tag:blogger.com,1999:blog-6733236595417664807.post772925248698352756..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI reverses when Examiner fails to provide any reason whatsoever to combineKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-6733236595417664807.post-65907199671559424412011-08-23T19:46:59.681-04:002011-08-23T19:46:59.681-04:00Huh. This is the first one I can recall where the ...Huh. This is the first one I can recall where the Examiner literally did not provide a rationale for combining. But yeah, I feel like I'm seeing a good number of reversals where the Examiner's rationale for combining was *unpersuasive*.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-36066088875388094902011-08-23T19:01:51.162-04:002011-08-23T19:01:51.162-04:00I've been seeing a lot of reversals like this ...I've been seeing a lot of reversals like this over the last year or so.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-32902410990987681422011-08-19T12:00:29.422-04:002011-08-19T12:00:29.422-04:00While I like to see the board quickly reversing pa...While I like to see the board quickly reversing patently deficient rejections, I don't think the board did the Applicant any favor by reversing based on an issue not argued in the appeal brief. I would think the examiner will just rewrite the rejection with some sort of rationale to combine. This leaves the Applicant with the same issues he appealed in 2007. I imagine the case will take another run through the appeal process for the board to decide the issues they should have addressed this time.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-56252309646407689652011-08-18T14:25:16.012-04:002011-08-18T14:25:16.012-04:00"Let's keep our fingers crossed that this..."Let's keep our fingers crossed that this case gets allowed instead of having prosecution reopened after reversal."<br /><br />I have my fingers crossed that the examiner simply writes the action properly. <br /><br />So Karen, where's your posting on the decision that probably wipes out half of the "work productlol" you put out last year? <br /><br />"You always find it in the same place (thanks to the USPTO examiner academy!!) formatted in almost the exactly the same way."<br /><br />Thank go d for the little things.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-34921702827749741102011-08-18T11:05:12.702-04:002011-08-18T11:05:12.702-04:00"Failure one: the conference of Examiners who..."Failure one: the conference of Examiners who signed off on the Answer and let this go to appeal."<br /><br />Amen, my sister Karen. Thank you for picking up this banner and running with it.<br /><br />Every single QAS in TC's 3600 and 3700 is absolutely useless and should be fired. Not reassigned, not demoted, not retrained, not anything even remotely resembling such usual PTO shenanigans. Waiting 2 years to get a BPAI decision like this is absolutely unacceptable. These useless QAS's are a major contributing factor to the BPAI backlog.<br /><br />"Failure two: the Applicant, who didn't even point out this glaring mistake – not during prosecution and not on appeal."<br /><br />Have to somewhat agree with the posters above. Too many APJ's are willing to overlook sh!tty rejections like this and fill in the gaps for the examiner, usually with a new reason to combine never before of record, and of course not constituting a new grounds of rejection. Arguing that features are not disclosed or suggested by the prior art references is always the safest, and strongest, argument. There's nothing more frustrating than making a very persuasive argument about no reason to combine or no expectation of success and having the some lifer APJ revert back to his/her examiner days and cite some form paragraph about "bodily incorporation" or "attacking the references individually" or whatever. APJ's that answer appellant arguments with MPEP form paragraphs should be immediately fired. Immediately.<br /><br />"It's great the Board corrected the error by reversing the rejection – but this was a ridiculous waste of everyone's time."<br /><br />This APJ is one of the good ones, if not the best.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-40252588464591297622011-08-18T10:27:17.454-04:002011-08-18T10:27:17.454-04:00Preach on, Anonymous - my biggest frustration with...Preach on, Anonymous - my biggest frustration with the reasons to combine I've seen are that they typically have nothing at all to do with the feature(s) being incorporated into the primary reference.<br /><br />However, that reasoning is slightly preferable to the "circular logic" rationale which pops up on a few rare occasions. Namely, "it would have been obvious to modify the primary reference to have the feature X taught by the secondary reference so that the primary reference would have feature X." ?!?!?WindyCitynoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-18733765375413489932011-08-18T09:58:39.749-04:002011-08-18T09:58:39.749-04:00"I comb carefully through every word of an ob..."I comb carefully through every word of an obviousness rejection, looking for weaknesses in reason-to-combine."<br /><br />Comb?? Carefully?? Every word?? The average obviousness rejection (and I've seen thousands) consists of a sentence or two. You always find it in the same place (thanks to the USPTO examiner academy!!) formatted in almost the exactly the same way. As such, no need to search too hard for it.<br /><br />Most times, it is nothing more than it would have been obvious to modify X in view of Y (to teach the missing limitations from X) because of some random benefit in Y (which has nothing to do with the missing limitations).<br /><br />Perhaps one reason why the attorney didn't argue the obviousness rejection is that after KSR, many attorneys have simply given up. You have some good eggs at the BPAI, but most of the times, arguing obviousness is a waste of time. Mind you, I'll argue it whenever it is presented. However, you get better traction at the BPAI arguing that a reference does not teaching a particular limitation than the Examiner has not made out a proper obviousness analysis.<br /><br />Also, if I read your comments correct, it wasn't just that the Examiner presented a deficient obviousness analysis -- they presented none. Not going to find that happening too often.Anonymousnoreply@blogger.com