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What Does a Patent Examiner Do with 900+ References? – Patently-O

America’s leading patent law source
Recently issued patent number 7,651,688 is not too remarkable. Its three claims cover an “antibody composition” with a particular arrangement of “sugar chains.” The oddity is that the first 10-pages of the patent document are filled with a listing of over 900 references submitted by the applicant in a series of six information disclosure statements. (The examiner included an additional nine references based on her search of the art).
The most common type of reference submitted in this case were documents from the file-histories of other US patent applications owned by the same entity (Kyowa Hakko Kirin Pharma, Inc.). Many of the submitted references are actually from the file-histories of related-cases being examined by the same examiner. See table below:
881.    Non-Final OA issued Oct. 17, 2007 in U.S. Appl. No. 10/581,413.
882.    1.111 Amendment filed Apr. 17, 2008 in U.S. Appl. No. 10/581,413.
883.    Restriction Requirement issued Jul. 28, 2008 in U.S. Appl. No. 10/581,413.
884.    Final OA issued Dec. 11, 2008 in U.S. Appl. No. 10/581,413. 

The result here is that the file history includes 13,689 pages of non-patent or foreign prior art. Most of those documents were submitted after the applicant had already received a notice of allowance.
Based on my cursory reading of the file history, I do not see that the prosecuting firm (Sughrue) did anything improper or wrong in this case. To the contrary, based on recent inequitable conduct cases, the patentee is clearly hoping to avoid charges of inequitable conduct based on ‘hiding’ references. Of course, the applicant did not indicate which (or which parts) of the 900+ references are most relevant and everyone is clear that the examiner is not going to read all of the references. As one practitioner wrote to me: “The balance is way off between useful information in an IDS and covering-our-asses in regards to inequitable conduct. Something needs to give.”
I contacted Ken Burchfiel of Sughrue. He provided the following on-point commentary:
Burchfiel: I can’t comment on U.S. Patent 7,651,688, except to commend its excellence, and instead offer more general observations on the infectious doctrine of inequitable conduct in a time of “absolute plague” 22 years after Kingsdown.
In view of the Federal Circuit’s decisions in Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007), it is prudent to provide an examiner with citations to office actions in copending applications. Until the court or Congress acts to limit the ever-expanding scope of the meandering duty of disclosure, which now encompasses information that may be of marginal significance, reasonable practitioners have little choice but to follow the mandate of the Federal Circuit and identify Office Actions in other applications that could later be found to be material.  It may also be prudent to identify relevant foreign applications and office actions in an IDS, in view of Therasense, Inc. v. Becton, Dickinson & Co., No. 2008-1511 (Fed. Cir., Jan. 25, 2010). Although the prosecution history of a foreign application cannot be used to construe patent claims, it may now render them unenforceable. The extent of disclosure required in a given case is, of course, a judgment call that depends on many factors, including the indeterminate “reasonable examiner” standard applied by the Federal Circuit.
The question is not whether information cited in an IDS is helpful to the actual examiner, but rather whether it may later be deemed material to a “reasonable” examiner by a court.  While an actual examiner is required to follow the rules of practice, including the 1992 amendments to Rule 56 limiting the scope of “material” information, a “reasonable” examiner is not similarly bound under Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309 (Fed. Cir. 2006).  It is not possible, as a practical matter, to determine the scope of information that may be later be deemed material to an unreasonable “reasonable” examiner (i.e., one who, unlike actual examiners, is not fettered by the rules of practice).
As the Federal Circuit again emphasized in Therasense, “if this could be regarded as a close case, which it is not, we have repeatedly emphasized that the duty of disclosure requires that the material in question be submitted to the examiner rather than withheld by the applicant. See LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1361 (Fed. Cir. 2001) (“[W]hen a question of materiality is close, a patent applicant should err on the side of disclosure.”); LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 1076 (Fed. Cir. 1992) (“[A close case] makes it all the more necessary that the [reference] should [be] disclosed to the examiner. Close cases should be resolved by disclosure, not unilaterally by the applicant.”).” Whether or not this be divinest sense, it is nonetheless Therasense.
A patent solicitor’s life has never been an easy one. 
Notes:
Law Professor at the University of Missouri School of Law.
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“OK, fine. 5500761. Seriously, dude, how many of this examiner’s cases did you have to read before you stumbled on this one?”
I cannot speak to any particular examiner, patent, issues regarding matters before the office, or readings of patents in particular. However, in a hypothetical search that I may have hypothetically performed at some point in a hypothetical universe removed from our own there may have been a first hypothetical claim of a first hypothetical patent I came across. That may be what made a hypothetical situation so hypothetically extraordinarily HILARIOUS! Hypothetically speaking of course.
In any event, I might be prohibited from commenting on any matters that are or perhaps even were before the office but that prohibition doesn’t prohibit others from doing the same.
NWPA do you still require me to rewrite the claim or are you all set to go?
“Besides, I’ve never seen that particular patent before. Close, but no cigar.”
OK, fine. 5500761. Seriously, dude, how many of this examiner’s cases did you have to read before you stumbled on this one?
Tags On, Tags Off.
Tags On, Tags Off.
Wax on, Wax off.
The preceding has been a pubic service announcement courtesy of the Outertoob Limits.
attempt 3
attempt 2
kill the bold, attempt 1
“patent 5589974”
I have no issue with a patent or patent app nor do I present a substantive question about any of them either.
Besides, I’ve never seen that particular patent before. Close, but no cigar.
If you’d like to find what patent the hypo was based upon, you should look for one that actually has “where” in place of “wherein”.
“Post a hypo without all the errors and I will opine.”
Ok. Do it in a bit.
You write:
“As MaxDrei gets told over and over again, you can’t just apply individual foreign patent office practices to the USPTO, no matter how well they work in their home countries. You have to adapt the whole system around the change you propose”
which is funny, because it’s me, telling you, that you can’t just plug FtF into an otherwise unchanged edifice of US patent law. That way lies a real Trainwreck.
Best to stay as you are, or start completely afresh from the ground up, like Europe did in 1977. I know, I know, that’s simply not possible in the USA. So, stay as you are.
EPO-PSA is a special form of TSM. I think it could be used with success, in the USPTO. But not by Examiners untrained in it, who think they understand it but don’t, and think they are using it but aren’t. And not by attorneys lacking any training in it, who think they’ve got it, but haven’t.
When it comes to stuff like the Duty of Candor, that too doesn’t translate, between a common law and a civil law jurisdiction. So, when it comes to evidence and equity, nothing that goes on in a civil law Patent Office like the EPO is translatable into the EPO.
BTW, look at the EPC Rules. They give you just one shot at amendment after the FAOM issues. Any amendment after that gets entered only after the Examining Division gives its consent (which is of course never unreasonably withheld).
“… plus I said “possible” – deficient reading skills make me suspicious …”
As did I. Whose reading skills are deficient?
Incidentally, my disappointment stems from your weaving and bobbing in response to 6’s question. I left out an intermediate sentence or two – deficient writing skills.
Or at the very least, your negative view of the patent bar in general is a bit surprising.
Really? Do we read the same comment threads?
nice, I’ve broken the internet.
and I did include the closing “b” tag

While my heart weeps, Gad, and life is tough, I’ll survive. (it’s not the construction, but rather the commenting on patentability angle – plus I said “possible” – deficient reading skills make me suspicious)
A bit more of the red herring IANAE:
“You can’t just sit back and tell the PTO that it’s responsible for allowing your application, until you’ve done your job on behalf of your client.”
The primary job is writing the application. After that is done you can just sit back (that is, until the Office finally gets around to responding, then you get to get back into action).
No one said that there wasn’t work to do – just like no one said that there should be an immediate response.
However, – the phrase “demonstrate entitlement” is hardly synonymous with “write an application”. Choosing such loaded words is yet another indicator that you are not an advocate. Or at the very least, your negative view of the patent bar in general is a bit surprising.

“As MaxDrei gets told over and over again, you can’t just apply individual foreign patent office practices to the USPTO, no matter how well they work in their home countries. You have to adapt the whole system around the change you propose.”
Yes, but EPO-PSA has no hindsight bias in it.
The Duty of Candor creates all kinds of problems, and other countries seem to have no problem doing without it.
The patent and legal systems in those “other” countries are different from ours in numerous ways that are not generally considered “patent-friendly”. I wonder if that has anything do with their “seeming to have no problem doing without it”?
The Duty of Candor creates all kinds of problems, and other countries seem to have no problem doing without it. I suggest we do the same.
I agree, but it’s part of a deeper issue.
The USPTO conducts its business on the premise (whether you agree or not) that the applicant should be drafting and filing only allowable patents. That’s why you only get one non-final action. If you amend and get rejected again, the rejection is made final because you should have submitted those amended claims in the first place instead of the first set that the examiner properly rejected. You had your chance at examination, and if you want the examiner to look at the case again, you have to pay again. Most foreign patent offices will give you as many non-final rejections as you want, and as many chances to place your application in condition for allowance.
The disclosure requirement is part and parcel of that culture. The applicant is expected to say to the PTO “here is all the art I’m aware of, and I’ve drafted my claims to be valid over it”. Even the whole “inventor-as-applicant” nonsense is part of the intimate connection between the inventor and his preciousss. In exchange, the patentee gets a higher evidentiary standard to invalidate his patent than in other countries (of which I’m not really a fan). Of course it doesn’t turn out that way in practice, but that’s the philosophy behind it.
As MaxDrei gets told over and over again, you can’t just apply individual foreign patent office practices to the USPTO, no matter how well they work in their home countries. You have to adapt the whole system around the change you propose.
**The applicant has to show that he has invented something, and he has to claim it in such a way that it satisfies the “unless”.**
No, the burden is on the Examiner to show that the claims do not satisfy the “unless.” The burden on the applciant to show that he or she has invented something is just the written description/enablement requirement.
Separate and above from that, the Applicant has a Duty of Candor that requires the Applicant to submit any prior art they are aware of that is material to patentability, unless it is cumulative with other art already of record.
But there is nothing requiring the Applicant to determine whether it is cumulative, or preventing the Applicant from submitting art that is cumulative.
Maybe the law will change to punish Applicants for submitting cumulative art. But that will crate a “catch 22” situation for Applicants.
The Duty of Candor creates all kinds of problems, and other countries seem to have no problem doing without it. I suggest we do the same.
“Second, don’t you find it a bit telling that you supply an actual patent number when 6’s “hypo” did not, hmmm? (that’s a possible violation of examiner ethics mind you).”
What’s a possible violation of examiner ethics, constructing a “hypo” based on a claim in an issued patent? Or my googling the functional language that 6 supplied, to determine the source?
I’m disappointed in you.
They are entitled to a patent “unless” – if you were truly pro-patent and pro-applicant you would know this.
I do know that. I’ve mentioned it a few times in recent weeks. It doesn’t change the fact that an applicant has to demonstrate his entitlement to a patent before he can get one.
Have you checked who is entitled to a patent “unless”? It’s not everyone. It’s “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter [etc.]”. The applicant has to show that he has invented something, and he has to claim it in such a way that it satisfies the “unless”. You can’t just sit back and tell the PTO that it’s responsible for allowing your application, until you’ve done your job on behalf of your client.
IANAE,
“I’m very pro-patent and pro-applicant, I just think applicants should establish their entitlement to a patent before they get one.”
They are entitled to a patent “unless” – if you were truly pro-patent and pro-applicant you would know this.
“Maybe that’s my problem. I should take the position that any document submitted to the PTO must immediately result in the grant of letters patent.”
Immediately is such a red herring – we all know that examination takes time and there is no one clamoring for an immediate result. I will also repeat my standing in that ANY rubber stamping is not appropriate. The stamping of accept-accept-accept is just as wrong as reject-reject-reject (something to keep in mind as Malcolm and his ilk post their views – funny how Malcolm never seems to understand such statements – they must be too vague).
Gad(fly),
Your subtleness is just not subtle enough.
First, 6 would have to actually have a substantive question. Not a likely occurrence as the claim he wrote exactly as he wanted to contained so many errors.
Second, don’t you find it a bit telling that you supply an actual patent number when 6’s “hypo” did not, hmmm? (that’s a possible violation of examiner ethics mind you).
As to comments on the 6 hypo – I have already commented enough – see Jan 30 at 9:37 AM and the note to Ned at 1:23 PM and the additional comment at Jan 31 at 3:18 AM
“Feel free to ignore actual questions of merit, change the topic or ask “What the Sam Hill are you talking about?”.”
Noise, I enjoyed your latest barrage of “skirt and track shoe” and “shields of persistent ignorance” argumentation. But, why won’t you answer 6’s substantive question about the functional limitation in patent 5589974? Don’t let me down…
6, don’t pull your cork.
Post a hypo without all the errors and I will opine.
or take an extremely bullish pro-patent pro-applicant view on every subject.
I’m very pro-patent and pro-applicant, I just think applicants should establish their entitlement to a patent before they get one.
Maybe that’s my problem. I should take the position that any document submitted to the PTO must immediately result in the grant of letters patent.
Noise I see you seem to think that I’m boss12 again. Just because someone claims to be me doesn’t mean you should believe them. If I used such a fp I would have posted it far upthread. Personally I don’t make my own FP’s. I either write everything freestyle in a section or use an office FP.
Don’t forget Malcolm,
Joining the club (either the skirt and track shoe club, or the shields of persistent ignorance club) allows you to ignore calls for anything of substance. Feel free to ignore actual questions of merit, change the topic or ask “What the Sam Hill are you talking about?”.
As to rope and straw, those sub sections of the club are filled. However, obvious sockpuppetry is open to all members, as long as you keep it “rare” (wink wink).
MM: “typically accompanied by a swarm of boring sockpuppets/cheerleaders”
HAH! Don’t flout your ignorance so openly. EVERYONE know that we sockpuppets come in pairs, not swarms.
“6: Give it up. You are so out gunned by NAL it isn’t even close. You appear to be a plastic children’s boat next to a destroyer.”
I think you got that reversed son.
Maybe you’d like to address how this language is “functionallol” NWPA since NAL obviously has no clue as to if it is or isn’t or what makes it so or not.
And please, go ahead, tell us the difference between a method step limitation and a functional limitation. You can even cheat off of broje’s Chisum if you like.
And NWPA, come on man, take a guess as to whom has seen an analogous situation to this one before? Come on, take a guess. I’ll give you a hint if you need one.
NWPA IANAE: You can’t be an attorney, or you wouldn’t be so sensitive.
Unless he’s from Texas.
IANAE Malcolm, are there annual dues or anything for membership in this club?
No. Pretty much the only way to become NAL’s BFF is to gratuitously dump on me or 6 or take an extremely bullish pro-patent pro-applicant view on every subject. Otherwise you’ll be “assailed”, typically accompanied by a swarm of boring sockpuppets/cheerleaders. It’s rather amusing and depressing at the same time. If you stick around long enough and refuse to join NAL’s team, the pathetic nature of NAL’s “assailing” will reach its zenith. Eventually you’ll be “assailed” in threads even before you comment on them and characterized as an example of someone who “can’t read” or who has some other mental defect. My advice to you is to read NAL’s comments carefully, especially the multi-paragraph comments. They often contain vague “haughty” declarations that are worthy of follow-up. Have fun! I’ll contact you in the spring about the date and location of the annual club picnic.
“Oooooooooooooohhhhhhhhhhhhhhhh, I’m so ascared!!!!!”
Actually you probably are. As an attorney (who is probably NAL) pointed out for our Director the other day you get angry clients when you get non-responsives. Needless to say, then you get firzored. So yeah, we know why you call the director everyday, hopin’ not to get firedlol.
“Obviously this is false. Is there some context missing, NAL, that you’d like to add?”
Obviuosly, Malcolm is wrong.
Glad to oblige Malcolm with additional context:
The relevant rule related to a request from an examiner is covered generally in 37 CFR 1.105. It should be emphasized that requests are geared to FACTUAL matters and that hypotheses, opinions and fishing expeditions as to what may be considered patentable or any other type of evaluative appraisal of prior art is outside the bounds of what can be required. Asking for an opinion on what is likely to be patentable is not a “fact” which can be requested. It simply is NOT the applicants’ job to examine.
Also note the following direction provided in MPEP 704.11:
“The terms “factual” and “facts” are included in 37 CFR 1.105 to make it clear that it is facts and factual information, that are known to applicant, or readily obtained after reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR 1.105 are NOT REQUESTING OPINIONS that may be held or would be required to be formulated by applicant.” (emphasis added)
Also telling:
Applicant need not, however, derive or independently discover a fact, such as by experimentation, in response to a requirement for information. The purpose of 37 CFR 1.105 is to improve patent quality, and render better decisions, and not to put applicants in jeopardy of meeting their duties of candor and good faith in their replies to a requirement for information.”
My “I don’t know” answer is a paraphrase of 37 CFR § 1.105 (a)(4):
“Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.”
IANAE: You can’t be an attorney, or you wouldn’t be so sensitive.
Whatever he is, one thing is clear: IANAE has never drafted or prosecuted a patent application in his life.
Wow, you guys are really bad at pigeonholing me. It’s almost as if the mere fact that I sometimes disagree with you convinces your hardwired brains that I must be your enemy.
Malcolm, are there annual dues or anything for membership in this club?
IANAE, “when you amend the claims you can refund the time you charged to your client for drafting the application.”
Finding it difficult to stay focused on the point?
Try some CaffeinoExtremo(RTM).
“…the examiner should only be expected to read the art the applicant has already determined to be POTENTIALLY relevant.”
Every US patent and publication ever might be “potentially relevant”, depending on how you choose to understand the term.
If your IDS lists every US patent and application ever published, have you satisfied your duty of disclosure?
NAL if the examiner asks for more information or more particular information, he is welcome to do so but that is not the point here. Keep in mind that a proper answer to such a requeest is a simple “I don’t know”. Such a simple answer does not impact the client’s rights, and the examiner cannot “go final” in the face of such an answer.

Obviously this is false. Is there some context missing, NAL, that you’d like to add?
Whatever he is, one thing is clear: IANAE has never drafted or prosecuted a patent application in his life.
“…the examiner should only be expected to read the art the applicant has already determined to be POTENTIALLY relevant.”
fixed
IANAE: “Mr. Jones, do you know whether Mr. Smith killed Mrs. Smith?”
Mr. Jones: “No.”
IANAE: “Mr. Jones, isn’t it true you are a retired FBI agent and a neighbor of Mr. Smith?”
Mr. Jones: “Yes.”
IANAE: “Well, then, how come you haven’t figured it out yet!!!”
So does we gets all our search fees back?
Sure, and when you amend the claims you can refund the time you charged to your client for drafting the application.
“…the examiner should only be expected to read the art the applicant has already determined to be relevant.”
So does we gets all our search fees back?
IANAE: I have one word for you, “unless,” not “if.”
the point INANE, is whose job it is to read and examine the material.
It’s the applicant’s job to read and examine the material. Of course it’s also the examiner’s job, I don’t deny that, but the examiner should only be expected to read the art the applicant has already determined to be relevant.
Keep in mind that a proper answer to such a requeest is a simple “I don’t know”.
I’m not an examiner, but a simple “I don’t know” wouldn’t satisfy me when “I don’t know, but I’ll find out” is available as an answer. Would you accept “I don’t know” from a witness if you knew he had easy access to the information?
“duty to inform him of relevant art” is met with the IDS. Period.
What if the IDS listed all US patents and published applications? The relevant art is in there somewhere. Would that satisfy the applicant’s duty of disclosure, in your humble opinion?
IANAE is some PTO employee.
Nope. Never have been.
NAL,
IANAE is some PTO employee. He’s not an “examiner” according to his posts.
Of course, to me, anybody who works at the PTO is an examiner.
“Another agent who doesn’t understand how patent prosecution works.”
Another poster who cannot read – the point INANE, is whose job it is to read and examine the material. As huh? points out, if the examiner asks for more information or more particular information, he is welcome to do so but that is not the point here. Keep in mind that a proper answer to such a requeest is a simple “I don’t know”. Such a simple answer does not impact the client’s rights, and the examiner cannot “go final” in the face of such an answer.
“duty to inform him of relevant art” is met with the IDS. Period.
Examination and determination of just how relevant the art is, is the Examiner’s job. For someone who professes not to be an examiner, your viewpoints are way too much in line with one with recent training.
It’s true what they say. 1% of examiners give the rest of them a bad name.
Then I have my secretary call the TC Director’s office every day and ask when my petition is gonna be granted.
When my petition is granted, then I make the examiner my dog. I order him to heel. Sit. Stay. Beg. Roll over. Play dead.

It’s true what they say. 99% of lawyers give the rest of us a bad name.
“The examiner asks you for something. Not even something unreasonable, if you stop to think about it. You choose not to provide it. He asks you for it again, final action. Or worse, he bounces your reply as being non-responsive.
At what point along this chain does your client get his patent? On petition? Appeal? You’d better hope the higher-ups at the PTO agree that it’s ridiculous to require you to have a passing acquaintance with the thousands of pages of documentation that you dumped in the examiner’s lap as part of your duty to inform him of relevant art.”
Another examiner who doesn’t understand how patent prosecution works.
When I get a silly form paragraph like that, I very politely tell the examiner that I’m not required to do whatever it is the examiner is asking for, and request that the requirement be withdrawn.
If it’s not withdrawn, I file a petition.
Then I have my secretary call the TC Director’s office every day and ask when my petition is gonna be granted.
When my petition is granted, then I make the examiner my dog. I order him to heel. Sit. Stay. Beg. Roll over. Play dead.
And he does!
That’s when my client gets the patent.
BTW, I don’t have to “hope” for anything from “the higher-ups at the PTO.” When I petition Boss 12’s form paragraph, what TC Director is going to deny my petition?
Thanks for this laugh: “Or worse, he bounces your reply as being non-responsive.”
Oooooooooooooohhhhhhhhhhhhhhhh, I’m so ascared!!!!!
BWWWWAAAAAHHHHHHAAAAAAAAAAHHHHHHHHHAAAAAAAAAA
There’s nothing like smacking examiners who write their own form paragraphs, or use form paragraphs written by other clueless examiners, upside the head.
Another agent who doesn’t understand how patent prosecution works.
The examiner asks you for something. Not even something unreasonable, if you stop to think about it. You choose not to provide it. He asks you for it again, final action. Or worse, he bounces your reply as being non-responsive.
At what point along this chain does your client get his patent? On petition? Appeal? You’d better hope the higher-ups at the PTO agree that it’s ridiculous to require you to have a passing acquaintance with the thousands of pages of documentation that you dumped in the examiner’s lap as part of your duty to inform him of relevant art.
6 and his attempts at different pseudonyms…
Except that Boss12 admitted long ago that he was 6 (meekly attempting to recant later)- funny how the “brand” of 6 and its famoosity cannot hide under different names (must be the smell).
In addition to made-up form paragraphs we have made up case law. The cited case does not have the directions as listed. 6, you need to learn how to present citations accurately.
The presentation also indicates that an action should be done – but it is not clear who should do that action:
“If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of most significance”
This smacks of the Examiner’s job. The examiner is to review the submitted list (list already submitted) – bringing known significance TO the applicant’s attention – note that this does not say the applicant does something to bring attention to the Examiner’s attention.
This is indicative of the training that 6 has received – shuffle off as much of the job to the applicant.
A further hallmark signature of 6 regarding rope. From conclusion 17, “including the failure of Stuart’s attorneys to cite the most pertinent prior art, are inequitable conduct which renders the Stuart patent invalid or at least unenforceable.” we see that failure to include contributes to IC (oh, the scourge). Thus, reinforcing the notion that it is better to include when in doubt. Not the message that 6 wanted to put forth.
“Huh, I wonder if Boss 12 is ever been petitioned?”
I’m sure Boss 12 has never been petitioned. Just like I’m sure he’s never lost an appeal.
LOL
Huh, I wonder if Boss 12 is ever been petitioned?
Boss 12, has anyone ever filed a petition to Commissioner in response to your “form paragraph.”
“I have a form paragraph for this exact situation.”
LOL
“Therefore, the references cited in the IDS will not be considered until an underlining of the most relevant references is provided and the references that are not material to the patentability of the claimed invention are deleted from the IDS. Do not highlight the most relevant references, since the IDS will be scanned and the highlighted references will not be visible. Instead, underline the most relevant references listed in the IDS.”
I can’t imagine there’s any registered agent/attorney dum enough to comply with this silliness. At least I hope there isn’t.
“Other examiners reading this post, who also regularly receive massive IDSes, might want to use it”
ROFLMAO
Please do. There’s nothing like smacking examiners who write their own form paragraphs, or use form paragraphs written by other clueless examiners, upside the head.
I have a form paragraph for this exact situation. Other examiners reading this post, who also regularly receive massive IDSes, might want to use it (when appropriate, of course):
Information Disclosure Statement
Concerning Applicant’s duty of disclosure, it is desirable to avoid the submission of long lists of documents if it can be avoided. Clearly irrelevant and marginally pertinent cumulative information should be eliminated. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974).
The information disclosure statement (hereinafter, “IDS”) filed DATE is NUMBER pages long and represents thousands of pages of highly technical disclosure. Thus, the IDS is a “long list.” Moreover, a number of the references do not appear to be material to the patentability of the claimed invention.
Therefore, the references cited in the IDS will not be considered until an underlining of the most relevant references is provided and the references that are not material to the patentability of the claimed invention are deleted from the IDS. Do not highlight the most relevant references, since the IDS will be scanned and the highlighted references will not be visible. Instead, underline the most relevant references listed in the IDS.
>>I think the Commissioner could rectify this >>problem by amending Rule 56 in some fashion >>that would permit the examiner not >>to “directly” consider art filed an IDS >>without some detailed explanation of its >>pertinence, but to permit, as was suggested >>above, the examiner to search the OCR’ed >>versions of the art using a search engine of >>some kind.
This is a problem, but it goes to the Office not having dealt with the real problem of how to get examiners to be experts in a narrow area. And how to help the examiners manage all the references. This IMHO is the key to better prosecution.
I don’t know if I can stand all the civility MM. I might explode and start shouting baboon in my office.
NAL, I had fun dissecting 6’s hypothetical claim. It was a bit off topic, but I didn’t know that until later. 6 may have had a point he was trying to make about the duty of disclosure.
But 6 makes a valid point about wasting the examiner’s time by filing countless pieces of background art as a matter of due caution. I think the Commissioner could rectify this problem by amending Rule 56 in some fashion that would permit the examiner not to “directly” consider art filed an IDS without some detailed explanation of its pertinence, but to permit, as was suggested above, the examiner to search the OCR’ed versions of the art using a search engine of some kind.
“There’s a big difference between having the technical capacity to support a certain number of documents in an online form, encouraging the submission of that number of documents, and acknowledging that it is good practice to submit that number of documents.”
Didn’t see any indication from the post that anticipating 300 citations meant the PTO encouraged or acknowledged that submission of such a number was good practice.
“Besides which, the PTO doesn’t make the law”
They don’t??!!!! Well, somebody ought to tell them that. They’re clearly operating under the delusion that they do.
Apparently, the USPTO anticipates at least 300 combined citations
There’s a big difference between having the technical capacity to support a certain number of documents in an online form, encouraging the submission of that number of documents, and acknowledging that it is good practice to submit that number of documents.
Besides which, the PTO doesn’t make the law, especially not IT staff at the PTO.
Apparently, the USPTO anticipates at least 300 combined citations of U.S. patents and U.S. patent application publications. Here is a recent advisory from the USPTO:
“Advisory (31JAN10): EFS-Web 1.4.4 has been deployed. Starting Jan 31, please use the new version of the EFS-Web Fillable e-IDS Form (PTO/SB/08A)(version 2.1.17) which will allow up to 300 combined citations of U.S. patents and U.S. patent application publications. Attaching an older version of the e-IDS form (version 2.1.16 or earlier) will result in a validation error. See advisory posted on Jan. 20, 2010 for more information.”
“In-house we’re all aware of that other posting. There isn’t much to say about it that hasn’t already been said except that unfortuately D never posted the serial or provided us with what the attorney actually did in that case.”
An update from Dennis sure would be appreciated.
6: Give it up. You are so out gunned by NAL it isn’t even close. You appear to be a plastic children’s boat next to a destroyer.
For the record, I think that was an interesting hypothetical.
Thank you. I think you gave an answer similar to the one I would have given.
And, in general, MM, I think your hypos aren’t terrible, but you need to play fair and answer the questions/hypos that are asked of you.
I think in general I do answer the questions/hypos. I certainly don’t refuse to address softball questions or clarify my own comments on request simply because there’s some outstanding business buried in the 4th page of some ancient comment thread (or even a recent one) where I’ve already contributed plenty.
As for the “abstract” definition you are so keen to hear, at least some of the dictionary definitions that 6 tossed up a while back in one of those old threads seemed to fit the bill for me. When a new thread comes up that’s on topic, I’ll toss something up for you and everyone else to chew on.
“6, What function do you think the word “where” induces? ”
None ya jack as. As noted above it was possibly a failed attempt in the claim on which this hypo was based to say “wherein”.
That was no trap of my crafting, that was a “trap” which I copied. One which someone (guess who NAL) got caught in many years ago. Or, you might say, a “trap” that someone failed to detect many years ago.
In-house we’re all aware of that other posting. There isn’t much to say about it that hasn’t already been said except that unfortuately D never posted the serial or provided us with what the attorney actually did in that case.
“Noise, if you’re going to sockpuppet-cheer yourself on, at least wait more than three minutes to post under the pseudonym so it’s not so obvious.”
LOLOLOLOLOLOL
While I do tend to believe NAL, I’m afraid she may have a lil bit o schizo in her.
Come on, 3 minutes?
compare
“it is recommended that if any information that has been cited by Applicants in the previous disclosure statements is known to be material for patentability as defined by 37 C.F.R. § 1.56”
to
37 CFR § 1.97(h)
The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
Given this disparity, would the examiner’s request for “known to be material for patentability” be properly treated as a separate request for information (of which a proper response is “I don’t know”)?
I am going to try to refocus this thread. Dennis posted about a similar occurance in an actual case. see the post titled “Responding to Examiner’s Charge of Burying Reference”
link to patentlyo.com
IN that case, only 75 references were cited and the Examiner complained thusly “[T]he cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with the Applicant’s duty of disclosure. Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948 (S.D. Fla. 1972). . . . accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), stating that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.” Id. [The Molins] case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references.
Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statements is known to be material for patentability as defined by 37 C.F.R. § 1.56, applicant should present a concise statement as to the relevance of that/those particular documents therein cited.”
Wonder what this Examienr would have done with 900+ refs!!!
” … trail my posts and put up fawning material (with apologies to Gad as no offense is meant).”
None taken!
No coverage intended.
No coverage needed.
My word is good – if I say it wasn’t me, the truth is as good as gold.
Of course, you should recognize my love of the Law and realize that I would not compromise my “brand” by lying.
You have “tipped your hand” 6 – language skills (or lack there of) and the tendency to identify with gender give you away.
I wouldn’t even put it past you in your chicanery to be posting under the Gad pseudonym yourself – although even disingenuously praising me may take more gumption than you could muster.
OK – we are ready for the next side trick here at the Trainwreck.
NAL, or should I say, Miss Direction, it will take more than this rather transparent attempt to cover your tracks to fool the fine readers of Patently O.
Malcolm, er um, Pro-tip.
Perhaps you want to give the reading skills back to 6. As I have noted, I am not Gad.
Or perhaps this the next side show – trail my posts and put up fawning material (with apologies to Gad as no offense is meant). Then accuse me of putting up my own cheering section.
Weak – rather weak.
When your mother told you to kill them with kindness, I do not think this is what she meant.
Well, you waited an hour and 20 minutes before congratulating yourself that time. I guess that’s an improvement.
“(or are you and 6 trading key “skills””
Sounds about right, Noise! You tell ’em!
Trainwreck … that slays me every time.
Malcolm, um, er Pro-tip,
Try reading the response before unduly celebrating. (or are you and 6 trading key “skills”?)
“C’mon jester, make us laugh.”
Poetry – poetry, I tell you!
“Patent Lawyer humor can be excessviely dry, but hey, that’s why we have the Trainwreck)”
Not too dry for me! And I love the “trainwreck” references – nothing could be more apt.
Wow, guess I struck a nerve. Must have been true.
“I simply stated that I drafted it how I wanted it so people wouldn’t mess with the “where” and also turn the method step into functional language.”
Except that you failed miserably. As curious and bread point out, context matters (damm, there’s that problem of context popping up again). Your attempted trap fooled no one (except Ned – sorry Ned – you are too eager to try to give 6 a semblance of credit, so even though you supplied a long list of faults with 6’s strawman, you did not light the match under the most glaring one).
6, What function do you think the word “where” induces?
(Patent attorneys, please forgive the “hidden” jest, I know trick question as function is satisfied twice – function as a connecting word and function as the connection to the means plus “________” statement – Patent Lawyer humor can be excessviely dry, but hey, that’s why we have the Trainwreck)
Malcolm, er, um Pro-tip,
I would not sink to your level in the sockpuppet-arena. I have no desire (nor need) to don mouthpieces so.
My weapons of logic and legal argument are more than plenty for the likes of you. My message is clear. I have no desire to befuddle the readership – in fact I like removing the befuddlement you like to produce. You know, it’s kind of fun exposing your shallow hypocrisy. Your bag of tricks is being depleted. Your straw is going up in smoke. What are you going to try next?
Gad’s enthusiam aside (who doesn’t like a cheering section?), I do not post to hear cheers, much less my own. Let’s be perfectly clear – I am not Gad. I realize that your affinity for multiple posting under various names clouds your judgment – the maxim comes to mind of the liar thinking everyone lies because he does. It is more than a bit telling to hear you pompously state in reply to the question of sockpuppets “Do I do so frequently? No, very rarely.”
Very rarely indeed. That line was as convincing as about any legal holding that 6 pontificates.
And just as worthless.
Let’s check with spammies on that frequency thing, better yet, let’s not, since spammies is just one of many aliases. (clear give away – not counting yourself when you make up more than the number of posts of your two targets combined – D’Oh!).
Mind you, I don’t really care how many brands you wish to use – your dull message is fairly transparent.
Just as that message is typically vapid.
Just as your chutzpah is in your outlandish claims (or are you already thinking of how NOT to put up anything to back up your charge of my dishonesty?).
Just as is your switching subjects when you don’t want to answer a charge.
Just as your “I have no idea what you are talking about” lame line when we had talked about, rather I had chased you with, Printed Matter Doctrine for some nine months.
Just as is your many, many strawman arguments (I hope you didn’t take my criticism of 6’s strawman as an inadvertent compliment – your strawmen may be more subtle, but after all, I was comparing you to 6).
You are center stage Malcolm, the spotlights on you. What is your next trick? C’mon jester, make us laugh.
Noise, if you’re going to sockpuppet-cheer yourself on, at least wait more than three minutes to post under the pseudonym so it’s not so obvious.
And MM as to your hypo above:
I don’t think that an attorney who is not related to the prosecution of my applicaiton sending me a letter saying he/she thinks a large number of referencs may be related to an application I am prosecuting creates a duty for me to figure out if they actually are material or not. I would note it in the file and send a letter to the client explaining my reasoning. I may send a letter back to the attorney telling them that they should follow PTO procedures to disclose any references they feel may be material.
Absent any specifics, I have no duty to figure out how those references may be material to the application that I am prosecuting.
An examiner does have the duty to figure out if the references are material because they are responsible for knowing thier art unit.
The hypothetical would be different if it was one reference and the materiality was apparent.
For the record, I think that was an interesting hypothetical. And, in general, MM, I think your hypos aren’t terrible, but you need to play fair and answer the questions/hypos that are asked of you.
MM: you refuse to answer questions and your way of dodging this has been to ask questions yourself. Why would anyone engage in a debate with you under those conditions. If you expect others to answer your questions, then answer the questions that are put to you or at least state why you think you shouldn’t answer them.
For example, what is the definition of abstract? You have refused to answer this question and yet you use this term to assert that claims should be rejected under the law. I have even referred you to J. Newman’s definition of abstract in the dissent of Bilski as a starting place for a definition of abstract.
NAL is fairly amazing for having the patience and acumen to pin you down. You do not fight fair, which is a shame as you seem like an intelligent person and at times decent. If you are really so unfairly treated as you claim, then why not just answer a few of the questions that have been fairly put to you to get the ball rolling. If you did, it would certainly be impossible for me or anyone else to fairly criticize you. As it is, your tactics are nothing less than what a school yard bully trys to pull.
“I think it’s pretty amusing that, in your zeal to demonstrate how clever you are, you unintentionally created 10 defects that are worse than the one you were focused on. Especially given your admonishment that “I choose my words very carefully … It is exactly the hypo that I wish to craft …”
Perhaps drafting claims is more challenging than you think?”
Perhaps I wanted to chop off some parts of an old old old claim and not spend all day drafting it. The only part I cared about was the end. Fixing the rest of that mess was simply parts I chopped off out of convienence. I simply stated that I drafted it how I wanted it so people wouldn’t mess with the “where” and also turn the method step into functional language.
In any event, come on guys, no guesses whatsoever as to whom took care of this application? Ned? Noise? Surely you have a guess right Noise?
“6, You are still 0/3 – I suppose you don’t want to give it a real try.”
Some of my reasons are perfectly valid, just because you don’t think they are means nothing. The actions taken are not arbitrary, they are based on factual evidence and the actions are taken for a reason. The number of references submitted and ensuring that the references are analysed the best they can be. Whether or not you like this evidence and reasoning is irrelevant to whether or not it is evidence and a reason.
“In his attempt to be clever he merely wrote a functional limititation (poorly at that – ‘natch). Functional limitations are fully legitimate ways of writing claims and do not violate the mixed classes rule.”
A FUNCTIONAL LIMITATION? LOLOLOLOLOLOLOLOL. Keep telling yourself that ya dumas.
Method steps, functional limitations. They’re not the same thing and the former doesn’t magically become the later just because it’s put into an apparatus claim.
And fyi, it wasn’t me that drafted the last part of that nonsensical claim. That part was copied nearly verbatim, all I did was chop some parts out of the claim leaving what I wanted as a hypo claim that was never before the office. Go ahead Noise, take a guess who handled the claim this hypo was based upon at the office.
Let’s see it again:
“1. A modulator comprising:
a conductive substrate;
a conductive membrane;
a flexible support;
a means for supplying bias;
where, under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air.”
Let me spell this out for your jack as. When something affirmatively does something in the claim, as opposed to being functional to do it at any point, that is called a “method step”. Functional language isn’t “magic” to insert method steps into your product/apparatus claim.
“the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air” <<<<<<<------ see that? That is an affirmative statement of the membrane performing a method step, and it must be done in order for the claim to be met, either for anticipation or infringement. The condition that it must do this action specifically when under bias is immaterial. Now, as to bread's statement about simply interpreting the where as a wherein, well, that might be permissible since the patentee could just file a cert of correction but it still leads to nonsense. Or the examiner could object pre-issue. "1. A modulator comprising: a conductive substrate; a conductive membrane; a flexible support; a means for supplying bias; wherein under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air." And you don't get to interpretlol that claim into anything like: "1. A modulator comprising: a conductive substrate; a conductive membrane; a flexible support; a means for supplying bias; wherein under the action of bias the membrane is operable to move to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air." Why? Because that changes the substance of the claim and is not an immaterial difference. We saw a case like this one just the other day and the court refused to correct even an obvious grammatical error to fix this same issue because it changed the substance of the claim. Then guess what happened? I think you probably remember what happened. The patentee squeeled all the way home thanks to his lawyers. Now, Noise, go ahead and take a wild guess who's name is on the front of the patent this claim was based off of. I'd really love to know your guess in specific. Oh and hey Noise, do us all a favor and take 10 seconds to explain to us what the difference is between method step and functional limitations in your own little world.
“As for calling anyone a coward, your membership in the skirt and track shoe club makes such a statement the true indicator of hypocrisy.”
Yowzers! Absolutely irrefutable!
Noise – 2, Malcolm – 0.
no need to hijack – you just don’t belong on an imaginary high horse calling ANYBODY out for not answering questions.
As for calling anyone a coward, your membership in the skirt and track shoe club makes such a statement the true indicator of hypocrisy.
As for dishonesty – please supply any shred of proof, any foundation for such a charge . ANY.
…thought so.
NAL et’s see you answer any one of the substantive questions I’ve asked you for nigh a year and a half. Let’s start with Printed Matter Doctrine.
So you want to hijack the thread instead of discussing IDS issues? Why?
“From Malcolm, that’s one heck of a compliment.”
Ouch!
Noise – 1, Malcolm – 0.
“Let’s just say that you’re a hypocritical and dishonest person, and also a very cowardly one.”
From Malcolm, that’s one heck of a compliment.
Give proof please.
“Weird that you won’t answer.”
– let’s see you answer any one of the substantive questions I’ve asked you for nigh a year and a half. Let’s start with Printed Matter Doctrine.
Weird that you won’t answer. What are you afraid of?
shall I drudge up the quote string yet again?
Go ahead.
But back to the topic of the thread: would you file the 80,000 pages, NAL? Would you bill your client for the filing? Why or why not?
Softball question. Weird that you won’t answer. What are you afraid of?
NAL Let’s just say that basing my practice on what Malcolm Mooney postulates on the trainwreck would be anything but the “right” thing.
Let’s just say that you’re a hypocritical and dishonest person, and also a very cowardly one.
You never corrected the hypo stawman trap that you clamored AI to step into.
There was no error to be corrected. If you believe there was an error, tell me what it was, NAL, and I’ll correct it.
Malcolm,
“…with numerous structural problems and those problems were pointed out to me, I’ve corrected them.”
Um, no you never did. You never corrected the hypo stawman trap that you clamored AI to step into. In fact, this was pointed out to you and you accused me of taking AI’s side.
try to keep the facts straight, m’k?
As far as the “right” thing…
Let’s just say that basing my practice on what Malcolm Mooney postulates on the trainwreck would be anything but the “right” thing.
As to evading substantive tasks, why am I not surprised that you have no idea what I’m talking about – you’ve pulled that “what the sam hill are you talking about” trick before – shall I drudge up the quote string yet again? I really would not like to have to apologize to Kate Bush yet again.
bread,
Your intellectual exercise aside, it’s nice to note that the law of unintended consequences smacks 6 upside the head yet again. In his attempt to be clever he merely wrote a functional limititation (poorly at that – ‘natch). Functional limitations are fully legitimate ways of writing claims and do not violate the mixed classes rule.
Ned,
You missed the forest for the trees. It is one thing to try to understand 6, but you missed the fact that his little vapid trick was merely a trick. Wake up – you are better than that.
NAL Malcolm, You are 0/0 – not surprised that you avoid yet another substantive challenge.
I have no idea what you’re babbling about.
…that’s why such invitations to step into piles of crap “exactly..wish to craft” hypos from 6 and Malcolm are generally avoided. Such hypos epitomize strawmen.
NAL, you’re relapsing into your gratuitous insult mode again. While 6 and I might agree on a few issues, we probably disagree on more. If I’ve ever posted a hypothetical with numerous structural problems and those problems were pointed out to me, I’ve corrected them. 6’s hypothetical is not so much a “strawman” (do you even know what the term means?) as it is off-topic.
How would you respond in the hypothetical scenario I presented Jan 29, 2010 at 08:57 PM? Do you do the “safest thing” and submit all 80,000 pages? Or something else? If something else, how do you explain to your client that doing the “safest” thing is not always the “right” thing? Btw, I think this is a softball question, slow-pitched right down the middle. Are you going to stand there and watch it sail over the plate?
Actually, I have some situations where I inherited a family of cases from other outside counsel going back many years in which hundreds of general references were submitted in the first case. Many of them could only truly be considered background references reflecting the state of the art, but since they have been cited in one case, given the current state of inequitable conduct I don’t have a good choice. I regret having to cite them all in the later cases, but don’t think I can risk invalidity by choosing to leave some out at this point. I would like to apologize to the examiners of these cases, but can’t really do that either–please, examiners, if you get one of these cases, consider that the prosecutor is pretty much obligated to keep citing all the references
You don’t need to “keep citing all the references” in “all the later cases.” If references were previously considered by an Examiner in a parent, they need not be re-submitted in a con, div, or CIP unless you want the listing to appear on the face of the patent. MPEP 609.2
“6, stick to your specialty – bringing rope. Malcolm is usually a bit more subtle in his strawmen.”
Go git ’em, Noise! That “bringing rope” thing is STILL funny.
Slightly off-topic, but using 6’s claim as a springboard:
I am struck by the grammatically incorrect use of the word “where”. I merely assumed this to be an intended trap since the word is not used in a directional sense, and the hypothetical was supplied by the particular person as noted.
However, since the applicant can be his own lexiconigrapher, and there must be a reason for the word given the lack of directional use and placement of the word in context, I would assume the actual reason for the word is to join two clauses and is used in place of the word “wherein”.
To my point -> Shouldn’t the examiner, in applying the doctrine of broadest REASONABLE interpretation to the word “where”, use the meaning of “wherein”? Since the intent of actually submitting a claim is to have a valid claim, wouldn’t the “reasonable”, or at least the most “reasonable” interpretation be “wherein”?
If this is indeed the case, would the examiner be in his right to make an objection and request a correct grammatical usage for clarity?
Actually, I have some situations where I inherited a family of cases from other outside counsel going back many years in which hundreds of general references were submitted in the first case. Many of them could only truly be considered background references reflecting the state of the art, but since they have been cited in one case, given the current state of inequitable conduct I don’t have a good choice. I regret having to cite them all in the later cases, but don’t think I can risk invalidity by choosing to leave some out at this point. I would like to apologize to the examiners of these cases, but can’t really do that either–please, examiners, if you get one of these cases, consider that the prosecutor is pretty much obligated to keep citing all the references and may be cringing when they sign the form.
6,
as to the rules section I supplied: I know it is difficult, but think of it as a logic game in a reading context.
Connect the dots.
…that’s why such invitations to step into piles of crap “exactly..wish to craft” hypos from 6 and Malcolm are generally avoided. Such hypos epitomize strawmen.
6, stick to your specialty – bringing rope. Malcolm is usually a bit more subtle in his strawmen.
6, You are still 0/3 – I suppose you don’t want to give it a real try.
Malcolm, You are 0/0 – not surprised that you avoid yet another substantive challenge.
“where, under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air.”
curious is correct that the context matters.
There are a gazillion issued claims out there with this “problem.” I think you should reject it, as it can be easily corrected. However, in many cases these limitations can be read in context (remember the specification?) to specify a structural limitation. I suspect a court will generally read them this way, to avoid invalidity, if the patentee provides a half-decent argument for why the limitation is structural.
For example, this limitation might be construed as simply meaning, “such that the membrane is operative, under the action of a bias, to move to a second position …”
I think it’s pretty amusing that, in your zeal to demonstrate how clever you are, you unintentionally created 10 defects that are worse than the one you were focused on. Especially given your admonishment that “I choose my words very carefully … It is exactly the hypo that I wish to craft …”
Perhaps drafting claims is more challenging than you think?
you try to get a 900 reference application before the FedCir and try to get them to sort out the mess they have made of the duty of disclosure
However, an argument can be made that there is no Mixed classes, if the last two lines can be considered part of the means plus function element right above it.
good analysis, Ned
Attorneys that submit 900 reference IDS’s should be sent to Guantanamo.
If the examiner is conscientious, they’ll actually look through all 900 references but I’m sure they’ll scream like hell for “other time” because the production system was not predicated on a single application having 900 references in it. Of course whether the SPE grants the other time is a whole ‘nother matter, and my guess would be they’d be under pressure from above not to do so, so don’t expect a very thorough reading of the prior art, but you asked for it.
That’s a bit comprehensive Ned, I was really just looking for the last part. Although I’ll take your word for the rest of that stuff. It seems I was a bit sloppier drafting the hypo than I had noticed because I was focused on that last part.
Anyone want to take a guess as to whom took care of a directly analogous application at the office many many many many moons ago?
One hint. It was not JD.
6’s hypo claim: “1. A modulator comprising:
a conductive substrate;
a conductive membrane;
a flexible support;
a means for supplying bias;
where, under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air.
Could you comment briefly on the viability of such a claim under 101 and 112 2nd paragraph?
Keep in mind I choose my words very carefully above and nothing is misspelled. It is exactly the hypo that I wished to craft.”
6: well for starters (all section 112, p.1 and 2 problems), you have a parts list whose relationship to each other is not stated. Second, “means for supplying bias” is not obviously connected to anything, but the corresponding structure may supply the gaps here.
The claim says, “the action of bias.” There is no antecedent basis for this in the claim. What this means is unclear.
The claim talks about a “second position.” This implies a first position which is not stated in the claim.
The claim talks about “the air gap.” There is no antecedent basis for this in the claim.
“wavelenth of a[n] optical signal”? Unless you specify the frequency of signal, you have no idea what the wavelength is. This term is indefinite.
As measured in air — ? I think the problem here is that the wavelength also might depend upon pressure.
Regarding section 101, the claim starts off as an apparatus and ends up as a method. Mixed classes.
Enter the rejections 6. You and I are on the same wavelength.
Btw noise, care to opine on that hypo claim? It should be near and dear to your wittle heart.
Had you have paid attention to the question you would have noticed that I did not ask if a submission was an admission Noise. I asked why one would submit it if you have no reason to believe it is material?
6,
To answer your question “Why do you feel a need to cite any of those references since you have no reason to believe they are material? ”
and in case you missed this in your reading:
37 CFR § 1.97(h)
The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
Please give Malcolm back his straw.
Alun: it’s safest for us to file whatever we have been advised of
LOL. So maybe I just pick a dozen patent attorneys who are prosecuting cases for competitors of my clients, look up some of their cases, and send them an anonymous letter listing 8,000 prior art publications (rougly 80,000 pages total) and say: “I believe these referenes are material to many cases you are prosecuting, e.g., US patent apps blah blah blah.”
Let’s say you’re one of those attorneys, Alun. Do you do the “safest” thing (also a decent moneymaker if you can convince your client that the “safest” approach is the only approach in the (trying not to laugh) “time of the plague”)? Or do you use your brain to help you find your nads and do the right thing?
“when a large number of refs are filed in an IDS, counsel has no idea what any of them say, so that doesn’t apply.”
Thas unethical 🙁
“It’s no good saying that we shouldn’t file that many, because it’s safest for us to file whatever we have been advised of.”
Who in the f is “advising” you of this sht? And why are they advising you of it? Other than the instance of a foreign action etc. Seriously, does someone just waltz in your office and start spouting off about references that have nothing to do with the instant application for no reason? Why do you feel a need to cite any of those references since you have no reason to believe they are material?
“If that is still too long, it’s still the Examiner’s problem, because it’s their job and no-one else’s.”
Says you?
Burying a reference that you KNOW is relevant may be IE, but 99.9999% of the time, when a large number of refs are filed in an IDS, counsel has no idea what any of them say, so that doesn’t apply. It’s no good saying that we shouldn’t file that many, because it’s safest for us to file whatever we have been advised of.
Then, when the Examiner has to initial to say he looked at, say, 900 references, he should just spend a similar amount of time to that which a searcher would spend on a large subclass, i.e. no more than a minute per reference. If that is still too long, it’s still the Examiner’s problem, because it’s their job and no-one else’s.
Burying a reference that you KNOW is relevant may be IE, but 99.9999% of the time, when a large number of refs are filed in an IDS, counsel has no idea what any of them say, so that doesn’t apply. It’s no good saying that we shouldn’t file that many, because it’s safest for us to file whatever we have been advised of.
Then, when the Examiner has to initial to say he looked at, say, 900 references, he should just spend a similar amount of time to that which a searcher would spend on a large subclass, i.e. no more than a minute per reference. If that is still too long, it’s still the Examiner’s problem, because it’s their job and no-one else’s.
Only a bit Ned.
Say Ned, would you mind commenting on a hypothetical claim I just though of?
1. A modulator comprising:
a conductive substrate;
a conductive membrane;
a flexible support;
a means for supplying bias;
where, under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air.
Could you comment briefly on the viability of such a claim under 101 and 112 2nd paragraph?
Keep in mind I choose my words very carefully above and nothing is misspelled. It is exactly the hypo that I wished to craft.
6, I am largely with you on this one. Have you been following my posts?
IANAE said, “No I don’t. I was actually assuming the opposite. By your reasoning, having an invalidating reference would be fraud regardless of disclosure, and non-invalidating art is immaterial regardless of disclosure. In that scenario, it would always be the right answer to not disclose, because your patent would only be unenforceable if it were also invalid.”
I think you slightly miss the point. What you risk by advancing a claim you know is invalid is the enforceability of all the other claims, particularly the dependent claims, that just well might be both valid and infringed. You also place at risk all related patents. This is a very steep price for advancing a claim or argument you KNOW to be false.
If the point is arguable, you actually need to argue it. You could bring it up in the background section. But simply burying the reference amid hundreds of irrelevant references seems more akin to hiding the needle in the haystack.
Also know that if a reference is really good and not before the examiner, it almost certainly guarantees a successful reexamination request when discovered. Having the reference before the examiner and discussed prevents such a reexamination based on that reference. However, simply having the reference listed in an IDS without it being discussed provides no immunity.
Finally, although there is a presumption of validity, the fact that a reference was not before the examiner is something that can be brought to the attention of the trier of fact. Regardless of the presumption, the trier of fact will not give any weight to the presumption knowing this about the reference.
All this argues against hiding the reference. It further argues for making the reference an issue in the examination. The IDS procedure does not do this, and for this reason, among others, that procedure is extremely faulty.
“Be specific Noise.”
Let me help Noise out a little: see any one of 6’s posts.
Be specific Noise.
“Then again, perhaps he is burnishing his shield of persistent ignorance.”
Good one, Noise! I never get tired of that shield metaphor.
“Perhaps instead of saying that the legal wrong is the lack of guidance, it might be more proper to say that the court’s failure to explicitly recognize that the duty of candor and good faith in inter alia, rule 56, extends not only to the duty to disclose, but to a duty to not disclose and/or not waste the office’s time with immaterial information.”
Another “no.”
stunningly ignorant – even for 6.
Then again, perhaps he is burnishing his shield of persistent ignorance.
I can provide cases with 700+ references.
As to the legal theory, well there are multiple that might apply. The court had a reasonable duty to provide guidance that would avoid such events from taking place there may therefor be a suit in equity and negligence or iied under tort law. More generally the legal wrong is that guidance on which circumstances lead to a reference being one which is supposed to be submitted is sorely lacking due to the courts inaction. The legal remedy will be guidance.
Perhaps instead of saying that the legal wrong is the lack of guidance, it might be more proper to say that the court’s failure to explicitly recognize that the duty of candor and good faith in inter alia, rule 56, extends not only to the duty to disclose, but to a duty to not disclose and/or not waste the office’s time with immaterial information. And, again, the legal remedy is to acknowledge explicitly that it does includes such a duty.
Huh? says “Do you ever tire of demonstrating your ignorance to the world?”
In response, 6 says, “well it appears that so long as it is a tort claim then the gov has largely waived its immunity.”
I think that’s a “no.”
this injustice
Supposing the court had decided that agents have to actually read every piece of prior art and consider its relevance before disclosing it accompanied by a concise and specific statement of said relevance.
Do you think they’d have a cause of action?
IANAE, I’m not concerned about marginal pieces of prior art. Submit those by all means. I’m concerned about people submitting pieces of prior art which they are ignorant of the contents thereof. Additionally I’m concerned about people submitting pieces of art which they know have no relevance to the claims.
hmmm, well it appears that so long as it is a tort claim then the gov has largely waived its immunity.
And even so, all would need to do is get the court to waive its immunity to right this injustice. Shouldn’t be that hard. They’re pretty reasonable guys and gals.
“I cannot appeal other people’s rulings.
In this case the government has indirectly made a taking. A taking of my time.”
Okay, so here’s what you do. You quit your job. You wait a year. You file that groundbreaking patent application that will affect an entire industry five years down the road. You carefully document the non-disclosure of a marginal piece of prior art. You inevitably litigate your patent. You appeal the issue of inequitable conduct. You convince the court to overturn its previous ruling, for which you now have standing.
Plus you’re not an examiner who has to read 900 references for one count anymore, so win-win.
“In this case the government has indirectly made a taking. A taking of my time. There is an actual case or controversy which exists between myself and the courts.”
You clearly don’t understand what a taking is. Or a case or controversy.
Just two more added to the list of things you don’t understand.
Do you ever tire of demonstrating your ignorance to the world?
“If you disagree with a judge’s ruling, the remedy for that is appeal.”
I cannot appeal other people’s rulings.
In this case the government has indirectly made a taking. A taking of my time. There is an actual case or controversy which exists between myself and the courts.
But, in any event, I was wondering what specifically in the laws exempt them from being sued. I thought I was asking the question correctly. I don’t really care “why” they’re exempt, I’m wondering where the exemption is in the law.
You can’t sue the Courts because of “sovereign immunity.” Just wiki it.
If I’m not mistaken, court decisions have found that sovereign immunity extends to judges for acts in their capacity as judges, so you can’t sue judges who abuse their discretion or anything like that. Otherwise, judges would be getting sued constantly, and the courts would be clogged with such suits. You’re remedy is to appeal.
TMWW: “Ok, if a patent examiner intentionally ignores the law may they be sued under Section 1983 for violating stautory rights under color of authority?”
42 USC 1983: Every person who, under color of any statute, ordinance, regulation, custom, or usage, of any State or Territory or the District of Columbia,…
Given that examiners are presumably acting under color of authority granted by federal law, I would have to say no. (As a non-lawyer, though, maybe I’m misunderstanding the statute’s implications.)
“If you don’t mind going into it briefly, why is that?”
Judges are supposed to make fair and impartial decisions, and they can’t do that if they’re at risk of being sued. They’re also tenured, so that they don’t risk their jobs at the hands of an electorate or an executive that doesn’t agree with their decisions. It’s particularly important in constitutional matters, because the constitution exists specifically to override the democratic will of the people. The courts are not supposed to be a popularity contest. You’re supposed to win if (and only if) you’re right.
If you disagree with a judge’s ruling, the remedy for that is appeal.
Endnote for Mr. Six:
But, please remember, I am Just an ordinary inventor(TM), and TINLA, and IANYL.
“No.”
If you don’t mind going into it briefly, why is that?
Dera Mr. Six,
Yes
Yes
Yes
Yes
Yes
After all, this is America.
“Perhaps they got in a spaceship and went to your planet to help defend religion from attacks by your planet’s ACLU.”
Speaking of religion, the Catholic church concealed a lot of invalidating references from the public for a long time. The truth was eventually discovered, but you can’t seriously claim that nobody was inconvenienced by certain presumptions of validity in the meantime.
The main difference with patents, I guess, is that the heresy is in following the teachings of the sacred document.
What is a blog reader to do with 900+ comments from 6?
Ned Heller: IANAE, you assume it is possible to successfully conceal references. If such were actually possible, the unethical would always conceal and not disclose regardless of rule 56.
In the real world, once one tries to enforce the patent, the reference will be discovered. Now you, the patent owner, have a problem. People will not take out a license.

Ned, here on earth, the concealed reference is not always discovered and even when it is discovered, people still take licenses and/or settle out of court. I suggest taking a closer look at the Therasense litigation discussed this week, Ned. Did you notice how the number of defendants present at the beginning of the litigation in district court diminished compared to the number of defendants named in the Federal Circuit opinions? What do you suppose might have happened to those defendants, Ned? Perhaps they got in a spaceship and went to your planet to help defend religion from attacks by your planet’s ACLU. That would explain everything.
“If a patent has an invalid claim, it, the patent, cannot be enforced. This incents one to be honest at all times as one cannot simply rely on dependent claims. If any of the broader claims is invalid, one has to disclaim or limit it to enforce the patent.”
Surely disclaiming claim 1 to enforce your existing claim 2 is a pointless formality.
Maybe Europeans like pointless formality, I don’t know. To my mind, if claim 2 is right there in black and white, you don’t have art for it and you infringe it, you should have to pay up.
“In all srs ness, can one sue the courts?”
No.
Guys, can someone sue the courts?
In all srs ness, can one sue the courts?
In all srsness, can one sue the courts?
In all srsness, can one sue the courts?
In all srsness, can one sue the courts?
In all srsness, can one sue the courts?
“IANAE, you assume it is possible to successfully conceal references.”
No I don’t. I was actually assuming the opposite. By your reasoning, having an invalidating reference would be fraud regardless of disclosure, and non-invalidating art is immaterial regardless of disclosure. In that scenario, it would always be the right answer to not disclose, because your patent would only be unenforceable if it were also invalid.
“In the real world, once one tries to enforce the patent, the reference will be discovered. Now you, the patent owner, have a problem. People will not take out a license. If you sue, you will lose on validity and your fraud probably will be discovered, putting at risk not only every other claim in this patent, but all other related patents.”
That’s clearly not what happens in real life. Litigation costs money, clutters court calendars, and forces corporate executives on both sides to spend time in depositions that they should be spending running their business. Public companies have to disclose to their shareholders the risk of a pending lawsuit and keep that on the books until the case is finally resolved on appeal. The presumption of validity (a stronger presumption in the US than in civilized countries, I might add) and the risk inherent in any litigation means it’s often not worth the risk for a defendant to challenge an issued patent when offered a license at a reasonable rate. That would make it one of those “bad patents” that takes from the public what it already had.
I agree with you that the system should encourage the disclosure of pertinent references and the non-disclosure of background or cumulative references that clearly don’t teach your point of novelty. I think you’re just missing that crucial gray area in between, where a patent might be found valid over a reference (which is not always a clear-cut question) but it is still inequitable to not have that reference before the examiner during prosecution.
If you have to give any thought at all to drafting your claims around a reference, that reference should be disclosed, even if you’re pretty sure you drafted a good claim. Because no claim is perfect, and sometimes reasonable people disagree on things.
NAL, what MaxDrei describes about a recommended procedure in the US is actually the law in England and most of Europe. If a patent has an invalid claim, it, the patent, cannot be enforced. This incents one to be honest at all times as one cannot simply rely on dependent claims. If any of the broader claims is invalid, one has to disclaim or limit it to enforce the patent.
The more one observes the European system, the more one likes it.
IANAE said, “Note, this is fraud regardless of disclosure of the reference.
Yes, but whether the PTO issues an invalid patent depends on disclosure of the reference.
You can’t just have the rule that not disclosing invalidating references is fraud and not disclosing non-invalidating references is non-fraud. That would mean it’s always worth it to conceal art, because you get away with it if the patent was valid anyway, and your client loses nothing (gains the leverage of a presumed-valid patent, even) if the patent was invalid anyway.
The rule exists to make people disclose art, not as a mechanism for litigation to sort things out eventually (which it would do anyway, regardless of fraud).”
IANAE, you assume it is possible to successfully conceal references. If such were actually possible, the unethical would always conceal and not disclose regardless of rule 56.
In the real world, once one tries to enforce the patent, the reference will be discovered. Now you, the patent owner, have a problem. People will not take out a license. If you sue, you will lose on validity and your fraud probably will be discovered, putting at risk not only every other claim in this patent, but all other related patents.
Any patent owner or attorney that thinks that dishonesty is the best policy is, literally, insane.
“6, I have updated your success to response ratio for the current challenge to 0/3.”
Good one, Noise! I’ll be surprised if he comes back after that.
6, I have updated your success to response ratio for the current challenge to 0/3.
” “. while not truly a response, is an attempt at a response and still FAILS – especially as I provided the ground rule of 37 CFR 1.2.
Don –
When the office was pushing the Examination Support Document on applicants, it came out with a 19 page “summary” of the searching that was required. That searching was not limited to EAST/WEST or even to data bases with the same contents. Surely your searches aren’t limited to just East/West…are they?
Even if the cited documents are not available in a convenient searching database, they can still be scanned to .pdf, OCRed by Acrobat and then word / phrase searched.
But, all of that should be unnecessary, as if the documents were material (according to what ever YOUR particular definition is) they would have been identified in Your own search, right?
Ok, if a patent examiner intentionally ignores the law may they be sued under Section 1983 for violating stautory rights under color of authority? It is just a question, that’s all.
Also, we now can update the info from the list at
link to questel.com
with L8. Most Citations (Pat): 7,651,688
Longest
L1. No. of claims : 6,632 (US Patent App. No. 20020093648)
L2. No. of pages : 367 (US Patent App. No. 20020093648)
L3. No. of words : 354,702 (US Patent App. No. 20020093648)
L4. No. of characters : 2,269,086 (US Patent App. No. 20020093648)
L5. No. of figures : ? (?)
L6 No. of years (P2G*) : 67 years (US6,130,946)
L7. Longest main claim : 7,799 words / 1,228 chars (US5,408,417)
L8. Most Citations (Pat): 7,651,688
L9. Most Citations (Lit): ?
* P2G – Priority filing to Grant
Shortest
S1. No. of claims : ? (?)
S2. No. of pages : ? (?)
S3. No. of words : ? (?)
S4. No. of characters : ? (?)
S5. No. of figure : 0 (Numerous examples)
S6. No. of days (P2G) : ? (?)
S7. Shortest main claim : 36 words / 209 chars (US5,960,402)
S8. Least Citation (Pat): 0 (Numerous examples)
S9. Least Citation (Lit): 0 (Numerous examples)
Burchfiel is right. Technically, any patent, written technical document, or Office Actions (foreign or domestic) that meets the disclosure requirements and is connected in some way to (1) Kyowa Hakko Kirin Co, (2) Burchfiel, (3) any Sughrue patent practitioner that worked on the 7,651,688 patent application should be brought to the Examiner’s attention.
My questions for patent practitioner Burchfield are (1) whether he went through his considerable patent matter history and disclosed that which could be deemed material to a “reasonable” examiner by a court and (2) what’s up with the glasses?
“i claim a combination of A and B. I know this combination is old, and have a reference proving it”
Generally speaking, when the 900+ reference IDS is filed, the filer has not even looked at those references. I agree that intentionally burying the reference is wrong, but your comments seem to imply a duty to go through those references and make sure there is no slam dunk 103 combination.
Where the hell does it say in the code that a person shall be entitled to a patent unless he fails to submit material references?
Where does it say that your patent is invalid if you commit inequitable conduct?
Note, this is fraud regardless of disclosure of the reference.
Yes, but whether the PTO issues an invalid patent depends on disclosure of the reference.
You can’t just have the rule that not disclosing invalidating references is fraud and not disclosing non-invalidating references is non-fraud. That would mean it’s always worth it to conceal art, because you get away with it if the patent was valid anyway, and your client loses nothing (gains the leverage of a presumed-valid patent, even) if the patent was invalid anyway.
The rule exists to make people disclose art, not as a mechanism for litigation to sort things out eventually (which it would do anyway, regardless of fraud).
But, yeah, I don’t think it would be too onerous to require a two-sentence remark for each reference in an IDS indicating why it’s being disclosed. “A foreign examiner cited it in a corresponding case” ought to be sufficient, but otherwise it should be reasonably specific to the content of the reference.
What needs to give is IDSs. Drop them.
EPO examiners do a fine job of identifying the relevant references and you’ll never convince me that the corresponding US patents are somehow stronger than the EPO patents.
>>900 patents is a LOT of documents that you’ll >>be uploading and probably won’t be able to >>bill to your client.
Actually, Examiner, you couldn’t make me upload US patents. But, you know, Examiner, there is a problem that happens in that sometimes we get these giant lists of references from litigation or from a foreign associate and we don’t know antthing about the references.
So, what a problem this creates. Someone has to look through it and guess whose job that is–yours.
This is the real problem here. The PTO wants to off load their work to us, but it is your job Examiner. You are supposed to know the art and examine the application. That is your job.
I have noticed another little gem at Peter Zura’s blog:
link to 271patent.blogspot.com
The story can be analagized to the capricious “An Examiner” above who maliciously states “but I can make you pay for it.”
– “the PTO acted arbitrarily in violation of the APA”
That’s why you failed 6 – the Office cannot take arbitrary actions. If the regs call out a requirement being imposed by the Office – there must be rationale for that imposition. That rationale must be made of record.
Still 0 for 2 – you are welcome to try again.
MaxDrei,
It’s not that I am stingy as to your indulgences, but they take the eye off of the true problem, and thus are part of the problem.
Much like your comment about the litigation aspect being the heart of the issue, such incorrect thoughts prevent full focus on where the efforts should be.
For example, in your post of 05:40 AM, you neglect the fact that the important work needs to be done BEFORE the patent issues. Your thought stream of allowing amendments after issue clouds the very critical problem from being addressed (as well as we both have now acknowledged would require a fundamental change in US Patent ideology).
Such completely other-world suggestions are too indulgent and only add noise. It is exactly such comments that were at the origination of my moniker.
So if you want me to be indulgent to your posting of fantasy drivel, you will need to be indulgent to my calling that posting out as fantasy drivel.
I would rather see you use your critical faculties to come up with suggestions that work within the framework of established US Law and not merely be more noise above law.
Ned, good idea. Let’s start by k-lling all the IDS’s. That’s necessary, I think, but not sufficient.
What can we do instead, to prompt Applicants to fess up everything they know to the PTO Exr? Here’s an idea, in two new Rules:
1) Once the patent has issued, the owner is dependent on favourable exercise of an equitable discretion, on the part of the court or PTO, to get an amendment entered.
2) For as long as an issued patent still includes even just one bad claim, it’s uneforceable. So, to get a permanent injunction imposed on the infringer, the owner first needs an amendment, to get that bad claim removed. No reason to decline the request to delete the claim, unless the other side can show that the patent owner’s been a naughty boy.
Noise, I know I’ve said this before but, once again, I’m just indulging myself here.
All, think about this for a moment:
I claim a combination of A and B. I know this combination is old, and have a reference proving it. Yet, knowing that it is old, I both claim and argue that it is new.
This is fraud on the PTO.
Note, this is fraud regardless of disclosure of the reference. Burying the reference amid 900 others should in no way cure the problem because the shear impossibility of the examiner reading all the references.
If the issue is only arguable, it should be argued, not buried. Mere disclosure should not be enough to cure the problem.
If the issue is remote, the art is only background and should not be disclosed or argued at all. Disclosing such art buries pertinent references such that they cannot be found. I would argue that disclosing background art or anything of the sort is a problem in itself and is/or should itself be inequitable conduct.
But that is what we appear to have today — a system that has rules and procedures that produce results the opposite of what was originally intended. They authorize and encourage inequitable conduct by authorizing such mountainous disclosures.
If you think it through, there is no solution except to ban IDS’s entirely. If a reference is known and close, discuss it in the background section.
We need to repeal rule 56.
Noise, the clear and convincing standard is not a natural law, about which mankind can do nothing. If the USA can fly folks to the moon it can switch from clear and convincing to a preponderance standard. If it wants to, it can do it.
Mind you, there is one snag. Preponderance is what ROW does, so there might be a resistance within the USA to making the switch.
Which, funnily enough, is exactly what I’m detecting from your posting above.
Please, please, please you friggin’ litigators, just cite Kappos as a reason why the USPTO should not be able to require submission of art. The statute says (35 USC sec. 102)you get a patent absent it being anticipated (or obvious, sec. 103). Where the hell does it say in the code that a person shall be entitled to a patent unless he fails to submit material references? The USPTO does not make the law, Congress does. The Federal Circuit needs to start paying more attention to the Legislative branch of the government instead of cowing to the executive agencies.
6,
FAIL – the directive is NOT related to what part of the reference caused them to be cited – that has nothing to do with the rule at hand – 37 CFR 1.98(a)(2)(ii).
FAIL – the rationale for “REQUIRED BY THE OFFICE” cannot be “because”. Circular and /or mere conclusionary statements are not acceptable.
0/2 – want to try again?
Well Noise, I’ve never done that, but perhaps the rational would be: “Because knowing what part of these references caused them to be cited will be essential to their proper review and perhaps the applicant will be so kind as to include that instead of a full copy of the US patent”. Or perhaps it would be: ” “. Or perhaps: “Because the office, at its sole discretion, requires it”.
Did that guy really just write that? Seriously? I mean really?
Did he read the post? We’re REQUIRED BY LAW to cite everything these days. There’s just no way around that.
And this guy says, “but I can make you pay for it … 900 patents is a LOT of documents that you’ll be uploading and probably won’t be able to bill to your client.”
This is like troll tracker only reversed.
MaxDrei,
Still trying to get other people to wear your glasses?
“after issue, on a preponderance basis, concurrently”
You cannot simply make the presumption of validity disappear by posting so over
and over
and over
and
over
and
over
Didn’t we have a lesson about this before
and before
and before
and
before
and
before?
An Examiner – “but I can make you pay for it.”
Gee vindicative examiner behavior seems to run rampant. And I was just starting to settle down about the Just An Examiner post.
Actually I would like to see you try a move like that once. I would to see how you justified the requirement portion of 37 CFR 1.98(a)(2)(ii), keeping in mind 37 CFR § 1.2. I’d like to see the explanation for a duplicitous request in writing. I’d like to see your boss with signing authority actually concur (or God forbid – you have such authority).
In fact, I will open this up to the vocal clanging examiner crowd here (6 and Malcom included) – let’s see some creative rationales for the requirement that an examiner may make (I will remove the possible straw that the patent requested is an old one outside of the electronic system – this still falls into the vindictive realm of the post above).
Let’s hear them stories.
Would you two nincompoops stop trying to out-fail each other at HTML?
All of you are missing the most important issue in this post. Ed Begly Jr. works for Sughrue!!
Examiner will get fired if he spends time reading these references; no time for production. They are working like slaves.
@TheTwoBobs – I can’t refuse such voluminous data dumps, but I can make you pay for it. If you submit a lot of time wasting IDS forms with completely non-relevant patent citations an examiner who know the rules can invoke 37 CFR 1.98(a)(2)(ii) – “A legible copy of: Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications UNLESS REQUIRED BY THE OFFICE”. If you start wasting my time by playing hide the potato, I’ll start wasting your time and money by requiring a legible copy of each publication (INCLUDING A COPY OF EACH PATENT YOU’RE CITING). 900 patents is a LOT of documents that you’ll be uploading and probably won’t be able to bill to your client.
“what would happen in your art unit if you simply said, “Sorry, I don’t have the time to consider all of this unless you very explicitly tell me why I should” — would management back you up?”
I asked about this early in my career and was told to just initial everything. I do add statements telling applicant that they if they know of something of particular relevance in the heap of references they should point that out.
“Don’t patent examiners have the authority to refuse to make such voluminous data dumps of record?”
No.
“Examiners who read this site, what would happen in your art unit if you simply said, ‘Sorry, I don’t have the time to consider all of this unless you very explicitly tell me why I should’ — would management back you up?”
No.
Don’t patent examiners have the authority to refuse to make such voluminous data dumps of record? Examiners who read this site, what would happen in your art unit if you simply said, “Sorry, I don’t have the time to consider all of this unless you very explicitly tell me why I should” — would management back you up?
Requiring a practitioner to undertake part of that for which the USPTO is paid, i.e., search, is a taking pursuant to Fifth Amendment, pure and simple. An applicant pays for a search and the Government, as recipient of those funds must perform a reasonable search . . . PERIOD. If the Applicant is required to pay a private attorney to conduct a greater search of that which is clearly available to a government agent, i.e., a patent examiner, that is a taking or worse a fraud. Congress and the President have spoken as to how much a search shall cost. It is ultra vires for the USPTO to require more. The next case I anticipate is an action against the USPTO for a taking, because a patent owner had a patent invalidated based upon non-citation of prior art that is easily accessible through PALM or public PAIR.
Attempting to move around the taking issue and requiring a licensed patent practitioner to undertake the same task without compensation is a violation of the 13th Amendment.
With respect to the Courts decisions, given these opinion on inequitable conduct and that ridiculous SCOTUS opinion about Corporate Campaign donations, I feel it is time that we enact one of the Constitutional Amendments that Theodore Roosevelt proposed. A plebiscite so that the people of our great nation can repeal any SCOTUS precedent the people find offensive. Just imagine if we could have repealed the Dred Scott decision, there would have been no war between the states. Remember ‘ol Teddy was the first President to take on Corporate Trusts.
Pyski, never mind civil law mainland Europe. Look instead at the common law world. Australia used to have a disclosure rule. Then they asked themselves why, found it was pointless, and recently scrapped it. England doesn’t have a disclosure rule either, but the UK PTO asks Applicants to file copies of PTO search reports within the family of patent applications.
How can it work? Just set up arrangements to try validity, inter partes, after issue, on a preponderance basis, concurrently with infringement. Of course, you need technically competent specialist courts at first instance but, heck, there are enough experts in the USA aren’t there?
IANAE, no one would disagree that deceit should be punished. But failure to submit a reference already in the public domain or even the Examiner’s own file wrappers is in no way a fraud. Congress would have mentioned at least something about it, if it is so important to the validity of a patent.
Somehow Europe makes do without a disclosure rule. I wonder how?
Let me clarify my above comment. I am inferring Mr. Moatz’s stance from the example, “Burying a reference material to patentability among a large number of cumulative references.” See the article below for more details.
link to patentlyo.com
If a court holds invalid a claim in a patent, the court should then, and only then, consider the issue of fraud. If the patent owner ever acted with clear intent to deceive with respect to the claim held invalid, then the full remedies of inequitable conduct should apply. But not before.
Problem is, they don’t want people using inequitable conduct to obtain patents, even if those patents turn out to be valid. If it’s valid, you should obtain it honestly and fairly.
You don’t want to make it a profitable gamble for agents to use whatever tactics they can to secure a patent, and see what happens later on in litigation. If a valid patent were enforceable however obtained, and an invalid patent were unenforceable however obtained, nobody would disclose anything and everybody would do anything they could to get every possible claim allowed.
You should also have to tell the examiner what you know about art if you have some special knowledge about the art, but we shouldn’t have to file IDS in parallel cases. Absurd.
Also absurd for us to have to figure out art that comes to us from 3rd parties (like defendants or foreign search reports.) But, if you get a search report and don’t disclose, it should be IE unless you have a very good reason.
However, I seem to be the only one here to see any virtue in limiting the number of claims. If you need more claims, file a continuation.
I don’t understand why number of claims is a problem. In my experience examiners generally have no problem using restriction/election to require applicants to file divisionals.
I agree with limiting the number of claims. I used to have to write about 100 claims per application for one client. Miserably unfair to the examiner.
Well, Ned, you know what some people do is that they simply don’t disclose anything to the PTO and then you get a claim that has a presumption of validity, so it is harder to invalidate the claim.
Plus it costs a lot of money to get a court to invalidate a claim. Shouldn’t have to do that for IE. You should have to disclose art you know about.
Don’t forget that Harry Moatz, USPTO Director of Enrollment and Discipline, said that it is inequitable conduct to file 1000 references without explaining their relevance.
Night Writer, I disagree. Rule 56 is wrongheaded in the extreme. We need to repeal it.
If a court holds invalid a claim in a patent, the court should then, and only then, consider the issue of fraud. If the patent owner ever acted with clear intent to deceive with respect to the claim held invalid, then the full remedies of inequitable conduct should apply. But not before.
What is different here is that a patent applicant cannot cure the problem simply by disclosure.
As to searches, the PTO does a good job now. What we need to do is limit the number of claims in a patent application to make the searching reasonable. However, I seem to be the only one here to see any virtue in limiting the number of claims. If you need more claims, file a continuation.
How bout now?
are they off yet?sure hope so
now for the italics
turn them off I say
test
Let’s close those tags
To MM:
Incidentally, the author’s last name is Burchfiel, not Burchfield.
remember to close your tags bully!!!

If Mooney were such a hotshot he would not have time for all the silly words he continuously posts here…

If Mooney were such a hotshot he would not have time for all the silly words he continuously posts here…

>>What we have now is a system where the issue >>is disclosure, not honesty. The result >>actually promotes sharp practice and fraud on >>the PTO, IMHO.
IMHO the problem goes back to whose job is it to find the prior art the PTO’s or the applicants. The more the PTO trys to off load their job of finding the prior art, the more this disclosure business becomes an issue. The more the PTO takes the responsibility for knowing and finding the prior art, then the less the disclosure becomes an issue.
Same old problem…the PTO just has to examine an application and understand the application and find the most relevant art.
But, Malcy my friend, how do you know if there is a reasonable question about materiality in 15000 pages unless you read them all?
But sockpuppet, my friend, why stop at 15,000 pages if that is your primary concern?
The fact is I’ve read well over 15,000 pages of office actions and responses in the past several years and I *DO* know they are not material to case X which I’m prosecuting now. I don’t submit all of those pages in IDSs for exactly that reason, even though there is a “probability” that some wanker might bring it up in court and try to invalidate the patent. This is called “being rational.” I know it’s likely a foreign concept to you, as you probably believe that the goal of the ACLU is to destroy religion or some such nonsense.
“Of course, all this is irrelevant to trolls, isn’t it?”
– obviously someone who hasn’t bothered to read (or chooses to ignore because it destroys his strawman) the article at
link to 271patent.blogspot.com
Do’h!
“PS. What’s with the ‘in before 6’ style posts? Are people really so obsessed with his odd examining style that they can’t even wait for him to talk before berating him?
pickles, for your answer see:
link to patentlyo.com
comment 6 (appropriately enough)
What we need to do is simply ban submissions of prior art. IDSs should only list litigations, foreign counterparts, and related cases.
The patent applicant has a duty of honesty, not disclosure I would argue. If the applicant makes inconsistent statements anywhere, those statements will be found when and if he tries to enforce the patent. They can be cited in reexamination requests and in court. One cannot run from the facts and one cannot for long play fast and loose with examiners without ultimate peril.
The mere disclosure of an inconsistent statement in an IDS should not be able to cure the problem unless the statement itself is explained, on the record.
Similarly, if a claim is filed or a statement made that is unambiguously inconsistent with the state of the prior art known to the applicant, mere disclosure of the prior art to the PTO should not cure the problem.
What we have now is a system where the issue is disclosure, not honesty. The result actually promotes sharp practice and fraud on the PTO, IMHO.
If Congress had wanted this rule, then it would have placed a clause into the U.S. Code. It’s hard to believe that based on the outcome of Kappos, the USPTO even has the authority to require submission of prior art. 37 C.F.R. sec. 1.56 is a substantive rule that Congress never intended to have promulgated. I’ll bet the Congressional intent was for the agency to cite relevant prior art, not the inventor or his attorney.
Take a look at what Congress was concerned about(35 U.S.C. sec. 32): The Director can suspend or exclude any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title {the Director may require practitioners, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants valuable service}, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office.
What’s missing from the statute? “An attorney who fails to submit a ‘material reference’ for review.” Why did Congress forget to put it in? Maybe failure to submit a reference is “deceitful.” Of course, your professional career would be destroyed for no benefit since you are paid the same whether a patent is issued or not, but I guess we should assume that its much more fun for an attorney to use deceit to acquire a patent as opposed to making good arguments based on the best art. Perhaps then it is through “incompetence,” that attorneys fail to cite references.
Of course why didn’t the Examiner find it in the first place? Wait a minute…. maybe it’s the Examiner that is being incompetent for not doing a proper search (hard to believe I know). Of course, why would the government hire untrained people to protect the US from undeserved patent monopolies in the first place? Examiners don’t need to take the patent bar, pass a moral fitness test or take a state bar . Conversely, I trained for years as a scientist and attorney, but, well, why listen to me? I’m probably just one of the thousands of underhanded practitioners dedicated to undermining the good works of the Patent Office. Mu Ha Haaaaa…..
Mooney said: “That’s what matters: don’t lie, don’t be inconsistent, and when there is a reasonable question about materiality, disclose the reference.”
But, Malcy my friend, how do you know if there is a reasonable question about materiality in 15000 pages unless you read them all? If you were my client, would you be happy paying me to read them all?

And let’s not forget the added bonus that any defendant will have to pay his lawyer to attentively read through 15,000 pages of “art” just to make out the defense. That alone is probably more expensive than a license.
On the flip side, if the IDS isn’t loaded with pure crap, some of your best invalidating references are likely to be found there and you won’t need to search for them. That is also a very typical scenario during litigation.
Are you hinting that perhaps submitting a 15,000 page IDS is a good way of making a patent more valuable and more licensable simply because of the attorney time it will take to review it. That’s an interesting suggestion. Again I would ask: why stop at 15,000 pages then? It’s cheap to dump documents at the USPTO.
Don’t forget to look at the cases in which inequitable conduct is raised as a defense to patent infringement. Pretty much all of them, I think.
Yes, go right ahead and do that. So what?
If the cheapest, quickest, most thought-free approach also reduces the risk that your firm will be dragged through the mud during litigation and your client billed by the hour for the pleasure, it’s pretty easy to see what your typical practitioner will do
Except that your typical practitioner doesn’t submit 15,000 pages in an IDS.
Step out of the bubble. Look around.
Look again at every inequitable conduct case in which the court has invalidated the patent. Ask yourself: do I engage in the practice engaged in by the applicant in that case? I can answer that question in the negative. That’s what matters: don’t lie, don’t be inconsistent, and when there is a reasonable question about materiality, disclose the reference. But don’t run around like a chicken with its head cut of (“The plague! The plague!”) and whine about the case law.
Don’t forget to look at the cases in which inequitable conduct is raised as a defense to patent infringement. Pretty much all of them, I think. Lawyers are highly risk-averse, by and large, and patentees are highly billing-averse. If the cheapest, quickest, most thought-free approach also reduces the risk that your firm will be dragged through the mud during litigation and your client billed by the hour for the pleasure, it’s pretty easy to see what your typical practitioner will do.
And let’s not forget the added bonus that any defendant will have to pay his lawyer to attentively read through 15,000 pages of “art” just to make out the defense. That alone is probably more expensive than a license.
I don’t mean to suggest that the current system is good in any way, but there’s a whole lot of inertia standing in the way of any real progress here.
There is simply the problem that such references and office actions have some better than aveage probability of either being relevant or becoming relevant depending on the issues arising during prosecution.
Yes, and the key is “depending on the issues.” It’s really not too difficult.
I would suggest that if you can’t keep track of the arguments you are making in a family of cases such that you are not contradicting yourself and not creating material issues of fact that will come back to bite you in the axx later, then the problem is not the IDS rules but the way you are practicing.
By the way, how many commenters have seen a patent in a case they’ve drafted go up in flames in litigation because of inequitable conduct? What percentage of litigated patents were found unenforceable for inequitable conduct last year? Those would be good numbers to keep in mind before you submit 15,000 pages of documents in an IDS.
Look again at every inequitable conduct case in which the court has invalidated the patent. Ask yourself: do I engage in the practice engaged in by the applicant in that case? I can answer that question in the negative. That’s what matters: don’t lie, don’t be inconsistent, and when there is a reasonable question about materiality, disclose the reference. But don’t run around like a chicken with its head cut of (“The plague! The plague!”) and whine about the case law. When your client finds itself on the other side of a patent obtained by chicanery and weaselry, you’ll be glad that the doctrine is there.
Of course, all this is irrelevant to trolls, isn’t it? Gee, maybe that explains all the whining.
The result was to make me painfully aware how little support there is for this proposal within the US.
I don’t think you realize just how onerous it would be to make the disclosure obligation less onerous.
Disclosure is easy now. Find everything, make a list, tell some clerical employee to type it into the IDS form, file on EFS. If it can possibly be identified by number, it goes in the IDS. If your client has heard of it, it goes in the IDS. Sure, the other side can argue in court that you buried the most relevant art, but at least you can honestly say that you were doing exactly what the court told you to do.
If there were some other standard, someone would have to look at the references, at least superficially, to determine which ones met the standard. It would have to be a lawyer/agent, because it’d be inequitable conduct to trust anyone else to make that decision without presumed knowledge of the nuances of the standard. It would also be inequitable conduct if that person weren’t reasonably current in the art. And inequitable conduct would still be at least arguable if you accidentally missed something remotely relevant.
One good thing (from some perspectives) is that it would give a significant competitive advantage to the pro-se garage inventor who doesn’t know any art.
“I must say that on the heirarchy of dumbness, requiring attorneys to submit every office action in parallel cases is right at the top”
There is no requirement to submit every office action or even to cross cite references from parallel cases.
There is simply the problem that such references and office actions have some better than aveage probability of either being relevant or becoming relevant depending on the issues arising during prosecution.
Compounding the issue is that the applicant is penalized (loss of PTA, making OAs final, and fees) when he submits references later in prosecution, and it becomes clear that applicants simply have no business doing a lot of second guessing about which references and OAs ought to be submitted.
I don’t see the PTO implementing the simple rule. I think the PTO is more likely to implement rules requiring applicants to opine on references.
I have urged at an AIPLA conference that the disclosure obligation in the US should be made less onerous. The result was to make me painfully aware how little support there is for this proposal within the US. So from our European standpoint all we can do is to comply as best we can.
“The examiner can’t possibly read them all, ”
On the contrary. If I can read 700, another 200 isn’t going to do that much.
“LOL, I just finished posting a comment directed at 6 noting that, when counting his “too many girlfriends,” he should omit anything inflatable or with cloven hooves.”
Sir you know good and well that all women have cloven hooves, some just hide them until you get married, and some very few are good enough to hide them until you die. This is a factual statement and you know it.
Although broje’s suggestion does bring new meaning to the oft repeated old saying: “F this IDS”.
Boss: “What did you do last week?”
Subordinate: “Well, I spent the entirety reading 13,000+ pages of references, office actions, and responses in multiple jurisdictions to cull the hundred or so that the US examiner might find relevant, that are not merely cumulative to the material already cited and that the CAFC will agree are the only things that need to be cited.”
Boss: “Good work. Carry on to the next 13,000 pages.”
Can I get what you’re smoking Mooney?
A simple rule stating that the Examiner/Office should be charged with a duty to know the contents of related files when the applicant has brought the related application to the Examiner/Office’s attention would go a long way to deal with this issue.
I must say that on the heirarchy of dumbness, requiring attorneys to submit every office action in parallel cases is right at the top.
Why isn’t it surprising that when you team up a lawyer and a judge, the result is that any needle (realistically) pertinent to examination must be placed inside of a large haystack in order to prevent the needle from being “hidden”. Thanks CAFC.
On a side note, I’d be infinitely less annoyed with huge IDS submissions if I didn’t have to spent 90% of my time making sure copies were scanned in properly, and making sure entries aren’t just duplicates of art I cited in my last 892. Once that’s assured, I might just have enough time to look at the titles to see if something may actually be relevant.
PS. What’s with the ‘in before 6’ style posts? Are people really so obsessed with his odd examining style that they can’t even wait for him to talk before berating him?
You know, this massive amount of IDS information can work its way into a case in different ways. I had a case once that I was prosecuting that was a continuation in part of an issued patent. The issued patent was asserted and the defendants cited hundreds of references (probably about 5,000 pages) against the parent.
Now, what to do in prosecution? Is the client really going to pay for me to read at hundreds of references and figure out which ones are the most relevant or do I dump on the examiner?
I dumped on the examiner as the client wasn’t going to pay me to spend a week reading all these references.
I am about to do the same with 6 cross-cited applications.
Burchfield: It is not possible, as a practical matter, to determine the scope of information that may be later be deemed material to an unreasonable “reasonable” examiner (i.e., one who, unlike actual examiners, is not fettered by the rules of practice).
With all due respect, this is just self-serving baloney. There is no reason that an IDS ever needs to be that large and probably 90% of that IDS, if not more, is redundant immaterial crap by any criteria. I certainly have provided Office Actions from related cases – both domestic and foreign – to Examiners in an IDS but only where they were relevant. It’s just laziness to do a data dump like that in an IDS.
The question for Mr. Burchfield is: given your “reasoning” for the submission, why did you stop at 13,689 pages? There is a lot more antibody literature out there that you and your client (and anyone remotely associated with the field of immunology) are surely aware of. If it is “not possible” to determine what is material and what isn’t, then why did you stop at only 13,689 pages? This isn’t a rhetorical question.
The citation of Therasense as a recent case supporting a mega-dump of information is misleading. The facts in Therasense were that the Applicant had argued in the EP that the phase “Preferably, but optionally,” was “unequivocably clear” but argued before the PTO (without disclosing the EP arguments) that the skilled artisan would understand that the phrase means the opposite of what it says in plain English. This wasn’t a case where the Therasense defendants were making some “hail mary” argument relying on arcane, highly technical or legal wordsmithing. This was a case where the applicants simply made stuff up as they went along. A first year associate reviewing the file histories of the related cases (as any defendant will do) would have noted the contradicting statements in two seconds and it would rightfully become a central part of the defense. And why shouldn’t that be the case?
infectious doctrine of inequitable conduct in a time of “absolute plague”
Once again, there is no “plague.” There is a defense called inequitable conduct and it exists for a reason. See, e.g., Therasense. The use of the defense in patent cases is no more a “plague” than the defense of laches. The difference is that there is a lot more inequitable conduct regarding failure to disclose material information during prosecution than there is unreasonable delay during prosecution.
Thanks for reminding us about the “state of the art” of (weary) patent prosecution. I am a bit more acrid than Mr. Burchfield on this point – I keep the words of Judge Rich nearby: “The life of a patent solicitor has always been a hard one.”
“most of which probably couldn’t even pose a threat to the patent’s validity in 6’s hands”
I haven’t seen his actual work, but judging from his posts on the boards, I would not fear ANYTHING in 6’s hands. Sure, I’ll get nonsense until the Appeal, but I won’t get anything to be afraid of.
Forgot to add: it’s the federal jobs program. We have to hire another AA just to keep track of and file the IDSs.
Linn’s dissent hits the mark (no surprise). Too bad Michel is leaving the court. That leaves Linn and Newman as the main opposition to this deluge of cr*p required to submit as IDS material (that the office probably never reads) just to CYA.
“make it inflatable”
LOL, I just finished posting a comment directed at 6 noting that, when counting his “too many girlfriends,” he should omit anything inflatable or with cloven hooves.
Doesn’t litigation counsel argue that 900+ references without relevancy categories CANNOT be effectively reviewed by a reasonable examiner and therefore are NOT MATERIAL to a reasonable examiner?
Too little information is bad; too much information is bad. Lawyers are paid to excercise judgment–to find the right balance between too much and too little. Without a lawyer’s judgment, 900+ prior art references may fall short of a reasonable standard expected in the practice of law.
The only way to ever get an Examiner to pay attention to an IDS like that is to make it inflatable.
A simple rule stating that the Examiner/Office should be charged with a duty to know the contents of related files when the applicant has brought the related application to the Examiner/Office’s attention would go a long way to deal with this issue.
That would be great for covering corresponding US filings, but maybe half of the references on the “cover” of this patent are actual pieces of prior art, most of which probably couldn’t even pose a threat to the patent’s validity in 6’s hands, and there’s still no good way of dealing with that. The examiner can’t possibly read them all, the agent can’t possibly summarize the relevance of each one (nor would he want to unless required to), the agent can’t risk not citing them all, and for some reason they get listed on the cover even if they’re submitted after allowance without an RCE.
There needs to be some reasonably understandable guideline for what the applicant should or should not disclose to the PTO, and it needs to be narrower than “what patents have you heard of?” Sadly, even if such a guideline did exist, no agent would be able to bill his client for reading through 900 references to determine which are the most relevant and why.
A couple sayings draw a parallel to the situation:
“Complicating a cheese sandwich” and
“Pole-vaulting over mouse turds”
Well said Preacher.
In pharma cases, this is not surprising. Ever diligent, the Japanese have become quite sensitive to disclosure related issues, particularly office actions in co-pending related applications, and are no doubt simply trying their best to comply with the law as it stands. However, they are probably also trying to highlight what they see as the arbitrary nature of the rulings associated with the duty to disclose since no real rule has developed as to when something should definitely be cited and when something should.
A simple rule stating that the Examiner/Office should be charged with a duty to know the contents of related files when the applicant has brought the related application to the Examiner/Office’s attention would go a long way to deal with this issue.
He’s spot on. It’s messed up, but it is what it is.
Comments are closed.

Dennis Crouch
Associate Professor, University of Missouri School of Law
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Jason Rantanen
Professor, University of Iowa College of Law
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