tag:blogger.com,1999:blog-6733236595417664807.post8804484604604522709..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board affirms obviousness when Applicant misunderstands Examiner's combinationKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger16125tag:blogger.com,1999:blog-6733236595417664807.post-30733814240881572642014-11-01T16:00:25.118-04:002014-11-01T16:00:25.118-04:00>Sometime the rejection and the objections/form...>Sometime the rejection and the objections/formalities <br />>go "hand in hand" with addressing all the shortcomings. <br /><br />Maybe you're misunderstanding me. Applicants should always make a full and complete reply to the OA. That includes addressing all rejections and all objections (claims, spec, drawings). I'm not sure what "formalities" you're referring to -- maybe stuff like defect in claim to priority or in inventor declaration -- but those too should be addressed by the Applicant.<br /><br />My mention of "formalities" referred to *Applicant* arguments rather than information provided by an Examiner. I used "formalities" to describe arguments that the Examiner failed to *explicitly* make findings on each of the Graham factors (e.g., level of ordinary skill, differences between claims and prior art). <br /><br />I don't see how your remark is relevant to Applicant arguments about the formalities of a rejection.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-28500531036345106732014-10-31T21:29:02.003-04:002014-10-31T21:29:02.003-04:00"But now that we're talking about it, I *..."But now that we're talking about it, I *don't* consider arguments about formalities / burden to be a way of better understanding the rejection"<br /><br />You definitely should. Sometimes the rejection and the objections/formalities go hand in hand to address all the shortcomings of the claims. Maybe you wrote the claims like a dum as and then got a rejection on some substance that wasn't near what you wanted it on. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-74708002312449053452014-10-23T08:21:59.160-04:002014-10-23T08:21:59.160-04:00>I don't bother to worry about what "c...>I don't bother to worry about what "category" my arguments might fit into<br /><br />Fair enough. I probably spend too much energy trying to categorize. <br /><br />>don't agree that arguments about the level of ordinary skill <br />>in the art or non-analogous art are "formalities."<br /><br />Yeah, now I think that "formalities" is a bad choice of labels on my part, as it suggests not important. <br />Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-65291093178932575592014-10-21T15:57:10.240-04:002014-10-21T15:57:10.240-04:00"But now that we're talking about it, I *..."But now that we're talking about it, I *don't* consider arguments about formalities / burden to be a way of better understanding the rejection Any Applicant who does this and thinks it's persuasive needs to wake up."<br /><br />I won't argue that applicants and their representatives should try as best they can to understand the rejection (and let's face it, some rejections are so ridiculous they can't be understood, even by the examiner, and I'm sure we've all experienced that situation where you ask the examiner to explain the rejection and the examiner can not), but I don't agree that arguments about the level of ordinary skill in the art or non-analogous art are "formalities." They are genuine issues of material fact. Whether you can successfully demonstrate and/or argue that there is/are genuine issue(s) of fact and the examiner has failed to meet his/her burden goes to the "merits" of the case as much as any other evidence and/or arguments you would submit. IMO.<br /><br />I don't bother to worry about what "category" my arguments might fit into. I know what the examiner is required to establish a case of unpatentability for every ground of rejection possible and if the examiner fails in any element I will argue that. As I said, to the extent that the examiner's rejection makes any sense I will do my best to understand it (e.g. by conducting an interview, asking for clarification, etc.), but sometimes the best argument an applicant has is, "The rejection makes no sense" and I won't hesitate to argue it. If my argument is that the rejection makes no sense because there is no reason to modify/combine the prior art and/or there is no reasonable expectation of success or whatever, I will clearly state so and address whatever evidence (if even any at all) the examiner has provided and explain why it doesn't meet the preponderance standard.AAA JJnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-58960162014325064422014-10-20T12:22:53.679-04:002014-10-20T12:22:53.679-04:00It seems we're both guessing as to what "...It seems we're both guessing as to what "the art is not within the level of skill in the art" is supposed to mean. If it's about resolving the level of skill in the art, that's a question of fact, rather than a formality. Analogous art is also a question of fact. I think anon is saying something about the merits of a rejection rather than burden allocation or formalities. But just a guess.<br /><br />I have no idea why an applicant/appellant would argue something that has never been persuasive to the PTO's reviewing courts. But I've seen allegations such as "if it's so obvious, why hasn't it been done before" persuasive to newbies. Who knows? But cluttering up a response or a brief with things that clearly fail encourages speed-reading and missing what might be gems.Thomas Painnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-40018640730179904642014-10-20T11:26:17.175-04:002014-10-20T11:26:17.175-04:00>moderator guessed (wrong) that your nonsense p...>moderator guessed (wrong) that your nonsense phrase was <br />>meant to be something about non-analogous art. <br /><br />Not exactly. I said that I consider arguments about level of skill to be *like* NAA args in that both are, in my view, arguing formalities rather than merits. Or maybe a better way of putting it is arguing burden rather than arguing merits. <br /><br />>The flip side of "you can't effectively fight a rejection that you <br />>don't fully understand" is nonsense arguments that are rarely <br />>persuasive.<br /><br />Hey, you're preaching to the choir. I ding Applicants *all* the time for making bad arguments. I maintain my original position: do all you can to understand the rejection so that you can effectively fight it. <br /><br />But now that we're talking about it, I *don't* consider arguments about formalities / burden to be a way of better understanding the rejection Any Applicant who does this and thinks it's persuasive needs to wake up. <br /><br />But I wonder if some Applicants argue formalities / burden for reasons other than persuading the Board. Perhaps a plan to appeal one of these issues to the Fed Cir? Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-71988324085748050082014-10-19T23:39:24.913-04:002014-10-19T23:39:24.913-04:00What world do you live in, TP, where you making a ...What world do you live in, TP, where you making a bitchy remark to someone gets you what you want from that person? Take a moment. Think about your actions. Once you've apologized for acting like a dick, we can move forward.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-89777865905168528942014-10-19T15:36:08.770-04:002014-10-19T15:36:08.770-04:00I don't know how I can be more clear. Show a ...I don't know how I can be more clear. Show a CCPA/Fed. Cir./Supreme Court case that says "the art is not within the level of ordinary skill in the art."<br /><br />You're demonstrating difficulty in understanding what it means to resolve the level of ordinary skill in the art. You cited the Jud and Vaidyanathan cases, so now we know that must be the topic you're trying to comment on. The moderator guessed (wrong) that your nonsense phrase was meant to be something about non-analogous art. The flip side of "you can't effectively fight a rejection that you don't fully understand" is nonsense arguments that are rarely persuasive.Thomas Painnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-7103358763867144322014-10-19T14:59:36.699-04:002014-10-19T14:59:36.699-04:00If you're arguing that skill level determinati...If you're arguing that skill level determination wasn't done, you're inherently arguing that there's no proof that the cited art is within the level of skill. I've read a few BPAI appeals where the applicant argue that a reference wasn't within the level of ordinary skill<br />You're not being clear, are you looking for a case simply where it was argued that art wasn't within the level of ordinary skill or where the BPAI or Fed Circuit ruled that it wasn't?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-32698066327704408692014-10-19T12:36:10.478-04:002014-10-19T12:36:10.478-04:00I'm familiar with the non-precedential Jud and...I'm familiar with the non-precedential Jud and Vaidyanathan cases. Neither says anything about "the art is not within the level of ordinary skill in the art."<br /><br />Anything else?Thomas Painnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-37409480021170563172014-10-18T14:53:51.474-04:002014-10-18T14:53:51.474-04:00Ex Parte Jud is the BPAI Informative Opinion on th...Ex Parte Jud is the BPAI Informative Opinion on the subject. It's pretty self-serving.<br />In re Vaidyanathan is a Fed Cir. case where the BPAI and Examiner got smacked down on skill level determination.<br />You do need real evidence to win the argument. As always, even if the Examiner has the burden of proof with respect to skill level determination, the PTO and BPAI/PTAB have made this into a very low threshold of proof. Basically, they take the position that if the Examiner cites the art, the Examiner has determined skill level. Even though this should be the Examiner's burden, Applicants have to demonstrate that the art is not within the level of ordinary skill, that the Examiner's approach to skill level determination directly impacted the outcome of the obviousness determination, and present some evidence that the Examiner didn't have a clue about the proper art.. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-82451433649447147242014-10-17T15:18:58.916-04:002014-10-17T15:18:58.916-04:00"Let's not forget that there's always..."Let's not forget that there's always the argument that the art is not within the level of ordinary skill in the art. It's rarely, if ever, argued but it's there."<br /><br />Certainly rare. I've never seen that argument. Do you have CCPA/Fed. Cir./Supreme Court cases for that?Thomas Painnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-6198883802992215872014-10-17T11:37:26.556-04:002014-10-17T11:37:26.556-04:00Sure, I suppose there are N arguments for obviousn...Sure, I suppose there are N arguments for obviousness, depending on how you categorize. <br /><br />At first glance, I'd put your "not within a POSITA's skill" in the same category as "Non-Analogous Art", which I definitely view as Rationale to Combine. Or you could view both as formalities arguments, as you're asking the reference to not be considered rather than reaching the merits. <br /><br />>It's rarely, if ever, argued<br /><br />Yeah, "rare" is probably about right. I have run across it from time to time at the PTAB, but don't recall a single case where it won. Don't know off-hand if Applicants have ever won on this at the Fed Cir.<br /><br />I'm pretty sure you'd need real evidence to make this argument. Probably an expert dec. Even if you submit other refs to show level of skill, you'd need an expert to comment on them, else risk being dismissed as "mere attorney argument".Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-7966151202692993652014-10-16T13:10:42.567-04:002014-10-16T13:10:42.567-04:00"There are always two angles to attack in an ..."There are always two angles to attack in an obviousness rejection: Examiner's combination does not teach the claim elements; and rationale to combine"<br /><br />Let's not forget that there's always the argument that the art is not within the level of ordinary skill in the art. It's rarely, if ever, argued but it's there.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-20691961590370979952014-10-15T10:29:20.909-04:002014-10-15T10:29:20.909-04:00In re Bush, 296 F.2d 491 (CCPA 1961)In re Bush, 296 F.2d 491 (CCPA 1961)Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-48152014648194380012014-10-15T10:04:32.129-04:002014-10-15T10:04:32.129-04:00What's the citation for In re Bush?What's the citation for In re Bush?Anonymousnoreply@blogger.com