Narrowing Amendment and Prosecution History Estoppel

Felix v. American Honda (Fed. Cir. 2009)

Mr. Felix sued Honda for infringement of his patent covering a truck bed with a storage compartment underneath the bed. The Honda Ridgeline advertises a "lockable In-Bed Trunk®" that appears to serve the same overall purpose. The problem is that Felix's asserted claim is rather narrow and the district court found no literal infringement and no infringement under the doctrine of equivalents. Asserted claim 6 reads as follows:

6. In combination with a vehicle including a vehicle bed, the improvement of a storage system which includes: a) an opening formed in the vehicle bed and including an opening rim; b) a compartment with an interior; c) said compartment being mounted on said bed with said compartment interior accessible through said opening; d) a lid assembly including lid mounting means for mounting said lid in covering relation with respect to said opening; e) a channel formed at the rim of said bed opening and including an inner flange; f) a weathertight gasket mounted on said flange and engaging said lid in its closed position; and g) a plurality of drain holes formed in said channel.

In particular, the accused Honda truck bed has a "weathertight gasket" mounted on the lid rather than to the flange as claimed in the Felix patent.

On appeal, the Federal Circuit affirmed the lower court's judgment of non-infringement – finding Honda did not literally infringe and that Felix's claim under the doctrine of equivalents (DOE) was foreclosed by prosecution history estoppel. Here, I will discuss the DOE dispute.

Doctrine of Equivalents: The patent claims spell out the boundaries of an inventor's claimed invention. However, courts may extend the scope of exclusionary rights beyond the literal claim language to capture equivalent products. In recent years, the doctrine of equivalents has been limited. This case, the doctrine of prosecution history estoppel came into play because Felix had narrowed his claims prosecution. (Actually, the applicant cancelled the broad independent claims and re-wrote the dependent claims into independent form. Under Honeywell, that process has the same estoppel effect as narrowing the independent claim.)

Tangential: The presumption of estoppel can be overcome with evidence that the reason for the narrowing amendment is no more than tangentially related to the equivalent in question. The evidentiary standard for proving the "no more than tangential relationship" is quite high. Here, Felix offered a credible alternative explanation, but the Federal Circuit rejected his argument because (1) he did not prove that his alternative was "the only reason" for the amendment and (2) he did not "explain the entire amendment."

"Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court's summary judgment of no infringement by equivalents."

Drafting Strategies: One interesting aspect of this case is that Felix had to go through a couple of rounds of amendments. After first amending to add the gasket, Felix then had to amend again to secure allowance. Although the first amendment did not directly lead to allowance, the narrowing amendment still created a presumption of estoppel:

"The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee's response to a rejection—not the examiner's ultimate allowance of a claim—that gives rise to prosecution history estoppel.

We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance."

Judge Linn also pointed to an "open question" in footnote 4:

"We leave open the question of whether the presumption of surrender would have attached as to the gasket limitation if, in response to the first office action, Felix had cancelled both claim 1 and claim 7, and had rewritten claim 8 in independent form, instead of attempting to secure the broader coverage of rewritten claim 7 as an intermediate step."

[Corrected 3:40 CST]

     

Comments

[Bob Matthews]

Hi Dennis:

I read the impact of footnote 4 a little differently. Under Honeywell, cancelling an independent claim and rewriting a dependent claim that includes limitation A, gives rise to a presumption for surrender for limitation A. Canceling an independent claim and a dependent claim that includes limitation A, and then rewriting in independent form a second dependent claim that includes limitation B, would give rise to a presumption of surrender for limitation B (under Honeywell). The open question from footnote 4 is whether it also gives rise to a presumption of surrender for limitation A.

DDC SAYS: Thanks Bob. You are correct. I have corrected the post.

[6 doesn't sleep]

Want to sell: form to replace substance.

[Derrik]

"On the other hand, cancelling both an independent and dependent claim and then adding a new claim that includes all the limitations of both might not be considered narrowing"

My god I cannot believe Linn. That is the lamest distiction ever. If it is in response to an office action for patentability, regardless of the way the applicant does it, PHE should apply. How about I cancel and rewrite all my claims, what will that get me? Why not just abandoned and file a continuation with a new set?

"weathertight gasket mounted on the lid rather than to the flange as claimed in the Felix patent"

Why didnt the patentee just add "gasket" and not specify its location? If the gasket was all that was needed to overcome the prior art, then that was a big mistake.

[Anon E. Moose]

Claim 1: A widget comprising A; B; and C.
Claim 2: A widget according to claim 1 further comprising D.

Claim 1 rejected; claim 2 objected, but indicated as having allowable subject matter. Pick your response:

I)
Amended claim 1: A widget comrpsing A; B; C; and D.
Cancel claim 2

vs.

II)
Cancel Claim 1
Amended Claim 2: A widget comprising A; B; C; and D.

vs.

III)
Cancel Claims 1-2
New Claim 3: A widget comprising A; B; C; and D.

Regardless of what one believes on the merits of the PHE doctrine, does Linn really mean to suggest that the outcome of any of those scenarios should differ from any other?

"Whether the stone hits the pitcher or the pitcher hits the stone, it's going to be bad for the pitcher."

[Malcolm Mooney]

"does Linn really mean to suggest that the outcome of any of those scenarios should differ from any other"

Could be more of that legal sarcasm. Would you rather he spouted a couple paragraphs of confusing dicta?

[6]

Good that you corrected this post D.

[Anon E. Moose]

Upon further reflection:

Claim 1: A widget comprising A; B; and C.
Claim 2: A widget according to claim 1 further comprising D.
Claim 3: A widget according to claim 2, further comprising E.

Rejection; First Amended claim set:

Claims 1-2 Cancelled
Claim 3: A widget according to claim [[2]] 4, further comprising E.
Claim 4 (NEW): A widget comprising A; B; C; and D.

New Rejection; Second Amended Claim Set:

Claims 1-2 Cancelled
Claim 3: A widget comprising A; B; C; D; and E.
Claim 4 Cancelled

Holding - PHE applies to elements D AND E, even though narrowing to D did not win allowance.
Footnote 4: We're not deciding whether or not, if Woody had gone straight to the police and claimed ABCE, or perhaps drafted a new set of claims to ABCE and dependent claim to D in response to the second rejection, PHE would have applied to element D regardless.

A little muddy to even hint that PHE would apply to D if it were not subject to any attention from the applicant (but lets not give them any more bright ideas).

[MaxDrei]

Is this another case of a court getting to the "right" result, but with the "wrong" legal tool? I haven't read the PH but I gather that the gasket was necessary to achieve novelty over the art. So what sort of flash of genius is that then, to add a weather-proof seal around the periphery of the lid of a cavity in the floor of your open pick-up? If it wasn't for the absurd skew in favour of patent owners, given by The Presumption, to the extent of C&C, any common sense court would have been able to do the sane and reasonable thing, and strike down as obvious any claim that is to be construed as wide enough to cover any gasket, wherever mounted. In any sane jurisdiction, a patentee who needs a wide construction to catch the infringer must take the consequences, when it comes to the judgement whether that claim is valid. As it is, to subordinate the question whether the gasket claim reaches as far as Honda to the issue whether or not there was a perfectly proper prosecution amendment is to do violence to the overall logic of patent law, and to have the unattractive consequence of dictating the need for a hundred independent claims, in every app filed at the USPTO. That can't be right, can it?

[Noise above Law]

"That can't be right, can it?"

MaxDrei, The answer is no, it is not right, but perhaps not for the reason you might think.

I see that you have tasted of the cup of Kool-Aid de-jour.

"....absurd skew in favour of patent owners, given by The Presumption,..."

In the presented scenario, there is no presumption, as the claims are in examination (pre-issue) and presumption only applies to granted patents.

More noise to obfuscate the signal. Get it right, keep it simple. Apply the Law and the notion of presumption holds firm and true. Stop conflating the issues.

Now if you want to focus on Prosecution History Estoppel, you raise a good point about the claim strategy - should each dependent claim start off (rewritten - written) as its own independent claim in order to forestall the possibility of loss of equivalence, or did the judicial decision simply create a form-over-substance claim formatting paradigm?

[MaxDrei]

We're at cross-purposes, Noise. Sorry I failed to make myself clear to you. I hope other readers will have understood me though. Felix was asserting a claim of an issued patent, and needed the DoE to get him home to victory. Haven't read the history of the litigation so I'm still curious why Honda didn't just prove that the subject matter of the claim was obvious. I mean to say: Making the periphery of a sandwich box lid, in the load-carrying floor of a pick-up, "weather-tight". That justifies a 20 year monopoly, does it? It is hardly as if introducing a vehicle to "weather" (its natural environment) was a novel "step" now, is it? As John McInroe used to say "Umpire, you cannot be serious." Yet the US patent system is a thing to be taken seriously, right?

[Mike]

If I am reading the summary correctly adding the gasket did get the allowance which is why this case is interesting from the PHE perspective.

[EG]

How footnote 4 squares with the Honeywell v Hamilton Sustrand case (where Judge Newman correctly observed in her dissent blithely overruled paragraph 4 of 35 USC 112) is hard to figure. It will certainly has the potential to cause some confusion in patent prosecution practice.

[captian obvious]

In addition to Max's concerns, the patent was poorly drafted. Anytime your claims are longer than your description you've done something wrong. I'd love to know if Honda's trunk was a design around of this patent.

[MaxDrei]

Poor drafting you say Captian. My point is that to come up with a claim to this "invention" that has patentable merit requires a literally impossibly high standard of drafting skill (unless of course (1) you enjoy the luxury of being able to do your drafting after you've seen the Honda vehicle, and (2) there is prevailing a ludicrously low standard on "new matter" and "written description" for prosecution amendments). As ever, two wrongs don't make a right.

[hackwriterwriterhack]

Question was asked, "Haven't read the history of the litigation so I'm still curious why Honda didn't just prove that the subject matter of the claim was obvious."

Don't the DC's most commonly require the infringement case to go forward prior to invalidity, and only hear the invalidity case if infringement is found?

If so, Honda may not have had the opportunity to do as you suggest.

[MaxDrei]

Thanks HWWH. In the meantime I had a look at the patent in suit, 6155625, and the art relied upon by the PTO, 4733898 of Scottie Williams. Seems like Felix got in there because Scottie (silly schematic boy) overlooked to mention clever things like a) a lock on the lid b) a pair of hinges and c) a seal around the periphery. Exr cited a trunk hood but Felix got through to issue anyway.

Somebody above thought the claim drafting poor. Be that as it may, I would have to say the advocacy skills must have been first class. Or was it rather that the Exr was not worried about checks on his quality. But now that the claim's through to issue, it enjoys the Presumption, right, and Honda better have C&C evidence of obviousness if they want it struck down, right?

Do we have another one in a million sandwich or swing patent here? Or is the situation more like the more common one in which they (successfully) took down RIM?

[correction]

No HWWH. A finding of infringement is most certainly not required for the court to address invalidity, whether or not invalidity was pled as a defense to infringement or a counterclaim.

[hackwriterwriterhack]

"Do we have another one in a million sandwich or swing patent here?"

Here now, don't pick on The Uncrustables, my kids love `em.

As for the swing, hey, it was just a Daddy trying to teach his kids how patenting works. Olson wasn't trying to pull the wool over anyone's eyes.

As it was, I gather he still took quite a bit of flack for the whole thing over at 3M-IPC. Bit of a stodgy legal dept., I guess.

Back to your main point, and even in the time frame of the patent grant (2000/TSM test), I'm also a bit surprised the examiner didn't reject it as obvious over 4733898 to Williams given Williams mentions multiple times that his truck bed compartments are water proof, water-tight sealed, etc., while stating the prior art compartments were not. Shouldn't have been too hard to show that a gasket was a well-known water-tight sealing means.

[hackwriterwriterhack]

To poster correction - I probably should have avoided the word "require" when I wrote "Don't the DC's most commonly require the infringement case to go forward prior to invalidity, and only hear the invalidity case if infringement is found?"

What I should have asked was, "Don't must DC Judges prefer to rule on validity only after/if infringement is found?"

I'm thinking about the policy about validity not needing to be reached where no infringement is found. I'm also only referring to situations where the patent is not so drop-dead invalid that the judge was willing to rule it so at the MSJ stage.

[MaxDrei]

You're ahead of me HWWH. I hadn't got as far as to find those bang to rights disclosures in Williams. One wonders what the folks within Honda say privately about this case. Maybe on its facts it is not a million miles away from the RIM case. I imagine that Honda was advised, in all seriousness, to settle with Felix rather than to dispute the legitimacy of his case. Do we know where the funds came from, to finance Felix in his quest to shake down Honda?

[Malcolm Mooney]

Claim 6 is an obvious pile of crap if there ever was one.

[Keith]

"Claim 6 is an obvious pile of crap if there ever was one."

As always, but he adds to the ambiance of the board, so stop picking on him.

[Honeywell workaround?]

Does Honeywell apply to the following situation?

Claim 1: A device comprising A.
Claim 2: The device of 1 further comprising B.
Claim 3: The device of 1 further comprising C.

First OA: Claim 1 rejected 102; Claims 2 and 3 allowable but objected to.

Applicant's response:
Claim 1 (amended) : A device comprising A and C.
Claim 2 (rewritten): A device comprising A and B.
Claim 3 (amended). The device of claim 1 further comprising E.

Does PHE apply to "B" under Honeywell? Claim 1 was not cancelled but its original scope was surrendered.

[West Coast Guy]

Instead of cancelling the claim, why not withdraw it? Is it available without a restriction? Any difference in treatment of PHE or the outcome?

[6]

"In addition to Max's concerns, the patent was poorly drafted. Anytime your claims are longer than your description you've done something wrong."

I've only had this happen one time before, and indeed, this big name client had 102a'd himself.

[Alan McDonald]

As an ex-Honda IP attorney (I left before this case arose), I'm surprised that they took this case all the way to trial.

Felix must have been demanding an unreasonable settlement, well over cost of litigation.

[Roger Karp]

From a user stand point, you want the gasket on the lid, not in the bed of the truck. In the truck bed (as Felix has the gasket), the gasket is prone to damage from articles that are being put into the seal box in the bottom of the bed.

Not legal advice, MHO, YMMV, etc.

[MaxDrei]

...."well over the cost of litigation". Alan I'm absolutely astonished at the gall of that man Felix, to think that his invalid claim for a weather-proof seal is worth anything approaching that much. This just gets more and more mind-boggling. I repeat, would that be Felix himself, or his sponsor, who was holding out for that much compensation for, I repeat, the idea of a weather-tight seal around a lunch box lid that was anyway old, old, old. Come on folks. This gets more and more scandalous. When was there ever a case for which the words "Laughed out of court" would ever be more apt? Malcolm and I are not the only ones here who are squirming with embarrassment, surely?

[Anon E. Moose]

@W. Coast Guy:

The Examiner withdraws claims from consideration, not the applicant, and only pursuant to restriction. If an applicant wants to remove a claim from consideration she cancels it.

[Malcolm Mooney]

Without these patents, there'd be no incentive to improve truck storage compartments.

/idling patent worship off

[Censored Gideon Pope]

Bad patent drafting. Simple as that.

I'd have to look at the PH to be sure, but if the inventive concept is the trunk under the bed, then why the heck are gaskets even being discussed? Surely the gasket is not inventive.

I can envision many variations where a gasket would not be necessary.

[MaxDrei]

Malcolm, there wasn't even one iota of "improvement" over Scottie Williams' prior published trunk.

Censored: trunk under the bed was old old old. Look upthread. Of course where there's a lid in the load bed there's a gasket. The only one for whom that wasn't self-evident was the PTO Examiner. Presumption of Validity over art already considered by the examiner? Excuse me while I puke.

[6]

Boxxy explains what happens when a big company accuses a non-practicing entity of improper actions:

http://www.youtube.com/watch?v=Cdiz0k0Rudw&feature=related

[6]

"From a user stand point, you want the gasket on the lid, not in the bed of the truck. In the truck bed (as Felix has the gasket), the gasket is prone to damage from articles that are being put into the seal box in the bottom of the bed."

Why not put one on both n have an even better seal? WOWZERS NONOBVIOUS IMPROVEMENT I BETTER FILE SOON!

[Bill Eshelman]

Have any IP trade groups proposed legislation to overrule the Honeywell decision?

[Malcolm Mooney]

"As always, but he adds to the ambiance of the board, so stop picking on him." by Keith | Apr 17, 2009 at 11:57 AM

I've reread my own and the other responses own and I see that your sarcasm is well placed.

Max Drei and others wrote the response I wanted to, but better and with more class.

I take back my previous comments and replace them with "I agree with Max Drei".

[Noise above Law]

"I've reread my own and the other responses own and I see that your sarcasm is well placed.

Max Drei and others wrote the response I wanted to, but better and with more class."

Translation: "Man, I'm tired of being wrecked on these boards, tired of not manning up and running away when my logic is destroyed, maybe I better change how I present myself..."

[Joe Breimayer]

Look at the specification of Felix US Patent 6,155,625. In drafting such simple mechanical patent applications, a skilled drafter foresees simple alternatives to each structure, in this case adhering the gasket onto the lid rather than around the opening (not suggested in the patent itself). Then, he/she checks the prior art to determine whether one or the other alternative is foreclosed. If not, both are illustrated or at least described in the specification, and claims are drawn broad enough to literally cover either embodiment. And, in my case, I would have additionally included a "means for sealing" claim and a set of method claims. Virtually no extra cost involved, given the simplicity of the subject matter and the less than 20 claims that issued.

[Malcolm Mooney]

The 8:57 am comment above was a namestealer. Probably poor Felix (or one of his fanboys) lashing out.

So sad.

[Malcolm Mooney]

"The 8:57 am comment above was a namestealer. Probably poor Felix (or one of his fanboys) lashing out."

Stop using my name, whoever you are.

[Malcolm Mooney]

The 3:24 am comment above was another namestealer.

Stop it before I get mad

[BannedfromPatentlyO]

Another post of mine is deleted.

The fact is, time after time Mooney's posts say nothing except "this claim is crap." The fact that Dennis allows these posts and deletes mine is evidence of the anti-patent bias here.

And that, my friends, is crap.

[patent.drafter]

What gets me about this one ... look at the issued claim, then look at the drawing figure on which that claim can be read.

Bed ... box ... lid ... channel ... hinges ... gasket ... drain hole.

Hinges go from underside of lid to underside of bed, in box, outside channel.

Gasket goes around mouth of box, inside channel.

Drain hole goes from channel _into the box_. Some weather-proofing there, eh?

I know it's got not a bit of legal relevance. But I mean, really, would it be too much to at least find one of ordinary skill to do the drawing figures?

[BannedfromPatentlyO]

Meanwhile PatentlyO's favorite "transparent" president is cozying up to the likes of Chavez and Mahmood "Iwannajihad"

super.

[Red Dog]

@6 - 4chan - You will never find a more wretched hive of scum and villainy.

[6]

To be fair, it would be nearly impossible to create one.

If I put a certain portion of people on to the Troll Tracker's ID, what do you think the chances are that they would come up with it a month later and then not claim the reward and instead do it for the lulz? I'm guessing that this chance is pretty high. There simply is no better internet stalker to be found on the face of the planet, at least by normal people.

[confused SCOTUS]

Anon E. Moose,

In your exaample, if allowance was secured by adding E, then why not move D back into a dependent claim? Or does E need D? If E needs D, then isn't this a good reason to make estoppel apply to both E and D?

[Wants Sexy Time With 6]

4chan is hilarious.

[Anon E. Moose]

I agree with your proposal, confused SCOTUS.

In practice I fear that an Examiner would bristle at the idea of broadening the independent claim in any manner, even by removing a limitation that they themselves argued does not distinguish the claim. It seemes to be viewed as a ground acquisition contest between Examiner and Applicant, rather than an exercise to grant the Applicant the broadest protection to which he is entitled. It's currently so taxing to get ANY claim allowed, I could see why failing to remove "D" to a dependent claim could be a considered strategic prosecution decision.

[broje]

@ Max and others who think the gasket is obvious:

If the gasket is in the prior art, that's a different matter. And maybe it was. But to conclude that adding the gasket is obvious even where no prior art discloses it seems to go a bit far.

If the disclosure of the gasket where none was known before is of insufficient value to warrant a patent, then surely the competitors will have no complaint in doing without it.

[Hughbert]

What with all of the "namestealer" allegations being made and refuted, I tire of "Malcolm Mooney" comments and the inevitable barrage of mostly unproductive responses these comments elicit.

This website serves (or can serve) a valuable function to serious patent practitioners. "Malcolm Mooney" comments and their responses significantly degrade the benefit and usefulness of this site.

Instead of being a valuable forum for educated discourse, the site is reduced to being a sounding board for opinionated blowhards more interested in stroking their own egos than in offering insightful observations.

I hope the moderator will consider this.

[Just an ordinary inventor(TM)]

Dear broje,

Hear hear -- I agree.
I haven't been following this thread closely, but what you wrote makes more sense than most other comments.

[inviting body punches]

Broje--

You might want to rethink your last paragraph--it's a stunning example of tortured illogic.

[Just an ordinary inventor(TM)]

Dear broje,

Then again, Mr. inviting body punches makes a good point – but I think knew what you meant to say.

[6]

"What with all of the "namestealer" allegations being made and refuted, I tire of "Malcolm Mooney" comments and the inevitable barrage of mostly unproductive responses these comments elicit.

This website serves (or can serve) a valuable function to serious patent practitioners. "Malcolm Mooney" comments and their responses significantly degrade the benefit and usefulness of this site.

Instead of being a valuable forum for educated discourse, the site is reduced to being a sounding board for opinionated blowhards more interested in stroking their own egos than in offering insightful observations.

I hope the moderator will consider this."

This is the interwebz, I hope the moderator will consider this.

[Censored GP]

Broje: """"If the disclosure of the gasket where none was known before is of insufficient value to warrant a patent, then surely the competitors will have no complaint in doing without it.""""

So you're proposing that we do away with obviousness and simply stick to anticipation?

Because that's the implicit suggestion you've just made.

[Erez Gur]

Broje,

I think that Max Drei was just trying to prove that the European problem-solution approach leads to the "correct" conclusion.

Max, correct me if I am mistaken, but when going from a "compartment" to a "compartment + gasket" the technical problem solved is preventing water entering the compartment.

Since gaskets are known features for preventing water entering compartments, the claim would likely not be patentable in Europe.

[Malcolm Mooney]

broje: "If the disclosure of the gasket where none was known before is of insufficient value to warrant a patent, then surely the competitors will have no complaint in doing without it."

LOL.

Because everything new that has any "value" whatsoever to anybody should be patentable. We've been down this road before. There is a tendency in certain circles to confuse the promotion of "progress" with the promotion of "patenting," even as late as Spring of 2009.

[Malcolm Mooney]

Hugebent "What with all of the "namestealer" allegations being made and refuted"

I'm thinking DC isn't having much difficulty determining who is the real Malcolm Mooney versus CaveMan/Eye/JustSaying/Banned or whoever was funning with us over the weekend.

[6]

This just in: patent examiner recieves evaluation, stern portion of the eval is dedicated to telling the examiner to allow some cases since there are entirely too many RCE's (in the spe's opinion). This portion repeated many times, with budgetary concerns noted throughout. Spe wants offers of patentable subject matter made if possible, even if applicant turns them down. Other than that, eval check plus as usual. Examiner figures np but notes feeling that the acceptance rate amongst applicants would very likely continue to be low if not for the current econ crisis.

I should note that this particular examiner was not me. I should also note that I have observed an uncharacteristic willingness to accept claim language in the last month amongst attorneys, although to date no applicant has accepted the proposal. Also, another app went abandoned due to the company going into bankruptcy (this is so embarrassing on the phone lolz). My smaller applicants r dying off.

[MM = DC]

"This just in: patent examiner recieves evaluation, stern portion of the eval is dedicated to telling the examiner to allow some cases since there are entirely too many RCE's (in the spe's opinion). This portion repeated many times, with budgetary concerns noted throughout. Spe wants offers of patentable subject matter made if possible, even if applicant turns them down. Other than that, eval check plus as usual. Examiner figures np but notes feeling that the acceptance rate amongst applicants would very likely continue to be low if not for the current econ crisis."

Wow, you mean that if you treat your customers like shyt for years, they will go away in droves because the economy is crappy and they know how poorly you will treat them?

6, does this make you and your fellows trained on the "reject, reject, reject" mentality sad in the pants that you'll have to start allowing cases?

[6]

"Wow, you mean that if you treat your customers like shyt for years, they will go away in droves because the economy is crappy and they know how poorly you will treat them?"

Mmmm, I still don't think of them as "customers", and I don't attribute them going away to "and how poorly you will treat them" I attribute it 99% to "because the economy is crappy" and "recent caselaw".

"6, does this make you and your fellows trained on the "reject, reject, reject" mentality sad in the pants that you'll have to start allowing cases?"

Idk I've been allowing one or so per bi-week lately. Lots of cases are on their RCE or 2nd so they're getting allowable. They haven't all been paying their issue fees though apparently... But even with that said, I could probably indicate allowable subject matter more often than I do, but it's hard n I dun wanna so I don't think I will just yet :)

In other news I'm sad in the pants at work 99% of the time :( The last one percent of times though, whew ... if you haven't tried it yet, I recommend bringing in the gf to show her what you do at work asap.

This post deleted in 5, 4, 3, 2 ...

[confused SCOTUS]

Anon E. Moose,

Thanks for your post. I agree, sadly part of the strategy has been ground acquisition. I advise my clients that examiners can oftentimes be unpredictable. I sometimes suggest for example, to take the allowed claim (with D + E), cancel the others, obtain patent. Before issuance, file a continuation application removing D and explain to the examiner that it should still be allowed because allowance is based on E, referring the examiner's attention to the previously issued case. The client of course does not want to pay the extra app fee, but then I explain that this is as you say part of the ground acquisition contest. With a continuation application, the examiner gets his points and is more likely to allow the claim without D; the perception to the examiner being "oh this poor patent practitioner overlooked that he could have removed D in the prior application, I'll take my easy points and allow this without D."

I think what you also might be suggesting Anon E. Moose, is to leave well enough alone, no? If you remove D in your example, as I early suggested, the examiner as you say may bristle at the idea and then cite new art rejecting the claim directed solely to E. I have seen this happen on several occasions, both when D is removed in the present case (as I mentioned in your example) and also when D is removed by a continuation (as I mentioned in the previous paragraph). In either case, the applicant is caught in a catch 22, because the more the applicant presses his claim for E (without D), the more the applicant creates estoppel effects on the previously allowed (or perhaps now by this time withdrawn from allowance) claim D + E.

[MaxDrei]

Erez Gur is not mistaken. The state of the art includes the Scottie Williams pick up with compartment in the load bed, closed by a hinged lid. It is to be weather-proof. Let us imagine people skilled in the art, following the Williams teaching. Some sort of weather-tight seal is implicit. In that sense, Williams deprives the claim of novelty.
But, let's take the game further, and put a narrow construction on "Gasket". Is it that flat thing between a cylinder block and a cylinder head? Apparently not. Could its ambit be wide enough to embrace all those squashy rubber strips that go round the likes of automobile trunks, lunch boxes etc etc? Apparently it is? If so, what in the world could be more obvious, than to use one of them to weather-proof the lid of the Scottie Williams in bed lunch box? As somebody upthread hints, there is an unassailably convincing reason why you should not be able to get a 20 year monopoly on the obvious implementations of prior art teachings. I had thought that much to be obvious.

[MaxDrei]

Readers, you might be able to imagine that 25 years of practice of EPO-PSA makes one intolerant. Intolerant of those who continue to argue (but who know better inside) that something manifestly obvious isn't so. But just as intolerant of Examiners in the PTO who assert that some subject matter is obvious, without running any half way respectable argument that it is obvious. But threads such as this do help me to remember how the world was, before EPO-PSA. Keep those comments coming, please.

[Moving on]

MM = DC

Why don't you leave the board to MM, MD, and 6? They have 50% of the posts anyway. Actually, it isn't hard for them. Each of them only have 2 or 3 core ideas that they recycle in their posts -- not a whole lot of critical thinking needed.

You might as well rename the board "Patently-O -- brought to you by the good people at the Patent Fairness Coalition."

Do yourself a favor and just move on.

[MaxDrei]

Well said there, Moving On. All those who have nothing of value to contribute should indeed find something more useful to do with their precious time. Those who remain should pause before posting, and ask whether their contribution is optimised, for adding value. It would be a shame to see this most frequented blog lose its impact.

Back to the thread though. tell me, moving on, how wide is the ambit of the technical feature "gasket"?

Perhaps "anything, in the nature of a sealing strip, under the sun and made by man".

How far back in time must one go, to find it an invention to put a sealing strip around the lid of a container that is required to be weather-proof? Or was it an invention to select, out of the universe of sealing strips, that unique member bearing the distinctive name "gasket"?

Which one of my paltry 2 or 3 "core ideas" is that then?

[Bollocks!]

Max has once again exercised his cutting-edge analytical skills and totally misconstrued the comment made by Moving on.

More rubbish from Max.

[MaxDrei]

More bollocks from Bollocks!. Is it only in the British Isles that the word Bollocks! is decidedly not one to be uttered, in anywhere approaching polite society? Your spam filter filters somewhat idiosyncratically, Dennis. It's evidently not one that can read Brutish English.

[disinterested but not uninterested]

You know Max, Bollocks was right--take another read of Moving on.

[MaxDrei]

I did just that, Disinterested. Thanks for the invitation. But I'm still struggling to see how I "totally misconstrued" it. Never mind. There's quite a lot on this blog that I don't understand. I earn my living serving American clients, so it's important that I continue to struggle to understand what they are going on about, and then struggle to get my meaning across to them in a way that they can understand (You are American, I take it).

[disinterested but not uninterested]

Max--

It would seem to me that Moving on was not suggesting that MM=DC had nothing of value to contribute (as you interpreted), but rather that Patently-O was not an appropriate forum for the contribution by MM=DC of anything of value.

I actually disagree with Moving on's extreme position, but it is becoming more burdensome to separate the wheat from the chaff on Patently-O.

[Just an ordinary inventor(TM)]

Dear disinterested but not uninterested,

You got that right!

[Malcolm Mooney]

"it is becoming more burdensome to separate the wheat from the chaff on Patently-O."

It's funny that you say so because I don't have that problem. One thing that helps is if you pay very little attention to "new" commenters who sign their comments with cute names and complain about vapidities that have nothing to do with the topic of the thread.

[MaxDrei]

Thanks Disinterested, for taking the time, and helping me towards a better understanding of what Moving On was thinking, and thereby gifting me a reason to laugh out loud. Coalition for Patent Fairness? Can't say I've never heard of it, but I can't tell you what it stands for and it holds about as much interest to me as flying to the moon. I suspect that goes for Examiner 6 as well, and for maverick Mooney, so where exactly is the CPF conspiracy on this board to pervert the course of just patents in the USA? Considering how much MM, MD and 6 write, it's remarkable how infrequently they debate with each other.

[broje]

@ Max again:

Why do you now bring up the Williams patent? Earlier, you were all too eager to dismiss the patentability of the Felix claim purely on the basis that adding a gasket would be obvious absent any prior art. I quote:

"Is this another case of a court getting to the "right" result, but with the "wrong" legal tool? I haven't read the PH but I gather that the gasket was necessary to achieve novelty over the art. So what sort of flash of genius is that then, to add a weather-proof seal around the periphery of the lid of a cavity in the floor of your open pick-up?"

I do not think I am alone in thinking that obviousness of a claim should be more than a smell test. If none of the applicable prior art showed a gasket, then only a purley subjective standard can conclude that it is obvious. If Felix were the first to even propose weatherproofing such an article, what is the harm in letting him have a claim to a gasket? As we can plainly see, it was easy to invent around.

And even if Felix had managed to get a claim not limited to a particualr attachment of the gasket, surely there are other ways to weatherproof such an article. And that is why we force applicants to claim their particular solution to solving the problem, as opposed to the result of the problem being solved per se. We even have the beloved and totally non-non-sensical preemption doctrine that would have prevented Felix from claiming EVERY solution to the problem (maybe, or maybe that's just for algorithms).

That is why we do not need to prohibit inventors from claiming imporovements that were nowhere disclosed in the APPLICABLE prior art on some subjective obviousness basis. If it is so valuable that competitors cannot do without it, then why was it not already in the art? And if it was not valuable enough to already be in the art, what is the harm in letting them claim something of so little value?

Under an objective obviousness standard requiring that every element of the claim be evidenced in a permissible combination of prior art, Applicants get a claim commensurate in scope AND VALUE to their contribution. I see nothing wrong with that.

[Eh Nann]

"And if it was not valuable enough to already be in the art, what is the harm in letting them claim something of so little value?"

If addition of the weatherproofing gasket reasonably would have been obvious to a PHOSITA, then it should not be patentable. A "what's the harm?" standard for patentability is no better than a smell test.

[collapsing the wave function]

"cute names"--like "Malcolm Mooney"?

nice misuse of the word "vapidities", by the way

"stupidities" would have been much more accurate, as you have so eloquently just now demonstrated

[Bollocks!]

Mooney first claims that he doesn't have the problem of separating the wheat from the chaff, and then immediately proceeds to describe one of his strategies for doing just that.

More rubbish!

[Dr. Paul Weston, MD, PhD]

Dear Mr. Bollocks!,

Malcolm is seriously ill, with an almost untreatable mental disorder.

In consideration of his health condition, it is best to ignore him altogether, for his own good.

[Dr. Paul Weston, MD, PhD]

Numeral 6, on the other hand, is just pulling our chains.

[Just an ordinary inventor(TM)]

Herr MaxDrei., on yet another (the third hand), is just a left over from WWII Germany.

Max is not to be taken seriously as an informed IP practitioner here or anywhere.
However Max is educated and well written (so is Malcolm, but he and Max are still quite nuts).

[MaxDrei]

Jaoi, my only comment is that I'm puzzled by "well written". Amongst juveniles, I have heard the expression "well wicked". But I'll assume what you mean is that you can follow my stuff. For that feedback, I'm grateful because I have recently found out that some other readers do have trouble following my drift.

Broje, to your points:

1. A smell test for what is obvious is no good, I agree. We need objectivity and evidence. But, sorry, your quote of my words fails to substantiate your assertion that I stand for a smell test. Williams is but one out of a multitude of prior art suggestions to include a "gasket" around the periphery of a box lid that is to be weather-proof. As Erez Gur points out upthread, we have here a simple set of facts on which to perform EPO-PSA, to dispose of the obviousness issue in short order.

2. As to the "Where's the harm?" test whether obvious subject matter should be allowed to issue, I'm dumbstruck that any professional patent practitioner should dare to suggest it. I thought that the USA stood for free competition, minimal state interference, and promotion of the progress of useful arts. I had thought that it had been accepted for a century or more that the "Where's the harm?" test was incompatible with all those worthy objectives.

3. As to the "If obvious, why not done already?" test, read John Duffy's "Timing" theory of obviousness which, by the way, chimes in nicely with EPO-PSA.

4. As to your "Inventive selection" of the special solution "gasket" as opposed to the general, run of the mill,"non-gasket" sealing strip art, see my point above, that first you have to define what a "gasket" is. Then you have to tell in what way it's surprisingly good, notwithstanding its prior art ubiquity for such applications.

5. If the Felix claim were on Monty Python it would be a Norwegian Blue.

[ThisMortalCoil]

A tisket, a tasket, a patent for a gasket?

Corblimey, luvvaduck guvnor, what a to-do don't you know?

[Just an ordinary inventor(TM)]

Dear Max,

I find about a third of your posts enlightening and a third entertaining.
Almost all are well composed.
I admire commenters who take the time and care to express themselves well.
I for one thank you for your comments.
Please continue to lay off the material that some, including myself, find offensive.

[Max reveals his naivete]

MaxDrei: "I thought that the USA stood for free competition, minimal state interference, and promotion of the progress of useful arts."

I see this naivete among all my european clients (French, German, and Danish), save for the English.

A product of continental isolationism, combined with antiquated educational materials and methods giving the common, and mistaken impression, that today's America is the same as that of the 18th and 19th centuries.

The cultural and intellectual backwaters of continental europe lost their relevance to anything but each other some time ago.

That type of naivete is every bit as embarrassing as the fact that some 50% of americans supposedly can't locate the USA on a world map.

[MaxDrei]

Well thank you JAOI but, as you see from the offering immediately above, I'm just a naive ie "foolishly credulous" and "simple" being. This has the consequence that sometimes I just don't know in advance what you are going to find offensive.

Next time I unwittingly offend you, allow for the possibility that I'm just calling it as I see it "eschewing subtlety" and not deliberately trying to wind you up.

Mind you, winding some people up can be great fun, as I think we both know.

[MaxDrei]

So, Europe thinks that the USA hasn't changed in 200 years, does it? Maybe that's because Americans today are always invoking the 200+ year old Constitution. I retort with a reference to all those American posters who continue to assert that we in Europe are, still to this day, all serfs living in a feudal society. Where's your evidence, that when Europeans think about America they think of constraints on free competition, State interference, and opposition to progress of useful arts.

Cheer up, I say. No need to be embarrassed by the opinions of naive Europeans: they are not what you assert.

But I'm interested in the distinction you draw, between your mainland European clients (naive) and the islanders (not naive). Do you think it might be explained by the differences between a civil law and a common law jurisdiction? Any readers in Canada out there?

[Coalition for Articulate Debate and Discussion]

Nobody's wound up except you, Max.

We're just assessing your credibility, knowledgeability, and character in a public forum, based solely upon your own statements, so that we may better judge the value of your contributions when you offer your opinions and judgments.

We look for reasoned debate, supported by demonstrated fact, in order to advance the field of patent law. Your comments thus far, though perhaps entertaining, have amounted to little more than boosterism, diatribe, invective, taunting, and goading, all set against a background having as its central feature the implicit assumption of european superiority in whatever dimension is under discussion.

It is juvenile, distracting, and banal. Please consider and craft your future posts more carefully.

[MaxDrei]

Now I'm feeling queezy all over again. As I have already written, I'm prejudiced against posters who write "we". I thought America was the home of the proud, free-thinking individual. But, come to think of it, Germans are supposed to be the serious herd animals, poets and deep thinkers, philosophers. So, maybe the "we" of your post represents the German contingent on this blog. German, are we, dear Coalition?

Meanwhile, one man's "provocative" is another man's "invective". Post some more of your thoughtful stuff please Coalition, and I'll tell you how much I think your "demonstrated fact" advances the field of patent law etc.

Alternatively, engage with this thread, like I have done. What do you think "gasket" connotes?

[a coalition member]

The opinions of naive europeans ARE what I assert.

It is embarrassing because western civilization owes the vast majority of its intellectual, social, and historical base to europe. All those involved in western civilization owe a tremendous debt to historical europe, and cannot help but feel that europe should have developed in such a way that it could serve as a model in many ways for other bastions of western civilization. This feeling even has a basis in rationality, as europe had the advantage of a tremendous head-start.

The embarrassment comes with the realization that our hopes were ill-founded.

Many of us living elsewhere feel no such embarrassment, as we have no illusions about the utility of europe as a model.

Why don't you do something worthwhile about the banlieus of Paris, the plumbing of Pecs, the ch*ld porn in Stockholm, the drug addiction in Amsterdam, the tax-evasion in Guernsey, the ch*ld prostitution in Bucharest, the nepotism in Geneva, the environmental degradation of Evian-les-bains, the prevalence of guns in Sarajevo, the guest worker immigration policies in Barcelona, the Turkish population in Copenhagen, and I could go on and on and on...

I don't see pan-european socially normative attitudes and values contributing to much at all worth emulating (except for perhaps urban infill architecture and fashion eyewear) including the system for granting and administering intellectual property rights.

The U.S. system is far from perfect--in fact, I believe it to be a shambles. But europe is no place to look to as a positive model for future possible reform.

And it is thus easy to dismiss your posts, which amount to nothing more than "why don't you be more european". Because we are NOT european, nor do we want to BE european, or even be LIKE europeans. And for good reason. The IP system is an expression of social policy, with the same underpinnings as all the other social policies that are proving unable to promote european progress in other areas.

[Virginia Woolf]

Oh, how wonderfully cathartic!

More tea, Lytton?

[MaxDrei]

"The U.S. system is far from perfect--in fact, I believe it to be a shambles. But europe is no place to look to as a positive model for future possible reform"

I know how you feel, Coalition Member. The European Union would have standardised on English as its working language long before now....Except that it's the language that the English use, so adopting it is simply out of the question. Virginia, aren't you and Mr Strachey English? That tea you're urging on him, a purgative is it?

If, as you say, you have a "shambles" for a patent system, that needs reforming, I should have thought you would just be glad of a good solution to the problem, and not fussy where it comes from. Like, the problems in the banking system. Nobody's fussy about where the best solution to that problem comes from.

[Malcolm Mooney]

Max, this "coalition member" has an almost untreatable mental disorder.

In consideration of his health condition, it is best to ignore him altogether, for his own good.*

*this post made from recycled troll poop

[Wants Sexy Time With MM]

This discussion makes my gluteus maximus itch.

[MaxDrei]

Thanks Malcolm. In real life I run a mile from loonies, but somehow on a blog it all seems so safe to treat with them. And such fun.

In the meantime, "Coalition" himself will be feeling vindicated, now he has a contribution from one of his members that justifies his use of "we". Or are they actually one and the same person, I wonder.

[broje]

@ Max and Eh Nann,

I applaud your rebranding of the objective test for obviousness as the "where's the harm test." Good job. Karl Rove would be proud.

Of course, I was pointing out that the policy for having an objective obviousness test is sound, where that test requires that every element of the claim be evidenced in a permissible combination of prior art. For one thing, KSR changed what is a permissble combination of prior art. Now it is possible (and common in my experience) for an Examiner to say that one skilled in the art would be motivated to combine the teachings of the references for something as trivial and/or ridiculous as: for fun; as performance art; or due to a complusion from OCD. And they even go further and say KSR means that a claim element not found in the art at all can still be obvious because the PHOSITA would have been motiviated to MODIFY the teachings of the references. In other words, it is not required that the combined references enable the claimed invention, so long as the PHOSITA could have invented the additional subject matter NOT enabled by those references. That is not an objective standard at all. That is a smell test.

I maintain that the only reasonable way to implement an objective standard is to require that each and every element of the claim be disclosed in at least one of the prior art references. My "what is the harm" comment merely points out a factor in why that test constitutes sound public policy.

[Bollocks!]

Rubbish again from Max--

"...I should have thought you would just be glad of a good solution to the problem..."

Max improperly reduces dissatisfaction with the U.S. system to a single problem, then incorrectly assumes that europe provides "a solution" to "the problem", and then further arrogates to declare "the solution" as a "good" solution.

Void ab initio.

In other words, Rubbish!

[MaxDrei]

Hi broje. What I smell is the USPTO trying (and failing because of inadequate training) to operate EPO-PSA. JAOI and I have talked about the AGREVO case at the EPO, where the "motivation" aspect is explained. I wonder whether JAOI has yet applied Agrevo to the facts of Felix v Honda. Erez Gur is there already though. The point for me about EPO-PSA is that it sets a framework for argument between prosecutor and Examiner, in which the rules (set by the highest appeal instance) are crystal clear and so the obviousness debate doesn't get heated. Besides, you won't find either side (Applicant, or Petitioner for revocation of the patent) arguing that EPO-PSA is systemically skewed against them. That seems to me rather noteworthy.

BTW, I hadn't realised I had re-branded "objective" as "where's the harm". As usual, I'm not communicating very well.

[MaxDrei]

I have to say that Bollocks makes a good point, that the deficiencies of 101, 102, 103 and 112 pale into insignificance when compared with all the other problems within the US patent system, on which I offer no solution. Now, as to Felix v Honda. Any thoughts anybody?