Wednesday, March 6, 2013

Follow up to Ex parte Osborne


In my last post (here) I discussed Ex parte Osborne and said I didn't understand the opinion the first time I read it. In this post, I'll discuss the reasoning behind the Board's decision. This reasoning wasn't apparent to me at first, but apparently quite a few readers did figure it out, and they've posted comments to explain. So if you've read the comment thread on the last post, you know the answer already.  


As discussed in my previous post, the main issue in the Brief and the Answer was whether water acted as an antimicrobial agent at the temperatures disclosed in the reference. The Board seemed to ignore that issue and instead affirmed based on a finding that the "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." I wondered why the Board felt it could ignore the temperature issue. After all, that's the point the parties argued on appeal.

As a reminder, here's the claim on appeal, with the limitation at issue emphasized.
35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.
The key to understanding the opinion is the first two words emphasized in one of the Board's Findings of Fact.

The Specification provides that "the antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)
The Board found that the Applicant had defined the claim term "antimicrobial agent" in this first sentence. And after carefully re-reading the opinion, I realized that the Board ignored water temperature because they weren't relying on the first ("killing") prong of the definition. Instead, the Board apparently relied on the "removing" prong of the definition. The physical action of water applied to the hide removes microorganisms, regardless of the water temperature. Well, maybe not in all scenarios, but certainly when the Norrie reference specifically disclosed that "carcass is also subject to deluge flow of water for washing." (Finding of Fact 4.)

So yeah, I agree that Norrie teaches "at least one microbial agent is applied to the hide," because it's clear that a flood of water will remove microorganisms, regardless of water temperature.

I'm still annoyed that the Board's opinion wasn't written in a way that makes this more clear. After discussing the temperature issue argued by the parties, the Board should have said something like "The temperature of the water is irrelevant because Applicant's explicit definition covers 'removing microorganisms' which can be achieved by the physical action of a 'deluge flow' of water coming into contact with the hide." Instead, the Board made the cryptic statement "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." Without explaining why temperature was irrelevant.

Had the Board written that, I probably still would have written about the decision. But my post would have been about the dangers of getting stuck on one issue and not realizing there are other issues you need to address. Basically, the Applicant went down the wrong track, got stuck on it, and lost at the Board as a result. Perhaps the Applicant would have realized the error had the Examiner steered the Applicant back to the "removing microorganisms" aspect of the definition. It's not 100% clear to me that the Examiner relied on the removal aspect at any point in prosecution, though there are a few hints here and there that he did.

Is this a new ground of rejection? The Board relied on the very same sections of the Norrie reference that the Examiner did. I'm no expert on "new grounds" law, but perhaps it isn't a new ground for this very reason. If not a new ground, that seems a bit unfair. Basically, the Board decided the case on an issue that wasn't even briefed by the parties. Yes, the case law allows the Board to do this, but a new ground would remove some of the sting for the Applicant by saving him an RCE fee if he wanted to narrow his claims after appeal. On the other hand, the real sting of appeal -- win or lose -- is pendency before the Board.

86 comments:

  1. This is a clear example of applicant/attorney arguing the spec, not the claim. Sure fire way to lose an appeal.

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    1. This is a claim construction issue. Hence, the specification is always fair game.

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    2. If the applicant wanted to argue that the prior art water didn't kill microorganisms, then applicant should have amended his claim to recite "at least one micromobial agent that kills microorganisms" and then argued that water at the temperature disclosed by the prior art would not kill microorganisms. Applicant's claim doesn't recite killing microorganisms, so arguing that the prior art water wouldn't kill microorganisms was a sure fire loser argument.

      Arguing that the prior art doesn't include a feature you disclose, but don't claim, is the epitome of sh!tty advocacy. This case is an excellent example of that.

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  2. It is new grounds. From my experience, it is exceedingly common for the PTAB to disregard the Examiner's findings/analysis and substitute their own ... while not designating it a new grounds of rejection.

    This non-designation of new grounds typically occurs in the context of an obviousness rejection (i.e., the Examiner says it would have been obvious to combine for X reason and the PTAB says it would have been obvious to combine for Y reason). This is not the situation here, but it is worth mentioning.

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    1. "It is new grounds."

      Pointing out a prior inconsistent statement is new grounds of rejection?

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    2. "It is new grounds."

      Lol wut? The grounds could be repeated verbatim from the OA in the board decision as the analysis is exactly the same.

      You sir, have much to do before your tar dation receeds.

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    3. The issue raised was one of claim construction. The office action that was appealed didn't even present a claim construction. As best as I can tell, the appealed office action (09-07-10) doesn't cite the specification for the meaning of antimicrobial agent. Under In re Stephan and relying upon the APA, the Examiner is required to supply sufficient notice to Applicants.

      As I have discussed earlier, I think the specification isn't as clear cut as to all water being an antimicrobial agent as stated by the PTAB. However, the Appellants cannot make those arguments if they were not part of the appealed office action.

      Designating new grounds is about giving Appellants fair notice -- the ability to respond to the "thrust" of the rejection, which in this case, was the proper claim construction of antimicrobial agent. Personally, I think they could have done a lot better job at it, but it doesn't help when the examiner doesn't present an explanation in the appealed final office action.

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    4. Just saying. You are confusing new grounds of rejection in a Board decision and new grounds of rejection in an Answer. Appellants filed a reply brief and could have responded to the examiner's critical finding in the Answer -- or what you call "proper claim construction of antimicrobial agent" -- but ignored it. Appellants could also have filed a petition alleging that the findings in the Answer constituted a new ground of rejection. There was no new ground of rejection in the Board decision because it decided the case based on the same finding set out in the Answer.

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    5. >Just saying said:
      >However, the Appellants cannot make those arguments
      >if they were not part of the appealed office action.

      Not quite true. The Applicant can certainly guess at what claim construction the Examiner might be using, and at what specific allegations the Examiner is making as to which claim limitation reads on which specific portion of the prior art (ie, the Examiner is reading my widget on the reference blodget, rather than the foobar or the grok).

      As a practitioner, I certainly think the rules *should* require the Examiner to do all these things. Preferably as early as the 1st OA and by the Answer at the latest. But the Board says the Fed Cir does not require this from the Examiner.

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    6. What was written in the AA was "[a]s seen in paragraph [0036] on page 7 of applicant's specification the use of water by itself as an antimicrobial agent is disclosed." This is hardly a proper claim construction -- it is an invitation to guess at what the Examiner is driving at. I'll grant that this isn't as clear cut case as I have seen elsewhere, but the problem is that Applicants cannot properly respond to arguments/claim constructions that aren't made of record until after the Final Office Action has been issued. Whatever happened to M.P.E.P. 706.07's admonition that "[b]efore final rejection is in order a clear issue should be developed between the examiner and applicant"?

      Appellants could also have filed a petition alleging that the findings in the Answer constituted a new ground of rejection
      We are talking about the USPTO now ... that petition have been decided several months after it had been rendered moot (this is knowledge gainedby experience -- not heresay). Filing a petition with the USPTO is an exercise in futility and frustration.

      There was no new ground of rejection in the Board decision because it decided the case based on the same finding set out in the Answer
      Those weren't the findings that were appealed. The Examiner's Answer isn't intended to be a "whoops ... let's add all the things we should put in the first place" document. The new appeal rules have introduced a mechanism to address that, but I have little faith in how petitions are handled at the USPTO.

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    7. Not quite true. The Applicant can certainly guess at what claim construction the Examiner might be using, and at what specific allegations the Examiner is making as to which claim limitation reads on which specific portion of the prior art

      Ah yes … the guessing game I have recently referred to – one of the USPTO's favorite tactics. Guess wrong and your arguments are ignored as moot by the PTAB. If you (the examiner) aren't sure what element you rely upon be ambiguous and let applicant try to figure it out. Sure, I've played that game plenty of times, but it doesn't mean that the Examiner has

      But the Board says the Fed Cir does not require this from the Examiner.
      Read Gechter v. Davidson, 1167 F.3d 1454, 1460 (Fed. Cir. 1997) as to what is required of the Board (e.g., "Claim construction must also be explicit, at least as to any construction disputed … in an ex parte proceeding"). So long as you raise the issues, the PTAB is obligated to follow Federal Circuit precedent. If the Examiner didn't supply these findings/claim constructions (and the PTAB does), then you can argue new grounds of rejection.

      As 6 is fond of saying, an applicant cannot force him (i.e., the USPTO) to do anything. However, only the real tools at the USPTO continue to flaunt the law when you point out they are clearly doing so. As such, the best you can do is tell the USPTO "this is the law" and hope they follow it. If they don't you either suck it up or take it to the Federal Circuit. Unfortunately, for most clients, the Federal Circuit isn't even an option.

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    8. "The issue raised was one of claim construction. The office action that was appealed didn't even present a claim construction. As best as I can tell, the appealed office action (09-07-10) doesn't cite the specification for the meaning of antimicrobial agent. Under In re Stephan and relying upon the APA, the Examiner is required to supply sufficient notice to Applicants.

      As I have discussed earlier, I think the specification isn't as clear cut as to all water being an antimicrobial agent as stated by the PTAB. However, the Appellants cannot make those arguments if they were not part of the appealed office action.

      Designating new grounds is about giving Appellants fair notice -- the ability to respond to the "thrust" of the rejection, which in this case, was the proper claim construction of antimicrobial agent. Personally, I think they could have done a lot better job at it, but it doesn't help when the examiner doesn't present an explanation in the appealed final office action."

      Dude, stop digging and just confess to being incompetent when it comes to the useful arts.

      1. The examiner went above and beyond to explain his claim construction as you note in your next post. This was a very very very simple OA to respond to in a manner that would be effective at overcoming the reference. If you can't see that, you're a ta rd. Sorry, plain and simple, you just are.

      2. Yes, I know of your previous ta rdation re: the applicants definition in the spec even though it is crystal mo fin clear. You should work on that tar dation while you're working on the other tar dation.

      It is easy as pie to make "those arguments" in reply to the examiner's outstanding action, and the Answer. The tar d in charge of prosecution didn't, because he is a ta rd. Sorry, he just is.

      3. Agreed that is what notice is about. However the office only has to go to ordinary lengths to provide notice. If I, and several other posters understood immediately what is going on, notice was provided. The standard for notice being provided is not "the applicant's subjective view of whether he was provided notice" or "notice sufficient to prevent applcant's ta rdation from clouding his view 100% of the time". The office has better things to do than hold every last applicant's hand through every nuance of every SIMPLE OA.

      "Ah yes … the guessing game I have recently referred to – one of the USPTO's favorite tactics."

      It has little to do with "tactics" tar d, there are very few examiners trying to "outwit" you with their leet "tactics" in prosecution. All that the majority wants is for you to get your sht into condition for allowance and do some competently. Which is obviously a concept you have a hard time with, no doubt due to the tar dation discussed in this post and additional tar dation you need to work on.

      Here's a hint: if the examiner seems to be interpreting your claim term more broadly than you think it should be, spend 5 minutes confirming such and then write what you think it should be an why. If he disagrees then he will tell you why. Then you have your claim construction issue out there in the open. Wallah! No more guessing game.

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    9. And ffs, stop acting like there is some examiner/board member that is denying people discussion about claim construction when the applicant specifically brings it up. It wasn't denied in this case, and I have yet to see the office refuse such, I doubt I ever will. Even with the reams of idiot primaries and juniors running around, even the worst of them seem rather unlikely to deny the applicant the opportunity to discuss the interpretation of a term.

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    10. The examiner went above and beyond to explain his claim construction as you note in your next post.
      There is a difference between saying water = antimicrobial agent in the advisory action and explaining the claim construction. Conclusions are not explanations.

      This was a very very very simple OA to respond to in a manner that would be effective at overcoming the reference
      Thanks for bringing up a point no one is arguing. There are only two issues being addressed: (i) did the Examiner adequately put applicants on notice as to the grounds being relied upon in the Examiner's rejection and (ii) did the examiner get the claim construction correct. As to anything else, not my case, so I don't care what Applicants could have done to amend around the prior art.

      If I, and several other posters understood immediately what is going on, notice was provided
      You understood after the PTAB held your hands. Start with the appealed final office action and explain to me how you would have understand where the examiner was going. The Examiner made no mention of the incorrect interpretation of antimicrobial or the Examiner's reliance upon Applicants' specification in doing so. If the PTAB has to supplement was is found in the appealed office action, then the issue of whether "new grounds" were introduced is legitimately raised.

      The office has better things to do than hold every last applicant's hand through every nuance of every SIMPLE OA
      I'm sorry. Construing a claim term inconsistent with its real meaning based upon a misreading of applicants' specification requires more than not mentioning either the claim construction or applicants specification at all in the non-final and final office actions leading up to the appeal.

      Which is obviously a concept you have a hard time with
      Logic is not your strong suit. Not my case, not my technology. Whatever happened in it does not reflect my ability to get a notice of allowance.

      Here's a hint: if the examiner seems to be interpreting your claim term more broadly than you think it should be, spend 5 minutes confirming such and then write what you think it should be an why
      Here's a hint. Follow your own rules. As stated in 37 C.F.R. § 1.2, "[t]he action of the Patent and Trademark Office will be based exclusively on the written record in the Office." If the Examiner is interpreting the claim more broadly than is normal, the Examiner should put that claim construction in the written record. Notice the part about written. Also, I shouldn't have to tell you about the Examiner's burden of establishing a prima facie case of unpatentability.

      I know you came of age during the Dudas era where it was OK to force the applicant to tell you what you did wrong. However, the law requires that you tell the reasons (all of them) for denying patentability. If you've got some tricky claim construction up your sleeve, produce it.

      My guess is that if the Examiner had produced that claim construction during the non-final office action, applicant probably would have amended the claims (as you believe they should have done) and prosecution would have been advanced. However, because the examiner choose to play "hide the ball" a lot of time and money was wasted.

      stop acting like there is some examiner/board member that is denying people discussion about claim construction when the applicant specifically brings it up
      Huh? Try again in something other than chinglish.

      It wasn't denied in this case
      The question isn't about whether or not a claim construction was provided … it is about when the claim construction was provided. After the fact claim constructions do not advance prosecution as well as contemporaneous claim constructions.

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    11. Karen said:
      >>But the Board says the Fed Cir does not
      >>require this from the Examiner.

      Just Saying said:
      >Gechter v. Davidson ... as to what is required
      >of the Board (e.g., "Claim construction must
      >also be explicit, at least as to any
      >construction disputed

      Thanks for the cite to Gechter. I was thinking about In re Jung, of course. Though I did carefully phrase my comment as "the Board says", not "the Fed Cir says."

      I'll have to take a look at Gechter. Maybe Jung and Gechter are reconcilable in that Jung didn't explicitly dispute the Examiner's construction? But Jung's whole argument was that the Examiner didn't provide an explicit claim construction. Is that disputing claim construction?

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    12. "I'll have to take a look at Gechter. Maybe Jung and Gechter are reconcilable in that Jung didn't explicitly dispute the Examiner's construction?"

      Gechter was the review of an inter partes interference proceeding. The dictum about ex parte prosecution said nothing about what the examiner may or may not do (unlike Jung).

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    13. "But Jung's whole argument was that the Examiner didn't provide an explicit claim construction"

      Jung's "whole argument" came too late in prosecution.

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    14. The dictum about ex parte prosecution said nothing about what the examiner may or may not do (unlike Jung).
      Hahahaha ... I would love to see that argument before the Federal Circuit.

      USPTO Solicitor: "May it please the Court. When you wrote Claim construction must also be explicit, at least as to any construction disputed by parties to the interference (or an applicant or patentee in an ex parte proceeding) you really didn't mean that the standard of review pertaining to a Decision of the Board's actions in an interference should be the same as an ex parte proceeding. It should be treated as dictum."
      Judge: "What justification does the USPTO have in advocating a different standard of review for a decision of the Board based upon whether the underlying proceeding is an interference or an ex parte proceeding?"
      USPTO Solicitor: "aaaaahhhhh"
      Judge: "I'm waiting ….."
      USPTO Solicitor: "ummmmm"
      Judge: "Still waiting …."
      USPTO Solicitor: "because they are different???"
      Judge: "Was that an answer or a cry for help?"
      USPTO Solicitor: "errrrrr"
      Judge: "We cited Atlantic Thermoplastics to stand for the proposition that when the opinion explaining the decision lacks adequate fact findings, meaningful review is not possible. Why is that not applicable to a review based upon an ex parte proceeding?"
      USPTO Solicitor: [silence]
      Judge: "We cited both In re King, In re Graves, In re Bond, and In re Alton, Federal Circuit cases involving ex parte proceedings. Are you saying that they don't apply to an ex parte proceeding?"
      USPTO Solicitor: [silence]
      Judge: "We've heard enough."
      USPTO Solicitor: "whew!!!"

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    15. Dude looking at a hypothetical prosecution that doesn't exist reveals that this nonsense was fed from the filing of an RCE with new claims. The tar ds drafted apparatus claims with with an intended use limitation "for applying anti-microb" blah blah. The examiner, coping with the all new claims, wrote an action asap saying he has such an apparatus, and the applicant amended with with the "limitation" about the station being where an action actually occurs. Examiner then says meh, I have a reference to 103 that and final btw. Attorney says that his stations apparently have "corresponding" steps. Whatever the f that means. Apparatuses do not have steps period. In his AF Attorney says the OA mistakenly believes that the station in the primary is "for applying anti-microb to the hide". Of course, the examiner never said such an absurd thing, he is simply saying you can do that there if you want to because it will suffice for that function. Attorney insists that the step is not shown in the primary reference (as the examiner already noted in his action). Attorney notes that the secondary applies a deluge of water, but insists that it doesn't show applying an anti-microb agent to the hide. Attorney notes why the water is applied in the reference. Attorney then goes on to mischaracterize what was said in the OA regarding the secondary ref, thus confusing the examiner to no end. I presume the attorney did this because he is a ta rd, but it might have been maliciously. The examiner simply noted that it would have been obvious to use the deluge to clean the hide of dirt and debris, he never said that is why the secondary does it. In any event, the attorney ends up talking about the other refs. NEVER DOES THE ATTORNEY RAISE CLAIM CONSTRUCTION in his final or AF, instead simply insisting that x is not taught. He does this even though he is explicit in acknowledging that the office is including water in its grounds of rejection and thus must be interpreting that to be an anti-microbial agent.

      Note right here that the applicant, the examiner, and also myself are and would have been well aware of how the office was construing the term, i.e. to include water. Although I may not know WHY he is interpreting it that way, that is quite irrelevant unless I inquire as to WHY.

      The examiner goes above and beyond and notes WHY he interpretees the term to include water in the final sentence of his AF. Unfortunately the examiner may have confuzzled the attorney with the use of "high temperature" before water. Right about here is where claim construction nonsense that was already the underlying problem (though both parties were oblivious that it was a PROBLEM until now, both parties at least understood the construction being adopted, but now the examiner has probably confused the ta rd applicant in his AF using "high temp" instead of simply "water") is starting to rear its ugly head.

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    16. "Hahahaha ... I would love to see that argument before the Federal Circuit."

      Truth is not a subjective standard, based on whether you in particular understand the difference between what is required of the examiner and what is required of the PTAB. But everybody else seems to know the difference. As a matter of FACT, one of the reasons we have appellate tribunals is to keep the misinformed from just rolling along because they can type real good.

      See ya. Just sayin'.

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    17. Truth is not a subjective standard, based on whether you in particular understand the difference between what is required of the examiner and what is required of the PTAB.
      Stop working the chinglish.

      The point is that the PTAB is required to do something (i.e., present this record for review). However, if the record they present for review presents new facts or legal arguments not presented by the Examiner, then we have new grounds of rejection. Thus, although Gechter may describe what the PTAB must do, these requirements impact what the Examiner should do to prevent a difference between what the Examiner writes and the Board writes from generating a new grounds of rejection.

      Of course, the PTAB can simply ignore Gechter and state "we affirm the examiner for the facts and reasoning set forth in the office action and the Examiner's Answer." Then, you are left with pointing out the law and hope that the Board doesn't continue to ignore it.

      one of the reasons we have appellate tribunals is to keep the misinformed from just rolling along because they can type real good
      more chinglish

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    18. I can't follow what that gibberish is supposed to mean (the non-italicized part), but Gechter says absolutely nothing about what constitutes a new ground of rejection.

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    19. I don't follow the gibberish either, except for the racial slur.

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    20. except for the racial slur
      A racial slur is a derogatory or disrespecful nickname for a racial group. Chinglish is not a nickname for a racial group. Chinglish refers to language that is ungrammatical or nonsensical ... particularly in the context of a Chinese translation.

      You see what happens when someone at the USPTO thinks they know what a term means when they don't. It doesn't make them look good.

      Here, the Board construed a term antimicrobial to include room-temperature liquid water ... long held to be a vital element for almost all life on Earth. Do you know how silly the Board's claim construction sounds to those in the life sciences? Oh I forget ... the Board doesn't care about getting it right ... as long as they can find a way to affirm, it is what gets them an "attaboy!" at the end of the day.

      Gechter says absolutely nothing about what constitutes a new ground of rejection.
      I never said it did.

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    21. "Chinglish" is not a racial slur? You may be right. I don't hang out with people who use racial slurs and had never heard the term. According to Wikipedia, the term may have pejorative or deprecating connotations, reflecting the attitudes of those who apply the label. My apologies if you were only reflecting your attitudes.

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    22. I agree with J. S. Why all the Orientals? Why can't they hire Americans who can do the language good?

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    23. "I agree with J. S. Why all the Orientals? Why can't they hire Americans who can do the language good?"

      Because they're too busy working in management/finance?

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  3. "Ex parte Osborne."

    "After all, that's the point the parties argued on appeal."

    Who was the second party?

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    1. If it wasn't clear, when I said "parties" I meant the Applicant and the Examiner. Perhaps it would be more accurate to say that the Applicant argued the point and the Examiner responded to it.

      Doesn't change what I'm saying: that the contents of the record for appeal is stuff about water temperature.

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    2. "the contents of the record for appeal is stuff about water temperature."

      The rejection of the claim did not even mention temperature because temperature was not claimed. Temperature is discussed by the examiner in response to appellant's arguments.

      However, as indicated in the Advisory Action and explained at page 13 of the Answer: "The Norrie reference uses water as the antimicrobial agent as stated by appellant in the brief and as seen in paragraph [0036] of appellant's specification it states that water by itself can be the antimicrobial agent and therefore appellant's arguments are not consistent with the antimicrobial agents detailed in appellant's specification."

      Crystal clear. There is no new ground of rejection. Appellants' mistake was in not responding to this critical finding, if we assume for the sake of argument that they had one.

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    3. as seen in paragraph [0036] of appellant's specification it states that water by itself can be the antimicrobial agent

      When read in isolation. However, when you read paragraph [0037] and you take into account the meaning that those skilled in the art would give the term antimicrobial agent, the term antimicrobial agent does not encompass plain, untreated water. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into account definitions or other “enlightenment” contained in the written description).

      Also, paragraph [0036] states that "[t]he antimicrobial agent may be ...". That is not a definition. Moreover, the statement "may be" is not an absolute. Reading from MPEP 2173.01. The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007). From the several definitions I have found, simply washing away microbes with water does not constitute an antimicrobial agent.

      The issue is only "crystal clear" when you ignore all the other evidence as to the meaning of "antimicrobial agent."

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    4. "The issue is only 'crystal clear' when you ignore all the other evidence as to the meaning of 'antimicrobial agent.'"

      Ah, yes, let's change the "issue." The statement about "crystal clear" was that there was no new ground of rejection.

      In any case, the arguments you make could have been made by appellants in the reply brief, but they did not want to draw attention to the real issue. Regardless, if they had provided your arguments, disposition of the case would have been unchanged. Only a longer Board opinion with a corresponding increase in backlog.

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    5. the arguments you make could have been made by appellants in the reply brief
      You cannot present new evidence in a reply brief. Had this been my case, I would have done a much more thorough job on addressing the claim construction issue. However, as a practioner, it is hard to do when the Examiner doesn't address it in either the non-final or final office action and only gives you a tantalizing hint in an advisory action.

      Whether designation of a new grounds is proper is, in essense, a matter of fairness -- did the applicant get a fair chance to address the specifics underlying the examiner's rejection?

      but they did not want to draw attention to the real issue
      Which was what? Not my case. Not my technology. So what was the real issue?

      if they had provided your arguments, disposition of the case would have been unchanged
      So are you saying that the PTAB would have gone with a claim construction that is simply wrong? That's the real underlying issue here.

      Only a longer Board opinion with a corresponding increase in backlog.
      Hardly. I cannot tell you how many times I've seen the PTAB ignore the Examiner proferred motivation to combine and state something to the effect that "the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictabl results" and then wash their hands of all the arguments directed to obviousness. Why deal with specifics when you can dispose of arguments with conclusory statements?

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    6. "From the several definitions I have found, simply washing away microbes with water does not constitute an antimicrobial agent."

      "You cannot present new evidence in a reply brief. Had this been my case, I would have done a much more thorough job on addressing the claim construction issue."

      Introduce extrinsic evidence to demonstrate that your specification is wrong.

      Brilliant!!!

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    7. "Introduce extrinsic evidence to demonstrate that your specification is wrong."

      Or, in the alternative, amend the claims. That ever occur to you?

      What a maroon.

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    8. Introduce extrinsic evidence to demonstrate that your specification is wrong.

      No ... introduce evidence that you cannot look at one passage of the specification, in isolation, and ignore everything else written. The passage cited by the PTAB is not crystal clear in its meaning. One of my first statements about it yesterday was that it wasn't crystal clear. However, that shouldn't be an excuse for the PTAB to ignore the correct meaning of the word. There was plenty of additional evidence in the specification, particularly when combined with extrinsic evidence, that the USPTO's interpretation was incorrect. The USPTO just chose to ignore it.

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    9. "The passage cited by the PTAB is not crystal clear in its meaning."

      Sounds like a winning argument to me. While you're at it, throw in a declaration from the inventors saying they are aware of better prior art but under their interpretation of Rule 56 they have no duty to disclose it.

      Just saying.

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    10. Sounds like a winning argument to me.
      That's not an argument. It is an observation. The PTAB focused on a single statement out of context of other portions of the disclosure. In so doing, the came up with the definition of antimicrobial that doesn't exist in the real world. The ultimate issue is did the PTAB get it right? Here, the answer is "no." The next question is why did the PTAB/USPTO get it wrong? They got it wrong because they relied upon a claim construction that misinterpreted the specification. The next question after that is why didn't applicants address this claim construction? The answer is that the USPTO/PTAB waited until the last minute to supply it.

      throw in a declaration from the inventors saying they are aware of better prior art but under their interpretation of Rule 56 they have no duty to disclose it
      You need to work on your analogies.

      Delete
    11. "The PTAB focused on a single statement out of context of other portions of the disclosure."

      "The next question after that is why didn't applicants address this claim construction? The answer is that the USPTO/PTAB waited until the last minute to supply it."

      Don't let the facts get in the way. You're on a roll.

      Wiinnniinnggg !!!

      Just saying.

      Delete
    12. Don't let the facts get in the way. You're on a roll.
      And what facts are those? Oh wait ... I forgot. You don't do facts ... unsubstantiated conclusions is more your game. I know that this is what they teach at the PTAB. Why support a conclusion with evidence and analysis when you can just present the conclusion? The odds of you getting appealed to the Federal Circuit is so small, so why bother following Federal Circuit precedent?

      One last thing, when you point out the Examiner's analysis in the final office action that clearly explains the examiner's position as to the claim construction involved, as described in the PTAB, I'll concede that the Examiner did a good job. I'll be waiting … but I won't be holding my breath.

      I take it back, one other thing. Simple question. Would those skilled in the art consider water to be inherently an antimicrobial agent?

      Delete
    13. "One last thing, when you point out the Examiner's analysis in the final office action that clearly explains the examiner's position as to the claim construction involved, as described in the PTAB, I'll concede that the Examiner did a good job."

      Final Rejection at 3: "Norrie does disclose . . . applying an antimicrobial agent to the hide of a hide-on animal carcass - see at 64 in figure 4."

      You're welcome.

      In response, appellants filed lousy evidence (yeah, I know, that fact is beyond you and/or facts are not your bag, but everybody else knows) and staked out a position that is inconsistent with their disclosure.

      Ooopppsss!!!

      Affirmed.

      Just sayin'.

      Delete
    14. Final Rejection at 3: "Norrie does disclose . . . applying an antimicrobial agent to the hide of a hide-on animal carcass - see at 64 in figure 4."

      I asked for a clear explanation. Where is the part about using applicants specification to redefine the term of art in a manner inconsistent with how it is used by those skilled in the art? Hmmmmm .... I'm looking .... I'm still looking .... still looking ... cannot find it. Hence, not a clear explanation. Thanks for playing ... try harder next time.

      You're welcome.
      Thanks for nothing.

      staked out a position that is inconsistent with their disclosure
      No ... none of the specific examples of water in paragraph [0037] described plain water. In fact, the specification doesn't use the term "plain water" at all to describe a antimicrobial agent. However, that is what is taught by the prior art. The applicants' position was that the plain water (e.g., tap water) of the prior art wasn't a microbial agent unless heated to a certain temperature. This is not inconsistent with their specification. Reading one sentence out of context with the remainder of the specification while ignoring the plain meaning of a term of art is not reasonable.

      You have to love examiner logic ... so much easier to make arguments when reasonableness is an afterthought.

      Simple question. Would those skilled in the art consider water to be inherently an antimicrobial agent? ---> still waiting for an answer

      Delete
    15. In a hypothetical appeal brief that doesn't exist applicant continues arguing that a step simply hasn't been done in the Lawler reference. (in other words he agrees with the examiner while insisting that he disagrees, becaue he's just that ta rded). And then applicant gets to the secondary reference and finally starts arguing AS IF claim construction is the real issue, but doesn't explicitly note that it is, instead simply insisting that the secondary doesn't disclose the step. Then finally the applicant brings up the claim construction that has been the heart of the issue between them, and starts arguing about the temperature of the water not being sufficient to make the water an anti-microbial agent. He does this because he never bothered to read his own definition and additionally has been confused due to the examiner's use of "high temp" before "water", because he is a ta rd.

      At this point the cycle of ta rdation is complete, he goes to the board, the board notes where the examiner found the definition, and affirms.

      Good day sir, I've wasted too much time on this hypothetical case that doesn't exist and holding your hand through how to not su x.

      Delete
    16. THIS PART SHOULD COME FIRST

      Dude looking at a hypothetical prosecution that doesn't exist reveals that this nonsense was fed from the filing of an RCE with new claims. The tar ds drafted apparatus claims with with an intended use limitation "for applying anti-microb" blah blah. The examiner, coping with the all new claims, wrote an action asap saying he has such an apparatus, and the applicant amended with with the "limitation" about the station being where an action actually occurs. Examiner then says meh, I have a reference to 103 that and final btw. Attorney says that his stations apparently have "corresponding" steps. Whatever the f that means. Apparatuses do not have steps period. In his AF Attorney says the OA mistakenly believes that the station in the primary is "for applying anti-microb to the hide". Of course, the examiner never said such an absurd thing, he is simply saying you can do that there if you want to because it will suffice for that function. Attorney insists that the step is not shown in the primary reference (as the examiner already noted in his action). Attorney notes that the secondary applies a deluge of water, but insists that it doesn't show applying an anti-microb agent to the hide. Attorney notes why the water is applied in the reference. Attorney then goes on to mischaracterize what was said in the OA regarding the secondary ref, thus confusing the examiner to no end. I presume the attorney did this because he is a ta rd, but it might have been maliciously. The examiner simply noted that it would have been obvious to use the deluge to clean the hide of dirt and debris, he never said that is why the secondary does it. In any event, the attorney ends up talking about the other refs. NEVER DOES THE ATTORNEY RAISE CLAIM CONSTRUCTION in his final or AF, instead simply insisting that x is not taught. He does this even though he is explicit in acknowledging that the office is including water in its grounds of rejection and thus must be interpreting that to be an anti-microbial agent.

      Note right here that the applicant, the examiner, and also myself are and would have been well aware of how the office was construing the term, i.e. to include water. Although I may not know WHY he is interpreting it that way, that is quite irrelevant unless I inquire as to WHY.

      The examiner goes above and beyond and notes WHY he interpretees the term to include water in the final sentence of his AF. Unfortunately the examiner may have confuzzled the attorney with the use of "high temperature" before water. Right about here is where claim construction nonsense that was already the underlying problem (though both parties were oblivious that it was a PROBLEM until now, both parties at least understood the construction being adopted, but now the examiner has probably confused the ta rd applicant in his AF using "high temp" instead of simply "water") is starting to rear its ugly head.

      Delete
    17. "I asked for a clear explanation."

      The test for "clear" is not if you in particular understand it. That's an impossible standard.

      "No ... none of the specific examples of water in paragraph [0037]. . . ."

      Typical. The examiner referred to paragraph [0036].

      "Simple question. Would those skilled in the art consider water to be inherently an antimicrobial agent? ---> still waiting for an answer"

      I thought you were kidding. Of course the answer is yes, according to the record on appeal. See appellant's disclosure.

      You might also do better at the PTAB if you focus on the FACTS instead of droning on with whiny arguments about what the mean old examiner did to you.

      Facts. But don't let them slow you down. You're on a roll.

      Just sayin'.

      Delete
    18. Typical. The examiner referred to paragraph [0036].
      In the Final Office Action? Really, where? Also, you forget the part about reading the specification out of context.

      Of course the answer is yes, according to the record on appeal.
      I suggest you take a walk over to tech center 1600 ... find a random examiner and explain how plain water is an antimicrobial agent and proceed to be laughed at and looked at like you have 3 eyes and 4 arms. Priceless. FYI ... my question was asked about the meaning to "those skilled in the art." This is why you are going to be laughed at ... your reading comprehension stinks.

      Facts ... don't let them slow you down.
      The USPTO motto in a nutshell.

      Delete
    19. "In the Final Office Action?"

      Who said that? Oh, yeah, you did. Nobody knows why.

      "'Of course the answer is yes, according to the record on appeal.'"
      "I suggest you take a walk over to tech center 1600 ..."

      The good advocates (maybe you have met some) know that it's about making the record. Surprising as it may seem, good advocacy is not about how much irrelevant stuff you can find to argue about.

      You do not see a lot of PTAB or Federal Circuit opinions where they cite to evidence in the form of "We took a walk over to tech center 1600 and asked a random examiner. . . ."

      Delete
    20. Who said that? Oh, yeah, you did. Nobody knows why.
      This is where your lack of reading comprehension skills come in. The original points I made addressed whether fair notice was given to applicants at the time of the appealed office action (i.e., the final office action). This all gets back to whether a new grounds of rejection should have been desigated.

      The good advocates (maybe you have met some) know that it's about making the record.

      You don't seem to get that making of the record begins with the examiner. Moreover, applicant shouldn't have to wait until after the final office action has been issued to get a glimpse of what the examiner is getting at. Making a record is difficult for applicant with the application is under final. You do know that? Evidence becomes a lot harder to enter? Oh wait, I forgot. You don't care. If you can get applicant to file an RCE, you get your count and you can proceed to ignore the application for the next year or so ... win/win for you.

      You do not see a lot of PTAB or Federal Circuit opinions where they cite to evidence in the form of...
      I never said it was. The point was that the Board's claim construction was/is dead wrong, and just about any random examiner in 1600 could have told them that.

      Delete
    21. Just saying is operating under some sort of duma ss thinking where the examiner is supposed to explain all his "slick" claim constructions when he makes the rejection.

      Not so t ard. There is no obligation to explain "slick" claim constructions or any claim constructions before the applicant wants to discuss them. Especially not so where the "slick" claim construction is from the applicant's spec.

      And just fyi just saying, the examiner couldn't have brought up this claim construction problem in his nonfinal just after the RCE because the fu cking claim term wasn't even in the claims yet. Applicant added that after non-f.

      Delete
    22. the examiner couldn't have brought up this claim construction problem in his nonfinal just after the RCE because the fu cking claim term wasn't even in the claims yet. Applicant added that after non-f.There is no obligation to explain "slick" claim constructions or any claim constructions before the applicant wants to discuss them.
      Compact prosecution??? Oh wait … I hear that term is used as the punch line to most jokes at the USPTO.
      "Why did the chicken refuse to cross the road? Compact prosecution!!! … hahahahahaha"
      Of course that little thing about 37 C.F.R. § 1.2, stating "[t]he action of the Patent and Trademark Office will be based exclusively on the written record in the Office." The action of the Examiner based upon a "slick" claim construction? Ah … we've got this double secret shadow set of rules for us at the USPTO… it says we don't need to put anything in writing. Prima facie case? Its just fancy Latin for we'll give you what you want and be glad you got it. Just get your counts … that is what you are paid to do … forget about the "real" rules … they don't apply to us at the USPTO. Remember, we have the power of substantive rule making. What, we don't? Ahhh … the Federal Circuit doesn't know anything, we'll just ignore them like we always do.

      Delete
    23. Bitter much?

      Delete
  4. Karen, off topic here (with apologies) but has anyone discussed the USPTO recently using non-PDF files for its FOIA publishing of PTAB decisions? Someone has gone out of their way to make it difficult to copy and paste text from the decisions. What gives?

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    1. I've noticed that cutting and paste is screwed up now, but haven't heard anything about why that's happening.

      Delete
  5. Well, the "why" it is happening is because the PTO is no longer posting PTAB decisions in PDF format (even though their web site says they are). Instead they are posting using a mixed bag of alternate formats including a MS Word format and a so-called e-DAN format.

    My question was more in the form of what motivated the PTO to start doing this in the last couple of weeks? Are they trying to stop robot downloaders? And also, has anyone yet found an effective way to get around the anti-copy/paste ploys of the PTO?

    ReplyDelete
  6. This is an apparatus claim. Does it even matter what temperature the water is as long as the apparatus is capable of using hot water. The structure is "A third station that is a wash station". The 'hot water' or water with antimicrobial is the intended use/method of using the claimed structure.

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    1. All too true, I didn't even notice that myself.

      Delete
  7. The definition of "anti-microbial agent" in the specification here probably can from the attorney that drafted the application. It seems unlikely that the inventor would have listed tap water at room temperature (even a deluge of it) in his disclosure.

    There is a lesson here for all of us. Be careful when drafting broad definitions in the spec. It can be wise to included a narrower definition immediately afterwards; even as an example.

    During prosecution, be sensitive to how the Examiner is interpreting the art in view of your definition(s). Enter a narrowing amendment if it can help you exclude art.

    Thanks for calling attention to this case which emphasizes a basic principle of prosecution.

    ReplyDelete
  8. >lesson here for all of us. Be careful
    >when drafting broad definitions in
    >the spec.

    Absolutely! If you want a claim that covers killing, neutralizing and removing, a much better approach is to find a word, recognized in the art, that encompasses all three. Or to draft a claim that explictly calls them out. IMO, REdefining a term of art is usually a bad idea.

    >unlikely that the inventor would have listed
    >tap water at room temperature (even a deluge
    >of it) in his disclosure.

    "Listed" it as an antimicrobial? I don't have enough knowledge about this art to agree or disagree with that.

    But suppose it wasn't in the disclosure. The attorney adds value by broadening from the disclosure when possible. So maybe the patent drafter asked the inventor whether killing the microbes was necessary, and found out that physical removal would also work.

    Nothing wrong with expanding the claim to cover that (assuming you don't run into prior art). Again, what I disagree with is the *way* the patent drafter chose to accomplish this, ie, by redefining a term of art.

    >be sensitive to how the Examiner is
    >interpreting the art in view of
    >your definition(s).

    Or in the more common case where you don't have a definition, how the Examiner is interpreting the reference in view of the POSITA's understanding of the claim term.

    Agreed that it's important to really figure out what the Examiner is thinking, using whatever clues he has provided.

    >It can be wise to include a narrower
    >definition [after a broad definition]
    >even as an example.

    Disagree. If you characterize it as an example, it's not a definition.

    ReplyDelete
  9. But Jung's whole argument was that the Examiner didn't provide an explicit claim construction. Is that disputing claim construction?

    A couple of points about Jung. The issue involved whether the USPTO met its procedural duty. In particular, the issue surrounded the term "first well-charge-well-controller." In the appealed office action, the Examiner cited to reference number "340" to teach that limitation. Moreover, the Examiner subsequently cited to "Col. 5, lines 37-39 and Col. 6, lines 38-44, 64-66" to teach a first well-charge-well controller operably connected with the first charge pump.

    Notably, the Federal Circuit, stated: Jung’s understanding of the examiner’s rejection was manifested by his response to the office actions. Jung did not respond by asserting that there was no on-the-record claim construction, or that he did not under-stand the examiner’s rejection. In essence, the Federal Circuit said "hey, don't complain about claim construction to us when you didn't raise the issue during prosecution. The important takeaway here is that the Federal Circuit thought the lack, during prosecution, of an explicit request for a claim construction or an argument stating that applicants didn't understand the examiner's rejection is important. Had applicant done either, then applicants could have argued they were not given reasonable notice of the examiner's rejection.

    The Federal Circuit goes on to state: There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This does not foreclose an argument that a missing claim construction as to a key term that is both requested (and not supplied) can be the basis for arguing that applicants were not given reasonable notice of the examiner's rejection.

    Personally, I asked for claim constructions all the time. I don't do it very every limitations. However, where the Examiner is citing me 2 columns of text for twelve limitations and isn't giving me anything else to go on, I make the request for claim constructions explicit as to each individual limitation and I request that the Examiner specifically identify where these limitations are taught in the prior art. In so doing, I distance myself (and my arguments) from Jung. Hence, I make it harder for the holding of Jung to be used against me.

    ReplyDelete
  10. Here is part 2 of my response from above, it seems to have posted all weird.


    In a hypothetical appeal brief that doesn't exist applicant continues arguing that a step simply hasn't been done in the Lawler reference. (in other words he agrees with the examiner while insisting that he disagrees, becaue he's just that ta rded). And then applicant gets to the secondary reference and finally starts arguing AS IF claim construction is the real issue, but doesn't explicitly note that it is, instead simply insisting that the secondary doesn't disclose the step. Then finally the applicant brings up the claim construction that has been the heart of the issue between them, and starts arguing about the temperature of the water not being sufficient to make the water an anti-microbial agent. He does this because he never bothered to read his own definition and additionally has been confused due to the examiner's use of "high temp" before "water", because he is a ta rd.

    At this point the cycle of ta rdation is complete, he goes to the board, the board notes where the examiner found the definition, and affirms.

    Good day sir, I've wasted too much time on this hypothetical case that doesn't exist and holding your hand through how to not su x.

    ReplyDelete
    Replies
    1. NEVER DOES THE ATTORNEY RAISE CLAIM CONSTRUCTION in his final or AF
      Not easy to make those arguments until the examiner actually presents an actual claim construction – otherwise, you are left with guessing and speculation. From my reading, the attorney thought that the Examiner was arguing that high temperature water is an antimicrobial agent. The attorney then argued that the temperature of the water disclosed by the prior art isn't high enough to make the water an antimicrobial agent.

      Your comments about "intended use" is typical … why find teachings when you can ignore them? However, there is plenty of case law that says you cannot ignore claim limitations. Granted, the claims could be written differently, but I see no point debating how to fix the claim language when we both know it could have been written to prevent your argument from being made. That being said, the Examiner did give the limitations weight. However, the Examiner construed the claims (to meet your "intended use" limitations) using a basis that couldn't have been known by applicants.

      Although I may not know WHY he is interpreting it that way, that is quite irrelevant unless I inquire as to WHY.
      See above. Water above a certain temperature is an antimicrobial agent. As such, the issue becomes does the prior art teach that the water is being delivered at that temperature (or above). I presume that is what led to the discussion of the temperature.

      Unfortunately the examiner may have confuzzled the attorney with the use of "high temperature" before water
      You think? In the Advisory Action, the Examiner led the attorney to believe that the high temperature of the water was made the water an antimicrobial agent. From there, the attorney's arguments discuss water temperature -- surprise, surprise.

      He does this because he never bothered to read his own definition and additionally has been confused due to the examiner's use of "high temp" before "water"
      It wasn't a definition. It was describing possible examples. A definition doesn't begin "[t]he antimicrobial agent may be …" I'll also repeat the first point I made earlier which is that the inventor's use of the term "removing" was probably intended to mean more than simply "flush away."

      I've wasted too much time on this hypothetical case
      As have I. However, I am pleased to see that you recognize where the examiner led applicant astray.

      Just so everybody is clear, the most consistent definition of antimicrobial agent is something that kills microorganisms or inhibits their growth. Hence, a knife scraping away dirt on a hide is not exposing the hide to an antimicrobial agent. Flushing a hide with tap water isn't either.

      Delete
  11. The Willams reference was easily found with a Google search about antimicrobial interventions, but this one came up before Williams.

    "Algino, R.J. 2007

    This study was conducted in 22 very small commercial facilities in Wisconsin.

    The hot water intervention consisted of either washing the carcass with
    ≥ 65.56° C (150° F) water using a low-pressure spray nozzle or spraying
    ≥ 48.89° C (120 ° F) water at ≥ 6894.76 kPa (1000 psi) using a pressure washer prior to chilling. Hot water was applied using a hand-held nozzle.
    There was no significant difference (P> 0.10) between intervention treatments, and all treatments caused significant reductions (P<0.10) in indicator organisms."

    When the inventors (or, more likely, the attorney) invented the argument that water temperature of 73 degrees C was required for "antimicrobial intervention," a water temp. of less than 73 degrees C became "material to patentability."

    Why did they not also cite the Algino reference?

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    1. Why did they not also cite the Algino reference?

      Which "they" are you talking about? Applicants or the USPTO? Perhaps neither found it?

      Also, I see nothing from the article that describes the water as being an antimicrobial agent (i.e., kills or inhibits the growth of microorganisms).

      Sources for the definition of antimicrobial:
      http://en.wikipedia.org/wiki/Antimicrobial ("agent which kills microorganisms or inhibits their growth")
      http://medical-dictionary.thefreedictionary.com/antimicrobial ("killing microorganisms or suppressing their multiplication or growth")
      http://www.epa.gov/oppad001/ad_info.htm ("substances or mixtures of substances used to destroy or suppress the growth of harmful microorganisms whether bacteria, viruses, or fungi on inanimate objects and surfaces")
      http://www.niaid.nih.gov/topics/antimicrobialresistance/understanding/Pages/definitions.aspx ("Antimicrobial resistance is the ability of microbes to grow in the presence of a chemical (drug) that would normally kill them or limit their growth.")
      http://www.medterms.com/script/main/art.asp?articlekey=10204 ("A general term for drugs, chemicals, or other substances that either kill or slow the growth of microbes")
      http://www.britannica.com/EBchecked/topic/28194/antimicrobial-agent ("any of a large variety of chemical compounds and physical agents that are used to destroy microorganisms or to prevent their development")

      Delete
    2. J.S: as usual, too many errors to list (might break the Internet). But, just curious -- what do you think the "indicator organisms" were in Algino? Squirrels?

      Delete
    3. Flying monkeys.

      Delete
    4. Flying squirrels. Maybe moose and squirrel.

      Delete
    5. J.S: as usual, too many errors to list

      As usual, all talk and no analysis.

      what do you think the "indicator organisms" were in Algino?
      Does your article say anything that water at the temperature at issue killed those indicator organisms or slowed the growth of those indicator organisms? Did your article state that the water sprays constituted antimicrobial agents?

      Don't confuse speculation and correlation with actual causation. You really should take the time to read the article.

      Regardless, this is a side issue. I've got 6 sources that all support a single common definition of the term "antimicrobial" -- one that does not include simply "removing." You've got a single article that states "The intervention treatments did not significantly differ in terms of changing indicator bacteria levels (P > 0.10); that is, the treatments were equally effective." However, while the treatments reduced the amount of bacteria, it didn't explain HOW this occurred. Where the bacteria killed or where they just swept away? The HOW is what is important. Of course, this would require you to do a little deeper digging, and God forbid that anyone at the USPTO actually engage in deeper digging.

      Delete
    6. "Does your article say anything that water at the temperature at issue killed those indicator organisms or slowed the growth of those indicator organisms? Did your article state that the water sprays constituted antimicrobial agents?"

      Does Williams say that water at the disclosed temperature killed those indicator organisms or slowed the growth of those indicator organisms? Did Williams state that the water sprays constituted antimicrobial agents?

      As you (unknowingly) point out, the evidence demonstrates that "antimicrobial intervention" has a special meaning in the field of slaughterhouse meat processing. That's why all your good work with general and other-field definitions of "antimicrobial" was a waste of time. Much like explaining things to you.

      Run along now, ignore the facts, change the facts, make up your own facts, argue about other stuff. But the Internet has only so much bandwidth. Just because we don't always straighten you out does not mean that anybody believes what you spew.

      "all treatments caused significant reductions (P<0.10) in indicator organisms."

      Stoopid facts!!! Dohhhh!!!

      Delete
    7. Does Williams say that water at the disclosed temperature killed those indicator organisms or slowed the growth of those indicator organisms? Did Williams state that the water sprays constituted antimicrobial agents?

      Williams is not relevant to any of the points I am trying to make.

      As you (unknowingly) point out, the evidence demonstrates that "antimicrobial intervention" has a special meaning in the field of slaughterhouse meat processing.
      Really? I didn't find that definition anywhere. Perhaps you could point it out to me. I'll be waiting ... but I won't be holding my breath.

      How about this: "An antimicrobial is an agent that kills bacteria or suppresses their multiplication or growth."
      This is from http://www.aphis.usda.gov/animal_health/emergingissues/downloads/antiresist2007update.pdf

      You do know who the USDA is? Are you saying they don't what the term means?

      Run along now, ignore the facts, change the facts, make up your own facts, argue about other stuff.
      I produce citations and actual analysis ... you produce conclusory statements unaccompanied by anything.

      all treatments caused significant reductions (P<0.10) in indicator organisms.
      A knife scraping "gunk" off a carcass does the same. That doesn't make it a antimicrobial agent. Now run along and pretend you've won the argument.

      What I think may be confusing you (because, again, you refuse to dig deep) is that there is a distinction between an antimicrobial agent and an antimicrobial intervention. It was harder to find an explicit definition for "antimicrobial intervention," but what I found is "a variety of techniques that may be used to control microbial presence on carcasses." See http://www.meathaccp.wisc.edu/validation/antimicrobial_intervention.html

      If you take the time to look at your Algino reference, you'll see that the term "antimicrobial" is only found in the title and in the References. Notably, that term is found nowhere else within Algino. On the other hand, Algino refers to "intervention" a vast number of times. Thus, the term "intervention" is broader than the term "antimicrobial agent" in that an antimicrobial intervention can occur by simply physically removing the bacteria (e.g., by scraping or rinsing) whereas to qualify as an antimicrobial agent, it needs to kill or suppress the multiplication/growth of the bacteria.

      I'm sorry things didn't work out for you this time. Try harder next time.

      Delete
    8. So your found a definition for "antimicrobial intervention"-- "a variety of techniques that may be used to control microbial presence on carcasses."

      Which is exactly what Algino describes.

      Thanks.

      Delete
    9. "Williams is not relevant to any of the points I am trying to make."

      Don't keep us in suspense.

      Delete
  12. In the interest of saving bandwidth.

    HA, HA, HA, HA!!!!! STOP! YOU'RE KILLING ME!!!

    ReplyDelete
  13. Who said anything about an "antimicrobial agent?" Please read the initial post in the thread.

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    1. Who said anything about an "antimicrobial agent?"
      It was in the claim ... "A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass." Shouldn't that be relevant?

      If you think that Algino is fine for a discussion about "antimicrobial interventions," then I don't have a problem with that per se. However, I assumed you cited Algino as being relevant to the present discussion -- particularly since you ased "Why did they not also cite the Algino reference?"

      Delete
    2. Somebody has stolen your identity. In a related thread someone who is using your screen name cannot wrap his/her brain around the concept that an "antimicrobial intervention" might not be necessarily the same as applying an "antimicrobial agent."

      Go argue it there.

      Delete
    3. Patent attorneys would recognize the question "Why did they not also cite the Algino reference?" as a Rule 56 question.

      Delete
    4. In a related thread someone who is using your screen name cannot wrap his/her brain around the concept that an "antimicrobial intervention" might not be necessarily the same as applying an "antimicrobial agent."

      Interesting. How can you explain this statement "there is a distinction between an antimicrobial agent and an antimicrobial intervention."

      Of course, it would be helpful if everybody used an identity other than "Anonymous" since I cannot whether you are supporting me or them or responding to them or me. It is really simple. In the drop down box, right above the "Anonymous" selection is a "Name/URL" selection. After you select it, you can enter a name (you don't have to enter a URL).

      Regardless, the question remains as to why "Anonymous" brought up the Algino reference? As an attorney, I would err on the side of caution and cite it. However, I don't think it is particularly helpful in resolving the important issues (e.g., how the term antimicrobial agent is interpreted by those skilled in the art).

      Delete
    5. Just saying March 6, 2013 at 9:55 AM
      "Another problem with the evidence that appellant provided -- appellant is not claiming an antimicrobial 'intervention.'"

      I don't see the importance here. You need to better explain your position.

      Delete
    6. There is no "Anonymous" that has supported you. So that one's easy. And "Anonymous" did not bring up the Algino reference.

      Delete
  14. And "Anonymous" did not bring up the Algino reference.

    d0c87888-5010-11e0-8352-000bcdcb8a73 did and he is from the USPTO.

    Regardless, this thread has devolved significantly from the two issues that I originally argued about. (1) did the USPTO/PTAB properly construe the term "antimicrobial agent"; and (2) was sufficient notice given to applicants of the basis of the Examiner's rejection (and subsequently affirmance by the PTAB) at the time of the appealed final office action.

    Anybody want to provide evidence that the USPTO/PTAB got the definition correct for antimicrobial agent?

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    1. More interesting, JS, why did it take 5 days for you to understand why there might be a problem with the appellants claiming the application of an antimicrobial agent but submitting evidence about "antimicrobial intervention?"

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  15. More interesting, JS, why did it take 5 days for you to understand why there might be a problem with the appellants claiming the application of an antimicrobial agent but submitting evidence about "antimicrobial intervention?"

    As I've mentioned before, it is not my case or my technology (see March 7th at 9:48AM). As such, I am (was) not particularly interested in how the Appellant characterized Williams. The definition I found for "antimicrobial agent" does not depend upon Williams.

    Also, referring to March 10th at 9:14PM, "Williams is not relevant to any of the points I am try to make." The points I have been mainly concerned about are described on March 6th at 8:08PM -- the claim construction and whether new grounds of rejection should have been designated.

    Unfortunately, in order to engage in any meaningful discussion, I have to wade through the chaff.

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  16. "As I've mentioned before, it is not my case or my technology (see March 7th at 9:48AM)."

    Not my case or my technology, either. But all the pertinent facts were laid out nicely in the synopsis. You know, facts. The f word.

    "As such, I am (was) not particularly interested in how the Appellant characterized Williams."

    So why don't you set out all the made-up facts that's in the hypothetical record of whatever hypothetical case you're trying to make some point about, _prior to_ alleging that the hypothetical Board panel hypothetically got it wrong? Who knows, we might even agree with your result.

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  17. But all the pertinent facts were laid out nicely in the synopsis. You know, facts.
    Hardly. I didn't see an art-recognized definition for the term "antimicrobial agent." I saw how the PTAB mangled a discussion of the term in the specification.

    So why don't you set out all the made-up facts that's in the hypothetical record of whatever hypothetical case you're trying to make some point about, _prior to_ alleging that the hypothetical Board panel hypothetically got it wrong?
    Made up facts? Didn't I ask for an identification of all these made up facts in my post (first article) on March 9th at 7:29PM. 48 hours later and still no response. Classic USPTO ... make an assertion and don't support it with anything.

    BTW ... it took me about 60 seconds to find the definition of "antimicrobial agent" on the internet. I have subsequently found other definitions and they have all been consistent. 5 days later and you still haven't performed that exercise? What's up with that. It took me 60 seconds to discover the PTAB got it wrong. BTW – if you have performed that exercise, where are your results? Why are you deluging us with links from sources that come up with a definition that supports the PTAB's definition.

    Oh … and don't give me any BS about the definition not being in the record. The PTAB hasn't had a problem sua sponte relying upon their own dictionary definitions in past, so I don't want to hear that excuse.

    This discussion could have been over 5 days ago had you produced a definition that supports the PTAB's claim construction.

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    1. Not enough bandwidth to list the errors, not enough days to get you to the point of understanding maybe a second thing about the case. Best of luck in your future endeavors.

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    2. Not enough bandwidth to list the errors, not enough days to get you to the point of understanding maybe a second thing about the case. Best of luck in your future endeavors.

      Ah yes, the classic "I'm going to bail out of a fight that I cannot possibly win while couching my retreat as a victory." Are you related to Baghdad Bob?

      Priceless …

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