tag:blogger.com,1999:blog-6733236595417664807.post1237393056990769560..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI uses superfluity doctrine to interpret a claim limitation (Ex parte Walpole)Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger13125tag:blogger.com,1999:blog-6733236595417664807.post-61150347833855183112010-08-31T12:15:20.722-04:002010-08-31T12:15:20.722-04:00You have to keep in mind that, for the most part, ...You have to keep in mind that, for the most part, APJ's are former examiners, and like examiners, are on production. Of course they'd rather see a 10 page brief sitting as the next appeal on their docket rather than a 40 page brief. Unfortunately, the length of the brief is dictated by the need to address every reasonable basis for reversal and not to make the APJ's job easier. Not addressing every reasonable basis for reversal, and preserving those issues for appeal, is malpractice.<br /><br />I often argue non-analogous art in briefs. I know the Board is never going to reverse an examiner on the basis of non-analogous art, but it is often the first, and best, argument for reversal. I almost always include additional arguments (e.g. no reason to combine, no expectation of success, not all elements in reference(s), etc.), but I'm not going to leave out a good argument just because it's an extra page or two.<br /><br />I once filed a brief and my only argument was the secondary reference was non-analogous art. The brief was filed pre-KSR. The Board decided the appeal post-KSR. Instead of simply agreeing with my argument that the secondary reference was non-analogous art, the Board cooked up some quote from KSR (e.g. no explanation of how the references could be predictably combined) and reversed.<br /><br />Many times I find myself making arguments in a response to an examiner that are not directed to the examiner, they are directed to the Board. So even if the examiner ignores the argument, the Board can't (or shouldn't). I also find myself making arguments in appeal briefs that are not directed to the Board, but to the Federal Circuit. Yes, the Board does ignore arguments. Get them all on the record and preserve everything for appeal.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-5239049741797804432010-08-31T02:16:54.561-04:002010-08-31T02:16:54.561-04:00"I wonder (and I'd be glad to hear commen..."I wonder (and I'd be glad to hear comments) how much a BPAI judge happily greets a 10-page brief as opposed to a 40-page brief. By limiting the material (number of arguments), the judge and devote more energy to the arguments that are there. If the arguments for the independent claims suffice, the other arguments are not needed."<br /><br />I'm the OP for that remark, and I think the two responses had better arguments than what was in my remark. I'll concede that.<br /><br />The responses also triggered another thought: if the APJ sees that he would need to write a lot to affirm every rejection of so many separately-argued claims, he may be more motivated to find a way to allow the independent claims. Given that the initial burden is (at least I thought so) on the examiner to justify the rejection as opposed to on the appellant to justify withdrawing the rejection, I won't feel ethical guilt that I loaded up a brief to get an improper rejection reversed.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-33868758482107724632010-08-30T17:31:07.716-04:002010-08-30T17:31:07.716-04:00>By limiting the material (number of
>argum...>By limiting the material (number of <br />>arguments), the judge and devote more energy <br />>to the arguments that are there. <br /><br />Sure, that's why you make strong arguments and leave out the weak ones. <br /><br />But when I have strong arguments for dependent claims, then I'll argue those. Even if it significantly increases the size of my brief. <br /><br />>happily greets a 10-page brief as opposed to <br />>a 40-page brief.<br /><br />I once read a brief that had an entire *page* of string cites for anticipation law. What a waste of paper.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68933615665932469182010-08-30T17:25:35.257-04:002010-08-30T17:25:35.257-04:00>Why you would wait 2+ years for that result
&...>Why you would wait 2+ years for that result <br />>is beyond my understanding. <br /><br />Here's a theory. A lot of practitioners simply don't have a sense of what works and doesn't work with appeals. They haven't been using the process long enough/often enough to get back many decisions from the cases they do appeal. And they don't read BPAI decisions. <br /><br />So the approach they use at appeal is the same one they use with the Examiner. And in many cases it simply doesn't work.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-72603981234181754702010-08-30T16:23:20.867-04:002010-08-30T16:23:20.867-04:00"I wonder (and I'd be glad to hear commen..."I wonder (and I'd be glad to hear comments) how much a BPAI judge happily greets a 10-page brief as opposed to a 40-page brief. By limiting the material (number of arguments), the judge and devote more energy to the arguments that are there. If the arguments for the independent claims suffice, the other arguments are not needed."<br /><br />I've heard this advice from APJ's at a couple of bar/association meetings. It's BS. Based on Mr. Fleming's comments at the BPAI conference held in April, the Board is trying to follow more of a "judicial model" when deciding appeals. Thus, the Board will decide the appeal on the narrowest grounds it can. If you're not making a series of arguments of narrowing scope, including the separate patentability of dependent claims, you're inviting an affirmace.<br /><br />I see it all the time in decisions. Appellants don't separately argue dependent claims, or even independent claims of differing scope, the APJ's pick the easiest claim to affirm, and the appellant is toast.<br /><br />Why you would wait 2+ years for that result is beyond my understanding.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-88567789748136674622010-08-28T16:32:26.507-04:002010-08-28T16:32:26.507-04:00"Why do applicants and practitioners continue..."Why do applicants and practitioners continue to appeal and not take advantage of the opportunity to argue the patentability of the dependent claims?"<br /><br />I think that's a question you must ask to each applicant and each practitioner. However, I can answer as one practitioner: (1) the clients don't necessarily want to pay the extra attorney fees for the extra arguments if they're confident enough in the arguments for the independent claims, and (2) the practitioners don't want to do it for free.<br /><br />I wonder (and I'd be glad to hear comments) how much a BPAI judge happily greets a 10-page brief as opposed to a 40-page brief. By limiting the material (number of arguments), the judge and devote more energy to the arguments that are there. If the arguments for the independent claims suffice, the other arguments are not needed.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-838402609085859842010-08-27T23:01:09.890-04:002010-08-27T23:01:09.890-04:00>Clients aren't necessarily going to file a...>Clients aren't necessarily going to file a <br />>continuation if they are satisfied with the <br />>issued dependent claims<br /><br />Seems like you answered a different question -- why appeal when you can file a continuation. The original comment assumed that the Applicant decided to appeal, then asked why we don't *argue* non-allowed dependents during appeal. <br /><br />Unless I'm misinterpreting what you said?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-51588209434268726122010-08-27T18:40:33.895-04:002010-08-27T18:40:33.895-04:00"Why do applicants and practitioners continue..."Why do applicants and practitioners continue to appeal and not take advantage of the opportunity to argue the patentability of the dependent claims?"<br /><br />I may be jaded about this but... . <br /><br />Appeals immediately create more billable hours. Clients aren't necessarily going to file a continuation if they are satisfied with the issued dependent claims. I think it is more of a bird in the hand vs. two in the bushel issue.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-45489164846027177002010-08-27T09:51:36.636-04:002010-08-27T09:51:36.636-04:00Appellant presented no arguments regarding the all...Appellant presented no arguments regarding the allowability of the dependent claims. So there's no indication whether any of those dependent features would overcome the rejections. And now the Board's decision is res judicata against those claims if they were rewritten in independent form and filed in a continuation.<br /><br />Terrible advocacy. <br /><br />Why do applicants and practitioners continue to appeal and not take advantage of the opportunity to argue the patentability of the dependent claims?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-70115716767353845052010-08-27T09:32:19.791-04:002010-08-27T09:32:19.791-04:00>arguing that a limitation should be read into ...>arguing that a limitation should be read into <br />>his claim?<br /><br />I think sometimes there's a *slight* distinction between arguing the meaning of a claim term and arguing that a limitation should be read into the claim. <br /><br />For example, say the claim recites "generally straight" and the Examiner reads this on something with a bend in it. If you argue that "generally straight" means "without a bend" are you arguing the meaning of a term or reading a limitation into the claim? I say the former, because you're really arguing that the limitation is implicit in the meaning. <br /><br /><br />>Wouldn't it have been a lot easier to amend <br />>that limitation into the claim <br /><br />Yes, amending would have been much more effective. <br /><br />Arguing a limitation that doesn't appear in the claims is almost always a really bad idea. <br /><br />First, the Examiner is entitled to ignore the argument since the argument is "not coextensive with the scope of the claims". (That's the language the Board sometimes uses.) <br /><br />Second, if the patent is asserted then the accused infringer will say prosecution disclaimer applies to narrow the claim scope. <br /><br />So you get the worst of both worlds. The claim is read broadly in prosecution and narrowly in litigation.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-59499947192873267842010-08-27T09:09:16.366-04:002010-08-27T09:09:16.366-04:00Here's a dumb question - why was the Applicant...Here's a dumb question - why was the Applicant arguing before the BPAI that a limitation should be read into his claim? Wouldn't it have been a lot easier to amend that limitation into the claim himself?Troynoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-17530681189148249122010-08-27T00:06:03.291-04:002010-08-27T00:06:03.291-04:00"(Actually, the Applicant did argue the depen..."(Actually, the Applicant did argue the dependent claim – but not the “repel one another” limitation.) As it was, the Board didn't decide (or need to decide) whether or not the reference taught the “repelling” feature. <br />"<br /><br />That makes me lol.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-56339334326547220762010-08-27T00:02:19.075-04:002010-08-27T00:02:19.075-04:00You seem to get the same result by applying the do...You seem to get the same result by applying the doctrine of claim differentiation. That's what I use in these situations, but superfluity is also nice to know about.Anonymousnoreply@blogger.com