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 11 
 on: Today at 08:42 am 
Started by Jackoose - Last post by PatentScientist
Here is what you need to do as it worked for me I aced my very first interview:

1. Ask about billable hour requirement
2. Ask about benefits
3. Critique all the work that you get back from the partners looking at your work and state that you know the issues better than the partners
4. Answer client questions as short as possible and with one liners
5. Ask about vacation time, require minimum 5 weeks
6. State that you have a rigid working hour day composed of at most 7 hours and can't do overwork
7. You are an excellent solo worker
8. Start the daily work at the office between 10-11
9. State that you like drafting claims reciting "consisting of" instead of "comprising" in the preamble

Welcome to the firm you got the job   :P
Just kidding do everything the opposite I have stated  8) Good Luck !

 12 
 on: Today at 01:31 am 
Started by Rheo - Last post by mersenne
I believe examiners have to get permission to reopen prosecution after a reversal.  And it sounds like this examiner might need some adult supervision.

OP didn't mention any other rejections, but the examiner is supposed to do an art search and novelty/nonobviousness analysis to the extent that the claims can be understood.  (Typically, when I get 112s, the examiner says "I am assuming this means X, and under this interpretation, the claim is rejected in view of Y and Z.")

If all I had were 112 rejections, which had been maintained in the face of amendments, I wouldn't even think twice about appealing.  That's some poor-quality examining.

 13 
 on: Yesterday at 10:52 pm 
Started by Rheo - Last post by doop
Just wondering if appealing would be the best route to go.  Of course it all depends on how the claim is written, but taking the example of "guided motion," if the claim is written something like "a device configured to have guided motion," then I could see how both a 112/1 and 112/2 rejection could be made.  First reject under 112/2 where the term "guided motion" is just unclear and indefinite - for example, any object can be considered as being configured to have guided motion (i.e., if a person throws a basketball toward the hoop, then isn't the basketball configured to have guided motion since the person is guiding the ball toward the hoop?).  Your argument that the motion is "restricted in some way" isn't necessarily in the term itself.  Also, unless you've explicitly defined the term in your spec, your reliance on the spec and the drawings would be inapplicable unless the structural limitations are in the claims themselves. Second reject under 112/1 as not commensurate in scope where the term "guided motion" would be read under Examiner's best guess of what the term means and find a bunch of embodiments that are prob not in your spec and prob not enabled.

Further, even if you do appeal and suppose you win the appeal, then the examiner wouldn't necessarily allow it.  Rather, the examiner could reopen prosecution using how the Board interpreted the claim terms, and possibly find prior art to reject under 102/103.  I'm not saying which path I would lean towards because all that depends on how the claim is actually written, but just offering a consideration.

 14 
 on: Yesterday at 09:22 pm 
Started by EDCGadgetGeek - Last post by ThomasPaine
BTW, if what you mean is that the Examiner's Answer contained a new grounds of rejection, then your options were 1) petition (if the new grounds were not designated as new grounds) for a two month period to file a Rule 111 reply; 2) re-open and file a Rule 111 reply (if the new grounds were designated as new grounds in the Examiner's Answer); or 3) file a Reply Brief.  If you filed a Reply Brief in response to a new grounds of rejection (whether designated as a new grounds in the Examiner's Answer or undesignated) then you have waived the right to re-open.  You would need to file an RCE after the PTAB decision to keep the case pending.  Or you can appeal to the Fed. Cir., but you can't argue that you're entitled to more prosecution (i.e. a remand to the PTO) because there was a new grounds of rejection. 

 15 
 on: Yesterday at 09:14 pm 
Started by EDCGadgetGeek - Last post by ThomasPaine
If you believe that a PTAB final decision contains a new ground of rejection, you need to file a request for rehearing arguing that.  If your request is denied and you appeal to the Fed. Cir. you can have that issue decided.  Whether a rejection constitutes a new grounds is a question of law that would be reviewed de novo by the Fed. Cir.  If you didn't raise it then you didn't preserve it for appeal and you waived it.

 16 
 on: Yesterday at 05:21 pm 
Started by lboceanguy - Last post by CRfan
Skip the Fair Use discussion for the moment. 

Just email the video’s author (copyright owner) and ask for permission.  If they say “yes” to your educational request, problem solved, and you have a non-exclusive license. 

If the author says “No” or doesn’t respond, that’s when you have to craft your use of the work into one of the categories embodied into Fair Use.

Many times copyright owners are thrilled(!) when I contact them seeking permission to include their material in my non-commercial video projects. 

Of course, it’s another thing to get Hollywood studios or music labels to grant you free licenses (that hardly ever happens).

 17 
 on: Yesterday at 03:35 pm 
Started by Rheo - Last post by mersenne
If you appeal (and I agree with Karen that this is a good idea), then you should also consider asking for a Pre Appeal Brief Conference.  This must be requested at the time of filing the notice of appeal -- you can't do it afterward.  (Karen's point about characterizing the dispute as an appealable one, and not a petitionable one, is important also.  It would suck to put the case on appeal, only to have the Board punt on procedural grounds two years later.)

 18 
 on: Yesterday at 02:23 pm 
Started by Rheo - Last post by khazzah
The examiner issued a 112 rejection because a described arrangement would supposedly not be understandable by a person with ordinary skill in the art.

Since you used the phrase "not understandable" I'm assuming the rejection in question is 112 2nd Indefiniteness.

I couldn't find any common ground with her in the telephone interview, and she wouldn't really say anything in a direct way, concede anything or respond to my points directly.

I'd go straight to appeal from this non-final. Because it sounds like she knows what your position is, and you know what her position is. She's not budging, and she's not giving you any more info. You're at an impasse, and the way forward is to get the case out of her hands.

FWIW, I can't recall ever seeing a declaration filed to overcome an indefiniteness rejection.

She is also getting extremely picky about anything she can in terms of new objections and new 112 rejections for the original material as the amended claims get closer to a patentable form, but I guess that is a different can of worms.

Note that objections are handled by way of petition, not appeal. Unless you can convince the PTAB that the underlying issues are the same so that deciding the rejection disposes of the rejection. Or possibly if you can convince the PTAB that the objection is misplaced, and it should take the form of a rejection instead. What I would *not* suggest is simply having a section in the Appeal Brief that argues the objection ... that makes it look like you don't know the law (ie, petitionable vs appealable).

When you refer to "new 112 rejections for the original material" are you talking about Enablement rejections, Written Description rejections, or both?

The examiner has a list of things that a POSITA would not understand, but an example is that a device moves back and forth on a rail, and it is described in the claim as "guided motion", meaning motion that is restricted in some way and not necessarily by a rail, with a fuller description in the specification and even a neat drawing with arrows showing back-and-forth motion on the rail as an example.

If you've got 112 2nd and 112 1st, I wonder if the Examiner is confusing breadth with indefiniteness.

IOW, is the Examiner really saying "well, guided motion could mean *anything*," and as a consequence the Examiner frames as indefiniteness -- metes and bounds are unclear. Because it's rarely true that the claim term could mean *anything*. Usually a more correct way of framing the same issue is breadth: that the claim phrase reads on guided by rail, guided by [second mechanism], and guided by [third mechanism], and the Examiner takes issue with that. However, the proper way for the Examiner to handle that is in a prior art rejection: construe the claim phrase broadly, thereby pulling in guided by other-than-rail.

This is the sort of discussion that might be useful to have with the Examiner, just to better understand her rationale. But maybe she's not interested in communicating.

 19 
 on: Yesterday at 11:52 am 
Started by EDCGadgetGeek - Last post by still_learnin
A colleague of mine recently had an oral argument at the Federal Circuit Court of Appeals, and unfortunately, it was decided against us.  However, not all of the issues in the prosecution history were addressed. 

Did you colleague raise these "new issue" in his initial brief to the Federal Circuit? If not, I think those arguments have been waived, as lazyexaminer said.

"Not addressed" meaning not mentioned in the Federal Circuit opinion? There is no requirement for a court to decide every issue raised by the parties. In fact, "judicial economy" says that the court generally decides only the issue(s) required to dispose of the case.

Just out of curiosity ... did you get an actual opinion from the Federal Circuit, or was it just a Rule 36 affirmance?


 20 
 on: Yesterday at 11:45 am 
Started by Arbu - Last post by still_learnin
I've found a patent which says it will do what my invention does without giving any explanation as to how. To my knowledge the owner of that patent hasn't achieved what he said he would do. Perhaps I should mention that as evidence of the utility of my invention.

First, "utility" is a term of art in patent law. From Wikipedia:
Quote
In United States patent law, utility is a patentability requirement.[1] As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use.[2] The majority of inventions are usually not challenged as lacking utility,[3] but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.[4]

So it's very rare that the Examiner needs to be persuaded of utility, and I don't know of any patent attorneys who write anything in the spec about utility.

I've found a patent which says it will do what my invention does without giving any explanation as to how. To my knowledge the owner of that patent hasn't achieved what he said he would do. Perhaps I should mention that as evidence of the utility of my invention.
Perhaps by "utility" you really mean "I have actually figured out how to accomplish the desired result while the prior art clearly has not."

It's true that the specification of a patent application must explain how to make/use the claimed invention. This is called the enablement requirement (Section 112 1st paragraph). Your spec must also demonstrate that you had "possession" of the invention. That's the written description requirement, also in Section 112 1st paragraph. Written Description is somewhat related to, though not the same as, enablement.

Claiming a result without explaining how that result is achieved is likely to lead to Enablement and/or Written Description rejections. For example, a claim to a Star Trek transporter would trigger such rejections -- and likely a rarely seen Utility rejection as well.

None of the above requirements/rejections have anything to do with differentiating your invention from the prior art. Differentiating your invention from the prior art is, however, how you avoid/get over prior art rejections (102 and 103).

Sounds like the Examiner might use the patent you found as prior art against you. You avoid this by claiming something that is a) not found in the prior art and b) not obvious in light of the prior art.

If you actually receive a prior art rejection from the Examiner, you can then explain how the invention you *claim* is different than what is *described* in the prior art. Or you can provide evidence and/or technical reasoning that explains why/how the prior art patent does not/cannot do what you claim. (This is called arguing that the reference is not enabled.) Merely asserting that the prior art patent won't achieve the result is generally not enough. And you should be aware that this argument is not usually persuasive.

Some applicants file a specification which has a section explaining how the claimed invention is different than the prior art. I'll let someone else here explain why that's generally a bad idea.

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