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 31 
 on: 05-19-17 at 01:26 pm 
Started by midpatent - Last post by smgsmc
I agree with bluerogue - use respective to clarify, not to avoid writing a wordier claim.  For your specific example, I would do something like the following:

....comprising:
a plurality of rooms;
a plurality of objects, each one of the plurality of objects located in a corresponding one of the plurality of rooms; and
data collected from the plurality of objects.

In either a wherein clause in that claim or in subsequent dependent claims, I might use "respective" to indicate the relationship of a particular item of data to a particular one of the objects.  For example, wherein each item of data is collected from a respective one of the plurality of objects (I work in the mechanical arts, so referring to a "plurality of data" does not make sense to me).  Without the "respective", a potentially valid interpretation might be that all of the data comes from one particular object.

I also avoid respective.  From an infringement perspective, don't positively recite the rooms and the objects, if you don't have to.  Otherwise, one or more parties supplies the rooms, one or more parties supplies the objects, and one or more parties collects the data.  A nightmare over who to sue for infringement.

To avoid confusion over "data" in this instance, I would use "dataset"; something along the lines of:

a plurality of datasets, wherein:
  each specific dataset in the plurality of datasets is collected from a corresponding specific object in a plurality of objects,
  and
  each specific object in the plurality of objects is located in a corresponding specific room in a plurality of rooms.

Your spec will need to spell out what "corresponding" means.  There may need to be further claim language refinement, depending on the type of correspondence allowed (e.g., one-to-one, many-to-one, one-to-many).

 32 
 on: 05-19-17 at 10:54 am 
Started by Rheo - Last post by Dazed-n-confused
Do you have good (documentary) evidence of what Mr. Recalcitrant's specific contribution to the invention was, and if so, can you (re)draft the claims around him?

Of course, this will only work if his contribution was subsidiary to the main invention.

 33 
 on: 05-19-17 at 09:59 am 
Started by iplawyer - Last post by iplawyer

If the reasoning in the Board decision is more convoluted the analysis gets harder. Say, if the Board said X doesn't have A, but also Y doesn't have C either, and now the requester provides X+Z as mentioned above. You may have an SNQ, there's a new teaching as to C, which was important to patentability, but that doesn't necessarily mean there should be a rejection. You still have the issue that the examiner is contradicting the Board decision re X. Like I said, I wouldn't find that binding, but would have to have a good reason not to follow it, and a good reason would likely not be mere disagreement. I'm not certain if you have a rejection yet or just an order. Orders usually are followed by rejections but not always.



This is more analogous to the current situation.  Thank you for your insight.

 34 
 on: 05-19-17 at 09:29 am 
Started by midpatent - Last post by JV
I agree with bluerogue - use respective to clarify, not to avoid writing a wordier claim.  For your specific example, I would do something like the following:

....comprising:
a plurality of rooms;
a plurality of objects, each one of the plurality of objects located in a corresponding one of the plurality of rooms; and
data collected from the plurality of objects.

In either a wherein clause in that claim or in subsequent dependent claims, I might use "respective" to indicate the relationship of a particular item of data to a particular one of the objects.  For example, wherein each item of data is collected from a respective one of the plurality of objects (I work in the mechanical arts, so referring to a "plurality of data" does not make sense to me).  Without the "respective", a potentially valid interpretation might be that all of the data comes from one particular object.

 35 
 on: 05-19-17 at 07:51 am 
Started by iplawyer - Last post by lazyexaminer
You might want to see In Re Portola Packaging, where the issue was:

"...Portola asserts that the reexamination statute, in light of its legislative history, does not permit rejections based solely on prior art that was before the PTO in an earlier examination."

FYI Portola was overruled by statute. MPEP 2258.01 has more discussion.

 36 
 on: 05-19-17 at 07:31 am 
Started by iplawyer - Last post by abc123
You might want to see In Re Portola Packaging, where the issue was:

"...Portola asserts that the reexamination statute, in light of its legislative history, does not permit rejections based solely on prior art that was before the PTO in an earlier examination."

 37 
 on: 05-19-17 at 01:35 am 
Started by Rheo - Last post by bluerogue
It's messy, and RUN seems to be the best advice here. 

Look to MPEP 402.10 and 409 for how to deal with some of this.

Edit: More specifically 409.03 provides for when an inventor is unwilling to join an application.

 38 
 on: 05-19-17 at 01:06 am 
Started by Rheo - Last post by Rheo
The advice to RUN is good advice, but I have relationships with intermediary attorneys in this situation.

The inventors have not filed declarations (yet). The situation is that one inventor died, two inventors are in agreement, and one inventor is not in agreement and is just trying to obstruct and block for whatever reason.

I see that there are ways to become an applicant with "sufficient proprietary interest" (e.g. 37 CFR 1.46), and maybe one of the inventors who wants a patent can be named applicant in that way. The sole applicant could then easily give and revoke powers of attorney. A substitute declaration could then be filed for the recalcitrant inventor.

Does anyone have any experience with this kind of thing?

 39 
 on: 05-18-17 at 07:59 pm 
Started by iplawyer - Last post by lazyexaminer
The case I mentioned earlier was In re Borkowski, 505 F.2d 713 (CCPA 1974).

For me, it would largely depend on why the Board came to its ultimate decision that the claims were patentable. Generally we look to reasons for allowance as guidance, if they are adequately written, but here we just have a Board decision and they don't always focus on that. Say the claim is ABC, and in the IPR the petitioner said X taught AB and Y taught C. The Board said no, X doesn't teach A, so the claim is patentable. Trying to redo it now with X+Z, with X teaching AB and Z teaching C would not, IMO, be an SNQ, because there is no new teaching that was not present in the IPR. The IPR already had C with a perfectly fine reference, so providing a new reference for that adds nothing. It's just trying to redo X.

If the reasoning in the Board decision is more convoluted the analysis gets harder. Say, if the Board said X doesn't have A, but also Y doesn't have C either, and now the requester provides X+Z as mentioned above. You may have an SNQ, there's a new teaching as to C, which was important to patentability, but that doesn't necessarily mean there should be a rejection. You still have the issue that the examiner is contradicting the Board decision re X. Like I said, I wouldn't find that binding, but would have to have a good reason not to follow it, and a good reason would likely not be mere disagreement. I'm not certain if you have a rejection yet or just an order. Orders usually are followed by rejections but not always.

It's also possible the examiner missed the Board decision. We are supposed to search for them, but things happen. Or sometimes the requester cited it but took things out of context and the examiner didn't thoroughly read it to catch it. If it's not clearly mentioned in the record then it would make sense to provide it and argue that it is persuasive authority, and why nothing in the reexam record changes that. 

 40 
 on: 05-18-17 at 07:56 pm 
Started by Rheo - Last post by smgsmc
Did all of the inventors execute assignments?  If so, were they all assigned  to the same entity?

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