JSonnabend

[Examinerguy]

It's really not the examiner who makes the decision. Management has pushed the "99% of preambles are not limiting" idea onto the examiners. On the same note, if the body of your claim is descriptive enough, the examiner will be forced to interpret the preamble. For example:

A method for replacing a light bulb method comprising:

Turning a first light bulb clockwise to unscrew the first light bulb from a socket;
placing a second light bulb into the socket; and
screwing the second light bulb counterclockwise.

Maybe I'm being too simple, but you get my gist.

[ChrisWhewell]

Hey examinerguy, thanks and I fully appreciate your writing that because its true within my realm too.  Keep up the good work and regardless of any crap posted by the 1% out there, there's lots of us true Americans who appreciate and value highy your contribution and service to the nation.

all my best,

Chris

[DogDayPM]

Hey examinerguy, thanks and I fully appreciate your writing that because its true within my realm too.  Keep up the good work and regardless of any crap posted by the 1% out there, there's lots of us true Americans who appreciate and value highy your contribution and service to the nation.

all my best,

Chris

Yeah, well, yer still not gettin' my Bud Light.

[ChrisWhewell]

tastes great, and is less filling:
http://www.laphroaig.com/



flotsam & jetsam:
A guy I knew related to me once when he was in old Mexico, that he had horrible intestinal distress and that a local-yokel suggested he imbibe one shot of tequila upon waking in the a.m., and having nothing to lose, he tried it, and reported that it worked !!   When one of my co-worker attorney's phoned me on a matter from his visit in Mex. City, also reporting belly trouble, I suggested the tequila trick, and it worked for him also.  Funny thing is, one can hand out aspirin to people and help them, and suggest tequila shots and cure people's belly issues and never for any of that be referred to as a "doctor", but steal just one single loaf of bread, and a person is labeled a thief for life.

[DogDayPM]

tastes great, and is less filling:
http://www.laphroaig.com/

It's less filling because more than one or two and you can't get the peat smoke out of your mouth/stomach.  Have 3 and you'll offgas peat smoke for the next day or so.

Don't get me wrong - I thoroughly enjoy the one or two that I occasionally have. 

I just regret them later.

[ChrisWhewell]

If I I drink a half an ounce I feel lightened, the other half ounce puts me to sleep in about 15 minutes ! 

[JimIvey]

It's really not the examiner who makes the decision. Management has pushed the "99% of preambles are not limiting" idea onto the examiners.

This is something I've been railing against here for a long time.  I understand that, in many situations, the hands of the examiners are tied and management forces them to make rejections that are contrary to prevailing US patent law. 

The law on this issue (limiting effects of preamble language and prosecution history estoppel) is quite clear; if the applicant says that language in the preamble is limiting, it is.  Period.

I'm still hopeful that the recent change in administration will result in a PTO that follows the law with greater fidelity.

Regards.

[ChrisWhewell]

Yes it is clear.  I had one case where the ex raised the issue that language in the preamb was not limiting, I argued that it was, appropriately, and ended the argument with a statement that:  "since Applicant has now indicated on the record in this case, it is clear to any member of the Public reading the specification and claims that the scope of the claims is so limited". 

It worked, I suspect because the test is whether a member of the Public has Notice as to the metes and bounds of Applicant's claimed invention.