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 on: Today at 01:38 am 
Started by examiner_bio - Last post by DCIPAgent
Wow. I dont think all law firms are like that. I went to law school while working in a firm and had 1900 billable requirement which I didnt meet. My partners never brought it up. I have friends who don't have enough workload to meet 1900 but still the firms they work for continue to pay them. In such scenario, associates usually quit themselves if there isn't enough work. Honestly, I wouldnt want to work for a law firm who would fire me without sufficient notice or proper reason why I was being fired.

 on: Yesterday at 10:42 pm 
Started by examiner_bio - Last post by Toot Aps Esroh
Generally, yes, it is the case that a patent agent or attorney in an "at-will" state has no more protections than any other worker.  We can be fired for "any reason or no reason", so long as we are not fired for some reason contravening recognized class protections.

With respect to your friend, being a law firm patent prosecutor, it seems that for the most part small foibles (although frankly nothing your friend had happen even rise to a "foible", in my opinion) are generally overlooked so long as such associate is profitable.

Outside of an extreme nutjob rogue partner firing people for no reason - which may have happened here - I would suspect your friend was running out of work (that is to say, the firm foresaw they were running out of work for him) and used this as an excuse to offload him.  But if your friend was profitable to the firm, assuming they were large enough to have a management committee, they {ETA -"they" is the committee} shouldn't permit such a rogue partner to just off people like that.

I don't know what else to say.  Situation definitely sucks. 

 on: Yesterday at 07:35 pm 
Started by patent_ask - Last post by bluerogue
I think I understand now.  This is how I understand your application.

Feature X was rejected under ref A and feature Y was rejected under ref B.  Because your invention is X+Y, the invention is novel because no single reference teaches X +Y.  However, the combination of X+Y, according to the examiner, is obvious under ref A and ref B.  You would like to remove feature Y and leave only feature X to get rid of the obviousness rejection.  Thus, the claim would be feature X.

This would not make the application allowable.  Instead, you would be left with a novelty (102) rejection of feature X under ref A.

 on: Yesterday at 07:32 pm 
Started by examiner_bio - Last post by examiner_bio
I have a friend who was a patent attorney at very well known big law firm.  In early Feb., he was very sick Monday morning and texted his secretary and other colleagues that it was unlikely he would be in the office that day.  Nonetheless, a partner emailed him a project at 10 am and said it was required that the project be completed that day.  The partner insisted the work be turned around that day by him only (i.e.. nobody else had the time to do the project).  The partner also explicitly said in an email the work would be sent out in the evening.  So, my friend worked on the project, despite being quite ill with flu like symptoms (104 degree temperature).  He also went into the office later in the day to review the finished project with the partner.  Despite the partner's insistence, the partner did not turn around the project until Wednesday.

Next, my friend was expected to leave the office for vacation later that week, I believe on Friday evening.  He had told everyone of his vacation plans 6 weeks in advance.  On Wednesday (of the same week that he was sick), he sent a vacation reminder at 10:30 a.m.  At 12:45 p.m., he was notified of a meeting later that day where he was told to pack his bags.  During the meeting, the business manager acted ignorant, but did say the vacation communication played a part in the decision, as well as the time out of the office for the sick day.

I was just shocked about this story.  Is it really the case that patent agents and attorneys have no rights in an at-will agreement?  It seems abusive to me that a sick day and vacation memo are reasons to fire somebody.  The guy produces great work, but to me this was tragic at many levels.  He's now off searching for a job, but I think should land soon if he's just honest about what took place.  But, why would anyone want to work in these environments?  I now feel I should be on notice...

 on: Yesterday at 07:27 pm 
Started by patent_ask - Last post by patent_ask
Thanks guys for your response, sorry if it didn't make sense, I am not a patent lawyer.

Let me elaborate more:

1) I have only one claim (no dependent claims).
2) This claim include two features X and Y.
3) The examiner rejected the claim under that it is not novel and is obvious.
4) I responded that it is novel because X is not mentioned in prior art, hence it is novel. After that the examiner stopped mentioning the claim is not novel.
5) The examiner rejected the claim because Y is obvious.

So my question is: if I amended the claim to not include feature Y, would this make it allowable?

 on: Yesterday at 06:54 pm 
Started by nmayweather - Last post by Lefty714
Someone can correct me if I'm wrong or missing some strategic advantage, but I would file the new application having the same specification. Include a priority claim to the soon-to-issue application in the Application Data Sheet designating the new application as a divisional. You can include new claims in the application related to those claims that were restricted out of the earlier application. I don't see the need to file the original claims and then file a preliminary amendment canceling the original claims and including the new claims.

 on: Yesterday at 06:50 pm 
Started by novobarro - Last post by smgsmc
I received a rejection under 102(d) alleging that dependent claims 4 and 5 being in improper dependent form for failing to further limit the subject matter because they are all identical. 

Dependent clams 2 and 3 further limit independent claim 1.  Dependent claim 2 further includes element X and dependent claim 3 further includes element Y.

Dependent claims 4 and 5 are identical.  Dependent claim 4 depends from dependent claim 2.  Dependent claim 5 depends from dependent claim 3.

For example:

1. a method comprising generating information including A.

2. the method of claim 1, wherein the information includes X.

3. the method of claim 1, wherein the information includes Y.

4. The method of claim 2, wherein the information includes Z.

5. The method of claim 3, wherein the information includes Z.

This doesn't make sense to me.  4 and 5 are identical but are not dependent on each other.  4 and 2 are not identical, and 5 and 3 are not identical.

I think the Examiner is confused.  What is a good response to this?  Am I correct?
I think the claims would be clearer and grammatically more correct if you include "further" in all the dependent claims.  E.g.,

2. the method of claim 1, wherein the information further includes X.

That is, in claim 1, the information includes A; but in claim 2, the information includes X in addition to A (A and X). 

 on: Yesterday at 06:49 pm 
Started by Vznr - Last post by Vznr
I like all the comments, because since each case is different, the comments provide parallax, and ideas I hadn't thought of.
However let me add a few details:
This examiner has made no effort to explain anything. He has not mentioned BRI, nor any interpretation at all.
By not making the slightest attempt at a prima facie case of indefiniteness, he's left me with a nice quandary.
     a) I can simply argue his lack of PFC, in which case the PTAB will tell him to make a PFC, he'll make a skeleton effort,
         and drag me thru the mud another 3 years.
     b) I can try to make a prima facie case the terms are definite, on the outside chance the PTAB will tell the examiner
         to conduct a search of the art, which he has never done.
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 :-)

 on: Yesterday at 06:17 pm 
Started by nmayweather - Last post by nmayweather
I just got notice the examiner has finally allowed my patent (after 11 years and more than a dozen OAs, and finally having enough arguments to file a winnable notice to appeal).

I'd like to keep the 'family' kicking in the USPTO with a divisional, which I know must be filed before the issuance fee is paid. I'd like to confirm what the recommended typical strategy is before talking with my lawyers.

The application was originally filed with claims 1,2,3 to meet a deadline for converting a provisional application to non-provisional.
A preliminary amendment replaced claims 1,2,3 with claims 1-45.
A restriction requirement limited prosecution to 1-15.
Allowance was given on 1-15 + 46-55 (clarifications / give and take with examiner).
There were a few requirements/amendments to address typos on the text and renumbering of figures.

If I recall correctly from the last time I did a divisional the recommended approach was to re-file the original submission (in this case, claims 1-3, of the originally filed 3) on the first day to get an application number in the system, then to file a preliminary amendment on the second day to introduce new claims (which would either be 16-30 or 31-45, both of the amended 45) and update any figures.

Is that still the case?

 on: Yesterday at 05:27 pm 
Started by Vznr - Last post by ChrisWhewell
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.  :)

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