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 21 
 on: Yesterday at 01:34 pm 
Started by tuka - Last post by tuka
I found it is very strange from him to ask for a copy of the official mail from USPTO, while all the info. in the electronic receipt with him and we are near to fill the nonprovisional and I sent to him some new embodiments not in the provisional.
I am out of USA and this is the first time I deal with a patent attorney from USA by email.

 22 
 on: Yesterday at 01:10 pm 
Started by shivaprem - Last post by ThomasPaine
"When referring to my claims (in arguments) I often say 'the claimed subject matter', rather than 'the claimed invention'."

You're doing it wrong.

 23 
 on: Yesterday at 01:05 pm 
Started by shivaprem - Last post by ThomasPaine
The invention is whatever is particularly pointed out and distinctly claimed.  Thus, nothing in the detailed description is "the invention."  So stop using "the invention" in the detailed description.  Stop using it anywhere.

"An in-house guy for a client handles a lot of the European prosecution work.  He prefers example, and to avoid embodiment.  If I remember his reasoning correctly, it is because EPO may interpret an embodiment as only including the elements associated with that embodiment and not another embodiment, which can make claim amendments difficult if the examiner says that there is no explicit connection between the two embodiments that would allow the elements from one to be incorporated into the other."

This is true.  And good advice.  In the EPO, if your application discloses, "Fig. 1 shows an embodiment comprising ABCD.  Fig. 2 Shows an embodiment comprising ABCDEF." and you claim "An apparatus comprising ABCD" and the prior art shows an apparatus comprising ABCD and you think all you have to do is add E to the claim to have ABCDE and overcome the rejection, the examiner can require you to also add F because the "embodiment" you disclosed is ABCDEF.  Not ABCDE.

There's no requirement to label anything in the detailed description as an "embodiment," and certainly no requirement to label it as an "embodiment" of "the invention."  Doing so can only bite you in the a$$.  It can't help you, and provides no benefit.  Plus, it's just more words to type.  And for the inventors, the examiner, the judge, and the jury to read.   "In an embodiment of the invention, Fig. 1 shows an apparatus comprising ABCD.  In another embodiment of the invention, Fig. 2 shows an apparatus comprising ABCDEF.  In yet another embodiment of the invention, Fig. 3 shows an apparatus..."

Stop typing so many useless words.  Sheesh.

Stop it.

 24 
 on: Yesterday at 12:59 pm 
Started by lboceanguy - Last post by lboceanguy
Hello,

Is it okay to show Youtube videos in class for my teaching business. Or are they copyrighted and not fair use for this purpose? Your answers would be a great help. Thanks.

Alan

 25 
 on: Yesterday at 11:50 am 
Started by Tabo - Last post by JV
Why wouldn't the previous declaration apply to the CIP?  The rules say you can you use the parent's declaration for the CIP.
You raise an interesting point.  Pre-AIA, the USPTO specifically excluded the use of a prior-filed declaration for CIP applications (see MPEP 602.05(b), Oath or Declaration in Continuing Applications Filed Before September 16, 2012).  Post-AIA, MPEP 602.05(a) appears to allow for it, so long as the declaration is in compliance with 37 CFR 1.63.  To my mind, that is an impossibility.  37 CFR 1.63(c) states that "[a] person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application".  If you are adding new matter, and the inventor has not reviewed that new matter, then there is no compliance with 1.63.

 26 
 on: Yesterday at 10:13 am 
Started by shivaprem - Last post by jothya
Quote
Not sure why, but where I am, "embodiment" is taboo and "example" is all the rage.

Quote
Taboo by whom?  In-house counsel?   "Embodiment" and "example" are not interchangeable.

An in-house guy for a client handles a lot of the European prosecution work.  He prefers example, and to avoid embodiment.  If I remember his reasoning correctly, it is because EPO may interpret an embodiment as only including the elements associated with that embodiment and not another embodiment, which can make claim amendments difficult if the examiner says that there is no explicit connection between the two embodiments that would allow the elements from one to be incorporated into the other.

 27 
 on: Yesterday at 09:36 am 
Started by dcb942 - Last post by PatentPros482
"masters in computer science or EE"

There was a thread last year titled, "Is a minor worth it?"  In it, a recruiter said that applicants having a BSEE without an MSEE are favored over ones with an MSEE without a BSEE.  I didn't completely understand the rationale, but it's worth noting. 

 28 
 on: 03-26-17 at 11:14 pm 
Started by shivaprem - Last post by MYK
USPTO policy is very explicit that you are allowed to use copyrighted images from prior art patents.  AFAIK the policy has not been tested in court, however.  Quotes would fall under "fair use" even if someone were to claim copyright on them.

There is a fairly famous pair of hands that has been getting reused in drawings for years.

See:

https://www.uspto.gov/web/offices/pac/mpep/s608.html

https://en.wikipedia.org/wiki/Copyright_on_the_content_of_patents_and_in_the_context_of_patent_prosecution

 29 
 on: 03-26-17 at 03:46 pm 
Started by Tabo - Last post by Weng Tianxiang
Quote
The rules say you can you use the parent's declaration for the CIP.

Where is the rule?

Weng

 30 
 on: 03-26-17 at 02:31 pm 
Started by Rheo - Last post by smgsmc
Never did it for a 112 rejection, but I've had good success with declarations for responding to 102 and 103 rejections.  My technical arguments were first dismissed as "mere attorney arguments".  I then recast the arguments in a formal declaration signed by the inventor, and the Examiner backed off.  A couple of friendly Examiners I chatted with told me that a declaration cannot be dismissed by mere hand waving:  they either have to accept it or come up with a technical analysis as to why the declaration is incorrect.  In most instances, the Examiner won't have the technical horsepower to overcome a declaration.  Maybe worth a shot before going to appeal since the OA is non-final.

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