Quote from: AbstractIdeal on 11-10-23 at 09:23 PM
I agree that the reference should not be prior art based on the facts you laid out. Does the filing receipt show the priority claim? Does PAIR/Patent Center show the priority claim?

The original post left out three pieces of salient information:  1) whether the foreign priority was in English, 2a) whether the reference is an U.S. or WIPO publication (only types of references applicable under 102(a)(2)), and 2b) assuming the reference is an U.S. or WIPO publication, whether the filing date of the reference was before that of the PCT filing date of the application under examination.

The overwhelming likelihood is that the foreign priority application wasn't filed in English.  Assuming that were the case, and assuming the prior art were a reference applicable under 102(a)(2) and filed prior to the PCT filing date of the application, the cited reference would be applicable as prior art until and unless the foreign priority is perfected. 

And just to be fully clear, the issue is not that the priority document is foreign; rather the issue is that it's not in English.  A lot of foreign priority applications from various Scandinavian countries are filed in English; in those situations, they are "perfected" from the get-go. 

Quote from: EDCGadgetGeek on 10-26-23 at 12:37 AM
I am working on an opinion for a client and I am reviewing the patent at issue, which is a composition of matter for an alloy metal, and while the transitional phrase is "comprising" the claim as a whole appears to be closed-ended based on this portion of the claim "...a remainder comprising element 4".

Any thoughts on how to interpret the claim as open-ended or closed-ended?  Anyone familiar with a case that reviews this issue (bonus points if its related to an alloy or composition of matter)?

The relevant portion of the claim recites as follows:

"...An alloy, comprising, in mass % of the alloy: a % range of element 1; a % range of element 2; a % range of element 3; and a remainder comprising element 4 and, optionally, unavoidable impurities...."

How are you interpreting "a remainder comprising" (emphasis added), and what does the spec say about it?

Less statement from the spec saying this phrase in question should be treated as closed ended, I would posit that "a remainder comprising element 4" is different from "balance being element 4".  Latter is pretty much close-ended in fact.  There is one and only one "balance" when it comes to a composition (namely what has not yet been listed), and whatever that balance may be is then expressly stated to be something (as opposed to include something).  As such, I'd think your hypothetical is open, in view of the "a remainder comprising" phrasing.

While the phrasing was not at issue, the "balance" phrasing was used in a decision related to alloy compositions (Ti Metal v Banner).

A more interesting hypothetical would be "a remainder being".  Should this mean one or more remainders, each being?  Or should this mean one or more remainders, at least one of which being?

Quote from: SteveO on 09-23-22 at 11:06 AM
For a reply to Office Action, it is my intent to make the following assertion:

"The Applicant recognizes that as a general matter of patent law, an example of a species of invention may sometimes render a genus obvious. However, this is not universally and inevitably the case. Where an invention is directed to a broad genus, and where making the genus operational entails inventive steps not required for any one particular species or even for all species in combination, the invention encompassing the genus is not obvious. The present system and method provides enabling disclosure for the genus for multiple inventive steps over the prior art, all of which represent species."

Can anyone recommend MPEP citations and/or caselaw to support this? Because this matter is also filed internationally, citations from EPO rules and/or caselaw would also be helpful. Thanks in advance.

A species by definition has to entail each and every element of a genus.  Full stop. 

That said, as shown in your hypothetical, what is a genus and what is a species gets complicated depending on the context.  Purely from an optical perspective, one specific wavelength does constitute one member of a whole (the whole being a certain spectrum).  After all, that's what a diffraction prism does.  But from a perspective of processing or recreating light, there might not be a genus-species relationship present at all when it comes to a monochrome vis-a-vis spectrum.

In your hypothetical, you have separate and distinct monochromes, and the end goal is an entire spectrum, which requires judicious mixing of the monochromes.  It could very well be argued that a spectrum in this case is at least distinct from monochromes, if not a case of spectrum being a subset of monochromes (for spectrum represents the specific situation when numerous monochromes have to be used simultaneously and in respective different proportions).

Much better to point out why a scenario doesn't constitute an alleged genus-species relationship (or that seemingly similar elements are quite different depending on context), than to argue the point it's not always the case that a species has to require all elements found in a genus.

Quote from: NoMotivation on 08-10-22 at 12:15 AM
I think at bottom the point is that issuing an advisory action as the vehicle for non-allowance of the claims is improper.  It needs to be issued as a non-final rejection.

This is the correct take on the procedural issue

The advisory action should be used as a means of notifying Applicant that a new rejection is forthcoming, in particular as there could be some time between the advisory and the new non-final.  I think examiners are given a bit more than 84 days to issue the new non-final.

It's also possible that a new pertinent reference was located during the updated search. 

This is where a call to the SPE would be helpful, to get an idea of exactly what's going on.

Quote from: JPE on 07-23-22 at 07:18 PM


As I understand it, if I file the response less than one month after the OA, I would have a month's time after an advisory action, no matter how long it takes to be issued, to file ... something ... an RCE or further response? without late fees or abandonment.

That's a mis-understanding of the practices.  The provisions are buried in MPEP 710.02(e), relevant portions of which quoted below; see also MPEP 706.07(f).

The gist of the quote from MPEP 710.02(e) also appears at the end of any final office action, reminding applicant what is considered timely.

Quote

I. FINAL REJECTION — TIME FOR REPLY

If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection.

    A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.

For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee may be calculated from the mailing date of the advisory action. In no event will the statutory period for reply expire later than 6 months from the mailing date of the final Office action.

Quote from: lazyexaminer on 04-18-22 at 01:01 AM
Sounds like that thread is directly on point then. Definitely ask the examiner as the first step, but it sounds like the Office policy may be that having the ability to order the file is good enough (whether that would survive CAFC scrutiny is an open question). And also if the examiner did not even attempt to show how the provisional supported the material being used then that could be something you could use to attack the rejection. Hopefully the examiner will simply provide it if asked since that should be easy to do. Sometimes provisionals are basically the same as the application, sometimes they are two pages hand written in crayon, so it's useful to know.

One additional thought, you said there was a PCT priority claim, does global dossier or the WIPO site have anything? I have no idea if the PCT requires an applicant to file copies of priority documents or what is made public, but they might...

Pretty certain that under the fact pattern presented (U.S. prov. --> PCT), any priority document is available on the WIPO website (patent scope).  Easiest way to access this would be to look up the WIPO publication on google patent and hit the link for patent scope.

Still, should never get to this point in the first place...

Quote from: ThomasPaine on 11-15-21 at 08:54 PM
Elect claim 2.  As the search and examination of claim 2 requires the search and examination of claim 1, there is no serious burden and the restriction requirement is improper.  You should be able to determine from the prior art that is cited/applied whether claim 1 is allowable on its own.

"Also not clear how this is a proper restriction but we seem to be past that point."

Always elect with traverse and provide reasons why the requirement is improper, even if you only argue there is no serious burden. 

It's possible that the requirement is based on combination-subcombination, but as the combination (claim 2) requires the specifics of the subcombination (claim 1), the requirement is improper.

That would assume 1) the application is not a national stage under 371 and 2) the subcombination doesn't link two or more combinations (which appears to be a valid assumption under the scenario presented).

After all, this is one reason why one would file a CON of a PCT as opposed to filing as entry into national stage under 371 (when the latter confers advantages such as effective filing date of the PCT application when filed in a foreign language, while the former doesn't).  Assuming that the subcombination isn't a linking claim between two combinations, restriction between a subcombination and combination that requires all elements of the subcombination is prohibited under CON but may be proper under 371.  Also, even were there two combinations linked by a subcombination, in a CON, the subcombination and one of the combinations would have to be examined, whereas in a 371, both combinations could be properly restricted out.

__________________________________________________________________________________________________
As for the original question, leave in the reference to claim 1.  This is not too much different from having a subset of claims (say 1-10) directed to process of making a gadget and having another subset (say 11-20) directed to the gadget made using a process from claims 1-10.  You receive a restriction requirement, elect the article claims (directed to the gadget), and withdraw the process claims; the metes and bounds of the the article claims are not indefinite because the process claims are withdrawn.  In the scenario described above, just don't cancel claim 1 without having rewritten claim 2; that would get a 112(b) rejection.

Also, yes to the above re: rewriting claim 2 into independent form.

Quote from: smgsmc on 11-04-21 at 08:23 AM

Quote from: two banks of four on 11-04-21 at 01:25 AM


Having said that, no distinction at least for your hypothetical, as long as A, B, and C are all tangible.  Any combination from a list of tangibles is by definition a combination from a list of tangibles.

Why do A, B, and C need to be tangible?

My word choice could have been better.

Tangible as in must be included if recited. 

Refer to hypothetical 3) in my original post.  That widget is not necessarily included.

Perhaps actualized is a better description? 

Since no one else has yet answered, I'll give it a stab.  Take this for what it is:  random musing of a stranger and not legal advice.

Having said that, no distinction at least for your hypothetical, as long as A, B, and C are all tangible.  Any combination from a list of tangibles is by definition a combination from a list of tangibles.

When "any" does mean something different from "a" could be the following scenario.

1) A gadget comprising a widget, where the widget comprises item a.

2) A gadget comprising a widget, wherein any widget in the gadget comprises item a.

1) allows the presence of widget(s) not having item a, whereas 2) positively requires any widget contained to expressly contain item a.

Or consider the following

3) A gadget, wherein any widget contained in the gadget comprises item a.  Here, widgets aren't even required, however, if a widget is to be contained, that widget has to include item a.  Note that widget in 3) is not fully tangible, so to speak.  It could be included, or it does not necessarily need to be included. 

Generally, perfecting of foreign priority is performed for the sole purpose of removing intervening prior art.  If no reference applied has a reference date that falls within the intervening period, the perfecting is not necessary.

Most applications with a foreign priority never has their respective foreign priorities perfected.

Quote from: patenteligible on 09-03-21 at 11:26 PM
Is this sentence clear?
A man puts a box in a car, which is blue, and drives to the store.

So is the box blue or is the car blue?

Never mind that certain grammar rules are not followed in patent claims; even if we assumed that they were followed, your position would be correct only if there is a grammar rule stating that the referent of "which" should always necessarily be the referent that most immediately precedes "which".  But I don't believe that is the case.  The referent of "which" is generally clarified only via context.  I was taught that one should use "who", "whom", and "that" to refer back to the most immediate possible referent.  So in the non-patent claim example you posted, "[a] man puts a box in a car that is blue and drives to the store".  Or better yet, "[a] man puts a box in a blue car and drives to the store".  Though again, rules concerning usage of those three (who, whom, and that) get ignored all the time when it comes to patent claims. 

Also, what i mean by context is follows:  something that would pretty unambiguously indicate that "which" could refer onto to one item.  If instead you wrote, "[a] man puts the bags of grocery in a car, which is diesel-powered, and drives home".  In this case, one could very well make the argument that "diesel-powered" could refer only to one item (the car).  Or something like "[a] man puts a brown box in a car, which is blue, and drives to the store"; sub-standard sentence construction, to be sure, but no way that anyone reasonable would say the box is also blue.  So perhaps not all instances of the type of construction employing "which" is necessarily unclear.  But without some really unambiguous context (which you have not provided), it's more likely that the sentence is unclear.

But enough of the weeds, why are you so against reciting "wherein B is associated with C"?  Were your intention to claim A, B, or both is associated with C, I could at least see a reason for why you'd want to maintain the language (even though I'd still object, so that you at least state on the record what you mean).

But in your original post, you stated that you intend "associated with C" to refer only to B.  How would you convey that?  If you don't argue anything germane, the 112(b) gets maintained.  If you say anything to the effect that you meant for B to be associated C, you effectively have stated on the record how you wish the claim to be construed.  I guess I could see a case where the claim was rejected only under 112(b), and you'd force another action from the examiner if you don't amend and the examiner accepted your arguments.  But the chances of that probably isn't too great.

Quote from: bluerogue on 09-03-21 at 07:52 AM

Quote from: Pat4D on 09-03-21 at 04:50 AM
each claim will be checked against the prior art. Those claims which could be supported completely by the prior art will get the priority date other will get the filing date.

This... This is just wrong.  No.  Just no.  Prior art has nothing to do with the priority claim.  Period.  Never has.

TP is likely correct in that you'd get the foreign priority for any "old" matter that is in the foreign application while any new matter would be treated as a CIP. 

I think (don't have time to look right now) there may be something that says you cannot add anything to an application claiming foreign priority.  I may be wrong about this.

Edit: You can do a CIP with foreign priority so i was wrong that you can't add anything.

Only if the foreign priority document is in English or has been perfected.  Otherwise the priority for determination of what constitutes prior art is the U.S. filing date.

As an aside, CIP from a PCT is always possible (see MPEP 1895).  Only caveat there is that if one has foreign priority, PCT, and U.S. Non-Prov., that priority goes back only as far as continuity in language of filing allows (say PCT filing not in English, but FOR is, for whatever reason), the effective filing date purpose of determining what is prior art is that of the filing of the U.S. Non-Prov. 

Quote from: snapshot on 08-23-21 at 09:45 PM
My job isn't any different now than it was this time last year.   Most definitely not "harder and worse".

That's the key.  It's anecdotal.

For numerous others, the new routing and timing system has been a quagmire.  Granted, those who are disproportionally negatively affected are few, but they are all concentrated in certain areas.  It's no more representative to generalize those disproportionally negatively experiences to the corps as a whole, as it would be going the other direction.

Question is why management intended to implement a plan that robs Peter to pay Paul (those getting more hours come at the expense of those who are receiving fewer hours), a plan that they intend to finalize, and one that just isn't fully fleshed out.  I mean, that's kind of a rhetorical question, but it shows that management is really out of tune.

Quote from: steelie on 08-24-21 at 05:43 AM

Quote from: snapshot on 08-23-21 at 09:45 PM
My job isn't any different now than it was this time last year.   Most definitely not "harder and worse".

the question is regarding 7-8 years ago when the PTO was ranked #1

In Jan 2014 the PTO was ranked #1 government employer
https://www.iniplaw.org/uspto-ranks-1-in-best-places-t/

More bad ...
Now management monitors your activity status on chat.
Now management tracks your activity online with RSP
in 2013/2014 the FERS retirement contribution increased 3.6%, thus, an effective pay cut
We've had a few years of pay freeze, and several years of low COLA
the special pay scale is nearly equal to locality pay

Out of the five, only some represent true negative changes between 2013/2014 and now.

Management has almost always had the ability to monitor things ever since the transition to electronic work system (that is to say, using MS Word to draft office actions and using EAST/WEST to search).  It says plain and clear each and every time we log on that we could be monitored and should expect no privacy.  This hasn't changed in the last 7-8 years.  I also don't see how anyone who's actually doing his/her 80 hours/biweek would be that affected by RSP, especially given that one is allowed to claim unlogged time (for those who prefer to read while logged out).

The FERS thing is irrelevant.  Those on the old 0.8% contribution (that is, those hired before 2013) still contribute 0.8%.  Those who have to contribute 3.6% now would needed to contribute 3.6% back in 2013/2014 if they were around back then.

The pay freeze was pre-2013.  We haven't had a pay freeze since.  You are right that the low year COLA is a bit abysmal, but it is what it is. 

The special pay rate was never intended to last forever.  Of course, it sucks that DC locality pay is about to reach parity with the special pay, but that is sort of baked into the whole thing.

To be sure, there are a lot of initiatives implemented that are quite grating, but the only true gripes you mention is the special pay COLA not keeping up.  All other issues you mentioned are exactly the same as they were back in 2013/2014.

I think there may also be some concrete changes that led to the climbing of the rankings.  These include implementation of the current count system, the bonus credits on RCE, the increase in allotted examination time, the looser criteria for allowance, and the wider adoption of teleworking and hoteling.  Some of these occurred well before the agency head to whom you allude took the reins, but I think some of these happened right before or on her watch. 

Then there was the economic climate of the time, where many were hoping to land a position at the Office during the Great Recession and its aftermath.  This is more anecdotal, but I think many (if not most) hires were people who had corporate experiences and were probably glad to work somewhere where upper management did not act according to the Gospels of Welch.  I was quite surprised at the fact that the vast majority in my starting cohort were in their late 30's or beyond, with few in their 20's and early 30's.  Age differences aside, I think almost all of us were grateful for the job, due to the economic uncertainties of the time.  Given the great influx of employees right around the late aughts and early 2010's, and given that the sense of gratitude probably didn't properly wear off for quite a few years (I'd argue it's probably at the highest right around the time when one gets to hotel), I'd posit that said agency head benefited greatly from this wellspring of good feeling from those hired in that time period.  But objectively, I'd say we were way overrated ~five years ago.

Now that the overwhelming majority of employees have been here for 5+ years (given the scant number of new hires in the last three years or so), and that those who have been here for half a decade or more all understand the exacting nature of the count system at higher GS levels, I think any sort of initial goodwill have long worn off, and that the present sentiment is probably a more accurate read of things.  Add to that the various new policy implementations that may grate, it's no surprise that morale is down.  OTOH, the reviews on GlassDoor for the PTO has largely stayed the same (if not increased by a small amount). 

Quote from: patenteligible on 06-19-21 at 02:45 AM
I received a 112(b) rejection for the following claim.

2. wherein the conditions are related to a, b, c, and/or d.

3. wherein d is related to e, f, g, and/or h.

The examiner alleges that because the and/or's are stacked, it is not clear what is required, what is not required, and where the metes and bounds of the claims lay.

Is this rejection proper?

In the most literal sense, the rejection does not appear necessary.  That said, an argument could be made as to whether you intend to positively recite condition "d" in claim 3.

Contrast the following.

3. wherein d is related to e, f, g, and/or h.

vs

3. wherein the conditions are at least related to d, and wherein d is related to e, f, g, and/or h.

For purpose of prior art rejection, the former merely further limits an element recited in the alternative, and if the prior art has a, b, and/or c, it will read on claim 3 without needing to disclose d (and d's relation to e, f, g, and/or h).

For the latter, the prior art has to disclose at least d, and it need to further disclose e, f, g, and/or h in association therewith.