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May 23, 2009

Change A'Coming?

Gene Quinn relates insight from Mark Malek, fellow attorney at Zies Widerman & Malek, who spoke recently with an anonymous examiner who "told Mark that about 2 weeks ago management told the examining corps that they need to start issuing patents." Possibly a bit of sunshine in an otherwise dreary era at the PTO.

Posted by Mr. Platinum at May 23, 2009 8:30 PM | The Patent Office

Comments

Not to rain on anyone's parade, but since the readership here may be different than Gene's, my comment posted on Gene's site follows:


Key words: “…and appropriately issue …”

From my earlier career (before Law), as long as the quality metric is appropriately focused, the results will show for themselves. When Management dictates that quality = reject, reject, reject, well, the results are evident. HOWEVER; I strongly caution against the pendulum swinging too far in the opposite direction. The quality mantra of “Accept, accept, accept” is just as flawed. The lesson is that quality pegged to an artificial pass rate is bogus quality and will get bogus results. Applications must be appropriately examined. Those that deserve to pass should pass. Those do not should not. Sounds simple. But so does “the pass rate should be 72.2%”. Managerially speaking, there is a world of difference in the execution of either simple strategy. And a world of difference in the results.

Second, the systems in place must support true quality. Platitudes and demands without enablement and leaving the count system in place simply will not dispell the ineptitude that has plauged the Office. The Office needs to abandon its philosphy of changing the Law to meet its agenda. The Office needs to understand what the Law is and apply it.

While blog commentators may not represent the true examining corp, the most vocal surely display a disdain and fundamental lack of ability to understand the Law. This cancer must be excised, or the body of the Office will die no matter what the change in mood or focus is desired.

Posted by: Noise above Law at May 24, 2009 5:26 AM

In other news, 6 posted the exact same thing at PO around 3 weeks ago...

"While blog commentators may not represent the true examining corp, the most vocal surely display a disdain and fundamental lack of ability to understand the Law. "

Says the man who demonstrably does not understand product by process claims. Perhaps if we could exorcise the legions of "I know the lawzors n you don't" (even as law construction after law construction to which they cling is ripped out from under them) lawyers then we'd be a shade nearer a workable system.

Posted by: 6000 at May 24, 2009 7:08 AM

6: Fool provocateur, heavy on the fool, a buffoon.

6, you continue to bring your own rope.

Reading, reading comprehension and quoting out of context. Let’s try 4 for 4. 4 times I will have laid out the challenge and 6 has run away the first three times. Let’s see 6 run a fourth time. (6 is getting to be a lot like the other fool provocateur (Mooney) when it comes to challenges. Do you both have the same track coach?

“wherein he was getting thrashed on his fav case.” The wonders of selective memory. I did not ask for you to obtain anything eaten by the P-O site. So now you say that Aaron ate your response? And I suppose the other two times I challenged you – P-O ate those too? But teacher, the dog ate my homework.

I see it’s posted now. This should be fun.

6 states: “Says the man who demonstrably does not understand product by process claims.”. Yet omits a key part of my post: “niRPa, I would like to believe you, as I DO NOT HAVE PERSONAL EXPERIENCE WITH THIS AREA and you tend to document your thought process in sufficient detail to follow along.”. emphasis added.

Even not having the experience of dealing with product by process claims as I noted, my posts of substance go unanswered and the people having opposite views merely agree with my bullet points and cannot defend cursory statements of “no logical inconsistencies”.

You also provided no answers to my analysis of niPRa. Funny how a person who professes a lack of experience still puts an analysis out there that you cannot answer.


Turning now to reading comprehension - Quote from 6: “Seriously. On what planet is she living? That lady needs to retire and stop misreading precedent…”Posted by: 6 | May 19, 2009 at 08:44 AM. One of the great legal minds, who IS intimately involved with the doctrine of product by process and its precedents and 6 dismisses Newman’s jurisprudence out of hand.

6, try reading Chisum on patents (section 8.05) (or is Chisum another buffoon in your prestigious eyes?).

My points echo Newman’s thoughts. Chisum points out the schism. So my position of definite logical inconsistencies is backed up by both Newman and Chisum and 6 is backed up by….? His own brilliant legal mind? LOL! It’s a rope party for 6.

6, have you read Chisum? Do you have a clue? Of course, you would have no clue – you are an examiner and it’s not your job to know the Law (another 6 quote: “This is just a job to many examiners, the legalities are of secondary concern to getting home for dinner. Thus, all is apparently as it should be”). Would it help 6, if I were to not only throw Chisum at you but disabuse you of your pre-concieved notion that I am a male?


Finally, awhile back, another professed examiner made on post on the patently-o boards concerning a little poll to see how well known 6 was. A perfect 0% professed to know 6. I am beginning to think that the 0% was the level of examiners willing to admit that 6 was an examiner, or willing to be associated with the ravings of 6 and that the examining corp shudders at the representation that 6 presents for the Office.

Posted by: Noise above Law at May 24, 2009 10:39 AM

This sounds good, but I doubt much will change. The PO has had problems in this area for a long time, and any drastic changes will be difficult to implement. But, there's always hope...

Posted by: Ares Vista at May 26, 2009 9:17 AM

Look sweetheart, if you're fishing for a date you're going about it the wrong way. Simply give me your name and number then find a reason to giggle, you might have a chance.

You may hand me your copy of Chisum any time you'd like to.

So tell me Noise, out of 3 random people in your office, how many of them know you by "Noise above Law"?

And look, I'd love to help you out more on PBP stuff, and understanding NIRPA, but you can't even understand NIRPA's three cases properly it doesn't seem. When he tried to explain to you what was going on in the first three cases you thought he was presenting a fourth case. He wasn't. You believe things like ABC is a distinct product from ABCS$. This isn't quite true. ABCS$ is a "species" of the "genus" ABC. That is one way distinction. You appear to lack an understanding of fundamental principles behind what is going on and it is making it impossible for you go join the conversation with NIRPA intelligently. Specifically, I don't think you know what crystallography is. For example, one thing you're missing is in case 2, the product (composition) is not simply ABC. The composition is never simly ABC in case 2, it is either ABCS% (the instant invention) or ABCS& (the prior art) both of which are ABC, and both of which are structurally different from one another as they are both species of ABC. Despite this and your misunderstanding Case 3, you at least gather that the real issue that you have is the double standard between prosecution and post.

However, the base for people feeling that this is a double standard is flawed. For instance, you go on to just suppose that since one thing anticipates if before then it should necessarily infringe if later and that any exception to this rule (such as the new PBP regime) is horribly illogical, and presents an inconsistency. Well, you're right that it's a small inconsistency in a way (it breaks a cardinal rule of patents), but in another, more important way, it isn't (product by process claims are already breaking cardinal rules of patents by their very existence). Thus, our carving out a special exception for them to exist, is met by our carving out a special exception for their infringment. It isn't such a bad deal for applicants. Especially since we're letting them off the hook for knowing what in the world their product is. We're only limiting them to claiming what they do know about the product. It was made by a specific process.

Now, if someone has already made this product, then obviously the app shouldn't get to claim something that is old just because they're ignorant. So we don't allow that. At the same time though, the applicant needs to let other people know what to avoid so as to avoid infringment. He hasn't actually told them anything to avoid except for making a product by a specific process. That's what he gave the public notice of right? He didn't provide notice of his claiming ABCS$, so one of ordinary skill forming ABC out in the industry might start making ABCS$ (maybe accidentally) by some process the applicant didn't reveal and might make a substantial investment into production without never have been provided with public notice that the applicant was claiming ABCS$. (remember, ABCS$ is a species of ABC) How is it fair to the producer to count him as infringing when he was never put on notice that someone was claiming ABCS$? It isn't. That would be an inconsistency if we allowed that to happen wouldn't it? Yes. It would. And that is how it used to be sometimes. So, the new system ends that inconsistency while picking up the dual standard. I've already told you that I personally feel like we should do away with all the inconsistencies by either 1. doing away with PBP or 2. using the new system except also letting the claims benefit by the process limitations in prosecution (rather than only the inherent structural features given the product by the process). Either or. Although I feel like 2 makes PBP even more of an abomination than it already is, I lean towards 1 and stamping them out for good. They are, for the most part, in my eyes at least, a relic of a bygone era where functional claiming and other tools weren't as strong.

There are some other concerns, but that should tide you over for now.

I think that each additional time I do this sort of thing for you it would be nice if you could step to the kitchen n make me a sammy. Deal?

Oh, and that thing about you not understading the full context of 151 goes a little something like this. Read the word "appears" before "under the law" and then consider it. It's a subjective determination to be made. By me. I've explained this like ten million times, apparently you weren't around for those times.

Posted by: 6000 at May 26, 2009 12:49 PM

With considerable effort, I have resisted my initial urge to vomit and have taken the time to actually read (and read for comprehension) the spewings of 6.

I find it immensely troubling that 6 agrees with me (on certain points) and that I likewise agree with 6 (on certain points – and definitely NOT on the road taken to those points).


Points of agreement:

There are logical inconsistencies with the Law and with Product By Process claim treatment.

The Law would be better off one way or the other (removal or consistent application)

“you at least gather that the real issue that you have is the double standard between prosecution and post.”

“Well, you're right that it's a small inconsistency in a way (it breaks a cardinal rule of patents),”


Points of clarification

Genus and Species
- This is the first that this additional wrinkle is being added. I am not sure if it is appropriate, as the distinctions between Products are critical to the discussion and distinctions between genus and species typically are NOT critical in differentiating patentability discussions. If you want to consider that a species falls under the genus of a prior art claim, I would lump that in my discussion to the Products being the same (and that logically excludes the products with critical characteristcs being different and hence the Products being different.) I know you can read 6, it’s the reading comprehension that you need to pay attention to.

“We're only limiting them to claiming what they do know about the product.” – but the limiting action is what sets up the double standard.

“…hasn't actually told them anything to avoid” – WRONG – there is an actual Product, not just the method itself. Apply 103(a) and inherency to what is actually claimed (an ACTUAL PRODUCT) - a product is a product is a product. It is for the Office’s expediency of not having to create the product to determine infringement that leads to the dichotomy.


Points of contention:

Flagrant quoting out of context:

"35 U.S.C. 151 Issue of patent.
If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant."

A reminder to 6 – you expounded on the first phrase “If it appears” and thought this gave you the authority to shape the Law as you see fit. I added the second part “under the law” to put your “If it appears” into appropriate context. I even explained this to you. Reading comprehension continues to elude you. The “under the law” is a restraint for your “appears” interpretations, and is not an object of your interpretations. Appearance goes to “entitlement” and is restricted to “under the law”. It is NOT appearance of the Law and does not open to your subjective interpretation what the Law may or may not mean. You may NOT apply interpretations that do not meet the “under the law” limitation. It is NOT a free pass for you to apply subjective determination “of the law”. You are a slave to the law, not its master. Your picked-on-little-boy-induced-God-complex again gets the best of you. You may have put forth your version ten million times, that only means that you have been wrong each of those ten million times (The maxim of “say it often enough and it becomes true” does not hold). You had quoted (and still quote) out of context. Since you lack the ability to comprehend, your ability to determine when something is or is not in context is severally impaired.


Comprehension:

RE: niPRa “you thought he was presenting a fourth case.” – and why on earth would you think that?


The tortured parsing and self-conflicting statements of 6 in trying to deny the holdings of Alappat are remarkable. I have never seen anyone work so hard to deny meaning to themselves what a plain reading would bring.

Compare:
“…there was no need to make such a distinction around that date, in so far as caselaw would have required it for some reason.”

“Furthermore, the "test" in Alappat relates to an erroneous holding by the Board.”

“…unpatentable as directed to nonstatutory subject matter.’ -

“That of course does not limit the ramifications of the holdings put forth to support the decision they make.”


Throw enough quotes out there and you will A) contradict yourself and B) be able to generate more confusion later.


Making up new positions:
“the attorney believes this is a "test" as to what makes a general purpose computer statutory” – Nope – this was never said. This isn’t even the gist of Alappat. The gist is the distinction between a general purpose computer and a new machine that comes from a general purpose computer specifically programmed.

“…not every instance, of programmed general purpose computers (regardless of whether or not 112, 102/103 are satisfied).” Nope – this was never said. 112, 102 and 103 were never part of the discussion. The discussion was strictly on overcoming the so-called Bilski 101 issue. As you also put: “There is only a "test" directed to what may be patentable. May.” – EXACTLY – MAY is only what is being pursued in relation to 101. It has always been put forth that the rest of the Law still needs to be met. Thank you for agreeing with my exact point. Sometimes your own parlor games trips you up. Brer'6 stuck in his own patch.

“And they didn't lay down the groundwork for something to come later, at least not in sufficient detail as to be workable.” – Nope, by clearly enunciating the difference from a starting point (general purpose computer) to a new machine – (programmed), AND being an EN BANC decision, Alappat provides EXACTLY what I indicated. It just is so.

6, Once again your parlor tricks of purposefully misrepresenting discussion points in order to obfuscate and confuse is just plain pitiful. Only in your own mind, do you “win” these types of discussions. That laughter is not with you, it is at you.

Professionalism:
Not that its really expected, but the lack of professionalism and the complete change in tone in responses from 6 based on 6’s perception of my gender only reinforce the lack of credibility that can be attributed to whatever message 6 is trying to put forth on the blogs. Way to bite on the gender card. Do'h! The inability to recognize this over long periods of time indicate that 6 is not salvageable and is stuck at a level that my nephew Tom gave up at least two years ago. Tom turned eight last week.

Posted by: Noise above Law at May 27, 2009 9:39 AM

"It is NOT appearance of the Law and does not open to your subjective interpretation what the Law may or may not mean. You may NOT apply interpretations that do not meet the “under the law” limitation. "

Yes it is, does and yes I can, in so far as my spe/appeals specialist will allow me. If you believe otherwise you are mistaken. What else could it possibly mean? Could it mean that if the application appears to be entitled to a patent under the law to an attorney then an application shall issue? Who should it appear that way to? The president? The hotdog vendor? The man in the moon? A district court? The fed circ? None of the above. Me.

Your further thoughts on PBP simply confirm that you either don't understand the conversation or are intentionally avoiding the issues. Your statements on genus/species suggest you are seriously lacking in patent training, and if you are an attorney I am seriously concerned for you. In any event, just for fun, and my own lols I'll provide some questions for you.

You claim:

An ABC made by process Y.

That's all you tell anyone. That's all that is in the spec. ABC made by process X is known in the art. The ABC in the prior art is, more specifically, ABCS%, which results from process X. You tell the examiner that since your process is so differnt from X that your product must have a different crystallography, however, you do not know what it is because you are cheap and do not have the equipment to find out. The examiner agrees with you and issues your case. 1 year later I'm out here making ABC in my lab. I decide to make ABC by process Z. Unbeknownst to me I'm actually making ABCS$, which results from process Z. I do a patent search, and find nobody who has patented ABCS$. I see your patent, but from what I see you used a different method and it doesn't appear to me that you claimed ABCS$. 5 years later after I've established my manufacturing facility (because I filed for a patent on ABCS$ which is pending and figured that nobody else had patented it) and am rakin in the big bucks you sue for infringment after having spent the thousands you needed to spend to find out the crystallography of your ABC, which turned out to be ABCS$.

Now I'm stuck with being an infringer even though I was never put on notice of your claiming ABCS$. Correct? (question 1)

How is that fair? (question 2) Am I supposed to have to make your product, and do a crystallography study of your product just to find out what your patent covers? (question 3) It is a failure on your part to put me on notice of what you are claiming. Except in so far as your product was made by process Y.

How is it fair in light of the fact that you never told me you were claiming ABCS$? (question 4).

Do you even know what the public notice function of claims is? (question 5)

As to Alappat, your "plain reading" is "reading with ignoring the first sentences of the paragraph". Plain reading sees your quoted portions as nothing but support for the assertion at the top of the paragraph.

And btw, the erroneous holding by the board did not require a "test" as to particular v not particular machine to be brought forward, all it required was for some claims to programmed general purpose computers to have been upheld at any point in time. Which they had been. I don't understand how you can be missing this. It is plainly in front of your face. Perhaps if you read the Board's decision in full you will understand what their actual holding was and you will see why there was no reason to make a test for particular vs. unparticular machines to settle the issue from the board.

"a new machine"

Correct, not "a particular machine". There is no "contradiction" anywhere in anything I said. When you can correctly comprehend both the case and what I said you'll be good to go.

"Nope – this was never said. 112, 102 and 103 were never part of the discussion."

If you read the decision, they are. They aren't named by name, they're called something like "all the other conditions for patentability". Go now, and read.

"“There is only a "test" directed to what may be patentable. May.” – EXACTLY – MAY is only what is being pursued in relation to 101. "

Allow me to rephrase what I'm saying so that you can comprehend.

"“There is only a "test" directed to what may be patentable under 101. May."

There you have a more specific version of what I was trying to relay to you. This quote should be taken to mean that the only "test" provided is that if there is a programmed computer, then it crosses the threshold into what may later pass 101. That is, you are not automatically cut off from passing 101 just because the claim reads on a general purpose computer. That is what the board had said. The Fed Circ. merely states that you are not automatically cut off, instead you may get by 101. Looking down the road to Bilski they tell you the test for getting by 101.

Here is the breakdown. The board asserts this is the inquiry:

Does the claim read on a general purpose computer? If yes, claim invalid. If no, claim might pass 101.

The Fed Circ. says no, that is the wrong "test" or inquiry. Instead it should be:

Does the claim read on a general purpose computer? If yes, claim might pass 101. If no, claim might pass 101.

They then go on to explain that this is because there have been some general purpose computers that have passed 101, so that cannot be a broad subject matter bar. Then, in a later case, Bilski, they explain when the claim actually needs to pass 101.

Perhaps that explains it better. I know, the subtleties are hard to spot when having futurevision of Bilski.

Whenever you get through reading the case, in its entirety (or at least the parts after the jurisdiction issue), you may feel free to respond. Until then, believe me, relying on that for what you propose is simply not going to work. Try it. Go ahead and see. Until then, farewell.

And btw,

" Only in your own mind, do you “win” these types of discussions. "

I win them on a daily basis. Matter of fact, I won one just today thank you very much.

And I find your comments on "professionalism" quite ironic, in view of your comments about the office etc. But, no matter, this is the internet and neither one of us actually exists. Still I might consider taking you out.


"“…hasn't actually told them anything to avoid” – WRONG – there is an actual Product, not just the method itself. Apply 103(a) and inherency to what is actually claimed (an ACTUAL PRODUCT) - a product is a product is a product. It is for the Office’s expediency of not having to create the product to determine infringement that leads to the dichotomy."

I find it funny how you can be so confused as to work three separate issues on which you are confused into one small paragraph. You say the office determines infringement? Come on, you're kidding right? You think that the office benefits from the expediency? You're kidding right? And you think that there is an inherent product, but you don't tell us (the office and the public trying to avoid infringement) how we're supposed to know what the inherent product is short of divination. Perhaps we should employ divination? Or should concerned public make a copy of every a theoretical product (the applicant may have never even made a prototype) covered by product by process claims in their entire art to make sure that they're not accidentally infringing? You're joking right?

Posted by: 6000 at May 27, 2009 1:30 PM

NAL,

Awhile back I posted a general QFT to everything you had ever posted. Then I revealed that I am female. Then I threw Chisum at 6.

I'm actually starting to wonder if I am your sock puppet.

Posted by: broje at May 28, 2009 1:13 PM

I was too.

I have yet to recieve any copies of Chisum electronic or hard copy from either of you.

Posted by: 6000 at May 28, 2009 3:50 PM

broje,

You are not my sock puppet - I have other minions for that ;-)

I readily admit that I was inspired by you to throw Chisum at 6. It actually gave me the opportunity to review the historical record on Product By Process and put 6 down at the same time (double bonus). I would think that Chisum would be required reading for true examiners.

Newman is intimately familiar with Product By Process and the fact that 6 spouts his views, disses her and does not recognize the jurisprudence is hysterical. As Newman is a woman, maybe we both are her sock puppets....!

Posted by: Noise above Law at May 28, 2009 5:21 PM

6: I think it interesting to imagine how your scenario would play out in Europe. I'll write it below. Then you tell me why it's unfair.

The claim that I filed is "ABC, obtainable by process Y". EPO says it's old. I file evidence, that my product does cure disease CJD but old ABC made with X doesn't. I explain to the EPO, convincingly, that this is one of those rare cases where "obtainable" is the best the inventor can do to characterize the product, and that it's good enough, and that therefore it is proper to issue the claim.

EPO grants a patent.

You haven't bothered with any patent clearance search or opinion work. You don't even monitor the WO/EP A publication output in your field of interest, the ABC molecule. You nevertheless come on the market with your CJD cure, which is ABC made by process Z. I bring proceedings, and my evidence proves that your product is identical to the one made by process Y, and different from that made by process X. You try to resist the grant of interlocutory injuncticve relief but the judge isn't persuaded. She asks you "Why did you not "clear the way" before you launched your product?"

Why didn't you?

Posted by: MaxDrei at May 28, 2009 10:31 PM

"I file evidence, that my product does cure disease CJD but old ABC made with X doesn't."

In the US you just killed your need for a product by process claim. Simply recite the function. It should probably be the same way over there. But assuming they give you the patent anyway, or you submit some evidence that actually indicates a structural difference exists though you don't know specifically what it is and they give you the patent then we can go ahead.

"You haven't bothered with any patent clearance search or opinion work. You don't even monitor the WO/EP A publication output in your field of interest, the ABC molecule. "

I just got through saying that I did a patent clearance search in my hypo. You just completely changed the hypothetical to the reverse of mine. Although, strictly speaking it is irrelevant. Public notice exists for the whole of the public, not just me.

"She asks you "Why did you not "clear the way" before you launched your product?"

Why didn't you? "

If I didn't then I didn't because it saved me $, or I didn't realize I needed to (guessing at reasons). Like I said above, whether I did or did not is irrelevant. I was never put on notice that you were claiming ABC made by process Z. Was I? No, I was not. If I had searched or paid someone to "clear" the product, I still wouldn't have known that you had a patent to my specific type of ABC structure. Would I? No, I would not.

Now Max, here's why it is unfair. Because you never told me that you were claiming what I was planning to build. Although you omitted it from your recitation of a hypo, following from mine above, the actual product I was making and you had claimed indirectly was ABCS$. So, specifically it is unfair because you never told me that you wre claiming ABCS$ and I was unaware that Y and Z produced the same product. That's why. In other words, it is unfair because no public notice existed as to the product ABC made by Z would infringe your patent. I am, in effect being punished by a government granted regulation on making a product when neither of the government, or the patentee, told me there was a regulation on making that product.

As a lesser matter it is sort of "unfair" in addition to the above, because you were completely ignorant of any of the features taht you will later use to call me an infringer at the time of filing. And you were completely ignorant of what I started making at the time you filed your patent app. You didn't know Z and you didn't know ABCS$. You didn't know sht about what I later did at the time of your filing. It is "unfair" to give people injunctive relief or $ for something that they didn't even have the slightest conception of at the time of filing. Note here that for this aside I'm ignoring your bit about curing some disease because 1. I don't know when you actually had the evidence of it curing the disease (before or after filing) and 2. because it is pretty much irrelevant anyway since you didn't even claim "A composition comprising: ABC made by process Y which when administered to a patient with disease A will cure disease A." or something like that, actually including language about curing.

Get on with the questions noise. I'm genuinely interested to know your feelings on them. And not just for lols afterwards. Max, you can answer the actual questions if you'd like as well. Perhaps then I wouldn't have needed to answer your hypo.

Posted by: 6000 at May 29, 2009 8:02 AM

6,

I am not inclined to follow your briar patch questions.

You have not satisfied me to the extent that you have shown that you know what you are talking about or can add to my understanding of the concepts involved.


Let's see you answer a few questions first. Throughout the answer to MaxDrei you skirt the issue (pun intended) as to the patented Product and the double standard involved. In your secenario, You provide:

"An ABC made by process Y." and "ABC made by process X is known in the art."

At this point, no patent (Product ABC = Product ABC) - but you continue and show that YOUR ABC is not really the old art ABC.

"The ABC in the prior art is, more specifically, ABCS%, which results from process X. You tell the examiner that since your process is so differnt from X that your product must have a different crystallography, however, you do not know what it is because you are cheap and do not have the equipment to find out."

"The examiner agrees with you and issues your case." - QUESTION: just because the examiner agrees - does this make your patent a "valid" patent? Why or why not?

Curious enough, you rant about genus-species and yet leave it out of your hypo. QUESTION: Are you conceding that the genus-species crap you spewed was a red herring? Are you conceding that the actual difference in products is substantial enough to have key different characteristics (whether the characteristics have been exactly identified or merely inherent in the product as created by the process)and substantial enough to void the genus-species grouping?

"I decide to make ABC by process Z. Unbeknownst to me I'm actually making ABCS$, which results from process Z. I do a patent search, and find nobody who has patented ABCS$."

Please do not set half-assed hypotheticals so that you can play "gotcha".

You are intending to make ABC. Your hypothetical already states ABC is old in the art. QUESTION: How can I answer such a poorly constructed hyptothetical? Further, how are you doing a patent search on something that is itself unknown to you? Your hypo states that your aim is ABC and not ABCS$, and that ABCS$ is unbeknownst to you, yet you also state that you are filing a patent on something that you do not know. QUESTION: Is this second filing also a Product By Process application? - That would be an interesting wrinkle.


In your reply to Max concerning the Product By Process patent: "...you submit some evidence that actually indicates a structural difference exists though you don't know specifically what it is" - Yes - that's called Product By Process. Your Product is a product. You claim the product. You have described the product and received (based on your hypo) a valid patent for a product. That product has characteristics that are inherent to it. The structural differences exist. You describe how to achieve your product, and according to your hypo have met all 112 concerns. The quid pro quo has been acheived and the world is a better place because now the world knows how to make your product and can possess the Product. And while not included in your hypo, most likely getting one of your products is relatively easy - you buy one (People who do reverse engineering do this ALL THE TIME). QUESTION: If in fact your "gotcha depends on the genus-species distinction not being significant enough, then that very same prior art that SHOULD prevent your Product patent would nab the follow on Product application. At the very least, both the prior art and your art should be found by the examiner. I am sure that you do not want to open the door to questions about quality examination (which is the real elephant in the room)...

Posted by: Noise above Law at May 29, 2009 9:48 AM

"I am not inclined to follow your briar patch questions.

You have not satisfied me to the extent that you have shown that you know what you are talking about or can add to my understanding of the concepts involved."

When you understand the question it isn't a briar patch. Nirpa, who I'm sure is lurking, can answer the questions in under a minute.

"At this point, no patent (Product ABC = Product ABC) - but you continue and show that YOUR ABC is not really the old art ABC. "

Correct.

"QUESTION: just because the examiner agrees - does this make your patent a "valid" patent? Why or why not?"

First because there is a statutory prsumption of validity. And second, because we shall presume for the sake of the hypothetical that it is a sufficient showing to convince a USSC judge later on as well. I figured this would be implied, but there you have an additional parameter.

"Curious enough, you rant about genus-species and yet leave it out of your hypo. QUESTION: Are you conceding that the genus-species crap you spewed was a red herring? Are you conceding that the actual difference in products is substantial enough to have key different characteristics (whether the characteristics have been exactly identified or merely inherent in the product as created by the process)and substantial enough to void the genus-species grouping?"

Which hypo did I leave it out of? It is present in all of the hypo's listed. Nirpa's, mine, and the one by max. It is a key feature of all of the hypo's listed. This should be the initial thing which smacks you in the face. Let me put it to you this way. Let's say ABC is in real life SiGeSn. Let's say the prior art is SiGeSn which has a crystal lattice that looks simply like boxes stacked front to back top to bottom such that they repeat "infinitely" in all directions. Let's say your method and my method produces SiGeSn that looks like boxes stacked front to back top to bottom and where all the boxes have an extra Si atom directly in the middle of them such that the boxes repeat "infinitely" in all directions. But, at the time you filed, you didn't know that the structure was such because you didn't have the equipment to be able to tell it. However, you could tell from cheap tests that some extra Si was going into the product and must be in there somewhere.

"You are intending to make ABC. Your hypothetical already states ABC is old in the art. QUESTION: How can I answer such a poorly constructed hyptothetical?"

You can start by understanding the crystallography involved in the hypothetical. But I doubt this is going to happen anytime soon. The hypo isn't poorly worded, it is being poorly understood because you don't know what I'm talking about in terms of crystallography.

Let me lay this out for you. Here's how someone like Nirpa reads my hypo.

ABCS% is known in the art. It belongs to the genus ABC. It is known that you can make this substance by X process. Thus, ABCS% and ABC are known in the art. With me so far Red leader?

You come along, perform your method Y, and happen to make some ABC. Oh boy, you're so exicited! You just made ABC by a new process! You think to yourself. I could probably patent this process. But why stop there?!?! You think to yourself I could probably patent this process, and the product made by it. I'll use a product by process to do the later. And, you happened to have some data from some sensors in the chamber where you made the ABC that shows different readings than readings that were reported in the prior art! Oh boy o boy, the examiner can't reject this pbp claim! You have evidence showing that it must be different structurally! Clearly, this must not be ABCS%, this must be something different! You don't know what, and you don't care, because you have pbp claims and you have evidence! It could be ABCS@ or ABCS& or ABCS* or ABCS# but that doesn't matter, all that matters is that it is different from ABCS%. (In reality you made ABCS$ but you didn't care to find out)

You file for a patent, send in the evidence and wham bam thank you ma'am a patent issues with your name on it! Lo, and behold your glory and majesty! You are promoting the useful arts! You get the claim "1. A product comprising: ABC made by process Y."

I come along two years after. I decide, hmmm, there are several methods of making ABC, but I wonder if I could make it also, maybe in a different way. After a year or so I come up with process Z and make ABC! OMFG OMFG I think! This process is the awesomez and so is the product! I think, man, I'd like to spend 1M$ setting up a factory to make this stuff so I can make a billion dollars! So, I think to myself, first things first. Let's look at the patent literature and see if someone has claimed this particular method and product. I look around, I see Nirpa et al. (patented 2004) describing ABC formed by process X that happens to be, more specifically, the species ABCS%. I say, hmm, well that's interesting print him out and keep a copy handy. Then I keep looking. I see Noise et al. (patented 2008) describing a process for making ABC which happens to be Y, and they seem to have acquired a product by process claim covering the product formed thereby. Hmmm interesting I say, print them out and set them on the desk here for further review. Finally, I find Old Timers et al. (patented 1965) which describes a product and method of making it, ABC by process O (O for old timers method). I say, well that is interesting, print it out and set it aside.

So. I have three patents to look at.
1. Nirpa et al.
2. Noise et al.
3. Old timers et al.

I throw no. 3 in the trash because it is expired.

I look at Nirpa et al. and think to myself, hmm, it says here he made ABCS%. I had better find out what the crystallography of my ABC is post haste to make sure it isn't the same as his! So I do. It turns out I made ABCS$! Great, I'm in the clear! Billions of dollars are all mine!

But wait, one last patent to look at. Turning to Noise et al. I see that they made some ABC by process Y. Hmmm, I think to myself, I wonder what that ABC actually is that they made? I wonder if it is actually ABCS$? Perhaps it is ABCS% like in Nirpa? Probably not I think to myself (because I am a pretty smart guy). Perhaps it is ABCS$, or perhaps it is ABCS#, or perhaps it is ABCS@, or maybe ABCS&. I can't tell from the patent. I look in my handy dandy manufacturing catalog and a machine to perform process Y costs 1M$!!!!! That's my 1M$ that I was going to use to open my factory! My process uses machines that cost only 10k$ so I should have enough to open my factory after all construction and workers costs etc. So, I think to myself, well, let me contact an attorney about this patent matter. I call up this attorney at law Paul F Morgan for some help on this matter. For the low low price of 1000$ he tells me that if both me, POSHITA, and him can't tell just from the patent itself that the patent covers the product I'm making then it hasn't given me and the public notice that it covers that product. I say ok, thanks man. He tells me also about this guy he knows, patent hawk, who'll kill Noise et al.'s patent with prior art. I contact Hawk, and 1 month later and 10k$ poorer, Hawk tells me it is legit as far as he can tell. So, I figure, alright, I want to make a billion dollars, and me, POSHITA, and Mr. Morgan can't tell what Noise et al. actually made, so it can't be applied to my product in a court of law, unless Noise et al. go ahead and run tests and it turns out that it is ABCS$ and then sue me.

I decide I want a billion dollars more than I fear one patent (because I would simply kill Noise et al if they gave me some sht anyway). Plus, Mr. Morgan says I had to be put on notice of what was being claimed and the notice given doesn't fit my product because my product is made by process Z and all Noise et al. told me was that it was made by process Y.

I make my factory, file for a patent on "1. A product comprising: ABCS$", and make my billion dollars. Noise et al. reads about me in the paper and says, why, that might be my ABC that I made that he is making a billion dollars off of! I should run tests to find out! 15k$ poorer Noise et al. finds out they made ABC$ by their process Y. Noise et al. sues in the local DC for infringement and, if they can get it, invalidation of my patent (6 et al. patented 2010). They want an injunction and 700M$ since they allege willful infringment.

Judge Newman is presiding (She got fired from the Fed Circ when congress got word about her smuggling limitations in from specifications). Infringment! Infringment everywhere! Someone close the window, it's an infringment blizzard! Newman asks Noise et al., 700M$? Is that all you'd like? It seems to me like 6 here made 1B, and spent 1M making his factory. Seems to me like you're entitled to 1.2B, wouldn't you agree? Noise et al. agrees and does a little dance. The Court decided to avoid the issue on invalidity of 6 et al's patent.

I decide I don't like this decision (because it will mean that I will have to kill Noise et al.) and timely appeal to the Fed. circ. I say: But I was never put on notice that I would infringe!

A majority agrees writes a decision similar to Abbott Labs v. Sandoz (Fed. Cir. 2009) (en banc)and the case is sent back to the DC, where, unfortunately, Newman was killed right outside the courtroom by a disgruntled patentee who thought she would smuggle her in some limitations from her specification. Alas, she didn't have her reading glasses on her that day and thus, failed to do so. A tragic end for one of the great legal minds of the last century I will admit. And ironic, since it was at the hands of one of the very people she represented all her life (patentees). The new DC judge reads the CAFC's position and decides there can be no infringment since the defendant was not put on notice by the claims of Noise et al's patent.

Noise et al., furious, says "a product is a product is a product" and stomps out of the court. And also puts a flower on poor Newman's grave who was buried right nearby the courthouse she so loved in life.

I do a little football dance and enjoy my billion dollars.

I waxed a bit poetic but I think you get the point.

"Further, how are you doing a patent search on something that is itself unknown to you?"

I stated in my original hypo that I bothered to go out and run the tests to figure out the crystallography of the ABC I made before I did the search. So, I at the time of my search, unlike you at the time when you filed, do know what the product is. I stated this already and I stated it in the above recounting of the hypo in story form.

"Your hypo states that your aim is ABC and not ABCS$, and that ABCS$ is unbeknownst to you, yet you also state that you are filing a patent on something that you do not know."

I started out wanting to make some ABC. It just so happened that I made a type of ABC I didn't know about, ABCS$. I then filed for a patent on it because I couldn't find it listed in the literature anywhere.

"QUESTION: Is this second filing also a Product By Process application? - That would be an interesting wrinkle."

No, it isn't. I bothered to run the tests and find out the structure of my product so I didn't need one.

"You have described the product and received (based on your hypo) a valid patent for a product. "

Right, and the problem lies in how you described it. Because that manner of describing it doesn't put others on notice of the full scope of the product claim. I can't look at max's simple claim when I'm doing my product clearance search and say: Hmmm, looks like he's claiming ABCS$, unless I happen to be god almighty.

"You describe how to achieve your product, and according to your hypo have met all 112 concerns. The quid pro quo has been acheived and the world is a better place because now the world knows how to make your product and can possess the Product. "

What about the portion "particularly point out and distinctly claim"? I don't know if that is involved in the "quid pro quo", but it seems to me like it is. You have to particularly point out and distinctly claim all that you want in your claim's scope. Noise et al. didn't particularly point to 6 et al's product with their claim. They generally, at best, pointed to it. See page 21 of the decision. Btw, can you find an easter egg on page 21 of the decision? I can.

"QUESTION: If in fact your "gotcha depends on the genus-species distinction not being significant enough, then that very same prior art that SHOULD prevent your Product patent would nab the follow on Product application. At the very least, both the prior art and your art should be found by the examiner. I am sure that you do not want to open the door to questions about quality examination (which is the real elephant in the room)..."

I don't think I know what you mean by the genus-species distinction not being significant enough. A newly discovered species would pretty much always be "significant enough" in my book. So I don't think that is what I'm saying.

That said, the understanding of what is going on here, including the species/genus bit is crucial to the hypo as a whole.

We have ABC

species of ABC include

ABCA
ABCB
ABCC
etc.
and they also include
ABCS$
ABCS%
ABCS@
etc.
where the S(symbol) signfies a crystallography of the crystal in question.

In any event, this hypo is probably a lost cause because it is simply too complex for you to understand the nuances of. I'll either have to think of a simpler one (which is hard because all instances requiring a pbp are almost by definition complex) or spend the next week walking you through Crystals 101.

Even having answered all your questions you'll still probably not be able to understand.

Here, let us pretend that this is the basic structure of the prior art.

http://cst-www.nrl.navy.mil/lattice/struk/sc.html

and this is the basic structure of product created by both your new process and my new process.

http://cst-www.nrl.navy.mil/lattice/struk/a2.html

Yet, both structures could very well be SiGeSn. I'm not saying that this is actually possible with SiGeSn irl, but there are compositions which it would be possible for I just happened to pick SiGeSn and these two structures at random and to keep it simple.

Now, surely you can tell that the prior art does not anticipate the instant claims (yours and mine). At the time of filing, you did not know that the structure was as pictured above.

http://cst-www.nrl.navy.mil/lattice/struk/a2.html

But you knew that it wasn't

http://cst-www.nrl.navy.mil/lattice/struk/a_h.html

Because of some simple measurements, and you convinced the examiner.

But, looking at your claim duing my search, I don't know wtf your structure is any more than you did. It could have been

http://cst-www.nrl.navy.mil/lattice/struk/a10.html

Or it could have been

http://cst-www.nrl.navy.mil/lattice/struk/d0_9.html

or

http://cst-www.nrl.navy.mil/lattice/struk/nbo.html

or

http://cst-www.nrl.navy.mil/lattice/struk/a_a.html

nobody would know.

Then I come along, make my ABC, and it turns out to be

http://cst-www.nrl.navy.mil/lattice/struk/a2.html

just like yours actually is.

I run better tests than yours and find out that is specifically the structure. I do a search, don't find that structure claimed, and file for a patent myself. Then I go start making it by my process. Your patent was there when I searched, and I saw it there. But I had no way of knowing that I would infringe. You failed to put me on notice.

So it all boils down to: QUESTION DID YOU PROPERLY PUT ME ON NOTICE OF THE SCOPE OF THE CLAIMED INVENTION? QUESTION: DID THE USSC RULE ON THE ISSUE?

The answer is, and has to be, as the court noted, no and yes. Your notice was only proper for ABC made by your process. Thus, they're limiting you to that in terms of people infringing your patent.

http://www.patentlyo.com/07-1400.pdf

As they note in relation to the word "obtainable" in the instant claim, letting the claim go without the "new" infringment analysis, and merely using the old analysis because of the choice of words in the patent, the claims are widened beyond that which is actually invented. Such is a windfall to the inventor at the expense of future innovation and proper notice to the public of the scope of the claimed invention.

As further noted by the court, the USSC spoke to the issue. That pretty much seals the deal no matter what we mere mortals say.

Disclaimer in so far as it is probably impossible to form SiGeSn in very many of the above crystal shapes. That is merely being used as an example to help folks understand what is going on and I'm trying to keep it simple.

I've gtg get ready.

Posted by: 6000 at May 29, 2009 1:22 PM

Readers, I don't understand any of that stuff above, but I do want to respond to 6's argument that "obtainable" claims are offensive, and should always be rejected, because they lack the capacity to put the public on notice of their scope.

In Europe, "obtainable" claims are indeed always rejected, except when Applicant can prove that i)there is no better way to characterize the subject matter AND ii) ABC(Y) is per se new and not obvious, patentably distinct from ABC(X), such as when ABC(Y) cures CJD but ABC(X) doesn't. So, Applicant in Europe includes in the app as filed a written description of that cure. Otherwise, she fails at the first fence. The app is published (WO or EP-A) and the world reads of the cure for CJD.

Years later, one of those corporate readers (also a CJD specialist) launches ABC(Z), which acts just like ABC(Y). Tests reveal it to be (as far as we can tell) the same stuff as ABC(Y), and different from ABC(X).

6, have you heard of the reversal of the presumption of infringement, when D launches his made in India version of ABC, that performs just like ABC(Y). The only known way to make this wonder product is by patented process Y. The presumption (rebuttable) is that D must also have made his stuff by process Y. Do you have that, in the US jurisdiction?

That presumption has come into European patent law relatively recently, out of necessity to balance the needs of innovative and generics pharma. I see the rise in Europe of "obtainable" claims serving a similar public policy objective. I don't see how any informed reader of the "obtainable" claim in the WO or EP-A that I mentioned above can legitimately claim to be in want of fair notice. Can you, now I've written a bit more?

But aren't these blogs such a relief from the day job? One has the freedom to invent the Rules that decide who gets a patent and who not.

Posted by: MaxDrei at May 30, 2009 12:39 AM

"One has the freedom to invent the Rules that decide who gets a patent and who not."

Careful MaxDrei, THAT is exactly the position that 6 feels IS his day job as an examiner.

Posted by: Noise above Law at May 30, 2009 6:24 AM

"Readers, I don't understand any of that stuff above, but I do want to respond to 6's argument that "obtainable" claims are offensive, and should always be rejected, because they lack the capacity to put the public on notice of their scope."

I never said that max. I simply never said that. But I do appreciate you simply stating that you don't understand the stuff above. It saves me loads of time.

"Do you have that, in the US jurisdiction?"

I don't know and I'm not going to find out.

"I don't see how any informed reader of the "obtainable" claim in the WO or EP-A that I mentioned above can legitimately claim to be in want of fair notice. Can you, now I've written a bit more?"

You didn't even tell me what they claimed. I just started writing a response but you left the hypo so open ended that there are 20 different scnarios at least all of which lead to different outcomes. Suffice it to say that evidence of ABC made by Y curing some disease isn't necessarily evidence that you changed the structure of the ABC, because you may have simply inadvertantly had some F slip in to your ABC to make ABCF. Who knows? If that is the kind of evidence your office accepts then it is bogus with respect to the claim "1. A product comprising: ABC obtained by process Y". You either need some limitations in there about curing or something. And then you simply have a claim "1. A product comprising: ABC obtained by process Y which cures disease K" or "1. A product comprising: ABC which cures disease K". In either of which cases you've simply used functional language to distinguish and the infringer making ABC by Z which cures K certainly infringes.

I still think that you are a bit lacking in understanding of when these types of claims should even be proper. Of course, in the US, we'll let them have it at the drop of a hat. All the more reason for the currently implemented rules on infringment.

Posted by: 6 at May 30, 2009 7:04 AM

I was wondering how long it might take, for somebody to take the bait, and come up with exactly that observation. But as I'm operational in Europe (brace yourselves for yet another boring plug for the EPO) I don't have to worry directly about such things. The number of loose cannons on the EPO exam deck is admirably small. EPO management runs a tight ship.

Posted by: MaxDrei at May 30, 2009 7:12 AM

6, it's true. I am lacking in experience how to manage functional language in US claims. The way I've been brought up, words (even in claims) mean what they say. I suspect we are miscommunicating because you are factoring into the debate special US rules which you are automatically applying, but of which I am ignorant. Example: the claim includes a word string which you deem "non-limiting" so, for you, those words cease to exist, and the claim is to be construed, from that point on, as if the words simply aren't there. Self-evident to you, but inexplicable to me. In my eyes, those words are still there, and have to be given a meaning. See, we are already in two mutually exclusive worlds. Forgive me, but I think your line is just about as mad as construing (according to your Statute) "cutting means" to be (out of the universe of cutting meanses) the unique cutting means of the best mode and (perhaps) a little indeterminate more. In Europe, of course, "cutting means" means "everything under the sun that has any capability to cut (in the context of the technical field (warm butter, say, or diamond) of the claimed subject matter)".

You and I probably can't take this debate much further, cos I just can't follow the rules you are applying.

Posted by: MaxDrei at May 30, 2009 7:34 AM

6: They hanged teenage, not very intelligent Bentley in Britain in the 1950's for murder of a policeman. The evidence at his trial was that he said to his co-Defendant (who was carrying the gun and pointing it at the policeman) "Jim, let him have it".

The jury decided that Bentley meant "Go on. Shoot him". They didn't believe defence counsel's argument, that the words meant "Jim, hand over the gun to that nice policeman."

Will you tell me what you mean, above, by "we'll let them have it"?

Posted by: MaxDrei at May 30, 2009 7:42 AM

Besides the fact that telling someone to go ahead and shoot someone isn't murder, that is a ridiculous story.

We'll let them have the claims.

Posted by: 6 at May 30, 2009 10:35 AM

Ridiculous? 6, there you ambiguously go again. Are you saying:

1) I made the story up, or

2) My way of telling it is ludicrous, or

3) English law is ridiculous.

But thanks for the free advice on the criminal law of England, and for your clarification, that claims pending in the USA (which uniquely has this thing called The Presumption of Validity) the PTO lets through to issue "at the drop of a hat". I get the sense that, if you were in charge at the PTO, you would stop that particular practice. Good for you.

Posted by: MaxDrei at May 30, 2009 12:40 PM

"Besides the fact that telling someone to go ahead and shoot someone isn't murder, that is a ridiculous story."

Your understanding of criminal law is less than your understanding of patent law.

"All the more reason for the currently implemented rules on infringment."

Currently implemented rules on infringement? Like Hawk said, your career as an examiner is assured.

Plenty of time to blog though. Great for you. Tragic for us.

Sigh.

Posted by: don't bother at May 30, 2009 6:01 PM

Thanks, DB, for drawing attention to that illuminating turn of phrase "rules on infringment". I gather that all Americans instinctively have a level of respect for the "Rule of Law" that lies deeper than in any other country. I see from the case of those four patriotic American lawyers hu addi_tively briefed Dick Cheney that this admirably deep level of respect runs right to the top. I see that every humble PTO Examiner also has this respect for Rules. Bravo. In my pious (Sunday morning) opinion, no American lawyer should ever forget their responsibility, as an educated person, to remark when The Rule of Law is under attack, then vigorously and (when needed) outspokenly defend its integrity.

Don't bother about what he writes, 6. Instead, keep on blogging. You continue to educate me.

Posted by: MaxDrei at May 31, 2009 12:59 AM

Posted by: 6000 at May 31, 2009 2:37 PM

First things first, 6, you still owe me an answer to my Aaron challenge (151 rather than Alappat).

Your attempted answer fails for numerous reasons including not being an actual answer to the question, throwing in a never-before-mentioned misdirection and for being a completely erroneous reading of the law.

The answer you provided to (in part):
"It is NOT appearance of the Law and does not open to your subjective interpretation what the Law may or may not mean. You may NOT apply interpretations that do not meet the “under the law” limitation."

was:
"Yes it is, does and yes I can, in so far as my spe/appeals specialist will allow me. If you believe otherwise you are mistaken.

What else could it possibly mean? Could it mean that if the application appears to be entitled to a patent under the law to an attorney then an application shall issue? Who should it appear that way to? The president? The hotdog vendor? The man in the moon? A district court? The fed circ? None of the above. Me."


6, pay attention to simple English language structure. I’ve explained this to you and you insist on mixing it up. There has NEVER been a question as to the subject of the sentence – Why do you throw the attorney and hapless hotdog vendor into the mix? Another misdirection ploy meant to confuse – sorry, it won’t work – let’s stick to the actual point at hand. In context, the phrase “under the law” is not the focus that the subjective interpretation of the word “appears” applies to.

As I said, I explained this to you before. So let’s repeat the lesson:

A reminder to 6 – you expounded on the first phrase “If it appears” and thought this gave you the authority to shape the Law as you see fit. I added the second part “under the law” to put your “If it appears” into appropriate context... …The “under the law” is a RESTRAINT for your “appears” interpretations, and is not an object of your interpretations.

APPEARANCE GOES TO “ENTITLEMENT” AND IS RESTRICTED TO “UNDER THE LAW”.

It is NOT appearance of the Law and does not open to your subjective interpretation what the Law may or may not mean.

YOU MAY NOT APPLY INTERPRETATIONS THAT DO NOT MEET THE “UNDER THE LAW” LIMITATION.

It is NOT a free pass for you to apply subjective determination “of the law”. You are a slave to the law, not its master. Your picked-on-little-boy-induced-God-complex again gets the best of you. You may have put forth your version ten million times, that only means that you have been wrong each of those ten million times (The maxim of “say it often enough and it becomes true” does not hold). You had quoted (and still quote) out of context. Since you lack the ability to comprehend, your ability to determine when something is or is not in context is severally impaired.


For all your vaunted admonitions, you have such terrible trouble comprehending the law. And once again, you STILL have not explained how my clarification takes things out of context. I merely corrected your quote, which was out of context.

If all you can offer for manning up is the squirelling answers you have attempted to foist, it is doubtful that you can man up at all.

One more chance, or lace up your sneakers and your dress.

Posted by: Noise above Law at June 1, 2009 1:58 AM

"A reminder to 6 – you expounded on the first phrase “If it appears” and thought this gave you the authority to shape the Law as you see fit. I added the second part “under the law” to put your “If it appears” into appropriate context... …The “under the law” is a RESTRAINT for your “appears” interpretations, and is not an object of your interpretations. "

I simply disagree, and so do the courts from all indications. I forgot the nice case I used to cite when discussing this with PDS (this precise issue was discussed to death about 2 years ago). It was a nice case showing off my point admirably. Eventually PDS gave up ivo comments that eventually popped up from his colleagues confirming my opinion as perfectly reasonable. All in all, sure it is restraint on when I may issue a NOA in so far as I have to actually believe that the law supports my position, but it is entirely a subjective belief which must be held. No matter what else happens, all of that statute hangs on what appears to me to be written as the law. Just because it is a restriction limiting me solely to what I believe doesn't mean that it somehow restricts me to act as someone else feels the law is to be interpreted, unless as aforementioned, they are higher up than myself in the PTO and have a feeling on the subject. Simple as that.

This is practically directly analogous to policemen. They must act under the statutes correct? Yet, one day, a policeman gave me a ticket for making an illegal U-turn at an intersection. Charged me under the statute citing when a U-turn is illegal. I looked up the statute and it turns out that the statute actually specifically exempts U-turns at intersections. Note here that there was a "NO U TURN" sign posted at the intersection, and that there is a statute requiring you to obey all traffic signs. The judge dismissed the case as nobody knew which statute was the one about obeying signs off hand at trial (except me). But does that mean that the officer acted improperly? Probably not, as there is probably a portion in the law which provides that they must apply the law as it appears to them, or some such equivalent thereof. Does that mean the officer is a "slave" to the law? No, it means he must operate within it as best they can tell, same as me. Of course, that doesn't mean that the court will be happy with them, or that their bosses will be happy with them if they keep getting it wrong, and they get complaints etc. We're both admin agencies, sorry, it is what we do. Enforce the laws. It is a tricky business because we can only enforce them in so far as we understand them to be. That's just how it is.

"APPEARANCE GOES TO “ENTITLEMENT” AND IS RESTRICTED TO “UNDER THE LAW”. "

I disagree, in so far as you assert it only goes to entitlement. Appearance goes to "entitlement to a patent under the law".

As in:
"If it appears that applicant is entitled to a patent under the law"

I guess you could say that I feel like the restriction of "under the law" restricts which type of entitlement I'm to be looking at, collecting a subjective appearance of, not the appearance itself. In a way that's what you could say.

In any event, there's no need to slice up the statute how you are when what it says is plain to see. And is even more plain to see in the context in which it is being used. It is instructions as to when a NOA shall be issued, and it states plainly that it shall happen when it appears in a certain way, presumptively to a certain person or persons reviewing the case.

"And once again, you STILL have not explained how my clarification takes things out of context."

Simple, you believe in slicing the statute up as above rather than reading the whole sentence at once. That's the context being left out. Leading you to believe steadfastly that the "under the law" bit restricts what appearance I shall gather from a case. Ridiculous. You may as well just come out and say that the law is restricting my thoughts on the matter of entitlement to a patent of a specific app. Beyond ridiculous. If it is restricting the appearance, rather than the entitlement, then it is in effect restricting my thoughts on the matter. Again, ridiculous. Such an interpretation would never be upheld.

"You may have put forth your version ten million times, that only means that you have been wrong each of those ten million times "

Perhaps, perhaps not. But what it does most certainly mean is that I tire of explaining it and again winning support to my side of every newbie to the board upstart who thinks she's something. The bottom line is, and will always be, no matter which interpretation you take, it is a subjective determination to be made. Whether or not I make the right determination or not is of little relevance to the discussion with respect to the law USC 151. What is of relevance to the discussion of USC 151 is that I fulfill my duty to see how the case appears and write it down.

"It is NOT a free pass for you to apply subjective determination “of the law”. "

Well, I mean sure, I have to keep my interpretations reasonable so I don't get in trouble. But I do keep them reasonable.

"You are a slave to the law, not its master."

Well, that depends on your point of view darlin'. If the law needs to dance, and is open to dancing, as it pretty much always is since it loves to dance, then it'll dance for me. If you would like to dance, we can dance ;) Salsa perhaps? Sat? Idk, maybe they're doing it Fri this week.

Posted by: 6000 at June 1, 2009 10:58 AM

"Whether or not I make the right determination or not is of little relevance to the discussion with respect to the law USC 151."

You have no clue what respect of the law means.

You are indeed hopeless.


"But does that mean that the officer acted improperly? Probably not,..."

WRONG - If the officer acted properly, the ticket would stand. If the officer acted improperly, the ticket does not. If you cannot understand such a simplified black and white example of your own choosing - you are indeed hopeless. Tell me, according to your own example, does the policeman's boss write the rules of law? Can the policeman or his boss or even his boss's boss simply decide that residential speed limits today will be 32.75 mph? C'mon 6, follow your own logic and see where it leads you.


"Simple, you believe in slicing the statute up as above rather than reading the whole sentence at once. That's the context being left out."

WRONG - the English language has rules and one must follow the rules to gain the intended understanding. You don't so you won't. Besides, I ADDED the "under the law" to your butchered rendition and chopped sentence of "appears". You had put forth your quote out of context in an incomplete sentence. It was you who sliced the statute to obtain a meaning that makes sense to you and to no one else. I completed the sentence for you and explained what the sentence, in its entirety means. Your answer to my challenge remains lacking.

Try again.

This time try comprehending what you read instead of trying so hard to enforce what you believe. Stupidity is the definition of persisting in ignorance.

Posted by: Noise above Law at June 1, 2009 6:07 PM

You really need some college English classes darlin.

I most certainly will not try again, there is still plenty of good stuff above that you saw to ignore. Such as "under the law" merely modifying the type of entitlement I'm looking at when I take account of how a case appears. And not to mention that your hoped for manner of slicing up the statute, and subsequent outrageous interpretation thereof leads to limitations on what I think.

Your closing remark is probably enough of an admission to show that you are catching on, we enforce "what [we] believe." And this is what the statute demands. It does not demand that we try to comprehend what we read (although, as an aside, I do this as well). It demands that we enforce what we believe.

Appears is the key word, and it is what turns the whole thing into a subjective determination, even if we go with your interpretation. Even if we go with your interpretation, I (or my superiors) am merely limited by what I know to be the law which is an entirely subjective thing. We cannot be limited by laws which we are not aware of, can we? That's why the chopped off version I put forward was just fine, and is just fine even if we take your interpretation.

I think you understand exactly what my position is, and how it is completely reasonable. You're either determined to hear me say I was wrong just for the sake of hearing it, or you're trolling. Well, you're trolling no matter what, but you seem to be intentionally trolling. For these reasons, until you can show without a shadow of a doubt that "under the law" somehow magically modifies "appears" then this is the last you'll hear about this subject from me.

And hey, if the former is the case, simply say so, and I will, and we can go dancing this weekend.

"Can the policeman or his boss or even his boss's boss simply decide that residential speed limits today will be 32.75 mph? "

In practice, yes. How? By deciding not to pull anyone over unless they go 32.75 mph. In fact, I hear about this going on all the time. Haven't you? Everyone and his brother knows that while the speed limit remains technically 25, if the one enforcing that limit feels it should be 32 then it will be 32 in real life. But that is irrelevant to our discussion so you can put it down now.

Matter of fact, I sped by a cop on the interstate going 70 the other day. He didn't pull me over. I wonder why? Was it because the law changed? No, it was because he was enforcing it his way. There is a big huge gulf between what the law is, and how it is enforced in case you haven't noticed. And that gulf is what is involved in good ol 151.

Posted by: 6 at June 2, 2009 10:30 AM