In this second week of the new year, I'll continue with my list of Top 10 Mistakes in Arguing on Appeal to
the BPAI. (See the full list here.) Today is Mistake #4: Not recognizing that the real issue is claim interpretation.
I'll start off by saying that since Examiners are not required to – and usually don't – discuss claim construction, this issue is really easy to miss.
A lot of Appeal Briefs include various passages from the reference and then conclude with "But the blodget discussed in the reference is not the same as the claimed 'widget'." Even though claim construction is not discussed, the Applicant must have some sort of claim construction in mind. Implicit in the argument is that under the Applicant's interpretation, the claims don't read on the reference.
Applicants might get better results by thinking about how the Examiner could possibly be interpreting the claim term "widget" so that it does read on the "blodget" in the reference. Then, if the issue is an unreasonable claim construction, you can hit that issue head on rather than focusing on the reference. Or if you decide that the Examiner's construction is not so unreasonable, you can decide not to appeal.
Ex parte White involved a system to implement distinctive ringing for a telephone. The claim included the limitation "implemented without installing additional hardware at a subscriber's premises." The Applicant pointed out that the distinctive ring in the reference was produced by a locally implemented wireless centrex. The Applicant argued that this locally implemented component was "additional hardware at a subscriber's premises."
You can see that if the wireless centrex could be viewed as residing somewhere other than "at a subscriber's premises," then the Applicant's argument falls apart. And that's exactly what the Board found: that the components were placed in a central office, which is "relatively locally placed" but is still "remote from each subscriber’s premises and equipment (i.e. remote from mobile station 101 and/or its associated office) as claim 1 requires." Using this claim construction, the BPAI affirmed the rejection.
In one of the cases I blogged about previously, the Examiner brought up claim construction, but the Applicant didn't do anything with it. The case is Ex parte Fleming, and the Applicant appealed a claim to a stent which
included a lattice with a closed (unexpanded) configuration and an open
(expanded) configuration. The claim also defined the lattice as "made of
a material that is normally prone to crushing,
deformation or recoil."
The Applicant explained in some detail why the
stent in the reference would not function properly if made of a material
that was prone to crushing, deformation or recoil. However, the
Applicant's argument assumed that the the "normally prone to"
language in the claim referred to the expanded state. Yet the Examiner explained – in
the final rejection, and then again in the Answer – that he was
interpreting "normally" as referring to the unexpanded state, before the
loops in the lattice interlocked. The Board found the Examiner's interpretation to be reasonable, and affirmed the rejection.
The most frustrating cases may be those where the Applicant makes it's claim construction clear, then the Board decides on a different claim construction. The claim in Ex parte Iwamura recited "at least one component configured
for communicating with the server along a wired path and also being
configured for communicating with the server along a wireless path." The Applicant focused on the "and also" language, arguing that the claim required communication over both wired and wireless links, while the reference taught communicating over one or the other, but not both. The Examiner didn't disagree, and instead relied on modifying the reference to use both.
The Board, however, found that the "configured for" language did not require actual communication over both links, merely that the component support both wired and wireless communications. Using this construction, the Board affirmed. If the Applicant had predicted at least the possibility of this interpretation, the Applicant may have chosen not to appeal.
Notably, the Iwamura Board did not marks this as a new ground of rejection. The Examiner didn't put an explicit claim construction on record, so maybe the Board didn't view this as a different claim construction? Though I say the first claim construction on the record should be a new ground.
I hope, but doubt, that Frye will result in some burden on the examiner to explicitly construe the claims.
ReplyDeleteAnother really excellent post - thanks very much!
ReplyDeleteOne thing which would be helpful would be some application numbers for examples of well-briefed cases - your own or others' - which we might glance at for examples of good practice.
Even where claim interpretation is not obviously an issue, I tend to think that even the briefest mention of claim interpretation - even just a quick footnote - can be lifesaving. The Board is sometimes inclined to look for an easy affirmance, and one aspect of our job is not to make it too easy for them to ignore the real issues in the case.
Thanks,
>One thing which would be helpful would be
ReplyDelete>some application numbers for examples of
>well-briefed cases
Hmm. I'll consider this. So far my blog has certainly been focused mostly on learning from bad stuff rather than good.
>Even where claim interpretation is not
>obviously an issue, I tend to think that
>even the briefest mention of claim
>interpretation ... can be lifesaving.
Not sure what you have in mind by "briefest mention". Raising the issue that the Examiner's construction is unreasonable?
If you're suggesting instead to put the Applicant's claim interpretation on record, then No, I'm not in favor of that when it's not at issue.
I think it's indisputable that less in the record is better, all things being equal. Now, when something is at issue -- claim construction, teachings of the ref, etc. -- then that's the time when I do make arguments on the record. I think that's how you get the current claims allowed. But if it's not an issue, I'm probably not gonna discuss it at all.
Oh, I meant Jung, not Frye. (first comment above)
ReplyDeleteI second Anon's comment hoping that Examiners will explicitly construe claims. Much too often, a rejection is based on a broad construction of a term that the applicant hadn't previously considered, and the office action, intentionally or unintentionally, fails to mention that. This is the source for a huge number of confusing rejections. Interviews are a wonderful way to ferret out 'broadest reasonable interpretation' issues, but it seems to me that Examiners often know at the time of the rejection that they are using a broader interpretation than applicants. Why should they hide the ball? In the spirit of compact prosecution, a rejection that the Examiner suspects is based on a broad interpretation of a term, should state that explicitly. Then the applicant knows what to amend or clarify in order to overcome the rejection, thereby avoiding unnecessary back-and-forth filings, and arriving quickly at claim language that both the Examiner and the applicant can be happy with.
ReplyDeleteMoreover, when an office action does mention that a rejection is based on a broad interpretation of a term, it is usually mentioned in the form that term xxx is interpreted to cover member yyy in the prior art reference. But so often, I cannot fathom an actual definition of the term that covers yyy. So it would be even better if the Examiner could state his/her definition of the term explicitly, even citing authority for it as would be required on appeal or in any litigation. This may be too much to ask for every broad interpretation, so perhaps this step should be required only after the applicant challenges the Examiner's interpretation.
See the recent BPAI deicsion in 11/279,976 for a beat down given to an examiner over the broadest unreasonable interpretation.
ReplyDelete"If the Applicant had predicted at least the possibility of this interpretation, the Applicant may have chosen not to appeal. "
ReplyDeleteThe applicant should always predict that their completely nonsensical construction will give way to the most proper interpretation.
And, I note, that applicant's representative should be able to "predict" that "configured for" is not a weasel phrase to be able to introduce method steps into a product claim. Never has been, and never will be.
"Notably, the Iwamura Board did not marks this as a new ground of rejection. "
I'm not sure that a new claim construction is a new ground of rejection. The actual grounds of the rejection are the reference and perhaps the factual findings made thereof. Not, I note, the construction of the claim.
>applicant should always predict that their
ReplyDelete>completely nonsensical construction will give
>way to the most proper interpretation.
Gee, your comment amounts to: Applicants are wrong when they're wrong.
Applicants are not always wrong about claim construction, as shown by a number of Board decisions which find the Examiner's interpretation to be UNreasonable. I haven't done a study to see who wins more often on claim construction.
>Not sure that a new claim construction is a
>new ground of rejection.
You might be right about how the law interprets new grounds. Haven't looked into it.
Claim construction is certainly one of the underlying bases of a rejection. As such, a new claim construction *ought* to be a new ground of rejection. Or at least there some claim constructions by the BPAI that differ enough from the Examiner's so as to amount to new grounds.
>applicant's representative should be able to
>"predict" that "configured for" is not a
>weasel phrase
I agree that Applicants should have a) wondered if the Examiner was treating "configured to" as "capable of" and b) realized that the Board might do so.
I think I've reported on a few cases that deal with this issue.
I don't agree that "configured to" is always treated that way. I'm pretty sure I can find BPAI decisions that go the other way.
>recent BPAI decision in 11/279,976 for a beat >down over [Examiner's] broadest unreasonable >interpretation.
ReplyDeleteThanks for the tip. I'll take a look.
wwolfeld, thanks for commenting.
ReplyDelete>Examiners often know at the time of the
>rejection that they are using a broader
>interpretation than applicants. Why should
>they hide the ball?
I can't think of a good reason why an Examiner "should" avoid telling the Applicant what interpretation is being used.
Practically speaking, I think the main reason they *don't* is because the MPEP doesn't direct them to make an explicit claim construction part of the record. The MPEP does tell Examiners to explain the prior art (706), but I don't see the same sort of admonition about claim construction.
Here's another theory. I think patent attorneys think about claim construction because we're trained to think about infringement, and claim construction is huge part of getting to infringement. So much so that it's a completely separate step. Examiners don't have this same perspective.
>Examiners often know at the time of the
ReplyDelete>rejection that they are using a broader
>interpretation than applicants. Why should
>they hide the ball?
I'm not sure they're *hiding* the ball. More like Exmaminers think the ball is already clearly visible - and we patent prosecutors are being willfully blind.
I've talked to at least one Examiner who took the position that by saying the ref taught the claim element, he was implicitly performing claim construction. If we're talking about a rejection that says Hook 112 in the reference teaches the claimed Post, then yeah, I can see his point. I don't need any hand holding for that one.
But I deal with rejections where there are 22 nouns and 13 verbs in the passage that allegedly anticipates my claim. And I can't tell which of those 22 nouns he thinks teaches the 6 nouns in my claim. That's why I would like to see explicit claim construction from the Examiner.
I find I have pretty good results by filing a response that indicates how I think he's interpreting. In many cases, the Examiner responds by either confirming or explaining what interpretation he is using.
"But I deal with rejections where there are 22 nouns and 13 verbs in the passage that allegedly anticipates my claim. And I can't tell which of those 22 nouns he thinks teaches the 6 nouns in my claim. That's why I would like to see explicit claim construction from the Examiner."
ReplyDeleteExactly. And the examiner is not required to explain to the Board which of the 22 nouns teaches the 6 nouns in your claim, but you're required to explain why they don't.
They need some serious remedial education.
"Gee, your comment amounts to: Applicants are wrong when they're wrong."
ReplyDeleteThat's one way of seeing it, another way is: Applicants are wrong when they're completely out in left field being nonsensical.
"Applicants are not always wrong about claim construction, as shown by a number of Board decisions which find the Examiner's interpretation to be UNreasonable. I haven't done a study to see who wins more often on claim construction. "
I'm sure applicants do on appeal, examiners overwhelmingly, by a huge landslide, win when we're just talking everyday prosecution though. Or at least I do and from what I understand the same is for my buds. Though, most of us haven't gotten any of our appeals back yet (most were from our early examining days and I wouldn't be surprised if a reversal comes back on any of them) This is because generally, the tougher cases go to appeal, not to say that some stu pid ones do not slip in.
"Claim construction is certainly one of the underlying bases of a rejection. As such, a new claim construction *ought* to be a new ground of rejection. Or at least there some claim constructions by the BPAI that differ enough from the Examiner's so as to amount to new grounds. "
Idk about that though, on the subject of claim constructions, all reasonable constructions are hypothetically and supposedly under consideration in prosecution and at the board, in every single last rejection that comes through. The board singling out yet another one of the supposedly already considered constructions really has nothing to do with the grounds upon which the claim is rejected.
"I don't agree that "configured to" is always treated that way."
You're right, some decisions likely mistreat it. It is a shame really.
"I can't think of a good reason why an Examiner "should" avoid telling the Applicant what interpretation is being used. "
Idk if it is a good reason or not, but I can tell you why some do not state it. It's the same reason that attorneys don't put their constructions down. So you're not bound by them later. Maybe you might have some smartie coming in later telling you that your different construction you just now used constitutes a new grounds of rejection or who knows what else. Why expose yourself to that as an examiner if you don't have to? And to be clear, I'm sure it isn't done maliciously most of the time, it is just a general rule of thumb.
I do because I have confidence in my work being done correctly and I can therefor assume that the information will simply be persuasive or at the least help to bring the case to whatever resolution happens. Other people, that don't really care, have no reason to go out of their way to make themselves potentially have to do another action on their own time. And it is a smart decision.
"Examiners don't have this same perspective. "
No, the more experienced ones do have that perspective. We understand quite clearly that the way you interpret the claim matters a lot.
"I'm not sure they're *hiding* the ball. More like Exmaminers think the ball is already clearly visible - and we patent prosecutors are being willfully blind. "
That happens, it is true.
"But I deal with rejections where there are 22 nouns and 13 verbs in the passage that allegedly anticipates my claim. And I can't tell which of those 22 nouns he thinks teaches the 6 nouns in my claim. That's why I would like to see explicit claim construction from the Examiner."
I cannot fathom anyone having that many nouns that are so similar to one another that they literally cannot tell which one the examiner is pointing to. The very idea of this happening is ludicrous. I've got to see an example of this.
"They need some serious remedial education. "
ReplyDeleteYou're the one who allegedly cannot tell which of 22 nouns the examiner is pointing to as being the 6 nouns recited. Even disregarding your ridiculous way of explaining that situation in terms of "nouns" (thanks to Karen getting you started) it points to you being the one that needs remedial, or even original, education. And I don't even mean that to be as insulting as it obviously is.
>This is because generally, the tougher cases
ReplyDelete>go to appeal, not to say that some stupid
>ones do not slip in.
Seems like a reasonable hypothesis, so if I had no other data I'd be included to agree. But my gut feeling from reading BPAI decisions is that it's not true. That tons of the cases that go to appeal are ones when the Applicant has a weak position.
My guess is that it's client driven: some clients never want to appeal; some clients would rather appeal then amend, even if their position is not that strong. I seem to recall a comment thread on PatnentlyO that suggested this.
>examiners overwhelmingly, by a huge
>landslide, win when we're just talking
>everyday prosecution though.
You can say the Examiner "won" in the sense that the Applicant filed another response rather than appealing. But I don't see how you can fairly say that the Examiner "won" on the particular issue of claim construction [the issue we're talking about] unless both sides actually argued about claim construction. And in my experience, neither side makes explicit arguments about this issue. [Or about any other issue, come to think of it.]
>I can tell you why some do not state it.
ReplyDelete>It's the same reason that attorneys don't
>put their constructions down. So you're not
>bound by them later.
>... coming in later telling you that your
>different construction constitutes a new
>ground of rejection or who knows what else.
Hmm. Never thought of that. Though this seems inconsistent with your earlier statement that it's *not* a new ground when the Board comes up with a different claim construction.
>No, the more experienced ones do have that >perspective. We understand quite clearly
>that the way you interpret the claim matters
>a lot.
OK. You know far more about what your fellow Examiners think than I do, so I stand corrected.
>having that many nouns that are so similar
>to one another that they literally cannot
>tell which one the examiner is pointing to.
Yes, that does sound ludicrous. But the problem is not that the 22 nouns in the reference are all similar to each other. It's that none of the nouns in the cited passage seem similar to the nouns in my claim.
And I'm not saying that it's always so bad that I can't guess. Sometimes I can guess. Sometimes it is that bad. But I don't want to guess. I want the Examiner to map the claim limitations to the teachings of the reference.
Karen - excellent article.
ReplyDeleteAnonymous at January 12, 2011 3:59 PM said -
>> I'm not sure that a new claim construction
>> is a new ground of rejection. The actual
>> grounds of the rejection are the reference
>> and perhaps the factual findings made
>> thereof.
Nope. The PTO has litigated this over and over, and lost over and over.
The ground of rejection is "the precise reason" for the rejection. Hyatt v. Dudas, 551 F.3d 1307, 1312–13, 89 USPQ2d 1465, 1468–69 (Fed. Cir. 2008) (“a ‘ground of rejection’ … is not merely the statutory requirement for patentability that a claim fails to meet but also the precise reason why the claim fails that requirement”). Any "position or rationale new to the proceeding" is a new ground. In re DeBlauwe, 736 F.2d 699, 706 n. 9, 222 USPQ 191, 197 n.9 (Fed. Cir. 1984).
As you note, any new finding of fact is a new ground, even if based on the same references. In re Kumar, 418 F.3d 1361, 1368, 76 USPQ2d 1048, 1052 (Fed. Cir. 2005).
A new claim interpretation is a new ground. Ex parte American Academy of Science, remand in Appeal No. 1998-1483, App. Ser. No. 90/003,463, http://www.uspto.gov/go/dcom/bpai/decisions/rc981483.pdf, 2003 WL 23014678 at *2 (BPAI Mar. 9, 1999) (unpublished) (“We admit that our introduction of new definitions, while legally correct, has dramatically changed the issues under Section 102 as argued by appellant and the examiner. Therefore, we agree with appellant that the affirmance of the rejections under Section 102 should be designated a new ground of rejection.”)
Anonymous said...
Likewise, Anonymous at 11:37 AM
>> The board singling out yet another one
>> of the supposedly already considered
>> constructions really has nothing to do
>> with the grounds upon which the claim is
>> rejected.
Claim construction is at the heart of every ground of rejection! Anon, you seem like one of the more thoughtful examiners, I wonder if you could explain your view further.
Oops, this fell out
ReplyDeleteAnonymous at 11:37 also writes:
>> We understand quite clearly that the
>> way you interpret the claim matters a lot.
The contrast between "matters a lot" and "really has nothing to do with the grounds" is -- umm -- striking. That's the contrast I'd like you to explain. We're seeing the same words and coming to completely different understandings -- I need to understand your view.
"You're the one who allegedly cannot tell which of 22 nouns the examiner is pointing to as being the 6 nouns recited."
ReplyDeleteNo. What you usually get in an OA is the examiner copies the claim, or some portion of the claim, and then states, "See column 3, line 1 through column 6, line 65." It's pretty impossible to figure out exactly what elements of the reference the examiner is interpreting as meeting each of the claimed elements.
Then what happens, after you traverse the rejection, is the examiner actually explains in the next OA, which is made final of course, that he/she is interpreting 2 or 3 or 4 of the reference's elements in combination to correspond to one of the claimed elements, or the examiner explains that certain arbitrary portions of one element of the reference are being interpreted as corresponding to two or three of the claimed elements (which is completely improper as noted in a couple of Karen's posts).
This type of hide-the-ball-until-final-count-system-game-playing is practiced by many, many examiners. They know that the petition process is irreparably broken and useless to applicants, and that the appeal process, although slightly improved under Kappos, is also of very limited use to applicants given the appeal-reopen-appeal-reopen merry-go-round that is permitted over there. (Mr. Kappos you have got to stop that!)
Interviews can go a long way to prevent or mitigate this nonsense, but not all applicants can afford an interview in every application.
As far as examiners not wanting to be bound by their claim construction, the only reason I can see for that is so that the examiner can once again engage in count system game playing. The MPEP requires the examiner to provide the claim with the broadest reasonable interpretation consistent with the spec and the interpretation that would be reached by one of ordinary skill in the art, not the most ridiculous interpretation one could think of so that when the applicant challenges it, the examiner can avoid the issue by providing a new interpretation and make the rejection final.
The examiner's job is to reasonably interpret the claim for purposes of determining novelty and non-obviousness, not whoring counts.
The immediately preceding Anonymous - could you get in touch with me. Best email is dboundy (at) cant or (dot) kom. Thanks
ReplyDelete"Nope. The PTO has litigated this over and over, and lost over and over."
ReplyDeleteThis may be, but your quotations are inapposite and you well know it. Your citations might not all be off point but I don't have time to sit and read them all atm. In all the cases that address the examiners making claim constructions explicit state unequivocally that they don't even have to do it, save perhaps in some rare situations which the court is never specific enough to enumerate (to the best of my recollection). If the examiner doesn't even have to make a claim construction then I'm pretty sure that it can't be "a new rational" or "reason" later on if you don't even know what the original rational or reason was.
And in In re DeBlauwe iirc the "new position or rational" was referring to how the references are applied, and under what statute etc etc.
Excepting perhaps your citation here which might be on point, but probably isn't:
http://www.uspto.gov/go/dcom/bpai/decisions/rc981483.pdf
but that link doesn't work and is broken. Indeed, you state that the case is unpublished as well.
Also wouldn't new definitions be new evidence of facts and be prohibited under Zurko if the board tries to bring them in when they weren't already on the record? I've forgotten the date on Zurko, but it would have been around the time of that decision.
"Claim construction is at the heart of every ground of rejection! "
Obviously so but the PTO doesn't have the time or resources to hold you a mini and all inclusive Markman in every case. During prosecution we have to take into account a huge number of constructions, especially in some cases. To document them all thoroughly could theoretically take 100 pages. Per claim. Therefore you must, and a court must, assume that the examiner has all reasonable claim constructions in mind in every rejection unless he brings to the forefront a specific few or one. To do otherwise is to assume that the examiner did something that he isn't required to do, and fed it up.
And there are a lot of things at the heart of rejections which, if they are changed, do not constitute a new grounds of rejection. If the examiner provides technical reasoning to establish that a certain feature is inherent, and then later on in prosecution it is discovered that the examiner's technical reasoning was not perfect or entirely complete to a kindergartener, but there is nonetheless reason to believe that the feature is inherent, I doubt if there is a new grounds present either when the reasoning is made complete or correct, unless a new statute or explanation is used for the rejection.
In fact, I've had a similar situation come up before, although in that situation my technical reasoning was not soundly refuted, it was merely a case where there was so much technical reasoning against the inherent feature I didn't waste a few pages going over it all, although I expounded upon my position a bit more in an AF response.
You could go on for days and days about much of this nonsense, there is no reason to require that of an examiner in order to say a prima facie case was established. Indeed, administrative procedure and efficiency requires that it not be.
While I appreciate your desire to make the examiner present the absolute best case for every single OA, this is life, not patent utopia.
"Though this seems inconsistent with your earlier statement that it's *not* a new ground when the Board comes up with a different claim construction. "
ReplyDeleteWell Karen, you're right, that is my belief on the subject, and one shared by many other examiners, and as I understand it, current policy, but it won't stop someone like yourself arguing that it is and perhaps sneaking one over on a new examiner or even proving that Boundy is correct, which he may well be.
"And in my experience, neither side makes explicit arguments about this issue. [Or about any other issue, come to think of it.]"
Yeah I doubt many people do. I try to nail down the issue in attorney terms so that when they lose they realize specifically why they lost so they won't keep modifying their argument forever and ever.
"The contrast between "matters a lot" and "really has nothing to do with the grounds" is -- umm -- striking. That's the contrast I'd like you to explain. We're seeing the same words and coming to completely different understandings -- I need to understand your view. "
It matters a lot in determining which grounds you are going to then apply. The grounds are seemingly distinct from interpreting factors determining which grounds ought be applied.
In another way of viewing it, you could say that the applicant completely controls what the construction of the claim is (by way of setting up a BRI and everything within the app, at time of filing you might say) and the examiner determines, and has control over, what grounds of rejection apply to, and are applied to, that claim, as presented previously by the applicant. The examiner has no real control over, or say in, the claim construction, only the applicant does. The examiner just calls it as he sees it has been presented at time of filing. If he makes a mistake while calling the construction of the claim, it is irrelevant to the grounds of rejection which he applied and had control over. Although, necessarily, the grounds may not be applicable if he has screwed up.
Although, what is interesting is that the applicant has this control at time of filing, but then has much less or no control afterwards.
"And I'm not saying that it's always so bad that I can't guess. Sometimes I can guess. Sometimes it is that bad. But I don't want to guess. I want the Examiner to map the claim limitations to the teachings of the reference. "
Well Karen, we'd all like to live in a patent utopia. I prefer it when someone sends me a little chart of where support for their most recent amendment might come from, but alas, only a minority do a good job, at pretty much any job.
"Then what happens, after you traverse the rejection, is the examiner actually explains in the next OA, which is made final of course, that he/she is interpreting 2 or 3 or 4 of the reference's elements in combination to correspond to one of the claimed elements, or the examiner explains that certain arbitrary portions of one element of the reference are being interpreted as corresponding to two or three of the claimed elements (which is completely improper as noted in a couple of Karen's posts)."
So what you're saying is that they usually come back and tell you exactly what you should have ciphered out yourself. I understand, it happens man.
"They know that the petition process is irreparably broken and useless to applicants, and that the appeal process, although slightly improved under Kappos, is also of very limited use to applicants given the appeal-reopen-appeal-reopen merry-go-round that is permitted over there. "
ReplyDeleteAs it should have likely been originally.
See, what you don't seem to understand is, the more you want the PTO to tighten up the rules and arbitrary nonsense you and them want to force on the labor pool, the more oversight is going to be required to ensure that those rules and arbitrary nonsense are carried out. To use another star wars quote, "the more you tighten your grip the more [rules/policy violations] will slip through your fingers". Alas, they (the PTO and courts) have overburdened the system with rules and arbitrary nonsense, and the review mechanism does not function well enough to keep up.
Now, there are two possibilities here. First, that there is a problem with the peititions/appeals process. Or second, that there is a problem with the rules and arbitrary nonsense forced upon the system.
Since we know that the petition and appeal process is functioning decently compared to years past where it was not "broken", i.e. overwhelmed, one can reasonably surmise that the problem is actually no. 2 rather than no. 1.
However, the rules and arbitrary nonsense are crucial to the issuance of your everyday modern software product negative/results/intended use posing as a method step limitation including 101/112 invalid, not even nearly enabled or described, NonUseful Art patent that the system must trundle onwards!
Bottom line, get rid of the nonsense of the last 40 years of Fed. Circ. patent jurisprudence and patent office policy and you'd see a much more efficient, respected, non-maligned, utopia like patent system.
But nobody has the political will and ability to do it.
A shame, really.
"Interviews can go a long way to prevent or mitigate this nonsense, but not all applicants can afford an interview in every application."
ReplyDeleteNot all applicants can afford 5-10 minutes of attorney time spent on their app? They may be in the wrong business, this is the sport of kings you know. Or they may simply be doing it wrong, from what you say, they're broke, they ought to be pro se. As I understand it, that's how poor people do it. If you have some other explanation, such as perhaps prosecution not needing to take place, then you're welcome to put it forward.
"The MPEP requires the examiner to provide the claim with the broadest reasonable interpretation consistent with the spec and the interpretation that would be reached by one of ordinary skill in the art, not the most ridiculous interpretation one could think of so that when the applicant challenges it, the examiner can avoid the issue by providing a new interpretation and make the rejection final. "
In that situation, who is to say that the examiner didn't have that final, great interpretation in mind from the get go?
It seems in that event you're just mad that there was a reasonable interpretation which they made final upon you that you didn't see right after the non-final. Not the examiner's problem :(
>If [the Examiner] makes a mistake while
ReplyDelete>calling the construction of the claim, it is
>irrelevant to the grounds of rejection which
>he applied and had control over. Although,
>necessarily, the grounds may not be
>applicable if he has screwed up.
Those two statements seem to be in strong tension, if not outright conflict. In my experience, the vast majority of rejections are proper *if and only if* the claim construction is proper. i.e, the party that wins on claim construction wins on the rejection too.
To pick an egregious example, consider the construction chosen by the Examiner in Ex parte Queer: “substantially rigid” reads on “elastic.” Here, the rejection was proper if and only if the claim construction was proper. The BPAI found the construction was unreasonable, and that the reference did not anticipate under the proper claim construction.
In a case like that, I don't see how you can say claim construction is irrelevant to the grounds of the rejection.
Now, that there are cases where the proper construction is narrower than the Examiner's and yet still reads on the reference. But those are unusual, at least in the appeal context.
Is it this subset of cases that you are thinking of when you say that claim construction is irrelevant to the grounds of the rejection?
"So what you're saying is that they usually come back and tell you exactly what you should have ciphered out yourself. I understand, it happens man."
ReplyDeleteYou might want to re-read, or perhaps for the first time read, Oetiker. Something about the examiner not remaining mum and harboring secret objections. Your buddy J. Plager wrote that in concurrence.
"During prosecution we have to take into account a huge number of constructions, especially in some cases. To document them all thoroughly could theoretically take 100 pages."
You've been prattling this nonsense all over the place. There are not "huge numbers" of broadest reasonable interpretations for each claim. The broadest reasonable interpretation is required to be 1) consistent with applicant's spec and 2) the interpretation that would be reached by one of ordinary skill in the art. The broadest reasonable interpretation does not include the meandering thoughts of every GS-9 who, in between internet postings, thinks, "Hur, I can interpret this rigid element of the reference as meeting the flexible element of the claim because, gee, everything has some slight amount of flexibility. Hee, hee, ain't I so clever?"
No. You're not clever. You're an idiot. Read the spec. Read the references. Make a reasonable determination of how one of ordinary skill in the art would interpret the claim. Not how some count whoring examiner looking for RCE's would interpret the claim simply to make a ridiculous rejection.
"During prosecution we have to take into account a huge number of constructions, especially in some cases. To document them all thoroughly could theoretically take 100 pages."
ReplyDeleteBTW, the fact that you wrote that you have to take into account a huge number of "constructions" verifies that you don't understand your job. Your job is not to give the claim any old construction that will suit your purposes (i.e. rejecting the claims). Your job is to give the claim its "broadest reasonable" interpretation. You left that "broadest reasonable" part out. It's actually pretty important. Your failure to understand that after what, 3 years of examining, is pretty telling.
"You might want to re-read, or perhaps for the first time read, Oetiker."
ReplyDeleteActually I thought about that one after I posted.
But, from the examiner's point of view, it is much like Karen said regarding a different topic, some things are, or seem to be, self-evident from mere perusal of a document, and it would seem that it would take an attorney willfully being blind to it to not pick up on it. Then the attorney comes back apparently clueless. Then the examiner commences to hand holding. However, from the get go it was not the intention to be "remaining mum". However, the examiner may well be able to remain mum on the claim construction, if by no other means than by simply restating the claim as the construction and acting as if there are no problematic portions, and there is nothing you can really do about that except try to prod them into recognizing a claim construction issue.
Keep in mind that not all applicants are as clueless as others. Some people may very well read those 22 nouns and understand immediately which are considered relevant to their 6 nouns in the claim. The fact that you happen to be clueless is not prima facie evidence that the examiner remained mum or otherwise did a poor job. Indeed, holding some (not a lot thank goodness) attorneys hands through technical education has been part of my job for awhile now.
"Your job is not to give the claim any old construction that will suit your purposes (i.e. rejecting the claims). Your job is to give the claim its "broadest reasonable" interpretation. "
Um, tard, the "broadest reasonable interpretation" includes several hundred interpretations many times, it is not one singular interpretation/construction. Go d, how some people make it through their day to day is amazing. After goodness knows how many years practicing your failure to understand that is more telling than my smacking you down left and right. You should go read Dawn Marie Bey's article about it. It was on PO some time ago.
And btw, we have to address the most narrow reasonable interpretation along with the broadest, and the next to narrowest, and the next to broadest. And the middlemost broad. If any of those constructions runs afoul o the law you have a problem. The only reason the broadest reasonable interpretation is special is because it is the one which is most often at issue when examiners tend to try to overly broadly interpret claims. You don't tend to see people biching and moaning about their case when the examiner applied a very narrow construction and rejected the claim. At least you don't see them biching about the breadth of the claim construction.
"You left that "broadest reasonable" part out. "
I don't have to say it every single time tard. Again, how some people make it through their day to day is simply astounding. Do you tell yourself "breathe in, breathe out" every second of your life?
"In my experience, the vast majority of rejections are proper *if and only if* the claim construction is proper."
ReplyDeleteI didn't say that it would not usually be a problem if the construction was off, in fact I would go so far as to say that it likely is usually a problem. But it isn't always, as you saw in that case where the board added insult to your injury. And I personally make rejections many times where there are many claim constructions which I consider very reasonable that are fully able to be properly rejected by my grounds. I do not, of late at any rate, usually have to go out on a limb claim construction wise to make a rejection. But as I understand it that isn't usually the case in the office as a whole.
"The BPAI found the construction was unreasonable, and that the reference did not anticipate under the proper claim construction. "
Note how the board first addressed claim construction and then addressed the grounds of the rejection (anticipation over some reference applied in some specific way). See the difference?
"In a case like that, I don't see how you can say claim construction is irrelevant to the grounds of the rejection."
I do not mean to say that the later cannot be changed by the former. Certainly it can. But they are distinct entities. I do not mean that claim construction is irrelevant to an overall finding that the grounds of rejection were properly applied and the claim is properly rejected. That claim construction is very relevant to. I merely mean that claim construction and grounds of rejection are distinct entities and that the one does not directly affect the other.
"Is it this subset of cases that you are thinking of when you say that claim construction is irrelevant to the grounds of the rejection? "
Sure I think of those, as they are proof in the pudding shall we say. But, I think of all cases, predetermination by the board when considering if the claim construction is relevant to the grounds of rejection or vice versa. Claim construction is relevant to determining if the grounds were properly applied, but they are not relevant to what the grounds are (save to the examiner/defendant formulating the rejection/defense, to whom they will be very relevant since they want the grounds to be determined to have been properly applied in the end).
"Um, tard, the 'broadest reasonable interpretation' includes several hundred interpretations many times, it is not one singular interpretation/construction. Go d, how some people make it through their day to day is amazing. After goodness knows how many years practicing your failure to understand that is more telling than my smacking you down left and right. You should go read Dawn Marie Bey's article about it. It was on PO some time ago."
ReplyDeleteGood golly you are dumb. Is English your native language?
Ms. Bey's article, which is excellent by the way, acknowledges that there is a range of reasonable interpretations. But here's a little English lesson for you, the word "broadest" is what is known as a superlative. That means that although there may be "hundreds" of "reasonable interpretations" there are not hundreds of the "broadest reasonable interpretations." There is one. Okay, maybe I'll give you two if you insist on being dense and/or playing your let-me-hide-the-ball-until-I-can-show-you-how-clever-I-am-in-a-final-rejection-that-requires-an-RCE-to-get-me-to-do-my-job-correctly game.
"And btw, we have to address the most narrow reasonable interpretation along with the broadest, and the next to narrowest, and the next to broadest. And the middlemost broad."
ReplyDeleteMissed this display of ginormous ignorance.
Got a statutory cite, rule, case, MPEP section for that bit of nonsense?
You do not have to address the most narrow reasonable interpretation, or any other interpretation that is narrower than the BROADEST reasonable interpretation. That's the whole point of the BRI scheme.
>[Examiners] do not have to address the most
ReplyDelete>narrow reasonable interpretation, or any
>other interpretation that is narrower than
>the BROADEST reasonable interpretation.
Amen to that.
In fact, Examiners are clearly supposed to use exactly one interpretation: broadest reasonable. Surely we can all agree that the law is clear on this basic point, e.g. “During examination, claims ... are to be given their broadest reasonable interpretation ...” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004.
The MPEP doesn't seem to require the Examiners to make this BRI *explicit* so it doesn't surprise me that Examiners don't bother. The MPEP is, after all, the Examiner's rulebook.
But "Examiners don't make claim construction explicit because they don't have to" is a far cry from saying "Examiner's don't because the virtual limitless number of possible reasonable constructions makes this too much of a burden." There is no such burden, because the law says you're not supposed to do this in the first place. You're supposed to deal with one construction: the BRI.
"Surely we can all agree that the law is clear on this basic point"
ReplyDeleteYes, we can. At least those of us that understand the law.
I can't speak for the willfully, invincibly, gleefully, triumphantly ignorant that unfortunately never tire of parading their ignorance around on this site, and far too many other sites.
">recent BPAI decision in 11/279,976 for a beat >down over [Examiner's] broadest unreasonable >interpretation.
ReplyDeleteThanks for the tip. I'll take a look."
Karen, you really should do an entire post on this case. Allowed by a primary examiner. An IDS was submitted prior to the FAOM. The examiner considered all of the references.
The application was allowed in response to a response to the FAOM. The primary examiner who allowed the application was fired as part of relentless campaign by the SPE for actually being reasonable.
So the issue fee is paid and the SPE gets the application withdrawn from issue in order to apply a reference from the IDS against the claims as anticipatory. The reference was never applied previously. The app is assigned to a junior examiner who issues an OA.
The applicant never amends the claims, and appeals. The rejections are reversed by the BPAI as being based on an unreasonable claim interpretation.
Everybody involved in this case needs to be fired, but most certainly the SPE who had it withdrawn from issue, the worthless and useless TC Director who signed off on the withdrawal from issue, and the idiot QAS who sat in the appeal conference and green lighted the piece of garbage rejections for appeal.
Truly disgraceful.