Details:
Ex parte Gray
Appeal 2009002038; Appl. No. 10/798,541; Tech. Center 3700
Decided October 24, 2010
A representative claim on appeal read:
2. A shaving razor comprising
a housing having a primary guard at a front of said housing and a primary cap at an upper surface at a back of said housing, one or more primary shaving blades between said primary guard and said primary cap,
a trimming blade mounted at the back of said housing having a trimming blade cutting edge oriented away from said upper surface, and
an elongated handle having a first end secured to said housing,
said handle having a finger pad at said first end on the same side as said primary blades.
During prosecution, the Examiner rejected the claims as anticipated by a patent to Rozenkranc. The assignee of Rozenkranc also owned the application, a fact that would become pertinent later. With respect to Rosenkranc's disclosure of the claimed location of the finger pad, the Examiner provided this annotated figure:
The Applicant argued this limitation by making an analogy:
The finger pad is placed closer to one end of the handle versus the other. one were to place a football on the 45 yard line of a football field one would not say that the football is placed at one end of the field.
The same can be said for the alleged finger pad of Rozenkranc. The finger pad is positioned in the middle of the handle and not at the first end. Thus, even if there is a finger pad in the area indicated by the Examiner, this cannot fairly be construed to be positioned "at the first end" of the handle.
The Examiner maintained the rejection, but changed the interpretation of the reference to include new information about the dimensions. In doing so, the Examiner accused the Applicant of mischaracterizing the commonly-owned Rozenkranc reference:
[T]he handle of Rozenkranc is a Gillette Mach 3 razor handle, and is not drawn to scale. I have personally measured a Gillette Mach 3 Handle, and the finger pad (as you, Gillette should know) starts much closer to the terminus having the primary blades than 45% as you continually allege. It is at the 20% mark that the finger-pad begins, which is unquestionably "at a first end" thereof. Your argument that the pad begins at the 45 yard line is misleading, and not in good faith.
The Applicant went to appeal, but did not address the Examiner's comment in the Appeal Brief. The Applicant did, however, contest the Examiner's finding in the Reply Brief:
First, the Office asserts that the handle of Rozenkranc is a Gillette Mach 3 razor handle. The Applicant, Gillette, has no idea where this notion came from but it is factually incorrect. Second, the position taken by the Office that the middle of an object constitutes an end is unreasonable.
The Board agreed with the Applicant, finding that the Examiner's interpretation of "end" to read on the middle was unreasonable. The Board also drew attention, in a footnote, to the Examiner's unsupported findings about the Mach 3 razor:
3 The Examiner notes in the Answer that he had stated previously in the Final Office Action of July 9, 2007, that the handle of Rozenkranc is a Gillette Mach 3 razor handle, and that he personally measured such a handle and found that the finger pad starts at the 20% mark from the terminus of the handle. Ans. 22. The Examiner fails to provide any basis for the assertion that the Rozenkranc handle is a Gillette Mach 3 razor handle, and Appellants deny the accuracy of this assertion. Reply Br. 1.My two cents: When an Examiner makes a finding that relies on personal knowledge – as was clearly the case here – the rules require a "personal knowledge" affidavit under § 1.104. Here, the Examiner could easily attest to the measurements of a Mach 3 razor, but that alone wouldn't be evidence that the Rozenkranc reference described a Mach 3.
Here, the Applicant didn't ask for an affidavit, but instead specifically denied of the allegation. Should the Applicant have asked for an affidavit? Since the rule makes a requirement of the Examiner, not the Applicant, I don't see that the Applicant gave up anything by not asking.
On the other hand, this case caught my eye because it's one of the few I've seen where a personal knowledge affidavit really does apply. Applicants often ask for one in situations where it doesn't apply: statements that are really about Official Notice or an allegation of something being well known. (See my post Examiner affidavit of personal knowledge for a discussion of this misstep.) So I thought it was a little weird that in the one instance that seemed to cry out for a personal knowledge affidavit, the Applicant didn't ask for one.
What about the Applicant specifically denying, in the Appeal Brief, the Examiner's allegation as "factually incorrect"? Did the Applicant investigate the commonly owned Rozenkranc patent and make a determination that Rozenkranc did not describe a Mach 3 razor? If not, was it a bad idea to put this specific denial in the record? And if the Applicant did make such a determination about its commonly owned patent, was it a good idea to put that determination in the record? Did the Applicant come close to admitting that Rozenkranc doesn't cover a Mach 3 razor?
As you can see, this case turned out – as many do – to be mostly about claim interpretation. I'll discuss the claim construction issue in more detail in a future post.
Seems like the Examiner or the applicant would have actually cited the Mach 3 razor at some point (assuming it is prior art). Took a quick look at this case and, for the curious, it looks like the Examiner won many of his other arguments and the case went abandoned.
ReplyDelete>Examiner or the applicant would have >actually cited Mach 3 razor at some point >(assuming it is prior art).
ReplyDeleteYeah, but that's much harder to do, right? The Examiner can't just go out and buy a Mach 3 when he's writing up the OA, because the app was filed years earlier. The Examiner must show that the Mach 3 was sold before the [effective] filing date. Not impossible, but the Examiner has much easier ways to find prior art.
Now, I can see an opponent in reexam or litigation going to this extra effort. And maybe the fact that the Examiner brought up the Mach 3 is a flag telling opponents that the Mach 3 is an avenue worth pursuing.
Truly disappointing that a practitioner didn't know how to properly traverse this nonsense from the examiner. Please go chase ambulances.
ReplyDelete>how to properly traverse this nonsense from
ReplyDelete>the examiner
Are you implying there is one proper traversal? Would the proper traversal be to request an affidavit?
The proper traversal is: The examiner alleges that the handle of Rozenkranc is a Gillette Mach 3 razor handle. The examiner presents zero substantial evidence in support of this allegation.
ReplyDeleteI never call the garbage examiners spew into Office Actions "findings" as they are almost always nothing more than conclusory nonsense.
As for this little shot from the examiner, "Your argument that the pad begins at the 45 yard line is misleading, and not in good faith." I would have been on the phone with Mr. Kappos about 2 seconds after reading that.
I agree with you about requesting an affidavit.
But denying some ridiculous conclusory statement from the examiner? What was this guy thinking? The response to the examiner's conclusion that the reference shows a Mach 3 razor is not "No it doesn't" it is "Prove it." And then "And then prove that even if it is, the Mach 3 razor is prior art to the application."
Sheesh.
The burden is on the examiner, and remains on the examiner for the entire prosecution of the application. Any practitioner who doesn't know that, understand that, and keep that in mind at all times, and then force the examiners to meet their burden every single time, is incompetent.
The amount of conclusory garbage I see examiners getting away with that remains unchallenged by practitioners is absolutely depressing.
"Did the Applicant come close to admitting that Rozenkranc doesn't cover a Mach 3 razor?"
ReplyDeleteWell, what patent numbers are marked on the Mach 3 packaging? Is the Rozenkranc among them?
>what patent numbers are marked on the
ReplyDelete>Mach3 packaging?
Dunno. You're suggesting the answer to that question is relevant, but you didn't say why.
What if the Mach 3 is marked with Rosenkranz ... does that negate the impact of the statement in the Appeal Brief?
What if the Mach 3 is not so marked? Does that make the Appeal Brief statement more significant?
Or is the Appeal Brief statement not damaging at all, regardless of marking/not marking?
"You're suggesting the answer to that question is relevant, but you didn't say why."
ReplyDeleteWell, the purpose of marking is to put people on notice what patents cover the product. The lack of the Rosenkranz patent number might be an indication that Rosenkranz does not cover the Mach 3. I say might because Rosenkranz may actually cover the Mach 3 but it is up to Gillette to decide if that is an argument they want to avoid marking or put on the record.
Why didn't he just make a 103? Seriously?
ReplyDelete"Should the Applicant have asked for an affidavit? "
That depends, would they like an affidavit on the record of a fact about a product that they themselves manufacture and is easily seen in any grocery store? If the answer is yes, then yes, if the answer is no, then no.
On the other hand, the examiner could have simply taken official notice of the fact and left it to the applicant to deny the factual situation as not being well known. Honestly, sometimes examiners are too quick to rely on personal knowledge rather than things commonly known.
"So I thought it was a little weird that in the one instance that seemed to cry out for a personal knowledge affidavit, the Applicant didn't ask for one. "
It shouldn't strike you as all that odd as even most takings of official notice no longer even draw the old asking for an affidavit in my cases. And it especially shouldn't seem that odd since they attacked the allegation about the razor in the ref being a Mach 3. Cut the rejection off at the source, don't just swing around wildly like a tard trying to overcome the rejection.
"What about the Applicant specifically denying, in the Appeal Brief, the Examiner's allegation as "factually incorrect"? Did the Applicant investigate the commonly owned Rozenkranc patent and make a determination that Rozenkranc did not describe a Mach 3 razor? If not, was it a bad idea to put this specific denial in the record? And if the Applicant did make such a determination about its commonly owned patent, was it a good idea to put that determination in the record? Did the Applicant come close to admitting that Rozenkranc doesn't cover a Mach 3 razor?"
1. What about it?
2. Probably not, nor did they need to.
3. No.
4. See answer 2 above.
5. No.
About the claim construction I do not know because I did not see because I did not read the whole decision. But the examiner's mistakes were pretty easy to spot in re the Mach 3 thing.
"Seems like the Examiner or the applicant would have actually cited the Mach 3 razor at some point (assuming it is prior art). Took a quick look at this case and, for the curious, it looks like the Examiner won many of his other arguments and the case went abandoned."
Lulz. All this hullabaloo over a throw away rejection.
"The examiner presents zero substantial evidence in support of this allegation. "
That is true, that is the correct response.
""Your argument that the pad begins at the 45 yard line is misleading, and not in good faith." I would have been on the phone with Mr. Kappos about 2 seconds after reading that."
And Mr. Kappos would have loled and told you that the argument was not in good faith. And then I'd lol too.
"The burden is on the examiner, and remains on the examiner for the entire prosecution of the application"
Although we're happy to hand it off to unsuspecting attorneytards anytime they don't mind carrying it. And they've become quite accustomed to carrying the burden around, they're quite strong when it comes to that.
lol. I jest.
"On the other hand, the examiner could have simply taken official notice of the fact and left it to the applicant to deny the factual situation as not being well known."
ReplyDeleteYou still have no understanding of evidence and facts.
>examiner could have simply taken official
ReplyDelete>notice of the fact
The "fact" at issue in the case was "FIG. 2 in the Rosenkranz reference depicts a Mach 3 razor". This fact comes nowhere close to the type appropriate for O.N., ie, one capable of instant demonstration.
Maybe you're suggesting O.N. of a different fact: a razor existed at the time of filing with finger pads located 20% away from the end of the handle. That one isn't capable of instant demonstration either.
"Maybe you're suggesting O.N. of a different fact: a razor existed at the time of filing with finger pads located 20% away from the end of the handle. That one isn't capable of instant demonstration either."
DeleteWell if it isn't then he cannot. It isn't my art IDK wtf is known in that art.
Although I do know I owned one of these:
http://en.wikipedia.org/wiki/Gillette_Mach3
In 1998-2000 or thereabouts and I was rather thankful that the selective service was kind enough to buy me one of the newest razors available at the time in exchange for me stating I was ready to go die for country. Indeed I still have that razor.
Looking at the picture... 20%? Meh idk. It depends on whether you consider the "feathering" on the fingergaurds to be considered and whether the little "gillette" symbol is considered a "finger pad". I know I've padded my fingers on it before.
In any event, if it wasn't known then of course he cannot. That is a determination for him to make and for the applicant to call him out on if he is wrong.
>Although I do know I owned
Delete>one of these:
>http://en.wikipedia.org/wiki/Gillette_Mach3
>In 1998-2000
Well, that's personal knowledge, not an indication that something is appropriate for O.N.
But here's the thing ... I'll buy that you remember you owned a Mach 3 in 1998. So maybe I wouldn't contest an Examiner affidavit to that effect. But I don't buy that you remember that the finger pads on that razor from 1998 were located 20% from the end of the handle. So I would probably argue the credibility of an Examiner affidavit that made that more specific statement.
>Looking at the picture... 20%?
>Meh idk.
Even if the picture from Wikipedia was of sufficient size and detail, that's not enough. Not because I think Wikipedia is untrustworthy because it's not peer-reviewed.
But rather because the Mach 3 may have gone through any number of design changes in it's lifetime. So we have no idea whether the particular Mach 3 depicted in Wikipedia is or is not prior art.
*If* we knew that the Mach 3 stopped production before the filing date of the app, then maybe we can infer all versions of a Mach 3 are prior art, regardless of what version is in the picture.
"That is a determination for him to make and for the applicant to call him out on if he is wrong."
DeleteMaking a "determination" on the basis of zero evidence is the stock and trade of the examinertard.
Except I'm also "personally knowledgable" of the fact that it was commonly knowledge that they were for sale as all my buddies got one too except for a few that didn't register for SS and who had to buy their own.
DeleteBut regardless, in re your other comment, yes, it is beyond lolable to argue about such things. Thankfully I rarely have to deal with idiots such as yourself and others in my arts.
" But I don't buy that you remember that the finger pads on that razor from 1998 were located 20% from the end of the handle. "
I STILL OWN THE RAZOR. I HAVE IT IN MY APT. Jes us. What is to "remember"? I can look at it.
As to the 20%, you leave that OUT of the official notice Karen. The examiner takes official notice that the mach 3 razor itself was on sale, you need make no mention of any 20% nonsense in the actual facts introduced to the record. If the attorney thinks the Mach 3 does not show 20% then they may thus argue.
Also note that I believe in this case the examiner was stating that the little mach 3 decal area was a finger pad as opposed to only the designated finger pads being finger pads.
"But rather because the Mach 3 may have gone through any number of design changes in it's lifetime. "
Which is why you can look up one of their commercials, or I would if I wasn't on such a tight youtube leash atm.
"So we have no idea whether the particular Mach 3 depicted in Wikipedia is or is not prior art. "
Except it happens to be the one in the commercials, the one in my bathroom, and the one that is still for sale in your local drugstore, depicted in many many patents etc. etc. on for eternity enough "evidence" to convince even the most tarded of jurors of the fact that the rozenkrack ref was showing a mach 3 (aka the most popular razor at the time rozenkrack filed).
Like I said, what you attorneytards will argue is most lolable. And as much as I'd love to sit and lol @ u all day, I need a counterdoodle today.
Karen, you're wasting your time with 6tard. He's still laboring under the delusion that he can establish facts simply by typing nonsense into an Office Action. He thinks it's a "fact" because "it's a statement by a government official on the record."
ReplyDeleteHe doesn't understand evidence. He doesn't understand anything about the burden of production and the burden of persuasion. His ignorance of administrative law is common to almost all examiners, but in his case his ignorance is far more destructive to the process because he thinks he actually does know something. In fact, he's certain he does. Of course, he does not, as demonstrated by just about every single post he makes here and elsewhere.
The enemy of knowledge isn't ignorance, it's certainty. Nobody typifies that like 6tard.
"He doesn't understand evidence. He doesn't understand anything about the burden of production and the burden of persuasion."
DeleteWillfully ignoring things doesn't mean you don't understand them.
Willful, gleeful, invincible ignorance is the hallmark of the examinertard.
DeleteIndeed so.
Delete(lol)
"Well, what patent numbers are marked on the Mach 3 packaging? Is the Rozenkranc among them?"
ReplyDeleteThat doesn't establish that the Mach 3 razor that the examiner "measured" is prior art to the application. Marking a device with a patent number is zero evidence that the device was disclosed, known, used, offered for sale, sold, etc. before the filing date.
Is it possible to graduate from law school without taking a course in evidence?
>>"Well, what patent numbers are marked on >>Mach 3? Is Rozenkranc among them?"
Delete>That doesn't establish that the Mach 3 razor
>the examiner "measured" is prior art to
>the application.
To be fair to the poster that asked "what patent numbers", his question was directed to *my* question about the impact of Applicant's statement (Rozenkranz is not the Mach 3), rather than to whether or not the Mach 3 is prior art.
Have you ever looked at the patent markings on any of Gillette's packaging? There's like 20+ patent numbers. Same with lots of other companies and lots of other products.
ReplyDeleteIn this case, even if the Rozenkranz patent number is/was listed on the Mach 3 packaging, that's not evidence that every dimension of the Mach 3 corresponds to every unlabelled dimension of the Rozenkranz patent, or that the Mach 3 includes every feature disclosed in the Rozenkranz patent. And again, there's ZERO evidence that the commercial embodiment of the Mach 3 is prior art to the application.
Absolutely terrible advocacy by the applicant's in-house rep. Sh!tty examination like this needs to be thoroughly, and correctly, traversed. Unfortunately, when sh!tty advocacy like this winds up in the case going abandoned, the examinertards and the SPEtards and the QAStards all come away with the impression that they did record breaking outstanding quality work. That outcome is even worse than having the application go abandoned.
>Have you ever looked at the patent markings
Delete>on any of Gillette's packaging? There's like
>20+ patent numbers.
To me, the question of patent marking is relevant only to the statement made by the *Applicant* (paraphrased) that Rosenkranz is not a Mach 3.
I don't think anyone [on the record or in this thread] suggested that marking of a product is relevant to determining whether or not the product is prior art.
>And again, there's ZERO evidence that the
>commercial embodiment of the Mach 3 is >prior art to the application.
Agreed. And it would have been smart for the Applicant to make exactly that argument.
From the examiner's LinkedIn profile:
ReplyDelete"I am a Mechanical Engineer with extensive training in patent law. I have had more than five years of intense training and experience dealing with all aspects of patent law while at the U.S. Patent and Trademark Office."
Extensive training? By whom? The PTO? Lulz and lulz and lulz ad infinitum.
All aspects of patent law? So sections 102, 103, and 112 are all there is to patent law?
Yet another "I'm not an attorney, but I play one at the PTO" examiner.
Good grief.
Actually, looking at the reference:
ReplyDelete6,276,061
http://www.google.com/patents?id=zwoHAAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false
One can understand why the examiner said it was a mach 3.
http://en.wikipedia.org/wiki/Gillette_Mach3
Nearly every single piece, if not every single piece, of the Mach 3 is illustrated in the patent. Down to the smallest dimensions. It even appears depicted more or less exactly to scale.
If you want a reference showing the product being offered for sale it is easy to google their commercials, they're on the youtube and show the product as in the wiki.
In any event, I will leave it up to you tards to decide if there is enough evidencelol just shown in about 5 minutes and the Rozenkranc
patent illustrates a Mach 3 down to the tiniest detail. Or, if you prefer, he illustrates a Mach 3 with a small modification to assist in sideburn shaving by putting in a new "trim" blade 13.
You attorneytards, always good for a lol. If you dumarses want to give people a patent on something old then you need to come work at the office so you can personally hand them their patent on the old thing because there "isn't enough evidence" that the razor drawn in the picture is an exact replica of the device irl with one extra blade. Or get on the board, and do as this tard-board did. Or maybe this board simply didn't have a picture of a Mach 3 handy and thus were totally clueless.
>Nearly every single piece, if not
Delete>every single piece, of the Mach 3 is
>illustrated in the patent. Down to
>the smallest dimensions. It even
>appears depicted more or less exactly
>to scale.
The Examiner in the case specifically disagreed with you here.
In fact that's where all this started ...
o The Applicant said "reference doesn't show finger pads at the end, but in the middle"
o Examiner responded with "nah, the drawings in the patent are incorrect, the patent is really a Mach 3, and in a Mach 3 the pads are at the end not the middle."
>because there "isn't enough
Delete>evidence" that the razor drawn in
>the picture is an exact replica of
>the device irl with one extra blade.
I get the feeling you're suggesting that it's just silly for attorneys to argue about little things like whether or not there is enough evidence, or whether the evidence is really evidence.
To the contrary, I see arguing about these little things as a big part of an attorney's job.
"Or get on the board,..."
DeleteGetting paid to reverse examinertards has to be the easiest, sweetest money ever made. Writing 60 decisions a year? What would I do with the other 364 days?
Chase ambulances?
DeleteDoes the PTO allow moonlighting?
DeleteIdk
Delete"The Examiner in the case specifically disagreed with you here. "
DeleteYeah I know karen, I chalk it up to him being a tard. Which, in fact was where this all started. The rejection that needed to be made was ez to make, he just didn't feel like doing it.
"In any event, I will leave it up to you tards to decide if there is enough evidencelol..."
ReplyDeleteThat's kind of the examinertard's job to do before sending out a rejection. But as none of you understand evidence, what it is, how to evaluate it, etc., I guess we have to do your job for you. Thankfully we're making 10 times what they pay you, so I guess we can manage, although it would be nice to get paid for doing absolutely nothing like you.
"I guess we have to do your job for you. Thankfully we're making 10 times what they pay you, "
ReplyDeleteYou make 800k+? Be honest.
You make $80k? Not bad for doing nothing.
DeleteNow that I know what you make, if I was being honest I would say it's more like 12+ times.
LOL
Meh, idk, thereabouts. And yeah, it's not bad for "doing nothing".
Delete"I guess we have to do your job for you. "
ReplyDeleteSee, I told you they were strong at carrying the burden. They really don't mind most of the time.
Unfortunately, I have to agree. I can't stand these practitioners who think they have to "prove" their claims are patentable. Total idiots. Make it so much harder for those of us who know what we're doing.
DeleteAs for attorneys carrying the burden-- office actions are often easy to prove wrong. It doesn't take much time to clip and paste text into a response, increasing the likelihood of allowance and making it look to a jury like there was a substantive exchange between applicants and the Examiner.
DeleteBald "you can't prove it" assertions often sound like the kid in elementary school that no one liked. They leave open the possibility that the rejection was substantively proper but failed on procedural grounds.
LOL. You must be an examiner.
DeleteNobody is suggesting that applicant's response should be, "You can't prove my claims are unpatentable."
I've been practicing for 13 years and have yet to see a rejection that was "substantively proper but failed on procedural grounds." The examiner either meets his/her burden or not.
As for "bald assertions" I also never suggested that such are a proper response. Rule 111 requires that applicant point out the errors in the rejection/objection. That's what should be done.
What I'm talking about is garbage rejections like, "The reference doesn't disclose feature X, but applicant hasn't explained or presented any evidence as to why feature X is critical, therefore it's obvious" and then reading responses from supposedly competent practitioners going on for pages as to why feature X is critical. Or rejections like, "The reference doesn't disclose feature X, but it was held in In re BoilerplatecaselawfromtheMPEPthatthe examinersneverreadandwillneverreadandwouldn'tunderstanditifhe/shedidreadit that feature X is obvious" and then reading page after page of why the "benefits and advantages that lie at the heart of novelty of the claimed invention" render feature X non-obvious.
Responses like that suck. Practitioners that respond like that suck. They should find another line of work.
To begin with-- I'm not an examiner.
DeleteSecondly, a response that says "You haven't proven my claims are unpatentable" is indeed an acceptable Rule 111 response. The deficiency is that the Examiner hasn't carried the burden.
That said, when it comes to enforcing a patent, it is in your client's best interest to make the examiner-- and the exchange with the examiner-- look as professional and complete as possible. The real problem with incompetent examiners isn't that it makes our lives as prosecutors more difficult. Rather, incompetent examiners makes the patents that we get for our clients less valuable.
As for the "responses that suck" that you point out-- yes-- they are extreme examples-- but not the only ways that the prosecuting attorney effectively carries the burden of proof.
This comment has been removed by a blog administrator.
ReplyDeleteTo begin with-- I'm not an examiner.
ReplyDeleteSecondly, a response that says "You haven't proven my claims are unpatentable" is indeed an acceptable Rule 111 response. The deficiency is that the Examiner hasn't carried the burden.
That said, when it comes to enforcing a patent, it is in your client's best interest to make the examiner-- and the exchange with the examiner-- look as professional and complete as possible. The real problem with incompetent examiners isn't that it makes our lives as prosecutors more difficult. Rather, incompetent examiners makes the patents that we get for our clients less valuable.
As for the "responses that suck" that you point out-- yes-- they are extreme examples-- but not the only ways that the prosecuting attorney effectively carries the burden of proof.
"Rather, incompetent examiners makes the patents that we get for our clients less valuable."
ReplyDeleteAgree 100%.
"yes-- they are extreme examples..."
They may be extreme, but I see them fairly often. I'm simply amazed at the number of practitioners that don't know how to traverse garbage rejections like "design choice" and "lack of criticality" and those based on boilerplate case law. It's depressing.