« The Invention Zone | Main | Chinese Junk »

October 14, 2010

Stapled

Richard F. Schwemberger filed an application for a surgical stapler which the patent office found an obvious combination of two prior art references. We're talking pre-KSR obvious (not that the PTO or CAFC bothered with such legal finesse). Which makes Schwemberger not exactly patent savvy. Rather than advise reality, Howard N. Flaxman of Welsh & Flaxman pocketed Schwemberger's hard-earned for appeal of a hopeless case. In a lot of ways, this is not unusual. But it is a good cautionary tale.

In Re Richard F. Schwemberger (CAFC 2010-1127) non-precedential, legalese for old news

One reference, 4,930,503 (Pruitt) disclosed all but one claimed feature, which 5,673,841 (Schulze) disclosed. Both prior art references went to surgical staplers.

The examiner found that it would have been obvious to one of ordinary skill in the art at the time of the invention of the '909 application to modify the staple lines of Pruitt according to the design of Schulze "for the purpose of ensuring complete closure of the tissue." J.A. 243.

The patent board agreed. As did the CAFC. (I know, I ruin the suspense sometimes.)

Claims are given their "broadest reasonable interpretation" during prosecution, and we review the Board's interpretation of disputed claim language to determine whether it is reasonable in light of the specification. See In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Whether an invention would have been obvious is a legal question based on underlying findings of fact, including (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Gartside, 203 F.3d at 1319.

Talk about missing the boat: a supposed lexicographer with no lexicography.

Mr. Schwemberger first asserts that the Board erred by construing "bottom tissue retention feature" to read on Pruitt's guide bar 38, arguing that the inventors of the '909 application acted as their own lexicographer with respect to the term. It is true that a "claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history." CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, Mr. Schwemberger points to no clear definition of the term "bottom tissue retention member" in the specification, and we are unable to discern one. Given that the specification sets forth no clear definition of the disputed claim term, the Board correctly determined that the term should be given its broadest reasonable interpretation. See In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) ("[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification."). The Board's interpretation of "bottom tissue retention member" as having its ordinary meaning--that is, a bottom member that retains tissue--is not unreasonable.

Scarecrow with a straw-man argument.

Next, Mr. Schwemberger claims that the Board improperly found that Schulze's gap spacing pin 61 meets the limitation of "a top tissue retention member extending between the cartridge housing and the anvil, wherein the top tissue retention member is capable of selective distal movement or proximal retraction." Mr. Schwemberger argues, correctly, that Schulze does not disclose that the gap spacing pin is capable of "distal movement or proximal retraction." Therefore, Mr. Schwemberger is correct that the gap spacing pin does not meet the "top tissue retention member" limitation. However, the Board did not find that it did. To the contrary, the Board found only that Schulze's pin "acts as a tissue retention feature in th[e] sense that the action of the gap spacing pin 61 retains the tissue between the anvil portion 40 and the cartridge assembly 50." Initial Decision, slip op. at 7 (emphasis added). The Board found that Pruitt's positioning rod 21 meets the "top tissue retention member" limitation, and Mr. Schwemberger does not dispute this finding.

You saw this one coming.

Finally, Mr. Schwemberger argues that the Board failed to articulate an appropriate rationale for combining Schulze's staple line configuration with the surgical stapler of Pruitt. Mr. Schwemberger asserts that the examiner's motivation for combining Schulze and Pruitt, which the Board sustained--to "ensur[e] complete closure of the tissue"--does not come from either Pruitt or Schulze, but from the '909 application itself. Therefore, he contends, the rationale is based on improper hindsight.

Why not just smash the claims flatter than hammered shit?!

The Supreme Court has cautioned that although it may be valuable to identify a particular reason to combine two references, the obviousness analysis is not limited to this inquiry. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Rather, "[i]f a person of ordinary skill can implement a predictable variation [of a work], § 103 likely bars its patentability." Id. at 417. Similarly, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Id. In evaluating obviousness, therefore, "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." Id.

Nothing puts the puzzle pieces together like a problem-solution specification.

The specification of the '909 application discloses a known problem associated with surgical stapling procedures: when a section of cut tissue is not sutured fully closed, problems such as bleeding and leakage of fluids may arise. The apparent solution to this known problem is to extend the sutures to a point beyond the cut section of tissue, thus ensuring that the tissue is fully closed. The particular manner in which the inventors of the '909 application chose to implement this solution--by extending the lines of staples beyond the "tissue retention members" that mark the boundaries of the cut portion of tissue--is plainly disclosed by Schulze's Figure 18a. Thus, and particularly in view of the similarities between the surgical instruments of Pruitt and Schulze, modifying Pruitt's staple line configuration in accordance with the configuration disclosed by Schulze is no more than "the combination of familiar elements according to known methods . . . [with] predictable results." See KSR, 550 U.S. at 416; see also id. at 421 ("When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."). Therefore, the Board correctly determined that claim 9 is obvious over the combination of Pruitt and Schulze.

The "reasonable expectation of success" line doesn't carry the day when jiving about some mechanical tweak.

Mr. Schwemberger argues that a person of skill in the art would not have had a reasonable expectation of success in combining Pruitt's surgical stapler with Schulze's staple line configuration. Mr. Schwemberger asserts that there is no physical space above or below Pruitt's rod 21 and guide bar 38 to allow a complete staple to form; therefore, Mr. Schwemberger contends, the proposed combination would have resulted in an inoperable instrument. However, the Board found that a person of ordinary skill in the relevant art would have known how to move rod 21 below the top of the staple line or to move bar 38 above the bottom of the staple line. Initial Decision, slip op. at 10. Mr. Schwemberger points to no contrary evidence showing that this relatively minor design change would be outside the scope of ordinary skill.

Affirmed.

Nice work Howie.

A personal tale - An inventor called Platinum Patents, all hot to trot from a dime-store provisional to the real chinchilla. I sang the "combo a no-go 'cause o' Obzillo" ditty. He tooted, "so, what are you, the sales prevention department?" I snorted, "yeah, that's me, that's who I am. I'd take your dough, but I've got a real bad reality addiction, with an empathy hangover. Sorry. Sue me." Regrettably, I forget to add the California-style clincher "have a nice day." :-)

Next time you want patented sunshine blown up your ass, call Howard, or the thousands of overpaid lawyers like him. If instead you want the dirty skinny with flint-nosed attitude from the sharpest tack in the box, a dyed-in-the-wool Attila the Hun Charm School graduate, you know who to call. Witty banter at no extra charge.

Disclaimer: on the phone and in person, my strong preference is for a personal demeanor befitting a consummate professional, albeit possessing a sense of humor. Prancing sassy on this blog is for entertainment purposes only.

Posted by Patent Hawk at October 14, 2010 11:26 PM | Prior Art

Comments

"or the thousands of overpaid lawyers like him"

feeling a wee bit tweaked today, are we PH?

Posted by: Pedantic Pete at October 15, 2010 4:28 AM

What an incredibly shitty job done by this bunch. The applications includes 3 independent claims, 2 to the actual stapler and 1 to the cartridge module. The appeal brief argues them as a group. Why have 2 independent claims to the stapler if you're not prepared to argue them separately? What is it about independent claim 9 that is patentably different from indepedent claim 1? If there's a difference, why not argue it? If there's no difference, what's the point of having two independent claims directed to the same invention?

Why have independent claim 20 to the cartridge module if it's not a separately patentable invention? Why not argue it separately? Maybe they could have salvaged something from this case. Having a patent on a replaceable cartridge, if it was actually patentable, might at least have provided some value out of this mess.

Why have dependent claims 2-8, 10-19 and 21-30 if at least some of them don't define additional non-obvious inventions? And if the dependent claims define non-obvious inventions, why not argue those separately?

What a complete waste of time. It's pathetic that the PTO gets to boast about it's 80% affirmance rate at the Fed. Cir. when they get to go up against hacks like these clowns.

Why are people appealing to BPAI and then letting the APJ's off the hook by arguing claims as a group? If you're not going to argue the patentability of every claim separately, you're just wasting everybody's time.

Posted by: incredulous at October 15, 2010 8:14 AM

BTW, the application is assigned to Ethicon, so let's stop the pity party for poor Mr. Schwemberger.

Posted by: incredulous at October 15, 2010 8:16 AM

Amazing to me as well from reviewing BPAI cases, the large percentage where few if any dependent claims are argued separately.

Is it a cost issue? A desire to "minimize" the potential of prosecution estoppel via comments on the record (and who cares if you don't get any claims anyway; or lose years w/an RCE)? What?

Look: If you're going to appeal anyway, I say argue all the claims.

Every. Single. One.

Posted by: Incredulous II at October 15, 2010 1:01 PM

Ethicon is smart. Is there any possibility that this on the face of it negative result at the CAFC in some way is helping Ethicon in its business objectives. Could the interests of the assigneee be different from those of the inventor?

Just two thoughts:

1) how much was Ethicon bound under contract to pay the inventors, pre-CAFC and how much now, post CAFC?

2) are there other patents out there, on the same "invention" (meanwhile incorporated in Ethicon staplers), but owned by a competing stapler manufacturer?

Posted by: MaxDrei at October 17, 2010 2:15 AM

"Could the interests of the assigneee be different from those of the inventor?"

Sure. Happens all the time. One only needs to peek at the software arts to see such "double-dipping" (both at once using the system and also clamoring for its demise).


"are there other patents out there, on the same "invention""

Technically (and ideally), none. That does not mean the circles of claim scope do not intersect - but that is true in any art.

Posted by: Pedantic Pete at October 17, 2010 4:39 AM

To address the dependent claim question, like everything in life, some dependent claims are better than others. The fact you have dependent claims doesn't mean that they are capable of standing alone. Some are and I will argue those that do. However, it is a waste of time and money to argue all dependent claims if their patentability stands or falls together with the independent claim.

I think the hawk is being too harsh in this instance (certainly not the first time I've felt that). There is often-times a difference between what is a good business decision and good legal advice.

We have no idea what outside counsel may have told Schwemberger. However, I do have a little knowledge of medical devices and actually know an engineer who has worked on surgical staplers. From what I can gather, there is an incredible markup on them and it is a very large and lucrative market (I just did a quick search and found that the global market for surgical staples in 1999 was $890M – you can imagine what it is today). If for example, client outside counsel states "you have a 1 in 10 shot winning at the Federal Circuit and it is going to cost you $100,000," the client has to weigh that against a potential payoff. If the market potential has a present value of $10,000,000, then as a business decision, filing the Appeal to the Federal Circuit is a no brainer. Good businessmen are able to make cost-benefit analysis and make decisions accordingly. A would be willing to wager that many "loser" cases that get brought to the Federal Circuit are done so because the potential profits resulting from a win outweigh the hopelessness of their case and the cost it takes to bring it to the Federal Circuit.

If this application was for a method of swinging on swing, then I would agree that taking this application to Federal Circuit is a bad idea – no payoff. Of course, if somebody was taking a "bad case" to the Federal Circuit as a test case on a certain set of facts to test the state of the law, then that is another legitimate reason to go to the Federal Circuit. Also, it could be very possible that outside counsel said, "this is a loser, we have no hope of winning," but the client could have said, "I don't care, I still want my chance in court." The moral of my story is that unless you are sitting in on the attorney-client meetings and understand all the factors were considered as to whether or not to go to the Federal Circuit, then opining on a particular counsel's competence, to me, is irresponsible.

A good lawyer must also take into account the business objectives of the client – since those will almost always rule. As long as you have a legitimate argument (i.e., no Rule 11 sanctions) and good business reasoning behind the decision, I so no reason not to take a case to the Federal Circuit, even if you think it is a loser. Who knows, you might get Newman on your panel, and at that point, you are almost halfway home.

I think the hawk is being too harsh in this instance.

Posted by: Curious at October 17, 2010 10:41 AM

"The moral of my story is that unless you are sitting in on the attorney-client meetings and understand all the factors were considered as to whether or not to go to the Federal Circuit, then opining on a particular counsel's competence, to me, is irresponsible."

I didn't opine on whether the decision to appeal was the client's or counsel's and/or whether such advice was good or bad because you're correct, I wasn't at the meetings. My opinion is that, regardless of whose decision it was to appeal, the quality of the advocacy at the BPAI was shitty. Having two independent claims to the stapler, and not arguing them separately is shitty advocacy. Plain and simple. Why have two independent claims to the stapler if you can't think of even one reason why they are separately patentable? To not separately argue the independent claim to the cartridge module was pitiful. So even if the client wanted to appeal despite the advice of counsel that the case was a loser, counsel still has an obligation to make the best case that can be made. That wasn't done here. Not by a long stretch.

I agree that not every dependent claim stands on its own. But to have none that do and/or to not argue those that do stand on their own separately is, again, shitty advocacy.

Posted by: incredulous at October 18, 2010 8:49 AM

"Why have two independent claims to the stapler if you can't think of even one reason why they are separately patentable?"
Easy to say when you don't know what the prior art is going to be. You remind me of the Examiners who complain about Applicants drafting claims to stuff that is been in the art for dozens of years – if Applicant knew about a particular piece of art, I'm sure they would have drafted things differently.

I actually checked out the prosecution history to look at the claims. The two independent claims to the stapler are of different scope (one is definitely broader than the other). However, they both rely upon the same features for patentability. The limitations found in the third independent claim (i.e., the cartridge claim) are also found in the other independent claims. It is directed to a different product (i.e., the cartridge instead of the stapler) and thus has use for going after infringers of replacement staple cartridges (as opposed to the stapler itself).

"To not separately argue the independent claim to the cartridge module was pitiful."
It couldn't be done – period. That is just how the claims were written, and if I were writing claims to such a device I would also include separate claims to a cartridge and stapler, even if they both shared the same limitations needed to patentably distinguish them.

One suggestion I heard early on in my career was to think about licensing when drafting claims. If your $20 patented widget is intended to be used in a $100,000 device, claim both the widget and the device including the widget in separate independent claims. If you can get a .1% royalty on the device, you are better off than getting a 100% royalty on the widget.

"I agree that not every dependent claim stands on its own. But to have none that do and/or to not argue those that do stand on their own separately is, again, shitty advocacy."
To have a separate dependent (or independent claim) means you need a separate argument for patentability. If the prior art has everything except your combination of A+B, then there isn't anything else to argue. Personally, I like making as many arguments as possible before the BPAI. However, sometimes you are stuck with one argument because that is all you have. It isn't shitty advocacy, you just have to play the hand you are dealt.

I have no problem with them arguing the claims as a group because the claims were not amenable to being argued separately. I would rather present no arguments than to present a shitty argument just for the sake of presenting an argument.

FYI – I read more than my fill of attorney bashing from the likes of 6, MaxDrei, and Malcolm Mooney on the patently-o website. To me, attorney bashing without having all the facts is irresponsible, and although I appreciate what you do on this blog, I really do not appreciate your attorney bashing. Personally, I don't think it professional in a public setting – particularly when your knowledge of all of the facts (e.g., the differences between the claims) is limited.

Posted by: Curious at October 18, 2010 11:16 AM

Curious, can you give me an example of my egregious "attorney bashing" please. I'm curious what of mine you have read, that for you amounts to "attorney bashing"

Posted by: MaxDrei at October 18, 2010 12:34 PM

"Easy to say when you don't know what the prior art is going to be."

But by the time you appeal, you know what the prior art is. And you've had time to amend and/or write new claims.

"It couldn't be done – period. That is just how the claims were written..."

Then amend/rewrite them.

"However, sometimes you are stuck with one argument because that is all you have. It isn't shitty advocacy, you just have to play the hand you are dealt."

When you have a chance to get some new cards, get some new cards.

"I actually checked out the prosecution history to look at the claims."

So did I.

"I have no problem with them arguing the claims as a group because the claims were not amenable to being argued separately."

My problem is that they didn't put the application in condition for appeal. If you're looking at the pending claims, and you realize that you only have one credible argument for multiple independent claims directed to the same invention, don't appeal. Amend or write some claims that give you more arguments.

BTW, I'm an attorney. I review a lot of BPAI decisions, and while I'm impressed but quite a bit (and liberally borrow good arguments when I find them), I'm more often appalled at the piss poor level of advocacy I see in briefs to the BPAI. IMO, this one is piss poor.

Posted by: incredulous at October 18, 2010 12:48 PM

"Who knows, you might get Newman on your panel, and at that point, you are almost halfway home."

Lulz

Posted by: 6000 at October 18, 2010 1:26 PM

"I'm more often appalled at the piss poor level of advocacy I see in briefs to the BPAI. IMO, this one is piss poor."

lulz i kno rit?

As to my attorney bashing, don't take it to heart unless you're one of the ones that you know I'm bashing. If you are, sorry, but there's no excuse.

To be sure, there are some lawlyers who I praise. Very highly. If you don't fall into that category then perhaps you should look into why. That is, if my bashing concerns you that much.

Posted by: 6000 at October 18, 2010 1:33 PM

Incred remains correct.

In the 200+ BPAI cases I've reviewed over the last 5 years or so, it's truly sad -- for the inventor/s (and the companies they work for where applicable) -- how much patentable matter (much at least worthwhile if not of outstanding potential or real-world value) was left on the "prosecution cutting room floor" by not following Incred's well-founded advice to argue, amend, and/or file new claims to maximize the value of the disclosure.

At least one money-making invention was -- at great legal cost to boot -- kissed good by here.

Posted by: Incredulous II at October 18, 2010 5:07 PM

"When you have a chance to get some new cards, get some new cards."

OK, let's think of all the bad things that can happen when you amend: Festo, prosecution history estoppel, narrower claims. Also, what happens when you file a RCE? Loss of type B patent term adjustment.

From my experience, too many attorneys, when faced with a rejection, look to amend rather than argue. In so doing, they are reducing the value of their client's intellectual property -- oftentimes, needlessly.

If you lose on the independent claims, it is always nice to have some good dependent claims as backup. However, sometimes your invention disclosure doesn't support a variety of breadth.

I haven't looked at the specification of this case, and I don't know whether or not there is additional subject matter disclosed that could justify a new hand of cards. Sometimes the hand you play is your only hand. Other times, because the value of the broad claims are so great, you take a chance with them and see where it gets you.

If you lose, you can always amend aftwards. Not ideal, but sometimes getting very broad claims is worth the gamble. Again, in those instances, good dependent claims are nice to have as a backup.

Clients are also funny sometimes. I had one client to whom I suggested he amend one of the dependent claims in case the independent claims didn't make it. We had a slam dunk argument -- but only if the dependent claim was tweaked. His response was basically, if I give the Examiner an easy out with this dependent claim, he will allow it and not allow the independent claim, so he declined my suggestion. How are you going to argue with that logic??? [said in a very sarcastic tone] BTW -- this guy was fairly patent savvy.

Another point, while I'm thinking of it -- not all client budgets are the same. You cannot get a Mercedes Appeal Brief when the client is only paying for a Kia. Personally, I always like to give my client more than what the client is willing to pay for. However, I cannot spend 40 hours on a brief when they only pay for 8 hours, and my guess is that I'm not the only one.

Posted by: Curious at October 18, 2010 9:16 PM

"If you lose on the independent claims, it is always nice to have some good dependent claims as backup. However, sometimes your invention disclosure doesn't support a variety of breadth."

IIRC, there were 27 dependent claims in this case. They were all worthless in advancing an argument of patentability? Then why is the attorney having the applicant pay extra claim fees for worthless dependents? That is shameful.

"OK, let's think of all the bad things that can happen when you amend: Festo, prosecution history estoppel, narrower claims. Also, what happens when you file a RCE? Loss of type B patent term adjustment."

Would you rather have a patent limited by some PHE and less a little PTA, or no patent at all? Simple choice.

"From my experience, too many attorneys, when faced with a rejection, look to amend rather than argue."

I'm all for arguing when the rejection is improper, but I'm not in favor of appealing 30 or so claims, with 3 independent, and having no backup arguments and letting all 30 claims stand or fall on my one argument.

"Another point, while I'm thinking of it -- not all client budgets are the same. You cannot get a Mercedes Appeal Brief when the client is only paying for a Kia."

I doubt Ethicon was only willing to pay for a Kia. But I don't think that's relevant to this particular case. The Applicant's chance at the BPAI was blown to bits by poor advocacy. No amount of rationalizing is going to change that.

Posted by: incredulous at October 19, 2010 6:59 AM

"They were all worthless in advancing an argument of patentability? Then why is the attorney having the applicant pay extra claim fees for worthless dependents? That is shameful."
OK, claims are deemed 'worthless' after the prior art has been cited. Once cited, too late, you cannot 'give them back' and have the USPTO refund your fees. Also, have you heard of the Doctrine of Claim Differentiation? I'm kind of ambivalent on it myself, but it does provide value for dependent clams that cannot separately argued.

"Would you rather have a patent limited by some PHE and less a little PTA, or no patent at all? Simple choice."
If you think it is simple choice, then your thinking is limited. Claims that can be easily designed around aren't that valuable. Gaining a potential 2-3 years on the backend of a patent (as a result of PTA and a successful appeal) could mean additional millions in revenue, both for the additional time that patent is enforceable and the broader claims on a valuable patent. FYI, it is not a binary choice. The fact that they've lost at the Federal Circuit does not mean "no patent at all." They are still free to amend. Granted, they should have had whatever amendments they wanted in place before, but if there wasn't any good amendments to make, you play the hand you are dealt.

Oftentimes, I have gotten a Decision back from the BPAI in which the BPAI has employed the doctrine of broadest unreasonable claim construction and I said to myself, "OK, if you are going to play that game, I'll just tweak my claims a little bit and get around your shitty arguments." Sometimes, you just cannot foresee what clam amendment are going to help you until after the Decision has been rendered.


"I doubt Ethicon was only willing to pay for a Kia. But I don't think that's relevant to this particular case. The Applicant's chance at the BPAI was blown to bits by poor advocacy. No amount of rationalizing is going to change that."
Doubt all you like, but most corporations work on patent prosecution budgets. In hindsight, they may have said, "gee, we should have spent more time and effort on that original Appeal Brief," but I very much doubt they were planning on going to the Federal Circuit at the time the application was initially appealed.

"I'm all for arguing when the rejection is improper, but I'm not in favor of appealing 30 or so claims, with 3 independent, and having no backup arguments and letting all 30 claims stand or fall on my one argument."
I've had an appeal for 60+ total claims with multiple independents in which I had one good argument for all of them. I've also had many appears where I've had 5-10 separate arguments on the main independent claim alone and I've also separately argued 5 or 6 of the dependent claims at the same time. The difference was not my quality of advocacy, because they were drafted at the same time, it was just simply what the claims, themselves, supported vis-à-vis the cited prior art and the quality of the Examiner's rejection. Unless you can identify arguments that should have been made but were not made, then all you are doing is speculating, and as I've alluded to before, bashing an attorney's work on merely speculation is unprofessional.

FYI -- If I was writing an Appeal Brief to the BPAI that I knew was going to the Federal Circuit, I would write it a whole lot differently. Then again, I would charge anywhere between 5x to 10x more for such a brief. Patent prosecution isn't like patent litigation, where you can spend 10 hours on a 4 page filing. If you cannot stick to a budget, clients will find somebody who will.

Posted by: Curious at October 19, 2010 9:01 AM

"Oftentimes, I have gotten a Decision back from the BPAI in which the BPAI has employed the doctrine of broadest unreasonable claim construction..."

That's happened to me too. But that's not what happened in this case.

"Doubt all you like, but most corporations work on patent prosecution budgets. In hindsight, they may have said, 'gee, we should have spent more time and effort on that original Appeal Brief,' but I very much doubt they were planning on going to the Federal Circuit at the time the application was initially appealed."

Given the relatively few cases that are appealed from BPAI to FC, I don't think anybody plans on going to the FC, but you should brief your case at the BPAI as if you're planning on it.

I was taught that from day one. I drafted an appeal brief for a case in which the examiner had cited some boiler plate case law in a form paragraph. I didn't address it. The partner who reviewed my brief gave me an earful. Told me I needed to address it if we wanted to preserve all the issues for appeal to the FC. So now I address every case law cite in the OA, no matter how inapposite it is and regardless of remote the chance the APJ's, or the J's, would rely on it in deciding the case.

"Unless you can identify arguments that should have been made but were not made, then all you are doing is speculating, and as I've alluded to before, bashing an attorney's work on merely speculation is unprofessional."

I don't have any doubt that I could have prepared a better brief than was submitted in this case. Within whatever budget they were operating under. You can call that arrogance, or bashing, or speculation, or whatever you want, but it doesn't change the fact that there was some poor advocacy here.

Posted by: incredulous at October 19, 2010 10:49 AM

"Given the relatively few cases that are appealed from BPAI to FC, I don't think anybody plans on going to the FC, but you should brief your case at the BPAI as if you're planning on it."

Easier said than done and also very expensive to do.

"Told me I needed to address it if we wanted to preserve all the issues for appeal to the FC. So now I address every case law cite in the OA, no matter how inapposite it is and regardless of remote the chance the APJ's, or the J's, would rely on it in deciding the case."
But that's not what happened in this case, is it?

"You can call that arrogance, or bashing, or speculation, or whatever you want, but it doesn't change the fact that there was some poor advocacy here."
If you want to call it poor advocacy, then explain why it is poor. Describe what you would have done differently. If you don't, then all your are providing is another Moonyism -- e.g., "this patent is shitty and should have never been issued" -- thanks MM, if I wanted conclusory statements unsupported by substantial evidence, I would be reading the latest Office Action to hit my desk.

From my experience, no argument is better than a stretched or bad argument. Give an examiner two great arguments and one so-so argument, and the Examiner will spend 3 pages explaining why your so-so argument is crappy and one sentence on each of your great arguments. I see this time and time again when people debate/argue/etc. -- they'll take the weakest argument from the other side and focus on that and ignore the strong arguments.

I would rather have the examiner try to answer my best arguments than have an examiner spend most of his time (and remember, the examiner has a time budget as well) on my weaker arguments.

Posted by: Curious at October 19, 2010 12:19 PM

"If you want to call it poor advocacy, then explain why it is poor."

I did. Where you been?

Posted by: incredulous at October 19, 2010 1:21 PM

"I did. Where you been."

Saying that they should have argued each of the independent claims separately and argued some of the dependency is about as helpful as "Applicant's arguments have been considered but have been deemed unpersuasive."

Again, if I want conclusory statements based upon speculation and little to no facts, I would reading the pile of Office Actions on my desk.

Posted by: Curious at October 21, 2010 8:04 AM

"Saying that they should have argued each of the independent claims separately and argued some of the dependency is about as helpful as 'Applicant's arguments have been considered but have been deemed unpersuasive.'"

Not sure what else you're looking for. But I guess you missed where I recommended that during prosecution they amend/write new claims so that they have more than one argument for patentability of the individual independent claims, or that they review, and if necessary amend/write new dependent claims that also have separate patentability.

If I want conclusory statements based on speculatino and little to no facts, I'll read one of your posts.

Posted by: incredulous at October 21, 2010 8:29 AM

"If I want conclusory statements based on speculatino and little to no facts, I'll read one of your posts."

Really, at least I took the time to read the claims and to look at the prosecution history. I know WHY they didn't separately argue the independent claims, do you? Can you tell me the difference between the claims?

Scratch those questions, it is clear that you don't know the answers.

Posted by: C at October 21, 2010 4:05 PM

I agree with this decision, but there is some rhetoric I disagree with. Specifically, the court said, "although it may be valuable to identify a particular reason to combine two references, the obviousness analysis is not limited to this inquiry" (citing KSR). This is NOT what the Supreme Court said! What SCotUS said was that motivation need not come from the references themselves, which was (largely ignored) caselaw long before KSR. SCotUS also said that motivation can come from inferences that a person of ordinary skill:

But it need not seek out precise teachings directed to the challenged claim’s specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.

This is NOT the same as saying there needn't be motivation or that motivation doesn't need to be present at the time the invention was made, which is the clear implication by the statement regarding KSR. However the CAFC then goes on to convincingly explain that there was motivation to combine. Go 'fig.

Posted by: Defector at October 21, 2010 5:25 PM

Thanks for that observation, Defector. My faith in SCOTUS restored. Just a matter of time, I would say, before it dawns on the entities below SCOTUS that the easiest way to implement SCOTUS guidance is simply to adopt EPO-PSA reasoning.

The snag with EPO-PSA is that it does not work properly if you adopt just those bits of it you have heard of, or which you think you like, and leave the rest behind. If EPO-PSA has a bad name in some quarters, remote from EPO circles, there is the reason why.

Posted by: MaxDrei at October 21, 2010 11:30 PM

"Really, at least I took the time to read the claims and to look at the prosecution history. I know WHY they didn't separately argue the independent claims, do you? Can you tell me the difference between the claims?

Scratch those questions, it is clear that you don't know the answers."

I reviewed the claims and the prosecution history. Did I independently do an analysis of the patentability of all 30 claims vis-a-vis the cited art? No. Sorry, but I don't have time for that. Well, I don't have time for it if you expect me to do it free of charge.

You can give me sh!t all you want, but it's not going to change the facts in this case. No attempt was made, either during prosecution (where it really should have been done) or during appeal to the BPAI, to distinguish the patentability of 30 claims. 30 claims. I agree that not all dependents need to, or even can, be argued separately, as they are in there for claim differentiation, increasing damages, etc., but that's just poor advocacy. No denying it.

As far as your theory that you don't know the prior art until the examiner cites it, I'm not buying that in this case. This art is not exactly esoteric, or cutting edge. I mean, really, how hard would it have been to do a 15 minute search for surgical staplers before this app was drafted? Was the app drafted in a vacuum? Even if it was, and the advocates in this case weren't the original drafters, and had it handed to them after filing, I don't see any evidence that they made any attempts to make the most of what they were given. 27 dependent claims. If all 27 were simply filler and provided no separate arguments for patentability, where's the attempt to amend/add some dependents taht would? Are you telling me that ALL 27 dependent claims were dead in the water? If so, what the heck are they doing in the app?

Keep rationalizing this sh!tty job. If it makes you feel better, great. Personally, when I see examiners posting comments that they see a lot of crap from practitioners, I know they ain't just whistling Dixie. It's true. And this app and its prosecution are Exhibit A.

Posted by: incredulous at October 22, 2010 6:24 AM

Incred remains correct.

I'm just a lowly pro se, and I could have (would have) done a far better job than was done here.

A worthwhile invention was ripe for patenting here.

Posted by: Incredulous II at October 22, 2010 7:25 AM

"I reviewed the claims and the prosecution history. Did I independently do an analysis of the patentability of all 30 claims vis-a-vis the cited art? No. Sorry, but I don't have time for that."
I didn't ask you about all 30. I just asked you about the 3 independent claims. If you knew what you were doing, it would have taken you less than 5 minutes to look at the claims and identify the differences between them – far less time than you've spent spouting off on why they should have argued the 3 independent claims without ever explaining why.
"Are you telling me that ALL 27 dependent claims were dead in the water? If so, what the heck are they doing in the app?"
If you have to ask that question, then you don't know richard about patent prosecution. FYI that determination as to what is "dead in the water" occurs AFTER the application was filed. Why does that simple fact continue to elude you? Moreover, once you've paid for the claims, you aren't getting a refund after examination. You do know that, don't you?
Honestly, if I had an associate come to me on a 30 claim application and attempt to argue the rejections of 30 of the claims (or even 20 or 15 of the claims), I would smack them on the top of the head – "why are you introducing so many arguments that can later be used with prosecution history estoppel?" You only need to win on one argument on the independent claims.
Also, as I have stated before, which you have also blissfully ignored, is that the number of arguments you make is HIGHLY dependent upon the facts and how good the rejection was presented. Sometimes, all you get is one good argument. Other times you get 15 arguments. Until you can identify some argument that could have been made that wasn't or even identify some claim limitation that could have been introduced (as a dependent claim) that wasn't, then you are spouting your mouth off on SPECULATION only.
If you've got something concrete, then I have no problem with you pointing out their failures. However, generations are not concrete, and all you've been working with is generalizations.

Posted by: Curious at October 23, 2010 8:56 AM

"If you knew what you were doing, it would have taken you less than 5 minutes to look at the claims and identify the differences between them..."

If the differences between independent claims 1 and 9 don't provide some separate arguments for patentability, who cares what the differences are? That's why there should have been some attempt during prosecution (i.e. prior to appeal) to put independent claims 1 and 9 into form that provides at least one separate argument for patentability. I didn't see any such attempt.

"If you have to ask that question, then you don't know richard about patent prosecution."

I know enough not to have 27 dependent claims, not one of which provides at least one argument why the dependent claim(s) is separately patentable from the independent claim(s).

"FYI that determination as to what is 'dead in the water' occurs AFTER the application was filed."

Looking at the prosecution history, the only IDS submitted by the applicant listed 8 co-pending applications. No prior art. I guess the field of surgical staplers is so brand new there was no prior art they couldn't have uncovered with a 15 minute search. I can't think of a single application that I've ever written where I didn't do some searching and draft claims in view of the art that was found. These claims were apparently drafted in a vacuum. And it shows.

I'm sure those other 8 co-pending apps are all gems too.

"Why does that simple fact continue to elude you?"

It doesn't elude me. I've drafted plenty of apps and have been surprised with art the examiner sometimes uncovers that makes the goal of allowance more difficult. Usually in those situations I do more than make the exact same amendment to each independent claim and then go to appeal with one argument.

"Moreover, once you've paid for the claims, you aren't getting a refund after examination. You do know that, don't you?"

I'm aware of that. But it is possible to amend, cancel, and then add new dependent claims to get the most out of your extra claim fees. Some practitioners consider just "playing the hand they're dealt" to be the bare minimum. Apparently you consider it the best you can do.

"Honestly, if I had an associate come to me on a 30 claim application and attempt to argue the rejections of 30 of the claims (or even 20 or 15 of the claims), I would smack them on the top of the head..."

If I had an associate come to me with the brief filed in this case, I'd do more than smack 'em upside the head.

"Also, as I have stated before, which you have also blissfully ignored, is that the number of arguments you make is HIGHLY dependent upon the facts and how good the rejection was presented. Sometimes, all you get is one good argument. Other times you get 15 arguments."

Still playing those cards you were dealt, huh? Here's a few tips for your next hand: 1) do a search before you draft the app (doesn't have to be exhaustive, or even extensive, but you should at least have some idea of what came before your client's invention before you charge them for years of wasted effort); and 2) if you have so-so cards, discard the useless ones, keep the good ones, and draw some more (i.e. you're not chained to the claims as originally presented, you can amend, cancel, add claims, try it, you might like it).

"Until you can identify some argument that could have been made that wasn't or even identify some claim limitation that could have been introduced (as a dependent claim) that wasn't, then you are spouting your mouth off on SPECULATION only."

If Ethicon would like my analysis, they can contact me. I'm sure I could have played this hand better.

Posted by: incredulous at October 25, 2010 8:50 AM

Wow -- for all the time you spent on the last post, you have still provided nothing more than generalizations -- do a search, write better dependent claims. Did I miss anything?

Hey, if that's the way you roll, so be it.

FYI -- although it really isn't fashionable to talk about these days (Bilski and KSR dominate the scene), there are still some people that care about Festo.

Posted by: Curious at October 25, 2010 10:32 AM

"Did I miss anything?"

Other than the boat? No. Carry on.

Posted by: incredulous at October 25, 2010 10:47 AM

Which boat?

Damm, I hate it when he is general about things like that.

Posted by: Pedantic Pete at October 25, 2010 1:28 PM

All very pointless. You can't discern their motivations from the written record. Maybe they are pursuing alternate claims in a continuation. Maybe they *really* wanted this patent (e.g., for financial reasons, to obtain venture capital, etc.). Finally, their argument regarding improper motivation to combine on the part of the Examiner's had merit. Unfortunately, the BPAI and CAFC seem pretty forgiving when improper arguments are made on the side of the PTO, especially when a legitimate argument could have been made. IMHO, the CAFC should have remanded instead of upholding the PTO's position. But then, the result would have been the same, so I guess it doesn't matter.

Posted by: Defector at October 25, 2010 4:16 PM

"Other than the boat?"

Good, I would rather avoid the slow boat to China with the rest of the idiot patent prosecutors who talk a good game but cannot deliver anything more than generalizations. I'm glad you made it though -- you'll fit right in.

FYI -- I've probably had more Examiner rejections reversed at the BPAI the last month than you've written Appeal Briefs in your entire life. Not bragging ... just telling it like it is.

Posted by: Curious at October 25, 2010 8:54 PM

"FYI -- I've probably had more Examiner rejections reversed at the BPAI the last month than you've written Appeal Briefs in your entire life. Not bragging ... just telling it like it is."

Serial numbers please. Either post your month of reversals or shut up.

You're in a hole. My advice to you is to stop digging.

Posted by: incredulous at October 26, 2010 6:46 AM

"Maybe they are pursuing alternate claims in a continuation."

PAIR indicates no chile continuity data. PAIR is that feature of the PTO website that I'm going to use to look up all of Curious's reversals. As I've filed at least 17 appeal briefs in the past 3 1/2 years, it's going to take me awhile to go through them all.

I love that website that's out that lists every decision by the BPAI every day. It lists the APJ who wrote the decision, the examiner, and the firm. I'm going to go check September 2010's decisions and see this remarkable attorney who got about 50+ reversals in one month. Should be interesting reading.

"Maybe they *really* wanted this patent (e.g., for financial reasons, to obtain venture capital, etc.)."

I'd be surprised if Ethicon were hard up for venture capital, but you never know.

"Unfortunately, the BPAI and CAFC seem pretty forgiving when improper arguments are made on the side of the PTO, especially when a legitimate argument could have been made."

I agree 100%.

Posted by: incredulous at October 26, 2010 7:06 AM

"Maybe they are pursuing alternate claims in a continuation."

PAIR indicates no child continuity data. PAIR is that feature of the PTO website that I'm going to use to look up all of Curious's reversals. As I've filed at least 17 appeal briefs in the past 3 1/2 years, it's going to take me awhile to go through them all.

I love that website that's out that lists every decision by the BPAI every day. It lists the APJ who wrote the decision, the examiner, and the firm. I'm going to go check September 2010's decisions and see this remarkable attorney who got about 50+ reversals in one month. Should be interesting reading.

"Maybe they *really* wanted this patent (e.g., for financial reasons, to obtain venture capital, etc.)."

I'd be surprised if Ethicon were hard up for venture capital, but you never know.

"Unfortunately, the BPAI and CAFC seem pretty forgiving when improper arguments are made on the side of the PTO, especially when a legitimate argument could have been made."

I agree 100%.

Posted by: incredulous at October 26, 2010 7:07 AM

"Unfortunately, the BPAI and CAFC seem pretty forgiving when improper arguments are made on the side of the PTO, especially when a legitimate argument could have been made. IMHO, the CAFC should have remanded instead of upholding the PTO's position. But then, the result would have been the same, so I guess it doesn't matter."

Yes, if they're going to remand for the same decision on different grounds, they might as well make the correct decision themselves and save time.

Besides, the PTO is defending the public interest in preventing patents on the prior art. That's more important than whether their exact reasoning was technically correct. If there's a valid rejection the PTO could have made, the applicant shouldn't get his patent.

Posted by: IANAE at October 26, 2010 8:43 AM

"Besides, the PTO is defending the public interest in preventing patents on the prior art. That's more important than whether their exact reasoning was technically correct. If there's a valid rejection the PTO could have made, the applicant shouldn't get his patent."

But this brings up quite well the point often overlooked.

Is the BPAI a body for performing a judicial function or an examination function? Is the body composed of neutral judges deciding on the case as presented and argued by the two opposing sides of the applicant and the examiner, or is the situation more of a two on one press? How fair in a true judicial setting would it be for the judge to also wear the hat of the prosecutor (or defendant for that matter)?

Trying to wear both hats means neither is done particularly well.

Posted by: anonymous at October 26, 2010 9:32 AM

"Is the BPAI a body for performing a judicial function or an examination function?"

It's obviously a bit of both, but I would think it's primarily a judicial function. The applicant and examiner plead relevant facts before the Board, and the Board should correctly apply the law to those facts.

If the facts before the Board (the claims and the prior art) justify a rejection not contemplated by the examiner, that doesn't make the Board's function any less judicial. It's no different from a court granting to a plaintiff a remedy he was clearly entitled to but neglected to ask for, except that the Board (and the Circuit, on appeal) has a duty to make sure those new issues are considered before making a final decision.

I do think the BPAI extends too far in the direction of an examination function when it comes up with a rejection sua sponte without at least giving the applicant a chance to contest the facts on which the rejection is based. In those cases, I would prefer to see a remand to the examiner or at least a re-hearing.

Posted by: IANAE at October 26, 2010 9:40 AM

"You're in a hole. My advice to you is to stop digging."

Really, you are the one mouthing off over stuff that might confuse a first year associate, but not a second year associate.

"Serial numbers please."
Do you know the difference between an application number and a serial number? Do you know what a series code is and its relationship to a serial number and an application number? The fact that you asked for a "serial" number is yet another indication that your knowledge of patent prosecution is limited.

"As I've filed at least 17 appeal briefs in the past 3 1/2 years, it's going to take me awhile to go through them all."
Hahahahahahahahahahahaha … damn, you beat me, I've only done 16. Then again, that was over a 1 month stretch right before the Appeal Rules package that was going to go into effect on December 10, 2008. Sh1t, I just looked at my docket. I'm going to prepare 38 Appeals before the end of the year – I might push a few of those back. Regardless, this reminds me of the armed forces commercial that goes something like "we do more before 9am than most people do all day."

One of your first comments was "Why have dependent claims 2-8, 10-19 and 21-30 if at least some of them don't define additional non-obvious inventions?" Again, this would be a question most second year associates wouldn't have problem tackling, yet you are confused.

You also wrote "Why are people appealing to BPAI and then letting the APJ's off the hook by arguing claims as a group? If you're not going to argue the patentability of every claim separately, you're just wasting everybody's time."
Naivety at its worst. You OBVIOUSLY don't know much about patent prosecution. BTW, of the 17 undoubtedly awesome appeals that you've written, how many times did you argue all of the claims?

FYI – not only myself, but several other posters indicated reasons why the claims were argued in the manner they were. This isn't high-level patent prosecution topics we are discussing. However, it says a lot where you are confused by the basic stuff.

Posted by: Curious at October 26, 2010 11:31 AM

"It's obviously a bit of both"

Obviously, there is your problem.


"that doesn't make the Board's function any less judicial."

Sure it does, if it is the Board itself making the new rejection. That's pretty easy to see. Maybe you are confused and mean to say that the Board should remand to the examiner for the possibility of a different rejection - otherwise we are right back at the Board playing Examiner while taking off the Judge's wig. One cannot serve two masters. One cannot be both examine and (impartially) judge.

Besides, examiners always can take another crack at the application when the Board remands.

Posted by: anonymous at October 26, 2010 11:39 AM

"Is the BPAI a body for performing a judicial function or an examination function?"

Since Incredulous (aka "Confused") hasn't stepped up to the plate on this one, let me tell you the answer. Basically, the BPAI steps into the shoes of the Examiner. The Appellants raises the issues during Appeal, and the BPAI reviews all the evidence and the arguments presented by both sides (i.e., Examiner and Appellant) de novo without deference to the Examiner. For quite some time, during the dark times of the Dudas administration, the BPAI was under the mistaken impression that Appellant had to establish Examiner error. This is incorrect and the precedential decision of Ex parte Frye, the BPAI (including Kappos who signed onto the decision) put the BPAI back on track in this regard.

FYI – for anybody writing Appeals, Ex parte Frye is a must read – and that includes you, Confused.

Another problem at the BPAI is their penchant to introducing new grounds of rejection without designating them as such. A decision by the BPAI is limited to the findings presented for review. However, the BPAI oftentimes introduces new claims constructions, new findings of fact, new line of arguments that were not introduced by the Examiner. The reason being is that most Examiner rejections are loaded with the stuff you would find in a diaper and the BPAI, since the Dudas administration, has made it a point to do everything in their power to bolster these decision. As a result, I've seen the BPAI ditch the Examiner's arguments wholesale, introduce entirely new arguments, and then claim that the Examiner rejection was affirmed.

However, the winds of change have been blowing since Kappos took the helm, and I'm seeing a lot more decisions where the BPAI will actually indicate these new grounds of rejection.

IANAE writes ""I do think the BPAI extends too far in the direction of an examination function when it comes up with a rejection sua sponte without at least giving the applicant a chance to contest the facts on which the rejection is based. In those cases, I would prefer to see a remand to the examiner or at least a re-hearing."

I agree wholeheartedly. Also, the BPAI oftentimes ignores that many of these sua sponte arguments must be based upon findings of fact supported by substantial evidence, and in my experience, the lack of substantial evidence never got in the way of the BPAI presenting these new arguments.

For example, I've seen the BPAI ditch an Examiner's old obviousness argument (which is the one that was briefed on appeal and is total BS) for the one of the new obviousness rationales out of KSR, e.g., "applying a known technique to a known device to yield predictable results." Notwithstanding that this is a new grounds of rejection and is rarely indicated as such, there are findings of fact that need to be made to properly support this conclusion. From my experience, these findings are NEVER made by the BPAI.

Posted by: Curious at October 26, 2010 11:55 AM

"A decision by the BPAI is limited to the findings presented for review."

Wrong. The Board reviews the decision of the examiner, not necessarily the reasoning provided by the examiner. If the decision to reject was correct, the examiner is affirmed, even if the Board has a different reasoning.

Still waiting for those APPLICATION numbers. Nice try to weasel out of backing up your ridiculous boast. But please do post the APPLICATION numbers of these 50 or so reversals you got last month.

You might also want to read David Boundy's comments on the proposed BPAI rules that were stopped by OMB. He has a nice review of the case law of new grounds of rejection. You could certainly benefit from it.

Posted by: incredulous at October 26, 2010 12:11 PM

"Basically, the BPAI steps into the shoes of the Examiner."

What? How did you come up with that from "The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents..." (35 USC 6(b))?

Keep shoveling. You might strike oil.

Posted by: incredulous at October 26, 2010 12:18 PM


"Wrong. The Board reviews the decision of the examiner, not necessarily the reasoning provided by the examiner. If the decision to reject was correct, the examiner is affirmed, even if the Board has a different reasoning."
I told you the case to review, and you ignored me. Ex parte Frye, Appeal No. 2009-006013 (precedential) ("Our decision is limited to the finding before us for review … the Board's primary role is to review adverse decisions of examiners including the findings and conclusions made by the examiner"). Do I need to spell it out for you? There is a difference between the grounds of the rejection and the statutory basis for the rejection. Also, have you ever Dickinson v. Zurko? Do you know what "unsupported by substantial evidence" means? Do you know how that applies to decisions of the BPAI?

"You might also want to read David Boundy's comments on the proposed BPAI rules that were stopped by OMB."
I don’t' need to, he and I have already spoken regarding those, among other things. In fact, I was going to e-mail him yesterday on a couple things, but I got too busy. David, if you are reading this, thanks for the head's up on In re Bush – yet another instance of the BPAI completely misreading a case to mean something it doesn't.
"50 or so reversals"
Where did you get the number 50 from? I guessed you maybe had written a handful of Appeals (you wrote 17 … a bit more than a handful). Regardless, if you think I'm outing myself over it, you are sorely mistaken.

FYI … whoever you mentor is owes me dinner, since I've taught you more in the last week than your mentor has taught you in a very long time.

Posted by: Curious at October 26, 2010 12:27 PM

"What? How did you come up with that"

To be honest, I cribbed that line from David Boundy's book, and as far as I'm concerned, he knows more about the administrative law aspects of patent prosecution than anybody I know or have read.

FYI -- the hole I'm digging is for you -- do you want me to keep digging?

Posted by: Curious at October 26, 2010 12:31 PM

"Where did you get the number 50 from? I guessed you maybe had written a handful of Appeals (you wrote 17 … a bit more than a handful)."

I've written at least 17 in the past 3 1/2 years. Quite a few more in my time.

"Regardless, if you think I'm outing myself over it, you are sorely mistaken."

I never thought you'd have the courage to out yourself. You're pretty brave making anonymous boasts, but not so much when it comes to proving that you're "telling it like it is."

Still waiting for those APPLICATION numbers. I'll take even one if you got it.

Posted by: incredulous at October 26, 2010 12:37 PM

"Still waiting for those APPLICATION numbers."

Fixate on those numbers all you want -- I guess it is better than fixating on the beatdown I just gave you on the law.

I'll be more than happy to discuss the law with you, are you game? ...... I didn't think so. As Dirty Harry said to Lieutenant Briggs, "Well, you're a good man, lieutenant. A good man always knows his limitations..."

If sticking to generalizations instead of the law is the limit of what you got, then I'm glad you know your limitations ...

Posted by: Curious at October 26, 2010 12:45 PM

"I'll be more than happy to discuss the law with you, are you game?"

Sure. Send me even one of those APPLICATION numbers you got a reversal in last month and we'll chat.

Are you game?

Apparently you know your limitations pretty well too. Plenty of anonymous boasting with nothing to back it up.

Posted by: incredulous at October 26, 2010 1:01 PM

OK, I'll withdraw my claim that I got several Decisions from the BPAI within the last month in which the Examiner's rejection was overturned. Are you happy now?

Also, are you now willing to discuss, in greater detail, the law regarding the review standard being applied by the BPAI and what constitutes a new grounds of rejection?

Let's have that discussion instead of engaging in the "I want you to out yourself" game that you are so fond of playing.

Posted by: Curious at October 26, 2010 1:14 PM

"Plenty of anonymous boasting with nothing to back it up."

FYI -- why the fuck would I ever open my client's files up to additional scrutiny by outing myself (and thus, the client files I've worked on)? For you to continue to badger me on this evidences a complete disregard for another attorney's relationship with a client. I really hope you don't act like this is real life.

I usually try to find something redeeming in everybody I come across. However, I'm having problems finding that something in you.

Posted by: Curious at October 26, 2010 1:20 PM

"Are you happy now?"

I'm always happy. No need for me to make ridiculous anonymous boasts sprinkled with quotes for Army commercials and Dirty Harry movies. You're clearly overcompensating for something. I wonder what that could be.

"Also, are you now willing to discuss, in greater detail, the law regarding the review standard being applied by the BPAI and what constitutes a new grounds of rejection?"

Meh, not really. I'm familiar with the case law. And I've seen all the Dirty Harry movies.

Posted by: incredulous at October 26, 2010 1:21 PM

"I really hope you don't act like this is real life."

I don't. In real life I make ridiculous anonymous boasts on patent blogs all day and then when I'm asked to back up my ridiculous boasts, I get my phony indignation mode all revved up.

"I usually try to find something redeeming in everybody I come across. However, I'm having problems finding that something in you."

Right back at you.


Posted by: incredulous at October 26, 2010 1:23 PM

"Meh, not really."

I didn't think so Mr. Serial No. man. You would rather spend your time on a message board lambasting an attorney's prosecution/appeal strategy on base generalizations. You would also rather spend your time trying to get somebody to out themselves.

FYI ... I don't make ridiculous anonymous boasts. Also, perhaps the reason why you don't boast is because you have nothing to boast about.

As for compensating for something, I'm trying to compensate for the ignorant comments that you have liberally spread throughout this blog.

"And I've seen all the Dirty Harry movies."
Based upon the serial number reference and a couple of other things, you appear to be one of those "old dogs" that cannot be taught new tricks. Too bad, you had a chance to learn something today. Hubris gets in the way of a lot of good learning to be had.

Posted by: Curious at October 26, 2010 1:32 PM

"FYI ... I don't make ridiculous anonymous boasts."

Really.

Here's Prosecution Exhibit A:

"FYI -- I've probably had more Examiner rejections reversed at the BPAI the last month than you've written Appeal Briefs in your entire life. Not bragging ... just telling it like it is."

Case closed.

"Based upon the serial number reference..."

You're really hung up on that, huh? In my 20+ years doing this work I've never seen anybody fixate on that trivial distinction, much less get their panties all in a bunch like you've done. You must be one pedantic tool to work with. Any associates unfortunate enough to be under your "mentorship" have my deepest sympathies.

Posted by: incredulous at October 26, 2010 1:45 PM

"In my 20+ years doing this work."

I figured as much … old dog it is .... you see, I treat an attorney's or examiner's use/misuse of that phrase as an indicator. Although not a perfect indicator, what it does is indicate to me is whether the particular person had good training and/or whether or not they ever exhibited curiosity as to why certain people use "serial number" yet others use "application number." It is also an indicator as to whether somebody is precise (i.e., anal) or are they the type of person that doesn't mind a little impression in their life. Fortunately for me, I had a very competent paralegal point out the distinction to me during my first year of practice, and I've always been aware of that distinction ever since.

As it applies in your instance, I have used this indicator to deem you (i) not properly trained; (ii) not particularly curious about something you have seen every day that you've practiced in your 20+ years; and/or (iii) not particularly precise about the little details. If you get the very basic stuff wrong, it only raises questions as to whether or not you understand the harder stuff. Ours is a business of precision, so your failure to understand the difference between a serial number and an application number is not a good sign for you. It isn't a perfect indicator, however, almost everything you've written about the law so far confirms that, in this instance, it is a good indicator.

If you've been practicing for 20+ years, I can only imagine the level of training you received. Also, at this point, you are probably very set in your ways, and based upon what you've written so far, I have no reason to doubt that estimation of your (un)willingness to learn.

"Any associates unfortunate enough to be under your 'mentorship' have my deepest sympathies."
So do I – I am going to identify every little error they make, and I am going to teach them aspects of the law that most (such as yourself) have never even dreamed of considering. It'll be hard work and very frustrating for them. However, our business isn't for the weak at heart. There may be a few old, decrepit dogs that can survive on supposed "experience" and the fact that most attorneys around them think that patent prosecution is akin to Egyptian Hieroglyphics. Although you may have fooled them, don't bring your weak shit around here because I'll slap it down like I already did today.

Patent prosecutors have gotten some bad rep in the past based upon old dogs such as yourself. Really, it isn't your fault. You were probably mentored in a single-patent prosecutor shop by somebody who was mentored in the same way. Patent examiners are in a very similar situations. The people who taught them the law really don't have a firm grasp of it, so they've been working with misconceptions of the law for all of their life. Don't beat yourself up over it though, its not your fault – just keep telling yourself that and you can continue to live the blissfully happy life that you've boasted about.

Posted by: Curious at October 26, 2010 2:21 PM

"It is also an indicator as to whether somebody is precise (i.e., anal)..."

You're anal all right. No argument there.

"Although not a perfect indicator, what it does is indicate to me is whether the particular person had good training and/or whether or not they ever exhibited curiosity as to why certain people use 'serial number' yet others use 'application number.'"

The fact that you've built this trivial distinction up into a test of professional competence says a lot about you. I've had the opportunity to work with some of the best attorneys in this field and I've never once heard any of them even make mention of this minutia. That you've turned it into a litmus test is pretty sad.

"Ours is a business of precision, so your failure to understand the difference between a serial number and an application number is not a good sign for you."

I'm well aware of the difference. The fact that I refer to the number as "serial number" just makes me like the rest of those who use that term: they realize it's a trivial and meaningless distinction. I can't imagine that I, or anybody that mentored me, or that anybody I mentored, would be such a pedantic jag off as to correct somebody who referred to it as serial number instead of application number. Or who would be foolish enough to think that somebody isn't "well trained" because they say serial number instead of application number. How on earth did you get so worked up about this?

"Fortunately for me, I had a very competent paralegal point out the distinction to me during my first year of practice, and I've always been aware of that distinction ever since."

That's a heart warming story. Meaningless, but heart warming.

"You were probably mentored in a single-patent prosecutor shop by somebody who was mentored in the same way."

Wrong.

"...just keep telling yourself that and you can continue to live the blissfully happy life that you've boasted about."

That the best you got? That's you slapping down my weak sh!t?

Face it, you tried to score some points in our little debate by making some ridiculous boast, which you prefaced with "FYI", and I called you on it. If it was for my information, what's the problem with actually providing the information? And I've continually poked you about it. So now you make a really lame attempt to turn it around and make some idiotic claim that I "boasted" I was "blissfully" happy.

I'm supposed to learn from you?

LOL

Posted by: incredulous at October 26, 2010 2:43 PM

The best you've done is asked for proof for something that no intelligent attorney, anonymously posting on a blog, would provide. Good for you, why don't you make yourself useful and go onto the Patently-O website and badger the likes of 6, MM, or MaxDrei to see if they will out themselves -- you do that, and I will have found my redeeming feature.

"Wrong."
Well, if you think the outing game is appropriate, why don't you provide your CV so you can prove you weren't mentored at a one-person shop?
A useless game, but it is your game of choice. I would rather discuss the law and the practice of it, but you seem to avoid those topics. Why is that?

BTW ... thank you for agreeing that I'm anal. That is definitely a complement coming from another attorney.

Here's Prosecution Exhibit A:
"I'm always happy."
Really, that isn't boasting? I don't think I've ever met somebody who has boasted that they are ALWAYS happy. Again, this is silly game, but it is your game of choice.

If you want to play a game befitting a patent attorney, let me know ... then again, you keep declining to discuss the law, so it looks like I'm wasting my time.

"That the best you got? That's you slapping down my weak sh!t?"
You've contested many things in my posts, but you haven't contested my smackdown on your knowledge of the law.

"The fact that I refer to the number as 'serial number' just makes me like the rest of those who use that term"
... ignorant ...

"That you've turned it into a litmus test is pretty sad."
Reading comprehension is not your forte either. I didn't say it was a litmus test. In fact, I admitted that it was imperfect. Try to bring your A-game if this is the game you want to play.

"How on earth did you get so worked up about this?"
I'm not worked up over it. You are. Then again, I would probably be worked up if I found out that a paralegal knew more about the USPTO's primary identifier for applications than me -- particulary if I had been practicing for 20+ years. FYI -- I couldn't care less about your ignorance -- it was just a piece of data that clued me into your age and supplemented my long-held belief that many nuances of patent law elude you.

"they realize it's a trivial and meaningless distinction."
Wrongo ... ask for a serial number and you'll get a 6 digit code (i.e., 123,456), which isn't enough to specifically identify an application. You need to series code (i.e. the 09/ or 90/ or 11/ or whatever) along with the serial number to specifically identify the application (an application number is the series code plus the serial number). What you may think is a "trivial and meaningless distinction" is not. The alleged fact that you know the proper distinction yet still fail to use the correct term says a lot about you.

Posted by: Curious at October 26, 2010 3:29 PM

FYI ... while responding to your babbling, I also got some work done and prepared an Appeal Brief. Just 16 more to go, and I'll equal your total for the last 3 1/2 years. It'll probably take by the end of November to hit your number, but then again, who counts the number of appeals they write over a several year period? Ahhh ... the answer is "somebody who doesn't write a lot of them."

Anyway, have a good evening, I've done my billing for the day. I look forward to seeing your weak response in the morning.

Posted by: Curious at October 26, 2010 3:35 PM

"Well, if you think the outing game is appropriate..."

I'm not trying to out you. I'm asking you to provide some evidence in support of your claim that you received more reversals last month than the total number of appeal briefs I've written in my life. Why'd you make the claim if you're not prepared to support it?

"Really, that isn't boasting?"

Uhm, not really.

"I don't think I've ever met somebody who has boasted that they are ALWAYS happy."

I'm sure anybody who's met you isn't always happy.

"...why don't you provide your CV so you can prove you weren't mentored at a one-person shop?"

You go first. Serial numbers please.

LOL


Posted by: incredulous at October 26, 2010 3:42 PM

"Ahhh ... the answer is 'somebody who doesn't write a lot of them.'"

Maybe if you actually persuaded an examiner or two of the patentability of your claims you wouldn't have to write 38 appeal briefs in a month.

Oh, that's right. You write your claims in a vacuum and then find out your claims are dead in the water after the first OA. So you file a pointless appeal brief. More like 38 of them.

Great practice you're running there.

You have a great evening too. And a very sunny morning.

Posted by: incredulous at October 26, 2010 3:46 PM

Ugh! Even the popcorn went stale during this show(manship).

Posted by: Stale Popcorn at October 26, 2010 5:45 PM

My vote is with curious.

Anyone who goes for the "out yourself so we can see" line is just displaying intellectual dishonesty. Such is great for obfuscation, but when it comes to actually exchanging "legal" blows in a battle of wits, it's like a wet noodle.

incredulous - you are too quick to congratulate yourself on fluff, and too quick to avoid legal substance. Frankly, there are far too many people who think longevity of practice equates with knowledge of practice.

Posted by: anonymous at October 26, 2010 8:57 PM

"Maybe if you actually persuaded an examiner or two of the patentability of your claims you wouldn't have to write 38 appeal briefs in a month."
OK, it was 38 appeals before the end of the year – however, since precision and reading comprehension isn't your forte, I'll just overlook it.

You do, however, raise an issue worth discussing, which is why so many appeals? For those of us who practiced pre-Dudas era, the concept of presenting good arguments in a response and having an Examiner understand and agree with those arguments is not a foreign concept. However, in the Dudas era, where the mentality was reject, reject, reject, presenting good arguments is a response is was rarely good enough.

So, you've got a second and final office action based upon the art that was presented in the first office action, what do you do? Based upon my review of files that have been transferred to my firm, one of the most popular options is to file an RCE and amend the claims. I would wager that most attorneys go that route. Although the easy way out, it oftentimes is not the best choice for you client. First, any type B patent term adjustment (PTA) you might receive gets permanently tolled (type B PTA is when prosecution extends past 3 years) upon the filing of a RCE. Second, by amending the claims, you've now lost doctrine of equivalence. Third, by amending the claims, you have invariably narrowed the claims. Four, by filing the RCE and amendment (on likely a dubious rejection), you've conditioned the Examiner to (i) believe that the Examiner's shitty rejection was either proper and/or (ii) believe that'll you'll continue to provide the RCE gravy train despite a shitty rejection (I'm sure many examiners know when they are producing crap).

On the other hand, if you appeal, my experience is that the Examiner will either (i) withdraw the rejection and issue a new rejection; (ii) call you up with a suggestion as to how to amend the claims to get around the prior art; or (iii) allow the application outright. Of course, the Examiner could file an Examiner's Answer, but that happens in the minority of the applications I appeal. I certainly don't win all my appeals that go to the BPAI, but for those that do, I usually end up getting the client 4-5 years of PTA and clean claims. Regardless, no matter what happens, prosecution is advanced.

Oh, I forgot, there in another option – amendment after final. Big waste of client money. Unless you are placing claims in condition for allowance, filing an amendment after final is useless. You'll invariably get a Advisory Action and you'll end up paying for an extension of time fee and an RCE. If you are going amend, just file the amendment with an RCE.

Anecdotal information (and no, I'm not supplying any application or serial numbers), but I have had applications transferred to me. I've looked at the prosecution history (many amendments, and a couple RCEs), amended the claims to remove some of the useless limitations that were added during prosecution, and once appropriate, I've appealed. I have had several applications allowed in similar situations. The great thing about an appeal is that it gets two extra pairs of eyes looking at your application and your arguments. Too many SPEs/primaries rubber stamp work, so crappy work gets issued by the PTO all the time. By appealing, you've forced the Examiner to explain their crappy arguments to more senior members of their group, and my experience, is that this is oftentimes what is needed to advance prosecution.

Appeals are not a panacea for all that is wrong at the USPTO, but it puts far more pressure on an Examiner than simply filing an RCE and Amendment. My prosecution style is very much like my style on this particular blog – I'm a bulldog and I don't give in. Too many patent prosecutors coddle the PTO. To me, I go by the old proverb of 'spare the rod, spoil the child.'

While I'm thinking of it, one of the great thing about filing so many appeals is the opportunity to see how the BPAI reacts to my arguments … and more importantly, to see how the BPAI tries to wiggle an affirmance out of crappy Examiner arguments. The BPAI has a bag full of tricks that they like to employ against appellants. However, over time, I've become experienced with many of them, and as a result, my current appeals are much better for my losses.

One last thing, if my appealing strategy wasn't successful, my clients would never let me file so many.

Posted by: Curious at October 28, 2010 9:47 AM