tag:blogger.com,1999:blog-6733236595417664807.post6883139800945576335..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI criticizes Applicant for alleging a special meaning for claim term without explaining the meaningKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger27125tag:blogger.com,1999:blog-6733236595417664807.post-43820201613562561382012-03-16T17:37:18.266-04:002012-03-16T17:37:18.266-04:00Apologies Karen I didn't mean to make it sound...Apologies Karen I didn't mean to make it sound like you're not aware of the use of evidence. I meant to make it sound like you still don't understand what to do in instances like the GPU case even after I bothered to hold your hand through it. <br /><br />"However, I believe in order to win this case you don't want to alter the construction of a "graphics processor" you want to alter the examiner's construction of a crypographic one. So you'll need evidence of that, not of the graphics processor. Obviously if the examiner bought into your stuff about "designed for" vs. "used for" then he wouldn't have made the rejection in the first place, so you need to alter his construction of the claim, not of the reference, he knows good and well what a graphic processor is designed for. "<br /><br />^Was all you needed to do in the GPU case. Specifically submit evidence as to what posita would consider to be a crypto processor and then state how that is different from what was in the reference.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-49831369076388701812012-03-16T17:13:20.143-04:002012-03-16T17:13:20.143-04:00My family sold our cattle because they were a PITA...My family sold our cattle because they were a PITA. But we got nice hats out of the deal :) <br /><br />"I can hardly believe it takes more than 5 minutes for a SPEtard or QAStard to say, "Looks good to me, send it up!" or "Just re-open and send out a new, sh!ttier rejection." As that is the end result of all of these conferences, why would it take longer than that?"<br /><br />Well let's see, when you go into a conference sometimes you have a mini-conference with your SPE to just make sure he is on the same page before you got into the conference proper. That takes 5, 10, 15. <br /><br />And then, you go have the actual conference where the appeals guy will sometimes want to know where all the limitations are or will want to know some technical something etc. etc. ensuring that in your pre-conference 30 minute "review the case" time you managed to fully map the claims to all elements in all of the prior art and that you understand the case perfectly after having not seen it for 5 mo. If you do not or if you fail on any of these things the conference can devolve into a long drawn out bunch of ridiculousness. <br /><br />The second conference usually lasts about 20-30 min but on a rare occasions the QAS knows your art and is able to actually read the case and so it can take 5 minutes. And of course on other occasions it can take longer, for instance in a case where you wrote an totally sweet looking office action to pass off the SPE's 103 grounds of rejection which he and the appeals guy thinks is golden and you think is more than a bit bizarre and simply wasn't "laying in the middle of the road" so to speak. And of course those are just a few of the things that can happen. <br /><br /><br /><br />Remember, I've only been here 5 years and have a grand total of like 8 or so pre-appeals/appeals with most of them having been filed more than 3 years ago. And also remember that I'm better than the vast majority of my peers at getting to what the actual issue is in the case in legal terminology due to having spent time reading decisions and bsing with attorneys on PO. Without the ability to really understand what the issue is (for instance being able to spot that the actual problem in the case is claim construction) and having put it down on the record then sht can go down very weird in an appeals conference.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-15074502894016075712012-03-14T17:19:09.554-04:002012-03-14T17:19:09.554-04:00Karen,
Don't waste your time responding to 6t...Karen,<br /><br />Don't waste your time responding to 6tard. He doesn't understand evidence, facts, or anything else.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-52395261053887849942012-03-14T17:17:06.735-04:002012-03-14T17:17:06.735-04:00"Would you agree that a definition, rather th..."Would you agree that a definition, rather than a list of examples, is the *best* evidence of meaning? "<br /><br />No. Again, you're not arguing for a definition. You're providing evidence of the ordinary and customary usage of the term. If you cite 2, 5, 10, umpteen prior art references that all use the term, and also include evidence and/or examples of structures/processes/etc. that are covered by the term, and the examiner is interpreting the applied reference in such a manner that there's no way one of ordinary skill in the art would find the examiner's interpretation consistent with what one of ordinary skill in the art would understand the term to mean, or include, that's all you have to do. You don't have to provide a definition.<br /><br />To use your widget example, suppose the examiner says, "The blodget of Jones is the claimed widget." You cite some references that disclose that a widget may be a thingamajig, a whatchamacallit, a doohickey, an everlastinggobstopper, or a supercalifragilisticexpialadocious. No reference uses the term widget in any way that would suffice as substantial evidence that one of ordinary skill in the art would regard the blodget of Jones as a widget. Do you then have to argue, "The definition of widget is..." I say no. You simply have to argue that the examiner's interpretation is not consistent with the interpretation of "widget" that one of ordinary skill in the art would arrive at. The interpretation from the examiner is not reasonable.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-84469838443704820212012-03-14T16:16:10.921-04:002012-03-14T16:16:10.921-04:00Gee, you make it sound like I'm not aware of t...Gee, you make it sound like I'm not aware of the use of evidence to show meaning. <br /><br />Yet my comment shows that I am definitely aware of this important tool -- the next few sentences discuss how the Applicant in Brunner used evidence to show meaning. <br /><br />My question was aimed at the previous commenter, who seemed to say that you don't need to offer a definition but can instead rely on plain meaning.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-40452370656007191622012-03-14T15:46:49.493-04:002012-03-14T15:46:49.493-04:00"Sure, Applicants can rely on ordinary meanin..."Sure, Applicants can rely on ordinary meaning. But what do you do, as in the "GPU case" (Ex parte Brunner),"<br /><br />There's this new thing called evidence. All the cool kids are doing it.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-32305750866976062852012-03-13T16:07:11.346-04:002012-03-13T16:07:11.346-04:00>Applicant is not required to provide
>expl...>Applicant is not required to provide <br />>explicit definition for any claim >terms. <br /><br />Agreed: not in the spec; and not during prosecution ... until the meaning of the claim term is at issue. <br /><br />>Applicant may use any term according <br />>to its ordinary and customary meaning<br /><br />Agreed. <br /><br />But how do we determine "ordinary and customary meaning"? <br /><br />>It doesn't have to "rise to the level <br />>of a definition." <br /><br />Sure, Applicants can rely on ordinary meaning. But what do you do, as in the "GPU case" (Ex parte Brunner), when that meaning is precisely what is at issue? <br /><br />Would you agree that a definition, rather than a list of examples, is the *best* evidence of meaning? <br /><br />And that something that is *nothing but* a list of examples is weak evidence of meaning? <br /><br />I see the journal article in Ex parte Brunner as somewhere in the middle of the spectrum, and for me, it was good enough evidence of meaning to a POSITA. Some hedging with words like "for example", but so much as to dilute its overall explanation of what a POSITA understands a GPU to be. <br /><br />And as I've said before, I come out the other way in Ex parte Watt (the "instant" case). The uses of the term "condition" in the Applicant's spec were purely examples and did not say to me "when a POSITA says 'condition' he means a) secure domain; b) secure user mode or c) type of monitoring functionKaren G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-88592762218574128802012-03-13T15:15:35.668-04:002012-03-13T15:15:35.668-04:00"Just didn't rise to the level of a defin..."Just didn't rise to the level of a definition, according to the Board."<br /><br />It doesn't have to "rise to the level of a definition." Applicant is not required to provide an explicit definition for any claim terms. Applicant may use any term according to its ordinary and customary meaning as would be understood by one of ordinary skill in the art.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-64710579651065432662012-03-13T14:07:44.884-04:002012-03-13T14:07:44.884-04:00>case you had a while ago about a GPU where
&g...>case you had a while ago about a GPU where <br />>Appellant gives many examples of a GPU but <br />>doesnt define what a GPU is<br /><br />Interesting observation. Certainly both cases are about the failure of the Applicant to provide something that the BPAI recognizes as a definition. <br /><br />I am sympathetic to the Applicant in the GPU case, because the Applicant did indeed present evidence of how a POSITA understands the term (ie, journal article about GPUs). Just didn't rise to the level of a definition, according to the Board. <br /><br />Not sympathetic in this case, where the Applicant did nothing more than point to a couple of places in the spec -- which clearly were not definitions of the term condition but rather examples of specific conditions -- followed by some vague hand-waving ("It is believed that condition is understood by a POSITA"). <br /><br />>per new appeal rules dictionary is no longer <br />>considered evidence<br /><br />Yep. I'm glad to see this new rule. <br /><br />It's a bummer to have to file an RCE at Final to get evidence in the record. Because usually it's only at Final that I have any idea of how the Examiner is interpreting the claims and the references. In those cases where it's clear from the first OA, I go ahead and submit evidence in my very first response if appropriate.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-6997426103307120152012-03-13T13:54:41.999-04:002012-03-13T13:54:41.999-04:00this reminds me of a case you had a while ago abou...this reminds me of a case you had a while ago about a GPU where Appellant gives many examples of a GPU but doesnt define what a GPU is and so couldnt prove that Examiner's interpretation was incorrect in light of the spec<br /><br />also i notice the Appllant talking about making dictionary evidence of record - per new appeal rules dictionary is no longer considered evidence so you dont have to go through formal channels to have it considered just point out the definitionAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-60277763004779336862012-03-08T17:21:43.765-05:002012-03-08T17:21:43.765-05:00"I do."
You are king of the dipsh!ts, n..."I do."<br /><br />You are king of the dipsh!ts, no doubt about that.<br /><br />As the Texans would say, all hat, no cattle.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-3831360911867415312012-03-08T17:14:33.384-05:002012-03-08T17:14:33.384-05:00I can hardly believe it takes more than 5 minutes ...I can hardly believe it takes more than 5 minutes for a SPEtard or QAStard to say, "Looks good to me, send it up!" or "Just re-open and send out a new, sh!ttier rejection." As that is the end result of all of these conferences, why would it take longer than that?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-80671624285903624982012-03-08T17:07:32.435-05:002012-03-08T17:07:32.435-05:00Who the f told you that ya tard? I have no troubl...Who the f told you that ya tard? I have no trouble "persuading" them to have a meeting. It is just a hassle and then it can be an even bigger hassle if it falls through. <br /><br />I'm not really sure why or where "5 minutes" came into the conversation, I suppose your tarded brain just farted that out. <br /><br />Such a tard. But keep "guessing", eventually you'll make like a broken clock.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-51225310364443919962012-03-08T15:50:58.144-05:002012-03-08T15:50:58.144-05:00Says the examinertard who can't even persuade ...Says the examinertard who can't even persuade his SPE or a QAS to give him five minutes for a conference.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-31409025112753447212012-03-08T15:38:03.864-05:002012-03-08T15:38:03.864-05:00" I guess it's easier to issue another sh..." I guess it's easier to issue another sh!tty rejection than get 5 minutes of SPE and QAS time. "<br /><br />JD is still "guessing" about this after years of it showing in his and other people's practice. In any event, I've got good news! Since the examiner's answers will be marginally easier to write you can expect a marginal increase in your cases going forward immediately to the board. YAY. Or ... not. I don't know, depends on your point of view.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-72319949526636448722012-03-08T15:34:47.330-05:002012-03-08T15:34:47.330-05:00"Here, the false premise is that all my appea..."Here, the false premise is that all my appeals go to the BPAI. The fallacy is that my appeals are not persuasive."<br /><br />My only "premise" at the outset is that you're afraid of the board fin' on ya. You gave us that initial premise. If all of the other nonsense you blather on about is also a good "premise" then all the premise combined indicates that you're simply a overly paranoid scardy cat. <br /><br />I appologize, I was unintentionally holding the mistaken premise that you weren't an overly paranoid scardy cat. But, that's the price I was willing to pay to try to help you out in a more civil manner. <br /><br />But, since we've worked that out, carry on.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-45339186873670442472012-03-08T15:29:16.101-05:002012-03-08T15:29:16.101-05:00"anytime you feel that you can be more persua..."anytime you feel that you can be more persuasive with your fellow examinertards than those of us actually practicing, you're welcome to try."<br /><br />I don't just try JDtard, I do.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-84450626445616740992012-03-08T10:29:00.671-05:002012-03-08T10:29:00.671-05:00You're wasting your time with 6tard. Despite ...You're wasting your time with 6tard. Despite the fact that 75% of the applications in which a pre-appeal or appeal brief is filed get re-opened, he still insists it's because the examiners are too lazy to conduct a conference. I guess it's easier to issue another sh!tty rejection than get 5 minutes of SPE and QAS time. Those people are so incredibly busy doing absolutely nothing that doing a text search and then cutting and pasting some irrelevant portions of the top 2 or 3 results and then providing a nonsense reason to combine is easier.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-11605870212931276162012-03-08T10:24:47.393-05:002012-03-08T10:24:47.393-05:00"Or you could simply learn to be persuasive b..."Or you could simply learn to be persuasive before the examiner."<br />I'm persuasive before the examiner far more times (as evidenced by the allowances and reopend prosecution) than my appeals ever make it to the BPAI.<br /><br />As is pretty evident you are employing Examiner-logic (i.e., take a false premise and build a fallacy from it). Here, the false premise is that all my appeals go to the BPAI. The fallacy is that my appeals are not persuasive.<br /><br />You guys need to get new material because the old material just doesn't work.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-48053185918001834782012-03-08T09:47:30.794-05:002012-03-08T09:47:30.794-05:00The offer remains open: anytime you feel that you...The offer remains open: anytime you feel that you can be more persuasive with your fellow examinertards than those of us actually practicing, you're welcome to try. Of course, first you'll have to persuade some law school to admit you and/or some law firm to hire you.<br /><br />Good luck with that.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-47654760217828538122012-03-07T15:59:28.208-05:002012-03-07T15:59:28.208-05:00Or you could simply learn to be persuasive before ...Or you could simply learn to be persuasive before the examiner. That can work in some instances (nearly all) and then you don't have to worry about the board fin on ya.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-53157508223077663442012-03-06T21:13:17.421-05:002012-03-06T21:13:17.421-05:00"The term "condition" is believed t..."The term "condition" is believed to be well known to those of ordinary skill in the art."<br /><br />I'm a long-time patent practitioner and have had my frustrations with examiners and the BPAI but even I would slap an appellant upside the head for stating "is believed to be" instead of demonstrating that the term "condition" WAS AND IS well known to those of ordinary skill in the art and explain why.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-57464839578498752862012-03-06T21:04:51.638-05:002012-03-06T21:04:51.638-05:00"Probably used to making the same arguments o..."Probably used to making the same arguments over and over without using precise language."<br /><br />One of the (many) things I don't like about the BPAI is that they'll let the Examiner get away with anything in terms of having a deficient analysis or mischaracterizing the law and/or the facts.<br />Didn't set forth a proper rational to support your legal conclusion of obviousness? Don't worry, the BPAI will come up with one for you.<br />Didn't set forth a claim construction for an important term being argued? Don't worry, the BPAI will come up with one of those as well.<br />Didn't present evidence to support your findings? Don't worry, the BPAI will make that up as well (or overlook that "minor" problem).<br />The reference doesn't teach the limitations? Don't worry, the BPAI will state that "the limitations weren't positively recited" (again, don't worry if you didn't make that argument in the Office Action, the BPAI will make it for you).<br />Got a functional data structure that you cannot find prior art to teach? Don't worry, that functional data structure now becomes non-functional descriptive matter and the BPAI will (erroneously) cite Lowry and some "printed matter" cases to ignore it (again, no need to make that argument in the Office Action, the BPAI has your back).<br />Didn't fight that claim construction provided by the Appellant? Don't worry, the BPAI will state that the arguments (i.e., the characterization of the claim language that doesn't use the exact language of the claim and nothing else) aren't commensurate with the claim language and proceed to ignore them.<br />Are your findings of fact so f'd up that there is no way they establish that the claimed limitations have been taught? Don't worry, the BPAI will craft new findings of fact (and won't even bother to label them as new grounds – you see, they assume that this is what you were thinking anyway – even if you never bothered to put it on paper).<br /><br />However, if the Applicant doesn't frame the argument just perfectly (despite it being pretty clear what was being argued), the BPAI will slap that argument down. There is no illusion of impartiality from the BPAI. They will look for any excuse to affirm (and will make some up along the way).<br /><br />For an Examiner to be reversed means that the Examiner's really f'd up so badly that even the BPAI couldn't save them.<br /><br />Half of what I write in an Appeal Brief is to make sure that the BPAI doesn't try to f' me later on. Of course, they find new ways of doing it, but that is part of playing the game.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-13644984304342496062012-03-06T16:49:52.140-05:002012-03-06T16:49:52.140-05:00You got me. Extremely poor choice of word by appl...You got me. Extremely poor choice of word by applicant's attorney. Looks like an old timer. Probably used to making the same arguments over and over without using precise language.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-11681386450330958782012-03-06T15:31:39.368-05:002012-03-06T15:31:39.368-05:00>Applicant wasn't arguing.. there was
>...>Applicant wasn't arguing.. there was <br />>a "special definition" when referring <br />>to their embodiments. <br /><br />Disagree. The Appeal Brief said: "the Examiner is obligated to apply the DEFINITION set out in Appellants' specification." <br /><br />Now, maybe all the Applicant really meant to say was "Examiner's definition not consistent with the spec." And in fact, the first part of the Appeal Brief argument said just that. But the Applicant went to far by referring to a definition in the spec.<br /><br />Personally, I feel strongly that the Board got this one right. That is, that the definition used by the Examiner was indeed consistent with the spec. The way I see it, the Applicant was trying to import limitations from the spec into the claims. <br /><br />Very different from a scenario where the Applicant's claims says "nail", the spec is all about nails as fasteners, and the Examiner uses a reference which uses the generic term "nail" but is clearly talking about fingernails and toenails.<br /><br />Now *that* is a classic case of an interpretation that is inconsistent with the spec.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.com