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[patentatt]

I helped work on this article.  Thoughts?

http://ipwatchdog.com/2011/11/23/in-re-lovin/id=20568/

[bleedingpen]

http://s1.favim.com/orig/20/driver-fun-hawaii-mclovin-movie-Favim.com-203552.jpg

[JimIvey]

I think the link in the article to In re Lovin is broken.  I found the case here:

http://scholar.google.com/scholar_case?case=12567103870992723326

Regards.

[patentatt]

If you like the article, please post a comment at IPWatchdog!

[JustAnotherExaminer]

I disagree with most the points, though I haven't looked at McLovin.

The threshold for a prima facie case is fairly low.  Theoretically the findings of fact are the same for any factfinder and regardless of when they're written down on the record.  So an applicant is just as apt at performing the same factfinding as the examiner, if they just read the references.

As long as my conclusion and legal requirements for supporting the conclusion are present (ie, It'd be obvious + motivation), the applicant has ample opportunity to attack this rejection by simply looking at the references and performing factfinding.

[patentatt]

I disagree with most the points, though I haven't looked at McLovin.

The threshold for a prima facie case is fairly low.  Theoretically the findings of fact are the same for any factfinder and regardless of when they're written down on the record.  So an applicant is just as apt at performing the same factfinding as the examiner, if they just read the references.

As long as my conclusion and legal requirements for supporting the conclusion are present (ie, It'd be obvious + motivation), the applicant has ample opportunity to attack this rejection by simply looking at the references and performing factfinding.

Although what you say makes some practical sense on the surface, it is flatly contradicted by the law flowing from Graham v. John Deere.

See MPEP 2141:

Office personnel fulfill the critical role of factfinder when resolving the Graham inquiries. It must be remembered that while the ultimate determination of obviousness is a legal conclusion, the underlying Graham inquiries are factual. When making an obviousness rejection, Office personnel must therefore ensure that the written record includes findings of fact concerning the state of the art and the teachings of the references applied. In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done. Factual findings made by Office personnel are the necessary underpinnings to establish obviousness.

In other words: even though applicant might be able to find facts for themselves, it's not our job.  The Supreme Court and the PTO give that job to you, examiner.  You should do your job!

[JustAnotherExaminer]

I find the references applied teach the claimed invention.

The issue is that how much fact finding do I need to do? The Japanese get to do the above.

[patentatt]

I find the references applied teach the claimed invention.

I don't want to be a smart ass, but you should read MPEP 2141-2141.03, which go over each of the Graham factors in detail.

Notably, the second Graham factor is the "differences between the claimed invention and the teachings of the references."  This is why Examiners always say "Ref A doesn't teach X, but Ref Y teaches X."  Have you ever done this before?  Have you ever seen examiners do this?  They do that because of Graham, because of MPEP 2141.02:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141_02.htm

Your simplistic and uninformative statement above does not do that.  It does not satisfy the bare minimum of Graham and MPEP 2141.02.

The issue is that how much fact finding do I need to do? The Japanese get to do the above.

Maybe you should go examine patent applications in the JPO!  I kid, I kid...

[JimIvey]

The thing that bothers me most about the decision is that the application did say that none of the cited references teach the specific limitation of the claim in question.  The examiner never said that it did.

The court found that merely describing what the claim recites is insufficient to argue the claim independently of the parent claim.  The applicant did identify a teaching that is not in the references and that the examiner never alleged was in the references.  What more could the applicant have done?  Does the applicant really have to list each and every sentence of each and every reference and note, "See?  No teaching of X."?

Here's my comment on the article at IPwatchdog.com:

I thought the PTO is very concerned about the application backlog. How is playing “hide the ball” through nearly the entire prosecution process going to help with that?

The fact pattern is very familiar to me; no meaningful examination until I file the Notice of Appeal. If the first Office Action was complete and good, I’d cancel the properly rejected claims and get allowance of the remaining, narrower claims by the second Office Action if any remain. Done. That’s how to reduce the backlog.

Regards.

[patentatt]

The thing that bothers me most about the decision is that the application did say that none of the cited references teach the specific limitation of the claim in question.  The examiner never said that it did.

The court found that merely describing what the claim recites is insufficient to argue the claim independently of the parent claim.  The applicant did identify a teaching that is not in the references and that the examiner never alleged was in the references.  What more could the applicant have done?  Does the applicant really have to list each and every sentence of each and every reference and note, "See?  No teaching of X."?

Here's my comment on the article at IPwatchdog.com:

I thought the PTO is very concerned about the application backlog. How is playing “hide the ball” through nearly the entire prosecution process going to help with that?

The fact pattern is very familiar to me; no meaningful examination until I file the Notice of Appeal. If the first Office Action was complete and good, I’d cancel the properly rejected claims and get allowance of the remaining, narrower claims by the second Office Action if any remain. Done. That’s how to reduce the backlog.

Regards.

Thanks, Jim!  I agree with you 100%.