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Zak
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I agree with the holding of this case. In fact, I think it is becoming pretty established case law that enabling or showing possession requires more than filing a disclosure that makes something obvious. I do, however, wonder if Goeddel won the battle only to lose the war. I could see an examiner putting forth a fairly strong obviousness rejection based on Sugano’s Japanese Patent and the Knight article against Goeddel’s application. This observation, of course, is made without the detail knowledge of the case and invention held by Goeddel’s patent attorney. She/He may have a strong response prepared against such a rejection. It could also be that the goal of the interference was just to take the patent away from Sugano so that Genentech is free to practice the invention in the U.S.
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Whatupbitches - “We conclude that it was a matter of common sense to combine the Down patent with the prior art barbell locks in order to arrive at the invention claimed in the ’115 and ’426 patents…” The Court’s use of the term “common sense” is referencing the ultimate legal conclusion made by the Court after providing a detailed rationale based on factual findings supported by evidence identified and made of record in the proceedings below. “Common sense” is not being used as a surrogate for the required rationale or evidence supporting the findings of fact upon which it is based. Your confusion to the contrary only justifies my fear that examiners will take the term “common sense” out of context.
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Paul: Yes the SCOTUS repeatedly used the phrase “common sense.” They did so in discussing the teaching, suggestion, or motivation to combine elements from the prior art to make the claimed invention. Accordingly, a claimed invention may be rejected as the obvious application of common sense. Reaching this legal conclusion of common sense obviousness, as with any finding of obviousness, requires an articulated rationale supported by factual findings. My fear is that Examiners will take the reference to “common sense” out of context and use it in replace of an articulated rationale based on factual findings supported by evidence identified and make of record.
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I found the guidelines to be an informative review of recent cases regarding what is and is not obvious. I am troubled, however, by the fact that they do not detail how to make appropriate factual findings under In re Gartside, In re Lee and In re Zurko by identifying and making of record evidence supporting the required factual findings. I am also troubled by the fact that they do not detail how to support an obvious conclusion based on factual findings with an articulated rationale as required by In re Kahn, Ex parte Frye and Ex parte Quist. I fear the lack of this guidance and the Guidelines repeated reference to “common sense” will lead to an increase in obviousness rejections based only on conclusory statements.
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"Pay for play" also benefits small inventors. Issued patents can be leveraged to generate capital. For example, they can be used as collateral on a loan or to attract investors. As infusions of capital are generally needed at various stages in product development, the quicker a patent issues the easier it becomes to get the invention to market.
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Ping, Yes. It is important to remember that “substantially equivalent” under sec. 510(K) of the Food Drug and Cosmetic Act means something different than it does in patent law. For example, a new electrode configuration for a pace maker that allows for an even distribution of current across the heart or better lead attachment could be patentable because it is novel and nonobvious. It would, however, be substantially equivalent under 510(k) because it is still applying a voltage to the heart to prevent a cardiac episode as do existing pace makers.
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This could actually be a very good thing for the medical device industry in which I practice. Like pharmaceuticals, it is an industry regulated by the FDA and approval is required before a product can be sold. Depending on the device there are two regulatory pathways a company can take. If the device is “substantial equivalent” to an existing device (i.e. uses similar methods to elicit a similar therapeutic effect so safety and efficacy are not seriously doubted) then a short 510(k) approval route can be taken. Generally this route takes less than two years. If the product does something new or is a high risk device do to its nature then the longer PMA process has to be followed. This is similar to the process required for drug approval. If the invention is likely to go down the 510(k) approval pathway then paying for the fast-track examination would seem logical so that the patent issues close in time to when the device is introduced to market. If a long FDA approval process is most likely then the reduced fee delayed examination would appear to the best option. This would allow changes to be made to the claim scope and the filing of continuing applications to reflect alterations made to the device as a result of the outcome of clinical trials. I am curious if those practicing in other industries would find this “choose-your-own-adventure” approach helpful.
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Mooney, It is nice to know your disdain for others includes both patent attorneys and examiners. Trust me Mr. Mooney most of the examiners I deal are competent at their jobs. To suggest that an attorney merely has to “hack away” in their art unit to be successful does an extreme disservice to them. They deserve your respect, or at least professional courtesy.
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Zak is now following Dennis Crouch
May 27, 2010
IANAE, Sure. http://www.cafc.uscourts.gov/opinions/08-1594.pdf As recall from memory, and my memory may be mistaken on a case I read 8 months ago, the CAFC rejected the circular logic presented by the patentee.
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PharmaPatents, Regarding: Examiners in 1600 having no qualms rejecting a claim under 112 for lack of enablement because the field is so unpredictable and also rejecting the claims under 103 because the invention was obvious That basically reminds of the contradiction presented in the IN RE ‘318 PATENT INFRINGEMENT LITIGATION case decided by the CAFC last September. The Applicant argued before the USPTO that it was not obvious over the cited prior art and then argued before the court that it was enabled due to the cited prior art. If the applicant cannot have it both ways under §103 and §112 then why should an examiner?
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I am somewhat surprised by the above table. The standards for nonobviousness enumerated in KSR hinged on predictability. Traditionally, the mechanical arts have been considered the predictable arts while the biological and chemical arts have been considered unpredictable arts. Yet the grant rate for 1600 is lower than the grant rate for 3700. I primary prosecute medical devices patents classified under 3700 and have successfully overcome obviousness rejections by casting the invention as something unpredictable. This makes me wonder if the examiners in 1600 are not considering or disregarding the unpredictability of the invention or if the low allowance rate is because Applicants are claiming to broadly due to the unpredictable nature of their inventions to later abandon what fizzles out.
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Printing out electronically filed applications and other material before rescanning has lead to some problems in my practice. Believe it or not, some patent drawings filed in cases I have been prosecuting have become so distorted in the progress that I get drawing objections. I have also had prior art submitted electronically not considered by the Examiner because the test became illegible during the whole print and scan process.
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EG, I agree with you that being a good advocate requires ensuring that key factual evidence is present in expert opinions submitted to the court. But, I do not like to comment on the advocacy skills of other attorneys when blogging. So, I will keep my opinions on that matter to myself. I am more worried about you first observation that "courts are pulling the summary judgment trigger far more readily now than in the past." I am concerned that cases like this make that easier by setting precedent that lowers the summary judgment standard by placing previously uncalled for evidentiary burdens on the parties.
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Builidng on Just Vistiting's comment: I am not convinced that the failure of the plaintiff’s expert to annotate the circuit diagrams truly indicated that there was no genuine issue of material fact regarding whether the accused devices contained all the required elements of the claims. After all he did testify to their presence and based that testimony on the attached diagrams. So he basically said look these diagrams provided by the defendants show all the required elements. In my mind that indicates that there is a genuine issue of material fact that could be resolved by the jury. The failure to annotate the figures could easily be corrected during examination of the expert at trial. Undoubtedly to convince the jury the plaintiff’s expert would have to annotate the figures and explain how each element functions. So building the record during trial would also be necessary to provide substantial evidence to support a finding of infringement. It seems to me that the court is trying to put the onus on parties, or at least the plaintiff, to produce substantial evidence to survive summary judgment. In essence then this would change the standard from “no genuine issue of material fact” to “has offered no substantial evidence regarding a material fact.” It seems to me from how the district court had the plaintiff split the case into groups and focus on paradigm claims and paradigm devices that for some reason or another the court just wanted to get rid of the case. But then what do I know, I just prosecute patents and leave litigation to others.
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I am curious if anyone else noticed that the cases the Court relied upon to establish its holding that common sense must be articulated in the record to invalidate a patent under 103 were primarily cases regarding appeals from the USPTO. The standard of review for appeals from the USPTO is substantial evidence to support a prima facie showing. The procedural posture of this case, however, was an appeal from summary judgment were the standard of review of is de novo to determine if there are no genuine issues of material fact and the moving party is entitled to judgment as a matter law. The court failed to link a prima facie showing supported by substantial evidence with no genuine issues of material fact and entitled to judgment as a matter of law. Not that this detracts from my support of the holding. Nor am I saying that the difference between the standards is anything more than academic with no practical effect. I just notice that the Court completely ignored it and was curious if anyone had any thoughts on the matter.
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I like how the court responded to the effective amount limitation the patented holder attempted to read into the claims. Such limitations are common in pharmaceutical patents and seen in medical device patents. Basically, they dismissed the presence of such a limitation by noting that the claims “do not restrict the administration of the claimed amino acid and ketoacid composition to any specific dosage or amount” and “do not require any further measurement or determination of any result achieved by administering the claimed composition.” This really reminded me of the holding from Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008). I guess then that if one wants to claim an “effective amount” a specific dosage or a manner of measuring and determining the intended therapeutic result must be recited in the claims or at least enabled by the specification. Of course, determining a dose response curve is standard fare in drug development. So as long as you give the composition and claim an effective amount for something that has standard means of measuring (blood pressure, heart rate, etc.) a claimed effective amount should be enabled by the specification without undue experimentation. It is just novel metrics and possibly those without standard means of measuring that may create problems.
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This change is definitely a nudge in the wrong direction. Considering the long wait to get an application examined, we strive for efficient prosecution at my company. This means that we try very hard to get patents issued in just two office actions. So as Mr. Brooks and others in the past have suggested, it is the general practice at my company to do a prior art search and draft the claims accordingly, focusing on the invention and the market to be protected. Despite our diligence, the FOAMs we receive almost always cite irrelevant art that has been misapplied and ignore the art cited in the IDS. If possible, we try to work with the Examiner by helping the Examiner understand the invention and its related art with interviews after each office action. For reasons ranging from refusing to return phone calls to just being stubborn, we are not always successful. When we are successful, it is not uncommon for the Examiner to ask us to make an amendment to the claims to address something they are uncomfortable about. In the spirit of cooperation we do this with an RCE. A two month delay is not a big price to pay to stay in the Examiner’s good graces by letting them get an extra count for doing a trivial search that should turn up nothing. When we are unsuccessful with interviews we appeal. If applicable we start with a Request for a Pre-Appeal Brief Conference and are generally successful in overcoming the rejection. If we do not prevail at the Pre-Appeal Brief Conference or it is inapplicable we proceed with an appeal brief. Basically, we only file RCEs when the Examiner is being cooperative. The delay resulting from placing RCE applications in the same queue as divisional and continuation applications, however, will nudge use away from filing RCEs when dealing with cooperative Examiners and towards the appeal process. After all, my CEO wants his patents and the sales guys want a protected market; neither wants delays.
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As a rather new patent attorney, I have only practiced under the Dudas regime. Despite what some would call the totalitarian nature of the PTO during that time, I have discovered that efficient and quality prosecution occurs when the examiner is willing to work with me. I have managed in the last year and half to get a first office action allowance and an application allowed in two office actions. In both instances I had very professional examiners that worked with me to resolve issue of patentability. I have also had other cases in which the examiner was nothing more than a go between me and the SPE. This has made conversation with the examiner futile. Evan if the examiner is willing to work with me, any agreement reached is overruled by the SPE. The result is a very difficult and prolonged prosecution. The only way I have managed to get applications allowed under these circumstances is to directly interact with the SPE. Though conversations with the SPE are not always pleasant, they are productive. I have also encountered examiners that are not willing to work with me, offer any credible justifications for their rejections, and are hostile to the idea of spending any more time on an application than required to draft rejections. The applications handle by this set of examiners I find myself appealing. I find these appeals troubling as they could have been avoided if the examiner displayed professionalism in their work product and interactions with me. As professionalism on the part of the attorney and examiner, in my experiences, increases prosecution quality and efficiency, perhaps Kappos could bring about the changes he appears to want by holding examiners to the standards of professionalism attorneys are held to. If an attorney displays unprofessional conduct or presents arguments without merit he/she can be sanctioned and eventual lose his/her license to practice. It may be beneficial to implement disciplinary measures for the unprofessional conduct and inappropriate rejections of examiners.
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As with many of the posters above, it is my company's standard practice to do a pre-filing search and to use the results of that search to adjust the claims accordingly. However, we find that examiners almost always disregard the references we cite and cite against the application irrelevant prior art. Prosecution then becomes dominated by rejections based on the examiner cited irrelevant art. We will not stop doing pre-filing searches as they do improve patent quality, but it has been the experience of my company that they do not lead to a better quality of prosecution.
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Is there another person out there who shares the same curious spelling of my name or is someone trying to infringe upon my persona?
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Anon E. Moose 707.07(g) States: “Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references.” Notice that each substantive clause is modified by the word “should” not the words “most” or “is required to.” This means that it is best if the examiner would, but does not have to, avoid piecemeal examination and that it is best if the examiner would, but does not have to, reject each claim on all valid grounds available. Is it not funny that the MPEP gives Examiners suggestion and attorneys / agents requirements regarding quality.
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Just out of curiosity what is that "something else" you propose? I personally would like to see examiners receive more training and mentoring and be held accountable in a meaningful way for bad rejections and not presenting all the rejections they could bring at once. The other patent attorney at my company proposes limiting the number of office actions an examiner can make in a case that are credited to his/her productivity counnt. When that magic limit is reached the examiner would be free to continue examining the case but would have to do so on his/her own time. Here is hoping that quality begins to improve with the changing of the guard.
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Curious, I have also come across the reneging examiner. When questioned about what happen to the agreement we reached, they blamed it on their supervisor. So you are probably right to blame the system. I have also found it difficult to get the examiner to be willing to work with me. My phone calls to them go unanswered and messages left go unreturned. When I do get through or a phone call returned, I more often than not get arguments and explanations defending their position that are not tenable under the law. On those increasing rare instances where I have gotten through to an examiner willing to work with me, the overall prosecution experience was positive and timely resulted in a quality patent. I just keep hoping that the trend established over the last few years will reverse with the upcoming changing of the guard.
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LE, Rest assured that I do not think every examiner is like 6, if indeed he really is an examiner. I have had many positive experiences with examiners. On the whole, I have found that when an attorney / agent and examiner are willing to work together, and the attorney has a client with reasonable expectations, examination can produce quality patents.
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