tag:blogger.com,1999:blog-6733236595417664807.post5734522073299866880..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Burden of proof when reference claims priority to a provisionalKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-6733236595417664807.post-26593400630697650052012-11-19T14:18:29.030-05:002012-11-19T14:18:29.030-05:00Wonderful goods from you, man. I've understand...Wonderful goods from you, man. I've understand your stuff previous to and you are just extremely wonderful. I really like what you have acquired here, really like what you are stating and the way in which you say it. You make it enjoyable and you still take care of to keep it smart. I can not wait to read far more from you. This is really a wonderful website.<br /><i>Feel free to visit my blog</i> ; <b><a href="https://www.xanadu.nagarajan.net/gallery/v/Nagarajan/album/Canon+Camera+Pictures+USSingapore+Trip+2009+102.jpg.html" rel="nofollow">a total noob</a></b>Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-38385114729004326152010-05-06T11:50:56.402-04:002010-05-06T11:50:56.402-04:00"Hardly. It holds exactly the opposite. It he..."Hardly. It holds exactly the opposite. It held that his blanket statement was plenty to tie his cites to the child to the prov."<br /><br />Talk about having difficulty interpreting case law. 6tard still has no idea how to.<br /><br />"The Olsen case is just chock full of unneeded citations. Some clerk probably wrote it."<br /><br />And that clerk is still infinitely more qualified to be writing BPAI decisions than 6tard.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-78754448696675797392010-05-05T17:52:31.122-04:002010-05-05T17:52:31.122-04:00"Not what I said. I said that the Examiner is..."Not what I said. I said that the Examiner is supposed to point out particular portions of the reference that he/she is relying on in the rejection. In the specific scenario I talked about -- reliance on a provisional -- the Examiner is required to do so by Yamaguchi. "<br /><br />Hardly. It holds exactly the opposite. It held that his blanket statement was plenty to tie his cites to the child to the prov. <br /><br />Stop crying about the 500 page "burden" already, seriously. This is patent lawl, you have to do some reading. <br /><br />"Based on those cases, the Board doesn't agree with your idea of "the only thing of value" in Yamaguchi. "<br /><br />You're absolutely right, the board has both misapplied and needlessly utilized portions of 'goo in places they hardly needed too. <br /><br />"The Board also seemed to ignore the Yamaguchi requirement in Ex parte Hartigan. "<br /><br />They didn't ignore it. There is no "requirement" like the one you want there to be from the 'goo case. <br /><br />"In Ex parte Zheng, the Final Office Action did not refer to any particular portion of the provisional. "<br /><br />Neither did 'goo. What of it?<br /><br />"Ignoring the Yamaguchi requirement, "<br /><br />Again, the supposed "requirement" is solely in your mind, not in 'goo. That's why it looks like it keeps being "ignored". <br /><br />"thus making an implicit finding that the provisional did support the reference"<br /><br />Exactly. And that's what you can look forward to everytime you hope for what you believe to be a strict application of 'goo. <br /><br />The Olsen case is just chock full of unneeded citations. Some clerk probably wrote it. <br /><br />Good luck with your supposed requirement in Yamaguchi.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-81961787682391168332010-05-05T17:22:29.141-04:002010-05-05T17:22:29.141-04:00APJ Torczon's concurrence in Yamaguchi is the ...APJ Torczon's concurrence in Yamaguchi is the correct view of secret prior art, in my opinion.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-57502210253059525712010-05-05T12:50:35.812-04:002010-05-05T12:50:35.812-04:00>I can't believe you just talked about the ...>I can't believe you just talked about the <br />>burden of reading a reference<br /><br />Not what I said. I said that the Examiner is supposed to point out particular portions of the reference that he/she is relying on in the rejection. In the specific scenario I talked about -- reliance on a provisional -- the Examiner is required to do so by Yamaguchi. <br /><br />When the Examiner doesn't do as required, the burden falls to the Applicant to search through the reference, trying to figure out what portions the Examiner might be relying on. And yes, that's a big burden if the document is 500 pages. <br /><br />>Maybe it's too burdensome for the examiner <br />>to have to read 500 pages<br /><br />In my experience, it's apparently too burdensome for some examiners to read 10 page reference, and they prefer instead to match keywords in the reference with keywords in my claims. Resulting a rejection which is way off base, and lots of reopened prosecution. <br /><br />>You're kind of bad at analyzing caselawl <br />>sometimes. <br /><br />The cases I discussed in the blog post were the *Board* analyzing and applying Yamaguchi. Based on those cases, the Board doesn't agree with your idea of "the only thing of value" in Yamaguchi.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-61925721338260677952010-05-05T11:57:33.090-04:002010-05-05T11:57:33.090-04:00The "May 4, 2010 7:10 AM" post is what g...The "May 4, 2010 7:10 AM" post is what gives examiner's a bad name. I optimistically think that many examiners are not this bad, but whoever wrote that is really off (to put it politely).<br /><br />I know; the post may not have been written by an examiner. For examiners' sake, I would hope not.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-76072480069753993492010-05-04T16:57:56.308-04:002010-05-04T16:57:56.308-04:00"Perhaps searching for a matching paragraph i..."Perhaps searching for a matching paragraph in a 53 page document is not too burdensome for the Applicant – but what if the provisional was 500 pages long? "<br /><br />Maybe it's too burdensome for the examiner to have to read 500 pages and we should call the entire patent system off. <br /><br />I can't believe you just talked about the burden of reading a reference. Give me a break sister. <br /><br />"Yeah,right, as if I didn't ever look for it.)"<br /><br />Boo hoo. <br /><br />"It's a harder call if the Examiner has not met his burden by explaining which portions of the provisional correspond to the relied-upon portions of the § 102(e) reference. You could appeal without saying more, and hope the Board applies Yamaguchi strictly. "<br /><br />Oh yes, the requirement in Yamaguchi'goo that the examiner state "both documents "clearly show the same subject matter"" must be STRICTLY enforced and if it isn't then all one would have to say to argue against it is to argue for a strict application of 'goo thus requiring that the examiner write in his next correspondence to you that "both documents "clearly show the same subject matter"". Whoa nelly, that'll sure get prosecution movin' right along! <br /><br />/facepalm Karen. You lawlyers would literally chop off your nose (pay for an appeal) to spite your face (your examiner on your application). <br /><br />The only thing of value from the 'goo case was one thing and one thing only Karen, whether or not the failure of the office to supply a copy of the provisional was grounds for applicant to argue that they hadn't been presented with the evidence since it is NPL. The board ruled that it wasn't. That's it, the rest of that show was supremely boring and didn't amount to a hill of practical beans. <br /><br />You're kind of bad at analyzing caselawl sometimes. And moreso at garnering takeaways. <br /><br />That said, I'll let anyone who wants to pay 10k$ to see me write "both documents "clearly show the same subject matter"" do so anytime. In fact, if they don't want to wait on the board, they could just pay me 10,000$ directly and I'll write it for them ten thousand times in cursive longhand, on a chalkboard if they want. <br /><br />http://www.penny-arcade.com/comic/2008/4/7/<br /><br />Play a card, tap a card, type in "both documents "clearly show the same subject matter"" meh, they're both pretty ez.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-21954082630455699582010-05-04T07:10:55.243-04:002010-05-04T07:10:55.243-04:00>examiner merely reproduces a segment of a clai...>examiner merely reproduces a segment of a claim >and cites a huge chunck of text <br /><br />Agreed its annoying. Yamaguchi doesn't really help this scenario, being limited to what an Examiner must do when the reference relies on a priority claim. <br /><br />I'm amazed at the extensive fact finding that the Board does generally. I've read plenty of file histories where the Appellant seems to have no idea what the Examiner is really saying about how the claims read on the reference, and yet the Board goes into lots of analysis, and then affirms the Examiner. <br /><br />Only rarely do I read a Board decision which says "we have no idea what the Examiner is saying about how the references teach so we revese the Examiner".Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-91303515516486129362010-05-04T03:11:57.065-04:002010-05-04T03:11:57.065-04:00Thanks Karen for looking into this. It is quite a...Thanks Karen for looking into this. It is quite annoying when an examiner merely reproduces a segment of a claim and cites a huge chunck of text as alleged support for a prior art teaching. It is even more infuriating when the Board backs it up ("The reference is not so voluminous that the applicant could not have found ..." Yeah,right, as if I didn't ever look for it.)Anonymousnoreply@blogger.com