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 21 
 on: 02-19-17 at 11:40 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi smgsmc,

Your answer is wonderful!!!

I am always confused with "one or more".

In your example, "one or more pipelines, wherein each of the one or more pipelines is ..."

Is the second "one or more" superfluous? And why it is necessary? and it has any benefit?

Thank you very much!!!

Weng



 22 
 on: 02-19-17 at 11:05 pm 
Started by Weng Tianxiang - Last post by smgsmc


1. Do I need to file Information Disclose Statement and Affidavit when filing RCE?

When I file RCE transmittal see there are two check boxes, one is for IDS, and another for Affidavit.

I have no need to do it and I want to treat the first RCE as a third amendment and what I have to do is:
1. RCE transmittal.
2. Amendment.
3. Fee.

Am I right?




Correct.  IDS and Affidavit are optional, not required, elements when filing an RCE.  If you aren't including them, leave the boxes unchecked.



2. Claim writing technique:

See it appearing in a patent claim:
one or more pipelines, each pipeline being...

For certainty, I write it as
one or more pipelines, each of the pipelines being...

The simpler, the better.

I am not sure that each can be used in a place where "the" should be used.


For clarity, I would suggest:

one or more pipelines, each of the one or more pipelines being ...


To make it easier to parse, my preferred way is to drop in a "wherein", although some practitioners dislike "wherein":

one or more pipelines, wherein each of the one or more pipelines is [or other verb, depending on the specifics of your claim] ...

 23 
 on: 02-19-17 at 10:17 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi,

1. Do I need to file Information Disclose Statement and Affidavit when filing RCE?

When I file RCE transmittal see there are two check boxes, one is for IDS, and another for Affidavit.

I have no need to do it and I want to treat the first RCE as a third amendment and what I have to do is:
1. RCE transmittal.
2. Amendment.
3. Fee.

Am I right?

2. Claim writing technique:

See it appearing in a patent claim:
one or more pipelines, each pipeline being...

For certainty, I write it as
one or more pipelines, each of the pipelines being...

The simpler, the better.

I am not sure that each can be used in a place where "the" should be used.

Thank you.

Weng

 24 
 on: 02-19-17 at 07:00 pm 
Started by patentseeker - Last post by mersenne
This hasn't come up in my practice, but I believe there are a couple of things to consider.  First, if the application hasn't been filed yet, there are several ways to get the Declaration executed properly -- look in MPEP 409.  Second is the entirely separate question of ownership (assignment).  I think here you have to deal with the estate's representative.  If you don't get those papers completed cleanly, you'll impair the value of the patent by ensuring that any sale, licensing or enforcement will have an extra bonus fight over whether the deceased inventor's estate retained any interest in the claims.

 25 
 on: 02-19-17 at 02:24 pm 
Started by patentseeker - Last post by patentseeker
Three inventors work for a Company and are obligated to sign an invention over to Company by virtue of their employment agreement.

One of the three inventors dies prior to the filing of a patent application covering the invention and prior to signing an Assignment.

The two inventors will sign the Assignment.  Does Company need to reach out to the deceased inventor's estate to properly assign the application over to the Company?  Is there any other way to make a proper Assignment without having to reach over to the deceased inventor's estate?


 26 
 on: 02-18-17 at 01:47 pm 
Started by Vancouvergirl - Last post by Tobmapsatonmi
Hi, I don't have anything specific to add to Artchain's information above.  But I note from your selected handle that you're probably in Canada, and I think I recall that comparative advertising is at least somewhat more restrained in CA than in US. 

So you also might want to do some general searching of comparative advertising, with an eye toward any particular limitations or requirements in Canada.


Here's a more or less popular press article with some guidelines typ information.  Also, websites of well-known IP firms in Canada such as Smart & Biggar or Gowlings are likely to have additional good information.

http://www.slaw.ca/2015/10/15/seven-principles-to-follow-when-contemplating-comparative-advertising-in-canada/

 27 
 on: 02-17-17 at 12:14 pm 
Started by Jimmy jr Examiner - Last post by ThomasPaine
Most of the data on those sites is incomplete, inaccurate, and generally of little value. 

The Lexis/Nexis Patent Analyzer tool has very good data, but it's a subscription service and expensive.

The "affirmance rate" in general is bullsh!t as it only figures cases that actually make it to a final decision by the Board.  It doesn't take into account the 75% or so of cases that get pre-appealed and/or appealed that get re-opened by the examiner.  If the examiner was required to answer an appeal brief with an examiner's answer, you would need a microscope to see the "affirmance rate."

 28 
 on: 02-17-17 at 11:35 am 
Started by novobarro - Last post by novobarro
Quote
I think a claim to the material may work best because if it is allowed, rejoinder is almost guaranteed if the apparatus claim is something like:
2.  An apparatus for XYZ, comprising: A, B, and C, where C is formed of the material of Claim 1. (where Claim 1 is the claim to the material itself)

Thanks for the example. I'm understanding your example as Claim 1 is an independent claim for the material and claim 2 is an independent claim for the apparatus which includes all the specific limitations of claim 1.  Is this type of claim referring to MPEP 806.05(c) ("Criteria of Distinctness Between Combination and Subcombination"), I ("SUBCOMBINATION ESSENTIAL TO COMBINATION"), which reads:

Quote
ABsp/Bsp No Restriction

Where a combination as claimed **> requires< the details of *>a< subcombination as separately claimed, there is >usually< no evidence that combination ABsp is patentable without the details of Bsp. The inventions are not distinct and a requirement for restriction must not be made or maintained, even if the subcombination has separate utility. This situation can be diagrammed as combination ABsp ("sp" is an abbreviation for "specific"), and subcombination Bsp. Thus the specific characteristics required by the subcombination claim Bsp are also required by the combination claim. >See MPEP 806.05(d) for situations where two or more subcombinations are separately claimed.
.

So when I file the application, I include an independent claim for the apparatus with the details of the material and then another independent claim with the details of the material?  In this case, a restriction requirement should not even be issued?

for example,
Bsp: Claim 1. A material comprising XYZ.
ABsp: Claim 2. An apparatus comprising ABC and a material comprising XYZ.


Quote
Is the apparatus inventive without the material?  If so, you may want a separate application. 
If the apparatus is also inventive, wouldn't that mean two-way distinctness is not present?  That is, the combination as claimed does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness).


Quote
To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search. See MPEP 808.02.

The inventions are distinct if it can be shown that a combination as claimed:

(A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
(B) the subcombination can be shown to have utility either by itself or in another materially different combination.
When these factors cannot be shown, such inventions are not distinct.

The following examples are included for general guidance.

 29 
 on: 02-17-17 at 11:23 am 
Started by Jimmy jr Examiner - Last post by lazyexaminer
Individual examiners can look up that information about themselves any time.  Of course, it is unlikely they would share that with you, or in sufficient numbers to be helpful.


How exactly do we do that? Individual appeal stats are not on any of the reports AFAIK. Or do we have to ask someone?

I keep my own data so I've never felt a need to ask but I'd be curious if theirs matches.

As for the other posts, Watchdog and Ninja might be ok in general but are highly inaccurate for me at least. The former doesn't seem aware that I changed art units over 10 years ago and lists no cases for me after that. The latter is a bit dated (info 2-3 years old it seems) and doesn't know how reexams work so it's very skewed for anyone that has those, but I can't really blame them for that as that's a small percentage of examiners/cases.

 30 
 on: 02-17-17 at 09:32 am 
Started by Jimmy jr Examiner - Last post by snapshot
I just looked up my own stats on Examiner Ninja.  Not only are they out of date, some are outright wrong or misleading.

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