August 2014 Patent Prosecution Lunch Presentation

1. Prosecution Luncheon
Patent
August 2014

2. Patent Office News
• PTAB Paralegal Telework Issues
– Inspect Generals report: Waste and Mismanagement at
the Patent Trial and Appeal Board.
– Paralegals hired but not APJ’s due to hiring freeze
– Paralegals not reassigned- surfed the internet, Facebook, etc.
– Appeals backlog doubled from 2009 to 2013 (12,500 to 25,300)
• Examiner
– Manhattan Strategy Group Report- more senior examiners (GS
level) are more likely to grant patents because given less time to
examine
– Washington Post published internal memo:
 Oversight of the telework program — and of
examiners based at the Alexandria headquarters —
was “completely ineffective,” investigators
concluded.

3. Wrong Dimensions- Potential $6 Million Mistake
• Malpractice Suit Filed over US Patent No.
8,216,021directed to a kidney-shaped push-up
bra insert
– Alleged that the patent attorney got the ratio of the
thickness of the pad from the breast to the bra, and
the length of the insert from the sternum to the
armpit backwards in the claims and specification.
– Competitors are currently
selling similar products, but they can’t
sue them
– New firm filed a Reissue and
a CON/CIP (?) to fix the problem

4. Foreign Prosecution Notes
• Scotland to Vote for Independence
on Sept. 18th
– May have to deal with the IP aftermath.
– Peter Arrowsmith’s interesting article with
more information is available here:
Intellectual Property in an Independent
Scotland.

5. Patent Office News
• In view of Alice decision- USPTO
is pulling Notices of Allowance
• Sample form rejection
Claims… are rejected under 35 U.S.C. 101 because the claimed
invention is directed to non statutory subject matter. In the
instant invention, the claims are directed towards the concept
of… [This] is considered a method of organizing human
activities, therefore the claims are drawn to an abstract idea.
The claims do not recite limitations that are “significantly more”
than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. It
should be noted the limitations of the current claims are
performed by the generically recited processor. The limitations
are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to
perform generic computer functions that are well-understood,
routine and conventional activities previously known to the
industry. Therefore, claims… are directed to non-statutory
subject matter.

6. Calendar
• At the Bar with the Bench
– Sept. 25th 5-7 p.m. Tomlinson Tap Room
– Firm sponsoring the event
– Network with other attorneys & judges
• Upcoming IP CLE- Annual Meeting, Oct. 9 (2-4 pm) at the
Sheraton at Keystone Crossing, Indianapolis
– a. Early Neutral Evaluation & Mediation of IP Disputes
(1 hr. CLE/1 hr. CME), Rick Huser, Huser ADR.
– b. In-house Counsel Insights and Panel Discussion
(1 hr. CLE), Ken Southall, Chief Patent Counsel, Cummins;
Mike Young, Roche Diagnostics Operations.
– c. Intellectual Property Section Meeting & Reception
(4:15-5:30pm).

7. Calendar
• At the Bar with the Bench
– Sept. 25th 5-7 p.m. Tomlinson Tap Room
– Firm sponsoring the event
– Network with other attorneys & judges
• Upcoming IP CLE- Annual Meeting, Oct. 9 (2-4 pm) at the
Sheraton at Keystone Crossing, Indianapolis
– a. Early Neutral Evaluation & Mediation of IP Disputes
(1 hr. CLE/1 hr. CME), Rick Huser, Huser ADR.
– b. In-house Counsel Insights and Panel Discussion
(1 hr. CLE), Ken Southall, Chief Patent Counsel, Cummins;
Mike Young, Roche Diagnostics Operations.
– c. Intellectual Property Section Meeting & Reception
(4:15-5:30pm).