Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases

[Update — SSRN Link Now Works] Download my five-page essay that forms the newest entry in the Patently-O Patent Law Journal: Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent Law Journal 19 (2010). The essay is an expansion of my prior post on the SEB v. Montgomery Ward.

Abstract: Federal Circuit patent jurisprudence has typically focused on Federal Circuit law and Federal Circuit precedent. However, recent Supreme Court decisions such as eBay v. MercExchange, MedImmune v. Genentech, MGM v. Grokster, and KSR Intl. v. Teleflex cases have challenged that default position. These cases represent a directive from the Supreme Court that the interpretation of patent law doctrine requires a consideration of history and doctrines that arise from other areas of law. In this essay, I examine the recent Federal Circuit decision of SEB v. Montgomery Ward and consider whether that case represents a shift in Federal Circuit jurisprudence toward an increased influence of non-patent considerations when deciding patent cases and patent issues.

162 thoughts on “Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases

  1. 162

    Says who? This is typical Alinsky subterfuge.

    RealWorld, are you disagreeing with the assertion that there are problems at the PTO? Or was it just time to link someone you don’t like to Alinksy?

  2. 161

    Act as if the existance of a “crisis” is a foregone conclusion and then “find a solution,”

    What crisis?

  3. 160

    “The issue isn’t whether there are problems with the PTO (I think we can all agree on that), but how best to solve them.”

    Says who? This is typical Alinsky subterfuge. Act as if the existance of a “crisis” is a foregone conclusion and then “find a solution,” which really means deconstruct or destroy the old system, whether its broken or not, and then put something else in place (e.g. something that will benefit your cronies).

    I think this is how they do stuff in banana republics – and I don’t mean EDT.

  4. 158

    IANAE: you seem to like to get on here and stick a pin in people’s head. I guess I am curious where you come from to try to understand why you seem to like to get on here and annoy people.

  5. 157

    NAL: you amaze me at your persistence and patience with Malcolm. I find him to be too tiring. He gets pinned to the mat and runs to the next thread seemingly unscathed with no memory of his previous defeat. I half suspect that he is a computer program–seriously. Or a baboon that has learned to type.

  6. 156

    I presume you’ll post the serial numbers for all to see.

    I think it would be even more fun if he posted the serial numbers now, so we could read the briefs and lay bets.

  7. 155

    “I think you’re the only person in the world that so many people call ‘Darling'”

    You’re the only creep who calls me that.

  8. 154

    “Then, in about a year or two we can discuss the outcome of my cases that are now pending at the board.”

    I look forward to that. I presume you’ll post the serial numbers for all to see.

  9. 153

    Darling: give me a call.

    I think you’re the only person in the world that so many people call “Darling” and yet so few people would want to ever call.

    6: You are representative of a stereotypical pissed attorney who thinks he knows something and is better than everyone around him because he has spent a great deal of time acquiring a mediocre grasp on a small portion of the law

    Looks like 6 can make at least one rejection stick.

  10. 152

    Malcolm,

    Your comment, and subsequent running away from providing any evidence on “dishonest” can be found at link to patentlyo.com starting at Jan 30, 2010 at 01:39 PM.

    This was less than a month ago – Yet another example of my explicitly calling you out, providing actual evidence and your inability to do anything but play your cheap parlor tricks.

    Don’t you get tired of playing the fool?

  11. 151

    “You had your chance to discuss whatever you wanted at the GSK hearing at the Fed. Cir. But you wussed out. What was your excuse? Oh yeah, you had a “mandatory art unit meeting.” On a Friday morning. LOL”

    Man I did have a meeting, you know I wanted to go to that sht. And I made it to both Bilski and Ariad. That’s 2 I made it to to your one.

    “Tell it to the Board. Why don’t you call up the last couple of primaries I embarrassed at the Board and ask them what it’s like to get beaten like a drum by somebody with no technical knowledge? Some day you’ll get the chance to join them.”

    LOL, then let’s discuss your loses, and I’ll contact those last few primaries that embarrassed you at the board. Then let’s also discuss how much incredibly better I probably am than those random primaries are. Then, in about a year or two we can discuss the outcome of my cases that are now pending at the board.

    Then, after all that, we’ll take a look at your work product from your 3rd year of examining. Then we can all settle in for a real hearty chuckle. How’s about that?

    The last examiner who I checked up on only took one patent for me to find something embarrassing for them. I wonder how long it’ll take me for you? One, two patents? The one thing that I can say for certain is that I take pride in my issued patents, which is probably a far cry from what you’d be able to say. Even leaving the topic of the subject matter aside.

  12. 150

    JD, why I refer to you is simple.

    You are representative of a stereotypical pissed attorney who thinks he knows something and is better than everyone around him because he has spent a great deal of time acquiring a mediocre grasp on a small portion of the law (and little else, especially not technical concepts). Furthermore, this sense of accomplishment is fueled by his being allowed to lord what little understanding of the law he has over those with no training to match his. He is slow to recognize his betters and is even slower to admit defeat on a point on which he is often blatantly now taking the opposite position than he previously took. Finally, this person is outlandishly slow to see the faults in his own behavior even when having them benevolently pointed out for him.

    Oh, and I didn’t mention one thing, the real kicker is, he’s pissed for no real reason.

    You are, in a word and in a way, the Everyattorney.

    I’m getting a sense of deja vu, did I explain this to you before?

  13. 149

    “I think that’s actual looped footage of JD receiving a Final Office Action.”

    Your post of Feb. 3 at 8:27.

    Yes, that’s the one I was referring to. Thank you. So, a single (spot-on, hilarious) comment referring to you over a span of at least 6 months makes me “obsessive”?

    Seems like the bar is set a tad low, friend.

  14. 148

    “I think that’s actual looped footage of JD receiving a Final Office Action.”

    Your post of Feb. 3 at 8:27.

    Don’t sweat it Malcolm, 6’s obsession with me is way deeper than yours.

    “Your horrendous ability to be persuasive?”

    Tell it to the Board. Why don’t you call up the last couple of primaries I embarrassed at the Board and ask them what it’s like to get beaten like a drum by somebody with no technical knowledge? Some day you’ll get the chance to join them.

    “I’m going to need some sort of an agenda for the day’s meeting. A list of topics so I can be prepared.”

    You had your chance to discuss whatever you wanted at the GSK hearing at the Fed. Cir. But you wussed out. What was your excuse? Oh yeah, you had a “mandatory art unit meeting.” On a Friday morning. LOL

    “I still don’t care what you think of me, Professor Darling.

    Funny how that works, isn’t it?”

    Not really. When you gain your first convert to your “idealistic” approach, give me a call. If you ever find the courage.

  15. 147

    Wow, I stay away from The O for a couple days and I miss out on Teabaggapalooza! NAL, JD, AI, the gang’s all here. Quoting Ronald Reagan no less. Excluding Joe the Plumber, I believe that’s the entirety of AI’s crack team of Constitutional Analistes.

    A humble request: AI, more of those homemade Inventors Rights documents, and NAL, more of those “voices in your head” style posts. They were classics! Almost up there with Leviathan.

  16. 146

    “Wanna see my Hawaiian birth certificate? It’s only the short form, but I think it’s pretty convincing.”

    I would be interested in seeing this document. I am fairly certain that all Hawaiian birth certificates are forgeries.

  17. 145

    “I figured sometime last year you shaved your head and set yourself on fire in front of the patent office.”

    lolololololol, that’s what Noise should do next time she gets a notice of non-compliance for forgetting to put a period on the end of the first claim.

  18. 143

    You has a guest book?

    If I signed your guestbook then I’d have to kill everyone who saw it since there can be no record of my comings and goings.

    Besides, what views should we discuss? The underside upwards view of a toilet paper holder and the benefits of over/under (as recently seen on TV)? Stand alone structural limitations in a method claim? Your horrendous ability to be persuasive?

    I’m going to need some sort of an agenda for the day’s meeting. A list of topics so I can be prepared.

    And wait a minute, why is it that I have to go all the way downtown when you come down here for interviews every now and again anyway? Surely you do interviews. And I won’t even make you sign the guest book.

  19. 142

    NAL’s obsession with you is not any more weird or creepy than your obsession with me, Malcolm.

    Dude, just a friendly reminder: it wasn’t me who decided to call him/herself “Huh?” or “Gah” while littering the thread with insults and invective baloney directed at yours truly.

    Until that hilarious cartoon of you in the David Byrne suit showed up, I don’t think I’d mentioned your name for half a year, at least. Why would I? I figured sometime last year you shaved your head and set yourself on fire in front of the patent office.

  20. 140

    “Yeah, but you still would even if I posted my registration number, so forgive me for not caring.”

    If you had the courage to post it, I’d believe it.

    Unfortunately, the only courage you have is the type of courage you so loudly accused others of having.

    Funny how that works, isnt’ it?

  21. 139

    Obfuscation!

    You misspelled “wit” there.

    See, there’s a point I was trying to make, but you need to read harder if you want to see it.

  22. 138

    Wanna see my Hawaiian birth certificate? It’s only the short form, but I think it’s pretty convincing.

    Obfuscation!

  23. 137

    So I take it the answer to the question of wheter your licensed to practice before the PTO is no.

    Yeah, but you still would even if I posted my registration number, so forgive me for not caring.

    Wanna see my Hawaiian birth certificate? It’s only the short form, but I think it’s pretty convincing.

  24. 136

    So I take it the answer to the question of wheter your licensed to practice before the PTO is no.

    And you obviously don’t know me at all.

  25. 135

    Probably so instructive that I’ll be persuaded that I’ve been doing it all wrong all these past 11 years.

    I know you well enough to confidently say that nobody could ever persuade you that you’ve ever done anything wrong.

  26. 134

    BTW IANAE, in the unlikely event you do find a little courage and want to stop in for a chat, bring along some of those great patents you and your idealism have prosecuted. I’m sure I’ll find them quite instructive. Probably so instructive that I’ll be persuaded that I’ve been doing it all wrong all these past 11 years.

    I think somebody asked you if you’re licensed to practice before the PTO. I can’t recall seeing an answer from you.

    So what’s your answer?

  27. 133

    “As noted, you are obsessed with me”

    NAL’s obsession with you is not any more weird or creepy than your obsession with me, Malcolm. Wear it like a badge of honor.

    “I’m looking at you, Darling”

    Now this obsession is really weird and really creepy.

    “…and depend on a heavy dose of keyboard courage…to back up their opinions.”

    Any time any of you anonymous wonders want to discuss your views in person with me, you know where to find me. Stop by. Sign the guest book. We’ll chat.

    Somehow I get the feeling that IANAE, Malcolm, 6 et al. won’t be able to muster up much beyond their “keyboard courage.”

  28. 132

    Funny how my suggestions, which are meant to help are taken as an attack, or a battle call to – “you better lambast the Office or else”.

    I’m still trying to decide whether your suggestions are genuinely helpful or a clever way to appear open-minded while suggesting that “other people” will only accept my views if I act a certain way.

    Either way, my opinions are what they are. I’m willing to be persuaded to change them, but never by someone who has clearly chosen his side before the first word is spoken. (I’m looking at you, Darling)

    Likewise, I see value in IANAE’s messages at times. However, his message does get lost

    Thank you. When I see the words “professor”, “examiner”, “academic” thrown back in my direction, I know my message was not so much lost as carefully avoided. People like JD pick a side and vehemently defend that side against all comers, regardless of the strength of the arguments on either side. They use the same tactics and arguments that they loudly criticize in others. If truly desperate to not consider an opposing view, they’ll classify people into categories they’ve already decided to ignore. That’s what lawyers are usually paid to do, and some clearly also do it in their spare time.

    When I say “it’s the internet and I don’t care”, I don’t intend that for everyone here. It’s only for the sort of knee-jerk name-callers and attention-seeking trolls who are impervious to reason and depend on a heavy dose of keyboard courage or a bar membership to back up their opinions.

  29. 131

    “What bugs is the incoherency, the inanity, the misinformation, the hypocricy, and the weird pride in being a miserable pill.”

    That describes you perfectly, Mooney.

  30. 129

    NAL That link does not prove your point in the least

    Yes, it does actually.

    I will sling just as fervently as you

    As noted, you are obsessed with me, and 6, and MaxDrei and you are working now on IANEA. That much is beyond dispute. I don’t really care how “fervent” you or AI or any of the other angry teabaggers are. What bugs is the incoherency, the inanity, the misinformation, the hypocricy, and the weird pride in being a miserable pill.

  31. 128

    My dear Noise, you’ve outdone yourself once again. IANAE suggested earlier that he is sometimes ashamed of the behavior of certain individuals who are privileged to be members of the bar. But, I ask, could anyone, after reading your declaration, feel anything other than an overwhelming pride at being evenly remotely associated, through even such an imperfect vehicle as this blog that we affectionately call the Trainwreck, with practitioners of such obvious passion, speaking to us, teaching us, with the level of clarity and precision that you unwaveringly deliver?

    This is a rhetorical question, of course, as the answer should be obvious to almost all of us. Of course, nihilistic naysayers, perverse obstructions, and other disseminators of obfuscation, red-herrings, and strawmen, will doubtless feel compelled to continue their attacks and their distracting dissembling. But, as you say, it “is sometimes necessary to counteract those whose want is to purposefully misdirect” – thus I am compelled to speak, and keep speaking, until the truth rings through, loud and clear.

  32. 127

    IANAE
    MY guess is he is a Professor. And a very respectful person. The kind of person that would treat a janitor the same way he’d treat anyone that taught school. He see’s everyone as a Human Being. If I were you I’d stop guessing. Stop guessing, because he ain’t saying.If you listen to his post, you may see him as more than just an academic. You ask why I think that? Well that’s easy because he sees more than a janitor, or a teacher, or a lawyer. Sometimes he is even eloquent. He may even be an Atty. Or he is licensed as one. But does other things instead.
    That’s my story and I’m stickin to it.

  33. 126

    “We’re discussing one such example right now, JD.”

    We are? Whose character was assassinated?

    “How many dozens, JD? Two dozen? Three dozen?”

    Too many to count.

    “But if you have actual knowledge that some people don’t stop at stop signs, you should demand proof in case said proof presents you with an additional technicality to argue.”

    Huh?

    You’re rambling. But maybe you can work that hypo into your next Law of Whatever 101 you’re teaching next semester. Extra credit for any student who can actually figure out if you have a point about anything in particular.

  34. 125

    NAL give me an example of my behavior which exemplifies this so-called difficulty with integrity?

    Pretty much any thread you’ve ranted in where you posted incomprehensible stuff and then, when asked to explain what you meant, you resort to name-calling and smears and dredging up some perceived “misdeed” from months or years back to justify your behavior.

    You know, sort of like you did just now.

    For those not yet aware of Malcolm’s humiliation

    LOL. That link only proves my point, NAL. Thank you.

  35. 124

    Given the propensity of Malcolm to openly flaunt his shame and accuse those who would hold him up to scrutiny, perhaps the club should be rechristened as follows:

    Skirt-wearing and
    Hiding
    In plain site,
    Track
    Shoe club

  36. 123

    AI,

    I found your Top Ten list to be a creative and rather humorous compilation. Perhaps it should be posted on the respective threads wherein the arguments were made. Such humor is a nice counterpoint to the vexatious postings of Malcolm.

    There is one minor point of clarification: it is the Skirt and Track Shoe Club.

  37. 122

    So, either start bashing on the PTO or get used to it. These people are really obsessed.

    I’ve seen “really obsessed”. These people couldn’t hold a candle to “really obsessed”.

    I wouldn’t flatter them with anything stronger than “opinionated on the internet”.

  38. 121

    If you have actual knowledge of an ethical violation by a member of the bar, you have an obligation to report it.

    But if you have actual knowledge that some people don’t stop at stop signs, you should demand proof in case said proof presents you with an additional technicality to argue.

    Patent agenting is so complicated sometimes.

  39. 120

    “NAL has difficulty with concepts like “integrity””

    – coming as it were from the person whom I lambasted for complete lack thereof – this post falls to “irony”. At the very least, I thank God that I have difficulty with your sense of “integrity”, Malcolm. For those not yet aware of Malcolm’s humiliation, please see the thread at: link to patentlyo.com

    As I have asked you in prior posts, Malcolm (when you likewise accused me of similar misdeeds of dishonesty), give me an example of my behavior which exemplifies this so-called difficulty with integrity?

    One example.

    Just one.

    …Thought so (you never supplied an example to back up your “dishonest” comment either – funny how you don’t seem to be able to back anything up – yet examples of your misdeeds are so readily available).

  40. 119

    JD If you have actual knowledge of an ethical violation by a member of the bar, you have an obligation to report it.

    That’s nice.

    Any examples you’d care to provide?

    We’re discussing one such example right now, JD.

    dozens of posts you’ve made calling certain members of the bar “sleaze bags.”

    How many dozens, JD? Two dozen? Three dozen?

  41. 118

    “…has a tendency to engage to engage in… character assassination…”

    Any examples you’d care to provide?

    Then maybe we can round up the dozens of posts you’ve made calling certain members of the bar “sleaze bags.”

  42. 117

    “…has a tendency to engage to engage in… character assassination…”

    In the event that you actually obtain any character, Malcolm, let me know.

    “At least some practicing members of the patent bar certainly do their own interests ahead of their clients’ interests, at least some of the time. I’ve seen it often enough.”

    If you have actual knowledge of an ethical violation by a member of the bar, you have an obligation to report it. You shouldn’t use your snivelling, anonymous comments posted on this site as a substitute for what you don’t have the ethical backbone to do.

    If you don’t have actual knowledge, you should keep your mouth shut. You should also spare the rest of us your sanctimonious BS.

  43. 116

    NAL: Yet another non-answer. In fact, the point I was making is that you, IANAE, are one of those going out of your way to cultivate that image.

    Don’t say I didn’t warn you, IANAE.

    NAL has difficulty with concepts like “integrity” and, like JD, has a tendency to engage to engage in hyperbole and character assassination when cornered (or sometimes just for the heck of it). It’s hardly worth responding to, although that will not prevent them from using you gratuitously as a punching bag.

    So, either start bashing on the PTO or get used to it. These people are really obsessed.

    JD Instead you regularly post accusations that practicing members of the patent bar put their own interests ahead of their clients

    I haven’t noticed these “regular” accusations but it’s hardly a novel concept. At least some practicing members of the patent bar certainly do their own interests ahead of their clients’ interests, at least some of the time. I’ve seen it often enough.

  44. 115

    Posted by: Thomas Hobbes was here | Feb 16, 2010 at 04:20 PM: Cool – broje and WCG have now joined the Track and Skirt club! AI, those nattering nihilistic naysayers are falling like dominoes, aren’t they! Nice work.”

    _______

    LOL..well they are quite the intellectual cowards for posting their bold and often ridiculous assertions then cutting and running up the hill with Malcolm.

    So, in homage to the not so brave souls of the TSC, I have complied their top ten list of reasons why the Inventor Rights Stated in the Constitution, are not Constitutional Rights.

    THE TOP TEN REASONS

    The Inventor Rights stated in the Constitution are not Constitutional Rights. According to the Track and Skirt Club.

    (10) Because Congress has exercised its power to enact legislation that created Statutory rights for Inventors, those Statutory rights can’t be Constitutional Rights.

    (9) Because the Inventor Rights stated in the Constitution can be taken away with amendment or abolishment those Rights are not Constitutional Rights,

    (8) Because Rights that have been codified into statute are statutory rights and therefore cannot be Constitutional Rights, even though the Rights were first stated and ratified in the Constitution.

    (7) Because the word PATENT is not in the Bill of Rights or in the original text of the Constitution there is no Constitutional Right for a Patent.

    (6) Because Congress had a choice to act before it acted to exercised its power to promote the progress of Science and Useful Arts, by securing for limited times to Inventors the exclusive Right to their discoveries; those exclusive Rights stated in the Constitution and Secured to Inventors by Constitutional power are not Constitutional.

    (5) Because you need to go to Law School. Or if you are 6, “LOL” school.

    (4) Because The preamble of the Constitution is just a bunch of fancy words and carries no weight. And Congress = We the People is absurd. WE THE PEOPLE are the servants to Congress Dam you!

    (3) Government can do what it wants and life is meaningless. Death to patents Long live Nihilism!

    (2) Because Malcom Mooney while dresssed in drag as Orly Taitz and typing on a computer kicked your but!

    And the number one reason the Inventor Rights stated in the Constitution are not Constitutional Rights.

    ::DRUM ROLL::
    .
    .
    .
    .

    (1) Inalienable (R) ights are not endowed by any Creator but by the (S)hift (K)ey on your (C)omputer!!!

  45. 114

    IANAE,

    In response to my statement of “Your “fresh eyes” consistently view our profession in negative tones.”, you mentioned “Some members of the profession seem to go out of their way to cultivate that image.”

    Yet another non-answer. In fact, the point I was making is that you, IANAE, are one of those going out of your way to cultivate that image.

    One wonders why you expend such prodigious effort in doing so.

    What exactly this forum is, or could be, is open to us as users. To your remark that simply agreeing would merely add clutter – I would posit that simply disagreeing adds just as much clutter. While we can both be clever about how we present our countervailing views, much to the enjoyment of the reading masses here at the Trainwreck, such banter does not reach what you identify as a noble goal – to actually solve problems.

    However, your responses typically fall short of anything more than negatively disagreeing. You indicate that the issue is in how best to solve problems at the Office – yet you do not seem to post such suggestions. As you are the one identifying this as a reason to post, shouldn’t you be at least one posting such suggestions?

    In fact, your typical flavor of post (ideal) IGNORES the need for such suggestions. It’s not that harping on the Office’s problems is essential, but it is essential to recognize the problem in order to put forth corrections to those problems. You often have to have your initial views assailed for you to come forth with recognition that a problem is even under discussion. Your “ideal” posts tend to slam practicioners and make it seem that the Office has no problem that a solution must be found for. It is this combination of “idealism” (again –this is not a compliment) and negative views on the patent bar that jade your moniker and any input you offer. Granted, this is the internet and I am not asking that you write to please JD or even myself – but in the interest of reaching that noble goal, you should be aware of how your message comes across. JD tends to be a vocal proponent- but one that I would daresay represents your target audience. If you do not care whether your message is effectively reaching your target, I would posit that such postings of yours are just as much clutter as the “agreeing” type that you would be loath to put forth.

  46. 113

    “I pointed out an admission of same.”

    Feel free to repost or provide a link.

    Then maybe I’ll dredge up some of your accusatory posts. If I feel like it.

    Reminder: A simple yes or no will suffice.

  47. 112

    Instead you regularly post accusations that practicing members of the patent bar put their own interests ahead of their clients

    I pointed out an admission of same. That’s not the same thing.

  48. 111

    “It’s not like anyone could ever change JD’s mind anyway. I’d really have to be an idealist to shoot for that target.”

    If you weren’t such a sanctimonious tool you might have a chance at changing his mind.

    Instead you regularly post accusations that practicing members of the patent bar put their own interests ahead of their clients when you’ve never seen the work those practitioners do and you have no knowledge of their clients or the clients’ relationships with those practitioners.

    NAL let you off the hook with a softball question, but the question that should have been asked is whether you are licensed to practice before the PTO.

    A simple yes or no will suffice.

  49. 110

    Your “fresh eyes” consistently view our profession in negative tones.

    Some members of the profession seem to go out of their way to cultivate that image.

    ignoring (treating reality as an ideal world) the substance of what the bar is trying to draw attention to.

    This board isn’t a good forum for agreeing with people. If I could post agreement with people here without adding empty clutter, I would do it more often.

    There are already more than enough people calling attention to the problems at the PTO. The issue isn’t whether there are problems with the PTO (I think we can all agree on that), but how best to solve them.

    I don’t treat the PTO as an ideal world, I say how I think it should operate. That’s no different than anybody else here. If you think my ideas are unrealistic that’s fine, but they’re certainly no more so than telling fewer examiners to do more counts for less money until things get better.

    You are being dismissed out of hand

    Yeah, I’ve been to the internet before. I know how it works.

    It’s not like anyone could ever change JD’s mind anyway. I’d really have to be an idealist to shoot for that target.

  50. 109

    “the JDed perspective of my profession”

    Odd it is then, that it is YOUR posts, more often than not, that exhibit a jaded view of our profession. Your “fresh eyes” consistently view our profession in negative tones.

    I can understand the distancing from the Office bashing, but your posts go to the opposite extreme, both bashing the attorney profession and ignoring (treating reality as an ideal world) the substance of what the bar is trying to draw attention to.

    I will grant that you do post on Office foibles, but that is not what the monkier “IANAE” brings to mind. In fact, the very notion that you have to announce that you are not an examiner in your moniker underlies the problem you have with your general posting – it is hardly a “fresh” view, and more in truth, a rather jaded view of your self-professed profession.

    I harp on this point, not so much to disparage your every posting – but to bring additional light as to why your very pedigree is questioned. BTW – it is not in a good light that those comments are made, so do not fool yourself into thinking that you are effectively making your point. You are being dismissed out of hand – not by me, but by at least a few of those that you may be wanting your message to reach.

  51. 108

    “Not everyone is a jackxss like you.”

    True. There’s quite a few who are jackxsses like you.

    “Pun of the Year nominee.

    Well done.”

    I’m sure that means so much to IANAE, as IANAE, and everybody else here, just lives for your approval.

    LOL

  52. 106

    Huh? Sure you do. Because you know that academics receive no respect from practitioners on this site.

    Speak for yourself. Not everyone is a jackxss like you.

  53. 104

    Because you know that academics receive no respect from practitioners on this site.

    Yeah, I live for your approval. Just like everyone else here.

    Dennis: Sorry to hear that the practitioners on this site don’t respect you. I had no idea.

  54. 103

    It is also slippery answers like this that tend to make people doubt that you are a practicing attorney

    It’s funny how we come to believe what we believe. Most people would see a slippery answer and assume the person is an attorney.

    I am a practicing attorney. I don’t like to get all caught up in taking sides, and I don’t put much stock in titles or labels. I’d rather approach each issue with fresh eyes than through the JDed perspective of my profession.

    (let’s just say that I would fight harder for more coverage)

    I would also fight harder for more coverage, but I would first think about how likely that fight is to result in more coverage, and how likely it is to simply result in delayed coverage. I don’t mean this for you in particular, but some people do get so caught up in the fight that they forget what they’re fighting for and what counts as winning.

    Alun: good points all around. I completely respect taking issue with “official notice” of what may not have been well-known at an earlier date, or of a fact that really should be supported by a reference. I only take issue with proudly doing it as a matter of course.

    Sometimes examiners take official notice because it’s simpler than finding a reference for something really blatant in the limited time they’re given, or because it’s so well-known it doesn’t get mentioned a lot in patents. In that case, you (not you personally, but… you know) do your client a disservice by not simply amending your step of “making an incomplete stop in response to said stop sign”.

  55. 101

    “I don’t mind being called an academic”

    Sure you do. Because you know that academics receive no respect from practitioners on this site.

    If you weren’t an academic, you would have simply responded to NAL’s question with “I’m not an academic.”

    We’re way past substantial evidence now. We’re like in beyond a reasonable doubt territory. Coming up fast on beyond all doubt.

  56. 100

    Thanks IANAE, I do appreciate your comments, and more often than not I read your comments earnestly – even if I do not agree.

    You did not answer my question, tho. At least not directly, and I do not want to make an errant assumption. It is also slippery answers like this that tend to make people doubt that you are a practicing attorney (perhaps a retired attorney, or one who has made a career change…).

    As to ideals – that’s a little coy – and again very negative to attorneys in general, as the subtle hint is that attorneys do not have ideals, inwhich we will disagree – in fact, we have tussled on what the ideal level of “fight” should be in obtaining appropriate coverage (let’s just say that I would fight harder for more coverage).

    So your language even here paints you as someone NOT in private practice at the least, and probably not a practicing attorney at all. I do not want to put words in your mouth either way, so a direct answer would be appreciated.

    Alun – good points.

  57. 99

    Regarding 112, the Examiner can often come up with strange interpretations of the claims that have nothing to do with the invention, and amending to foreclose those makes more sense than arguing. I only argue over substantive issues, as I see it.

    As for asking for proof in response to receiving Official Notice, my attitude is quite simple – if it is that well known, then why can’t you give me a reference? Sometimes the answer may be that although it is well known now, it wasn’t back when the app was filed.

    The Examiner may instinctively recognise something they have seen before, but have no idea when they saw it, and all my cases take 4 or 5 years to get a FOAM in the electrical art, whilst a huge number of new innovations have appeared on the market in that time.

  58. 98

    “From comments like ~ “you are being too lawyerly” to “Go back to being the lawyer version…” you exhibit an animosity towards lawyers that indicates that you are outside that group.”

    It’s not that I’m outside that group, it’s that I don’t want to be associated with that group when I see how some of its members conduct themselves.

    I also recognize that patent prosecution has two sides to it, and both sides have their problems. Lawyers often get too caught up in being adversarial, and circle the wagons rather than admit any personal or professional shortcoming. It’s disingenuous for lawyers to insist that the PTO is the source of all their problems, and I won’t stand by them while they do it.

    “Add in your propensity to post as if the patent universe operated in an ideal world, and it is easy to see why people would think that you are an academic.”

    Okay, so I have ideals. I have an idea of how things ought to work, and I usually see them more as objectives than as whimsical imaginary alternate universes. I also see a few people here who have been prosecuting patents for years but are blind to the realities of the system because they live in their sheltered billable world where all the real costs and risks are passed on to their clients. If you’re looking for someone who lacks perspective, talk to a lawyer in private practice.

    I don’t mind being called an academic or an examiner. It tends to mean someone is resorting to name-calling so they don’t have to think about what I’ve just said.

  59. 97

    My post did not take, so I’ll try again:

    IANAE,

    As I have already posted – your manner of posting paints you as not an attorney. From comments like ~ “you are being too lawyerly” to “Go back to being the lawyer version…” you exhibit an animosity towards lawyers that indicates that you are outside that group. Add in your propensity to post as if the patent universe operated in an ideal world, and it is easy to see why people would think that you are an academic.

    However, as one who also subscribes to preserving my identity, I would not ask for serial numbers from someone who obviously wants to preserve their identity. I would not expect serial numbers to be forthcoming, even if you were an attorney.

    So short of guesswork, let me come right out and ask – are you an academic? Are you a practicing attorney, not affiliated with the Office?

    Actual Inventor and West Coast Guy,

    Rather than writing off one another, perhaps West Coast Guy could be enticed to visit a thread that has this debate ongoing. There he can read through the voluminous posts before he is tempted to address his position and retread ground already covered. There too he can put his position in a tone more inclined to scholarly debate (he need not be as formal as the honorable Mr. Hobbes), but he can definitely avoid the stain of Malcolm in the ardent hopes of advancing the discussion, rather than shouting back and forth. He may also find the smackdown of Malcolm entertaining (who wouldn’t? – wait 6 wouldn’t – well that says enough, doesn’t it?). Perhaps then also, he would be a little less quick to heed any advice offered by Malcolm.

    Malcolm,
    I see that you are slipping to the de-personification mode by the reference of feeding “it”. Lovely that the Jame Gumb side of you comes out yet again. After all, isn’t that what these message boards are for? How is your human suit coming along?

  60. 96

    West Coast Guy | Feb 16, 2010 at 03:53 PM: Wrote, I disagree for the reasons that I’ve already stated. There is nothing more that you can say to convince me that I’m wrong and that you’re right. I will now heed Malcolm’s advice.

    Okay West Coast Guy, that is fair. Since you have chosen not to clarify your statement, I will now take your statement at face value.

    So in Court your evidence that the Inventor Rights stated in the Constitution are not Constitutional Rights for Inventors is based soley on your argument;

    ” because Congress has exercised its power to enact legislation that created Statutory rights for Inventors, those Statutory rights can’t be Constitutional Rights.”

    To which my team of Constitutional Law Scholars will first enjoy a brief internal chuckle, and respond that not only is no such text stated anywhere in the Constitutional, there is clear precedent where courts have decided Constitutional Rights independent from the statute. Citing Wisconsin v. Yoder, 406 U.S. 205 (1972) for starters.

    And down Goes Malcolm and West Coast Guy!

  61. 95

    IANAE,

    As I have already posted – your manner of posting paints you as not an attorney. From comments like ~ “you are being too lawyerly” to “Go back to being the lawyer version…” you exhibit an animosity towards lawyers that indicates that you are outside that group. Add in your propensity to post as if the patent universe operated in an ideal world, it easy to see why people would think that you are an academic.

    However, as one who also subscribes to preserving my identity, I would not ask for serial numbers from someone who obviously wants to preserve their identity. I would not expect serial numbers to be forthcoming, even if you were an attorney.

    So short of guesswork, let me come right out and ask – are you an academic? Are you a practicing attorney, not affiliated with the Office?

    Actual Inventor and West Coast Guy,

    Perhaps West Coast Guy could be enticed to visit a thread that has this debate ongoing. There he can read through the voluminous posts before he is tempted to address his position and retread ground already covered. There too he can put his position in a tone more inclined to scholarly debate (he need not be as formal as the honorable Mr. Hobbes), but he can definitely avoid the stain of Malcolm in the ardent hopes of advancing the discussion, rather than shouting back and forth. He may also find the smackdown of Malcolm entertaining (who wouldn’t? – wait 6 wouldn’t – well that says enough, doesn’t it?). Perhaps then also, he would be a little less quick to heed any advice offered by Malcolm.

    Malcolm,

    I see that you are slipping to the de-personification mode by the reference of feeding “it”. Lovely that the Jame Gumb side of you comes out yet again. After all, isn’t that what these message boards are for? How is your human suit coming along?

  62. 94

    Cool – broje and WCG have now joined the Track and Skirt club!

    AI, those nattering nihilistic naysayers are falling like dominoes, aren’t they! Nice work.

  63. 93

    Actual Inventor,

    “Then by all means explain yourself.”

    No more. I have already in many previous postings.

    It is quite evident that we will not have a meeting of the minds in what constitutes a Constitutional right.

    Because the word “Right” appears in the Constitution, that makes it constitutional, i.e., a constitutional right.

    I disagree for the reasons that I’ve already stated. There is nothing more that you can say to convince me that I’m wrong and that you’re right.

    I will now heed Malcolm’s advice.

    –30–

  64. 92

    Posted by: broje TINLA IANYL | Feb 16, 2010 at 12:07 PM: AI asks, “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

    Its where the Constituion empowers Congress (i.e., the Federal Government) not to grant patents or to grant patents, at its option.

    AI: Can you state exactly where in the Constitution the word “Option” is used regarding the grant of patents?

    broje: It’s like asking, where in the Constitution does it say that the Federal Government cannot abridge free speech of the People? The answer is that is is in the first amendment where the right to free speech is reserved to the People.

    AI: This is akin to arguing that the only Constitutional Rights WE THE PEOPLE have are in the Bill of Rights. Yet you can’t provide any historical facts to support such an assertion.

    broje:Your argument that Congress = We the People is absurd.

    Interesting, Alexander Hamilton when faced with similar sentiments from Anti Federalist retorted; Is Congress to be a tyrannical Aristocracy?

    Forgive me if I err on the side of History and Alexander Hamilton.

    AI, I will only respond to your arguments against my statements above if you make them in this thread: link to patentlyo.com

    There are already plenty of opportunities in that thread and next for you to respond if you so desire. I am only in this thread because Mooney so cowardly posted under so many alias a barrage of fallacious statements to only to cut and run when confronted. If you wish to join him in the Track and Skirt club, that is your prerogative.

  65. 91

    Actual Inventor,

    “Okay so if I understand you correctly you are stating that because Congress has acted and created statutory patent rights, the Inventor Rights stated in the Constitution are not Constitutional. Is that a fair assessment?”

    West Coast Guy : “No, this is not a fair assessment.”

    Then by all means explain yourself.

  66. 90

    Posted by: West Coast Guy | Feb 16, 2010 at 02:49 PM: Simple question: In your opinion, what day was the first day on which an inventor had a constitutional right to a patent?

    I have no opinion on that. Now, what is your point?

  67. 88

    Actual Inventor,

    “But regardless of the exact historical time line you have simply failed to establish as fact, that the Inventor Rights stated in the Constitution are not Constitutional Rights.”

    Wrong.

    Simple question: In your opinion, what day was the first day on which an inventor had a constitutional right to a patent?

  68. 87

    “someone from this great Patent Community could present a solid reason that would stick.”

    It’s harder than you’d think to present a solid, persuasive argument that can overcome “lalala I can’t hear you lalala”.

    That’s why some people make it a central pillar of their OA response strategy.

  69. 86

    Actual Inventor,

    Question: Do you understand that on the day the Constitution was ratified, inventors did not have an exclusive Right?

    West Coast Guy:

    As I understand it, the Constitution was not ratified in a single day. The Constitution was ratified over a period of time by each state starting with Delaware on December 7, 1787, and ending with Rhode Island signing last in May 1790.

    But regardless of the exact historical time line you have simply failed to establish as fact, that the Inventor Rights stated in the Constitution are not Constitutional Rights.

    So far ever every reason you have given has fallen apart under closer examination.

    You would think, that if it was so cut and dried, that Inventors have no Constitutional Rights to their Inventions, someone from this great Patent Community could present a solid reason that would stick.

  70. 85

    Advisory Action:

    IANAE, your request for reconsideration was considered, but unpersuasive.

    6,

    Still waiting for a serial number. Just one. Any one.

    BTW, it’s spelled “referred.” I guess you’ve given up all hope of ever crawling out from under your rock.

    Enjoy.

  71. 84

    Actual Inventor,

    “Okay so if I understand you correctly you are stating that because Congress has acted and created statutory patent rights, the Inventor Rights stated in the Constitution are not Constitutional. Is that a fair assessment?”

    No, this is not a fair assessment.

    Question: Do you understand that on the day the Constitution was ratified, inventors did not have an exclusive Right?

    If you don’t understand this, there is no hope.

  72. 83

    “Where does it state in the Constitution that if Congress chooses to exercise its power to enact legislation that creates Statutory rights for Inventors, the Inventor Rights stated in the Constitution are not Constitutional?”

    The “if Congress chooses” part.

    Constitutional rights aren’t optional. Optional rights aren’t constitutional.

  73. 82

    “The answer is that is is in the first amendment where the right to free speech is reserved to the People. ”

    Unless of course the USSC and lawyers say otherwise. Lawl in this country is so lolable.

    “So you sit around reading applications and patents all day, and consider yourself a “technical expert”, but you think that the people who write all those applications and patents you read don’t have any technical knowledge?”

    Actually the portion of the population of people who “write all those applications” to which I refered was a single individual. That single individual was you JD. Read mah post before you post.

    “the % of that happening is rather small.”

    I might go check your record. If the instances of this occuring exceed 90% shall we all havea good lol @ u? Maybe while I’m at it I should take a gander at how many method claims you issued as an examiner that include stand alone structural limitations? How many would it take for everyone to have a good lol @ u?

    “Well isn’t that cute.”

    Actually it is. Cuter even than you being eaten by a suit. Which was a rather cute little animation mind you so that is saying something.

    “You said it would be easy to find.”

    It is easy to find. In fact I have it on my screen as we speak. In my rejected tab lol.

    “Well, let’s see, you don’t actually prosecute applications yourself, but you’re on this site lecturing others on how they should prosecute their applications.”

    Based upon that evidence, couldn’t he be, inter alia, a partner?

  74. 81

    “you don’t actually prosecute applications yourself,”

    You can’t back up one unsupported fact with another. Try harder.

    “In the absence of an adequate traversal of my taking Official Notice that you’re an academic (i.e. some patent numbers), I’ll take it as admitted that you are an academic.”

    Yeah, that sounds like something you would do. By which I mean, it sounds exactly like something you get very upset when other people do.

    Go back to smugly issuing your notices of non-compliant rejection and padding your counts. Go back to being the lawyer version of this guy. Don’t delude yourself into thinking you’re any better than him just because you charge more per hour to do it.

  75. 80

    Posted by: West Coast Guy | Feb 16, 2010 at 12:29 PM: “Your question is based on a flawed assumption. ”

    West Coast Guy;

    My question was based on your assumption which then must have been flawed.

    However, perhaps I have not characterized your response correctly. So in the interest of fairness I will try again, and please do correct me so that no one will have any flawed assumptions as to what you mean.

    West Coast Guy | Feb 15, 2010 at 11:15 PM wrote: “The exclusive Right to which Constitution speaks is a Statutory Right which Congress may create if it chooses to exercise its Constitutional power. You have a right to a patent, but it is not a Constitutional Right. You have a right because Congress, acting under the power of the Patent Clause, has chosen to create a right through statutes.”

    Okay so if I understand you correctly you are stating that because Congress has acted and created statutory patent rights, the Inventor Rights stated in the Constitution are not Constitutional. Is that a fair assessment?

    Assuming for the moment that is what you meant, I will rephrase the previous question.

    Where does it state in the Constitution that if Congress chooses to exercise its power to enact legislation that creates Statutory rights for Inventors, the Inventor Rights stated in the Constitution are not Constitutional?

  76. 79

    “I would love to see your evidence that I’m a professor.”

    Well, let’s see, you don’t actually prosecute applications yourself, but you’re on this site lecturing others on how they should prosecute their applications.

    Do you need anymore evidence?

    Feel free to rebut my incontestable fact with some evidence of your own. Like some numbers of patents you’ve prosecuted to issuance.

    In the absence of an adequate traversal of my taking Official Notice that you’re an academic (i.e. some patent numbers), I’ll take it as admitted that you are an academic.

    This post is final.

    You can appeal. Or file a Request for Continued Humiliation.

    Your choice.

  77. 77

    “But [IANAE] certainly doesn’t practice.”

    Looks like the usual commenters are up to their old guessing games again.

  78. 75

    “Anyone can prosecute a patent to issuance.”

    Great. Post some numbers of the patents you’ve prosecuted. I would love to see them.

  79. 74

    “Maybe IANAE can post some numbers of the patents he’s prosecuted to issuance. Then I’ll post some of my patent numbers.”

    Anyone can prosecute a patent to issuance. The hard part is prosecuting a patent to issuance with commercially useful claims and without shamelessly stretching your billings by filing office action responses with non-arguments about incontestable facts.

    “But [IANAE] certainly doesn’t practice.”

    Sorry, that’s still not enough to make a prima facie case.

    I hope your arguments to the PTO are more persuasive than that.

  80. 73

    Actual Inventor,

    “Where does it state in the Constitution that Inventor Rights that have been codified into statute are not or cannot be Constitutional rights?”

    Your question is based on a flawed assumption. You’ve put the cart before the horse. The Constitution came first, then statutes. Not the other way around. Your “have been codified” (compare with “can be codified”) assumes statutes came first, then the Constitution. Not possible. You should consider attending law school.

    “Also, that Congress may chose to exercise its power to abolish Clauses in the Constitution has no relevance at this point because Congress has not acted to amend the Constitution.”

    Who mentioned anything about abolishing the Clause or that Congress has such power? Not me.

    Let’s be done with this topic.

  81. 72

    “So, touche?”

    LOL

    You’re ability to get dummer continues to amaze.

    “… has no technical knowledge…”

    So you sit around reading applications and patents all day, and consider yourself a “technical expert”, but you think that the people who write all those applications and patents you read don’t have any technical knowledge?

    Like I said, dummer by the minute.

    “Of course, the dirty little secret is that the the % of the later happening is rather large.” (BTW, it’s “latter.” You might want to brush up on your spelling for those law school application essays and writing samples. Your grammar and syntax skills are a lost cause, so focus on an area where you might actually have a chance to improve.)

    That’s odd, because in my 10+ years of practice, the % of that happening is rather small. And it’s not a secret either.

    “Those who practice best practice as he espouses. Those who practice mediocre practice as you espouse.”

    Well isn’t that cute. Maybe IANAE can post some numbers of the patents he’s prosecuted to issuance. Then I’ll post some of my patent numbers.

    And yes, IANAE espouses. But he certainly doesn’t practice.

    ” Just an honest observation from the field JD.”

    Thanks. I’ll keep that with all of the other “honest observations” I get from examiners.

    BTW, still waiting for you to post a serial number of an application where you walked some attorney through a 112, 2nd case law analysis hand in hand.

    You said it would be easy to find. What’s the matter, lost your records again?

    ROFLMAO

  82. 71

    AI asks, “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

    Its where the Constituion empowers Congress (i.e., the Federal Government) not to grant patents or to grant patents, at its option.

    It’s like asking, where in the Constitution does it say that the Federal Government cannot abridge free speech of the People? The answer is that is is in the first amendment where the right to free speech is reserved to the People.

    Your argument that Congress = We the People is absurd.

    AI, I will only respond to your arguments against my statements above if you make them in this thread: link to patentlyo.com

    so post your response there.

  83. 70

    “99+% of them don’t understand either concept.”

    On the other hand, JD has no technical knowledge and wouldn’t know if the fact was inherent or was known in the art. So, touche?

    “So yes, I get to bill once for the “show me the evidence” response (but I get to do that anyway). ”

    “And I may or may not have to respond again.”

    Of course, the dirty little secret is that the the % of the later happening is rather large. Which I believe was IANAE’s point above even though you thought you’d skillfully outteach him on the basics o lawl.

    WHOOOOOOSH, consider us impressed JD.

    “It’s like they say, those who can…”

    Those who practice best practice as he espouses. Those who practice mediocre practice as you espouse. Just an honest observation from the field JD.

    Those who practice ridiculously bad practice by requesting an affidavitlololol.

  84. 69

    “Where does it state in the Constitution that Inventor Rights that have been codified into statute are not or cannot be Constitutional rights?”

    Brilliant question, Yossarian.

  85. 68

    Good morning WestCoastGuy:

    Hope you are having a pleasant day. Please allow me to recap:

    First you stated, the Constitution is silent on Inventors Rights. That has been proven untrue and can no longer be used by distractors.

    Now you state, “The exclusive Right to which Constitution speaks is a Statutory Right which Congress may create if it chooses to exercise its Constitutional power.”

    Which means, in effect the Rights of Inventors stated in the Constitution are Statutory Rights, e.g. legal rights, civil rights, codified into legal statutes by the legislature, and not Constitutional Rights.

    Therefore it is reasonable to ask, where does it state in the Constitution that Inventor Rights that have been codified into statute are not, or cannot be Constitutional rights?

    Also, that Congress may chose to exercise its power to abolish Clauses in the Constitution has no relevance at this point because Congress has not acted to amend the Constitution.

    So please, if you will, answer the question;

    Where does it state in the Constitution that Inventor Rights that have been codified into statute are not or cannot be Constitutional rights?

  86. 67

    “Are you asking me to prove this fact? Would you like a little substantial evidence?

    Why? So you can stroke yourself?”

    My, how quickly we change sides on this rant-worthy issue when it suits our immediate purpose.

    If you haven’t made a prima facie case, that needs to be argued. When you provide substantial evidence, I might have an argument I didn’t have before. Are you telling me that I shouldn’t challenge your statement?

    Also, I’m curious to see how you’ll paper over the gaping holes in your argument now.

  87. 66

    Mooney prefers the depravity intellectual ambiance of bathroom walls. He has done some of his best work therewithin and, as we have seen, the sights, sounds, and smells of that environment have deeply colored his world view. The dirtier the better.

  88. 65

    “Nice rant from the guy who takes ‘official notice’ that I’m a professor.”

    Are you asking me to prove this fact? Would you like a little substantial evidence?

    Why? So you can stroke yourself?

    LOL

    IBP,

    Thanks for the advice. I think I’ll take it.

  89. 64

    Huh?–

    Don’t poke it.

    In the past I have, as you have just done, tried to explain things on this blog, to certain other commenters.

    Some advice: Don’t waste your time anymore.

  90. 63

    “Sure, if you know the examiner can’t prove the fact or find the limitation in the cited art (e.g. he’s wrong about it), then by all means ask him to back it up.”

    The reason the examiner didn’t “back it up” in the first OA is because the examiner can’t prove the fact and/or find the limitation. If the examiner could, the examiner would have.

    Duh.

  91. 62

    “Thanks for the advice. I’ll keep it with the rest of the practice advice I get from professors. Hint: it’s the same place I keep the practice advice I get from examiners.”

    Nice rant from the guy who takes “official notice” that I’m a professor.

    Where do you keep advice you get from yourself? Someplace dark?

  92. 61

    “Because instead of responding to the blatant fact that you know he’ll find evidence for, you get to bill once for a response of “show me the evidence” and again for a subsequent response to the actual fact.”

    Thanks for confirming what I said.

    If the examiner sends me an OA and makes a “finding of fact” that is unsupported by substantial evidence (which happens in about 90+%of the OA’s I receive), and I have to respond to that Office Action, how does noting that the “finding of fact” is unsupported and requesting support allow me to bill for another OA and possibly an RCE (BTW, I don’t file RCE’s when the examiner hasn’t made a prima facie case)?

    “If the case for anticipation/obviousness is there, it doesn’t matter whether or not the examiner has made it.”

    I hope you’re not teaching patent prosecution.

    If the examiner hasn’t made a prima facie case, that needs to be argued. Do you have any idea how many OA’s I receive in which the examiner “takes Official Notice that it would have been obvious to…”? Are you telling me that I shouldn’t challenge that?

    Let’s be clear: examiners take Official Notice frequently (though some are “clever” enough now not to actually put the words “Official Notice” in their OA, they’ll usually say something like “Reference A doesn’t disclose feature X, but feature X is well known, therefore it would have been obvious…”) and rely on inherency frequently also. 99+% of them don’t understand either concept.

    The reason you ask for substantial evidence support is so that when/if the examiner provides it, you may have an argument you didn’t have before. If the examiner cites a reference in support of Official Notice, it’s possible that the reference may be non-analogous art, or may teach away from the claimed invention or the combination with the other reference(s), or simply provide no apparent reason why one of ordinary skill in the art would combine the references.

    So yes, I get to bill once for the “show me the evidence” response (but I get to do that anyway). The examiner may or may not produce substantial evidence. And I may or may not have to respond again. But that doesn’t mean I shouldn’t note the deficiencies in the examiner’s prima facie case.

    “If the case for anticipation/obviousness is there, it doesn’t matter whether or not the examiner has made it.”

    The naivete demonstrated by this statement is quite hilarious. Here’s a tip, Professor, when examiners rely on Official Notice, and inherency, and boiler plate case law they’ve never read, it’s because they don’t have a prima facie case and are taking the usual lame shortcuts they’ve been taught to paper over the gaping holes and get the OA signed by their SPE/primary.

    ” Instead of being a lawyer and standing on a procedural point, be an agent and get your client his patent.”

    Thanks for the advice. I’ll keep it with the rest of the practice advice I get from professors. Hint: it’s the same place I keep the practice advice I get from examiners.

    But if it’s so easy, why aren’t you doing it instead of keeping office hours?

    It’s like they say, those who can…

  93. 60

    “Obviously.”

    So why did you disagree with me?

    Oh right, because I was picking a fight by stating something you agreed with.

  94. 58

    “I have one acronym for you: PHE”

    Doesn’t make a difference when you know you’re going to have to confront the fact anyway in the next OA.

    Sure, if you know the examiner can’t prove the fact or find the limitation in the cited art (e.g. he’s wrong about it), then by all means ask him to back it up. But if the fact is clearly true or the art clearly anticipates your claim, asking the examiner to prove it before you address it is stroking yourself at your client’s expense.

  95. 56

    “Why and/or how would I get to bill “for one more office action and possibly and RCE” simply by requesting that the examiner meet the substantial evidence burden?”

    Because instead of responding to the blatant fact that you know he’ll find evidence for, you get to bill once for a response of “show me the evidence” and again for a subsequent response to the actual fact.

    If the case for anticipation/obviousness is there, it doesn’t matter whether or not the examiner has made it. You still need to respond to it. Instead of being a lawyer and standing on a procedural point, be an agent and get your client his patent.

  96. 55

    “Because that way you get to bill for one more office action and possibly an RCE before your client gets his patent?”

    Why and/or how would I get to bill “for one more office action and possibly and RCE” simply by requesting that the examiner meet the substantial evidence burden?

    You’d understand how inane your question is if you’d ever practiced.

    Stick to grading blue books.

  97. 54

    “And you’d understand why if you weren’t an examiner.”

    Because that way you get to bill for one more office action and possibly an RCE before your client gets his patent?

  98. 53

    “Again, there’s nothing at all extraordinary or dubious about 6’s story. Who hasn’t seen that exact fact pattern play out while reviewing a file history?”

    So why won’t he post a serial number?

  99. 52

    Nice straw man, Malcolm.

    But I’m still waiting for a serial number.

    “It’s like asking for proof that some people don’t stop at stop signs (which I suppose you’d do if an Examiner ever cited that fact against you).”

    Yes I would. And you’d understand why if you weren’t an examiner.

  100. 51

    likewise, we can have a Mooney thread – hundreds of different aliases, all Mooney, can congregate and discuss things like crap, crack, sexual acts with dead presidents and the fact that the whole world obsesses about him.

    It will be a battle to see which thread reaches 1,000 first.

    My money’s on Mooney.

  101. 50

    Mooney is right, AI. There is no reason for you to turn every other thread here into “The Actual Inventor Constitutional Rights Show” other than to satisfy your narcissism. You already have at least two of those threads with hundreds of comments on them, so go flog this dead horse there.

  102. 49

    “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

    Posted by: Actual Inventor | Feb 15, 2010 at 09:58 PM

    I again propose a special “perma-thread” or “bathroom wall” wherein AI can rant and rave ad nauseum with whoever is willing to waste his/her time engage him. Stray comments that enter into other threads, such as AI’s comments above, can simply be transferred to the Constitutional Right perma-thread.

  103. 47

    Actual Inventor,

    The exclusive Right to which Constitution speaks is a Statutory Right which Congress may create if it chooses to exercise its Constitutional power.

    You have a right to a patent, but it is not a Constitutional Right. You have a right because Congress, acting under the power of the Patent Clause, has chosen to create a right through statutes.

    If Congress chose to do away with patent laws, would you still claim a Constitutional right to a patent?

    I think you’re taking the word Right mentioned in the Patent Clause and erroneously concluding that a Constitutional right has been formed when the clause speaks to a power of Congress.

  104. 46

    another thread infected

    Posted by: out out damm spot | Feb 15, 2010 at 10:13 PM

    ______

    Then might I suggest you drop the multiple aliases and simply answer the question honestly.

    Are you that afraid? WestCoastGuy answered it honestly. Now you try it Malcolm.

    “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

    Oh, and you are not allowed to say the Constitution is silent on the Constitutional Rights of Inventors because that has already been proven to be not the case.

  105. 45

    Posted by: West Coast Guy | Feb 15, 2010 at 09:56 PM : Actual Inventor,
    The Constitution does not state that inventors have no Consitutional right to their invention.

    Also, the Constitution does not state that inventors have Consitutional right to their invention.

    The Constitution is silent as far as creating a Constitutional right for inventors.”
    ____________

    West Coast Guy;

    With all due respect I do believe that if you read the entire clause you only partially quoted before it says the following:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    So clearly the Constitution is not silent on the Constitutional Rights of Inventors.

    And the constitution explicitly states the exclusive Right of Inventors to to their Discoveries. I just do not see any honest way to deny this text exists in the Constitution.

  106. 43

    Posted by: broken record | Feb 15, 2010 at 09:37 PM: WCG, don’t get him started.

    It is an honest question. I don’t see any reason why so many fear it. Perhaps you are the one that will give a straight forward honest answer.

    “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

  107. 42

    Actual Inventor,

    The Constitution does not state that inventors have no Consitutional right to their invention.

    Also, the Constitution does not state that inventors have Consitutional right to their invention.

    The Constitution is silent as far as creating a Constitutional right for inventors.

  108. 41

    Actual Inventor,
    Posted by: West Coast Guy | Feb 15, 2010 at 09:30 PM: Allow me to add a little fuel to the fire (and likely drive JAOI nuts at the same time).
    There is no Constitutional right to a patent.

    West Coast Guy:

    With all due respect you ducked the question same as Mooney. So I now I ask the same of you as well;

    “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

    It is a simple question, and a honest one. Given the assertions, I would think someone in the Patent Community would have the courage to give a honest answer.

  109. 39

    Actual Inventor,

    Allow me to add a little fuel to the fire (and likely drive JAOI nuts at the same time).

    There is no Constitutional right to a patent. The Patent Clause empowers Congress “[t]o promote the Progress of Science and useful Arts[.]” In other words, the Patent Clause gives Congress a power — nothing more.

    The right an inventor has is a statutory right arising from the statutes enacted by Congress in the exercise of its Constitutional power.

    Now, is there some case law which states otherwise? I don’t know.

  110. 38

    AI: After you made the bold assertion that Inventors have no Constitutional Rights

    I never said that.
    Posted by: Malcolm Mooney | Feb 15, 2010 at 08:58 PM

    ________

    Then answer the question:

    “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

  111. 37

    AI: After you made the bold assertion that Inventors have no Constitutional Rights

    I never said that.

  112. 36

    end italics

    Posted by: Malcolm Mooney | Feb 15, 2010 at 06:11 PM

    _____

    Malcolm why did you cut and run from the discussion about the Constitutionality of Patents, on the Obama thread?

    After you made the bold assertion that Inventors have no Constitutional Rights the question that was asked of you was :

    “Where does it state in the Constitution that Inventors have no Constitutional Rights to their invention?”

    Do you not have the integrity to answer such an honest question, or were you so humiliated by Noise that you can’t bare to reenter the discussion in that thread?

    Either way it speaks volumes about your integrity and credibility as a commenter on this blog.

  113. 35

    How many people have gotten letters requesting them to apply to become examiners?

  114. 32

    Arguing that nobody has ever amended his claims in response to a 112 would be absurd.

    I agree.

    Not that there aren’t some bonehead attorneys out there

    I agree.

    I don’t believe 6’s BS

    Again, there’s nothing at all extraordinary or dubious about 6’s story. Who hasn’t seen that exact fact pattern play out while reviewing a file history?

  115. 31

    It’s like asking for proof that some people don’t stop at stop signs (which I suppose you’d do if an Examiner ever cited that fact against you).

    Actually, it’s not like that at all. Huh was asking for proof that 6 took some random attorney to the woodshed regarding the attorney’s use of case law to argue 112, 2nd, and that the attorney followed up by submitting an amendment that made the situation worse. Not that there aren’t some bonehead attorneys out there, but I don’t believe 6’s BS either.

    Arguing that nobody has ever amended his claims in response to a 112 would be absurd. I’ll resist the temptation to call it a strawman.

  116. 30

    Serial number, please.

    Posted by: Huh? | Feb 15, 2010 at 10:43 AM

    It’s pretty easy to find prosecution histories where applicants amend their claims in response to 112 rejections.

    Pick 10 or 15 issued cases at random and look at the file histories. You’ll find at least one that fits the bill, and probably more than that.

    It’s like asking for proof that some people don’t stop at stop signs (which I suppose you’d do if an Examiner ever cited that fact against you).

  117. 29

    Inviting Body Punches writes at Feb 14, 2010 at 11:20 AM:

    “I have been harping on this for years. When will patent practitioners brush up on their admin law? The PTO is in an administrative shambles, and I haven’t seen any evidence of patent prosecutors holding their feet to the fire, with few exceptions.”

    7 writes at Feb 14, 2010 at 11:54 AM

    Because, quite frankly, that gets you nowhere. The PTO just doesn’t care. They freely ignore the law as they see fit… and don’t even get me started on the uselessness of citing law to an examiner. They’ll just find a quote from a case in the MPEP (and not read the case, of course) that seems to support their position, copy and paste it to you, and say your arguments were not persuasive. Argue the references with the examiner, not the law. Save the law for the BAPI… and even then, they’ll probably ignore it.

    Boundy writes Feb 15 at 4PM;

    I see the cavalry coming over the hill. The fluttering flag has the seal of the Executive Office of the President:
    link to whitehouse.gov

    I predict that things will be observably different (not fixed, but observably different) by the end of 2010.

  118. 26

    ” In any Office Action, before a reference is trotted out, something is trotted out first. Let me provide a little hint – 101, 102, 103, and 112 are in reference to Law”

    Unless it’s an OA from 6. Then the lawl is trotted out. And as we all know, applicants and attorneys just immediately file their express abandonments rather than try to overcome 6’s lawl.

    LOL

  119. 25

    “needs to examine without knowledge of LAW.”

    A prized moment sarah. Think about why this is absolutely inane. In any Office Action, before a reference is trotted out, something is trotted out first. Let me provide a little hint – 101, 102, 103, and 112 are in reference to Law – I think it mighty important that examiners know what the Law actually is, don’t you?

  120. 23

    “And if this is a teaching moment. Although I know the earlier USPTO meant well. An Examiner should not get caught up in Law.. Because (if you’ll excuse my also known ignorance) an Examiner needs to examine without knowledge of LAW. A lawyer needs to argue what the examiner sees in respect to the Law. And of course in the beginning it relates to what the peanut gallery claimed in the first place.”

    Huh?

  121. 22

    And if this is a teaching moment. Although I know the earlier USPTO meant well. An Examiner should not get caught up in Law.. Because (if you’ll excuse my also known ignorance) an Examiner needs to examine without knowledge of LAW. A lawyer needs to argue what the examiner sees in respect to the Law. And of course in the beginning it relates to what the peanut gallery claimed in the first place.

  122. 20

    I want to ask a question. If south butt and north face are in fact a mirror image. Is the new glad commercial also crossing the line. Because when I see the commercial I see archway cookies.

  123. 19

    “Trust me, I do.”

    Serial number, please.

    “…the only ones that come to mind at present are ones dealing with 112 2nd. Those were some juicy ones though 🙂 This one dude busted up in my office with some NALish bs on 112 2nd. Dam near wrote LOLOLOLOLOLOLOLOLOLOLOL in response. Instead I held his hand through a 112 2nd analysis and helped him understand some of the case law he cited. No more arguments from him, and a nice little amendment. An amendment which, iirc, threw his claims deeper into the 112 pit. Needless to say I dam near fell into the floor loling while reading his response.”

    Serial number, please.

  124. 18

    “I have no doubt that a zealous examiner could have a field day and a half with such an application. ”

    Trust me, I do.

    “You telling me that of the literally THOUSANDS of boasts”

    I’d say dozens, and yes, the only ones that come to mind at present are ones dealing with 112 2nd. Those were some juicy ones though 🙂 This one dude busted up in my office with some NALish bs on 112 2nd. Dam near wrote LOLOLOLOLOLOLOLOLOLOLOL in response. Instead I held his hand through a 112 2nd analysis and helped him understand some of the case law he cited. No more arguments from him, and a nice little amendment. An amendment which, iirc, threw his claims deeper into the 112 pit. Needless to say I dam near fell into the floor loling while reading his response.

  125. 16

    7,

    Clear your throat. No one has ever said that our side of the street is clear. My firm also has a fair contingent of work transferred in that is quite abominable.

    Rest assured, you are not defending 6. Think of it rather , that you are defending the examiner who is diligent about his work and who does not need to parade his ignorance. 6 habitually sets himself aside from the professional examiner.

    As I have posted previously, examination is difficult work. It should be considered a noble profession. On top of its inherent difficulty, the examiners do not need the likes of 6 and his famoosity, nor do they need the quasi-average widget production mentality.

  126. 15

    The chunks rise in my throat as I’m about to do this, but let me sort of defend 6 for a moment. Several of my clients of late have acquired other companies, and have transferred the prosecution of the pending applications of the acquired companies to me.

    My god. There is some truly AWFUL patent work being done out there. Incomprehensible claims, claims that are aggregations, claims that read on commonly known pieces of technology, etc. I have no doubt that a zealous examiner could have a field day and a half with such an application.

  127. 14

    “Didn’t ask you for your records. Asked you for a serial number.”

    Did I say that you asked for them? I said that without the records I cannot find the serial. That is because the case is no longer on my docket. That is to say, unless you know how to find a serial to an abandoned case (which is no longer on my docket and I have no records of) and can relate to me how then I cannot find it.

    “I asked you for a serial number. Pretty simple request. Particularly considering that in just about every other post you make you’re bragging about how you made some super awesome rejection and the attorney and/or applicant just turned tail and ran. Considering how many of those types of posts you’ve made, and probably will continue to make, how hard is it for you to come up with one serial number? ”

    I could come up with one for a different topic. Like I said, the cases where we discussed on ON are rather old and probably abandoned. Now 112 2nd para has seen a lot of whinin lately. That’s an easy one to find, people all the time bitc hin’ about that. Matter of fact, that’s a case in point, people go on and on about caselaw but they’re always wrong about the state o tha lawl when they argue it being different than specifically what I applied it as.

    Still, even if I had serials for every case I ever did I’m not givin it to you JD.

    “What’s the problem. ”

    The problem is that I don’t want you blabbin about that case to the whole world. KIND OF LIKE I JUST SAID IN THE PREVIOUS POST YA RE TARD. I HOPE YOU DON”T MISS THIS PART, I PUT IT IN CAPS SO THAT YOU MIGHT NOT FORGET TO READ IT, OR FORGET IT LATER.

    In fact, the answer to nearly everything in your new post was already answered above. Je sus JD, I know you’re getting old but try to not forget so much. If you need to, just go back and read the post again.

    As to what I say, or myself, being a joke, lol. Right, it’ll be a joke till it happens to you. lololololol a big ol joke.

    “Don’t you want to back up all that bragging you do?”

    You don’t even know how tempting that is. Never the less, I must resist for the time being.

    Let’s be clear though JD, I’ve seen some of your firm’s work and overall your firm’s work isn’t as bad as a lot of the junk we get in here. At least in terms of drafting claims. Now, responding to OA’s is a different story 🙁 But, even so, you guys will avoid a lot of the rejections I have to make day in and day out.

  128. 13

    “… they’re probably abandoned by now and you know how it is trying to find a case you used to have but is now abandoned. Harder than sht if you destroyed the records like we’re supposed to.”

    Didn’t ask you for your records. Asked you for a serial number.

    And no, I don’t know how it is trying to find a case I used to have but is now abandoned. Or patented.

    I asked you for a serial number. Pretty simple request. Particularly considering that in just about every other post you make you’re bragging about how you made some super awesome rejection and the attorney and/or applicant just turned tail and ran. Considering how many of those types of posts you’ve made, and probably will continue to make, how hard is it for you to come up with one serial number?

    Just one.

    “Plus I wouldn’t give it to you anyway, I make fun of you too much, you might get tempted to tell the whole world.”

    What’s the problem. According to you, your OA was so devastatingly persuasive, that the attorney who submitted such “foolishness” was replaced in the next response.

    If your work is so great that it gets attorneys fired off the cases you’re examining, what possible concern could you have?

    Don’t you want to back up all that bragging you do?

    Methinks you don’t. Well, actually, I think you’re so full of it, your eyes are brown.

    Any time you want to provide some proof of your self-proclaimed awesomeness, feel free to go right ahead.

    Until you do though, you’ll remain a total joke.

    Enjoy.

  129. 12

    Sorry JD, they’re probably abandoned by now and you know how it is trying to find a case you used to have but is now abandoned. Harder than sht if you destroyed the records like we’re supposed to.

    Plus I wouldn’t give it to you anyway, I make fun of you too much, you might get tempted to tell the whole world.

    But, if I remember, I’ll write down the serial of a case like this and send it to you one day when I’ve quit the office and likely no longer post on there boards.

  130. 11

    “Some rare few people try something like this when responding to official notice, thankfully I already read all the cases and laws they cite and am ready to point out their foolishness. Then another attorney is appointed to the case after that action. Funny how that works.”

    Serial number, please.

    One.

    Just one.

  131. 10

    So, if I detect accurately the way the wind is blowing on this thread, you wouldn’t be at all happy with the way we do it in Europe then, with the European Patent Office (Enlarged Board of Appeal) in the role of commodore, and each national supreme court being confined to the role of captain of just one ship in the convoy?

    Ironic, I think, this convoy idea, given that Europe is not a federal area, that there is still no pan-European appeal court for patent litigation and that the members of the European Union remain sovereign States.

    Mind you, I think we have clarity and simplicity in Europe, on fundamental precepts of patent law (novelty, obviousness, enablement, inherent patentability, written description, new matter, sufficiency of disclosure, entitlement to priority under the Paris Convention) ONLY because no court can tell the EPO what the law is.

  132. 9

    “The PTO just doesn’t care.”

    I’ll vouch for this. Attorneys arguing something is the law doesn’t make it so. Neither do their off base or ill supported citations.

    If, in the unlikely event they happen to find something that they feel is the law that was actually the law and which I hadn’t considered then I would consider it.

    Hasn’t actually happened in years, but I do it when the situation arises. Furthermore, I doubt if I’ve ever had some admin law/case cited where some other patent related case wasn’t cited as well. Some rare few people try something like this when responding to official notice, thankfully I already read all the cases and laws they cite and am ready to point out their foolishness. Then another attorney is appointed to the case after that action. Funny how that works.

  133. 8

    7–

    I absolutely agree that it doesn’t get you anywhere with the PTO. However, it DOES raise and preserve issues for appeal, giving you more options down the road.

    As NAL said, “waiting until the BPAI is too late to introduce your legal arguments.”

  134. 7

    IBP – I agree with you.

    7 – be careful or you will be “assailed” by one of the many-pseduonym’d hydra-purveyor of fluff asking for proof. Further to your point, I would (and have) posit that arguing references alone is just as futile. One needs to argue both fact and law. Waiting until the BPAI is too late to introduce your legal arguments.

  135. 6

    “I have been harping on this for years. When will patent practitioners brush up on their admin law? The PTO is in an administrative shambles, and I haven’t seen any evidence of patent prosecutors holding their feet to the fire, with few exceptions.”

    Because, quite frankly, that gets you nowhere. The PTO just doesn’t care. They freely ignore the law as they see fit… and don’t even get me started on the uselessness of citing law to an examiner. They’ll just find a quote from a case in the MPEP (and not read the case, of course) that seems to support their position, copy and paste it to you, and say your arguments were not persuasive. Argue the references with the examiner, not the law. Save the law for the BAPI… and even then, they’ll probably ignore it.

  136. 5

    Minor Correction–Any contractual dimension of patents is governed by contract law, agency law, etc.

  137. 4

    This is ridiculous. I can’t believe that it is being treated as some sort of revolutionary paradigm.

    There is no such thing as strict “patent law”. 35 USC is subject, of course, to constitutional law and administrative law. Anything contractual dimension of patents is governed by patent law, corporate ownership activities by corporate law, and so on.

    State issues are dealt with by considering the appropriate state law, and federal sources of law such as the constitution and the APA are ALWAYS CONSIDERED, EVEN IF ONLY INHERENTLY.

    What practitioners need to realize is that the FedCir is for appellate review of agency decisions, and that the sources of law other than 35 USC and 37 CFR (apart from the rules of court) really need to be brought home to the agency itself–the PTO.

    I have been harping on this for years. When will patent practitioners brush up on their admin law? The PTO is in an administrative shambles, and I haven’t seen any evidence of patent prosecutors holding their feet to the fire, with few exceptions.

    All the same stuff–standards of proof, sufficiency of evidence, what exactly constitutes evidence, relevancy, expert opinion, official notice, etc..

    A Supreme Court Directive. Indeed.

    SANDBOX.

  138. 1

    Another example is the Federal Circuit’s use of non-patent agency law principles for determining vicarious liability in the context of “divided infringement.” See BMC v. Paymentech and Muniauction v. Thompson Corp.

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