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 41 
 on: 05-18-17 at 06:12 pm 
Started by mersenne - Last post by bluerogue
Not 100% sure, but I think Track One has gone off pilot and is available whenever. 

https://www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examination-program

See also this dashboard for track one stats.

https://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1007

BTW, the PTO's data dashboards provide some really good data visualization of many useful stats.  Might be worth exploring.

Edit: an outdated FAQ says that EFS will tell you if it's close to the 10k limit per year for Track One.  I don't think I've heard of anyone not getting Track One refused, but my info isn't very good here.

 42 
 on: 05-18-17 at 05:32 pm 
Started by iplawyer - Last post by iplawyer
Thank you for that well thought-out response.

I guess I'm having trouble because in the IPR Reference X was being used in combination with Reference Y. The PTAB explicitly said that Reference X does not teach Limitation 1 (and obviously there was some more stuff going on).

Now, in the reexamination, Reference X is being used in combination with Reference Z.   The Examiner is now saying that Reference X teaches Limitation 1 and Reference Z teaches other limitations, thus rendering the claim obvious.

Obviously, we plan on providing the Examiner with the PTAB's opinion regarding Reference X's failure to teach Limitation 1. I just hoped that there would be some law providing that the Examiner cannot directly contradict the PTAB's finding on the teaching of that exact limitation.

 43 
 on: 05-18-17 at 05:30 pm 
Started by mersenne - Last post by mersenne
Are any of you regular users of Track One expedited examination (not Accelerated Exam)?  I recall that there is a limit to the number of applications accepted each year, so early-in-the-year filings use up all the slots, and later people have to do without.  Is there an online way to find out if it's still possible to file a Track One application this year?

 44 
 on: 05-18-17 at 05:16 pm 
Started by iplawyer - Last post by lazyexaminer
I wouldn't say an IPR decision is binding. A CCPA case that I don't feel like searching for at the moment says something to the effect that the Office must have the flexibility to reconsider its prior decisions and should not be forced to issue invalid patents by res judicata. I believe the case I'm talking about was saying a Board decision in a parent app wasn't binding in a child app. But in any event, it is a different proceeding now. Further, the Office is not a party to an IPR so there's no collateral estoppel. I agree it should be persuasive, if I were examining it would be very persuasive. At the very least, the examiner should think that if the Board decided one way before, why are they going to change their mind? What is different?

So that brings us to, what is different? There must be something different, as the standard for ordering a reexam is substantial new question of patentability. Something has to be new compared to the completed proceeding--if the Board said Smith col. 3 line 12 doesn't teach A, the requester can't just say yes it does teach A at col. 3 line 12. You can't just say the prior proceeding was wrong. You can present new and different arguments or interpretations though. For example, the MPEP at 2242 says "a substantial new question of patentability may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. Such material new argument or interpretation may be based solely on claim scope of the patent being reexamined." So you could say "Smith teaches A on col. 12, and the Board did not even consider that section of the reference." Or "The Board said Smith did not teach A based on a flawed claim construction, really the claim should be construed in a way where it does show A because...." Or Smith teaches A, because Jones shows evidence that this widget really is an A. Etc.

So, the only way the examiner should really be bound is if there is no SNQ, if there is nothing new and different here than in the IPR. If you think that's the case, the SNQ decision, i.e. the decision ordering reexam, should be argued before the examiner and appealed. Otherwise, even if what is going on here is technically new, you can argue why the newness doesn't really change the Board's reasoning therefore the IPR decision should be persuasive. Again, if I had a contrary IPR decision I would not lightly go directly against it, though if something here is different that gives more leeway in going against it.

 45 
 on: 05-18-17 at 05:10 pm 
Started by midpatent - Last post by bluerogue
There's nothing inherently wrong with using respective.  Issues arise when it stops being clear what each is respective of.  I would avoid using it and would prefer a wordier claim rather than respective because at some point after amendments, things will get unclear, quickly.

 46 
 on: 05-18-17 at 04:29 pm 
Started by midpatent - Last post by midpatent
I have the following:
Data A collected from object A which is located in room A
Data B collected from object B which is located in room B

Can I claim
....a plurality of data collected from a plurality of objects which are located in a plurality of rooms, respectively..."

 47 
 on: 05-18-17 at 04:18 pm 
Started by iplawyer - Last post by iplawyer
Question for you all, the answer seems obvious but I'm having trouble finding support.

There was an IPR proceeding. In that proceeding the PTAB made an opinion regarding Reference X and that Reference X does not teach the limitations of a claim.  IPR is now over.

Since the IPR, a third-party requested a reexamination of the patent that was at issue in the IPR. In addition to other references, Reference X is cited in the reexam. The examiner is now trying to say that Reference X does teach those limitations.

It seems obvious that the PTABs analysis of the claim language with regard to this patent and the same cited reference should be binding (or at least extremely persuasive) on the examiner's application of that same reference to the patent claims, but I can't find any clear law or procedure to support that argument.

Help?

 48 
 on: 05-18-17 at 01:45 pm 
Started by Rabid Levity - Last post by lazyexaminer
General summary: Conditional statements get no weight in a method claim, because BRI includes instances where the condition isn't satisfied. But they can get weight in a device claim, because the structure needs to be able to handle both the condition happening or not.

Yikes, this is disturbing.  I have actually argued on appeal about a method with a conditional, where both branches of the conditional are covered in the method, should not be rejected over a reference where the condition is not even checked: (snip)

Well, my general summary was perhaps too general. The PTAB case was like yours: "do Y if X; do Z if not X." The prior art had or made obvious "do Y if X" but nothing about Z, and the PTAB said that was good enough to meet the claim. I gather if the prior art had neither it would not have been good enough, since in all instances one of them must happen.

So, my takeaway is that if you have conditional statements, best to have limitations as to both the condition occurring and not occurring, then at least one of them will have to be found in the art. I would assume that if a limitation merely recites "do Y if X" and nothing further it would not get weight, as X seems optional and instances where X does not happen are also part of the claim. That is in line with the explanation the PTAB gave.


 49 
 on: 05-18-17 at 01:16 pm 
Started by Rabid Levity - Last post by mersenne
General summary: Conditional statements get no weight in a method claim, because BRI includes instances where the condition isn't satisfied. But they can get weight in a device claim, because the structure needs to be able to handle both the condition happening or not.

Yikes, this is disturbing.  I have actually argued on appeal about a method with a conditional, where both branches of the conditional are covered in the method, should not be rejected over a reference where the condition is not even checked:

Quote from: my appeal brief
The logical structure of the relevant portion of the independent claim was explained in Applicants’ response [...] as:
A method comprising:
determining whether condition A exists;
if condition A does not exist, doing response X; and
if condition A does exist, doing response Y.
[...]
The Examiner’s statement that “claims are to be given their broadest reasonable interpretation” cannot excuse interpreting:
if condition A does not exist, doing response X
so broadly as:
always do response X.

However, looking back at the case, I see that the examiner allowed it after my appeal brief, with amendments to change "if condition A exists, doing response X" to "when condition A exists, doing response X."

I don't see a significant difference there, but would be interested if any litigators would suggest how they might attack it.

 50 
 on: 05-18-17 at 12:02 pm 
Started by Rabid Levity - Last post by bluerogue
I don't know if you're thinking of this case, Ex parte Schulhauser, precedential PTAB decision
https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulhauser%202016_04_28.pdf
General summary: Conditional statements get no weight in a method claim, because BRI includes instances where the condition isn't satisfied. But they can get weight in a device claim, because the structure needs to be able to handle both the condition happening or not.

That's exactly it.  Thanks for finding it and correcting what I thought were the facts.

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