So I'll start off 2011 with this list of "Top 10 Mistakes in Arguing on Appeal to the BPAI" :
- Conclusory assertion rather than argument with explanation
- Arguing outside the claims
- Failing to address Examiner's specific findings
- Not recognizing that the real issue is claim interpretation
- Failing to address the combination
- Arguing the Teaching, Suggestion or Motivation test
- Using attorney argument when evidence is required
- Using a declaration that amounts to opinion without factual support
- Arguments that ignore relevant case law
- Arguments about issues that aren't appealable
Also, I won't address the question of whether or not the BPAI is legally correct in treating these actions as mistakes that are damaging to the Applicant. For example, whether the BPAI is properly allowed to affirm simply because the Applicant didn't address an Examiner finding.
I'll follow up this list with other posts that go into more detail on each of these mistakes.
Probably correct, this list mirrors closely the list I'd make regarding prosecution errors. One that isn't on your list, but that I see from time to time (with increasing frequency it seems :( ) is a factual misstatement being made.
ReplyDelete>tihs list mirrors closely the list I'd make
ReplyDelete>regarding prosecution errors. One that isn't
>on your list ...
Since you bring it up, I see a difference between "prosecution errors" and my list of errors at appeal.
My list was limited to errors that I can discern from reading BPAI decisions. IOW, a case that was a) on appeal and b) involved something that I could infer was a mistake simply from reading a BPAI decisions.
>One that isn't on your list ... is a factual
>misstatement being made.
What's your definition of "factual mistatement"?
Consider the statement "Ref doesn't teach a widget." It can't be a misstatement simply because the BPAI determined that Ref does teach a widget. One, reasonable minds can differ on what the reference teaches. Two, I've seen decisions in which I feel very strongly that the Board read the reference incorrectly.
So short of the practitioner misquoting from the Ref, I think it's hard to say a statement made by a practitioner is factually incorrect.
"What's your definition of "factual mistatement"? "
ReplyDeleteA statement of some alleged fact which the attorney believes to be a fact which I then go and google a piece of art to show as evidence that the supposed fact is indeed not a fact. That is, they misstated a fact.
In other words, they lied, with or without knowing they were lying.
I would say that most often I see this regarding some technical matter that they were simply ignorant of and they thought they'd wing it.
Consider the statement "specialized compound is dissolved at a rate of 10 mol/min in such and such solution" I then go and find a reference that states differently.
Or consider the statement that "specialized compound does not dissolve at x temperature in such and such solution". I then go retrieve a reference (or several references) which states that such a compound does in fact dissolve at x temperature in such and such solution. Perhaps it only dissolves a little, but it still dissolves some.
It's practically attempted fraud on the office (often through ignorance which might not technically be fraud, but you get the point) but since I catch them I guess nothing ever comes of it.
And trust me when I say that this happens increasingly more frequently as I become more and more knowledgable and capable of finding references on point. I would say, maybe 3 to 4 times a year?
>It's practically attempted fraud on the office
ReplyDelete>(often through ignorance which might not
>technically be fraud, but you get the point)
No, misstatements made in ignorance are absolutely *not* fraud. Fraud requires an intent to deceive. You may see this as a "technicality", but attorneys are generally sensitive to people throwing words like "fraud" around.
>since I catch them I guess nothing ever comes
>of it.
And what *should* happen when factual misstatements are made without an intent to deceive? Don't we usually call this a "mistake"?
>I would say, maybe 3 to 4 times a year?
Your statements strongly imply you're an Examiner. So in a year, you see scores of responses -- if not a hundred, right? I'd say a rate of 5-6% for misstatements is quite acceptable. We're all human and we all make mistakes. Right?
I'm aware Karen, I'm just saying it is in effect a mini-fraud and should be punished imo. Calling it a mistake is probably right in many instances, but there is no reason for you to not have some punishment for making such a scam-prone mistake. It doesn't have to be a huge punishment, like examiners are "punished" in a round about way by not getting counts for more non-finals. It doesn't need to be more serious than that. But something should be done rather than just letting it slide wholesale. That's just too lenient.
ReplyDeleteAnd btw, no, 5-6% is not really correct, because not all of those responses will contain factual statements that are relevant to this discussion. I'd guess, just off hand, that relatively few cases actually have a lot of relevant factual things brought up. Maybe 40% tops? So what we're really talking about is a good proportion of relevant factual discussions being "opseys". I'd guess a good tenth or a bit more. That's getting kind of high, and that's why I mentioned it, it seems to be getting kind of high.
Bottom line, if you want to trot out some factual argument you should have to perform some due diligence in setting out the argument rather than just being permitted to just take a big ol' dump all over the place. Either know what you're talking about, or go find someone/a teaching who does. Else just stfu.
Also, you should not be able to so easily make the already hard and complicated patenting process more hard and complicated by throwing in potential lies and falsehoods without a care in the world. Because lets be honest, if it took me 5 minutes to look up, or even an hour or so, it was pure ignorance mixed with negligence that lead to the factual misstatement.
If they just came in and said "well we believe x happens" instead of putting on the record that indeed, factually speaking, they argue that x happens then that would be fine. But they're allowed to not put any qualifiers notifying the examiner that what they're saying is potentially completely bs. What this leads to is examiners suspecting everyone of bsing all the time. And there's no reason for that.
>if you want to trot out some factual argument
ReplyDelete>you should have to perform some due diligence
>in setting out the argument rather than just
>being permitted to just take a big ol' dump all
>over the place.
I get what you're saying. You want a standard where it's not enough that you *don't know it's not true*, but must instead have a reasonable basis for believing it to be true.
As a practical matter, I'm not sure what sort of "punishment" could work.
>If they just came in and said "well we believe
>x happens" instead of putting on the record
>that indeed, factually speaking, they argue
>that x happens then that would be fine.
I'm sure many many attorneys are careful to do just this.
So you'd be ok with allowing an attorney to avoid any possibility of a factual misstatement by qualifying the statement as belief?
Wouldn't this lead to *more of* "examiners suspecting everyone of bsing all the time"?
Karen,
ReplyDeleteWhy you're bothering to engage in a back and forth with the PTO's most idiotic, and ignorant, examiner 6tard is simply perplexing. Do what Gene Quinn did/does: ban him and/or delete his posts.
"Bottom line, if you want to trot out some factual argument you should have to perform some due diligence in setting out the argument rather than just being permitted to just take a big ol' dump all over the place. Either know what you're talking about, or go find someone/a teaching who does. Else just stfu."
ReplyDeleteBut it's still going to be okay for examiners to just put into their OA's that "...it's notoriously old and well known..." without any reference or other evidence, right? Amirite?
"A statement of some alleged fact which the attorney believes to be a fact which I then go and google a piece of art to show as evidence that the supposed fact is indeed not a fact. That is, they misstated a fact."
ReplyDeleteIt's amazing that in 2+ years of trolling these blogs you still haven't learned/don't understand the difference between evidence, facts, and argument. You've got to be the single dumbest examiner 6tard in the PTO.
How are those logic games coming?
Lulz galore
"But it's still going to be okay for examiners to just put into their OA's that "...it's notoriously old and well known..." without any reference or other evidence, right? Amirite? "
ReplyDeleteYou are right. And we're talking about the exact same thing here, you don't want examiners taking official notice of things they have no clue about, and I don't want prosecutors taking the equivalent of official notice of a fact on their side when they have no clue about it.
In essense, neither of us want to have the other side spouting nonsense about facts.
"It's amazing that in 2+ years of trolling these blogs you still haven't learned/don't understand the difference between evidence, facts, and argument. You've got to be the single dumbest examiner 6tard in the PTO. "
It's amazing that in 8 lines or so of text you didn't manage to show anywhere where I actually said anything which indicated that I don't understand the difference between facts, evidence and argument.
"It's amazing that in 8 lines or so of text you didn't manage to show anywhere where I actually said anything which indicated that I don't understand the difference between facts, evidence and argument."
ReplyDeleteWhy do I need to when you post nonsense like this that proves exactly what I said:
"And we're talking about the exact same thing here, you don't want examiners taking official notice of things they have no clue about, and I don't want prosecutors taking the equivalent of official notice of a fact on their side when they have no clue about it."
Examiners are fact finders. That is, or is supposed to be, their job. When they take Official Notice that is part of the fact finding process. Attorneys are advocates. When they make arguments they are making arguments, not finding or establishing facts.
Attorney argument is exactly that: argument. It is neither evidence nor fact.
Good lord you are dumb.
You two look like you're having plenty of fun without me, but I'll chime in ...
ReplyDelete>Attorney argument is exactly that: argument.
>It is neither evidence nor fact.
Sure, argument <> fact. But does that mean every statement made by an attorney is argument? Or, depending on the context, could an attorney make a statement of fact?
Suppose my response includes the sentence: "The speed of sound in the atmosphere is 3 miles/hour."
I think we'd all agree that statement is factually incorrect. [Unless you want to argue that "in the atmosphere" also covers atmospheric under conditions on some other planet or something?]
So I suppose the relevant question is then: is this particular sentence phrased as an argument, or as a statement of fact?
One of the statements that Anon-presumed-Examiner referred to was
>"specialized compound is dissolved at a rate
>of 10 mol/min in such and such solution"
I'd put this into the same category as a statement of the speed of sound.
"Or, depending on the context, could an attorney make a statement of fact?"
ReplyDeleteNo. Attorney argument is exactly that: argument. It is neither evidence nor fact.
"Unless you want to argue that 'in the atmosphere' also covers atmospheric under conditions on some other planet or something?"
Thanks for the chuckle, Karen. This is just like the responses I get from examiner's when I press them to explain their broadest "reasonable" interpretation.
Lulz
I'm well aware that this falls under arguing JD. I don't care if you want to call stating a false fact for the record while presenting/in support of, arguments not fact finding, lying, arguing, lying while arguing, arguing a false fact, stating a false fact while arguing, picking your nose, or punching JD in the face. You are arguing a point of semantics. Whatever name you want to give the practice, it should be nipped in the bud.
ReplyDeleteAnd for having graduated so high in your class, you're certainly an embarrassement to your institution by implying that this "arguing the facts" or whatever you wish to call it, should have nothing to do with actual facts and that instead it should be open to being "arguing complete bull".
"I'm sure many many attorneys are careful to do just this.
ReplyDeleteSo you'd be ok with allowing an attorney to avoid any possibility of a factual misstatement by qualifying the statement as belief?
Wouldn't this lead to *more of* "examiners suspecting everyone of bsing all the time"?
"
You'd think that attorneys would do that, but they don't. At least that I've seen. Not on the written record, they do in interviews.
And no, I have no problem with them qualifying their statements. If they qualify it then I'm well aware that they're just bsing, maybe correctly, maybe not. If they didn't qualify it, and they knew they get a small fine or something, then I'd be more willing to trust them that they had a reasonable basis for believing what they said to be true. But when is it appropriate to rely on some information they present to you as argument to allow the case when you're incapable of duplicating the analysis here at the office? I don't really know off hand, I have forgotten, I'd have to ask, I might have to ask for it submitted as evidence if I wanted to rely on it to allow the case.
For instance, I once had a guy send in an "argument" telling me all about these chemical properties of this certain molecule, and then tell me what some molecular mass ratios would be in a certain solution containing that molecule and another chemical. I had no way of verifying this information (he told me what the molecular mass was but I could find it nowhere in the literature as it was a very rarely used molecule to begin with, and I furthermore could not find out what all the nuclides were) but it did seem probable that it was correct. I don't remember what happened in that case but it does stand out to me as a time when they did do their homework on what they wanted to argue.
I go through a lot of fin trouble to be a lot more factually accurate than your avg dude, but then I just get shtted upon in their "arguments"? No wonder your avg examiner doesn't give two shts about being factually accurate, your avg attorneys don't either.
"You'd think that attorneys would do that, but they don't. At least that I've seen. Not on the written record, they do in interviews."
ReplyDeleteYou might want to read Rule 11.18(b)(1), i6noramus.
You'll learn all about ethical obligations like that when you go to law school.
Oh, I'm sorry, I forgot, you couldn't get into law school.
Never mind.
Lulz
Wow, this thread got wild fast. If it isn't too late to address the original topic, I think it's important.
ReplyDeleteI've had cases where I wrote in my draft that something-or-other wasn't in reference X, and then double-checked and found that I was wrong. Just in case I fail to catch an error like that, I will often say something like "the undersigned attorney does not see where Y is taught in reference X. If the Examiner does believe that such a teaching is present, he/she is requested to specify exactly where such a teaching is found."
That's verbose but safer - if I make a mistaken unqualified assertion and the Examiner misses it too, I've got a time bomb in the file wrapper.
>I've got a time bomb in the file wrapper.
ReplyDeleteWhat's your concern?
That your patent isn't actually valid over the art used by the Examiner? Inequitable conduct? Something else?
"What's your concern? "
ReplyDeleteI think he said he had a bomb in the file wrapper. That would be of concern to me.
"Oh, I'm sorry, I forgot, you couldn't get into law school. "
Not trying to get into GW just yet hardly means I couldn't get into lawlschool. Nothing would be easier.
And yes, I've read about those "ethical" responsibilities before, but if they go entirely unpoliced wtf is the point in having them?
>I think he said he had a bomb in the file
ReplyDelete>wrapper. That would be of concern to me.
OK, I'll be more precise.
Robert Groover, why do you think "making a mistaken unqualified assertion which the Examiner misses" is a "time bomb in the file wrapper". IOW, what bad things could happen because of the attorney's mistaken unqualified assertion?
"Not trying to get into GW just yet hardly means I couldn't get into lawlschool. Nothing would be easier."
ReplyDeleteUntil the admissions committee gets a look at your essay/writing sample.
Look on the bright side, at least you'll be providing them with many lulz.
Lulz