35 thoughts on “Elevate your Patent Prosecution

  1. 7

    Dennis, from what I’ve seen of prosecution, which is a lot, is that the biggest issues right now are: (1) How to avoid the 36xx AUs (at any costs); (2) How to fight 101 rejections if you are dumped into the hxll of a 36xx AU; and, (3) How to write and prosecute a patent to withstand an IPR.

    You might want to think about this.

  2. 6

    How long before Utah sets up their own bounty system for nabbing those nasty defenders of women’s health?

    1. 6.1

      “The Poopy Diaper” redux.

    2. 6.2

      MM, on a scale of 1 – FCKING BASED, how based would you say that establishing a bounty hunter system on clinics is?

  3. 5

    Most of these topics don’t relate to prosecution, especially the valuation sessions. Couldn’t you find more prosecution topics especially 101 and AI topics. And only 1 session on design patents. Geez

    1. 5.1


    2. 5.2


      (and that’s being generous)

      1. 5.2.1

        (That should have been put in reply to post 6)

  4. 4

    Regarding the need to, “ELEVATE YOUR PATENT PROSECUTION” (title of the above blog), I suggest reading a couple of my articles. Each of my articles is based on my reading of about 50 PTAB opinions and the associated histories, and the relevant case law. I believe that I am the only person who makes extensive use of PTAB opinions and file histories for writing articles on patent law. So far, I have published twenty law review articles, most being over 100 pages long. For one of my articles, I received the annual Rossman Award for publishing the best law review article of the year (award presented at the USPTO). Here are some of my most recent articles (feel free to contact me at, tom5brody@outlook.com):

    (1) Tom Brody (2018) Rebutting §102-rejections under Net MoneyIN v.VeriSign, as illustrated by opinions from the Patent Trial and Appeal Board (PTAB), 100 J. PAT. & TRADEMARK OFF. SOC’Y. 388-570.
    (2) Tom Brody (2018) Categories of Anti-Obviousness Case Law: (1) Laundry Lists; (2) Redundant Advantages; and (3) Advantage Not Needed and Not Relevant, J. MARSHALL REV. INTELL. PROP. L. 17:395.
    (3) Tom Brody (2017) Rebutting obviousness rejections by way of anti-obviousness case law, 99 J. PAT. & TRADEMARK OFF. SOC’Y. 1-57.
    (4) Tom Brody (2016) Claims with ranges, the result-effective variable, and In re Applied Materials, 98 J. PAT. & TRADEMARK OFF. SOC’Y. 618.
    (5) Tom Brody (2014) Rebutting obviousness rejections by disclosing impermissible hindsight, 96 J. PAT. & TRADEMARK OFF. SOC’Y. 427.
    (6) Tom Brody (2014) Functional elements in patent claims, as construed by the Board of Patent Appeals And Interferences, 13 J. MARSHALL REV. INTELL. PROP. LAW. 251.

    1. 4.1

      Nice marketing pitch but you’re pitching to the wrong market.

      1. 4.1.1

        The comment by Moderate Centrist Independent is TOTALLY DEVOID OF REASON AND SENSE. It might reasonably be suggested that the person identifying himself as, “Moderate Centrist Independent” is a scatter-brained, impulsive, incompetent, and mentally-deranged irrational weirdo.

    2. 4.2

      Interesting. I’ll take a look.

    3. 4.3

      What do you think Tom is the best way to search for board decisions?

      I have a few cases right now that I am going to appeal where the only outstanding issue is 101. I’d really like to see a few wins where the only outstanding issue is 101.

      What is the best way to search for these board decisions?

      1. 4.3.1

        Dear Night Rider, thanks for your question. One year ago, I sent a complaint to the USPTO, and I complained that they damaged the device for searching PTAB opinions. Shown below is the email letter I sent them.

        To PTABE2E Administrator and Mr. Jamie Holcombe, MA, MS
        From Tom Brody, Ph.D., Reg. No. 46,433
        August 26, 2020

        This is to respectfully submit some facts regarding recently emerging issues with the PTO’s software.

        Some time in mid-August 2020, the searching device for finding PTAB FINAL DECISIONS was damaged. Four types of damage occurred, as disclosed below. I have two years of work experience in doing software quality control work. I acquired this experience at Elan Pharmaceuticals in South San Francisco, CA and at Molecular Dynamics (now, Illumina, Inc.) in Sunnyvale, CA. It took me a few hours of quality control work, in order to document the fact that your PTAB FINAL DECISIONS SEARCHING DEVICE has been damaged in four ways. This damage has had the immediate consequence of impairing my ability to prosecute patent applications for my clients. This damage has also had the immediate consequence of blocking my ability to write and publish law review articles (my published articles on patent law are listed below). The attachment to this email transmission includes the entire text of this letter, and also includes screen shots of my work product, where this work product demonstrates that your PTAB SEARCHING DEVICE is no longer able to perform the same types of searches that were possible last month, and that were also possible during the past dozen years or more.

        MY PAST EXPERIENCE WITH PTAB SEARCHING. I am the author of seventeen articles on patent law. All of my more recent articles are from 80 to 120 pages long. This is from my reading of over 4,000 PTAB opinions and associated file histories during the past dozen years. I received the annual ROSSMAN AWARD at a ceremony at the Patent Office, for the best law review article of the year. Two of my articles were cited as “AUTHORITY” in arguments submitted to the U.S. Supreme Court (Brief of Amicus Curiae for Nautilus v. Biosig) and Writ of Certiorari for Nidec Motor v. Ocean Motor). Also, two of my law review articles were cited as “AUTHORITY” by two opinions from the District Court in Illinois. This demonstrates that my law review articles have been useful to the legal profession, where the implication is that the materialization of the presently documented damage will impair the ability of the legal profession to obtain reliable articles on patent prosecution.

        NEED FOR READING PTAB OPINIONS AND ASSOCIATED FILE HISTORY. The interpretation of Federal Circuit case law by PTAB Administrative Judges in the PTAB are more reliable than interpretations from any law firm partner. Also, guidance from PTAB opinions is much more accessible than guidance from any law firm partner. As a result of my 17 publications on patent law, I have acquired an enhanced ability to win allowances for my clients. Unfortunately, because the FINAL DECISIONS searching device has been damaged, my ability to adequately represent the patenting needs of my clients has been threatened. And so, this is to respectfully request that your searching device be returned to the way it was prior to the damage.

        FIRST TYPE OF DAMAGE. A month ago, I performed a search of the FINAL DECISIONS using this searching strategy. This strategy involves simultaneous use of two query terms: Kotzab AND single. I am now writing a law review article on In re Kotzab and single-reference obviousness rejections. The search that I did last month resulted in the following seventeen (17) opinions, all of which are in my manuscript.

        Ex parte Corveleyn (Ser. No. 10/009,353. Appeal No. 2005-2679), Ex parte Campos (Ser. No. 10/789,861. Appeal No. 2008-5077),

        Ex parte Duck (Ser. No. 10/410,993, Appeal No. 2007-0720), Ex parte Novikov (Ser. No. 10/199,407. Appeal No. 2008-5149), Ex parte Kabra (Ser. No. 10/610,090. Appeal No. 2010-005035),

        Ex parte Knisley (Ser. No. 14/352,815, Appeal No. 2018-003693), Ex parte Laser (Ser. No. 13/323,160. Appeal No. 2015-003187), Ex parte Leidy (Ser. No. 10/445,707. Appeal No. 2006-0465),

        Ex parte Mattheisen (Ser. No. 13/773,937, Appeal No. 2016-003367), Ex parte Novikov (Ser. No. 10/199,407, Appeal No. 2008-5149), Ex parte Patel (Ser. No. 10/632,970, Appeal No. 2009-002841),

        Ex parte Reese (Ser. No. 13/826,394, Appeal No. 2015-008295), Ex parte Stebnicki (Ser. No. 11/005,250. Appeal No. 2006-2990), Ex parte Sullivan (Ser. No. 10/077,148. Appeal No. 2005-1116),

        Ex parte Venkata (Ser. No. 09/875,787. Appeal No. 2005-0482), Ex parte Warecki (Ser. No. 10/340,772. Appeal No. 2005-1411), Ex parte Woodward (Ser. No. 10/136,240. Appeal No. 2008-4070).

        Unfortunately, after the FINAL DECISIONS searching device was damaged, repeating the same search (query terms, Kotzab AND single) results in only two of the seventeen (17) opinions, and these are Ex parte Duck and Ex parte Stebnicki. Shown below are screen shots that I acquired on the damaged version of your FINAL DECISIONS searching device. As you can see, none of the decisions that I acquired last month appear in the screen shots, except for Ex parte Duck and Ex parte Stebnicki.

        SECOND TYPE OF DAMAGE. This is about the above seventeen (17) opinions. I separately typed the name of the first inventor on the damaged FINAL DECISIONS searching tool. As it turned out, only two of these 17 opinions could be found, and these were Ex parte Duck and Ex parte Stebnicki. But the other fifteen (15) opinions were destroyed, and they could not be acquired by typing the name of the first inventor.

        THIRD TYPE OF DAMAGE. This is also about the above seventeen (17) opinions. I separately typed the serial number in the APPLICATION # dialogue box, and I left out the slash mark and I left out the comma. This is a special dialogue box for doing your search with one, particular Serial Number. The only opinions that I was able to obtain, using this method, were Ex parte Duck and Ex parte Stebnicki. But the other fifteen (15) opinions were destroyed, and they could not be acquired by typing the serial number.

        FOURTH TYPE OF DAMAGE. For the past fifteen years, I wrote my law review articles in the following way. I typed a query term, such as, “functional,” and then pushed the search button. The result was a few hundred PTAB cases, and then I printed them all out. Using this technique, the time spent in searching was only THIRTY SECONDS TOTAL. After performing this 30 second search, I then printed out every opinion, one by one. But this method of legal research is impossible with your DAMAGED searching tool. For example, what I just did is type, “functional” as my query term. The result was 5,535 PTAB opinions that contain the word, “functional.” I opened the first opinion in this long list, and then I closed the opinion. My procedure during the past decade was to move forward through this list of PTAB opinions of interest, and to print them out, one by one. But the DAMAGED searching tool does not allow this, because after looking at the opinion of interest, my goal is to look at the next opinion of interest in the list of 5,535 PTAB opinions. In pursuing this goal, what occurs is that my search results using the word, “functional” have vanished. The DAMAGED searching tool makes it necessary for my to repeate my search hundreds of times, over and over and over, in order to acquired the PTAB opinions of interest. In other words, for a typical law review article I print out 300 PTAB opinions, and in the past this required only THIRTY SECONDS of searching. But the DAMAGED searching tool requires me to perform the same search hundreds of times, over and over, and as a result, I need to spend A FEW HOURS instead of only THIRTY SECONDS, doing my computer searches.

        This is to respectfully plead that the searching device be returned to what it was before August 2020. Best regards, Tom Brody, Ph.D., Reg. No. 46,433, Alameda, California, 510-864-1996


          Clarity and an “open sunshine” approach is decidedly NOT what the ‘behind the scenes’ apparatchik of the ‘lifer’ bureaucrats of the Patent Office.


          Thanks Tom Brody! Thanks for your work too.


            I second Night Tom. Superb — and very important — work.

      2. 4.3.2

        Oops, sorry. In my reply to you from earlier today, I called you, “Night Rider.” But I should have called you, “Night Writer.” – – – Tom


          Should they reply to you, you might want to also ask them to make PTAB ex parte appeal decisions searchable by Examiner.

      3. 4.3.3

        “I have a few cases right now that I am going to appeal where the only outstanding issue is 101.”

        I feel your pain Night.

        And we are far, far from alone.

    4. 4.4


      You may want to reach out to the authors of this piece:

      link to ipwatchdog.com

      as they seem to be painting the opposite picture (who knows, they may have a contact at the Office for you).

    5. 4.5

      Thanks Tom — appreciate this.

  5. 3

    Would it be hard for them to have had some diversity here? This is a real shame to see that, in 2021, they have a few token white females, and no minorities.

    1. 3.1

      Yay “intersectionality”

    2. 3.2

      “ Would it be hard for them to have had some diversity here?”

      You’ve got Ron Katznelson representing the lizard species. What more do you want?

      Seriously, though, that is some pasty stuff from 1980. But this is the patent bar we’re talking about. Salt Lake City! The drinking is good there as long as you don’t have more than one MoMo in your group.

    3. 3.3

      “token” white females

      Really? So, given the relatively small percentage of such within the IP profession, white females have now become token?


      The real shame is that you would believe so.

    4. 3.4

      Could you list a few people of “diversity” that you believe are more qualified than the panelists?

      I can think of one black male that I would like on the panel. He specializing in IPRs and has a ton of advice for how to prosecute in preparation for IPRs. He gave a PLI seminar a few years ago. I’d like to see this again.

      I do think judging people by the color of their skin is wrong, but you apparently think this is a good thing.

      1. 3.4.1

        “Could you list a few people of “diversity” that you believe are more qualified than the panelists?”

        It’s not about being more qualified Night, it’s about be a socially inclusive group so as to achieve True Equity (TM).

        “but you apparently think this is a good thing.”

        Not “good” bro, “the best”/”the only virtuous thing”.



          What exactly do you think is meant by “True Equity (TM)“…?

          As we both already know, it is NOT to achieve a state of ISM-lessness.


            “What exactly do you think is meant by “True Equity (TM)“…?”

            I wrote a post responding, must have got eaten. We will address it at at a later time.

  6. 2

    Re: “1.4. Dan Tanner (Tanner IP PLLC): The Ethics of Educating Clients about Patent Vulnerabilities – a Litigator’s Perspective.” That sounds interesting – curious how that will tie into the course subject of patent application prosecution?

  7. 1

    Would it be inappropriate to refer to John White as “patent daddy?”

    1. 1.1

      We’d be better off without comments like this.

      1. 1.1.1

        How so?

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