tag:blogger.com,1999:blog-6733236595417664807.post4428939188113547254..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: What is the "normal" state of a material? (Ex parte Fleming)Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger15125tag:blogger.com,1999:blog-6733236595417664807.post-9762456518100703692010-07-21T23:23:29.882-04:002010-07-21T23:23:29.882-04:00Can't you anons use fake names? I can't te...Can't you anons use fake names? I can't tell who is replying to whom when *everybody* is posting as Anonymous.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-86290642751401769932010-07-21T19:39:00.292-04:002010-07-21T19:39:00.292-04:00Oh, and I'll let you know the next time the bo...Oh, and I'll let you know the next time the board does rule on exactly that issue. I've seen it before, but I didn't bother to fav it. It did not turn out well for applicant.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-14139847519507308122010-07-21T19:37:41.401-04:002010-07-21T19:37:41.401-04:00"You are never going to be affirmed on a &quo..."You are never going to be affirmed on a "112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence."<br /><br />You'll never even get that to the Board."<br /><br />You're 100% right, nobody will ever appeal it :(. I've probably done it 10 times already, several times where it was the sole rejection. No appeal :(<br /><br />"There is no escaping that one."<br /><br />ROFLMAO"<br /><br />I kno rite?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-5414651527018360822010-07-21T18:06:33.038-04:002010-07-21T18:06:33.038-04:00"You'll never cease to get 112 2nd'ed..."You'll never cease to get 112 2nd'ed, so we're even I guess."<br /><br />You are never going to be affirmed on a "112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence."<br /><br />You'll never even get that to the Board.<br /><br />"There is no escaping that one."<br /><br />ROFLMAOAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-1558152449965164132010-07-21T17:01:16.792-04:002010-07-21T17:01:16.792-04:00"Good to know your take on that. Thanks. &quo..."Good to know your take on that. Thanks. "<br /><br />Well if you have another one then please, be my guest, do tell. <br /><br />"6, you'll never cease to amuse. "<br /><br />You'll never cease to get 112 2nd'ed, so we're even I guess.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-73591383654106294802010-07-21T10:02:01.986-04:002010-07-21T10:02:01.986-04:00"The real beauty of the 112 under Miyazaki, w..."The real beauty of the 112 under Miyazaki, which is the deathblow for pretty much anyone arguing against it, is that they inevitably put their claim construction on the record. And when that happens, bam, another 112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence. There is no escaping that one."<br /><br />LOL<br /><br />6, you'll never cease to amuse.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-20049438355109001622010-07-20T23:28:08.733-04:002010-07-20T23:28:08.733-04:00>Nope, another 112 2nd. See the very last
>...>Nope, another 112 2nd. See the very last <br />>statement in 112 2nd. <br /><br />Interesting. I'll be on the lookout for that. <br /><br />>There are, practically speaking, only two <br />>ways to argue a properly made Miyazaki <br />>rejection. <br /><br />Good to know your take on that. Thanks.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-49403097838896945042010-07-20T19:36:05.447-04:002010-07-20T19:36:05.447-04:00"Is the "another 112" you're re..."Is the "another 112" you're referring to a written description rejection? "<br /><br />Nope, another 112 2nd. See the very last statement in 112 2nd. They even made us a new FP for these types of rejections shortly after I started making them myself. <br /><br />"Surely that's not *inevitable*. "<br /><br />It could be done without it sure, but every case that I've seen argued they do include it. <br /><br />There are, practically speaking, only two ways to argue a properly made Miyazaki rejection. <br /><br />One is to argue that at least all but one of the office's interpretations are unreasonable, and you'd better have a dam good reason to argue that. Note that this doesn't really happen in my cases because my interpretations are reasonable, so, practically speaking this line of argument is foreclosed. <br /><br />The other is to argue that your interpretation (one which the PTO did not put down yet) is clearly the best for one reason or the other (ivo spec, etc). But to do this, you have to put your construction down. <br /><br />A third argument of course would be to argue against Miyazaki's holding outright, but I've yet to see that. I will relish the day. <br /><br />So, practically speaking, the only way to argue against my Miyazaki rejections is to provide your own construction that is plainly more proper. And that is all I've seen so far. <br /><br />Oh, and I note that I usually do put down my claim constructions, or at least partial ones, in my Miyazaki rejections.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-17138521198419283972010-07-20T19:20:57.210-04:002010-07-20T19:20:57.210-04:00"Yet an Examiner isn't required to actual..."Yet an Examiner isn't required to actually explain how he's interpreting the claims. Why is that? "<br /><br />You say that, but if you ask politely and approach the spe if necessary, nearly 100% of the time they will be so required. <br /><br />You're right that we don't have to do it in each action, especially first actions. That's mostly because we assume that the interested reader can come to the same construction as we have without our holding their hand. <br /><br />Also, because OA's take enough time to write as is. Be glad you get more than the 1970's short form. Word on the street is that they were considering going back to that, or something similar.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-23777154142327841612010-07-20T19:16:30.325-04:002010-07-20T19:16:30.325-04:00>inevitably put their claim construction on the...>inevitably put their claim construction on the <br />>record. And when that happens, bam, another <br />>112 for failure to claim that which the <br />>applicant subjectively believes to be his <br />>invention<br /><br />Is the "another 112" you're referring to a written description rejection? <br /><br />Surely that's not *inevitable*. Perhaps you're really saying that you think many Applicants have claims which don't have written description support for the full breadth of their claims. But that this isn't apparent until the breadth of the claim is spelled out?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-2972021278744368902010-07-20T19:13:41.567-04:002010-07-20T19:13:41.567-04:00>I was just saying that the 103 in the
>alt...>I was just saying that the 103 in the <br />>alternative rejection would have [still] >applied to their claim <br /><br />Gotcha. Because the amendment we're talking about is something like replacing "normally" with "in the expanded state". Which would have overcome both the 112 and the anticipation. But not the obviousness. <br /><br />>put their claim construction on the record.<br /><br />Certainly having each side understand how the other side is interpreting the claim limitations would go a long way to resolving disputes. <br /><br />Yet an Examiner isn't required to actually explain how he's interpreting the claims. Why is that?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-19188374949401424332010-07-20T18:49:03.303-04:002010-07-20T18:49:03.303-04:00I was just saying that the 103 in the alternative ...I was just saying that the 103 in the alternative rejection would have applied to their claim after they got done amending around the 112 rejection, and they still would have wanted to appeal that alternate 103 grounds of rejection. You surmise we can't tell what applicant would have done with the 112, but so far I've had a 100% success rate with getting an amendment. I had one dude argue with me (for about 15 pages), but he capitulated in the end. He was even an old buddy of my SPE. There may have been a couple of others who argue at the same time as amending but I think that's about it. <br /><br />The real beauty of the 112 under Miyazaki, which is the deathblow for pretty much anyone arguing against it, is that they inevitably put their claim construction on the record. And when that happens, bam, another 112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence. There is no escaping that one. <br /><br />It is rather evil I know, but I prefer to not have them put up more of a fight than necessary and get the case resolved.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-67490943265990623762010-07-20T16:35:52.091-04:002010-07-20T16:35:52.091-04:00>112 2nd paragraph under Miyazaki would likely ...>112 2nd paragraph under Miyazaki would likely <br />>have saved the applicant a trip to the board <br /><br />Agreed that Miyazaki (claim is indefinite when amenable to multiple interpretations) is applicable here. <br /><br />I find it interesting that the *Board* didn't enter an indefiniteness rejection. They could have done that *and* refused to rule on the prior art rejections under In re Steele. <br /><br />>they still would have gone to the board <br />>apparently in this case. The whole obvious in <br />>the alternative grounds of rejection would <br />>still have been there. <br /><br />Can't know what the Applicants would have done with an indefiniteness rejection. Maybe appealed anyway. Maybe amended the claims to overcome. Maybe abandoned ...<br /><br />Don't see what the presence of a 103-in-the-alternative has to do with this decision.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-56195423305370166852010-07-20T16:08:47.889-04:002010-07-20T16:08:47.889-04:00Actually never mind that, they still would have go...Actually never mind that, they still would have gone to the board apparently in this case. The whole obvious in the alternative grounds of rejection would still have been there.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-60905953141419004662010-07-20T16:06:41.165-04:002010-07-20T16:06:41.165-04:00112 2nd paragraph under Miyazaki would likely have...112 2nd paragraph under Miyazaki would likely have saved the applicant a trip to the board and the examiner the time and trouble of doing appeal conferences. Examiners should not hesitate to use it.Anonymousnoreply@blogger.com