Friday, August 10, 2012

BPAI provides concise summary of how to rebut an Examiner's claim interpretation

Takeaway:  In an appeal involving a cartridge for caulking compound, the main issue was the meaning of of the term "punch" in claim limitations such as “punching an opening in the tubular container.” The BPAI explained that the Applicant's mere assertion that claim language did not encompass the teaching of the reference was not sufficient to rebut the Examiner's interpretation. To rebut, an Applicant should point to "precise meaning" in the specification, to a dictionary definition, or to a statement by a POSITA. (Ex parte Longo, BPAI 2012.)

Details:

Ex parte Longo
Appeal 2009014183; Appl. No. 11/328,537; Tech. Center 3700
Decided:  May 23, 2012

The subject matter on appeal was a cartridge for caulking compound. The main issue on appeal was the meaning of the term "punch" in claim limitations such as “punching an opening in the tubular container.”

For the "punching" limitations, the Examiner relied on a reference teaching of a "rapidly actuatable tool for making cuts" which "deforms the cylinder wall to form catches 17 as it cuts." The Applicant argued that the cutting described in the reference was not the same as punching.

The Board presented a dictionary definition ("to cut, stamp, pierce, perforate, form, or drive with a tool or machine that punches") to show that the Examiner's interpretation (punching" includes "cutting") was reasonable. The Board found that the Examiner's interpretation was "essentially unrebutted" by the Applicant.

Appellant, however, points to no specific wording in the specification that shows a precise meaning given to the term “punching” or to any related terms such as “punch” that would amount to interpretive guidance. Appellant also fails to provide support for this argument by pointing to any type of general purpose or technical dictionary as interpretive guidance that punching would not encompass the cutting performed in van Manen, nor does Appellant state that this is a term of art known to those of ordinary skill to exclude van Manen’s cutting. Appellant merely provides attorney argument against the Examiner’s interpretation with nothing further. 
Based on this claim interpretation, the Board affirmed the prior art rejections of the independent claims.


My two cents: I picked this decision not because it was controversial in any way, but because it included a clear and concise statement of what the Board is looking for in an argument about claim construction. A mere assertion in the Appeal Brief that a widget is not a blodget probably won't be convincing. Instead, you should refer to a "precise meaning" in the spec, to a dictionary definition, or to a statement by a expert about what the term means to a hypothetical POSITA.

On this last point, the Board's phrasing suggests that an Applicant statement in the Brief about what the term means to a hypothetical POSITA would be sufficient. However, other decisions I've read suggest instead that you need evidence. This evidence can take the form of another reference that uses the term, or a § 1.132 declaration from a person of ordinary skill in the art about the meaning of the term.

158 comments:

  1. Obviously how it should be done, but attorneylols will qq along the lines of "but that's too hard!" "the pto should know all of this automatically and magically and if they don't they should take our self-interested assertions at face value!".

    ReplyDelete
  2. Examiners find it too hard to make a determination of ordinary skill in the art and the PTO, for decades, has given them a pass.

    The burden is on the Examiner to determine the skill level and then explain why the Examiner's interpretation is in line with the skill level determination.

    ReplyDelete
  3. I have to quibble with the suggestion to take a "statement" or a "declaration" from a POSITA, which does not come from the opinion. A POSITA is a hypothetical person referenced in the statute. You could, however, get an expert declaration, addressing supporting evidence, to establish what a term means to the hypothetical POSITA.

    ReplyDelete
    Replies
    1. >quibble with the suggestion to take a
      >"statement" or a "declaration" from a
      >POSITA,

      Fair enough. I revised the post so the distinction between hypothetical and actual is clear.

      Delete
  4. "Examiners find it too hard to make a determination of ordinary skill in the art and the PTO, for decades, has given them a pass."

    And it always will. Because the "determination of ordinary skill" is implicit in the prior art found unless it is some weird prior art being used.

    I know you have a hard time getting your mind around the fact that it doesn't have to be made explicit.

    ReplyDelete
  5. "Because the "determination of ordinary skill" is implicit in the prior art found unless it is some weird prior art being used."

    I'm sure you meant to cite the MPEP provision that supports that position but you are correct to the extent that you re-state the bogus excuse the PTO uses to avoid determining skill level. Do you even know why the PTO takes this position or the case law the PTO claims supports this position?

    I know your have a hard time getting your mind around the fact that the determination doesn't have to be made explicit but the PTO still needs to set forth findings of fact explaining why the determination need not have been explicit.

    ReplyDelete
  6. A few points to remember.

    1) the burden of proof ALWAYS rests with the USPTO
    2) examiners RARELY give explicit claim constructions
    3) the BPAI will bend over backwards to affirm any claim construction (explicit or not) by the Examiner (oftentimes in contradiction to point 1)

    From my experience, a great percentage of disagreements between applicant and examiner involve a claim construction issue even in situations where it is not apparent. For example, an examiner may cite to paragraph [0010] as teaching "performing X using Z." However, paragraph [0010] only teaches "performing X using G." You may argue that paragraph [0010] does not teach all of the limitations, but you also need to consider that the Examiner is likely construing G=Z and address that issue as well.

    Although the BPAI was affirmed in this decision, In re Jung is a good starting place. If you think that you may be facing a claim construction issue, ask the examiner for an explicit claim construction and/or an explicit identification of the alleged feature corresponding to whatever claim element you are discussing.

    Regardless of whether or not the Examiner gives you that explicit construction of explicit identification of the alleged corresponding feature, you need to present evidence to support your claim construction. Dictionary definitions work (i.e., extrinsic evidence). You can also discuss the meaning of the claim language in view of how it is used in the claim and/or the specification (i.e., intrinsic evidence). If you are going to argue that the Examiner's claim construction is inconsistent with the specification, you need to EXPLAIN why (I've seen that argument made many times without the explanation – it they always fail).

    As a general observation, both examiners and attorneys are lazy. I've seen too many office actions/responses to office actions that have been produced with the barest amount of analysis. Although prosecution is ostensibly "ex parte," it is not. The examiner is not looking to work with you to draw that line between what is unpatentable and what is patentable – instead, the examiner is looking to reject your claims as expediently as possible. As such, to be successful, you have to outwork your opponent. Few examiners will present an explicit claim construction and few still will actually provide support for their claim construction. Thus, if you provide both the claim construction (and supporting analysis), you are in better shape.

    Karen and I had this discussion a little while back when she stated that certain clients do not like to have claim constructions on the record. I know the reason why for that practice, but that practice will cost allowances over the long run. Just as an example, one of the BPAI decisions cited in the Bilski brief to SCOTUS had the claim construction of a "server" being "one who serves" (this claim construction was apparently newly presented by the BPAI) and encompassed, e.g., waiters and waitresses. However, the claim was clearly directed to a computer server. However, this claim interpretation was put forth by the BPAI to support a 101 rejection on a machine claim.

    In short, the BPAI will screw you on claim construction issues unless you present evidence to support your claim construction.

    ReplyDelete
    Replies
    1. >BPAI will bend over backwards to
      >affirm any claim construction
      >(explicit or not) by the Examiner
      >(oftentimes in contradiction to
      >point 1)

      Amen to that.

      >great percentage of disagreements
      >between applicant and examiner involve
      >a claim construction issue even in
      >situations where it is not apparent.

      Absolutely. I've made this point repeatedly in my posts. In fact, it's the single most important point that I hope to get across to practitioners.

      Thanks, anon, for making the point even more explicit, and for expanding upon it.

      >In re Jung is a good starting place.
      >[for telling the Examiner you want an
      >explicit claim construction]

      I wish this was the case, but I have to disagree. In Jung, the Examiner's statements did put the Applicant on notice as to how the Examiner was reading "well-charge-level controller". So lack of understanding of the Examiner's claim construction wasn't even a real issue in Jung. (Making Jung a terrible case to appeal on this important issue.}

      I'm not aware of any way you can procedurally *force* the Examiner into putting claim construction on record. But making the issue explicit in your arguments is a good start, and I find a fair number of Examiners do explain how they're interpreting a term once I do this.

      Delete
    2. "I wish this was the case, but I have to disagree. In Jung, the Examiner's statements did put the Applicant on notice as to how the Examiner was reading "well-charge-level controller". So lack of understanding of the Examiner's claim construction wasn't even a real issue in Jung."

      I disagree with your disagreement. You can still cite In re Jung. How you do it is contract what the xxaminer did within In re Jung to what the examiner is doing within your application. Odds are that your examiner did not do the same. Hence, you can point to the BPAI how the examiner's analysis did not raise to the level of analysis approved by the Federal Circuit within Jung.

      "I'm not aware of any way you can procedurally *force* the Examiner into putting claim construction on record."
      There is no procedural way to force the Examiner to do anything. However, you can explicitly request a claim construction, and if you go to the BPAI without the examiner ever providing you with that claim construction, it'll certainly put the examiner's analysis in a bad light.

      Delete
    3. >point to the BPAI how the examiner's
      >analysis did not raise to the level
      >of analysis approved by the Federal
      >Circuit within Jung.

      So you're making a distinction between what Jung requires (low bar) and what was "approved by the Fed Cir in Jung" (much higher)?

      >go to BPAI without examiner
      >providing you with that claim
      >construction, it'll certainly put
      >the examiner's analysis in a bad
      >light.

      Agreed.

      Delete
    4. "So you're making a distinction between what Jung requires (low bar) and what was "approved by the Fed Cir in Jung" (much higher)?"

      Not sure about the point you are trying to make. However, to rephrase my point ... most examiners (from where I sit) do not provide the level of analysis provided by the examiner within In re Jung (I agree ... it was an awful, awful, awful fact pattern to take to the Federal Circuit). As such, you can argue "whereas, within In re Jung, the examiner did 'X', the examiner in our application did not do 'X.'"

      One point lost on our non-attorney is that the FACTS involved in the decision matter. If you can distinguish on the facts, you can also distinguish on the result.

      Delete
    5. >If you can distinguish on the
      >facts, you can also distinguish on
      >the result.

      Gotcha: distinguish Jung on the facts. All you can do, because the holding sure doesn't help much.

      Delete
    6. "whereas, within In re Jung, the examiner did 'X', the examiner in our application did not do 'X"

      Then all you'll get is X in your examiner's answer, the case goes to appeal, and you lose. Hurray for you wasting everyone's time!

      Delete
    7. "I'm not aware of any way you can procedurally *force* the Examiner into putting claim construction on record. "

      If it comes down to it, request an interview, ask them in the interview how they are construing either the whole claim or specific limitation x and then ask that such be added to the record by way of the interview summary. Review what is going in the interview summary prior to it issuing, which you can do over the phone as well as in person if you so desire (even though most people just do it in person) and ensure it meets what you believe is a fair summary. If not, note that as well in any future correspondence.

      That, for all intents and purposes, procedurally forces a claim construction on the record.

      You're welcome.

      Delete
    8. "That, for all intents and purposes, procedurally forces a claim construction on the record."

      Most examiner interviews I have been in end up with the Examiner asking why our invention is different while I'm asking why the prior art teaches the claimed limitations. Getting a claim construction out of examiner? Good luck there? IMHO, it is a waste of time.

      Delete
    9. "Most examiner interviews I have been in end up with the Examiner asking why our invention is different while I'm asking why the prior art teaches the claimed limitations. "

      Then you are very bad at interviews. Sorry. I can teach you, it's only 100$ an hour for me and an exemplar examiner.

      Delete
    10. Examiner interviews are only worth the trouble if meeting in-person can clear up miscommunication that exists from the lack of in-person contact. Sometimes just seeing a demonstration of the claimed invention can work wonders for advancing prosecution. Other times, the demo will help the light click on for the Examiner and his SPE but they will still not allow the application because the "second eyes" won't let them (e.g., we can only allow applications on the basis of secondary considerations if the BPAI rules in your favor (ie, you have to appeal even though I believe you've proven secondary considerations but I'm just an Examiner)).

      Delete
    11. "Examiner interviews are only worth the trouble if meeting in-person can clear up miscommunication that exists from the lack of in-person contact."

      Perhaps if you intend for this to be hugely broadly interpreted then sure, it's all about "miscommuncation" clearing up. But I think something more can be accomplished in the hands of a master. In the hands of a master, an interview can lead someone who is a. not really trying on the case or b. doesn't know what they're doing into making the correct call on the case. But then, that requires a master.

      Delete
  7. "Do you even know why the PTO takes this position"

    Yep. Just explained it to you.

    "PTO still needs to set forth findings of fact explaining why the determination need not have been explicit."

    Lulz lulz lulz. Normal people can hardly believe that even you, tar ded as you are, can believe that.

    ReplyDelete
  8. "Just explained it to you."

    I'm sure you think you did, given your limited skill set.

    So, since you clearly ride the short bus, try to keep up.

    In M.P.E.P. 2141.03(II), the PTO refers to Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983) and Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001), which merely state that specifying a particular level of skill is not necessary where the prior art itself reflects an appropriate level.

    Now, this is where the PTO corrupted an inter partes litigation exception by expanding it to be the rule in ex parte prosecution.

    Still following? No? Well, do the best you can given your limited capabilities.

    As anyone actually trained in law (i.e., being able to read a case and not simply the twisted interpretation presented in the MPEP), the issue in Chore-Time was whether or not the appellate court felt that the failure to explicitly determine the level of ordinary skill was reversible error by the trial court that required the case to be re-tried. Chore Time, of course, was a litigation and not an ex parte prosecution before the PTO. A lot of time, money and effort goes into a patent infringement or invalidity trial and courts go out of their way to make sure that a case does not have to go through trial again.

    Now, the Chore Time court ruled that there had been error in the proceedings because the level of skill had not been explicitly determined. The question was if it was reversible error.

    Now, quite frankly, the determination of skill during a litigation is an even bigger farce than it is during prosecution because the PHOSITA is essentially negotiated between the parties is a less than objective manner.

    ReplyDelete
  9. Now, before you proceed any further, you have to recognize that the PTO failed to take into account subsequent rullings by the Federal Circuit regarding the Chore-Time case.

    In Ruiz v. A.B. Chance Co., 234 F.3d 654, 666, 57 U.S.P.Q.2D 1161, 1168 (Fed. Cir. 2000), the Federal Circuit stated:
    "Some of our cases indicate that the failure to make explicit findings on the level of ordinary skill is not always reversible error. See, e.g., Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1574, 230 USPQ 81, 86 (Fed. Cir. 1986); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573, 220 USPQ 584, 589 (Fed. Cir. 1984); CHORE-TIME EQUIP., INC. V. CUMBERLAND CORP., 713 F.2d 774, 779 n.2, 218 USPQ 673, 676 n.2 (Fed. Cir. 1983)" (emphasis added). However, as the Federal Circuit noted in Custom Accessories v. Jeffrey-Allan Indus., 807 F.2d 955 (Fed. Cir. 1986), in those cases, "it was not shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under section 103 and, hence, constituted reversible error." Custom Accessories, 807 F.2d at 963, 1 USPQ2d at 1201."

    So, since the Examiner bears the burden of proof in setting forth a prima facie case of obviousness, not only must the Examiner explain why the "prior art" references allegedly reflect an appropriate level of skill (which Examiners are incapable of doing since they have no form paragraphs to parrot), the Examiner must also explain why the finding or lack thereof did not impact the ultimate conclusion of obviousness (which they can't since the Examiner used those very references to state the ultimate conclusion of obviousness).

    ReplyDelete
  10. Now, since your head exploded at the realization that you have never stated a prima facie case of obviousness, here's a repeat:

    In view of Chore-Time and similar cases, Examiners must explain why the cited art reflects an appropriate level of skill (even if the Examiner doesn't explicitly state the level of skill).

    In view of AB Ruiz, the Examiner must make an explicit finding on level of ordinary skill in the art because the failure to make a finding or an incorrect finding on level of skill has an enormous influence on the ultimate conclusion under section 103 during a patent prosecution. When the Office chooses one or more prior art references to combine, the Examiner is taking the position that one of ordinary level of skill in the art would have chosen these very references for combination. However, the Office is using these very references to define the level of ordinary skill in the art and that has an enormous influence on the ultimate conclusion of obviousness under section 103.

    In this situation, the snake is eating its own tail if the Examiner takes the position that the level of ordinary skill is implicitly determined by the prior art references selected by the Examiner (references which are selected via a hindsight-based search of the prior art) while simultaneously saying that one of ordinary skill in the art would have chosen these very references.


    ReplyDelete
  11. The MPEP itself again provides that "[t]he importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry." Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed. Cir. 1991). The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).

    As the level of one of ordinary skill in the art is a prism or lens through which a patent examiner views the prior art and the claimed invention, it is a tool to maintain objectivity and it focuses the mind of the patent examiner away from what would seem obvious to the patent examiner who conducts the examination of the patent application with hindsight. A 103 rejection is based upon what would be obvious to one of ordinary skill in the art at the time of the invention and not what is obvious to the patent examiner who is reviewing patent claims using hindsight. Thus, the Examiner must make a determination of the level of ordinary skill in the art that does not rely upon the level of ordinary skill in the art being defined by the prior art references already chosen by the Examiner because the failure to make a finding or an incorrect finding on level of skill enormously influences the Office's ultimate conclusion under section 103 during a patent prosecution.

    The lack of any finding on the level of skill by the Examiner has an enormous influence on the ultimate conclusion under section 103 and, hence, constitutes error by the Examiner. As demonstrated, that type of error is reversible error. The KSR decision re-affirmed Graham's requirement that there be a determination of the ordinary level of skill in the art. During prosecution, as part of the Examiner meeting its burden in making out a prima facie case of obviousness, the Office must make a determination of the level of ordinary skill in the art. At the very least, the Office must make findings of fact that explain why the references allegedly reflect an appropriate level of skill, and why the Examiner's use of prior art references to "implicitly" determine skill level does not impact the ultimate conclusion of obviousness.

    Now, you can go 'lulz' and scream 'tard' all you like, but the simple fact is that obviousness rejections made by Examiners that fail to determine skill level fail to state a prima facie case of obviousness. And, of course, it's not like patent practitioners aren't aware that the majority of Examiners don't give a darn about stating a proper prima facie case of obviousness as the majority of Examiners are simply not trained to do so. It's not fair to expect Examiners to be able to perform a function for which they are not trained. An Examiner couldn't find any practical guidance in MPEP 2141.03 for determining skill level to save his/her life.

    ReplyDelete
    Replies
    1. Is anyone willing to take this to the Federal Circuit/Supreme Court?

      Delete
    2. >anyone willing to take this to the
      >Federal Circuit/Supreme Court?

      Personally, determination of level of skill is way down on my list of things I'd like to see go to the Fed Cir.

      Near the top of my list is re-isiting the standard for prima facie rejection. As a prosecutor, I certainly am not satisfied with the low standard set out by In re Jung. As I said elsewhere in this thread, In re Jung was a terrible vehicle for presenting this issue, as Jung had more than enough notice.

      Delete
    3. "Now, you can go 'lulz'"

      lulz

      6

      Delete
    4. I'd take this all the way to the SCOTUS. Scalia would love this. Skill level determination is a flexible test. The problem is that ex parte prosecution cases rarely make it that far and litigation cases don't involve skill level determinations by an Examiner.

      Delete
  12. Please distinguish this "subsequent ruling" in an ex parte proceeding.

    "The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant art. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962. In determining this skill level, the court may consider various factors including 'type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.' Id. In a given case, every factor may not be present, and one or more factors may predominate. Id. at 962-63

    Although the Board did not make a specific finding on skill level, it did conclude that the level of ordinary skill in the art of asbestos removal and contamination control was best determined by the references of record, especially Asbestos. We do not believe that the Board clearly erred in adopting this approach because it offers valuable insight in considering the Custom Accessories factors."

    In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).

    (And if you have some time left over, explain why Judge Newman was wrong in Vaidyanathan.)

    ReplyDelete
    Replies
    1. "(And if you have some time left over, explain why Judge Newman was wrong in Vaidyanathan.)"

      Zurko IV lives. Zurko IV rules.

      Delete
  13. As noted above, the Federal Circuit in Custom Accessories v. Jeffrey-Allan Indus., 807 F.2d 955 (Fed. Cir. 1986), stated that in those cases, "it was not shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under section 103 and, hence, constituted reversible error." Custom Accessories, 807 F.2d at 963, 1 USPQ2d at 1201

    ReplyDelete
  14. In re Vaidyanathan touched on the issue of skill level determination in the context of an obviousness rejection. The Federal Circuit panel apparently viewed the opinion as one not adding significantly to the body of law and declared the decision to be "nonprecedential." This is not surprising as the Vaidyanathan decision merely provides a post-KSR reaffirmation that the PTO must provide evidentiary support or reasoning to support its obviousness rejections. Though nonprecedential, the Vaidyanathan decision may still be cited for guidance or persuasive reasoning though it need not be given the effect of binding precedent.
    It's really much ado about nothing.

    ReplyDelete
  15. In Vaidyanathan, the Federal Circuit agreed with the PTO that “an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance” but the Federal Circuit also agreed with the Applicant/Appellant’s position regarding the lack of evidence/reasoning provided by the PTO and held that:
    whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant. (emphasis added)
    Ultimately, the Federal Circuit held that because the record before the Court lacked sufficient elaboration of the Examiner’s or the Board’s reasoning, the Federal Circuit was vacating the Board’s rejections and remanding the case for redetermination of the question of obviousness.
    In short, the Vaidyanathan decision holds the PTO’s feet to the fire when it comes to determinations of ordinary skill in the art. The Federal Circuit makes it clear that there must be evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references.

    ReplyDelete
  16. This question is for the original "determination of ordinary skill" Anon, who apparently has not yet commented on In re GPAC and Vaidyanathan.

    What is it, exactly, that you want?

    In District Court proceedings, usually a party's expert alleges something like "A person of ordinary skill in the art has a Master's Degree in Widget Engineering and six years experience in the widget field." It's not very helpful at the district courts, and would be even less so at the USPTO. First of all, what would be the substantial evidence for such a finding? Further, the procedure would quickly become a side show -- the ex parte applicant might submit evidence (e.g., an expert declaration alleging) that one of ordinary skill in the art actually had only a Bachelor's degree in Widget Engineering Technology, and only four years experience. Which begs the question, so what?

    The key is that the person of ordinary skill in the art "is a hypothetical person who is presumed to know the relevant art." Once a reference is determined to be prior art, the reference itself is the evidence that one of ordinary skill in the art would know this and would be able to do that, because the reference describes or teaches this and that.

    So -- what is it you want? Give a _specific_ example. Provide a hypothetical (or real) quotation from an examiner that you think properly sets forth the level of ordinary skill in the art.

    ReplyDelete
    Replies
    1. "Once a reference is determined to be prior art, the reference itself is the evidence that one of ordinary skill in the art would know this and would be able to do that, because the reference describes or teaches this and that."

      No, the fact that one of ORDINARY skill in the art knows about a particular reference in their art doesn't mean that he/she is capable of employing everything taught by that reference. For example, the reference could be written by (and for) somebody with extra-ordinary skill in the art.

      Delete
    2. The speculation about "extra-ordinary skill" references does not scour. That's why GPAC did not say that the hypothetical person knows "about" the relevant art. Hence, the level of ordinary skill in the art was best reflected by the references of record. There was no inquiry into the skill level of the authors.

      Moreover, doesn't a prior art reference enable one of ordinary skill in the art to practice what it describes
      without undue experimentation, unless proven otherwise?

      Delete
    3. The basic reason for the skill level determination is as set out above. As the level of one of ordinary skill in the art is a prism or lens through which a patent examiner views the prior art and the claimed invention, it is a tool to maintain objectivity and it focuses the mind of the patent examiner away from what would seem obvious to the patent examiner who conducts the examination of the patent application with hindsight.

      By allowing the Examiner/PTO to avoid skill level determination, you allow them to avoid objectivity and engage in unmitigated hindsight.

      Delete
    4. More generalities, without telling us what "skill level determination" is avoided by examiners. What is it that this particular Anon wants?

      Please provide an examiner's _quotation_ from a hypothetical or a real case that, in your view, properly sets forth a determination of the level of ordinary skill in the art.

      Delete
    5. Are you able to provide an examiner's quotation from an actual case where the Examiner engaged in a skill level determination analysis that included the GPAC factors?
      I'd love to see one because I have never seen one nor have 99.9% of the patent practitioners out there.

      Delete
    6. "In District Court proceedings, usually a party's expert alleges something like "A person of ordinary skill in the art has a Master's Degree in Widget Engineering and six years experience in the widget field." It's not very helpful at the district courts, and would be even less so at the USPTO."

      That actually does not define the level of ordinary skill in the art. This sort of statement is viewed as merely reflecting what knowledge would or would not be within the level of skill in the art of someone with that educational background and experience.

      Delete
    7. "The speculation about "extra-ordinary skill" references does not scour. That's why GPAC did not say that the hypothetical person knows "about" the relevant art. Hence, the level of ordinary skill in the art was best reflected by the references of record."

      Just another one of the reasons why the Examiners shouldn't be allowed to get away with using a hindsight based keyword search to obtain references from which the Examiner then uses to "implicitly" determine skill level is a complete and utter farce. It's all hindsight and no objectivity.

      "The examiner is not looking to work with you to draw that line between what is unpatentable and what is patentable – instead, the examiner is looking to reject your claims as expediently as possible. As such, to be successful, you have to outwork your opponent."

      Absolutely, and it's also helpful if you don't concede one of the Graham factors in the Examiner's favor, i.e., the determination of ordinary skill in the art. Make the Examiner work for it. They have to support their position with substantial evidence.

      Delete
    8. I'm beginning to see why these vague complaints about what the examiners fail to do are not taken seriously, by anybody.

      Even with this gathering of Graham Factor experts, not one has been able to articulate or even _conceive of_ a _specific example_ of an acceptable examiner's statement regarding the level of skill in the art.

      Conclusion: the level of skill in the art is best determined by the references of record. An explicit finding directed to the "level of skill in the art" is not necessary. In re GPAC, Inc.

      Delete
    9. "Even with this gathering of Graham Factor experts, not one has been able to articulate or even _conceive of_ a _specific example_ of an acceptable examiner's statement regarding the level of skill in the art."

      You are asking for a form paragraph. Neither 35 U.S.C. 103 nor the Graham factors prescribe a specific format for the skill-level determination. In re GPAC itself provides that various factors may be considered, but in a given case some may predominate and others may be absent. There are several pragmatic reasons for this flexibility including, as pointed out above, the nature and sources of evidence for skill level and the manner in which it is contested vary widely from case to case.
      So, unless you want to be slapped with KSR, your demand for a specific test is foolishness as KSR shot down the bright-line TSM test.

      So, your conclusion is foolish, based on false logic and your own ignorance of GPAC.

      Delete
    10. Obviously, I did not ask for a "form paragraph" or a "specific test." I asked for a _specific example_ of an acceptable express finding in a hypothetical or a real case. Just one.

      You see, vague complaints about the examiner failing to "determine the skill-level" in a particular case are irrefutable and thus are not in the form of persuasive arguments.

      What is it, exactly, that you want the examiner to say? Give one example.

      The conclusion stands.

      Delete
    11. The only conclusion that stands is that you were apparently dropped on your head several times as a child.

      Explain what you mean by "vague complaints." The complaints about Examiners failing to determine skill level have been pretty specific.

      Posts have been pretty specific about the kinds of things things that should be seen in a skill level determination.

      Again, you avoid answering the question of whether you are able to provide an examiner's quotation from an actual case where the Examiner engaged in a skill level determination analysis that included the GPAC factors?

      Provide a specific application number where one can find an Office Action where the Examiner made any specific reference to how skill level determination was made in that case.

      The very fact that you can't speaks volumes.


      Delete
    12. P.S. Take a look at the BPAI's Ex parte Jud decision.

      The fact that you haven't mentioned it so far only underscores your ignorance of all things skill level determination.

      Delete
    13. Anonymous said:

      yada, yada, yada.

      [I can't think of a single example of a finding that would be sufficient to me]

      [So I'll pontificate about other stuff]

      yada, yada, yada.

      Your point is well taken.

      The conclusion stands.

      Delete
    14. Wait, what? Anon started out by distinguishing all the inter partes litigation cases because they allegedly do no apply to ex parte prosecution, and now Anon thinks GPAC requires the examiners to go through factors that are litigated in inter partes district court proceedings, when GPAC clearly does not require the factors to be addressed in ex parte prosecution? In fact, holds just the opposite?

      Hint: they are not "GPAC" factors. They are Custom Accessories factors.

      Excellent analysis, Anon.

      Delete
    15. Wait, what? "While the examiner did not have an expressly denominated finding regarding the level of skill in the art, Jud was on notice about what the examiner thought one of skill in the art would have known and why." Ex parte Jud.

      Hint: Ex parte Jud does not support Anon's position.

      Excellent analysis, Anon.

      Delete
    16. "At its core, however, the question of the level of ordinary skill in the pertinent art boils down to a question of what the hypothetical person with such skill would have known (and known how to do)." Ex parte Jud.

      Excellent analysis, Anon.

      Delete
    17. Eyes they have but see not. Mouthes they have but speak not.

      Delete
    18. "yada, yada, yada."

      Yeah, I didn't think you were capable of providing a single example of any case where an Examiner determined skill level during a prosecutgion.

      The conclusion that Examiners fail to determine skill level stand.

      Delete
    19. "Anon started out by distinguishing all the inter partes litigation cases because they allegedly do no apply to ex parte prosecution,"

      Take a reading comprehension class, and try again.

      Delete
    20. GPAC/Custom Accessories provide guidance to Examiners on how to determine skill level. At what point was it ever argued that GPAC/Custom Accessories factors were inapplicable to ex parte prosecution?


      Delete
    21. Anonymous said:

      "Now, this is where the PTO corrupted an inter partes litigation exception by expanding it to be the rule in ex parte prosecution."

      I read just fine, thanks.

      BTW, Anon also provided the "single example" of a case where the examiner determined skill level during a prosecution. Ex parte Jud. Thanks again.

      I agree with Anon, however, that GPAC/Custom Accessories provide guidance to examiners on how to determine skill level. The level of skill in the art is best determined by the references of record.

      Delete
    22. In Jud, the BPAI admitted that the Examiner had not made an expressly denominated finding regarding the level of skill in the art, but took the position that the Appellant was on notice by the Examiner about what the Examiner thought one of skill in the art would have known and why the person of ordinary skill would have known it. The BPAI explained that the original panel specifically discussed what a person of ordinary skill would have known in terms of references of record and that the original panel also had specifically addressed the Applicant's argument that the Examiner had not made a finding about the level of skill in the art by indicating that the original panel was satisfied with the Examiner's reliance on the prior art for this purpose. Again, those explanations assume that the references were within the level of skill in the art and it was the Appellant's fault for not explaining why the references did not reflect an appropriate level of skill nor explaining why the ultimate conclusion of obviousness was impacted by the manner in which skill level determination was avoided.

      Delete
    23. The Appellants in Jud erred by refusing to recognize that the BPAI exists to salvage rejections rather than acting as an objective arbiter. The Appellants should have presented evidence that would supported a materially different finding or demonstrated that the decision was wrong on the merits of the obviousness rejection. The Appellants should have pointed to specific evidence that would require setting the decision on the merits aside. After pointing out that neither the Examiner nor the Appellant appeared to have relied on Applicants' disclosure as a source of evidence regarding the level of skill, the BPAI made the same hindsight rationalization made by the original panel that the Examiner had relied on the references cited in the rejection as evidence of the skill level. Instead of actually arriving at an objective determination of skill in the art, the BPAI's goal seemed to be finding a way to salvage the Examiner's failure to make a finding on the level of skill, both in form and in substance.

      Delete
    24. In Jud, while the Appellants had pointed out that many other references were made of record by the Examiner but not cited in the rejections, the BPAI chose not to examine those references on their own. Instead, the BPAI castigated the Appellants for not specifically pointing out how any of those references would apply in determining the skill level and that was certainly another mistake made by the Appellants. The BPAi does not care if the Examiner has not actually made out a prima facie case of obviousness since the BPAI will make up one of their own if they have to. It is also quite possible that the BPAI wished to avoid having to acknowledge that, if the level of skill is based solely on the references cited by the Examiner in an office action, then the level of skill could conceivably fluctuate during an examination based upon the addition or withdrawal of references used by the Examiner in rejections as prosecution progressed. The implication has always been that there is a single, determinable level of ordinary skill in the art. By the BPAI's logic, in a first office action, the level of skill in the art is determined by the particular references cited by the Examiner in the rejections. However, if the Examiner withdrew one or more or all of those originally cited prior art references in the rejections in the next office action (and/or added new prior art references), then by the Board's own logic, the level of skill "determined" by the Examiner would most likely be different than the level of skill determined in the first office action. Furthermore, the BPAI did not address how references made of record by the Examiner during the course of prosecution for allegedly being relevant but not actually used in rejections fit into the determination of the level of skill.
      The BPAI concluded that by outlining what one would know from references, the Examiner had met her burden to establish the skill level in the way it is typically met during examination. Based on the assumption that the Examiner had determined the level of skill through the recitation of what the references disclosed, the BPAI shifted the burden to the Appellants and took the position that the Appellants had failed to argue or provide a persuasive basis for a different finding. The BPAI made the admission that there was a procedural error by the Examiner in not explicitly identifying skill-level findings but stood by its position that a substantive, implicit determination of the level of skill had been made by the Examiner.

      Delete
    25. Ultimately, the most important aspect about Jud is not what it decided with respect to the merits of the individual case but that the BPAI explained the evidence that can be used for determining the ordinary level of skill. The evidentiary starting point for determining the level of skill in the art, according to the Board, is the applicant's disclosure, followed by references and additional testimony, if any.

      Delete
    26. Yeah, what he said. Ex parte Jud does not support Anon's position.

      Delete
    27. "BTW, Anon also provided the "single example" of a case where the examiner determined skill level during a prosecution. Ex parte Jud. Thanks again."

      Wrong again, but thanks for playing.

      "The level of skill in the art is best determined by the references of record."

      Only if Examiners are able to demonstrate that the references reflect an appropriate level of skill AND show that an implicit skill level determination based on references found by the Examiner using hindsight-based keyword searches of the prior art did not influence the ultimate conclusion under 35 USC 103.

      Delete
    28. Ex parte Jud is useful only for it being declared an Informative Decision by the BPAI that sets out how the BPAI believes skill level can be determined.

      Fed Cir in In re Vaidyanathan bitchslapped the BPAI for not even following their own guidance.

      Delete
    29. Yeah, well it was Anon who brought up Jud. Thought it was a killer case.

      Delete
    30. I'm not sure which anon brought up which case at this point.

      Delete
  17. "Which begs the question, so what?"

    Have to agree with that assessment.

    But Zurko IV still rules.

    ReplyDelete
  18. Actually, the expanded BPAI panel in Ex parte Jud admitted that the earlier panel and the Examiner had committed error.

    Ex Parte Jud focused on the issue of determining the level of skill in the art. The Board decided Ex parte Jud in early 2007 and declared the decision to be an "Informative" Opinion. The decision came out of a request for rehearing by the Appellants on the basis that the original Board panel's decision allegedly lacked specific findings of fact (with regard to the determination of the level of skill in the art) necessary to meet the "substantial evidence" test. The Appellants had requested reconsideration of the original panel hearing by the Board sitting en banc. That was denied but the panel was expanded to include several additional judges.
    The Board broke the decision down into four distinct issues: (1) what determination must be made?; (2) evidence for determining the ordinary level of skill; (3) was the level of skill actually determined?; and (4) was there prejudicial error?

    The fact that 99.999% of Examiners are unfamiliar with Jud is simply more proof of what a farce 'skill level determination' by Examiners truly is.

    ReplyDelete
    Replies
    1. Excellent analysis, Anon. However, can you be a bit more specific. At what page did the rehearing panel -- the rehearing that was denied -- admit that the earlier panel and the examiner had committed error? Thanks in advance.

      Delete
  19. The ultimate hypocrisy of Examiners is that they are happy to have holdings of inter partes litigations applied to ex parte prosecution. That is, unless those holdings relate to claim construction. Then, of course, it would be abhorent to require them to adhere to inter partes claims construction standards.

    ReplyDelete
    Replies
    1. Gotcha. Obviously a troll. Everybody who cares to read this blog knows that the courts require that the PTO apply broadest reasonable interpretation in ex parte prosecution as opposed to "inter partes claims construction standards," except in the rare case where the claims cannot be amended. Go away.

      Delete
    2. It's certainly clear you are, and one with a reading comprehension problem but that gives you a lot in common with your buddies here who ride the short bus with you.

      Delete
    3. Can you be a little more specific about who it is you think you're insulting?

      Delete
    4. Anon is insulting anon.

      Delete
    5. I just hate the self-hating Anons.

      Delete
    6. Yes, yes, it's true . I hate myself.

      Delete
    7. Why can't we all anons just get along?

      Delete
  20. Give an Examiner a fish and he'll eat for a day. Teach an Examiner to fish and he'll starve since everything you say to an Examiner goes in one ear and right out the other.

    ReplyDelete
  21. The problem with Jud is that it's logic is, of course, contradictory and result-oriented. It's still important in getting the BPAI's viewpoint on things like what evidence can be used for determining the ordinary level of skill.
    In Jud, the evidentiary starting point for determining the level of skill in the art is the applicant's disclosure, followed by references and additional testimony, if any.

    Applicant's disclosure, as insightfully noted by the BPAI, is present in every examination and provides the applicant's views of the skill level at the time of filing.

    A review of Jud indicates that the BPAI considers a disclosure to be particularly helpful when it describes the background to the invention and the applicant's contribution to the art. In Jud, the Board cautioned that care must be exercised to ensure that the applicant's contribution is not itself mistaken as an admission regarding the pre-existing knowledge and skill in the art.

    It was acknowledged that while evidence of the skill level in the disclosure tends to be indirect, an enabling disclosure implies a minimum base of technical knowledge and ability for "any person" skilled in the pertinent art at the time of filing. Overall, the Board viewed the disclosure as setting a floor rather than a ceiling for the level of skill in the art.

    ReplyDelete
  22. "an enabling disclosure implies a minimum base of technical knowledge and ability for "any person" skilled in the pertinent art at the time of filing."

    Okay, kiddies! Why does this part of Jud demonstrate that the BPAI braintrust is full of shite in terms of skill level determination?

    ReplyDelete
    Replies
    1. That quote. Yeah, it's a puzzler.

      In context, it seems they meant that one can draw conclusions about what was known to one of ordinary skill in the art by what the applicant's disclosure _does not_ disclose. (!) I.e., all the information necessary to enable the invention that is not expressly set forth in the disclosure.

      But seems like, in most cases, dealing with that kind of indirect evidence would take more heavy lifting than it's worth.

      Delete
    2. Hmmm, not quite what I was getting at but an interesting point.
      Let's recall that the BPAI is stating that the Applicant's own disclosure can be used to determine at least a minimum level of ordinary skill.
      Let me add that in Jud, the BPAI took the position that an enabled disclosure was evidence for determining skill level (and included the proviso that enablement rejections under 35 USC 112, first paragraph, can undermine the value of the disclosure).
      Now, a brief look at the language of 112, first paragraph:
      "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention."

      112(1) is all about what would or would not be known to one of ordinary skill. Is the BPAI blind to their own circular reasoning? If there's an enablement rejection, the Examiner MUST have already determined the level of skill in the art because an enablement rejection is BASED on the allegation that one of skill would not be able to make/use the invention based on the disclosure.
      Do you see the circular logic at work? In order to determine if something is enabled or non-enabled, the Examiner must by necessity have first determined the level of skill so as to be able to articulate the enablement or non-enabled.
      Thus, the farce of skill level determination isn't just limited to obviousness rejections but permeates throughout the patent examination process to encompass 35 USC 112, first paragraph (and second paragraph as well).

      Now, if someone takes the position that the level of skill in the art is implicitly determined by the references of record, that is no help because a 112, first paragraph rejection is not based on prior art references.

      So, if the Examiner makes a 112, first paragraph rejection, the Examiner must determine skill level (e.g., using the factors set out in MPEP 2141.03).

      The BPAI panel in Jud blinded themselves to the fact that in order to make a 112, first paragraph rejection, the Examiner is required to determine the level of skill because the entire basis of the rejection is that the Examiner has determined that one of skill would not be able to make or use the invention.

      Now, we all know that Examiners don't even bother to determine skill level when they make 112, first paragraph rejections. A 112(1) rejection is really an admission by the Examiner that they themselves can't understand the specification. However, as a matter of law, the Examiner must be able to provide substantial evidence that one of ordinary skill would not be able to make or use the invention.

      Delete
    3. Yeah, well, Anon brought up Jud because he/she thought it was a killer case.

      Jud is an "informative" case. Jud was written at a time when PTO management thought there should be "precedential" cases about the law and "informative" cases that describe scenarios consistent with their buzzwords "best practices." That is, "informative decisions" were messages to either the applicants or the examiners, or both, on what the Board would like to see.

      Jud was shat as a message to the examiners. Although the Board thought that what the examiner had done was sufficient for Fed. Cir. review, it would be really nice if in the future the examiners said more, and differently. Make it less work on the Board.

      So, hey, don't get too caught up in what Jud is saying about the law.

      Delete
    4. I don't really care much about what any BPAI case says about the law. The only cases that matter to me are from the Fed Cir or SCOTUS.

      The point is how screwed up PTO practice is when it comes to things like skill level determination.

      Delete
    5. So I'll put it another way. Jud has nothing to do with skill level determination at the PTO.

      Delete
    6. Jud has nothing to do with actual skill level determination at the PTO but Jud is still "Informative" as to the BPAI's official approach to skill level determination.

      Delete
    7. Again, if someone takes the position that the level of skill in the art is implicitly determined by the references of record, Jud isn't much help because despite the importance of references, the BPAI did not go into great detail regarding their use for ascertaining the level of skill in the art.
      In Jud, after acknowledging that references are used during examination for obviousness rejections, the BPAI went on to state that "[p]rior art references are cited precisely because they show what those skilled in the art would have known and been able to do before the effective filing date for the application."
      However, that statement includes an inherent assumption that the one of ordinary skill in the art at the time of the invention would have known what was contained in the prior art reference selected by the Examiner.
      While a person of ordinary skill in the art is presumed to assess obviousness with full knowledge of all the pertinent prior art, the BPAI's assumption can only be justified where the Examiner is not using those very references to implicitly define the level of ordinary skill in the art.
      The BPAI completely avoided dealing with the fact that references are typically selected by the Examiner only after the Examiner has conducted a hindsight-based search of the prior art using keywords taken from the very claims the Examiner is seeking to reject.
      As discussed above, the very purpose of determining the level of one of ordinary skill in the art is obtain an objective prism or lens through which an Examiner views the prior art and the claimed invention. It is difficult to argue that the Examiner can use the level of one of ordinary skill in the art as an objective lens through which the prior art and the claimed invention can be viewed when the lens itself is distorted by having been constructed from that very same prior art.
      The BPAI's decision seems to ignore the reality of what actually occurs during patent prosecution. In the BPAI’s view, whatever is disclosed in a prior art reference is something that would have been known by a person of ordinary skill in the art and that knowledge therefore defines the level of skill in the art at the time of the invention. An Examiner finds a reference using a 100% hindsight-based keyword search of the prior art without any idea of the actual level of skill, then claims that the references found by the Examiner define the level of skill in the art.

      Delete
    8. In Jud, the BPAI seems to be supporting the position that an Examiner can start with the conclusion that the subject matter of references selected by the Examiner (with the benefit of hindsight) was known to one of ordinary skill in the art and then work backwards from there to "determine" the level of skill in the art that is, not surprisingly, disclosed in the references selected by the Examiner using hindsight.
      This leaves the patent practitioner with an opportunity to pose the issue as a "which came first: the chicken or the egg?" inquiry. In particular, the patent practitioner can pose the simple question of which came first: an unbiased, objective determination of ordinary skill in the art or a hindsight reconstruction of the invention by the Examiner using references that the Examiner then holds out as allegedly determining the level of ordinary skill in the art?
      The undeniable answer to that question is that the Examiner is relying on the Examiner’s own hindsight-based selection of references as defining the level of skill in the art, the Examiner’s ‘determination’ lacked the requisite objectivity, and that the ultimate conclusion under 35 U.S.C. 103 was clearly influenced.
      In Jud, the BPAI further stated that references are generally entitled to great weight on the basis that references are almost always prepared without regard to their use as evidence in the particular examination in which they are used. However, the BPAI seemed to ignore that while the references themselves were not prepared in view of a particular examination, those references were hand-selected by the Examiner after the Examiner conducted a hindsight-based search of the prior art based on keywords taken from the Appellant's specification and claims. Again, the BPAI's decision seems to ignore the realities of patent prosecution.
      The BPAI’s view seems to be that the level of ordinary skill in the art is determined, at least in part, by working backwards from the references themselves. It therefore is difficult to reconcile the BPAI’s particular view with the view that the level of one of ordinary skill in the art is an objective lens through which the prior art and the claimed invention can be viewed, especially so when the selection of the references cited by the Examiner is conducted in a way that seems to be anything but objective.

      Delete
    9. Seems I was not persuasive in the presentation of my case that Jud represents no more than the law of the case in Jud. Just move on from that particular decision.

      A thing that gets repeated over and over in the graphorrhea of generalities is the allegation that examiners conduct a keyword "hindsight-based search of the prior art."

      It should be apparent that if a reference really is not presumed to be known by one of ordinary skill in the art, the appropriate response is to demonstrate that the reference is non-analogous art.

      Problem solved.

      Delete
    10. The solution is to have a first examiner conduct the hindsight search with full knowledge of the application, and then give the results (i.e. the "closest" prior art) to a second examiner who has never seen the application and ask the second examiner what modifications/combinations shoulda/coulda/woulda been done to the closest prior art. If the second examiner can't/doesn't modify/combine the closest prior art to arrive at the claim(s), the claim(s) is(are) allowed.

      Delete
    11. "Problem solved."

      Not really. Everything is considered analogous by Examiners, not matter how non-analogous. Check out the twisted MPEP provision regarding analogous art. It hijacks a section of KSR dealing with reasons for combining references and twists it to stand for providing reasons why a reference is analogous.

      "examiners conduct a keyword "hindsight-based search of the prior art."

      Are you claiming they don't? Are you claiming that a hindsight-based keyword search of the prior art doesn't result in a highly un-objective skill level determination? That the ultimate conclusion of obviousness isn't directly impacted by a "skill level determination" conducted by obtaining a desired result and then working backward to determine a skill level to support the desired result?

      Delete
    12. You are right. Non-analogous art arguments are too hard. Just repeat that "the examiner conducted a keyword, hind-sight based search of the prior art" three or four times. Always a winner.

      Delete
    13. So you believe that art-based skill level determinations aren't based completely on hindsight. They are a completely objective determination by the Examiner. Gotcha.

      Delete
    14. "It should be apparent that if a reference really is not presumed to be known by one of ordinary skill in the art, the appropriate response is to demonstrate that the reference is non-analogous art."

      Unfortunately for you, MPEP 2141.01(a) Analogous and Nonanalogous Art provides:
      I. TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR ART
      The examiner must determine what is "analogous prior art" for the purpose of analyzing the obviousness of the subject matter at issue. **>"Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. " KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1397 (2007). Thus a reference in a field different from that of applicant's endeavor may be reasonably pertinent if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his or her invention as a whole.<

      This is the "official" standard used by Examiners. According to the PTO, any reference in a field different from that of applicant's endeavor is analogous if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his or her invention as a whole.

      Now, everyone with an actual experience knows that the PTO really misinterpreted this part of KSR but you just go on and argue to the BPAI that this isn't proper analogous art analysis. Waste all the time you want to. Don't forget to cite the actual standard as set out by the Fed Cir in In re Klein. After all, you already know that you're going to have to appeal to the Fed Cir anyway.
      Yeah, that analogous art argument of yours is a sure-fire winner.

      Delete
    15. Unfortunately for me? I said it's appropriate to make the non-analogous art argument if the reference really is not presumed to be known by a POSITA. The argument's not a winner if the facts do not fit. If you can't make a credible argument for non-analogous art, guess what, maybe the reference is analogous.

      Under the correct analysis, compare the number of cases where "non-analogous art" wins versus the number of cases where "the examiner used keywords" wins.

      Delete
    16. >make the non-analogous art argument
      >if the reference really is not
      >presumed to be known by a POSITA.

      As an observer, it seems like you guys are missing each other's point.

      Non-analogous is about when the reference itself is presumed to be unknown by the POSITA because it's too far afield (as defined by the two-prong test). Surely nobody disagrees with that basic statement of the law.

      A completely separate point is whether or not a particular teaching in a particular reference is too esoteric to be considered within the knowledge of a POSITA -- which hinges on the level of skill. This second point also seems unobjectionable.

      Taken together, these two points demonstrate that you could have a teaching in an analogous-art reference that is nonetheless beyond the level of skill of a POSITA.

      From there, it seems reasonable to conclude that picking a random reference in an analogous art is not in fact a guarantee that this reference represents the appropriate level of skill.

      Delete
    17. I know the length of the thread has gotten to be challenging, but the "beyond the level of skill" argument has already been answered. During patent prosecution, a prior art reference is presumed to enable one of ordinary skill in the art to practice what it describes without undue experimentation, unless proven otherwise.

      The problem, at bottom, is that the "keyword" hindsight argument is just ridiculous. A POSITA is presumed to know the relevant art. It doesn't matter how the reference is arrived at.

      Forget examination. Know any of the million-dollar litigation cases where a "keyword-hindsight" argument worked against invalidating prior art? On the other hand, "non-analogous art" works quite well when the facts are right.

      Delete
    18. "It doesn't matter how the reference is arrived at."

      Uh, yes it does. A prior art reference used in an obviousness must be in an analogous art and within the level of ordinary skill in the art.

      A prior art reference is considered analogous if it is either (1) in the same field of endeavor as the invention or (2) “reasonably pertinent” to the problem with which the inventor is involved. In turn, a reference is reasonably pertinent if it logically would have commended itself to an inventor's attention in considering his problem.

      Skill level determination is a separte (though heavily underutilized) tool for filtering out inappropriate art. A reference that is not within the level of ordinary skill in the art can not be combined with a reference that is within the level of ordinary skill in the art in order to reject a claim under obviousness because the entire point of the obviousness rejection is what would be obvious to one of ordinary skill.

      Delete
    19. >Skill level determination is a
      >separate tool for filtering out
      >inappropriate art.

      I'm a prosecutor, so I like the sound of that. And it makes intuitive sense. What's the case law support for this?

      In this thread, you guys have discussed the line of cases (Choretime, GPAC, Ruiz) stating a requirement to determine skill level as part of the obviousness analysis. What case(s) say that the result of such a determination can lead to excluding a reference?

      [I'm not trolling here ... I genuinely want to learn more about this tool for fighting obviousness.]

      Delete
    20. "It doesn't matter how the reference is arrived at."

      Probably better to say "it doesn't matter how the reference is found during a patent proceeding." But it doesn't.

      As you recognize, once a reference is produced, it then might be demonstrated to be non-analogous art. If you want to say after it is determined to be non-analogous, at that point it mattered how the reference was found, I disagree. Other analogous-art references might have been found the same way.

      A "reference that is not within the level of ordinary skill in the art." What is that?

      The reference is evidence of what was "within the level of ordinary skill in the art," until proven otherwise. The reference shows what the artisan knew, and knew how to do. As pointed out now three times, during patent prosecution, a prior art reference is presumed to enable one of ordinary skill in the art to practice what it describes without undue experimentation. The reference is "within the level of ordinary skill in the art" until proven otherwise.

      If the reference has passed the analogous art test, the appropriate "skill level" attack at that point is to provide EVIDENCE that the description that the examiner is relying on the reference is not enabled. If there's a "separate tool," it's enablement.

      (Of course, your mileage may vary, as enablement is not the hard and fast rule in obviousness as it is in anticipation. But that's the only way to preclude the teachings of a reference based on "skill level.")

      An excellent question, which bears repeating. "What case(s) say that the result of [a skill level] determination can lead to EXCLUDING A REFERENCE." (emphasis added)

      Delete
    21. "What case(s) say that the result of such a determination can lead to excluding a reference?"

      My own experience comes from two separate litigation cases where my side managed to persuade the judge that certain references the other side wanted to use for obviousness invalidity were not within the level of ordinary skill.

      Delete
    22. [I'm not trolling here ... I genuinely want to learn more about this tool for fighting obviousness.]


      If you post an email address (anonymous yahoo or gmail), I can send you an article on the subject.

      Delete
    23. "My own experience. . . ."

      Whatever works. Published cases? ALJ or District Court judge? Presumption of validity? Clear and convincing evidence standard? References not presumed enabled?

      What Fed. Cir., SC cases were cited in support of the theory?

      Delete
    24. "I can send you an article on the subject."

      Obviously, peer reviewed.

      Delete


    25. A closed mind is like a closed book; just a block of wood.

      Delete
    26. "A closed mind is like a closed book; just a block of wood."

      A closed book is just a block of wood? Isn't a closed book paper and a binding?

      That's your contribution to the law of obviousness?

      Delete
    27. I was talking about the other guys.

      Delete
    28. "A closed mind is like a closed book; just a block of wood."

      One of the more humorous mixed metaphors I've ever seen, although I'm still trying to figure out what metaphor the block of wood comes from.

      Just saying. :-)

      This is one of the least productive trolling sessions in the history of the internet. Arguing that the examiner has not made any findings regarding the level of ordinary skill in the art is not going to get you anywhere with the examiner, the BPAI, the Fed. Cir. or SCOTUS.

      But Zurko IV still rules. At least we've got that going for us.

      Delete
    29. "Arguing that the examiner has not made any findings regarding the level of ordinary skill in the art is not going to get you anywhere with the examiner, the BPAI, the Fed. Cir. or SCOTUS."

      Because you've tried? Doubt it.
      Appellant in In re Vaidyanathan got a pretty good result staying within current case law.

      Delete
    30. "We agree with the Solicitor that an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance." In re Vaidyanathan (Fed. Cir. 2010 (non-precedential)).

      Anon is spot on, as always. Good show.

      Delete
    31. "is not always necessary"

      Nice reading comprehension skills. Now try actually reading something IN context.

      Delete
    32. Citing Okajima v. Bourdeau, the Federal Circuit in Vaidyanathan noted that the Applicant acknowledged that “the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”

      The Appellant had argued that the BPAI made repeated reference to what a “person of ordinary skill” would have understood or inferred, without ever explaining that level of ordinary skill or citing evidence to support these findings.

      Rather than address the sufficiency of the BPAI’s skill level determination, the PTO responded by arguing that the BPAI was not required to make express findings as to the level of ordinary skill in the field of the invention and that reversal on that basis was appropriate only when the BPAI’s failure to make an express finding on the level of ordinary skill in the art distorted the ultimate conclusion on obviousness. Furthermore, the PTO attempted to shift the burden to the Appellant by arguing that the Appellant “has not attempted to show how the lack of an express finding influenced the BPAI’s conclusion on obviousness, or that the prior art in the record is inadequate to demonstrate the appropriate level of skill.”
      The Appellant countered that the issue was not so much the form of the PTO’s determination (i.e., express findings or lack thereof) but that there was no evidence/reasoning provided to support the PTO’s determination. The Appellant asserted that both the Examiner and the Board made unsupported conclusory statements that it would have been obvious to a person of ordinary skill to select and combine certain parts of certain references. The Appellant further asserted that to support those conclusions, it was necessary for the Examiner and the Board to explain how the knowledge and competence of the ordinary skilled person in this field would have led to this combination set forth in the rejections. In other words, regardless of whether a determination of skill level was express or implicit, there must be some form of evidence/reasoning provided by the PTO (be it either the Examiner or the Board) to support a skill level conclusion.
      The Federal Circuit agreed with the PTO that “an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance” but the Federal Circuit also agreed with the Appellant’s position regarding the lack of evidence/reasoning provided by the PTO and held that: whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant.
      Ultimately, the Federal Circuit held that because the record before the Court lacked sufficient elaboration of the Examiner’s or the Board’s reasoning, the Federal Circuit was vacating the Board’s rejections and remanding the case for redetermination of the question of obviousness.

      Delete
    33. Yep. What Anon said. Only add is that the non-precedential Vaid-whatever opinion belongs only to Pauline, among the active Fed. Cir. judges. Has about the same weight at Ex parte Jud.

      Delete
  23. "Jud was shat as a message to the examiners."

    Super lulz. If APJ's and/or PTO (mis)management actually think that examiners give a hoot about "precedential" or "informative," or any BPAI decision for that matter, they are even more clueless than everybody already thought they were. Which is pretty clueless.

    ReplyDelete
  24. With regard to declarations and other testimony, the BPAI in Jud asserted that testimony is the least common source of evidence for the level of skill in an art during examination. The BPAI gave the general impression of being dismissive of declaration testimony on the basis of such testimony allegedly being biased. The apparent basis for this being that declarations are provided by the applicant with little opportunity for direct challenge from the Examiner. However, it's not clear what the BPAI meant by 'little opportunity' as personal and anecdotal experiences indicate a great deal of direct challenge from Examiners regarding declarations during prosecution. Again, the BPAI's decision seems to be divorced from the realities of patent prosecution.
    Although the BPAI did indicate that a declaration well-grounded in facts may be quite probative if it directly addresses the level of skill in the pertinent art at the relevant time, the BPAI then went on to state that testimony contrary to the other evidence of record may, however, be accorded little weight. The BPAI failed to explain why a declaration well-grounded in facts that directly addresses the level of skill in the pertinent art at the relevant time should be accorded little weight if it was contrary to the other evidence of record (e.g., references hand-selected by the Examiner after a hindsight-based keyword search of the prior art where the keywords are taken from the very claims the Examiner is seeking to reject).

    ReplyDelete
    Replies
    1. The Jud decision discussed two common types of testimony regarding skill level that the Board deemed to be in themselves typically insufficient: (1) what education and work experience the hypothetical person of skill had and (2) whether the skill level was high or low. The Board explained that a statement that "a person of ordinary skill in the art had a Ph.D. in X and 7 years of relevant experience in Y" assumed that the reader already appreciated what such a person would have known and that a statement about education level and work experience can be relevant but only to the extent that it supports more direct evidence of what one of skill would have known (and known how to do). The BPAI further explained that the basis for a stated education level and work experience (if any is given) tends to be whatever would be necessary to understand and use references in the pertinent art. According to the BPAI, a statement that "the level of skill was high" is a summary of specific findings about the level of skill rather than a finding in itself. The BPAI cited the decision in DyStar Textilfarben GmbH v. C.H. Patrick Co. as supporting the Board's position that educational level and work experience findings are unhelpful and then stated that the BPAI took the DyStar decision as confirmation that a skill-level determination must not be at odds with what the prior art actually teaches about the art.

      Delete
  25. Now that at least two people have at least read the secret article, it's not fair to withhold knowledge of the marvelous "filter" that can be applied against prior art.

    So, how does the article explain that a reference is (Section 112, first paragraph) enabled, and yet the reference is "not within the level of ordinary skill in the art."

    ReplyDelete
  26. Hey, d0c! Do you believe that an Examiner does not have to determine the level of ordinary skill in the art before the Examiner can reject a claim under 112, first paragraph, as not being enabled?

    ReplyDelete
    Replies
    1. Yes, if your "does not have to" implies a requirement in every case.

      The relative skill of those in the art is one of the (Wands) factors to be considered with respect to whether a disclosure would require undue experimentation. However, undue experimentation is a conclusion reached by weighing many factual considerations. Some factors may predominate while others may be equivocal. Moreover, while addressing the Wands factors might be preferred, an enablement rejection does not per se require addressing the factors.

      Delete
    2. Here are the Wands factors as set out in MPEP 2164.01(a) Undue Experimentation Factors:
      There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
      (A) The breadth of the claims;
      (B) The nature of the invention;
      (C) The state of the prior art;
      (D) The level of one of ordinary skill;
      (E) The level of predictability in the art;
      (F) The amount of direction provided by the inventor;
      (G) The existence of working examples; and
      (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.

      It appears, however, that you did not notice this section"
      "It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner's analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. 858 F.2d at 737, 740, 8 USPQ2d at 1404, 1407."

      In fact, the very end of the Wands decision states:
      "Considering ALL of the factors, we conclude that it would not require undue experimentation to obtain antibodies needed to practice the claimed invention. Accordingly, the rejection of Wands' claims for lack of enablement under 35 U.S.C. Sec. 112, first paragraph, is reversed." (emphasis added)

      Since the Examiner's analysis must consider all the evidence related to EACH of these factors, the Examiner must determine the level of skill in the art.

      After all, it just makes senses. You ultimately can't claim that one of ordinary skill would not be able to make or use an invention if you don't have a determination of ordinary skill.

      Please provide support for your statement that "Some factors may predominate while others may be equivocal."

      Delete
  27. The question was about what an "Examiner" has to do. It should be self-evident that during patent prosecution some evidence might be present and some not. It might be unlikely to have evidence on the quantity of experimentation necessary based on the disclosure. However, it would be very likely to have evidence concerning the amount of direction provided by the inventor -- you have the specification. Some factors might be a wash -- such as relative skill of those in the art if there is roughly equal evidence in support of and against the determination that the artisan had sufficient knowledge to practice the invention, while other factors such as the level of predictability in the art and the nature of the invention might be uncontested. The factual considerations are WEIGHED -- one factor (such as relative skill) alone does not necessarily determine the outcome.

    Yes, the Wands court said "considering all the factors." But where, exactly, did the court discuss factors such as the breadth of the claims? The court did say there was a "high level of skill in the art at the time when the application was filed." Helpful. (BTW, the factors were first identified by the Board in Ex parte Forman. So let's call them the Forman factors.)

    It's not necessary that a court review all the Forman factors to find a disclosure enabling. They are illustrative, not mandatory. As a practical matter, although addressing the Forman factors is preferred by the PTO, it's not a requirement of law.

    And suppose, for example, that the invention fails to meet the utility prong of Section 101. The invention is not enabled as a matter of law. You would blindly follow the MPEP and require that all Forman factors be considered?

    ReplyDelete
  28. In other words, you can't cite any authority for your position, d0c. Both Wands and PTO say consider all the factors. Even if you give more weight to one or the other, you still need to determine skill level.

    ReplyDelete
    Replies
    1. Thanks for expressing that logic. It demonstrates what's been wrong with the all the arguments about how in a Section 103 rejection the examiner "must" provide explicit findings regarding the level of ordinary skill in the art. The arguments always begin with the unstated premise that it's a requirement of law.

      WWRRRRROOOOOOOOONNNNNNNGGGGGGG!!!!!

      Delete
    2. The majority in Wands did not say "consider all the factors." They said that "considering all of the factors, we conclude. . . ." However, as Judge Newman pointed out in dissent, the majority had NOT considered all the factors.

      Later cases such as Amgen v. Chugai Pharmaceutical made clear that consideration of the Wands factors is not mandatory.

      So, IF the examiner attempts a full Wands analysis there should be a finding about the relative skill in the art.

      Delete
    3. Wands and MPEP 2164.01(a) are about enablement, not obviousness. Try to keep up.

      If an Examiner makes a 112(1) rejection, they must explicitly determine the level of skil in the art as part of their 112(1) analysis.

      However, if they make no 112(1) rejection (and throwing aside the fact that they have theoretically performed a 112(1) finding the claims to be enabled, and thus theoretically performed a skill level determination), for obviousness, the Examiner is only allowed to rely on implicitly determining skill level via mere citation of the references if the Examiner is able to demonstrate that the references reflect an appropriate level of skill AND show that an implicit skill level determination based on references found by the Examiner using hindsight-based keyword searches of the prior art did not influence the ultimate conclusion under 35 USC 103.

      Now since it is indisputable that a hindsight-based keyword search of the prior art to find references to reject the claims (while using the very same references to implicitly determine skill level ) influences the ultimate conclusion under 35 USC 103, Examiners must always explicitly determine skill level.

      Delete
    4. "If an Examiner makes a 112(1) rejection, they must explicitly determine the level of skil in the art as part of their 112(1) analysis."

      Cite?

      "Examiners must always explicitly determine skill level."

      Cite?



      Delete
    5. "Later cases such as Amgen v. Chugai Pharmaceutical made clear that consideration of the Wands factors is not mandatory."

      Perhaps not mandatory in patent litigation but the PTO makes it mandatory of Examiners. MPEP 2164.01(a) is pretty clear that "[i]t is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner's analysis MUST consider all the evidence related to EACH of these factors, and any conclusion of nonenablement must be based on the evidence as a whole." [emphasis added] MPEP 2164.01(a) requires that the examiner's analysis must consider all the evidence related to each of these factors.

      Delete
    6. "So, IF the examiner attempts a full Wands analysis there should be a finding about the relative skill in the art."

      100% in agreement.

      Delete
    7. "The PTO makes it mandatory of Examiners."

      Yeah, the next time the examiner fails to go through all the Wands factors, file a petition. Come back and let us know how that turns out.

      Delete
    8. File a petition and a complaint with the ombudsmen.

      Delete
    9. Not to leave you in suspense. When you file the petition you will be politely but firmly told that a 112, first paragraph rejection has been made and it's a matter for appeal, not petition.

      On appeal argue (1) that the examiner loses because the examiner failed to address all the Wands factors and (2) addressing all the Wands factors is required by law.

      With all the new APJs at the Board you might get a panel that (1) thinks they are supposed to be supervising the examining corps or (2) do not know the law.

      It's worth a shot.

      Delete
    10. Not to emphasize your inexperience, but you petition procedural matters and appeal substantive matters. You can petition a failure to perform a procedural matter and appeal the substantive failure.

      Delete
    11. Yes, you can petition a procedural matter when it does not relate to a statutory rejection of a claim.

      Delete
    12. Inexperience? You're going to petition an examiner's rationale in making a rejection? Priceless. Where do you guys get this stuff?

      Delete
    13. Rejections have both procedural and statutory components.

      Delete
    14. "Rejections have both procedural and statutory components."

      Correct. That's why rejections are not petitionable.

      Delete
    15. MPEP 2164.01(a) makes discussion of all the Wands factors "mandatory" on the examiner?

      "While the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the written enablement rejection." MPEP 2164.04

      Petition away.

      Delete
    16. Taking that quote out of context of the entire paragraph to use only so much of the pargraph that supports your position is a clear fail on your part.

      "While the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the written enablement rejection. The language should focus on those factors, reasons, and evidence that lead the examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to ONE SKILLED IN THE ART is not commensurate with the scope of protection sought by the claims. This can be done by making specific findings of fact, supported by the evidence, and then drawing conclusions based on these findings of fact. For example, doubt may arise about enablement because information is missing about one or more essential parts or relationships between parts which ONE SKILLED IN THE ART could not develop without undue experimentation. In such a case, the examiner should specifically identify what information is missing and WHY ONE SKILLED IN THE ART could not supply the information without undue experimentation. See MPEP § 2164.06(a). References should be supplied if possible to support a prima facie case of lack of enablement, but are not always required. In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). However, specific technical reasons are always required."

      Try again, bucky.

      Delete
    17. Obviously, I need to try again.

      "it is not necessary to discuss each factor in the written enablement rejection"

      Explain how the phrase makes discussion of all the Wands factors mandatory on the examiner. In simple terms, of course, such that I might understand.

      Delete
    18. such that I might understand.


      Geez, you're like the Black Knight from Monty Python and the Holy Grail arguing that you've only got a flesh wound.

      Delete
    19. Black Knight? Nope, just an explorer. I'm fascinated when somebody can only support an argument with logic where "should" becomes "must." You guys should (must) write an article or something.

      Delete
    20. I'm fascinated how you believe an Examiner can know the level of ordinary skill in the art without bothering to determine the level of skill in the art.

      Delete
    21. "I'm fascinated how you believe an Examiner can know the level of ordinary skill in the art without bothering to determine the level of skill in the art."

      One determination pretty much does it in my art. The one I did back 5 years ago pretty well covers most of the cases I deal with. The person of skill in my art is pretty much on the same level case by case and year to year. I would imagine it is much the same in other arts.

      Delete
    22. "One determination pretty much does it in my art."

      That wasn't the question. Based on your response, you admit that an Examiner can't know the level of ordinary skill in the art without making determination of level of skill in the art.

      Delete
    23. Just to be fair (imagine that), there was no question.

      Delete
    24. The question was inherent but Examiners have always had trouble distinguishing that which is inherent from that which isn't.

      Delete
    25. You are correct. Examiners have trouble recognizing what is inherent.

      Explain, slowly and in terms so simple that even an examiner may understand, how the words "not necessary" inherently mean "required."

      Delete
    26. "Explain, slowly and in terms so simple that even an examiner may understand, how the words "not necessary" inherently mean "required.""

      So YOU believe an Examiner can know the level of ordinary skill in the art for a 112(1) rejection without bothering to determine the level of skill in the art? Please elaborate.

      Delete
    27. "Explain ... how the words 'not necessary' inherently mean 'required.'"

      "So YOU believe an Examiner. . . ."

      Don't ya just love non sequiturs.

      I'd elaborate further, but it'd be lost on the poor examiners. They don't understand the persuasive power of non sequiturs. Just as they lack the skills to understand how "not necessary" means "mandatory."

      Delete
    28. So now you're admitting that the only way an Examiner can know what one of skill would know is by determining skill level.

      Delete
    29. Yes, yes. You got me. I admit it. I'm admitting whatever it is that you can't articulate but think I'm admitting. For whatever reason it is that you think so.

      [Must have been an inherent admission. Not sure examiners can grasp that one, either.]

      Delete
    30. You doth protest too much.

      Delete
  29. Anon. Are you talking to yourself or any Anon in particular?

    ReplyDelete
  30. Must? Should? There's a difference. You guys draft claims? Explains a lot.

    ReplyDelete
  31. "Geez, you're like the Black Knight from Monty Python and the Holy Grail arguing that you've only got a flesh wound."

    Please go see another movie. You're boring us with that same tired reference.

    ReplyDelete
    Replies
    1. Wow! You were so quick on your feet with that comeback! It only took you a mere three days!

      Delete
  32. It wasn't a comeback as I wasn't the person you were responding to. I was just an innocent bystander bored by your recycled Monty Python reference.

    But seriously, see another movie.

    Was this comeback fast enough for you?

    ReplyDelete
  33. Hitler.

    Now we can all move on.

    You're welcome.

    ReplyDelete