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Friday, 30 May 2008

USPTO dumbs down even further?

The IPKat doesn't often comment on goings-on across the pond, as others are usually able to do it much better, but this little story from Greg Aharonian's Patnews email earlier today amused and astonished him so much he thought it would be worth forwarding to the IPKat's readers too.

(right: how USPTO examiners look to the rest of the world)

A few weeks ago, Nokia's US representative received an Office Action on one of their patent applications, titled "Multiple antenna portable handheld electronic device", application number 10/982,469, published as 2006/0099993, filed in November 2004. So far, so normal.

The patent examiner (a primary examiner, not a newbie), obviously under the impression that he had uncovered a killer piece of prior art, cited this published US application against most of the claims, finding that these claims were not novel. The remaining claims were, the examiner alleged, not inventive over the same document.

Alert IPKat readers might notice the little flaw in the US examiner's argument.

While he has the IPKat's readers' attention, Greg would also like to point out that a transcript of the in re Bilski hearing before the CAFC is available here.


Anonymous said...

Killer prior art indeed.

even the application number isn't novel...

Chong-Yee Khoo said...

By providing for the prior art effect of an earlier application to be tied to "an application for patent...filed in the United States", 35 USC § 102(e) is inherently unfair to non-US applicants. It forces them to file first in the US when they otherwise might not. In some cases they may not even be able to because of foreign filing or technology export restrictions. It needs to be reformed urgently.

The "creative" interpretation of 35 USC § 102(e) by the Examiner in this case makes a real mockery of this section. Perhaps "by another" has a different meaning when the applicant is a non-US entity??

MaxDrei said...

One refreshing thing about blogs like this one is the international debate that they engender. Americans think their Hilmer Doctrine is fully compatible with the USA's membership of the Paris Convention. They have not known, until they read it on blogs, that nobody else in the world thinks like that. But John McCain is a multi-lateralist (or so he professes) so all will be OK again, after January 2009, no?

David said...

I would just like to point out that the last two commenters appear to have missed the point entirely. Have another look at the OA and the cited document, and then see what you think.

MaxDrei said...

Indeed David. I could have given the game away, but you didn't so I thought I shouldn't either. MaxDrei above was simply taking advantage of Chong-Yee's point to exercise a pet niggle of his. It's a hazard of successful patent law blog threads, no?

Chong-Yee Khoo said...

No need to point it out, David. First thing I spotted. Even my non-patent attorney wife found it amazing. We had a good Saturday morning laugh here in Singapore.

(I couldn't find anything witty to say on something so ridiculous, so I opted for the political point)

Anonymous said...

The examiner should indeed have concluded that all claims are not novel. Sloppy examination...

anonepa said...

Don't worry, the EPO has done this before. I once had an EP examiner cite the parent against a divisional. He even concluded that given the great similarity between the drawings, he couldn't conceive of any claim being granted.

Anonymous said...

Anonepa - if the divisional is not entitled to the priority date of the parent (for example due to cancelling a feature, the absence of which was not part of the priority filing), the parent could well be prior art against the divisional. That's my theory at least but I am not aware of any case law to back it up - anyone have any suggestions?


Anonymous said...

EdT - A divisional takes the filing date of the parent. Therefore the parent cannot be cited against the divisional because it had could not have been published before the filing date of the divisional.

You are correct that the parent could be entitled to priority but not the divisional, but the worst problem this could cause is that other prior art documents may be citable that were published between the priority date and the filing date.

Of cause, if the cancelled feature was in the parent as filed and was an essential feature then the divisional contains added subject matter and cannot be granted until this is removed (by reinserting the cancelled feature).

Anonymous said...

Understood, but take the case of the priority filing and the EP filing disclosing all the features A, B, C, D, E together. Also in the EP filing is a claim to only A, B, C and D, i.e. no claim to priority. If a divisional is filed for the ABCD invention, it only has the filing date of the EP but the EP application also discloses with a claim to priority ABCD albeit with E. As such, the parent can be an A. 54(3) document against the divisional whch has to be treated as a separate filing. MO.


David said...

I don't think that can be correct, EdT. If a divisional application is not entitled to the claimed priority, then it does no good to cite the parent application against it, because it has the same filing date (i.e. the actual filing date, as opposed to the priority date) as far as that material is concerned. There can never be a situation where a parent application can be validly cited against an application divided from it, because it will always (be deemed to) have the same filing date, whether A89 is a factor or not.

Anonymous said...

I am with EdT on this one, against the majority. An example in the parent that is entitled to the priority date could be novelty-destroying for a claim in the divisional not entitled to priority.


Anonymous said...

Calm down people ! It just a simple TYPO . The examiner actually rejected the claims using Ito et al. reference (US 2005/0143151)listed on form 892. He just listed the wrong number in the Office Action. Applicant should figure this out if they actually read the rejection and know that there is no Fig. 2B or Fig. 8 in their application .

David said...

Is the real name of the last commenter Yuwen Pan, by any chance?

Anonymous said...


So, the priority document discloses ABCDE, the parent discloses ABCDE and ABCD, the divisional discloses ABCD.

In my opinion there are two situations:

1. Feature E is a non essential trivial feature - in which case ABCD is entitled to the claimed priority date in both the parent and the divisional and so there is no issue (for ABCD both the parent and the divisional have the same effective date - the priority date - so there is no self collision).

2. Feature E is an essential feature in the embodiment ABCDE. In which case ABCD is not clearly and unambiguosly disclosed in the priority application. Again there is no issue (for ABCD both the parent and the divisional have the same effective date - the filing date of the parent - so there is no self collision).

Prepared to be proved wrong on this though as I have not thought about it very much.

Gerontius said...

I'm also with Ed as I've realised how carefully he's thought it through.

I think David and the anon are overlooking missing the (theoretical) possibility that features ABCD might be novelty destroying for ABC. Hence a 54(3) citation of features ABCD which dates from the priority date of the parent might be relevant against the divisional where a claim to ABC is only entitled to the filing date.

Imagine a related situation, removing the divisional complication.

You file an EP application claiming ABCD. A year later you file another EP claiming ABCD and ABC claiming priority from the first app. ABC is not entitled to the priority date, so the earlier EP is 54(3) art against your later app and if ABC lacks novelty over ABCD you can't get a patent for ABC alone - you have to claim ABCD.

Of course, for any of this to work in practice you need to find a real situation where there is a different invention that nevertheless lacks novelty. I'd be interested if someone could actually invent a plausible situation.

Anonymous said...

I'm tempted by Ed & Gerontius' reasoning, but wanted to explore this further. In particular, am wondering if there's an EPC/UK law difference.

First, looking at UK Patents Act section 2(3), I need - published patent & earlier priority of relevant matter:

I file application X on 1 January 2001 disclosing ABCD, with all 4 parts essential. AB works, but is less good (and in fact, prior art).

I file application Y on 1 January 2002, claiming priority from X. This discloses that ABC works, ABD works, and ABCD works.

Note that ABC and ABD have date of 1 January 2002. ABCD has date 1 January 2001. Note that ABCD infringes ABC and ABD, therefore logically must anticipate if an earlier date. However, it does not enable as it was wrongly thought prior to 1 January 2002 that all of ABCD was necessary to get advantage over AB (i.e. that C and D only good in combination, not separately).

AB is known in the prior art (but less good; ABC, ABD and ABCD are all inventive over it). So exr objects to plurality.

I divide out. Parent (Y) now claims ABC, child Z claims ABD.

Now examiner cites Y against Z as disclosure of ABCD (with ealier priority) anticipates ABD (section 2(3)). And cites Z against Y as earlier disclosure of ABCD anticipates ABC.

[doesn't work for self-anticipation as s2(3) requires "other patent").

What am I overlooking?

Interestingly, not sure this logic works at all with Article 54(3) as I don't have a prior *filed* application (but section 2(3) doesn't seem to need this). Unless X counts - is it published along with Y? And if so, can self-anticipation get off the ground? (No "other" in art 54(3)).

Anonymous said...

Gerontius, an example I've thought about before is:

EP1 claims: A device for protecting a building against lightning strikes, the device comprising a strip of aluminium.

The description of EP1 is identical to the claim.

EP2 claims: A device for protecting a building against lightning strikes, the device comprising a strip of metal.

The description of EP2 is identical to the claim.

EP2 is not entitled to priority to EP1, and is anticipated by EP1.

Unless you can argue that the claim in EP2 actually has two effective dates: one for the 'metal' being 'Al' and one for the 'metal' being 'not Al'. Then, in so far as the claim relates to Al it is entitled to priority, and in so far as it does not relate to Al it is not anticipated - so you are ok. But I don't think you can argue this successfully, because there is no clear alternative in the claim - the term 'metal' can only have one effective date, and that's EP2 filing date.

The question then is: Can you amend the claim of EP2 to say 'aluminium or any other metal' without contravening 123(2). Probably not.

So EP2 is killed by EP1.

For the example of a divisional application,

Con Doc describes and claims 'A device for protecting a building against lightning strikes, the device comprising a strip of Al'.

EP1 has two separate claims and two separate examples:

1)'A device for protecting a building against lightning strikes, the device comprising a strip of metal.'

2)'A device for protecting a building against lightning strikes, the device comprising a strip of Al.'

EP2 has one claim and one example:

'A device for protecting a building against lightning strikes, the device comprising a strip of metal.'

I've not thought it through, but I think the same prob arises: the effective date of the claim of EP2 is the filing date of EP1. But claim/example 2 of EP1 has an effective date of the filing date of the ConDoc, so is novelty destroying.


Anonymous said...

A real case example is in the appeal against EP 846 450. The patentee provided a 29 page expert opinion arguing against this concept (see annex to submission of 18/04/2005).

Anonymous said...

Greg has apologised today - turns out the actual comments and citations are for a different piece of prior art - the number is, in effect, a typo.

But he also a reports a rejection based on double patenting, where the rejected case is a divisional forced upon the client by a restriction requirement - so basicall the Examiner said there were two inventions, forced the filing of a divisional and then on examination said there was only one invention. Nice way to bump up your performance totals, I guess..

Anonymous said...

Though the examiner may have notated the PG PUB of the application under examination, he was clearly not citing from that document. The figures and items cited in the rejection do not correspond to the applicants PG PUB. The examiner was citing from another piece of art and simply typed in the wrong application number.

David said...

That raises an interesting question of to what extent US examination reports are automatically generated. If the examiner only has to type in the reference once for it to be replicated throughout the report, how much else is merely the work of a computer?

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