Board of Patent Appeals

Although the Board of Patent Appeals (BPAI) is working harder than ever, its backlog continues to rise. The first chart below shows the BPAI’s inventory of undecided appeals in ex parte cases. This only includes fully-briefed appeals whose dockets have been transferred to the BPAI and does not include the thousands of other applications where awaiting briefing. The average timing from notice-of-appeal to appellate decision is 29 months.

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I spoke with BPAI officials who identified the jump in early 2009 as a one-time issue involving the bulk transfer of cases that had been previously delayed.

The next chart shows the number of Ex Parte cases decided each month. The average number of cases being decided each month continues to rise. However, the chart also reveals a high month-to-month variability. That variability is explained by the BPAI judge quota system. BPAI judge performance is primarily judged two times per year, and that process is reflected in a systematic incentive for the judges to do more work in Feburary and August and then less work in March and September.

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Although the BPAI is deciding more cases than ever, inventory continues to rise because more appeals are being filed than ever.

212 thoughts on “Board of Patent Appeals

  1. Les’s position appears to be that Examiners are estopped from making new rejections after the first Office Action

    Malcolm – you be taking reading lessons from 6? That aint at all what Les be saying. All he be saying is that the second rejection be treated as a second rejection. I gotta agree. Just because it come from the same cited reference means absolutely nothin. The two rejections can be on completely two different elements or two completely different limitations. If the examiner don’t make his prima facie case, he don’t get the benefit of the burden switch. No way I be lettin him off the hook with a throw out there crap first rejection. Do the F’ n job right the first time!

    IANAE – this be another middle earth area for ya – Ya be completely lost here.

  2. Try to stay on point. The rejection was not reasonable. It was wrong.

    Reasonable and wrong are not mutually exclusive.

    You disagree with the rejection. Fine. The examiner disagrees with you. You don’t win this one until you convince the examiner that you’re right.

    That’s why the examiner found it necessary to drop the reference to column 10. In order to generate paper that looks like an office action, the examiner next cites column 34.

    The paper he generated looks remarkably like an office action. Can you guess why?

    The examiner cited reference A. You argue that column 10 of reference A doesn’t teach claim 1. That’s not even a logically valid argument. Might as well argue that column 17 of reference A doesn’t teach claim 1. So what? There’s plenty more reference A that might teach claim 1.

    It only takes one line of a reference to teach something, but it takes the entire reference to not teach something. The fact of the matter is, you’re not entitled to anything unless the entirety of reference A doesn’t teach claim 1. That’s what you need to argue in your response.

    Your failure to address the allowability of your claims over the cited art is an error on the part of the applicant that failed to traverse a previous rejection and necessitated a reiteration of the rejection.

  3. “But if it’s a reasonable rejection that directs you to only one of several relevant columns, and that one is enough to form the basis of the examiner’s rejection, it’s not a misdirection or a mistake at all. ”

    Try to stay on point. The rejection was not reasonable. It was wrong. That’s why the examiner found it necessary to drop the reference to column 10. In order to generate paper that looks like an office action, the examiner next cites column 34. This is a change in trust and a new rejection necessitated error on the part of the examiner.

  4. If its a misdirection its a misdirection. If it was a mistake, fix it and give me a new-non final.

    But if it’s a reasonable rejection that directs you to only one of several relevant columns, and that one is enough to form the basis of the examiner’s rejection, it’s not a misdirection or a mistake at all. What’s more, if your claims still aren’t valid over the art the examiner cited last time, the examiner was right about the rejection, you’re the one with something to fix, and that’s why the rejection is final.

    By all rights, you should also issue my client a check for time wasted.

    Write down your time instead. You can save your client a fair amount of money by planning ahead when you respond to office actions, and making yourself properly understood so the client doesn’t have to pay for extra responses and RCEs.

    Or simply blame the PTO and declare yourself powerless to deal with this conspiracy against applicants in general, shrug your shoulders, and tell the client that this is what it costs to get a patent and there’s no way around it.

    My client is entitled to a patent UNLESS you prove otherwise.

    Whence rejection number two, citing column 34 of reference A. Consider that proof otherwise, until you can convincingly explain to the examiner why it isn’t. Every rejection the patent office mails you is a “burden shifting”.

  5. “If you agree that the citation is owed, how can you assert that while it is owed, the owed citation may be a misdirection to an irrelevant portion?”

    Because it happens routinely irl? Whether or not it is proper or not is not at issue Lester Jester. Whether or not you get a patent, or even another 2 rounds or prosecution because of this formality not being met is. And the answer is no, you do not.

    “The art is your real enemy, and the examiner is but its messenger.”

    You try to explain this but it takes years to settle in. For it to have any real meaning to the pupil.

    “What does intent have to do with it? If its a misdirection its a misdirection. If it was a mistake, fix it and give me a new-non final. By all rights, you should also issue my client a check for time wasted.”

    Lester Jester the US government doesn’t come with a money back guarantee. It also doesn’t come witha guarantee that everything it sends you will be perfect. Sorry bucko. This is the government, not Pizza Hut. If it was, I would have some pizza right now.

  6. “I never said that. It was (in our hypothetical) a deliberate direction to a portion the examiner reasonably thought was relevant. The portion he actually relied on in his rejection.

    If the examiner purposely misdirects you to an irrelevant portion of the art, you should be phoning him and asking him what column he really meant. You know, in the interest of compact prosecution. But if you do choose to respond in writing, you’d better figure out which portion is really the most relevant to your claims, or else don’t act so surprised when your claims stand rejected again over the same art.”

    What does intent have to do with it? If its a misdirection its a misdirection. If it was a mistake, fix it and give me a new-non final. By all rights, you should also issue my client a check for time wasted.

    “you’d better figure out which portion is really the most relevant to your claims, or else don’t act so surprised when your claims stand rejected again over the same art.”

    No, your burden shifting again. My client is entitled to a patent UNLESS you prove otherwise.

  7. It is not a courtesy, it is a requirement.

    It is a required courtesy. A “suggested donation”, as it were.

    Once you have art in front of you, what the examiner wrote is secondary. Tertiary, even. What the examiner thinks but didn’t have time to write is secondary. The art is your real enemy, and the examiner is but its messenger.

    the owed citation may be a misdirection to an irrelevant portion?

    I never said that. It was (in our hypothetical) a deliberate direction to a portion the examiner reasonably thought was relevant. The portion he actually relied on in his rejection.

    If the examiner purposely misdirects you to an irrelevant portion of the art, you should be phoning him and asking him what column he really meant. You know, in the interest of compact prosecution. But if you do choose to respond in writing, you’d better figure out which portion is really the most relevant to your claims, or else don’t act so surprised when your claims stand rejected again over the same art.

  8. “You’re lucky the examiner owes you the courtesy of identifying a single column of reference A in the first place. But not quite so lucky that it saves you reading the other columns.”

    It is not a courtesy, it is a requirement.

    No matter, if you agree that it is owed, that will suffice.

    If you agree that the citation is owed, how can you assert that while it is owed, the owed citation may be a misdirection to an irrelevant portion?

  9. There are no relevant passages. The Examiner is WRONG

    Don’t tell me. I believe you, because it was an initial assumption in our hypothetical. Tell the examiner. He’s the one you need to convince.

    You see what happens when you don’t take the time to communicate properly with the examiner? When you argue technicalities instead of the substance of the rejection? If your argument had addressed the real reason why reference A had nothing to do with your invention in the first place, there’s no way the examiner would have cited column 34. To live by the technicality is to die by the technicality.

    Then IT IS A NEW GROUND OF REJECTION!

    No, it’s a new basis for the same ground of rejection. Check 102 again. Not the preamble, the important bits. The ground of rejection is that the subject matter of the claim was disclosed in reference A, which qualifies as prior art under one of the paragraphs of 102. A second rejection over reference A is the same ground of rejection. A new theory/argument for the same ground of rejection? Sure. But that’s not a problem. You’re lucky the examiner owes you the courtesy of identifying a single column of reference A in the first place. But not quite so lucky that it saves you reading the other columns.

  10. “f you want the examiner to pick out every potentially relevant passage from the prior art, you should be doing the same thing when you respond. You do your client a disservice when you fail to adequately consider the cited art, regardless of what you can think of to blame on the examiner.”

    There are no relevant passages. The Examiner is WRONG

    The examiner must cite the best reference and must cite the portion relied upon. You can play word games if you like and assert that the examiner is allowed to cite the least relevant portion of the best reference. However, anyone not being childish would see that that assertion is absurd.

  11. Les: The examiner must cite the best reference and must cite the portion relied upon. You can play word games if you like and assert that the examiner is allowed to cite the least relevant portion of the best reference. However, anyone not being childish would see that that assertion is absurd.

    The examiner must cite the best reference. Check.

    The examiner must cite the portion relied upon. Check.

    The examiner is entitled to later rely on a different portion in a subsequent rejection. Not only entitled, but required, if he believes that rejection to be well-founded in view of all the arguments you’ve previously filed.

    You don’t get a patent simply because the examiner missed the best art the first time. If your patent is invalid over column 34, no judge will care that the examiner only cited column 10. A rejection must be addressed no matter when it is raised, and invalidating art is invalidating no matter when it turns up, and addressing that rejection and that art happens to be pretty much your entire job.

    If its the same exact reason, the examiner should understand that the argument he found persuasive regarding column 10 are equally applicable to column 34.

    Maybe, maybe not. Column 34 describes a different embodiment. If your arguments were specific to the column 10 embodiment, as they probably were because you took a myopic view of the patent and probably fixated on some technicality of that embodiment, you should fully expect the examiner to point out that your argument doesn’t apply to column 34. Maybe the examiner only considered column 34 in the first place because your argument was highly technical and focused on a nuance of the column 10 embodiment, and the column 34 embodiment works in a slightly different way that overcomes your argument.

    But none of that really matters. What really matters is that you failed to demonstrate to the examiner that your claim is allowable over his cited reference. You can complain all you want that the examiner only mentioned column 10, but in reality the examiner placed the entire reference before you, and you are the one who failed to read it. Even if the claims are hypothetically patentable, you are holding a prior art rejection in your hand. That means the examiner is currently of the opinion that the claims are not patentable over reference A, and it’s your job to convince him otherwise. Someone is paying you hundreds of dollars an hour to be convincing, though for the life of me I can’t imagine why.

    If you want the examiner to pick out every potentially relevant passage from the prior art, you should be doing the same thing when you respond. You do your client a disservice when you fail to adequately consider the cited art, regardless of what you can think of to blame on the examiner.

  12. Les’s position appears to be that Examiners are estopped from making new rejections after the first Office Action, even if the Examiner first realizes that the claims are invalid over a previously cited reference after the first Office Action has been sent.

    Les imagines that this rule promotes some public policy, probably Les’s fantasy teabxgger policy about how a patent should be handed out to anyone who files an application.

  13. “Les: The examiner must cite the best reference and must cite the portion relied upon.

    That’s exactly what he did. He cited the best reference and he cited the portion he relied upon. After your unconvincing or incomplete response regarding his reliance on the reference, he again cited the same (still best) reference, and cited the portion he now relies upon. Your real problem is that the examiner cited a reference in his rejection, and you have not made your claims patentable over that reference. So, final action.”

    Don’t be obtuse. It is unbecoming.

    The claims are patentable. The examiners assertion that newly cited column 34 is an obstacle to patentability is just as wrong as the earlier assertion regarding column 10. The examiner is required to explain why the reference is an obstacle. Since he has not done that, the assertions regarding column 10 being wrong and the assertions regarding column 34 not being yet presented, he has not met his burden. I cannot point out the flaws in his reasoning or understanding until he presents them.

    Regarding: “Because the examiner considers the reference relevant, and he’s just as likely to consider another part of the same reference relevant for the exact same reason.”

    If its the same exact reason, the examiner should understand that the argument he found persuasive regarding column 10 are equally applicable to column 34.

    The examiner must cite the best reference and must cite the portion relied upon. ,b.You can play word games if you like and assert that the examiner is allowed to cite the least relevant portion of the best reference. However, anyone not being childish would see that that assertion is absurd.

  14. “Because the examiner considers the reference relevant,”

    NO! The examiner only considers column 10 relevant, or most relevant.

    Showing that most relevant portion is irrelevant shows that that the entire reference is irrelevant.

    The examiner must cite the best reference and must cite the portion relied upon. You can play word games if you like and assert that the examiner is allowed to cite the least relevant portion of the best reference. However, anyone not being childish would see that that assertion is absurd.

  15. There is no such thing as the benefit of the examiner.” (are we reading the same blog)

    but it is always the applicant’s job to demonstrate his entitlement to the privilege he has requested.” (entitled to a patent unless)

    nor is it even generally correct, that the applicant’s claims are allowable.” (prima facie)

    and has made a rejection citing that reference” (but the second rejection is not the first rejection)

    Don’t tell me what is legal and what is required and by whom, until you can do what is legal and what your client requires of you.” (timing, apples and oranges)

    and he’s just as likely to consider another part of the same reference relevant for the exact same reason” (mind reading and omniscience make great blog writing tools, besides we all know that every piece of a reference is exactly like any other piece and all pieces are perfectly interchangeable for each other in order to make the exact same reason)

    Now you are being silly and making things up.

  16. Les: Why would I mention it. It hasn’t been cited. It is irrelevant and I have no rational in front of me asserting that it is relevant.

    Because the examiner considers the reference relevant, and he’s just as likely to consider another part of the same reference relevant for the exact same reason. Because you’re responsible for making your claims patentable over all the art, not only the art the examiner has identified with sufficient particularity. Because it’s in your client’s interest to avoid paying for final rejections when they can be preempted by a suitable generalization of the argument you were making anyway. Because you take pride in your work. Because it’s beneath you to blame others for your own shortcomings. Do you want more reasons, or is that enough?

    Les: The office complains that it is given too much to read all the time. In the interest of compact prosecution I direct my replies to the portions of documents that the examiner asserts are relevant.

    In the interest of compact prosecution, you should be addressing the entirety of the reference that is the subject of your correspondence. You would expect the same of the examiner, would you not?

    Les: The examiner must cite the best reference and must cite the portion relied upon.

    That’s exactly what he did. He cited the best reference and he cited the portion he relied upon. After your unconvincing or incomplete response regarding his reliance on the reference, he again cited the same (still best) reference, and cited the portion he now relies upon. Your real problem is that the examiner cited a reference in his rejection, and you have not made your claims patentable over that reference. So, final action.

    You can’t claim you didn’t know about the reference. It was on. Your. Desk.

  17. “Now, unless you’ve run out of toner at that point (another great reason to file electronically), what mechanism deprives you of the opportunity to mention column 34?”

    Why would I mention it. It hasn’t been cited. It is irrelevant and I have no rational in front of me asserting that it is relevant. The office complains that it is given too much to read all the time. In the interest of compact prosecution I direct my replies to the portions of documents that the examiner asserts are relevant. The examiner must cite the best reference and must cite the portion relied upon. You can play word games if you like and assert that the examiner is allowed to cite the least relevant portion of the best reference. However, anyone not being childish would see that that assertion is absurd.

  18. Anon: your continued positions strike me as blatantly anti-applicant.

    I’m anti-lazy-applicants-who-cut-corners-when-they-ask-the-PTO-to-grant-them-a-patent.

    Applicants depend on us to defend their interests before the PTO. We’re their agents. We don’t look good when we do our job half-arsed and then blame the PTO.

    When an applicant deserves to get his application rejected, I’m anti-that-particular-applicant. I make no apologies for that, especially since it’s my job to strive to be better than that.

    Anon: And always to the benefit of the examiner.

    There is no such thing as the benefit of the examiner. The applicant is either entitled to a patent or not. The examiner is simply the one who makes that determination, and of course he should attempt to make the determination correctly, but it is always the applicant’s job to demonstrate his entitlement to the privilege he has requested. If he fails to do so, the public interest in free commerce wins. That’s always been the way.

    Anon: (and stop with the obfuscation that an applicant must submit claims of a certain nature – it is obviously presumed that the claims are so and just as obviously clear that the burden lies with the Office to show otherwise).

    It is not “obvious”, nor is it even generally correct, that the applicant’s claims are allowable. If you wish to discuss hypothetical situations where the applicant’s claims are assumed to be allowable, you should say so. Right now, we appear to be discussing a set of claims that are invalidated by column 34 of reference A, which reference was well known to the applicant. Validity is a question of law. The claims are valid or not regardless of whether the examiner has identified the best possible prior art, and you should not be prosecuting claims that are invalid over art that is on your desk.

    Anon: your evasion of what is legal and what is required and by whom

    You’re the one prosecuting claims that are invalid over art that you have in your file. You’re the one who is not properly considering art that was cited by the examiner. The examiner is the one who has correctly identified an invalidating reference and has made a rejection citing that reference. Don’t tell me what is legal and what is required and by whom, until you can do what is legal and what your client requires of you.

    No matter how wrong the examiner might be, either factually or legally, it cannot excuse similar misconduct by applicants or their agents. Be the change you want to see in the world.

    Anon: I doubt you if you were to say that you do not work for the Office.

    I have said as much, but I’ll say it again if it makes you feel better.

    I do not work for the PTO in any capacity. I do not work for the US government in any capacity.

    Les: I don’t have an opportunity to address column 34 because column 34 is just as irrelevant as column 10!

    That’s not a lack of opportunity, it’s using the examiner’s laziness to excuse your own. And the examiner isn’t even necessarily being lazy. If he thinks column 10 is a good anticipation, he doesn’t need to keep reading. If you think your claims are good over column 10, you still have a responsibility to make sure your claims are good over not only column 34, but the entirety of the prior art.

    Column 10 is just as irrelevant as column 34, right? Do you have an opportunity to address column 10? Of course! You make sure to mention it in the letter you’re writing to your pen pal at the PTO. Why do you mention column 10, even though you don’t think it’s relevant? Because the examiner thinks it’s relevant. Now, unless you’ve run out of toner at that point (another great reason to file electronically), what mechanism deprives you of the opportunity to mention column 34?

  19. Half the battle simply is not enough. Producing a prior art reference is not enough. The Examiner must do a complete and legal job. It is not asking for a perfect job, it is asking for a full legal job.

    She’s back…

  20. IANAE–

    You’re on the right track, but you are confusing things again. “…prior art reference cited by the examiner and relied upon in a rejection.” Again, the reference IS cited, but it is the EVIDENCE contained therein that is relied upon.

    Either way your second paragraph is corrected to reflect this reality, we are in agreement that the action that will probably best fulfill a patent attorney’s professional duty to the client is for the attorney to comb through any examiner-cited reference and amend as needed, considering all evidence contained in that reference, relied upon or not, if the attorney reasonably believes that such action does not meet with a client’s disapproval–and at the very least to inform the client of the situation.

    I cannot, in 2 seconds, think of a scenario in which a challenge to a rejection that made reference to only a portion of a complex cited reference, based upon an evidentiary argument, would be useful.

    However, I believe the basis of the argument to be sound, and I will try to think of a situation in which it would be useful.

  21. can argue with a straight face that it is not his job to read a prior art reference cited by the examiner and relied upon in a rejection.

    And I cannot believe that you continue to misrepresent the point here.

    Wait. Yes I can.

  22. “And yet, you inexplicably believe you don’t have an opportunity to address column 34?”

    I don’t have an opportunity to address column 34 because column 34 is just as irrelevant as column 10! How can I guess which column the examiner is going to misinterpret next?!?

  23. IANAE,

    Even for your professed desire to merely strike a balance between pro-applicant and pro-examiner, your continued positions strike me as blatantly anti-applicant. I know of no other possible conclusion given your untenable positions on several topics. You seem to prefer to make things unclear that which are clear. And always to the benefit of the examiner. Even in cases such as this wherein it is abundantly clear that the first rejection and the second rejection with the same source are clearly unrelated rejections, you argue against the applicant side.

    but you gotta admit he found some pretty darn good prior art.

    That would be good if that was the Legal Requirement.

    It is not.

    As already mentioned, the examiner must meet two burdens to establish the prima facie case that the applicant can be denied his legal right to a patent – the burden of production and the burden of persuasion (and stop with the obfuscation that an applicant must submit claims of a certain nature – it is obviously presumed that the claims are so and just as obviously clear that the burden lies with the Office to show otherwise).

    Half the battle simply is not enough. Producing a prior art reference is not enough. The Examiner must do a complete and legal job. It is not asking for a perfect job, it is asking for a full legal job.

    Your continued denial of this point cannot be anything but purposeful. Joke as you may, but your evasion of what is legal and what is required and by whom is evident to anyone who can read critically.

    The Board’s job is to make sure the bad claims get rejected and the good claims get allowed. Their duty is to the public, not to you.

    Two false statements together. No – making sure about the claims is the examiner’s job. And the duty of a semi-judicial nature is to you. i would agree that this appears not to be the case and I would second a motion to remove the judical trappings, but these are judges nonetheless, and you cannot simply deny the balance of duty that exists. The fact that you do speakss volumes. You speak with the bias of someone in the BPAI. I believe you when you say that you are not an examiner. I doubt you if you were to say that you do not work for the Office.

  24. Les: Wait Wait, I have the perfect solution to this “problem”. If column 34 is the best part of the best reference, REQUIRE the examiner to CITE IT and give the applicant an opportunity to respond to the citation.

    Let me get this straight. Your client’s claims are rejected over reference A. You have a copy of reference A printed and put in the file. Which file is on your desk as you respond to the office action citing reference A.

    And yet, you inexplicably believe you don’t have an opportunity to address column 34?

    If the examiner’s mere mention of column 10 is enough to distract you from column 34 of the very same document, I can only imagine how distracting your thousand-reference IDSes must be from the one relevant patent listed on page twelve. Particularly since examiners are so intellectually inferior to us (if you believe what some of my colleagues are always saying).

  25. Again, a rejection is supported not by a “reference”, but by evidence contained within a reference.

    And the examiner’s citation of the reference helps the applicant find that reference, which contains within it all that delicious, creamy evidence. Evidence that can invalidate a patent whether or not the examiner thinks to cite the most damning column.

    I don’t understand how any responsible patent agent can argue with a straight face that it is not his job to read a prior art reference cited by the examiner and relied upon in a rejection.

    If the client won’t pay you to read the entire reference, that’s his own problem. But in that event he should be warned that the next rejection and the few thousand dollars he pays for a response to it might be completely avoidable, and he will still receive a bill for it.

  26. Wait, wait, I have the perfect solution to this problem.

    On the front page of every issued patent, we list under “References Cited” only those particular passages identified by the examiner in his rejection.

    If the examiner only relies on column 10, the patent will issue with “Reference A (column 10)” on the cover. At least that way we’ll know the PTO isn’t owed any deference for column 34, because the examiner didn’t cite it and even the poor Board was powerless to raise it sua sponte.”

    Wait Wait, I have the perfect solution to this “problem”. If column 34 is the best part of the best reference, REQUIRE the examiner to CITE IT and give the applicant an opportunity to respond to the citation. If the examiner makes a mistake and cites column 10, the examiner must rectify the examiners mistake and issue a new NON-FINAL office action citing the best reference (i.e., column 34).

  27. IANAE–

    You are exalting form over substance.

    That listing is meant as an aid to enable you to find the reference, not as proof that the entirety of the reference was considered in a rejection–hence the caption References CITED rather than References Relied Upon, or something like that.

    Of course, many of the references are merely cited and are not the source of any invalidating evidence.

    Again, a rejection is supported not by a “reference”, but by evidence contained within a reference.

    The substance of the rejection is to be found in the OA’s in the file wrapper–THAT’s where it says the examiner relied on only column 10.

  28. Wait, wait, I have the perfect solution to this problem.

    On the front page of every issued patent, we list under “References Cited” only those particular passages identified by the examiner in his rejection.

    If the examiner only relies on column 10, the patent will issue with “Reference A (column 10)” on the cover. At least that way we’ll know the PTO isn’t owed any deference for column 34, because the examiner didn’t cite it and even the poor Board was powerless to raise it sua sponte.

  29. what’s up: Examiners like IANAE are the reason the BPAI has such a huge backlog.

    Heh. If they had even a single examiner like me, they’d be doing way better with their backlog.

    what’s up: In the past, the BPAI would cite column 34 for the first time, and affirm the Examiner. The Examiner, predictably, then thinks that he did a great job, when in fact he wasted applicant’s time, he wasted the board’s time, and he wasted the time of all other applicants who suffer from the resulting backlog.

    Don’t you think the applicant might have had a hand in wasting the BPAI’s time also, since he was the one who filed the appeal in support of claims that were clearly anticipated by the very art cited by the examiner in the rejection he appealed from?

    When your brief gives the status of claim 1 as “rejected under 102 as anticipated by reference A”, and the BPAI’s decision is “rejected under 102 as anticipated by reference A”, who was really wasting their time? What value did your client get for his money on that appeal? Did you at least enjoy your fruitless trip to DC, paid for by your client?

    Sure, the examiner didn’t do a perfect job, but you gotta admit he found some pretty darn good prior art.

    what’s up: If the BPAI wants to reduce the backlog, all it has to do is rely on the facts cited by the Examiner. If the Examiner says column 10 describes claim 1, and the Judges recognize that column 10 has nothing to do with claim 1, then the Board should reverse the Examiner.

    Wouldn’t that waste even more of your time? Even ignoring the lazy job you did in not reading through the reference the first time it was cited by the examiner, isn’t it better to get the entire reference out of the way? If the appeal were limited to column 10, you’d have to appeal another 24 times before you got an authoritative decision on column 34, and your patent would have expired half a dozen times over by then.

    The Board’s job is not to tell you that you are technically correct – the best kind of correct. The Board’s job is to make sure the bad claims get rejected and the good claims get allowed. Their duty is to the public, not to you.

  30. Cy–

    While I am in complete agreement with your suggestion that once you’re made aware of reference A you should make your claims patentable over reference A–something I do ALWAYS–making your claims patentable over the entirety of reference A is not a requirement of a legally sufficient response to an examiner rejection based upon only a portion of reference A.

    Hence your use of the word “should” rather than “must”.

  31. It is not the same in the USA, is it?

    Of course it is, Max. Are you being purposefully dense, perhaps for “educational” purposes? I think you’ve been told numerous times that those who post the loudest and the most often are not representative of US practice in general, and frequently misrepresent the law as well. While we’re asking questions, explain to me why you ignore IANAE (obviously the most rational poster here), who very clearly said that “once you’re aware of reference A (particularly if the examiner considers reference A invalidating), you really should make sure your claims are patentable over reference A”? I think the term for what you’re doing is “trolling,” is it not? It’s getting tiresome…

  32. “1. Considered apart from concrete existence: an abstract concept.

    Looks like they fail to me. They definitely cover an idea, and it looks like that idea is abstract. Failure. ”

    ooooOOOoo look a merely conclusory statement by an examiner. Someone notify the media.

    “(b) identifying market participants for said com-modity having a counter-risk position to said consum-ers; and

    Sounds like a concrete existence to me, broad but concrete.

    “(c) initiating a series of transactions between said commodity provider and said market participants at asecond fixed rate such that said series of market par-ticipant transactions balances the risk position of said series of consumer transactions.”

    Sounds like concrete existence to me, just as concrete as :initiating a series of chemical reactions between said hydrocarbons and oxidizers at a second fixed rate such that series of reactions balances the supply of hydrocarbons and oxidizers, thereby maximizing the production of energy and minimizing the production of products of incomplete combustion.

  33. This business (discussed above) of whether the attorney, the Examiner or the BPAI should read col 24 of the reference, as well as irrelevant col 10. I’m interested in it. In Europe, an attorney who lets the application go to issue without reading and addressing relevant col 24 does his client a dis-service, delivering to him a patent with a presumption of invalidity. It is not the same in the USA, is it?

  34. “Please note the phrase: statutory requirement”

    Note also lester jester that the “stautory requirement” is made in 103, with regards to obviousness. Not 101. Even though Diehr also felt it should apply to 101 even if not statutorily required. Lern ur lawl tard.

  35. “Geez, whata Im thinkin? O’l fatboy never had a coach.”

    Lolz, I was playing 4 varsity sports by my senior year. Picked one up every year after 9th grade.

    But, I do admit to gaining a few pounds since my workout buddy started school :( I’m such a social worker-outer.

  36. “The Wright Bros. patented a specific method of flying.”

    Are you sure about that? Show me the patent. The only things I’ve heard that they claimed is airplanes, not methods. And even if they did, seems like their methods would be non-abstract methods of flying, mechanized flight, like with an airplane.

    Look Lester Jester, you’re a tard, I’m sorry about that. But you can go about your day a lot easier if you listen to the real lawyers that have made many very easily found postings on the subject and read them.

    “SO, THE FIRST POINT IN JUSTIFYING THE ABSTRACTNESS OF THE CLAIMS IS TO SAY THAT HEDGING IS KNOWN.”

    Um no. They just happened to mention that it was known. Sorry tard. The abstract idea does not have to have been known previously, first because that is irrelevant to 101, and second because all abstract ideas are taken to be “known” according to the caselaw stating they are part of the common storehouse of knowledge for all men.

    “THE NEXT POINT (MADE ABOVE) IN THE ABSTRACT IDEA ANALYSIS IS TO SAY THE CLAIMS ARE BROAD. (IF THEY ARE BROAD LET 102 DEAL WITH THEM)”

    Um, you missed an important “point” and replaced it with what you consider to be the next “point”. What you consider to be the next “point” was merely an “O btw it this claim would preempt stuff in all fields”. That is not strictly required in the abstract idea analysis.

    The point that you missed, that was the actual “next point” and is the crux of the whole decision, is this finding of fact:

    “The concept ofhedging, described in claim 1 and reduced to a mathemati-cal formula in claim 4, is an unpatentable abstract idea”

    ^finding of fact. And that’s what blew up bilski’s battleship.

    “HERE THE COURT SAYS NARROWING THE CLAIMS DOESN’T CURE BEING BROAD OR “ABSTRACT”…BUT THEY ARE ABSTRACT BECAUSE THEY ARE BROAD.”

    Um no tardface, the court says narrowing the claims via mere field of use limitations does not save them. Just like in Flook. And that has very little to do with whether the claims are broad or narrow, and has to do with whether the claims are limited by certain types of limitations which the court has already held previously do not affect the abstract idea analysis.

    “HERE THE COURT SEEMS TO SAY…WELL…MAYBE IF THEY HAD BEEN NARROWER THEY WOULDN’T BE ABSTRACT.”

    Um no, there they “seem to say” that these claims contain field of use limitations that are even less binding that the ones in Flook, which also failed. Again, they are talking about specific types of limitations, field of use limitations, regardless of the breadth.

    “By the way, the court never defines “abstract”. If they had, one could easily hold Bilski’s claims up to the definition and see that they are not abstract. Try it with what ever dictionary you happen to have handy.”

    Hmm.

    link to thefreedictionary.com

    1. Considered apart from concrete existence: an abstract concept.

    Looks like they fail to me. They definitely cover an idea, and it looks like that idea is abstract. Failure.

    Again, sorry that you have a hard time understanding this. But, you being a tard and all probably doesn’t help. You should work on that first, and then work on understanding this decision. How’s that sound?

  37. “If the BPAI wants to reduce the backlog, all it has to do is rely on the facts cited by the Examiner. If the Examiner says column 10 describes claim 1, and the Judges recognize that column 10 has nothing to do with claim 1, then the Board should reverse the Examiner.”

    You sir are a rtard. What good does a reversal or an affirmance do in the situation you describe? Either way, the board or the examiner will eventually find col. 34 and cite it and your patent remains rejected. Boo hoo. The only thing your system does is give the applicant another 2 bites at the apple. Everyone’s time is still “wasted”.

    I note also the only person that “wasted” anyone’s time was the attorney who didn’t bother to read the whole reference. The miscitation is practically a typographical error, and in many cases is.

    Just the other day I had an attorney say that his election response had a few typos when I called him about it because it didn’t make perfect sense. Those “typos” changed the entire election. Do I blame him? Meh, he made a mistake. I’ve made similar, as has everyone.

    Stop your btching about a non solution.

    ” This will give Examiners an incentive to cite the proper part of the reference in the first action,”

    That’s an “incentive”? Are you a fckin rtard for real? You can’t be serious. That’s about as much of an “incentive” as paying him an extra dollar if he’s affirmed. Big “incentive”. Tard.

  38. Examiners like IANAE are the reason the BPAI has such a huge backlog. The Examiner cites column 10, which has nothing to do with the claim, so applicant appeals. Then the BPAI actually reads the reference and discovers column 34 describes the claim. In the past, the BPAI would cite column 34 for the first time, and affirm the Examiner. The Examiner, predictably, then thinks that he did a great job, when in fact he wasted applicant’s time, he wasted the board’s time, and he wasted the time of all other applicants who suffer from the resulting backlog.

    If the BPAI wants to reduce the backlog, all it has to do is rely on the facts cited by the Examiner. If the Examiner says column 10 describes claim 1, and the Judges recognize that column 10 has nothing to do with claim 1, then the Board should reverse the Examiner. The Board does not have time to do the Examiner’s job for him.

    If the Examiner is too lazy to make a proper rejection, then reverse the Examiner. This will give Examiners an incentive to cite the proper part of the reference in the first action, which will cause the applicant to amend around the claim instead of filing an appeal. Seriously, the Board should stop acting like the Examiner’s mother.

  39. Les, sorry but the way I read you, it is as if you are asserting something like “SCOTUS, I’m talking to YOU. The law says you have to have both eyes open when you construe the claim. But your Decision reveals, and unambiguously, that on this occasion you had one eye shut. Therefore (it stands to reason) your Decision is impermissible”.

    How about Prometheus then?

  40. Okay lets say you file a patent with a law firm. The law firm then files something other than what you paid for. You don’t like what you are feeling you sense somethings just aren’t right. So you go to lawyer # 2. He’s MUM, but as he kicks your ARSE out the door, he grabs hold of number #1. Like a pit bull he chews him a few holes. And then he says to # 1,I ain’t letting you go. I don’t care how long I hold on. I am going to cash in twice here. Is that called double dipping. Or is it a double whipping?

  41. By the way, the court never defines “abstract”. If they had, one could easily hold Bilski’s claims up to the definition and see that they are not abstract. Try it with what ever dictionary you happen to have handy.

    You were wrong, Les. Bilski’s claims are unpatentable under 101, and so are a lot of other claims just like Bilski’s.

    All you kvetching is really beside the point which is, once again, that you were wrong.

    Tough luck. Maybe better next time? Perhaps you would like to make a prediction about Prometheus on remand? Make my day.

  42. I discussed the situation with a lady in the know. The Bilski decision was only as close as it was because the majority failed to put forth a proper structural argument. While good enough to carry the majority, the decision is not good enough to clarify the law when it comes to “too abstract“.

    Discussions on these boards will resolve nothing, as there simply is not enough in the decision for either camp to do anything but convince themselves.

  43. 6:

    “They then upheld that the law has long held that patenting abstract ideas is excepted. They also upheld that the law has long held that claims which in effect claim the abstract idea are impermissible under the same law. Zam. The end. They didn’t have to do anything nonsensical like you wish they did. And they certainly did not disregard anything in the claim, they in fact made reference to it. ”

    Yes, the Supreme court clerks know how to draft a decision. They acknowledge the language in the claim. However, in this case, they then ignore it.

    Here’s what the court said with appropriate COMMENTS”
    “In light of these precedents, it is clear that petitioners’ application is not a patentable “process.”

    NONSENSE IT DOES NOT FOLLOW FROM THE EARLIER DISCUSSION OF BENSON, FLUKE ET AL THAT BILSKI’S APPLICATION IS NOT A PATENTABLE PROCESS.

    Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a funda-mental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F. 3d, at 1013 (Rader, J., dissenting); see, e.g., D. Chorafas, Introduction to Derivative Financial Instru-ments 75–94 (2008); C. Stickney, R. Weil, K. Schipper, &
    J. Francis, Financial Accounting: An Introduction to Con-cepts, Methods, and Uses 581–582 (13th ed. 2010); S.Ross, R. Westerfield, & B. Jordan, Fundamentals of Cor-porate Finance 743–744 (8th ed. 2008).

    SO, THE FIRST POINT IN JUSTIFYING THE ABSTRACTNESS OF THE CLAIMS IS TO SAY THAT HEDGING IS KNOWN.

    The concept ofhedging, described in claim 1 and reduced to a mathemati-cal formula in claim 4, is an unpatentable abstract idea,just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effec-tively grant a monopoly over an abstract idea.

    THE NEXT POINT (MADE ABOVE) IN THE ABSTRACT IDEA ANALYSIS IS TO SAY THE CLAIMS ARE BROAD. (IF THEY ARE BROAD LET 102 DEAL WITH THEM)

    Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea ofhedging risk in the energy market

    THE NEXT POINT IN THE ABSTRACTNESS ANALYSIS CONTRADICTS THE PRIOR POINT. THE PRIOR POINT IS THAT THE CLAIMS ARE BROAD. HERE THE COURT SAYS NARROWING THE CLAIMS DOESN’T CURE BEING BROAD OR “ABSTRACT”…BUT THEY ARE ABSTRACT BECAUSE THEY ARE BROAD.

    and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation.

    WELL-KNOWN….THE CLAIMS ARE ABSTRACT BECAUSE THEY ARE KNOWN….UH HU…AGAIN…IF THAT’S SO, LET 102 DEAL WITH THEM.

    Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.”

    HERE THE COURT SEEMS TO SAY…WELL…MAYBE IF THEY HAD BEEN NARROWER THEY WOULDN’T BE ABSTRACT.

    By the way, the court never defines “abstract”. If they had, one could easily hold Bilski’s claims up to the definition and see that they are not abstract. Try it with what ever dictionary you happen to have handy.

  44. Max:

    Consider this from the prior pasting:

    (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole'”

    Please note the phrase: statutory requirement

  45. And flight is an abstract idea. The Wright Bros. patented a specific method of flying.

    Drugs are an abstract idea. Therefore, a specific method of making a specific drug is an abstract idea.

    The reasoning is circular and absurd.

  46. Gotta love that gist

    You need coolin’, baby, I’m not foolin’,
    I’m gonna send you back to schoolin’,
    Way down inside honey, you need it,

  47. ping, I agree. Les had it all ready, from which I see that the SCOTUS needed the permission of the MPEP and the CAFC. 6 then wrote what I was thinking. Thanks 6.

  48. Just go read the decision about 10 times from start to finish.

    LOLz – 6’s way of memorizing his bogus reading errors is to repeat the error over and over again.

    6, you ever have a coach tell ya that practice don’t make perfect? Practice make permanent. Perfect practice, now that make perfect.

    Geez, whata Im thinkin? O’l fatboy never had a coach.

  49. Lester … Jester. w… t … f? The court did not boil the claim down to a “gist”. They found factually that hedging was an abstract idea. They then found that the claim was directed to a specific method of hedging, i.e. a portion of the abstract idea (note this part, it acknowledges the “claim as a whole”). They then upheld that the law has long held that patenting abstract ideas is excepted. They also upheld that the law has long held that claims which in effect claim the abstract idea are impermissible under the same law. Zam. The end. They didn’t have to do anything nonsensical like you wish they did. And they certainly did not disregard anything in the claim, they in fact made reference to it.

    I’m sorry you’re too dense to get a grip on this. Just go read the decision about 10 times from start to finish.

  50. Still a few months away from skiing season, but looking at that Appeals graph reminds me of some great mountains to conquer.

    Anywho, whyza bump of less then 3,000 deserve the special mention (nebulous and nefarious as it was), when since that bump even with skyrocking throughput, the mountain has grown an additional 8,000 (nearly three times greater than the bump itself)?

    And when do I get my sockful of answers on the dropping of the other shoes? Iza don’t see a guage for thems on the fancy control boards. Maybe the altimeter controls (the mountain is aclimbing) are hidden behind the sun visor.

  51. SCOTUS did not have the permission of a whole lot of settled law:

    2141.02 Differences Between Prior Art and Claimed Invention [R-5]

    Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole. See MPEP § 2111 – § 2116.01 for case law pertaining to claim interpretation.

    I. THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED

    In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form “a single integral and gaplessly continuous piece.” Nortron argued the invention is just making integral what had been made in four bolted pieces, improperly limiting the focus to a structural difference from the prior art and failing to consider the invention as a whole. The prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure. “Because that insight was contrary to the understandings and expectations of the art, the structure effectuating it would not have been obvious to those skilled in the art.” 713 F.2d at 785, 218 USPQ at 700 (citations omitted).).

    See also In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) (Claims were directed to a three step process for preparing sweetened foods and drinks. The first two steps were directed to a process of producing high purity maltose (the sweetener), and the third was directed to adding the maltose to foods and drinks. The parties agreed that the first two steps were unobvious but formed a known product and the third step was obvious. The Solicitor argued the preamble was directed to a process for preparing foods and drinks sweetened mildly and thus the specific method of making the high purity maltose (the first two steps in the claimed process) should not be given weight, analogizing with product-by-process claims. The court held “due to the admitted unobviousness of the first two steps of the claimed combination of steps, the subject matter as a whole would not have been obvious to one of ordinary skill in the art at the time the invention was made.” 535 F.2d at 69, 190 USPQ at 17 (emphasis in original). The preamble only recited the purpose of the process and did not limit the body of the claim. Therefore, the claimed process was a three step process, not the product formed by two steps of the process or the third step of using that product.).

    II. DISTILLING THE INVENTION DOWN TO A “GIST” OR “THRUST” OF AN INVENTION DISREGARDS “AS A WHOLE” REQUIREMENT

    Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole'”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled claims down to a one word solution to a problem).

  52. “Impermissibly”?

    Whose permission did SCOTUS not have, Les?

    This business of distilling an invention down to its “gist”, distinguishing between the core essence and the inessential rest. Is that not the very skill that sets patent attorneys apart from ordinary mortals?

    Or is the core skill to obfuscate, to throw a blanket of many fine-sounding words over the gist?

  53. If they had never heard of hedging, and read the concrete steps of the claims they could not and would not have concluded that it was an abstract idea. They impermissibly distilled the claim down to a “gist”: hedging and found “hedging” to be an abstract idea, ignoring the recited concrete steps.

  54. “It is too what they said. YOU read the whole thing”

    Uh, I have. It says that hedging is an abstract idea. Period. Not because it is old, but because it is, self-evidently, an abstract idea. That is a finding of fact sir, not a conclusion that they were making.

  55. It is too what they said. YOU read the whole thing.

    If you’re old, as you say, why do you argue like (and with) a 6-year-old?

  56. “”It is patent eligible. Even Kennedy pointed out the nonsense in the contradictory assertions of the majority. ”

    Wait wut? Kennedy is the majority.”

    Fine, Stevens then. I’m old, I get confused.

    “”Its abstract because its hedging and hedging is known…paleeese.”

    Um, that’s not what they said. Try reading the decision all the way through this time Lester Jester.”

    It is too what they said. YOU read the whole thing.

  57. “the Office can do no wrong – the applicant is always wrong”

    Well, idk about IANAE, but I can tell you that I’m not sure about the later part but the office literally can do no wrong. We’re part of the executive branch, what we say goes. In other words, might makes right.

  58. “(like the twin burdens of presentation and persuasion”

    You always get a presentation, and the examiner always persuades himself. What’s your issue?

  59. IANAE,

    For the amount of dancing you do around what I actually say, one would think that you are auditioning for a television talent show.

    But stick to the legal issues at hand. If one reads your response critically, one notes that you spout truisms as a defense (while avoiding answering substantive issues), yield to minor points (but with caveats and proclaiming other views), never really address critical points (like the twin burdens of presentation and persuasion), retreat into lectures of “good practice (which basically amounts to doing the examiner’s job for him – as opposed to actual legal requirements (like who actually has to prove what, when and who must follow administrative law principles) and generally play the part of the clown in your unrelenting “the Office can do no wrong – the applicant is always wrong” postings.

    Granted – you are an intelligent clown and have some excellent blogging skills, for what that’s worth. But in the end, you are just as laughable as the empty-headed 6.

  60. “Any of the normative standards extant at the PTO can be turned on its head in an instant, given one of those intersections–like Tafas”

    The only thing that happened in Tafas was he lost and then K man snatched defeat from the jaws of victory.

  61. “It is patent eligible. Even Kennedy pointed out the nonsense in the contradictory assertions of the majority. ”

    Wait wut? Kennedy is the majority.

    “Its abstract because its hedging and hedging is known…paleeese.”

    Um, that’s not what they said. Try reading the decision all the way through this time Lester Jester.

  62. It is patent eligible. Even Kennedy pointed out the nonsense in the contradictory assertions of the majority. There is nothing abstract about the claim. The fact that the majority confused anticipation with abstractness does not change that. Its abstract because its hedging and hedging is known…paleeese.

  63. I was exactly right about Bilski

    In the way that you thought that Bilski’s claim was eligible under 101, Les.

    That way.

    You really do sxck, Les.

  64. 6–

    Not surprisingly, your statement is simply conclusory, and lacks the analytical content required for it to be convincing.

    I have seen rejections of that type, and in some cases they are sufficient–usually with a bit more meat on the bones, describing the claim elements and correlating them to elements in the reference.

    In short, such a rejection may indeed sufficiently “explain the specifics” in some cases, especially 102 cases (of course)–but not in all cases.

    103 cases, and cases with complex references, are another matter entirely.

    The REAL trick, as an attorney, is to have a client who is willing, for whatever reason, to pay to take the PTO to task. Because patent applications have a strange economics about them, the intersections between great legal opportunities and willing and motivated clients are rare.

    Any of the normative standards extant at the PTO can be turned on its head in an instant, given one of those intersections–like Tafas.

  65. 6 – Kindly take note of the 3 instances of the word –MUST– in the portion of the rules pasted and highlighted below.

    37 CRF 1.104 (c)(2)

    (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on —-must be designated as nearly as practicable.—- The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

  66. “Any conclusion reached by an examiner must be the product of reasoning”

    Says you.

    “Furthermore, this reasoning MUST be available for examination by the party affected by the conclusion, absent some urgency or security issue. ”

    It sure is, it is presented in the following format: Your claim is rejected under USC 102 as being anticipated by x reference. Period. That’s the reasoning. The explanation of the specifics is what you’re worried about, but sorry, that’s not the reasoning.

    Oh, and the evidence is the reference. Not our explanation of what is found therein. Sorry.

  67. I was exactly right about Bilski. The Supremes overturned the ruling that MOT was the only test. In what way do you think I was wrong?

  68. Posted by: Les | Sep 10, 2010 at 12:40 PM

    Wow, Les is back! The only person on earth who was unambiguously more wrong about Bilski and 101 eligibility than Actual Inventor.

    I shouldn’t say “unambiguously”, I suppose, without noting the caveat that the two goons could be the same sorry person posting from the same basement.

  69. BTW, IANAE acknowledged this very concept on another thread where, when discussing an applicant’s response to an OA, he stated that:

    “What’s more, your arguments will never be persuasive until you allow yourself to understand what the examiner means, and respond directly to that.”

    If you deconstruct his comment, you’ll see that it is perfectly supportive of the position that anon took early on in this thread.

  70. Well, a whole bunch of things come into play.

    Anon is correct.

    Administrative law puts particular requirements on the examiner’s actions, and concepts like vagueness, specificity, arbitrary and capricious, etc. must be considered.

    The reason for specificity in 1.104(c)(2) is to enable the applicant to ascertain the reasoning behind the conclusion of anticipation or obviousness to such a degree that the applicant is capable of generating a responsive reply.

    Any conclusion reached by an examiner must be the product of reasoning–that is why conclusory statements by themselves are insufficient to sustain a rejection. Furthermore, this reasoning MUST be available for examination by the party affected by the conclusion, absent some urgency or security issue. If the reasoning is omitted, the OA is just as conclusory as it would be if there was no mention of references. Any such reasoning must be based upon evidence, of which facts form a part.

    Not only does the reasoning have to be available to the applicant with specificity, so does the evidence relied upon. “Evidence” cannot be vague–in order for it to be evidence, in must demonstrably make the conclusion more likely. Such a demonstration is made by incorporation of a “fact” into the reasoning, whereby it becomes “evidence”.

    Facts NOT incorporated into the reasoning are not EVIDENCE tending to prove any conclusion reached by an examiner–the only thing that they are evidence of is the bare fact of their assertion (hence the common saying “the facts in evidence”). Such facts have not been demonstrated to have any relevance, and are therefore NOT evidence tending to prove any conclusion reached by an examiner, do NOT therefore form any part of the examiner’s reasoning, and are not a lawful component of an examiner’s rejection.

    Anon is correct. More importantly, Anon’s commentary began to focus on LEGAL requirements and reasoning, which I hope that this hasty comment has amplified.

    Once again, I wish patent attorneys would act more like attorneys and understand the LEGAL framework in which the PTO exists, including the requirements of administrative law.

    You know what? Judges like to hear LEGAL arguments. They are not put off by this stuff. For the vast majority of them, arguments based on evidentiary law and administrative law are VASTLY more appealing, interesting, and accessible than arguments based on strict patent law.

    Boundy! Administrative Law! The PTO!

  71. “Oh. Well, that’s different then. You got a final rejection because your argument was found unpersuasive. Happens all the time.”

    ^that was ianae les.

  72. Les, where did you get that last part from? I don’t remember it being in this thread.

    “If it turns out not to be, then any citation to a new part is a new grounds of rejection.”

    You wish buddy boy. The grounds of rejection is 102/103 etc. over whatever reference. Your quaint antiquated notion of a new grounds that came into fashion during the “ret ard years” of patent law is quite obsolete. The rest of us have moved on, join us.

  73. “the law is not subjective putty in your hands. ”

    You say that, but the courts disagree.

    “You must conform to the law. You are a servant unto the law, you are not its master.”

    Hah, they must have made you take some kind of oath when you became an attorney. I have taken no oath of “servitude” in this context. As for me, I’ll be its “master” kk thx.

    “If an attorney were to show you the law’s holding, you must submit to the law and obey the law.”

    Gl with that.

  74. 6: Oh. Well, that’s different then. You got a final rejection because your argument was found unpersuasive. Happens all the time.

    No, it was persuasive. THAT’S WHY HE FELT THE NEED TO RELY ON A NEW PART (COLUMN 34)! Clearly 34 says something that the examiner agrees is not in 10. Therefore the thrust of the rejection has changed and it is a NEW GROUND OF REJECTION.

  75. On the plus side, IDS practice just got a whole lot simpler.

    Not to mention that we’ve eliminated all those pesky inequitable-conduct-for-failing-to-cite-a-reference allegations.

  76. Les: I did. Nevertheless, he cited column 34 in a final rejection.

    Oh. Well, that’s different then. You got a final rejection because your argument was found unpersuasive. Happens all the time.

    Les: An article on split pea soup is not remotely related to my claim for splitting atoms.

    No, it’s not. But no single source containing both those articles should ever come anywhere near anticipating a competently-drafted claim. If you’re not forcing the examiner to search harder than opening a general reference text about the world written for lay people, you really shouldn’t be pointing fingers.

    If your claim is properly drafted, none of the cited references will contain such diverse subject matter. It’s not at all unreasonable to suggest that you consider the whole cited reference, especially when it’s a patent document specifically written to describe either a single invention or a finite number of related inventions.

    Les: WAIT I know how to get rid of the back log! Simply publish ALL documents on the plan[e]t in a single book.

    On the plus side, IDS practice just got a whole lot simpler.

  77. IANAE: If you are arguing that claim 1 is allowable over reference A based on a particular limitation of claim 1, you should satisfy yourself that the particular limitation is taught nowhere in reference A. And then you should satisfy the examiner.

    I did. Nevertheless, he cited column 34 in a final rejection.

    IANAE: I did address the point. If your claim is even arguably anticipated by anything remotely resembling an encyclopedia of very basic and possibly outdated information on a variety of topics, you need a lot of help with your patent drafting. No matter what the examiner does with a claim like that, you need to fix your claim

    No you didn’t. An article on split pea soup is not remotely related to my claim for splitting atoms. Neither is the New citation to rail splitting. If the examiner cites an article on split pea soup, it is not reasonable to require me to read the entire encyclopedia. It is not even reasonable to expect me to read the entire volume that hold the spit pea soup article.

    WAIT I know how to get rid of the back log! Simply publish ALL documents on the plant in a single book. Then every rejection can say, claim 1 is anticipated by the single book, see page 123. When the applicant shows that page 123 is irrelevant, cite page 4,765 and go final! Let the board sort it out.

  78. Les: Should I point out line by line why each word of the 100 column irrelevant document is not an obstacle to patentablity?

    If you are arguing that claim 1 is allowable over reference A based on a particular limitation of claim 1, you should satisfy yourself that the particular limitation is taught nowhere in reference A. And then you should satisfy the examiner.

    Les: Why don’t you address the point :

    I did address the point. If your claim is even arguably anticipated by anything remotely resembling an encyclopedia of very basic and possibly outdated information on a variety of topics, you need a lot of help with your patent drafting. No matter what the examiner does with a claim like that, you need to fix your claim.

  79. Anon: The rejection is not “the entire patent” alone. We should not forget that the phrase “your claim is unpatentable over reference A” is merely a convenient shortcut. This red herring is placing form over substance. The rejection is the reference AND the particular section of the reference that must be particularly pointed out. If the rejection were merely the reference alone, then the Rule cited by Les would be meaningless.

    The rule isn’t meaningless. The rejection is over reference A. The fact that the examiner must explain why he thinks a rejection over reference A is proper does not change the fact that the rejection is over reference A.

    After all, your response would be that your claim is patentable over reference A. You explain yourself further, and refer to specific parts of reference A, and to specific parts of your claim, but the ultimate conclusion that you are presenting for the examiner’s consideration is that your claim as a whole is patentable over reference A as a whole.

    Anon: It is the duty of the examiner not just to show “prior art”, but to explain why that particular prior art results in the negation of your legal right to a patent.

    True. He’s also entitled to change his mind, and to keep searching after a rejection is traversed. And it’s the duty of the applicant to file claims that are patentable over the prior art (not only the art he’s aware of, but especially that art) if he wants a patent.

    The “legal right to a patent” doesn’t exist until you file a patentable claim. It’s your job to convince the office that your claims are patentable, and you’re doing a lousy job if you have art in front of you and you haven’t even read it.

  80. IANAE – Column 34 is just as irrelevant as 10. Should I point out line by line why each word of the 100 column irrelevant document is not an obstacle to patentablity?

    Why don’t you address the point :

    By your way of thinking, the examiner can cite the entry on split pea soup from the Encyclopedia Britannica against my method for spilling atoms, because my claim and the recipe both have the word split in them, and then, after considering my argument drop the citation to soup and cite the article on rail splitting and fence mending and make the action final because the applicant is responsible for reading the entire document.

  81. Les: Your position assumes that Reference A is actually an obstacle to patentability. Consider the situation where it is not.

    I always do consider that situation, whenever I get a rejection like that. I read the entire cited reference, and make sure it doesn’t invalidate the claim. Then I respond with arguments that apply to not only the specific portion identified by the examiner, but also to the reference as a whole. My job is to obtain patents, not to overcome the specifics of individual PTO rejections.

    Les: the particular part relied on —-must be designated as nearly as practicable.—-

    I didn’t ignore that part. The examiner relied on column 10, and designated column 10. The examiner later relied on column 34 in a subsequent action, and designated column 34. Reference A was in front of you (the applicant’s agent), the entire time, in its entirety. You missed an opportunity to address column 34 just as much as the examiner did, so the second rejection is at least as much your fault as it is his.

    Les: By your way of thinking, the examiner can cite the entry on split pea soup from the Encyclopedia Britannica against my method for spilling atoms, because my claim and the recipe both have the word split in them, and then, after considering my argument drop the citation to soup and cite the article on rail splitting and fence mending and make the action final because the applicant is responsible for reading the entire document.

    If your claim is anticipated by Encyclopedia Britannica, you have bigger problems.

  82. IANAE –

    Your position assumes that Reference A is actually an obstacle to patentability. Consider the situation where it is not. Where the second set of assertions is just as wrong as the first. Shouldn’t the applicant have a full opportunity to respond to it? If the second NEW wrong assertion is made in a final rejection, the office looks for excuses not to consider the response.

    and of course, just like the office, you are ignoring the important part:

    the particular part relied on —-must be designated as nearly as practicable.—-

    By your way of thinking, the examiner can cite the entry on split pea soup from the Encyclopedia Britannica against my method for spilling atoms, because my claim and the recipe both have the word split in them, and then, after considering my argument drop the citation to soup and cite the article on rail splitting and fence mending and make the action final because the applicant is responsible for reading the entire document.

    That just isn’t fair, reasonable or practical.

    Your position is through the looking glass.

  83. I think the point that the entire patent is the reference is a red herring.

    The rejection is not “the entire patent” alone. We should not forget that the phrase “your claim is unpatentable over reference A” is merely a convenient shortcut. This red herring is placing form over substance. The rejection is the reference AND the particular section of the reference that must be particularly pointed out. If the rejection were merely the reference alone, then the Rule cited by Les would be meaningless.

    Saying something like “the prior art isn’t the examiner’s fault” is likewise spurious. It is the duty of the examiner not just to show “prior art”, but to explain why that particular prior art results in the negation of your legal right to a patent. The burden is one of both presentation and persuasion. Treating the mere presentation as being sufficient, the “here’s a piece of prior art – now you figure out which portion makes your application ineligible for a patent” as enough, illegally shifts that burden.

  84. Les: The office is required to cite the best reference. If they cite column 10, that must be the best reference.

    Column 10 is not the reference. The entire patent is the reference. Column 10 is a particular part of the reference.

    If the examiner relies on column 10, he should (and did) designate that part. But that’s all by way of explanation of his actual rejection, which is “your claim is unpatentable over reference A”. Maybe next time the examiner will rely on column 34, but the rejection is the same – you can’t have your patent because of reference A.

    Furthermore, if you’re responding to a rejection over reference A, you really should be checking that reference A doesn’t anticipate your claim. It’s pretty routine for the examiner to pick out examples from one embodiment in the prior art, and it’s always worthwhile to glance at the other embodiments and make sure you claim around them too.

    If you want a patent, you need to claim around the prior art. The prior art isn’t the examiner’s fault, but the claim is yours.

  85. Fairness dictates that the new citation to column 34 be considered a new ground of rejection.

    I’m with you, Les. Fairness dictates that, but I think the law is on IANAE’s side. For what it’s worth, I see this play all the time. When it’s truly a bogus move and I clearly point that out in an after-final response, it almost always gets pulled.

  86. IANAE

    37 CRF 1.104 (c)(2)

    (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on —-must be designated as nearly as practicable.—- The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

    Its not just details. The office is required to cite the best reference. If they cite column 10, that must be the best reference. If it turns out not to be, then any citation to a new part is a new grounds of rejection.

    The Office has already misinterpreted column 10. How is the applicant supposed to guess how the office will next misinterpret column 34?

    Fairness dictates that the new citation to column 34 be considered a new ground of rejection.

    Read more: link to cfr.vlex.com

  87. 6,

    That situation can never happen

    Wow, talk about trolling. Are you basing this on your oft-ridiculed lolinterpretation of the rule wherein you leave out the guiding portion of “under law”?

    Reminder: the law is not subjective putty in your hands. You must conform to the law. You are a servant unto the law, you are not its master. If an attorney were to show you the law’s holding, you must submit to the law and obey the law.

  88. “If a claim is allowable but nevertheless stands rejected, that is the examiner’s fault.”

    That situation can never happen though IANAE as the condition for a claim to be allowable is for it to appear, subjectively, to the examiner or director that the claim is allowable.

  89. …but it’s the applicant’s fault

    If a claim is not allowable, it’s always the applicant’s fault and it’s always the applicant’s problem. The examiner is just the messenger.

    If a claim is allowable but nevertheless stands rejected, that is the examiner’s fault.

  90. If the office can cite column 10 of a reference in a first office action, be shown that column 10 does not say what the office action says it says and then cite column 34 in a final office action and take the position that this is not a new ground of rejection,

    It’s not a new ground of rejection. It’s the old ground of rejection, namely “claim 1 is rejected under 35 USC 102/103 as being unpatentable over reference A”.

    The rest is just details, and once you’re aware of reference A (particularly if the examiner considers reference A invalidating), you really should make sure your claims are patentable over reference A. No matter what the examiner cites or argues, it’s always the applicant’s responsibility to present a patentable claim.

    “Reference A does not teach X” is a proper argument against a rejection, but “column 10 of reference A does not teach X” borders on being non-responsive. You should always supplement such an argument with a statement that nowhere else in reference A is there a teaching of X, and you should be familiar enough with reference A to be able to say so.

  91. Mr. Boundy –

    Thank you very much for your efforts, especially those directed to clarifying MPEP 706.07(a). It is outrageous how the office ignores 37 CFR 104(c)(2). If the office can cite column 10 of a reference in a first office action, be shown that column 10 does not say what the office action says it says and then cite column 34 in a final office action and take the position that this is not a new ground of rejection, then the requirement in 37 CFR 104(c)(2) that the examiner indicate the particular part relied upon as nearly as practicable is no requirement at all!

    Every time I read on office action I feel I’ve gone through the looking glass.

  92. I think reading “for” as intended use is the broadest reasonable interpretation.

    That, of course, depends on reading that claim in light of the specification – mustn’t forget that part.

  93. Ned: I think we also agree that a BRI construction is unreasonable if it fails to read on any embodiments,

    We agree that there’s something wrong if the BRI construction fails to read on any embodiments. That’s a criterion to keep in mind, but if the claim happens to be so poorly drafted that the examiner can’t read it on the disclosed embodiments he is still entitled to construe it as he can.

    However, most any properly drafted claim should read on at least one embodiment, especially if it’s being interpreted broadly. I don’t think I’ve ever seen a BRI claim construction that didn’t read on at least one embodiment, other than claims that are hopelessly indefinite or obviously mis-drafted.

    In my experience, most unreasonable rejections are unreasonable due to overbreadth, which can be corrected either by explicitly narrowing the claim to what you meant it to say, or by filing a Rule 132 affidavit explaining that the word doesn’t mean what the examiner thinks it means to a person skilled in the art.

    Ned: I know the Feds held the construction in In re Suitco unreasonable. Is this an example of the principle in your view?

    No, that’s an example of a completely different principle.

    It’s pretty obvious that the PTO construction in Suitco did read on the disclosed embodiments. Even more obvious than it was in Morris. As I’ve said before, this case turned on whether the word “for” indicates a limiting feature or an intended use.

    I think reading “for” as intended use is the broadest reasonable interpretation. Rader seems to disagree, but I don’t know whether he really considered the point.

  94. :Well thanks for all that, 7. All I had in mind was that it is easier in Europe to “fall back on” a dependent claim than on some wording mined out of the detailed description. Yet with US-drafted stuff, I often can’t find a tenable fall back position in the dependent claims as filed originally.”

    I’d argue those claims are probably poorly drafted, but I will admit that I know it’s easier to fall back on dependent claims (as opposed to the spec) at the EPO, and when I cut down my claims to fit within the EPO’s limit, I leave only the “real” dependent claims.

  95. Good discussion, IANAE. I see you continued it the speedometer thread as well.

    We seem to agree that a claim term that reads on both the prior art and the preferred embodiments is a proper BRI. Such a claim term is too “broad” and needs to be narrowed by amendment.

    I think we also agree that a BRI construction is unreasonable if it fails to read on any embodiments, but is there a case that clearly hold this?

    I know the Feds held the construction in In re Suitco unreasonable. Is this an example of the principle in your view?

  96. According to at least two recent law review articles…contrary to law“, add in multiple and persistent case law (when understood and correctly applied) and numerous pounding by ping…

    Oh wait – that’s talking about how BRI is actually supposed to be applied “under law, boy

  97. Ned: But time and again, their “initial” claim construction fails to read on any embodiment in the specification.

    Can you give me an example, please? I have a feeling that’s happening less often than you think, based on our Morris dance upthread.

    Ned: What is unambiguously clear is that the PTO does not believe that it is required to limit its construction to those that read on the preferred embodiments.

    That’s right. Though if the PTO does construe the claim to exclude all disclosed embodiments it should also issue a 112 rejection. But there’s nothing wrong per se with a claim construction that raises a 112 issue. That legitimately happens all the time, and compact prosecution requires that any art-based rejections be made at the same time.

    What really bugs me, if what you say is true, is that these applications are not examined at all for 112 compliance on their first go. Of course, that’s part of why I suspect you might be missing something. I just can’t believe that examiners with a reject-reject-reject mentality would pass up a great chance to make an easy 112 rejection that doesn’t even require them to search any art.

    Ned: According to at least two recent law review articles, this approach to examination not only is unwise, but it is contrary to law which requires an examination of the “invention.”

    That’s shaky ground. Is the invention to be examined not the invention defined by the claims? Some specifications are far too long and cumbersome for the examiner to identify every possible combination of features that might constitute a claimable invention. Who better than the applicant himself to say what the invention really is?

  98. IANAE, I do a lot of reexaminations. I presume that here the examiners do read the specification. But time and again, their “initial” claim construction fails to read on any embodiment in the specification. What is unambiguously clear is that the PTO does not believe that it is required to limit its construction to those that read on the preferred embodiments. They approach the matter, claim-term by claim-term, and “initially” construe claim terms broadly as possible. To rebut the construction, the applicant is required to show how a claim term construction is contrary a definition from the specification, how it is inconsistent with consistent usage of the term in the specification, or contrary to what one of ordinary skill would understand the term to mean based upon extrinsic evidence.

    The approach used in reexaminations is exactly the procedure specified in In re Morris. No case that I know of holds to the contrary.

    As to Section 112 issues, you raise an interesting rebuttal. A claim construction that would render the claim invalid under 112 is probably too broad.

    Regardless, rather that clarifying the claims, it is quite possible for the applicant to simply rebut the prior art rejection. What do we have then? An examination of claims that do not relate to the “claimed” invention because the BRI is not just broader than the proper construction, it defines an entirely different invention.

    According to at least two recent law review articles, this approach to examination not only is unwise, but it is contrary to law which requires an examination of the “invention.”

  99. Well thanks for all that, 7. All I had in mind was that it is easier in Europe to “fall back on” a dependent claim than on some wording mined out of the detailed description. Yet with US-drafted stuff, I often can’t find a tenable fall back position in the dependent claims as filed originally.

  100. Ok Max, here goes again..

    “Tell me, 7, just how early do you go to fall back positions? Might it be as early as when you write your claims. The EPO expects every dependent claim to be one of those “fall back positions”. That’s why it thinks that 15 claims is usually enough. BTW, readers, we don’t do “Doctrine of Claim Differentiation” in Europe.”

    How early do I go to fall back positions? Well, I used to do it in my response to the first communication, but now (because of the new rules) I do it in my response to the search report. I certainly don’t do it as I draft the claims, as I use the same initial claims as I do in the US counterparts, and I never file claims which I don’t think are patentable based upon my own search.

    I will say that I always keep the EPO in mind when I write the detailed description of an application. I be sure to describe each and every fall back position with excruciating detail, usually from more than one angle. I assume that I better put every single word I may ever want to amend into a claim in that spec, because if I don’t, the EPO examiner won’t let me make the amendment.

    I’ll also admit that there are points I’ll argue in the US that I just won’t in front of the EPO, because I know I’m not getting unlimited bites at the apple there.

  101. It relates to the In re Morris case where the Federal Circuit described construction as a back-and-forth process between the examiner and the applicant.

    Do they? I guess I didn’t read that part of the case in enough detail. I’ll check it again later.

    That’s obviously ridiculous, unless the back-and-forth is the examiner construing and the applicant amending. The BRI should persist throughout prosecution, or it’s meaningless. And even the first action should be based on a reasonable interpretation, broad though it may be.

    Anyway, if you overcome the first rejection by pointing to a narrowing definition in your spec you’re getting a second non-final (because the construction was not “reasonable”), so it’s not really in the examiner’s interest to completely ignore the spec the first time around.

    Ned: Note, that in the whole of this case there is no requirement whatsoever expressed by the Federal Circuit that the claim term construed actually cover the preferred embodiments.

    So what I am left with the definite impression that is possible to have a legally permissible BRI that does not read on the preferred embodiments

    I don’t think that was necessary to specify in this case. It’s clear to me that any possible construction in this case would necessarily cover the preferred embodiments. Anyway, if the construction doesn’t cover the preferred embodiments you still have a problem. It’s just that your problem is 112 instead of 103.

  102. IANAE, I’ll accept your definition “fixed relative to each other in position and orientation.” This definition reads on the prior art but does not read on any the preferred embodiments of the Morris patent application. WEe all now seemed to agree that even if this definition is one known generally to those of ordinary skill in the art, it is unreasonable because it results in a construction the does not read on any of the preferred embodiments.

    However, I don’t think the Federal Circuit has ever clearly held that a construction that does not read on the preferred embodiments is unreasonable per se. They have only held that a claim term under construction can have the meaning argued for by the applicant if the claim term is used in the specification in a way and manner such that it has only the one meaning. This is quite a bit different.

  103. But what about, I think you misunderstand a nuance of my argument. It relates to the In re Morris case where the Federal Circuit described construction as a back-and-forth process between the examiner and the applicant. There the Federal Circuit said that as an INITIAL matter, the examiner uses the broadest meaning known to those of ordinary skill in the art, giving deference to the specification only to the extent that the terms are defined. There is no requirement in the “initial” interpretation by the examiner actually read on the preferred embodiments. There is no hint or clue anywhere in that case that this is a requirement.

    Thereafter, the applicant may refer to the specification in order to demonstrate that the claim term has a specific meaning by its use in the specification.

    The Federal Circuit then said that the patent office construction will be sustained unless the specification gives the claim term that specific meaning.

    Note, that in the whole of this case there is no requirement whatsoever expressed by the Federal Circuit that the claim term construed actually cover the preferred embodiments. That is the problem I’ve always had with this case because the end result was a construction that read on the prior art and did not read on any the preferred embodiments. Such a construction is simply not consistent with the specification.

    Now consider the In re Suitco case. There judge Rader seemed to hold that if a construction does not read on the preferred embodiment, the construction is unreasonable. However this interpretation of that case is not that clear.

    So what I am left with the definite impression that is possible to have a legally permissible BRI that does not read on the preferred embodiments so long as the interpretation is one known to those of ordinary skill in the particular art.

  104. Ned: Indeed, your attempt of the definition above seems to actually employ alternative definitions.

    No, it really doesn’t. “integrally formed” = “fixed relative to each other in position and orientation”

    Sure, a broader construction will naturally have a range of meanings that cover a greater number of apparently-distinct structures, but that doesn’t mean the construction is invalid or that it’s really two different meanings. If the claim term is construed as a genus, it will naturally cover a range of species within that genus. That’s what we want from our claims when we draft them full of weasel words to catch every possible infringer, we just don’t want them quite so broad that they encroach on the prior art.

    Please explain what you think the PTO construed the claim to mean, and why you think that construction excludes the one-piece manufacture of the preferred embodiment.

    Ned: Indeed, several of the posters above seem to believe that if THE construction does not read on any of the preferred embodiments, it is “unreasonable.”

    Well, obviously.

    Either that, or you have 112 issues.

  105. IANAE: “The construction is that two parts “integrally formed” are fixed relative to each other in position and orientation – whether constructed as a single piece, or whether permanently fastened by an adhesive or fastener or whatever.

    IANAE, I think you envision a definition that would include both the prior art and the preferred embodiments. Indeed, your attempt of the definition above seems to actually employ alternative definitions. I think that is what happened in this case. The patent office adopted the definition of “integrally formed” that had alternative meetings, i.e. a range of meanings, and basically adopted a genus of meanings comprising a number species where each of the species was a definition of integrally formed that was known to those of ordinary skill in the art.

    Compare the recent In re Suitco case where the Federal Circuit could have sustained the construction adopted by the patent office if it employed the same methodology as employed in In re Morris. They could have investigated all possible meanings that the term at issue in that case could have had to one of ordinary skill in the art and adopted all of them, i.e., the genus consisting of a number of individual species of possible claim constructions.

    While such a procedure will allow the patent office to get away with murder, I don’t think that anyone ever thought that THE broadest reasonable construction meant ALL possible constructions known to those of ordinary skill in the art. Indeed, several of the posters above seem to believe that if THE construction does not read on any of the preferred embodiments, it is “unreasonable.”

  106. 7. I’m sorry for your loss of time, but curious. Will you try again, this time without using any hat eful words?

  107. Ned: But it is not clear at all just how the PTOs construction could read on the preferred embodiments.

    It’s not clear to me how you could possibly have a construction of that particular claim that doesn’t read on the preferred embodiments.

    The construction is that two parts “integrally formed” are fixed relative to each other in position and orientation – whether constructed as a single piece, or whether permanently fastened by an adhesive or fastener or whatever.

    Reading the claim in light of the spec means nothing more than “make sure the spec is an example of what is claimed”, unless the spec contains an explicit definition. That’s exactly what we draft the spec to be, and we shouldn’t take issue with any examiner who uses it exactly that way.

  108. 7- happens

    a) when you inadvertently include a “bad word” that the filter doesn’t like (for me, the killer is ha_te)

    b) you’ve spent too much time writing your message – I think there is a default time limit – try not to write such long messages.

    c) when you are too critical of special interests

    d) when someone is out to get you

  109. Ok. I just wrote a nice long comment responding to Max, hit post, and I’m taken back to this page, which does not have my comment.

    What gives? That’s a shxtload of fxck.

  110. 7 writes to me:

    “Max,

    The EPO disposes of cases quickly for two reasons, it seems to me. 1. EPO examiners only do one search, so you don’t get the endless stream of new rejections like you do in the US 2. EPO examiners pretty much stick to their guns.

    I handle my EPO cases much differently than my US cases. I tend to go to fall-back positions more quickly, for example.”

    7 is right, both as to what gets cases disposed of real quick at the EPO, and how an Applicant can live with that.

    Tell me, 7, just how early do you go to fall back positions? Might it be as early as when you write your claims. The EPO expects every dependent claim to be one of those “fall back positions”. That’s why it thinks that 15 claims is usually enough. BTW, readers, we don’t do “Doctrine of Claim Differentiation” in Europe.

  111. Ping. I’m not sure what world you live in, but having drinks with someone =/= gay fantasy for most people. However, if that’s your thing, there is nothing wrong with that. FYI, many people I work with in the same office go out for drinks together because they are co-workers. But thank you for replying to my comment at such a late hour, I guess we’re both burning the midnight oil for client matters.

  112. Executive summary:
    Ned: PTO examiners do not need to look at specifications.
    Ping: Do too
    Ned: Do not
    Ping: Do to

    Ned: Ignores his initial statement – PTO examiners can/should interpret claim language broader than the specifications.
    Ping: Ha, I was right about my first point.

    Ping: I was right, say you are wrong.

    Ping: I win. See everyone, I win.
    ——————————————
    Ok Ping, you win, Ned’s statement was wrong and Examiners need to look at specifications. Now, why are you posting on this board instead of doing your job? Start reading.

    The end result of the discussion was useful in that the case law is not entirely clear on this issue. It also seems the In re Morris case was not argued well. Bad arguments = bad case law.
    Can an examiner support a claim construction that would not include an embodiment if such a construction to include the embodiment is possible? Ned says yes (I think he backed off of this without ever recanting), Ping says no. I reluctantly have to admit that I agree with Ping.

    Ping – go celebrate by having drinks with 6.

  113. You have to love how the USPTO games the MPEP. Revision 3 of the Eighth Edition of the MPEP used to include the following citation in section 2111:

    During patent examination, the pending claims must be “given *>their< broadest reasonable interpretation consistent with the specification.” >In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).< Thus, we've got a case that directly describes how the USPTO is to interpret claim language (i.e., "consistent with the specification"). However, this case is not cited in the same manner in the current revision of the MPEP. Although the "consistent with the specification" is found in the current MPEP, it is cited as part of Phillips v. AWH Corp. The USPTO then follows this cite within the MPEP with In re Morris and includes the following language: "[t]he court held that the PTO is not required, in the course of prosecution, to interpret claims in applications in the same manner as a court would interpret claims in an infringement" – perhaps to undercut the statement from Phillips v. AWH Corp.? This has left some to believe that the specification can be ignored when the Examiner interprets the language of the claim. Regardless, let's put this issue to bed, the Federal Circuit has made it clear that claim constructions, by the USPTO, must be consistent with the specification. There are more important issues to address – like how the BPAI tends to ignore BRI and instead uses the BPI standard (i.e., broadest possible interpretation).

  114. Ned,

    You seem to find lots of time to play with the specific details of the case, but can’t seem to find time for the question of law. Why is that?

  115. IANAE, the “integrally formed as a portion of” term was obviously intended to cover structures that were part of the casing or hosing, not pads bolted or sandwiched onto the casing as in the prior art. The issue on appeal was the whether the PTO’s claim construction was “inconsistent with the specification” when their construction did not appear to read on any of the preferred embodiments. The PTO’s position was that they did not have to limit the claims to reading on the preferred embodiments so long as “integrally formed” could be read the way the examiner construed the claim — to read on the prior art. “Encompass” was the term the PTO and Feds employed.

    But it is not clear at all just how the PTOs construction could read on the preferred embodiments. Perhaps, if the issue had been argued that way, the applicants could have won.

  116. The Feds also mischaracterized the PTO’s position so as to not make them look ridiculous.

    Now if Ned could get the Feds to help him with his “in light of the specification” made-up-law-lacking-a-valid-citation issue, perhaps he too could have his position not made to look ridiculous.

    How about it Ned, will you answer the request? It’s a simple request. A litigator of your stature should be able to easily answer such a request.

  117. Ned: to mean (not include)

    What part of the Morris decision implies to you that the claims were not being construed broadly enough to also include the preferred embodiments? I admit I skimmed the decision pretty quickly, but I didn’t see that. Really, the only question was whether the claim included the prior art, not whether it was supported by the spec.

    A construction that includes both the prior art and the preferred embodiment is not inconsistent with the specification. We are always so careful to say that the embodiments described in the spec are by way of example and not limiting, and we always want our claims to be construed as a broader genus. Well, if we draft so broadly that said genus includes the prior art, we have only ourselves to blame.

    I note also that I’ve had claims to “integrally formed” components rejected over two prior art parts stuck together. Unless you can find some functional reason to distinguish the two, e.g. the two prior art parts are subject to failure along the join, and the prior art apparatus could not be assembled as a single-piece construction, you’re basically choosing between a 102 and a 103 – even if your spec explicitly defines the claim term to mean “manufactured as a single piece”. Integral construction is just about never going to be the feature that gets your claim allowed.

    Ned: The Feds gave lip service to the “consistent with the specification” but then upheld the construction that the claim term read on the prior art, which, for all practical purposes, meant the claim did not read on any of the preferred embodiments.

    Again, the claim construction appears to read quite clearly on the preferred embodiments. It simply reads on the preferred embodiments so broadly that it also encompasses the prior art. If the applicant was going to seriously argue that its claim was limited to a thinned portion of the housing (or whatever it was), that’s what it should have claimed.

  118. IANAE: “‘Ned: IANAE, you would be surprised just how often the examiner’s construe claims so broadly as to not read on any of the preferred embodiments.’

    I would indeed be surprised, since breadth doesn’t prevent claims from reading on specific embodiments.

    The Morris claims were interpreted broadly enough to cover both the prior art and the preferred embodiments. Had the claims not covered the preferred embodiments as construed, I’m sure the court would have agreed that the construction was not reasonable.

    If your intention as an applicant is to argue that a claim deserves a narrower interpretation than BRI, you should be amending that narrower interpretation into the claim language. If you’re going to be estopped anyway, and that’s what you intended to claim anyway, you might as well get the patent issued.

    In principle, OK. However, I do find it a stretch to find that the PTO interpretation of “integrally formed as portion of” to mean (not include) sandwich structures to cover any of the preferred embodiments. I don’t recall the Feds actually saying this.

    They did flirt with the possiblity that the claim term was functional, requiring a construction under Section 112, p. 6. But they “declined” their own invitation to treat it as functional while making it seem that this construction was requested by the applicant.

    The Feds also mischaracterized the PTO’s position so as to not make them look ridiculous. The PTO had maintained that they were not bound at all by the specification. The Feds gave lip service to the “consistent with the specification” but then upheld the construction that the claim term read on the prior art, which, for all practical purposes, meant the claim did not read on any of the preferred embodiments.

  119. The private sector has a way of getting people to do more work, its called pay people more money for doing more work. Regardless of whether the board applies BRI, or adopts the Examiner’s facts, or does its own fact finding, the amount of work that is produced will remain constant unless either

    a) people at the board are paid on a per case basis;
    b) The PTO hires more judges; or
    c) both a and b.

  120. Ned: IANAE, you would be surprised just how often the examiner’s construe claims so broadly as to not read on any of the preferred embodiments.

    I would indeed be surprised, since breadth doesn’t prevent claims from reading on specific embodiments.

    The Morris claims were interpreted broadly enough to cover both the prior art and the preferred embodiments. Had the claims not covered the preferred embodiments as construed, I’m sure the court would have agreed that the construction was not reasonable.

    If your intention as an applicant is to argue that a claim deserves a narrower interpretation than BRI, you should be amending that narrower interpretation into the claim language. If you’re going to be estopped anyway, and that’s what you intended to claim anyway, you might as well get the patent issued.

  121. Ned,

    We’ve gone from your childish “it’s an opinion” to an even more childish “you are trying to manufacture an issue“. I hope your litigation tactics are better and more grounded in law than this.

    What (obvious) lengths will you continue to go to in response to my very reasonable request that you validate what you say “the Law, boy” says in relation to BRI (and that the examiner mustsearch and reject the first time without reading the specification“)

    Just answer the request. Why won’t you answer the request? C’mon Ned, answer the request. Answer the request already.

  122. Max,

    The EPO disposes of cases quickly for two reasons, it seems to me. 1. EPO examiners only do one search, so you don’t get the endless stream of new rejections like you do in the US 2. EPO examiners pretty much stick to their guns.

    I handle my EPO cases much differently than my US cases. I tend to go to fall-back positions more quickly, for example.

  123. Ned, something similar, yes. For example, an EPO Exr looking at a claim that includes a term like “resilient” might say that everything is resilient to some extent, so “resilient” fails to distinguish over the diamond art.

    But if there is a definition in the specification which does achieve novelty over the art, she goes further.

    She says that she can recognise novelty if that definition is written in to the claim.

    But she goes further. Then she says it would still then fall as obvious, giving her reasons.

    Further yet, she invites Applicant to fold claim 8 into claim 1. That would be then be recognisable as not obvious.

    She owes Applicant this much because, under EPC Rule 137(3), Applicant only gets one shot at amendment as of right after the FAOM. And there is no EPC provision for any sort of “continuing” application.

    The EPO disposes of cases in very few Office Actions, even though the EPO’S MPEP commands Examiners to issue as many Actions as it takes.

    Bit of a “Law of Unintended Consequences” effect somewhere, I submit. Or is it Murphy’s Law?

  124. IANAE, you would be surprised just how often the examiner’s construe claims so broadly as to not read on any of the preferred embodiments. That is exactly what happened in In re Morris. Read the entire case. You will be flabbergasted.

    Ping, how else can you explain In re Morris except that the claim was construed without regard to the specification because the specification did not define the claim term or use it in such a way that only one meaning was clear. The claim term “integrally formed as a portion of” was construed to cover the prior art sandwich structure, and was not construed to cover a casing formed within a noise reduction structure such as illustrated and described in the specification.

  125. Max, just how does the EPO examiner give the claims the” haircut” you talk about? In United States, the examiner construes the claims to read on prior art forcing you to introduce claim amendments. The EPO examiner do something similar?

  126. ping, perhaps you should stop trying to manufacture issue where there is none. Why don’t you just quote in its entirety, without any fancy editing, the passage from In re Morris talking about what the examiner must do “initially.”

  127. BPAI Guy | Sep 05, 2010 at 02:49 PM writes

    Also, does anyone know where the *new* new appeals rules are right now?

    The Executive Office of the President “directed” the PTO to pull the 2008 Appeal Rules out of any approval track, and limited the PTO to enforcing *only* the 2004 Appeal Rules:

    link to reginfo.gov

    The PTO has discretion to amend the appeal rules, but to do so, it has to start at square one of the rule making process, and has to comply with the Administrative Procedure Act, Regulatory Flexibility Act, Paperwork Reduction Act, and Executive Order 12,866 – all of which the PTO attempted to shortcut in 2007 and 2008.

  128. So, does anybody know what is happening to the proportion of applications that are being taken to appeal? Is it rising, falling, or staying the same?

    The “appeal fraction”, if sufficiently large and if the trend in the graph continues, may offset any decreases in pendency resulting from other mechanisms.

    Also, does anybody have any idea what the pendency effects are of an appeal vs an RCE, statistically speaking? i.e. does an appeal now generally take longer to resolve than an RCE does? (I know the numbers are moving targets)

  129. Ned: I think the point of “broadest reasonable interpretation” is to force the applicant to add clarifying limitations to the claim if the claim can be read more broadly than the applicant intended.

    Agreed. If the applicant didn’t realize his claim could reasonably be read broadly enough to cover the prior art, he should be made to correct it at his own expense.

    Ned: Thus the Office commands that the claims be read as broad as possible without regard to the specification as an initial matter.

    Does the office really command that?

    Unless your specification defines a particular claim term in a limiting way, no amount of breadth will per se make a claim interpretation inconsistent with the specification. If the term is defined and the examiner’s interpretation is contrary to that definition, you’ll point that out to the examiner and get the second non-final rejection you want.

  130. “Too often, examiners think that making new inferences, relying on different components/passages, and presenting new theories is somehow NOT a new rejection, just because they relied on the same reference(s) and same statutory section.”

    That’s the official position because of lawlyers bit ching. If we reopen then they claim that their statutory right to appeal has been denied. If we make the new grounds of rejection in the E Ans. then they don’t make that argument but are pissed in the manner you are. But, at least they don’t have the legal argument of us denying them appeal.

    “What I particular dislike is when they refuse to admit that their old arguments are wrong and say, well, maybe the applicant was confused so let make myself clearer, and then proceed to refer to totally different portion of the reference and formulate a new rejection.”

    Maybe you were confused. Knowing you, I don’t doubt it at all.

  131. >>somehow NOT a new rejection, just because they >>relied on the same reference(s) and same >>statutory section.

    What I particular dislike is when they refuse to admit that their old arguments are wrong and say, well, maybe the applicant was confused so let make myself clearer, and then proceed to refer to totally different portion of the reference and formulate a new rejection.

  132. Mr. Boundy writes: There is an easy way out of all of the PTO’s backlog problems – enforce the law relating to premature final rejection

    I agree. Your proposed amendment to the MPEP regarding the law of finality addresses a key problem: a new ground of rejection may arise using the same reference(s) and same statutory section.

    Too often, examiners think that making new inferences, relying on different components/passages, and presenting new theories is somehow NOT a new rejection, just because they relied on the same reference(s) and same statutory section.

  133. See what happens when you try to be unfair to the applicant? Dudas can be blamed for the problem.

    6 and Ping having drinks? 6 shouldn’t drink. He has enough trouble keeping it together.

  134. Will 6 and ping meet up for drinks already, they probably share the same cubicle wall.

    Ping, I really can’t understand your posts sometimes (try writing in English) but it’s nice to see you think you won something against Ned.

    Just to clarify, do PTO examiners need to read the specifications?

  135. Ron, you are right that BRI is alive, well, and kicking, at the EPO. Some Examiners push it to absurd lengths, just as at the USPTO.

    EPO Examiners have the task of granting patents, as soon as the app complies with all the requirements of the EPC. One of those requirements is that the claim be “clear”. Germany still has its twin track patent litigation system, in which a Federal Court in Munich rules on validity while a District Court, often Duesseldorf, decides what infringes. Thus for a patent owner, a claim like an Angora cat is very useful. The longer its hair, the better. In Duesseldorf, with all that long hair aggressively standing on end, the cat looks HUGE. In Munich, with the hair thoroughly wetted, the tiny cat appears harmless.

    EPO Examiners are mostly German-speaking. Their aim is to give the claim as filed an uncompromising and brutal hair cut, so that the real body of the cat is plain for all (including that judge in Duesseldorf) to see. The Doctrine of Equivalents can do the rest.

  136. Ned Heller wrote “Morris has been distinguished in recent cases such as that recent one written by judge Rader which overturned a PTO claim construction that was inconsistent with the specification.” Where? Most recent case I can find citing Morris written by Rader is Rolls-Royce, May 5, 2010, where the now Chief then Circuit judge writes: “This court will uphold any reasonable interpretation of disputed claim language by the PTO. See In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997).” Rolls-Royce, 603 F.3d 1325, 1330 (2010). Morris seems alive and well.

  137. The oldest explanatory account of the BRI that I am aware of is from 1924:
    In re Carr, 297 F. 542, 543-4 (C.A.D.C. 1924) (“…there is no reason, as we many times have observed, why an applicant in the Patent Office should not draw his claims to cover his actual invention only. For this reason we have uniformly ruled that claims will be given the broadest interpretation of which they reasonably are susceptible. This rule is a reasonable one, and tends not only to protect the real invention, but to prevent needless litigation after the patent has issued.”)

    Ned,
    You are on-point generally w/r to BRI, but as Ping points out, your detailed interpretation conflates office action sequences as if this doctrine may not be applicable to every examiner action. See Burlington Indus., Inc. v. Quigg, 822 F.2d 1581 (C.A.Fed.,1987) (“ Patent application claims are given their broadest reasonable interpretation during examination proceedings, for the simple reason that before a patent is granted the claims are readily amended as part of the examination process (citing In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969)). Claims may be amended for the purpose of distinguishing cited references, or in response to objections raised under section 112. Issues of judicial claim construction such as arise after patent issuance, for example during infringement litigation, have no place in prosecution of pending claims before the PTO, when any ambiguity or excessive breadth may be corrected by merely changing the claim.”) (my emphasis).

    At every office action in prosecution, examiners must give the claims their BRI in whatever condition the claims might be. Otherwise, how else would “any ambiguity or excessive breadth … be corrected”?

    MaxDrei,
    It appears that you misapprehend the term BRI under U.S. patent law. It is not an instrument for merely creating a prosecution history record that could later limit the interpreted scope of the claims. It operates to actually limit and change the language and terms used in the finally-allowed claims. From my experience, this process is not that different than that employed by EPO examiners, who often insist on claim term amendments in order to steer clear of prior art under the broadest reasonable interpretation of the term. Just because prosecution history is not used in the EPC to construe claims does not mean that BRI is not alive and well at the EPO (perhaps as it should be).

  138. (otherwise than I be right and you be wrong – just to clarify).

    Funny, such a fine litigator as yourself be having such a difficult time finding the appropriate citations. Ned, whatever could be the matter?

    The homework pass of “Ping is right and Ned is wrong” is still there.

  139. (This is a key point. Understand it.)

    Gee Ned – this still blows your opinion out of the water – how does one get to those definitions in the specification, unless the specification is actually read? Your position of ignoring the specification is baseless even given In re Morris.

    btw – nice cheap attempt at misquoting In re Morris by leaving out “or otherwise that may be afforded by the written description contained in the applicant’s specification.” – In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)” as I done told you yet again directly above.

    I notice that you have now changed your “initial point”. What happened to “BRI demanding (by Law, son) the examiner ignore the specification in his first action”? Couldn’t find a cite for that like I ask ya to do?

    Ya seem ta only change your tune when I call you on it. Now ya wanna make like that was what ya been sayin all along – cepts we both know that it wasn’t and we both know ya needs ta say “Ping you are right and I am wrong”.

    C’mon Ned, is it that tough for you ta admit that you were wrong when the facts are so clear? Why can’t you admit that you were wrong, son?

  140. Annoyed, I respectfully dissent. The purpose of broadest reasonable interpretation is to clarify the claims when they can be read more broadly than the applicant intended. So long as one fully understands this, once should support what the patent offices trying to do. However, it is also important to understand that the initial office action today, in many cases, is operating solely as a claim construction vehicle. We still need a second action on the merits that is nonfinal, but this time with the claims construed and limited to make them clear.

  141. Max, I think the point of “broadest reasonable interpretation” is to force the applicant to add clarifying limitations to the claim if the claim can be read more broadly than the applicant intended. Thus the Office commands that the claims be read as broad as possible without regard to the specification as an initial matter. See my discussion above regarding In re Morris. If the applicant believes that the claim terms can be read more narrowly such that a claim term has only one meaning and that meaning becomes clear when considering the specification, it is HIS burden to demonstrate that meeting to the examiner. It is not the examiner’s duty to limit his INITIAL claim construction to that singular meaning.

  142. Ping, you are right that Morris has been distinguished in recent cases such as that recent one written by judge Rader which overturned a PTO claim construction that was inconsistent with the specification. However, it appears that the PTO lives and dies by In re Morris. Until that case, no one clearly knew what broadest reasonable construction meant except that the PTO could not read limitations from the specification into the claims – which was what the original holding of “broadest reasonable interpretation” said it meant.

    Furthermore, I agree with you on what happened in the Morris case itself. It appeared that the Federal Circuit was intent on arriving at a specific result regardless of the facts. But the case has clearly become a guidepost for the way examiners actually conduct examinations.

    Note the structure of In re Morris: the examiner is to “initially” give the claim terms their broadest reasonable interpretation that one of ordinary skill in the pertinent art would give them – with the only proviso that they be bound by definitions given these terms in the specification. The rest of the specification was not to be limiting in any form. (This is a key point. Understand it.)

    Next, the applicant may rebut the examiner’s claim construction (implicit in his rejection). The case makes clear that if a particular term is used unambiguously in the specification such that it has one meaning and one meaning only, the applicant may prevail. However, if the application is unclear on this issue, the examiner is instructed not to change his position if he can cite any evidence that supports his position, intrinsic or extrinsic.

    But this is a back-and-forth process, and examiner does not have to study the specification in order to come up with his initial position. In re Morris requires that the applicant point out to the examiner why the examiner’s claim construction is inconsistent with the specification, and he has a heavy burden to do so.

    Now back to my initial point, it order to arrive at a construction that is “consistent with the specification” as you repeatedly say the law is, more still requires a first action and a response to get there.

  143. Annoyed – the impact is on more than applicants with limited resources – the drift from HMS Boundy is that this is the type of crrp that is driving the Office problems with backlog and Appeal Court chokedown.

    I love the way Boundy throws the President’s Orders at the Office – the one that says the Office first has to see if what they are doing is causing the mess in the first place.

    Let me repeat the (pinged) Boundy directive to the Office:

    Do your F’ n job!

  144. I really think you need to fully understand Morris

    And I really think you need to understand the flow of traffic.

    Morris said the right thing (ya know – the cite I had ta look up for ya), but then went all liberal on getting to the ends that particular court wanted – sorta like “we know the spec’s got a light, cause we read the spec like we was supposed to, but we like this light better”

    Morris has been distinguished by subsequent cases (ya know – the homework you were supposed to do instead of wallowing in Morris and repeating your crrp opinion).

    Do ya have to work this hard all the time to ignore the law, boy? Your insane notion of applying an examination of the claims without first reading the specification is CLEARLY unsupported by LAW – else, you would be throwing that cite at me, wouldn’tcha Sunshine? Perhaps that little bit of understanding would help ya out – why do you fight that so? You look damm silly with your pants down around your ankles Ned.

  145. For BRI read “Easiest Possible Rejection”.

    I recently got a Final Action on a case where we had previously blown the examiner’s 101 rejection clean out of the water. The Final Action started with some gobbledygook about preambles and transitions, on the basis of which the examiner argued that claim wording to the effect of “an apparatus of type X comprising a first sub-system of type Y and a second sub-system of type Z” was indeed anticipated by a reference showing “a first apparatus of type A including a first sub-system of type Y and a second apparatus of type B including a second sub-system of type Z”. He then just repeated verbatim all of the objections from the first action.

    The USPTO really needs to understand the impact that this kind of BS has on applicants with limited resources.

  146. Excuse my ignorance but can somebody tell me if this BRI game is something to do with grooming the file wrapper. I mean, is it all a diabolical PTO strategy, to get on the written record a series of admissions from the Applicant, along the lines of:

    No, my claim does not cover A

    No, my claim does not cover B

    No, my claim does not cover C.

    I ask because, in Europe, claim construction in post-issue litigation is not constrained by the PTO file wrapper. I’m thinking this might be the reason why, in Europe, we do not see these BRI prosecution dialogues, so upsetting to Applicants and their lawyers.

  147. Jim, you got that right.

    Ping, I really think you need to fully understand Morris. Claim construction consumes the first action and the first response. Unless one is lucky, the clarification response also results in new issues and a final.

    What we clearly need is one more action to accommodate BRI. (Some arts may not be affected by BRI, as the claims have only one meaning. Chemistry might be one example.)

  148. As far as Ned Heller and ping’s back and forth, I laughed at ping’s joke, and Morris gets used a lot, but reading Plager’s decision sticks in my craw… The question then is whether the PTO’s interpretation of the disputed claim language is “reasonable.” Morris 127 F.3d 1048, 1055 (1997). “But Sordello, and My Sordello?” Pound Canto 2…

  149. “I gotcha 6 – Iza member how you have said that you ha_ted them meddlers, always bringing up points against your iron-clad rejections and making you start over. They don’t know anything, do they?”

    Um, they don’t exist. I made them up.

  150. I gotcha 6 – Iza member how you have said that you ha_ted them meddlers, always bringing up points against your iron-clad rejections and making you start over. They don’t know anything, do they?

  151. “A real success story they’ve been …. that’s why we are talking about a record low appeal backlog … not.”

    I might have been being sarcastic about the elite troops. Maybe.

  152. Or Ned, the examiner could just do one proper search, after following the proper procedure of reading the claims and the specification, then applying BRI to the claims in light of the specification like the thousands on the highway know how to do.

    This is “an” answer that obviates your ridiculous and unwarranted view of BRI and comports with any and all citations.

    BTW – how is your citation homework coming along? I might give you a pass if you just fess up and admit that you were wrong and that I was right. Is your pride that stubborn?

  153. ping, I suppose “an” answer is for the examiner to conduct two searches the first time, one for the claims BRI and another for the claims given their “proper” construction. He could then issue two rejections: one using BRI and a second using a “proper” construction. The applicant’s response would have to overcome both.

  154. Why do appeals from the 1600 Groups get decided in an average of 7 months from docketing (which is dropping), while appeals from 2100 Group get decided in an average of 21 months (which is rising)? Are the Bio/Pharm/Chem APJs just that much faster?

    Also, does anyone know where the *new* new appeals rules are right now?

  155. “Elite commando anti-appeal troops are deployed on a case by case basis.

    A real success story they’ve been …. that’s why we are talking about a record low appeal backlog … not.

  156. “Although Kappos may have changed the mentality at the top levels of the USPTO, it will likely take years before the repudiation of the “reject, reject, reject” mentality will trickle down to the troops. ”

    If I had to guess it’ll never “trickle down” in the way you’re thinking.

    Too many attorneys taking the easy way out instead of learning the skills to easily resolve issues before appeal.

    “Skillfully trained examiners simply file new rejections in their response to my appeal. ”

    Elite commando anti-appeal troops are deployed on a case by case basis.

  157. I don’t file RCE’s any more. They’re pointless. If by the second rejection the examiner has not so much as read your application, there is no hope that the examiner will read it during in an RCE. It just adds years to an already senselessly long examination period. I just appeal. It makes more sense.

    It’s interesting that none of my appeals have made it through to the appeals board. Skillfully trained examiners simply file new rejections in their response to my appeal. These masterfully placed, yet nonsensical, new rejections cannot be reasonably answered in the appeal, so I am forced to go into a RCE anyway. The good news is that the examiner was forced to read the patent, which is the first step toward allowance and could make the RCE process more successful.

    After dealing with multiple examiners on various applications, I believe that the intent of PTO is to extend pendency as long as possible.

    Running the appeal count to the stratosphere might be the only way to fix the PTO. My advice (I’m an inventor not a lawyer) is to never file an RCE and always appeal.

  158. Why is it not enough to say we’ll accept the estoppel and never assert the claims cover chicory?

    Read some case law, moran.

  159. As far as the average time to Notice of Appeal to Decision being 29 months, that is going to change drastically.

    Right now, there are 17,482 pending cases at the BPAI, and in the last 11 months, the BPAI decided 6,250 cases. Do the math, that is almost 31 months from the time of docketing to decision. You have to add in another 8 months from Notice of Appeal to docketing.

    Another interesting thing to consider is that the BPAI hasn’t had a month in years in which they have disposed of more cases than they got in. Currently, they’ve disposed of 6,250 this year, while getting 11,225 through 11 months of FY2010. It isn’t getting better anytime soon.

  160. The BPAI would get more decisions out if they followed their own precedent and simply reviewed the findings presented by the Examiner and the Appellant.

    Instead, the APJs (many of whom are former Examiners) want to perform a second examination of the application — presenting new findings of fact, new claim constructions, and new theories of anticipation/obviousness. While doing so, they are ignoring that they are presenting new grounds of rejection, and instead of remanding the rejection back to the Examiner, they are simply affirming.

    If the BPAI simply looked at the Examiner’s rejection, looked at the Appellant’s arguments, and then made a determination whether or not the Examiner erred, based upon the Examiner’s explicit analysis, they could probably be able to put out 50% more decisions. Instead, I’m seeing strained claims constructions and findings of fact that were never made by the Examiner in order to support rejecions.

    Although Kappos may have changed the mentality at the top levels of the USPTO, it will likely take years before the repudiation of the “reject, reject, reject” mentality will trickle down to the troops. Until then, the Examiner’s will keep pushing out terrible rejections, and Applicants will continue to appeal these rejections.

  161. Ned,

    Is it that difficult for you to admit that you are wrong?

    OK, let’s play your weasel game.

    I still think we need one more action and one more search before a final due to BRI issues.

    As far as what you say is an opinion, your opinion sucks.

    An examiner is entirely justified in not allowing a claim when he has not conducted a search regarding its subject matter.

    As far as your opinion is based on facts and understanding of LAW, boy, your understanding of law and use of facts are wrong. To equate the above with “Ping, BRI is the LAW, my boy” and then to turn tail as you did in the previous thread and as you are doing now is ludicrous. As far as what an examiner is justified to do, the courts have clearly spoken. You be wrong. I be right. Go ahead and say so – you’ll feel so much better.

    Hiding behind “‘I think’ — it is a matter of opinion” is rather effeminate of you, doncha think?

    Feel free to validate your opinion with case cite like any decent litigator. Likewise, feel free to stand and cling to your opinion with your pants down around your ankles. Either way, you are providing the chuckles big time.

    Skeptical – good question – it is hard to see without knowing more (like if the number of judges has changed appreciably between 2005 and 2009) what would account for the trend upward – How about it, big D, do ya have a graph of Number of Ex Parte Appeals Decided per group of judges that might tell us if the judges are getting more efficient (or just rubber stamping more)?

  162. “deciding more cases than ever…”

    Does this include kicking cases back to the Examiner to reopen prosecution?

  163. My fave:

    “ BRI — what I think this means in practice is that the examiners search and reject the first time without reading the specification… But this, IMHO, is exactly what they SHOULD do.”
    Posted by: Ned Heller | Jun 30, 2010 at 11:42 AM

    “I think it is vitally important that the examiner search and reject in the first action without having read the specification.”
    Posted by: Ned Heller | Jun 30, 2010 at 02:02 PM

    “the examiner needs to read the claims the way they are written without limiting them in any way to the specification.”
    Posted by: Ned Heller | Jun 30, 2010 at 02:39 PM

    “But during original ex parte, we really need the examiner to read the claims they way they are written without regard to the spec”
    Posted by: Ned Heller | Jul 01, 2010 at 11:40 AM

    “In order for it to work properly, the examiners really need to read the claims before they read the spec because BRI commands this.”
    Posted by: Ned Heller | Jul 01, 2010 at 11:51 AM

    All Ned could do was cuss at me. Even 6 wanted the blood bath to end. Funny thing, Ned, you never did esplain how your fantasy statements comport with the LAW, boy. In fact, Iza invite you to prove me wrong and back up one of your five errant statements with a solid case cite.

  164. One evening Ned’s wife is watching the evening news which is reporting a wrong way driver on the highway causing havoc. Concerned, since this is the route that Ned takes on his way home, his wife calls him on the cell phone.

    “Ned, you just must be careful on your way home, the news says there is one driver who is driving the wrong way and causing a horrible mess.”

    Ned replies, “One? The news is wrong, there are thousands”.

  165. And while you are at it, search the In re Morris case over at Patent Docs and Patent Hawk – your insane view is simply not to be found anywhere cepts at IMHO-Ned Law Land.

  166. Ned,

    When I ask you for a citation and I have to get it and that citation shows you wrong (even on your choice of case), how do you think that makes me feel?

    Here’s the citation from In re Morris, emphasis added:

    “[A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.

    In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)

    You take being wrong to a whole new level. Only in your fantasy world is the LAW of BRI applied without reading the specification, “boy“.

  167. Go back and figure again.

    Not what I asked Ned – “all over the board” is a weak excuse – cause you know I be right – those words “in light of the specification kind of stick in your throat, don’t they?

  168. Well ping, the Feds are all over the map on that one. Just look at In re Morris for example. The prior art used to reject the claims was the very prior art discussed in the background section and the invention was said to overcome its problems. The invention was called “integrally formed as a portion of the” casing, the preferred embodiment show that the casing was thinned near the motor attachment. The prior art was a sandwich structure where a rubber pad was sandwiched between a plate and the casing.

    Now, anyone would say that to be consistent with the spec., the interpretation should have been to cover the preferred embodiment rather than the prior art. But the holding sustained the PTO.

    Go figure.

  169. BRI requires the examiner to construe the claims broadly as they would be read by a person skilled in the art. The problem is, examiners neglect this crucial fact-finding step of determining what a person skilled in the art would understand of a term, especially given the disclosure of the specification which sets the context for the terms found in the claims. Thus we have the insane but common occurance of examiners going to general reference dictionaries to break apart and redefine into oblivion technical terms and phrases that would otherwise be perfectly clear to those skilled in the art.

  170. That variability is explained by the BPAI judge quota system. BPAI judge performance is primarily judged two times per year…do more work in Feburary and August and then less work in March and September.

    Damm – look at that variability – like two different data sets.

    Is it shocking to see the APL (being part examiner) gaming the system for “counts” to their quota system? – and these guys have semi-judiciary power and depend on the Office for their paychecks – anyone else see something wrong with this picture?

    Ned Ol boy – I aint saying BRI is not the LAW – I be saying that you got BRI wrong. Here’s a hint to focus on in your cite gatherin –

    …in light of the specification

    It be kinda hard to apply BRI per the LAW if ya don’t read teh specification, now aint it? At leasts thats what the courts keep sayin – now c’mon Cite-Master, get to work and show me the cites. Whatcha ya think the ratio of cites will be that tell ya what BRI is and include the part about the spec and the cites that omit the part of the spec? Hazard a guess boy?

  171. Ping, BRI is the LAW, my boy. It requires the examiner to construe claims broadly. The initial action generally has very little to do with the claimed invention because of this. It simply forces the applicant to clarify the claims. Thereafter, the examiner has to force an RCE in order to conduct a first search of the clarified claims.

    So, we get rising RCEs and appeals as a result. Is there any wonder at this?

  172. I still think… entirely justified in not allowing a claim when he has not conducted a search regarding its subject matter

    Ned – You still be wrong. Your task is to find at least fifteen citations expressly denying the gar bage viewpoint you stick to (don’t make me go find the other thread). You are to find citations ranging from the Supremes to Congress and yes, they all say that your view is baseless.

  173. The thing that gets me most about BRI is that if you argue in the prosecution that a claim limitation shouldn’t be read as broadly as the examiner is reading it, the patent holder (if ever there is one) will forever be bound by the argument. Yet the examiner will not accept it – no, the claim is still as broad as alleged. Why is it unacceptable to narrow a term by prosecution history estoppel during prosecution to gain allowance? Why should I have to modify “chocolate” to get around the examiner’s assertion that “chocolate” can be broadly read to include “chicory?” Why is it not enough to say we’ll accept the estoppel and never assert the claims cover chicory? These issues end up filling the appeal docket.

  174. More BPAI judges need to be hired, plain and simple.

    Applicants are entitled to have their appeals resolved quickly.

  175. What’s “BRI?”

    I’d be willing to do the experiment, but I bet we’d all be happier with two good Actions (probably with a pre-first-action phone call from the examiner, so I can work with the to make sure the examiner knows what the invention is, so the examiner doesn’t overlook the key claim language) instead of three sloppy ones.

    I’d agree with you that “an examiner is entirely justified in not allowing a claim when he has not conducted a search” — but where is the examiner’s justification for not searching, or searching the wrong thing because of overlooking the key claim language, and then forcing the cost onto my client?

  176. David, reading your tome gave me a laugh since I started at a time of one line rejections: T in view of C is all you would get.

    I still think we need one more action and one more search before a final due to BRI issues. An examiner is entirely justified in not allowing a claim when he has not conducted a search regarding its subject matter. The initial OA and response many times simply clarify what is being claimed.

    The rise of BRI has changed the essential nature of ex parte examination. We need to adjust to accommodate it.

  177. Cf:

    the jump in early 2009 as a one-time issue involving the bulk transfer of cases that had been previously delayed.

    with

    does not include the thousands of other applications where awaiting briefing.

    The “transparent” loving Obama administration has a pair of socks to fill:
    1 – when will the other shoe drop?
    2 – how big will that other shoe be?

    Just what was that “previous delay“? – oh yeah, the Dufas administration playing hide-the-ball with its illegal gamesmanship on the Claims and Continuations/Appeals Rules Fiasco.

    And let me translate the Boundy-master:

    Do your F’ n job!

    And to the whiners out there, ponder this – If you don’t have time to do the job right the first time, where will you find the time to do it right when it comes back to ya?

  178. There is an easy way out of all of the PTO’s backlog problems – enforce the law relating to premature final rejection. Make it clear that examiners don’t get their counts until they do their jobs: two good, solid, complete Office Actions.

    See my letter on the Appeals rule, at PDF pages 66-80 of /media/docs/2007/11/boundy.pdf

    for text that should be incorporated into the MPEP to clarify the definition of “appealable subject matter” and the defintion of “new ground of rejection,” to state the PTO and court precedent that defines the scope of these two terms. Non-ambiguity is required by law, both the Paperwork Reduction Act and several Executive Orders.

    Notably, the PTO has declined to respond to this comment on several occasions. The PTO broke the law by failing to reply to Notice and Comment comments.

    Also, this proposal would require examiners and examination management to do their jobs.

    Something required by law and that requires careful complete work by PTO employees – anyone willing to bet that this will happen before heat death of the universe?

  179. If you “do the math” on the numbers – numbers of appeals pending, numbers of APJs at the Board – there really is no way out of this without hiring significantly more APJs.

    One problem is that every case has to be decided individually – if the Board made more of its decisions precedential, so that applicants could cite cases with analgous fact patterns during prosecution, fewer appeals might be necessary. But, the Board is reluctant to do this becasue precedential decisions require more work.

  180. A sad testament indeed to the foolish, misguided, unfair, wrong-headed, and completely unnecessary attitudes and policies of the previous patent “leadership.”

    What can even the hard-working Mr. Kappos and his team do though to relieve this burden from backs of the judges … with the constrained budget he has to deal with?

    And shouldn’t filings have started to at least level off with the return to the more fair & balanced approach to examination?

  181. Ron,

    If you switch the axis on your Figure 1, and lighten the two edge data sets, you would have a Rorschach Test “tornado”.

    All you need is the “infamous” Office Allowance chart with the allowance drop to near 40%.

  182. No Surprise: “anyone made a neat graph of the appeals and rce chug fest against an inverted allowance rate? How much correlation can we expect?

    See Figures 1-3 in my article at
    link to bit.ly .

  183. Shocker – about the time when applicants started realizing that the reject-reject-reject mantra was becoming the reject-reject-reject-rce-reject-reject-rce mantra and decided that the appeals route, previously thought too costly, wasn’t so bad – guess what? appeals through the roof.

    I also recall the Office patting itself on the back for its near perfect “quality” while attempting to illegally shaft the applicants with claims and continuations rules and appeals rules…

    Gee has anyone made a neat graph of the appeals and rce chug fest against an inverted allowance rate? How much correlation can we expect?

    It’s been said many times by the pro-applicant voices here, when applicant’s know they be getting crap rejections, they keep on fighting. When a quality examination is done and a rejection is solid, the urge to challenge is greatly reduced.

    All this mountain of work is coming back to bite the lazy Office.

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