tag:blogger.com,1999:blog-6733236595417664807.post6203572900274608507..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board reverses anticipation based on inherency when Applicant provides counterexamplesKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger135125tag:blogger.com,1999:blog-6733236595417664807.post-6670992000895086952013-01-18T14:06:44.857-05:002013-01-18T14:06:44.857-05:00"No lawyer would make an admission like that...."No lawyer would make an admission like that."<br /><br />Do you know what an admission is?<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-36366291161836469442013-01-18T11:32:31.121-05:002013-01-18T11:32:31.121-05:00"Nope."
Yep, you cowardly eunich.<br />"Nope."<br /><br />Yep, you cowardly eunich.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-69319435736065766882013-01-17T00:49:39.634-05:002013-01-17T00:49:39.634-05:00"Did somebody say they were?"
As someon..."Did somebody say they were?"<br /><br />As someone already said: Clever ... you didn't say anything. Like an Examiner, you wrote the bare minimum (actually, less than the bare minimum), waited for the attorney to figure out you meant, and then came back "oh wait, that's not what I meant to say ... you got it wrong."<br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42090141155852058352013-01-17T00:27:31.625-05:002013-01-17T00:27:31.625-05:00"My peers know the law."
Which is exact..."My peers know the law."<br /><br />Which is exactly why you are broken and publically humiliated in their eyes. Better you had kept your mouth shut and your peers merely thought you a fool, but you opened your mouth and left no doubt in their minds.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-3498077552426049902013-01-16T17:46:29.292-05:002013-01-16T17:46:29.292-05:00"My, you are a good lawyer."
"Good..."My, you are a good lawyer."<br /><br />"Good enough that he left you broken and publically humiliated in the eyes of your peers."<br /><br />Nope. My peers know the law.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-55768308381706896222013-01-16T13:11:32.508-05:002013-01-16T13:11:32.508-05:00"Relevant" and "analogous" are...<br />"Relevant" and "analogous" are not synomyms.'"<br /><br />Brilliant observation. Did somebody say they were?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-37753789311722703962013-01-16T12:11:34.853-05:002013-01-16T12:11:34.853-05:00"Relevant" and "analogous" are..."Relevant" and "analogous" are not synomyms. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-56248284797583320512013-01-16T09:38:22.458-05:002013-01-16T09:38:22.458-05:00"Where is the word 'analogous' in tha..."Where is the word 'analogous' in that sentence?"<br /><br />"Analogous art is that which is relevant to a consideration of obviousness under [35 USC 103]. Two criteria are relevant in determining whether prior art is analogous: (1)whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not with the field of the inventor's endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved." Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010)(citations omitted).<br /><br />Judas Priest. Are there any patent lawyers in the house?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-45747687319598042872013-01-16T02:04:04.417-05:002013-01-16T02:04:04.417-05:00"The person of ordinary skill in the art has ..."The person of ordinary skill in the art has been defined as a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995)."<br /><br />Where is the word "analogous" in that sentence?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-20295084356923615672013-01-16T01:52:22.343-05:002013-01-16T01:52:22.343-05:00"My, you are a good lawyer."
Good enoug..."My, you are a good lawyer."<br /><br />Good enough that he left you broken and publically humiliated in the eyes of your peers.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-15394377493382140062013-01-16T01:18:29.717-05:002013-01-16T01:18:29.717-05:00"... and that is all I needed to establish.&q..."... and that is all I needed to establish."<br /><br /> Not a lawyer. No lawyer would make an admission like that.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-44525531405431105382013-01-15T18:44:06.815-05:002013-01-15T18:44:06.815-05:00The person of ordinary skill in the art has been d...The person of ordinary skill in the art has been defined as a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995).<br /><br />A single sentence in a reference from the relevant art can show that something was recognized by the hypothetical person of ordinary skill in the art. <br /><br />Please explain why you believe that the single sentence would be sufficient to resolve the level of ordinary skill in the art. But first read Section 102 and Section 103.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-81474213236944679632013-01-15T18:27:42.267-05:002013-01-15T18:27:42.267-05:00"What you have established is that reference ..."What you have established is that reference A is 'maybe' not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied."<br /><br />"... and that is all I needed to establish."<br /><br />My, you are a good lawyer. Kindly amend your statement of Jan. 14, 9:03 AM by inserting --maybe-- before "not necessarily."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-38279974232741612402013-01-15T17:22:36.207-05:002013-01-15T17:22:36.207-05:00"I don't recall making any arguments abou..."I don't recall making any arguments about GPAC."<br />Clever ... you didn't say anything. Like an Examiner, you put wrote the bare minimum (actually, less than the bare minimum), waited for the attorney to figure out you meant, and then came back "oh wait, that's not what I meant to say ... you got it wrong."<br /><br />Regardless, you cited GPAC is response to certain arguments (PRESUMABLY, in an attempt to refute those arguments). However, GPAC didn't.<br /><br />"I asked you to cite a case contrary to GPAC because you had not provided adequate support for your original statement."<br />In what way? The Federal Circuit came down different? Coming down different does not necessarily mean that the holding is contrary ... it likely means that the facts are different. Regardless, your question reflects your analysis -- poorly thought out.<br /><br />"What you have established is that reference A is 'maybe' not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied."<br />... and that is all I needed to establish.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-86248812072858103762013-01-15T14:42:23.695-05:002013-01-15T14:42:23.695-05:00"Why would I care to? When you cited "GP..."Why would I care to? When you cited "GPAC, Inc.," I was curious to see what it actually said. Imagine my surprise when it didn't support your arguments."<br /><br />I don't recall making any arguments about GPAC. I asked you to cite a case contrary to GPAC because you had not provided adequate support for your original statement. A good lawyer would have known that. But you don't purport to be a good lawyer, just a lawyer.<br /><br />What you have established is that reference A is "maybe" not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being applied.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68541558137670111962013-01-15T12:58:44.289-05:002013-01-15T12:58:44.289-05:00"They used the 'clear error' standard..."They used the 'clear error' standard, which is used for findings of fact..."<br /><br />That was the standard in 1995 when GPAC was decided. As we all know, substantial evidence is now the standard of review for findings of fact. Thanks to Zurko.<br /><br />Zurko IV RULES!!!!!!!!!!!!!!!!!!!!!!!!!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-27392812154241353662013-01-15T12:18:00.499-05:002013-01-15T12:18:00.499-05:00"Fair enough. So cite a Fed. Cir. case where ..."Fair enough. So cite a Fed. Cir. case where analogous-art references applied in an ex parte prosecution rejection were found not to indicate the level of ordinary skill in the art."<br /><br />Why would I care to? When you cited "GPAC, Inc.," I was curious to see what it actually said. Imagine my surprise when it didn't support your arguments.<br /><br />Regardless, the determination of what is the ordinary level of skill in the art is a factual issue that is rarely raised during prosecution/litigation. I don't go hunting for case law on issues that aren't particular relevant to my practice.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68166827486008312242013-01-14T17:12:49.794-05:002013-01-14T17:12:49.794-05:00Fair enough. So cite a Fed. Cir. case where analo...Fair enough. So cite a Fed. Cir. case where analogous-art references applied in an ex parte prosecution rejection were found not to indicate the level of ordinary skill in the art.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-21208737574661067602013-01-14T16:50:36.955-05:002013-01-14T16:50:36.955-05:00"GPAC, Inc."
Must be a non-attorney. W..."GPAC, Inc."<br /><br />Must be a non-attorney. When the Federal Circuit writes "[w]e do not believe that the Board clearly erred in adopting this approach ...," this is not a statement of law applicable to all situations. The fact that cited references can indicate the level of skill in the art does not mean that cited references always indicate the level of skill in the art.<br /><br />You cannot interpret a case divorced from the facts of that case. You also have to READ what the Federal Circuit wrote and HOW they wrote it.<br /><br />Had the Federal Circuit wrote "as a matter of law, the references of record always reflect the level of ordinary skill in the art," then you would have something to cite. However, the Federal Circuit used much weaker language (i.e., "[w]e do not believe that the Board clearly erred").<br /><br />You also have to look at the standard of review applied by the Federal Circuit. They used the "clear error" standard, which is used for findings of fact – not for statements of law. Hence, the Federal Circuit did not state references of record always reflect the level of ordinary skill in the art as a matter of law. If they did, they would have written the opinion differently.<br /><br />If you were trained in law, this is something you could have picked up on.<br /><br />Regardless, whether or not a reference indicates the level of skill in the art is a question of fact – i.e., it is question that must be answered on a case-by-case basis. Merely citing "GPAC, Inc." isn't going to do it.<br />a lawyernoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-67089384419454176072013-01-14T13:35:51.233-05:002013-01-14T13:35:51.233-05:00I looked at the PTAB decision that was cited about...I looked at the PTAB decision that was cited about "determining." It is consistent with what I said about indefiniteness. And vice versa.<br /><br />Some lawyers seem not to get that a claim could be "indefinite" in the PTO but not "insolubly ambiguous" in a district court or at the ITC. It should not be suprising that the result might be different in view of the different rules of claim construction, different tools for claim construction, different burdens, different evidentiary standards, and the presumption of validity. Especially the presumption of validity, which requires that claims are construed, if possible, to preserve validity when the claim is determined to contain ambiguity.<br /><br />But to re-iterate, I do not think that the claim is indefinite. So we agree on that. But I think the claim means what it says and that the ordinary and customary meaning of "determining" includes determining in the human mind. I do not agree with the advocates who contend that the term means something less than its ordinary and customary meaning, although they are unable to say what that would be with any reasonable certainty.<br /><br /> Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-54375977320224867442013-01-14T10:44:17.669-05:002013-01-14T10:44:17.669-05:00GPAC, Inc.GPAC, Inc.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-44003578111867182482013-01-14T09:46:48.118-05:002013-01-14T09:46:48.118-05:00"Just because you can ask a lot of questions ..."Just because you can ask a lot of questions about what the meaning of a claim term does not make it indefinite."<br /><br />That's true, but I haven't seen much in the way of answers.<br /><br />I understand that people do not like 112 rejections. But the disagreement on BRI here (not just between you and me) should show that the claim is of indefinite scope.<br /><br />The claim represents a failure of process. If we pretend that it can get past the summary judgement phase (CyberSource), then there will be a Markman hearing. There would probably be one expert testifying that the ordinary artisan would understand "determining" to mean, for example, "measuring" but not "calculating." The opposing party would sell "calculating," not "measuring." In this simplified example, the court would probably not hold the claim insolubly ambiguous, but would adopt one of the competing meanings.<br /><br />Following trial and Fed. Cir. appeal, the Fed. Cir. de novo might reverse or remand based on the court's picking the wrong meaning, or not coming up with its own.<br /><br />Better to make the rejection in the PTO, when the claims can be amended. A purpose of prosecution is to remove the type of ambiguities that are being debated here. If the applicant obviates speculation by putting what was intended into the claims, the process works.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-22370540134011828082013-01-14T09:03:27.907-05:002013-01-14T09:03:27.907-05:00"While the inventor may have more or less ski..."While the inventor may have more or less skill than the ordinary artisan, the specification must enable a person having ordinary skill in the art to make and use the invention."<br /><br />The specification of prior art reference A is a direct reflection of the skill of the inventors of reference A. However, it is not necessarily a reflection of ordinary level of skill in the art of application B to which reference A is being appliedAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-70042836124021874222013-01-14T00:27:48.719-05:002013-01-14T00:27:48.719-05:00>You yourself said that maybe they
>meant &...>You yourself said that maybe they <br />>meant "recognzing" when they said <br />>"determining." Maybe. Maybe not.<br /><br />Ah, but what an applicant/patentee *intends* the claim to mean is not the relevant issue. It's important to think about what a claim *might* mean when drafting it and when asserting/defending in litigation. And it's fun to do so in blog posts. But such speculation is not persuasive evidence that the claim is indefinite. <br /><br />>Would it infringe if it "calculated" <br />>a distance between the focus <br />>of attention and the display <br />>event? ... [other questions]<br /><br />I dunno. I haven't spent the time to come up with a BRI. But if the answer to all these questions is Yes, that just makes it broad, not indefinite. <br /><br />Just because you can ask a lot of questions about what the meaning of a claim term does not make it indefinite. <br /><br />Lots of claims use "determining" in a manner very similar to this one. I can think of only ONE in which the Board found "determining" indefinite. (Ex parte Cohen, 11/172,492). That fact is not dispositive, but perhaps relevant. <br /><br />>But if the claim is deemed to cover <br />>every conceived and conceivable way of <br />>"determining" then 112 First <br />>might be more important<br /><br />Agreed that if the claim is deemed this broad under a REASONABLE interpretation, it's vulnerable to written description. <br /><br />So far we don't have much agreement on BRI here. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-37210770756034110012013-01-13T22:09:29.351-05:002013-01-13T22:09:29.351-05:00"Chore-Time? The case where no factual determ..."Chore-Time? The case where no factual determination of the level of skill in the art was necessary? Even in an inter partes district court litigation? Chore-Time?"<br /><br />Thanks for demonstrating your ignorance....again.<br /><br />In any event, we've established that your inability to cite a single case that says, word for word: "A person of ordinary skill is presumed to have knowledge of all analogous art." <br /><br />Good job!Anonymousnoreply@blogger.com