JSonnabend

[emanresu]

Do you work at the office? If so, you should understand. I'm not saying don't have phone interviews...but 90% of the interviews I sit in on with a person that has English as a 2nd, 3rd, etc. language end up getting nowhere. Most of the time the attorney goes, "could you please repeat that?" Then the examiner will repeat and the attorney will think it's rude to ask the examiner to repeat again so he just goes onto the next topic. Heck, I don't understand them half of the time and I speak with them on a weekly basis.

I've also noticed something very odd...in general, people who speak poor English also have a method of getting around answering hard questions...they make less sense. As soon as a hard question arises it is like their English becomes 2x worse. They just start spitting out random keywords relating to the Art and hope the attorney gets frazzled.   

This tactic is also used by Examiners who speak English as a first language.  They start blurting out paragraph and line numbers too quickly for anyone to follow.  They do this for several minutes, and occassionally the attorney will interject with a question or a reference to the exact claim language, to which the Examiner will respond with more rapid-fire paragraph and figure numbers.  After about 3 to 5 minutes of this the Examiner then says "Ok, I can see we aren't going to come to an agreement on this issue, I suggest we move on or end the interview."

[DogDayPM]

This tactic is also used by Examiners who speak English as a first language.  They start blurting out paragraph and line numbers too quickly for anyone to follow.  They do this for several minutes, and occassionally the attorney will interject with a question or a reference to the exact claim language, to which the Examiner will respond with more rapid-fire paragraph and figure numbers.  After about 3 to 5 minutes of this the Examiner then says "Ok, I can see we aren't going to come to an agreement on this issue, I suggest we move on or end the interview."

Ah, longing for the good old days when the PE would maunder on for 20 minutes about how her aging parents were really draining her resources and then light up a cigarette, lean forward and blow smoke in your face if you tried to get the interview on track.

[ChrisWhewell]

Its nice receiving excellently-drafted papers from the Office.  Sometimes when I do, I feel compelled to tell others.

[ChrisWhewell]

Case in point, the OA in 10/993469 that eloquently set forth a 103 rejection.   It explained Deere, then went on section by section with supporting statements.  Its author should have received a blue ribbon for that.  This is in contrast to other section 103 rejections I've seen, which contain mere conclusory statements after incomplete attempts at ascertaining the differences between the proposed invention and the prior art.  A goal should be for all section 103 rejections to have a like analysis to that levied in the case above.  Lately, I've seen some nice restriction requirements that contain good form language, describing rejoinder, etc., but haven't seen that form in all restriction requirements.  A goal should be for all restriction requirements to contain that same informative language.  I'd also like to see a prohibition in office actions of the use of language - "see the entire specification" as grounds for support for a 102 as it doesn't enable an applicant to advance prosecution when the passages relied upon aren't identified. 

[emanresu]

Case in point, the OA in 10/993469 that eloquently set forth a 103 rejection.   It explained Deere, then went on section by section with supporting statements.  Its author should have received a blue ribbon for that.  This is in contrast to other section 103 rejections I've seen, which contain mere conclusory statements after incomplete attempts at ascertaining the differences between the proposed invention and the prior art.  A goal should be for all section 103 rejections to have a like analysis to that levied in the case above.  Lately, I've seen some nice restriction requirements that contain good form language, describing rejoinder, etc., but haven't seen that form in all restriction requirements.  A goal should be for all restriction requirements to contain that same informative language.  I'd also like to see a prohibition in office actions of the use of language - "see the entire specification" as grounds for support for a 102 as it doesn't enable an applicant to advance prosecution when the passages relied upon aren't identified. 

So you are an inventor as well as a patent attorney?

[ChrisWhewell]

No, I'm not yet a member of the bar association in any US state, my practice is restricted solely to representing inventors before the USPTO.  I do invent things from time to time.  In fact, writing US 5156721 before I became registered was a good exercise.  Lots of folks ask how they can get experience in the patent field and my answer is - to invent something, write it up and file it.  Before that, its a good idea to read as many patents as you can that are written by experienced practitioners, and always is good to attend IP-related CLE at least annually.  I wrote most of 5017271 and Mr. Clark's tacit complement from using my text verbatim is what got me started.  Thanks Ken.  On the isethionyl nitrates, that was a danged good idea - I could have refuted the rejection but owing to a lack of success at the time in locating a funding partner with $ 50MM to obtain FDA approval, decided to let it go, being content with at least having put it out into the public domain.  Still the examiner did a nice job in writing that in the style they did.  At least I liked it and its not often that I like rejections !!

[xmnr]

Chris,

Have you heard of the Japanese art of Dorodango?  Earth and water are molded together in the hands and polished to create shiny spheres.  There's an old saying that you "can't polish a turd"; however, the hosts of the popular show Mythbusters proved this to be false by creating dorodango spheres with ostrich and lion feces.

10/993469 is an analagous polished turd.  Sure, the examiner articulates the scope and content of the prior art with pretty pictures and neatly organized sections, but the examiner's motivation states that the combination of references yields similar 'activity' to the claimed invention.  How is that not hindsight bias?  Where's the Teaching/Suggestion/Motivation explicit/implicit in the references?  Where's the KSR v. Teleflex rational for combining?  You want to give the examiner a blue ribbon for polishing a turd?

[ChrisWhewell]

KSR changed nothing, Deere reigns and TSM is merely not the sole test, the lower court was commanded to be consistent with its own policy.   Its analogous to how an alleged machine or transformation test will soon be declared to not be the sole test relating to sec. 101.  My expression of the idea that I liked the rejection is a reflection of my personal taste.  If you don't like what that examiner wrote, don't cut me down for expressing that I like it, instead use your time to write the examiner - his name is at the end.   Be sure to mention that I thought he did a good job.

[ChrisWhewell]

Chris,

Have you heard of the Japanese art of Dorodango?  Earth and water are molded together in the hands and polished to create shiny spheres.  There's an old saying that you "can't polish a turd"; however, the hosts of the popular show Mythbusters proved this to be false by creating dorodango spheres with ostrich and lion feces.

10/993469 is an analagous polished turd.  Sure, the examiner articulates the scope and content of the prior art with pretty pictures and neatly organized sections, but the examiner's motivation states that the combination of references yields similar 'activity' to the claimed invention.  How is that not hindsight bias?  Where's the Teaching/Suggestion/Motivation explicit/implicit in the references?  Where's the KSR v. Teleflex rational for combining?  You want to give the examiner a blue ribbon for polishing a turd?

but you're right, the rejection could have been overcome.   I just like the form.   The substance is another issue, so I'm not disagreeing with you.   I'm guilty of sometimes not communicating all of my thoughts and I don't intend to insult or provoke any person, although I like to think I provoke thought.      

best regards,

Chris

[DogDayPM]

KSR changed nothing

Obvious to try?

And yes while G.v.Deere was/is/will be the law of the land, I'll say KSR certainly changed the way the examining corps is treating 103s.  Where in at least a majority (50.002%) of 103s before KSR I'd get at least a genuflection toward provision of a motivation to combine, now I rarely get even the reasoned statement or rationale supposedly required by KSR. 

[DogDayPM]

 I'm guilty of sometimes not communicating all of my thoughts and I

Please don't feel guilty about that.  Some might even say you should be commended for such forebearance!

           

[ChrisWhewell]

Obvious to try?

Yes, that was about the only thing that first appeared "new" to me in KSR, but upon deep reflection at the top of a batholith (http://en.wikipedia.org/wiki/Enchanted_Rock), I concluded that the "to try" part is a superfluous redunancy, and the only think the Supremes really did was bring the lower court back in line to be consistent with its earlier established track record positions, since KSR was a flagrant deviation therefrom.  Maybe I'm wrong.

I concluded that because in the old sense of the word "obvious", obviousness isn't restricted to mental activity but also includes that action of actually trying what is obvious from a TSM standpoint.  If a combination is truly obvious within the context of patent law, then isn't it also necessarily obvious to try ?   Example, I get a flash of genius to combine talking greeting card technology with a flip-top box of cigarettes, so when you open the box a little voice of one's mother screams "NO !".    Is it obvious to combine the voicebox/activation lever associated with a greeting card to a box of cigarettes ?    Is it obvious for one of ord skill in the art to try to combine the two ?    I picked a simple one here, hoping its obvious.  The question is, is there a significant enough difference between obvious and obvious to try to give any useful new guidance ?  If something that is obvious is not obvious to try, then what is it obvious to do ?   Obvious to think about ?  Obvious to laugh at ? 

KSR = http://www.youtube.com/watch?v=E6aqCT49nMg&feature=related

[xephay]

I definitely agree with appealing over a phone call if you know the examiner = english as anything but a first language.

What an absurd observation!  (I'm not familiar with the use of the equal sign in this context, so I assume with the BRI that it means there're some issues when conducting phone calls with examiners not having English as their first language.)  My son and his cousins all do not have English as their first language, and yet they have absolutely no problem communicating in English over the phone or in person.  (As a matter of fact, most people would probably understand them much better than someone whose first language is English and is speaking with, say, a "southern" accent.)  Actually their first language sucks big time, despite some having already finished college with advanced degrees such as JD or PharmD, and the rest on track to finish college and beyond.

I know several people in the Computer/EE AUs having English as their first language, and their English is not unlike that of my nieces and nephews.

Btw I want to apologize in advance for any mistakes in my writing, as English is not my first language.   

PS Nice job, Chris!  You have a record of hijacking a conversation after 3 postings.   

[ChrisWhewell]

   Sorry about that, I'll try to refrain from threadjackings.   

But I do think KSR is at least remotely related to working for the USPTO, and I haven't seen anything really change in 103's, only hear ideas that it has changed so very much.

I agree with you about language used not being relevant per se.

Have a good afternoon   

[Jim_W]

My son and his cousins all do not have English as their first language, and yet they have absolutely no problem communicating in English over the phone or in person. 

This is what foreigners actually believe. No insult intended to your family, but there is no shortage of overconfident "english speakers" who can't speak the language to save their lives.

Speaking from my relatively limited experience at the PTO, I'd say that they do have a pretty large body of fluent English speakers in the examiner corps, many of whom are first or 2nd generation immigrants. That being said, they have a surprisingly large body of people that just plain do not speak English. We're not talking about "your accent is difficult to understand over the phone" so much as "it is impossible to have even a semi-confusing conversation with you because you don't know enough basic vocabulary to complete an ordinary sentence without choking"

I ended up drawing pictures and using keywords to explain what i was talking about but mostly I did my best to avoid those people in favor of intermediaries. God forbid you are stuck with them as an examiner for your application.