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December 5, 2008

Dead Man's Hand

Lame duck USPTO lawyer James Toupin did his best to sew a silk purse from a sow's ear in oral arguments at the CAFC today, in USPTO v. Tafas & GSK. Of course, anyone who will say anything to win arguments is oxymoronic to having integrity. In this case, the disgraceful USPTO argued that its rules to limit continuations are piddling, while the reality is the rule changes are substantial, and the likely impacts considerable.

Hal Wegner on the PTO sham of it all.

In the rebuttal argument, attention was focused upon the "hard limit" that the PTO has set of two continuing applications. The General Counsel vigorously defended the rules as permitting additional continuing applications through a petitions process. Yet, it was never mentioned that it would be unlikely that applicants filing a petition would receive a timely answer. Since the PTO fails to issue petitions decisions in a timely manner, the deadline for a continuation would expire before a decision on the petition is reached. The PTO's argument against the "hard limit" is a sham because the PTO cannot be counted upon to render a timely decision on petitions.

The presiding judge pointedly questioned Toupin about the rules limiting claims. Toupin answered there was no limit, because any applicant could go whole hog by filing an ESD (Examination Search Document). ESD requires exhaustive prior art search, and so is only feasible in areas with limited prior art. The judge then noted the tremendous complexity involved with ESD, and how it would effectively never be suitable for applicants. Then Toupin was asked, if he were counsel to a pharmaceutical company, whether he would recommend ESD. Toupin gave an unqualified yes. Riotous laughter echoed in the packed courtroom to the answer, and as the presiding judge advised Toupin to seek employment in the electronics or other industry.

Gene Quinn at IPWatchdog nicely covers the oral arguments. Gene hits the nail on the head on the Office's subterfuge of significance.

In testifying before Congress in February of 2008, Undersecretary Jon Dudas explained to Congressman Berman that these rules would have minimal impact on the number of new applications filed and estimated that even with the rules there would only be a reduction in the number of application on the order of about 5,000 applications. So all of this to expedite the patent process and address the backlog for a benefit of about 1%? And the rules affect the most commercially relevant of all patents.

Today's oral arguments (mp3 format).

Posted by Patent Hawk at December 5, 2008 7:24 PM | The Patent Office

Comments

"http://oralarguments.cafc.uscourts.gov/mp3/2008-1352.mp3"

Actually, the laughter came after the judge's joke that he bet that Toupin wouldn't get hired often. Not to the "yes". But, as is typical, you're close, but not on point Hawk.

"So all of this to expedite the patent process and address the backlog for a benefit of about 1%?"

1% of a very large number is still a very large number.

Posted by: 6000 at December 6, 2008 9:09 PM

"1% of a very large number is still a very large number."
What are you N-U-T-S?????
It would be EASILY drowned out the increased number of appeals, petitions, etc etc.

Posted by: anonymousAgent at December 7, 2008 4:05 AM

"1% of a very large number is still a very large number."

That's funny, Dudas told Congress, "the [1%] reduced applications total assumed was *not significant*."

Very large number (6K on Patent Prospector) = not significant (Dudas to Congress)

But perhaps this is significant, 6K:

6000 Examiners x 8 hours sunk in useless training/Examiner for the new rules (not to mention management, support staff hours/cost) = 48,000 wasted Examining hours.

Average reported hrs/BD at PTO: 20-25 (say 22.5).

48,000 wasted training hours / [11.25 hrs per FAOM /70% Examining time] = 6,100 first actions that were not performed due to the attempted implementation of an illegal rules package.

So PTO management was willing to trade 6,100 first actions in 2007 to possibly gain an insignificant reduction in FY 2010 filings of 5,000 applications, in order to reduce the backlog? Like a balloon mortgage? You couldn't make this stuff up.

Posted by: niRPa at December 8, 2008 8:12 AM

Toupin=6=Dudas

I'm stealing that from Mooney and adding my own spin.

Soon Dudas and Toupin will be gone. 6k will have to find a new spotter for himself over there at the PTO gym.

BTW 6k, I never got my lunch with Dudas. I'm sure I could have cleared up this rule package fiasco if you just coulda arranged a little meet and greet.

Posted by: JD at December 8, 2008 8:53 AM

JD, yes Dudas spends his time at the PTO gym... the reports are interesting.

Apparently, 6K emailed me unknowingly, so I can say with virtual certainty:

assuming 6=6K, then Toupin≠6≠Dudas (we'll see if the special unicode "not equal to" characters come through)

and 6K = an examiner (just what he says he is, well maybe 5758 or something, but he can round up I guess).

Posted by: niRPa at December 8, 2008 9:07 AM

"and 6K = an examiner (just what he says he is, well maybe 5758 or something, but he can round up I guess)."

Yeah. He's on track to be the first GS-9 to be promoted directly to the Supreme Court.

LOL

Posted by: JD at December 8, 2008 10:26 AM

Judge Rader's derision of the ESD and Moore's (Tafas' attorney) calling it "Express Suicide Document" brings to mind the new accelerated examination procedure, where similar disclosures by the applicant are required. The two procedures are also similar in 1) forcing the applicant to dig his own grave, and 2) creating increased income for searchers.

I recall Hawk's elation over the new accelerated examination (See Patent Prospector, Sep20.08 Accel Excels). To which I responded in the same morbid vein as Moore

"Man, if you sign a declaration saying you're presenting the best art for each limitation of each claim, you're sticking a gun in your mouth."

Except I should have said "your client's mouth."

PS -- don't forget the new BPAI rules kick in on Wednesday. Screw up on the new, more complicated appeal brief format after Weds and you can get sanctioned, meaning the appeal gets dumped. Your only recourse from such sanction will be to dive into the petition black hole. Good luck.

Posted by: Babel Boy at December 8, 2008 10:37 AM

"But perhaps this is significant, 6K:

6000 Examiners x 8 hours sunk in useless training/Examiner for the new rules (not to mention management, support staff hours/cost) = 48,000 wasted Examining hours.

Average reported hrs/BD at PTO: 20-25 (say 22.5).

48,000 wasted training hours / [11.25 hrs per FAOM /70% Examining time] = 6,100 first actions that were not performed due to the attempted implementation of an illegal rules package.

So PTO management was willing to trade 6,100 first actions in 2007 to possibly gain an insignificant reduction in FY 2010 filings of 5,000 applications, in order to reduce the backlog? Like a balloon mortgage? You couldn't make this stuff up.
"

You equate $ with examiner hours. We're already hiring at near max capacity to train. You can't just say an increase in x$ = y examining hours. Plus, with the rules you get a one time fix that you don't have to keep paying for year after year after year. You might say they traded maybe 3000 FOAMs for an eternity of -1% filings. If you did, then yes, you're just about right.

You want lunch with Dudas JD? I don't see why, he'll merely state the rules were not substantive and proceed to bench 2x your weight.

I'm def not Dudas or Toupin, nIRPA thinks he knows who I am? He could I've emailed a lot of people. A lot of people email me. A yahoo account isn't hard to crack. He's right though, I was just before 6k. Population of Examinerville has reached 6k now though.

Posted by: 6000 at December 10, 2008 2:11 PM

Oh, and also, with this one time fix they probably get rid of more than the estimated 1%, which was previously guesstimated at 5%. Look at it. You get rid of nearly all 2nd RCE's and a bunch of 1st ones. You get rid of a lot of applications that are sister apps but are presumed DP rejected. Frankly, judging from my own docket and all the other dockets that I know much about, I don't see how even 5% wouldn't be a little on the conservative side of an estimate.

And even if we overlook the amount of apps being reduced we still get rid of a crp ton of claims which do drain examination hours. Attorneys can allege that claims all directed to one embodiment are not restrictable and are therefore "an invention" all you like, but I can assure you that from an examination standpoint even 2 seperate inds are often WAY different inventions. And having that number go up to 5+ is practically begging for them to be encompassing 5+ different things that are essentially 5+ inventions that you're getting a bargain on the examination of.

Posted by: 6000 at December 10, 2008 2:24 PM

""1% of a very large number is still a very large number."
What are you N-U-T-S?????
It would be EASILY drowned out the increased number of appeals, petitions, etc etc."

Appeals won't go up significantly, either you have an appealable rejection or you don't. If you do, then attorneys already appeal. Petitions don't matter. If you guys swamp the petitions center then it'll do nothing but push the pendency time up, good for you. I can assure you that a petition takes a lot less time to stamp "rejected" on than an RCE/76+claims.

Oh, and remember nirpa, the 1% scales with the number of incoming apps. Set amounts of money spent towards examination do not.

Posted by: 6000 at December 10, 2008 2:29 PM

"You equate $ with examiner hours."

I do not. Examiners apparently got 8 hours of "other" time (3 and then 2 and then 3, if memory serves correctly) for training to comply with the new rules. And I assumed 6,000 Examiners.... 8 hrs x 6000 Examiners = 48,000 Examiner hrs.

The only assumption I made is that 8 hours of Examiner training time actually costs the PTO over 11.4 hours of paid Examiners' time (due to the leave that Examiners accrue while working/training, Art Unit meetings, etc. which currently make up almost 30% of an Examiner's time, a.k.a. "other" time). At 11.25 hrs per FAOM and 11.4 hrs training cost to the PTO per Examiner, you see where 6,100 FAOMs for 6,000 Examiners comes from... nothing to do with actual $$$ - actually, I ignored a ton of sunk applicant and taxpayer $$$ that was spent to support upper management and DOJ. (I grant you: 11.25 hrs/FAOM is only reachable in a perfect world set up to mimic your imperfect count system... it may actually take almost 16 hrs ...or more... of Examiners' time for each FAOM, which could bring us down to 4,200 FAOMs, closer to what you indicated.)

"You get rid of *nearly* all 2nd RCE's"

Yup - you got that right - you apparently don't get rid of the 2nd RCE where the RCEs are filed off of parallel continuations when no RCE has been filed in the parent, or where the 2nd RCE is filed from the 2nd CON after a 1st RCE has been filed from the 1st CON of a divisional, but we already knew that, right? Thanks for the PTO confirmation, 6K. You're swell. :-)

http://www.nipra.org/ownrules.htm

"If you do, then attorneys already appeal."

No, silly 6K, attorneys file RCEs. Haven't you seen any FWs with two, three, four RCEs? I look at asserted patents all the time and I see plenty, while seeing precious few appeal decisions (though I see quite a few notices of appeal).

"the 1% scales with the number of incoming apps."

Not if the Rules are finally determined to be illegal and there is no recovery for the PTO in terms of reduced application filings. The risk of such a final determination should not have been assumed to be 0 by PTO management: the wasted training time is then a sunk cost in that case, with no return whatsoever. (Also, remember that PTO management has already intimated before Judge Cacheris that if the rules were enjoined [as they have been] that additional time would ultimately need to be re-sunk to re-train the Examining corps, to make up for the [8 hours of] training that they would have in the meanwhile forgotten... that was one of the reasons cited for likelihood of "harm" to the agency that PTO counsel unsuccessfully stated should weigh against granting the preliminary injunction.)

And as far as implementing regulations is concerned, the PTO isn't quite on a roll right now - unfortunately, you need people writing rules who understand the law and the role of patents in industry (I'm not talking about a layman's understanding of "patent tr*lls"). From what I can tell the PTO just doesn't have that currently in any way, shape or form in its rule writers... if Dudas knew what he was doing, I think he should have been able to see that with only a cursory review of the many proposed regulations.

P.S. I didn't crack any accounts... and you used gmail, twice.

Posted by: niRPa at December 10, 2008 6:52 PM

P.S. Before you feel the need to defend yourself, I know your "nearly all" wasn't PTO confirmation of the apparent loophole(s) in the RCE rules, 6K. (I also don't really think you're "swell" 6K, though I have not been unimpressed by the patents you've issued.)

The PTO has stated it will not comment on the final claims and continuation rules as long as the permanent junction is in effect.

Posted by: niRPa at December 10, 2008 7:25 PM

"Examiners apparently got 8 hours of "other" time (3 and then 2 and then 3, if memory serves correctly) for training to comply with the new rules."

Actually we were supposed to get 3 originally, then they tried to bilk us down to 1 for the presentation only. Most were bilked. I called them on it and got the 3 from the original email, I was probably one of a couple hundred that did that. If that's what you're relying on then try closer to 1k hours MAX spent on the rules, including all the other mess you included. Whoever gave you 8 hrs as a number is a bad inside source, you need better.

"No, silly 6K, attorneys file RCEs. "

Anecdotal, I've had this happen all of once. And, I might add, most other examiners that I know see about the same.

"Not if the Rules are finally determined to be illegal and there is no recovery for the PTO in terms of reduced application filings."

You underestimate the power of the dark side. Never underestimate the power of the dark side. If nothing else the decision presents a judicial precedent for the PTO to work with. Who knows, the judges might suggest something the PTO could do without overstepping its bounds.

"risk of such a final determination should not have been assumed to be 0 by PTO management: the wasted training time is then a sunk cost in that case, with no return whatsoever."

Actually it should have been. Because the rules are undeniably not substantial and for this reason alone the DC decision should be remanded. They were written specifically to not be substantial and they are not. You don't really think the office wanted to give the petition option and the ESD option do you? Of course not. None the less they did, and by their very existence those provisions render them not substantive.

Perhaps the ESD should be loosened up a bit but meh, whatever. You could remove it entirely and tell the app to merely do a good googling and you'd accomplish the same effect. And perhaps the decision to allow another RCE should be up to the examiner, but again, meh. That way you have a loose ESD req, and you will probably be able to get your RCE in if the examiner sees promise in your app, or is greedy, or doesn't hate your app with a passion reserved for annoying apps. All it would do is add incentive to make less than 25 claims, and get down to business when you hit RCE instead of messing around with mickey mouse limitations that just happen to not be in the refs cited. But either way, the rules aren't substantive and holding that they are jepordizes other agencies rule making as well as the PTO's.

"nearly all" was there simply because some petitions will be granted. You're still hung up on those "problems" with the rules RA? Come on man. Get with the program, I already explained it to you. I believe I can address your concern without even clicking the link. R E A D the sentences in their entirety and out pops the correct interpretation that they told you in the presentation. And even if there were such a problem do you not believe they would close the loophole right down on you?

I used gmail 2x? I used gmail a lot more than 2x I assure you. I used it 3x tonight.

"From what I can tell the PTO just doesn't have that currently in any way, shape or form in its rule writers"

Do a public service, apply today.

Finally, even assuming you are right on all counts instead of none, to what end? The glory days of the patent system are well behind her and they won't be back for some time to come. Change is in the wind, or so they say.

Posted by: 6000 at December 10, 2008 11:04 PM

"Finally, even assuming you are right on all counts instead of none, to what end?"

Classic way that 6000 says "I'm wrong again".

"Because the rules are undeniably not substantial..."

That about sums up your analytical ability 6000. You cannot waive the white flag any more vigorously than by making a statement like that.

Posted by: Einstein drinking with 6 at December 11, 2008 4:05 AM

"If that's what you're relying on then try closer to 1k hours MAX spent on the rules, including all the other mess you included."

Wrong. From the PTO's Oct. 28, 2007 brief in Tafas v. Dudas:

"First, the USPTO has [already] spent more than 25,000 hours preparing its employees for implementation of the Final Rules on November 1, 2007.... If the USPTO cannot implement the Final Rules on November 1 and the Court ultimately upholds the Final Rules months later, as the USPTO expects, the agency will be forced to spend millions more dollars re-training its 6,300 employees, causing a further loss of [sic] revenue."

Four hours of training for each of the 5477 Examiners was specifically alleged as having already been provided by Oct. 28, 2008, with more provided for SPEs, and more training was planned for the rules package(s) (which may not have been implemented due to the preliminary injunction), and you should know it.

"Finally, even assuming you are right on all counts instead of none, to what end? The glory days of the patent system are well behind her and they won't be back for some time to come. Change is in the wind, or so they say."

Unfortunately, you may be right, but why be so particular? The glory days of America are well behind her... because political folks like Dudas and Peterlin have sold our national soul to the corporate marketers and service providers (CPF) in order to maximize the short-term profits of US sunset electronics corporations and financial institutions, without any eye to the future of this country. And that, rather than fixing the ills of the patent system which they should have done but could not. Well done, 6K. Well done. Change *is* in the wind.

From now on, we'll just make domestic profits by freely marketing any products we want to, eh? Do you really think it's coincidental that HP has closed its research labs and is now anti-patent? The sadistic side of me is loving seeing former-innovator HP now gouge out Cisco's "marketing" share 'cause their ain't nothin' CPF Cisco can do about it with such a weak patent portfolio....

But "ye shall reap what ye have sown", and be certain some Chinese mega-company will soon lay CPF service provider and Asian-hardware marketer HP to rest in like manner. And then then you (and others like you) will realize the Founding Fathers were not the simpletons you have assumed. And you will wonder why you were insistent on trying to cripple the truly innovative American companies for the sake of the marketers....

[C'mon 6K, you know first hand how much R&D American CPF electronics companies are doing. How many of your patents have issued to domestic CPF members? **Nada.** And so the Bush administration wants CPF members to set domestic patent policy?? Don't miss the oil/financial connection, either. It's like buying a Senate seat.

CPF Companies (as of October 2007):

Adobe; Agilent; Apple; Applied Materials; Aruba Wireless Networks, Inc.; Atheros Communications; Autodesk; Avaya; Avid; Broadcom Corporation; Business Software Alliance; CA, Inc.; Cadence Design Systems; Charter Communications, Inc.; Chevron Corporation; Ciena Corporation; Cisco Systems; Computer and Communications Industry Association; Computing Technology Industry Association; Comcast; Copernio Holding Company; Countrywide Financial Corporation; Dell; eBay; EMC Corporation; Electrolux North America; Financial Services Roundtable; Hewlett-Packard; Illinois IT Association; Information Technology Association of America; Information Technology Industry Council; Intel; Intuit; Juniper Networks; Lenovo; Lexmark International; MasterCard Worldwide; McAfee, Inc.; Micron Technology; Microsoft; Napersoft; National Semiconductor Corporation; NCR Corporation; Network Appliance, Inc.; OpenAir, Inc.; Oracle; Palm, Inc.; RealPage, Inc.; Red Hat; Research in Motion; Salesforce.com; SAP; Seagate Technology; Securities Industry and Financial Markets Association; ShowingTime; Sonnet Technologies; Software & Information Industry Association; SPSS Inc.; St. Jude Medical; Sternhill Partners; Sun Microsystems, Inc.; Sybase, Inc.; Symantec; TechNet; Time Warner; UGS Corp.; Visa U.S.A., Inc.; Western Digital; Xilinx, Inc.]

Posted by: niRPa at December 11, 2008 4:13 AM

"You want lunch with Dudas JD?"

Not really. I don't really see the point. It' highly unlikely I would learn anything. My secretary knows more about patent law than he does.

I was simply poking fun at your boast that you could get pds and/or me a lunch with "the higher ups." Like I told you before, you couldn't get me lunch with your SPE.

Not that I would want that either.

"I'm def not Dudas or Toupin"

But then you say this:

"Because the rules are undeniably not substantial and for this reason alone the DC decision should be remanded."

Considering that Toupin's argument to the Fed. Cir. wasn't much better than that, I'm fairly convinced you are Toupin.

Posted by: JD at December 11, 2008 7:29 AM

"I was simply poking fun at your boast that you could get pds and/or me a lunch with "the higher ups."

Oh, yes, in that case sure thing. I not only could, but I have been asked to lunch by a current higher up. Unless the burdens of their new position are overwhelming, any and all new examiners that they lectured to were invited to anytime. And apparently it wasn't a joke. And my SPE? Sure thing, how's tomorrow? He's nothing special lol.

I could be Toupin, or I could just be a rational mind. One of the best part of the oral arguments was the judge's question about what if the PTO decided to make a rule requiring everyone with a certain last name do something special before they got their application examined. Depending on what it was, the answer to the question is most likely and unfortunately, "yes they could" and especially if they had a reason to do so. Is that not so JD?

Posted by: 6000 at December 11, 2008 2:55 PM

"Classic way that 6000 says "I'm wrong again"."

Do I have to say "assuming arguendo that you are right on all accounts" for mor ons on the interwebz to understand me? I suppose so.

Posted by: 6000 at December 11, 2008 2:56 PM

"First, the USPTO has [already] spent more than 25,000 hours preparing its employees for implementation of the Final Rules on November 1, 2007.... If the USPTO cannot implement the Final Rules on November 1 and the Court ultimately upholds the Final Rules months later, as the USPTO expects, the agency will be forced to spend millions more dollars re-training its 6,300 employees, causing a further loss of [sic] revenue"

Where does that say that 25000 hours were spent in othertime? I have little doubt that we did spend that much time and money, doesn't mean that examiners got let off the production hook. As to your 30% figure, I fin wish. My production would be a pittance.

"and more training was planned for the rules package(s) (which may not have been implemented due to the preliminary injunction), and you should know it."

I'm sure there was, and we'd probably get another hour per 4 alleged.

I'm telling you what the facts are in reality, not in what is reported. If you don't believe me, simply ask any examiner you talk to on a day to day basis how much OT they got for the new rules package. I have 3 right around me right now and I'll ask them. Ok, results are in, one says 1, one says 1, and one says at least 1 but maybe 2. I say I got three because I quoted from the original email. I'm telling you, the figures quoted bear no resemblence to reality.

"And then then you (and others like you) will realize the Founding Fathers were not the simpletons you have assumed. "

If you want to go back that far then I'll direct you to TJ's writtings on the issues before us and you'll find that he was far from convinced that the patent system of the day was a good thing, he'd probably have had a stroke at seeing the monstrosity it grew into, especially in the glory days. As to them being simpletons, please. Also, any "truly innovative" company should have no problem with the new rules. They get a First Action allowance on all their stuff which consists only of one independent claim with deps as filler. Or at least one would presume. Amirite?

As to your things about chinese companies laying us to rest, you're absolutely right. Abolition of tariffs was a HORRIBLE thing to do. Quotas HAHAHAHAHAAHAHAAHAH, free trade HAHAAHAHAHAHAAHAHAAH. Certainly not good to the extent we've implemented them here in this country. You remember the FF's? They had tariffs. And guess what else? They didn't have the abomination of the income tax that Americans allowed to have shoved down their throats.

Anyway, take this for whatever you'll believe, but I've gtg.

Posted by: 6000 at December 11, 2008 3:36 PM

"One of the best part of the oral arguments was the judge's question about what if the PTO decided to make a rule requiring everyone with a certain last name do something special before they got their application examined. Depending on what it was, the answer to the question is most likely and unfortunately, 'yes they could' and especially if they had a reason to do so. Is that not so JD?"

No, it's not so. I think even your boy Toupin acknowledged that.

You may want to Google bill of attainder. Equal protection may apply also. You can look that up too. Throw due process into the search box too and hit enter.

"Unless the burdens of their new position are overwhelming..."

LOL

Yeah, being schooled by a federal district court judge and a panel of federal appeals court judges is pretty burdensome. They're holding up real well though.

Come January 20, those higher ups are all going to be free for lunch. For quite a while I think.

"Sure thing, how's tomorrow?"

I'm busy tomorrow. I'll have to take a rain check.

Posted by: JD at December 11, 2008 3:52 PM

"I'm telling you, the figures quoted bear no resemblence to reality."

Just a reminder, 6K isn't speaking for the PTO. Here's what the PTO brief said... quoting (so hopefully the brief bears resemblance to reality, despite what 6K and his three Examiner friends stated):

"First, the USPTO has spent more than 25,000 hours preparing its employees for implementation of the Final Rules on November 1, 2007. Young Decl. (Ex. 6) at ¶ 13. It has 13 developed extensive written training materials about the Final Rules. Id. at ¶¶ 6, 7 & 8. It has also offered live and computer-based classes to teach patent examiners and patent management about the Final Rules. Id. at ¶¶ 9,10. Specifically, for each of the USPTO’s 5477 patent examiners, 432 managers, and 24 directors, the USPTO has provided an Overview Training class (1 hour with accompanying slides) and a Detailed Training class (3 hours with accompanying handouts). Id. at ¶ 13. Additionally, the USPTO offered training on the Final Rules to technical support staff (3 hours with accompanying slides), id. at ¶ 11, and offered specialized training on ESDs to select USPTO managers (2 hours with accompanying slides and handouts), id. at ¶ 12. Thus, by November 1, the USPTO will have trained 6,300 USPTO employees for a total of 25,280 hours, translating to a loss of revenue of more than $3.1 million. Id. at ¶¶ 14, 15, 16 & 17."

Posted by: niRPa at December 11, 2008 5:18 PM

The amount of fail in that post is nearly overwhelming. First Toupin never acknowledged that the PTO could not pass such a rule. But let's look at your position. Let me get this straight something stating "no STATE shall ... deny any person within... equal protection" applies to the federal authorities? It seems to me that no state has anything to do with any business conducted before the patent office. Also seems to me like you're off base.

"bill of attainder"

LOL, now we're accusing them of a crime? Please. Further off base.

"A due process claim is cognizable only if there is a recognized liberty or property interest at stake. Board of Regents v. Roth, 408 U.S. 564, 569 (1972)."

No due process mess will be interfering when you have no property interest. Guess what? When you apply you have no property yet. How does one have an interest in property they do not even have?

All said, you're close, but no cigar. Due process might be stretched to cover the situation. The answer as to why his example is not allowable is because it is substantive. And it is substantive is because of what 101 says: Whoever invents ... is not something which can be interpreted to not speak to the issue of who can file, and it cannot be interpreted to mean that anything except "whosoever" is accepted. But all of that hardly matters, the only point to the question was the context. The context in which the question is being asked is the context of would the PTO get to make such a rule without it being deemed substantive. And of course it would not be, but why? Because of the reason above. There is no such reason as above in the present case. So if we take his example and say instead "Everyone with the last name of Bryson must do x before being allowed to file an application" then there is a different inquiry to be made. I daresay that if applicants can comply with the procedural instructions then there is no issue as to the rule being substantive. If there is a class of people who simply cannot comply with the conditions then you may have a problem. These rules supply easily met conditions.

I did enjoy the tour of the principles of law though JD. Good fun.

Posted by: 6000 at December 11, 2008 6:33 PM

[somebody PLEASE pass the popcorn!]

Posted by: law student at December 11, 2008 7:01 PM

me, I'll have another drink of what 6 is having.

It will make sense if I have another drink.
It will make sense if I have another drink.
It will make sense if I have another drink.
It will make sense if I have another drink.
It will make sense if I have another drink.

Posted by: Einstein drinking with 6 at December 12, 2008 4:24 AM

"First Toupin never acknowledged that the PTO could not pass such a rule."

I honestly can't remember what his answer was. I was a few rows back in the courtroom. He may have mumbled something. He was having such a hard time answering the judges' questions it's possible he offered up same lame answer.

"Let me get this straight something stating 'no STATE shall ... deny any person within... equal protection' applies to the federal authorities?"

You might want to read Bolling v. Sharpe (from 1954) in which SCOTUS ruled that the 5th Amendment's due process clause inherently includes an equal protection requirement as applied to the federal government (or whatever language they used exactly).

"Guess what? When you apply you have no property yet. How does one have an interest in property they do not even have?"

Whether a patent application, or even an issued patent, is property is arguably debatable. The statute says patents shall have the attributes of personal property, and applications shall be assignable in law (see section 261). I think it's the Figueroa case (from the Court of Federal Claims) that addressed whether patents are actually property, or more like rights and/or claims that are assignable. Can't remember. I'm reading too much case law these days to keep up with the never ending stream of decisions issuing forth from our courts. Maybe somebody else will enlighten us.

"I daresay that if applicants can comply with the procedural instructions then there is no issue as to the rule being substantive."

This is exactly the argument that the PTO has been making for over a year now. Guess what, it's a loser. It's a loser because it's simply wrong.

"I did enjoy the tour of the principles of law though JD. Good fun."

Fun, for sure. You might find it even more fun if you were to learn something from it.

In the event that you do go to law school, you are going to be shocked at how ill served you've been by PTO (mis)management. They really don't have anybody over there with the legal experience to recognize a loser case when it kicks them in the teeth. They've been embarrassed by opposing counsel. And the court. But they're either too dumb to see it, or too arrogant to care. They simply have no objectivity. At some point you would think that somebody over there would say to Dudas and the PTO's masters at the DOJ, "Listen, this case is a stinker. We have ZERO chance of winning. Let's do the honorable thing and stop wasting everybody's time with it."

Should you actually get the opportunity to practice law in the private sector, you'll soon realize that behavior like that exhibited by the PTO is a very short road to failure. In private practice, you have to have objectivity, and you have to use it in service to your clients.

I do hope you get the opportunity to learn that.

Posted by: JD at December 12, 2008 7:34 AM

From Wikipedia:

U.S. v. Lovett (1946) was a case historically relevant to taking away pay checks of government workers Congress could accuse of being Communists. This was an asset forfeiture case. It states:

"Legislative acts, no matter what their form, that apply either to named individuals or to easily ascertainable members of a group in such a way as to inflict punishment on them without a trial, are 'bills of attainder' prohibited under this clause."

This expansive interpretation, however, makes it difficult for the legislatures to settle any individual cases and to pass any private bills, because taking away private property or rights could be construed as "punishment" even when the goal is to meet justified claims of some other party to the controversy.

Posted by: JD's other secretary (Wikipedia link) at December 12, 2008 7:43 AM

6000 writes:

> One of the best part of the oral arguments was the judge's question
> about what if the PTO decided to make a rule requiring everyone
> with a certain last name do something special before they got their
> application examined. Depending on what it was, the answer to the question
> is most likely and unfortunately, "yes they could" and especially
> if they had a reason to do so. Is that not so JD?

And that short squib 6000 encapsulates much of what is wrong at the PTO. Way too many PTO employees - examiners, SPE's, T.C. Directors, Petitons office, Board members, and John Doll in a conversation I had with him, and James Toupin in the PTO's briefs - think that they can make up any requirement on appplicants, or excuse themselves from any duty, simply by making up a plausible reason.

NO.

The law is what is written down. The PTO cannot, and no PTO employee may, make up new reasons to deny patents, or impose new hurdles for applicants to get a patent. The requirements for patents ALL exist in a writing having force of law:
- the statute
- a 37 CFR rule, or
- a court decision.
No additional "had a reason" is legal, and a reason that is not consistent with the above three is not legal.

The Executive Office of the President recently reminded all federal agencies of long-standing law under the Administrative Procedure Act that agency handbooks, like the MPEP, may NOT be enforced against applicants - even though it's in writing, it has not been promulgated as a "rule" having force of law under the APA, so it CANNOT raise new duties for applicants.

Likewise, any excuse from a written rule must also exist IN WRITING. The PTO may not make up a "reason" to not follow written rules. In this context, the MPEP IS binding on PTO employees, just like PTO directives about where you can park. Examiners cannot make up new "reasons" for not following the MPEP or a 37 CFR rule.

Here are the President's instructions -

http://www.whitehouse.gov/omb/memoranda/fy2007/m07-07.pdf

This basic principle is what we call "the rule of law." It's the predictability of being able to rely on what exists in writing.

And it's the characteristic that is so lacking in most PTO proceedings.

Thanks for being today's object lesson in bad government, 6000.

Posted by: David Boundy at December 12, 2008 1:08 PM

[BAM!]

The weighted talking bop bag goes down to the floor... and it's coming back up in 3... 2... 1....

[Your turn again, 6K. Hey, I went to a fight the other day and a patent law blog broke out.]

http://www.clown-ministry.com/images/bozo-the-clown-bop-bag.jpg


Posted by: law student at December 12, 2008 1:33 PM

David,

Way to go!

Posted by: EG at December 12, 2008 3:33 PM

JD you need to fire your secretary. First a rule is not a "legislative act" nor do the new rules, nor a rule prejudiced against Bryson's, inflict punishment.

Seriously, is it that hard to find decent legal help these days?

"The PTO cannot, and no PTO employee may, make up new reasons to deny patents, or impose new hurdles for applicants to get a patent."

LOL we do this every day. Unless you don't count making new 102's and 103's every day and are just talking about 102 and 103 etc by themselves. In which case maybe you should tell that to the examiner that rejected the case on prosecution latches for the first time. Maybe you should also tell it to the examiner who used 112 in a way not often seen in the recent BPAI decision.

G the F O k? We're here to see if a patent app appears to be entitled to a patent. That's our command. Any other supposed and alleged implicit commands are secondary to what we are specifically commanded by statute to do at time of issue. End of story. Patents are a privilege not a right.

That my friend is what is written down and can be relied upon EVERY single time.

Posted by: 6000 at December 12, 2008 6:36 PM

"Any other supposed and alleged implicit commands are secondary to what we are specifically commanded by statute to do at time of issue."

6K, if only the PTO would follow the statutes, the whole patent system would work more the way it should.

It was specifically because the PTO rules were "not in accordance with law" that Judge Cacheris enjoined them. And it is for that reason alone (I predict) that the CAFC will affirm the district court decision.

Unfortunately, those are the facts that you cannot yet see.... David put it very succinctly, if you would care to listen.

Posted by: niRPa at December 12, 2008 6:59 PM

Oh, I've listened, and I've also seen the issues as a whole. Which is what you fail to take into account, and what the judge has failed to take into account. It is very simple, the PTO had an existing practice that it started pre 1952 using its own inherent authority in conjunction with the courts. The congress thought it was a good practice and wrote a statute making the existing practice codified in statute. The existing practice did not provide for infinite RCE's, and thus it is impossible to interpret the statut to REQUIRE infinite RCE's sans a specific provision for such. No such specific provision exists. The statute merely suggests, along with some cases that were prior to 1952 that got more than 2 cons, that they are not specifically disallowed. The court has already held in a prior case that the statute does not necessarily restrict applicants to 2 RCE's, and the fact that the question was even considered shows off that it is far from clear that the statute provides for infinite. If it were, then the court would have held specifically "that RCE's are now infinite as they clearly read from the statute". They did not say that because it is impossible to say that the statute clearly says that. Why is that so? Because the way statute was written.

Just looking at 120 we see "An application for patent ... which is filed by an inventor ... named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application". First the argument that the statute could be meaning to only specifically allow for 1 RCE is perfectly valid since it leads off with "An application" not "Multiple applications" or similar. Even so, it was impermissible to interpret the statute to PROHIBIT any more, as the PTO originally thought before the first case near this issue. Second, even if we accept the prior court's ruling that stated that the statute does not SPECIFICALLY state that there can only be 1, i.e. prohibiting any more than 1, there is still a huge stretch to be made to say that it specifically allows for infinite. And even if it were barely any stretch what so ever, it is a stretch which the PTO (the only administrative body charged with interpreting that statute) declines to make. Instead, in keeping with their original interpretation, they still read "An" as "An" meaning ONE application. Thus what the PTO argues, and what I can certainly see as being valid is thus:

The statute provides for ONE RCE being allowed by statute, but does not necessarily speak to the permissibility of the rest. Any that go further than one are still at the PTO's discretion just like when the PTO was using it's inherent authority to allow them back before 1952.

This is a perfectly reasonable interpretation of the statute and its effect. Just as "shall" means "shall", "An" means "An". And since the PTO gets Chevron difference when making perfectly reasonable interpretations of statute then that is how that statute is interpreted here at the office and, in effect, everywhere, since the PTO is the only agency entrusted with interpreting that statute for administrative duties. Once the statute is thus quite properly construed, then the PTO has decided to issue rules that affect the RCE past the first one that has been provided for by statute. Those RCE's which have not been addressed in the statute and are still under the sole discretion of the office.

Does that not make sense? Do you really believe that the argument above regarding "An application" is unreasonable? I don't think you do, nor do I think JD does nor do the majority of lawyers since the existing practice has been going on for more than 50 years. Even so, I do think that neither of you have a firm grasp on what is being argued. I also believe that you fail to take into account the fact that SOP at the time was for 1 to be granted, and it was NOT SOP for more than 1 to be granted. Considering that in the mix just further helps support the interpretation that 120 only specifically provides for one and left any others to the decision of the agency just as they had been before and just as existing practice had been before.

In short, you're just tainted by having looked at the statute so many times thinking you know exactly what it says that you aren't looking at the situation in its entirety or even rationally. I'm reminded of the time I had to lay down the DIV practices for you RA. Which btw, the patent office recently decided that its "policy" would be to go differently on my interpretation of combo/subcombo even though it is entirely statutorily and rationally correct. You guys can argue that in your cases if you'd like.

Personally, it is my belief from having heard the recording, that one of the judges seems to have gotten the point, and the other two still remain blissfully unaware of what is actually being argued and likewise will not consider it on the actual merits. What the argument they seem to be hearing is simply thus:

The statute does not specifically say that apps can have inf. RCEs therefor we interpret it to mean that we have latitude in deciding how many you get.

Which is not the argument though it would be a consequence of the argument being true.

Posted by: 6000 at December 12, 2008 11:18 PM

I should hasten to add, perhaps an analogy would be in order. This situation is analogous to a situation thus.

God (congress, with complete control over workings of patent policy), a grandmother (the PTO who has authority in interpreting the words of god in this setting), and a small child are in a kitchen.

God says:

LITTLE BOY, AS YOUR GRANDMOTHER HAS PREVIOUSLY SAID, AN EGG BROKEN IN A SKILLET AFTER BREAKING A FIRST EGG IN A SKILLET SHALL HAVE THE SAME EFFECT AS BREAKING THE FIRST EGG IN THE SKILLET AND SHALL BE CONSIDERED AS HAVING BEEN DONE AT THE SAME TIME AS THE FIRST BREAKING OF AN EGG. (God booms)

The boy breaks an egg in the skillet and then breaks another egg in the skillet then finaly breaks a third egg in the skillet. (he has 12 eggs and a huge skillet he wants to fry them all in with them all being considered made at the same time to impress grandmother)

The boy then says:

God, I just broke three eggs in the skillet, since you said that if I break an egg in the skillet then grandmother shall consider it broken at the same time as the first egg.

The grandmother then intercedes and says:

But child, God did not say what would happen to a third egg, God said AN EGG would necessarily be considered broken at the same time as the first egg, just as I have previously told you.

The grandfather (the courts) then comes in and countermands the grandmother's interpretation without having any basis for specifically holding that the statement of god provides for infinite eggs to be considered. The grandmother, having complete authority to interpret the guidelines set forth for the kitchen by God as long as her interpretation was reasonable, protests that god was not clear and that her interpretation shall stand. Especially since previous to God's command she did not consider more than one egg to be necessarily be considered broken at the same time as a first egg.

And then we find ourselves here today. With the grandfather having no basis on which to base his opinion other than his own opinion, and with the grandmother having her own precedent wanting to be considered.

Even if the CAFC gets this wrong, something tells me the SCOTUS would not. This being because they rarely miss the proper arguments being made before them.

Posted by: 6000 at December 12, 2008 11:39 PM

me, I'll have another drink of what Einstein's is having....

It will make sense if I have another drink.
It will make sense if I have another drink.
It will make sense if I have another drink.
It will make sense if I have another drink.
It will make sense if I have another drink.

[This is niRPa, signing off.]

Posted by: niRPa drinking with 6 and Einstein at December 13, 2008 4:30 AM

I'll give 6k this, his God-grandmother-child story was more interesting than anything Toupin offered up. As legally baseless and wrong, but certainly better reading.

Posted by: JD at December 13, 2008 5:41 AM

6,

You have misconstrued "an" to be ONLY singular.

"An" is singular, but not ONLY. In your quaint story, think of it as breaking one egg at a time. You can break the complete dozen, but only AN egg at a time. Otherwise, the clear intent would be God's saying "Do not break more than two eggs"

btw, how many is "other"? Is 6 "other"?
Please feel free to give the same reponse (and hear the same laughter) as Toupin.

Posted by: sunny side up at December 13, 2008 6:56 AM

""An" is singular, but not ONLY. In your quaint story, think of it as breaking one egg at a time"

I already know your method of interpreting it. But it does not matter, the bottom line is that it is reasonable to presume that the singular "An" refers only to the first in the line if one so desires, especially if the practice that came before the statutification (lol) was such. And the PTO so desires. They get the final say in the matter per Chevy chevy chevy wha?

"Otherwise, the clear intent would be God's saying "Do not break more than two eggs""

Hardly, God would have no such reason to ban the child from making more eggs after the first two. They just merely do not necessarily get the special benefit of the second. This mirrors the situation where the PTO/congress has no problem with the applicant filing additional applications towards the same invention. Prior art rejections over the parent do not kick in until what a year after publication? That's quite awhile, perhaps the applicant would like to submit an app towards the same invention with slightly different wording that would not get in under 112 1st in the first case but that he realized he needed after filing the first. Who knows? But we have no issue with it. Likewise, you could simply request non-publication of your app and then be able to file apps towards that invention forever with no autoprior art problems. 102e and a never applies right?

"btw, how many is "other"? Is 6 "other""

Of course 6 is other, what relevance does it have to the questions at hand? None. You may have 11111111 million claims if you so desire.

On a related note, where is the statutory requirement that all claims be considered on the merits? Be sure you remember correctly, there is no requirement to not have more than 5 claims, but there is a requirement to provide something if you have more than 5. So perhaps you can point out for me the portion of the law stating that all claims must be considered on the merits.

"Whenever, on examination, any claim for a patent is rejected, or any objection OR requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement..."

Clearly states that requirements (such as a requirement to submit and ESD) is an alternate to a rejection/objection.

It seems that it was left up to the office how to examine applications and if not for the interjection of more hocus pocus from the courts I'm sure things would be working out just fine. And perhaps you are right that there are some things in the ESD that are over the top, and perhaps those should be used to support an injunction of the rules. Perhaps the ESD policy can then be amended and all is right with the world.

Just w t f is the problem with this? Besides you not getting a free desert with your lunch anymore I mean. NOTHING.

Posted by: 6 at December 13, 2008 3:54 PM

"I already know your method of interpreting it. But it does not matter, the bottom line is that it is reasonable to presume that the singular 'An' refers only to the first in the line if one so desires, especially if the practice that came before the statutification (lol) was such. And the PTO so desires. They get the final say in the matter per Chevy chevy chevy wha?"

6=Toupin

Sad.

Posted by: JD at December 15, 2008 1:00 PM

If I was I would have used Tafas attorneys to wipe the floor clean. Arguments like this and the one before the Fed Circuit are bs, the way to win a dispute is to get the opposing party, or the deciding party to admit your position is the correct one of his own free volition. Toupin should have relied on getting the judges to come to his conclusion on their own rather than trying to persuade them of it being correct.

Posted by: 6000 at December 15, 2008 5:25 PM

"...the way to win a dispute is to get the opposing party, or the deciding party to admit your position is the correct one of his own free volition. Toupin should have relied on getting the judges to come to his conclusion on their own rather than trying to persuade them of it being correct."

When the facts are against you, argue the law.

When the law is against you, argue the facts.

When the law and the facts are against you, make up silly stuff like the above.

Posted by: JD at December 16, 2008 4:35 AM

6000,

It looks like my reply from this weekend got caught in the robot filter, so I'll provide it again:

You are straining to read into the statute a numerical limitation. You then beg deference merely because you wish it so. Your straining must purposefully ignore that a direct recitation of an actual numerical limitation, if so desired, would have been supremely clear to make. Even if the direct recitation is not made, the plain language does not stretch to encompass your desired interpretation.

So let's take a closer look at the law in question, specifically at the pertinent part of 35 USC 120:
"...shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings
on the first application or on an application similarly entitled to the benefit of the filing date of the first application..."

-> "or on an application similarly entitled."

You want the reading to indicate that the intent is for only a single continuation. But wait, there’s a logic problem with that. If there is only one continuation allowed, then the sentence would need to merely say “…shall have the same effect… if filed…of proceedings on the first application.”

But it doesn’t stop there.

AND SHALL BE CONSIDERED AS HAVING BEEN DONE AT THE SAME TIME AS THE FIRST BREAKING OF AN EGG. (God booms)

Except, God continued to boom. (and 6000 did not hear God’s further instruction, or heaven forbid, desired not to hear what God had to fully say)

-> "or on an application similarly entitled to the benefit of the filing date of the first application..."

So there must be at least two continuations (or THREE eggs) in the intent of the special benefit. But wait, if only two continuations were intended, then the appropriate wording would have been ‘or on THE application similarly entitled. The indefinite singular “an” would have been replaced by the definite singular ‘the’. So while “An” is singular, it does not mean ONLY in this context. “An’ is used as an indefinite article which indicates no numerical limitation is expressed. Since it doesn’t mean one or two, it must be open ended (that’s the plain language meaning of indefinite as used here).

Further, there IS an expressed limitation, that expressed limitation is merely the timing aspect of when the continuation is filed. No other express limitation is presented. It is not like God to try to trick little boys by providing definite rule and hiding others. So, the little boy is NOT limited by GOD to have two eggs cooking at the same time (the special benefit applies to the whole dozen – or more!). It seems that 6000 is the envious little sister who doesn’t want the little boy to have the admiration of the grandmother.

And the dig with the "how many is 'other'" is because you apply the same vacuous logic with claim numbering that you do with "an". That laughter you and Toupin hear is not people laughing with you. But I think you know that.

Posted by: sunny side up at December 16, 2008 7:01 PM

"It seems that 6000 is the envious little sister who doesn’t want the little boy to have the admiration of the grandmother."

This statement accurately sums up the feelings of many of the bitter lifers at the PTO. And the bitter newbies destined for lifer-hood.

Posted by: JD at December 16, 2008 7:12 PM

"You are straining to read into the statute a numerical limitation."

Not a limitation, a non-limiting granted amount. That is to say, I give you permission, as well as a free ride, to get to a bus stop tonight JD. My giving you only that specific permission doesn't stop you from going to another bus stop tonight so long as you can get there on your own.

"Your straining must purposefully ignore that a direct recitation of an actual numerical limitation, if so desired, would have been supremely clear to make."

As your own straining ignores that they could have easily said "All" and added an "s" to "application".

"You then beg deference merely because you wish it so. "

I beg nothing, the PTO demands it.

"Even if the direct recitation is not made, the plain language does not stretch to encompass your desired interpretation."

You want to discuss plain language?

A mad lib reveals the fallacy of your plain language argument.

Take this:

"An application for patent for an invention disclosed in the manner provided by the first
paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application."

And it goes to this:

A/an *blank1* which is *blank2* shall have the same effect as such *class of blank1* as though *blank3* on the date of the prior *class of blank1* if blah blah blah.

Fill in the words any way you like. You're going to come up with results like my egg examples above. An means an, end of story.

"...shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings
on the first application or on an application similarly entitled to the benefit of the filing date of the first application..."

What about it? That is merely when you must have filed it by. It still only provides for "An" application. If the PTO should so choose to grant you an extra RCE as your first one rather than your second one then so be it. If they do not then so sorry.

"You want the reading to indicate that the intent is for only a single continuation"

No, I want the reading to indicate that the intent is to specifically grant only one single continuation by law, any extras the PTO wants to give you is up to them. "similarly" being used here instead of "identically" is very telling of my position being the right one. But thanks for making us delve deeper into why your position is more full of holes than my own.

"If there is only one continuation allowed,"

Jesub, you could go on all day not understanding my argument. There is a distinction between "allowed" and "specifically handed to you as a given "right" not subject to agency decision making".

"or on an application similarly entitled to the benefit of the filing date of the first application"

Ok, let's let God make an addendum to his booming.

LITTLE BOY, AS YOUR GRANDMOTHER HAS PREVIOUSLY SAID, AN EGG BROKEN IN A SKILLET AFTER BREAKING A FIRST EGG IN A SKILLET SHALL HAVE THE SAME EFFECT AS BREAKING THE FIRST EGG IN THE SKILLET AND SHALL BE CONSIDERED AS THOUGH IT WAS BROKEN AT THE SAME TIME AS THE FIRST BREAKING OF AN EGG AND IF BROKEN BEFORE THE FIRST EGG IS FULLY COOKED OR IF BROKEN BEFORE AN EGG SIMILARLY ENTITLED TO THE BREAKNG TIME OF THE FIRST EGG IS FULLY COOKED. (God booms)

Granny didn't grant the little boy a second egg on which the little boy can base his claim for the time of breaking of his third egg in our above scenario. And if God meant that he was to be entitled to a second egg on which to base the third then the second was identically entitled to the first date, not similarly.

"So there must be at least two continuations (or THREE eggs) in the intent of the special benefit"

Correct, I hope the PTO decides to give you a second one on which you can base your statutorily granted one which you would like to be your third.

"The indefinite singular “an” "

Although you didn't mean to, you hit the nail on the head. "An" is "indefinite" in this context where "all" or "the" should have been used and is thus subject to debate. The PTO wins that debate per Chevy until congress speaks to the matter. And if it is that big of a deal to them, they'd speak within a month amirite?

"No other express limitation is presented"

Of course not. They're not going to limit the PTO's ability to grant you an RCE anytime it wishes to. It can use its inherent authority in conjunction with judicially created doctrines to give you one anytime it pleases for infinity.

"And the dig with the "how many is 'other'" is because you"

No it's because you want to attach more "vacuous logic" in the form of implied "rights" to examination on the merits to every claim in a patent. There is no such right. You know this, but just keep skipping right over it though because nobody in this legal flim flam ridiculousness has been scared by the SC into caring yet. KSR just wasn't enough for you was it? Don't even get me started on the 2nd amendment stuff. Be honest, you were with the crowd that stated the 2nd amendment was for the creation of militias weren't you? Alright, maybe not, you are a patent attorney and you know about preambles.

Posted by: 6000 at December 16, 2008 9:39 PM

6000,

That


was

like

parsing


every


word


in

order

to

find


some


weakness


and

finding


none.


"Not a limitation, a non-limiting granted amount. " Once more- in english - even the analogy after this is incoherent.


"the PTO demands it." - yes and the demand brought laughter from the court. We see what 'demanding' gets. Let's listen to those oral arguments again shall we?

" "similarly" being used here instead of "identically" is very telling of my position being the right one. " - please elaborate. You are not making sense again. Perhaps you are confused and thinking that similarly is in direct relation to time. It is not. The direct relation is to application and the secondary reference is to time. Since the application cannot be identical, the use of the word similarly is gramatically correct. You fail to make the case as to why the word choice makes your position the right one.


"AND IF BROKEN BEFORE THE FIRST EGG IS FULLY COOKED OR IF BROKEN BEFORE AN EGG SIMILARLY ENTITLED TO THE BREAKNG TIME OF THE FIRST EGG IS FULLY COOKED. "
Do you read what you write? Have you ever heard of diagramming sentences? It will help you with sentence structure. You have forced in BREAKING TIME in order to try to reach your strained position. What is THE BREAKING TIME OF THE FIRST EGG IS FULLY COOKED? It doesn't work. Further, even forced, you still have the logic gap as my corrected story illustrates. IF BROKEN BEFORE AN EGG SIMILARLY... what is the "IF" subject? It is not the first egg. It is not the second egg. It must be at least the third statutory egg. The third egg that gets the special consideration and which you demand does not. "PTO decides to give you a second one" - wrong, we are still in the statutory zone, not the mythical PTO decides zone. Your initial logic did not allow for such a third egg. Your handwaiving and blah blah blah arguments cannot hide your logical failure.

Next time you use an analogy with God, make sure you get all the logic right. You glossed over the additional part of God's quote I added for you and then completely took the indefinite "an" part out of context (as I thought you might and that's why I added the qualifier in parenthesis). You are striving to create a "subject to debate" concerning the "an" and "the" where the "the" simply was not used and thus there is no debate for the PTO to attempt to Win.

"Fill in the words any way you like. You're going to come up with results like my egg examples above." You mean the egg story I corrected for your leaving out the logical statutory parts? Yes, I believe the egg story as finished is telling. I did not fill in the words "any way you like". I filled them with words from the Statute. Words, you seemed both to leave out, and not comprehend.


"The PTO wins that debate per Chevy" Um, no - the courts do seem to indicate otherwise.


regarding claims numbers...
"in the form of implied "rights" to examination on the merits to every claim in a patent. There is no such right."

No - the laughter was real - go back and listen once again. I don't think the judges thought the "or more" was particularly vacuous.

Posted by: sunny side up at December 16, 2008 11:01 PM

"Jesub, you could go on all day not understanding my argument."

We understand your argument. That's how we know it's wrong.

Your inability to recognize a loser argument is symptomatic of most of those who've worked too long at the PTO. If you stay much longer, you're going to severely handicap yourself.

In all sincerity, I hope you see the light and get out of there before it's too late for you. As annoying as you are, you do seem to have a healthy amount of intellectual curiosity, which is severely lacking in most of your colleagues over there, right up through the highest ranks.

Get out as soon as you can and learn how to be objective. Yes, objectivity is a skill you can learn. But not at the PTO. And it has to be used on a regular basis to stay sharp. You're not going to have much use for it at the PTO, so to save yourself, get out now.

Posted by: JD at December 17, 2008 7:56 AM

""Not a limitation, a non-limiting granted amount. " Once more- in english - even the analogy after this is incoherent."

How hard is this for you to understand? Here's the situation. You are you at 5. You would like to go to the store 1 mi away that your parents promised you at least one trip to. You ask for the trip. They take you. You ask again. They decline to take you. You ask once more, and they take you. Them promising you one was a non-limiting granted amount, you were granted the one trip by "right" or "promise", but you were not limited from asking for another and they declined your request once, and they accepted it once. They could have declined both times if they wanted, but you can ask forever because they haven't limited how often you can ask.

This isn't hard, and if you can't understand this basic concept then there is nothing further I can do for you.

The only laughter was from obvious jokes, and there was a bit of laughter about the judges own rulings in IC cases iirc.

"please elaborate."

Later, I don't have time for this long drawn out sht atm. You know as well as I do that even failing to make a hard case for it doesn't matter, if there is even a hint of doubt then the whole sentence is open to my interpretation, after that, chevy chevy chevy.

"Your inability to recognize a loser argument is symptomatic of most of those who've worked too long at the PTO."

It's a loser argument because it is too complex to be believable and is susceptible(sp?) to the judges simply deeming 120 to mean what they feel it to mean, having no basis for their interpretation except their own interpretation. This may force an appeal to the SC because the PTO knows it is likely right on the lawyerly merits. I recognize this, and as I've told people before, if I were Dudas et al. I wouldn't have implemented the new rules, I would have gotten congress to get off its duff. That being said however, the PTO is still probably right on the merits. All of that said, I doubt you do understand. It's plain to see JD doesn't understand and I have no reason to believe that you do either as he is just as capable of an attorney as the rest of the lot of you are.

"You have forced in BREAKING TIME in order to try to reach your strained position."

Breaking time = filing date? Come on JD. You're misreading the sentence.

"What is THE BREAKING TIME OF THE FIRST EGG IS FULLY COOKED? "

The filing date of the application which hasn't become allowed/fully cooked on which this application wanting a prior breaking time/filing date is being based upon.

"Your initial logic did not allow for such a third egg."

Sure it does, it allows for infinite eggs if Granny decides so.

I don't have time right now to get back any more I ned 2 counts for the quarter and only have 1 halfway done so I'll have to return later.

Posted by: 6000 at December 17, 2008 4:20 PM

"It's a loser argument because it is too complex to be believable and is susceptible(sp?) to the judges simply deeming 120 to mean what they feel it to mean, having no basis for their interpretation except their own interpretation."

You are too funny. Keep us laughing. I really enjoy it.

"This may force an appeal to the SC because the PTO knows it is likely right on the lawyerly merits."

Thanks. Keep 'em coming.

"I recognize this, and as I've told people before, if I were Dudas et al. I wouldn't have implemented the new rules, I would have gotten congress to get off its duff."

Uhm, did you miss the portions of the arguments where Mr. Desmaris talked about how patent reformed failed in 2005? And 2006. And again in 2007. Once more in 2008.

Did you miss all those viral videos of former Solicitor Whelan talking about how the PTO was sick of waiting for Congress to pass legislation, so the PTO figured they'd just try to accomplish that with a rule change?

"It's plain to see JD doesn't understand..."

Oh, I understand. Trust me, I understand.

"...and I have no reason to believe that you do either as he is just as capable of an attorney as the rest of the lot of you are."

With all due respect to my colleagues in the patent bar, I'd like to think I'm a little more capable. Hey, you gotta be your own cheerleader in this business.

"Breaking time = filing date? Come on JD. You're misreading the sentence."

Ah, that wasn't me. But the only misreading of the sentence is your own.

Posted by: JD at December 17, 2008 8:15 PM

6000,

Let me clarify just a few of the many points that you are mucking up:

""Your initial logic did not allow for such a third egg."

Sure it does, it allows for infinite eggs if Granny decides so. "

Your initial logic did not allow for such a third egg in the intent of the special benefit.

We were talking about God and the three eggs - not Granny. Much to your chagrin, Granny is NOT God (Chevy chevy chevy wha - Huh?)

Since we established that special benefit was the point of the third egg discussion, I thought I would not need to continue emphasizing that point. I see that your attention to logic is so short and your attitude so poor that I might have to become more long winded so that you don't misapply our conversation.


I would guess that you like your eggs scrambled.


"even failing to make a hard case for it doesn't matter, if there is even a hint of doubt then the whole sentence is open to my interpretation, after that, chevy chevy chevy." - Um, no your beloved chevy chevy chevy is not carte blanche for the Office to rewrite the rules. Even a hint of doubt... No, I realize this takes away the Office injecting doubt so as to try a power grab, but the courts time and again reprimand the Office for such a tactic. You keep applying faulty logic and expect (well, actually demand) to get your way. That little sister sure is a surly brat.

Posted by: sunny side up at December 18, 2008 7:22 AM

"Your initial logic did not allow for such a third egg in the intent of the special benefit."

The special benefit is the FD, not only the FD given by god. The special benefit may be bestowed by proclamation of god, or by granny deciding to bestow it. If you want to consider the special benefit to be the statutorily granted special benefit of fd only then fine. And if you do consider that then sure, my original logic does not DEMAND a third egg be allowed the special benefit if the boy asks it, it does ALLOW for him to still get the benefit granted by granny though. That is the whole point of the argument above.

"Uhm, did you miss the portions of the arguments where Mr. Desmaris talked about how patent reformed failed in 2005? And 2006. And again in 2007. Once more in 2008."

So because congress is lazy it would mean that if I were director I wouldn't endevour to get them to not be? Ridiculous.

"Ah, that wasn't me. But the only misreading of the sentence is your own."

I created the sentence, how could I misread it? You sir have gone from being blatantly in the dark to being purposefully in the dark. If you did understand the argument being made then you wouldn't have asked many times "huh?" and "what?" and ridiculousness like that. Also, any of the examples would make perfect sense.

And btw, you still haven't demonstrated that you understand the argument. You cannot repeat it accurately I 100% assure you. As you're well aware, the opposing party likely doesn't understand your argument if they cannot return it to you, unchanged in meaning, in their own words. So far as I can see you're still stuck thinking that god's word doesn't even ALLOW for any other eggs to get a special benefit granted by granny. Sure it does. Keep confusing Allow for and Provide for.

Posted by: 6000 at December 18, 2008 4:29 PM

delusions of godhood have a special meaning to 6000.

"or by granny deciding to bestow it" - now Granny can add to the word of God! The parallel with the USPTO thinking it can add to the Law, that the Law is not good enough is uncanny.

Hey, 6000, do you know what they call people that add to the word of God for their own devices? (Hint - it's not very nice).

Oh wait, I feel something...

yes, yes, a major capitulation!


"If you want to consider the special benefit to be the statutorily granted special benefit of fd only then fine."

Thank you.

"...it does ALLOW for him to still get the benefit granted by granny though. That is the whole point of the argument above."

Nice trick 6000 - I've never seen anyone backpedal so quickly. So now, the boy has the right by God to have as many eggs as he wishes, but the point of your story is that Granny is allowed to grant him that same benefit to a second egg - that same benefit that was given to him by right from God. Soooo, the parallel is that applicants have the right by the Law to unlimited continuations and the Office has the right to offer another continuation? I think you lost a bit from the analogy to the real non-Godhood-delusional world.


"...being purposefully in the dark." and only 6000 would know since that is his special place.

Me? I'm just sunny!

Posted by: sunny side up at December 18, 2008 6:20 PM

"now Granny can add to the word of God!"

No, Granny always had the ability to bestow the "time of breaking" to any eggs she so chose to, just as the pto had the ability to bestow a FD when it so chose and still does. If you're familiar with the history, the pto was using its inherent authority in conjunction with the courts policy to do this before the recent patent act came into being.

"Nice trick 6000 - I've never seen anyone backpedal so quickly"

That's not a trick, that's the original argument which you're just now halfway catching on to. Your recitation back to me blatantly shows as much. Eventually you'll wrap your mind wholly around it and be like "Oh, huh, he's right". You're approximately half way there. Let's see if I can get you the rest of the way.

"So now, the boy has the right by God to have as many eggs as he wishes"

No, he can have as many eggs as he wishes, but they don't all get the "special benefit" by your definition, only one does. Any others only get the "regular benefit" which is the same benefit as the "special benefit", i.e. a breaking time or filing date, except it is granted by granny using her inherent authority instead of god's word. Furthermore, if granny gives the boy a "regular benefit" before "making" the boy use his "special benefit" then the boy can base his "special benefit" egg on any "regular benefit" eggs that granny gives him.

In short, replace "So now, the boy has the right by God to have as many eggs as he wishes, but the point of your story is that Granny is allowed to grant him that same benefit to a second egg - that same benefit that was given to him by right from God"

with:

"So now, the boy has the right by God to have one egg at any time in the whole process considered filed at the time of the first if it meets the conditions he set forth, but the point of your story is that Granny is allowed to grant him that same benefit to any amount of eggs at any time, and that any eggs she grants can be used to form a chain back to the first - that same ability of getting the benefit on any number of eggs having not been given to him by right from God because God only spoke to one egg."

The boy has the "right" inherently to break as many eggs as he likes but he does not necessarily get the priority (breaking time) moved back. God gives him the "right" to have one egg considered broken at the breaking time of a previous egg so long as it was broken within the cooking time (prosecution time) of the first egg, or during the cooking time of another egg which has been deemed to have the same breaking time as the first egg by granny (or if any other provisions ever gave such rights away, though in our story and irl they do not). However, it does not garuntee that granny will give him a second egg after the first one on which to base the chain of 3 back to 1. In other words, you may talk the pto into giving you second, third, fourth... eggs on which you could then base your statutorily granted egg, if the pto will give it to you, and you may then chain a statutory egg on all of those. Additionally, the statute does not provide for or disallow any more eggs the pto gives you after your statutory egg being chained back as well. Therefor it would seem allowable to chain back as many eggs as the pto will give you as you would like as well, since this is just the pto using its own authority.

Let me give you an example.

The boy wants to break 4 eggs and have them all considered at the breaking time of the first.

He breaks the first. He breaks the second. He then asks granny if he can have the breaking time of the first egg for the second. She says yes. He says good and breaks the third. He then asks granny to base the third egg on the first also by chaining the breaking times through the second egg. She says no. He says, alright, well God granted me one, so she says ok, it is gods will. He says great and breaks the fourth egg. He asks granny for priority back to the first egg by chaining them back. She says no. The boy is out of eggs under gods word and is thus left with the fourth egg not being considered broken at the time of the first.

This situation could just have easily have gone: First egg. Second egg. Asks granny, she says no. He invokes god's granted one. She says fine. Breaks the third, and asks granny, she says no. He is out of god granted benefits and is left with the third not having the breaking time of the first. Presumably granny would refuse a 4th and a 5th and so on, but the boy is free to crack eggs and ask if he wants.

It also could have gone: first, second, asks, she says no, he invokes his one, she says fine, cracks third, asks, she says yes, cracks fourth, asks, she says yes, fifth, she says yes etc... on forever. Or, she could stop at any time.

Or, you can simply view it as granny refusing all second eggs, and the boy having to invoke gods word at the second egg each and every time he wants to make eggs for breakfast, and having to plead with granny for a third egg each and every time he wants to make eggs by explaining why he couldn't have accomplished a meal with only the first and second eggs he's broken. That is the proposed rules.

What the pto should have done though is simply stop giving out third eggs and later explain why it did so and not have even made the RCE rules and instead only made the claim rules while ist stopped giving out third eggs. I think they just wanted to make it a rule in order to give applicants the ability to petition.

If that detailed breakdown doesn't give you a crystal clear picture then I cannot fathom what it must take to present you with a prima facie case. I suppose maybe I need to use more ()'s and some pin cites to the statute etc.

Posted by: 6000 at December 18, 2008 7:32 PM

"No, he can have as many eggs as he wishes, but they don't all get the "special benefit" by your definition, only one does."

I forgot I'm dealing with a person with low logic ability. When God says the boy can have as many eggs, this means that the boy can have as many eggs with "special benefit". And by my definition, thats as many as the boy wants - what dark place did you get "only one does"? I have shown you quite plainly several times that the plain language of the Law CANNOT mean just one. Either you are persistent and think I will simply give up, or you are simply dense.

I only got that far into your response and see that the amount of twisting you've done will take more time than I have tonight to untwist again.

I will try to remember that you cannot carry a logical thought more than halfway through a paragraph.

Posted by: sunny side up at December 18, 2008 9:21 PM

"So because congress is lazy it would mean that if I were director I wouldn't endevour to get them to not be?"

Mr. Dudas has tried to get patent reform passed. Trust me. He's tried very hard.

It was his frustration at failing so miserably to get patent reform passed that led him to allowing the lifers who wrote those silly rules to publish them for public comment in the Federal Register.

"I created the sentence, how could I misread it?"

Your ability to claim that a particular sentence means anything you want it to say, and your insistence that you have the right to change your mind as to what the sentence means on a mere whim, are well documented. That's what leads me to believe that 6=Toupin.

"You sir have gone from being blatantly in the dark to being purposefully in the dark."

The only ones in the dark, 6, are you and your masters over there in the PTO. It must be awful working under the siege mentality that pervades the PTO. For your own sake, I urge you to get out as soon as you and come to the light. Sunny Side Up is showing you the way.

Posted by: JD at December 19, 2008 9:00 AM

...on the plus side, 6000 does get to use the many cool Star Wars reference of the Power of the Dark Side.

One of my favorites:
“The dark side of the Force is a pathway to many abilities, some considered to be unnatural.”
Palpatine

Posted by: sunny side up at December 19, 2008 9:33 AM

Let’s go back a bit and discuss the logical basis of 6000 and his little parable. My apologies beforehand for the length of the post, as I wish to accommodate the lack of ability to hold and follow logic of certain individuals who may find this of interest. Since we will involve many quotes made by 6000, I will put my new comments in brackets [ ] from here on out.

[Let’s start with 6000’s post of December 12, 2008 11:39 PM which starts with:]
Oh, I've listened, and I've also seen the issues as a whole.

The congress thought it was a good practice and wrote a statute making the existing practice codified in statute.
[Um, no, but good try at rewriting history]

The statute merely suggests, along with some cases that were prior to 1952 that got more than 2 cons, that they are not specifically disallowed.
[So God said that there was no such limit on the intent for special benefit for more than two eggs prior to 1952 since some cases got more than two eggs with special benefit?]

Even so, it was impermissible to interpret the statute to PROHIBIT any more, as the PTO originally thought before the first case near this issue.
[Try reading this very slowly. These are your very own words]

…but does not necessarily speak to the permissibility of the rest. Any that go further than one are still at the PTO's discretion just like when the PTO was using it's inherent authority to allow them back before 1952.
[Um, no, that’s why the change from God has meaning. Your logic would indicate that what God said in 1952 didn’t matter, because Granny knows better than God, and God didn’t REALLY change anything. That logic is baseless.]

And since the PTO gets Chevron difference when making perfectly reasonable interpretations of statute then that is how that statute is interpreted here at the office and, in effect, everywhere, since the PTO is the only agency entrusted with interpreting that statute for administrative duties.
[Ah yes, for administrative duties. Your pathetic grasp of the difference between administrative and substantive may prevent you from realizing why your argument here carries ZERO weight]

Those RCE's which have not been addressed in the statute…
[But the statute addresses all RCE’s which meet the only explicit limitation put forth by God – the limitation as to timing. Bad things happen when you don’t understand God’s direct words.]
Does that not make sense?
[Your version – not at all; your corrected version as put forth by me – perfectly]

Do you really believe that the argument above regarding "An application" is unreasonable?
[Yes – the plain language explanation makes the misleading attempt at ambiguity fail]

I also believe that you fail to take into account the fact that SOP at the time was for 1 to be granted, and it was NOT SOP for more than 1 to be granted.
[I promise that Donaldson and I will come back to this point]

[Now we get to the analogy]

God (congress, with complete control over workings of patent policy), a grandmother (the PTO who has authority in interpreting the words of god in this setting)…
[The grandmother does not have UNLIMITED authority in interpreting the words of God. In fact, her authority is rather minimal, applying ONLY to administrative items, and not to substantive items – God doesn’t trust Granny all that much after all]

God says:
LITTLE BOY, AS YOUR GRANDMOTHER HAS PREVIOUSLY SAID,
[back to rewriting history and by the way completely missing what God added in 1952, plus the subtle spin here is that God apparently has to obey Granny since it was Granny that previously said (a little Freudian slip from our pal 6000)]

The grandmother then intercedes and says:
But child, God did not say what would happen to a third egg, God said AN EGG would necessarily be considered broken at the same time as the first egg, just as I have previously told you.
[But God did say what would happen to a third egg. This is the part that God added in 1952, the part that befuddles 6000 and literally crushes his position. Dam it; Granny is actually lying to the young lad! ]

The grandfather (the courts) then comes in and countermands the grandmother's interpretation without having any basis for specifically holding that the statement of god provides for infinite eggs to be considered.
[And here 6000 completely loses it, and should be the end of the story. For what 6000 did not include is that grand-Daddy has been sanctioned by the Trinity and decides what the word of God is and only God himself can say otherwise. Granny is less powerful than grand-Daddy – always was and always shall be. Can you say, “Who’s your grand-Daddy?”?]


The grandmother, having complete authority to interpret the guidelines set forth for the kitchen by God
[Um, no – actually that “complete” authority only proscribes to interpretations for administrative items, and definitely not substantial items. So we see, the kind old grand-Daddy has to set the errant granny straight yet again.]

And then we find ourselves here today. With the grandfather having no basis on which to base his opinion other than his own opinion, and with the grandmother having her own precedent wanting to be considered.
[Except for the fact that who’s your grand-Daddy can tell granny to keep her mouth shut and stop lying to the poor boy.]

[In a rather pathetic attempt to twist the corrected story, 6000 goes on to throw up more befuddled broken logic. Let’s see:]

I already know your method of interpreting it. But it does not matter, the bottom line is that it is reasonable to presume that the singular "An" refers only to the first in the line if one so desires, especially if the practice that came before the statutification (lol) was such.
[If one so desires to purposefully try to mangle the plain language and create ambiguity where none exists… Now that we have set the record straight and put Granny in her place - that Grand-Daddy is closer to God than she is, let’s listen to what else Grand Daddy has to say from In re Donaldson –
“The Commissioner argues that his interpretation is entitled to deference in view of what the Commissioner alleges is the PTO’s sweeping and long-standing practice of not applying paragraph six during examination. We disagree. The fact that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so. In addition, paragraph six facially covers every situation involving the interpretation of means-plus-function language, and the Commissioner’s attempts to create an ambiguity in paragraph six where none exists are to no avail. The fact that paragraph six does not specifically state that it applies during prosecution in the PTO does not mean that paragraph six is ambiguous in this respect. Quite the contrary, we interpret the fact that paragraph six fails to distinguish between prosecution in the PTO and enforcement in the courts as indicating that Congress did not intend to create any such distinction.”
A number of critical lessons for you 6000:
PTO’s sweeping and long-standing practice means SQUAT. Pre-1952 means SQUAT, since God has spoken since then. The Office is owed absolutely zero deference in regards to such an argument.
“Commissioner’s attempts to create an ambiguity… where none exists are to no avail.” Same old tricks by the Office – they still won’t work. Trying to create an ambiguity from “an” versus “the” when there none exists STILL will be to no avail.]

[6000 is further spanked when he once again tries to twist things and defends his position by the so-called mad-lib defense. Let’s see:]

A mad lib reveals the fallacy of your plain language argument.
Take this:
"An application…"
And it goes to this:
A/an *blank1* which is *blank2* shall have the same effect as such *class of blank1* as though *blank3* on the date of the prior *class of blank1* if blah blah blah.
Fill in the words any way you like. You're going to come up with results like my egg examples above. An means an, end of story.

[That’s it? That’s the mad-lib defense? Wow, something’s missing – like, the entire ability to refute the plain language summary of what an indefinite article versus a definite article is. Sure, “An” means “An”. It does not mean “The”. Hence, 6000, your non defense shows only your own fallacy.]

[Now let’s give the old boy one more shot at understanding this. Follow along. Stop and rest when your logic muscles get tired. This post will still be here]

[Let’s start with AN application, call it Application 1. While Application 1 is alive, we want to have a continuation application with the God given special benefit. Let’s call this Continuation Application 1. The only God given rule is that the continuation application must be started while Application 1 is alive. If this single condition is met, the special benefit is merited. Now God’s pronouncement in 1952 solidifies a wondrous miracle (No surprise that God can do miracles, really). The special benefit makes the Continuation Application similar in effect to Application 1. The direct words (and not in words any way I like) “...or on an application similarly entitled to the benefit of the filing date of the first application.” This Godly wisdom creates a chain, that as long as the explicit requirement as set forth by God, that being the requirement of timing, is obeyed, each link in the chain has the God given special benefit. How long is the chain you may ask? God has answered with the use of the indefinite AN. ]

[So we now have Continuation Application 1 with the same special benefit as Application 1. Now we come along and add AN additional continuation application, let’s call it Continuation Application 2. Since we are considering only the cases where God’s only explicit rule is met for all application and continuation applications, we know that each gets the special benefit. So, Continuation Application 2 gets the special benefit and is now similar in effect to Application 1. ]

[So we now have Continuation Application 2 with the same special benefit as Application 1. Now we come along and add AN additional continuation application, let’s call it Continuation Application 3. Since we are considering only the cases where God’s only explicit rule is met for all application and continuation applications, we know that each gets the special benefit. So, Continuation Application 3 gets the special benefit and is now similar in effect to Application 1. ]

[So we now have Continuation Application 3 with the same special benefit as Application 1. Now we come along and add AN additional continuation application, let’s call it Continuation Application 4. Since we are considering only the cases where God’s only explicit rule is met for all application and continuation applications, we know that each gets the special benefit. So, Continuation Application 4 gets the special benefit and is now similar in effect to Application 1. ]

[So we now have Continuation Application 4 with the same special benefit as Application 1. Now we come along and add AN additional continuation application, let’s call it Continuation Application 5. Since we are considering only the cases where God’s only explicit rule is met for all application and continuation applications, we know that each gets the special benefit. So, Continuation Application 5 gets the special benefit and is now similar in effect to Application 1. ]

[So we now have Continuation Application 5 with the same special benefit as Application 1. Now we come along and add AN additional continuation application, let’s call it Continuation Application 6. Since we are considering only the cases where God’s only explicit rule is met for all application and continuation applications, we know that each gets the special benefit. So, Continuation Application 6 gets the special benefit and is now similar in effect to Application 1. ]

[I can continue to cut and paste, each time taking AN egg and we see that each and every egg meeting God’s only explicit rule merits the special benefit. But we’ll stop at 6 for the pure symmetry of the argument. ]

[Let’s give 6000 a spank for each special benefit egg.]

Posted by: sunny side up at December 19, 2008 2:14 PM

Great quotes from Donaldson.

You're wasting your time though. 6k has to make a choice. Either he's going to acknowledge that his masters have been lying to him all along and free himself from their corruption, or he's going to continue to tie himself in knots in an attempt to maintain his self delusion.

It's up to him. All we can do is watch and wait.

Posted by: JD at December 19, 2008 2:32 PM

"So God said that there was no such limit on the intent for special benefit for more than two eggs prior to 1952 since some cases got more than two eggs with special benefit?]"

I see you're now using "special benefit" the same way I started out using it, i.e. either the pto or the statute granting a filing date. Glad to see you come around.

Actually it was grandfather (the court) that said there was no such limit to the intent of the statute since the pto had allowed more than 2 in some cases prior to 1952. The "intent" prior to 1952 was never ruled on. The PTO may have intended to limit them and mistakenly given the 2 eggs prior to 1952, we'll never know. But what we do know is that the PTO intended to block more than 2 immediately after the statute was written. Since they had given more than one extra egg on a couple of occasions they could not muster support for an all out statutory ban of them. Now the interpretation is that the statute does not ban them, but it does not provide for them either.

In other words the judges were convinced of the pto's position as to the meaning of "an" but they could not uphold the position because of a few cases where more were given. Now, using the same interpretation of "an" the statute is simply regarded as not speaking to the subject of more than one.

"Try reading this very slowly. These are your very own words"

I already have. What of it? Perhaps you should take another look at it so you will understand what was said instead of what you'd like it to say.

"Your logic would indicate that what God said in 1952 didn’t matter, because Granny knows better than God, and God didn’t REALLY change anything. That logic is baseless.]"

Um, no. God changed the pto being able to deny even the first requested egg. In other words, god said, you get one egg by "right", and I, God, am not speaking to any more eggs.

"Your pathetic grasp of the difference between administrative and substantive may prevent you from realizing why your argument here carries ZERO weight"

You have to make substantive interpretations of statute to perform administrative duties. Just as the judge noted in the arguments I might add. What point are you making? Go ahead, if I'm missing something in the difference between administrative and substantive interpretations of law then go ahead and tell me. Frankly I've never even heard of the difference between administrative and substantive, I have however heard of procedural v substantive, perhaps you're trying to talk about that difference? The statutory construction of 120 has nothing to do with the sub v proc issue with the new rules unless congress clearly spoke to the issue, and as I've been maintaining, the pto and my own position is that congress has not. They have not if the statutory construction does not specifically speak to the issue. And if that statutory construction is reasonable then the pto gets difference in its interpretation.

"But the statute addresses all RCE’s which meet the only explicit limitation put forth by God "

It addresses "An" not "all" and you well know it.

'that God apparently has to obey Granny since it was Granny that previously said "

God doesn't have to, he chose to. He is God, he can do as he pleases.

"But God did say what would happen to a third egg. This is the part that God added in 1952, the part that befuddles 6000 and literally crushes his position. Dam it; Granny is actually lying to the young lad! "

Where does he? We see "An" egg only. Where is the part addressing "An egg and one more egg" or "All eggs"? No where.

"If one so desires to purposefully try to mangle the plain language and create ambiguity where none exists"

It can't be that unambiguous if the courts have already considered the argument on the merits and the argument did not fall due to the statutory construction being unambiguously false due to it addressing only one egg, but instead falling because the statute expressly does not say what happens to more than one egg and therefor does not expressly prohibit granting of more than one extra egg.

"Sure, “An” means “An”. It does not mean “The”""

It also does not mean "all". It can be interpreted to mean "The" or it can be interpreted to mean "all". The term is open to interpretation.

an:
"the form of a before an initial vowel sound (an arch; an honor) and sometimes, esp. in British English, before an initial unstressed syllable beginning with a silent or weakly pronounced"

If we replace "An" with "A" does that help you?

Try these on for size:

an:

indefinite article, 12c., from O.E. an (with a long vowel) "one, lone,"

Besides, even if we conclude that it does not mean "the", it still is singular, and even your construction makes it address each individual application in turn, the statute is conclusively referring to one application. Whether or not it is referring to one application at a time, or only one application is the issue.


Try this one on for size big boy:

"An\ ([a^]n). [AS. [=a]n one, the same word as the numeral. See One, and cf. A.] This word is properly an adjective, but is commonly called the indefinite article. It is used before nouns of the singular number only, and signifies one, or any, but somewhat less emphatically. In such expressions as "twice an hour," "once an age," a shilling an ounce (see 2d A, 2), it has a distributive force, and is equivalent to each, every."

Normally it is used to signify "one" the numeral only and is used to signify "any" less emphatically. Let's try replacing "An" in the statute with "one" shall we? But if used in a special expression as those shown in the examples then it has a distributive force and is equivalent to each, every. The question before the court is: is this such an expression? I doubt very highly that it is. "An" is "One" here. End of story.

I should note that this dispute is a contributing reason that the statute was interpreted to not prevent second continued examinations. It doesn't even speak to them if "An" is construed normally rather than specially. The court back when would have simply said "120 makes statutory the requirement that all requests for continued examination be given the prior filing date" in the previous case if that was the way it was. As is typical, they ruled only enough to settle the issue before them.

I would address the rest but it's too long.

How about this. I'll tell you what, if you can even recite my position back to me correctly without copy/pasting it then I will concede all merits to you.

This is a trick btw, because if you ever do recite my position back correctly then you will not even want me to concede to you because you will have a grasp of why the position is correct. I use this regularly in my phone calls with attorneys, works like a charm :) And it would probably work like a charm here too if we were not talking on the interwebz.

"PTO’s sweeping and long-standing practice means SQUAT. Pre-1952 means SQUAT, since God has spoken since then. The Office is owed absolutely zero deference in regards to such an argument."

I will say this though. God (congress) specifically said that it was codifying existing practice that is why it doesn't mean "squat". This was from congressional aid notes or some such. I'm not rewritting history, I'm parroting it back to you.

"Trust me. He's tried very hard"

Weak and halfhearted attempts JD.

"cool Star Wars reference of the Power of the Dark Side"

I stick to the old school stuff.

"When God says the boy can have as many eggs, this means that the boy can have as many eggs with "special benefit". And by my definition, thats as many as the boy wants - what dark place did you get "only one does""

God doesn't say "he can have as many eggs". The little boy has the inherent ability to put as many eggs in a pan as he wishes/can afford to buy. That doesn't mean that God told him he can have the special benefit on all eggs he can put in a pan.

What dark place did I get "only one does"? From the ordinary definition of "An". One.

JD still cannot present my view back to me either. Sorry, until you do, you will continue to think that I'm "changing my mind" on the meanings of things etc. I've not changed my mind once in the entire discussion, I've merely tried to explain to you, several different ways now, the same position. You and yours on the other hand love to take things I say blatantly out of context and then try to present them as being invalidating to my own position. Ridiculous. They are my position. And it'll be the same after any further arguments you make, until you come up with a good one where "An" means "all" automatically all of a sudden. Or until you can at least present back my own view. It's quite static and very easy to nail down.

Posted by: 6000 at December 19, 2008 9:35 PM

Ah yes, ever the twister,

6000, for shame

"I see you're now using "special benefit" the same way I started out using it, i.e. either the pto or the statute granting a filing date. Glad to see you come around.'

No such thing, I did not change my definitions mid stream (like you, in order to try to create confusion - something you are learning from the USPTO brass , hmm?). Special benefit has never been changed - the special benefit only comes from God. I've never said or hinted otherwise. The question was a rhetorical poke at your tendency to view whatever Granny wants as automatically God-given. Repeat after me: Who's your grand-Daddy? I see that you chose not to comment on that part of the corrected story.

"there was no such limit to the intent" - don't forget the Trinity. Repeat after me: Who's your grand-Daddy?

"they could not muster support for an all out statutory ban of them" - and you keep missing the hint from this - why?


"In other words the judges were convinced of the pto's position as to the meaning of "an" but they could not uphold the position because of a few cases where more were given. Now, using the same interpretation of "an" the statute is simply regarded as not speaking to the subject of more than one. "
This is utter fabrication with no basis in reality. Now YOU are speaking for the Grand-daddy? Did they really have a discussion on "an" versus "the"? Plainly, you still cannot overcome the explanation I gave you between the difference between and indefinite article and a definite article!

"God changed the pto being able to deny even the first requested egg"
No one and I do mean no one - even Toupin, would agree with this reading of the Law. It's amazing that you could even type a statement like that.

"Where does he? We see "An" egg only. Where is the part addressing "An egg and one more egg" or "All eggs"? No where. "
It's the part you keep glossing over and keep trying too pretend is not there: "...or on an application similarly entitled to the benefit of the filing date of the first application". It's the miracle part that provides a continuation application with the special power to be in essence a first application when it comes to establishing yet ANother continuation application with the special God-given right. I gave you a useful analogy - the links in a chain. I even repeated it 6 times in honor of your moniker. As long as you meet the only explicit rule from God, you can keep adding AN link (or "A" link if you want to be grammatically proper) to your chain (and yes, get the God-given special benefit for the ). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit). Still meet the rule, you can keep adding AN link to your chain (and yes, get the God-given special benefit).

"It can't be that unambiguous if the courts have already considered the argument on the merits and the argument did not fall due to the statutory construction being unambiguously false due to it addressing only one egg, but instead falling because the statute expressly does not say what happens to more than one egg and therefor does not expressly prohibit granting of more than one extra egg."

I'll answer this with your very own quote:
"As is typical, they ruled only enough to settle the issue before them." and I re-add some Donaldson: "and the Commissioner’s attempts to create an ambiguity in paragraph six where none exists are to no avail. The fact that paragraph six does not specifically state that it applies during prosecution in the PTO does not mean that paragraph six is ambiguous in this respect. Quite the contrary, we interpret the fact that paragraph six fails to distinguish between prosecution in the PTO and enforcement in the courts as indicating that Congress did not intend to create any such distinction.”"


Persistently trying to create confusion. Did it fall - yes. Must every reason for a fall be accounted for? - no. After it fell, are we still back to my corrected version of the egg fable? - Yes.


"Besides, even if we conclude that it does not mean "the", it still is singular, and even your construction makes it address each individual application in turn, the statute is conclusively referring to one application. Whether or not it is referring to one application at a time, or only one application is the issue."

You keep on thinking of singular as your saving grace to your logic. You are wrong. Singular is used to talk about the particular continuation application under consideration. The key is the indefinite part. It is here that your logic falls apart. After all, God wills that the new singular contiuation application has the special rights as the first application. With this right granted (ANother singular continuation application can obtain the same God-given special benefit if THAT ONE meets the only explicit requirement (timing) of the one before (since the one before has the God-given special right).

"If we replace "An" with "A" does that help you?"
6000, I don't need the help, "AN" or "A", they are both indefinite and neither mean "the" and they both sink your argument.


"Try this one on for size big boy:

"An\ ...it has a distributive force, and is equivalent to each, every.""

OK big boy, I love when you bring your own rope for your noose. The last word in the definition YOU provided. Hmm, "every", Let's play substitution with that word, OK?


"How about this. I'll tell you what, if you can even recite my position back to me correctly without copy/pasting it then I will concede all merits to you. "
I don't need your concession to have my victory. I don't need to play your parlor games. I really don't care if you think I understand your argument or not. My argument crushes your argument. Your concession means SQUAT. JD is the one trying to bring you to the light. Me - I'm already sunny. If you care to join me, that's fine, welcome. If you care not to, that's just as fine. Swing away on the noose of your choosing.


"What dark place did I get "only one does"? From the ordinary definition of "An". One."

Only, only only - you keep forgetting about that part. Try again, singular, but not only. As in equivalent to "every".

"very easy to nail down." You are wrong - there I nailed it!

Posted by: sunny side up at December 20, 2008 2:16 PM

"Try again, singular, but not only. As in equivalent to "every"."

Got to be a special occasion to get "every", but you read the definition you already know that. Is this a special occasion? Hardly. You lose.

"6000, I don't need the help, "AN" or "A", they are both indefinite and neither mean "the" and they both sink your argument."

Right, they mean "one" ordinarily. You can read, you know that you're the one relying on the special exception rather than the rule.

'It's the part you keep glossing over and keep trying too pretend is not there: "...or on an application similarly entitled to the benefit of the filing date of the first application"."

I just went over that with JD, "similarly" means something different than "identically" and thus supports my position completely. You are permitted to base the chain on applications that have a similar claim to priority, aka the "regular benefit", aka the claim granted by the office, and the statute does not speak to chaining off of applications identically claiming priority, aka with the "special benefit" or benefit granted by statute. That is why if your first extra egg comes from the office rather than the statute (i.e. granny gives the boy an extra egg before he invokes his "right" to one) then the egg that the boy demands under the word of god, for his second extra egg (or third etc) can be based on the egg granted by granny. Simple, but you refuse this because you are mentally challenged.

"and you keep missing the hint from this - why?"

I don't miss the hint. But the hint is not directed towards the pto having authority to determine if you get another RCE or not, it is directed to a hard ban on them. Such a hard ban is not proposed. And I see you missing the point that just because the statute does not ban them does not mean that it provides specifically for them. We allege simply that it does not specifically provide for them. And you know this. I know you know the difference in the two, why do you refuse to recognize it? I can say "You are permited to leave home once a day" but that does not mean that you cannot leave more than once, and it doesn't mean that you can leave more than once. That is all we're saying that the statute says. It says you can have one, but it doesn't say you can't have more (this is the hard ban that was struck down), and it doesn't say that you can have more.

"No such thing, I did not change my definitions mid stream (like you, in order to try to create confusion - something you are learning from the USPTO brass , hmm?)"

"So God said that there was no such limit on the intent for special benefit for more than two eggs prior to 1952 since some cases got more than two eggs with special benefit?"

You just said God said that there was no such intent for "special benefit" ... prior to 1952. How the f would there be "special benefit" prior to the enactment of "special benefit"? You're obviously referring to the regular benefit itself if you're referring to the benefit before it became special. I get the feeling you don't even understand the difference between regular and special benefits even after I spelled it out for you.

Overall, you appear to not have any grasp on the situation what so ever and refuse to consider what I'm actually saying rather than what you're pretending I'm saying. That's why you're sunny side up. Such does not bode well for those practicing before me. It earns them a quick trip to the BPAI for a grand, and maybe a long trip to the CAFC, after which they get to come back and play with me by spending yet another grand for an RCE. But, play however you like if you have the money to spend. See you irl where you will repeat back to me my position, and then you will lose.

Maybe I'll simply refuse my next second RCE. Let's see how that plays out. The PTO probably wouldn't stop me from doing it since their own interpretation supports our ability to do so and they desire to do so. And applicants sure as f aren't going to with your weak ability to understand things.

Posted by: 6000 at December 20, 2008 10:04 PM

"Maybe I'll simply refuse my next second RCE. Let's see how that plays out. The PTO probably wouldn't stop me from doing it since their own interpretation supports our ability to do so and they desire to do so."

My prediction is that your SPE would simply laugh at you and throw the case back in your lap and tell you to prepare another OA.

Posted by: JD at December 22, 2008 7:55 AM

"My prediction is that your SPE would simply laugh at you and throw the case back in your lap and tell you to prepare another OA."

My current spe probably would. My Spe before this one, but not the one before that, would have been interested in my take on the Dudas case.

For awhile I thought he might have been MVS .>

""So God said that there was no such limit on the intent for special benefit for more than two eggs prior to 1952 since some cases got more than two eggs with special benefit?"

I should add that god didn't say that at all. God = congress remember? Grandfather said that. And they didn't say special benefit pre 1952, they said benefit.

Posted by: 6000 at December 22, 2008 10:14 AM

"For awhile I thought he might have been MVS .>"

From what he claims, MVS is not an SPE. He's some other sort of mid-level (mis)management stooge.

MVS = Most Valuable Stooge.

"My current spe probably would."

Well, you have to remember that even though examiners aren't rated by their W-L at BPAI, SPE's are. Sending up a sure fire loser is not in their interest. They are not dinged for allowing their examiners to perpetually re-open, so that is the path of least resistance for them. And most of them are exceedingly lazy, if nothing else. :-)

Posted by: JD at December 22, 2008 10:35 AM

6,

Not sure if you are still around, but Patent Hawk's newer thread - "Rear View 2008"
reveals a VERY interesting take on of all things the word "a". I was unaware of this blog at the time, otherwise I would have referred you to it for an additional language lesson from January 15, 2008.

Take a peek: http://www.patenthawk.com/blog/2008/01/a.html

Posted by: sunny side up at January 4, 2009 9:19 PM