tag:blogger.com,1999:blog-6733236595417664807.post8569764017636881585..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI finds floor covering art is not analogous to contact lens artKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-6733236595417664807.post-80808433461342617852011-10-20T17:33:34.229-04:002011-10-20T17:33:34.229-04:00>poster who harps on the failure of the
>ex...>poster who harps on the failure of the <br />>examiners to resolve the level of ordinary <br />>skill may be on to something. <br /><br />Do you make a distinction between *level* of skill in the art and *field* of the art? <br /><br />IOW, I see the NAA doctrine as deciding *what* the field is (ie what skills) rather than what the *level* of skill is. <br /><br />But maybe the phrase "determine the level of skill in the art" is meant to cover both aspects. I dunno.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-15934064451967824202011-10-20T17:30:41.425-04:002011-10-20T17:30:41.425-04:00>[Non-analogous art is] not within the
>kno...>[Non-analogous art is] not within the <br />>knowledge of a POSITA to which said subject <br />>matter pertains.<br /><br />So we don't even get to the reason of why a POSITA would combine a NAA reference because a POSITA is not presumed to even know of its existence. <br /><br />Sure, I'll agree with that.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-53685390888642306072011-10-20T16:54:55.110-04:002011-10-20T16:54:55.110-04:00"Because analogous art is only a threshold, r..."Because analogous art is only a threshold, references can pass the analogous art test and still fail obviousness."<br /><br />Agreed.<br /><br />" The analogous art doctrine appears to be a coarse filter that says 'hey, these come from such different fields that there is absolutely no reason for a POSITA to combine them'."<br /><br />Slight quibble. Non-analogous art (i.e. prior art that is not pertinent to the subject matter sought to be patented) is not even within the scope and content of the prior art. It is not within the knowledge of one of ordinary skill in the art to which said subject matter pertains.<br /><br />I'm beginning to think that the poster who harps on the failure of the examiners to resolve the level of ordinary skill may be on to something.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-19669129405113559892011-10-20T15:01:54.305-04:002011-10-20T15:01:54.305-04:00Re: Analogous Art, see also In re Klein, No. 2010-...Re: Analogous Art, see also In re Klein, No. 2010-1411 (Fed. Cir. 2011).<br /><br />BTW, the claims at bar do control.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-3229369317589244942011-10-19T18:53:29.368-04:002011-10-19T18:53:29.368-04:00>I'm pretty sure that's only half corre...>I'm pretty sure that's only half correct, <br />>as the claims don't control the analogous <br />>arts test either. The question is whether <br />>the POSITA would combine the references to <br />>get to the claimed invention<br /><br />I have a slight quibble with your statement.<br /><br />Whether a POSTIA would combine the refs is the *ultimate* question of [non]obviousness. Whether or not the references can even be used is a *threshold* question, answered by the analogous art doctrine. <br /><br />Because analogous art is only a threshold, references can pass the analogous art test and still fail obviousness. The analogous art doctrine appears to be a coarse filter that says "hey, these come from such different fields that there is absolutely no reason for a POSITA to combine them".Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-27666759854459249752011-10-19T18:39:38.504-04:002011-10-19T18:39:38.504-04:00"The fact that the applicant happened to use ..."The fact that the applicant happened to use the composition in contact lenses in their spec is completely irrelevant, the claims control the analogous arts test, not the spec."<br /><br />I'm pretty sure that's only half correct, as the claims don't control the analogous arts test either. The question is whether the skilled person would combine the references to get to the claimed invention. Here, there were two contact lens references that provided the starting point for the examiner's analysis. The examiner then used a floor covering reference to finish the rejection. You need a good reason why the skilled person (in either field of endeavor) would combine the references to get the claimed invention. It doesn't matter what the invention is limited to - there is no plausible reason (other than hindsight based on the applicant's disclosure) why someone working in ANY field would put these references together.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-30221380088182790412011-10-18T10:16:39.370-04:002011-10-18T10:16:39.370-04:00"...but with all the hubbub lately about appl..."...but with all the hubbub lately about applicants getting screwed by the board raising a new grounds of rejection I don't find it particularly inapparopriate to note that the examiner should be given a chance to address the board's new issue..."<br /><br />Lulz. The Board's been covering the a$$ of the examining corps for decades by affirming sh!tty rejections with undesignated new grounds, and now you're whining that the examiner should be given another opportunity to show how ridiculous he/she is by explaining why prior art that doesn't even meet the basic statutory requirement of section 103(a) is analogous?<br /><br />Get over yourself.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-57504324228488958682011-10-17T17:17:07.431-04:002011-10-17T17:17:07.431-04:00I gave my take and then the comment system ate the...I gave my take and then the comment system ate the comment. <br /><br />Bottom line, <br /><br />It appears from this brief summary that the claims were directed to "compositions", a specific composition to be exact, not to "contact lenses" per se. The fact that the applicant happened to use the composition in contact lenses in their spec is completely irrelevant, the claims constrol the analogous arts test, not the spec. For that reason, the analogous arts question may well be resolvable in favor of finding this instant reference to be analogous art. Surely compositions of the type claimed may well have a problem with scuffing which the reference in question may well resolve regardless of whether the end use is a floor covering or a contact lens. <br /><br />I will however not try to resolve the analogous arts test for this application as that involves getting further into the facts than I care to wade. If I had to guess I would ultimately not find it to be analogous art, but I may have, it's a factual issue and I'm not getting myself into the issue deep enough to know. <br /><br />However, I notice in this case an unfortunate effect of the board raising a new issue not on appeal. The issue they made their holding on was neither before them and was never even addressed by the examiner. Perhaps had applicant raised it below then the examiner would have laid out why it was analogous art better or withdrawn the rejection. I realize that the board raises issues sua sponte for all kinds of different reasons and there are good reasons to let them do so, but with all the hubbub lately about applicants getting screwed by the board raising a new grounds of rejection I don't find it particularly inapparopriate to note that the examiner should be given a chance to address the board's new issue and easily request rehearing rather than go through the long drawn out request for rehearing process. <br /><br /><br /><br />"Classic Examiner BS -- if you abstract the field enough, anything is within the same field of endeavor."<br /><br />To be sure, the applicant themselves abstracted the field enough by not claiming contact lenses. That shifts the field of endeavor from "contact lenses" to "A crosslinkable polyurea prepolymer". And I think that is probably why the applicant did not argue this in the first instance.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-38683730965402885232011-10-17T16:52:29.089-04:002011-10-17T16:52:29.089-04:00I see that I am not the only one dealing with Exam...I see that I am not the only one dealing with Examiners who define the field of endeavor so generically that it encompasses hugely different arts. It is a constant battle with Examiners, even when you point out that the Examiners' actions contradict the MPEP in terms of how one should determine analogousness.<br />Again, this is another reason why the Examiner should be forced to explicitly define the level of skill in the art so that the Examiner is forced to explain how and why one of the explicitly determined level of skill would have found the references to have been analogous.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-74164875631768578832011-10-16T19:47:09.139-04:002011-10-16T19:47:09.139-04:00FYI ... where is 6? He's got the back of ever...FYI ... where is 6? He's got the back of every back examiner out there. I want his take.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-25449784501106440692011-10-14T12:25:56.553-04:002011-10-14T12:25:56.553-04:00Classic Examiner BS -- if you abstract the field e...Classic Examiner BS -- if you abstract the field enough, anything is within the same field of endeavor.<br /><br />I've had Examiner's come up with alleged "fields of the endeavor" that encompassed most of the references generqated by three different USPTO tech centers.<br /><br />What is a shame is that the primary and/or SPE and/or appeal conference didn't step in to correct this issue before Appellant had to waste time and money going to the BPAI.<br /><br />"The Board's cite to In re Van Wanderham was unusual. The Applicant didn't mention the case, and it doesn't appear to be referenced in any other BPAI decision."<br />It seems to me that someone on the BPAI was acting like an attorney and actually researching the legal issues -- this is to be applauded.Anonymousnoreply@blogger.com