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Messages - ChrisWhewell

Pages: [1] 2 3 4 5 6 ... 58
Patent Filing and Prosecution / Re: Waterboarding Clients
« on: 08-06-18 at 01:32 pm »
I think the answer is for inventors make absolute full disclosure to their lawyer, hold back nothing.  Then, leave it to the legal department to make decisions regarding what is to be included in a filing, after ferreting out technical details relating to manufacture from the inventor, and commercial considerations from the business team.    Sometimes, an inventor wears three hats:   1) as inventor; 2) as technical guru; 3) as being the business team.   An inventor who assumes those roles is certainly a super-star if they additionall assume the position of being the legal department.  They may get it 90% correct, but its the last 10% that comes back to bite.   

Patent Filing and Prosecution / Waterboarding Clients
« on: 08-05-18 at 02:42 pm »
Have you ever waterboarded a client ?   To get pertinent information regarding their invention from them ?
No ?   Me neither.

But, I suspect it might be lawful, to the extent their activities fall under the Patriot Act.    Particularly the portion about "subverting a civilian population"    Does an inventive technology which disrupts the status quo in important areas such as telecommunications, in which  I can clearly see they're being secretive after multiple exchanges, potentially qualify ?   What if my inventor is being secretive, only offering scant details repeatedly, after I've repeatedly explained fully the requirements of Section 112, and their invention reasonably pertains to National Security ?    What if I have reasonable suspicion they're holding back important details during an inventor interview  ??   Do I have a duty to inform CIA, NSA, or that other agency that's unknown to the Public, or, what I really want to know is, can a patent practitioner ever obtain license to waterboard uncooperative inventors ??    Like, I totally know, that some know more than they're telling me sometimes....   

Big question is, what hourly rate is reasonable, for waterboarding a Client when a practitioner has at least reasonable basis for believing an inventor is being secretive on an invention relating, even remotely, within the broadest reasonable interpretation perception, to National Security ?    Is $6000 per hour unreasonable or excessive ?   I'm thinking about $4,000 an hour to keep myself competitive and cover also insurance and the mental anguish relating to having to administer it, my pain and suffering, etc.   

Note to all inventors:    Don't Hold Back, you only punish yourself.   

ok, the above is facetious, but it felt good to write.    Learn to love your Patent Lawyer, they are your best friend.

Patent Filing and Prosecution / Re: Possible use for CIP
« on: 05-02-18 at 10:46 am »
Hard to say.  hypothetically, if the claim recites "wherein said polymer has a molecular weight of 10000" but if original spec does not specify whether its number average MW or weight-average MW, it seems to me that orig spec may have been fatally defective and claims only entitled to new filing date that specifies which method is used for MW, unless.... the person of ordinary skill would readily recognize from the original spec, the metes and bounds of the claim..... yadayadayada

Anything you can do to clarify a position or focus an issue or otherwise help the examiner is probably appreciated.

Thanks to all for the replies.   I saw an internet article that listed the top 10 hardest GAU's and had been wondering, ten out of how many.     

I tried to find a number, was just curious as to how many different group art units are in the USPTO examining corps.   surely, somebody must know....  :)   I'd be happy to know even a close approximate number.

Definitely a cut-throat trade, I wouldn't want to be a patent attorney.   Every one of them I ever met told me they were fired the day after having the sniffles.   So when you see a patent attorney, keep in mind there is some statistical chance they have a cold or flu at the time and are just hiding it, for job security purposes, said no sane person ever.

"Recently, it filed a patent application for the same kind of motor as before, but with structural improvements......"

Need to show a nexus between the structural improvements, and the ability to eliminate the expensive shaft.   If that's not evident from reading the spec, then the spec hasn't taught it, and is defective in that regard, right ?  If the structural improvements are taught and it necessarily follows that the expensive shaft is no longer needed, then, what's the problem ?    Filing a con might help, provided any "new matter" is not really new matter, but merely is editorial explanatory of what is already in the "new" subject app. as-filed.   Multiple declarations by those skilled in the art (not the inventor, and non-interested parties) can sometimes be helpful.

Sometimes one can have a problem, since particle size can be rightly asserted as being an art-recognized, results-effective variable and hence obvious for the person of ord. skill to try changing.  Sometimes also a proposed invention can be asserted as being the mere discovery of an inherent physical property of the material.   Hypothetical example:   claiming a particular range of TiO2 particles for light-reflective properties by itself is not inventive enough, lacks enough inventive step.   But if polydispersity is an issue in the art and you've solved that, then a patent may be awarded including a particular particle size range.   Sometimes, the inventors themselves do not know exactly what the invention is, as I learned at a lunch with an ancient relic of a patent lawyer who managed the Texas Instruments patents - he said nobody really knew what the invention was for about 15 years, so they kept filing continuation applications.  So when a inventor tells you what they believe the invention is, sometimes a savvy lawyer needs to look for a better appreciation of what's been presented, and put the claim in terms that are patentable over the prior art.  So keep in mind maybe that inventors often do not know what their own inventions are.   Just as in a federal lawsuit, its how the claim is stated that determines whether or not its thrown out under rule 12 b 6, similarly so it is for patent claims, and the "relief" being sought is patent protection.  When faced with simple or even some complex inventions, it sometimes helps to really think about what the h one is going to claim !  This is opportunity for good lawyers to trully shine, by claiming something commercially significant and valuable that's supported by the inventor's disclosure, that they hadn't even considered claiming. 

I haven't read any of the other comments, excuse me if I'm being repetitive.   

Sometimes, an applicant's invention truly is obvious, one must objectively weigh the evidence and make a realistic decision.

What I can add perhaps that is positive, is that the more references which are cited, so also increases the probability that there will be something written in one or more of the references that clearly teaches away from the combination suggested by the examiner.  When present, finding such written evidence can be helpful.   Good luck

What would you recommend to do, in order to ensure that the documents are of record in the case, in the event the client desires to appeal the examiner's position to the Board?

When I have done this in the past, I have simply listed the patent or publication numbers in an Office action response.  Rule 97(b) and (c) really limit when an applicant can put in an IDS.  In my experience, trying to enter an IDS out of rule will only get it ignored, even if to have the content considered as evidence in favor of patentability, as opposed to material to patentability (under the Rule 56 definition).

I agree with your interpretations.   I've cited documents in a reply to an Office Action and furnished copies with the response.   Unfortunately, more than once I've had an ex. claim that they did not see what I cited previously, when it was clearly convincing.   When dealing with independent inventors who's funds are tight (most of the people I help), they can't afford to go the round with extra office actions, not to mention the time spent.  So it can be befuddling at times when you need something to be "of record" in the case, but the IDS rules, technically, do not permit it.   Perhaps someday the politicians will become true to the previously-stated "goal" of  "patent law harmonization" with the rest of the world, and take appropriate action regarding rule 56.

As I've mentioned in other posts, this examiner has over 25 years of experience, and I consider him cunning and ruthless,
based on many applications he's examined over the years.
     I will say he's lost approximately 2/3 of all appeals against him, eventually.

More comments are always welcome :-)

He is not particularly cunning then. Over half are affirmed I believe. Not much else to add.

I agree, I saw a statistic a while back where the overturn rate on appeal for a single sec. 103 rejection is only about 30% in favor of Appellant. 

Doesn't the rule read "material to prosecution" ?   I don't recall it reading "prejudicial to applicant's case".

That's not right, either in letter or in spirit.  The easiest way to contradict that position is to point to MPEP 609.05(c):

My comment:    My statements can not be either right nor wrong.   The first sentence was a question, and the second statement was a statement of my lack of recollection at the time I wrote it.   


Lets pretend that there exists a client's case, and that the examiner states in a 112 that certain well-known, art-recognized terms are indefinite, even when the same exact terms are present in the claims, and lack definition in the specs of 500 issued patents.   What would you recommend to do, in order to ensure that the documents are of record in the case, in the event the client desires to appeal the examiner's position to the Board ?

Since they're material to the prosecution, I cited them in a new IDS.

A reference is not "material to prosecution" simply because the applicant cites it as evidence favoring patentability.  On the contrary, it must tend to present a question of patentability or, in other words, to suggest unpatentability.

I've had quite a few references of record which favor patentability, some even cited by the examiner wherein they didn't realize some passages in the reference taught away from applicant's invention.  Doesn't the rule read "material to prosecution" ?   I don't recall it reading "prejudicial to applicant's case".   In one instance when I provided a reference but did not cite it formally in an IDS, I kid you not, the ex. stated on the record they did not see the reference in the file wrapper, and that statement was made two office actions later !!   When faced with an allegation of indefiniteness of a claim term, I believe it material to prosecution that a large plurality of other issued patent examiners, applicants and their lawyers had no problem cognicizing the terms' meaning.  :)

Interpreting a word in a spec beyond its meaning in view of the spec as understood by a POSITA for the purposes of concocting a rejection is not a reasonable interpretation.  I was once faced with a 112 alleging certain claim term(s) as being not definite nor defined in the spec.   My answer ?   I located about 200+ issued patents examined by 200+ different examiners having the same terms in their claims, and in those 200+, the specs were also devoid of any definition for those term(s).  Since they're material to the prosecution, I cited them in a new IDS.   These heavily weigh in favor of the notion that scores of inventors and examiners in the past have had no trouble understanding the clear definite meaning of some well-know, art-recognized terms.  On top of it I had 3 experts swear out Declarations expressing their opinion that the terms are definite and well-known, and also located and cited publications evidencing same.   Declarations containing opinion evidence are not dispositive but certainly add to an existing preponderance or near-preponderance of evidence.  A blanket statement of 112 rejection is insufficient without an articulated reasoning, and if reasoning for alleging a 112 is articulated, then refuting it should be no problem using concise statements.   I would resist introducing new argument relating to claim term definitions in a Brief.  Maybe if your facts lend well to it, file a parallel con app in which the definitions are more clearly stated, with full support in the original spec so the clarifying words used can only be interpreted as narrowing that which was already present, and consistent to how the POSITA interprets it.  What is water ?   Is it ice, liquid or steam ?  The specification directed to the POSITA, and how the POSITA interprets it, is what controls, right ?  If the invention is a steam engine, it should be clear that if water is used in the claims its going to be either liquid or gaseous and not ice.  Hopefully some of the above is helpful, if I'm way off base, I apologize !!

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