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December 04, 2008

Comments

What about a program to teach USPTO management to read case law?
Or the statute for that matter???

Don,

I see there was a session on the new appeal rules. The one item that still puzzles me is what is now required by the appeal brief for the Statement of Facts section. The rules only give a very general description of what this section is about, but no examples of what should go in this section. (The response to the Comments in the the appeal rules notice are no more illuminating.) For example, now that the Summary of Claimed Subject Matter section has been dropped, is this where the discussion of the claimed subject matter goes? What are some other common items that should go in the Statement of Facts? Did the presenter ever elaborate on what should go into the Statement of Facts? Sorry for all these questions and sub-questions, but, at least in my opinion, this Statement of Facts requirement is very poorly explained by the new appeal rules.

How about a program to teach Examiners to read and understand patent applications?

How about a program to teach Agents/Attorneys to write understandable patent applications and read prior art?

EG:

Kevin will be doing a write-up on the appeals presentation that we should be posting early next week. I will forward your questions to him so that he can try to address them.

By the way, we will also be covering a number of the other BCP meeting presentations over the course of the next week.

Don

Don,

Thanks much. Will look forward your posting next week on these BCP meeting presentations.

I'm sure Ms. Gongola is well meaning, but the notion of limiting the training for examiners to respond to case law cites by practitioners is rather silly. What is needed is some training to prevent the citation of case law by examiners. Am I the only one tired of seeing the following: "The Smith reference doesn't show any of the features claimed, but Official Notice is taken that it's prima facie inherently obvious to optimize everything through routine experimentation. See In re Aller."?

The examiners need to be forbidden from citing case law unless the cite is reviewed by somebody who knows what they are doing. And I don't mean SPE's, QAS's, etc. I mean any, and all, case law cites in an Office Action should be reviewed by somebody with a law degree, or the Office Action doesn't get mailed out.

"...Ms. Gongola informed attendees that examiners are taught to always consult the MPEP first when attempting to ascertain the Office's policy regarding the meaning of a cited case."

Has any thought been given to revisiting the MPEP's "reading" of cases?

Whenever PTO cites caselaw along with the MPEP, I ALWAYS read the case, becasue more often than not the MPEP completely mis-construes the case. Good mileage can often be had by arguing back on the facts and application of the cited case.

PTO could make the examiner's job (and the practitioner's job) a little easier if they actually gave accurate descriptions of the cases cited.

I was an examiner (biotech art) and left the office about 15 years ago. I found that most practioners didn't cite case law correctly or misconstrued it. I really enjoyed looking up the cases and citing in context, pointing out dicta, etc. The practitioners were always surprised and never came back with a peep on the case law again. The prevailing attitude in the PTO at the time was that case law was only used when there was no factual basis to overcome a rejection. I don't know where they are on that now.
And you are correct - the MPEP was pretty worthless wrto case law.

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