Brown & Michaels
Am I entitled to Small Entity fee status?
Many USPTO fees are discounted by 50% for applicants and patentees who qualify as "Small Entities". Determining whether or not you fit within the "Small Entity" class or not can be complicated. However, it is important to do it right, because the consequences of claiming Small Entity status when you are, in fact, a Large Entity, can be draconian - complete invalidity of a patent and loss of patent rights due to "fraud on the Patent Office".
Assuming you are entitled to it, you must make an assertion of your Small Entity status when you file the application. You do this either by checking the "Applicant claims small entity status" box on the transmittal form, or by paying the small entity fee exactly.
This is the last time you get to claim small entity status just by paying the right fee, though - if your status changes before you have to pay the issue fee (or one of the maintenance fees after issue) you must file a written assertion that you are now a Large Entity when you pay the fee. Merely paying the Large Entity fee will not correct your status. Similarly, if you filed your application as a Large Entity, and at the time of paying an issue or maintenance fee you are entitled to Small Entity status, you must file a written assertion of your new status.
Once you've established your Small Entity status when you file the application, you can continue to pay small entity fees until you (a) file a continuing application (continuation, division, CIP), or (b) file a reissue application, or (c) pay the issue fee, or (d) pay any maintenance fee which is due after the patent issues. Before you take any of these actions, you need to make a new determination of your eligibility for small entity treatment. This is set forth in the Patent Rules at 37 CFR 1.27(f) and (g):
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. ...
(g)
(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
Note that the "Small Entity" or "Large Entity" status applies to the owner of the patent rights - not the inventor or inventors, who would always be individuals under US law. If the owner has granted patent rights to an entity which is not a Small Entity, then the owner cannot claim Small Entity status.
As stated in 35 U.S.C. 41(h)(1) and 37 CFR 1.27(a), an owner of a patent or patent application is entitled to Small Entity Status if and only if:
The owner is a "person" (i.e. individual or individuals) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.; or
The owner is a "small business concern", meaning a business which meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
Those standards (13 CFR 121.802) say that a concern eligible for reduced patent fees is one:
(a) Whose number of employees, including affiliates, does not exceed 500 persons; and
(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
The regulations of the SBA define how you count an "employee", what is an "affiliate", and over what period that counting is done. If you really want to find out exactly, you will need to review all of the regulations and your employment records very carefully, and account for all of the "employees" who worked for your business or its "affiliates" at any time during the previous 12 months. If your business concern (counting its parent company, subsidiary companies and any affiliated companies) was anywhere near 500 employees at any point, you should probably pay Large Entity fees, just to be safe.
Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416;
or
The owner is a nonprofit organization, meaning (37 CFR 1.27(a)(3)) any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in any country;
(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201 (i)); or
(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
What about rights held by Government Agencies?
Normally, transfer of any rights to an entity which does not qualify for Small Entity status means that Large Entity fees must be paid. Government agencies are not, themselves, Small Entities. The MPEP says so explicitly in section 509.02 - "Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules ... 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country".
There are certain exceptions to the general rule where some licenses to government agencies by those who themselves qualify as Small Entities will not preclude Small Entity treatment. Those exceptions deal with compulsory licenses granted the government under Executive Order 10096 (inventions by government employees) and 35 USC 202(c) (inventions by private contractors who make inventions while receiving Federal funding, where a license is required as a condition of financing).
If a Federal agency (or any other government body) is an owner of a patent or application (even a co-owner), rather than a licensee, the application/patent would NOT qualify for Small Entity fees.
For details on this, see MPEP 502.09, particularly section VI - RIGHTS HELD BY GOVERNMENT ORGANIZATIONS - http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_02.htm
From http://www.bpmlegal.com/howsmall.html
Thursday, September 25, 2008
Wednesday, September 17, 2008
Conclusory Obviousness Statements pt. 2
Claims 26-27.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.
The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.
The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.
Tuesday, September 16, 2008
Conclusory Obviousness Statements
Second, regarding the Examiner’s obviousness argument, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states:
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
Tuesday, September 9, 2008
"Well Known" asserted by Examiner
The Action rejects claim 11 under 35 U.S.C. § 103(a) as allegedly being unpatentable over Cheung in view of what was alleged to be well-known in the networking art. The Action states that “the use of expiration dates for assigned attributes were well-known at the time of the invention.” Applicants disagree, and traverse. Applicants respectfully request that the examiner produce authority for his statement that “the use of expiration dates for assigned attributes were well- known at the time of the invention. “See Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 ("[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings" to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to support the finding. See 37 CFR 1.104(d)(2).” MPEP 2144.03
New Claims
Support for New Claim
There is support for the subject matter of the new claim throughout the Specification and Figures as originally filed. Additionally, the Applicants provide the following example of support:
Claim 37: 4:6 to 4:8.
There is support for the subject matter of the new claim throughout the Specification and Figures as originally filed. Additionally, the Applicants provide the following example of support:
Claim 37: 4:6 to 4:8.
Telephonic Interview
Telephonic Interview
Applicant wishes to thank the Examiner for extending a brief telephonic Examiner Interview on September 9, 2008. Priority date problems with the cited art were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s discussion.
Applicant wishes to thank the Examiner for extending a brief telephonic Examiner Interview on September 9, 2008. Priority date problems with the cited art were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s discussion.
Monday, September 8, 2008
Co owned patent Cannot use patent as 103 reference
Lawler, U.S. Patent 5,907,323, Cannot Be Used as a 103 Reference.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.
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