it to be sensible? On the long end, there is no upper limit–at some point of longevity, an ornamental appearance is considered to be “permanent”–but on the short end, what is the timescale? Hruby’s water shape lasted only so long as the man-made environmental conditions persisted, which could have been as long as a year or as short as a few seconds. Has the lower time limit yet been tested? Must the ornamental appearance be able to be consciously perceived, or simply able to be sensed if even only unconsciously perceived, such as the short visual flashes that we associate with “subliminal” perception?I suppose I don’t have a problem with GUI’s. Any “visual appearance” is predicated on the issuance of photons from whatever it is that is being perceived, whether those photons are produced locally, “reflected”, refracted, or some combination of these processes. In the case of GUI’s, they are produced locally, and come from the direction to which perceptive attention is directed. Like Hruby’s water shape, the photons issue in that pattern only so long as the man-made environmental conditions persist.

  10. 46

    There is a profound general ignorance among the technical community of the aims, abilities, value, and details of “design”. I’m not talking “technical design” or “engineering design”.I work with non-technical “designers” daily, including artists, architects, product designers, etc.. Really, trying to explain “design” to an engineer, physicist, chemist, or biologist is almost exactly analogous to trying to explain multivariate calculus to an artist, architect, or product designer.Finding an individual from one group who can not only appreciate but understand what it is that the other group does is EXCEEDINGLY rare.6, consider two fields of human endeavor, technical and design, and consider them not to intersect. I will assume that you believe that patents “encourage” development in the technical arts. Do you believe them to “encourage” development in the design arts in general? That is, do you believe that society benefits from design patents on designs other than GUI’s?If so, what do you think is different about GUI development from other “design” efforts?If not, what do you believe is the essential difference between technical and design efforts such that patents encourage the former but not the latter?If not, and you agree that both technical and design efforts are encouraged by patents, then you must believe that society does not derive benefit from design efforts. If this is your view, please elaborate.

  11. 45

    Our analysis indicates that virtual designs are at least on par with design patents from other sectors when assessed by these traditional measures.That’s not saying much. ;)The graph is fascinating. A five fold increase since 2005 (when filings appear to have dramatically spiked)! Is that “smartphone” driven? That seems unlikely given that the “virtual designs” presented by smartphones are just smaller versions of the “virtual designs” presented by computers many years prior.

  12. 44

    Our analysis indicates that virtual designs are at least on par with design patents from other sectors when assessed by these traditional measures.In other words, it’s a registration system.

  13. 43

    Can someone tell me what possible benefit there could be to letting people get a design patent on a “virtual design” (note the name itself states clearly that it isn’t really a design) in terms of the benefit for the country?

    1. 43.1

      Can someone tell me what possible benefit …How many years have you been exposed to intellectual property and still don’t understand what benefits it provides?note the name itself states clearly that it isn’t really a designYou clearly have a problem with the meanings of the terms “clearly” and/or “virtual”

      1. 43.1.1

        “and still don’t understand what benefits it provides”I’m unfamiliar with this particular branch of “intellectual property”. So you can either stop smugly asking me about my background or explain it to us all in plain english. “very close to being something without actually being it”^the definition of virtual. “in such a way as to allow easy and accurate perception or interpretation”^the definition of clearly. My original statement seems to use the terms properly and note specific features about the term “virtual design”. It is the word design modified by “virtual”, meaning very close to being something (here a design) without actually being that something (hee a design). So, virtual designs are close to being designs without actually being designs.

        1. 43.1.1.1

          “My original statement seems to use the terms properly”No.You are using the ‘Beavis’ method again.Think simple set theory and “virtual design” being a subset of design. The ornamental aspects are every bit [pun intended] as real as any other design.Promotion is obtained in the original sense of the word (as should be understood for all patents). That is, Promotion is not limited to an advance in the art (something necessarily “better”), but rather the compendium of ‘stuff’ is expanded. If exclusivity is granted for a novel design, then additional new designs must be created.The saddest thing about your, um, ‘character’ and your CRP misplay on words is that you actually received an up vote from Prof. Crouch, who should know better.

        2. 43.1.1.2

          the definition of virtual.That happens to be ONE of many definitions associated with “virtual.”How about … “being on or simulated on a computer or computer network”? This, to me, sounds more reasonable given the context of its usage in the above article. Regardless, given multiple different interpretations, then your use of “clearly” clearly did not describe an interpretation “in a way that is certain : without doubt.”Let me know anytime you want to get schooled again on how to use a dictionary.

          1. 43.1.1.2.1

            “That happens to be ONE of many definitions associated with “virtual.””We can use one of the others, but they’re all going to get around to the same thing eventually. I would contend that the phrase is a double entendre if used in this context anyway. But let’s say you’ve limited it down to this def. “being on or simulated on a computer or computer network”? “That’s fine. Let’s take the first one first. Being on. Then let’s take the second one, simulated on. Clearly the first one supports what is no doubt your ultimate position more. You thus contend that you’re merely referring to designs which are on a computer. But in this context, you mean “in” by “on”, “in a computer” as opposed to “on a computer” since obviously the design is not literally on a computer, it is “in” a computer. Thus, in this context, such designs don’t meet that definition of virtual. Then let’s turn to the second definition. The “simulated on”. Sound about right for this context. You totally meet that. Now let’s look at what simulated means. “Made in resemblance of or as a substitute for another”So in other words you have something made in resemblence of a design. Or something which is made as a substitute for a design.

              1. 43.1.1.2.1.1.1

                In other words, you don’t like that all the definitions lead the the same place, and you’re done talking about it. Gj lawlyer.

                1. you don’t like that all the definitions lead the the same placeHardly. But so like an Examiner — once backed into an untenable position, you keep digging your hole.

                2. It isn’t untenable at all, images on a screen are not designs. Period. Virtual designs are not designs either, by their very definition, no matter which definition of virtual you want to subjectively choose. All roads here lead to rome. And the lack of anyone challenging them in court and losing is precisely what you’d expect from this legal backwater that’s getting pushed to the forefront.

                3. Have you bothered to read the article yet 6?images on a screen are analogous to images in a pattern of water droplets.I would also point out that the unquestionable eligibility of the water droplets case highlights the incongruity of the Nuitjen case…

                4. Virtual designs are not designs either, by their very definition, no matter which definition of virtual you want to subjectively choose.You already forget about the definition where virtual means “on a computer.” Hence, a virtual design is a “design on a computer.”Also, virtual does not necessarily mean “not.” It can also mean “not in name but in essence.”BTW. What is a design? Also, why can it not be displayed on a computer?

                5. “You already forget about the definition where virtual means “on a computer.””I didn’t forget about it at all. I addressed it. Either a. You really mean “in” which will lead to the same path as all the other definitions or b. “virtual designs” doesn’t even refer to that meaning or c. the term is used in this context as a double entendre. Which btw, c is the case as that is how the term virtual came to be used to describe things “on the computer” and “simulations” because they weren’t really the things being discussed. A “virtual pet” a “virtual world”. Yes, they’re all “on a computer” and they’re all “simulated”, they’re also all “existing or resulting in essence or effect though not in actual fact, form, or name” which is why the term “virtual” was applied to this context in the first place. Perhaps you think it was accidental, or that people in computer science somehow took the word and have magically changed it into a meaning that effectively no longer describes any characteristics about the thing being described. None of that happened brosefus. It means the same as it always did and always will (within our lifetimes).

                6. 6,Have you even bothered to read the article yet? I doubt it as your attempted “Beavis” reading is shot down with case law and Office interpretations that plainly show that you are way deep in the weeds.

                7. Nah I read the last one though. Perhaps I should give this one a gander as well. But frankly I don’t see the point, perhaps I will after the gander. ” case law and Office interpretations”Oh so now “caselaw” and “office interpretations” are capable of overruling reality? I swear to go d, that is the problem with you softiwafties, your arguments from authority, no matter how blatantly wrong or misguided those authorities are, are just plain irritating.

                8. Frankly you don’t see the point?Seriously?You crab that you don’t know this area of law and want someone to hold your hand nicely, and then you cannot even be bothered with the material already presented before you dive into the weeds with your cockamanie B$?Your sense of ‘reality’ is way out of whack.

    2. 43.2

      Someone designed a GUI for a phone or a computer which is widely popular. People buy the phone or computer as a result. US company profits. US employees get higher pay or more are hired. Evil foreign pirate company (cough Sam cough sung cough) is not allowed to release a knock off product with same GUI.

      1. 43.2.1

        “US employees get higher pay or more are hired.”What evidence do you have for this? It could be that one US company is simply beating out another US company, especially depending on whether or not you’re talking about computers as opposed to phones. “Evil foreign pirate company (cough Sam cough sung cough) is not allowed to release a knock off product with same GUI.”So it’s a stopgap entitlement measure to tide our poor US workers/companies over until the foreign companies start getting in on the game and preventing our own companies from making phones using their super awesome “designs” that aren’t really designs? Color me skeptical about the whole thing. I likewise note that there doesn’t appear to be any promotion of the useful arts or sciences, what so ever, to any of design patenting. Anyone know of any cases analogous to the “Trademark cases” where the original trademark law was struck down?

        1. 43.2.1.1

          Apple’s profits and stock prices has improved significantly since 2007. Their employee numbers have increased.I liked the GUI of old OIS. I really appreciate it now that I was deceived into upgrading to the new OIS with its clunky GUI.As far as I am concerned, that is a spillover benefit for me. Re design patents in general, have you ever read Steve Jobs’ biography? The original computer looked intimidating to the ordinary consumer. Jobs’ idea of making the computer look like a happy face with the disk drive below the screen helped speed consumer acceptance.That kind of stuff may seem corny to the technical guys like you and I, but it makes a world of a difference to ordinary consumers. I have really developed a new appreciation for the work the Industrial Design folks do lately.Do you wear crocs by the way?

          1. 43.2.1.1.1

            “Apple’s profits and stock prices has improved significantly since 2007. Their employee numbers have increased.”k? So where’s the evidence linking that to design patents on GUIs? “I liked the GUI of old OIS. I really appreciate it now that I was deceived into upgrading to the new OIS with its clunky GUI.As far as I am concerned, that is a spillover benefit for me.”Wait, so your liking an old GUI is a spillover benefit from them getting a specific design patent on some part of the new GUI? I’m a little confused as to what you’re saying here. Please be specific as to what the spillover benefit is, and specifically what it stemmed from. “Re design patents in general, have you ever read Steve Jobs’ biography? The original computer looked intimidating to the ordinary consumer. Jobs’ idea of making the computer look like a happy face with the disk drive below the screen helped speed consumer acceptance.”k? So what? “That kind of stuff may seem corny to the technical guys like you and I”Not at all. I simply note that it isn’t in the least bit involved with the useful arts. “but it makes a world of a difference to ordinary consumers”No doubt. Images have long been used to make consumers happy. “I have really developed a new appreciation for the work the Industrial Design folks do lately.”I’m glad you appreciate them. I also hope other people appreciate them. I hope you and other people continue to hire them once this whole patenting of images in GUIs gets reamed. Somehow I think you will. “Do you wear crocs by the way?”No, I’m not a chic.

      2. 43.2.2

        So then, no benefit for the country as is normally expected, like the promotion of the useful arts. The only benefit is to some few folks in the country at the expense of others in the country?

        1. 43.2.2.1

          So then, no benefit for the country as is normally expected, like the promotion of the useful arts.The person who designed the GUI gets rewarded (with a limited-time exclusivity) for his/her/their design. That is how it works, but of course, you already know this.FYI, Congress has the ability to enact patent/copyright laws under the Commerce Clause (Article 1, Section 8, Clause 3) independent of Article 1 Section 8 Clause 8 (i.e., the so-called patent or copyright clause). Think about that for a minute.The only benefit is to some few folks in the country at the expense of others in the country?Is that the best you can do?

          1. 43.2.2.1.1

            6’s question here is basically whether there is any reason to encourage GUI and Icon development. Are there significant spillover benefits to society that result from that type of creativity such that we’re willing to award exclusive rights to the creator?

            1. 43.2.2.1.1.1

              Are there significant spillover benefits to society that result from that type of creativity such that we’re willing to award exclusive rights to the creator?There is ALWAYS spillover benefits when creativity is rewarded –> more creativity. FYI … I’m not breaking new ground here.People like to get rewarded (in some manner) for their activities/labors (creative or not). Again — I’m not breaking new ground here.You can ask the broader question as to whether or not design patents, as a whole, deserve patent protection. However, under the Commerce Clause, the Congress can do anything they want in this field regardless of any perceived promotion of the useful arts or benefits to society as a whole.

              1. 43.2.2.1.1.1.1

                “There is ALWAYS spillover benefits when creativity is rewarded –> more creativity.”An interesting assertion, and perhaps a true one. But are they significant? Meh. I’d like to see some papers on the subject. Perhaps one about how the people in microsoft’s icon developement dept. were spurred to new and greater heights of creativity because they knew their employer would get a patent on their work. /boggle.”You can ask the broader question as to whether or not design patents, as a whole, deserve patent protection.”Actually I can and have asked both. “However, under the Commerce Clause, the Congress can do anything they want in this field regardless of any perceived promotion of the useful arts or benefits to society as a whole.”When these things become a significant enough thorn in their sides the congress will likely come around eh? I agree, it really does take a big ol tac to get them to jump on something that needs doing.

                1. Meh. I’d like to see some papers on the subject.It doesn’t take anything more than common sense.If I told you that you were not going to get paid by the USPTO anymore but you were free to continue to work there, how much “work product” would you produce? The same? More? Less?Actually I can and have asked both.Too bad that you don’t have the intellectual gravitas to matter.When these things become a significant enough thorn in their sides the congress will likely come around eh?You can hope. However, I suspect your job will be safe until you retire.

                2. “It doesn’t take anything more than common sense.”Right, because “property” rights that cause million dollar payments etc. should be premised on “common sense”. “If I told you that you were not going to get paid by the USPTO anymore but you were free to continue to work there, how much “work product” would you produce? The same? More? Less?”Strawman much? “Too bad that you don’t have the intellectual gravitas to matter.”Tell it to the next person you meet that tells you your claims are preempt. “You can hope. However, I suspect your job will be safe until you retire.”Oh I’m sure it will be, though whether I’ll be here is looking kind of doubtful :( I’d really started to like the place. Who knows, maybe I’ll stick around?

                3. Right, because “property” rights that cause million dollar payments etc. should be premised on “common sense”.Tell that to SCOTUS. In KSR, they thought “common sense” was enough to invalidate property worth over a million dollars.Strawman much?Too bad for you it isn’t. It goes the fundamental proposition that work/activity/creativity rewarded is work/activity/creativity incentivized.though whether I’ll be here is looking kind of doubtfulTry working on your production credits rather than spending time on the internet being unproductive.

                4. “Tell that to SCOTUS. In KSR, they thought “common sense” was enough to invalidate property worth over a million dollars.”Course brosef, because it was written into the statute under “obvious”. “Try working on your production credits rather than spending time on the internet being unproductive.”Meh. Production isn’t the problem. Promos and bonuses have come and gone np. I’m just a little itchy to try me some private sectorin. There are a lot of interesting things going on.

                5. I’m just a little itchy to try me some private sectorinStick to the USPTO. The private sector will be too much of a shock to your system — you stayed at the USPTO too long.

            2. 43.2.2.1.1.2

              That is indeed my question, and I know of no such “spillover” benefits. Much less any significant ones. Though I’d be very interested to see a scholarly paper on the subject. Especially if it contained some facts instead of some gut feelings. If these kinds of patents are being heralded as the best thing since sliced bread in some corners of the lawyerly circles, then I suppose we’re going to have to start paying attention to their abuses as well.

              1. 43.2.2.1.1.2.1

                I know of no such “spillover” benefitsColor me unsurprised that you don’t know something. Tell me that you do know something — then I’ll be surprised.

                1. Maybe you can be surprised and tell us all about the spillover effects that you are personally aware of.

            3. 43.2.2.1.1.4

              “Are there significant spillover benefits to society that result from that type of creativity…”Not only that, but the question is really whether there are benefits to awarding design patents that go beyond the benefits already implicit in the grant of copyright.Adding patent protection on top is very unlikely to improve anything for consumers.

          2. 43.2.2.1.2

            “The person who designed the GUI gets rewarded (with a limited-time exclusivity) for his/her/their design. That is how it works, but of course, you already know this.”Right but no corresponding reward for the american people. No quid for the quo. “FYI, Congress has the ability to enact patent/copyright laws under the Commerce Clause (Article 1, Section 8, Clause 3) independent of Article 1 Section 8 Clause 8 (i.e., the so-called patent or copyright clause).”Yeah I’m aware. Although it appears from my brief search that everyone on the interbuts (all the lawlyers) seem to think that design patents were implemented under Article 1 sec. 8, not the commerce clause. I thought about it for more than a minute. “Is that the best you can do?”Winners n losers picked by the government, Government entitlement programs run amok etc. Trust me if this was my platform I’d run through the usual.

            1. 43.2.2.1.2.1

              everyone on the interbuts (all the lawlyers) seem to think that design patents were implemented under Article 1 sec. 8, not the commerce clauseI don’t care what they think. Congress has the power to grant patents irrespective of Clause 8 or Article 1 Section 8. As such, whatever baggage is purportedly placed on IP by Clause 3 doesn’t matter.Right but no corresponding reward for the american people. No quid for the quo.Creators are rewarded, and hence, create more, which is in the public good. Then again, you already knew this — this is getting tiresome.

              1. 43.2.2.1.2.1.1

                “Congress has the power to grant patents irrespective of Clause 8 or Article 1 Section 8. As such, whatever baggage is purportedly placed on IP by Clause 3 doesn’t matter.”Citation please. You claim to know more about the constitution than everybody else. Back it up. Otherwise, all of your rude talk is just hot air.BTW, you come off as a pompous ass when you refer to yourself as “guru” and insult others by saying they don’t have enough “intellectual gravitas” to understand your argument. You’re not convincing anyone that your position is correct when you act like that.

              2. 43.2.2.1.2.1.2

                “Creators are rewarded, and hence, create more, which is in the public good.”Quite a stretch. I’ve seen no evidence of such a thing. “Congress has the power to grant patents irrespective of Clause 8 or Article 1 Section 8″An interesting assertion, I wonder why Ned so staunchly disagrees with you and cites the odious monopolies?

              3. 43.2.2.1.2.1.3

                This is in reply to Straight_Talkin, who hasn’t figure out the spam filter.You claim to know more about the constitution than everybody else.Citation please. Oh wait, don’t bother, because I never claimed as much.Back it upTake a class or two in Constitutional Law and then come talk to me. The Commerce Clause grants Congress a VERY LARGE swath of power. BTW … guess what clause is relied upon for Federal trademark law. I’ll give you three guesses.you come off as a pompous a** when you refer to yourself as “guru” and insult others by saying they don’t have enough “intellectual gravitas” to understand your argumentCry me a river. 6 is a patent examiner and well-known patent blog troll. His knowledge of the law is both limited and oftentimes simply wrong. BTW … if you are going to rail on me, at least get the facts straight. I didn’t say he didn’t have the mental capacity to understand my argument. I said his opinion didn’t matter.You’re not convincing anyone that your position is correct when you act like that.My comments, in this instance, are directed to people who have a modicum of understanding of the issue (I assume you do not) and recognize 6’s lutz trolling for what it is. 6, in essence, is asking “why do we have patents?” That question may get play on Ars Technica or Slashdot, but it doesn’t get much play here.

          3. 43.2.2.1.3

            Guru said, “Congress has the ability to enact patent/copyright laws under the Commerce Clause (Article 1, Section 8, Clause 3) independent of Article 1 Section 8 Clause 8 (i.e., the so-called patent or copyright clause). Think about that for a minute.”What? Have you ever heard of the “Odious Monopolies” — patents on trade not related to inventions? I assure you that it is unconstitutional to grant patents where there is no invention or inventor — or at least the Framers so thought. I would be flabbergasted if the Supreme Court ever rule to the contrary.

            1. 43.2.2.1.3.1

              “I assure you that it is unconstitutional to grant patents where there is no invention or inventor — or at least the Framers so thought. I would be flabbergasted if the Supreme Court ever rule to the contrary.”Interesting Ned.

            2. 43.2.2.1.3.2

              I assure you that it is unconstitutional to grant patents where there is no invention or inventorDid I say anything about no invention or inventor? Next ….

              1. 43.2.2.1.3.2.1

                Patent Guru, we have a specific provision and a general provision governing the same issue. Which controls?

                1. Patent Guru, we have a specific provision and a general provision governing the same issue. Which controls?There is a grant of power. Clause 8 does negate the power granted in Clause 3.

                2. Sorry Patent_Guru, but anything passed under Clause 8 that smacks of Clause 3 will revert to Clause 3. Otherwise the Clause 3 is prolix and unnessary and the constitution will not be allowed to be read that way.

                3. [insert clause] is prolix and unnessary and the constitution will not be allowed to be read that way.What if the clause is “A well regulated Militia, being necessary to the security of a free State”?I stand by my proposition that Article I, Section 8 of the Constitution describes powers granted to Congress. Under Clause 3, Congress can do just about whatever it wants so long as it touches on interstate commerce. Congress has the power to create patent laws without Clause 8.

                4. I would say that you are incorrect – pure and simple.Any such interstate commerce laws that you might imagine would not be patent laws. They would be interstate commerce laws. While I recognize that your view may be flavored by the recent shenagins (related to Obamacare), the legal underpinning of what you suggest simply is not there.

              2. 43.2.2.1.3.2.2

                If it involves invention then it needs to be under the other part of the constitution, not the “commerce” clause.

    3. 43.4

      Granting a valid design patent on a computer-generated graphical design to its inventor increases the likelihood that investors will risk capital on the inventor’s business because the investors obtain a remedy against at least direct copying by infringers who have not undertaken the same level or risk or incurred the R&D costs involved in the invention. As a result the country has incrementally less competition in the patented design, but copyists retain an incentive to improve on the design and potentially obtain their own patent. The net social positive of this equation is the reason the system has persisted since 1789.

  14. 41

    I just got my case (11/456,503) reversed by PTAB a few months back; filed with 2004 priority, now has 2545 days of PTA! If anyone has heard of more than this, I’d like to start a “top ten” list or something…

  15. 40

    When I asked about the onset of the problem here (the jump and the slope), those in the trenches knew full well what the driver has been – through living through the attempt by the Office to reject its way out of the difficult job of examination.I already knew that. And I knew that others already knew that.My question is directed more to the academics and the lack of an objective study showing what practitioners know to be true. Take any of the various queues (any of the decks on the Titanic), view them as a lump sum of work to be done, take the infamous allowance cliff graph that the Office bandied about as ‘proof’ of their ‘quality’ efforts, flip that graph and time-adjust and you have definitive mirroring going on.And yet, we have all types of ‘fix the system’ legislation going on, from the AIA to the post AIA, and yet, how very little is actually being focused on the number one problem?It’s downright shameful that the focus is everywhere except where it is most needed.

    1. 40.1

      how very little is actually being focused on the number one problemWhat’s “the number one problem”?My question is directed more to the academics and the lack of an objective study showing what practitioners know to be true.What’s your question?

  16. 39

    The current system is that the Federal Circuit sets sensible precedents and the Supreme Court gets rid of them and restores a state of uncertainty. This is why having patent cases go to the Federal Circuit doesn’t work, not any of the reasons in the article.

    1. 39.1

      “This is why having patent cases go to the Supreme Courtdoesn’t work”Fixed for accuracy. You do realize that the proffered system suffers the same flaw, but only re-installs the problem of ‘percolation’ that did not work for thirty years after the 1952 act, right?The source of the problem is not the CAFC, it is the Supremes and the Supreme inability to take their fingers out of the patent law nose of wax. See Prometheus – they are more concerned with not letting their additions becoming dead letters than with the law itself.

  17. 37

    Well I see that all that hiring and conspicuously cursory reviewing of appeals has really paid off and they’ve managed to stem the tide of the ever growing backlog of appeals.

    1. 37.1

      “they’ve managed to stem the tide”Two items that may reverse that:1) The additional duties under AIA that the PTAB will need to contend with (if they ramp up)2) the eventual clearing of the other decks of the Titanic: a) the backlog of applications awaiting first action* b) the backlog of applications awaiting further action c) the backlog of applications hung up in RCE land.This eventual clearing has the potential to swell the Appeals backlog like the jump in 2008-2009.Especially if AAA JJ’s mantra is followed.BTW, has anyone ever figured out what exactly happened in 2008-2009? Not only is there a substantial one time jump, but the slope of filing (that lasted into 2012) is extreme.

      1. 37.1.1

        BTW, has anyone ever figured out what exactly happened in 2008-2009?That is easy. Appeals weren’t getting docketed for months (i.e., 9-12 months and even longer) after being submitted to the BPAI.After Dudas left, the USPTO began docketing all the backlogged appeals. As such, it wasn’t a jump in appeals that happened … it was the backlog finally reflecting the increase in appeals that happened earlier.

          1. 37.1.1.1.1

            Ridiculous and nonsensical rejections. Inventors finding no other way to communicate logically with examiners, they appealed.

            1. 37.1.1.1.1.1

              Well if that’s the only reason then obviously the inventors need to take a logical communications class and the problem will resolve itself. Though frankly I think the bar could do it for them.

              1. 37.1.1.1.1.1.1

                There is a genuine problem with the rejections that I’ve been getting. It makes me wonder if the examiner has read the application or what they cite. I was once cited over 200 pages and was told that something obvious was within them. It’s been the same crazy stuff across all of my applications with one exception. I used to file RCE’s, but that just adds extra years with no improvement. Some of my apps have been in process over a decade. I now have 5 appeals. I just won one of them using the same arguments I made to the examiner.I don’t understand where the problem is. Perhaps it’s underfunding. Perhaps it something else.

                1. Would you mind expounding a bit upon your particular circumstances Paul? In what particular area do you happen to most often prosecute? “I now have 5 appeals”5 whole appeals? Out of how many hundreds of applications good sir? 100? 200? 500?”I just won one of them using the same arguments I made to the examiner.”I have a kudos bar here for you. “I don’t understand where the problem is”According to you its outrageous rejections in, you imply, all of your application’s prosecutions. I will say this though, if you are having troubles such as the ones you seem to be describing it sounds like you just have a lot of claim construction issues on your hands and probably aren’t nailing them down good enough to address them directly. In my experience it is usually claim construction that is leading to wildly divergent views on the prosecution from the perspective of the applicant vs the perspective of the examiner. On some occassions though it is examiners that are “interpreting” the reference rather than making factual findings. You should instruct them on how to do it properly. Either that, or you may want to come over to the more “grown up” arts, aka the useful arts, which I’ll wager you’re not in as of now.

                2. “You should instruct them on how to do it properly”LOL – and it is the applicant’s fault if the examiners do not listen to the instructions (already given), right 6?

                3. I think you’ll find that those particular instructions I just suggested were in fact not “already given” to x given examiner.

                4. There is a genuine problem with the rejections that I’ve been getting.Let’s see these rejections and your pending claims and we can see who has “the problem”.

              2. 37.1.1.1.1.1.2

                What part of “Ridiculous and nonsensical rejections” did you have trouble understanding, 6, trouble enough to attempt your rather trite ‘blame the applicant’ CRP with?

          2. 37.1.1.1.2

            This has been gone over before, but I guess I’ll mention it again.1) The proposed continuation rules that only allowed 2 bites at the appeal. In this situation, instead of filing an RCE, you were better off appealing.2) Reject, Reject, Reject3) Because attorneys got over their fear of appealing (because they were forced to do so), they understood how effective it was.

          3. 37.1.1.1.3

            Maybe KSR, Bilski or Ariad had something to do with that? I mean, it was just around that time when the conditions for patentability were rumoured to have tightened up a bit.

            1. 37.1.1.1.3.1

              I really didn’t want a kudos bar, but thank you. What I really wanted was an examiner who would read and understand, and then respond logically – in a way that could move a discussion forward. That would have saved about 7 or 8 years.

                1. Well, sure. At least since the courts fixed how the PTO accounted for lost time. That’s not the issue. 10 to 12 years ago when I filed most of my patents, there were no infringers because there was no market for my inventions. Now, the market is saturated with infringers. Even with a patent, the likelihood of successfully competing with a product company in a market saturated by multi-billion dollar companies peddling highly sticky enterprise software products is not so good.It would have been nice to have a patent long ago. This is why there are patent investors. (NPE’s, Trolls, PAE’s, etc. for those who wish to denigrate patent investors.)

                2. “At least since the courts fixed how the PTO accounted for lost time”Speaking of, wasn’t there a recent proposal to put that back the way it was originally floating around lately? “peddling highly sticky enterprise software products”Called it, not in the useful arts. See, that was the first problem, and, as per anon noting it, I blame the applicant. Get on over to inventing in the useful arts and you’ll see those times likely come down a bit and somewhat more reasonable objections. When you come in with an abstract piece of garbage being claimed as an “invention”, don’t expect better than an abstract piece of garbage rejection.

                3. I guess anything in enterprise software is both useless and abstract… is that your point? Do you use software? Perhaps it is abstract to you, but is it useful?

                4. Are business methods (as a category) eligible?LOL – that’s a simple yes/no question.Same simple question for Software that is a manufacture and a machine component.Let’s see some intellectual honesty here Malcolm (it is apparently beyond 6’s character as he refuses to cite the MIT reference properly).

                5. My apologoies 6. I didn’t mean to assume that you might find it abstract. I don’t know you. You actually might be able to understand software.Many would think it abstract because the logic is happening behind the screen and that seems abstract to them. You know, confusing and hard to understand because you can’t see it work. I think you, 6, know it’s logical defined structures that accomplish a specific concrete thing, which is not really abstract after all.

                6. I think imaginary people of ordinary skill in that art disagree with you. In fact, I can quote a textbook’s description of what a computer process is. “Computational processes are abstract beings that inhabit computers”. And no my point is not that they are useless. But I will let the imaginary man of ordinary skill speak for himself when it comes to computational processes being abstract.

                7. “Imaginary people of ordinary skill in that art” apparently are not in Congress or the Courts. Even as screwed up as CLS is, software remains patentable subject matter. And as far as I know, there is no law stating that software is not patentable subject matter.Are these “imaginary people of ordinary skill in that art” solely in the PTO?

                8. “apparently are not in Congress or the Courts”Nope, they’re what the PTO and the courts are to use to determine how to construe your claims tho. “Even as screwed up as CLS is, software remains patentable subject matter.”So you assert. “Are these “imaginary people of ordinary skill in that art” solely in the PTO?”Nah bro, they’re in the minds of people in the PTO and the courts because of references produced by people in ur MIT. Check chapter 1, second sentence in the body. link to web.mit.edu

                9. Just a short read of the first couple of pages, I see that they have legally protected their new, useful and unique work.Your argument seems to be coding software is abstract and because coding is the foundation of all software, all software systems are abstract. Am I understanding you correctly?

                10. “Your argument seems to be coding software is abstract and because coding is the foundation of all software, all software systems are abstract.”Um no. Try reading what the reference states. “Computational processes are abstract beings that inhabit computers.”And it isn’t an “argument”, it’s a straight forward factual finding that I’m itchin to make.

                11. Same ‘factual finding’ that applies to ALL engineering, 6 – remember that part of the reference too?Again (and simply put), you are misunderstanding the ladders of abstraction concept. You see the word ‘abstract’ and think of the wrong patent concept. You do not understand the basics here 6, and I feel embarassed for you that your ‘character’ does not feel shame.

                12. “Same ‘factual finding’ that applies to ALL engineering, 6 – remember that part of the reference too?”That’s not exactly what it says brosef. Try quoting verbatim, you have the reference in front of you.

                13. Ahhh, the “meaning and understanding” “transcend” my “verbatim approach”. See, this is what examiners do, they “interpret” the reference to say something other than what it actually says. And you yourself and others on here (and worse over at Karen’s) btch near constantly about this. It’s hard not to do that when you’re trying to get the reference to say what you want it to say but it never actually did isn’t it?

                14. I certainly hope examiners do a better job and include understanding in between reading a reference and interpreting a reference.You are still leaving out that critical step.

                15. Same thing brosef. They just try to “interpret” it in order to better “understand” it. You can play semantics all you like, the bottom line is that you’re doing the very thing that you’ll sit on here and rag on examiners doing all day long. The reference says explicitly x but you’d really really like it to say y, so you state that, if the reference is correctly construed/understood/interpreted/wan ked, then it means y. I don’t really have much more to say to you on the topic today, so have your final say if you wish.

                16. I did read what the reference says. You are taking one phrase from the opening of a textbook about a software coding way out of context. You can’t just read the first paragraph of a textbook and expect to get an A on the test. I thought I’d add a little bit to brain housing group. Read a little further and you find “A computational process is indeed much like a sorcerer’s idea of a spirit. It cannot be seen or touched. It is not composed of matter at all. However, it is very real. It can perform intellectual work. It can answer questions. It can affect the world by disbursing money at a bank or by controlling a robot arm”Also read Locke’s definition of “abstract” at the top of the page. That will help you understand this complicated stuff – software.

                17. “You are taking one phrase from the opening of a textbook about a software coding way out of context.”Really? Way out of context? The context is the first paragraph of an introduction to software programming textbook. I’d say it’s pretty well in the right context. “You can’t just read the first paragraph of a textbook and expect to get an A on the test.”I’m not taking a test. I’m making a simple factual finding as to what an imaginary man of ordinary skill in the art considers computational processes to be. Fortunately he went out of his way to make it readily apparent. “A computational process is indeed much like a sorcerer’s idea of a spirit. It cannot be seen or touched. It is not composed of matter at all. However, it is very real. It can perform intellectual work. It can answer questions. It can affect the world by disbursing money at a bank or by controlling a robot arm”Yeah that’s a pretty good analogy. “Also read Locke’s definition of “abstract” at the top of the page”Oh I did. Trust me, I did.

                18. “I’m not taking a test”Just because you do not think that you are taking a test does not mean that you are not taking a test.Your ability to understand the reference is the test.Hint: you fail.

                19. “Just because you do not think that you are taking a test does not mean that you are not taking a test.”And just because you’d like to analogize a simple finding of fact to a test doesn’t make it a test.

                20. LOL – you still fail 6.Here’s another hint: try thinking these things as tests so that you are more motivated to actually understand what you are reading and can try to apply that reading with some semblance of intelligence.

                21. “Here’s another hint: try thinking these things as tests so that you are more motivated to actually understand what you are reading and can try to apply that reading with some semblance of intelligence.”That’s exactly what the examiners that you btch about near constantly do that leads to the outlandish rejections you btch about.

                22. One more thing… MIT has over 4000 patents. Take a look… most of them are software. It seems strange that an esteemed institution would state that software is abstract and then patent it anyway.

                23. Not at all. They want to get in on the land rush just like everyone else. If the CAFC is going to proclaim from on high “as a matter of law” something which is factually false then why shouldn’t they get in on it? But it’s alright, they’re reviewing just what claim construction is as we speak. We’ll see what happens very shortly.

                24. Neither one of them by themselves are even arguments anon. They’re simply descriptions of things. Though yes, arguments based on either description of things are separate arguments. Though closely related.

                25. 10 to 12 years ago when I filed most of my patents, there were no infringers because there was no market for my inventions. Now, the market is saturated with infringers.Wow, you’re going to be rich! How awesome for you.Maybe we are headed for another spike in the backlog because the self-congratulatory wanking and whining in this thread sounds just it did back in 2006.

            2. 37.1.1.1.3.2

              (sigh)Those would speak to a decrease 6, not an increase.Further, they would not speak (as your former boss-man had to pipe up) to the notion of out of control rejections. You do remember having to have to be told: “Quality does note mean Reject,” right?

              1. 37.1.1.1.3.2.2

                “Those would speak to a decrease 6, not an increase.”Well ok. If you insist. I just threw it out there.”Further, they would not speak (as your former boss-man had to pipe up) to the notion of out of control rejections. You do remember having to have to be told: “Quality does note mean Reject,” right?”You do know he just said that to appease whiners like yourself right?

                1. LOL – the lack of substance in your response is most telling.Please refrain from throwing up on this blog your pulled out of your assumptions and your baseless namecalling. Kappos effort to stop the Reject-Reject-Reject era was far more than merely appeasing ‘whiners.’

                2. “Kappos effort to stop the Reject-Reject-Reject era”And what a mighty herculean effort that was. Making an off-hand comment in a place where 99% of his examiners would never hear it. Whew, man, super big “effort” there. And of course as soon as he left nobody took over this herculean task.

                3. “Making an off-hand comment in a place where 99% of his examiners would never hear it.”Are you trying to be so wrong on purpose?That’s not a great ‘character’ trait to have.

                4. If you truly think that more than an extreme minority heard the director say anything about this you are mistaken. I’m sorry brosef, but it just wasn’t as transmitted as you’d like to think it was.

            3. 37.1.1.1.3.3

              Maybe KSR, Bilski or Ariad had something to do with that?In the thousand applications I have prosecuted, Bilski or Ariad has not prevented me from getting a patent on any of them. As for KSR, it only “codified” what Examiners did before: identify some “motivation” or “reasoning with some rational underpinning” … no matter how unreasonable … and throw it in their 103 rejection.The same arguments I used pre-KSR are the same arguments I use post-KSR. I need to invoke different “magic words” but the arguments are essentially the same.Regardless, for most 103 rejections, I am not arguing that it would not have been obvious to combine the references, I’m arguing that the references don’t teach what the Examiner thinks they teach.

              1. 37.1.1.1.3.3.1

                “In the thousand applications I have prosecuted, Bilski or Ariad has not prevented me from getting a patent on any of them.”No, but they may well have narrowed them claims down a bit. And if you’re a person not wanting to narrow em down, you appeal. “I’m arguing that the references don’t teach what the Examiner thinks they teach.”Well if you’re making that argument in the same way as a couple thousand other attorneys make it you’re not being as explicit that you’re challenging their factual findings as you could be. But since you have such an overwhelming record, I’m sure you’re just perfect.

                1. they may well have narrowed them claims down a bitNo … not substantively. Anything that was intended to be covered is still covered.Well if you’re making that argument in the same way as a couple thousand other attorneys make it you’re not being as explicit that you’re challenging their factual findings as you could be. But since you have such an overwhelming record, I’m sure you’re just perfect.I’m not the grammar police, but that first sentence needs work. To be honest, the hardest part about challenging an Examiner’s factual finding is identifying it in the first place. Citing, e.g., “column 3, lines 5-61” for five different claim limitations is not a finding of fact — it is an invitation for me to engage in speculation as to the Examiner’s intent. Once (if) I can pin the Examiner down as to a particular finding for a particular limitation, identifying error is fairly easy.

                2. “Anything that was intended to be covered is still covered.”Generally speaking, that’s all the examiner was wanting in the first place in many cases. I’m not sure if you understand just what “substantively” means. Most of the time where I’m looking for them to make a clarifying amendment so that only that which they’re intending to claim is in fact claimed the amendment they make is in fact substantive. Though of course, to them, subjectively, they often don’t feel like it was a substantive change. Problem is, other people may reasonably disgree with them. ” Citing, e.g., “column 3, lines 5-61” for five different claim limitations is not a finding of fact — it is an invitation for me to engage in speculation as to the Examiner’s intent. Once (if) I can pin the Examiner down as to a particular finding for a particular limitation, identifying error is fairly easy.”Oh boo hoo. If it is that difficult for you to pin them down on what their grounds of rejction, including factual findings, actually are, then either a. you’re in the wrong line of work, or b. simply argue you haven’t been put on notice of the grounds of rejection. If you really feel like you’re being invited to speculate then by all means, put b down in your remarks as your sole argument. If it weren’t for you being a guru and having such an outstanding record, I’d say the issue was likely a.

                3. b. simply argue you haven’t been put on notice of the grounds of rejectionThat is exactly what I argue … ALL THE TIME.Unfortunately, it would be nice (and proper) for the Examiner to save me that step. There would be a lot less appeals and a shorter backlog. Unfortunately, there is a ritualistic dance I need to perform nearly every time to get the Examiner to get him/her to identify the real reasoning behind their rejection.

                4. “That is exactly what I argue … ALL THE TIME.”Oh well in that case you’re good to go. “Unfortunately, it would be nice (and proper) for the Examiner to save me that step”Well it’d be nice for people in hell to get ice water. Wahmp Waa. “Unfortunately, there is a ritualistic dance I need to perform nearly every time to get the Examiner to get him/her to identify the real reasoning behind their rejection.”Oh come on. I’ve read a sht ton of rejections, and while yes, I take issue with many of them, the vast vast majority at least puts the reader on notice of the grounds of rejection.

      2. 37.1.2

        From what I remember in 2008-2009 is that Dudas was on board and examiners were rejecting claims under 101 and refusing to remove the rejection and they were using like 7 references to reject the claims. Or, the rejections were just outright ridiculous and they wouldn’t budge.Actually, in 2008 I remember making like 5 appeals, which is a lot for me and they were due to really unfair rejections.

        1. 37.1.2.1

          I had examiners say that they agreed with me but their SPE wouldn’t let them allow it. What’s left to do besides appeal at that point?

          1. 37.1.2.1.1

            I have had the conversation more than a few times. Oftentimes, it involves something like “your claims are too short.”

          2. 37.1.2.1.2

            1. Talk to the spe. 2. Find out specifically what it is that is causing the divergence in views. Claim construction, factual findings, etc. 3. Resolve the difference through appropriate means.

            1. 37.1.2.1.2.1

              You are assuming that talking and resolving have not been tried.I suggest that you read the post by AAA JJ – he does in fact nail the situation.

              1. 37.1.2.1.2.1.1

                I say it’s too late for that. I will get my case settled in the News. You Leopold with the guts and the blood and the threats of death on your facebook page.. nice touch, and Patentator…… Making up lies and using lies that were conspired from the time I was born to win a case are still malpractice just for starts. I will get what belongs to me back. that crap Quinn wrote about first to file.. that is if the real inventor lets it be stolen!

              2. 37.1.2.1.2.1.2

                “You are assuming that talking and resolving have not been tried”No, I didn’t assume that. He asked what can be done at a certain point. At that certain point he made no mention of those things having been done.

            2. 37.1.2.1.2.2

              1. Talk to the SPE? Lulz. When you’re dealing with a junior examiner and you get the “The examiner takes Official Notice that it would have been inherently obvious to optimize the prior art through routine experimentation” rejection, it was the SPE who told the junior to use that rejection. And if they didn’t tell the junior to write it, they signed off on it. “Oh, I see all the claims are rejected, where’s my pen so I can sign without bothering to read the rejection.” 2. That’s pretty simple. What is causing the divergence in views is 1) complete ignorance of the law on the part of the examiner (and/or SPE) and 2) complete ignorance of the application caused by not bothering to read the spec and just word searching the independent claim.3. Right. Exactly like I said. Respond thoroughly and completely to the FAOM. Point out all of the errors (even for the dependent claims) and when you get back form paragraphs and nonsense boilerplate, file your appeal.

              1. 37.1.2.1.2.2.1

                Depending on how complex your art is I think you overestimate the amount of information that you can even glean from most specifications. Much less how much you can understand as a newb junior. But yes, where they’re ignorant of the law, that’s up to you o officer of the court, to work out.

                1. Go look at the recent Board decision in 12/166,582. That examiner is a very good example of the triumphantly willful ignorance that pervades the examining corps. Don’t get me started on the useless SPE’s who green lighted that POS “answer” the ignoramus examiner wrote. I’m dealing with that examinertard in one of my cases currently. His rejections in my case are even worse than the ones he was reversed on in 12/166,582. Conclusory nonsense with no evidentiary and factual support and liberal helpings of boilerplate case law. He is a moron. With full sig. I would love to hear your advice on how to educate him.

                2. That one’s pretty bad. Nice work on the part of the prosecuting attorney – those briefs are models of efficiency.

                3. Yeah, I thought so too on the second one at least. Until you notice the blatant grounds of rejection on the record hinging on a claim construction that brings the case down that was never even reviewed by the board :(

                4. I just looked it over and first I was going to suggest that you call him up and ask him how, if it is a cutoff view, it is that there is a straight line depicting the top of the thing in the figure. If you had been taking care of that case. But while that is one thing you should have done, there is yet another. I realized that in fact he is a more willy examiner than I at first gave him credit for, thinking he just made a clear error. Had he have been more eloquent, the applicant probably should have been grateful for his pointing out what he did. The claim calls for an “entire outer surface of said core” to be coated with the coating. At least one of the outer surfaces of the core is entirely coated. That’s all he had to say. 102. The differences between the parties thus boil down to a. the examiner putting forth an implausible reading of the reference and b. having a difference of opinion on the claim construction. The examiner was ancy about sticking with a, you could tell from his response, by his hedging on the second grounds. Applicant obviously meant for all outer surfaces to be entirely coated with the coating and no doubt believes his claim is so limited to this very day. But what he actually claimed was only that “an entire outer surface” be coated. Certainly and undeniably one of the outer surfaces is entirely coated. It may be that applicant is correct in his claim construction, but I wouldn’t be my patent on it in a district court. So, in any case you’re prosecuting, in addition to that which I suggested above, you should also address any possible claim construction issues between you that have probably fallen through the cracks, since he appears to be terrible at stating his grounds of rejection clearly for the record. The examiner would have been much more likely to drop the unreasonable reading of the reference once you’ve gone through how to find a fact and addressed the solid line than he was likely to reverse himself on a claim construction that was in fact probably a reasonable construction in the previous case. Perhaps he would do the same in your case. Take those actions in your case sir, and results are likely to follow. Do report back.

                5. I should take a moment to notice that it is a sad state of affairs when the board doesn’t even address the examiner’s secondary grounds of rejection in a 102 when he at least made it explicit. But, that’s our board for you. They’re really astonishingly bad at what they do. Supposedly they’re supposed to review the rejections made by officer personnel. Instead more often than not, they review meh, whichever grounds are convenient, and occasionally make up straw man grounds for themselves to knock down.

                6. “I should take a moment to notice that it is a sad state of affairs when the board doesn’t even address the examiner’s secondary grounds of rejection in a 102 when he at least made it explicit.”Are you referring to the portion on page 9 of the examiner’s answer where he states, “Second, the entire outer peripheral (longitudinal, vertical) surface that would contact the molten metal during a casting process is coated and explicitly shown in Figure 6 of EP’775”? Is that what you’re referring to? The examiner, sort of late in the game, saying, “Oh well, if you intepreted the feature of ‘an entire outer surface being coated’ as ‘a surface that would contact the molten metal during a casting process’ then my guessing at what Fig. 6 of the reference might show if it showed what I wanted it to show then kind of sort of makes sense.” Is that what you’re referring to? I’d say nice try, but it wasn’t. It was as lame as the rest of your posts.” But, that’s our board for you. They’re really astonishingly bad at what they do. Supposedly they’re supposed to review the rejections made by officer personnel. Instead more often than note, they review meh, whichever grounds are convenient, and occasionally make up straw man grounds for themselves to knock down.”The Board is pretty much on record as saying that when it comes to considering Applicant’s arguments, they’re incapable of reviewing more than one argument against the rejection. Take a look at this:link to usptols.org… In the first full paragraph on page 6 these APJ’s essentially say they are incapable of considering multiple arguments from appellants and evaluating the merits of each. (Really what they are saying is they are lazy.)So they’re on record as saying multiple arguments against a ground of rejection will be glossed over in their review, but you want them to give consideration to new nonsensical grounds of rejections examiners slip into the arguments section of their answer?You just can’t be as dumm as your posts indicate.

                7. “The examiner, sort of late in the game”Check his prior actions, it’s right at the top of page 9 in the final. It wasn’t “late in the game”. He just didn’t bring it to everyone’s attention very well. Technically speaking the applicant’s AF was non-responsive iirc, due to not even addressing that grounds, which the examiner maybe should have dinged him for and sent it back to him (thus avoiding the appeal) as not being fully responsive. See, that’s what happens when examiners don’t ding attorneys for being non-responsive, thousands of dollars wasted in appeals. But that situation is why I suggested to you that perhaps you should ensure 100% that you’re understanding him as good as you possibly can and not flub it like the previous guy. But then again, you probably already do understand him as well as you probably can, because your ability to understand is unfortunately limited. Observe, even now, you think that 2nd grounds was a mere something he “slipped in”. This is after you’ve looked over the case multiple times. The first time, without my help, you incompetently determined that it was solely incompetence on the examiner’s part. Of course you missed the non-responsive AF. You missed the other claim construction that’s blatantly being used, you missed the whole point of his final action. Good work mr. attorney. That was his main grounds of rejection. The other one he didn’t give two shts about, it just caught everyone’s attention and got blabbed about a lot because it’s so preposterous. Of course, it also distracted the board from the best grounds of rejection, which is a shame and also the examiner’s bad. The rejection is over the figure itself (see the actual rejection) and his explanation of it, is simply that there are two ways that the reference discloses the subject matter claimed. First, his cutaway “hypothesis”, which you will note he’s ancy about, so second, his ace in the hole, is that the claim is wider than applicant thinks anyway so anticipation is still present so he doesn’t feel any pressure to back off the first noted grounds. “but you want them to give consideration to new nonsensical grounds of rejections examiners slip into the arguments section of their answer?”It actually wasn’t new at the time of the brief, and it certainly isn’t nonsensical. The claim literally states what it literally states and it doesn’t require all sides to be covered, so sorry, but it simply doesn’t, and the patent will be at great risk for summary judgement etc. And yes, I expect them to give full consideration to each and every ground of rejection raised. And I also expect them to give the claim the BRI (which I would have eventually sussed out myself and I kind of was wishy washy about on my first reading the claim), and notice if the examiner put an additional grounds of rejection on the record relying, obviously, on a slightly more broad interpretation than may have been wished by the applicant (in this case the literal interpretation). Whether or not they want to/can review more than 1 argument from the applicant is up to you to moan about. Though I will back you up if you go moan to someone important. The fact is, the board in its current configuration serves nobody’s interests. Not the applicant’s and not the office’s. It needs oversight more than the CAFC provides. It needs, at a bare minimum, for examiners to actually be able to request rehearing (which they currently cannot in all but the most egregious circumstances due to the backlog). But more than that, I think what it really needs are some quality control mechanisms. For instance, simply having little boxes to fill out with varying claim constructions/grounds of rejection/arguments from applicant should suffice to help ensure they address them all. I should likewise take yet one more moment to point out that had the examiner been well trained enough to see the differing claim constructions (the one the applicant wanted vs. the one he was going to give it) and to apply Miyazaki then the issue would have been brought to the fore, and stopped the whole case from ever going to appeal in the first place. Which is really what Miyazaki rejections excel at, making a real issue out of claim construction instead of letting everyone (the board most egregiously) just skip right over it.

                8. Put the shovel down. I’m gonna “flub” my case against this examinertard just like that other guy did and walk away with my original claims granted with 3+ years of PTA just like he did. Book it.

                9. I have no doubt you will. Because the board is just that incompetent.I’ll book it for ya bro. Tell me what your case is though and I’ll see to it personally that you don’t if you did in fact flub it.

                10. “So, in any case you’re prosecuting, in addition to that which I suggested above, you should also address any possible claim construction issues between you that have probably fallen through the cracks, since he appears to be terrible at stating his grounds of rejection clearly for the record.”That’s your advice? You really s#ck at this.

                11. Sure bro. Just go ahead and do it, then report back. I could go on for days about what to do in the case that you cited, but it’s one that I would have resolved the day I received the action, in the first thirty minutes after I picked it up. So, while I’m busy “sucking” at it, and getting patents left and right, you can busy yourself preparing expensive appeals.

                12. Take a look at 11/262,917. The brief is all the “education” the examinertards could have ever needed. Look at the beyond ignorant answer. You think this examiner learned anything by this reversal? Or do you think the next time he has a range of some value in a claim he’s just going to insert the In re Aller form paragraph? My guess is the latter.

                13. Jes us after working my way through that whole thing Idk. I see an meh so so incompetent brief followed by a mostly incompetent answer. Though, at the least he did put forward his position as to how the “results orientation” was recognized by the ref. But I doubt he’s going to learn much about Aller, or stop using it. At most he’ll simply do as the board requests and go through the motions of showing that only routine experimentation would be involved in an optimization exercise directed to the setback of the segments. Looks to me like the main thing that is amiss is the claim construction and the failure to designate parts that meet all limitations. The Aller stuff is just gravy perhaps poured on top if you accept his position on the two underlying issues of claim construction and the elements being properly designated as meeting all limitations (noting especially the function) except the range. If the board had accepted the other two things, meh, the Aller stuff may have gone a different way by them simply making that showing for him. Any competent attorney would have stopped that from being even much of an issue by pointing out the other two errors up front and not even having to fight about Aller. But not these geniuses. But if they want to spend a few G and wait a few extra years, they can be my guest. Looks to me like the case was easily resolvable before appeal if either side had have been motivated at all to do so. Even the board got in on the incompetence game by declaring that the examiner presumed something where there is no indication on the record that he did so. Though I do agree that the examiner did not go through the motions to show that only routine experimentation would be involved in an optimization exercise directed to setting back the segments, that doesn’t mean that he presumed such. It just means he may have failed to put it on the record. Still, on the whole I’d have let the claim go myself. Seems fine.

      3. 37.1.3

        I only need two OA’s from an examiner to determine whether the examiner is one worth “working with.” All of my responses to FAOM’s are thorough and complete. If what I get back is form paragraphs and inapposite boilerplate I just appeal. So should you. And everybody else.

        1. 37.1.3.1

          You nailed it here. I’ll bend over backwards to work with a reasonable Examiner (while still looking out for my client’s best interest). However, I have absolutely no hesitation going to appeal.

  18. 36

    “new PTAB decisions in these cases take a little over 2 ½ years from the applicant’s appeal brief until issuance of the PTAB decision.”One year is far too long. There is no excuse for 2 1/2. Many inventors are waiting on patent protection to get financing or to proceed to commercialization. And potential competitors are waiting to see the scope of patent protection, if any, which may issue.

    1. 36.1

      “Many inventors are waiting on patent protection to get financing or to proceed to commercialization”Why not bring that to the attention of the office (or even your specific examiner)? Perhaps they can institute a “buy your way to the front of the line” for appeals as well.Everyone knows the line is too long, but there’s only so much you can do about that. And they’re already doing what they can. Look at recent decisions and look at the hiring.

        1. 36.1.1.1

          What? They gave you the option for accelerated examination for a fee. Why not accelerated appeal?

          1. 36.1.1.1.1

            This won’t improve the backlog, just make the delay longer for those who don’t pay the fee.

              1. 36.1.1.1.1.1.1

                “but it’ll also make the delay shorter for those that do”For EVERY day that you expedite for one party, you necessarily delay for another. You have changed NOTHING in the actual process.All that you have done is sell the queue spot – that is not justice and that is certainly not ANY action to fix the root cause of the problem.An incredibly bad suggestion for addressing the backlog.

                1. “For EVERY day that you expedite for one party, you necessarily delay for another. You have changed NOTHING in the actual process.”Well yes, except the ordering. “All that you have done is sell the queue spot – that is not justice and that is certainly not ANY action to fix the root cause of the problem.”I agree. “An incredibly bad suggestion for addressing the backlog.”It wasn’t a suggestion for addressing the backlog, it was a suggestion for addressing one of the problems caused by the backlog.

                2. I agree that it is a bad approach. Besides being unfair, it institutionalizes the delays. The PTO could reduce the backload substantially by sending a few thousand out to experienced attorneys, like AAA JJ and myself, for vetting. We could quickly identify the many cases that are based on BS analysis or on no evidence at all, and the PTO could reach out to the applicants to get them settled. Even paying my full hourly rate, you’d still come out ahead. Easy-peasy.

                3. “substantially by sending a few thousand out to experienced attorneys, like AAA JJ and myself”If they wanted them simply reversed they could save themselves the money and just reverse them summarily.

                4. “If they wanted them simply reversed they could save themselves the money and just reverse them summarily.”That would do it too, but who is “they”? That’s the whole problem – it is taking 2.5 years before “they” even look at the cases. Plus, they’re now under so much pressure to reduce the backlog, it’s hard to believe that “they” are taking a very close look even then.

                5. They should assign APJ’s to sit in on the pre-appeal and appeal conferences to shoot down the clear losers early and hopefully educate the tarded SPE’s and QAS’s on what is needed for an affirmance.

                6. the root cause of the problemReams of software, “business method” and computer-implemented junk applications. Get rid of them all. The backlog will shrink and the economy won’t blink an eye.

    1. 35.1

      Note the interesting difficulty that the Justices have with the (equal) patent eligible category of methods…

  19. 34

    Yeah this thing is just full of laugh worthy quotes and stats. The one guy thought there was no invention before we “invented” electricity. Then you have their chart about who best protects IP, and you might wonder why so few people said japan. Looking into their methodology will tell you why, they didn’t ask any japanese people lol.

    1. 33.1

      Just guffaw worthy. But you have to remember that this is the same public that Jay Leno puts on his show.

    1. 32.1

      38% of all global consumers are inventors.They consider themselves inventors, anyway. I’m surprised the number is so low, when they were basically asking “do you think you’re clever?”

              1. 32.1.1.1.1.1.2

                Same question to you, IANAE: do you think you’re clever?(Gee, I wonder if I will get a like from Leopold…)

      1. 32.1.2

        I’ve made this comment before, but it is worth repeating. When I tell the “average Joe” what I do for a living, a significant amount of them tell me that they have a great idea that they always thought about patenting.Contrary to the beliefs of some on this blog, the general public really likes inventors, inventions, and patents. The patent system has been describe by some as a “lottery.” However, that is part of the charm — an average person with an idea and a patent could become a millionaire. In reality, making money on an invention is much more difficult, but winning the lottery is still a popular goal — no matter how unlikely.While stories of PAEs and trolls inflame the FOSS-ites that inhabit Slashdot and Ars Technica, the general public sees it as a big company stealing a little guy’s idea. The public has much less sympathy for the businesses of internet millionaires/billionaires than the inventors of supposed “junk” patents upon which these businesses are based.

  20. 29

    This because we have no unifying theory of patent law and the anti-trust idea of patent law is gaining more acceptance among non-patent scholars. We have no unifying theory of patent law, because we have no consistent understanding of property rights.

    1. 29.1

      we have no consistent understanding of property rights.Please please please go on. This is really fascinating.Who do you mean when you say “we”, and how do you measure the “consistency” of the understanding of “property rights” by this group of people?

      1. 29.1.1

        Specifically, the courts. But more broadly the legal community. Although it could apply to the US or Western public in general. Much like the anti-trust vs. Natural Rights/social contract split in patent law, you have a debate between, property rights are social expedients vs. property rights are based on creation (Locke). Very few people have clearly defined the basis of property rights in their minds, so they are some blend of these two ideas. Right now the social expedient theory is gain more adherents, as can be seen in the Kelo v. New London case.

  21. 28

    Three new judges since the CLS debacle and two FedCir decisions on the topic. Maybe another en banc try at the issue is in order???

    1. 27.1

      “The downward trend doesn’t even become convincingly present until 2011 or so.”To your eye, perhaps. But that’s why the authors used regression analysis. It’s pretty convincing to me.

      1. 27.1.1

        Not sure how much you understand what regression analysis can show you if you find an application in error to be “pretty convincing.”Just because you can draw a line through data does not mean that that line has any meaning.Here – the line is more misleading than helpful (but only slightly).A couple of comments about the data, but please keep in mind that I have not yet read the report, so these are only general comments.1) choosing the end points and the quantity for the rolling average are both arbitrary decisions. Try a few variations to see if the arbitrary decision has an effect and choose the method with the least arbitrary effect.2) Patent cases are Extremely fact and issue sensitive. If you are lumping all the data together, you are more likely conflating apples and oranges and will not be showing something that is truly meaningful. I suggest that you segregate the data by issues and then trend by issue. The result will be both meaningful and helpful. Also, you may find that some issues are bucking the trend and becoming uniform while others are tending to even more disuniformity.3) each of the upward trend mini cycles is occurring at a transition from one year to the next. Such an external timing factor may indicate that the ‘easy’ cases (at least those that find agreement) are either being stocked or batched, which would mess with any attempt to trend by time too finely. 4) That said, the aggregate data does appear to have several break points – since the cases do not happen in a vacuum, the break points should be separately trended. For example, through the first three axis points, the distribution is far more tight than any other subset.

    2. 27.2

      I agree. From 2005-2010 the unanimous opinion rate just seems to be cycling between 60% and 90%. One does have to be careful not to engage in post-hoc endpoint analysis in which one picks endpoints that support a particular conclusion, but I would be interested in a more detailed statistical analysis than just a linear regression. Given the significant variability in the first several years, how likely is it that occurred in the past few is not just random noise?Assuming the shift circa 2010 is real, one wonders if Michel retiring in 2010, Archer retiring in 2011, and Gajarsa taking senior status in 2011 and then retiring in 2012 had something to do with it. Before that the composition of the Federal Circuit had been extremely stable over the time period studied. Maybe the “disuniformity” is just the result of a few new judges settling in? It would be instructive to compare it to other circuits that had been stable for a decade or so and then saw a similar level of change in composition.

      1. 27.2.1

        Thanks James. We talk about the turnover issue in the piece, both in the context of the new judges and judges taking senior status. In terms of endpoints, the beginning endpoint was the earliest opinion that the Federal Circuit made available on its website (i.e.: fall 2004) and the ending endpoint was when we stopped collecting in September. But I agree with your visual analysis – things really start changing around 2010. I’ll go back and run the analysis from 2004-2010 and from 2010-present to see what it looks like.

  22. 26

    Oh, snap, the entire government just got sued for calling actual inventors “trolls.”http://news.priorsmart.com/tar…

    1. 26.2

      Also, the complaint, while decrying “name calling” is replete with the same, calling big corporations “bullies.”

    2. 26.3

      Oh. My. God …BWAHAHAHAHHAHAHHAHAHHAHAHAH!!!!!!!!These clowns truly are the gift that keeps on giving. I wonder if it’s possible to comprehend the self-importance of Tara Chand Singhal? Probably not. You’d go insane trying, like some poor bstard in a Lovecraft story.

    3. 26.4

      Interesting that the term “nefarious” shows up almost immediately. Gosh, where did I hear that term being bandied about recently? “Great” minds …It’s hard to pick a favorite paragraph. But paragraph 79 is a good one: “[C]apping or limiting damage awards would kill innovation. A clear illustration of that human nature is the Mega Lottery.”Sometimes the truth leaks out in amazing ways.

      1. 26.5.1

        Okay, I will comment, just to point out paragraph 31+. Amid all the rest of it, the plaintiff does have an actual axe to grind. I’d be curious to see in more detail how that lawsuit went (though I already have a pretty good guess).

        1. 26.5.1.1

          “Okay, I will comment, just to point out paragraph 31+.”From paragraph 32: “Plaintiff … apprised the COO that his corporation’s conduct violated Section 30 of AIA and that the COO may be called to testify before Congress. The COO ridiculed that possibility…”My guess is that the last part of that allegation is factually correct. FYI, Section 30 of the AIA is the “Sense of Congress.” It would be pretty hard for a corporate COO to violate it.”Amid all the rest of it, the plaintiff does have an actual axe to grind.”Huh? There’s this thing called “standing” that prevents you from using the courts to randomly complain about laws you don’t like.

          1. 26.5.1.1.1

            “There’s this thing called “standing” that prevents you from using the courts to randomly complain about laws you don’t like”That’s what blogs are for, aren’t they?

  23. 25

    I guess even self-proclaimed “patent apologists” have their limits:link to ipwatchdog.com…this patent application was allowed without ever going to final rejection. The applicant filed, made some minor amendments to certain claims and then the patent examiner relented and issued the patent. This is absolutely insulting and really should be investigated.Of course, if a POWERFUL COMPUTER BRAIN had been included in the claim, it’d be an entirely different story.

    1. 25.1

      Has anyone noticed that this patent recites “chilling a container for beer to a temperature of at least -5 °C.” It seems to me that the phrase “at least” ought to be interpreted as -5, -4, -3….0…1, 2, 3 °C, etc.

      1. 25.1.1

        I would disagree since it says “chilling to” and the starting point is assumed to be somewhere around room temperature. Just because it’s claim interpretation doesn’t mean that all common sense goes out the window.

        1. 25.1.1.1

          A certain Chef associated with America would like to discuss your “common sense” assertion PA.

      2. 25.1.2

        That’s what patent leather said, but tbh, I think that’s just reading the “chilling” out of the claim in a manner of speaking. If you chill something to at least -5 then you chilled it down to at least -5.

      3. 25.1.3

        I find the functional language regarding the desired result (i.e., the “ice crystals” floating in the foam) to be the more interesting claim construction issue. Is that a limitation to the method?Regardless, this is obvious as all get out. Anyone who’s been drinking beer for a while has had one with some ice crystals in the head. Was anyone ever confused about how that ice got there? Did elves put it there? Or was it because the temperature was really cold? Golly. Science is hard.That said, the Mighty Quinn is mighty selective about what claims he chooses to “analyze”. Go figure.

      4. 25.1.4

        RH, I disagree with your construction.Think of a vector, with direction and magnitude.Direction is given by “chill” which indicates down to a certain level.Magnitude in such a phrase then is that the “at least -5 °C” is a ceiling and not a floor. The better interpretation is “-5, -6, -7 °C…etc” Your version nixes the meaning of the word chill as you include temperatures that no longer chill but heat.

        1. 25.1.4.1

          If you start with the container at, say, 25 °C and chill it to, say, 10 °C or to -3 °C, you have chilled the container. The container can be chilled even if the final temperature of the container is above -5 °C.Obviously, there must be some implicit limit to the temperature range in that some chilling must occur. That is, the upper limit of the temperature range “at least -5 °C” must be somewhere below the initial temperature of the container, or else chilling would not be occurring.

          1. 25.1.4.1.1

            RH,Your construction is still wrong.Any construction must take into account the open-ended range. Your construction allows an open-ended range on the high side, which allows non-chilling.Sorry if you don’t see that. Yes, some chilling must occur. That is a given – and so is the open ended range. Both are stated in the claim, therefore, my construction is the logical one.

        1. 25.1.5.1

          +3 °C is within the range of “at least -5 °C.” That is, -5 °C is the “least” numerical temperature in the recited range. I suspect they intended “a temperature of at most -5 °C” or “a temperature of -5 °C or lower” or the like.

          1. 25.1.5.1.1

            Uhm, no. A process step that is recited as chiling to a temperature of at least -5C is not met by a 3C. It’s met by -6C, or -10C or absolute zero, but its not met by 3C.

              1. 25.1.5.1.1.1.1

                The claim recites “chilling…to a temperature of at least -5C.” So if you handed me a beer glass and told me to chill it to at least -5C and I came back to you and said, “Here you go, I chilled it to 3C” would you say that I chilled it to at least -5C?

    2. 25.2

      On a related note, why am I fighting about obviousness combinations over 4+ references while stuff like this is allowed?

      1. 25.2.1

        I notice you put an ing on fight there, if you’re still “fighting” a rejection with 5 references after an interview you fail at prosecution. With 4 after an interview you get a D-.

          1. 25.2.1.1.1

            AAA JJ,I am not sure you understood 6’s post.He is slipping into his age-old “blame the applicant” mode.Surely, it is the applicant’s fault if the examiner won’t budge…/eyeroll(btw, your advice to appeal is good advice when the “the applicant is to blame” mindset is so obvious with a particular examiner)

            1. 25.2.1.1.1.1

              anon,I would never claim to understand anything posted by 6. He’s willfully and triumphantly ignorant. But I agree that one shouldn’t be “fighting” 4+ reference combinations with the examiner. If the rejections are improper, file your response and if you get the “arguments not persuasive” form paragraph nonsense back from the examiner, then appeal. It’s pretty simple really. I hear so many practitioners claim that they “are trying to work with the examiner” or they “don’t want to get on the examiner’s bad side” or whatever. All of my responses to OA’s are complete and concise. I get right to the point. I point out all of the error’s in the OA.It only takes me one response from the examiner to assess what type of examiner I’m dealing with. A lot of them are looking for first class passage on the RCE gravy train. With them, I just appeal. No reward for shoddy work from me. Not interested in “working with” somebody looking to milk the system. And certainly not worried about getting on the “bad side” of somebody who’s scamming the production system and ripping off applicants. No more counts for them. I’ve told some examiners in no uncertain terms, “The only counts left in this case are from allowance or examiner’s answer. Your choice.”The examiners who demonstrate that they’ve actually given my evidence and arguments the consideration they are due, I’ll “work with.” Especially if their response can actuall cause me to reconsider my position. That’s actually the preferred response. Unfortunately there are so few examiners with this ability that it’s almost a non-occurrence. But it does happen once in a while and I’ll “work with” those examiners.The rest of them? Forget about it.

              1. 25.2.1.1.1.1.1

                “All of my responses to OA’s are complete and concise.”So you assert. I catch more people than most people would guess filing incomplete replies year in and year out. “scamming the production “TBH I have to admit that I no longer view it as such, I would say more like “working within”. Pretty much all of the “outstanding” rated examiners that I know of (quite a few actually) are doing that. Surely if the PTO considers them outstanding then they must be working in the system as it was designed for them to work within.

                1. ” I catch more people than most people would guess filing incomplete replies year in and year out.”That’s your job? To “catch” people?

                2. I have to make sure that the replies are complete as the first step in evaluating them. Every examiner is supposed to. And yes, it can be called “catching” people making incomplete replies. When an incomplete reply is made it has two usual effects a. wastes an entire round of prosecution and b. provides inadequate information for me to make an informed decision as to whether they are persuasive or not.

                3. Can you give me an example of the incompleteness that wastes an entire round of prosecution?If they provide inadequate information, isn’t that not persuasive by definition?These are serious questions – I don’t recall being “caught,” although I’m sure I’ve made a mistake from time.

                4. Sure that’s an ez one. Happened just the other month. I send a drawing objection, 112 and a 102 and a 103. He responds to the objections to the drawings, the 102 and the 103. The 112 goes unaddressed. Ultimately amending the claims to comply with 112 to make the claims conform with the WD req will make them subject to an even stronger 102 or 103. I have to call him to see what he wants to do about the 112 and explain to him that when he does he’s looking at an even worse 102 or 103. I give him the option of being non-compliant or getting a final. He opts for the final (they always do, heaven forbid an attorney have made a mistake and there being only 1 mo to respond). The whole round is wasted since his new attempt to get over the 102 doesn’t comply with 112 and will ultimately be much different. And it would have been much different in his response if he had replied to the 112 as proper.

                5. ” I give him the option of being non-compliant or getting a final. He opts for the final (they always do, heaven forbid an attorney have made a mistake and there being only 1 mo to respond).”Huh. If I neglected to respond to a bogus 112 rejection, then I would most definitely take the “non-compliant” option and respond to the bogus 112 rejection. You’re apparently dealing with some weak attorneys.

                6. Or the 112 isn’t “bogus”. Lol, lb, I like how you just slipped in the “bogus” part. I can scarce remember a time when someone simply argued around a 112 1st I gave, that’s happened maybe twice in my whole career, if that. And none have gone to appeal or pre-appeal. I can barely even remember getting any arguments back regarding 112 1st problems save in the couple of “computer implemented” cases I have kicking around. Trust me, there are enough legit 112 1st problems in my cases that I don’t have any need to simply send bogus 112 1st rejections for kicks.

                7. I thought you’d like that. I think that’s called “mischaracterizing your post,” or “bad blogging,” or something like that. It probably ought to be banned.Anyway, I can scarce remember a time when I’ve received a 112 1st at all, much less a non-bogus one. I actually appreciate the legitimate 112’s for indefiniteness – there are certainly times when a mistake slips through, or when another person could fairly read something differently from what I intended. But I’ve certainly received a bunch of bogus ones of those. Obviously not from you.

                8. I thought you’d like that. I think that’s called “mischaracterizing your post,” or “bad blogging,” or something like that. It probably ought to be banned.You violated the norms, bro’.

                9. I have never once received a 112, 1st rejection that I needed to amend around. Every single one I’ve ever received, admittedly not that many, I have responded with, “WD is a question of fact, and your rejection is conclusory bullsh!t with no evidentiary or factual support.” Never had a problem having any of the rejections withdrawn.

                10. Well lucky you. Perhaps, just perhaps, you’re one of the 1/2 or so of attorneys out there not constantly introducing new matter. It really isn’t that hard, it’s lax enforcement that leads to the current plague imo.

                11. I wouldn’t call it luck. It’s pretty much all skill.You may actually be one of the 0.0000000001% of examiners who are capable of writing a WD rejection and actually making a case. I seriously doubt it, but anything’s possible.

                12. So if only .00000001% of examiners are capable of WD rejecting you, how would you have ever gotten feedback on whether or not you’re as “skilled” as you think you are? Obviously this escapes your notice as you blow your own horn. But feel free to continue.

                13. I know every claim I draft has WD support because I drafted it. That’s where the skill comes in. Before the rejection.Get it?

                14. I’m sure all the screw ups think that as well. That’s where their “skill” comes in. Believe me, I get it.

                15. I’m batting 1.000 on traversing WD rejections. Given the level of competition I’m facing, it’s not as impressive as Big Papi’s WS average of .688, but it is the best that can be done in this field.

                16. “I’m batting 1.000 on traversing WD rejections. “Against what you assert is 0 examiners competent to make a legit WD rejection. Not so impressive. I’m sure Big Papi can hit off of middle school pitchers pretty much 100% of the time.

                17. Lulz. totally, need to ban on it! Ban it I say!And yeah, most people around me don’t even know what the 112 1st standard is much less how to make one. I mentioned to a fella the other day that I end up sending one in probably nearly 1/3 of my replies. Lo and behold, he comes to me a month later and tells me that since I told him I was seeing them often he started looking for them (he apparently used to just trust you guys is what he says) and now they’re all over the place. That’s pretty much how it goes, barely anyone gives a dam about the law here, it’s all just trying to apply 102/103 or bs 101’s in softiewaftie arts/business methods. And they especially don’t give a dam about it enough to learn it well enough to be able to apply it even close to correctly. And yes, most attorneys actually appreciate the 112’s of any kind I send them. They would much rather be appraised of the situation now than in litigation.even if they want to try to argue around it.

                18. It seems that some have a disagreement with you, 6.I think that with such a disagreement between two parties, that the ‘fundamental’ right to know all about who you really are and know all of your personal property is paramount*, don’t you?* – only according to what 6 want’s of others…

                19. Yeah if we were going to a public forum like court to resolve it. I certainly would. So when we do head there then I’m sure you’ll know all about me.

                20. And yes, most examiners don’t even know what a complete reply is so they are incapable, literally incapable, of catching anyone. As to whether or not it is persuasive, it depends on the example. Maybe they gave half of a full response in their reply. That is a different example, which I’m sorry I don’t have the time to type up atm.

                21. “most examiners don’t even know what a complete reply is”But yet you still want to blame the applicant (or the applicant’s representative)?Is this a part of your ‘character?’

                22. “But yet you still want to blame the applicant (or the applicant’s representative)”For making an incomplete relpy? Um, yes. And no, this is no joke in character, this is srs business.

                23. Any objection/rejection not addressed by applicant is simply repeated in the next OA. If that OA is final, the examiner is not required to consider any amendments and/or arguments to that objection/rejection. So while it might be a waste for applicant, not sure how it’s a waste for the examiner. You wrote your final rejection. And got your .25 counts or whatever you’re getting. And you can decline entry to any response addressing that objection/rejection. Until an RCE is filed. I can understand you not wanting to accept any blame in the RCE backlog, but the lion’s share of that backlog is the fault of the PTO’s policy of “compact prosecution,” the examiner production system, and the vast, vast majority of examiners “working within” that system.Keep up the record breaking outstanding quality work though.

                24. “So while it might be a waste for applicant, not sure how it’s a waste for the examiner.”You’ve got to be kidding right? A whole round of prosecution wasted is a whole round of prosecution wasted. On both sides. I don’t have the time to explain this to you in detail today. “And you can decline entry to any response addressing that objection/rejection.”Um no, I can decline entry to any amendment to the claims. I most certainly cannot decline entry a “response addressing that objection/rejeection”. If I could then sure I wouldn’t mind people omitting things from their responses at all.

                25. I’m not kidding. I guess in your example, if the applicant thought your WD rejection was improper then applicant could simply argue that in the brief. Like LB, I probably would have opted for the one-month-non-compliant route and fixed the deficient response, even if it was just to tell you your WD rejection s#cked. Then again, I could just as easily do that in a brief.

                26. “I guess in your example, if the applicant thought your WD rejection was improper then applicant could simply argue that in the brief.”You guess wrong if I send him a notice of non-compliance. And to date I haven’t had anyone even attempt an appeal/pre when their reply was deficient in one or more respects. Usually they’re quite grateful to me for letting them have the final instead of the non-compliance notice. All they really want is the 6 mo period to reply.

                27. I’ve probably missed one or two things in the past 10+ years. Nothing of substance though.Examiners’ compliance with MPEP 707.07(f), on the other hand, is basically non-existent. I’ll make 2 arguments against an obviousness rejection and one will get a form paragraph response and the other will be completely ignored. Those examiners almost always get appealed.I’m sure examiners who are milking the system have convinced themselves that they are working “within” the system, or whatever other excuses they make for their behavior. At this point I simply don’t care. Those examiners get nothing from me. When I pre-appeal and/or appeal them and they get sent out of their SPE’s office with instructions to research the case and re-open prosecution, and get zero counts for it, that’s all the satisfaction I need. Some examiners learn. Some don’t. One told me in an interview, “If you don’t like it, you can appeal.” Filed my brief. Notice of Allowance a few weeks later. Every response I filed with that examiner afterward, and there were many, resulted in a Notice of Allowance. Another examiner I pre-appealed, he re-opened, I immediately filed a brief in response to his new OA, he re-opened again with a second new OA, I immediately briefed that OA, and he issued a Notice of Allowance. He could have easily issued a Notice of Allowance in response to my pre-appeal, but he did two OA’s for no counts. I just figured it was some small measure of payback for all of the RCE’s he’d scammed out of attorneys/applicants trying to “work with” him or too afraid to “get on his bad side.” Screw him. He can “work within” the system all he wants. But it’s not going to work with me.

                28. ” Surely if the PTO considers them outstanding then they must be working in the system as it was designed for them to work within.”The system is broken.And merely rewarding behavior certainly does not make that behavior right. For a ready (and historicalkly accurate) example, just look at how the Office attempted to reject its way out of the backlog with a Reject-Reject-Reject mantra coupled with an illegal power grab (re: Taffas and withdrawn appeals rules changes).It took a new director to come in and point blank say: “Quality does not equal Reject.” The result of that “operating within the system”? – the unprecedented GROWTH in backlog, only spreading out to infect the various decks of the Titanic (growth in all pertinent work queues: post-first action, RCE’s and Appeals backlogs.But go ahead with your well-worn out “blame the applicant (or the applicant’s representative)” spiel.

            2. 25.2.1.1.1.2

              On the contrary, it sounds like the applicant’s representative is to “blame”.

    3. 25.3

      I got a client a patent on flavored ice. Anything’s patentable if you know what you’re doing.

  24. 24

    The shrinking patent term adjustment should be changed to reflect when the patent actually started making money for the patentee then a 20 year term if the rate of business volume increase is slow enough if its fast and the patent is producing large revenues then 14 years may be good enough although with products in competition with one another profit margins are squeezed and 20 years is fairer. Patentees cant be expected to pay maintence fees when the product is not producing. There should be a program that gets the top marketable patents funded also at low intrest government rates not the hogwash Oboma corruption program of giving the money to vulture capitalists to rip the inventor by outragious intrest rates to forclose on his business

    1. 23.1

      Les I wondered the same thing. One can file a claim, one can file a patent application, but I have never before heard of filing an Invention. i think i know what is meant, namely, the effective date of the particular claim in view. But under the EPC, for example, a claim can have more than one “effective date”.

  25. 22

    Given that 102(b)(2)(A) removes as prior art a reference patent or application that is prior art under 102(a)(2), the new 102(e), until a patent application is actually published and becomes a statutory bar, the inventor may file on the same invention again, and again, and again (each time naming different co-inventors), and potentially may get patents on each of them.

  26. 21

    If an inventor files two applications disclosing and claiming the same invention but assigns them to different entities, it seems that pursuant to 102(b)(2)(A) that the earlier-filed is not prior art to the second.What happens when they issue? Are they both enforceable? What if the second-filed issues first?

    1. 21.1

      As I recall, the basis for the (pre-AIA) statutory double-patenting prohibition is nothing more than the phrase “a person shall be entitled to a patent” in the preamble of Section 102. Is it your position that this same phrase in the AIA is not effective as a prohibition, since the assignees can be applicants, and are different “persons” under the AIA?

      1. 21.1.1

        LB, regarding double patenting, the original Supreme Court cases did not explain the statutory basis, but noted that the patentee only gets a limited number of years of exclusivity. I think the latter is the real basis for double patenting. But it doesn’t apply if there are two different patentees even if there is only one inventor.But why would we allow two patents on the same invention to issue so long as they were assigned to different entities? That seems to be the import of 102(b)(2)(A).So, I receive a double patenting rejection. I traverse citing 102(b)(2)(A) and the fact that the other application is owned by a different party so that there will be no extention of term, no double patenting, and the other application is not prior art.

      2. 21.1.3

        Also consider that if we impose a traditional double-patenting rejection, the first to issue bars the second, even if the second was first filed.

    2. 21.2

      It seems that the proposed 106 recognizes this situation, but it applies only when the patents are not claiming the same invention. The new 106:‘‘§ 106. Prior art in cases of double patenting9 ‘‘A claimed invention of a patent issued under section151 (referred to as the ‘first patent’) that is not prior artto a claimed invention of another patent (referred to asthe ‘second patent’) shall be considered prior art to theclaimed invention of the second patent for the purpose ofdetermining the non-obviousness of the claimed invention of the second patent under section 103 if—‘‘(1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent;‘‘(2) either—‘‘(A) the first patent and second patentname the same inventor; or‘‘(B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) did not apply and, if applicable, if the claimed invention of the first patent had not been effectively filed under section 102(d) on (but was effectively filed before) the effective filing date of the claimed invention of the second patent; and‘‘(3) the patentee of the second patent has notdisclaimed the rights to enforce the second patentindependently from, and beyond the statutory termof, the first patent.’’.

      1. 21.2.1

        Also, the current double patenting guidelines do not apply when there are two different patentees even if there is a common inventor. There is no unlawful extension of term given two different patentees.And, as I noted before, what happens when the second-filed application issues first? Is the first filed-patent to be barred under some double-patenting theory? That seems wrong.

  27. 20

    Since 1978, Applicants from the USA have been known to file at the EPO and there to experience the EPC definition of the prior art. What they experience are patentability objections that sometimes invoke a JPO publication. They are generally thankful, to have the results of the EPO search early, so they can bring to issue claims that have been drafted with sight of the best art. Taking bad claims to issue in Europe is not a good idea.I can imagine there are great swathes of US patent attorneys with no real experience of this but, under the AIA, they soon will have.And some things get easier as time goes by. Back in 1978, for example, the JPO did not offer machine translation of its publications into English, at the click of a mouse. Personally, I find that, in 99% of prior art cites, a machine translation is good enough to dispose of it, with or without amending the claim. And by the way, I thank the EPO for the thoroughness of its search.

    1. 20.1

      Max, a JPO publication is prior art in the US. I am not sure why US applicants would only discover such art when filing in Europe.

        1. 20.1.1.1

          Max, historically, I have found the EPO searches better than the US searches. Is that because the EPO has better tools or is it something else?

          1. 20.1.1.1.1

            I do not know Ned, but I suspect a panoply of factors that include:1. In 1978, the established IIB in Holland was co-opted, to provide the search function of the EPO2. Unbroken heavy Investment in the EPO’s search tools, since then3. Dictated by the EPO’s “Problem and Solution Approach” to obviousness, the terms of reference of the search are built around what technical features deliver which technical effects4. A subject matter classification that treats apparatus and method as different aspects of a single “inventive concept” to be searched.

  28. 19

    Prior to the AIA, if the subject matter forming the basis of a 102(e) rejection was the inventor’s own work, he could file an affidavit saying so and remove the reference. That is no longer possible.Is there anything preventing him, during the pendency of his application, and assuming that there was some co-pendency, of claiming the benefit of the reference’s filing date?What if the reference is not even owned by the applicant?.Would this obviate a derivation proceeding or require one?

    1. 19.1

      Is there anything preventing him, during the pendency of his application, and assuming that there was some co-pendency, of claiming the benefit of the reference’s filing date?Not sure what you mean by “claiming the benefit of the filing date” of the reference. If the reference was not filed with the patent office, that fact alone is going to prevent you from “claiming the benefit of the filing date”.

      1. 19.1.1

        6, to make this clear and simple;Company 1 files on invention A naming inventor X.Company 2 files on invention A and A+, naming inventor X.Both applications are copending at a time when the examiner rejects company 2’s application over company 1’s published application.Can company 2 remove the company 1 reference by claiming the benefit of its filing date under 120?

        1. 19.1.1.1

          Now, assuming that is permitted by the statute, next assume that company 2’s application issues first and it claims A.

  29. 18

    PTO to remain open for 4 weeks. Man I was looking forward to a paid vaca. :(“Representatives of USPTO management and the Office’s three unions—Patent Office Professional Association (POPA), National Treasury Employees Union (NTEU) 243 and NTEU 245—have been in close communication as we prepare for the possibility of a general government shutdown tomorrow. If such a shutdown occurs, we are pleased that agency leadership has been able to ensure that the USPTO will remain open and operate as usual for approximately four weeks using prior year reserve fee collections. During this time, all employees will continue to report to work and be paid as usual.”

    1. 18.1

      6, the idea that the USPTO, an agency fully funded by user fees, would shut down at all illustrates that there is a problem somewhere other than the budget battle.

      1. 18.1.1

        Brother it’s a political weapon. That’s not a problem, that’s a feature. I for one am let down that the republicans cannot hold the PTO hostage as well. We need more republican inspired domestic political economic terroism by our elected leaders.

          1. 18.1.1.1.1

            Yeah i’m pretty sure that congress is not the correct place for ahem, “freedom fighters”.

              1. 18.1.1.1.1.1.1

                I’m sorry ned, but blustering with words and the pen is not “fighting”.

    2. 18.2

      Is that how it will work 6? You will get off and then paid anyway?Time for a 40% reduction in pay for all federal employees.

  30. 17

    Ned and Weight, patents and publications are now prior art back to their “effectively filed” date. This increases the amount of prior art at any given time because US patents and applications that claim foreign priority will be prior art under the AIA as of their foreign filing dates (assuming subject matter support). Under pre-AIA 102e they only go back to their US filing date which could be a year later.I don’t have a specific example of this happening yet but I expect to see this in many OAs going forward.

    1. 17.1

      102(e) prior art was already extremely prevalent and now it will become even more prevalent (although now termed 102(a)(2) prior art).

    2. 17.2

      a7, who has the burden to show entitlement to a foreign priority date, especially if the foreign application is not in English language and there is no translation filed in the US PTO because the US PTO no longer requires translations be filed in order to claim priority?

      1. 17.2.1

        For example, if the examiner were to cite the US patent reference effective as of its foreign priority date without any demonstration of entitlement, would a simple traverse that the examiner has not established a prima facie case be reasonable?

        1. 17.2.1.1

          Well, assuming a US patent reference is entitled to the foreign priority date that will illustrate a difference between pre-AIA 102 and post-AIA 102 so should be easy to find an example of this to show the effect of the AIA on an actual case.As to your specific question, I don’t know who has the ultimate burden. I would presume that the Examiner will run a google or other machien translation and/or compare the figures and say something like it appears to be entitled and then the applicant would have the burden of providing otherwise (if it’s possible to prove otherwise).

          1. 17.2.1.1.1

            I thought there was a MPEP requirement for the examiner not to use machine translations in office actions. I think we could cite to that provision if they tried.

            1. 17.2.1.1.1.1

              Can you find the MPEP section saying no machine translations allowed in Office actions by Examiners? From what I can find, I think the MPEP strongly implies the opposite. See 3rd paragraph in MPEP 1207.02, and the 17 Nov 2009 memo regarding machine translations on this page:link to uspto.gov

              1. 17.2.1.1.1.1.1

                A7, indeed, the Nov. 2009 advises that machine translations can be used unless obviously wrong or rebutted.\Thanks for the link.

              2. 17.2.1.1.1.1.2

                Indeed we can use, and are generally nowadays required to use, a machine translation. The people in the translation dept. don’t want to pay someone to do a translation.

            2. 17.2.1.1.1.2

              there was a MPEP requirement for the examiner not to use machine translations in office actions. I think we could cite to that provision if they tried.If there is no reason to believe that the machine translation is inaccurate in any meaningful way, what would be the point of “citing to that provision”, if in fact it exists? Just to delay the inevitable?

              1. 17.2.1.1.1.3.1

                Night, there is such presumption when dealing with continuations. Not so with anything were new matter might be added, and this includes anything seeking priority under 119.

                1. I mean presumption for the examiner to assume that a foreign document supports the U.S. document for use as prior art.

  31. 16

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  32. 15

    Dennis, I don’t think we will see any difference until such patents are litigated as most of the real changes in prior art related to universal public use and to whether the on sale personal bar no excludes private activity.

    1. 15.1

      I would expect the main difference to be in applicant behavior – no more swearing behind available. PTO always ASSUMED the filing (or priority) date was the date to use in searches.

      1. 15.1.1

        I expected applicants will behave with outrage as the PTO begins to rely on foreign priority dates, where the foreign priority application is not published in English, thereby placing the expense of the translation on the applicant rather than on the PTO. Failure to obtain a translation might be deemed malpractice if it turns out that the foreign priority document does not support the rejection.

          1. 15.1.1.1.1

            LB, the PTO brass need to instruct the examiners on two things: 1) that translations of priority documents are required when relying on their dates; and 2) the requirements of In reWertheim, 646 F.2d 527 (C.C.P.A. 1981), i.e, that the claims are supported in the priority document.

            1. 15.1.1.1.1.1

              Yeah idk about that first one Ned. I’m not even sure if we literally can get a copy of the originally filed application in many foreign applications.

              1. 15.1.1.1.1.1.1

                But, I will assume that if you intend to rely on the priority document for prior art purposes, you would need to at least provide a copy to the applicant regardless of the issue of a translation. I was under the impression that if one claimed foreign priority, that one had to file with the PTO a certified copy of the foreign priority application — so it should be available in some form in PAIR.Now, how one would get a translation of that is another story. I think you would have to OCR the priority document and then do a machine translation.Are we going to certify machine translation engines next?

                1. “Now, how one would get a translation of that is another story. I think you would have to OCR the priority document and then do a machine translation.”Gl with that. It might work for german or french, but it certainly isn’t going to happen for JP/CN/KR refs. And I’m not talking about the US cases with FP, though sure those are somewhat of an issue as well. Isn’t the millions of foreign documents with foreign filing dates the bigger issue? Or are those not available under the lawl? I forgot off hand, I’ve got to bone up on this stuff here shortly.

                2. No, AFAIK, only US patents; or US or PCT applications designating the US, are references under the new “102(e).”

        1. 15.1.1.2

          Failure to suggest getting a copy translated to verify the rejection might well be malpractice but if you suggest it and the applicant doesn’t want to pay for it, meh, somehow I doubt that is malpractice.

        2. 15.1.1.3

          I expected applicants will behave with outrage as the PTO begins to rely on foreign priority dates, where the foreign priority application is not published in English, thereby placing the expense of the translation on the applicant rather than on the PTO.Serious applicants in the grown-up arts who invent, reduce to practice, market their products around the world and apply for patent rights in foreign lands are quite used to being presented with prior art published in a foreign language and paying for someone to translate that art. It’s really not that big of a deal. Not worth being “outraged” over, anyway.

          1. 15.1.1.3.1

            MM, of course you refer to OAs from foreign patent offices. But let me assure you, MM, that inside counsel still boggle at the translation costs even if they should expect it.Under MPEP 706.02, if the examiner relies on an underlying document not in the English language, he must provide a translation — relying on Ex Parte Jones, 62 USPQ2d 1206, 1208 (BPAI 2001)I suspect that most examiners are not going to comply with the rules and we will have to bring this to their attention.

      2. 15.1.2

        Weight, regarding the “assumption,” I think I thought the examiners were instructed not to assume a priority date in the case of a foreign priority so as to force the applicant to file certified translations of foreign priority documents.I also think they have the same policy in the case of CIPs. They look only to the filing date, not priority date, unless the applicant shows entitlement to the benefit of his priority date.

  33. 14

    They havent even adressed the critical issue of inventor security and improvements in inventorship determination. We cant expect to attract and retain top inventors without it. and the lack of it has led us down the path of system corruption and mass frauds

  34. 13

    They need to realize that because they are not using myself as the primary source of patent reform conception that everything goes off track immediatley and what could have been doesent hapen so system stagnation continues indefinately just at a time when we need maximum revenue generation to avoid bankruptcy

  35. 12

    The AIA is unconstitutional and needs to be challenged on those grounds as soon as possible. This is NOT what the Framers had in mind when they referred to “authors and inventors” having the right to obtain patent protection (regardless of when they filed).

    1. 12.1

      The AIA is defective in finding the true conciever becase they intentionally wont adopt my 15 new methods of finding the true conciever and use only 1 First to file that doesent find the true conciever in all circumstances. There is 40 methods of cheating the true conciever and until they eliminate all of them then the legislators have to be called corrupt too

      1. 12.1.1

        Don’t really understand the above, but agree with your other comments.Have the patent lawyers out there read Article 1, Section 8, lately?? It’s pretty short, sweet and to the point, as to who legitimately should get the right to patent protection (if any is to be given out). Can’t seem to find anything in it about how much it should cost to do so (if anything), about “first filers”, or arbitrary “windows of opportunity” to file, prior art that could become disqualifying to an authors prior work, or any of a host of other limitations and restrictions that are now present in the “bloated” AIA. They seem to have only intended for the genuine “authors” of new inventions to be credited and provided with protection (as had been the case for 220 years prior to the AIA). I guess those who support the changes made in the AIA, would also support completely re-doing the second amendment too (as am I). Too bad that ‘s not going to be as easy as the AIA was (even though it’s interpretation is open to even more debate than original patent law). Admit it, the big multinationals, Europe, Japan and others got EXACTLY what they wanted and paid for!Let’s see in the next few years if this very stupid law stands up to SCOTUS scrutiny (or even the lower courts). I’m sure ready for a fight!!

        1. 12.1.1.1

          Ya my 15 method inventorship determination program takes all situations into considerartion to perfect inventor identification accuracy so no one is cheated. With the AIA they took our old system that had 4 inventorship determination methods and reduced that to 1 First to file. Then That idiot Smith took and made it so that you can steal someones invention conception by preparing a more technically perfict aplication by saying conception was at the same time a situation that has astronomical odds of occuring. Its just another mehtod of rip offs to add to the other 40 methods they have done nothing about correcting . Colaterol estopple is not going to work right unless more inventorship determination mehtods are added to ensure correct determinatinon. Immediate novelty check and lockering and USPTO files corruption elimination are some of the methods needed to ensure integrity present ly you have to be a fool to file because its a patent casino with the uspto giving the patents to the wrong prople every time.

  36. 11

    The repeal of cival action means anyone frauded by Espionaging or evesdroping or robery resulting in a wrongful original patent isuance or a denial of issue is denied an action to a reissueance. There is also the issue of what hapens in a patent denial situation when the subject matter is marketable and therefore should remain the intellectual property of the conciever the present system allows fraud because anyone can use it therby tricking the patentee into reveal it only to have it stolen legally. Another problem is the lengthy backlog at the Federal apeals court as oposed to less time at district court level potentially. This could be adjusted in either court by increased judges or adding ones trained to deal in patent law like I did in the east texas court district

  37. 10

    Certiantly the colaterol estopple restriction eliminates the whole review process entirley denying and obstructing justice for indegents that should be able to argue indegency damages

  38. 9

    Everything concerning furthur legislation needs to focus on the true conciever retaining his patent rights over all other obsticles anything less destroys the incentive to create and the whole system stalls as it already has as far as marketable jobs, revenues exports producing inventions. I am not seeing any provisions improving his plight only taking away rights

  39. 7

    Regarding the watering down of estoppel, the top article in the Patent Law Journal tab above is on this very issue. There former commissioner Stoll writes,”Critics of this [estoppel] provision seek to strike reasonably-could-have-raised estoppel as applied to subsequent civil litigation. This position is mistaken, because limiting the estoppel only to issues actually raised in the post-grant review would encourage petitioner gamesmanship to the detriment of (i) the courts, whose busy dockets will be burdened with more complex and time-consuming validity questions that the petitioner reasonably could and should have raised in the post-grant review, (ii) the USPTO, whose post-grant review decisions will lose their finality with respect to the same petitioner vis-à-vis a later court challenge, and (iii) the patent owner, who will be forced to defend the validity of the same patent claim against the same petitioner in piecemeal proceedings rather than in a single forum. Post-grant review estoppel, as originally enacted, should be maintained for these and other reasons discussed in this Article.”

    1. 7.1

      Harassment of an impecunious patent holder is a primary goal of the infringer, of every infringer. Filing serial reexaminations or post grant review in addition to court challenges harasses the patent holder and is intended to harass the patent owner. Allowing an infringer who loses to again challenge validity in a different forum on the same or similar art is the goal.This is not funny. Everyone can see the big picture and knows what is afoot. What the big, well healed infringer bar is attempting here violates fundamental precepts of our justice system that we know as res judicata.They say the goal is to reduce litigation costs. In practice, that is not the real goal. The goal rather is to break the patent owner.

  40. 5

    “(1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent;”What now? How does one file a claimed invention? Is that like a prototype?

    1. 5.1

      Les, I was asking just such questions before the AIA was passed.1. I don’t know why they are talking about “invention.” They need to focus exclusively on the claims. There is only one “invention” in a patent, not 25 different inventions depending on the number of claims. Double patenting is determined claim by claim, not patent by patent.2. What they should be comparing are the effective filing dates of two claims, one in one patent and the other in a second patent. They should compare Apples with Apples, not Apples with Oranges.

  41. 3

    The proposed changes to post-grant review and the covered biz method patent review are most welcome. More of this, please.

    1. 3.1

      No, codifying judges’ misunderstanding and conflation of 102/103 with 101 is NOT a good idea. 102/103 works just fine…. if the prior art ACTUALLY exists.

  42. 2

    Re: 106. The PTO is beginning to understand that 101 does not provide a condition for patentability, probably because of the work of professor Hricik.What boogles is that 102(f) is not restored. This was fundamental defense to validity from the very beginning. If a patent is granted where the named inventor did not invent the subject matter, but took it from another, that patent should be invalid. Derivative suits are not enough because that requires a second patent application and some diligence.And, please do not tell me, seriously, that 101 is the substitute for 102(f).

    1. 2.1

      The PTO is beginning to understand that 101 does not provide a condition for patentability,Huh? What’s your evidence for this?

      1. 2.1.1

        Because they used to cite 101 as the statutory authority for double patenting rejections. Why add it to 102 if it is already there in 101? They must have some concerns.

        1. 2.1.1.1

          First, Ned, I seem to have missed the part where the PTO is writing these proposals. Second, the proposal is under section 106, not 102. Third, whether 101 restricts “double-patenting” or not, it certainly does not do so with the clarity and detail provided in the new statute. I suppose that lack clarity/detail could be a cause for “concern” but I’m not aware of any serious challenge to double-patenting per se. And to be perfectly clear I don’t find Professor Hricick’s position on 101 to be “serious” without an explanation from him as to how/why 112/102/103 are able to prevent novel mental processes from being claimed (when those statutes are interpreted according to his own strict theory of interpretation).

            1. 2.1.1.1.1.2

              Dennis, can you (or anyone else) remind me (or anyone else) who is “clearly part” of the process of drafting these proposed amendments?

          1. 2.1.1.1.2

            Yes, 106, not 102.But the historical legal basis for obvious double patenting is an implied admission of prior invention of the first to issue. This presents problems with a regime that no longer has prior invention as a bar. Hricik has yet to acknowledge Morse’s discussion of “112” as the statutory basis for that decision. If an abstraction is claimed, there is nothing to make and use; but a description of how to make and use is a requirement. Regarding use, one has not described all possible uses of an abstraction, let alone enabled them. It is all there in Morse, at 119-120. The reasoning behind this “112”discussion of Morse is the basis for the holding in Benson. A claim to BCD to Binary not tied to a specific use claims all uses. These have not been described or enabled. The proper statutory grounds for Benson was and still is 112.

        2. 2.1.1.2

          “Because they used to cite 101 as the statutory authority for double patenting rejections. “We still do for statutory dp. We don’t for non-stat dp.

  43. 1

    2, removing estoppel, defeats the point of inter partes review, but 3, actual claim interpretation, is a great idea. Broadest reasonable interpretation only makes sense during the standard, preliminary examiantion stage, not during an adjudication like post grant review or inter partes review.6 is a nonstarter. If there’s no PTA for time after an RCE, then the Office can just sit on an application until 20 years from filing… and the issue is moot.

    1. 1.1

      I’m tentatively moving toward the position of entirely eliminating BRI even in original prosecution. Because the claims would likely be more clearly understood if the same method of construction was used at both the PTO and later in the courts.

      1. 1.1.1

        I agree, but I think that BRI is part of what lends credence to the presumption of validity and burden of proof of proving otherwise.

          1. 1.1.1.1.2

            I understand that. I was talking about it from a common sense or policy standpoint. The heightened patentabiltiy standard of the broad claim interpretation validates a higher standard of proof when the claims are later given actual interpretation.

      2. 1.1.2

        The problem with BRI isn’t the standard, it’s the implementation of the standard by the Office. The phrase “is broadly interpreted to mean” is bandied about to apply to the terms used in the prior art references as well as the claim terms. As a first cut, I’m fine with an examiner equating a feature in the prior art (frozen banana) with a limitation in the claim (a hammer) without justification, but if I push back that an interpretation isn’t reasonable, and I present reasons based in dictionary definitions and the usage in the spec, more often than not the examiner will not address the evidence presented about the scope of the term (hammer) but will instead offer some statement about how the prior art is being interpreted. you get no claim construction, just prior art interpretation (“a frozen banana is being broadly interpreted to be a hammer”).

        1. 1.1.2.1

          “The problem with BRI isn’t the standard, it’s the implementation of the standard by the Office. The phrase “is broadly interpreted to mean” is bandied about to apply to the terms used in the prior art references as well as the claim terms.”I agree with that. The easy way around this is to catch the person while they’re saying it and ask them what that broad construction specifically is. I.e. if they’re going to work claim construction magic insist seeing what is going on behind the scenes. Then you have your indication for why the interpretation is unreasonable, if it is, offered by the on the record. And if not, you know what’s up. “but will instead offer some statement about how the prior art is being interpreted”Remind them that when it comes to the prior art they don’t interpret, they find facts. Then help them understand what this means if they don’t already know.

        2. 1.1.2.2

          This is the exact fact pattern in In re Morris. The only reason the applicant did not prevail in that case was that the term under dispute was not (allegedly) used in the specification in an unambiguous manner so as to overcome the examiner’s initial construction. The clear holding of Morris is that if the term at issue is, in fact, defined or use such in the specification, that construction must be the one chosen.But this is also what Dennis advocates, in my view.People bandying BRI about need to read Morris and understand its hold, especially what is describe as the back and forth between the examiner and the applicant.Unfortunately, the process can lead to a different construction of the claim than was used to search the prior art. This will require a subsequent search. Who pays for this? I think the applicant, but it should not require an RCE. Just another search fee.And, perhaps we need to address credit to the examiner in some fashion if he has to conduct two searches.

      3. 1.1.3

        “Because the claims would likely be more clearly understood if the same method of construction was used at both the PTO and later in the courts.”If you think that, you are deeply mistaken. Deeply. I doubt seriously if you see many claims that are as filed. And even if you do, you’ve not done a comparison with those that are issued not as filed. I cannot speak for every single claim in the world, but the ones before me are nearly 100% of the time much more readable when we’re done with pros (using the bri btw) than when we started.

      4. 1.1.4

        Dennis, I suggest you read my reply below to znutar. I think In re Morris specifies the proper procedure. It just that that case is not fully appreciated by the PTO or by subsequent Federal Circuit cases.

    2. 1.2

      POINT? The point of estoppel is to protect the patent owner from harassment. What did you this it was for?You got the policy backwards.

        1. 1.2.1.2

          That is a bust of a famous Roman general, commander of the Northern Legions, proconsul for the province of Gaul, dictator for life.Name him.

          1. 1.2.1.2.1

            Dat Ceasar? I already knew him, I’ve watched more specials on Rome and their battles to last me for a lifetime. I’m probably going to play the upcoming Rome vid game, I played through the last one at least twice, and let me just say, that game is an old pos, but it is still a little fun. I took over most of the known world from like 200 BC to like 90 AD starting out with just the small province in brittania (the west side of britain) in my last play through since I wanted a challenge. I would have had more but egypt had managed to conquer a huge area and having to retake their whole empire every time to get them to concede major holdings took forever so I ran out of time since the game ends in 90AD or whatever. If you have a monstrosity of a computer you may like this:link to totalwar.com

            1. 1.2.1.2.1.1

              Yeah, Rome Total War was a great game. I look forward to playing Rome Total War II. Regarding Julius Caesar, he is reputed has having an IQ of 175. Considering what he accomplished, that is probably and understatement.

              1. 1.2.1.2.1.1.1

                Hmmm idk how on earth they came up with 175 since he never got to take the test, but yeah I’m sure he was pretty brill.

      1. 1.2.2

        When the patent owner is a thief and the other side of the story hasent been herd then how is that justice. Its just injustice unless invention clusters inventorship determination method is used and indegency of the inventor to file is considered also

    3. 1.3

      6 is a nonstarter. If there’s no PTA for time after an RCE, then the Office can just sit on an application until 20 years from filingPerhaps some additional amendment is needed. But isn’t the reasoning behind this is that the applicant had its chance to obtain a patent and is choosing instead to prolong prosecution further? In other words, any delay by the PTO is offset by the delay in granting the patent caused by the applicant’s filing of the RCE.

      1. 1.3.1

        No, the point of RCE’s is to make an applicant file an RCE to get an examiner an additional count. RCE’s are only necessitated by examiners maintaining insane rejections.

      2. 1.3.2

        Why cant the court sit on an application until 20 years from filing. If they are willing to extingush the concievers patent rights and award it to others then they will get nothing else from the concievers because theyve been ripped. The individules who would get the patent are the ones who refuse to deal with the conciever unless they can keep everything so they wait until they can do the ripoff legally due to the money monopoly that denies him the ability to due diligence and the indegency of the inventor. and his lack of experiance with previous art. These people are suposed to be looking for business partners or outright sales to startups. My invention conception business provides a valuable service to business to expand their bottom line. instead I get called troll when businesses want to only steal and refuse to deal

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