Attorneys have always learned by following the example of their elders and peers. With that in-mind, I would like to post several exemplary responses to patent office rejections and objections. Please forward to dcrouch@patentlyo.com with a very brief explanation of the topic/technology. If you like, you may scrub the response for anonymity. Likewise, feel free to submit good ones you have found that were written by others. Potential topics:
- Arguing that combination is nonobvious (under KSR);
- Arguing secondary factors of nonobviousness;
- Swearing behind prior art;
- Arguing that prior art is not enabled;
- Disputing date of prior art;
- Arguing that prior art is not inherently anticipatory;
- Responding to obviousness type double patenting;
- Arguing utility;
- Responding to restriction;
- Arguing against indefiniteness;
- Arguing amendment is not new matter;
- Etc.
Speaking as a member of CAWTTPAAA*, I deeply resent that remark
*Crack-Addled Wino Trailer-Trash Patent Attorney Association of America
Impermissible hindsight is still impermissible.
“KSR can’t make evidence where there is none”
simply means that, even in Mooney’s wildest dreams, KSR does not relieve the Examiner of the burden of supporting a combination with some actual evidence, even if only in the form of an articulated reason that is susceptible of support.
Its not surprising that Mooney can’t make sense of that. There is only so much you can fathom when half or more of your brain has been eroded by the ravages of crack, white wine (from a box) and witty trailer park repartee.
“Similarly, arguments based on the use of impermissible hindsight are now pointless, but I guess it’s also fair to observe that they seldom worked anyway.”
It must worked often enough for the software, computer-implemented, mechanical claims folks, though, because they were the ones clutching their pearls the hardest when the case was coming down.
KSR is not all that big a change to prosecution, if you take into account that ‘no TSM’ arguments didn’t work all that often anyway. However, my reading of recent board decisions suggests that KSR at least makes it easier to write opinions sustaining the examiner.
For example, arguments that art is non-analogous seldom worked pre-KSR. In most cases the Office could read the ‘field of invention’ broadly enough or note that the applicant did a poor job of addressing the ‘related to the problem to be solved’ portion of the inquiry. The non-analogous art arguments are now even less likely to work because the board routinely cites KSR to expand the definition of what constitutes analogous art to include art addressing any known problem.
Similarly, arguments based on the use of impermissible hindsight are now pointless, but I guess it’s also fair to observe that they seldom worked anyway. Since KSR says that if a PHOSITA would recognize the value of a combination that the examiner just made up, there is a reason to combine, the examiner is invited to use apply general engineering principles with some hindsight to recognize any advantage of the combination. As long as the examiners does not quote reasons verbatim from the applicant’s spec it is essentially useless to complain about hindsight as the office will just quote the boilerplate.
Your invention is X+Y combined in some fashion, X and Y are known and Y includes a handle that makes the X+Y combined in some fashion easy to carry (in addition to doing whatever inventor uses it to for) then X+Y is obvious or at least obvious to try under KSR.
I don’t have any objection to a “rationale” if it’s found in an Office Action. My difficulty was with the idea of a “rationale” explicit in a prior art reference. But perhaps that is not what Jane meant?
“But maybe it helps if lunch is involved.”
It always helps if lunch is involved.
“What surprises me is that I’ve only seen one or two Office Actions attempt to articulate one of these rationales.”
Maybe you need to try harder to understand the Examiners, Leo. If you can understand gobbledygook like “KSR can’t make evidence where there is none” then you can understand anything. But maybe it helps if lunch is involved.
“…its easier to come up with some single-sentence rationale that passes the smile test…”
Based on many of the “rationales” for combining that I’ve seen, apparently it’s not so easy to pass the smile test.
“What surprises me is that I’ve only seen one or two Office Actions attempt to articulate one of these rationales.”
That’s not surprising. It’s a lot more work to make and justify the findings of fact required in the rationales listed in the Guidelines. Since those rationales are not required, its easier to come up with some single-sentence rationale that passes the smile test, find good references, and let the patent lawyer figure out that they need to amend.
Jane seems to be one of the few who appreciate that KSR was neither radical nor particularly surprising. (How about Tuesday?) While the Supreme Court decision was pending, the Federal Circuit realized its mistake (suggesting that TSM was the exclusive test), and backpedaled considerably, hence Pfizer v. Apotex.
Max, “rationale” is the word the Supreme Court chose when it said that a finding of obviousness must be supported by a clearly articulated rationale . The PTO actually published very nice “Guidelines” for formulating obviousness rejections, including detailed discussion of seven possible “rationales.” Number 7 is the venerable TSM test for combining two references.
I think the rationales as characterized by KSR and exemplified in the PTO Guidelines are quite reasonable. What surprises me is that I’ve only seen one or two Office Actions attempt to articulate one of these rationales. On point to this particular blog post, I’ve successfully argued a number of times that an Office Action failed to articulate any rationale at all, much less one of the listed ones. That said, I wouldn’t have bothered if the references had been any good, since it really is all about the references, isn’t it?
However, despite being handed a decent framework for the admittedly difficult task of formulating obviousness rejections, the Office apparently thinks it is more important to distribute legally unsupported Section 101 rejections than to train its Examiners on the actual law.
Thank you, Leo! Are you free for lunch?
And Max, you understand it correctly. The thought that KSR really changed the world of obviousness is, at least, not the way I see it. KSR was two things: a reminder that the test was and is the Graham factors and a reprimand of the Federal Circuit for requiring the TSM test. Since the Graham factors never required explicit motivation, neither does KSR and the Fed. Cir. went out of their way (a little late perhaps) in Pfizer v. Apotex to say that TSM never required it either.
Mooney may feel differently and is entitled to do so.
It’s getting clearer. Thanks Mr Bloom. Are we saying that, post-TSM, one no longer needs to find, explicit, in the references themselves a motivation to combine? If I understand it right, however, if late stage TSM was applied correctly, just before KSR, explicit wasn’t required there either. I think it was “rationale” that threw me. Not really the right word, is it?
I’m not Jane’s boyfriend, and I can’t help her out but I also found it incomprehensible. Maybe Jane or her boyfriend can mail in again, when they have worked out how to express meaningfully what she’s thinking. I’m curious.
“Incomprehensible, wrong or both? Maybe Jane’s boyfriend can help her out.”
Neither. (Although Jane and I haven’t hooked up yet.) I think Jane simply meant that the rationales need not be explicit in the references.
Jane Doe “KSR can’t make evidence where there is none; however, rationales needn’t be explicit.”
Incomprehensible, wrong or both? Maybe Jane’s boyfriend can help her out.
I hear you, Eye!
Mooney, evidence is where you find it, not where you want (or hope) to find it. The challenge presented to the examiner is to take the evidence they’ve got and provide context on the record that indicates motivation (or rationale if you prefer that term better) to produce the claimed invention. KSR can’t make evidence where there is none; however, rationales needn’t be explicit.
Mooney, if anyone gets a prize for overestimating and mis-estimating KSR (unexpected results indeed) its you.
Now bite me.
Congratulations Malcom! Your blog has been selected by Lord Neuberger of the Court of Appeal for its strong contribution to analyzing software patentability.
www_bailii_org/ew/cases/EWCA/Civ/2008/1066_html
footnote 50.
Kudos to IPKat for pointing it out.
TSM = make a case that is beyond question.
KSR = make a prima facie case.
It appears that I have just reitered MVS well-written comment.
“KSR does not allow the USPTO to start with premises that have no basis in evidence.”
I’d say “KSR does not allow the USPTO to start with premises that have no basis in REALITY.”
But otherwise KSR does allow the USPTO to proceed without **evidence** at least with respect to the motivation for combining. The prima facie case can be made without a presentation of **evidence** of the motivation. KSR only requires that the reasons for combining the elements in the art are articulated and based in facts that are known to the Examiner.
The Examiner could be wrong, of course. The Applicant must demonstrate why the Examiner is wrong to rebut the prima facie case.
@Malcom
I didn’t realize I was in a courtroom here. Besides, IANAL…yet.
“It sounds like you are saying the same thing to me. Are you??”
No.
You can rely on a premise inferred by a first reference (e.g., one of ordinary skill would know from the first reference that element A improves efficiency). Based on that premise, you can reach the conclusion that one of ordinary skill in the art would be motivated to use element A in combination with elements B and C, taught by a second reference. Under KSR, this can be done without an explicit teaching by the first reference that A should be used with element B or that A should be used with element C.
KSR does not allow the USPTO to start with premises that have no basis in evidence. That’s an issue that’s still up in the air.
“And how does this square with the old case law that motivation can be found in “the knowledge generally available to one of ordinary skill”?”
If you can show me a case in which the party provided no evidence of the knowledge generally available, then I’d be concerned. Ordinarily, you’d need at least some testimony at trial. The question is whether the examiner can play that role based on his or her expertise or whether the examiner has to find some independent evidence and not just his/her word.
SF said:
“KSR allows one to reject without an explicit TSM.” and
“KSR doesn’t allow the USPTO to rely on a premise without evidence of that premise. If the premise is that something is well known, I think you need to have at least some evidence from which the premise can be inferred.”
The 1st sentence is correct.
As for the 2nd sentence, how is this any different than requiring a TSM? It sounds like you are saying the same thing to me. Are you??
Not trying to be difficult, but can you please explain this & what would be the difference between what you say & going back to TSM? And how does this square with the old case law that motivation can be found in “the knowledge generally available to one of ordinary skill”?
MVS
“KSR allows the reasoning to be made without the reference.”
KSR allows one to reject without an explicit TSM. KSR doesn’t allow the USPTO to rely on a premise without evidence of that premise. If the premise is that something is well known, I think you need to have at least some evidence from which the premise can be inferred.
“Just by bringing into the rejection this additional reference to show motivation winds up taking the whole discussion off course.”
I’ve seen some examiners state that the obviousness rejection is based on a particular reference and then cite other references to support their contentions that other ideas are well known. They aren’t really combining the initial reference with the other references. They are combining the initial reference with a well-known concept. Of course, I’m sure many applicants would get side-tracked on a TSM rant when they saw a rejection like that.
SF,
I get what you are saying. And, ideally, a TSM from a reference is preferable. Not always practical, however.
It may be possible to cite a reference that shows replacing some common element with another common element (e.g., particular printers or displays for an output where the claimed “invention” is in the processing of the data to be output & not in, or specifically tied to, the output device itself). However, if the examiner tries to use this reference in the rejection to show the motivation that they are interchangeable, they will get back arguments that there is no reason to combine or that the reference’s processing is different, etc. Just by bringing into the rejection this additional reference to show motivation winds up taking the whole discussion off course. KSR allows the reasoning to be made without the reference (I would suggest citing, but not applying the reference to make it of record.)
And, one thing to remember is that the use of KSR rational for motivation is different from taking official notice of a fact (I have seen a lot of people try to mix these two different issues together). Just like for any other motivation you can challenge the reasonableness or accuracy of the motivation, whether it be based on a TSM or KSR rationale.
MVS
“Sorry, I though most people understood exaggeration when they saw it.”
Tell it to the judge.
MVS states, “Now, examiners can point to KSR to support the assertion that something that was “in the knowledge generally available to one of ordinary skill” can be proper motivation and there not be an explicit teaching in the references themselves.”
At some point, an applicant will test whether the USPTO is free to, in an ex partes examination proceeding, make findings of fact regarding knowledge generally available without any device to support those findings of fact. The best approach is to cite some sort of reference that, while not having an explicit TSM, still demonstrates the knowledge allegedly available.
Obviously, the Supremes’ unlawful eBay Opinion was the worst thing that ever happened in U.S. patent history, at least for America’s independent, self-employed inventors, research universities and many others including business men and businesses (e.g., Edison wannabes and IBM).
@MM
Sorry, I though most people understood exaggeration when they saw it. Obviously, you in your infinite wisdom, and people who are not involved in patent prosecution are not at all concerned about KSR.
“I just wanted to point out that everybody is freaking out about KSR”
Uh, no. Some of us were never freaked out and continue not to be freaked out. Yes, there were a few who thought it was the worst thing ever in the history of patents.
Go back to Dennis’ original postings about the case and you can confirm this fact for yourself.
lowly, eye, jane,
You all are right. The problem has been, at least from the examiner side of things, that when we would make an argument along the lines you indicate was already out there in the case law the attorney would just come back & argue that “the references do not suggest making that combination” & stop there. Of course it was a B$ argument in many ways since, as was pointed out above, motivation could be found “…in the references themselves or in the knowledge generally available to one of ordinary skill”
KSR just basically reiterated that this was the case. Now, examiners can point to KSR to support the assertion that something that was “in the knowledge generally available to one of ordinary skill” can be proper motivation and there not be an explicit teaching in the references themselves. I think that it really added very little to what was out there. It just made clear (again) that TSM from the references themselves was not the ONLY place reasons to combine could be found.
MVS
Lowly hit it out of the park. Btw, a good portion of the “obvious to try” rationale in KSR falls under the older “routine optimization” of In re Aller. You know what you’ve got and you know what you’ll get if you change it (hence, predictability) and you’re always trying to make the better mousetrap. If, during your “routine” work, you get a mousetrap that will unexpectedly transport the mice to Mars, then you have secondary indicia and the golden key to Patent City
A.S.Eye and JAOI,
Thanks for the kudos! I agree that you can still argue insufficient reasons to support the combination and have reasonable chance for success.
I just wanted to point out that everybody is freaking out about KSR, but the only real substance of the decision relates to when an “obvious to try” rationale for rejection might be proper, leaving a lot of these chemical and biochemical rejections that cite KSR open to attack for the reasons I stated above.
Lowly,
You can still make an argument with a reasonable chance of success that the Examiner has provided insufficient reasons to support the combination.
He knows that you are an evil disembodied eye of a vanquished Maia. Hard to be friends.
Redeemed me? I thought we were already good buddies…
But “just a lowly patent agent” gets the real credit for a brilliant comment.
A.S.Eye,
Your comment above has redemed you somewhat in my Eye. Please keep up the good work.
to lowly agent,
I’d say that is about the best digest of KSR I’ve heard to date. What I like about it is that it tries to reconcile KSR against rather timeless notions like “obvious to try” that a lot of the commentators around here appear to know nothing about. When you pick apart KSR in that manner, you find that there is not really a lot to worry about. And if you know that the TSM test has always included the additional language “…in the references themselves or in the knowledge generally available to one of ordinary skill” you realize that 1) the S.C. was WAY to harsh and, frankly, wrong, in its characterization of the test as “gobbledygook” and 2) you can still use the TSM test to attack a combination.
Man you lawyers suck at overcoming 103’s. I overcome 103’s all day long. I also make some.
My interpretation of the importance of KSR is that it defines a set of circumstances in which the examiner’s application of an “obvious to try” rational for rejecting the claims is acceptable. There are three conditions to be met:
– a market pressure or design need exists to solve a problem
– a finite number of identifiable solutions to the problem at hand
– the solutions are predictable
If these conditions are met, KSR alleges that a PHOSITA has good reason to pursue the known options within his or her technical grasp. Under these circumstances, the fact that a combination was obvious to try might show obviousness under 103.
I have used the argument in pharmaceutical and engine oil additive applications that either the number of possible solutions is so great that no one would be able to arrive at the claimed invention without first having impermissible hindsight of the Applicant’s disclosure, or that the art is too unpredictable (using support from the cited references) for any reasonable expectation of success. These arguments have had a moderate degree of success, depending on the examiner and the art cited.
Lowly – not me.
How many attorneys have ever been successful in obtaining an allowance by arguing law to an examiner? or even a SPE?
How many attorneys have successfully beat a 103, post KSR, by arguing anything other than a failure of the combination to show all elements of the claims or a VERY clear teaching away?
great post … big fan of making the system more accessible & understandable to average folk
“I personally predict that the only people who will respond to the request for samples are those whose work product you would not want to emulate.” either way you can still see even the “best” on PAIR so it’s a wash, no?
IMHO I do not think you lose much by arguing the fall-back position if one of the elements is not a “predictable use” as per the KSR decision (2600examiner’s page cites are very common for KSR as that section in the MPEP had massive rewrites that aren’t terribly clear)
agree with GP’s observation on case law … & plenty of misquoted cases actually assist in making a point if you prefer a case y case approach … had several quick allowances on simply using the Examiner’s case cites and repeating what was *actually* decided – the staleness of some of the language is simply cut & paste in some groups & meaning/context has been lost over time
fwiw, MPEP language used to be fairly consistent … the Office removed very good “boilerplate” language – old MPEP is often the best boilerplate, IMHO ::
one example, post KSR is MPEP 706.02(j) the following was removed, but is still a classic phrase that gets to the point in many interviews & responses :: “The initial burden is on the examiner to provide some suggestion of the desirability of doing what the inventor has done.” – combination of elements & undue experimentation argued following this clear sentence is succinct …
my wooden nickel
OK, the KSR oral argument started off by providing a bit of framework for why the SC thought it would be a proper thing to flush that patent (and numerous other patents issued or applications pending) down the tubes…..
…which must be kept in mind when trying to “understand” the almost universal “obviousness” rejections in currently pending cases.
****************************************
CHIEF JUSTICE ROBERTS: We’ll hear argument next in No. 04-1350, KSR International versus Teleflex, Incorporated.
Mr. Dabney.
ORAL ARGUMENT OF JAMES W. DABNEY
ON BEHALF OF THE PETITIONER
MR. DABNEY: Mr. Chief Justice, and may it please the Court:
This case concerns a very broadly worded patent claim, claim 4 of the Engelgau patent, that the Solicitor General and the United States Patent and Trademark Office have both told this Court is invalid under Section 103 of the Patent Act and was issued in error. The Federal Circuit’s vacatur of summary judgment in this case is grounded in a judicially devised test that is fundamentally inconsistent with —
JUSTICE GINSBURG: May I ask, if that’s the position of the PTO, why aren’t they proceeding to cancel the patent?
MR. DABNEY: The case is in litigation at this point, Justice Ginsburg, and in patent litigation district courts are vested with authority and this Court is vested with authority to render a judgment of invalidity under Section 282 of the Patent Act.
JUSTICE GINSBURG: But the question is, you say the PTO has recognized that it issued this patent, that it’s an invalid issuance. So why aren’t they curing their own mistakes, never mind what a court is going to do?
*******************************************
GP Wrote: “How many times has an Examiner changed his rejection based on a legal argument based on KSR? Is it closer to zero or 1,000? Is it zero?”
MM/DC Wrote: “A legal argument based on KSR? As opposed to what other kind of argument based on KSR?”
It’s all about grammar DC. If you comprehended what you read with the same alacrity with which you bolster blog attendance with your MM act, you’d have figured this out on your first read:
The legal argument could be based on other cases. So I restricted it to “legal argument based on KSR”.
Point being, legal arguments based on other cases are sometimes successful. Legal arguments based on the haze known as “KSR” are almost never successful.
MM/DC wrote: “Don’t be so hard on yourself. Everyone has their strengths and weaknesses. Your Information Disclosure Statements are probably some of the best in the business.”
Not really. I think IDSs are, generally, a waste of client time and money, particularly given that every RE request that I’ve filed that cites only art cited in an IDS has been granted.
Get some sleep Dennis, it’s late.
KSR is about challenging the TSM test that was established by the Federal Circuit for supporting combinations of references proffered to prove obviousness.
To say that “KSR is about obviousness” is puerile and overly simplistic. To say that unexpected results is the best way to show something is not obvious is puerile, overly simplistic and, in my opinion, wrong. The *best* way is to show that the references fail to teach or suggest all the claim features. An argument involving “unexpected results” is a fall back position at best.
I personally predict that the only people who will respond to the request for samples are those whose work product you would not want to emulate.
KSR is about obviousness.
Unexpected results is the best way to show that something is not obvious.
GP “How many times has an Examiner changed his rejection based on a legal argument based on KSR? Is it closer to zero or 1,000? Is it zero?”
A legal argument based on KSR? As opposed to what other kind of argument based on KSR? The answer to your question, by the way, is at least one. Go ahead. Ask me how I know.
“I suppose I just suck at what I do.”
Don’t be so hard on yourself. Everyone has their strengths and weaknesses. Your Information Disclosure Statements are probably some of the best in the business.
KSR does not mention the phrase “unexpected results” once. It mentions the word “unexpected” one time in its lengthy review of the standards of obviousness determinations that since the prior art taught away from combining elements of a prior art reference, unexpected fruitfulness of the applicants combination is evidence of nonobviousness. Thus KSR is decidedly NOT about unexpected results.
KSR is about TSM, period.
TSM is about providing support for combining references. period.
Unexpected results have nothing to do with TSM. period.
If you believe otherwise, I invite you to attempt a reasoned rebuttal. Your failure to provide a reasoned rebuttal (which I fully anticipate) will be interpreted as an admission that you are in fact a m0r0n.
Now bite me.
MM=DC.
What do you call a man who trolls his own patent site?
Patent Troll?
O’Troll?
Proll?
AutoTroll?
Dennis, I know you love me for that. Why not send me a call out? Hmm?
Anyway, KSR is an amorphous and poorly crafted joke, just like the rest of 103 jurisprudence, and it gives no guidance whatsoever to Examiners, which is all that matters for the % of cases that are filed and never appealed.
Here’s the best question for which you can get an answer:
How many times has an Examiner changed his rejection based on a legal argument based on KSR?
Is it closer to zero or 1,000?
Is it zero?
I suppose I just suck at what I do.
I have never gotten an Examiner to change his/her mind because I lawyered him/her with a “the law demands more” type of legal argument.
Cave when was the last time you read KSR?
StallSeekingFly: “unexpected results have nothing to do with KSR”
Let’s keep a permanent tab on this comment. It’s another one of those gifts that will keep on giving.
Nice tautology Mooney, but as usual, you still aren’t making sense.
By the way, an Examiner giving reasons is not the end of the analysis, and unexpected results have nothing to do with KSR. And it’s not whether the reasons are articulated in a reasonable fashion, but that the articulated reasons are reasonable and go to “common knowledge” or the “knowledge generally available” or one of the other factors articulated in KSR such as “forseeability.” There is no simple application of KSR, just like there is no simple application of obviousness analysis.
After you peel away your smug exterior, you really are a m0r0n aren’t you Mooney.
2600examiner: “I liked the art so they got finals anyway, but I do explain more when I use KSR now.”
And that about sums it up as far as KSR is concerned. If the motivations for combining are articulated in a reasonable fashion AND no unexpected results (or teaching away) is presented to rebut that reasoning, that is the end of the analysis.
As it should be.
“Every patent attorney is an agent first. But you wouldn’t know about that I’m sure.”
Of course I would. As usual, Cavey, you help underscore my points. I suspect that’s why you’re still here.
Right after KSR came out I really didn’t know any better, so I started applying it willy-nilly without too much explanation. I’ve had a few instances of lawyers whining about a lack of analysis and not addressing the cited references at all. I liked the art so they got finals anyway, but I do explain more when I use KSR now. Here’s what was in one of the responses:
———————-
The Examiner’s basis for combining the three references is only that the motivation for the combination is the use of a known technique to improve an analogous procedure in the same way. Such a broad generality is not sufficient.
KSR International Co. v. Teleflex Inc. (ISR) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” (KSR Opinion at p. 14). An Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does,'” (KSR Opinion at p. 15). And, the Examiner must make “‘explicit” this rationale of “the apparent reason to combine the known elements in the fashion claimed,” including a detailed explanation of “the effects of demands known to the design community or present in the marketplace” and “‘tho background knowledge possessed by a person having ordinary skill in the art.” (KSR Opinion at p. 14). Anything less than such an explicit analysis is not be sufficient to support a prima facie case of obviousness.
.
.
.
“Based upon KSR International Co. v. Teleflex Inc. the Examiner has failed to show any sufficicnt reason for combining the references, and therefore the claims are not obvious in view of any combination of the cited references.”
————————–
Well, not sure what that means Mooney but it doesn’t inform the debate. Who could have predicted that?
Every patent attorney is an agent first. But you wouldn’t know about that I’m sure.
“Under KSR, its the motivation to combine the references that is at the heart of the issue, not whether or not the “combination is nonobvious.”
Spoken like a true patent agent.
Thank you Jane, work IS hard, that’s why its a four letter word.
And while we’re at it, I h8te to nitpick, but what does “Arguing that combination is nonobvious (under KSR);” mean?
Under KSR, its the motivation to combine the references that is at the heart of the issue, not whether or not the “combination is nonobvious.”
With all due respect, the above language suggests a fundamental misunderstanding of obviousness determinations AND of the impact of KSR.
I swear behind prior art all the time. Sometimes, I swear in front of it, or sometimes, a little off to the side. I don’t think I should provide a template for that.
Boilerplates are NEVER a good thing for either the attorneys or the examiners. They lead both groups to believe that evidence has been presented and something important has been said, and neither is the case. In both cases, argue the facts or go home! Work is hard, get a helmet!
I’d like to hear from the Examiners on this too. When they recognize boilerplate language do they immediately gloss over it? Is there such a thing as good boilerplate language?
I’d like to hear from the Examiners on this too. When they recognize boilerplate language do they immediately gloss over it? Is there such a thing as good boilerplate language?
Ok, noted: Mr. Mouse is not Mr. Moose.
Now I’m confused.
BTW, I ain’t the Moose.
I’ve got to say, I think complaining about “attribution” to DC is niggardly, at best, and nasty, at worst.
I personally have gotten a boat load out of this blog, and I figure I’d go out of my way to help DC if he asked for help.
Dear Mr. Moose,
With all due respect, how about this:
You get to read Professor Crouch’s blog for free and also his amalgamation re: sample PTO responses for free.
Anon E. Moose: How about you let this count as your pro bono obligation for the month.
ABA Model Rules of Professional Conduct: “A lawyer should aspire to render at least (50) hours of pro bono publico legal services per year….[including] participation in activities for improving the law, the legal system or the legal profession. ”
DC
Sure, DC… I’ll gradly help write your burgoening treatise. What do you propose for attribution and compensation?
i think this is a great idea. every practitioner has his or her own boilerplate arguments but the lesser used arguments don’t get updated very often in my personal template.
Dear GP,
But only if any asswhole with any power says so.
Arguing that it’s not obvious in light of KSR?
Hah! Everything is obvious in light of KSR.
Any good ones submitted that are under a page in length gets a million gold stars. And 10 internets.
I’d like to make some submissions of my own.
“Arguing the prior art is not inherently anticipatory”
The reference xxxxxxxxx is not inherently anticipatory because it lacks feature y, and y is not inherently present just because z is present.
“Disputing date of prior art”
The reference xxxxxxxxxx does not qualify under 102/103 because the filing/pub date of the reference is y.
“Arguing the prior art is not enabled”
I want to argue that the prior art is not enabled, even though it is. Can I file an RCE yet so I can artificially extend the period for a real response?
“Responding to restriction”
In response to the restriction requirement the applicant elects group/species 1 claim 1 without traverse.
“Arguing against indefiniteness”
In my opinion the claim is not indefinite, it means precisely the ambiguous thing which I drafted it to mean. Can I file an RCE yet?
“Arguing that combination is nonobvious (under KSR)”
The claimed invention is not obvious under KSR because there was a “spark of genius” present at the time of the invention. Plus, I know obvious when I see it.
/bow /bow /bow
Small time apps, I know I know, I did better than your 1000$/hr attorney did for you. Don’t be too harsh on them, they’re just trying to liven things up for the examiners so they don’t get bored.
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