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 on: 03-27-17 at 10:13 am 
Started by shivaprem - Last post by jothya
Not sure why, but where I am, "embodiment" is taboo and "example" is all the rage.

Taboo by whom?  In-house counsel?   "Embodiment" and "example" are not interchangeable.

An in-house guy for a client handles a lot of the European prosecution work.  He prefers example, and to avoid embodiment.  If I remember his reasoning correctly, it is because EPO may interpret an embodiment as only including the elements associated with that embodiment and not another embodiment, which can make claim amendments difficult if the examiner says that there is no explicit connection between the two embodiments that would allow the elements from one to be incorporated into the other.

 on: 03-27-17 at 09:36 am 
Started by dcb942 - Last post by PatentPros482
"masters in computer science or EE"

There was a thread last year titled, "Is a minor worth it?"  In it, a recruiter said that applicants having a BSEE without an MSEE are favored over ones with an MSEE without a BSEE.  I didn't completely understand the rationale, but it's worth noting. 

 on: 03-26-17 at 11:14 pm 
Started by shivaprem - Last post by MYK
USPTO policy is very explicit that you are allowed to use copyrighted images from prior art patents.  AFAIK the policy has not been tested in court, however.  Quotes would fall under "fair use" even if someone were to claim copyright on them.

There is a fairly famous pair of hands that has been getting reused in drawings for years.


 on: 03-26-17 at 03:46 pm 
Started by Tabo - Last post by Weng Tianxiang
The rules say you can you use the parent's declaration for the CIP.

Where is the rule?


 on: 03-26-17 at 02:31 pm 
Started by Rheo - Last post by smgsmc
Never did it for a 112 rejection, but I've had good success with declarations for responding to 102 and 103 rejections.  My technical arguments were first dismissed as "mere attorney arguments".  I then recast the arguments in a formal declaration signed by the inventor, and the Examiner backed off.  A couple of friendly Examiners I chatted with told me that a declaration cannot be dismissed by mere hand waving:  they either have to accept it or come up with a technical analysis as to why the declaration is incorrect.  In most instances, the Examiner won't have the technical horsepower to overcome a declaration.  Maybe worth a shot before going to appeal since the OA is non-final.

 on: 03-26-17 at 10:12 am 
Started by Gr|ever - Last post by Gr|ever
Wow, you were all most helpful. Thank you so much! I appreciate the guidance!

 on: 03-26-17 at 10:03 am 
Started by dcb942 - Last post by midwestengineer
So If I were to get my masters in computer science or EE with a decent GPA would that change things at all?

I would suspect no.  Most screening robots would see your low UG GPA and screen you out before anyone would see your decent graduate GPA.

Again, I think your best bet would be to attempt to develop connections that will get your resume to decision makers without any screening before hand.  Law firms are very conservative and are not looking to hire outliers.  Firms want employees that they can sell to clients without having to explain why the employee is good.  This means high demand degree with obviously good grades.  Your grades and degree make you an outlier which would require significant explanation to clients.

 on: 03-26-17 at 07:34 am 
Started by Rheo - Last post by Rheo
The examiner issued a 112 rejection because a described arrangement would supposedly not be understandable by a person with ordinary skill in the art. She is also getting extremely picky about anything she can in terms of new objections and new 112 rejections for the original material as the amended claims get closer to a patentable form, but I guess that is a different can of worms.

Any pursuasive arguments that can counteract this rejection? Anything I can do before the inevitable appeal? I don't particularly want to go to the time and expense of having an objective engineer file an affidavit that this is not all that complex. And I assume from the examiner's past behavior that she may just ignore the affidavit.

I realize that this should just go straight to an appeal, but I have another shot for a response to a non-final rejection after an RCE, and I want to clean up this issue and other objections as much as possible with one further try before the appeal.

Yes, I already had a telephone interview with her, and we could not seem to communicate at all.

 on: 03-25-17 at 09:17 pm 
Started by shivaprem - Last post by smgsmc
When referring to my claims (in arguments) I often say "the claimed subject matter", rather than "the claimed invention".

Isn't this a bit too paranoid?  ;)  Usually one wants the invention to be defined by the claims.

 on: 03-25-17 at 07:26 pm 
Started by shivaprem - Last post by mybrainisfull
I usually try to avoid saying what the "object" (i.e. objective) of the invention is, except in broad terms (i.e. simpler, lower cost, better performing, more efficient, etc.).


I usually say:

"In one exemplary embodiment (as illustrated in Fig. __), the apparatus ...."

"In another exemplary embodiment (as illustrated in Fig. ___), the apparatus..."


When referring to my claims (in arguments) I often say "the claimed subject matter", rather than "the claimed invention".

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