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Would it put even more bees in your bonnet if I told you I signed the action myself? Oh noes! And yes, conclusion as in the normal sense of the word. I concluded it was a "finding of fact" in the legal sense. Re: the would vs could, if it was "would" it would have been an inherency argument. It wasn't, so it was an obviousness argument. Re: the CRM vs. computer, the entire point of contention (which Dyk is discussing) is that only the preamble of these claims have anything to do with CRM. The entire body of the claim is "a computer processor executing these steps:" and reciting a method. So would in re Venner be applicable to such a CRM claim? I don't see why not. And the human being cite was slightly facetious. If you're going to make a completely bogus judicial decision/opinion about CRMs, why not make one about types of prior art applicable to anticipating mental methods? Make a ruling along the lines "The structure of a human being can inherently perform the claimed functionality without any modification whatsoever". Something similar to In re Schreiber. But make the decision so it can't be also applied to cite generic computers against any programmable functionality.
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I just sent out a Final on a case with identical circumstances. Method claim: 1. Storing some settings for an email. 2. Detecting the settings were overriden. 3. Storing the overridden settings. The CRM claim explicitly recited the steps being performed by a computing device processor. I did a 101 on the Method but not the CRM. 103 on both the method and CRM. The 103 was interesting, because the art I had taught storing settings, overriding settings, and then presenting a review screen to the user prior to transmitting. I concluded the user could detect the settings in the review phase. Which is fine for obviating the method, but how would that fly for the CRM which said a device was doing it? I pulled in In re Venner and said replacing a mental activity with a computer is obvious. That's the route that Dyk should have went, IMO. Cite a human-being as 102b anticipatory, saying they are capable of performing the functionality of the method. Then 103'd the CRM by pulling in In Re Venner saying automating mental tasks is obvious.
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102e is pointless. All it is doing is codifying that a provisional or non-provisional application document suffices as proof for 102a "known by others". You're rejected under 102a for it being known by others, here's my proof, bam slam down the provisional. You could make a "what if inventors are foreign, not in this country, lalalala, not 102a" argument. Which brings about a nice question that I have. What does "in this country" actually mean. Is a foreign national who invented the invention in a foreign country, then walks into the US prior to the invention thereof by applicant, a qualifying prior art under 102a? If so, then I'd argue it is inherent that a person must know the invention within this country in order to file it with the USPTO, (whether via internetz or in person).
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I'm currently on pg43 of an Examiner's Answer, which responds to an Appeal brief with a defect I'm ignoring, so I'm getting a kick. Why yes, it is a 2 and my life would be easier by sending out the notice. I honestly would have guessed the rate to be more around 60-70%, based on what I've seen from my docket.
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Another Examiner: "...a new-ish examiner, most of those counts come from new cases (only the rare abandonment or allowance and no RCEs yet). This is hard enough, but add 3-4 amended cases (no counts and negative workflow points if I don't finish them) and the occasional after-final action and it gets harder." There's a 6 month period, theoretically between month 8 and month 14 after your first ever FAOM, where you are not getting disposals but are doing full pipeline work. Suck it up and work through it like every other examiner. I think the PTO should move towards JPO office action styles. Short and sweet and burden on the applicant.
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As an aside, within the past biweek I've done 101s in four cases that fall into the "is tied to a particular machine but does not impose a meaningful limit or does not involve more than insignificant extra-solution activity". Each case had claims fall into the 101s that did not contain the words "method" or "process" in their preambles. Hammertime for hogwash.
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"Also interesting is the chart (p. 8) that shows the average mix of FAOMs for the examining corps is 73% regular FAOMs, 20.3% 1st RCE FAOMs, and 6.8% 2nd or later RCE FAOMs. So as far as the RCE churning phenomenon, this suggests that 73% of cases don't go to RCE, 27% of them do. That doesn't really sound like the "RCE gravy train" is that widespread of a problem." Typical case of the people-in-charge with no clue how to reason why stats are what they are(No offense, Kappos). If EXAMINER_TENURE lessthan 2yrs, then 100% of counts are from regular FAOM. If EXAMINER_TENURE greatethan 2yrs, then 0%-25% of counts are from regular FAOM. Because of the recent hiring binge, the new examiners are grossly misconstruing the % of regular FAOMs. Prior to last month, I hadn't done a regular FAOM in about 2 years. I predict this system will shift examiner's concentration to overall workflow and increase average pendency. Continual RCEs won't be worth the examiner's time, so they won't even bother looking at them. SPEs will waive workflow points or just ignore it. What they should do is for every FY take every AUs gs12s and calculate averages across them. Then, for EACH AU, use those numbers to dynamically determine hrs/BD, what counts for what, etc, for the next FY. Or do the grouping of gs12s based on classes examined, for those with split dockets.
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Broje: You totally ignored the 2nd part of challenge. My point is that you can re-write claims to be statutory under Bilski AND still catch all the infringers you could possibly catch with it written otherwise, while avoiding mind-thought infringers.
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"Eventually, someone was going to throw out that hackneyed argument. The problem with your scenario is that nobody can prove infringement -- unless, of course, the person allegedly performing the claimed method admitted that they were performing it, which is an unlikely scenario." On the flip side of the coin, the only time you could prove infringement would be if the infringer performed a method covered by a claim that wouldn't be rejected under the current Bilski Rejection Enforcement Criterion. Touche. I challenge you to conjure up one example of a claim that: a) Doesn't pass the current Bilski, would pass the prior 101 standards, and that you could prove infringement for a certain infringing X; and b) Does not have an alternate claim construction that i) passes the current Bilski; and ii) covers the same certain infringing X.
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Are you being sarcastic? I don't care that it'd be near impossible to enforce that type of infringment. It's the principle that you could legally exclude anyone in the US from thinking certain thoughts. It's asinine.
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Here's why everyone should love the current Bilski decision: Potential infringement. Assume the current Bilski decision doesn't exist. This would allow people to get a patent that claims something that could be interpreted as being performed completely mentally, physically, verbally, etc, by a human being. So by just sitting around, thinking, and talking to my friends, I could infringe your patent. By thinking, I could infringe your patent. Me, thinking to myself, could infringe your patent. That would be very, very bad.
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Given that the Examining Corps is made up of engineers, no matter what system you "rate" us with, we will figure out how to optimize the crap out of it.
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"Tafas v. Dudas case appear is be suspended until Kappos is nominated" Until he's nominated or until he's confirmed? I, for one, welcome our new government overlords. Wait, what?
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"questioning whether this newly available prior art has been a factor in the dropping allowance rate". Um, yes. It has been a factor. So have advancements in search engines. So have advancements in information becoming widely available online. To what degree have PGPUBs been a factor? Tough one. As an examiner, I'm gonna go with "significantly". Here's why: Most "good" prior art for inventions are found within a time threshold +-X filing date of the filing date of your application. Similar advancements in technology generally occur around the same time. In fact, interference searches used to be done this way prior to PGPUBs. You'd look at applications filed say... +-6 months to your application's filing. PGPUBs allow these similar inventions within this +- time threshold to be EASILY available to examiners within the prosecution pendency time frame of the applications they are examining. I'm not saying that prior to PGPUBs the similar applications weren't available during the pendency, or that it's even a issue for all applications. But for a significant portion of applications, it's a HUGE help to have inventions within that +- time frame readily available from the beginning.
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breadcumbs: "How is hindsight reconstruction generally proper? I am not asking about the ends, I am asking about the means." I think we're interpreting "hindsight reconstruction" to mean different things. In retrospect, my method for handling 112s is not at all hindsight reconstruction.
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Yep, but is generally proper. It's usually a broadening of the ambiguous limitation to a point just broad enough that the reference still reads, but narrower than the BRI. In essence, I'm doing the applicant a favor by a)hinting at similar definite interpretations found in the analogous art (ie, an interpretation consistent with one of ordinary skill), and b) providing them with evidence on how the term is definitely construed in the art. I could, alternatively, just use the BRI, but that wouldn't provide any insight to applicant on how to fix the issue and encompasses far more available art. In such a case, the applicant can sometimes successfully argue that "the phrase is definite to one of ordinary skill in the art, as evidenced by the art cited against me". And, in those cases, if attorneys call to resolve the issue, I will tell them to write this argument in their response and I will have to find it persuasive. Of course, only do that if you want the interpretation to be consistent with that of the prior art (ie, this ambiguous limitation isn't your novelty). If it is the novelty, you'll want to pull a better wording from your spec in an attempt to both resolve the 112 and overcome the prior art. Hope that makes sense.
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BillyJames: "Buszard is a great example, where the Examiner decided that "flexible" means "rigid." I've run into "essentially straight" means "wildly curved" and "close to zero" means "any number at all." Has anyone had success arguing against against this? That a PHOSITA understands the words "substantially" or "essentially" or "about"?" Here's how I do it. I identify the wiggle areas (let's say wiggle1 and wiggle2) of the claim in my initial claim analysis. I write up a 112 2nd, explaining how wiggle1 and wiggle2 are indefinite and that I'm going to interpret them as [leave blank space in my OA]. I then search and find art for the "novelty". Once I've found decent art, I determine how wiggle1 and wiggle2 need to be rewritten in order for my reference to map correctly. I then go back and fill in the blank space in my OA, conveniently interpreting so my reference perfectly maps.
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MM: "There are prosecution histories at PTO which include descriptions, less than a paragraph in length, of PowerPoint "presentations" to an Examiner, where multiple attorneys, inventors and experts were present. God knows what went on." If I was a prosecuting attorney, I'd profile the examiner prior to the interview. I do it with attorneys prior to interviews (nice pic on your firms websites, btw). You're an attorney with a mechE degree arguing a compE case? Yeah, I'm gonna ramble on with non-related technical terms (focus on technical rather than legal) to confuse you. Let's see... Thousands of brand new examiners just hired. All are engineers (80%+ male) and most are straight out of college (21-30yrs old). I'd bring two amazingly hot 25yr old female law students with me in mini skirts. Then I might be interested in a 7 hour bamboozlement.
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sad examiner: "Please cite to me where in the MPEP you're supposed to be scamming inventors by calling their attorneys needlessly to run up their legal fees. And for what, so that you can waste some time not examining?" Cool straw man, bro. First off, let me address your sound characterizations with a cite of the MPEP. MPEP 707.07(j)II and MPEP 713.01III. If there is allowable subject matter in the spec, I will call. If the attorney is stubborn or the claims need to overcome multiple, significant issues (ie, looong interviews), I may plan that over several phone interviews. Perfectly reasonable. As for what I gain from "shooting the breeze" with attorneys... It's called social networking, you do it because it's fun and makes the job much more enjoyable, especially if you keep seeing the same attorneys over and over (and you will, if you work here long enough). If I ever want to leave the PTO, I have guys I can turn to. Plus, attorneys can be surprisingly cool when we're both not on the record. I semi-frequently chat chit with some of Oblon's boys at Starbucks, the metro ride home, or CCR (haha, jk). You should try it sometime. Maybe you wouldn't be so saaaad. :(
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Another examiner: "An honest admission of blatantly unethical behavior in purposely attempting to run up clients legal bills." I highly suggest you read MPEP 713.01. Not only is my behavior apparently "blatantly unethical", it's also required by the MPEP under quite a few circumstances. And my objective isn't to filibust the client, I merely wish financial success upon my counterparts. Otherwise I don't have a job. And remember kids, if it's on the Internet, it's gotta be true.
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I'm confused. Because applicant didn't write claims that complied with 101, 112 1st, 112 2nd, and 102/103, I'm at fault for prolonging? Also, I don't allow any applications, so you need to change "prolonging the patent-granting process" to "treating the applicant to a shortened patent-application-abandonment process".
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Ron Katznelson: Your paper/presentation is flashy whargarbbl in quite a few aspects. You seem to be attempting to prove some preconceived conclusions. I'll point out just one: Pg 15, titled "The growth of improper/premature final rejections also results in unprecedented growth in appeals". Firstly, your graph shows (#Applications with appeal briefs + pre-appeal confs) against (#Applications reaching the BPAI) over time. I'm not really sure how either of which logically implies a) anything to do with final rejections, or b) that a supposed final rejections was improper. In other words, your title is slightly misleading as the data represents itself, and not illogical conclusions. Also, you may want to include a (#applications with first FAOM sent out) over time, just to ensure the percentage of total examined applications being appealed isn't the same, because, say the (#applications with first FAOM sent out) skyrocketed due to, oh I don't know, the USPTO just hiring thousands of new examiners. Secondly, the statistic that you're asserting represents (#applications sent to the BPAI), is subtitled (#applications REACHING the BPAI). These are two entirely different things. I'm not sure which is the correct stat, because I don't have access to your sources, and the one you do link is the generic BPAI website. Here's why these two stats are seriously misleading/different: (#applications sent to the BPAI) are those entering into the BPAI queue. (#applications REACHING the BPAI) are those extracted from the queue and handled by the BPAI. Because the BPAI has a huge pendency issue for their queue, the (#applications REACHING the BPAI) is much less than (#applications sent to the BPAI). Just a couple thoughts you should consider when crafting the data to fit your conclusions.
Toggle Commented Jul 21, 2009 on Patent Backlog at Patent Law Blog (Patently-O)
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Meaningless data without distinguishing which are examiner-initiated and which aren't. I guarantee that 95% with examiner-initiated result in allowance. I do, however, love calling up attorneys and shooting the breeze. Works out for both of us, I get other time and you get to bill extravagantly. The best is when you guys want to interview with a case having 101, 112 1st, 112 2nd, and prior art issues. I'll purposely try to separate that into 4-5 different phone interviews due to "time constraints", even though they take only a few minutes. I'm hoping you guys bill per interview for those or have a minimum bill time increment. One attorney got kinda angry at me for doing it once, I don't think he fully appreciated what I was doing for him. :(
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My average length of rejection for an independent claim is 3-4 pages. It's because of a) the relatively long length of independent claims; and b) it's more reasonable for me to reject it with 4 references I can easily find in 10 minutes than with 2 references it would take me 6 hours to find. So you end up with... A teaches 1; A doesn't teach 2, 3 ,4, 5, 6, 7, 8; B teaches 2, 3; A/B doesn't teach 4, 5, 6, 7, 8; C teaches 4, 5; A/B/C doesn't teach 6, 7, 8; D teaches 6, 7, 8; And a thorough paragraph of obviousness rationale inserted therebetween for each additional ref. Whereas the same rejection with 2 refs would a quarter the length.
Toggle Commented Jul 14, 2009 on Office Actions at Patent Law Blog (Patently-O)
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RKS: "Can anyone make sense of the argument against claim 19 on page 10 of the action?" The concern comes with the use of the terms "and" and "or". If you disclose "returning A or B in response to a single query", you do not inherently provide support for "returning both A and B in response to a single query". At least, that's what I think the argument is.
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