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Author Topic: Is a Model number a Trade name? If so can you use it in a Claim?  (Read 406 times)

dab2d

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So if you are using a model number of an item that was manufactured by more than one entity, uses a trademark to describe the model, and the model has been dead for years, can you use that model number in a claim.

Say you have a kit item that is designed to work on the V-1710 aircraft engine (the original engine of the P-57 Mustang), can you claim that you have a part that will fit the header of a V-1710 aircraft engine.

https://www.bitlaw.com/source/mpep/2173_05_u.html
« Last Edit: 10-19-17 at 12:38 pm by dab2d »
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NJ Patent1

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By “trade name”, I assume you mean “known in the ‘aircraft engine trade’ as”, not as a TM or, absent some consortium, designation of source used in trade / commerce.  IMO, the answer lies in the last paragraph of the link you posted.  Is the structure denoted “V-170 aircraft engine” frozen in time, immutable and instantly recognizable to the PHOSITA so that the metes and bounds (and compliance with written description) can be ascertained with requisite certainty?  If so, something like “configured to be received by the intake port of a V-1710 engine” ought to be OK IMO (due note of problems with adapted to, configured to, etc taken).

As a “footnote”, is there another albeit more time consuming but more secure way to draft the claim?  Could you lawfully “cop” a diagram of the cylinder head? 
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dab2d

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Quote
Is the structure denoted “V-170 aircraft engine” frozen in time, immutable and instantly recognizable to the PHOSITA so that the metes and bounds (and compliance with written description) can be ascertained with requisite certainty? 

Yes. there is an affidavit in the file that states that this is the case. Without considering the merits of the affidavit, the Examiner/SPE has dismissed it out of hand without any contradictory evidence stating that that they do not recognize the person making the affidavit as an expert (not required) and that the statement "to the best of their knowledge" is somehow inferior (this is the only standard that anyone can make opinion testimony with)

Quote
As a “footnote”, is there another albeit more time consuming but more secure way to draft the claim?  Could you lawfully “cop” a diagram of the cylinder head? 


I have explored this possibility
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NJ Patent1

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Dab:  Affidavit in file?  From whom?  Adversary?  In a D/C proceeding?  If not adversary, what weight should it be given, ‘expert’ or not?  Self-serving if from Applicant side.  Little if any weight should be given IMO.  Declarations and Affidavits are different beasts.  Regret I disagree that “best of knowledge” is the standard, rather personal knowledge is the standard for fact testimony.  In my view, best of knowledge is no basis to give testimony to facts and I’d appreciate it if you could correct my understanding with a cite to contrary.  Opinion (i.e. expert) testimony is a separate story.  In court it (e.g. “expert medical examiner opinon testimony”) is subject to Daubert and crossexamination scrutiny and such “expert” opinion cannot go to a question that is reserved for the fact finder (Examiner), or a matter of law (reserved for judge, although judge may receive briefs on a point of law).  AFIK Examiners have no equivalent Daubert procedure available to qualify a so-called ‘expert’.  One establishes the credibility of a Declarant in the bona fides noted by smgsmc.  IMO you didn’t get screwed.  You simply used inappropriate words in the Dec.  Just correct language and refile.  Maybe consult a treatise on evidence or evidentiary foundation. 
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dab2d

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Sorry I meant declaration under 1.132. The declaration was actually made by a completely disinterested party/adversary. The secondary reference that is used to teach the use of the model, and in fact actually uses the model number in their claims, submitted a declaration to the USPTO in the prosecution of the secondary reference. The submission of that declaration precipitated the allowance of the secondary reference. Thus the Office has already, in the same art, accepted this declaration as evidence. Since the allowance of the secondary reference, some litigation based on that reference has been made.

It is my understanding that self-interested declarations do open one up to issues in Litigation, not during the examination. If a declaration establishing a fact has been made, it is up to the office to accept it or refute it. It is not up to the Examiner to determine the trustworthiness of the testimony. They are free to research and refute the assertions made. However, a declaration made, once in evidence, must be refuted or accepted.

To add to this.... the declaration was accepted and the rejection removed. Only upon an appeal, did they reopen prosecution to now refute the declaration.   



« Last Edit: 10-20-17 at 12:27 am by dab2d »
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lazyexaminer

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I don't believe the Office is required to just accept any statement you might make in a declaration, particularly if there is no factual basis in the record for the statements.

Quote
American Academy contends that the declarations of Dr. Maryanski, submitted at various points in the course of the reexamination proceedings, establish that one of ordinary skill in the art would understand the term "user computer" to mean a computer dedicated to a single user, and not a mainframe or minicomputer. The Board upheld the examiner's determination that the declarations consisted only of Dr. Maryanski's personal opinions and did not constitute persuasive evidence in support of his conclusions.

The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate."); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) ("Opinion testimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination." (citations omitted)). Although there is "no reason why opinion evidence relating to a fact issue should not be considered by an examiner," In re Alton, 76 F.3d 1168, 1175 n. 10 (Fed. Cir. 1996), the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations, see Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294.

In re American Academy of Science Tech Center, 367 F. 3d 1359, 1367-68 (Fed. Cir. 2004) (some citations omitted).

I'm obviously not willing to opine on your situation that's pending before the Office. I do acknowledge that many examiners don't really know what they are doing re: declarations. But you also can't just declare whatever you want and it's automatically a fact until the Office finds evidence otherwise.
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NJ Patent1

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Dab:  Ok.  If I understand, a dec was submitted in a completely unrelated application to establish that the design / configuration of the combustion head of a “V-1710 aircraft engine” is so well known in the art that PHOSITA would be reasonably appraised of the metes and bounds of claim that recited “V-1710”.  The Examiner credited that dec in that unrelated application as overcoming a/all 112 issues, and the claims in that unrelated application were allowed.
 
Your instant claims also recite “V-1710” and were rejected under one or more of paras / sections of 112.  In response, you submitted the dec from that other (unrelated) application as documentary evidence (as if a journal article), not as a dec in own right from your declarant in your app, as to what PHOSITA would instantly understand “V-1710” to mean.  Stop reading this if I have it wrong.
 
In my view, there is likely no reason for the Ex to “refuse to consider” the documentary evidence you proffered.  OTOH, if “considered”, absent a precedential PTAB/BPAI/CAFC decision, IMO there is likewise no reason why the instant Ex must accept the decision of a different Ex in a different application (as much as I’d sometimes like it to be so).  I don’t see res judicata or law of the case here. 

I must respectfully disagree with the statement; “It is not up to the Examiner to determine the trustworthiness [credibility?  weight?] of the testimony.”  It is my understanding that Examiners are “finders of fact” (e.g., what a particular reference teaches).  The American Academy quote provided by lazy seems to confirm this (will read case after I log off).

IMHO, grounds for “refusal to even consider” may exist but are limited, e.g. timeliness (first proffered after final), or competency, e.g. a renowned podiatrist submitting a dec in a vascular stent application.  Otherwise, credibility, veracity, etc. are always in play.  But IMO we are still always entitled to a ”because” for “not persuasive” when evidence is considered (and dismissed).  Cheers and best of luck. 
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