An anticlimactic finish November 20, 2009
Posted by Brian Schar in Patent prosecution, USPTO.add a comment
This is the last installment of my occasional series about MPEP 2143.01, which will focus on 2143.01(I). That section is entitled “Prior Art Suggestion of the Desirability of the Claimed Invention.” Essentially, 2143.01(I) just states that the “teaching, suggestion, or motivation” test is one way to establish obviousness, and that the motivation to combine need not be expressly set forth in writing. Unlike the other sections of MPEP 2143.01, which inform the applicant of ways to show nonobviousness, 2143.01(I) informs the examining corps about a methodology to show obviousness. And that’s about it.
Next up, a discussion about the safe harbor that isn’t, when an applicant attempts to amend an independent claim to include the limitations of claims depending therefrom, concurrent with the filing of an appeal brief.
The TTAB loses again November 6, 2009
Posted by Brian Schar in Federal Circuit, General, Trademark.2 comments
The Federal Circuit has put the TTAB on a short leash this year. In this recently-decided case, Judge Moore slapped the TTAB for bureaucratic gamesmanship that “conflicts with the plain language of…regulation.” The TTAB had drawn an artificial distinction between a trademark “application file” and ”documents and other things filed in connection with the application.” That distinction was used to cancel a trademark, because the trademark holder had failed to resubmit evidence that was already in the trademark prosecution history. The Federal Circuit saw right through that, stating flatly, “[t]hat was error.”
Perhaps if we’re lucky the Federal Circuit will turn the same kind of attention to the BPAI in 2010.
FoundationIP flops again October 26, 2009
Posted by Brian Schar in General.1 comment so far
It’s yet another day of an all-day outage because of an alleged “upgrade.” They changed the login page photo and turned things blue, and I suppose the servers couldn’t handle that. Now if they could just get it to run consistently, and fix some of the persistent years-long bugs and kludges (e.g., why do I have to enter the date of a filing receipt twice?), I wouldn’t mind as much. But instead of giving us more information about what just happened, with the daily “FIP was down for X minutes and now is back up,” I’d prefer that it just work.
“I do not think that word means what you think it means” October 23, 2009
Posted by Brian Schar in Patent prosecution, USPTO.add a comment
The word being “moot.”
One of my least favorite things about Office Action is the form sentence that states “Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.” More often than not, the Office Action cuts and pastes a section from a previous Office Action that necessitated the applicant argument that was supposedly considered but is now “moot.” Then I get to cut and paste the same argument a second (or third, or fourth) time in the response. I suppose this is “compact prosecution.”
Viva Las Vegas! October 14, 2009
Posted by Brian Schar in General.add a comment
Venue is one of the most contentious issues during contract negotiation between parties in two separate states, or countries. I usually deal with it in one of two separate ways. First, leave it out altogether, so that the parties fight about where to fight before they fight, which they’re going to do anyway. Second, pick a state or country that is neutral and English-speaking. At least one of these solutions is usually acceptable to both parties.
Some time ago, in the course of reviewing a contract with a party outside California that was still in the American West, I chose Las Vegas as a venue. There are plenty of flights, it’s central in the West, and, it’s Las Vegas. Every time I’ve inserted that provision in that contract, there’s never been an objection. Even though what happens in court, or arbitration, in Vegas doesn’t stay in Vegas, that doesn’t mean the city isn’t a draw. If you ever get stalemated in contract negotiations about where to agree to jurisdiction, propose Las Vegas as a solution, and odds are good your counterpart will stop objecting and start wondering where on the Strip he or she is going to stay in case the contract goes south.
MPEP 2143.01(II) October 13, 2009
Posted by Brian Schar in Federal Circuit, General, Patent prosecution, USPTO.add a comment
MPEP 2143.01(II) directs that, “where the teachings of the prior art conflict, the Examiner must weigh the suggestive power of each reference.”
This section of the MPEP describes a fact situation that does not arise often in practice, in my experience. In the cited case, In re Young, 927 F.2d 588 (Fed. Cir. 1991), the application was rejected as obvious over a patent to Carlisle. The applicant, Young, claimed a particular spacing of air guns in water to generate a seismic pulse. According the USPTO and the Federal Circuit, Carlisle disclosed the same spacing for chemical explosives in order to generate a seismic pulse in water.
Young challenged the Carlisle patent, based on a later-published article published in a peer-reviewed journal by Knudsen. Young claimed that the experiments conducted by Knudsen discredited the usefulness of the particular spacing of Carlisle, thereby teaching away from the use of Carlisle. The Federal Circuit held that it didn’t matter whether Knudsen contradicted Carlisle; Carlisle was still relevant “for what it disclosed in relation to the claimed invention.” Nevertheless, “[t]he Board must consider all disclosures of the prior art…to the extent that the references are, as here, in analogous fields of endeavor and thus would have been considered by a person of ordinary skill in the field of the invention. The Board, in weighing the suggestive power of each reference, must consider the degree to which one reference might accurately discredit another.” (emphasis added)
Turning to the substantive content of Knudsen and Carlisle, the Federal Circuit held that “Knudsen is not so credible or persuasive of a contrary teaching that it would have deterred the skilled artisan from using the teachings of Carlisle.” The conditions of the experiments of Knudsen were different enough from the content of Carlisle, and “did not accurately test Carlisle.” As a result, a skilled artisan would have dismissed Knudsen, not Carlisle. And with that, the applicant’s hopes were dashed against the unforgiving shoals of 35 USC §103.
The key takeaway from In re Young that didn’t make it into the MPEP is the “credible and persuasive” test. If you attempt to rebut a first reference with a second reference that purportedly discredits the first, you have to be sure that the second reference is “credible and persuasive.” If so, that second reference might be sufficient to overcome the first reference.
Even so, one has to be careful with this argument. In this fact pattern, what you’re really arguing is that the first reference is relevant to the claims, but that a second reference would have discouraged people from utilizing the teachings of that first reference. That argument essentially admits that the obviousness rejection would have been valid, but for the uncertainty introduced by the second reference. For that reason – the essential admission of the relevance of the first reference – the Federal Circuit set the bar pretty high with the “credible and persuasive” test. Even if you are successful, this argument opens the door for the Examiner to reject the claims under 102 instead, based on inherency.
Nevertheless, MPEP 2143.01(II) may be useful in a new and/or unpredictable art where there is significant controversy about a particular aspect of the claims. One or more references that contradict a cited reference may be produced to show that one of ordinary skill in the art would not have blinded followed the cited reference, but instead would have been just as likely to reject that cited reference and head down another path to the invention.
Next up, I will finish out my intermittent series on MPEP 2143.01 with a discussion of MPEP 2143.01(I).
Selecting outside counsel, how? September 1, 2009
Posted by Brian Schar in General.add a comment
I understand the ACC Value Challenge, although I disagree with its goals to the extent that certain ACC members want to change the structure of law firms. I don’t care about the structure of law firms, any more than I care about the structure of my docketing database provider or our insurance broker. I have enough to worry about already. What I want as the in-house customer from outside counsel is good lawyering, victory, and predictable cost. How we get to predictable cost can take a lot of forms, not all of which are flat-fee-based.
The GC at FMC has been a leader in the alternative-billing movement. I understand that the challenge of selecting and managing outside counsel at a huge company is huge compared to my occasional need to select outside counsel at a startup, and that a large company needs some kind of process to go through. But asking law firms to submit tweets as to why they should be hired, in my view, crosses the line into “dance, monkey!” territory: http://amlawdaily.typepad.com/amlawdaily/2009/07/fmc-technologies-search-for-outside-counsel-enters-final-phase.html I don’t understand the relevance of a law firm marketing person’s Twitter ability to the ability of a law firm to successfully handle multiple matters on a large scale with predictable costs and results. You might as well ask the firms to all bring a dozen donuts and pick those who purchased the tastiest ones to proceed to the next round.
A rare litigation-oriented post August 27, 2009
Posted by Brian Schar in Off topic.add a comment
I don’t know what to think about Sibel Edmonds. If it weren’t for the gag orders and the assertions of “state secret privilege” by the DoJ, I would be inclined to place her in the same category of imaginative and entertaining storytellers such as Danny Casolaro or Delmart Vreeland. Her recent deposition doesn’t sell me on her allegations. But its transcript is an interesting learning tool. Bruce Fein led off with awkward and strident speaking objections until he got shot down hard by former Marine JAG attorney Daniel Marino. Fein’s later cross-examination was inartful, to put it lightly, and Marino set forth clear objections that were on-point. That Marine Corps JAG training must be as tough and thorough intellectually as basic is physically.
And a small gift from the MPEP August 26, 2009
Posted by Brian Schar in General.add a comment
The MPEP clearly states that “[i]f an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious.” Callaway doesn’t say anything new that MPEP 2143.03 hadn’t said before, but at least it’s Federal Circuit authority.
A small gift from the Federal Circuit August 21, 2009
Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.add a comment
The Federal Circuit gave patent prosecutors a little gift last week, in the form of Callaway Golf Co. v. Acushnet Co. One of my pet peeves about patent prosecution is the prevalence of low-value 103 rejections of dependent claims. Given that a dependent claim is allowable if the parent independent claim is allowable (along with, of course, the intervening claims), and given that one would want to amend or argue the parent independent claim to make it allowable, it seems like a waste of time for Examiners to spend any time at all making a 103 rejection of a dependent claim.
Callaway gives practitioners a tool for getting rid of those rejections, holding unequivocally that “[a] broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” (No. 2009-1076, slip op. 21-22) That is, if a dependent claim is obvious, then the parent independent claim is obvious. The logical contrapositive of this holding is that if a parent independent claim is nonobvious, then all dependent claims are nonobvious.
While this is not an argument that one would use in isolation, it nevertheless provides another tool to use in Office Action responses. I would hope that the USPTO will give the Examiners some training on this case. It would save them time if they didn’t examine dependent claims for obviousness if they didn’t find the independent claim obvious.
