Thursday, January 3, 2013

Board reverses anticipation based on inherency when Applicant provides counterexamples

Takeaway: An Applicant appealed claims to a user interface and argued the limitation "determining a distance between the focus of attention and the display event." The Examiner relied on a drawing in an Excel user manual showing "tracer arrows," in conjunction with an inherency argument. Though the Examiner went to some effort to explain how one could draw inferences about what Excel was doing from the screen shot, the Applicant used counterexamples to demonstrate that Excel wasn't necessarily determining distance. (Ex parte Mackinlay, PTAB 2012.)
Details:
Ex parte Mackinlay
Serial No.  10/687,486; Tech Center 2100
Decided:  June 18, 2012

The claims were directed to aspects of a user interface. A representative claim on appeal read:
     1. A method of shifting attention comprising the steps of:
     determining the location for a focus of attention;
     determining a display event;
     determining the location of the display event;
     determining an attention shifting display element based on the display event, the determined location of the display event and the focus of attention; and
     determining a distance between the focus of attention and the display event;
     wherein the attention shifting display element is determined based on the determined distance, such that different types of attention shifting display elements are determined for different distances. 
(Emphasis added.)

The Examiner rejected the independent claim as anticipated by the printed publication "User's Guide Microsoft Excel, Version 5.0 1993" (Excel). The Examiner read the "determining an attention shifting element" on Excel's "tracer arrows to show the flow of data into a formula, based on the starting active cell within a worksheet, and the users choice of tracing precedents or dependents." The Examiner asserted that FIG. 4 of Excel taught "determining the distance 'length of the tracer arrow', from beginning active cell to the point of the arrow."



The Examiner elaborated on his reasoning in an Advisory Action:
Excel teaches a tracer arrow starting in one cell and ending in another cell, which is acknowledge by the Applicant. One of skilled art has to infer that some sort of calculations of the "length of the tracer arrow" has to be taken into consideration by the system in order to draw the arrow accordingly. Knowing the relative number of pixels between the two cells, as the Applicant states, provides measurements to the system for calculating how long to create the tracer arrow to achieve the goal of the arrow starting in one cell and ending in another.

On appeal, the Applicant argued the "determining a distance" limitation. The Applicant first explained that the reference did not explicitly teach the limitation:
The applied reference makes no indication or reference to the length of the tracer arrow, but instead discloses tracers that "track data flow by drawing arrows connecting the active cell with related cells on your worksheet. Tracer arrows point in the direction of data flow." See page 668, section "About Tracer Arrows" from Excel. Thus, Excel merely discloses that a trace arrow will originate in one cell and terminate in another cell.

The Applicant then attacked the Examiner's inherency argument by explaining how Excel could draw the tracer arrows without using distance:
[T]he graphic generating software used by Excel need only know the relative pixel coordinates between the two cells, not the distance. The arrow can then be drawn by many methods not requiring a calculation or determination of distance, for example determining the slope of the trace arrow and subsequently generating the trace arrow graphic starting at one cell and using the slope and horizontal range. In this example[,] no distance is calculated.

In the Answer, The Examiner elaborated on his inherency argument
     In order for Excel to automatically draw the "tracer" lines and arrows, the software application makes at least three determinations: 1) the location of the "active" cell; 2) the location of each "related" cell; and 3) the direction of the flow of data between the "active" cell and the "related" cells.
     Because Excel automatically makes these determinations and then automatically draws the "tracer" lines and arrows between the "active" cell and the "related" cells, Excel discloses determining a distance between the ''focus of attention" (i.e., the active cell) and the "display event" (i.e., the drawing of the "tracer" lines and arrows between the "active" cell and the "related" cells).

The Board agreed with the Applicant, finding that the reference did not disclose the feature at issue. With regard to inherency, the Board explained:
As pointed out by Appellants, there are at least two alternative ways to connect cells in a spreadsheet with tracer arrows, such as by connecting the respective cell coordinates, or by using a slope and horizontal range. In both alternatives proffered by Appellants (App. Br. 12-13), we agree that no distance determination is necessary.

The Board then reversed the anticipation rejection.

My two cents: A good example of the best way to beat an inherency argument: prove that the feature at issue is not actually required by demonstrating an alternative. The next time you make an inherency argument, spend a few minutes and see if you can come up with a counterexample. Your argument will be much more persuasive.

I do have one nitpick with the decision, in that I don't read the Applicant's inherency argument as offering two alternatives. Yes, the slope/range discussion is clearly one counter-example. But I'm not sure what the Board is referring to by "connecting respective cell coordinates". That sounds to me like the Applicant's characterization of the reference's explicit teachings. But hey, you only need one counterexample to win on inherency.


135 comments:

  1. "A method of [making somebody think about something] comprising the steps of:

    "determining" X 5,

    and the coup de grace, "wherein."

    AAAAAAGGGGGHHHH!!!!!!!

    Do we have any elephants in the room?

    ReplyDelete
    Replies
    1. Fed up with the USPTOJanuary 4, 2013 at 9:49 PM

      Too bad In re Lowry exists ... you know, the part where the Federal Circuit says you cannot ignore claim limitations.

      I know it is inconvenient at the USPTO to actually examine applications based upon the language found in the claims, but please try to do your job.

      "and the coup de grace, 'wherein'"
      You do know that the "wherein" clause is found in every art unit?

      Delete
  2. Glad to see that O&B is still getting high quality patents for Xerox PARC. I wrote a few gems like this one myself back in the day.

    I don't see any elephants. Neither did the panel of APJ's apparently. As all of the current APJ's are the equivalent of partners at big time firms, or so says the current Chief APJ, I have to believe that this patent is solid gold.

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    Replies
    1. "As all of the current APJ's are the equivalent of partners at big time firms"
      I hope you are being sarcastic. I was at big law and an examiner with a law degree (i.e., all that it takes to make it to the PTAB) would barely get a sniff if they submitted a resume.

      Most APJs would be considered mid-level associate material ... very few would be considered partner material. The problem is that you first have to rid them of the taint of the USPTO -- and mark my words, there is a taint.

      Delete
    2. I was being a little bit sarcastic. Some of the recent hires are actually quite impressive. Some are exactly as you describe.

      Delete
  3. "One of skilled art has to infer that some sort of calculations of the 'length of the tracer arrow' has to be taken into consideration by the system in order to draw the arrow accordingly."

    Uh no. All it takes to draw a line is two points. You don't need to measure the line to draw the line. Isn't this covered in 6th or 7th grade math? Regardless, it is emblematic of Examiner analysis -- "I need a rejection, so I'll make up sh1t and hope the PTAB buys it."

    "A good example of the best way to beat an inherency argument: prove that the feature at issue is not actually required by demonstrating an alternative."
    But let's not forget that the Examiner still had the burden of proof. Unfortunately, this requirement is lost on most APJs, Examiners, and attorneys.

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  4. My interest lies in how to construe "determine". It's like "fix", "prescribe" or "set", isn't it? It is different from "measure", isn't it?

    If so, determining the two end points of an arrow in co-ordinate space is by itself quite enough to "determine" the "distance" between those two points, no?

    When I think how many duly issued claims include the word "predetermined", I think we need to know what the wretched word "determine" actually means.

    Fix, or measure? Any thoughts anybody?

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    Replies
    1. Fix? Measure? In this case, "determining" means looking and thinking. And maybe pencil and paper if the thinking gets too hard.

      Delete
    2. Classic Examiner BS ...

      "determining a distance between two points" = "thinking about the distance"

      Bob the pilot: "John, can you determine the distance between our current location and our destination?"
      John the copilot: "Bob, I've already done it."
      Bob the pilot: "Well, what is it?"
      John the copilot: "I don't understand your question?"
      Bob the pilot: "What is the distance?"
      John the copilot:: "I've thought about the distance … you mean you actually wanted me to identify a specific distance?"
      Bob the pilot: "Isn't that what I asked?"
      John the copilot: "I only thought you wanted me to think about it."
      Bob the pilot: "Idiot"

      Delete
    3. John the copilot: "I see what you mean. I can write down the distance on this piece of paper. I can even say it out loud if you want."

      Bob the pilot: "NOW it's a statutory process."

      John the copilot: "Idiot."

      Delete
    4. ... except construed consistently with the specification, this is computer-implemented.

      "Bob the pilot: 'NOW it's a statutory process.'"
      Funny that neither the Examiner nor the PTAB rejected it under 35 USC 101. That must stick in your throat?

      Delete
    5. "construed consistently with the specification, this is computer-implemented."

      Correct. That's why the claims in CyberSource were drawn to patent-eligible subject matter. Wait, what? They weren't?

      "must stick in your throat?"

      Why? You really think a claim is non-statutory only when it is rejected for being non-statutory?

      Delete
    6. software = improvement to machine = statutory subject matter (see 35 USC 101). Quite simple.

      You also forgot the finding in Cybersource that "All of claim 3's method steps can be performed in the human mind." The claim above is arguably more tied to a machine than claim 3 of Cybersource.

      Regardless, we'll see how the Federal Circuit monkeys arounds with things in CLS Bank.

      Delete
    7. Software is in a fifth category of statutory subject matter --"improvement to?" Wow, that _was_ quite simple. Why didn't somebody at the Supreme Court, Fed. Cir., Fed. District Courts, BPAI, PTAB, or ITC come up with that first? I do enjoy learning new things from the gathering of experts here.

      So, which of the five "determining" steps in the claim cannot be performed in the human mind? And why?

      Delete
    8. "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"

      You notice that part of "improvement thereof"? The thereof refers back to "process, machine, manufacture, or composition of matter." Are you going to argue that software isn't an improvement to a machine?

      "So, which of the five 'determining' steps in the claim cannot be performed in the human mind?"
      Claims are construed consistent with the specification. I see nothing in the specification that enables how this process is performed by the human mind alone. On the contrary, the enabled invention is directed to a computer-implemented process.

      Delete
    9. "You notice that part of 'improvement thereof'? The thereof refers back to 'process, machine, manufacture, or composition of matter.' Are you going to argue that software isn't an improvement to a machine?"

      The four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful. In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).


      "Claims are construed consistent with the specification. I see nothing in the specification that enables how this process is performed by the human mind alone. On the contrary, the enabled invention is directed to a computer-implemented process."

      Yeah. Just as in CyberSource.

      Does this kind of rhetoric work for you with examiners and judges? How often? Please provide examples.

      Delete
    10. "The four categories [of § 101] together describe the exclusive reach of patentable subject matter."
      And your point is??????

      Software is almost always claimed as a method, machine, or product.

      "Does this kind of rhetoric work for you with examiners and judges?"
      Rhetoric??? You mean the plain language of the statute. Unfortunately, the plain language of the statute frequently fails to work with Examiner and the PTAB.

      One day, I'll tell you about application in which both the Examiner and the APJ thought that art with a date after the filing date of my application qualified as "prior" art under 35 USC 102. Regardless, I have low expectations that anybody at the USPTO applies the law consistently correctly.

      Delete
    11. Don't waste your time here. You need to start this very minute on selling your idea to the PTAB, Fed. Cir., and/or Supremes that software falls into the statutory class of "machine." Time's a-wastin'

      Delete
    12. "One day, I'll tell you about application in which both the Examiner and the APJ thought that art with a date after the filing date of my application qualified as "prior" art under 35 USC 102."

      Too bad applications don't have anything like serial numbers. If they did, we might be able to verify that.

      Delete
  5. I'm the anon at Jan 5 at 4:33am. Copying from this morning's above:

    "Bob the pilot: "John, can you determine the distance between our current location and our destination?"

    and adding my own answer:

    Yes Bob, I can. The locations in co-ordinate space of i) our present position and ii) our destination determine the distance separating them. I have already plotted those two points. So, I have already determined the intervening distance.

    I'm not on about the degree of abstractness of "determining". Rather, I'm on BRI.

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    Replies
    1. Depends on which end of the elephant you approach first. Yes, when you connect cells in a spreadsheet you have determined the distance in Euclidian space between the respective coordinates. That's why the claim says "calculating" a distance. Wait, what? It doesn't?

      Delete
    2. "I have already plotted those two points"

      Plotting a line between two points is not determining a distance. Most examiners forget that the standard for claim construction is broadest, REASONABLE, construction. If I ask somebody to "determine a distance," (unless they are patent examiners trying fit a square peg into a round hole), they are going to respond with a measurement of a distance.

      Just because you can dream up an interpretation doesn't make it reasonable.

      The claims also recites "the attention shifting display element is determined based on the determined distance." What is "the determined distance" based upon your cockamamie claim construction?

      Also, the claims are to be construed consistent with the specification. The specification describes "determining a distance" as calculating the distance – not "thinking about a distance."

      The problem with too many Examiners is that they don't read the specification before rejecting the claims. I've (often) seen claim language that was EXPLICITLY defined in the specification and examined inconsistently with that explicit definition.

      "have determined the distance in Euclidian space between the respective coordinates"
      What is the determined distance if all you've done is connect them?

      BTW – distance is typically associated with a unit of measure. Try to contemplate that when responding.

      Delete
    3. "The specification describes "determining a distance" as calculating the distance – not "thinking about a distance."

      Cite?

      Delete
    4. "Cite?"

      How about your provide a real world example where someobody said/wrote "I determined the distance" and meant "I thought about the distance."

      FYI .... http://en.wikipedia.org/wiki/Parallax

      See discussion of parallax being used to "determine the distance."

      Delete
    5. "The specification describes. . .."

      And you cite wikipedia about what the specification describes.

      Beautiful.

      Delete
    6. I only briefl reviewed the case, but I don't recall either the examiner or the Board ever questioning what "determining the distance" means/covers/whatever. Not sure why so much discussion about it here. Examiners and APJ's are not exactly reluctant or reticent to reject under 101. If neither did in this case, seems like a pointless exercise to debate it on this site. Especially when Karen discussed the case for its relevance to the issue of inherency.

      JMO

      Delete
    7. "And you cite wikipedia about what the specification describes."

      The question "Cite?" was ambiguous as to what needed a cite and from where the cite was being requested. My comments were directed to the notion of "determining a destination" should be construed as calculating a distance.

      Regardless, review the following passage:
      "In wideband display systems, such as the wideband display systems disclosed in co-pending, co-assigned application Ser. No. 10/687,486, to Mackinlay et al., the distance between opposing edges of the wideband display may be quite large. A fluid spreadsheet animation of the constraint graph for a selected cell in a wideband spreadsheet display is likely to cover a long distance. Moreover, animations of this type are designed to minimize intrusiveness by completing within a second. Therefore, as the size of the wideband display increases, the animation path also increases. This results in faster animations that become increasingly difficult for the user to detect. To identify these long animation paths, the distance between the location of the display events and the focus of attention is determined. In various exemplary embodiments according to this invention, the distance is determined based on extrapolations of physical dimensions of the display system. For example, if three 25 inch or 63.5 centimeter displays are integrated into a composite wideband display, the physical width of the integrated wideband display is based on the sum of each display width and the sum of the width of each seam between the first-second and second-third displays respectively. Once the distance between the focus of attention and the location of the display event is determined, control continues to step S700."

      Delete
    8. Reviewed. Now cite the part of the specification that says you cannot think about a distance.

      Delete
    9. "Now cite the part of the specification that says you cannot think about a distance."

      Lulz. Nothing like examiner "logic" for a good laugh.

      The issue is what is the broadest reasonable interpretation of "determining the distance"? Not what sh!t can the examiner make up to reject the claim.

      Delete
    10. ... because everybody knows that claim scope is limited to the disclosed embodiments . . .

      Delete
    11. "Reviewed. Now cite the part of the specification that says you cannot think about a distance."
      I'm sorry, applications aren't written like "X means A or B and not P or Q."

      Let's go back to my prior question -- ignored by the peanut gallery. The claims also recites "the attention shifting display element is determined based on the determined distance." What is "the determined distance" based upon your cockamamie claim construction involving "thinking about the distance"? Is the "determined distance" some warm, fuzzy feeling you get like when you watch youtube videos of kittens playing? Perhaps it’s the feeling you get when you see a picture of an old flame that dumped you (harshly)? What is "the determined distance" when all you do is think about it?

      Also as I noted above (and also ignored by the peanut gallery), the term distance connotes some type of unit of measurement. What is the unit of measurement involved with thinking about distance? Is "far," "not so far," "close," "really close," or "so close I could smell its breath" a unit of measure?

      Finally, can you provide any example (from any source) in which the term "determine a distance" (or close variation thereof) merely described "thinking" about a distance without obtaining an identification of that distance? I also asked that question above, and although I suspect I won't get an answer, I'll still ask it again.

      You cannot reason somebody out of a position they were never reasoned into to begin with. Examiners start with the "best" prior art they found and then bend the facts/analysis of the prior art to fit the claims regardless of the reasonableness of the "bending" necessary to make the rejection. I've seen it hundreds of times.

      Examiners are scared to allow claims so they just make sheet up. It wasn't always like this, but it has been for nearly the last decade.

      Delete
    12. "because everybody knows that claim scope is limited to the disclosed embodiments"

      because everybody knows examiners are incapable of producing evidence to support the reasonableness of their expansive claim constructions

      Look at the root of the word "reasonable" ... it is "reason." Try to provide a reason that your interpretation is reasonable to one skilled in the art. Perhaps you can find a single instance in which your "reasonable" interpretation was used as you suggest.

      Delete
    13. "... because everybody knows that claim scope is limited to the disclosed embodiments . . ."

      Never said it was. Nice strawman though.

      Delete
    14. Just now, I determined that I'm sitting three feet from a computer monitor.

      Without using a big computer brain!!! Without instruments!!! In my head!!!

      {Don't tell anybody. It's too radical a concept. Upsets people. Makes 'em mad.]

      Delete
    15. Makes 'em mean mad.

      Delete
    16. "I determined that I'm sitting three feet from a computer monitor."

      With your brain alone? Are you a dolphin? If not, I suspect you "guessed" you were 3 feet from a computer monitor -- not determined.

      Delete
    17. Nope. Not guessed. 100 per cent sure that at least some part of me is exactly 3 feet from the monitor. I'm willing to bet your life on it.

      Delete
    18. Don't say that. Don't use common sense. Makes 'em mad. Makes 'em mean mad.

      Delete
    19. Now I get it. "One of ordinary skill in the art" means "what an idiot." Explains most of the "arguments" I see.

      Delete
    20. I'm late to the thread, but I'd like to pick up on this point, because I too find the question of "what do we mean by determining" to be interesting.

      >I have already plotted those two
      >points. So, I have already
      >determined the intervening
      >distance. [It's about] BRI.

      Your BRI of "determined" seems to be that the distance has been determined (as evidenced by the plotting of the points), whether you recognize it or not.

      So maybe what the Applicant intended to convey by "determining" was something along the lines of "recognizing"? As in you not only *know* what the distance is, but you recognize that fact.

      I'm not sure I like "recognizing" though because it sounds more like a human thing that a software thing. But it might be closer to what we really mean by determining in claims like this.

      Maybe if the claim included an
      action that did something with the determination -- like displaying the attention element that was based on the determination -- you wouldn't need recognizing.

      In fact, maybe that's the key. I think it's been argued elsewhere in this comment thread that even reading "determining" as inherent, the Examiner didn't show that the display element was based on the determination.

      Just thinking out loud.

      Delete
    21. "Maybe if the claim included an
      action that did something with the determination -- like displaying the attention element that was based on the determination -- you wouldn't need recognizing."

      That is a key. Notice that the claimed method (i.e., the INVENTION)doesn't act on anything in the real world. The applicant disclosed an algorithm (an idea) and a real-world application of the idea. The claim is not limited to any practical application of the idea, but is drawn to the idea itself -- under BRI.

      That's why it's difficult to get past 101 before reaching 102/103. Additionally, as you and everybody else have demonstrated, we are left to contemplate/debate/wonder about what applicant was trying to claim with the algorithm. It's thus also difficult to get past 112 before reaching consideration of the prior art.

      Delete
    22. >wonder about what applicant was
      >trying to claim with the
      >algorithm. It's thus also
      >difficult to get past 112

      You didn't say 112 First or Second, but your comment suggests you're thinking about indefiniteness.

      If you're suggesting that the claim at issue is indefinite because we're talking about how to interpret it, I disagree. I spend a great deal of my time as a patent attorney thinking about what someone else might argue about the meaning of a claim without worrying about indefiniteness. Broad <> indefinite.

      Perhaps you have more specific reasons to say the claim at issue has 112 Second, or even First, problems?

      Delete
    23. Section 112, second para. consideration comes before first para.

      The claim is so abstract (an algorithm with nothing beyond steps of "determining") that no one can seem to agree on what "determining" might entail. You yourself said that maybe they meant "recognzing" when they said "determining." Maybe. Maybe not.

      A potential infringer must be able to reasonably ascertain whether it is infringing the claim. Would it infringe if it "calculated" a distance between the focus of attention and the display event? Would it infringe if it "measured" a distance between the focus of attention and the display event? Would it infringe if it "recognized" a distance between the focus of attention and the display event? And what about the "display element" being "determined." Is the display element calculated, measured, recognized, or something else?

      But if the claim is deemed to cover every conceived and conceivable way of "determining" -- calculating, measuring, recognizing, etc. etc., etc. -- then the 112, first problems might be more important than 112, second. But the threshold inquiry of 101 comes before that, where the claim fails for being directed to an abstract idea.

      Delete
    24. >You yourself said that maybe they
      >meant "recognzing" when they said
      >"determining." Maybe. Maybe not.

      Ah, but what an applicant/patentee *intends* the claim to mean is not the relevant issue. It's important to think about what a claim *might* mean when drafting it and when asserting/defending in litigation. And it's fun to do so in blog posts. But such speculation is not persuasive evidence that the claim is indefinite.

      >Would it infringe if it "calculated"
      >a distance between the focus
      >of attention and the display
      >event? ... [other questions]

      I dunno. I haven't spent the time to come up with a BRI. But if the answer to all these questions is Yes, that just makes it broad, not indefinite.

      Just because you can ask a lot of questions about what the meaning of a claim term does not make it indefinite.

      Lots of claims use "determining" in a manner very similar to this one. I can think of only ONE in which the Board found "determining" indefinite. (Ex parte Cohen, 11/172,492). That fact is not dispositive, but perhaps relevant.

      >But if the claim is deemed to cover
      >every conceived and conceivable way of
      >"determining" then 112 First
      >might be more important

      Agreed that if the claim is deemed this broad under a REASONABLE interpretation, it's vulnerable to written description.

      So far we don't have much agreement on BRI here.

      Delete
    25. "Just because you can ask a lot of questions about what the meaning of a claim term does not make it indefinite."

      That's true, but I haven't seen much in the way of answers.

      I understand that people do not like 112 rejections. But the disagreement on BRI here (not just between you and me) should show that the claim is of indefinite scope.

      The claim represents a failure of process. If we pretend that it can get past the summary judgement phase (CyberSource), then there will be a Markman hearing. There would probably be one expert testifying that the ordinary artisan would understand "determining" to mean, for example, "measuring" but not "calculating." The opposing party would sell "calculating," not "measuring." In this simplified example, the court would probably not hold the claim insolubly ambiguous, but would adopt one of the competing meanings.

      Following trial and Fed. Cir. appeal, the Fed. Cir. de novo might reverse or remand based on the court's picking the wrong meaning, or not coming up with its own.

      Better to make the rejection in the PTO, when the claims can be amended. A purpose of prosecution is to remove the type of ambiguities that are being debated here. If the applicant obviates speculation by putting what was intended into the claims, the process works.

      Delete
    26. I looked at the PTAB decision that was cited about "determining." It is consistent with what I said about indefiniteness. And vice versa.

      Some lawyers seem not to get that a claim could be "indefinite" in the PTO but not "insolubly ambiguous" in a district court or at the ITC. It should not be suprising that the result might be different in view of the different rules of claim construction, different tools for claim construction, different burdens, different evidentiary standards, and the presumption of validity. Especially the presumption of validity, which requires that claims are construed, if possible, to preserve validity when the claim is determined to contain ambiguity.

      But to re-iterate, I do not think that the claim is indefinite. So we agree on that. But I think the claim means what it says and that the ordinary and customary meaning of "determining" includes determining in the human mind. I do not agree with the advocates who contend that the term means something less than its ordinary and customary meaning, although they are unable to say what that would be with any reasonable certainty.

      Delete
  6. he should have simply noted that the user does this step inherently.

    Or 101'd it.

    Stupid examiners :(

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  7. "Explains most of the 'arguments' I see."

    Lulz. You explain most of the rejections I see.

    Applicant: The reference doesn't disclose or suggest determining a distance between the focus of attention and the display event.

    Examiner: Well, that could mean anything. It could mean just thinking about the distance.

    Applicant: Uhm, no, it can't mean anything. When read in light of the specification and consistent with what one of ordinary skill in the art would understand it to mean, it means determining the distance between the location of the display events and the focus of attention to to identify the long animation paths as discussed in the spec.

    Examiner: Well, there's nothing in the spec that says it can't mean the ridiculous interpretation I've given it, so I'm maintaining the rejection.

    Applicant: Great. We'll see you at the Board.

    One of ordinary skill in the art is not an idiot. It's examiners like you that are idiots.

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  8. Exactly!!! What idiot would think you could determine a distance without a BIG COMPUTER BRAIN???

    But then, your explanation (i.e., allegation) about what "determining a distance" when "read in light of the specification and consistent with what one of ordinary skill in the art would understand it to mean" does not require a computer, either. So you and the Examiner are in agreement. No need to needlessly lose an appeal.

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    1. "your explanation (i.e., allegation) about what 'determining a distance' when 'read in light of the specification and consistent with what one of ordinary skill in the art would understand it to mean' does not require a computer, either"

      Unfortunately, your ability to follow a conversation is lacking. The question involves not whether a "determining a distance" could be made solely by a computer. The question involves whether "thinking about a distance" discloses "determining a distance."

      Read in light of the specification and consistent with the definition that one or ordinary skill in the art would give it, the claimd "determining a distance" requires obtaining a measure of a distance between between the focus of attention and the display event.

      Regardless ... this is a classic Examiner response ... address an issue that was not raised.

      Delete
  9. "No need to needlessly lose an appeal."

    You write like an examiner.

    And I think applicant won this appeal, or did I miss something?

    "your explanation...does not require a computer, either."

    You have terrible reading comprehension. But as that's a prerequisite for the examiner job, you're perfect for the position!!

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  10. "Otherwise, during prosecution claim terms are given their ordinary and customary meaning as understood by a person of ordinary skill in the art"
    Let me give you the first line of MPEP 2111: CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION IN LIGHT OF THE SPECIFICATION

    "I submit that one skilled in the pertinent art would not believe that 'determining' a distance requires a BIG COMPUTER BRAIN."
    Stop modeling yourself after MM. I know MM and you aren't MM. FYI -- for the second time, that wasn't the issue. One of the issues being discussed is that the claimed invention is directed to a computer-implemented process. To suggest otherwise is not consistent with the specification.

    "When claims are drafted so impossibly broad as to pre-empt thought"
    Stop QQ'ing ... my computer is shorting out from all the tears. You can "think" about your distance all you want ... no one is going to sue you on these claims.

    BTW -- Personally, I do not like "determining ..." claim language. It is "loose" language.

    ReplyDelete
    Replies
    1. (1) You missed that the poster was describing the process of applying the "broadest reasonable interpretation in light of the specification." (2) You ignored CyberSource completely.

      Congratulations. Good job.

      Delete
  11. I think the far more interesting question here is that, even in a case of alleged anticipation, when the Examiner is invoking what one of ordinary skill in the art would have allegedly known, is the Examiner required to make an explicit determination of skill level so as to provide an objective basis for supporting the allegation.

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    Replies
    1. "in a case of alleged anticipation"
      So we are talking about a 102 rejection. You need identical disclosure. If it isn't explicit, you are only left with arguing the teaching is inherent.

      "is the Examiner required to make an explicit determination of skill level so as to provide an objective basis for supporting the allegation"
      The Examiner has to present some evidence to support the Examiner's finding.

      Delete
    2. "'is the Examiner required to make an explicit determination of skill level so as to provide an objective basis for supporting the allegation'
      The Examiner has to present some evidence to support the Examiner's finding."

      Uh, no. Skill level determination has nothing to do with anticipation. See "obviousness."

      Delete
    3. There is a difference between skill and knowledge.

      "would have allegedly known" goes to the Examiner's knowledge.

      Delete
    4. Skill level determination has nothing to do with anticipation

      If the Examiner drags what one of ordinary skill would have known into any part of an anticipation rejectionn, it certainly does.

      Delete
    5. "If the Examiner drags what one of ordinary skill would have known into any part of an anticipation rejectionn, it certainly does."

      Why? Is it because the language "person having ordinary skill in the art" is in Section 102, not 103? See Graham v. John Deere Co. (resolving the level of ordinary skill in the art of anticipation).

      Delete
    6. Okay, we get it. In an anticipation rejection, you believe that you can't challenge an Examiner's claim that one of ordinary skill in the art would have allegedly known something simply because the Examiner said it in the context of an anticipation rejection. You're wrong, but at least we now know the basis for your erroneous belief.

      Delete
    7. Thanks for telling me what I believe, but you're wrong about that too.

      I believe that in an anticipation rejection the Examiner might allege that missing descriptive matter is necessarily present in the thing described in the reference, and that it would be recognized as such by persons of ordinary skill in the art (i.e., inherent). I believe that nobody needs to resolve the level of ordinary skill in the art in an anticipation rejection. I believe that showing that something is "recognized by persons of ordinary skill" is separate and distinct from resolving the level of ordinary skill in the art. I believe that skill level determination has nothing to do with anticipation. I believe you should compare the language of Section 102 and Section 103. That's what I believe.

      Delete
    8. Your belief is erroneous but at least we've gotten to the root of your problem.

      "I believe that showing that something is "recognized by persons of ordinary skill" is separate and distinct from resolving the level of ordinary skill in the art."

      Please explain why you believe you can know what would be recognized by persons of ordinary skill if you have no idea what the level of ordinary skill is?

      Delete
    9. "Please explain why you believe you can know what would be recognized by persons of ordinary skill if you have no idea what the level of ordinary skill is?"

      A person of ordinary skill is presumed to have knowledge of all analogous art. A single sentence in a reference from the relevant field of endeavor can show that something is recognized by persons of ordinary skill. Please explain why you believe that the single sentence would be sufficient to resolve the level of ordinary skill in the art. But first read Section 102 and Section 103.

      Delete
    10. If you don't know the level of ordinary skill, you have no idea what would or would not be known to one of ordinary skill in the art.

      As someone already set forth below:

      "... the references reflect what is known by those skilled in the art, but the references do not necessarily reflect the level of skill in the art.

      For example, a reference could disclose a very high-level concept only understood by very few in the art. Such a reference, however, would not refelect the level of ordinary skill in the art.

      There is a difference between a person's skill and the knowledge available to said person."

      Delete

    11. A person of ordinary skill is presumed to have knowledge of all analogous art. A single sentence in a reference from the relevant field of endeavor can show that something is recognized by persons of ordinary skill. Please explain why you believe that the single sentence would be sufficient to resolve the level of ordinary skill in the art. But first read Section 102 and Section 103.

      Delete
    12. "A person of ordinary skill is presumed to have knowledge of all analogous art."

      No, the person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.

      Before you suggest reading material for others, you should try some reading yourself.

      Delete
    13. "A person of ordinary skill" is shorthand for a person having ordinary skill in the pertinent art at the time the invention was made. Read the pertinent cases, or not. I'm guessing, not. Now answer in substance. I'm guessing, not.

      Delete
    14. Nice spin but, once again, you can't help but display your ignorance.

      The person of ordinary skill in the art has been defined as a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995).

      Read the pertinent cases, or not. I'm guessing, not. Now cite the case that says, word for word:"A person of ordinary skill is presumed to have knowledge of all analogous art." I'm guessing, not.

      Delete
    15. I guessed right. Start with In re Winslow if you're interested. I'm guessing, not.

      BTW, I did not use quotation marks. You did. That's the best you can do to avoid a substantive answer? And you aspire to be a registered patent attorney? Good luck with that.

      Now please explain why you believe that a single sentence from an analogous reference would be sufficient to resolve the level of ordinary skill in the art. But first read Section 102 and Section 103. Again. Maybe for the first time.


      Interesting that you would cite GPAC, Inc. The case that held that the level of ordinary skill in the art can be determined by the references of record, with no requrement of a specific finding of skill level.

      Congrats. Good job. Probably better than you imagined.

      Delete
    16. "BTW, I did not use quotation marks"

      And to that, I quote: "That's the best you can do to avoid a substantive answer? And you aspire to be a registered patent attorney? Good luck with that."

      It was a pitiful try at backtracking but yet another fail on your part. If you could not cite the case that says, word for word: "A person of ordinary skill is presumed to have knowledge of all analogous art," then simply say so. I guessed you couldn't and I was correct.

      "Interesting that you would cite GPAC, Inc. The case that held that the level of ordinary skill in the art can be determined by the references of record, with no requrement of a specific finding of skill level."

      Thanks once again for demonstrating that you have no understanding of either Chore-Time v. Cumberland or Ruiz v. AB Chance Co.

      Congrats. Good job at undercutting your own argument.

      Delete
    17. I won't bother to repeat the questions you cannot answer and will not presume any minimum level of sophistication in the reader. As if I'm talking to my slow cousin.

      You cited GPAC, Inc. and then two cases dealing with inter partes district court litigation. Which of the cases have to do with ex parte prosectution at the PTO?

      Never mind. Forget the question. Again. Please. Someplace else needs your skill at attributing quotations.

      Delete
    18. "I won't bother to repeat the questions you cannot answer"

      So says the guy who ran away from the questions asked of him below.

      "Which of the cases have to do with ex parte prosectution at the PTO?"

      Ask the PTO since Chore-Time is cited in MPEP dealing with the determination of skill. Again, thanks for demonstrating your ignorance.

      As I said, if you can't cite the case that says, word for word: "A person of ordinary skill is presumed to have knowledge of all analogous art," then simply say so. Now run along.

      Delete
    19. "Ask the PTO since Chore-Time is cited in MPEP dealing with the determination of skill. Again, thanks for demonstrating your ignorance."

      Chore-Time? The case where no factual determination of the level of skill in the art was necessary? Even in an inter partes district court litigation? Chore-Time?

      Good job. Better than you imagined.

      Now cite the case, that says, word for word: "Ask the PTO since Chore-Time is cited in MPEP dealing with the determination of skill. Again, thanks for demonstrating your ignorance."

      Delete
    20. "Chore-Time? The case where no factual determination of the level of skill in the art was necessary? Even in an inter partes district court litigation? Chore-Time?"

      Thanks for demonstrating your ignorance....again.

      In any event, we've established that your inability to cite a single case that says, word for word: "A person of ordinary skill is presumed to have knowledge of all analogous art."

      Good job!

      Delete
    21. The person of ordinary skill in the art has been defined as a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995).

      A single sentence in a reference from the relevant art can show that something was recognized by the hypothetical person of ordinary skill in the art.

      Please explain why you believe that the single sentence would be sufficient to resolve the level of ordinary skill in the art. But first read Section 102 and Section 103.

      Delete
    22. "The person of ordinary skill in the art has been defined as a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995)."

      Where is the word "analogous" in that sentence?

      Delete
    23. "Where is the word 'analogous' in that sentence?"

      "Analogous art is that which is relevant to a consideration of obviousness under [35 USC 103]. Two criteria are relevant in determining whether prior art is analogous: (1)whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not with the field of the inventor's endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved." Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010)(citations omitted).

      Judas Priest. Are there any patent lawyers in the house?

      Delete
    24. "Relevant" and "analogous" are not synomyms.

      Delete

    25. "Relevant" and "analogous" are not synomyms.'"

      Brilliant observation. Did somebody say they were?

      Delete
    26. "Did somebody say they were?"

      As someone already said: Clever ... you didn't say anything. Like an Examiner, you wrote the bare minimum (actually, less than the bare minimum), waited for the attorney to figure out you meant, and then came back "oh wait, that's not what I meant to say ... you got it wrong."

      Delete
  12. "...is the Examiner required to make an explicit determination of skill level..."

    According to at least one poster who frequents this site, the examiner is required to make an explicit determination of skill level in every 103(a) rejection. I would think that poster would answer your question in the affirmative.

    But to my way of thinking, if the examiner made an explicit determination of the level of skill to provide an objective basis for supporting an allegation of what one of ordinary skill in the art would have known, wouldn't the evidence provided to support the allegation show what one of ordinary skill in the art would have known.

    ReplyDelete
    Replies
    1. "But to my way of thinking, if the examiner made an explicit determination of the level of skill to provide an objective basis for supporting an allegation of what one of ordinary skill in the art would have known, wouldn't the evidence provided to support the allegation show what one of ordinary skill in the art would have known."
      So .... some evidence is required? If so, I can work with that.

      Delete
    2. "According to at least one poster who frequents this site, the examiner is required to make an explicit determination of skill level in every 103(a) rejection."

      That poster absconded for parts unknown when challenged to cite any authority for that belief.

      The references applied in a rejection reflect the level of skill in the art (i.e., constitute the evidence of what one of ordinary skill in the art knew). There's no need for any kind of "explicit determination" or production of additional evidence. That was established in a prior thread of about 158 comments, which doesn't need repeating here. Look back at Aug. 10, 2012 "BPAI provides concise summary of how to rebut an Examiner's claim interpretation." (Yeah, that topic doesn't have a lot to do with skill level determination, so sue me.)

      Delete
    3. "That poster absconded for parts unknown when challenged to cite any authority for that belief."

      IDK, I think Graham is pretty good authority for that belief. But I'm with you on the whole "references applied in a rejection reflect the level of skill in the art (i.e., constitute the evidence of what one of ordinary skill in the art knew)" thingy.

      Leave determinations of the level of ordinary skill in the art to the litigators. They've cornered the market on wasting clients' money on pointless exercises in futility as far as I'm concerned.

      Delete
    4. "But I'm with you on the whole "references applied in a rejection reflect the level of skill in the art (i.e., constitute the evidence of what one of ordinary skill in the art knew)" thingy."

      The Federal Circuit has held that an invention may be held to have been either obvious (or nonobvious) without a specific finding of a particular level of skill or the reception of expert testimony on the level of skill where the prior art itself reflects an appropriate level and a need for testimony on the level of skill has not been shown.

      However, the Federal Circuit has also stated that even though some of their cases indicated that the failure to make explicit findings on the level of ordinary skill is not always reversible error, 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, thus constituted reversible error.


      Delete
  13. "The references applied in a rejection reflect the level of skill in the art (i.e., constitute the evidence of what one of ordinary skill in the art knew)."

    No ... the references reflect what is known by those skilled in the art, but the references do not necessarily reflect the level of skill in the art.

    For example, a reference could disclose a very high-level concept only understood by very few in the art. Such a reference, however, would not refelect the level of ordinary skill in the art.

    There is a difference between a person's skill and the knowledge available to said person.

    ReplyDelete
    Replies
    1. Easily refuted. Read the 158 comments and try again.

      Delete
    2. Hint. Define "enablement" and then research what presumptions apply during patent pros.

      Delete
    3. "No ... the references reflect what is known by those skilled in the art, but the references do not necessarily reflect the level of skill in the art."

      Well said.

      Delete
    4. "Easily refuted"

      Not so easily as you had your ass handed to you whenever you were involved in an exchange.

      Delete
    5. "No ... the references reflect what is known by those skilled in the art, but the references do not necessarily reflect the level of skill in the art."

      Rule 36. Where dreams go to die.

      Delete
    6. "Easily refuted. Read the 158 comments and try again."

      I have no desire to pick out a kernel of truth from a mass confusion. I do that every day when I read office actions ... at least I get paid to do it then.

      There is a difference betwen skill and knowledge. Obviousness, for example, is based upon the ordinary SKILL of one skilled in the art. However, that same person is deemed to have KNOWLEDGE of all of the analogous prior art.

      Delete
    7. "I have no desire [to learn]."

      Does enablement have anything to do with what the person of ordinary skill in the art would be able to do? If so, what?

      Delete
    8. "Does enablement have anything to do with what the person of ordinary skill in the art would be able to do? If so, what?"

      MPEP 2164 answers your question.

      Delete
    9. "MPEP 2164 answers your question."

      It's not my question. It's yours.

      Delete
    10. "Does enablement have anything to do with what the person of ordinary skill in the art would be able to do? If so, what?"

      If you have a point, make it ... don't dance around it.

      Delete
    11. Just trying to keep it focused.

      So, let's assume you are familiar with the law of enablement. If we presume that a specification is enabling, then the specification teaches one of ordinary skill in the art how to practice the invention without undue experimentation.

      Would if be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art? If not, why not?

      Delete
    12. "If we presume that a specification is enabling, then the specification teaches one of ordinary skill in the art how to practice the invention without undue experimentation."

      I deny you your assumptions and presumptions. Part of the process of determining if a specification is enabling is determining the level of ordinary skill.

      As stated in MPEP 2164, 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 eequirement 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.

      Try again.

      Delete
    13. Huh? In this hypothetical we are making a presumption. Given that the specification is enabling. . . . The question remains. Unanswered. [But you are helping. Good job.]

      Focus. Focus.

      Would if be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art? If not, why not?

      Delete
    14. "In this hypothetical we are making a presumption."

      No, we are not. Your presumption is denied unless, of course, you concede that the Examiner determined the level of one of ordinary skill as part of the MPEP 2164 analysis when determining that there was sufficient evidence to support a determination that the disclosure satisfied the enablement eequirement and whether any necessary experimentation is “undue.”

      Delete
    15. Huh? It's irrelevant, but if it helps you focus, let's presume that the Examiner determined the level of one of ordinary skill as part of the MPEP 2164 analysis when determining that there was sufficient evidence to support a determination that the disclosure satisfied the enablement eequirement and whether any necessary experimentation is “undue.”

      Would if be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art? If not, why not?

      Delete
    16. "It's irrelevant"

      On the contrary, it's highly relevant but it's understandable why you're trying to slither away from it.

      So, you've conceded that the Examiner determined the level of ordinary skill in the art. Good. That's a starting point for your education.

      Now, the question becomes why you believe it would be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art?

      You do realize that the level of ordinary skill can be high, low or somewhere in-between, do you not?

      Do you believe that all specifications in all patents/applications relect only an ordinary level of ordinary skill or do you believe that any particular specification can reflect a low level of skill, a high level of skill or something in-between?

      I look forward to your response.

      Delete
    17. Huh? When the hypothetical begins with the premise that the specification is enabling, it is irrelevant who, how, or what determined that the specification is enabling.

      Focus.

      Would if be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art? If not, why not?

      Delete
    18. "When the hypothetical begins with the premise that the specification is enabling"

      You were denied that premise. You subsequently conceded that the Examiner determined the level of ordinary skill in the art in order to determine whether or not the specification was enabled.

      Now, why do you believe it would be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art?

      Do you realize that the level of ordinary skill can be high, low or somewhere in-between?

      Do you believe that all specifications in all patents or patent applications relect only an ordinary level of ordinary skill or do you believe that any particular specification can reflect a low level of skill, a high level of skill or something in-between?

      Now answer the questions put to you instead of wasting our time any further with your obfuscations.

      Delete
    19. Yeah. I was "denied that premise."

      (sigh)

      I can see why it took 158 comments.

      Can somebody who went to law school explain the concept of a "hypothetical" to Anon?

      Can somebody who ever filed a patent application tell Anon why the applicant does not accompany the disclosure with evidence that the specification is enabling?

      For anybody else, please (focus) and fill in the blank:

      Even though a specification teaches one of ordinary skill in the art how to practice the invention without undue experimentation, the enabling portion of the specification does not reflect the level of ordinary skill in the art because _____
      _____________________________________________________________.

      Delete
    20. "I can see why it took 158 comments."

      Especially in view of your evasiveness.

      Now, for the last time, answer the questions put to you (that is, if you're even capable of doing so and, in that case, kindly indicate that you are not capable of answering them):

      (1) Why do you believe it would be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art?

      (2) Do you realize that the level of ordinary skill can be high, low or somewhere in-between?

      (3) Do you believe that all specifications in all patents or patent applications reflect only an ordinary level of ordinary skill or do you believe that any particular specification can reflect a low level of skill, a high level of skill or something in-between?

      Delete
    21. I'll help.

      Even though a specification teaches one of ordinary skill in the art how to practice the invention without undue experimentation, the enabling portion of the specification does not reflect the level of ordinary skill in the art because --

      it "could disclose a very high-level concept only understood by very few in the art."

      Huh?

      The "because" part comes from the reason given for why the references do not necessarily reflect the level of skill in the art.

      Delete
    22. "Would [if] be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art? If not, why not?"
      In short, teaching somebody something requires more skill than learning that same something. Hence, the skill level described in the enablement portion can be higher than the skill of one ordinary skilled in the art.

      Depending upon the definition of "ordinary," the skill level of one having ordinary skill in the art is mean of the those having some skill in the art. The fact that somebody highly skilled is capable of teaching somebody how to practice the invention doesn't necessarily raise the skill level of those having ordinary skill in the art. Although they may be able to reproduce the invention, they may not have the fundamental background to conceptualize the invention so as to apply it to other fields/situations.

      My paralegal is great out filling out forms that reflect the high-level law embodied in 37 CFR. However, my paralegal is frequently unable to apply the same law used to create these forms in different situations.

      Delete
    23. Not sure I follow what a "skill level described in the enablement portion" might be. While the inventor may have more or less skill than the ordinary artisan, the specification must enable a person having ordinary skill in the art to make and use the invention. Thus, the enabling description seems to tell us something about the skill level of the hypothetical ordinary artisan (e.g., from the level of detail necessary to enable the invention). We don't care about the inventor's skill level or how good a teacher s/he may be, because Section 103 doesn't care.

      Delete
    24. "Thus, the enabling description seems to tell us something about the skill level of the hypothetical ordinary artisan "

      Really, what part of 35 USC 112 uses the phrase "ordinary skill in the art"?

      Delete
    25. "Thus, the enabling description seems to tell us something about the skill level of the hypothetical ordinary artisan "

      Really, what part of 35 USC 112 uses the phrase "ordinary skill in the art"?

      Go make that argument to the Fed. Cir. Not to me.

      Delete
    26. "Go make that argument to the Fed. Cir. Not to me."

      In other words, you can't point to any part of 35 USC 112 uses the phrase "ordinary skill in the art". Thanks for playing, better luck next time. Next contestant.

      Delete
    27. "Now, for the last time, answer the questions put to you (that is, if you're even capable of doing so and, in that case, kindly indicate that you are not capable of answering them):

      (1) Why do you believe it would be fair to say that at least the enabling portion of the specification reflects the level of ordinary skill in the art?

      (2) Do you realize that the level of ordinary skill can be high, low or somewhere in-between?

      (3) Do you believe that all specifications in all patents or patent applications reflect only an ordinary level of ordinary skill or do you believe that any particular specification can reflect a low level of skill, a high level of skill or something in-between?"

      It looks like the poster absconded for parts unknown when challenged to answer the above questions that were asked of him.

      Delete
    28. "While the inventor may have more or less skill than the ordinary artisan, the specification must enable a person having ordinary skill in the art to make and use the invention."

      The specification of prior art reference A is a direct reflection of the skill of the inventors of reference A. However, it is not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied

      Delete
    29. "GPAC, Inc."

      Must be a non-attorney. When the Federal Circuit writes "[w]e do not believe that the Board clearly erred in adopting this approach ...," this is not a statement of law applicable to all situations. The fact that cited references can indicate the level of skill in the art does not mean that cited references always indicate the level of skill in the art.

      You cannot interpret a case divorced from the facts of that case. You also have to READ what the Federal Circuit wrote and HOW they wrote it.

      Had the Federal Circuit wrote "as a matter of law, the references of record always reflect the level of ordinary skill in the art," then you would have something to cite. However, the Federal Circuit used much weaker language (i.e., "[w]e do not believe that the Board clearly erred").

      You also have to look at the standard of review applied by the Federal Circuit. They used the "clear error" standard, which is used for findings of fact – not for statements of law. Hence, the Federal Circuit did not state references of record always reflect the level of ordinary skill in the art as a matter of law. If they did, they would have written the opinion differently.

      If you were trained in law, this is something you could have picked up on.

      Regardless, whether or not a reference indicates the level of skill in the art is a question of fact – i.e., it is question that must be answered on a case-by-case basis. Merely citing "GPAC, Inc." isn't going to do it.

      Delete
    30. Fair enough. So cite a Fed. Cir. case where analogous-art references applied in an ex parte prosecution rejection were found not to indicate the level of ordinary skill in the art.

      Delete
    31. "Fair enough. So cite a Fed. Cir. case where analogous-art references applied in an ex parte prosecution rejection were found not to indicate the level of ordinary skill in the art."

      Why would I care to? When you cited "GPAC, Inc.," I was curious to see what it actually said. Imagine my surprise when it didn't support your arguments.

      Regardless, the determination of what is the ordinary level of skill in the art is a factual issue that is rarely raised during prosecution/litigation. I don't go hunting for case law on issues that aren't particular relevant to my practice.

      Delete
    32. "They used the 'clear error' standard, which is used for findings of fact..."

      That was the standard in 1995 when GPAC was decided. As we all know, substantial evidence is now the standard of review for findings of fact. Thanks to Zurko.

      Zurko IV RULES!!!!!!!!!!!!!!!!!!!!!!!!!

      Delete
    33. "Why would I care to? When you cited "GPAC, Inc.," I was curious to see what it actually said. Imagine my surprise when it didn't support your arguments."

      I don't recall making any arguments about GPAC. I asked you to cite a case contrary to GPAC because you had not provided adequate support for your original statement. A good lawyer would have known that. But you don't purport to be a good lawyer, just a lawyer.

      What you have established is that reference A is "maybe" not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied.

      Delete
    34. "I don't recall making any arguments about GPAC."
      Clever ... you didn't say anything. Like an Examiner, you put wrote the bare minimum (actually, less than the bare minimum), waited for the attorney to figure out you meant, and then came back "oh wait, that's not what I meant to say ... you got it wrong."

      Regardless, you cited GPAC is response to certain arguments (PRESUMABLY, in an attempt to refute those arguments). However, GPAC didn't.

      "I asked you to cite a case contrary to GPAC because you had not provided adequate support for your original statement."
      In what way? The Federal Circuit came down different? Coming down different does not necessarily mean that the holding is contrary ... it likely means that the facts are different. Regardless, your question reflects your analysis -- poorly thought out.

      "What you have established is that reference A is 'maybe' not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied."
      ... and that is all I needed to establish.

      Delete
    35. "What you have established is that reference A is 'maybe' not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied."

      "... and that is all I needed to establish."

      My, you are a good lawyer. Kindly amend your statement of Jan. 14, 9:03 AM by inserting --maybe-- before "not necessarily."

      Delete
    36. "... and that is all I needed to establish."

      Not a lawyer. No lawyer would make an admission like that.

      Delete
    37. "My, you are a good lawyer."

      Good enough that he left you broken and publically humiliated in the eyes of your peers.

      Delete
    38. "My, you are a good lawyer."

      "Good enough that he left you broken and publically humiliated in the eyes of your peers."

      Nope. My peers know the law.

      Delete
    39. "My peers know the law."

      Which is exactly why you are broken and publically humiliated in their eyes. Better you had kept your mouth shut and your peers merely thought you a fool, but you opened your mouth and left no doubt in their minds.

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    40. "Nope."

      Yep, you cowardly eunich.

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    41. "No lawyer would make an admission like that."

      Do you know what an admission is?

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  14. "Skill level determination has nothing to do with anticipation."

    Except when an Examiner brings what one of skill would have allegedly known into it. The Examiner says that one of skill would have known that such and such is inherent, the Examiner has to set forth evidence demonstrating the level of skill and the skill level encompasses the allegedly inherent knowledge.

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    Replies
    1. "the Examiner has to set forth evidence demonstrating the level of skill and the skill level encompasses the allegedly inherent knowledge"

      Seems like common sense. Pretty much the same way the Examiner has to back up any conclusion s/he makes. E.g., when the Examiner takes "Official Notice." A conclusion made by the Examiner has to have evidentiary support. If the Examiner's making a conclusion about what one of skill would have allegedly known, you've got to know what the level of skill is and why the conclusion made by the Examiner is within that skill level.

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    2. You're citing "common sense?" Have you read ANYTHING in this thread?

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    3. Please check your "common sense" at the door. Common sense makes people here mad. Mean mad.

      You may retrieve your common sense when exiting the blog.

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