tag:blogger.com,1999:blog-6733236595417664807.post3792827820928205990..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI says incorporation by reference requires "specific journal, volume, and page number for the citation"Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger10125tag:blogger.com,1999:blog-6733236595417664807.post-10765642928705717662012-02-21T14:00:58.625-05:002012-02-21T14:00:58.625-05:00The firm in question was listed on the transmittal...The firm in question was listed on the transmittals for both the provisional and non-provisional. Not proof that they wrote it, but if they did, it speaks poorly of them.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-16199992690067717462012-02-16T19:24:58.301-05:002012-02-16T19:24:58.301-05:00"Pretty shoddy work from a well known, and ex..."Pretty shoddy work from a well known, and expensive, firm."<br /><br />Not knowing the history of who drafted the application versus who prosecuted the application, I'm hestitant to impute the shoddiness to the firm. Unless, of course, the firm is gaining a reputation for a culture that allows shoddy work.<br /><br />I've prosecuted enough applications drafted by other practitioners to know how difficult it can be to turn a sow's ear into a silk purse.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-12761777648382018912012-02-16T14:12:24.698-05:002012-02-16T14:12:24.698-05:00Pretty shoddy work from a well known, and expensiv...Pretty shoddy work from a well known, and expensive, firm.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-81482336048559790652012-02-16T13:55:26.103-05:002012-02-16T13:55:26.103-05:00The Applicant shot himself all over. If the practi...The Applicant shot himself all over. If the practitioner who filed the appeal is the same one who drafted the application, they messed up big time. While I believe that a PHOSITA would have been able to identify the cited article with the information provided, the person who drafted the application should have provided as much citation information as possible. If this was essential descriptive subject matter, they should have made sure it was incorporated into the actual description instead of merely by reference.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-31542283264900397402012-02-16T11:02:05.294-05:002012-02-16T11:02:05.294-05:00>Not much of an excuse for this.
Agreed. To me...>Not much of an excuse for this.<br /><br />Agreed. To me, the most interesting aspect here is what arguments you might use later in prosecution, to recover from the mistake.<br /><br />>incorporate by reference essential material <br />>from a non-patent publication. <br /><br />Interest that neither the Board nor the Examiner brought this up. Would have been dispositive, right?<br /><br />Also interesting: in the Appeal Brief the Applicant refers to the stuff at issue as "essential material." <br /><br />[T]he originally filed specification provides the description of essential material concerning the wild-type human tyrosinase, citing the Ujvari reference (Ujvari et al., 2001) ...<br /><br />Did the Applicant shoot himself in the foot with this statement?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-76364081720651410262012-02-16T08:50:41.258-05:002012-02-16T08:50:41.258-05:00Even if Applicant had included a specific citation...Even if Applicant had included a specific citation to the Ujvari paper, I don't think it would have helped.<br /><br />Rule 1.57(c)-"Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication. . .<br /><br />Applicant wanted to incorporate by reference essential material from a non-patent publication. Rule 1.57 does not allow that.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-55499450053517225792012-02-16T00:42:49.115-05:002012-02-16T00:42:49.115-05:00"A more interesting case would be if the Appl..."A more interesting case would be if the Applicant had submitted evidence to support the argument."<br /><br />Agreed.<br /><br />"Not much of an excuse for this. If you cite an article/patent/publication in your specification: (1) make sure you identify it"<br /><br />Agreed.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-87900483707556473572012-02-15T20:17:01.733-05:002012-02-15T20:17:01.733-05:00Lazy attorney gets his azz handed to him. No -- I...Lazy attorney gets his azz handed to him. No -- I'm not 6, but I've channeled him for a moment.<br /><br />Not much of an excuse for this. If you cite an article/patent/publication in your specification: (1) make sure you identify it (i.e., "that article by Bob" isn't enough) and (ii) include the phrase "which is incorporated herein by reference in its entirety." Pretty simple.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-92091491735980168322012-02-15T14:40:49.014-05:002012-02-15T14:40:49.014-05:00>argument that a POSITA would have been
>ab...>argument that a POSITA would have been <br />>able to identify the article based on the <br />>information provided.<br /><br />So the requirement in 1.57 to "Clearly identify the referenced patent, application, or publication" is from the viewpoint of a POSITA? <br /><br />I dunno if this is how the rule is interpreted or not. I agree that what's not clear to a layman can be nonetheless clear to a POSITA. <br /><br />But to me, the issue here goes more to "how clear" rather than "clear to who". <br /><br />The Applicant argued that the "clearly identified" standard was met because a Google search found only one reference published in 2001 that listed Ujvari as first author. <br /><br />The Board chose to ignore this argument as "an unsupported contention", ie, "mere attorney argument." <br /><br />A more interesting case would be if the Applicant had submitted evidence to support the argument. <br /><br />That should force the Board to specifically address the "clearly identify" standard.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-56841888680495937222012-02-15T11:44:04.494-05:002012-02-15T11:44:04.494-05:00What was lacking was the argument that one of ordi...What was lacking was the argument that one of ordinary skill in the art would have been able to identify the article based on the information provided.Anonymousnoreply@blogger.com