tag:blogger.com,1999:blog-6733236595417664807.post3644415915636981049..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board reverses indefiniteness of claim that references a published patent applicationKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger14125tag:blogger.com,1999:blog-6733236595417664807.post-85786178990748738242013-08-01T11:27:36.654-04:002013-08-01T11:27:36.654-04:00"Nah, he's actually pretty bright."
..."Nah, he's actually pretty bright."<br /><br />Lulz. Of course, that's in comparison to the rest of the SPE ranks. From my experience, a "pretty bright" SPE is one who actually knows what the letters "MPEP" stand for.AAA JJnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-32674765627758614922013-07-29T22:32:52.914-04:002013-07-29T22:32:52.914-04:00I certainly haven't had even a pre-appeal or a...<i>I certainly haven't had even a pre-appeal or appeal brief filed in the last 3 years or so</i><br />Either you are doing a great job and/or the attorneys you work for (and/or their clients) are indistinguishable from mice.<br /><br />That being said, there is a difference between tech centers and art units. Some are good. Others, meh ...<br /><br />I know of art units where you literally cannot get an allowance unless you appeal (or it is related to an application that has already been allowed).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-3953108165477197552013-07-29T12:07:03.924-04:002013-07-29T12:07:03.924-04:00"What is the purpose?"
Try reading the ..."What is the purpose?"<br /><br />Try reading the MPEP. <br /><br />"What reason would an agency that does, by its own claims, record breaking outstanding quality work have for re-opening a case after the Board reverses their rejections?"<br /><br />The ones in the MPEP. <br /><br />"How is that there can be an appeal conference, sometimes a pre-appeal conference, staffed by the agency's "supervisors" and "quality assurance specialists" that green lights an appeal, but then a need to re-open after the Board finds the rejections lacking?"<br /><br />Different reasons for different cases. <br /><br />"I bet he still doesn't understand it. "<br /><br />Nah, he's actually pretty bright. I think there's at least a 50/50 that he does so that'd be a risky bet, indeed, probably one you'd lose. On the other hand, it isn't exactly something that he should be seeing every single year, cases that legitimately need to be reopened or requested for reconsideration are pretty rare around my AU. Most people don't even do many appeals, and I certainly haven't had even a pre-appeal or appeal brief filed in the last 3 years or so. When you don't use the knowledge it starts to fade away. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-30312158836645068712013-07-29T11:18:49.211-04:002013-07-29T11:18:49.211-04:00"It's as if the directors literally do no..."It's as if the directors literally do not understand the purpose of reopening or requesting reconsideration."<br /><br />What is the purpose? What reason would an agency that does, by its own claims, record breaking outstanding quality work have for re-opening a case after the Board reverses their rejections? How is that there can be an appeal conference, sometimes a pre-appeal conference, staffed by the agency's "supervisors" and "quality assurance specialists" that green lights an appeal, but then a need to re-open after the Board finds the rejections lacking?<br /><br />"My SPE surely did not understand the later, by his own admission, and was quite surprised when he looked it up in the MPEP."<br /><br />I bet he still doesn't understand it. AAA JJnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-16800948249767496822013-07-26T17:24:55.389-04:002013-07-26T17:24:55.389-04:00You overlook the problem that actually writing out...You overlook the problem that actually writing out a 112 2nd all proper like can be a difficult task in some instances, and not only that, you don't want to say too much and get people confused about the grounds of rejection. That literally is a problem that we face here. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-74628018464337456872013-07-26T17:22:34.988-04:002013-07-26T17:22:34.988-04:00"Reversing the Exr is not the same thing as f..."Reversing the Exr is not the same thing as finding that the claim is invulnerable to indefiniteness objections when properly expressed. "<br /><br />I agree with you, but in today's climate, they will not be able to reopen prosecution to "properly word it". I promise. It's as if the directors literally do not understand the purpose of reopening or requesting reconsideration. My SPE surely did not understand the later, by his own admission, and was quite surprised when he looked it up in the MPEP. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-87051004028089382062013-07-23T13:55:55.336-04:002013-07-23T13:55:55.336-04:00"As patent attorneys, we throw around 'br..."As patent attorneys, we throw around 'broad' a lot..."<br /><br />I don't. <br /><br />Examiners throw it around a lot. Not one of them knows what it actually means, but they love to throw it around.<br /><br />Congratulations on your move. A very dynamic firm you've joined to be sure. ThomasPainenoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-43406886895240262792013-07-23T13:42:34.631-04:002013-07-23T13:42:34.631-04:00>So how is the claim as appealed "broad&qu...>So how is the claim as appealed "broad"? <br /><br />Excellent question. As patent attorneys, we throw around "broad" a lot, but clearly the term is always relative to something. <br /><br />If you interpret "as disclosed in X" to be "all variations disclosed in X" then it's broad in the sense that it covers all those variations. <br /><br />>It seems to me that the one that doesn't recite "as <br />>disclosed in published...) is broader. <br /><br />Agreed. And Applicant got that claim issued too, when the Board reversed the only rejection of claim 51, which was a prior art rejection.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-88427747090397100662013-07-23T13:13:28.617-04:002013-07-23T13:13:28.617-04:00"OK. I'll say it's broad..."
Ca..."OK. I'll say it's broad..."<br /><br />Can anybody explain why the claim's reference to another published app makes it "broad"? It actually narrows the claim.<br /><br />Think about it, which of the following is broader:<br /><br />(1) 91. A nonwoven mat having a basis weight of 2 to about 2.6 lbs/100 sq. ft, a high flame resistance and unexpected excellent tensile strength, flex and recovery properties after scoring and folding and suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U.S. Patent Application No. 20020020142 filed April 23, 2001, including the ability to, after being scored, folded, and compressed, to spring back to the original shape and orientation ...<br /><br />or <br /><br /><br />(2) 91. A nonwoven mat having a basis weight of 2 to about 2.6 lbs/100 sq. ft, a high flame resistance and unexpected excellent tensile strength, flex and recovery properties after scoring and folding and suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile, including the ability to, after being scored, folded, and compressed, to spring back to the original shape and orientation ...?<br /><br />It seems to me that (2) (i.e. the one that doesn't recite "as disclosed in published...) is broader. It provides the patent owner with the right to exclude any nonwoven mat with the recited features, whereas (1) provides the patent owner with the right to exclude any nonwoven mate with the recited features AND is as disclosed in the referenced published application (i.e. (1) excludes only a subset of what (2) excludes).<br /><br />So how is the claim as appealed "broad"? ThomasPainenoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-76463323597258294132013-07-23T10:50:54.135-04:002013-07-23T10:50:54.135-04:00>It pointed to a specific disclosure of patent ...>It pointed to a specific disclosure of patent publication X. <br /><br />Not exactly. It referenced the ceiling tile of X. Which is pretty much the subject of the entire application.<br /><br />>Is it broad? Yes. Is it indefininte? No.<br /><br />OK. I'll say it's broad but not indefinite as long as if you construe the language to mean "all embodiments and variations and features of the ceiling tile described in X." But I'm not convinced that's the proper construction, so I still say it's indefinite.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-57884228057275571922013-07-23T10:40:23.409-04:002013-07-23T10:40:23.409-04:00"Is it broad? Yes."
A claim's bread..."Is it broad? Yes."<br /><br />A claim's breadth refers to what it allows the patentee to exclude others from making, using, selling, etc. I don't think the claim's reference to another published application affects its breadth. <br /><br />"Is it indefininte? No."<br /><br />I would argue that it is. How is one supposed to determine if their allegedly infringing nonwoven mat is "suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U.S. Patent Application No. 20020020142"?<br /><br />How long before 6tard chimes in that the examiner "should've Miyazaki'd" the claim? <br />ThomasPainenoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-66119045294263951282013-07-23T10:18:18.736-04:002013-07-23T10:18:18.736-04:00Reversing the Exr is not the same thing as finding...<i>Reversing the Exr is not the same thing as finding that the claim is invulnerable to indefiniteness objections when properly expressed.</i><br />I agree. Decisions of the Board should be based on the grounds <i>specified by the Examiner</i> -- not grounds boot-strapped by the Board to help the Examiner out.<br /><br /><i>I suggest that the Board is on a crusade to raise the quality of Examiner objections, spelling out what makes an objection a legitimate one.</i><br />I wish. IMHO, the Board fails to recognize that affirming lousy rejections (based upon little evidence and no analysis) only fosters more lousy rejections. If an examiner is affirmed on a lousy rejection for which the examiner only did 20% of what the examiner should have done, the examiner will continue to do 20% (or perhaps test to see if he/she can get away with just 15% or 10%).<br /><br />It is human nature to do "as little as possible" to get the job done. If there are no consequences for doing as little as possible, then that activity will fostered.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-17126229646048492282013-07-23T10:12:27.673-04:002013-07-23T10:12:27.673-04:00Patent applications disclose a lot of things, so c...<i>Patent applications disclose a lot of things, so claiming "as disclosed in patent publication X" is almost certainly indefinite</i><br /><br />Breadth should not be confused with indefiniteness. In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971). See also M.P.E.P. § 2173.04. The claim did not say "anything in patent publication X." It pointed to a specific disclosure of patent publication X. Is it broad? Yes. Is it indefininte? No.<br /><br />Also, there is an argument that the language at issue is within the preamble and non-limiting. How can non-limiting language be indefinite?<br /><br />Personally, I would NEVER refer to a patent publication in a claim. Personally, I would NEVER write the claim like that found in claim 92.<br /><br /><i>a high flame resistance and unexpected excellent tensile strength</i><br />Why would you ever both to include that language in a claim? A claim isn't a marketing document.<br /><br /><i>passing the National Fire Protection Association's (NFPA) Method #701 Flammability Test</i><br />Why would anybody ever include that in the claim language? Is it going to distinguish over mats that don't pass this particular test?<br /><br />Some claim drafting lessons. Ask yourself, "does feature Y help to <i>distinguish</i> the claimed invention over the prior art?" If the answer to that question is "No," then ask yourself "why is that feature in there?" Sometimes you'll need a known feature that interacts with the new feature (e.g., "modifying A using X technique" where A is known and X is unknown.").<br /><br />Far too many claims I have reviewed include needless limitations that do nothing but serve to give a potential infringer an argument to allege non-infringement.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-43099354494892004222013-07-23T09:19:44.801-04:002013-07-23T09:19:44.801-04:00I have read nothing but the report above. My inst...I have read nothing but the report above. My instant knee-jerk reaction is:<br /><br />Reversing the Exr is not the same thing as finding that the claim is invulnerable to indefiniteness objections when properly expressed. <br /><br />I suggest that the Board is on a crusade to raise the quality of Examiner objections, spelling out what makes an objection a legitimate one. You?Anonymousnoreply@blogger.com