Eight Reasons: I am undergoing a project to better understand the role of the Board of Patent Appeals and Interferences (BPAI). There are several reasons why BPAI is now receiving more limelight than ever. Here are eight such reasons: (1) every proposed patent reform bill includes an expanded role for a patent administrative court, such as the BPAI; (2) as various technology centers make patents more difficult to obtain, more cases are appealed to the administrative court; (3) under the proposed rule changes to limit continuation applications, more cases will likely be appealed; (4) as the value of patent rights continue to grow, important cases will continue to be challenged; (5) the publication of patent applications means that BPAI decisions can now also be immediately published; (6) the current large batch of examiners without much experience requires a serious check on potential abuses of naiveté; (7) under Judge Fleming, the BPAI has begun to open up to more public input and scrutiny; and (8) BPAI decisions are now available via Google search and Westlaw search.
BPAI is a Busy Court: It is important to recognize that the BPAI is deciding 3,500 cases every year. Thousands more are ‘settled’ prior to a BPAI decision either because the patent examiner withdrew a rejection (and likely re-opened prosecution) or the patent applicant filed a continuing application or abandoned the case. The BPAI usually sits in three-member panels, although there are occasionally ‘stacked’ panels for important cases such as Lundgren or Bilski. In my one-year sample, over seventy different Administrative Patent Judges (APJs) authored opinions.
As part of my initial study, this week, I created a database of information on recent BPAI decisions and coded them by issues discussed. My database is derived from decisions available on Westlaw. Consequently, it is missing some decisions. In particular, Westlaw decisions do not include appeals associated with unpublished patent applications.
The table below looks at board decisions for each technology center. The relative numbers are interesting — showing a low affirmance rate for rejection of business method cases (TC 3600) and a high affirmance rate for chemistry cases (TC 1700). The BPAI offers its own calculation of these numbers based on all of its decisions that are roughly parallel. [LINK]
(Note, the table does not add-up to 100% because I excluded decisions to remand and deny rehearing).
Independence of the BPAI: One serious question about the competence of an internal patent appeal board is whether that body can act independently from the examining corps. Most of the BPAI judges are former examiners and they all work for the PTO Director. Although not conclusive, the above numbers give me some cause for hope that the BPAI does act independently. Over the past several years, many of the art units of TC 3600 has been notoriously difficult on applicants (especially e-commerce and business method groups). The BPAI’s low affirmance of rejections from that technology center may indicate that the Board has taken an independent stand against overzealous rejection practice. There are many other explanations, including some selection bias or difference in quality of attorneys. In addition, there is a skew of judges — i.e., Judges with a technical background related to a particular technology center are more likely to judge cases from that technology center. The BPAI rightfully does this to ensure that every case has at least one administrative patent judge (APJ) who is prepared to understand the technology at issue.
Issues on Appeal: Far and away the most decided issue is that of nonobviousness. Almost 80% of decisions involved a discussion of nonobviousness and 30 U.S.C. 103(a). Unfortunately for patent applicants, nonobviousness decisions were also the most difficult for applicants to win. In my study, decisions involving Section 103(a) were affirmed 63% of the time; decisions involving anticipation under Section 102 were affirmed 55% of the time; and decisions involving Section 112 were affirmed 52% of the time. As more issues are added to an appeal, the chance of affirmance goes down, and the chance of a split (reverse-in-part) decision goes up.
As might be expected, split decisions tend to be longer than others: 4500 words for split decision vs. 3500 words other decisions. If a short decision arrives at your desk, you may assume it is a remand.
Notes:
- BPAI Website
- Patently-O: BPAI Informative Opinions
- Patently-O: How long does a BPAI appeal take?
- Patently-O: BPAI Appeal Statistics
- Patently-O: Pre-Appeal-Brief Conference
God’s sakes why do I always say through when I mean threw? I should start proof reading a bit on here I guess.
You did not make a very convincing case, so I have to disagree, and I disagree because the “controlling case law” is not applicable for the reasons stated above, and additionally the snippet “This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support” is coming from a case where the alleged common sense was clearly taught against by the art, and was not a fact. After noticing that sub·stan·tial evidence is evidence greater than a scintilla of evidence that a reasonable person would find sufficient to support a conclusion we see that indeed his Notice did not have evidence in the record whereas the applicant DID (he traversed properly, and even through in ref’s). Any reasonable person would very well rely on the statement about LED’s in conjunction with the motivations as being sufficient to support a conclusion if there was no evidence or even a statement to argue the fact stated. My point is, that snippet is taken largely out of context that invalidates its use here, and even when taken out of context still doesn’t apply.
But as to “It was written by PTO lifers who have no idea how to respond to persuasive arguments other than to say, “Nuh-uh.”” I would have to say that you are right, however, to be quite fair, that’s all they have to say, and that’s all the time they’re really alloted to respond. And let’s be honest, all attorney’s are are “nuh uh”ers too. A good example of this is you arguing what you said you’d argue instead of rationally arguing the Notice taken.
“Right now, you could argue that water is comprised of oxygen and hydrogen and he would still argue you were wrong” Nah I wouldn’t, but as a matter of fact me and an office mate were having nearly that exact discussion the other day. The question was “if applicant recites using O (or H, doesn’t matter) and the reference has water in it (H2O)” does that make him anticipated, rendered obvious or is the designation of the specific elemental only form of O sufficient to distinguish? We came to the conclusion that in that case it would distinguish, but there are cases in my art where such a thing would not distinguish as the material would be comprised of distinct elemental parts rather than a bonded molecule like water. But I don’t know, we could be wrong.
JD
Here’s a thought …. 6K = Ted Kaczynski???
Very similar writing styles. I could almost see Kacyzynski writing what 6K has written.
Regardless, at this point, he is a lost cause. Right now, you could argue that water is comprised of oxygen and hydrogen and he would still argue you were wrong. My suggestion is to let that boat sink on its own. It isn’t a matter of if, it is a matter of when.
“Applicant’s traverse was inadequate because it failed to point out any supposed errors and merely alleged that the examiners Official Notice was not substantive evidence ”
To be brief, “merely alleging that the examiners Ofificial Notice was not substantive” evidence is pointing out your error. And it’s not a supposed error. It’s an error.
You really should stop relying on MPEP form paragraph boilerplate. It’s so silly. If you actually took the time to read it, you would see what drivel it is. It was written by PTO lifers who have no idea how to respond to persuasive arguments other than to say, “Nuh-uh.”
I wrote you a detailed response, but I can’t get it past Dennis’s spam filter. I’ll check it again and try to force it through.
But please, if you insist on furthering your ridiculous, overused, already well invalidated argument show just tell me your convincing argument (full flowery language) to this:
The examiner takes Official Notice that the use of LEDs is old and well known in the illumination art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute an LED for the light source in the system of Who. One would have been motivated since LEDs are recognized in the illumination art to have many desirable advantages, including reduced size, high efficiency, low power consumption, long life, resistance to vibrations, and low heat production, over other light sources.
Assuming the factuals are met above it. After I have finaled you, and quoted ” applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. If the traverse was inadequate, the examiner should
include an explanation as to why it was inadequate.” Applicant’s traverse was inadequate because it failed to point out any supposed errors and merely alleged that the examiners Official Notice was not substantive evidence and requested an affidavit or other documentary evidence. Since the examiner was not relying on purely personal knowledge and thus no affidavit or other cited documentary evidence is required. Thus, the common knowledge in the art statement is taken to be admitted prior art because the applicant’s traverse was inadequate.
Respond convincingly and I’ll reasonably cede you the whole discussion. Later that is, I’ve got to finish up and action.
Now you’re back down to an F. Okay, an F+. But like I said before, only because you make me laugh.
Realizing- Serving to make real, or to impress on the mind as a reality; as, a realizing view of the danger incurred.
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Or
1. to grasp or understand clearly.
2. to make real; give reality to (a hope, fear, plan, etc.).
now apparently equals
Conclusion:
1-2 irrelevant
3. a result, issue, or outcome; settlement or arrangement: The restitution payment was one of the conclusions of the negotiations.
4. final decision: The judge has reached his conclusion.
5. a reasoned deduction or inference. (requires you to reason through and deduce something, or infer something)
6. Logic. a proposition concluded or inferred from the premises of an argument. (
This is one of my favorites from 6k:
“Realizing that something is by definition something else is not a conclusion, but a finding.”
Uh, that’s an F. Well, maybe a D-. But I’m grading on a curve.
“Last time I checked, I either new [sic] a fact or didn’t know a fact. I also either knew a fact was common knowledge or didn’t. I have yet to take an assessment of the anything in having that knowledge and stating it.”
Epistemology according to 6k. Descartes is rolling over in his grave.
“However, as even you will readily admit, stating a fact is hardly taking an “assesment of basic knowledge and common sense”. ”
No. I won’t.
Your statement is, without substantial evidence support, just that: a statement by the examiner. It is no more evidence that a statement by applicant or me.
Your attempts to differentiate between the BPAI’s “assessment of common knowledge” and your “statement of fact” are laughable.
“And I will tell them that if I had to, but I’d probably choose instead to write eloquently when I needed to.”
I’m ROFLMAO.
So you’re gonna just turn on the eloquence when you need it? You’re funny.
You write like most engineering grads, i.e. terribly.
Based on the quality of your posts to date, I’d say you’re looking at solid C-‘s for the first semester. Plenty of room for improvement though.
Oh and JD, the lulz do not end there, my bad, I forgot, perhaps MOST importantly “This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.” As we see here, assessments (
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Overruled and modified are two seperate things my good man, as you well know. Also, no you might want to read Zurko, inside you will see that we are not to rely on common knowledge as the basis, or principle basis of the rejection. Unfortunately for you, and the others like you, that load of horse manure will hardly but never avail you to argue because we aren’t using the noticed fact as the basis, or principle basis of the rejection. In any event, you will also notice that after you fail to adequately traverse the notice it is established as fact. So, when you request an affidavit, bam, you just got yourself established facts right there already on the record. Pretty convenient huh? Best thing about it is that you’re right, if the case went to the board from FOAM then there would be no substantial evidence, but since it doesn’t the substantial evidence is right there on the record.
On a side note, JD, why, I didn’t realize we were talking about only situations where “method claimed for improving security in computer systems w[ere] obvious”. lol. Neither am I taking notice of “it is basic knowledge that communication in trusted environments is performed over trusted paths.” nor am I motivating it as it “would have been nothing more than good common sense” nor am I implying that the “prior art teaches communicating with the user over both a trusted and an untrusted path.” which indeed, would invalidate my own Notice taken. And I’m certainly not referring to “what is “basic knowledge” or “common sense” to one of ordinary skill in the art.” that is based upon “nothing more than good common sense”. Let’s be clear that I’m not making any “assessment of basic knowledge and common sense [that] was not based on any evidence in the record and, therefore, lacks substantial evidence support.” Finally, the court ignored the “Second, applicants claim that there is no substantial evidence support for the Board’s finding of motivation to combine the cited references to yield the claimed invention” point. lolx2. Let’s get something straight, the rational for their stated fact being a fact was “hur, it’s common sense”. This contrasts with my rational for my stated fact being a fact “It is a fact”, there is no rational required, as there is no rebutal from the other side to be made I do not need to include a rational for stating that as a fact, however, if I indeed DID need to rationalize it thus, it would indeed be improper. As a matter of fact JD, I just read Zurko the other day, but it’s always pleasant reading. Welcome to the new world order JD, where people read words for what they say instead of what you want them to say.
Further reading in Zurko that’s relavent:http://www.smh.com.au/articles/2004/05/03/1083436532813.html?from=storylhs they fight hard for their stuff too, sans lawyers. Holy krapo, he’s no. 3 in the world for alive holders http://www.usatoday.com/tech/columnist/kevinmaney/2005-12-13-patent_x.htm
“As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” and, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.” Clearly, they cannot accept evidence that has it’s base in “hur, it’s nothing more than good common sense”. This however stands in contrast to “It’s a fact”. Finally, to get even more specific, in conclusion it is stated “The Board’s conclusion of obviousness was based on a misreading of the references relied upon and, therefore, lacks substantial evidence support.”
In Re Zurko archived for you guys, take a read sometime here:
link to caselaw.lp.findlaw.com
Be careful not to own yourself in the face with it like JD here just did.
On a side note, if they had combined the refs differently it seems to me like they could have put the case together well and won easily. Then again, I don’t have the ref’s before me. Seems like what they should have done was taken a trusted data path from one ref, 103’d it in the primary combination and then taken notice that “It is well known that data travelling over a trusted path is safe data in the blank art” if they lacked safe data or whatever. Make a factual statement notice instead of one clearly contradicted by fact (one does not have to transmit “safe data” over a trusted pathway, regardless of it being common sense to do so) and not relying on common sense to make up the difference, and such notice certainly not being verifiable in 5 mins or less. Case over, presto. Unless they didn’t have those ref’s at rejection time, in which case, that should have been allowed, as it was improper to take notice.
Why any court would make a ruling to be misconstrued so heavily by the likes of JD etc I do not know when the case is open and closed so easily. Just say “so, you’re relying on common sense for why this is supposedly done when references clearly point against it?” hmmm, not good enough, reversed. Done, no messy crp laying around. Of course, KSR on the other hand …
And yes, you guys know what gives me more kicks than watching reruns at 12 at night.
“but lets go through a more detailed example more akin to what happens IRL showing the factual inquries (that aren’t even strictly required See KSR.”
So KSR overruled Graham? You’re hilarious.
Any assertion, or notice you take, that is not supported by substantial evidence is not established as fact. You may want to read the APA and Zurko.
“Further, you could tell what I was talking about anyway.”
Tell that to your law professors after you get your first semester grades.
“If you have a case no. hit us up, unless you’re anon on here. I don’t really see why attorney’s would go anon on here, but whatev.”
I believe that my writings here involve topics I would not broach with the examiners I deal with, nor is my style of presentation here the same as in my formal dealings with the Office. However, I wouldn’t want an examiner to form an off-base opinion of me based on my postings here and have that opinion taint our official dealings.
“I do take exception to the unsupported assertion that [say, copper oxide] and Colorant X are functional equivalents.” That my friend would fall under esoteric at the least to my chemically untrained mind, barring him relying on personal exp, with an affidavit it would be improper to have taken notice, unless I’m just so far from POSITA in chem that I wouldn’t know. It would seem to be very valid to traverse that as being esoteric notice improperly taken. You’ll likely win that appeal, don’t sweat it. I hope that wasn’t just a dep though…
This however, while pertaining to one of your RL cases, is nowhere near the amount nor type of basic sht I see in my cases day in and day out that aren’t in every last reference spelled out for POSHITA reading it. Trust me when I say the examples above are a very close fit for stuff I see day in day out.
Oh, and please, don’t use misquotes from Zurko (it’s so cliche), everyone knows by now that unless he is using his notice as the Basis of the rejection, (i.e. the equiv of a primary ref) then Zurko is not applicable and it doesn’t sound like your case has that going on, unless perhaps you’ve got all this stuff in the ind.
One big question comes to mind though, have you asked him yet if there’s anything that he feels you might be overlooking in your analysis, why it would be different, and does he suggest anything for you to do differently? If not, I would suggest that before full blown appealing. Let us know how it turns out. If you have a case no. hit us up, unless you’re anon on here. I don’t really see why attorney’s would go anon on here, but whatev.
One last thing though, I’m pretty sure that functionally equivalent
You’re right pds. Even typing fast this has become too much.
^
That was what I had written, then I remembered something about a thing I never use. He didn’t take notice because he’s “making a prima facie case of equivalence” See MPEP 2183. In that case, you’re probably boned without a 132. From what you’ve told me it seems like all you put in the claim was probably a. a function b. something that was not excluded by any explicit definition in the spec for an equiv and c. is an equivalent of the mean or step plus function limitation (or else the examiner wouldn’t have used this section). If your only difference is the being difficult to bring in solution, if you don’t have that in the claim you’re very likely boned, even if like you say, POSITA wouldn’t have in a million years considered using it. Sorry. All you can do now is met the burden of proof of non-equivalence. If I were you, I’d put in some stuff about the delivery of the thing in the solution in the claim and get an allowance, or use 132, but its up to you esp. since I don’t really know the case.
In any case, don’t ruin our Off. notice convo with your structural equivs hijacking (lol). They’re totally different monsters with totally different ways of overcoming them.
I’m outta hea yos.
And Dennis, my apologies for participating in this massive threadjack.
I do have a case with very similar reasoning on appeal, but I’ve not yet received the Examiner’s Answer Brief. Looking at your data, I’m still optimistic despite it originating in 1700. Here’s hoping I don’t get “pwnt in the face”, as the kids call it.
Your flashlight blub/LED example is a poor in relation to “RL”. Let’s go with one on my docket right now:
Invention pertains to novel incorporation of a colorant into a plastic. The colorant, Colorant X, is a large molecule bristling with reactive groups and difficult to bring into solution unless some fairly harsh solvents are employed. It produces a very attractive greenish hue, though. (Conceptually, I am reminded of a certain former girlfriend.)
The examiner asserts — not but does not take “official notice” — that Colorant X and [say, copper oxide] are functional equivalents in the colorant art. For our purposes, we can assume no difference if the examiner HAD used the magic words and formally taken Official Notice in the USPTO-prescribed manner. The examiner does not say why or in what context they’d be functional equivalents, why anyone might view them as such, or why a PHOSITA in this particular art niche might view them as such. [Say, copper oxide] *is* disclosed in a prior reference for coloring a plastic item.
Clearly, I’m not about to argue that [say, copper oxide] wasn’t known in my art; it was. I do take exception to the unsupported assertion that [say, copper oxide] and Colorant X are functional equivalents. (Note that I’m still in the realm of what the examiner asserted was FACT; I’ve not yet reached the readily-substituted reasoning underlying his obviousness conclusion.) I’m not arguing against the obviousness per se — I’m arguing against the assertion of functional equivalence. The examiner stated only that they were functional equivalents, meaning that they were seen by the PHOSITA as readily interchangeable. That asserted fact is completely wrong. Sadly, I think the examiner knows that in his chemically-trained heart … but I suspect what he knows to be true chemically does not comport with the marching orders he’s been given re: forming rejections.
(For those few wondering, I’ll just get a 132 declaration that (a) they are not functionally equivalent in this art, and (b) PHOSITA would never, ever, EVER contemplate Colorant X as a ready substitute for [say, copper oxide], reciting myriad chemical reasons why not. Even if I dig my heels in on the Notice-that-isn’t-Official, the case stays with this examiner until it’s disposed of … and a PO’ed examiner is even less my friend. Also, I’m a repeat player with a small cadre of examiners, so taking the diplomatic/pragmatic path goes a long way.)
6K
The time you’ve spent on this thread, you could have researched and provided evidence for every “Offial Notice” you’ve ever taken in your career.
Your buttons are easily pushed.
My top reply didn’t come out well thanks to this system, I’m not retyping it. Suffice to say all the info is pertinent, all the factuals are fulfilled, and notice is taken to establish a fact. Your arguments to anything other than the notice taken are not what I’m discussing anyway, and you well know it. You just love your straw men.
“of course nobody is going to come back and argue that LED’s aren’t well known.” That’s right, nobody will traverse my official notices, because they are true facts and not the conclusion of obviousness based thereon. They would traverse my conclusions of obviousness, one would think, but I have only had one do so yet, and it is a weak traversal of my conclusion of obviousness having to do with timing, it will not suffice to get him off the hook in that case. And they will also try requesting an affidavit, asserting that I am relying on my personal knowledge (that I gained in a lab, work exp, etc that is Not available to the public) rather than knowledge I know to be common (i.e. knowledge that is common to publications available to the public) because it is the only thing they can do, there is no room to traverse the conclusion of obviousness, and certainly not of the noticed fact. So, such a request will not avail them. And again, I’m not stupd enough to use it when there are really good traversals against it, I can usually think of them just as well as you attorney’s can. In those cases if he traverses the finding of obviousness where I used Off. notice, then fine, he may be right, and it may well be patentable, pending a search of the thing indicated clearly in his traversal I’d allow an ind. with it in it.
Let’s be clear though, I’m not putting LED’s in incubators (I don’t know if that would be innappropriate or not, but it seems that it wouldn’t be appropriate), just as shown above I’m taking LED’s to put in flashlights (so so obvious combination) or putting copper wires in a wiring scheme (VERY obvious combination).
As to my ability to write a sentence, you should know that the sentences that I’m writing here are largely typed quickly and without any regard to sounding wonderful, I’m not being paid to type you an action right now. Further, you could tell what I was talking about anyway. I do however have an action to go finish up for someone else right now though.
If you have any further arguments, Please address them to the taking of notice, and Not the Subsequent conclusion of obviousness. That is not under discussion here, or at least it’s not under discussion by me anymore, I tire of it. Your pertinence discussions etc. only lend credence to my claims that I’m awesome because all I get back are “Hur, give us an affidavit” because I locked them up so tight with the factual statement that’s all they can do. This last guy literally chucked the kitchen sink at me (3+ pages) because I used his Background section for one minor part and noticed one other part (all in the last dep). Guess what he did everything but? Disclaim that he was referring to prior art in his Background section, adequately traverse the notice and convincingly traverse the obviousness conclusion. He literally typed out 3 pages of fluff heeing and hawing. I kind of like this attorney, I work with him a lot, so I’m considering getting him a ref. anyway. Even so, I’m not letting him off the Background until he makes a statement to the effect that he was indeed not referring to the prior art, and his argument to the obviousness is going to have to get a Lot better.
Oh, and JD, that’s a nice Straw Man collection you have up there.
Also, fyi, I’m not “concluding” anything when “The examiner takes Official notice that using LED’s as light producing elements is well known”, I am rather Stating A Fact. I did not say “Well, me and Dan and Bob down the hallway think this is obvious, therefore it is common knowledge”. I did not say to myself “well, I learned this in school so all of my classmates know this as well”. I say to myself “This subject matter is available to the public and widely known and is thereby By Definition common knowledge” not “and is thereby common knowledge”. Realizing that something is by definition something else is not a conclusion, but a finding.
Again, despite your arguments towards pertinence etc., you seem to fail to see the difference in traversing the obviousness conclusion and in traversing the official notice (statement) of a fact. Let me make this clear to you JD if indeed you don’t get it, taking official notice IS NOT reaching a conclusion of obviousness it is however stating a commonly known fact. It is also not the combination of both of the steps of stating a fact and then concluding obviousness. Got that? Nothing else. AFTER we have taken notice we may then later in the action base a conclusion of obviousness on the stated fact as I just did above.
JD replies: Why yes nobody will traverse your notice taken, but but you still don’t make a case of obviousness because you don’t resolve the factual’s because your fact isn’t pertinent!
I concur with you JD, if we saw the above examples in a vacuum, but lets go through a more detailed example more akin to what happens IRL showing the factual inquries (that aren’t even strictly required See KSR. But I use anyway) being resolved.
The spec describes a flashlight in the shape of a purse (and functioning as a purse) using an LED as the “light producing element”. Who et al. teaches a flashlight in the shape of a purse (and functioning as a purse) using an old light bulb.
Claim 3 is rejected under USC 103(a) as being unpatentable over Who et al. (“Who” US 9999999, patented 01/01/1985).
As to claim 3, Who shows the flashlight design of claim 1 above, but fails to show using an LED as the light producing element. (
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I never stop arguing. You should know that by now.
Here’s what your missing (in addition to about a million other things that I don’t have time for in this post): your taking Official notice “that feature x is well known” fails to resolve the factual inquires you’re required to determine.
You are required to determine 1)the scope and content of the prior art, 2) the differences between the prior art, and 3) the level of skill in the art. (I’m leaving out 4) secondary considerations as they are not relevant to the taking of Official notice.)
When you conclude, “The examiner takes Official notice that LED’s are well known” you have failed to resolve the 3 factual inquires. What is the scope and content of the prior art? What is the prior art? It is the pertinent prior art. You might want to re-read 35 USC 103(a), i.e. the law. Your notice that “LED’s are well known” may not be so when you actually consider the PERTINENT prior art, for example the incubator art, to use Clive’s example. Because you have failed to correctly determine the scope and content of the pertinent prior art, and the differences between ther pertinent prior art, and the level of ordinary skill in the pertinent prior art, your taking of Official notice is bullsh#t.
So when you make a half-a$$ed statement like, “The examiner takes Official notice that LED’s are well known,” of course nobody is going to come back and argue that LED’s aren’t well known. They don’t have to. Because your attempt to resolve the 3 factual inquires with some general statement as to what is “well known,” without any effort to address the pertinent art, means you’ve failed to make a prima facie case as you haven’t properly resolved the factual questions.
It’s very similar to what I see with arguments regarding non-analogous art. The examiner makes a ridiculously broad assertion like, “Applicant’s field of endeavor is inventing, therefore the reference is analogous.” Complete nonsense.
“It’s true that it is good practice to do such, but it would hardly be proper for them to not final you on the next action (if such a thing were going to happen other than depending on that notice taken) since you were aware of the grounds of rejection.”
I don’t care what you get on the LSAT, if this is any indication of your ability to write a coherent sentence, you are in big trouble.
Oh, my bad, pds, I missed you:
“Burden of proof, evidence, prima facie case, when the burden is shifted …. all of these are concepts one deals with in law school and as an attorney. However, these are concepts that the average examiner has problems with, as you evidence every day on this board. ”
No, I understand them very, very well thanks. I also understand very very well that you are refusing to believe that there has been a changing of the gaurd when it comes to what substantial evidence in fact is. Sorry.
Fyi, a good indication of something I “know” is common knowledge is something that was taught to me, and a room full of other people called “classmates” most of whom are all POSITA as well. There was no “conclusion” to make. If I had to make a “conclusion” then the fact would almost of necessity have been esoteric, and would be improper to take notice about in the first place. The personal knowledge clause, as I believe I have made clear, relates to personal experience you have working in your field that you did not publish or otherwise make well known to others in your field. That is why such instances of this being used are so rare, the likelihood that someone would submit an application to an examiner that worked specifically in that guys niche doing exactly the same thing as he did is very low. In essence, the personal knowledge clause is to take notice of something that might be a bit esoteric (thus not being “common knowledge” which is what notice is usually taken of, but it nonetheless being something you know has been done before i.e. “old in the art” because you did it) etc. and would not be appropriate to take notice of otherwise. That is the ONLY time an affidavit is required. Commit this to memory, lest a few examiners with half a brain take you to the board and bump our affirmance rate before you understand this not hard to handle concept.
I used some parenthesis for you, I hope you can understand it now. Anyway, if you don’t understand it by now, I’m sorry, I don’t think I can teach you any more straight-forwardly. Just seeing JD et al. stop arguing should probably be enough of an indication to you that I’m spot on. They are your peers so far as I understand. Have a hard head all you like, it’s your time/money to spend on an appeal.
You’re simply not getting it. Oh well. There’s some bourbon waiting for me at home.
“but that the well-known element is a poor fit and/or had to be heavily adapted to work with the other elements of the invention”
Then say that on the record and you’re golden. Oh, and be sure you told what those heavy adaptations made by your client were in your spec. And maybe even put some in the claims? But be forwarned, you’re traversing the conclusion of obviousness, not the Off notice taken of the fact. As such, you may well want to make that clear in your action lest the examiner (louse that he is) overlook that and final you anyway. Remember, you’re likely talking about a dep as well, so I don’t know how you personally handle having allowable matter in a dep formerly improperly rejected.
Be clear JD, you if you are traversing the “use” of something that was only taken on notice to exist, then you are correct, you will be traversing the notice taken as being insufficient evidence to base a conclusion of obviousness on. You’re still not traversing the notice taken. You’re traversing the conclusion based on the fact, since the fact is insufficient to base such a conclusion upon. However, that said, you and I both know that that’s going to be a tough sell in very many circumstances. Though, as brought up, there are some where it would be appropriate.
I’m not too sure if I agree on the thing about calling them out on not using the words “official notice”. It’s true that it is good practice to do such, but it would hardly be proper for them to not final you on the next action (if such a thing were going to happen other than depending on that notice taken) since you were aware of the grounds of rejection. It would be like leaving out saying 2 limitations that are blatantly present in the reference in your discussion and limitation by limitation matching. Sure, he may have forgotten to put them in, but, you are made very aware of the basis of the rejection.
On the subject of the using the new KSR stuff like that, well, I don’t know how to help you guys, I see their point of view, and I see yours. You say it’s improperly interpreted, but in all honesty, it’s not. KSR lowered the bar significantly for the examiners making a prima case, contrary to what you may wish to believe. That said, the only thing that does is shift the burden of proof to you. Show them why it’s not so obvious and you’re golden.
I’m through with this subject for now though, it was good chatting, but after having thoroughly discussed it, and, I believe, having come out clearly in the top position that’s it for me. Funny enough, I just got another request for an affidavit …
DJR,
Agreed. But it’s not me that you have to worry about using you as an example. It’s your friends in PTO (mis)management.
MVS,
It’s 5:00 PM somewhere. I’ve been indulging in some 10 year old Old Rip Van Winkle bourbon lately. (Non-duty hours, of course.) It’s a steal at $22/bottle. I highly recommend it.
“JohnDarling”,
I think I may need a drink & it’s barely past noon! I actually AGREE with what you said @ 11:40am regarding the taking of notice without the examiner actually saying it.
This is bad & sloppy examining & they should be called on it. They think that if they do not say “Official Notice” that they have a better chance of getting the case signed. For THAT instance, I would agree that calling them on it & the record not showing it IS a legitimate response. Also, the examiner (and maybe the attorney, also) may not realize it, but based upon what I have been told (as well as what I have read) if the examiner did not explicitly state that they were taking notice then they loose the “protections” of 2144.03. I would say that if they add a new reference to the rejection to show it they could not make it final.
MVS
JD,
No, I do not think that I, as in me personally, need more time. That is evidenced by my production. However, there are plenty of people here that do. I have an officemate that struggles to get 100% despite being a good examiner, hard worker, and working voluntary OT. Please do not use above average workers as an example for justifying keeping production where it is for everyone else. I work my a$$ off to get 130%, and just because I can do it, that doesn’t mean that everyone else can. I don’t know, I may have been lucky in getting a favorable art. There are people here who work in art areas that didn’t even exist, or were in their infancy in 1976.
Clive,
What you are experiencing is the use of Official notice without the examiner actually invoking it. I also get that “well known” rejection all the time. I just reply, “It appears the examiner is relying on Official notice without actually stating that Official notice is being taken. Regardless of the examiner’s basis, there is no substantial evidence support provided for the allegedly well known feature.”
This is why the PTO should just prohibit the use of Official notice. What it leads to is exactly the kind of short circuit analysis you talk about in your example. “Well, that feature’s well known, therefore it must be obvious to use it.”
Unfortunately, according to some “experts,” there is no way to traverse such nonsense without committing inequitable conduct.
I may well be wrong in my quick analysis but frankly, I’m going to need to see a pass/fail grade from someone whose opinion I respect before I can know for sure.
Happily, I don’t get official notices in my office actions. Unhappily, what I tend to get is:
“The [delete this part] use of LEDs is old and well known in the illumination art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute an LED for the light source in the system of ***. [delete this part].”
Not official notice, not supported by any substantial evidence. Sometimes it really is true (and unlike pds, I don’t traverse it in those cases), and sometimes it seemingly springs from the examiner’s keyboard as a convenient bridge between what art he does have and the obviousness conclusion he desires to reach. Perhaps these examiners have misunderstood KSR to mean they need only show that every element of the claimed invention existed before the filing date, regardless of whether they were ever used together or even are suitable for combination.
More generally, though (and germane to the “QQ some more, lawyer” characterization), it may well be that the noticed fact is true in a vacuum, but that the well-known element is a poor fit and/or had to be heavily adapted to work with the other elements of the invention. Using the substitution of LEDs for incandescents as an example, LEDs also are notorious for low light output, low heat output, and at narrower wavelengths. If the light formerly used had to be bright and/or broad-spectrum, utilization of LEDs may or may not be an obvious substitution. If one has an egg incubator that relies on the illumination *and the heat* generated by an incandescent light source, halogen source substitutions likely are obvious but LED source substitutions likely are not. As always, context is important.
rce4me,
Thanks for the answer.
Unfortunately, I don’t see PTO (mis)management giving you any more time.
@JohnDarling
Not to speak for DJR but I’m a GS-11 (GS-12 in April) with ~105% production putting in 10-20+ hours of voluntary overtime per bi-week in order to properly do my job and present reasonable, quality work. And yes, I think that more hours/bd are necessary to produce quality work (at least in my art).
@DJR
I’ve only used Official Notice roughly 3 times in my 3 years at the office for similar reasons (SPE did not sign any actions relying on Official Notice)
“Actually, I’m a GS-11 (GS-12 in May) with 130% prduction.”
So are you one of those who thinks you need more time?
E6k,
Actually, I’m a GS-11 (GS-12 in May) with 130% prduction. Trust me, I’m far closer to your position than JD or pds. I’m personally not against official notice, but my SPE doesn’t like it, so I learned to get by without it. Also, I learned a long time ago that attorneys like to play dumb. So, I just accept the fact that the attorney will most likely force me to find some proof for him anyway (even though I know it, I know that he knows it, and that any kid in grade school would know it), so I usually just find the ref earlier rather than later.
I agree pds, there is a big difference, and the big difference is the motivation. If however I lay down the smacketh with a great motivation, you my friend have litte recourse but to bring up secondary considerations or the ol’ “but there’s things that teach away from it too” arguments (or go the ineq. conduct route and state a false non-factual reason as to why my fact would be false). That’s fine, you can bring them up all day long, but understand that the notice of the fact is now taken as fact, you are now traversing the 103 “conclusion of obviousness” portion and not the fact itself which will be with you on the record for the rest of the case as a fact. Your options are, a. disprove the fact (i.e. kill the notice) or b. present a good argument as to why it is unreasonable to combine them, aka teaching away, secondary consideration “long felt need” etc. (i.e. fight the conclusion of obviousness). Refuse to disprove the fact at your own risk. That is, if it can be disproved. Also, refuse to find a reference teaching away from my fact at your own risk.
This is why they’re paying you the big $, let’s have an argument on the record. Convince me. Trust me, I’m much easier to convince than the board is going to be.
Oh, and trust me, my inherency arguments got nothing on my Implict arguments 😉 Remember dear sir, explicit OR implicit. In my art, that counts for a lot. That however is something I VERY rarely even get a comment on, much less a real argument.
Hmmm, let me see if I can motivate the LCD example, One is motivated by the want to save power and/or space at the same time as providing a display means.
How’d I do? LCD’s use less power and/or save more space than CRT’s amirite?
5 secs later straight from world of pwnage forums (no less lol) “LCD = Small
, sleak, larger screens, less radiation, less eye strain, and less power drainage.”
There you have it, prima case, rock solid, though my notice would be “However the examiner takes Official Notice that it is commonplace to replace CRT’s with LCD’s” and then use the motivation above. Not that it really saved me time, I could have just found someone replacing a CRT with a LCD in this case. Some other things however, require a bit more time to find, but are still “instantly recognized” by one o ordinary skill. These are the useful times in my art. I know I hit it correctly when they fail to traverse it as not being a fact, or when they admit it is a fact, but then argue the combination.
The funny thing? I could probably official notice every last thing (including ind) in 50% of my cases and be 100% correct on all the notices, and the attorney’s arguments would look the same as they do when I just get a reference. Except he’d throw in “The examiner official noticed my whole app OMFG SPE DO SOMETHING” at the end. Want to kill the backlog in less than 5 years? Take away the taboo on off noticing the ind. and teach the examiners when it’s appropriate to use and how to do it properly. (Assuming KSR didn’t already, which is highly up for debate)
Good lord DJR, you make us look bad “shudder”. You better be 1 year-. Stick around, we’ll get your behind up to speed. Stop taking notice on motivations, just say the motivation. No, Off. notice does not require inherency. You seem to be missing the point of taking notice. Off notice is you the examiner making a factual statement well known to POSHITA (or only to yourself personally if you want to use an affidavit, that’s rare though, don’t do that much it would be doing an esoteric limitation that you have personal experience (i.e. in the lab etc) about). After you take notice of a fact, you then make a conclusion of obviousness, preferably with motivation. If you don’t have the motivation, I wouldn’t recommend using notice in the first place. Here’s a form paragraph for you to fill out, change the things it in as you need to.
The examiner takes Official Notice that the use of LEDs is old and well known in the illumination art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute an LED for the light source in the system of . One would have been motivated since LEDs are recognized in the illumination art to have many desirable advantages, including reduced size, high efficiency, low power consumption, long life, resistance to vibrations, and low heat production, over other light sources.
^lifted from a nice primary in lighting.
You might modify this as:
The examiner takes Official Notice that the use of copper as an interconnect material is old and well known in the semiconductor devices art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute a copper interconnect for the interconnect in the system of Primary Ref 1. One would have been motivated since copper interconnects are recognized in the semiconductor device art to have many desirable advantages, including very low resistance, and low atomic migration over other interconnects.
Thus, you save yourself the trouble of finding the 2ndary for a copper interconnect (I usually use it for things a tiny smidgen more complicated than that, but also give better motivations). Though, you then have to put up with JD’s trying to coerce a reference out of you anyway. That is a minor annoyance at best however, as the above is rock solid. If you want to find him a ref though, it’s admirable.
Be forwarned, do not use this on an ind. claim.
DJR, repeat after me the lawyer mantra “traverse, traverse, traverse, argue, argue argue” this indeed is likely what spawned “reject, reject, reject”.
Aight, I had to stop by again before I step out, now I’m def out.
What I am curious about is why traverse official notice in cases where anyone of ordinary skill in the art would accept it as either inherent or ridiculously obvious? I rarely use official notice in my OAs, only occasionally using it to provide a reason to combine two refs (e.g. it would be obvious to combine a and b as it is well known that copper is a conductive material suitable for use as an electrode), with ref b in this example being a similar device to ref a, having copper as an electrode material. I can definitely see traversing the taking of official notice on more esoteric limitations. However, I don’t understand making the traversal in cases where you know you won’t win. I’m at home right now and don’t have my MPEP with me, so correct me if I’m wrong, but I don’t believe that official notice requires inherency. So, why traverse a taking of official notice that 1 day = 24 hrs (or more realistic cases, like my copper example). Yes, if you interpret a day as a sidereal day, its not exactly 24 hrs, and a day on Venus isn’t 24 hrs either, but you know full well that the examiner would be able to find a ref teaching that 1 day = 24 hrs. I realize that it should be just as easy for the examiner to find a ref in the first place, but to me, it seems like a waste of time and money for all involved to traverse official notice in the ridiculously obvious cases. By the way, here is a ref for 1 day = 24 hours.
link to studyzone.org
If a 4th grader would know what you are going to traverse, it just isn’t worth it.
PDS argued “There is a big difference between taking official notice that “LCD is a type of display” and saying it would have been obvious to replace the CRT of the prior art with an LCD based upon official notice that both CRTs and LCDs are displays and therefore can both be used to display an image.”
You are correct, if you read your statement very carefully. The former is what you take notice of. The later is where you need to provide your motivation why obvious. ( Or, in our post KSR world, maybe argue that it would have been obvious to try 😉 ) That is the difference between the 2.
MVS
“BTW: There is a big difference between taking official notice that “LCD is a type of display” and saying it would have been obvious to replace the CRT of the prior art with an LCD based upon official notice that both CRTs and LCDs are displays and therefore can both be used to display an image.”
You might want to re-read Leapfrog on that point . . . and KSR for that matter.
6K … you need to bone up on the doctrine of inherency. Your “official notice” arguments reek of inherency arguments gone bad.
Inherency … just like official notice … I always like to see when an examiner tries to use it since they almost never use it properly.
BTW: There is a big difference between taking official notice that “LCD is a type of display” and saying it would have been obvious to replace the CRT of the prior art with an LCD based upon official notice that both CRTs and LCDs are displays and therefore can both be used to display an image.
“By not commiting ineq conduct you will not succesfully traverse one of my notices. I make sure of this before I notice you, otherwise there was no point.”
This represents a new high in ridiculousness. Even for you.
6K: You earlier wrote …
I respond: unfortunately the rejection of claim 2 is apparently not clear as the rejection is based not solely on personal knowledge specifically held by the examiner, but on common knowledge held by POSITA
You then write …..
We’re not in the business of “concluding” what is common knowledge, we either know it is, or we don’t know it is, there is no “conclusion” to be made as to that.
So, on one hand, you state that “common knowledge” is based upon your personal knowledge (i.e., “we either know it is, or we don’t know it is”) yet if someone traversed under 37 CFR 1.104(d)(2) (i.e., “[w]hen a rejection in an application is based on facts within the personal knowledge of an employee”), you say that such a traversal isn’t proper.
It would be fun to take you to the BPAI. Oh, and if someone did traverse your taking Official Notice (and even if you didn’t think it was proper) and you didn’t provide any evidence for the BPAI to consider in support of your Office Notice, then expect to be slammed. Unlike you, the BPAI understands the APA and the requirement for substantial evidence to support an agency decision.
“Also FYI pds, while the MPEP doesn’t have the force of law, 37 CFR 1.111(b) does.”
Good luck in using that to get around your burden of providing substantial evidence.
“By not commiting ineq conduct you will not succesfully traverse one of my notices.”
Again, you don’t understand inequitable conduct and/or the initial burden placed on the examiner. I can argue that an examiner has not established a prima facie case of anticipation/obviousness/indefiniteness/etc. without ever characterizing what the reference does or does not teach. If I’m not characterizing the reference, how can I be making a misstatement of fact? These are tried and true tactics that have been employed …. probably since before you were born. BTW: There is a significant difference between arguing “the examiner has failed to establish that reference XXXX disclosure feature GG” and arguing “feature GG is not disclosed by reference XXXX.”
Burden of proof, evidence, prima facie case, when the burden is shifted …. all of these are concepts one deals with in law school and as an attorney. However, these are concepts that the average examiner has problems with, as you evidence every day on this board.
ex6K purported that “Anyway, in bigger news, today I just heard about a spe demoting himself to primary so he can hotel. Pretty sad when your mgmt is DEMOTING themselves. I hear this isn’t even nearly the first time this has happened. Why would people want to do such a thing if the SPE gravy train is so wonderful?”
Actually, I know of a few that have done that. Can not blame them. I was that close (hold fingers together so that only a few atoms are between them) to doing the same thing. I was lucky in that the TC worked with me & I was able to go to a position more to my liking (as well as beliefs in the correct way of doing things) plus I can hotel. I would never go back to being a SPE. Not worth the non-gravy train headaches.
MVS
Oh and pds, your problem appears to be that you believe that a statement cannot be factual “It is commonly held that 24 hours make up a day” or “Screens are commonly LCD in today’s market” because of technicalities that lead to the possibility of making other factual statements “There are reasons that one would not consider a day to be 24 hours”. That is irrelevant. If I make a factual statement, in light of which your claim is concluded to be obvious, the only thing that will save you is explaining why my statement was not factual. Get it? Stating other facts DOES NOT CHANGE the fact stated by the examiner, unless they stand contrary, not supplementary, to the originally stated fact.
My demand for evidence is itself evidence that the “fact” is not admitted. Get it?
JD, yeah, I get it, unfortunately, that is irrelevant. Your not admitting that my factual statement is true, does not point out why there are any specific errors in my factual statement. Inadequate traverse. Get it? Though on the other hand, I’m sorry you get so many bad takings of notice. The real problem is they don’t teach it well, they make you pick it up either a. on your own, or b. from a primary. People that get it from a primary in my experience use it better. I’ll be honest, I was given a nice little form paragraph that I modified for my own purposes or I might leave one of the parts out myself in a hurry. If they gave even that FP out there would be fewer bad notices given out.
Anyway, I’m out for tonight got another action to do. Hah, a one liner as the ind. Gotta love em. One google search, bam, ind. is gone. Now for the deps…
Oh and come on pds, “I wouldn’t hesitate to traverse Official Notice that there is 24 hours in a day” just blatantly shows that you don’t understand that adequately traversing it will involve “arguing that there isn’t 24 hours in a day” in order to specifically point out the supposed error of the examiners factual statement. Please, give us an example wording of such a response to :
However, the examiner takes official notice that it is commonly held that there are 24 hours in a day. Therefore it would be obvious to one of ordinary skill in the art, at the time the invention was made, to have used 24 hours to designate the time period of a day in the alarm clock taught by Who et al. with the motivation of using an adequate representation of the time designated as a “day” in the circuitry and/or programming of the clock.
Please, demonstrate for us your LEET lawyer skillz on how to force the examiner to provide you with a reference so that we may tear your response limb from limb. Complete with copy pasta from the MPEP if you will be so kind. Also, try to do so without perpetrating ineq. conduct, just for kicks.
Anyway, in bigger news, today I just heard about a spe demoting himself to primary so he can hotel. Pretty sad when your mgmt is DEMOTING themselves. I hear this isn’t even nearly the first time this has happened. Why would people want to do such a thing if the SPE gravy train is so wonderful?
JD: “Why would an applicant request that evidence?” I know why they would, it’s irrelevant. For one, they don’t need to anymore, because when they fail to do anything but request a reference the fact is then taken as fact, the FOAM now is the evidence. Asking politely MIGHT get you a reference anyway if you spur the examiner to be generous and disregard what he SHOULD do. But then again, a guy like you that believes in doing all the shoulds wouldn’t want them to do that. Also, you’ve stumbled upon why the off. notice is open to abuse, if I notice you, you fail to respond adequate, there may have been some “teaching away” or etc. etc. to consider, but guess what? Mgmt cares less now, now it’s your responsibility to find that ref “teaching away” and submit it as evidence. That’s the whole point of the way things are working now, shifting yet more of the search for “questionable” limitations to the applicant rather than the examiner, or letting the limitations die. Again, this is specifically what was told to us, if you have some little thing like that you want us to see, you show it, not us show you then you point it out and show us back.
And yes, I know who the TQAS’s are briefed by, I just called you out like you’re so fond of calling examiners out, on the specifics of the wording of the question: Who briefs you? I answer: The TQAS’s. I did this, and will continue to do so to you, so that one day you might delawyerise yourself a bit and realize the futility of such inanity and stop doing it. (Unless of course money is involved in which case you should always do dumb sht like that to slow down the process and cost everyone more $ and time amirite? btw, that’s one of the problems in the patent system today, and what mgmt is trying to combat).
“Your comments about inequitable conduct demonstrate that you have zero understanding of that concept.”
HAHAHAAHAHAHAHAHAAHAHAHAHAHA, dream on. Lets at least wait until next week for me to have to blow up more of your battleships ok? Oh, here “inequitable conduct, which includes the following: (a) failure to submit prior art likely to be deemed relevant; (b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references; (c) misstatements of fact”. By not commiting ineq conduct you will not succesfully traverse one of my notices. I make sure of this before I notice you, otherwise there was no point.
Bloom- while JD is sort of right (the ignoring parts that aren’t afforded patentable weight = promo), I have had to write 4 or 5 2nd non’s, and really, the only reason to ever write a 2nd non is not making sure all the limitations were met. So, if you ever get a 2nd non, know that that examiner “got in touble”. “what trouble” you might ask, well, if you do it too often the Primary looking over your work will start to kick things back to you before they get sent out causing major production issues, and if you do it way too often your workflow will overwhelm you and you will eventually be fired. No, it’s not big trouble, but then again, it’s not big trouble for the lawyer either.
Hey, sorry my post was late, wrote it awhile ago didn’t put in the secret code so this and the above posts will be a bit out of line with some of the above posts. But yeah, JD, you just keep on traversing forgetting to include the “why” and we’ll just keep on sending you finals with our previous statement of fact now official evidence of the fact.
Please, more attorney’s chime in and display for us your bold faced misinterpretations of the section on Off. Notice. I know it’s a tough read, but come on, you’re supposed to be the best of the best, not 9th grade readers with a propensity to qq and make excuses, and squirm around after you have the evidence presented the contrary of your position.
Oh, and pds, “the board will smack you down if I don’t adequately traverse your off. notice” HAHAHAHAHAHAHAHAAHAHA, good one. If by that you mean, write Affirmed at the bottom, yeah, I agree, they’ll smack me right down to an RCE. FYI, the but, but’s are going to be you saying “I used all the magic words but, but failed to specifically point out the supposed errors in the examiner’s action, oh, I just lost, nevermind”. Specifically point out the reason, or your crppy appeal is going straight to helping our affirmance percentage. Don’t have anything to specifically point out? Don’t waste our time. Want to point out something stupd that makes you look stupd for saying it? Wait till you get a stupd response back addressing the same, this time with “FINAL” written below it. Who knows, if you make us laugh hard enough, we might cite you a reference. Oh, and you’re right, arguing something stupd (like stating that the fact that nonpaper envelopes exist somehow shows that it is not a fact that it is common knowledge that envelopes are made of paper, a statement you notice does not say envelopes are ALWAYS made of paper) above isn’t malpractice, and it’s not ineq. conduct, it’s not addressing the issue, which, btw, will also be deemed not adequate because you didn’t point out any errors in the examiners factual statement, you merely presented another factual statement. A practice that while cute, is off topic and will be held as such. Engage in it at your own peril should the examiner be on his toes that day. Also FYI pds, while the MPEP doesn’t have the force of law, 37 CFR 1.111(b) does.
“is not proper Official Notice to begin with.” Fen, I’m going to presume you’re not spending much time on this, because otherwise I’m going to have to accuse you of being just plain stupd, and I would hat e to do that. Here, I’ll give you a hint for your further studies into this matter so that you don’t end up failing to adequately traverse, this: “sound technical and scientific reasoning to support his or her conclusion of common knowledge” is not interpreted as “sound technical and scientific reasoning to support his deeming x a fact which is common knowledge” it is interpreted properly as: “sound technical and scientific reasoning to support his conclusion that the subject matter of the claim is common knowledge”, look up the case if you need convincing. We’re not in the business of “concluding” what is common knowledge, we either know it is, or we don’t know it is, there is no “conclusion” to be made as to that. The “conclusion” to be made is the legal conclusion of obviousness, which as JD points out, must be based on the “fact” which must be established (not concluded).
“I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice.”
Precisely why I don’t get any real traversals back. The Attorney’s I’m dealing with usually aren’t complete retards. If they traverse it properly it will be something of substance. Except change “malpractice” to “ineq. con.”
“outputting video to a display” and one dependent claim says “the display is a CRT”, while another says it is an LCD and another dependent says is a plasma display. The reference (a 102 for claim 1). For the 1st dependent the reference is a 102 since it uses a CRT rather than an LCD or plasma. Personally, I would take notice (with explanation & motivation not included here) that using either a LCD or plasma in place of the CRT of the reference is well known and conventional.
It all depends …. a CRT is an analog output. On the contrary, a PDP/LCD are digital outputs. The “outputting video to a display” that may work for a CRT may not be appropriate for a LCD … or so says common knowledge before applicant’s invention. It really depends upon the facts and how they are being used.
“Although I generally agree with pds, I wouldn’t traverse taking notice of 24 hours in a day.”
I used that example because, at first blush …. “hey, everybody knows there are 24 hours in a day.” However, it all depends upon how you define “day” Is it the time it takes for the Earth to revolve around the sun divided by 365? Then the answer is no. A sidereal day (i.e., a single rotation of the Earth with respect to the distant stars) is 23.934 solar hours. A day is 24 hours long if it is based upon 86,400 SI seconds, with each second defined as the duration of 9,192,631,770 periods of the radiation corresponding to the transition between the two hyperfine levels of the ground state of the caesium-133 atom.
In certain instances, whether or not a day is not precisely 24 hours may be relevant. In other instances, it may not be. Regardless, the point is that even “well known facts” are not necessarily true.
“JohnDarling”,
Guess we will have to disagree. Yes, it is your right to challenge the taking of notice. No problem. And I can agree with the legal underpinnings that you want to traverse everything to protect you client for litigation. Even you traversing puts you on record of not agreeing that “X” is not well known. Still OK. I just disagree that simply stating that you disagree meets the burden stated in the MPEP.
Your interpretation of the quote “stating why the noticed fact is not considered to be common knowledge or well-known in the art” seems to be forgetting the word “WHY” in there.
It does not state “an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating the noticed fact is not considered to be common knowledge or well-known in the art”, which seems to be the way you are interpreting it.
It states “an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating WHY the noticed fact is not considered to be common knowledge or well-known in the art”
Your response of “It’s not considered to be common knowledge because the examiner has not produced any evidence that it’s common knowledge. If it is, in fact, common knowledge, the examiner should have no trouble producing such evidence.” does not address the WHY part that is required. Sorry…
Now what I used to do (& encouraged my examiners to do) was tell the applicant that their traversal was not sufficient to meet the requirements of 2144.03 BUT ALSO to cite (not apply) a reference that supports the taking of notice. That usually stops the attorney cold. And I have been upheld at the Board when doing such (whether it is because the attorney knew they had a losing case on that point or the Board agreed with the notice, I do not know, off hand). That way, we have covered ourselves & you have done what you need to to cover yourself.
As an example:
if I have a case where claim 1 says (at the end)
“outputting video to a display” and one dependent claim says “the display is a CRT”, while another says it is an LCD and another dependent says is a plasma display. The reference (a 102 for claim 1). For the 1st dependent the reference is a 102 since it uses a CRT rather than an LCD or plasma. Personally, I would take notice (with explanation & motivation not included here) that using either a LCD or plasma in place of the CRT of the reference is well known and conventional.
Now, is that really something you think is worth fighting for and the examiner showing that an LCD or plasma is conventional. (I can take pictures as Best but if you want 🙂 )
And is simply saying that they are not conventional & well known establish that they are not so well known that anyone with enough money can buy one? No.
It seems that this would just be a waste of everyone’s time & effort and take away from what the invention really is. (And these are the types of things that I am talking about taking notice on. Not things that are esoteric in the art or the point of novelty.)
As to the request about what you did, the answer is really simple. I just want to know if you actually practiced as an examiner what you preach that examiners should be doing OR if you are a hypocrite that says everyone should do something but would not do it themselves. Much like soon-to-be former governor Spitzer. It goes to credibility one way or another.
MVS
PS, I know who LL is. We worked in the same TC before I moved positions. Part of the reasons I picked the name. Sometimes we agree; sometimes not.
MVS,
I didn’t say your reading of 2144.03 was wrong, I said it was misplaced. 🙂
Saying “it is not in the record” is not nonsense. It is my job to force you to provide evidence of your “findings” of fact. I explained why in the previous post. Because the “evidence” you supply may help my case. See? (Of course, it may not help my case, but either way, it’s required for the consideration of the subject matter as a whole.)
And the Fed. Cir. agrees with me. Your “findings” have to be supported by substantial evidence. And please spare me these arguments that “everybody knows that using x with y is so notoriously old and well known that nobody ever bothered to write it down.” If a feature is so “notoriously old and well known” then you can find a reference. This is the information age for Pete’s sake.
“Or are you one of those that believe that there is no circumstance where official notice is proper? If so, did you ever take it??”
1) I’m not opposed to the taking of Official notice. Like I said, I’ve reviewed many file histories where it was taken and not challenged. That’s the choice of the practitioner and the applicant not to challenge. Perfectly acceptable. For them. Not for me.
Although I generally agree with pds, I wouldn’t traverse taking notice of 24 hours in a day. Or something like notice that water boils at atmospheric pressure at 212F. But that’s not what I get. I get “Examiner takes Official notice that feature x is an obvious design choice.” I swear to you, I get that several times a month. That exact wording. I must not have any OA’s coming from your AU/TC.
2) What difference does it make if I took Official notice when I was an examiner? You’re attempting to make the same argument LL makes: Well, if JD did it when he was an examiner, then I can do it too.
If I was a short cut takin’, law breakin’, count wh#re when I was an examiner, so what? (For the record, I was not.) Okay, so I’d be a hypocrite. Again, so what? Are we going to let all of those stock brokers that Mr. Spitzer put in jail out just because we now know that he’s a hypocrite?
Any time you and LL wanna stop making that phony argument, feel free. Please. The rightness or wrongness of your actions is not dependent on whether I, or anybody else, did it, or is doing it. Your actions are either lawful, or they are not. You are either resolving questions of fact with substantial evidentiary support and then drawing sound legal conclusions, or you are not. If you are making up rejections that aren’t even close to prima facie because you don’t feel like issuing the application, then your actions are arbitrary and capricious and an abuse of your discretion, i.e. unlawful. You and I previously discussed an application in which that exact scenario is playing out. The examiner in that case is clearly breaking the law. He should stop it.
BTW, when I use “you” and “your” I’m not referring to you and LL specifically, I’m referring to the examining corps in general. I have no doubts that if I called you to discuss an issue I was having with one of your examiners, I’d get a fair hearing. Now all I gotta do is figure out how to get my cases in your AU/TC.
One more BTW, “STATING WHY THE NOTICED FACT IS NOT CONSIDERED TO BE COMMON KNOWLEDGE OR WELL-KNOWN IN THE ART” is clearly met by, “It’s not considered to be common knowledge because the examiner has not produced any evidence that it’s common knowledge. If it is, in fact, common knowledge, the examiner should have no trouble producing such evidence.”
pds is correct on this. If I traverse your taking of Official notice on those grounds, and you pull this nonsense that my traversal is inadequate and the “fact” is taken as admitted, that ain’t gonna fly. My demand for evidence is itself evidence that the “fact” is not admitted. Get it?
“johndarling”,
WHY is our reading of 2144.03 wrong? And specifically the phrase (& I quote with emphasis added):
“To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which WOULD INCLUDE STATING WHY THE NOTICED FACT IS NOT CONSIDERED TO BE COMMON KNOWLEDGE OR WELL-KNOWN IN THE ART.”
Simply stating “no it’s not” does not meet this criteria any more than it would when made by a 5-year old child! There is no way you can honestly say it does. You need to provide SOMETHING to support your traversal. Saying that “it is not in the record” is a nonsense argument. OF COURSE it is not in the record. If it were the examiner would not be taking official notice. Or are you one of those that believe that there is no circumstance where official notice is proper? If so, did you ever take it??
I, personally, see no way 2144.03 can be read any other way. If you maintain that it is, I respectfully “traverse” your assertion are request that you provide actual evidence to support your position.
MVS
PDS writes:
”
“These are things like a control system having a signal sent to the controller (where the control system and controller were taught, as well as some other system “communicating” with the controller,”
What exactly did you take official notice of regarding the control system and controller? If it was that such devices exist … then OK. However, how the control system works, where it is placed, how it controls the device, and how the controller operates can vary significantly.”
I took official notice that a signal is present when my art already taught feedback sent to a controller in a control system without specifically using applicant’s almighty patent-trend setting and cutting edge terminology “signal”. Everything was taught but the word “signal”. Response was literally: “Applicant respectfully traverses the Examiner’s Official Notice that a signal is present.”
“As for “whatever was providing it feedback,” are you assuming that the control system was providing “feedback”? I wouldn’t make that assumption. The data being sent to the controller may be independent of the data being sent from the controller. If so, the data being sent to the controller is not feedback.”
The claim spelled out that a signal was sent to the controller of the control system. Therefore, I didn’t have to assume anything. All I did was look for prior art in the same field showing controllers of control systems can receive feedback (“signals”) in order to control something. That’s what controllers do. They control things based on provided (usually from sensors) data.
“”power being something that is generated from an engine”
I know of “engines” that don’t provide power. Can you guess what they are?”
Engines that run off fuel provide power.
“”envelopes being made of paper”
Really?? You need to come up with some better examples, because I’ve got some non-paper envelopes to show you.”
Official Notice was taken that envelopes can be made of paper, not that all envelopes are paper or that envelopes can only be made of paper.
“”I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice.”
You really don’t know what “malpractice” involves, do you? The far better case of malpractice would be for the attorney not to traverse your Official Notice, no matter how well know your fact was. Me, I wouldn’t hesitate to traverse Official Notice that there is 24 hours in a day. Requesting factual support for a position is not inequitable conduct no matter how well-known the fact may be. I’m not arguing that there isn’t 24 hours in a day, I’m just asking that you provide evidence of that fact for the record.”
If that is the way the IP system should be (and I’m not saying it should, just playing devil’s advocate), so be it. If that is the case, the USPTO can be one of the few Government Agencies that the concept of Administrative Official Notice doesn’t apply to. It would be pointless to be able to take Official Notice of facts such as: envelopes can be made of paper, signals are sent to controllers of control systems, engines provide power, a day has 24 hours in it, if you still have to provide evidence of such.
“What exactly are the consequences for an office action that fails to address claim limitations (or fails to address some claims at all), or that clearly transitions to just making up citations after claim 3 or so?”
Leo, I’ll tell you what the consequences are: a promotion and a bonus.
Why do you think you see these fairly often?
This is a serious response.
Ex6k: “Maybe not make a junior prosecutor get in trouble for not properly traversing? Well, I get in trouble for not properly making sure all limitations are met, what’s the difference?”
I’m curious – what kind of trouble? What exactly are the consequences for an office action that fails to address claim limitations (or fails to address some claims at all), or that clearly transitions to just making up citations after claim 3 or so? I see these fairly often (although I’m sure none of them were from you). Is there really any accountability for quality of office actions? This is a serious question…
“True, but all he had to do was say, no, you’re wrong because x is not well known to one of ordinary skill or x would not be used for y motivation. Simple as that. Problem is, if he said that, then he’d look like a fool, and may well get hit for ineq. conduct later (and should if he did imo).”
As pds correctly notes above, traversing the taking of Official notice is not arguing that the “fact” is not well known, it is a request to produce the evidence that establishes the fact is well known. Why would an applicant request that evidence? Because the determination of obviousness requires the consideration of the subject matter as a whole. So if the “evidence” you provide in support of the taking of Official notice also teaches directly away from the claimed invention and/or a combination with the other references in the rejection, applicant is going to argue that. Until you find a reference that doesn’t.
Your comments about inequitable conduct demonstrate that you have zero understanding of that concept.
Who do you think “briefs” the TQAS’s who “brief” you?
Duh.
MVS,
I do always traverse Official notice when it is taken. More than adequately. But I have reviewed plenty of file wrappers where applicants/practitioners never even address it. That’s unfortunate. But not my problem.
Contrary to 6k’s “understanding,” and apparently your own, in order to traverse the taking of Official Notice, applicant only has to explain why the noticed fact is not considered to be common knowledge or well-known in the art. As is clearly noted in MPEP 2144.03, the facts consituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and not amenable to the taking of official notice. That’s all I gotta say. And if I’m feeling particularly ornery, I’ll throw in that your reliance on official notice for “feature x” is not supported by any substantial evidence.
Your reliance on 2144.03 C and Rule 111(b) are misplaced. As that section clearly states, in the absence of any demand by appellant for the examiner to produce authority for his statement, the Board will not consider the contention. In other words, if applicant demands evidence, the Board’s gotta consider applicant’s demand for evidence. As also noted in that section, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. The corrollary, of course, is that if applicant’s arguments are more than a mere allegation, and the arguments reference the taking of official notice, that is adequate.
That section also states “[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings to satisfy the substantial evidence test.” As we all know, “must” means “must.”
BTW, thanks for kicking back any improper taking of official notice. You should be aware that you’re the exception, and as diligent as you may be, you’re probably not able to review everything going out of your AU or TC.
randomexaminer
Good comments. I do realize that 6K’s comments are not representative of examiner’s as a whole.
I also realize that much of what he writes is an attempt to get a rise out of us … I definitely ignore some of his more inflammatory comments. However, his comments are a good mechanism to discuss the law. Although 6K may be the most prolific writer on this board from the PTO, there are likely many examiners who read the board but do not post and many of my comments are directed to them through 6K. Although 6K may be a lost cause, I don’t want some of his inaccurate comments about the statement of the law to go uncorrected.
“These are things like a control system having a signal sent to the controller (where the control system and controller were taught, as well as some other system “communicating” with the controller,”
What exactly did you take official notice of regarding the control system and controller? If it was that such devices exist … then OK. However, how the control system works, where it is placed, how it controls the device, and how the controller operates can vary significantly.
As for “whatever was providing it feedback,” are you assuming that the control system was providing “feedback”? I wouldn’t make that assumption. The data being sent to the controller may be independent of the data being sent from the controller. If so, the data being sent to the controller is not feedback.
“power being something that is generated from an engine”
I know of “engines” that don’t provide power. Can you guess what they are?
“envelopes being made of paper”
Really?? You need to come up with some better examples, because I’ve got some non-paper envelopes to show you.
“I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice.”
You really don’t know what “malpractice” involves, do you? The far better case of malpractice would be for the attorney not to traverse your Official Notice, no matter how well know your fact was. Me, I wouldn’t hesitate to traverse Official Notice that there is 24 hours in a day. Requesting factual support for a position is not inequitable conduct no matter how well-known the fact may be. I’m not arguing that there isn’t 24 hours in a day, I’m just asking that you provide evidence of that fact for the record.
BTW: Don’t worry about me not properly traversing Official Notice. I already know the MPEP section (I cite it in my response), and I make sure that I use all the magic words. Also, remember, the MPEP is not the force of law. If you take Official Notice of something, and the applicant traverses (say in an Appeal Brief) and you don’t provide substantial evidence that supports your position, the BPAI will probably smack you down. The BPAI isn’t going to be persuaded by your argument (“but, but, but … they didn’t write the magic words …. and my SPE told me that it was OK”). Instead, the BPAI will inform you that applicant’s intent to traverse was perfectly clear and you should have provided the evidence to back up your assertions.
And if one looks just a smidge higher on the page than E6k did when pulling his quote:
“If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge. See Soli, 317 F.2d at 946, 37 USPQ at 801; Chevenard, 139 F.2d at 713, 60 USPQ at 241. The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice **>so as to adequately traverse the rejection< in the next reply after the Office action in which the common knowledge statement was made." So ... "However, the examiner takes Official notice that using [x] is old and well known in the [technical] art. It would therefor have been obvious to one of ordinary skill in the art at the time the invention was made to [employ?] [x] in the blank of Ref A." ... is not proper Official Notice to begin with. The burden therefore has not yet shifted to the applicant to traverse. How can the applicant traverse the "sound technical and scientific reasoning to support his or her conclusion of common knowledge" if it's not been "set forth explicitly"?
Oh and JD, if you don’t do the “an applicant must specifically point out” part it will not avail you. So far people have been complying with my usage thus pretty well. This is the first outlier.
“And who “briefed” you? Oh yeah, those same idiots from PTO (mis)management who wrote the continuation and claim examination rules that have been found to be unlawful.”
Strangely enough, I don’t believe our TQAS’s have much input on those, they mainly disseminate the information.
And no MVS I hardly think I know everything, I think that the folks around here blatantly spit in the face of the way things are done when it suits them, but expect the examiners to be as nice and sweet as your everyday southern girl. I’m merely calling out one chief amongst them for doing so, and even then, only in response to his calling out what I offered as merely a funny example. I may have suspected it would lure JD and the rest of them in to the discussion though it’s really a continuation of a conversation we were having before.
MVS – thanks for the citation. Official Notice was never meant to be such a hassle – the roots in Administrative Law and further back are designed to allow time-saving measures for menial points. The problem is that some Examiners abuse Official Notice (I knew some that used this essentially as a crutch because of ridiculously low production goals 3 decades out of date), and some Applicants and their representatives abuse the ability to call an Examiner out.
Just as some have said in this very thread that Examiners aren’t the only audience of their replies to Office Actions, Applicants and their representatives weren’t always my only audience. Sometimes I was writing things for my SPE, sometimes for the BPAI, and sometimes, in a few rare cases, I would write things into an Office Action for a court. I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice. These are things like a control system having a signal sent to the controller (where the control system and controller were taught, as well as some other system “communicating” with the controller, and I took Official Notice that a signal was involved in the electrical communications between the controller and whatever was providing it feedback; or things like power being something that is generated from an engine; or envelopes being made of paper).
These were all specific examples of facts I took Official Notice of that were improperly traversed by Attorneys. My strategy when that happened was to go on record and essentially state something like: “Although Applicant’s Representative has not properly traversed the Official Notice taken that envelopes are made of paper, evidence in the form of the Smith patent titled “Paper Envelope”/Johnson Technical disclosure from the year 1809 has been provided showing that such facts are indisputable. It is noted for the record that Applicant’s Representative has attempted to dispute a benchmark fact within the entire industry of paper products that envelopes are known to be made of paper.” Hopefully this makes the case if such a patent was ever granted that a court, and particularly an adverse party can show the types of arguments that the Applicant’s Representative was presenting before the USPTO.
“And if they had “ordinary” skill, then they would be able to do what the ordinary inventor does … i.e., practice their art in the real world.”
Um, I can assure you that I have ordinary skill in my art, one near the top, if not the top of my class, especially considering my specific area. I can certainly perform as one of ordinary skill in the lab or on the manufacturing floor. I can assure you that people that have been here for 20 years are not too “hands on experienced” but they’d make out ok. At the same time though, I will admit to you that some of the “worst” people from my school actually work here too. On the other hand, more of the “good” people work here than the “bad”.
On a side note, if, according to you, what you guys submit in applications is practicing the art, then we can practice the art right here from our ivory tower with no more than a patent drafting mad libs page, literally, I’m not trying to be funny. Let’s try to remember that we function almost purely on the “intellectual” side of things, and much less so the “practical implementation” of ideas side. Even so, there are very many jobs that require such mad intellectual skill.
“However, if you cannot find a reference(s) that establishes these “facts” within 5 minutes, then perhaps these facts aren’t as well known as you believe. You may be being a PITA etc.”
True, but all he had to do was say, no, you’re wrong because x is not well known to one of ordinary skill or x would not be used for y motivation. Simple as that. Problem is, if he said that, then he’d look like a fool, and may well get hit for ineq. conduct later (and should if he did imo). The new mechanism, looking to you like us just being a PITA, is really us recalling the use of the “time saving” tool of Off. Notice, which had been reduced to nothing more than a “time-spent shifting” tool by the over-use of it in the past. Well, our mommies let us out of our rooms and the smack down on us has been lifted, though we have been warned if we abuse it as was done years ago it’ll be laid right back down. In the mean time, deal with it like a real man, claim things that aren’t blatantly obvious in view of well known facts, or argue.
Oh, and tbh with you pds, I wanted to just cite him a reference, I actually started out writing back that I would be happy to cite him a reference if he properly traverses, but then I read the end of the relavent portions of the MPEP, and was reminded I “should” tell him that now what I stated is taken as fact. I didn’t make that policy btw, that’s just how it is. So what good would it do for me to cite a ref? It’s already taken as fact in the eyes of a court, what would citing a reference do except maybe make the bigcorp “inventor” sleep a little better at night? (that is if he even understands what happened) Maybe not make a junior prosecutor get in trouble for not properly traversing? Well, I get in trouble for not properly making sure all limitations are met, what’s the difference? We live and learn that way.
Many comments I make here may lead you guys to believe that I just run buck wild with reckless abandon in my RL matters, when indeed, I’m probably one of the more conservative. Don’t take that to mean that I don’t believe there should be substantial change to the system, but I was trained that way and was just getting used to doing it that way when it was changed around. I haven’t made the switch just yet, as nobody is really pushing me to. Though, to be very honest with you, people that can’t even be bothered to make a base arguement towards some issue in order to secure a monopoly really don’t get much sympathy from me.
“I work in an art with an expectancy of 31.6” Sweet Jesus, if I did around 2.5 cases a week I might not have a problem either, but alas, the production system is how it is. And yeah you’re right about the consume your life part, but it’s quite normal over here in my art for it to during the first promo you get (either from 9 to 11 or from 7 to 9, with 7 to 9 usually being the “worst”) this is because we’re “supposed” to do 3 amends 3 nonfinals a bi week with RCE’s thrown in for kicks and good times. What it boils down to however is writing minimum 4 amends and 5 or 6 nonfinals at the beginning of the transition, leveling out to 3 amends after awhile, and then the nonfinals dropping to 4, and then finally, dropping to the 3. Most people take another promo around the “4” time, and have the whole cycle consume them a bit again for awhile. Completely normal over here, everyone I know that went through it says the same thing. Also, sometimes I post from home while getting away from the little lady or if I can’t sleep. I get substantial kicks from besting attorney’s (and judges when possible) at their own game. Substantial. Try winning your case in court sometime on a “technicality” or merely reading the law and not being guilty when everyone is presuming you’re guilty already (judge included). You’ll leave feeling right as rain. Indeed, probably what motivates me the most to be an attorney is getting paid to win arguments. Though the law interests me as well, mainly in a “I’d like to be making them” sort of way though 😉 What better way to congress than to be a lawyer?
Oh, and if I do see an action where the examiner takes notice without the necessary explanation and motivation, I make sure it gets kicked back as an improper taking of notice. Or if they take notice of esoteric material or an item that is the point of invention. Those things are improper and the examiner needs to redo/correct them.
MVS
“johndarling”,
If the examiner properly took notice (which, counter to what you preach, happens more often than once a millennium 😉 I always had my examiners not only take notice, but explain WHY it was well known (give example, if possible) and provide the necessary motivation. I and many other did this. This does satisfy the requirements of 2241.03.), then your “traversal” would be properly treated as not being sufficient in accordance with MPEP and would be treated as such.
Whether you like it or not, this IS in accordance with the law. Simply saying what you quote is just boilerplate B$ & should be treated as such.
MVS
So I cut and paste this quote from the MPEP into my response:
It is never appropriate to rely solely on “common knowledge” in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 (“[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”). While the court explained that, “as an administrative tribunal the Board clearly has expertise in the subject matter over which it exercises jurisdiction,” it made clear that such “expertise may provide sufficient support for conclusions [only] as to peripheral issues.” Id. at 1385-86, 59 USPQ2d at 1697. As the court held in Zurko, an assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support. Id. at 1385, 59 USPQ2d at 1697.
My traversal is “adequate” because I have informed you that your assessment of what is “basic knowledge” and/or “common sense” has ZERO substantial evidence support.
That was tough.
“johndarling”
regarding your “discussion” with ex6k, at least for official notice, just the attorney saying that “the references of record do not show the feature so you have to show me a reference that does show it” is NOT a proper traversal of the taking of Official Notice.
“johndarling”, I KNOW that you are smarter than this! Anyhow …
Please see MPEP 2144.03(item C) which is reproduced completely, below, for support. A few pertinent quotes are:
“To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.”
“A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate.”
“If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained.” and
“If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.”
MPEP 2144.03(item C) states:
C. If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding With Adequate Evidence
To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b). See also Chevenard, 139 F.2d at 713, 60 USPQ at 241 (“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”). A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. See 37 CFR 1.104(c)(2). See also Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 (“[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings” to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual
statements and explanation to support the finding. See 37 CFR 1.104(d)(2). If applicant does not traverse the examiner’s assertion of official notice or applicant’s
traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or
that the traverse was inadequate. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.”
MVS
“randomexaminer”
re: remarks to/about ex6K –
AMEN, brother! I agree with completely. Be nice if he listens & not think that he knows it all in 18 months.
MVS
“Like I told you, we were specifically briefed that we are now no longer required to pull the reference absent your ADEQUATE traversal.”
And who “briefed” you? Oh yeah, those same idiots from PTO (mis)management who wrote the continuation and claim examination rules that have been found to be unlawful.
I’m really impressed.
To answer the comments above, the point in Solomon is, that the baby did NOT get split. It all came right in the end, thanks to the extra evidence that caused a reversal of the first instance decision. And in civil law countries, the Examiner is deemed the PHOSITA, not actually a PHOSITA. They are nearly all humble enough to understand the difference, which results in compact and efficient prosecution, with mutual respect (Exr #6K) between Exr and prosecuting atty. “Give me a break” cries out IronicSlip. From what, exactly? Where are the failures, in the European system? Tell me about them. Where are all those “Swinging on a Swing” cases?
“And if they had “ordinary” skill, then they would be able to do what the ordinary inventor does … i.e., practice their art in the real world.”
Yeah – – thank God for all the retard examiners who are such losers that they can’t possibly aspire to be anything but a loser examiner at the loser PTO or EPO.
6K – a little advice from a fellow examiner.
First, the attorney’s job is to get their clients claims that are as broad as possible, and it’s our job to examine them. Just do your part, and everything will be fine. When an application comes across my desk with incredibly broad claims, I couldn’t be happier. That just means I don’t have to worry about the possibility of working any VOT. I work in an art with an expectancy of 31.6, so there is nothing better in my book than being able to polish off a first OA in maybe 4 hours or so.
Second, from your postings at all hours of the day (including posts at 11:30 on a Saturday night), it appears as though patent examining is consuming your life. That’s just sad. Don’t let it. It’s a tedious job, but that’s what it is – a job. It’s what we do to earn a paycheck so that we can go home and live our lives. You come across as a very bitter person, particularly for someone who is clearly very young, and for what? Lighten up, go to some happy hours, and for god’s sake, take your girlfriend out on Saturday nights instead of trolling on patentlyo. Life is short.
And to the attorneys out there, please don’t think that we all (or any of us for that matter) think like 6K. He is clearly still learning the ins and outs of the patent system, and doesn’t yet have a grasp of the big picture. My advice is to simply ignore his immature and silly posts. My guess is that a lot of what he says is just done to get a rise out of you – at least I hope that’s what it is.
“On the contrary, I have never heard of any law student becoming a patent examiner after graduation …. there may have been a couple, but I’ve never heard of one.”
Make that one.
“There’s a reason ‘ordinary skill’ is called ‘ordinary’ mo ron.”
And if they had “ordinary” skill, then they would be able to do what the ordinary inventor does … i.e., practice their art in the real world.
I wonder if you actually read what you write before you hit the “post” button.
I doubt it.
“Like I told you, we were specifically briefed that we are now no longer required to pull the reference absent your ADEQUATE traversal.”
The difference between somebody doing their job and somebody being a PITA is that the person doing their job would have stated “despite applicant’s improper traversal of the examiner taking official notice (see MPEP XXXX), reference is made to REF A and REF B, which establish the facts relied upon by the examiner in the prior Office Action).” By doing it this way, you get to show the attorney that you were right about the facts and the attorney didn’t know how to properly traverse your official notice. Otherwise, you are just being a PITA. However, if you cannot find a reference(s) that establishes these “facts” within 5 minutes, then perhaps these facts aren’t as well known as you believe.
As to your criticism of David Boundy, perhaps you should have looked at the title of this thread … i.e., Board of Patent Appeals and Interferences (BPAI). His comments were the most relevant addition to this thread in quite some time.
As for his numbers for attachment C, I’ll let David Boundy speak for them, but it appears that they were in response to a FOIA request. Spreadsheet D appears to be a combination of statistics provided by the USPTO.
“I think you people at the BPAI are retards that don’t know how things work at the office at all”
Perhaps in your ignorance, you don’t understand the role of comments in a rule making process and that the people drafting these rules aren’t necessarily familiar with all statistics associated with the BPAI.
BTW: You should read pages 73 and 74 (out of 132). I’m going to have to work some of that language into my Appeal Briefs. Many of my appeals involve an examiner not providing sufficient detail in a rejection. I would like to see more of my appears remanded back to the examiner for more information (i.e., the “substantial evidence” JD and I were talking about).
To be honest, I really enjoyed those comments.
“At the EPO, the Exr is the PHOSITA” … what a fallacy that is. I wonder how many of those EPO examiners could hang up their rejection stamps and practice their “art” in the real world. Likely not enough to justify the legal fiction that an examiner is a PHOSITA.”
HAHAHAHAHAHAAHAHHAHAHAHAAHA
AHAHAHAHAAHAHAHAHHAHAHAHAHA
No, really,
AHHAHHAHAHAAHAHHAHAHAHHAHAHAHAHA
There’s a reason “ordinary skill” is called “ordinary” mo ron.
“You’ll have to forgive me if I find that hard to believe.”
Too bad. The phrase “obvious design choice” was not mine but his.
“I get several of those “examiner takes Official notice that x would be an obvious design choice” type “findings” a month.”
Not from me.
“It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”
Unfortunately for you and him, the facts relied upon are.
“In other words, you have to cite the reference without any argument from applicant/attorney.”
Wrong. “without any argument” needs to be replaced with “without adequate argument” as laid out above for you to read JD.
Still PWNT JD. Stop trying to squirm out of making an adequate traversal and just make one. Unless, as I said originally, anything you would say the contrary would sound outrageously stupd and contrary the laws of physics or would paint POSHITA as a 5th grader or less. There’s a reason he didn’t adequately traverse, and it’s not that he doesn’t know which section to cite properly. That would be, because his claim is obvious based on facts well known.
Just for you JD, I include my near quoted words from the OA:
However, the examiner takes Official notce that using x is old and well known in the blank art (< that's the fact for you JD, in case you have trouble figuring it out, I figured I'd put this in () because that's apparently what lawyers need in order to glean any meaning from a statement). It would therefor have been obvious to one of ordinary skill in the art at the time the invention was made to x in the blank of Ref A. One is motivated by (insert well known technical motivation) (< that's the finding of obviousness based on the fact above and sufficiently supported by a motivation) As has been clearly demonstrated, E6k did indeed pwn this applicant in the face, and the applicant further attempted to use "mad lawyer skills" to misrepresent what the examiner actually did, following in JD's footsteps. Thus, at least by association, and in light of comments made thereby, JD is found to be PWNT as well. Like I told you, we were specifically briefed that we are now no longer required to pull the reference absent your ADEQUATE traversal. He didn't bother to argue my notice was improperly taken, because it wasn't improperly taken. What he requested, specifically, was an affidavit under 37 cfr 1.104(d)(2) which is only for cases of the examiner relying on knowledge specifically known "only" to him, and not likely known to POSHITA. I on the other hand am taking notice of a fact commonly known to POSHITA and thus no affidavit is required. Furthermore, nothing in my original taking of notice would lead one to believe such a situation under 1.104 was at hand. You're PWNT so hard you don't even know what hit you. "Executive summary: examiners are affirmed about 20% of the time - that is, examiners must concede (or are found to have committed) error (procedural or substantive) about 80% of the time." David, what's your point? Even though it's in your paper I'm sure, I'd like you to state that for the discussion so I might further ridicule you and expose your weak position for the horrendously weak position it is. Also, while you're at it, do you mind showing us how you got your numbers for attach C and D? Oh, and hey, toss in what you believe your chances are at affecting the decision made? In your arrogance, are you prepared to state for the record that you believe the BPAI did not already know that the figures, when calculated the way you have, are at least around the numbers you have arrived at? Maybe your paper should have led off with "I think you people at the BPAI are retards that don't know how things work at the office at all". Regardless, I'm sure the intelligent people at the board can read between the lines enough to glean it from the whole of your work. Though, just like you understand their desperation, they understand yours, so maybe they'll take that into consideration.
driedmax : solomon? i wont get into what happened in that judgement … and the subsequent treatment of those people … and, which one is the classic one? (raphael?) … but, split the baby, your industry champions determine the “facts and arguments” when they feel like it is “evidence” … ex post publication for 9 months … give me a break!