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September 4, 2009

Junk Examination

To characterize USPTO examination quality over the past 20 years as uneven would be a complimentary understatement. 'Good enough for government work' would be more like it, with 'shoddy' pithily on-point. In the 1990s the PTO granted reams of junk patents, creating a political firestorm as the junk hit the litigation fan. In the past few years, the reaction by a politicized patent office has been a sphincter of parsimony: not granting patents for deserved inventions. Herein a case in point.

In re Robert Skvorecz (CAFC 2008-1221) precedential

The Skvorecz invention is a wire chafing stand, such as is used for supporting a chafer (a device for maintaining hot food outside the kitchen). The specification explains that wire chafing stands are transported and stored nested together in multiple units, and that the nested stands tend to wedge into one another and are then difficult to separate. The invention is an improved structure whereby nested stands are readily separated.

Skvorecz got 5,996,948, but the drawings were wrong, apparently by PTO mistake. The PTO wouldn't let him fix the drawings. There the trouble started, but got a momentum of its own.

Mr. Skvorecz's patent application was filed on January 12, 1998 as a continuation-in-part, and after due examination, on August 12, 1999, the examiner issued a notice of allowability and examiner's amendment. On October 14, 1999 Mr. Skvorecz filed an amendment under 37 C.F.R. §1.312 to correct Figures 12 and 13 in the patent application, for which the PTO had prepared final drawings, as the rules provide. He explained: "The offsets 42 were drawn backwards by the Examiner in Figures 12 and 13 and therefore need to be corrected to properly conform to the specification so as to facilitate the nesting of one wire chafing stand into another." Mr. Skvorecz stated that "[t]he correction is necessary to conform the drawings to the description and claims," but that "this is an error limited only to the way the offsets 42 in the upper rim are shown facing the opposite direction" and does not affect the claims or require any changes in the specification. The '948 patent was issued on December 17, 1999 with Figures 12 and 13 unchanged.

On January 20, 2000, the examiner denied Mr. Skvorecz's request to correct the drawings, with the explanation: "Proposed new figure changes appear to include new matter not originally disclosed."

So Skvorecz filed a reissue application.

No changes were made in the specification or drawings. During the reissue examination, claim 6 was allowed and is not before us. The reissue examiner rejected claims 1-5 and 7 as being an improper recapture of surrendered subject matter; the Board reversed this rejection, which is not before us.

The reissue examiner rejected claims over prior art (Buff). The appeals board gratuitously tacked on indefiniteness (§112 ¶2) and failing the written description requirement (§112 ¶1) for some claims. Hence Skvorecz had to take it the CAFC.

The PTO gets the benefit of the doubt.

The PTO is governed by the Administrative Procedure Act (APA), and the rulings of its tribunals receive the APA standard of judicial review. Dickinson v. Zurko, 527 U.S. 150, 155 (1999) (applying the APA to the PTO). Thus on appeal we give plenary review to the Board's legal conclusions, and review its findings of fact to determine if they are arbitrary, capricious, or unsupported by substantial evidence. 5 U.S.C. §706(2). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

Anticipation, 35 U.S.C. §102

A rejection for "anticipation" means that the invention is not new. Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (anticipation requires that the identical invention is described in the reference); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995) (same). Anticipation is a question of fact, and is reviewed accordingly. Glaverbel, 45 F.3d at 1554.

Supreme stubbornness at the patent board. Familiar to patent prosecutors nationwide as an inflamed version of examiner stubbornness.

Mr. Skvorecz argues that his device is not the same as that of Buff, and that his claims require that each wire leg has a laterally displacing offset, while the Buff wire leg 48 does not have an offset that laterally displaces the leg from the rim. The Board agreed that "Buff's offset in the rim was not shown to be 'for laterally displacing each wire leg relative to said upper rim' as required by claim 1," but nonetheless maintained the rejection. On rehearing the Board stated that Buff's wire 48 is a "transverse member" and not a wire leg, and therefore that it need not have a displacing offset. Mr. Skvorecz states, and we agree, that Buff's wire 48 is a leg of the Buff structure. The Board's contrary statement is unsupported by any evidence.

It gets worse. The patent board feigned ignorance of the legal definition of "comprising."

The PTO now presses the theory that claim 1 is anticipated because it can be construed to include wire legs without offsets, because the claim uses the open-ended transition term "comprising."2 The PTO argues that because the signal "comprising" is open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states that the usage "comprising" permits the Skvorecz structure to include legs without offsets, although claim 1 states that "said wire legs" and "each wire leg" have offsets. Thus the PTO argues that even if claim 1 were construed to require that every wire leg has an offset, the Buff patent shows offsets 52 that laterally displace wire leg 49, apparently arguing that it is irrelevant whether Buff's wire leg 48 has an offset. Thus the Board held that claim 1, when given its broadest interpretation, reads on the Buff structure and thus is anticipated.

The PTO has not correctly construed the signal "comprising." This signal simply means that the device may contain elements in addition to those explicitly mentioned in the claim. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) ("In the patent claim context the term 'comprising' is well understood to mean 'including but not limited to.'"). The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset.

The protocol of giving claims their broadest reasonable interpretation during examination does not include giving claims a legally incorrect interpretation. This protocol is solely an examination expedient, not a rule of claim construction. Its purpose is to facilitate exploring the metes and bounds to which the applicant may be entitled, and thus to aid in sharpening and clarifying the claims during the application stage, when claims are readily changed. See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). As explained in the Manual of Patent Examining Procedure (MPEP) at §2111, entitled "Claim Interpretation; Broadest Reasonable Interpretation," "Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified."3 This practice may also be useful in reissue examination. See In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).

3 Although, the MPEP "does not have the force of law or the force of the rules of Title 37 of the Code of Federal Regulations," MPEP Foreword (8th ed., rev. 7, Aug. 2008), it "is made available to the public and . . . describe[s] procedures on which the public can rely." Patlex v. Mossinghoff, 758 F.2d 594, 606 (Fed. Cir. 1985).

The signal "comprising" does not render a claim anticipated by a device that contains less (rather then more) than what is claimed. Here the examination expedient of "broadest reasonable interpretation" was incorrectly applied to interpret "comprising" to mean that not all the Skvorecz wire legs need have offsets, despite the claims that state that "each wire leg" has an offset. The Buff device does not have an offset located in each wire that serves as a leg to support the device... Anticipation cannot be found, as a matter of law, if any claimed element or limitation is not present in the reference. The "anticipation" rejection is reversed.

Indefiniteness, §112 ¶2

35 U.S.C. §112 ¶2 states:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

The MPEP at §2173.02 ("Clarity and Precision") states that the "focus during the examination of claims for compliance with the requirement for definiteness of 35 U.S.C. [§]112, second paragraph is whether the claim meets the threshold requirements of clarity and precision, not whether more suitable language or modes of expression are available."

The MPEP states:

Definiteness of claim language must be analyzed, not in a vacuum, but in light of:
(A) The content of the particular application disclosure;
(B) The teachings of prior art; and
(C) The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made.

Id.

The Board found lack of antecedent basis in a phrase, rendering a claim indefinite.

Mr. Skvorecz points out that reissue claim 5 is identical to claim 5 as issued in the original patent, and that the terms now criticized by the Board were not deemed indefinite by any examiner.

Further, the phrase had specification support, Skvorecz argued.

MPEP §2173.05(e), entitled "Lack of Antecedent Basis," states: "There is no requirement that the words in the claim must match those used in the specification disclosure," and "Obviously, . . . the failure to provide explicit antecedent basis for terms does not always render a claim indefinite." MPEP §2173.02 states: "Some latitude in the manner of expression and the aptness of terms should be permitted even though the claim language is not as precise as the examiner might desire." We agree with Mr. Skvorecz that the clause "welded to said wire legs at the separation" does not require further antecedent basis in claim 1, for a person skilled in the field of the invention would understand the claim when viewed in the context of the specification.

[T]he rejection on the ground of indefiniteness is reversed.

Written Description, §112 ¶1

The written description requirement is set forth in 35 U.S.C. §112, ¶1:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

A purpose of the written description requirement is to provide the public with knowledge of the patented technology, thereby to advance the useful arts. The description of the invention provides the foundation for the scope and content of the claims, and serves to demonstrate that the applicant is in possession of the invention that is claimed. In fulfillment of these purposes, the applicant may employ "such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The form and presentation of the description can vary with the nature of the invention; compliance with the written description requirement is a fact-dependent inquiry. In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).

PTO spite in full flower.

The PTO argues that the claim element "a plurality of offsets located . . . in said first rim" is not described in the specification, and is described only in the proposed correction to Figures 12 and 13, which the examiner refused to enter.

Mr. Skvorecz states that his unsuccessful request to change Figures 12 and 13 was not new matter but merely to correct an immaterial feature of offset orientation.

Figures 12 and 13 do show such offsets in the rim. However, the PTO argues that Figures 12 and 13 are partial figures, and do not show every leg's offsets and their displacement. However, the full structure is shown in other drawings of the various embodiments, in full structure (such as Figures 1 and 7) and partial structure (such as Figures 10 and 11). See In re Wright, 866 F.2d 422, 426 (Fed. Cir. 1989) (the specification as a whole must be considered). A skilled artisan would readily understand Figures 12 and 13 as partial structures showing detail of the offsets. "An applicant's disclosure obligation varies according to the art to which the invention pertains." In re Hayes Microcomputer Products, Inc. Patent Litig., 982 F.2d 1527, 1534 (Fed. Cir. 1992). A person skilled in the mechanical arts would understand the specification including the drawings as showing the offsets and the lateral displacement of each wire leg. The Board's finding that the written description requirement is not met is unsupported by substantial evidence, and is reversed.

Reversed and remanded.

Posted by Patent Hawk at September 4, 2009 5:32 PM | The Patent Office

Comments

Calling the PTO's B[l]uff:

The PTO makes equivalence assertions all the time: e.g., item A' in Reference 1 is equivalent to element A in your Claim 1.

The PTO frequently does so without reason or evidence in support of the assertion. (In legal terms, this is called decision making that is arbitrary and capricious or not supported by substantial evidence.)

The In re Skvorecz opinion tells us it's time to call the PTO's B[l]uff on this illegal practice. Challenge them. Where is the reason? Where is the supporting evidence? Without reason and evidence it's just made-up fantasy; like calling Buff's leg a "not-leg" when it is clear that it is a leg.

Posted by: step back at September 4, 2009 8:51 PM

a precedential piece with some meaty quotes - nice job Hawk.

Oh, and the case has good material too.

Posted by: Noise above Law at September 5, 2009 3:19 AM

Let's take a look at the claims before we accept Hawk's (and CAFC's) likely misinterpretation of the rejection shall we?

"1. A wire chafing stand comprising an upper rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area and having a plurality of wire legs with each wire leg having two upright sections interconnected to one another at a location below the lower rim in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to form an angle equal to or greater than 90.degree. with respect to a horizontal plane through said base support and being affixed to the upper rim adjacent one end thereof and to said lower rim at a relatively equal distance below the point of attachment to said upper rim and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said upper rim for laterally displacing each wire leg relative to said upper rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging."

"6. A wire chafing stand comprising an upper rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area and having two wire legs for supporting said stand at opposite ends thereof with each wire leg being of unitary construction having two upright sections of substantially equal length with the upright sections being interconnected to one another in a generally "U" shaped configuration below said lower rim to form a base support for the stand to rest upon and being interconnected to one another adjacent the upper rim for defining a handle for the wire chafing stand and being welded at predetermined locations to the upper and lower rims such that the upper and lower rims lie in substantial parallel alignment to one another and with each upright section extending upwardly from the base support to form an angle equal to or greater than 90.degree. with respect to a horizontal plane through said base support and further comprising a plurality of offsets located in said upright sections of said wire legs which separate the upright sections into segments lying in different planes relative to one another for laterally displacing each wire leg relative to said upper rim so as to facilitate the nesting of a multiplicity of stands into one another without significant wedging."

http://www.google.com/patents?id=de4XAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q=&f=false

First, let's look at Fig. 12 and 13. How is 42 drawn "backwards"? Why would the examiner even draw Fig. 12 and 13? Are we talking about a draftsman (like the USPTO used to keep around for this type of thing)? No examiner I know would draw a Fig. like 12 or 13. That would take like hours.

Now, the bottom line is that there is a difference between 12/13 and the rest of the patent, but it isn't that the indentation is "backwards". The indentation is in entirely the wrong piece of metal.

For instance, in Fig. 12 42 has an indentation. In Fig. 10 by contrast we see the wire corresponding to 42 in Fig. 12 (aka wire 12 in Fig. 10) is now straight, and 15 is the wire which has the indentation.

In so far as he wants to turn the indentation of 42 around that very well may be new matter. In fact, the examiner's (i.e. draftsman') amendment may be new matter as well. Looking to the specification we find no light shed on this situation because its description of Fig. 12/13 is so ridiculously different than either proposed drawing it is impossible to tell what is going on. The spec claims that there are indentations 42 in 14, rather than 15 in the previous Figures,

The question is, what did original Fig. 12/13 look like at time of filing and why was it changed by examiner's amendment? It would appear from the spec that it should have looked nothing like the examiners version or applicant's proposed version.

Now for new claim 1 standing as being anticipated:

"1. A wire chafing stand comprising a first [an upper] rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, [a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area] and having at least two [a plurality of] wire legs with each wire leg having two upright sections interconnected to one another [at a location below the lower rim] in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90° with respect to a horizontal plane through said base support and being affixed to the first [upper] rim adjacent one end thereof [and to said lower rim at a relatively equal distance below the point of attachment to said upper rim] and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first [upper] rim for laterally displacing each wire leg relative to said first [upper] rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging."

The portion at the end:

"for laterally displacing each wire leg relative to said first [upper] rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging"

Is functional language. Clearly denoted by the word "for" being used at the forefront. It is what the "plurality of offsets" "do". The board is stating that the applicant did not demonstrate that it was not inherent in the prior art, but, to my knowledge, the applicant didn't even argue this as not being shown.

Applicant simply argues "that his claims require that each wire leg has a laterally displacing offset, while the Buff wire leg 48 does not have an offset that laterally displaces the leg from the rim". That is, the applicant argues that the functional language has not been shown, but argues it in such a fashion so as not to recognize his limitation is merely a functional limitation, but implies it is rather a structural limitation per se. Applicant apparently isn't familiar with what the word "for" denotes.

The board agrees with applicant's argument, but, in it's wisdom realizes that applicant's argument is divorced from the claim language itself because applicant has treated a functional limitation as a structural limitation in his argument. Of course, such is not the case in the claim and this situation is recognized by the board. Although, to my knowledge, they didn't just simply come out and tell him, "hey moron it's functional limitation, not a structural limitation".

On rehearing the board apparently tried to explain to the man that the "wire leg" is actually a "transverse member" in itself and thus inherently has the displacing effect functionally claimed in the claim.

The CAFC on the other hand believes that the wire leg is simply a wire leg and apparently rejects the notion that a transverse member wire leg is a transverse member as in the reference.

The PTO apparently additionally argues that "it can be construed to include wire legs without offsets, because the claim uses the open-ended transition term “comprising.”" Which is true hands down but which statement NEWMAN misunderstands and reads as the PTO arguing "it can be construed to include a structure where all the wire legs are without offsets because the claim uses "comprising"". The structures can include 100000 wire legs, and some of them can be different than the claim language, just so long as "at least two" of them meet the claim language.

The CAFC notes that the claim says: "claim 1 states that “said wire legs” and “each wire leg” have offsets." which is of course true as well, but the "said wire legs" and "each wire leg" are merely the wire legs previously introduced in the claim as a "at least two" not "at least two and only two" or something that would limit the term comprising from allowing the structure to have 10000 legs. There can of course be thousands of legs due to "comprising". Buff for instance has 49 which creates "at least two" legs, and also has 50 which creates a "at least two" legs. 50 can of course not even be designated in the rejection, and we can focus solely on the legs created by 49.

So, "the PTO argues that even if claim 1 were construed to require that every wire leg has an offset, the Buff patent shows offsets 52 that laterally displace wire leg 49, arguing that it is irrelevant whether Buff’s wire leg 48 has an offset." Which is also true, if you simply designate the legs created by 49 as the "at least two" legs and leave 50 undesignated an operation allowed because of "comprising". That is, the claim only calls for one "at least two" legs to have the features which are at issue, and there is no issue with the reference having multiple "at least two" legs beyond the ones (49) designated as "at least two".

NEWMAN explains "This signal (comprising) simply means that the device may contain elements in addition to those explicitly mentioned in the claims". Which happens to be exactly how the PTO used it.

NEWMAN goes on to make an error (as typical): "The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset." Wherein she makes the mistake of assuming that "each wire leg" is anything more than "each of the "at least two" wire legs". Which of course it is not.

NEWMAN then goes on to make various true statements that are irrelevant and don't touch on the clear issue at play. Does the claim require only "at least two" legs? Or can there be a "first" "at least two" legs and a "second" "at least two legs" and a "third" "at least two" legs? The later is of course the correct determination.

A litigator would have a field day with this rubbish.

I'm surprised that she could convince her buddies to go along with this ruling, as I'm sure they know how to construe claims better than she does. Although, Friedman and Mayer aren't exactly the pick o the liter. Still they should've gotten the job done.

I should have known it'd be a shitfest of misunderstanding at the beginning by simply reading "NEWMAN" at the top.

In any case, here's a cleaned up version of new claim 1.

1. A wire chafing stand comprising a first rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, and having at least two wire legs with each wire leg having two upright sections interconnected to one another in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90° with respect to a horizontal plane through said base support and being affixed to the first rim adjacent one end thereof and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first rim for laterally displacing each wire leg relative to said first rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging.

here's the important parts:

1. A wire chafing stand comprising:
[blah blah]
at least two wire legs [blah]
and further comprising a plurality of offsets [blah] for laterally displacing each wire leg ("each wire leg" refering to the "at least two wire legs" by antecedent basis) [blah].

I'd love to see NEWMAN as a junior examiner. I really would.

Oh, and hawk, stop btching when people actually do get a good examination.

Posted by: 6 at September 5, 2009 4:33 AM

Upon further reconsideration, I think I know why NEWMAN et al. went along with this. This guy must have been pro se. So she simply imported him some limitations for his limitations, and overturned the board's antecedent basis rejection (IF he does exactly what the board says he needed to do in the first place and amend the claim in a certain way lololol).

Ridiculous.

Why does she insist upon sending people out into the world with patents that are going to be little more than a kickball for someone that knows what they're doing?

I don't know, at least this was simply remanded for further proceedings, she can't straight up allow the case.

It's like Wheeler all over again.

As to the final WD 112 I don't know. WTF was in original Fig. 12 and 13? Without knowing that no determination can be made. However, if it was something similar to the published 12 and 13 I would agree with the CAFC.

Posted by: 6 at September 5, 2009 5:06 AM

It is easy to spot a 6 "mega-post" -- start with some links, some big cites, and add a whole lot of uselessness in between. I've gotten to the point where I can identify a 6 mega-post after reading just the first couple of sentences. I ignore everything after that.

The problem with the BPAI is that they like to make sh_t up all the time. Most are former examiners who still have the itch to examine. The times I lose at the BPAI, the BPAI doesn't affirm the Examiner's rejection. Instead, the BPAI starts makes findings of facts and claim constructions that were never in the original prosecution.

In most instances, however, they don't describe these new "revelations" as being new issues that the BPAI punts down to the Examiner. As such, I'm left with either arguing with the BPAI (a useless endeavor) or filing a RCE and working with a claim construction/finding of fact that is completely bogus.

It is nice that the CAFC still believes in the "substantial evidence" standard. However, most Examiner's don't even know that standard exists, and those that do, don't understand it. As for the BPAI, they give it lip service.

Did a quick search on the BPAI decisions using the search term: "substantial evidence" AND reversed.

Got 122 hits. We are talking about 10 years worth of appeals and only 122 decisions mentioned substantial evidence in which the Examiner was reversed -- about once a month.

So .... next time you argue lack of substantial evidence in an Appeal Brief, think about the odds that the BPAI will actually consider that argument.

Posted by: 6 - the babbling baboon at September 5, 2009 5:31 AM

I agree with 6. The use of the transitional term "comprising" in no way requires that the claimed stand have only legs having the offset feature. If this was what Skvorecz wanted to claim, he should have used "consisting of". Newmanism at its finest.

Posted by: CAFailC at September 5, 2009 7:13 AM

http://www.google.com/patents?id=PbweAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q=&f=false

There's the reference. Sorry I forgot to include it.

Anyone not convinced need only do there own analysis divorced from the rest of everyone else's. It should take about 15 minutes with the claim and references right in front of you.

Posted by: 6 at September 5, 2009 8:59 AM

A question (which arises from my hasty reading of the Decision) on claim construction and "comprising", if I may.

Consider a soccer team. It has 10 outfield players and a goalkeeper. 22 legs in all. Now consider an imaginary claim to such a team, and characterized by a plurality of legs, each one of which is required to have an offset. The description explains how an offset gives on outfield player a big advantage. The reader can see that the offset would bring no advantage to the goalkeeper.

With his offset leg outfielders, the patent owner wins the league.

Next season, a second team takes the field with offset leg outfielders, and is winning all its games.

The claim is duly asserted (with a request for a very speedy trial). The Defendant infringer says "There is no offset in my goalie's legs. Therefore, there is no infringement of the "each leg" claim".

What, pray, does the CAFC say to that? Can't a "plurality" be a sub-set of the exhaustive and comprehensive set of every leg in the entire dog and pony show?

You will see that I am not persuaded by the reasoning Newman employs on this occasion. N is a chemist. Unless I get a helpful answer, I'm going to be sceptical, the next time she handles a non-chemical case.

Posted by: MaxDrei at September 7, 2009 3:07 AM

Max,

You raise a good question.

IMHO, the correct answer should be that the patentee is the master of drafting his own claim. So he (and he alone) has the power of defining which "legs" should count and which should not when he drafts his claims. If he inserts in his claims, "wherein said legs consist only of the legs of team members curently playing on the field but not including those of the team's goalee"; that is one thing. If he says, "wherein said legs consist of the legs of all team members [whether playing or not]" that is another thing.

However, the question in the case is whether the PTO can come in and arbitraritly and capricously decide which "legs" in the prior art device will be counted as "legs" and which will not? Can they selectively turn a blind eye to some legs and say those are not legs? That is the question at hand.

Posted by: step back at September 7, 2009 11:00 AM

Bad example that was hard to follow max, but at least it did get around to the point in the end.

"However, the question in the case is whether the PTO can come in and arbitraritly and capricously decide which "legs" in the prior art device will be counted as "legs" and which will not?"

Correct. And it can. That is well settled law, as that is specifically the way the operator comprising operates. There is, in fact, no other way for it to work, or it would lead to inconsistencies such as the one Max brings up above.

You try to avoid the issue he brings up by throwing control of the claim to the patentee, but Max is implicitly saying "the patentee wasn't any more clear or controlling than in the case at hand". And in that case standard rules apply.

"Can they selectively turn a blind eye to some legs and say those are not legs? That is the question at hand."

That could be a question, unfortunately that wasn't the question in the decision being decided upon by Newman. She simply misunderstood what was going on.

However, as mentioned above, if the answer is anything other than what I present, and what is standard "comprising" policy, then terrible inconsistencies start to pop up. In fact, Newman even recited what that policy is. Thanks for the assist Newman.

Posted by: 6 at September 7, 2009 12:19 PM

6,

Thank you for keeping the ad hom attacks down to a minimum and raising some good debating points.

For once, I agree with you that Judge Newman could have done a better job in explaining her position and that by not doing so, she added to the state of confusion.

Most of us are aware of the maxim that the transition phrase, "comprising" implies that the claimed item can have additional elements. In other words, "comprising" is an open ended version of possessing and having.

However, there are more maxims to claim construction than just the one. Another maxim is that a claim must be read as though seen through the eyes of an ordinary artisan and in view of the application taken as a whole.

One of the questions raised therefore, is what is the meaning of the word "leg" as seen from the context of Skvorecz's disclosure. Does "leg" implicitly have a functional aspect that calls for providing stable support and normally raising the rest of the object above a certain height when placed on a flat plane?

In other words, while it may be true in the extreme sense that a four-legged horse "comprises" two legs, those two legs do not provide the same kind of stable support and/or other functionality as do all four of its legs. If a hypothetical claim called for an animal comprising a plurality of "legs", then in the case of a horse, it may be correct to say the ordinary artisan would see that as meaning four legs and not just two legs in the case of the horse even though in the case of a human (or a bird), two legs may suffice. I respectfully submit that the answer may not be as clear cut as you initially propose.

Posted by: step back at September 8, 2009 4:29 AM

Let me be clear step, and let the Board be clear, since it appears I am the one directly stating their position. The board and I and are not implying that the features of the reference being discluded are not "legs". You could very well call them that. I'm sure the board would admit it straight up. However, that is not the issue. The issue is that you could also just as well not call them that, and call them "wires", "pieces of metal" or "second legs" etc. And that leads inevitably to anticipation.

"Does "leg" implicitly have a functional aspect that calls for providing stable support and normally raising the rest of the object above a certain height when placed on a flat plane?"

Perhaps, but what of it? Where does this point lead us? The wire frame in the reference as designated by the board should be able to support the rim in stable fashion and raising the rim above a certain height when placed on a flat plane.

"Another maxim is that a claim must be read as though seen through the eyes of an ordinary artisan and in view of the application taken as a whole."

I agree, and that specifically, is what the board's interpretation does. The board observed that the claim calls for a plurality of legs, and observed that the specification involved several pluralities of legs. Thus, the claim was interpreted to cover one of the plurality of legs.

"In other words, while it may be true in the extreme sense that a four-legged horse "comprises" two legs, those two legs do not provide the same kind of stable support and/or other functionality as do all four of its legs. If a hypothetical claim called for an animal comprising a plurality of "legs", then in the case of a horse, it may be correct to say the ordinary artisan would see that as meaning four legs and not just two legs in the case of the horse even though in the case of a human (or a bird), two legs may suffice. I respectfully submit that the answer may not be as clear cut as you initially propose."

I think you're trying to say that the horse is in the spec, therefore the claim to an animal with a plurality of legs is limited to animals having 4 legs. Not entirely unreasonable, but that's going to need a clear and unmistakable disclaimer of claim scope on the record. And even then, I personally probably would not allow it when amending the claim is so readily available. I just don't see the point.

Posted by: 6 at September 8, 2009 5:25 AM

So, now I see why my football team was over-complex. Given that a dog can still run, Step, even if one of its four legs has been amputated, if the claim defines a dog has a plurality of legs, each of which is black, would an accused dog, with three jet black legs and one pure white leg, infringe that claim?

6: I imagine you would go so far as to make a 102 objection if you had art showing a dog with a pair of black legs up front and a pair of white legs abaft.

Posted by: MaxDrei at September 8, 2009 7:46 AM

********The use of the transitional term "comprising" in no way requires that the claimed stand have only legs having the offset feature. If this was what Skvorecz wanted to claim, he should have used "consisting of". *********

If the claim had said "comprising ... a plurality of at least two legs ... a plurality of offsets for laterally displacing each wire leg," I think that I would agree with you.

However, I long ago in my patent draftign career realized the importance of the distinction between that scenario and "comprising ... at least two legs ... a plurality of offsets for laterally displacing each wire leg."

In the first example, the word "comprising" would permit you to add a dependent claim reciting "another plurality of at least two wire legs not laterally displaced by said pluriaty of offsets." But in the second example, you cannot do that. There is not a dependent claim you could permissibly add that would introduce another leg that is not offset. The claim at issue really is limited to a device in which each wire leg is latterally offset. Changing "comprising" to "consisting of" is not required. Judge Newman understands these finer points, and that is why she is so well respected by members of the patent bar.

It is really unfortunate that junior Examiners at today's PTO have been trained in such a politicized environment that they misunderstand proper claim construction to such a degree. It's like the guy in that comedy kung fu movie (I forget the name of the film) who was taught Kung Fu wrong as a joke.

Posted by: broje at September 8, 2009 8:13 AM

A question for broje. In the claim of form:

1. A wire chafing stand comprising:

having at least two wire legs

and further comprising a plurality of offsets located EITHER in said upright
sections of said wire legs OR in said first rim for laterally displacing
each wire leg relative to said first rim
to facilitate the nesting of a
multiplicity of stands into one another without significant wedging.

why can one not have additional wire legs without offsets in an embodiment having "at least two wire legs" (say exactly two wire legs) with offsets in those (two) "said wire legs." [Forget about the embodiment "each wire leg."]

Posted by: Lawrence B. Ebert at September 8, 2009 8:51 AM

"In the first example, the word "comprising" would permit you to add a dependent claim reciting "another plurality of at least two wire legs not laterally displaced by said pluriaty of offsets.""

You could add that to the claim under discussion. Or, more precisely, you could add:

"the apparatus of claim 1 further comprising a second plurality of at least two wire legs not laterally displaced by said plurality of offsets."

More importantly, you could add:

"the apparatus of claim 1 further comprising a second plurality of at least two two pieces of metal or plastic not laterally displaced by said plurality of offsets."

Isn't that right Broje?

Mhmmm it is. One does not have to call a piece of metal a "leg" if one does not want to.

Arbitrary designation is arbitrary.

6 of one, half-dozen of the other.

Oh, and Broje, it appears that you just made up your rationale as it doesn't follow along with what Newman has to say what so ever. She never mentions what you're getting at, which I disagree with anyway. If I can designate two legs, each of which have the claimed features then you're done. What she says leads one inexoriably to the conclusion that she did nothing but misunderstand the rejection.

I have a question for Broje though that goes to the heart of examination, litigation and all things patent. May one designate parts as one wishes so long as they meet the claim terms? It's a simple yes or no.

Yes max.

Posted by: 6000 at September 8, 2009 10:40 AM

Not to mention Broje, even if we were to accept your theory, wouldn't that be unlawful recapture in this particular case and thus be not allowable?

Posted by: 6000 at September 8, 2009 10:45 AM

Larry,
I think you need to emphasize that the anti-wedging functionality would not be realized if one or more of the "legs" were not offset relative to the top rim. While some people do not like functional claiming and they believe (wrongly IMHO) that they are instead always claiming "structurally" (whatever that means) there is nothing per se wrong with including functional limitations.

_________________
examples of supposedly structural limitations that are actually functional ones:
1. an amplifier
2. a fastener
3. a liquid
4. an enzyme
5. ____ (add your own name here for a thing that is named according to the function it performs and in reality does not define its "structure")

Posted by: step back at September 8, 2009 10:51 AM

*********More importantly, you could add:

"the apparatus of claim 1 further comprising a second plurality of at least two two pieces of metal or plastic not laterally displaced by said plurality of offsets."

Isn't that right Broje?

Mhmmm it is. One does not have to call a piece of metal a "leg" if one does not want to. ********

Surely you would reject such a dependent claim as indefinite, as a first plurality is not introduced in the base claim.

Moreover, one incontrovertible fact is that adding legs that do not have lateral offsets would result in a nested structure that does not easily separate. It would go against the teachings of the specification, and make the claimed invention inoperable for its intended purpose. As I pointed out to you in Chisum's Canons of Claim Construction way back when, it is impermissible to construe the claim in such a way that it does not read on the disclosed invention. Stop missing the forest for the trees.

I'm not addressing your other question(s) because I don't understand what you are asking. Please explain more clearly and concisely.

Posted by: broje at September 8, 2009 2:16 PM

step, those are all structural limitations. Just because it is a broad category of items commonly named according to there functions doesn't render them all of a sudden not a structure. Similarly, just because there might be a functional limitation that implicitly goes along with those structural limitations doesn't mean they aren't structural.

Upon further reading in the case however, I must come to the conclusion that Broje is right in so far as what she says is what Newman has indeed done, although Newman didn't make it one bit clear in her decision.

Even so, one cannot force someone to designate a part as a leg as she did.

That makes the decision at least somewhat less ludicrous, but still wrong, and badly set forth.

I do believe that this is excellent subject matter for the court to address head on, and En banc. Maybe if Newman would have told us what she was talking about then the PTO would be inclined to ask for En banc review.

As to Newman's quaint little statement that the PTO's assertion about the member being a "transverse member" rather than a "leg" not being based upon any evidence I must also dissent. The thing is a member, and it runs in a transverse direction. If she wants explicit facts as to such to be found, then by all means, let the examiner find those facts and add them to the record I suppose. But just because it is also a leg doesn't mean it must be counted amongst the two or more legs.

Furthermore allowing this court to have its way involves forcing a subjective determination upon the nonapplicant/patentee party. Ridiculous. Shall every case involving such a determination have to go to the courts so that they may make this subjective determination every single time?

Put it this way, what if the wires in the reference that are not offset didn't quite go up to the rim? What then? Are they still "legs"? Must they still be "legs"? What happens when the reference describes them in one instance as legs, but they don't touch the rim? What about if the reference in another instance refers to them as a "transverse member" and calls that "another embodiment"?

These are not simply made up questions, they mirror exactly the types of situations with which I would be (and likely have been already) presented.

This particular decision doesn't demonstrate the absurdities of forcing such a determination of the designation of parts in a reference upon a party when reasonable interpretations abound as another case down the road no doubt will show.

I will say this much though, I haven't had any attorney ballsey enough and with the dollars to argue this subject with me or appeal it. And it certainly has come up.

Posted by: 6000 at September 8, 2009 2:26 PM

Of broje's text -- It would go against the teachings of the specification, and make the claimed invention inoperable for its intended purpose. As I pointed out to you in Chisum's Canons of Claim Construction way back when, it is impermissible to construe the claim in such a way that it does not read on the disclosed invention. --, one recalls the words of the CAFC in Chef America v. Lamb-Weston: "a nonsensical result does not require the court to redraft the claims of the patent." Or, recall claim 1 of the wheelbarrow in Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) [and the fate of patentee's request to "read the claim in light of the remainder of the patent disclosure." See LBE, Just The Facts, Ma'am, IPT, p. 9 (January 2003) and even recall the sleeve in Festo: http://ipbiz.blogspot.com/2007/07/july-2007-installment-of-festo-v-smc.html ]. Here, the "at least two wire legs" have to "facilitate the nesting." Did the patentee in Chef America need the functional limitation "to make edible bread"?

Posted by: Lawrence B. Ebert at September 8, 2009 4:25 PM

Question to Mr Ebert, about Chisum.

Every day, the USPTO issues patents with embodiments and drawings remaining, that were within the claims as filed but are outside the claims as issued. Everybody knows it and accepts it.

Meanwhile, back at the EPO, where it is mandatory to construe claims in conformity with what the specification declares to be embodiments of the invention, Applicants don't get to issue until they excise the embodiments that are no longer in accordance with the claims to issue, or else state explicitly that they are not within the issuing claims.

Should the USPTO be doing what the EPO does? If not, why not?

Posted by: MaxDrei at September 8, 2009 10:39 PM

"those are all structural limitations"

6000,

Oh really? So an "amplifier" made of vacuum tubes is "structurally" the same as an "amplifier" made of discrete Germanium bipolar transistors where the latter is "structurally" the same as an "amplifier" made of 48nm high frequency CMOS transistors integrated in a SiMox chip?

Give us a circuit break! "Amplifier" is merely a function hiding in a noun's clothes. Same can be said for many other words like: fastener, spacer, member, vehicle, actuator, power supply, etc., etc. We're simply lying to ourselves by pretending it's not true.

Posted by: step back at September 9, 2009 2:27 AM

You posted right while I was writing I suppose.

"Surely you would reject such a dependent claim as indefinite, as a first plurality is not introduced in the base claim."

I used second just to make my point so that you wouldn't by chance miss what I was doing. I realize not to use "second" in proper claim writing without "first". Although, tbh, I'm pretty sure that the official policy is to let this go and that's probably what I would do. I might object, just to bring up the claim drafting error just so they can correct it if they want but whatev.

Plus, if you want, we could simply make it like this:

2. The apparatus of claim 1 further comprising a first plurality of a least two pieces of metal or plastic not laterally displaced by said plurality of offsets, and a second plurality of at least two two pieces of metal or plastic not laterally displaced by said plurality of offsets.

I was just using "second" so you could under no means lump my "metal/plastic" with your "legs".

"Moreover, one incontrovertible fact is that adding legs that do not have lateral offsets would result in a nested structure that does not easily separate. It would go against the teachings of the specification, and make the claimed invention inoperable for its intended purpose. As I pointed out to you in Chisum's Canons of Claim Construction way back when, it is impermissible to construe the claim in such a way that it does not read on the disclosed invention. Stop missing the forest for the trees."

Let's be clear, this is the functional language at hand.

"for laterally displacing each wire leg relative to said upper rim so as to facilitate the nesting of a multiplicity of stands into one another without significant wedging."

For laterally displacing. So as to facilitate nesting of stands into one another without significant wedging.

The reference's board designated "legs" are for laterally displacing. And they do facilitate nesting without significant wedging (you can get them apart).

Furthermore, we're not interpreting "the claim" in such a way as to make it inoperable for its intended purpose. You appear to surmise that if we properly construe this claim as the board did, then that construction would allow for the claim to encompass an embodiment which would not accomplish the intended purpose. Thus that would be improper.

However, that is not true. Under the board's interpretation we are not allowed to encompass embodiments that would not accomplish the intended use/facilitating.

Two things.
1. The intended use is not necessarily the intended use of the whole structure, but is merely the intended use of the laterally displacing. That is, the object as a whole need not accomplish this goal so long as the laterally displacing in the structure is designed in such a way that, if implemented properly, would. That is, only the lateral displacing must be done in such a way as to further the intended use, not necessarily the construction of the whole object. This is merely due to ambiguity in the claim, but I will grant you for the sake of argument (since he is pro se) that it had been a limitation upon the whole structure's intended use.

2. Assuming 1 was not correct it doesn't matter anyway since putting three of the stands from the reference on one another would not significantly wedge anyway. Thus the intended use would be accomplished.

The application is clearly directed to embodiments that this guy was POed about in his daily life, which we've all had happen when "nesting" things like rubbermaid tubs and wire structures like these. If you don't stack a whole sht ton of them together, and do it gently then they won't wedge together anyway. That is, the "intended use" can be accomplished by other means outside the recited steps, and nearly any configuration of the old structures is capable of performing it so long as the person doing the stacking isn't an idiot and doesn't over do it.

So all in all, there is no reason to say that the board's proper interpretation necessarily makes it cover embodiments that don't accomplish the intended use.

Plus, the reference at hand is certainly capable of this intended use. Anyone who has used one of these things knows that you can, if you are careful, stack them without significant wedging. They do not "self wedge" as it were. They wedge when you stack more than a few on top of each other such that the weight of the ones on top wedge the ones on the bottom or when you simply jam them together aka simply dropping them into one another. If you place them gently there is no wedging.

That is, his functional limitation isn't what you make it out to be. The prior art structures were CAPABLE of doing it, people often times just did not use them properly and his invention helps to offset their carelessness.

I'll reword my questions for you later since you had a hard time understanding them.

Yes Lawrence I think that is her answer. However, I think she reads Chisum in a mistaken fashion anyway.

Chisum is talking about initial claim construction without having a reference at hand or anything like that. The board's interpretation is just fine as an initial determination. There is no indication that the claim means for there to only be legs that facilitate low wedging. There is a strong indication that it means for there to be at least two of such legs.

However, I believe Broje reads the intended use limitation as being a limitation on the structure as a whole. I would 112 2nd Miyazaki it in a heartbeat if the applicant argued that to me. He needs better wording to ensure that the intended use is a limitation on the whole structure, or even on all legs of the structure. As of right now it should only be a limitation on two legs.

Posted by: 6 at September 9, 2009 3:28 AM

"Oh really? So an "amplifier" made of vacuum tubes is "structurally" the same as an "amplifier" made of discrete Germanium bipolar transistors where the latter is "structurally" the same as an "amplifier" made of 48nm high frequency CMOS transistors integrated in a SiMox chip?"

Because there are multiple species that aren't the exact same thing within the genus means that it isn't a structural limitation? No step, that means it is a broad structural limitation.

This is pretty simple step. Being structurally the same has nothing to do with anything. It is an art recognized name for a genus of devices.

""Amplifier" is merely a function hiding in a noun's clothes."

I agree, but that's now names and nouns work sometimes. And I don't think we're lying to ourselves just because we allow this to happen. It is a pillar of our language.

Posted by: 6 at September 9, 2009 4:27 AM

Of -- Applicants don't get to issue until they excise the embodiments that are no longer in accordance with the claims to issue, or else state explicitly that they are not within the issuing claims. --, it is the claims which define the invention. The claims of a patent are the sole measure of the patent grant. Once the claims issue in a final particular form, the protected invention is, as a matter of law, that form. Bandag, Inc. v. Al Bolser's Tire Stores, Inc., 750 F.2d 903, 223 USPQ 982 (Fed. Cir. 1984). If the claims are amended during prosecution, it is the amended, final claims that define the invention. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 56 USPQ2d 1481 (Fed. Cir. 2000). As to the confusion of Quillen and Webster on this point, refer to
http://jip.kentlaw.edu/art/volume%204/4%20Chi-Kent%20J%20Intell%20Prop%20108.pdf
That which is disclosed but not claimed enters the public domain. See Johnson and Johnston. There is no need for an explicit disclaimer.

Posted by: Lawrence B. Ebert at September 9, 2009 4:57 AM

Step,

You may want to consider how best to spend your energy, seeing how 6 is such a "pillar of our language". Just let his renowned reading comprehension guide you.

Take his agreement that function hides in nouns and smile at the rest of his ramblings.

Posted by: Noise above Law at September 9, 2009 5:57 AM

**************They wedge when you stack more than a few on top of each other such that the weight of the ones on top wedge the ones on the bottom or when you simply jam them together aka simply dropping them into one another.****************

6, I think you made my point for me. I don't know how you can continue to insist that the identified "leg" could be added to the Applicant's invention without it running counter to the teachings of the specification. It eliminates or substantially reduces the improvement that the Applicant has achieved.

Also, under Festo, you know that the Applicant's arguments clearly disclaiming subject matter create estoppel by argument. When the BPAI said "Hey, that's a leg," it should be sufficient for the Applicant to say, "No, it's not." Thereafter, when enforcing the claim, the claim term "leg" cannot be construed to read on such a structure.

We amend claims in the face of your obstinance simply becasue it is more expedient and less costly. That doesn't make your rejection right. You have potentially cheated the patentee out of some important scope of protection that he deserved.

All those needless amendments are, to a large degree, why we keep filing Continuation applications to seek broader coverage. If you want to cut down on Continuations, then stop forcing Applicants to amend claims when arguments alone should suffice.

Posted by: broje at September 9, 2009 6:57 AM

"Don't know how you can continue to insist that the identified "leg" could be added to the Applicant's invention without it running counter to the teachings of the specification."

Nobody said that it could be added to applicant's "invention". It can be added to the "claimed invention" though because applicant didn't limit himself strictly to what he invented, he went for the good ol' comprising.

"Also, under Festo, you know that the Applicant's arguments clearly disclaiming subject matter create estoppel by argument."

Yeah I know that, but I prefer my disclaimers clear and spelled out. For instance in this case the applicant's actual argument has nothing to do with the ridiculous out of this world mess that you guys are bringing up. Read what the applicant argued. It's simple and it has nothing to do with all this advanced stuff you guys are getting into. It's an easy argument to knock out of the park. It is only by what appears to be Newman making a big issue out of something that doesn't exist, and then writing down something that doesn't even reflect why she decided this issue how she did that the applicant prevailed.

In short, he made no argument making a clear disclaimer of subject matter.

"or substantially reduces the improvement that the Applicant has achieved."

What does that matter? Unless the "intended use" limitation tacked onto the end of the claim modified the structure as a whole it doesn't matter because that isn't in the claim. And I propose that the "intended use" limitation on the end merely modifies the two legs not the whole device.

And then I reject the whole thing under Miyazaki because one could very well interpret the claim as you do with that clause modifying the whole device rather than the two legs. That's a key question, what is the last clause modifying?

"When the BPAI said "Hey, that's a leg," it should be sufficient for the Applicant to say, "No, it's not." "

Not entirely true. Applicant can't just state that a feature isn't in a reference where it plainly is and get off scott free.

Your "we amend because it's cheap" is nonsense. You amend because its cheap, or because we have you straight nailed to the wall. You can't just create some estoppel and get off scott free if the alleged feature is a leg simply because you say it isn't. Although that never happened in this case, so I'm not even sure why you'd bring it up.

"If you want to cut down on Continuations, then stop forcing Applicants to amend claims when arguments alone should suffice."

I don't particularly want to. I was under the impression that the number of cons wasn't a big deal atm. In fact, I encourage the use of cons. It helps loosen the applicant up to get him an allowed patent. I can then feel good about knowing that the applicant will go on to fight, win or lose, for his "proper scope" but that he at least has a decent patent right now.

Posted by: 6000 at September 9, 2009 9:42 AM

To ALL,

First I want to thank you all for keeping this debate civil. I think we learned something.

What we learned is that despite using the word, "comprising", day in and day out, and despite being cock sure we knew exactly what it means, on close inspection we discover that we do not have a clear definition or understanding of what it means.

Let's step back and consider the following:

1. An operative electrical circuit COMPRISING:
(a) a battery; and
(b) a light bulb operatively coupled to the battery so as to be, at least sometimes, caused to light up by electrical energy supplied from the battery.

Simple enough. Right? Just 2 elements forming a basic electrical circuit.

Now, according to some here, the word "COMPRISING" means I can arbitrarily and capriciously add any additional element I want to the combination (e.g. an electical switch to turn the light on and off when I want).

OK then. In that case, I instead choose to add a short-circuit creating wire directly across the battery. Bam. (The battery quickly drains and becomes an inoperative battery for you nonelectrical types.)

I've added an additional element. Right? The word "COMPRISING" gave me the right to add that additional further element. Right?

No. Wrong. Because the added element renders the combination inoperative. The added element causes the combination to be something completely different (an inoperative, shorted circuit).

Similarly, when we add the wedging additional leg (or "transverse member", call it what you want) to Skvorecz's claimed combination, we cause it to be something significantly different from what the inventor intended. It is now a wedge-creating basket rather than a wedge-free stackable basket.

So my position, and I'm wedgingly sticking to it; is that "comprosing" does not allow us to do ansolutely anything we want (i.e. yell fire in a crowded theater). A rule of reason has to be included in the definition of what "comprising" allows. Too bad Judge Newman didn't explore this issue more deeply.

Posted by: step back at September 9, 2009 10:36 AM

correction: "ansolutely" in last paragraph should be "absolutely"

____________________
To err is human.
To really screw things up, one needs to call in a patent practitioner. :-)

Posted by: step back at September 9, 2009 10:41 AM

Off topic -- I seem to recall a case or line of cases that stand for the proposition that a method claim with a single step is not a method.

Does anybody recall any cases along those lines (or something similar)?

Posted by: Curious at September 9, 2009 10:56 AM

You know curious. I thought I had remembered a similar line of cases myself, but then I couldn't remember if that was only "single means" claims or method claims. So then I promptly forgot about the whole ordeal.

If you find it please please please send it to me as I am in need of it in the very near future.

Posted by: 6000 at September 9, 2009 11:15 AM

"Now, according to some here, the word "COMPRISING" means I can arbitrarily and capriciously add any additional element I want to the combination (e.g. an electical switch to turn the light on and off when I want)."

Actually in your example the entire device of the lightbulb is being modified. I'm not sure that I would agree with your assessment except that the "at least sometimes" might reopen the issue of "comprising".

You could however add a lightbulb to that which never lights up.

"OK then. In that case, I instead choose to add a short-circuit creating wire directly across the battery. Bam."

That would depend on how big of a battery you have, but within reason, yes. And that's one reason why I don't think you can just add anything to your claim. You can't add something that takes away the functionality of your lightbulb.

Similarly, if the applicant in the instant case had the last functional clause modifying his whole device then I might couldn't add new legs that are unmodified to accomplish his goal. But he doesn't. So I'd help myself to some unmodified legs.

"we cause it to be something significantly different from what the inventor intended."

But not what he claimed. Sure, he may have intended to claim the invention in such a way as to have the functionality be modifying the whole device, but he didn't.

I don't think that Newman would need to address this issue because we'd all be in agreement and it isn't an issue. You can't destroy the claimed functionality. We're all on the same page. The problem is, the claimed functionality isn't destroyed by the reference. The functionality only has to do with two of the legs in the reference. And they are just fine, while perhaps two other legs (transverse members) are not.

Posted by: 6000 at September 9, 2009 11:24 AM

"You can't destroy the claimed functionality. We're all on the same page [on that aspect of what 'comprising' allows]."

Agreed.

Posted by: step back at September 9, 2009 3:51 PM

My attention was attracted by the Stepback example of the shorting wire across the battery terminals. But my thought was "So what".

Looking at a "comprising" claim one can always postulate embodiments that are embraced within the ambit of the claim, yet don't work. That's trite. In reality, it will be irrelevant to the comparison between the claim and the prior art, and irrelevant to the comparison between the claim and the embodiment accused of infringing.

So, is it a claim "clarity" issue? Well, if it is, then every "comprising" claim under the sun is invalid, at a stroke.

So, it avails nobody anything useful, to invoke theoretical non-functional embodiments. It gets you no further forward.

Or does it serve some useful purpose that I just don't see?

Once again I am driven to cite the EPO's elegantly simple "Principle of Synthetical Propensity" that tells us how to construe a document. See Decision T_0190/99 and its progeny.

Then again, there's the EPO position since 1980, that a claim which fails to recite all the technical features which are needed to get to a solution to the "objective technical problem" which is the basis of patentability is a claim that fails to meet the provisions of Article 84 EPC (clarity). That is the handy tool, that EPO Examiners use, for bringing clarity before the thing issues to the public. Here, it might have been useful for Mr Skvorecz if his patent attorney had been thinking that way.

Posted by: MaxDrei at September 9, 2009 10:25 PM

"Well, if it is, then every "comprising" claim under the sun is invalid, at a stroke."

...name the path upon which this thought leads.

MaxDrei,

So what happens to all of the US applications seeking EP rights that use "comprising" language? There must be quite a body of such claims already in the young EP history banks.

Posted by: breadcrumbs at September 10, 2009 2:21 AM

Crumbs I would answer if I could think of something useful to say. But I can't.

Maybe StepBack, 6 or some other reader can mediate.

I often find mutual incomprehension, as between European and American patent practitioners. It is an area where I try to mitigate the problem. Unsuccessfully, it seems.

All the same, it's always nice to get reaction to one's postings. So, thanks anyway.

Posted by: MaxDrei at September 10, 2009 3:30 AM

**********"or substantially reduces the improvement that the Applicant has achieved."

What does that matter? Unless the "intended use" limitation tacked onto the end of the claim modified the structure as a whole it doesn't matter because that isn't in the claim. And I propose that the "intended use" limitation on the end merely modifies the two legs not the whole device. **************

Along the lines of what Step Back said, you are designating an element in a referecne in such a way that it would cause the claim to ead ona device that is inoperable to accomplish the function of the device disclosed in the specification as being the invention. It has to do with the fact the the claims must be construaed as a reasonable PHOSITA would construe then upon readign the specification and the claims. It also has to do with the fact that you can't construe a claim to exclude the inventor's device (see Modine Mfg. Co. v. U.S. Int'l. Trade Comm'n, 75 F.3d 1545, 1515, 37 USPQ2d 1609, 1612 (fed. Cir. 1996), cert denied sub nom. Showa Aluminum Corp. v. Modine Mfg. Co., 518 U.S. 1005 (1996)). In my opinion, the word "comprising" let's you read the claim on devices having additional elements, only so long as those additional elements would not make the device inoperable for the purposes disclosed int he specification as a PHOSITA would understand it upon reading it. Thus, it is not necessary for the claim to have an express statement in the body of the claim making it clear that there are no additional pairs of legs that are not offset, and would therefore prevent the device from fulfiling the purpose of the Applicant's invention. Any reasonable PHOSITA who has read the specificaiton and the claim can tell you that the claim cannot be construed to mean that. So, if I understand your previous question correctly, the simple answer is "No," you cannot simply designate elements as you like. You can't just read the claim and go do a five minute search and designate elements willy nilly. The standard for claim construction is not that of a desperate Examiner, having read only the claim, seeking to reject the claim over prior art found in a five minute google search.

Posted by: broje at September 10, 2009 7:42 AM

"...but ...but, broje,

Examiners don't have to read the specification - my SPE told me so"

attributed to 6.

See: http://www.patentlyo.com/patent/2009/09/rethinking-the-uspto-examiner-count-system/comments/page/3/#comments

Posted by: Noise above Law at September 10, 2009 9:06 AM

I didn't bother to read the decision, the application, the claims, the prior art, but that's never stopped others, so why should it stop me?

This is yet another case of the Fed. Cir. telling the BPAI that they are doing a terrible job.

But Mr. Doll will tell you, "Hey, we're doing record breaking outstanding quality work as evidenced by our 70% affirmance rate at the Federal Circuit!!!"

If this case is indicative of the cherry picking the PTO does when deciding to send appeals to the Federal Circuit, just imagine how putrid the ones are in which they either re-open or request a remand, e.g. 10/190,039.

"The problem with the BPAI is that they like to make sh_t up all the time. Most are former examiners who still have the itch to examine. The times I lose at the BPAI, the BPAI doesn't affirm the Examiner's rejection. Instead, the BPAI starts makes findings of facts and claim constructions that were never in the original prosecution."

This is 100% correct. The examiner either doesn't address a limitation at all or makes some absurb "finding" that a particular element of a reference corresponds to a claimed element, and the BPAI either supplies the missing element that was never even addressed by the examiner(and then chides applicant for not providing any argument as to why the reference doesn't meet the claim) or makes a "finding of fact" that another element of the reference, completely different from the element noted by the examiner, meets the claim (and then chides the applicant for not arguing a "fact" never before on the record until the BPAI's decision).

It's garbage. It stinks. The only flicker of hope is cases like this where the Fed. Cir. clearly indicates they ain't having it.

Posted by: JohnDarling at September 10, 2009 9:21 AM

"Maybe StepBack, 6 or some other reader can mediate"

Max,

I'm not going to do the heavy lifting by looking up the actual case cite, but IIRC, somewhere in the early days of USA patent law there was case that said "operative" was an implicit limitation of every claimed element (unless this limitation was explicitly renounced). The reason was because, under the constructs of English alone, a word like "transistor" (for example) covers the genus of all transistors including, for example, a burnt-out inoperative transistor.

But it would be ridiculous from a skilled artisan's perspective to view each element of a claim in such a light were the naming of it inherently encompasses all inoperative species of that genus. So the rule is that inoperative versions are implicitly excluded.

I don't recall a case saying that this same rule applies to the word, "comprising". But it would make logical sense that it should. And perhaps we can view the precedential case of In re Skvorecz as standing for such a proposition.

Posted by: step back at September 10, 2009 11:24 AM

Thanks to Google, the lifting is not that heavy. So here's a cite even though I said I wasn't going to do it:

http://www.uspto.gov/web/offices/pac/dapp/35usc112.htm

7 - Inoperative species - MPEP 2164.08(b):

Although, typically, inoperative embodiments are excluded by language in a claim (e.g., preamble), claims reading on significant numbers of inoperative embodiments may not be enabled when the specification does not clearly identify the operative embodiments and undue experimentation is involved in determining those embodiments that are operable. In re Cook, 439 F.2d 730, 169 USPQ 298 (CCPA 1971) (Claims are not broader than the enabling disclosure even if they read on a very large number of inoperative embodiments if "a person skilled in the relevant art could determine which conceived but not-yet-fabricated embodiments would be inoperative with expenditure of no more effort than is normally required" in the art. 169 USPQ at 302.)

Later cases follow this line of reasoning. In In re Anderson, 176 USPQ 331 (CCPA 1973), claims to a laminated dressing wherein the primary layer contains a medicament were rejected under 35 U.S.C. 112, first paragraph as broader than the enabling disclosure because the term "medicament" was not limited to operative or suitable medicaments. The court reversed the rejection, reasoning it was common knowledge that some medicaments would not work and applicant should not be limited to claiming to operative medicaments in operative quantities. The claims "are inherently limited -- by common sense if nothing else -- to such medication as would be useful in the particular application." 176 USPQ at 334. Note also In re Geerdes, 180 USPQ 790, 793 (CCPA 1974) in which the court stated it was possible to argue that the claims encompass inoperative embodiments on the premise of unrealistic or vague assumptions, but such arguments are not a valid basis for a rejection under the first paragraph enablement provisions of 35 U.S.C. 112. See also In re Dinh-Nguyen, 181 USPQ 46, 48 ("It is not a function of the claims to specifically exclude either possible inoperative substances or ineffective reactant proportions.") (emphasis in original); and In re Angstadt, 537 F.2d 498, 190 USPQ 214 (CCPA 1976) (A disclosure of a large number of operable embodiments and the identification of a single inoperative embodiment did not render a claim broader than the enabled scope because undue experimentation was not involved in determining those embodiments that were operable.) However, note In re Fisher, ....

Posted by: step back at September 10, 2009 11:32 AM

"Along the lines of what Step Back said, you are designating an element in a referecne in such a way that it would cause the claim to ead ona device that is inoperable to accomplish the function of the device disclosed in the specification as being the invention."

Let's 100% clear. Your assertion is wrong on two points.

First, the reference is operable to accomplish the "function of the device disclosed in the specification". I provide an analysis below of how the reference is operable to "accomplish the function of the device disclosed in the specification" so far as I can tell what that function is.

If you disagree with my interpretation set forth below of what this function is then tell me, what precisely is the "function of the device disclosed in the specification"?

Second the "function of the device disclosed in the specification as being the invention" is 100% irrelevant to the validity analysis of a claim which doesn't include that language. It appears as if you disagree. Apparently now my references have to meet more than the construed claim language, and meet the functionality of the entire device as disclosed. I wonder how this works out in more complicated cases where there is a claim to a subcombination and the functionality is of a very much larger combination.

1. A transistor comprising metal.

Specification says this transistor is used in a warship the size of australia and is used to take over the world.

So I guess claim 1 isn't met simply be a transistor comprising metal. It has to be a transistor comprising metal that is meant to be used in the taking over of the world. After all, POSHITA can clearly see that this transistor made of metal is special in this "invention".

For an analysis:

After having read the specification it turns out that the functional language in the spec to which you guys are giving so much weight is entirely meaningless.

"Generally, if the wire stands are tightly nested they tend to wedge into one another and are then difficult to separate. Thus it is imporatant that wen nesting multiple wire stands that the wire stands do not wedge and are readily separable from one another".

This is the function disclosed in the spec to which I believe you refer.

Guess what? The prior art structure will facilitate nesting of two stands into one another without significant wedging. We can't include "tight" into around analysis because we don't know how "tight" does the nesting have to be before we have to avoid wedging. Nobody can tell from the spec. If we import "tight" into the claim, or into what is permissible to designate in the reference, then the claim scope becomes indefinite because tight is a relative term with no way to judge to what degree the term is referring.

As an aside, let me be clear, we can "destroy" the "functionality" related in the specification all the live long day. If you don't put it in the claim then it doesn't count for anything. What you claim defines your invention, as JD is so fond of saying.

"It has to do with the fact the the claims must be construaed as a reasonable PHOSITA would construe then upon readign the specification and the claims. It also has to do with the fact that you can't construe a claim to exclude the inventor's device"

My construction in no way excludes the inventor's device. Are you just shooting a shotgun of arguments and hoping one sticks? The very assertion is outrageous. The inventors two legs most assuredly do facilitate such nesting as claimed and as my interpretation takes into account.

"In my opinion, the word "comprising" let's you read the claim on devices having additional elements, only so long as those additional elements would not make the device inoperable for the purposes disclosed int he specification as a PHOSITA would understand it upon reading it."

And now we come to it. This is the part where you are mistaken. Comprising means comprising means comprising. Furthermore, the claim is construed before any designations are made and then designations are made without regard to claim construction and solely with regard to what is reasonable in view of the piece of art at hand.

I think that pretty much settles the issue. Broje has an opinion on how to designate parts in a reference and it just happens to be the wrong way. Although, sure, she could argue it in court. And it would be amusing. It would also be good to have the court weigh in on this issue.

In any case I'm officially done discussing the issue so long as she simply relies on her opinion. Especially when her opinion runs counter to established practice, and indeed, likely leads to significant inconsistencies, errors, and claims with scopes impossible to distinguish properly if we are limiting our designation practice. "What anticipates?" becomes an impossible question to answer since you can't even tell what you can designate as the various portions of the claims in a reference.

For instance, in the instant case, how large of a stacking scheme must be accomodated by the devices in a reference before they can anticipate? 3 devices tall? 5? To the ceiling? To the moon? What if the devices start to wedge when the stack is 2 stories high? What if they start to wedge around 2 ft high but accomodate 1 ft high stacking very well? Are the legs on any of those designatable? The claim would be hopelessly ambiguous by allowing such "limitations by limiting the designating practice" and indeed, indefinite, if we were to adopt your method Broje. Note that the indefiniteness wouldn't even really arise from the claim, but rather the specification, an unheard of scenario. But that is what happens when you allow limitations from the spec into what can meet the claim, or be designated as parts meeting limitations of the claim.

Although, to be sure, as noted in my analysis above POSHITA would not think that the additional elements designated in the rejection make the device inoperable. They MIGHT make it less operable, but we don't exactly have some of the prior art stands to test out in the office. It could very well be that the device in the art relied upon will stack to the ceiling without wedging. If the applicant had actually made your argument then that's fine the examiner could answer him. And if, in the examiner's opinion the reference's device appears to stack to the ceiling sans wedging, then he should provide reasoning to that effect and that kind of thing should be left to the applicant to test out and submit evidence of. And remember, you can't rely on the applicant to correctly point out problems with EVERY embodiment in all of the prior art in his spec anymore than you'd expect him to lay all relevant prior art at the office's feet.

"This is 100% correct."

JD I'm having to reopen cases based merely upon my being quite sure that the board will not understand the rejection what so ever, or will make up an argument that the applicant hasn't presented on appeal to decide the case upon. (kind of like the instant case we're discussing in the thread) So, on the whole, call it even.

And, if the CAFC's only problem is that the examiner didn't make the call, fine. He'll reopen and make the case himself. Big whoop.

"You can't just read the claim and go do a five minute search and designate elements willy nilly. "

You're right. You need to read the claim/spec, construe the claim, do a five minute search, and designate elements with respect to what is reasonable in the reference itself (without regard to the claim/spec at hand), and then see if this reads upon the claim as previously construed.

You know what is really funny and ironic? In a way you're essentially asserting that you should be able to use hindsight of the construed claim in order to help validate the claim by not allowing the designation of certain parts. But of course hindsight is a no no when invalidating the claim. That is quite ironic.

Noise, I take the spec into account. This doesn't mean that I need to import some limitations. This is a no importation of limitations allowed zone. And I strictly enforce this policy.

Posted by: 6000 at September 10, 2009 11:39 AM

step you are talking about enablement. That is not even at issue here. All of that which you cited is 100% correct but has no relevance here.

Posted by: 6000 at September 10, 2009 11:43 AM

Step thanks. The Geerdes and Dinh-Nguyen cases cover my point.

Posted by: MaxDrei at September 10, 2009 11:57 AM

"JD I'm having to reopen cases based merely upon my being quite sure that the board will not understand the rejection what so ever, or will make up an argument that the applicant hasn't presented on appeal to decide the case upon."

BWWWWAAAAAHHHHHHHAAAAAAHHHHHAAAAAA!!!!!!!!!!!!!!

That's a whopper. Even for you.

The idea that you would re-open because "the board will not understand the rejection" is an examiner fairy tale. I've heard that one many, many times. It's as big a crock now as it ever was.

And the notion that the Board would reverse the examiner on an argument they cooked up on their own and that was never presented by applicant is your biggest fairy tale yet. It's such a fantasy that I expect to see a midget in a white tuxedo screaming, "Da plane!!! Da plane!!!!"

Too funny.

Posted by: JohnDarling at September 10, 2009 12:15 PM

"It would also be good to have the court weigh in on this issue. "

Please see In re Robert Skvorecz (CAFC 2008-1221) precedential:

"The PTO now presses the theory that claim 1 is anticipated because it can be construed to include wire legs without offsets ..."

"The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset."

"The signal “comprising” does not render a claim anticipated by a device that contains less (rather then more) than what is claimed."

"Anticipation cannot be found, as a matter of law, if any claimed element or limitation is not present in the reference."

In order for the reference to anticipate the claim, you must be able to enforce the claim against the device disclosed in the reference. Here, the patentee would have been precluded from doing that because the claims would have to be interpereted in such a way that they no longer cover the patentee's actual invention. Until you learn to go through this mental execise with each 102 rejection, you will continue to miss it.

Posted by: broje at September 10, 2009 12:39 PM

"The idea that you would re-open because "the board will not understand the rejection" is an examiner fairy tale."

Um no it isn't. I could lay down one of my rejections right now for you and you wouldn't have one clue as to what was going on. Whereas, the attorney in the case would know exactly what I was saying. The board however would likely be the same as you, we don't have people especially for our art to review the case.

If I got to go to oral arguments then it would be fine and I would send the case.

For the millionth time JD, some of us work in arts that are more complex than toilet paper rolls. Just because you're an ignorant son of a bitch doesn't mean that everyone in the office is as well.

"Here, the patentee would have been precluded from doing that because the claims would have to be interpereted in such a way that they no longer cover the patentee's actual invention."

My interpretation covers his "actual invention" just fine ya jackass. There is no reason why he couldn't assert this claim against the prior art device. If you think there is a reason, then put it on the record so that I may smack it down proper.

Posted by: 6000 at September 10, 2009 1:06 PM

********My interpretation covers his "actual invention" just fine ya jackass. There is no reason why he couldn't assert this claim against the prior art device. If you think there is a reason, then put it on the record so that I may smack it down proper. *******

Go take a nap, then read the following:

The claim recites a plurality of legs, each leg having an offset. The specification teaches a device in which each leg has an offset so that the devices will not wedge significantly when stacked. A reasonable PHOSITA reading the specificaiton and the claims would know that the claims are limited to a device in which each leg has an offset, and do not cover a device having any legs that are not offset, as that would produce significant wedging. The supposedly infringing device has one pair of legs that are offset, and another pair of legs that are not offset. The claim could not be asserted against that device because it has some legs that are not offset.

Remember, I said REASONABLE person. Now go take another nap.

Posted by: broje at September 10, 2009 1:19 PM

"Um no it isn't."

Uhm, yet it is. It has never happened in the history of the PTO, no matter how many times that fairy tale gets told.

"I could lay down one of my rejections right now for you and you wouldn't have one clue as to what was going on."

I doubt that. I've prosecuted cases in arts far afield of the narrow niche you're toiling away in. Never had a problem. Read the application, read the applied prior art, blow away lame rejection. Been there, done that.

"Whereas, the attorney in the case would know exactly what I was saying."

Exactly. The attorney in your case knows exactly what you're saying. And the attorney knows that what you're saying is bullsh!t and is appealing. But you're gonna re-open "because the Board won't understand the rejection."

BWWWAAAAAHHHHHHAAAAAHHHHHHAAAAAAA!!!!!!!!

Right.

"The board however would likely be the same as you, we don't have people especially for our art to review the case."

Neither does the Fed. Cir. But so what? The law is the law. The issues are the same regardless of the technology. Did the examiner and/or BPAI support their findings of fact with substantial evidence? Are the ultimate legal conclusions (e.g. obviousness) supported by a preponderance of the evidence? Those questions don't change with the technology. They're the same for every case.

"If I got to go to oral arguments then it would be fine and I would send the case."

BWWWWAAAAAHHHHHHAAAAAAAAAHHHHHHHAAAAAAA!!!!!!!!!!

I'm sure you've heard that old expression? It goes something like this: give 'em enough rope...

You're like the rest of the examiners over there. You're still laboring under the delusion that the technology/art matters. Still laboring under the delusion that you're an "expert" in the technology and that somehow compensates for your ignorance of the law.

It doesn't.

I don't need to know anything about your particular art to rip your rejection to shreds. Done it hundreds of times to other examiners. Examiners much more experienced than you.

"For the millionth time JD, some of us work in arts that are more complex than toilet paper rolls. Just because you're an ignorant son of a bitch doesn't mean that everyone in the office is as well. "

Keep dreaming that the supposed complexity of the art you examine makes you special. It doesn't. Your ignorance of the law will doom your case every time.

But hey, your SPE's got your back on all those test cases you're working on over there, amirite?

BTW, I doubt the art you examine is that complex. What is it? Deposition processes or whatever. Wow. Real PhD level stuff you're doing over there. It's so complex that a GS-9 with a run of the mill BS in EE is examining it. Can't be that tough. I'm sure a dumb ol' ME like me could pick it up over the weekend. Whatta I gotta do? Read about 20 patents? I'll figure it out between innings of the Sunday night game.

Posted by: JohnDarling at September 10, 2009 1:56 PM

"The issues are the same regardless of the technology."

Hardly. If you ever bothered to examine a hard application you'd know that was false on its face.

You can stick your head in the sand on these issues all you like I really don't care. The fact of the matter is, people without appropriate training don't belong on a review panel any more than they belong on the examination staff or the representative post. The issues are simply not "the same".

I'm calling it even with or without your permission. I know specifically what rationale causes me to decide to reopen cases and I have no reason to lie to you about it.

Oh and btw: Applicant's file RCE's because "it's cheaper". HAHAHAHAHAHAHAAHAHAAH yeah right! They mean "because my claim was anticipated!". What a tall tail! Cheap! HAHAHAHA

Anyone can make a jackass statement, you're not special.

"Deposition processes or whatever."

Not quite. But you can feel free to guess again. Although you're right, deposition processes are probably fairly simplistic.

"I'm sure a dumb ol' ME like me could pick it up over the weekend. Whatta I gotta do? Read about 20 patents? I'll figure it out between innings of the Sunday night game."

Take about 3 years worth of classes that nobody in their right mind would take :( Unless you want to be clueless about what you're examining. Which would probably be in your financial interest.

If you don't know a 102b is in front of you, and if the QA person reviewing your work doesn't know a 102b if it is right in front of them, does it really matter if a 102b is in front of you?

The one really nice thing about my art is that I probably have a better chance of winning the lottery than of getting an allowance error. I don't play the lottery.

"I've prosecuted cases in arts far afield of the narrow niche you're toiling away in."

Yeah I looked at your bio and nearly loled my ass off.

"The claim recites a plurality of legs, each leg having an offset."

That's funny, that's what the reference has.

"A reasonable PHOSITA reading the specificaiton and the claims would know that the claims are limited to a device in which each leg has an offset, and do not cover a device having any legs that are not offset, as that would produce significant wedging."

Alright I think I am finally understanding what you are trying to say. Although, you weren't saying it very well. I believe what you're trying to say is that one of ordinary skill would understand that the applicant himself would understand the claim to not cover devices not having any offsets because according to his disclosure he believes that such a thing would create offset. And furthermore, you believe that the POSHITA reading this claim would thus accept the applicants take on the situation as gospel.

Ok, gotcha.

Let me explain to you why POSHITA would not think this.

It has to do with this:

"as that would produce significant wedging."

"as that would produce significant wedging."

"as that would produce significant wedging."

"as that would produce significant wedging."

This is not necessarily true. And no "reasonable POSHITA" can make this necessarily true. And no POSHITA would understand it as being necessarily true. POSHITA would understand the reality of what is going on in the application and know that there could very well be an embodiment with two legs of appropriate shape, and with 6 legs of inappropriate (according to applicant) shape, and in which no wedging occurs.

Just because the applicant says that this happens in some prior art devices in stacks of undefined size doesn't make his word gospel, and it doesn't mean that POSHITA would fail to remember that there are prior art embodiments where no wedging is occuring even sans applicant's feature.

I don't see why this would not be entirely reasonable to expect of POSHITA since even I know it and I don't know hardly anything about this art.

Keep in mind the prior art is perfectly capable of being stacked without significant wedging. 2 of them stack just fine. 3 do as well. No wedging. Poshita knows of the prior art prior to reading the specification.

Ok though broje, the final issue of the evening. If I were to grant you this patent based upon your mistaken reasonings, with you taking all the PHE you just created (which I note the actual instant applicant did not create) with you could you sue a person making a device with 4 offset legs and 1 nonoffset leg wherein no wedging ever occurs no matter how big the stack becomes? 2 non-offset legs? etc.?

Keep in mind before you answer that the applicant himself admits in his spec there are designs for legs other than his own that accomplish his "functions" already.

Keep in mind also that I'm setting you up to look bad.

Oh and sorry about the jackass part I thought that was JD talking.

In any event, presuming arguendo what you say is well founded, the patentee would be doing nothing more than circumventing the traditional limitations upon the use of the "comprising" preamble purely by drafting his specification in a certain way. To allow this would exalt form over substance in a way hitherto unimaginable. That is completely unacceptable.

If that were the way things operated, and the PTO knew about it, and operated that way, then applications would issue all the time where the examiner simply read some limitations into the claims because he thought that was how POSHITA would read it and let the case go as a first action allowance. Then, these same cases would appear in court quite regularly with the applicant suing someone over a device that the examiner would have considered not covered by the claim because of the limitations he imported without putting anything on the record.

You'd probably have a thousand cases like this a day if you could simply draft your way out of things like this. Unacceptable. The courts would never stand for such a practice.

Posted by: 6000 at September 10, 2009 4:34 PM

Classic briar patch, lack of reading comprehension 6,

Broje throws up case law at September 10, 2009 7:42 AM and 6 responds at 11:39 AM with “In any case I'm officially done discussing the issue so long as she simply relies on her opinion.”

I throw up 6’s inane comments about what needs to be searched with the Patently-O link at September 10, 2009 9:06 AM, and 6 responds at 11:39 AM with “Noise, I take the spec into account. This doesn't mean that I need to import some limitations. This is a no importation of limitations allowed zone. And I strictly enforce this policy.” 6, why are you introducing a non-issue to my point? Importing limitations was not the point at the O. At the O, you proudly proclaimed that you don’t have to read the spec. Here too, the importance of reading the spec (and understanding the claims in light of the spec) is being stressed. You are the one introducing the briar patch of reading in limitations. Do you still believe that you don’t have to read the spec? You ran away at the O trainwreck, and you run away here as well. Is it really that hard for you to admit when you are wrong?


“hindsight of the construed claim in order to help validate the claim” – showing that not only do you not know how to understand claims, you don’t understand what hindsight is either. Your continuous lack of knowledge of the important law concepts is truly staggering. Not only do you not know how to do your job, you don’t know the fundamentals of what your job is. Most people steeped in so much ignorance go about quietly either trying to learn or simply hoping to go unnoticed. You broadcast your ignorance on every available channel. Your anger with the appeal process is a clear example (clear to everyone else) that your thought process and games to trap the applicant are NOT the ways an examiner is supposed to do their job. Your new big boss Kappos has put out the word – Examiners must change! Can you adapt? With your reactions here and on other boards, I would lay the odds at being very low that you can.

Posted by: Noise above Law at September 11, 2009 2:47 AM

"Hardly. If you ever bothered to examine a hard application you'd know that was false on its face."

Wrong.

A couple months back one of my partners asked me to write an appeal brief in one of his apps. I don't have any schooling in the art the app deals with, and I've never prosecuted any apps in the art before.

I shredded the examiner's rejection.

I GUARANTEE you the examiner re-opens.

Friendly wager, 6. Make it $100. If you're game, let me know and I'll e-mail you the serial number.

And when this primary examiner, whom I'm sure considers himself an "expert" in his art, re-opens in response to my appeal brief, you can call him up and ask him why he's backing down from a dumb ol' run of the mill mech e who used to examine toilet paper dispensers. And then, when he tells you, "Well, I re-opened because the Board wouldn't understand the rejections" you can laugh in his face for me.

Posted by: JohnDarling at September 11, 2009 4:13 AM

It is my understanding that the spec teaches that the legs all have to be offset to avoid significant wedging. The claims recite that each leg is offset. On that basis, the claim cannot be enforced against a stand having even one leg that is not offest, no matter whether "significant wedging" occurs in any objective sense.

It's not really PHE that is required. The teachings of the specification are controlling. The applicant does not have to be right in an objective sense. The applicant teaches towards a particular solution to a perceived problem and away from that which is not his solution. The PHOSITA's understandings of what the applciant is teaching towards matter, not the actual result. In effect, in my view, "significant wedging" is implicitly defined to be the amount of wedging that occurs when there are any legs present that are not offset. There is no other standard set forth for detemining whether significant wedging occurs.

In the reference, there is a pair of legs that are not offset. I think maybe you are looking at the top wiry thing that sits inside the pot and not the bottom wiry thing in which the pot rests. It is the bottom wiry thing that is the stand and has one pair of offset legs and one pair of nonoffset legs. Are we talking about the same thing?

Posted by: broje at September 11, 2009 7:59 AM

Moreover, I think that the Applcant's teaching is correct. I don't think that you could have any pairs of legs that are not offset without having more wedging than you would have if all legs were offset. But that's really beside the point.

Posted by: broje at September 11, 2009 8:05 AM

I don't see how this staes that previous legs fulfill the same function, as they only allow deeper nesting for transport without preventing wedging:

"Although many solutions have been proposed which permit deep nesting of multiple stands to reduce the vertical column height of a stack of nested stands such prior solutions were dependent upon complicated wire stand designs which otherwise increase the cost of fabrication and cause the stand to be unwieldy structurally as well as esthetically. An even further problem of significance relates to the ease of removal of the wire stands from one another after nesting. Generally if the wire stands are tightly nested they tend to wedge into one another and are then difficult to separate. Thus it is important that when nesting multiple wire stands that the wire stands do not wedge and are readily separable from one another."

As described, the "offset" is a notch in the legs that creates space to allow for deeper nesting while stopping nesting at a predetermined point so that wedging does not aoccur. If the nothes are left out of any legs, those legs will wedge regardless of whether the other legs have the notches. While one pair of legs in the reference is "offset" in that it is convexly curved, the other pair of legs is straight, and would wedge inside the upper rim long before the curve in the other pair of legs would contact the rim and stop further nesting. Deep nesting without significant wedging would be prevented. The reference fails to teach a stand in which each of the legs is offset to allow deeper nesting while preventing nesting so deep that wedging occurs. Therefore, it does not anticipate the claimed invention, as the claim must be construed to read on the Applicant's actual invention.

Posted by: broje at September 11, 2009 8:37 AM

John Darling,

The legal system works by means of human beings making decisions (e.g. BPAI panel of 3 giving you a thumbs up or down on your appeal brief).

Human beings are by their nature, arbitrary, capricious, and irrational. You should never bet (unless you absolutely have to) on what another human being is going to decide. History teaches that we all too often make very bad decisions.

I never promise my clients any outcome at the USPTO because I have no control over what the folk at the USPTO will do. They do what they want to do, irrespective of whether it is lawful or not. I think most want to do the right thing. But there are some who simply don't care and there is not much you can do about it (unless your client has a gazillion dollars and is willing to appeal all the way up to the US Sct e.g. Bilski).

Posted by: step back at September 11, 2009 8:43 AM

step back,

Thanks for the advice. But I've been at this 10+ years, and I know what to expect.

In this case that I describe, like I said, I GUARANTEE the examiner will re-open in response to my appeal brief.

Of course, I don't make such guarantees to clients.

The only thing undecided here is whether 6 is gonna man up and take the bet. My guess is he won't.

Posted by: JohnDarling at September 11, 2009 9:26 AM

I'm game. But I gotta see the serial before we shake on 100. This had better be a far cry from simple if we're going to bet. That means no medium difficulty nonsense that I can pick up in less than 20 minutes and understand no problem.

In your email be sure and attach how long it took you to draft the response.

Posted by: 6000 at September 11, 2009 10:03 AM

"This had better be a far cry from simple if we're going to bet."

Well, I'm just a dumb ol' run of the mill mech e. Every art outside of toilet paper dispensers is beyond my meager comprehension.

And this case is being examined by a primary in the art. He's gotta be an expert, amirite?

I mean, what chance does a dummy like me stand against an expert like him?

Serial number coming to your e-mail address shortly.

Posted by: JohnDarling at September 11, 2009 10:15 AM

Noise you appear to be spouting a bunch of nonsense as usual. I can't really make much out of it though.

"At the O, you proudly proclaimed that you don’t have to read the spec."

I looked at your citation and I can't find that particular passage. Your citation is rather large.

Posted by: 6000 at September 11, 2009 10:16 AM

Actully, if I understood 6's comments at the O, he basically adnmitted that he was supposed to read the spec, but stated that it is impractical given the production requirements. In the past, we have pointed out that he could stop frquenting these websites and spend that time examining. He has typically responded that he needs regular breaks from Examing to keep his sanity. So he's basically saying that doing his job by reading the specs would drive him nuts, so he's not gonna do it.

I respond, "too late!"

Posted by: broje at September 11, 2009 11:57 AM

6's comments at the O do more than just indicate that "he's supposed to", but "isn't going to" read the spec.

He postulated that he is not required to read the spec and that his SPE would back him up.

I threw the Law at him and he tried to spin his way out of it, and ran away from me.

He's still running.

Posted by: Noise above Law at September 11, 2009 2:21 PM

Off Topic, but is anybody else getting this from the USPTO database:

Error #2012
Sorry!

--------------------------------------------------------------------------------

Maximum number of users has been reached.
Please try again later.

Posted by: step back at September 11, 2009 4:00 PM

"It is my understanding that the spec teaches that the legs all have to be offset to avoid significant wedging"

Presuming you're correct, which you appear not to be, am I to understand that it is your belief that we should base our claim construction upon what will later turn out to be the applicant's lie/misunderstanding of reality? Is that your overall point? That the claims should be interpreted by POSHITA in such a way that takes into account only the viewpoint of the applicant themselves? Or merely that POSHITA is easily led astray by applicant's teaching and thus mistakenly misconstrues claims and thus that interpretation is set in stone? I wonder what effect POSHITA (or in fact any idiot off the street that can't even point to their hometown on a map) immediately recognizing that the applicant was mistaken would have on your claim construction philosophy.

Let's be 100% clear, there is nowhere in the application that teaches that "the legs all "HAVE" to be offset to avoid significant wedging" and there is nowhere that even implies such a thing. The specification merely shows this as an exemplary embodiment and states that it is a desirable embodiment. There are, to my knowledge, no passages that "teach away" from any embodiments what so ever.

I'm going to go ahead and tell you that this very issue/argument you present has come up in prosecution before me before. The result every time is that the attorney actually does not believe his own argument when confronted with the arguement reworded, so that it states more clearly what their argument really is. They then retract their arguments. And I can tell that were I on the phone with you right now pressing you you would have buckled already.

"The applicant does not have to be right in an objective sense."

By this point I think you've said enough to dam your case. "Applicant can get up here and bs on forever, it doesn't matter if what he says is correct or not, but POSHITA must interpret the claims in view only of applicant's mistaken point of view none the less". Yeah, I'd love to hear what Rader has to say on that particular issue.

"The PHOSITA's understandings of what the applciant is teaching towards matter, not the actual result."

Riiiiight. POSHITA, contrary to popular belief, is capable of independent and rational thought. He is not an automaton, in the words of the USSC. POSHITA wants to know what the applicant is actually claiming. He could give two shts about what applicant wants to claim or "teaches towards". Chef America. I believe discussion is closed on that particular matter.

Or, perhaps you believe in Chef America applicant was actually teaching towards making unedible bread? I'm pretty sure the court looks at the actual result.

"In effect, in my view, "significant wedging" is implicitly defined to be the amount of wedging that occurs when there are any legs present that are not offset."

Ok, so if there is no wedging at all when there are some legs present that are not offset then we read the entire limitation dealing with wedging out of the claim? Mhmmm, your claim construction gets better and better by the minute. It has literally wrapped itself around backwards. This cannot be the correct interpretation.

"There is no other standard set forth for detemining whether significant wedging occurs."

Bingo. 112 2nd indefinite relative term when we interpret the claim your way. The relative term scored the killing blow.

"Moreover, I think that the Applcant's teaching is correct. I don't think that you could have any pairs of legs that are not offset without having more wedging than you would have if all legs were offset. But that's really beside the point."

Would you like me to draw you a picture? This literally takes about 5 seconds to think of an embodiment that fulfills these requirements. There are a lot of ways to skin this cat. But ok, somehow the fact that applicant's teaching (if interpreted the way you do) is complete hogwash is besides "the point". Where "the point" appears to be that the applicant is du mb, so POSHITA reading his spec must be too.

"I don't see how this staes that previous legs fulfill the same function, as they only allow deeper nesting for transport without preventing wedging:"

If you read the rest of the paragraph you'll get it better. "GENERALLY (i.e. sometimes but not always) if the wire stands are tightly nested they tend to wedge ..."

And that is how POSHITA views it. "Generally", not "every single time in every single embodiment that has ever been made".

"If the nothes are left out of any legs, those legs will wedge regardless of whether the other legs have the notches."

There are designs of legs other than the ones shown that will suffice. Plus, if you simply make a bottom "floor" for the inside of the device above the actual existing "floor" of the device you stop "wedging" entirely. For good. Leg "design" be dam. Say goodbye to your wedging. It left the building. But, I suppose, you believe that should have no bearing on what POSHITA thinks because ... something that I don't know.

"In the reference, there is a pair of legs that are not offset."

Correct. And yes we're looking at the same thing. 50+48 in the ref. The same one that isn't going to wedge "significantly" if you stack 2 on top of each other.

The fact appears to be, that you're easily led astray by what the applicant teaches and you assume that POSHITA is as well. You in fact appear to regard what he says as gospel and presume that POSHITA would as well. Newman certainly does and is.

This is not a good thing. This is a problem. It is not proper. And as NAL would say, it is not the lawl. You need to think outside the box of the application if you're going to put on the boots of POSHITA. You need to consider what POSHITA would know before reading the app.

And by the by girls, Broj is right about what I "admitted" in re specs. Although I also "admitted" that I've read nearly every single page of nearly every single app that I've examined. I have probably also "admitted" that my spe doesn't necessarily require me to, and many other spe's don't require their examiners too. Perhaps this is where Noise draws her miscomprehension of my statements from.

I'm outta here for the night, I'll ttyl.

Posted by: 6000 at September 11, 2009 4:56 PM

"I have probably also "admitted" that my spe doesn't necessarily require me to, and many other spe's don't require their examiners too. Perhaps this is where Noise draws her miscomprehension of my statements from."

No miscomprehension 6 - It was a direct challenge and you ran:

"...Yes/No proposition was put to 6:

You are charged with examining an application, not just examining the claims."
Yes or No.

6’s answer was “No”.

How am I miscomprehending your No? Why didn't you answer my follow up with direct quote to the pertinent Law?


*You spin me right round, baby
right round like a record, baby
Right round round round
You spin me right round, baby
Right round like a record, baby
Right round round round

* - lyrics by Dead or Alive

Posted by: Noise above Law at September 12, 2009 5:56 AM

"Examining the application" is a far cry from "reading the specification". Just because I read it doesn't mean I search for every nuance in it or evaluate all of it for compliance with 112 2nd etc, i.e. examine it.

Posted by: 6 at September 12, 2009 5:37 PM

So to 6, reading is not a part of examining.

Reminds me of the convolutions in 6's logic for after appeal examining NOT including searching.

Hilarious, the more you post, the dumber you make yourself out to be.


But 6, you STILL haven't answered my post concerning the Law and examining (your "No" answer is STILL wrong).

6, Still running.


*Running on - running on empty
Running on - running blind
Running on - running into the sun
But Im running behind

*lyrics by Jackson Browne

Posted by: Noise above Law at September 12, 2009 8:37 PM

"So to 6, reading is not a part of examining."

Can you read? At all?

Posted by: 6 at September 13, 2009 9:41 AM

"Just because I read it doesn't mean... i.e. examine it."

If you are asking if I can read the English language, the answer is a quite evident Yes. If you are asking if I can read your mind and figure out what you wanted to say as opposed to what you actually say, the answer is a Thank God No.

Are you going to answer my questions regarding Law? At all?

Or are you going to try more pathetic attempts to change the subject and focus?

Keep running 6.

Posted by: Noise above Law at September 13, 2009 2:39 PM

"Are you going to answer my questions regarding Law?"

I must have missed them. Silly me.

Posted by: 6000 at September 13, 2009 4:25 PM

gee, I am sooo surprised.

/off sarcasm

Posted by: Noise above Law at September 14, 2009 8:11 AM

I'm still waiting for 6's answer to the bet I proposed.

As the Texans say, I think he's all hat and no cattle.

Posted by: JohnDarling at September 14, 2009 8:42 AM

I looked at a hypothetical case yesterday and drafted a response to you. However, I didn't send ot for two reasons. One, the response will require me to discuss the case. And two, it was of course as I'd feared, simply a case where JD argues this that and the other thing where most of what he is arguing is complete horse manure. There is of course a valid issue hypothetically buried within a hypothetical brief upon which the case hypothetically will be reopened. Then, he'll wait until the case is reopened and say "hahahaha, yeah he totally thinks the board wouldn't understand the rejection" when, in fact, this isn't the type of test case to show that occured or did not occur.

The only way we'll resolve this issue is if we either 1. have access to the examiner to speak to him about why he reopened or 2. find a case where JD thinks at least some of his arguments are golden and I think ALL his arguments are bad and thus the examiner will proceed. 3. Find a case with an actual technical issue at hand instead of someone just straight up hypothetically citing the wrong source or making some shit blatantly up.

These wouldn't be all that hard to find if I could dip into my own cases. Aka cases where people who know wtf is going on in the references discuss the technical merits of rejections. The hypothetical case hinges entirely upon what is essentially "a matter of law" and has nothing to do with a possible interpretation of a decent reference etc.

Ironically, his hypothetical moronic brief proves my point about all issues not being the same from art to art. His hypothetically not knowing wtf is going on shows. Badly.

I especially like the hypothetical argument: In response to the examiner saying that apples are not oranges applicant respectfull submits that the examiner has not correctly determined the scope and content of the prior art and the differences therebetween.

How is what was respectfully submitted relevant to apples not being oranges? It's not.

Hypothetically speaking an attorney may have filed an entire brief full of such nonsequiter nonsense.

The examiner hypothetically suggests that perhaps the applicant is trying to argue some unexpeceted results, and if that was the case then they should make it clear what they're talking about and submit the evidence for the record. The attorney hypothetically responds that they have no obligation to submit unexpected results.

Wtf? Nobody ever hypothetically said you did.

A whole hypothetical brief full of this nonsense.

The issues are only hypothetically the same because you're damn near retarded JD. Either that, or you're just running up the hours you bill. JD with his shit argument shotgun stands at the ready for anyone willing to buy his bs writing skills. Any orders can be specified to come with a free dose of ignorance of the subject matter on the side.

Hypothetically speaking the response should have taken about 10 minutes to write and should be one sentence long. Maybe 3 if you feel like gettig poetic. And it would hypothetically be persuasive. And would have been hypothetically persuasive a lot faster if hypothetically the first attorney on the case hadn't hypothetically explicitly avoided the best argument in his prior responses.

It could have taken hypothetically 30- minutes tops to do the entire thing from your hypothetical position of reading, dictating and approving if you knew what was going on at all. Literally hypothetically I saw the issue within the first 10 minutes of review and knew what the appropriate response was.

Hypothetically speaking, the only thing I can think of that would have caused the actual issue in the hypothetical case is that a hypothetical 3rd reference was completely mistakenly cited and there should have been a different reference that he meant to cite. Hypothetically the interpretation of the reference bears 0 resemblance to the actual reference.

Now JD, I'll be 100% honest with you. Up until reading this brief I had thought that you were probably a half way decent attorney. Seriously, I figured, give the guy a chance till you've reviewed a good portion of his work. But this? Hypothetically you even arguing the case should be against the law, hell it might even be against some rule somewhere. This is so bad that I literally could not even believe what I was hypothetically reading. I mean sure, I expected a little embelishment here and there, but WTF? A first year associate could have written this thing just by randomly making arguments that make no sense and getting lucky near the end.

Now, all that said, the one issue that is hypothetically pertinent will cause the remand of the case. No thanks to JD's 15+ page brief I will add. As soon as he's bought his 3rd pair of eyes the case will be deemed reopened before they even read his arguments. I hypothetically 100% assure you. Primary/SPE might not even go to the conference.

Never the less, and further beratings of a horrible hypothetical brief aside, I will take the bet if JD will take a bet of my choosing.

The bet is of course that TvD goes En Banc and comes out essentially unchanged. 200$. The relative term "essentially" will be up to JD to weigh in the event of any changes.

You get a gimme and I get a ballsey gimme. What do you say?

Otherwise, this bet is postponed for a better case which will actually be pertinent to the issue between us. And don't worry, for 100$ I can find one on which we'll disagree aplenty and where there will be a technical issue at play that the board will have a good chance of not understanding. No reason it has to be one of our own.

Tell you what NAL, I'll go back and dig up your lame questions and answer them if you'll go ahead and tell me how to get particles such as the ones within a reference of mine into a solid that forms from a liguid that hardens into a gel and then a solid, without forming a mixture in the liquid/gel phase. You seemed to be such an expert on the issue I figure I can't miss out on your answer. You can feel free to crib from JD. Surely JD can help you out, because all issues are the same in every case. Perhaps you know of some matters of lawl which are pertinent?

Posted by: 6000 at September 14, 2009 10:05 AM

"The hypothetical case hinges entirely upon what is essentially 'a matter of law' and has nothing to do with a possible interpretation of a decent reference etc."

Your reading comprehension is even worse than I thought.

The issues in the appeal are: 1) one or two of the references in the three reference combination are non-analogous; and 2) the examiner hasn't correctly determined the scope and contents of the prior art, and thus the differences between the claims and the prior art.

Both of those are questions of fact, not questions of law.

Your ignorance continues to amaze.

"And two, it was of course as I'd feared, simply a case where JD argues this that and the other thing where most of what he is arguing is complete horse manure."

Glad to hear that you think issues such as whether the examiner bothered to apply analogous art and/or even managed to find all the claim limitations in a three reference combination are horse manure. Says a lot about your competence.

"As soon as he's bought his 3rd pair of eyes the case will be deemed reopened before they even read his arguments. I hypothetically 100% assure you. Primary/SPE might not even go to the conference."

Uhm, in case you hadn't noticed, the app has already gone through a pre-appeal, and the decision of the conference was the case is ready for appeal. This is going to be one of those "rare" cases where they re-open despite telling applicant the case is ready for appeal.

"The only way we'll resolve this issue is if we either 1. have access to the examiner to speak to him about why he reopened "

When he re-opens, and he will, it will be because his rejection is a POS. And my arguments are correct. Plain and simple.

"Hypothetically speaking the response should have taken about 10 minutes to write and should be one sentence long. Maybe 3 if you feel like gettig poetic."

Feel free to send me this magical one sentence response. I could use some more laughs.

"Hypothetically speaking, the only thing I can think of that would have caused the actual issue in the hypothetical case is that a hypothetical 3rd reference was completely mistakenly cited and there should have been a different reference that he meant to cite."

BWWWWAAAAAAHHHHHHHAAAAAAAA!!!!!!!

That the best you got? That the examiner mistakenly cited the third reference??

You're hilarious.

"A first year associate could have written this thing just by randomly making arguments that make no sense and getting lucky near the end."

I've mentored plenty of first year associates in my 10+ years of practice. And I seriously doubt it. What is clear though, is that you couldn't produce anything coherent. I've read your stuff. The post above being a good example.

"The bet is of course that TvD goes En Banc and comes out essentially unchanged. 200$. The relative term 'essentially' will be up to JD to weigh in the event of any changes."

The Fed. Cir. has already agreed to rehear it en banc. The only issue is whether the PTO withdraws the proposed rules and the case is dropped.

But I'll take your bet. $200, right? And you're taking my bet.

The panel's decision will be vacated and remanded. I think the en banc court will find that the limits on RCE's are contrary to law, as well as ESD's being contrary to law. Whatever portion of JJ. Prost and Bryson's decision held that the proposed rules were within the PTO's rule making authority will be reversed by the en banc court.

But it won't ever be heard because the PTO is going to drop the case.

But you're still going to owe me a hundo. I take cash, check or money order. You can mail it to my office.

Posted by: JohnDarling at September 14, 2009 10:40 AM

Well JD,

I almost hate to say, I told you so, but I don't entirely hate to say it.

All legal decisions are arrived at by "people" (as opposed to how scientific issues are ultimately settled by Mother Nature --MN gets the last laugh).

When rendering a legal decision, people can be crazy, irrational, emotional, and most importantly of all; can approach an issue from entirely different and incompatible frames of reference.

It seems from your answer that you see one of the issues in the case you privately sent to 6 as being that of analogous art. That is a not-too-shabby and highly pertinent issue for our post-KSR era. I would like to know more (in a general sense) of how you attacked the (non)-analogous art issue. From my own recent review of that same question, I submit to you that the law of "non/analogous art" is not a well developed one.

It seems to me that examiners will want to take the position that almost everything is analogous art whereas patent prosecutors will want to insist that almost nothing is analogous art. The courts don't give much in the way of guidance. So it boils down to an, "is-too; ain't too" ping pong game between examiner and inventor as to whether something is "analogous" prior art.

Posted by: step back at September 14, 2009 11:45 AM

step back,

Feel free to send me an e-mail and I'll send you the serial number of the application that's gonna cost 6 $100. I'll also send you the serial number of two other appeals I have pending where I'm arguing non-analogous art.

For a pre-KSR brief I wrote where I successfully argued non-analogous art, see 10/453,889.

JD

Posted by: JohnDarling at September 14, 2009 11:57 AM

"...I can find one on which we'll disagree aplenty and where there will be a technical issue at play that the board will have a good chance of not understanding."

There are no "technical issues." What do you not understand about that? You've either met the legal requirements for establishing a prima facie case (of whatever it is, anticipation, obviousness, lack of enablement, etc.) or you have not.

You're like all the examiners over there. You think that there are "technical merits" to a rejection.

Wrong.

There are no technical merits. There are legal merits only. Your rejection either meets the legal requirements or it does not.

BTW, according to the Fed. Cir., the BPAI can't understand how to construe the term "comprising." So their lack of understanding seems to extend from the art to the law. But they're the best and brightest over there, amirite?

Posted by: JohnDarling at September 14, 2009 12:07 PM

No, the only hypothetical issue on appeal is that "one" of three references is non-analogous and that same reference doesn't even teach what is alleged.

Get rid of that hypothetical issue (i.e. the third ref) and your overwinded appeal goes up in smoke.

The second hypothetical ref is analogous, and is hypothetically properly combinable to say otherwise is to merely be showing your own ignorance.

"But but but corrosion isn't a big deal in this art, the examiner hasn't showed any evidence of it being a concern!"

Ridiculous. That's the kind of nonsense polluting our patent system. You want to know why it takes forever to get around to a new FOAM? Because you have jackasses like JD arguing shit they don't have any clue about. And they argue en masse.

Keep in mind I see appeals like yours all the time. There will be 8 "issues on appeal" 7 of which nobody here cares one bit about and which every appeals guy/SPE reads right straight over as if it wasn't even there. Then there is one issue (usually the attorney didn't even bring it up, grats to you on at least figuring out the actual issue, or was it just handed to you by your colleague?) that causes one or more members to want to reopen.

This issue will come up while the primary is explaining the reference to the conferee before they even read your brief. Unless they choose not to even go.

Your job is a fuking cakewalk joke that you overbill for exorbitantly.

"You can mail it to my office. "

The deal is on then. We can shake on it at the Bilski oral arguments if you show. Show up early, first come first serve. Nov. 9th.

"That the best you got? That the examiner mistakenly cited the third reference??"

Well wtf do you propose? He simply made up some gobbledygook? Obviously he got that specific teaching he stated in the action from somewhere, you don't make something like that up off the top of your head. And it sure as f didn't come from any reference on the hypothetical record.

If I'm combining a bicycle and a wheel I don't all of a sudden make up some shit about e=mcc or some outlandish bs and then cite a reference showing candy, and I kind of doubt this guy did either. That's where you hypothetically should have gotten poetic and said that using the reference smacks of lunacy or blatant citations error, instead of stating boring ol' "hindsight bias". Hell, he couldn't have hypothetically made up the teaching he put down using your own specification as a guide so far as I know. Where does your spec teach anything similar to the "hypothetical" hypothetical teaching of ref 3?

In any event, 3 hypothetical sentences would have ended the matter. And you could have delivered them over the phone.

But, I suppose that would have cost the client around 1k instead of 10k, amirite?

"Glad to hear that you think issues such as whether the examiner bothered to apply analogous art and/or even managed to find all the claim limitations in a three reference combination are horse manure."

I didn't say that ya jackass. I said you put that argument in a plainly inappropriate spot.

We're having a conversation about how apples aren't equal to oranges and then suddenly out of the blue you bring up Neil Armstrong and the moon landing being a big conspiracy. That's analogous to how you state your arguments.

Typical JD prosecution leading to appeal brief.

JD: Apples are red and shiny. I argue that my apples are the same as oranges.

6: No I don't think so. Did you know apples aren't the same thing as oranges?

JD: In response, did you know that the moon landings were all a conspiracy?

6: WTF? I thought we were talking about apples and oranges and the comparison of the two.

JD: Oh no, no, in response I don't think you determined whether or not apples and worm holes therein were old and well known and what the differences are between them and pears.

6: /facepalm

Fucking learn to make a new paragraph for a new thought. Maybe even introduce it as a new argument. You know, explain your position.

Maybe this is a sophisticated law school taught technique meant to just confound your opponent with the shear mindlessness of talking to you. Is that right? NAL practices this method repetitively in her writings, I'm assuming that you guys are getting it from a similar source.

"Uhm, in case you hadn't noticed, the app has already gone through a pre-appeal,"

Apparently he got one of the lazy appeals guys. Make no mistake, they aren't all created equal. One will give you a hell of a time, another will let it sail right on through without reading any part of any of it. Some will give you an honest assessment of the case. Knowing who to make sure to be scheduled with is rather fun once you know who they are.


"Both of those are questions of fact, not questions of law."

A question of fact only because a court decided long ago that there were certain criteria to determine whether or not a reference was analogous. And this issue can't even be described as whether the examiner correctly determined the scope and content. Obviously the scope and content of the one reference has not be correctly established. But calling it that does it too much justice. This issue is whether or not we're even reading the right reference or whether or not the examiner is batshit insane.

Like I said before, had you guys not avoided the issue for what? 2 actions? Then you wouldn't be where you are right now. Arguing 90% ignorant shit with a tail end that happens to be valid, while expressely avoiding the best issue you have is a great way to get an examiner to not reopen your case sooner rather than later. But then, I bet you know that already.

Good job. Morons. Greedy bastards I probably should say. Wringin' those clients for all they're worth.

Posted by: 6000 at September 14, 2009 12:11 PM

"Get rid of that hypothetical issue (i.e. the third ref) and your overwinded appeal goes up in smoke."

LOL. And what happens to the examiner's rejection if we get rid of the 3rd reference?

"Ridiculous. That's the kind of nonsense polluting our patent system."

Feel free to supply the evidence I requested in the brief. The examiner never bothered to.

"Your job is a fuking cakewalk joke that you overbill for exorbitantly."

You have no idea what I bill. But if my job is a cakewalk, and if I could overbill exorbitantly for it, why aren't you out here doing my job? It's a cake walk, amirite? You should have no problem doing it then. And getting paid exorbitantly for it. So why aren't you?

Oh, let me guess, you have too strong a moral compass. Amirite?

"And this issue can't even be described as whether the examiner correctly determined the scope and content."

Uhm, yes it can. Non-analogous art is not part of the scope and content of the art that is pertinent to the subject matter sought to be patented.

"In any event, 3 hypothetical sentences would have ended the matter. And you could have delivered them over the phone."

So you think simply calling the examiner and telling him that his 3rd reference is non-analogous art would have resolved the case?

You're ridiculous.

"This issue is whether or not we're even reading the right reference or whether or not the examiner is batshit insane."

I'm pretty sure we're reading the reference he cited and relied on. I don't think the latter is true. I just think he's making a really lame rejection.

"Like I said before, had you guys not avoided the issue for what? 2 actions? Then you wouldn't be where you are right now."

We argued the 3rd reference was not combinable with the other two references in the first respone, the pre-appeal, and the appeal. Not sure how you missed that. Oh, that's right, you don't actually read anything.

I have no interest in attending the Bilski arguments. I already know how it's going to come out.

You won't be there either. I'm sure there'll be another mandatory AU meeting or whatever that you can't miss.

Posted by: JohnDarling at September 14, 2009 12:44 PM

*********Would you like me to draw you a picture? This literally takes about 5 seconds to think of an embodiment that fulfills these requirements.

...

"If the nothes are left out of any legs, those legs will wedge regardless of whether the other legs have the notches."

There are designs of legs other than the ones shown that will suffice. Plus, if you simply make a bottom "floor" for the inside of the device above the actual existing "floor" of the device you stop "wedging" entirely. For good. Leg "design" be dam. Say goodbye to your wedging. It left the building. But, I suppose, you believe that should have no bearing on what POSHITA thinks because ... something that I don't know.

"In the reference, there is a pair of legs that are not offset."

Correct. And yes we're looking at the same thing. 50+48 in the ref. The same one that isn't going to wedge "significantly" if you stack 2 on top of each other.

The fact appears to be, that you're easily led astray by what the applicant teaches and you assume that POSHITA is as well. You in fact appear to regard what he says as gospel and presume that POSHITA would as well. Newman certainly does and is. *********

Firstly, it's PHOSITA, not POSHITA. Get it right.

Sceondly, youi are wrong to discount the Applicant's teachings in interpreting the claims. It is clear he intends to solve the problem of deeper nesting and wedging using notches in the legs. Putting in a "floor" or "feet" to prevent wedging would have disadvantages of reduced volume per height. Plus, with that solution, there would be no need for notches in the legs at all, so why would there be an infringement of the claim interpreted your way? And I do need for you to draw me a picture. The one in the reference isn't working for me. Clearly, there would be significant wedging in that one, as the non offset leg pair would wedge inside the rim of the lower basket.

Posted by: broje at September 14, 2009 1:02 PM

And as for "Chef America," have you read it? Chef America supports that the teachings of the specification and the prosecution history do have a bearing on how to interpret the claim. Below is an excerpt from the case. Read it and weep.

"The court further concluded that “the specification supports the claim construction advocated by defendant,” that “the prosecution history is also in accord with the construction that the temperature referred to is that of the dough,” and that “the prior art is in accordance with construing the claims to require the dough be heated to a temperature in the range of 400 degrees to 850 degrees Farenheit [sic] … Although “a patentee can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning,” id. (citing Digital Biometrics v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998)), we discern nothing in the claims, the specification, or the prosecution history that indicates that the patentees here defined “to” to mean “at.” To the contrary, the prosecution history suggests that the patentees intentionally used “to” rather than “at” in drafting the temperature requirements of the claim … In formulating the amendment to the claims to specify the temperature limitation, the patentees had two models before them: the heating “to” limitation of the specification and original Claim 6 or the heating “at” limitation of the example. They chose the “to” limitation which, as we have shown, plainly and unequivocally refers to the temperature to which the dough and not the air in the oven will be heated. It thus appears that the patentees consciously selected “to” rather than “at.” There is nothing to indicate that in doing so they intended “to” to mean “at.” Chef America does not contend that the patentees’ use of “to” rather than “at” was a draftsman’s mistake. The patentees made no attempt to have such an error corrected, either by obtaining a certificate of correction from the Patent and Trademark Office pursuant to 35 U.S.C. § 255, or by action of the district court. Cf. Novo Indus. v. Micro Molds Corp., 350 F.3d 1348 (Fed Cir. 2003). To the contrary they argue only that “to” should be construed to mean “at” because otherwise the patented process could not perform the function the patentees intended. As we have noted, however, we have repeatedly declined to rewrite unambiguous patent claim language for that reason."

Posted by: broje at September 14, 2009 1:28 PM

broje have you a theory why, in Chef America, they doggedly argued that the claim was so drafted with intention? Why would they do that? I don't get it?

Posted by: MaxDrei at September 14, 2009 10:58 PM

6,

In your 2000+ word diarrhea, you mention me twice, and neither time do you advance the points we have before us. Stop running away and man up, m’K?

In your first post you wish to restructure the challenge from answering my direct and rather simple question on law because you, the master of the killer 5 minute Google search can’t seem to find the question even when the actual link to the single webpage at Patently-O has been provided (rhetorical question: are you really that pathetic?)

Your restructured offer is denied. You would have me do your job on a real application (you don’t offer me your paycheck for this – you greedy bastard) in exchange for the task I originally set before you, a task that merely asks you to understand the law that rules your job and that you should, as a fundamental matter, already know. Not an enticing offer and one, rather, that shows that the onus of moving forward is on you.

Second, you gratuitously slam my writing technique (MM’s influence?) by saying

“Fucking learn to make a new paragraph for a new thought. Maybe even introduce it as a new argument. You know, explain your position. Maybe this is a sophisticated law school taught technique meant to just confound your opponent with the shear mindlessness of talking to you. Is that right? NAL practices this method repetitively in her writings”

Show me an example of my poor paragraphing. Or do you (once again – see above regarding the reading and ie. examining), mean something other than what you actually typed?

Or perhaps you are merely referencing your own inability to understand and comprehend writings above the first grade level, that above such a level, you find the material too confounding?

JD’s comment about all hat and no cattle fits and compliments the image of the dried out briar patch turned tumbleweed that your poor tricks have become. You bluster and rant, but produce nothing of substance. When confronted with simple and direct challenges, your only options are to obfuscate or run away.

Posted by: Noise above Law at September 15, 2009 1:10 AM

While it is nice to see that this thread has expanded to some 80+ comments, and that we discussed some important issues in patent law, such as what is the meaning of "comprising"; it is at the same disappointing to see my bretehren patent practitioners quickly sinking into ad hominem flame wars.

These flame wars are a disservice to everyone. They pollute the flow of the thread. They give outside readers the impression that patent agents/lawyers and examiners cannot contain themselves and are easily lured by flame bait.

In my humble opinion, 6 scored some points and the opposition also scored some points. The claims of In re Skvorecz were not the most ideal in that there is some amiguity as to how the "each leg" limitation is to be fairly read.

Probably the patent drafter wanted to have it both ways and to reserve for a later time the choice of flipping to one side of the fence or the other as matters develop. So, from that perspective, we have to give 6 some points. On the other hand, during examination, the PTO apparently did not give the applicant fair warning that this indeed was an issue. So they don't come out clean either. I believe that the CAFC had to choose between the diritier of the two parties, and in this particular case, the dirty tactics employed by the PTO (by the Board) appeared to the CAFC to be dirtier (lack of substantial evidence --just making stuff up on the fly during appeal) than those employed by the applicant.

As they say, bad fact patterns make for bad law. But then again, when ever in a dispute are the facts clear cut and simple?

Posted by: step back at September 15, 2009 10:55 AM

"Your restructured offer is denied."

np

"And as for "Chef America," have you read it?"

Yes, I read it while I was writting the piece above. And I apparently understand it better than Max does.

"Firstly, it's PHOSITA, not POSHITA"

Well lawl is technically law, but I like to play around. I suppose the joke is lost on you. If I want to be formal I just call him a person of ordinary skill.

"So you think simply calling the examiner and telling him that his 3rd reference is non-analogous art would have resolved the case?"

No, but if you'd cut the bullshit manner of speech out of that argument then you'd be halfway home. I'll send you a mail later.

Jesus, there's a whole sht storm of things to answer in this thread. This could take awhile for me to get around to. I've got 8 counts to do this biweek and only 2-3 abandonments coming in.

Posted by: 6000 at September 15, 2009 10:55 AM

Oh and JD,

"You have no idea what I bill."

If you can't take a pay cut to take a job that pays ONE HUNDRED AND SEVENTY THOUSAND DOLLARS A YEAR then I can take a guess.

Posted by: 6000 at September 15, 2009 10:58 AM

Max, to answer your question, I think the strategy they employed may have been their best option at that point. I think there was, and still is, precedent that the PHOSITA's understanding of the teachings in the specification trumps clear and unambiguous claim language to the contrary.

To me, Chef America settled the question whether an affidavit from a PHOSITA can counteract clear and unambiguous meaning of claims set forth not only in the claims themselves, but also in the specification and the prosecution history. In other words, the PHOSITA testimony can be used to establish that the claims must be construed as what the PHOSITA understood the specification to teach, but not as what the PHOSITA would conclude the applicant intended to teach.

If they had said it was a mistake and tried to correct it, I think they might not have been able to recover for past damages, but only to get an injunction. Plus, I don't know that they would have succeeded if they had said the claim language and specification stated it incorrectly.

So, in view of that and in view of the unsettled question, I think they may have tried their best to make lemonaid from lemons.

Posted by: broje at September 16, 2009 12:44 PM

broje, the way you explain it makes sense to me. Thanks.

Posted by: MaxDrei at September 16, 2009 12:58 PM

I come accross many problems with the uspto as well.

Posted by: joe at September 17, 2009 10:12 AM

I guess to 6, "NP" stands for "let me put on my skirt and track shoes, and run away from yet another challenge."

Posted by: Noise above Law at September 18, 2009 10:21 AM

Last.

Posted by: broje at September 24, 2009 10:24 AM

lol, broje, who knows - 6 may find his courage and actually respond (hopefully with some substance).

Posted by: Noise above Law at September 24, 2009 1:05 PM

6,

The teacher left a note for you. You need to complete your homework, NP means No Pass.

Posted by: Noise above Law at September 26, 2009 6:28 AM

Will this thread see 6 again?

Will this thread hit the 100 comment milestone without resorting to such chep posts as this one?

6, your silence is deafening.

Posted by: Noise above Law at September 28, 2009 3:36 AM

Hey, Noise, did you notice that 6 gave us potentially enough info to ID him att he O on 9-10? He described a rejection he was working on for an applicaiton that has "solution" in the claims, but only "suspension" in the spec. Later, he confirmed that he is a 2800 Examiner.

A USPTO search for led me to 108 published patent applications. Looking through public pair at those with titels likely to place them in or near 2800, I did not find one with an OA issued since mid September, but I'll keep checking. Let's nail this!

Posted by: broje at September 28, 2009 12:01 PM

I said search for ACLM/solution and SPEC/suspension andnot ACLM/suspension andnot SPEC/solution but I put those metadata tags around it so it got deleted from my comment.

Posted by: broje at September 28, 2009 12:03 PM

broje,

I'm not sure I really WANT to know who 6 is. He really isn't that important, although he does serve as a useful foil in cases of ineptitude or wanton disregard for the Law.

Posted by: Noise above Law at September 28, 2009 3:34 PM

100!

Posted by: broje at September 29, 2009 3:00 AM

"Hey, Noise, did you notice that 6 gave us potentially enough info to ID him att he O on 9-10? He described a rejection he was working on for an applicaiton that has "solution" in the claims, but only "suspension" in the spec. Later, he confirmed that he is a 2800 Examiner.

A USPTO search for led me to 108 published patent applications. Looking through public pair at those with titels likely to place them in or near 2800, I did not find one with an OA issued since mid September, but I'll keep checking. Let's nail this!"

broje,

I'm working on this also.

A Patently-O poster, 2600examiner, knows 6's name. I'm pretty sure 2600examiner also posts as mk1023 on other sites. I'm pretty sure I know who mk1023 is.

Posted by: don't bother at September 29, 2009 5:36 AM

Funny how 6 has time to get on techdirt and comment about Gene Quinn's crusade...

(omitting of course, that he is an examiner and miscontrsueing, yet again, why he was banned from The IP Watchdog - hint 6, it was NOT because you told people not to use Gene's services - such advice from the likes of you is a Positive proclamation that people should use his service - rather, you were banned because of your ignorance and blatant disregard for the law - I love how you can't handle it)

... yet can't find the time to answer in any type of substantive manner the challenges put forth here and at the Trainwreck.

Will we ever get answers 6? Or just more questions, obfuscation and running away.

BTW, nice skirt today.

Posted by: Noise above Law at October 2, 2009 3:31 AM

I'm turning this 102 into a 103.

Posted by: broje at October 13, 2009 2:57 PM

Your 103 is not convincing, and is overruled.

Thankfully, you are not an examiner broje.

Posted by: Noise above Law at October 14, 2009 2:28 AM

We'll need to some indefinate posts to get up to 112.

Anyone see 6?

Posted by: Noise above Law at October 14, 2009 2:30 AM