Patently-O Bits and Bytes

• Bilski is coming (OCTOBER LIKELY)
  • Chief Judge Michel is quoted: "One of the most important cases pending with the [Federal Circuit] today is In re Bilski…. 'It's a very interesting case and I thought all the judges worked very hard on it,' says [Chief Judge] Michel. He adds: 'I think it will be a very significant decision. It probably will have broader scope than either In re Comiskey or In re Nuijten"
• FEES: I'm looking for the PTO fee schedule (filing fees, exra claim fees, extension fees, appeal fees, etc.) for the past decade.
• PTO Allowance Rate – depends on whether the PTO counts an RCE as an abandoned application. (which it should not…). The chart below is from a presentation by the PTO's General Counsel James Toupin. Greg A posted a link to the whole file: www.bustpatents.com/toupin.pdf.

Comments

[Roger Karp]

With the CAFC waiting till Oct to release their Bilski decision, SCOTUS will be back in session and they will be able to decide if and when they'll take up the fray as the losing side will, for sure, petition for cert.

[Malcolm Mooney]

"anybody who prosecutes with any amount of frequency can tell you that 70-90% of the rejections we get are facially bogus in one respect or another."

Liars, including you.

[Malcolm Mooney]

"You're not even an attorney, are you?"

I am an attorney, JD, so you can stop with the lame personal attacks. I suppose you are one too and that might explain the inability to "let go" in the face of a loss. I have been earnestly trying to help you by advising that you find another "poster boy" and explaining my reasons for that advisement. But you seem to be very much attached to this bad example of a "bad rejection."

Spouting worthless anecdotes about how your pending claims are being treated so unfairly by allegedly arbitrary and/or capricious Examiners who are rejecting your perfect and inarguably valid claims seems beyond childish to me.

Now if you actually produced for us all (1) a decent relatively narrow claim (2) a ridiculous, breathtakingly silly rejection of that claim, you might have an interesting story to tell.

Until then, you got squat. Literally: nothing.

Meanwhile, as I've noted before, I need only sit here and wait for the laughably invalid ISSUED claims to fall into my lap.

Don't you see the problem, John? Let me lay it out for you again: my complaints about the PTO issuing bad patents are backed up by a fat stack of crappy claims that grows all the time. We laugh at new ones here weekly. In fact, should that claim 12 discussed above get allowed we'll be laughing at that one as well. And yet, in spite of this, you are trying to tell us that the PTO needs to make it **easier** for patents to be granted? It's not going to happen. Those days are over. Thank goodness.

Find a new poster boy.

[Malcolm Mooney]

plaintiff's (i.e. applicant's) suit would be dismissed because they had not exhausted their administrative remedies.

But the suit in this case would be premised on the abuse of your client's rights by an administrative agency that is intentionally denying you a final action for the purpose of precluding intervention by a court. You've got to be more creative, JD. Think like ... an attorney. Don't let "the law" prevent you from fixing something that is "wrong."

Of course, it helps a lot if the "wrong" being remedied is palpable to ordinary people like judges.

[curious]

"for the purpose of precluding intervention by a court"

How would you prove that, Malcolm?

[JohnDarling]

"I am an attorney, JD, so you can stop with the lame personal attacks."

Your phony indignation is as amusing as most of your other posts. As you're posting anonymously, your calls for civility are rather silly to those of us who don't feel the need to hide behind a screen name. And you didn't seem to hesitant to pile on 6k's jibes at me, and my colleagues at my firm, who have never posted anything here. So you can spare me the pity pleas. The only reason you're not the number one gutless, anonymous wonder on this site is the presence of 6k. When he gets to his monstrous firm, and his true identity is revealed by those who have to suffer his nonsense while trying to teach him something, you'll assume the top spot. Congratulations.

"Now if you actually produced for us all (1) a decent relatively narrow claim (2) a ridiculous, breathtakingly silly rejection of that claim, you might have an interesting story to tell."

That's not what you asked for. I quoted your request verbatim. Having given you what you asked for, you do what you usually do, move the goal posts.

Your predictability is one of your most endearing characteristics.

"And yet, in spite of this, you are trying to tell us that the PTO needs to make it **easier** for patents to be granted?"

No. That's not what I'm telling you. That's what your poor reading comprehension is telling you I'm saying.

If you bothered to read any of my posts, or anything for that matter before spouting off, you would understand that what I'm asking the PTO to do is to follow the law. Read the application. Search the prior art. Reach an objective, legally sound conclusion based on the evidence. If that conclusion is that the claims are not patentable, establish a prima facie case, consider the applicant's response, and if unpersuaded then allow the Board to review the decision, and if the Board reverses, issue the patent.

Pretty simple. Maybe too simple for a legal mastermind like you.

"But the suit in this case would be premised on the abuse of your client's rights by an administrative agency that is intentionally denying you a final action for the purpose of precluding intervention by a court. You've got to be more creative, JD. Think like ... an attorney. Don't let 'the law' prevent you from fixing something that is 'wrong.'"

As I asked 6k, cite me one case.

So why don't you give all of the rest of us the benefit of your tremendous wisdom and tell us what you would do in the face of the old appeal-reopen-appeal-reopen-appeal-reopen game that is being played all over the PTO. But not in your super narrow little technical niche of protein fragments or whatever molecules you supposedly prosecute.

Oh, that's right, I keep forgetting. You're the only attorney in the whole patent bar that represents clients that have actually invented anything. All of your applications, with their relatively narrow claims, sail right through to first action allowance.

amirite?

[Malcolm Mooney]

"for the purpose of precluding intervention by a court"

How would you prove that, Malcolm?"

With circumstantial evidence, unless you find something better during discovery. How does one ever "prove" intent?

[Malcolm Mooney]

"As I asked 6k, cite me one case."

Let me get this straight. This alleged application is the "poster boy" for PTO malfeasance but you believe that there is nothing you can do about it without a favorable "case" directly on point?

How about you cite me a case with the *identical* facts where a District Court held that the case was not ripe for adjudication? I might feel some pity for this client then. But probably not.

As I and other commenters above have noted, this "poster boy" of yours has been behaving strangely. Are you sure you can't find a better one?

"what you would do in the face of the old appeal-reopen-appeal-reopen-appeal-reopen game that is being played all over the PTO"

It would depend on the specific facts of the case, JD. For the billionth time: that's my point. You assert that this "triple appeal-reopen game" is being played all over the PTO and that it's really a terrible thing. But then you can only provide one example of "the game" being played and the example frankly sxcks for proving that anyone should be bothered at all by what's happening.

"12. An Automated Teller Machine (ATM) that operates to conduct at least one financial transaction responsive to at least one mark-up language document."

This claim speaks for itself. It says: "Kill me now and mock the dumbxss applicant for wasting everyone's time."

[anon]

I don't have the time to read through this whole exchange (although it looks interesting), but one point I do note is that it's hard to take people too seriously who don't post under their real name (Mooney, E6k). Obviously I am being hypocritical right now, but I don't want all you bozos googling me today. But if you really stand by your point, post under your name and show everyone who you really are.

[JCD]

This conversation has become rather silly. OA quality is incredibly poor; every prosecutor that comments seems to concur. Why people that do not prosecute seem to want to argue this point is beyond me.

Yes, "bad" patents occasionally make it through the system. However, the issuance of these patents does not necessarily mean it is easy to obtain a patent, or that too many patents are being granted. Poor examination can cause both bad rejections and bad allowances.

[John prosecutor]

Dennis, quick post another article. Your blogger children can no longer play well with each other.

[e6k]

"They have ZERO evidence that the examiner was justified in refusing to accept the 131 Dec"

I cite the emails and the slideshow not having a date. Keep in mind the paper accompanying them claimed they had the dates "removed". Now why on earth would they remove the dates from evidence, or, if they didn't know it was going to be evidence, from a random corporate slideshow? Where's the inventor's notebooks? I know I had to keep one in the corporate world even though I wrote very little in it and neglected it horribly.

[e6k]

"The Action's mere assertions do not constitute the required prior art evidence of record and thus lack substantial evidence support."

That is part of the appellant's challenge. That's the key sentence JD. Without that sentence they fail. Luckily for them, they put it in.

The board specifically indicates that the challenge, not the act of challenging, indicates that the facts notices were not capable of such instant and unquestionable demonstration.

Read it again:

"the appellants' challenge to the official notice indicates that the facts officially noticed are not capable of such instant and unquestionable demonstration as to defy dispute."

It does not say "the appellants having challenged the official notice indicates x" which would be what is required to have had them mean what you believe them to mean. They say that "the appellant's challenge indicates x". This is english. Welcome to it.

It is quite clear that the appellants included the portions about substantial evidence on purpose.

[e6k]

My bad, that was LB I was responding to, I figured it must have been JD.

[e6k]

"Cite me one case where a patent applicant got a USDC judge to issue an injunction against the PTO to prevent the PTO from re-opening prosecution. Just one. And make sure you Sheperdize it."

So far as I know, they can't do that. But they might could. Either way, you know what your remedies are. If they are insufficient, lobby congress.

[Malcolm Mooney]

"I do note is that it's hard to take people too seriously who don't post under their real name (Mooney, E6k)"

Isn't it past your bedtime, Ray?

[Malcolm Mooney]

"Yes, "bad" patents occasionally make it through the system. However, the issuance of these patents does not necessarily mean it is easy to obtain a patent, or that too many patents are being granted."

Careful. At the very least, the issuance of a claim that one of ordinary skill (or less) can tank in a minute or two means that the PTO has issued at least one patent too many. And it's more than "occasionally". It is a regular occurance and has been for nearly a quarter of a century now. KSR is an extremely powerful tool for crushing the worst crud. There really isn't any excuse anymore. Hopefully the CAFC will deliver the goods with Bilski so the clear-cutting can begin in earnest.

[Erez Gur]

JAOI 12 sep 11:40

There are very few dramatic and unexpected "out of the blue" inventions. Most inventions are clever new combinations of old elements used to solve new problems.

Under a strict TSM or Europe's PSA, you have a reasonably objective manner of determining what is not-obvious when you have the relevant art before you. These methods ensure that when the problem solved is new, the claims can't be rejected using hindsight. Both of these methods prevent citation of irrelevant art.

Under the current implementation of KSR you can't know what your chances are for getting a patent on a novel idea, so you can't rationally decide whether to publish an enabling description or keep your inventions secret until marketing.

Under the current implementation of KSR, once you get a silly Office Action, you can't judge what your chance is for overcoming the rejection with a reasonable budget within a reasonable time. It is true that large companies can put the USPTO on the "appeal/withdraw" merry-go-round, but for small companies it is rarely worth it.

[Old European]

Was anybody present at AIPPI Boston, to observe the workshop discussion about the non-obviousness of the hypothetical claim: "A squash racquets ball, coloured blue"? Patentable in Europe under PSA but probably not in the USA, even under superseded TSM. Is the blue colour a solution to an objective technical problem? Interesting subject for debate on 101, as well as 103.

[anon]

"Under a strict TSM or Europe's PSA, you have a reasonably objective manner of determining what is not-obvious when you have the relevant art before you. These methods ensure that when the problem solved is new, the claims can't be rejected using hindsight. Both of these methods prevent citation of irrelevant art."

Regardless of whether you think TSM is better than KSR, these are the same examiners we used to have, citing the same references they used to cite. I've looked at hundreds of post-KSR office actions, and I have yet to see an examiner who gets KSR. Most cite KSR, but are really applying the old motivation test of TSM.

[MaxDrei]

One reason for this unchanged TSM behaviour in the PTO is that PTO Examiners are not st_p_d; they read EPO prosecution files online and get trilaterally coached too. They discover that the EPO's version of TSM works very well, sifting in double-quick time the gold nuggets from the dross claims, and they want it too. Shame that nobody outside EPO circles has yet grasped the core "specific technical purpose" of EPO-PSA, absent from CAFC-TSM, and key to making PSA effective. Of course, there's also the dichotomy between the PTO's "structure" focussed search database and the EPO's "industry" arranged search database, which handicaps the PTO Examiner's ability to find the close art that the EPO Exr typically finds. But that's another story.

[JohnDarling]

"Careful. At the very least, the issuance of a claim that one of ordinary skill (or less) can tank in a minute or two means that the PTO has issued at least one patent too many."

So how is it that one of ordinary skill in the art, or less, can tank the claim in a minute or two, but the PTO can't establish a prima facie case after 5 years?

"The board specifically indicates that the challenge, not the act of challenging, indicates that the facts notices were not capable of such instant and unquestionable demonstration."

"It does not say 'the appellants having challenged the official notice indicates x' which would be what is required to have had them mean what you believe them to mean. They say that 'the appellant's challenge indicates x'. This is english. Welcome to it."

You're beyond ridiculous. The two quotes above are ample evidence that your command of the English language is very weak. But I'm sure it makes perfect sense in e6kland.

"So far as I know, they can't do that."

I thought you heard about a case just the other day? Don't the first few patent laws allow such a suit? Shouldn't you be able to cite me dozens, if not hundreds, of cases?

LOL

"Now why on earth would they remove the dates from evidence, or, if they didn't know it was going to be evidence, from a random corporate slideshow?"

Well, as I explained to you, the law does not require you to provide the dates of your evidence as long as it is before the prior art's effective date.

There's no need to put your competitors on notice of your earliest date if you don't have to.

Your new masters at your monstrous firm will explain it all in more detail.

[Lowly]

E6K,

As I have said before, please continue to post if you leave the PTO and move to a firm. I would love to see how your views change as you experience things from the other side.

Love,

A Lowly Prosecutor

[Malcolm Mooney]

"I have yet to see an examiner who gets KSR. Most cite KSR, but are really applying the old motivation test of TSM."

*sigh*

The "old motivation test" (i.e., using an express statement in the art to support a finding that one of skill would be motivated to combine old elements that are also expressly disclosed in the art) is still valid under KSR. The point of KSR is that a failure to find a suitably precise motivating statement in the art is not necessarily indicative of non-obviousness.

Or to put it another way, if the Examiner is applying the "old motivation test" and he/she is applying it correctly, you are more screwed than ever because your claims aren't even passing muster under the strict TSM test that is more favorable to the patentee.

[Malcolm Mooney]

JD "So how is it that one of ordinary skill in the art, or less, can tank the claim in a minute or two, but the PTO can't establish a prima facie case after 5 years?"

I've been asking that question for years, JD. Welcome aboard.

One answer I've stumbled upon is that the Examiners in the software and business method arts tend to be less literate, less intelligent, and less clever than the Examiners in the chemical and biotech arts.

[anon]

JD "So how is it that one of ordinary skill in the art, or less, can tank the claim in a minute or two, but the PTO can't establish a prima facie case after 5 years?"

Maybe it is because they get workflow points for pushing paper out the door, but they do not get points for finding prior art.

Alternatively, it could be because they are not people of skill in the art for the claimed invention.

[Malcolm Mooney]

In related news about the consequences of allowing government-stamped gifts to be handed out with minimal attention to quality and consequences just because industries (and its member citizens and enablers) whine and cry a lot about what they are "entitled" to:

http://angrybear.blogspot.com/2008/09/roubini-and-bail-in-this-weekend.html

"This is indeed the most severe financial crisis since the Great Depression and occurring at a time when the US is falling in a now severe consumer led recession. The vicious interaction between a systemic financial and banking crisis and a severe economic contraction will get much worse before there is any bottom to it. We are only in the third inning of a nine innings economic and financial crisis. And the only light at the end of the tunnel is the one of the incoming train wreck."

But of course a lot of people already made their hundreds of millions from the unregulated crap, didn't they? I don't suppose they'll be giving any of it back. And god forbid their taxes are raised. John and Sarah to the rescue!!!

[Just an ordinary inventor(TM)]

Title: The Confounding Questions About Obviousness, TCQAO.

There is a whole other side (perhaps and equal or even more interesting/greater side, but perhaps not in all or even most cases) about obviousness that the PHOSITA of patents (comprised of inventors, examiners, attorneys, IP professors, judges, jurors, IP bullshitters) have not addressed here (Patently-O) or elsewhere over the past years.

Amazing, most remarkable, that this “TCQAO” has been so overlooked for so long yet it has been in plain sight all along.

Anybody?, anybody?, Bueller?, have a clue?, now that TCQAO has been formally introduced in an eye-opening challenge? (i.e., the bag the cat has been in is now open, but the cat has not yet left).

[Leopold Bloom]

"It does not say 'the appellants having challenged the official notice indicates x' which would be what is required to have had them mean what you believe them to mean. They say that 'the appellant's challenge indicates x'. This is english. Welcome to it."

My guess is that the irony here is completely invisible to e6k.

"My bad, that was LB I was responding to, I figured it must have been JD."

Incoherently, at that. Notwithstanding your transparent attempts to change your position after you lost your argument, you still owe Mr. Darling an apology.

[pds]

"That's a slightly unfair statement. While 70-90% of rejections are deficient in some manner, the claims in many of those cases are so blatantly obvious that the examiner had to reject the claims."

Hmmm, although anecdotal … considering I get most of those applications allowed without amendment tends to disprove that concept.

"The examiner lacked the time or the skill to do a proper search, and so we end up with a facially bogus rejection. In many cases, the claims could have been properly rejected if the examiner had the time and the skill to do a proper search."

You should really stand in our shoes and reread what you just wrote. The Examiner doesn't have the time or skill to find the art, but he/she KNOWS that the claims should be rejected. I cannot think of a better example of the abuse of impermissible hindsight reconstruction that has run rampant through the halls of the USPTO for years and years and years.

Obviousness is based upon factual findings of the prior art, as viewed by one having ordinary skill in the art, AT THE TIME OF THE INVENTION. This is one of the reasons I am always hesitant to give an opinion on obviousness. It takes a lot of effort to set aside whatever else I may know and make a judgment based solely on what was available to POSITA at the time of the invention.

Can an examiner, who perhaps looks at dozens, maybe a hundred references on any given day, be expected to know which one of those references showed something really similar to applicant's claimed invention? and more importantly, can the examiner remember whether or not these references pre-dated or post-dated the effective filing date of the applicant's claimed invention? The answer to those questions is almost always "no."

Perhaps you can understand why attorneys get frustrated. We see absolutely bogus rejections, and we are being forced to waste both our time and the client's money in responding to them. Honestly, I don’t care if an examiner finds good art. Amending the claims to get around good art is easier than explaining why the examiner's analysis is a big pile of doodoo.

[pds]

"Liars, including you."

Got any evidence? Or are you just expelling gas like you normally do. You always want to force the party with whom you are arguing to provide evidence, but you are awfully weak at producing evidence yourself.

BTW: You must have missed the post where an examiner pretty much agreed with my numbers while at the same time trying to justify why the rejections are still made.
It must get to you that the only person that regularly defends you is 6K, somebody that you despise. There is also Mad Max that comes to you side, on occasion, but most people dismiss him as a 1 issue wacko.

One would think that if your opinions really resonated, there would be many more posters coming to your aid. Instead, you (along with 6K) are they most despised poster on this board. BTW, for the most part, you aren't despised for your opinions. Instead, you are despised because you aren't interested in real debate about the law. Instead, you mostly just want to yank people's chains.

[pds]

"One answer I've stumbled upon is that the Examiners in the software and business method arts tend to be less literate, less intelligent, and less clever than the Examiners in the chemical and biotech arts."

From what I can tell, the inventions in the chemical/biotech arts tend to be far less complex than those in the other art units. Also, I haven't been entirely impressed with the level of claim drafting out of biotech attorneys. Then again, the inventions are so straight-forward that the need for sophisticated claim drafting really isn't necessary … you don't develop a skill set when the skill set isn't needed.

[Malcolm Mooney]

"Got any evidence?"

Evidence? Evidence that you and "everybody you know" is receiving Office Actions of which 90% comprise facially bogus rejections?

It'd be pretty hard for me to come up with that evidence, pds, for obvious reasons. Then again, I wasn't the one asserting that laughably extreme statistic. It was you.

[Malcolm Mooney]

"From what I can tell, the inventions in the chemical/biotech arts tend to be far less complex than those in the other art units."

That's funny because just few days ago you were ranting about how enablement isn't an issue for sweepingly broad computer-implemented claims because the artisans in the field are so freaking skilled. Now you are telling us that chemical/biotech inventions are relatively simple and straightforward.

"One would think that if your opinions really resonated, there would be many more posters coming to your aid."

I would expect posters to come to my aid only if they perceived that I needed their assistance. But I recall someone playing this strange "popularity contest" card a couple years ago. To the best of my recollection, Caveman ended up voting himself off the island.

[CaveMan]

No, I was just getting a little R&R - you should try it...

[query]

maybe Caveman has a new moniker and new commenting style?

[AllSeeingEye]

Malcolm Bloom says "However, under KSR, the lack of TSM can't be used to prove non-obviousness."

This is simply not true. KSR will eventually go down as a tempest in a teapot and will be known as the case having the most overrated impact on patent practice. Judicial "gobbledygook" notwithstanding, all KSR did was remind the patent bar that the TSM test actually has always said "...a TSM contained in the references themselves **or in the knowledge generally available in the art**" TSM was never a stand alone test based only on the teachings in the references only, even though some argued it that way.

Therefore, while a TSM in the references will support a combination (does not *prove* obviousness), a lack of a TSM in the references themselves then requires external support from the knowledge in the art, or some other factor such as forseeability or the like. And TSM is only to support the combination, if the references dont teach the features, p.f. obviousness is not established.

[AllSeeingEye]

Incidentally, you can never prove non-anything. You can only *prove* a positive.

[CaveMan]

You know AllSeeingEye, you are one smart dude...

[ironicslip]

now that we have a real financial crisis, i wonder what some folks think of all the lobbying on patent reform by the financial services sector as well as the any fall-out by a wacky decision in Bilski - seriously - of course, this is way off topic ... but what the hey ... so much money spent on lobbying & very little innovation in financial services that the american taxpayer now owns - patents or not, we own the choices we make in how our government deals with innovation ...

[John prosecutor]

The financial services sector is so intelligent and successful that we are supposed to trust anything they have to say these days on any topic?

[Malcolm Mooney]

"innovation in financial services"

A method of building a house of cards, comprising ...

[e6k]

"Instead, you (along with 6K) are they most despised poster on this board."

I dare say that I'm hardly the only one to agree with MM on certain issues.

"Perhaps you can understand why attorneys get frustrated. We see absolutely bogus rejections, and we are being forced to waste both our time and the client's money in responding to them"

Perhaps you can understand why examiners get frustrated. We see absolutely bogus claims and we are being forced to waste both our time and the client's money in responding to them. To top that off, our database of knowledge is woefully put together and lack easily found citations to basic concepts as would be found in college course notes and etc. with motivations spread to the high yonder.

[John prosecutor]

"our database of knowledge is woefully put together and lack easily found citations to basic concepts as would be found in college course notes and etc."

the pto needs better databases and classification systems for the examiners

[e6k]

"Notwithstanding your transparent attempts to change your position after you lost your argument, you still owe Mr. Darling an apology"

I didn't finish reading all 80+ pages of the appeal and I owe him an apology for reading what the board wrote as it was written rather than the way you and him would like to dream it was written? Meh, maybe. I'll think about it.

Hardly transparent in any case, you can read the relevant portions and see times when they at least come close to saying what they needed to in the initial "challenge" before they get in depth in later pages. I would have given them credit for the first things they said, I've yet to find anyone to come close to even that in response to me.

"I thought you heard about the case just the other day"

I did, but they didn't issue an injunction, which is what I'm saying the court cannot do so far as I know. They only have the power (at least under 35 USC) to LET the director issue a patent. LET being different from MAKE. Also, I think in that case the applicant was ruled against anyway. I do wish I could pull up the case though.

[AllSeeingEye]

"I dare say that I'm hardly the only one to agree with MM..."

Dare if you will, but you are just about the only one. We took a poll, it was pretty much unanimous. For all the sound and fury, Mooney's posts usually signify nothing.

[MaxDrei]

Look, if we are in to Shakespeare, I will quote "Methinks the lady doth protest too much" as a suggestion that those posters who mount the most vituperative, virulent, intemperate attacks on Mooney serve only to reveal something unpleasant about themselves, and that Mooney's touching a sore nerve, and a real issue. Readers, do note how quickly such contributers bolster their self-confidence by speaking as "we". But who "we" are remains unclear. Dismiss me as a "one issue wacko" if it makes you feel better, but other readers will make their minds up about the relative merits of contributions from Mooney, from me and from you. Dennis asserts that there are thousands who read this blog. Self-evidently, all but a very few are silent readers. But they all have an opinion. BTW, what's this "poll" that "we" conducted, to find out whether readers should declare Mooney persona non grata. I don't recall voting in that one.

[AllSeeingEye]

We conducted a poll Max, its pretty much unanimous, Mooney and now, possibly you, is/are simply annoying. I doubt anyone here, except possibly you and Mooney, have their self confidence on the line.

[AllSeeingEye]

We conducted a poll Max, its pretty much unanimous, Mooney and now, possibly you, is/are simply annoying. I doubt anyone here, except possibly you and Mooney, have their self confidence on the line.

[AllSeeingEye]

I just conducted a separate poll and its pretty much unanimous, multiple posts as a result of typepad errors are also annoying...sorry

[MaxesEvilTwin]

What about the vituperative, virulent, intemperate attacks by Mooney on just about everything including Federal Court judges and things that he knows nothing about, which is just about everything?

[step back]

Financial melt down.
This is not off topic.
This is the Hu element, human ingenuity and innovation at its very best.
Now we're feeling very smug and clever.
A few magic words lifted from a legal text should be all that's needed to save us.
How about "Gobbledeegook"? It seems to work for people in high places.
I bet Harry Potter would use it in a situation such as this.
Or at least Tom the Turkey on the day he gives thanks.

[Leopold Bloom]

"Malcolm Bloom says 'However, under KSR, the lack of TSM can't be used to prove non-obviousness.'"

"Incidentally, you can never prove non-anything. You can only *prove* a positive."

ASE, your excessive bile is affecting your reading ability. If you had actually read what I said instead of what you wish I had said then you would realize that we're in agreement on this point, as you unwittingly proved in the second comment quoted above. I have responded several times to posters who credit KSR with "abolishing" TSM. It did no such thing.

[Leopold Bloom]

"I didn't finish reading all 80+ pages of the appeal and I owe him an apology for reading what the board wrote as it was written rather than the way you and him would like to dream it was written? Meh, maybe. I'll think about it. "

No, you owe him an apology for being openly insulting while vainly declaring victory in your argument, when you hadn't even bothered to read the substantially fewer than 80+ pages in the decision.

[JohnDarling]

"I did, but they didn't issue an injunction, which is what I'm saying the court cannot do so far as I know. They only have the power (at least under 35 USC) to LET the director issue a patent. LET being different from MAKE. Also, I think in that case the applicant was ruled against anyway. I do wish I could pull up the case though."

You're regressing. You understand even less now than you did when you started posting.

Before you head out to your monstrous firm, be sure to tell your SPE not to reassign your office right away. You'll be returning rather quickly I predict.

When the poor soul who gets assigned to mentor you bleeds red ink all over your incoherent writing, and then you persist in spending hours, days, weeks, arguing with him/her that you really are correct, and that it is he/she who doesn't understand, you'll be told quickly that your career opportunities may be better somewhere else.

Hopefully when you return to the PTO, you won't have to start over as a GS-5. Maybe they'll give you a break and let you start as a GS-7, given your private practice experience.

ROFLMAO.

Malcolm, glad to be aboard. Given your ability to tank claims in one, maybe two, minutes, what are your thoughts on the peer to peer pilot program? You must have torpedoed quite a few applications all by yourelf.

[Just an ordinary inventor(TM)]

Dear ASE,

Re: “
Incidentally, you can never prove non-anything. You can only *prove* a positive.”

Not really so; as I pointed out above:
As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time TEACH AWAY from a particular invention – which of course is rare – THAT CAN BE USED TO DETERMINE NON-OBVIOUSNESS.

[2600examiner]

I'd say the thing most closely capable of being proved is novelty. Non-obviousness and obviousness are subjective judgments. TSM and the level of ordinary skill in the art are tools to determine non-obviousness/obviousness.

Of course from where I am it's easiest to say everything that doesn't have one absolutely novel element is obvious.

[pds]

"Evidence? Evidence that you and 'everybody you know' is receiving Office Actions of which 90% comprise facially bogus rejections?"

Are you really an attorney? Because your reading comprehension is just awful. I wrote "70-90% of the rejections we get are facially bogus in one respect or another."

Note that I said 70-90 instead of 90. Also, I wrote "in one respect or another." This means I don't need the entire rejection to be bogus, I just need one portion of it.

However, given your modus operandi (either ignore and/or misstate other people's positions), I can easily see how you were confused.

"That's funny because just few days ago you were ranting about how enablement isn't an issue for sweepingly broad computer-implemented claims because the artisans in the field are so freaking skilled. Now you are telling us that chemical/biotech inventions are relatively simple and straightforward."

Wow ... your simplistic mind at work again. Again, if you knew anything about claim drafting or patent prosecution, you would realize that simple inventions in crowded arts are hard to claim whereas sophisticated inventions in uncrowded arts are easy to claim. This is common knowledge amongst many patent prosecutors. However, this knowledge, yet again, has seemed to eluded you.

[e6k]

"No, you owe him an apology for being openly insulting while vainly declaring victory in your argument, when you hadn't even bothered to read the substantially fewer than 80+ pages in the decision."

I didn't get my declaration of it being an overclaim at filing yet. My 10 min ref beat all but the swear behind with a date of 1996, a 20 minute would probably go back to 1980. Should I get the declaration I may apologize.

I find it interesting that nobody here, especially Malcolm if he read it, has commented on the broadness of the first claim. He should be able to tank this one with one hand behind his back. Maybe both.

[e6k]

"modus operandi (either ignore and/or misstate other people's positions), "

Learned a new phrase this week did you pds?

"This is common knowledge amongst everyone that bothered to ever think about it"

True pds, it is. I suspect MM is on to it!

[JohnDarling]

I told you if you could make a prima facie case, I would agree it's an overclaim.

Here's your "case":

" Alright, here's the ref: 5802526. I keep in mind that claim one is not limited to anything other than an automated banking machine (as opposed to the perhaps more strict "ATM") according to the applicant's own disclosure/claims. Other than that, it doesn't appear much technical reasoning/inherency is required, simply search for HTML and look at Fig. 1 and accompanying text. Output, input, transaction function device (lets make that the memory for giggles shall we?), computer (fig. 1), software with browser looking at HTML docs with instructions to retrieve information from a remote server when the user requests. The memory operates to carry out the transaction function responsive to the user having used the HTML form that included the instruction adapted to cause the computer to cause operation of the memory. Seems to me like you could use the CPU as the transaction function device alternatively and have the computer be the CPU/memory combination. The possibilities abound."

You're gonna have to do a little better than that before I'm going to agree it's an overclaim.

And keep in mind that you beat it by about 2-3 months, and your reference could still be antedated by the applicant.

No need for an apology. Watching you crawl back to the PTO with your tail between your legs after your disastrous foray into the world of monstrous law firm practice will be sweet enough.

"I find it interesting that nobody here, especially Malcolm if he read it, has commented on the broadness of the first claim. He should be able to tank this one with one hand behind his back. Maybe both."

I'm not aware of any claims that Malcolm has actually tanked. I'm not counting any claim that he read once and declared "That's obviously facially invalid" as tanking the claim. I'm talking about a claim where he actually produced evidence, and a prima facie case.

Maybe he can provide us all with an example.

LOL

[Just Visiting]

"As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time TEACH AWAY from a particular invention – which of course is rare – THAT CAN BE USED TO DETERMINE NON-OBVIOUSNESS."

Actually, at best that argument shows non-obviousness over a specific combination of references.

[Just an ordinary inventor(TM)]

Dear Just Visiting,

Re: “Actually, at best that argument shows non-obviousness over a specific combination of references.”

Sure, I agree in essence, but why do you say “at best”?, because it is rather substantial!, isn’t it?

[Just an ordinary inventor(TM)]

From above:
http://www.patentlyo.com/patent/2008/09/patently-o-bi-1.html#comment-130671048

Title: The Confounding Questions About Obviousness, TCQAO.

There is a whole other side (perhaps and equal or even more interesting/greater side, but perhaps not in all or even most cases) about obviousness that the PHOSITA of patents (comprised of inventors, examiners, attorneys, IP professors, judges, jurors, IP bullshitters) have not addressed here (Patently-O) or elsewhere over the past years.

Amazing, most remarkable, that this “TCQAO” has been so overlooked for so long yet it has been in plain sight all along.

Anybody?, anybody?, Bueller?, have a clue?, now that TCQAO has been formally introduced in an eye-opening challenge? (i.e., the bag the cat has been in is now open, but the cat has not yet left).

* * * * *

I didn’t think America hating sour kraut Max would have any ideas, but I thought at least some others, such as, oh, off the top of my head,
Andrew Dhuey
Arti Rai,
ASEye,
Babel Boy,
BHRat,
bierbelly,
CaveMan,
David T.,
Dennis,
Donald Zuhn,
Erez,
gauntlet,
Greg Aharonian,
iwasthere,
Jill Browning,
Jim H.,
Just Visiting,
Kevin E. Noonan,
Leo,
Lionel,
Malcolm,
Oliver Wendell Holmes,
Patrick L. Reilly,
and
Ronald J Riley,
could figure out what I’m referring to – it’s old school.

Some inventive solutions (i.e., “inventions”) may indeed be obvious to a Problem In Need Of A Solution, PINOAS, but, here’s the point: not all PINOAS are obvious!

Some PINOAS are NON-OBVIOUS!, and some PINOAS may even have been overlooked by myriad people for an aeon, yet the PINOAS may have been in plain sight for all PHOSITA to see all along!

“You take the blue pill, the story ends...you wake up in your bed and believe whatever you want to believe. You take the red pill, you stay in wonderland and I'll show you how deep the rabbit hole goes.” –Morpheus (Thanks Patrick L. Reilly)

The moral of this story is: If a problem is non-obvious but its solution is obvious, then that obvious solution should be patentable!

[Just an ordinary white rabbit(TM)]

Dear Jaoi,

Can you think of an example of a non-obvious problem that has an obvious solution?

[MaxDrei]

...........as it is, Inventor, in the EPO, where it is known as the rare but well-understood "Problem Invention" covered in the EPO Caselaw Digest and indeed the Manual of Examining Practice. Trite law, in fact, over here in Europe, since at least the old liquid nitrogen hide freeze-branding case cited in the first edition (1978) of the EPO Guidelines. Ask your wonderful prosecutors at M&C to tell you about it sometime. Old hat, old son.

Or have I got it all wrong, as usual??

[Just an ordinary inventor(TM)]

Why, yes I can little buddy (©¿®):

An obvious problem:
For example, people die every day in auto accidents.
It is obvious there is a need to invent solutions, i.e., ways to avoid auto accidents.

A non-obvious problem:
For example, the set of common punctuation marks for writing is incomplete because you cannot correctly punctuate a compound question, or a compound exclamatory remark, grammatically speaking that is (pun intended).
When speaking, however, compound questions are clear because of inflection in the speaker’s voice, and compound exclamatory remarks are clear because of tone and stress.

So, why don’t we have a question comma?, and exclamation comma!, in our fonts?, so we could write sentences like, oh, off the top of my head, like these:

Clever!, why wasn't I taught to use them in grade school?, just as I was taught to use the question mark and exclamation point.

Psalm 8: “What is man that you are mindful of him?, and the son of man, that you visitest him?

Why should a dog, a horse, a rat, have life?, and thou no breath at all?

How do I love thee?, let me count the ways…

Why have the question comma and the exclamation comma been obscured from view for so long?, centuries in fact!, even though they have been right under untold numbers of literate peoples’ noses all along.

[Just an ordinary inventor(TM)]

Sour kraut Max,

Re: “Or have I got it all wrong, as usual??”

You got me all wrong. I don’t recall ever saying that about you.
What I think, and what I believe I’ve said before in so many ways, is that you are insufferable.

[Tyrone Slothrop]

Shakespeare, eh?

“The first thing we do, let’s kill all the lawyers”

Once that job’s done we can get started on the examiners. And then the ones pretending and/or aspiring to be lawyers.

[MaxDrei]

JAOI(TM), I'm not only insufferable to you but also now absolutely wrong. On checking in the sources, it's NOT the nitrogen freeze branding that is cited by the EPO as a "Problem Invention" (in which, the moment the objective technical problem is formulated, the claimed solution is obvious but, nevertheless, that claim to that solution is legally NOT obvious because the problem itself was not obvious). Rather, both the Guidelines and the Caselaw Digest cite T2 of 1983 as the original case. The Digest also offers T225 from 1984, T135 from 1994 and (the "pet door" case) T540 of 1993.

[random person who posts here often]

"You're gonna have to do a little better than that before I'm going to agree it's an overclaim."

What do you want? An item to item? You promise yielding the overclaim and then ask for me to hold your hand. I can assure you I'm not into older men. Show me the limitation you think even might not be shown. Remember I'm going only for anticipation, no case o the obvious for me.

[JohnDarling]

"What do you want? An item to item?"

You're too funny.

Apology accepted.

LOL

[AllSeeingEye]

JAOI says - "Not really so; as I pointed out above: As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time TEACH AWAY from a particular invention – which of course is rare – THAT CAN BE USED TO DETERMINE NON-OBVIOUSNESS."

Non-obviousness is never "proved;" obviousness is proved. Novelty is never "proved;" anticipation is proved. Only determinations of novelty and non-obviousness are made.

TSM is for supporting combinations of references. The contents of the references vis a vis the elements of the claim are what obviousness is based on. TSM has nothing directly to do with whether a combination actually teaches or suggests the features of the claim; only whether the combination is properly supported, e.g. whether there is a TSM to combine the references.

By the way, some people pay big money for the above knowledge. This one's on me.

[AllSeeingEye]

Incidentally, "teaching away" is quite common...

[Malcolm Mooney]

"Incidentally, "teaching away" is quite common..."

Another meaningless, indefensible statement.

[AllSeeingEye]

Mooney, if you actually knew what you were talking about, I would ask you to explain why you think my assertion is "meaningless and indefensible." Teaching away is quite common, if you know what it looks like and how look for it. But that's OK. I know you have a hard time seeing things that are right in front of you.

I know I could plop you down on a pile of money and you would still feel impoverished and be looking around with bitterness at everyone that drives a nice cars or has a house in Aspen.