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 31 
 on: 07-21-17 at 07:27 am 
Started by yqonline - Last post by bartmans
Having slept over it, I think my previous interpretation was wrong and that the claim indeed would be seen as possibly including an aryl ring with three different substituents.

 32 
 on: 07-21-17 at 07:22 am 
Started by samar - Last post by MYK
How did it turn out that the agent scanned the Application for filing?  Typically it is printed straight to PDF, such as from Word.  Glad to know they caught it and were able to fix it in time.
Can't speak to why they did it;  I've had to because EFS-Web gets bent out of shape over the PDF files that Word and other programs use, because "there's an embedded font! cannot validate!"  After trying five different document-to-PDF converters, including Microsoft Word's built-in save-as-PDF, two virtual-printer things, and two websites, I gave up and just scanned a printout.

Then EFS-Web bitches because it's in color, so I get to scan it again and remember to change the options from the default settings.

One time I actually had to go to 7-11 and scan it on *their* copier, because EFS-Web STILL wouldn't stop barfing.

 33 
 on: 07-21-17 at 01:42 am 
Started by samar - Last post by Lopp
It's very useful when the scanner double-feeds two pages through itself at the same time, causing one page not to be scanned, and the resulting file that you send to the USPTO is thus missing that page.

Yes, it can be useful to cover your butt.  I'm sure the practitioners frown upon it being used for any other reason than covering your butt.

Happened to one of the agents I know here.  Unfortunately for his firm, they didn't do incorporation-by-reference, so they had to re-file the application at their own expense. Fortunately, they still had time to do that and it only cost them a large-entity filing fee to make things right for the client.

How did it turn out that the agent scanned the Application for filing?  Typically it is printed straight to PDF, such as from Word.  Glad to know they caught it and were able to fix it in time.

 34 
 on: 07-21-17 at 12:08 am 
Started by TexasEE - Last post by TexasEE
I had a good experience with PRG, but this was quite a few years ago now.  It may be that they have fallen behind.  Do they still provide test practice software?  Did you make use of the software?  After I took their course, I still waited a year before taking the exam, and I spent about 3 months studying earnestly with the software just before the test.  I followed the advice I was given at the time, which was not to sit for the test until you can score 80-90% or better each time you take a simulated exam.  If you are doing well on their simulated tests and still not passing the real test, then there is something wrong with their materials.  If you didn't do the work of studying using practice tests (reading the MPEP or treatises or listening to lectures is not going to help you much), then no other prep course is going to benefit you.  PRG has the reputation of being the best one out there (or at least did back when I took it).  A lot of other patent bar prep courses have come and gone since then.

Thanks for the reply.

I spent about 6 weeks studying, including working through over 800 questions,  which is comparable to the amount of time I spent for the TX bar.  To give you an idea of how out of date the material is, there was maybe 2 questions of pre-AIA material on the test, they spend hours on it.  The study and practice test questions for AIA/Pre-AIA material are intermixed such that they cannot be broken out. 

The irony is the lecturer admits in one of the later videos that they understand the test has begun to drift towards more emphasis on AIA, but they are very coy not mention any dates during the lectures which makes it difficult to determine when the lecture was recorded. 

I also found numerous PRG questions that would simply say your answer is correct or incorrect then list an MPEP section, which is really not helpful.  The were errors such as an answer explanation that referred to a section completely unrelated to the answer or a pre-AIA reference when the question clearly was AIA related.

Their material needs to be updated and they also need to retool their approach to teach to the test.  Their course is a great over view of patent law and practices, but is not as helpful as it could be, especially for the cost.

 

 35 
 on: 07-20-17 at 08:16 pm 
Started by Patentrookie - Last post by Patentrookie
Does any case law exist for the scenario where a company decides to sell a product without the rights to the patented invention, but requires customers to sign an NDA, expecting that the NDA will prevent the patent violation from becoming public? 

 36 
 on: 07-20-17 at 05:19 pm 
Started by Rheo - Last post by iplawyer

Can anyone think of an example of a utility patent that used an aesthetic-type feature to create a functional result?


I've seen some patents issued for camouflage fabrics and clothing. One, for example, is U.S Patent 5727253 (its a method claim, but may be helpful) is concerned with lining up the design on different pieces of clothing (pants and shirt for example) so that the camouflage creates a seamless picture. Anyway, the "designs" on the fabric are obviously functional (they help conceal the user) but are arguably aesthetic, too.

 37 
 on: 07-20-17 at 04:26 pm 
Started by TexasEE - Last post by Confused Engineer
I had a good experience with PRG, but this was quite a few years ago now.  It may be that they have fallen behind.  Do they still provide test practice software?  Did you make use of the software?  After I took their course, I still waited a year before taking the exam, and I spent about 3 months studying earnestly with the software just before the test.  I followed the advice I was given at the time, which was not to sit for the test until you can score 80-90% or better each time you take a simulated exam.  If you are doing well on their simulated tests and still not passing the real test, then there is something wrong with their materials.  If you didn't do the work of studying using practice tests (reading the MPEP or treatises or listening to lectures is not going to help you much), then no other prep course is going to benefit you.  PRG has the reputation of being the best one out there (or at least did back when I took it).  A lot of other patent bar prep courses have come and gone since then.

I think PLI is regarded as the best course now. Of course it's also the most expensive (I believe).

To the OP, I used PLI in 2013 and would recommend it if you're willing to pay the $$$. When I took it you could save a lot of money by using a school email address to purchase, if that applies to you.

 38 
 on: 07-20-17 at 04:10 pm 
Started by HBTinker - Last post by Rabid Levity
So it sounds as if you (HBTinker) thought up some interesting additional embodiments based on your original invention, and added them into the CIP.  But you only added them as 3 new, dependent claims.

One thing to try would be to redraft your claim set, adding the least limiting subject matter of your 3 new, dependent claims into independent claim 1.  Let us pretend this subject matter is in your claim 16.

From there you have other options.  Your other two additional embodiments (in claims 17, 18) can remain dependent on your newly amended claim 1 (assuming these embodiments are not contradictory to the new embodiment you just added to claim 1).

Or, since you are obliged 3 independent claims, you could also make up two further new independent claims using your independent claim 1 and adding in the subject matter of 17, 18 respectively into each of them, and flesh out dependent claims for important dependent embodiments from each of the 3 independents.  The drawback to doing this is the examiner might issue a 3-way restriction, and it is hard to know in advance whether this will happen.

I second the comment about getting a patent agent or patent lawyer involved at this point, assuming you have the wherewithal to do so.


(Edit - had not seen Mersenne's intervening comment when I posted.  Mine is largely redundant of his.)


 39 
 on: 07-20-17 at 04:07 pm 
Started by HBTinker - Last post by mersenne
I haven't run into this issue, but I'd be very wary of anything affecting the issued patent.  Since you don't have SDP rejections of the three new dependent claims, couldn't you respond by re-writing those claims in independent form, including all of the limitations of the (identical to the issued patent) parent claims?

I think the only benefit to trying to get everything into a single patent would be the reduction of maintenance fees -- you don't get extra patent term, since the parent application is the earliest filing date.'

[edit to add:]

Furthermore, shouldn't your original patent cover the three new embodiments of the new dependent claims?  Is the new material really that important?

 40 
 on: 07-20-17 at 02:47 pm 
Started by HBTinker - Last post by lazyexaminer
Second bluerogue's comment. You could resolve this by changing the scope of your claims, in basically any way. This may invite obviousness type DP but a terminal disclaimer can resolve that and it sounds like you don't mind doing that.

As to your later issue, you cannot "abandon" your issued patent at this point (but see the next paragraph). If you decline to pay the first maintenance fee, which I assume you mean by renewal fee, the patent will expire, but that will not occur for about 4 years. I am actually not 100% sure whether this would resolve your rejection, as I know double patenting can occur with an expired patent, not sure if maintenance fee expiration is different...but nonetheless the rejection would remain ok for around 4 years so you'd have to try to overcome it in the meantime--I don't think it would be responsive to the rejection to just say "I will let those claims lapse later."

I would guess, if you really want to get rid of the first patent without changing the current claims, that you could get around this by filing a statutory disclaimer as to your first patent's claims. Such disclaimed claims are generally treated as if they never existed so I would assume the rejection would then be inappropriate once the first claims are disclaimed. This is not really a typical situation IMO so you should wait for additional input and/or hire a lawyer, or at least see what the examiner says about that if you plan to interview.

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