Details: The Applicant's claims included “an adhesive whose total quantity of gas detected when analysis using gas chromatograph mass spectrometry is conducted under test conditions of 180 °C and 10 minutes is 100.5 μg/g or less in n-tetradecane.” The Examiner's enablement rejection alleged that the Applicant had not provided adequate information about the molecular structure of adhesive or enough comparative data for other adhesives under the claimed test conditions.
The Board reversed the enablement rejection. The Board found that the Examiner's concerns about molecular structure and comparative data were either addressed by the spec or could be determined without undue experimentation using spectrometry. The Board further noted "none of the Examiner’s above-noted questions and allegations addresses the Wands factors," which is the appropriate framework for enablement analysis.
Turning to the indefiniteness rejection, the rejection consisted of a general allegation "it is far from clear or certain what the scope or metes and bounds of the claimed invention are" followed by a series of question:
- what are the molecular weight distributions of the polymeric materials that can be used?
- what is the average molecular weight of the polymer which can be used?
- what is the sample size of the material that is used?
- what is the moisture content of the sample size?
- what actually is the Appellants’ definition of the term ‘adhesive’?
- what comprises n-tetra-decane?
- what are some of the specific adhesives (by common or IUPAC names) which would be excluded and why?
My two cents: Since the Board made a factual finding that the spec did enable the claims, the Board's comments about the deficiencies in the Examiner's rejection could be considered dicta. Even so, the next time I get a vague enablement rejection, I'll definitely consider traversing with a statement that the appropriate standard is a "reasonable explanation as to why the scope of protection provided by claims required undue experimentation." Similarly, if I get an indefiniteness rejection which is nothing more than a series of questions, I'll probably traverse by insisting that the Examiner apply the appropriate standard for indefiniteness.
"The Board further noted 'none of the Examiner’s above-noted questions and allegations addresses the Wands factors"'
ReplyDeleteLOL
I've received many non-enablement rejections, and none of them have addressed the Wands factors. How hard is it to open the MPEP and read the section on what is required to establish a prima facie case of non-enablement?
I've dealt with this examiner before. He is atrocious. He went to law school and thinks he knows something. It's clear from his office actions that he doesn't.
In one interview I conducted with this examiner, the assignee was a Japanese corporation. The first question he asked me at the interview was whether I knew what the U.S. trade deficit with Japan was. I should've written a Rule 3 letter as soon as I got back to my office. Unfortunately, I didn't.
The real question this case brings up is: what were the pre-appeal and appeal conferees thinking? They should be sanctioned for allowing garbage rejections like this to go up to the Board. The applicant shouldn't be required to waste time appealing garbage like this and the Board shouldn't be required to waste their time deciding, and reversing, garbage like this.
@Anonymous: Please don't make personal attacks on Examiners on this blog. Complaints about Examiners in general are fine. Characterizing a rejection made by an Examiner as ridiculous is fine. I feel your pain, believe me, and sometimes there's a fine line between criticizing the Examiner and criticizing his actions -- but try not to cross it.
ReplyDelete@Anonymous: I appreciate the rest of your comment, and to address the substance of it...
ReplyDelete>I've received many non-enablement rejections,
>and none of them have addressed the Wands
>factors.
Yep. I don't recall a single enablement rejection that met this requirement too.
But I think I know the real reason for this in my cases. Namely, I think the Examiner usually meant to apply a Written Description rejection instead. Especially when the rejection says something along the lines of "no support in the spec" for this limitation. I say that because in my world (computers and electronics), "make and use" is rarely a real issue.
>The real question this case brings up is:
ReplyDelete>what were the pre-appeal and appeal conferees
>thinking?
Good point. Applications with rejections that don't meet the requirement of a prima facie case shouldn't get past the conference (either pre- or post- brief). Ex parte Morooka is such a case.
I think 112 1st Enable, 112 1st WD and 112 2nd indefinite are more likely to fall into this clearly-not-a-PF-case category than prior art rejections. It would probably take something like a 102/103 rejection that doesn't cite to the spec at all, or cites to the same 4 columns for all 7 claim elements to reach the level of clearly-not-a-PF-case.
The only time examiner's really need make an enablement rejection is when it is plain to see that the literal wording of the claim, especially if being read in light of the specification, is impossible to create/perform. This being usually attributable to careless claim drafting. I personally don't bother with Wands in this situation, and have never had any backtalk that I can recall. In my field it is always just a simple drafting error.
ReplyDeleteThere could rarely be the occasion when an examiner is such an expert in the field he would be know that a huge amount of experimentation would be required, and then he'd probably need to do a wands factors test. That might happen in like less than 100/100000 apps though at most.
>only time examiner's really need make an
ReplyDelete>enablement rejection is when it is plain to
>see that the literal wording of the claim,
>...
>is impossible to create/perform.
Agreed that Examiners overapply enablement. At least in the art units I practice in (2100, 2400, 2600).
>I personally don't bother with Wands in this
>situation ... This being usually attributable
>to careless claim drafting.
Well, Wands factors *is* the law, so maybe you shouldn't be quite so proud of that.
But I can see that in the kinds of claims you're talking about, pointing to the particular element along with a simple high-level explanation of what's wrong would be sufficient. No need to develop a page of Wands factor analysis. And in those sorts of situations, I wouldn't "backtalk" as long as you gave me an explanation.
But if it's *not* that kind of claim, or you didn't give me an explanation, then I'd bring up the Wands factors.
Also agree about the "simple drafting error." In the tech areas I work in, I'm not going to intentionally draft a claim that a POSITA can't make/use. Basically because the std for make/use in my tech areas is so low.
Though I didn't say so in my blog post, the real problem I see is confusion between Enablement and WD. On the part of both Examiners and Applicants. In most of the cases where I've received inappropriate Enablement rejections, a written description rejection was probably more appropriate.
>only time examiner's really need make an
ReplyDelete>enablement rejection is when it is plain to
>see that the literal wording of the claim,
>...
>is impossible to create/perform.
BTW, since I don't practice in the chemical arts, I can't say as to whether the Morooka case was an appropriate one for an Enablement rejection. I only know that Enablement is a bigger deal in chemical cases that it is in EE/CS cases.
"Well, Wands factors *is* the law, so maybe you shouldn't be quite so proud of that. "
ReplyDeleteHere's my arse, Wands can kiss it. The law is plainly stated in 35 USC. Wands explains some factors for cases where it isn't plain to see that something isn't enabled. It deals mainly with the situation where it would take undue experimentation to implement an invention, rather than the situation where it is impossible to implement the invention. That is, it is easy to distinguish that case, if I were so inclined to do so. Which I'm not particularly.
I welcome the response that the Wands factors analysis hasn't been done in a case that plainly is not enabled due to the impossibility of implementation. It's time "the law", or, more properly, those in charge of pronouncing what the law means for people who have trouble with it, recognize this situation in ink for those who have trouble with the actual law.
If the CAFC disagrees, then they can welcome another smackdown from the USSC due to their overuse of strict rules.
"And in those sorts of situations, I wouldn't "backtalk" as long as you gave me an explanation. "
And that's why all we'll ever have is Wands. Nobody will ever backtalk such a rejection and "the law" aka the CAFC confirming such a rejection as legit will never develop.
"Though I didn't say so in my blog post, the real problem I see is confusion between Enablement and WD. "
That is of course the problem, but they are rather complicated concepts. It's hard to take the engineer off the streets and teach him about it. A girl in an office right close to mine shows signs that she doesn't understand the difference occasionally, and boy she gets riled if I try to help her, even with my being very nice and totally not condescending about it. When a person has been doing something for years, its hard to break them o the habit unless they are genuinely open to the suggestion.
"Also agree about the "simple drafting error." In the tech areas I work in, I'm not going to intentionally draft a claim that a POSITA can't make/use. Basically because the std for make/use in my tech areas is so low.
"
You say that, but where your art overlaps with mine is one of my most problematic areas on this subject. People in your art making up fanciful nonsense to describe what is actually going on is a very real problem because it all too often strays into what is literally impossible and is merely an abstraction for what is going on to try to obtain broader coverage.
"I welcome the response that the Wands factors analysis hasn't been done in a case that plainly is not enabled due to the impossibility of implementation."
ReplyDeleteLOL. 6, if it's plainly not enabled due to the "impossibility of implementation" then you shouldn't have any problems analyzing the Wands factors and establishing a prima facie case of non-enablement.
"It deals mainly with the situation where it would take undue experimentation to implement an invention, rather than the situation where it is impossible to implement the invention. That is, it is easy to distinguish that case, if I were so inclined to do so. Which I'm not particularly."
ROFLMAO. 6, good luck "distinguishing" Wands from the case you're examining. Instead of doing an analysis of the facts of Wands versus the facts of the application being examined, why not just analyze the Wands factors?
"And that's why all we'll ever have is Wands. Nobody will ever backtalk such a rejection and 'the law' aka the CAFC confirming such a rejection as legit will never develop."
Stop. Please stop. I'm laughing so hard I've cracked a rib!!!!
Those rejections get "backtalked" all the time. And here's the deal, 6, if you don't do the Wands analysis, there's ZERO chance your 112, 1st non-enablement rejection is going to be affirmed by BPAI. ZERO.
"A girl in an office right close to mine shows signs that she doesn't understand the difference occasionally, and boy she gets riled if I try to help her, even with my being very nice and totally not condescending about it."
You're so smooth, 6.
ROFLMAO
>if you don't do the Wands analysis, there's
ReplyDelete>ZERO chance your 112, 1st non-enablement
>rejection is going to be affirmed by BPAI.
>ZERO.
Dunno about ZERO, but I do see *lots* of BPAI decisions reversing 112 Enable for failure to do Wands analysis.
>>I wouldn't "backtalk" as long as you
>>gave me an explanation.
>And that's why all we'll ever has is Wands.
>Nobody will ever backtalk such a rejection
Oh, come on, Applicants have all kinds of practical reasons for not fighting crap rejections.
My reason for not fighting an no-Wands-Enablement rejection is that as long as I *understand* the rationale (however you expressed it), I can deal with it and move to the next step -- amend, drop the claim, or explain why enablement is present.
I don't fight tooth and nail on every failure of an Examiner to stay within the letter of the law, because it just takes too long. The prosecution cycle for my cases would become 3-4 years to even *get* to Notice of Appeal. As it is, I try to keep it down to 2-3 rounds then appeal.
"Dunno about ZERO, but I do see *lots* of BPAI decisions reversing 112 Enable for failure to do Wands analysis."
ReplyDeleteWell Karen, as soon as you find a non-enablement rejection that doesn't include an an analysis of the Wands factors that is affirmed, please post it here.
This goes back to my original point. How can a QAS (a "Qaulity Assurance Specialist", ROFLMAO, let the irony of that soak in for a few minutes) sit in a pre-appeal conference AND an appeal conference, see that the rejection is non-enablement, but does not include any analysis of the Wands factor, and conclude that the case should go to appeal and a decision from BPAI? What on earth are these people being paid to do? The PTO simply cannot, with a straight face, argue that the legions of GS-15 non-examining staff they have over there is doing anything to "assure" the "quality" of examination when garbage like this is reviewed not once, BUT TWICE, by the PTO's "Quality Assurance Specialist" (BWAHAAHAAHAAA), and it still gets sent to appeal, only to waste the applicant's time and the Board's time with what is a slam dunk, no doubt, lead pipe cinch, reversal.
"LOL. 6, if it's plainly not enabled due to the "impossibility of implementation" then you shouldn't have any problems analyzing the Wands factors and establishing a prima facie case of non-enablement."
ReplyDeleteI wouldn't if I cared to embark on such a worthless endeavor. I don't. So I don't.
"ROFLMAO. 6, good luck "distinguishing" Wands from the case you're examining. Instead of doing an analysis of the facts of Wands versus the facts of the application being examined, why not just analyze the Wands factors?"
Because I'd love to see the "law" recognize this other situation and alleviate the need for my 6000 brethern to repeat this Wands nonsense for cases that don't require it.
"Those rejections get "backtalked" all the time"
So you say, but I have no evidence of such. As soon as I get one, I'll let you know how the appeal goes.
"And here's the deal, 6, if you don't do the Wands analysis, there's ZERO chance your 112, 1st non-enablement rejection is going to be affirmed by BPAI. ZERO."
K, we'll see. Karen apparently doesn't have quite as big a' balls as you do concerning that probability.
"Oh, come on, Applicants have all kinds of practical reasons for not fighting crap rejections. "
Such as... the law? I admit, that is a very practical reason.
"My reason for not fighting an no-Wands-Enablement rejection is that as long as I *understand* the rationale (however you expressed it), I can deal with it and move to the next step -- amend, drop the claim, or explain why enablement is present.
"
Oh, so, as long as you know that you didn't meet the requirements of the statute then you move on? You're right, that whole law thing sure is a bother.
"I don't fight tooth and nail on every failure of an Examiner to stay within the letter of the law, because it just takes too long. The prosecution cycle for my cases would become 3-4 years to even *get* to Notice of Appeal. As it is, I try to keep it down to 2-3 rounds then appeal. "
Good for you. Bad for the lollaw you like.
JD, as for your last comment, it could be that the examiner+spe "overruled" the QAS. They will usually go along with the rejection if the SPE pushes with the examiner. 2/3 vote is pretty much how it works irl.
"Because I'd love to see the 'law' recognize this other situation and alleviate the need for my 6000 brethern to repeat this Wands nonsense for cases that don't require it."
ReplyDeleteRight. Because there are SO MANY cases where "impossible to implement" is a valid rejection.
BWAAHHHHAAAAAAHHHHHAAAAAAAA
What color is the sky in your world?
"They will usually go along with the rejection if the SPE pushes with the examiner. 2/3 vote is pretty much how it works irl."
ReplyDeleteSo the GS-15 whose job it is to "assure" the "quality" of examination can be overruled by two legal ignoramuses? I guess it's pretty easy when the GS-15 getting paid to "assure" the "quality" of examination is him/herself a legal ignoramus.
GS-15 money for doing absolutely nothing. Man, what a sweet gig. Where do I sign up?
Can QAS's hotel? Cuz if I'm gonna get paid to do absolutely nothing, I'd rather do it at home.
BWWWAAAAAHHHHHAAAAAAAHHHHHAAAAAA
>>"Because I'd love to see the 'law' recognize
ReplyDelete>>this other situation and alleviate the need
>>for my 6000 brethern to repeat this Wands
>>nonsense for cases that don't require it."
>
>Right. Because there are SO MANY cases where
>"impossible to implement" is a valid
>rejection.
I'm not an expert on Wands factor analysis, mostly because enablement just doesn't come up much in the tech areas I work in. So this discussion is still kinda fuzzy to me.
First-Anon suggests that Wands analysis is overkill for claims that are "impossible to create/perform."
First-Anon, can you give me a simple example of a claim that fits into this category? And even better, the sort of explanation you would give in an Enable. rejection of such a claim?
>>"Because I'd love to see the 'law' recognize this
ReplyDelete>>other situation and alleviate the need for my
>>6000 brethern to repeat this Wands nonsense >>for cases that don't require it."
>
>Right. Because there are SO MANY cases where
>"impossible to implement" is a valid rejection.
Again, not a Wands expert, so I'm not prepared to say that case law requires Wands analysis in all situations. I will say that the Examiner must explain his rejection.
I view Wands factors as a framework for explaining why a POSITA cannot make/use the claimed invention. Perhaps there are other ways to explain this also.
When the Examiner explains via other means, I'm not gonna waste my time fighting about "no Wands". Instead, I'll use what he gave me to address the rejection.
However, if I'm appealing on other grounds, and I have an Enablement rejection with no Wands analysis, I probably would throw in that argument and see what the Board says.