1
Patent Filing and Prosecution / Re: I think some examiners are lost their minds
« on: 05-16-13 at 01:31 pm »
Yeah, that's enough of that. Banned.
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2
Patent Filing and Prosecution / Re: I think some examiners are lost their minds
« on: 05-14-13 at 10:19 am ».... I am going to hunt you down. ... Am I going to jail for this?
Maybe. Don't threaten government officials.
Also, it's important to remember that they're rejecting your claims, not your invention. And, they always do that at least once. You need to convince them that your claims meet the legal requirements. If you don't know how to do that, hire someone.
In your case, an in-person demonstration might help. Be sure to invite the supervisor and anyone else who can help get your case allowed. You might have "public policy" issues.
Regards.
3
Patent Filing and Prosecution / Re: What software do you use for design patent drawings?
« on: 05-14-13 at 09:28 am »
I use OpenOffice.org, now LibreOffice.
Regards.
Regards.
4
Patent Filing and Prosecution / Re: May be of interest to software art folk: CLS Bank opin, aka CAFC Sausage Time
« on: 05-10-13 at 01:59 pm »
Sigh.... I still don't see how a computer can be no more than an abstract idea.
I found footnote 1 in the concurring opinion so confusing I had to read it several times:
Why should claims from three different statutory categories stand or fall together for being properly statutory? I haven't read all 150ish pages yet, but I bet that's not what eight of ten judges said. I believe 5 said all claims fail Section 101 and 3 said all claims pass Section 101. At least the five that said that all claims fail provided separate analysis for each type of claim, thus implicitly asserting the each type of claim should be analyzed under S 101 separately. So, I'd say that footnote is false.
Life was so much easier in the 1990s when obviousness of computer implemented inventions was decided under 103 and not 101. At least 103 requires proof.
Regards.
I found footnote 1 in the concurring opinion so confusing I had to read it several times:
Quote
1 While Chief Judge Rader is correct to note that no single opinion issued today commands a majority, seven of the ten members, a majority, of this en banc court have agreed that the method and computer-readable medium claims before us fail to recite patent-eligible subject matter. In addition, eight judges, a majority, have concluded that the particular method, medium, and system claims at issue in this case should rise or fall together in the § 101 analysis.
Why should claims from three different statutory categories stand or fall together for being properly statutory? I haven't read all 150ish pages yet, but I bet that's not what eight of ten judges said. I believe 5 said all claims fail Section 101 and 3 said all claims pass Section 101. At least the five that said that all claims fail provided separate analysis for each type of claim, thus implicitly asserting the each type of claim should be analyzed under S 101 separately. So, I'd say that footnote is false.
Life was so much easier in the 1990s when obviousness of computer implemented inventions was decided under 103 and not 101. At least 103 requires proof.
Regards.
5
Patent Filing and Prosecution / Re: Request for corrected action under MPEP 710.06
« on: 05-08-13 at 01:38 pm »At the same time, the new Office Action should have addressed changes to the claims. If the claims weren't changed, the new Office Action might have been adequate without addressing specific arguments.
"Adequate" in what sense? Do you mean the Examiner met his legal burden? Or that the OP probably has enough info to move forward another round? That is, adequate, even if it would be *helpful* for the Examiner to address the last round of arguments.
To me "adequate" equates to the examiner feeling that he/she has already made a rejection that covers the amended claim and doesn't see the need to elaborate on it any more.
Perhaps I should have emphasized "might." I've never had this situation so I honestly don't know the answer. But it seems that, if the examiner thinks the first rejection of the claims was sufficient, she can make the same rejection to the same claims a second time. Technically, if the applicant hasn't been persuasive, the burden hasn't been shifted back to the examiner. Does the examiner even have to say that the arguments were unpersuasive to shift the burden back to the applicant? Of course, it's the examiner herself who determines if and when any burdens have shifted until you appeal.
I know others here are more familiar with the rules and particularly rules within the PTO, and I hoped someone knowing more would chime it.
Of course, it would be helpful to respond to new arguments. However, not all examiners are committed to being helpful.
Regards.
6
Patent Filing and Prosecution / Re: Request for corrected action under MPEP 710.06
« on: 05-08-13 at 10:42 am »
After final, did you many any amendments? I assume so since you filed an RCE. If you didn't, I find appeal and the pre-appeal brief conference to be a better strategy than RCE. Until you appeal, examiners only have to convince themselves that they're right.
At the same time, the new Office Action should have addressed changes to the claims. If the claims weren't changed, the new Office Action might have been adequate without addressing specific arguments.
Regards.
At the same time, the new Office Action should have addressed changes to the claims. If the claims weren't changed, the new Office Action might have been adequate without addressing specific arguments.
Regards.
7
Patent Filing and Prosecution / Re: IDS certifications
« on: 05-08-13 at 10:33 am »The three months certification thing is when there has already been an action on the merits and you don't want to pay the IDS fee for references known for less than three months.
Unless the AIA changed this, it's also for when you want to cite something after a final Office Action or Notice of Allowability. That's also not applicable for a new application.
Regards.
8
Other / Re: Intellectual Property Rights with your Employer
« on: 05-08-13 at 10:30 am »Do I have the right to see everything in my HR file?
While this is a question of state law (patents are federal law), I have a hard time imagining that you'd be obligated to follow a contract you're not allowed to see. I think Karen's suggestion to ask for copies is a good one.
If you have an idea related to your work and your employer thinks it is not worthwhile, they will probably agree to quitclaim any ownership rights they may have in it
That's a good point. I was trying to figure out why the contest would stipulate that the company owns all inventions submitted. If the employment contract included that clause, the contest rule would be superfluous. It might be related to the fact that non-technical employees are invited to participate. But, perhaps the most likely reason is that an overly enthusiastic lawyer drew up the contest rules. You might get exceptions to the rules if you can talk to management directly. A more fair clause would have given the company a year option to take up technology before releasing it.
It's possible that the company might want to take on more than one invention. They're only obligating to take on the first prize winner, but maybe the runner up looks really good too.
And, when asked directly, the people in charge might be happy to release technologies in which they're not interested.
Regards.
9
Other / Re: Intellectual Property Rights with your Employer
« on: 05-07-13 at 01:17 pm »Is this a lawful action?
Of course it is. They're offering you a deal. If you don't like the deal, don't take it.
You may want to look at your employment contract. Many say that anything you invent while employed belongs to the employer. Your idea might already be owned by them. I don't like those contracts, particularly if the invention has nothing to do with the employer's business and wasn't developed using the employer's resources. But they're perfectly legal in many states. You're always free to turn the job down if you don't like the contract.
Regards.
10
Is it Patentable? / Re: Is Yelp business model protectable ?
« on: 05-07-13 at 01:11 pm »
Well, you said Yelp is similar and you want to stop similar businesses. You won't be able to stop Yelp -- it's been around too long.
If your system is new and not merely an obvious variation of something that's already known or in use, you can protect the new and non-obvious aspects of your system.
Regards.
If your system is new and not merely an obvious variation of something that's already known or in use, you can protect the new and non-obvious aspects of your system.
Regards.
11
Patent Drafting/Interpretation / Re: Searches: freedom-to-operate vs clearance
« on: 05-07-13 at 10:52 am »
I also use the terms synonymously. I recently ordered a freedom-to-operate search for a client and was asked if I wanted expired patents, foreign patents, and published patent applications. Those have nothing to do with freedom-to-operate but are still useful. Crud's right that such extra stuff can be good for validity analysis, but I have yet to see an emerging company have an adequate budget to delve deeply into validity.
I agree. However, I also understand why clients ask for such things so late. Typically, the founders have already convinced themselves that the venture is worth the risk. It's typically a new investor that insists on some FTO analysis. My guess is that the launch is happening while trying to raise another round of investment. Or perhaps wholesale distributors want some sort of assurance.
Regards.
Also, you may want to have a conversation with your client about timing on future projects... ...nearly all costs sunk and just pre-launch is a bad time to start thinking about FTO.
I agree. However, I also understand why clients ask for such things so late. Typically, the founders have already convinced themselves that the venture is worth the risk. It's typically a new investor that insists on some FTO analysis. My guess is that the launch is happening while trying to raise another round of investment. Or perhaps wholesale distributors want some sort of assurance.
Regards.
12
Trademark Forum / Re: Reviving a dead trademark
« on: 05-06-13 at 10:32 am »
Trademarks are perfectly recyclable. When a mark is no longer associated with goods and services, it can be picked up and used for other goods and services. So, you just treat the abandoned mark like any other unused mark.
As for surnames, the mark can't be primarily a surname. I think it helps that the mark used to be registered. It therefor once got past the surname problem and then became recognized as a trademark more than as a surname. There are some notable examples of surnames that have become primarily trademarks and secondarily surnames: Ford, Hilton, Heinz, McDonald's (I think), Newman's Own (not just a surname), Zillow, Sheppard's, Webster's, Roget's, O'Reilly (books), etc.
Regards.
As for surnames, the mark can't be primarily a surname. I think it helps that the mark used to be registered. It therefor once got past the surname problem and then became recognized as a trademark more than as a surname. There are some notable examples of surnames that have become primarily trademarks and secondarily surnames: Ford, Hilton, Heinz, McDonald's (I think), Newman's Own (not just a surname), Zillow, Sheppard's, Webster's, Roget's, O'Reilly (books), etc.
Regards.
13
Patent Filing and Prosecution / Re: Petition to Revive Abandoned Application...
« on: 05-06-13 at 10:22 am »Oh, I've seen it, too. And I'm continually baffled by this attitude from people who are supposed to be the service providers to the innovative.
When one's practice is being out-innovated by a government agency...well...
I agree, but I have more sympathy for the old timers since I probably am one. Back in the day, there were many icons to touch to make sure the filing was adequate and filings were steeped in ritual. Once the PTO said you don't have to do all that anymore, some practitioners just didn't trust it. And, to be fair to the old timers, some don't practice in computer-related technologies. However, I think that, by this time, any business of any kind can't afford to not use the advantages computers give.
Regards.
14
Patent Filing and Prosecution / Re: arguing against a rejection on product claim based on prior art method claim
« on: 05-06-13 at 10:13 am »What you seem to be going after is that the prior art, when it says it produced this widget, is incorrect. So what the prior art has described must be an inoperable widget, or the prior art didn't actually have possession of the widget.
It sounded to me more like the argument would be that the prior art is not enabling and therefor not anticipatory. In theory, that argument, if true, should prevail. However, the PTO applies 112p1 very differently to prior art than to pending claims. In fact, I suspect the PTO argument will be that, since you figured it out, the prior art disclosed enough to enable the perpetual motion machine in that someone eventually was able to supply the missing parts of the process. Of course, that would make all prior art enabling, and it seems it is from what I see from the PTO.
Regards.
15
Software and Business Process Patents / Re: "logic" == "means for"?
« on: 05-02-13 at 12:32 pm »One word + "for". In fact, the Guidelines don't mention a single example that invokes 112p6 without following that formula.
My bad. Here are a few others that don't follow that formula:
- "colorant selection mechanism" == "colorant selection means" or "means for colorant selection"
- "lever moving element" == "lever moving means" or "means for moving a lever"
- "movable link member" == "movable link means"
It's still mere substitution of "means" with another single, nondescript word: a far cry from what I've done.
I still believe that "executes at least in part in the processor from the computer readable medium" structurally ties the logic to both the CRM and the processor. We'll see what the examiner thinks.
Regards.
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