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July 8, 2010

Behind the Times

In the interest of less-than-compact prosecution, the USPTO is, for the time being, adhering to the ancient military supply rule: "smoke 'em if you got 'em." The day Bilski rolled out of the Supreme Court, Robert Bahr, Poobah for Patent Examination Policy, pooted forth a letter on the ruling, directing examiners to stick to the old standby machine-or-transformation test, whereupon giving "the applicant" "the opportunity to explain why the claimed method is not drawn to an abstract idea."

Posted by Patent Hawk at July 8, 2010 8:10 PM | § 101

Comments

Oetiker will be cited in numerous Office Action responses.

Posted by: Swami says at July 9, 2010 4:05 AM

Very surprising that Kappos would let the PTO hierarchy issue a memo that is inconsistent with a ruling from our Judicial Mount Olympus. But then again, this is the same PTO that was willing to enact the ill-advised and unlawful claim/continuation rules in Tafas. Same old, same old.

Posted by: EG at July 9, 2010 4:47 AM

I agree with the PTO on this one. The only concrete rule issued by the Supreme Court is that if the claim meets the machine-or-transformation test, then it is statutory. Outside of that safe harbor, there is no guidance. As stated in Stevens' concurring opinion: "The Court, in sum, never provides a satisfying account of what constitutes an unpatentable abstract idea. Indeed, the Court does not even explain if it is using the machine-or-transformation criteria. The Court essentially asserts its conclusion that petitioners' application claims an abstract idea. This mode of analysis (or lack thereof) may have led to the correct outcome in this case, but it also means that the Court's musings on this issue stand for very little." Given the lack of guidance by the Supreme Court, it should be up to Applicants to justify the non-abstractness of their invention, given it falls outside the machine-or-transformation safe harbor. I would advise my clients to make sure to submit claims that meet this criteria in every case.

Posted by: Defector at July 10, 2010 10:47 AM

Defector's clients should ask him why applicants are assuming the burden when the prima facie case is not met per Oetiker.

Falling outside of "safe havens" is not the same as having a prima facie case satisfied. The Supreme Court held explicitly (majority rule) that falling outside of MoT does not mean that the applicant's invention is barred under 101. A test for eligibility is not the same as a test for ineligibility. It is up to the applicant to justify only when the burden has legally transferred. Mere conclusionary statements are not enough to satisfy the initial burden and take the applicant's legal rights away. It is not the applicant's problem that the Office lacks a conclusive test, or was not given such by the Supreme Court.

Defector, you owe more to your clients.

Posted by: Swami says at July 10, 2010 11:20 AM

Swami -- Explain to me how you know when the Office has adequately met its burden, given the lack of judicial guidance. As Justice Stevens wrote, we don't even know that the plurality opinion didn't employ the "MoT" test as the sole test, since they didn't bother to explain how they arrived at a determination that Bilski's claims were abstract. You write that "mere conclusionary (sic) statements are not enough to satisfy the initial burden" and I would argue that such statements are all we got from the Supreme Court. If it's good enough for the Supreme Court, please explain to me why it isn't good enough for the Office?

Posted by: Defector at July 10, 2010 7:01 PM

Defector,

Are you seriously thinking that the examiner is on equal footing with a Supreme Court Justice?

Posted by: Anon at July 12, 2010 3:49 AM

Defector: If it's good enough for the Supreme Court, please explain to me why it isn't good enough for the Office?

1. In re Warner, 1967.
2. In re Skinner, 1986.
3. In re Bond, 1991.
4. In re Oetiker, 1992.

Applicant has no duty to even argue his invention is patentable subject matter until the PTO makes a valid argument with articulated reasoning why it is not. Bilski has not altered this principle.

Let's not be fiddling around with the burdens here.


Posted by: Babel Boy at July 12, 2010 12:11 PM

You Oetikertards might want to brush up on what the actual decision says before you cite it.

http://cases.justia.com/us-court-of-appeals/F2/977/1443/305554/

Specifically how you plan to argue that either facts or legal conclusions are not properly handled in the instance of a 101 case will be interesting indeed.

"Applicant has no duty to even argue his invention is patentable subject matter until the PTO makes a valid argument with articulated reasoning why it is not."

So, what is going to be a "valid argument with articulated reasoning" that will satisfy you and other Oetikertards?

Posted by: 6000 at July 12, 2010 2:46 PM

"Are you seriously thinking that the examiner is on equal footing with a Supreme Court Justice?"

Are you seriously thinking that a USSC Justice put forth a non-prima facie case under Oetiker etc.? If so, perhaps it is Oetiker, or your understanding of Oetiker, that is incorrect and will be the next thing the USSC/CAFC has to correct.

Posted by: 6000 at July 12, 2010 2:51 PM

"You Oetikertards might want to brush up on what the actual decision says before you cite it."

OMG, you put "tard" after "Oetiker"!!!!!!! You are the most imaginative poster on the interweb!!!!!!

"Specifically how you plan to argue that either facts or legal conclusions are not properly handled in the instance of a 101 case will be interesting indeed."

As the Suprement Court reiterated that their "abstract idea" jurisprudence is contained in the Benson-Flook-Diehr line of cases, I would argue that any failure on the part of the examiner to analyze why the facts of those cases are sufficiently similar to the application being examined that they are permitted to rely on the Court's rationale would be a failure to shift the burden.

But don't worry 6tard, I'm sure the PTO will come up with some cut and paste form paragraphs for examinertards like you to use.

Of course, I'm sure what will be provided is some lame MoT analysis, and then a bald statement that the claim is also directed to an abstract idea (insert aforementioned form paragraph here).

I'm sure they're working night and day on that form paragraph. Look for it in an OA in your mail box soon.

Posted by: pong at July 12, 2010 3:31 PM

"OMG, you put "tard" after "Oetiker"!!!!!!! You are the most imaginative poster on the interweb!!!!!!"

I kno rite? You're getting ready to copy me aren't you?

"But don't worry 6tard, I'm sure the PTO will come up with some cut and paste form paragraphs for examinertards like you to use."

O look. You did. What a surprise.

"As the Suprement Court reiterated that their "abstract idea" jurisprudence is contained in the Benson-Flook-Diehr line of cases, I would argue that any failure on the part of the examiner to analyze why the facts of those cases are sufficiently similar to the application being examined that they are permitted to rely on the Court's rationale would be a failure to shift the burden. "

Lolable argument no. 1. I suppose I should have said: "Specifically how you plan to argue that either facts or legal conclusions are not properly handled in the instance of a 101 case will be LOLABLE indeed."

But you're probably right pong, they'll probably put out an FP or two. I doubt I'll use them though. I personally don't use FP's except for the most basic things, like headings. Personally I'll probably do my very best, at least at first, to make as small of a one-sentence conclusory statement regarding how the claim is directed to an abstract idea as is humanly possible then cite to Bilski. I'll do this mainly for lols and to watch them appeal a 101 determination, because I'd looooooove to have a sexy appeal like that compared to my old cow appeals over 103 etc. And I would love to fish for me an Oetikertard, it'll be hard for me to catch one in my AU without blatantly baiting. Most of my applicants can very easily amend the claim to be blatantly statutory and wish to take no risks about 101. So most of my applicants probably won't bother with an appeal and will instead simply amend into plainly statutory subject matter.

Posted by: 6000 at July 12, 2010 5:34 PM

Maybe this is part of the USPTO's strategy of reducing potential backlog. David Kappos has stated that improving patent quality is one of his priorities, and the burden-on-the-applicant approach may be one way of addressing both patent quality and backlog reduction. If this approach results in less frivolous patent litigation, then maybe it's not so bad.

Posted by: patent litigation at July 14, 2010 12:12 PM

"patent litigation":

Thanks for your comment. Alas, your comment testifies to an utter lack of conceptualization with regard to correlation or causality. To put a fine point on it, USPTO backlog, applicant burden of negative proof, patent quality, and litigation frequency are unrelated.

Posted by: Patent Hawk at July 14, 2010 5:46 PM

Not to mention that the "burden-on-the-applicant approach" has been deemed illegal. See Tafas v. Kappos.

Posted by: Anon at July 15, 2010 6:11 AM

PH: To put a fine point on it, USPTO backlog, applicant burden of negative proof, patent quality, and litigation frequency are unrelated.

Well, I dunno...

Clearly one can connect backlog to patent quality. The more time examiners spend analyzing the application and art, the longer it takes to make a decision, the more constipated the system becomes, the longer the queue. However, the careful analysis increases patent quality. So for a constant rate of new applications being filed, the backlog is obviously directly related to quality. Don't need a PhD to see that.

Now, to integrate litigation . . . one presumes that patents of higher quality will be challenged less frequently. Who is going to waste $3 M to litigate a patent w/ bullet-proof claims? Just the idiots, which reduces litigation by 10% at least.

So to the extent that the proseuctors and the examiners do adequate analysis and competent drafting of claims and rejections, the time it takes to get to a patent increases, backlog increases, quality increases, and litigation decreases. (Of course, a lot of prosecutors and pro se applicants don't get it, and they think getting a patent of any quality is the only objective. Sometimes it is -- i.e., to sucker investors.)

OK, so that's 3 out of 4. I'll leave it to you guys with slow practices and time on your hands to figure out how to fit burden of negative proof in here for a 4-card flush.

Posted by: Babel Boy at July 15, 2010 7:58 AM

Babel,

Not to be pedantic - ok, to be pedantic...

Your point one "The more time examiners spend analyzing the application and art, the longer it takes to make a decision, the more constipated the system becomes, the longer the queue. " forgets to include the operational fact that RCE's (see Patently-O) must be factored into the so-called quicker examination, which, when properly recalibrated, shows that "quicker" is not.

Taking more time upfront to properly examine and provide substance to any rejections and allowances would stem the RCE tide and make the overall true length of examination much shorter.

On point two, litigation is largely a red herring. One only has to look at the stats (percentage of patents granted versus percentage of cases actually litigated) to see the non-causality.

Posted by: Pedantic Pete at July 15, 2010 12:34 PM

Interesting discussion, once you filter out all the ad-hominems (which, I admit in this case, was at least somewhat entertaining).

Babel writes: "Applicant has no duty to even argue his invention is patentable subject matter until the PTO makes a valid argument with articulated reasoning why it is not. Bilski has not altered this principle."

Agreed. So the question remains, what's a sufficiently articulated reasoning that an Examiner can put forth as to why an invention is abstract?

Pong writes: "As the Suprement Court reiterated that their "abstract idea" jurisprudence is contained in the Benson-Flook-Diehr line of cases, I would argue that any failure on the part of the examiner to analyze why the facts of those cases are sufficiently similar to the application being examined that they are permitted to rely on the Court's rationale would be a failure to shift the burden. "

And I'm sorry I have to disagree. An Examiner is not required to analogize facts to precedents. To make a prima facie case of obviousness, for example, there is no need for them to cite Graham-Deere, or even step through the analysis of Deere, such as determine the scope and content of the prior art, ascertain the differences between prior art and claims, and resolve the level of ordinary skill. These steps are done implicitly in their rejection which essentially is a presentation of evidence that the matter was known or obvious in the prior art, and hopefully with a "clear articulation" as to why, a la KSR.

Anon wrote: "Are you seriously thinking that the examiner is on equal footing with a Supreme Court Justice?"

Answer: No, of course not. But the PTO is obligated to make rejections using the same reasoning used by the courts in their judgments, in a vain attempt to not be overruled. I maintain that the only clear statement by the Court on how to figure out if something is abstract and therefore not patentable under 35 U.S.C. § 101 is: if it meets the machine-or-transformation test, then it is not abstract, and if it does not meet that test, then it could be abstract, but isn't necessarily, although they didn't provide any examples of a method that would be statutory despite not meeting the machine-or-transformation test. In essence, when the invention falls outside of MoT, they provided no guidance at all, other than, "we know it when we see it." So, what would you do if you were an Examiner and you came across a claim that did not meet MoT and you felt was abstract? If it were me, I'd reject it as abstract, state it doesn't fall in the MoT safe harbor, cite Bilski, and let the Applicant respond.

I have yet to hear any rational procedure, or bright-line rule, that can distinguish a statutory non-abstract invention from a nonstatutory abstract one, from anyone. This is a gray area of law, and the Office has to make the rejections when the claim falls outside of MoT. Lacking any decent amount of guidance from the courts, I'm not sure what else they can do.

Posted by: Defector at July 16, 2010 7:32 AM

"These steps are done implicitly..."
"...and hopefully with a "clear articulation
"

Defector - that won't cut it. Not be a long shot.


"using the same reasoning used by the courts in their judgments"

Except that is not possible in this instance, since the Supremes did not spell out their reasoning and examiners must.


" I maintain that the only clear statement..."

You maintain this in error as all nine justices said explicitly that this is wrong.


"So, what would you do if you were an Examiner..."

I would stick to the law and not apply "feelings".


"and the Office has to make the rejections when the claim falls outside of MoT."

Again - this is false. You have explicitly used MoT as THE test - all nine justices said this is illegal.

Posted by: Pedantic Pete at July 16, 2010 9:35 AM

"You have explicitly used MoT as THE test - all nine justices said this is illegal."

Nah, just used it as a CLUE. There's a difference tardface. This isn't analogous to inherency where, if there is a possibility that the claim is not preemptive of an abstract then it isn't. It's a black and white issue, every single time, there is no possibility to consider.

And the supremes did spell out their reasoning somewhat. It was simply cursory, just as examiner's will be (and was in the Bilski case so far as I can see). They noted that hedging is an abstract idea (they also noted it was was well known, but that is irrelevant) and that its application (limitation) to the field recited in the instant application did not save it. They cited to Flook for that last notion. End of analysis. Pretty fin simple. I just boiled it down to one whole sentence for you.

I can't wait to get ahold of me an Oetikertard :) I was really jealous of a friend of mine the other day he got this guy claiming, literally:

1. A computer program embedded on a physical media ...

So fin lucky. Why can't I get an easy path to set policy?

Posted by: 6000 at July 16, 2010 10:10 AM

"They cited to Flook for that last notion."

Right. And then all applicant has to do is factually distinguish Flook and the rejection is overcome.

Granted, Applicant should not even have to do that, the 6tards of the world should have to provide the factual analysis of the application they're examining to the precedent they're relying on, but as we know that's impossible given the laziness and ignorance of the examiners, just do the examiners' job for them like you've always done.

Posted by: pong at July 16, 2010 12:01 PM

"and you felt was abstract? If it were me, I'd reject it as abstract, state it doesn't fall in the MoT safe harbor, cite Bilski, and let the Applicant respond. "

I can understnat the ignorance of 6000, and how that ignorance overcomes any sense of knowledge or reason.

But Defector, if you truly are an advocate for applicants, you need some serious learning on burden and burden shifting.

As to "the" clue, in the immediate example, there were no other clues presented. In such case, "a" becomes "the" and goes against the explicit Supreme Court holding. The Supremes expressly held that patentable subject matter can fail the MoT safe harbor. The burden (neither presentation nor persuasion) is simply not met by the MoT and a "feeling".

Posted by: Pedantic Pete at July 16, 2010 12:19 PM

I was an Examiner before I was a lawyer (hence, the "defector" moniker). I know the position they are in. They have to to make rejections in gray areas to at least get the Applicant's arguments on the record. (And patent law is full of gray areas.) For the same reason Examiners are required to give language its broadest reasonable interpretation in construing claim limitations even when that's not a realistic interpretation that the PHOSITA would give, they have to make a rejection that a claim does not meet the threshold test of statutory subject matter if it is arguably "abstract" (whatever that means). As the law stands, any claim that falls outside of MoT is arguably abstract. I have yet to see a counter example, or any clear explanation as to how the S.Ct.'s interpretation is inconsistent with MoT. Justice Stevens said as much in his concurring opinion.

Posted by: Defector at July 16, 2010 4:55 PM

"They have to to make rejections in gray areas to at least get the Applicant's arguments on the record"

Defector, in your current position, I hope that you realize that all the applicant needs to put "on the record" is the argument that the Office has not met its prima facie burden. That's the sum total response needed to place the ball back into the Office's court.

Do you really want the Office to waste a full cycle on such a worthless gambit? Do you as a practicioner want to tell your client that you charged her to tell the Office that they have not met their duty?

"As the law stands, any claim that falls outside of MoT is arguably abstract."

I think you need to read Bilski again - that is not the holding. Justice Stevens' "concurrence" has ZERO force of law. You do know the difference between a test for eligibility and a test for ineligibility, do you not? I would hate to assume that you lack the understanding of basic logic and set theory.

Posted by: Pedantic Pete at July 16, 2010 6:23 PM

"Right. And then all applicant has to do is factually distinguish Flook and the rejection is overcome. "

Lolololol. Right, just like Bilski just needed to factually distinguish his application. LOLOLOLOLOLOL, pong, you comedian you.

"Granted, Applicant should not even have to do that, the 6tards of the world should have to provide the factual analysis of the application they're examining to the precedent they're relying on, but as we know that's impossible given the laziness and ignorance of the examiners, just do the examiners' job for them like you've always done."

QQ moar.

Posted by: 6000 at July 17, 2010 1:10 PM

"As to "the" clue, in the immediate example, there were no other clues presented. In such case, "a" becomes "the" and goes against the explicit Supreme Court holding. "

Hardly, the supreme court didn't overrule that it is "the" clue and seeing it as "the clue" doesn't go against their holding. In fact, they confirmed point blank that it was "the clue" by reciting Benson as the law.

In case you forgot:

The Court of Appeals incorrectly concluded that thisCourt has endorsed the machine-or-transformation test as the exclusive test. It is true that Cochrane v. Deener, 94
U. S. 780, 788 (1877), explained that a “process” is “an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”More recent cases, however, have rejected the broad implications of this dictum; and, in all events, later authorityshows that it was not intended to be an exhaustive or exclusive test. Gottschalk v. Benson, 409 U. S. 63, 70 (1972), noted that “[t]ransformation and reduction of anarticle ‘to a different state or thing’ is the clue to the pat


You're just trying to conflate "clue" with "exclusive test". Probably because you can't tell the difference. Don't bother tard.

The only "issue" or "argument" present in this thread is that some of you don't understand wtf is going on. And it is pathetic. I'm through discussing it with you ill-informed Oetikertards.

Posted by: 6000 at July 17, 2010 1:24 PM

"You're just trying to conflate "clue" with "exclusive test"."

Actually 6, it was the CAFC that conflated the two and the Office that mirrored that confaltion in their advice to examiners (and recent follow-up letter).

I think we can both agree that MoT is not an exclusive test for patent eligibility.

Once you understand that the test is a test of eligibility, and not ineligibility, and you realize the non-exclusive nature of the test, you then can return to your basic logic and set theory and see that the Office cannot use MoT in the way that Bahr tells the examiners to do.

It really is quite simple. Even you should be able to grasp the concept.

Posted by: Pedantic Pete at July 18, 2010 6:50 PM

Pete writes: "I hope that you realize that all the applicant needs to put "on the record" is the argument that the Office has not met its prima facie burden. That's the sum total response needed to place the ball back into the Office's court."

Really? I usually try to back up my arguments that the office action is not prima facie valid with some evidence. A mere assertion that the OA failed to meet its burden would not be persuasive to me, if I were examining, and I doubt to the BPAI or courts.

Pete, you still have yet to even provide an example of an invention that does not meet MoT and would still be non-abstract under Bilski. Until someone can convincingly provide such an example, all this debate is academic. Until the courts provide some rationale or example or something concrete that shows that it is possible for an invention to be both non-abstract and non MoT, the USPTO is well justified in its advice to Examiners. Don't even bother responding to me on this thread anymore unless you can point to such rationale or example.

Posted by: Defector at July 19, 2010 6:47 AM

I'm going to make an exception for you pete since you apparently realized your mistake now that it has been pointed out to you.

"Once you understand that the test is a test of eligibility, and not ineligibility, and you realize the non-exclusive nature of the test, you then can return to your basic logic and set theory and see that the Office cannot use MoT in the way that Bahr tells the examiners to do."

Actually he can. A strong indication of a claim failing to show a clue for being statutory, such as failure to meet the MOT test, and appearing to be directed to an abstract idea should suffice nicely to make a mere prima facie case. You, along with many others of your ill-informed mouthbreathern confuse prima facie case with rock solid set in stone case. I know you'd like for the definition of such to be changed, but it's not going to be any time soon.

The fact of the matter is, you're simply confused and don't know wtf is going on.

"A mere assertion that the OA failed to meet its burden would not be persuasive to me, if I were examining, and I doubt to the BPAI or courts."

Egxactly.

I might even consider a notice of non-compliance myself. Depending on what else they said of course, you know these Oetikertards couldn't just sh ut up in one sentence even if my rejection is only one sentence long.

"Pete, you still have yet to even provide an example of an invention that does not meet MoT and would still be non-abstract under Bilski. Until someone can convincingly provide such an example, all this debate is academic. "

Egxactly x2.

Posted by: 6000 at July 19, 2010 7:58 AM

Defector,

Do you understand what burden means? Do you understand that I do not have to prove that the examiner has not met her burden – especially by giving an example of something failing MoT and still being patentable? Under law (even as 6000 gropes in vain for understanding), the examiner has the initial burden in order to deny the patentee his legal rights.

Don't even bother responding to me… Or what? You will ignore me as you ignore the law?

I think that your clients deserve adequate representation, and you are not delivering. You insist on using MoT and demanding an example wherein an invention fails MoT yet is still 101 acceptable. You ask for evidence that need not be supplied. You miss the point that the examiner first has to make his case before I need to supply any evidence. All I need to do is recite Oetiker and Bilski and that is it. Oetiker for burden and Bilski for the overbroad use of MoT as the test.

Using your logic, if I need to supply evidence, then the examiner has de facto met his burden. Given the situation here, that is simply not the case.

If you represent your clients in this manner, you are opening yourself up to malpractice claims. Granted, it is one thing to debate this as a legal understanding, but if you don’t recognize the switch in burden, you are operating with less than the normal expected skill of an attorney.

You also are treating Bilski in the exact opposite of the 9-0 holding – you are treating MoT as the test. Even Stevens said you cannot do that.


and appearing to be directed to an abstract idea should suffice nicely to make a mere prima facie case

6, you need to have someone who understands law and who you will listen to (if your circle of friends go beyond those that merely think like you) explain Oetiker to you. You dismiss it out of hand and without reason. Do you really think that by inserting the word “mere” in front of prima facie, that you lesson the burdens of presentation and persuasion? Do you think that you escape your legal duties by a conclusive (i.e. without support) statement as to the claim “appearing” to be directed to an abstract idea?

Not. Even. Close.

Posted by: Pedantic Pete at July 19, 2010 10:38 AM

"Do you really think that by inserting the word “mere” in front of prima facie, that you lesson the burdens of presentation and persuasion? "

No, I think it's a rather low threshold to begin with. That's why I put "mere" in front of "prima facie".

"Do you think that you escape your legal duties by a conclusive (i.e. without support) statement as to the claim “appearing” to be directed to an abstract idea?"

I don't think I said that. I'm pretty sure I said something different. You can feel free to look above and try to glean the difference between what you're saying and what I'm saying as I've explained it to you several times now.

I also note that my dismissing Oetiker is not without reasoning, I've presented reasoning, you simply dismiss my reasoning, didn't feel like reading it, or, dare I say, didn't understand it.

In any event gl tard the exception I made is over. I do apologize if this turns out badly for you and I simply wasn't able to break this down into terms that you're capable of understanding. I like to think of myself as a good teacher, but if the student is dead set against learning, well, there's only so much I can do. I can lead you to water, but I can't make you drink. Especially if you think the water is foul tasting.

Posted by: 6000 at July 19, 2010 12:49 PM

Pete -- I have to agree with 6000 on this. Your understanding of "burden" and "prima facie" is just plain wrong. It's the Examiner's job to present evidence of non-patentability. If that evidence is lacking, it's your job to point out how it is lacking. You can't just say, "it's lacking." and expect to win on appeal.

Posted by: Defector at July 22, 2010 7:57 AM

Defector,

I can in fact just say "it's lacking" if all the examiner does is say "it's not patentable"

And I do know "burden" and "prima facie" - evidently a lot better than you and 6000.

Try reading the concurrenc in Oetiker, if you have doubts.

Posted by: Pedantic Pete at July 22, 2010 9:07 AM

"Try reading the concurrenc in Oetiker, if you have doubts."

J. Plager's concurrence that is.

Posted by: pong at July 22, 2010 9:21 AM

I don't think either 6000 or myself ever suggested it would be adequate to just say "it's not patentable." What I am saying is that it is sufficient to say, "the invention is non-statutory because fails to meet MoT, and is abstract." If you respond simply by saying, "failure to meet MoT and a broad allegation that it is abstract is not sufficient for a prima facie rejection," then I wish you lots of luck on your appeal.

Posted by: Defector at July 22, 2010 11:48 AM

Defector,

I wouldn't need luck. I would just quote the majority rule from Bilski and the shifting burden requirement from Oetiker.

It would be that simple.

Since the Supremes clearly and expressly state that failing MoT does not mean that my claim is illegal, and the examiner's mere allegation and only "clear and specific" evidence (MoT) does not carry the initial presentation and persuasion burden that the Office needs to deny a legal right to a patent, the Office hasn't made a case.

In essence, Bahr's memo attempts to have applicants prove they deserve a patent (all formalities being met). Do you really think the law says that?

It's basic law.

Posted by: Pedantic Pete at July 22, 2010 2:08 PM

In case you don't realize it, "I don't think either 6000 or myself ever suggested it would be adequate to just say "it's not patentable." is exactly what you are saying is adequate in order to shift the legal burden.

Much like the overall argument, your argument here suffers the same fatal flaw - all you got is what you say.

Posted by: Pedantic Pete at July 22, 2010 2:12 PM