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 on: 10-19-17 at 08:50 pm 
Started by dab2d - Last post by dab2d
Is the structure denoted “V-170 aircraft engine” frozen in time, immutable and instantly recognizable to the PHOSITA so that the metes and bounds (and compliance with written description) can be ascertained with requisite certainty? 

Yes. there is an affidavit in the file that states that this is the case. Without considering the merits of the affidavit, the Examiner/SPE has dismissed it out of hand without any contradictory evidence stating that that they do not recognize the person making the affidavit as an expert (not required) and that the statement "to the best of their knowledge" is somehow inferior (this is the only standard that anyone can make opinion testimony with)

As a “footnote”, is there another albeit more time consuming but more secure way to draft the claim?  Could you lawfully “cop” a diagram of the cylinder head? 

I have explored this possibility

 on: 10-19-17 at 08:41 pm 
Started by EchoMike - Last post by NJ Patent1
Echo:  Disclosure: I type from perspective of an attorney, not agent, if such relevant.   And this was typed off line before your last extensive post.  Per MYK, it appears that you landed at a “swim or sink” firm.  Maybe not.  The first case I was handed ‘solo’ was so far outside by technical ken.  I drafted a 12 step-impossible-to-infringe primary independent method claim with zero minute’s feedback until after I handed it in.  In retrospect, it was probably a ‘test’ to see how much ‘work’ had to be done on me.  I didn’t get the sack, but OTOH I did have colleagues who were apparently a bit more helpful than those you type about (but they had their own dockets to worry about, so not much help). Maybe this is just a ‘test’ for you to determine level of coaching needed as, apparently, that very first case was for me? 

MYK gave good basic advice.  I’d just amend “differentiate” to “differentiate as matter of patent law”.  If there are differences, why are such not ‘obvious’ as a matter of patent law?  What is/was ‘obvious’ to you as an EE is not necessarily obvious at law. If there are no differences, you may have to fold the tent and speak with the partner. 

You might want to consider spending some personal free time (don’t expect stuff to get handed to you on client’s time) perusing a file history or two of applications in the appropriate art unit prosecuted by reputable firms.  Get a feeling of the ‘gist’ of R111 Replies, how they are teed-up.  Sometimes it formulaic. 
Best of luck.  Don’t get discouraged.  Many have been there and survived – ultimately thrived.

 on: 10-19-17 at 07:49 pm 
Started by EchoMike - Last post by EchoMike
Thank you MYK.

With my first case, I was able to find distinct differences. It's a method of modeling sound data, and has some really complex content in the specifications. The things that weren't complex, were written in far too vague of language, including the claims. The attorney training me asked me to write up a summary of what each of the 3 references were, how they worked etc., then do the same for our application. That took me two weeks. They were very complex topics I was not familiar with, but I feel I succeeded in pointing out key differences that others had failed to see (this is OA3 for reference). We had an interview with the Examiner last week. It lasted about 10 minutes and 8 of those minutes was the attorney buttering up the Examiner! The Examiner admitted that he was overstating one of the references, but his problem was that our claim language was simply too broad! So, the attorney told me to write some proposed amendments to the claims. I ran all this by the attorney that actually wrote the case nearly 4 years ago, and he agreed this was a really hard case for a new employee. He said that we should have an interview with the inventors to clear up these few key topics I found that weren't gaining traction with the Examiner because the specs don't support our claims in specific enough language. That was a week ago, and even though I drafted the synopsis email to the inventor, I haven't heard back from the attorney as to what the next steps are. (I am not allowed to email inventors or Examiners at this stage.)

Anyhow, I apologize if it seems like open ended whining. I think I'm just needing to get used to an entirely different culture. I've worked mostly in operational environments where clear, and prompt communication was key. I always had good training, and if I had questions there was always someone to ask. You were also never left to do anything important by yourself until you proved you had the skill, which I always quick to establish. So, I think I'm just a bit stressed by the freedom I have!

The whole reason I left that work environment though and earned my degree in EE was that I wanted to get away from the high stakes, multi-tasking roles and enjoy having a clear and singular focus (if only for a few days or less), working on projects, or something like what I imagined the Patent agent job to be. Maybe I'm experiencing the growing pains of that transition, but I agree this is a place on the "see if they can hack it" end of the spectrum! They're friendly and insightful when they do offer help, it's just difficult to pin anyone down!

Due to the lack of dialogue, I'm concerned that I may not pick up on the job specific language very quickly, which is why I was glad to find this forum, and am considering jumping into the Agent exam prep. Do you think that would be wise?

Also I must need lots of validation and feedback! Warm hugs are great too!

 on: 10-19-17 at 07:38 pm 
Started by dab2d - Last post by NJ Patent1
fewyears: No “because” whatsoever (untimely, results not tied to a feature of the claim(s), didn’t wait for Simon says)?  IMO apparent outrageous violation of the APA!  Dab’s situation is a bit different.  A simple “because Declarant does not testify to facts based on personal knowledge, the Declaration carries no weight (or, better, will not be considered) would IMO legally suffice.  I don’t agree that dab “shouldn’t” have to refile the dec.  IMO the Examiner has  a nitpicking, formalistic, but IMO legally defensible evidentiary argument for ignoring the dec.  IMO it is not whether the FRE strictly applies, rather whether basic rules of “witness” competency and evidentiary foundation apply. 

 on: 10-19-17 at 07:05 pm 
Started by EchoMike - Last post by MYK
Training varies from firm to firm. It sounds like the one you've ended up at is on the "see if they can hack it" end of the spectrum.

Do you understand that the goal is to differentiate your client's application from the references?  Is it just that you're not finding any differences?  Is EVERYTHING disclosed, right down to the smallest comment that your client made in the application?  Maybe the references are "good" and your client is going to have to give up on that application.

 on: 10-19-17 at 06:41 pm 
Started by Kakmapob - Last post by MYK
Unlikely, as this would probably be considered a "method for organizing human activities" which some courts have held not to be patentable, and which the USPTO is now usually rejecting.  But if it is something beyond mere mental steps carried out by an individual, then perhaps.  There's no statutory basis for denying it, just judicial diktat.

 on: 10-19-17 at 06:36 pm 
Started by 1099 - Last post by NJ Patent1
If I understand your situation, you are contracting with a law firm for “piece work” on a flat fee basis.  Who’s flat fee?  Yours?  Firms?  Both?  If you are any good (and if not who wants you in this situation?), 2.5 hrs to review a Reply to an OA seems like a lot unless it is truly a complicated case (4+ substantive rejections).  The 2.5 (every case or just this one?) may be just the firm’s expected margin on every case .  But I have trouble with a high volume flat fee firm really worrying that much about “quality” to spend more than 1 – 1.5 reviewing.  Sorry mate, to quote the Untouchables; “what are you [really] prepared to do about it?”

 on: 10-19-17 at 05:55 pm 
Started by dab2d - Last post by NJ Patent1
By “trade name”, I assume you mean “known in the ‘aircraft engine trade’ as”, not as a TM or, absent some consortium, designation of source used in trade / commerce.  IMO, the answer lies in the last paragraph of the link you posted.  Is the structure denoted “V-170 aircraft engine” frozen in time, immutable and instantly recognizable to the PHOSITA so that the metes and bounds (and compliance with written description) can be ascertained with requisite certainty?  If so, something like “configured to be received by the intake port of a V-1710 engine” ought to be OK IMO (due note of problems with adapted to, configured to, etc taken).

As a “footnote”, is there another albeit more time consuming but more secure way to draft the claim?  Could you lawfully “cop” a diagram of the cylinder head? 

 on: 10-19-17 at 05:49 pm 
Started by EchoMike - Last post by EchoMike

Here's the run down:

I recently graduated from college with a B.S. in Electrical Engineering. This is after 6 years in the Air Force, and 5 years in the Energy business.  I accepted an opportunity to work as a Patent Agent for a reputable law firm (small, I guess, 5 partners and about 35 employees total).

I really had no idea what to expect of this job, and it seems to be one of those jobs you can only learn by doing. I took this job because I've got some financial flexibility to get started, and there appear to be many perks over the corporate engineering culture I could go back to that may make the start up pains worth while. Also, one of the founders/partners is a family friend who I respect a great deal (though we're not terribly close), so when he made me the offer I was honored and felt that I may be able to be of service to his growing business.

That said, I've been at this a month. In two months my training period will end, and my pay will go to poverty level wages if I can not crank out 6 or more office actions per month.

Currently, I can only consider myself a technical analyst. The firm wants me to test for my registration number within one year. They have me analyzing, and preparing complete responses to OA's, then waiting for attorney review and sign off.

The problem: No one talks to new employees! On day one I was given a 30 minute talk with a basic run down of how to go about breaking down an OA, handed a big folder with my first case and sent off to my work space. Since then, after one month, I've had about 60 minutes worth of feedback and instruction from my "trainer" and done my best to pick up as many other nuances by bugging other agents and paralegals. Since no one else is really familiar with the case I was handed they can't take the time to get familiar with it and then offer me any real help, they can only offer anecdotes based on their prior experiences, which are nice, but limited in helpfulness.

The Questions: Is this typical for new agents? Sort of a sink-or-swim approach. Do I just need to be more patient with the attorneys since they're so busy and their time is clearly way more valuable than mine? 

Does anyone know of useful training resources? Books? Websites? I just discovered this forum and it does seem helpful! (although there are a lot of people that appear to hate this line of work warning engineers from making this career choice!) ;)

Also, would it be helpful to just jump into the PLI training for the Patent Agent Exam? Would I pick up anything of value to improve my Patent vernacular, understanding of procedures, etc. etc. that could make responding to these OA's a bit more clear?

Honestly though, I would have to kick down someones door to get any more training than I'm currently receiving. Over email the attorneys will not respond to open ended questions with more than a 3 word answer, if they respond at all. I come in everyday, analyze the hell out of the same two cases and wait around for feedback with no clue whether I'm doing my job right or not! So frustrating!

Thank you!

 on: 10-19-17 at 04:26 pm 
Started by dab2d - Last post by fewyearsin
This is one of many frustrating things dealing with Office personnel who are untrained in law or legal thinking.  Many Examiners believe, or are taught, that it is either Yes or No.  Whereas, in this case, it is more of a balance.  Based on the information in the Declaration, and the prior art reviewed by the Examiner, what is the most likely outcome?  Instead, the Examiner sees a "deficiency" in the Declaration, and declares it void.

The worst I ever saw was an Examiner's supervisor, during an interview, saying that "he would not consider" our evidence of unexpected results.  Not "they are not persuasive," which we could have handled and at least responded to, but "the examiner refuses to consider the evidence" is really hard to explain to clients, and is not the law.  But the supervisor couldn't understand anything other than (1) Yes, I'll consider them and allow the claims, or (2) No, I won't consider them so that I can maintain the rejection.

Like I said, frustrating.

In your case, have you tried calling the Examiner and seeing what language or format he would like to see?  I know you shouldn't have to refile the Declaration, but it may be your only/best recourse.

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