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.
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.
Although the BPAI is deciding more cases than ever, inventory continues to rise because more appeals are being filed than ever.
“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.
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.
change in thrust….
“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.
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”.
“No, your burden shifting again”
“your” making the examiner lol more, so I guess you’re even.
“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.
“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.
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.
“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?
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.
“Maybe, maybe not. Column 34 describes a different embodiment.”
Then IT IS A NEW GROUND OF REJECTION!
“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.
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.
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.
“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.
“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.
“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.
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.
“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.
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?
She’s back…
LOL. I can smell that cherry pie a mile away.
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…
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.
“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.
“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?!?
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.
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).
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.
”
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).
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.
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.
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.
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”.
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…
” (district court improperly distilled claims down to a one word solution to a problem).” ummmm like “Hedging”?
“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.
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?
“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.
“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.
“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?
“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.
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.
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?
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?
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.
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.
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.
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
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.
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,
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.
“ 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.
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.
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.
Iza think Les was waiting for that question Maxie.
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).
“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?
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.
“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.
“it’s the only way he’ll learn.”
Somebody’s got awful high expectations.
I don’t want to talk down to him….and it’s the only way he’ll learn.
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?
“”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.
6,
Your taunts, where your position is so extreme and your rationale so empty, are such obvious baits.
“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.
“(like the twin burdens of presentation and persuasion”
You always get a presentation, and the examiner always persuades himself. What’s your issue?
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.
“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.
“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.
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.
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.
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.
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.
“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.
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?
I think reading “for” as intended use is the broadest reasonable interpretation.
Of course it is.
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.
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.
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!
6:^that was ianae les.
A rose by any other name….
“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.