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 on: 07-18-18 at 04:06 pm 
Started by jeff.oneill - Last post by RecoveringEngineer
I use a mac.
The only short-cut I would suggest is right-click on the file and click "open."
This will bypass the annoyance of the systems preferences steps.

Be thankful that chrome works for it now.
You used to have to use safari or firefox only.

 on: 07-18-18 at 04:04 pm 
Started by RecoveringEngineer - Last post by RecoveringEngineer
Hey all,

I have a few matters in which I am searching for foreign patent practitioners for both the PCT national phase as well as a currently pending application in Mexico. These are my first matters that have arisen that deal with foreign filings and not quite certain how to go about finding a foreign practitioner.

How/Where do you search for foreign practitioners to assist in these matters?
I believe I will potentially need translations and practitioners to assist in these filings.


 on: 07-18-18 at 01:44 pm 
Started by memekit - Last post by memekit
If the effective serum concentration is 0.5 uM... one could achieve an effective serum concentration by manipulating ANY wt% to achieve this is why I would think the serum concentration is the gold standard claim, not the wt%.  So, why is wt% used in claims?

 on: 07-18-18 at 12:00 pm 
Started by Rabid Levity - Last post by lazyexaminer
It's also really easy to write identical-scope claims in the same patent.

1. X
  2. X + Y
    3. X + Y + Z
4. Y
  5. Y + Z
    6. Y + Z + X (same as claim 3!)

Yeah I recently had a parent and child where the parent was basically your 1-3 and the CON was your 4-6. They just added a really minor thing to YZX to get rid of that problem.

Back to the the Office at least, duplicate claims result in an objection of only one claim after the other is allowed, MPEP 706.03(k), basically saying that the problem is in the duplicate, not in the original...can you safely extend that reasoning to litigation? Who knows?

 on: 07-18-18 at 11:51 am 
Started by Rabid Levity - Last post by Robert K S
The OP clearly says the two claims are in the same patent.

Whoops.  I must have been thrown off by the later sentence that said "if we obtain these patents" which made me think the identical claims were in two different patents.  This obviates any double patenting issues.

It's also really easy to write identical-scope claims in the same patent.

1. X
  2. X + Y
    3. X + Y + Z
4. Y
  5. Y + Z
    6. Y + Z + X (same as claim 3!)

I have also prosecuted applications drafted by others where the same dependent claim came twice in a row:

3. X + Y + Z
4. X + Y + Z

Yikes.  Failure to proof.

 on: 07-18-18 at 11:50 am 
Started by Tabo - Last post by still_learnin
the examiner simply finds a few references that seem to - in combination - have the elements of the main claim and then issues a rejection under 35 USC 103. Upon closer inspection, the elements supposedly found in the cited references are either not there at all, or there in a kind of forced interpretation, or the examiner wrongly uses "official notice", or he just ignores certain elements that he can't find anywhere. There is no particular reason for the combinations, but the examiner makes up something that sounds plausible.
In the last OA of this type, I argued with the following headers:

In general
Conclusory reasons for combining references
Official notice
Claim features missing in references
Dependent claims

I filled out these sections with case law and an argument of the specifics. This type of 103 rejection is quite common, and I am wondering what the optimal approach is. Any better ways of dealing with this kind of thing? Any other section headings to use to make this more convincing?

I don't think there is a silver bullet or magic way of organizing a response that, in and of itself, will convince an Examiner. But I do have a few comments on your strategy.

First, in my experience, "missing features" is by far the most likely argument to persuade the Examiner (assuming you have the facts to support it). So I would make that argument the centerpiece of your response.

When Applicants talk about "missing features," it's often because the Examiner is interpreting the claim more broadly than the Applicant. You allude to this with your reference to "forced interpretation." In such cases, I make this point explicit, and point to facts that show why the Examiner's interpretation is unreasonably broad. BTW, kudos to you for picking up on this, many practitioners have no idea that claim construction is at the heart of the disagreement. 

If I find the Examiner's motivation/rationale is deficient, then I argue that next. It's important to address the Examiner's specific assertions. You say there's no "particular reason" for the combination, yet Examiner's rationale is "plausible." I take this to mean that the Examiner did not point to a teaching in the references as a motivation/rationale, and instead used one of the "generic" rationales discussed in KSR and listed in MPEP 2141.3, e.g., simple substitution, predictable results, etc.

I generally argue Official Notice only when it's clear that the Examiner relied on it. Which usually means the magic words "Official Notice" but sometimes when the words "conventional" or "well known" are used to describe a feature. I know other practitioners who always argue Official Notice after arguing the references don't teach a particular claimed feature, i.e., since the references clearly don't teach the feature, the Examiner must have relied on Official Notice (though the text of the Office Action itself doesn't suggest Official Notice).

Finally, IMHO, "hindsight" is rarely persuasive. It works when you can actually point to a portion of your spec that the Examiner has used for his motivation/rationale to combine. Otherwise, I view hindsight as more of a conclusion you reach after showing (through your arguments) that the Examiner's rationale is faulty. IOW, since the Examiner's rationale is deficient, hindsight is the only other way the Examiner could have reached the conclusion of obviousness.

I too put dependent claims last.

 on: 07-18-18 at 11:45 am 
Started by Rabid Levity - Last post by lazyexaminer
The OP clearly says the two claims are in the same patent.

The OP also uses the terminology "identical in scope" rather than just "identical," so as noted above I would also leave them alone if they have different wording (and thus any possibility, no matter how remote, of different scope).

 on: 07-18-18 at 11:41 am 
Started by Rabid Levity - Last post by Robert K S
There is no reason (benefit) to do anything about it.

Speculating here, but if an adverse litigant wanted to bust these patents and discovered that the patentholder knew about the double patenting issue and did nothing about it, it's possible they might try to put forward some kind of unclean hands/inequitable conduct theory.  It's a weak theory unless the two patents end up expiring different dates or are reassigned/licensed apart from each other, at which point the legislative/judicial concerns that surround the double patenting doctrine really start to kick in.  Should it be successful, the argument could render unenforceable both patents in their totality, which is kind of the worst case scenario for the patentholder.  I'm not sure what mechanism would be the appropriate one for canceling the claim if not a certificate of correction (reissue? reexam?) but I imagine there is going to be some unwanted cost involved.

I would bet that duplicate dependent claims are prevalent in lines of continuation applications where an independent claim was ultimately not allowed but all or many of its dependent claims were, and, rather than paying a lot of excess independent claims fees with the first application, continuations were filed to pick up the various other allowable dependent claims as independent claims.  Whenever I have a situation like this I have to make a big ol' chart mapping the original allowed claims to the continuation claims in order to avoid duplicates in the continuation.  It's near impossible to avoid duplicating claims unless this is done carefully.  A claim comparison software tool that would check for duplicate claims would be a big help in drafting continuation claim sets in these scenarios.

 on: 07-18-18 at 11:28 am 
Started by Rabid Levity - Last post by EvilLost
I also agree with what you say in theory. There is no reason (benefit) to do anything about it.

One question:  Are the claims identical "in scope" only or identical "in wording"? If they are identical in scope, but not in wording, I definitely would NOT disclaim either claim. If the wording is different, then it is possible to be interpreted differently in litigation, resulting in two (very similar but different) claims.

 on: 07-18-18 at 10:54 am 
Started by jeff.oneill - Last post by mersenne
I use Private PAIR on both Windows and Macs (my Windows machine is actually a VM on a Mac!).  My experience is similar: Mac takes more fooling around and more time.  Sometimes I have to try to start PAIR twice.

I think you could turn off the "Unknown Developer" security thing, but it's probably not worth the overall reduction in security.  It'd be nice if there was a way to pre-approve that Java app, but I don't know how to do it.

If you need Windows for any other reason (Word, Excel) then a VM (Parallels, VMWare or even VirtualBox) works really well to give you a Mac and Windows on one machine.  The Windows VM can look like another desktop that you can swipe to, or Windows app windows can show up alongside Mac windows.  In the latter case, you could probably run Chrome under Windows and use that to connect to PAIR.  Cut & Paste between VMs works pretty well, too.

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