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.
The first US patent August 12, 2009
Posted by Brian Schar in General.comments closed
I always seem to encounter some bit of patent history completely by accident when on vacation. In the course of taking a walk through the historic Old City area of Philadelphia, I found this historical marker through blind luck. It stands outside the historical location of the home of Samuel Hopkins, the inventor awarded the first U.S. patent. This patent for producing potash is now designated X000001, the X-series patents being those reconstructed from other records after the 1836 PTO fire wiped out the records there. It’s a miracle of compact drafting by modern standards; had it been filed today, there would surely have been both a written description and an enablement rejection under 112. Sadly, Hopkins appears to have suffered the same fate as most small inventors today when attempting to license and commercialize his invention.
I wonder what I’ll happen upon next time I go on vacation.
