The Story Continues

Jed Margolin
Reno, NV

This is a continuation of Patent Office Story: How the U.S. Patent Office Jumped the Shark.

After the treatment I received at the hands of the five patent examiners and three administrative patent judges, the next step was to go to the Court of Appeals For the Federal Circuit ("CAFC" or "The Court").

If you want to skip ahead:

My Appeal Brief (Blue Brief) and Appendix

Solicitor's Brief (Red Brief)

My Reply Brief (Gray Brief)

          CAFC Decision
My Comments on the CAFC Decision

Notice of Appeal

October 6, 2006

I mailed my Notice of Appeal. Three copies (along with the BPAI decision I was appealing and a Certificate of Mailing) went to the Court. The original Notice of Appeal went to the Patent Office.

Normally, when you are appealing a decision of a District Court or a federal agency you send the original Notice of Appeal to the Court and copies to the court or agency whose decision you are appealing.

But not when you are appealing a decision of the Patent Office.

In that case you send the original to the Patent Office and copies to CAFC.

That gave me a problem because, while the Notice of Appeal is addressed to the Court, the Patent Office says it must be directed to the Director of the USPTO.

35 U.S.C. 142 Notice of appeal.

When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.

I decided to deal with it by sending a cover letter.

The other problem is that CAFC court rules say to send it to the Patent Office at:

General Counsel
United States Patent and Trademark Office
Post Office Box 15667
Arlington, VA 22215

The Patent Office says ( under the section Mail Stop 8 to send it to:

Office of the Solicitor
P.O. Box 15667
Arlington, VA 22215

I called the Clerk of the Court. She said to use the address they said to use.

I called the USPTO Solicitor's Office. They said to use the address they said to use, but if I used the address the Court said to use they would probably still get it.

I used the address the Court said to use.

This may appear to be a small thing, but they hang you for less.

After the Post Office said it had been delivered, I called the USPTO's Solicitor's Office to make sure they had gotten it. They said they hadn't. When I called back the next day they had gotten it but not the cover letter, even though my return post card shows that I sent it. (That's why I always send a self-addressed post card listing what I have sent them. The Mail Room checks it, stamps it, and sends it back.) I think they found the cover letter, eventually.

Note that normally when you send something to the Patent Office by U.S. Postal Service Express Mail it is considered as having been filed when you hand it to the Postal Clerk. But not with a CAFC case. It is not considered as having been filed until it is received.

This is true with the Court, too.

Also note that, while the Patent Office receives mail on Saturday, the Court does not.

As a result, although I mailed the Notice of Appeal on October 6, it was not received by the Court until October 10, which is the date of filing. (October 9 was Columbus Day and the Court was closed.)


November 17, 2006

Another thing that makes a patent appeal different from other appeals is that with other appeals the case is docketed by the Court when you file the Notice of Appeal.

With a patent appeal, it isn't.

Instead, the Patent Office Solicitor has 40 days to send a Certified List to the Court. The case is not docketed until then.

A Certified List seems to be the list of the documents forming the prosecution history of the application.

That would seem to be the IFW (Image File Wrapper) but as I later found out, there may be documents in PALM that are not in the IFW. I asked the Solicitor's Office for a list of the documents in PALM that were not in the IFW but was ignored until I threatened to file a motion asking the Court to compel them to produce the document. They sent me the PALM listing but there isn't anything especially interesting on it. (So why did they give me such a hard time?)

Another interesting fact is what happens if the Patent Office misses a deadline.

Nothing happens.

But if the Appellant misses a deadline the case can be dismissed. You lose.

Certified List

The Solicitor's Office filed the Certified List, dated November 16, which is exactly 40 days after October 6. The Solicitor's Office may have considered October 6 as the filing date or, maybe, they just wanted to get it in early.

Even so, it took a long time to print out the contents of the IFW (combined and commingled with PALM entries).

It was received by the Court and docketed November 17, 2006.

And that started a clock.

But, first, there is the business of the Certified List to deal with.

I looked at the Certified List and saw there was only one entry for 8/30/2005 even though there are two entries in the IFW. The reason there are two entries in the IFW is that the Examiner filed two Examiner's Summaries that day.

There was also one entry for something that didn't happen 10/5/2001 Correspondence Address Change.

In addition, there was an entry for 12/09/2004 Miscellaneous Incoming Letter. This was a letter from the law firm of McGinn & Gibb explaining that the Patent Office had mistakenly transferred my application to their customer number and that they have never represented me.

All I could think of was that the Solicitor was planning on asserting that I wasn't really a pro se applicant/appellant because my application had at one time been transferred to a law firm.

There was also the matter of the cover letter to the Certified List which made it look like the Solicitor would not deal with me directly, that he would only deal with my Counsel. Since I am pro se I do not have Counsel.

I sent an email to the paralegal who had sent this material to me.

Here was her reply.

I thought it was a bit frosty. After all, by then I had already talked to her on the phone several times. I had also uploaded my proposed Appendix to my server (in several different formats) so they could get a head start on things.

Now I find out that it was a waste of time.

Email is not considered having contacted them for the purpose of designating the record. (The Designated List is a list of documents. You are to select your Appendix from that list.)

One thing from the paralegal's email that impressed me was that the letter I had gotten was a form letter. They get very few pro se Appellants so they only have one form letter, which assumes the Appellant is represented by Counsel. I guess they don't have enough room on their server for another form letter.

This was my response.

This is the paralegal's corrected Certified List. (But I never had my questions answered.)

Designated List and Entry of Appearance

The Solicitor's choice of attorneys for my case was the Solicitor himself. Naturally, I was flattered that he had decided to take the case himself but I was concerned that his other duties might make it difficult for me to contact him in order to Designate the List.

It was, so I sent him a letter along with the copy of my Entry of Appearance. An Appearance doesn't mean I am going to the Courthouse and appear in person, just that I am representing the Appellant, which happens to be myself. Unless I can figure out how to Astral-Project I will be staying right here in Nevada. While it is possible to present oral arguments to the Court, pro se Appellants are discouraged from doing so, perhaps because we might see it as an opportunity to practice the legal skills we have learned by watching Boston Legal or whatever the TV law show de jour might be. (Besides, I can't decide whether I would be Alan Shore or Denny Crane.)

I was not able to talk to Solicitor Whealan until November 30. He didn't seem to want to talk to me. He accused me of disrupting the Office, that I was taking up too much of his people's time, and they had never before had the kinds of problems that they had had with me. (I bet he says that to everyone.) He also said (at least twice) that "this is a respectful process and that the case will be argued on its merits, not on procedural matters." That was great news, except it certainly didn't seem that way.

When I asked him if he wanted to talk about the Designated List he said he had assigned another attorney (Joseph G. Piccolo) to the case and I should talk to him.

Appeal Brief

Meanwhile, the clock was running.

You present your case to the Court by filing a Brief.

Normally, this is a Formal Brief whose requirements are set by the Federal Rules of Appellate Procedure as modified by local court rules, in this case the CAFC. Both are available together at .

But if you are a pro se appellant you can file an Informal Brief . I felt that the Informal Brief would not let me present the case the way I wanted to present it so I decided, early on, that I would file a Formal Brief. In fact, I wrote most of my Formal Brief before I even filed the Notice of Appeal.

The deadline for filing a Formal Brief is 60 days after the case is docketed, but the deadline for an Informal Brief is 21 days after docketing.

That means the deadline for my Formal Brief is January 19, 2007. (They allow a few days for mailing.)

No one ever asked me which I was going to file and it came as a surprise to see that my Brief was due on December 8, 2006. (Pacer Entry)   I was afraid that if the December 8 due date stood, then on December 9 I would be sent a letter saying I had missed the deadline and my case had been dismissed.

I called the Clerk of the Court who told me that since I am a pro se Appellant it was assumed that I would be filing an Informal Brief. When I told her I would be filing a Formal Brief she said she would correct the entry, and she did. (Pacer Entry)

November 30, 2006

I received an email from Joseph Piccolo, the Solicitor's new champion.

Mr. Margolin, I am an attorney for the USPTO Director assigned to your above-identified appeal.  I would like to fax you a letter.  What is your fax number please?


Joseph G. Piccolo, Associate Solicitor

I only have one phone line and I use a PC to receive faxes so when someone wants to send me a fax I have to coordinate it with them.

I called Mr. Piccolo to tell him this but only got his voice mail.

I waited about 30 minutes and called again with the same results.

While I was doing something else he called me and left a message (I had forgotten to turn my ringer on). I called him back and he answered the phone. It was a short conversation.

I explained to him about having only one phone line, the PC, and the coordination required for me to receive a fax.

There was only silence from him. I assumed he was stunned to learn I had only one phone line so I gave him at least 20 seconds to recover before I politely asked, "Do you want to send me a fax?"

He said, "No" but he might want to send me a fax later.

I asked if he wanted to talk about the Designated List. He said "No" because he was busy with other cases.

He then asked me if I was familiar with 35 U.S.C. §144.

I said, "No, not off the top-of-my-head."

That was the end of the conversation.

I looked up 35 U.S.C. §144

35 U.S.C. 144 Decision on appeal.

The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.

He would have already known that I had filed my Notice of Appeal with the Court of Appeals For the Federal Circuit so he probably wanted me to guess that he was pointing to the part that says on the record before the Patent and Trademark Office.

It appears to mean that the Appellant cannot introduce new evidence to support his arguments. I'm not sure if this is true. After all, this is a legal thing, and legal things are not always as they appear.

But, that brings up the question, "Who am I supposed to write my Specification for?"

Supposedly you are to write the Specification so that your invention may be practiced by a Person Having Ordinary Skill in the Art (POSITA) without undue experimentation.

The POSITA is a mythical creature. I have met many people in different fields. And most of them have some very good ideas. Many times their ideas are for what could be considered useful inventions. I am not talking about scientists and engineers. I am talking about regular, normal, everyday people. I believe most people have within them the ability to creatively solve problems and, in the process, produce useful inventions. Whether they have the desire, time, and money to pursue a patent is irrelevant.

Even so, the question is, "a Person Having Ordinary Skill in which Art?" Obviously, the Art is the Art (or field) that the invention belongs to.

But even a person who is an expert in one field might be totally clueless about another field, much less have ordinary skill in that art.

In the old days a Patent Examiner could spend his entire career examining patents in one field and become an expert in that field.

Nowadays, not so much, if only because the number of different fields has so greatly increased.

Fortunately, Examiners are required to have degrees in science or engineering. They might not be experts in your field, but they are capable of understanding and learning about your field, especially if you help them by adding some background to the Specification.

In my case, Examiner Patel is an engineer. According to his supervisor, Examiner Patel has a great deal of experience in computer systems.

In my application I discussed one of the advantages of my systems was that "For reliability, Home Network Server 101 may use a robust operating system that can run for long periods of time without crashing."

Later, I was more specific and mentioned Microsoft Windows by name. I filed the Provisional Application that the current application was based on in the year 2000 when the most popular operating system was Windows 98SE.

Examiner Patel did not ask for (or need) evidence that Windows 98SE would be a poor choice to control your house. As a computer expert he would have known this by personal experience.

Here's the problem.

While the members of the Court may, indeed, also be computer experts, they might not be.

I originally planned to provide some background by adding a reference to my Appendix.

When Microsoft brought out Windows 2000 they commissioned a study performed by ZD Labs to compare the reliability of Windows 2000 to previous versions of Windows.

The report (dated January 2000) is called: Microsoft 2000 Professional Reliability: A comparative study of the reliability of Windows 2000 Professional, Microsoft Windows 98, and Microsoft Windows NT Workstation 4.0.

As of this writing the report was still available from Microsoft at: or from here.

In Figure 1: Average uptime in eight-hour workdays it showed the average uptime for Windows 98SE is 1.8 workdays. At their stated workday of 8 hours, that comes to 1.8 workdays * 8 hours/workday = 14.4 hours.

I had planned to include an excerpt (click here) in my Appendix and reference it in my Appeal Brief but felt that since it was not already on the record before the Patent and Trademark Office it would cause my Appendix (and Appeal Brief) to be rejected. So, I took it out.

What that means is that in future patent applications (assuming I do any) I need to write the Specification (and include references) for CAFC. Not just the Examiner. And not just the POSITA. That also means my responses to office actions and any telephone interviews should be to help build the record for CAFC.

The Appendix

The Court encourages the Parties to use the same Appendix.

I tried.

At Mr. Piccolo's request I Express Mailed him a copy of it even though, according to my server logs, the Solicitor's Office had already downloaded it.

Getting mail to the Solicitor's Office was a problem.

For some reason it took 2 days for Express Mail to get to their Post Office Box. It arrived in late morning. Unfortunately, the Solicitor's Office picked up their mail early in the morning so they didn't pick up my mail until the next day. That means it took three days for them to get Express Mail.

Here is the email I sent to Mr. Piccolo and here is his answer.

I asked him several times (in emails) if he wanted me to add anything to my Appendix.

The first time, I was ignored.

The second time, his answer was also non-responsive.

I decided I had made a good faith effort and sent him this response.

By then they had added another attorney to their team, Mr. Nathan K. Kelley, bringing it up to three. I am flattered that they think they need three attorneys to deal with my case.

Filing the Appeal Brief and Appendix

December 11, 2006

Although my deadline for filing my Appeal Brief was January 19, 2007 my Appeal Brief and Appendix were done and I didn't see any reason to wait.

I started the process by bringing them to Fedex Kinko's to make the copies.

The reason for not making the copies myself were:

1.   There are a lot of copies to make: 12 copies (including the original signed copy) go to the Court, and 2 copies go to the USPTO Solicitor.

2.  The Court is very particular how the copies are to be bound. The Rules tell you what is not acceptable (Velobind and Spiral binding) but don't come out and say what they do accept. Fedex Kinko's offers two methods of binding that appear to be acceptable: Cloth Tape binding and Booklet binding. Booklet binding is where they print everything on 11" x 17" sheets, fold it, and staple it in the middle.

I called the Clerk of the Court and asked about it; I was told that both Cloth Tape binding and Booklet binding are acceptable.

I had planned to use Booklet binding for the Appeal Brief and Cloth Tape binding for the Appendix, but Booklet binding for the Appeal Brief would have cost almost $100 more, so I went with Cloth Tape binding for both. (For various reasons I had already decided to do the Appeal Brief and Appendix as separate documents.)

As it was, it cost $409 for 20 copies of the Appeal Brief and Appendix. (I had some extra copies made.)

Fedex Kinko's did an excellent job and followed my instructions to the letter:

1.  No enlargement or reduction was permitted because of the rules for margins (1" on all sides) and font size (14 pt. type even on the footnotes.)

2.  The cover of the Appeal Brief was Blue, the cover of the Appendix was white.

3.  The pages of the Appeal Brief were all single-sided.

4.  Most of the pages of the Appendix were double-sided (I specified which ones).

The other part of the process was the Corresponding Brief and Appendix on Compact Disc. I decided that since I would be posting the documents for this article, I might as well file the CD. This requires the consent of the other party (the USPTO Solicitor) and Mr. Piccolo gave his ok.

My main concern was labeling the CDs. My penmanship is not great, especially when writing on CDs and DVDs.

I bought a Casio CW-75 Disc Title Printer. Unfortunately, even on CDs marked as "printable" the results were crappy.

I thought about getting an Epson printer that prints CD labels, but the reviews I read about the results made me decide "no."

That left Lightscribe.

With a Lightscribe-rated disc (and Lightscribe-capable burner) the laser in the burner burns a label on the label-side of the disc. (

I didn't have a Lightscribe-capable burner so I bought a Liteon SHM-165H6S from for $31.99 + shipping. It arrived in only a few days.

Lightscribe has a simple labeling program for free on their web site but it doesn't do very much. Fortunately, Nero 6.6.x.x does Lightscribe labeling very nicely.

The downside is that Lightscribe does not work on a Windows 98SE machine, so I installed the drive, the Lightscribe drivers, and the Lightscribe contrast enhancing driver on my Windows XP machine.

It produces a very nice result, although even with the simple label I produced it took almost 15 minutes per disc.

Did I mention that you have to send the same number of Corresponding CDs as the number of Appeal Briefs? That means twelve copies to the Court and two copies to the USPTO Solicitor. At 15 minutes per disc it takes over three hours just to do the labels. Although Lightscribe implies you need to burn the data side before you burn the label, an email to them confirmed that you can burn the labels first.

December 18, 2006

I signed the pages that needed to be signed, boxed everything up to CAFC and the USPTO Solicitor, and mailed it.

December 24, 2006 (Sunday)

I checked Pacer and discovered the following entry that wasn't there on Friday night:

       Date             History
       1/5/2007       Due CORRECTED BRIEF

This indicates my Appeal Brief has been rejected. Presumably, I will receive a letter explaining why, but they haven't left me much time to correct it, especially if it means getting 14 copies made and bound.

Here is the Pacer page.

Since Monday is Christmas, there is nothing to do until Tuesday.

December 26, 2006 (Tuesday)

I called the Court Clerk. She said the group that handles Appeal Briefs is not in today. They would be back on Wednesday, but I should wait until Thursday to call. She said they were short-staffed today and there was no one to pull the file and tell me why my brief had been rejected.

I called the Solicitor's Office to see if they had gotten the letter. I started by asking if they had gotten the Appeal Brief I sent last week.

The receptionist said that if I had sent it they probably got it.

I asked if they had gotten the rejection letter and she said she didn't know.

I asked to speak to Mr. Piccolo. She said he had taken the week off and would be back after the First of the Year. It appears that Mr. Whealan and Mr. Kelley had also taken the week off.

My reason for asking was that it looked like I would have to file a motion for an extension of time, since I couldn't correct the Brief without knowing what I needed to correct. Motions for extension of time have to be filed at least 7 days before the deadline and I had to try to get their consent.

Since I couldn't make any progress I went into town to get some provisions.

When I got back I took a nap.

I woke up about 4pm to hear the wind howling outside.

When I looked outside my window I saw that one of the panels of my new Costco storage shed had blown out.

I went to the mail shed (2.5 miles away). The wind was very strong.

Amazingly, there was the CAFC letter in my mail box.

After I got back to the car, I decided to open the letter right there so that if, on my way home, the wind picked up my car and hurled me off the mountain I wouldn't die without knowing why the Brief had been rejected.

The Brief had been rejected because I used the wrong font. (That's what I get for using "Appeal Briefs For Dummies.")

The Appendix had been rejected because I had not followed some Rule or another.

Here is the rejection letter for the Appeal Brief, and here it is for the Appendix.

When I got home, my first priority was to get the contents of my shed into the garage. (First I had to get my Truck, a 1990 4WD Nissan pickup, out.)

After about 30 minutes, the power went out on the mountain. Then it started raining, so I had to finish in the dark and wet.

Now my garage is full of boxes again, just like when I moved in.

The house got very cold so I built a fire in my wood stove in the Living Room. It wasn't easy. I remembered that one of the tools that can really help get a fire going is a set of bellows, and I don't have one.

Eventually the power came back on, and then promptly went out again. Thirty minutes later it came back and stayed on. It was out for a total of about 5 hours

It seems we had had 100 mph winds that day.

Later that night, the rain turned to snow.

December 27, 2006 (Wednesday)

The rejection letter said to call between 2 and 4 pm (Eastern) so I called around 11 am (my time).

The clerk reminded me that she had told me to call on Thursday. I explained that I was running out of time and she kindly transferred me to Pam Twiford, the Chief Deputy Clerk.

Ms. Twiford confirmed that I had used the wrong font. I was supposed to use a proportional serif font like Times New Roman; instead I had used Arial which is a proportional non-serif font. That was the only reason for rejecting my Brief. It had not been rejected for content.

While this may sound petty, it's understandable. A decade ago Aviation Week & Space Technology changed their font from something like Times Roman to something like Arial. I hated it. It was distracting and it took me longer to read the magazine. After a few months I adapted.

The Judges and their Law Clerks spend a great deal of time reading Briefs. By requiring all Briefs use the same kind of font they won't be distracted by the use of different fonts. Still, Arial is an attractive font once you become used to it.

BTW, from Wikipedia (

In typography, serifs are non-structural details on the ends of some of the strokes that make up letters and symbols.

The story of the Appendix is more interesting.

It had been rejected because I had failed to include the Docket Sheet. It appears the Docket Sheet is the Certified List. In discussing it with Ms. Twiford I told her about the problems I had had with the Solicitor's Office and that they may have deliberately left a material document off the Certified List. She said I could include the Image File Wrapper as well as the Certified List. She also said I could add it to the end of the Appendix so I wouldn't have to redo all the Appendix page numbers, both on the Appendix and the references to them in the Appeal Brief.

If I had read the Rules more carefully, or looked at the Appeal Cases I had bought, I would have seen that I needed to include the Docket Sheet. This was my mistake.


I had made a copy of the Appendix available to the Solicitor's Office both by uploading it to my server for them and, at Mr. Piccolo's request, mailing him a printed copy.

As previously noted, I had asked him several times (in emails) if he wanted me to add anything to my Appendix.

The first time, I was ignored.

The second time, his answer was also non-responsive.

I decided I had made a good faith effort and sent him this response.

As an experienced litigator he would have noticed that I had failed to include the Docket Sheet. He was not obligated to tell me, and he didn't.

But the words of Solicitor John Whealan come to mind, that "this is a respectful process" and that the case will be argued on its merits, not on procedural matters.

Respectful Process, indeed.

I started working on the corrections.

After awhile my Internet came back again. (It's a terrestrial microwave network that had developed problems after the power failure the night before.) Then it went out again. (It is very rare for the system to go down.)

After that I took a late nap.

When I got up it was around 6 pm. I worked on the corrections again. Then the power went out and stayed out for several hours.

December 28, 2006  (Thursday)

I spent the morning checking everything. When I was ready to print the final version I decided to use my Samsung backup printer because my HP-1100 has been turning into crap. Unfortunately, my computer could not find the path to the Samsung. It worked last week, but not now, so I spent a bunch of time dealing with the problem.

I finally got it to work and headed in to town to give the new version to Fedex Kinko's.

By the time I got back it was around 4pm, which is when the Sun disappears behind the nearby peaks and it gets cold very fast.

Although Tuesday's snow wasn't very much, it had partially melted during the day and had begun to freeze on the roads.

I was doing ok until I got to the last hill before my house. My Saturn (with very good Michelin snow tires) didn't make it the first time. About halfway up I lost traction and slid back a few yards.

I carefully backed down to where it was more level and less icy, got a running start, and this time made it. But it was close.

December 29, 2006  (Friday)

This is the day to go to Fedex Kinko's and approve the proofs.

I checked the road in front of my house and it was icy. I didn't think my Saturn would make it so I decided to take my 4WD Nissan pickup. Even so, ice is ice.

The truck (which came with my house) also came with cable chains for the tires but the directions are mostly:

1.  Do not exceed 30 mph with cables installed;
2.  Stop immediately when the cables break.
I thought about staying home and leaving it for the next day, but there was no guaranty that by then the road would be any better.

Besides, I figured I didn't have anything to lose. The worst that would happen is that I would get stuck close enough to my house that I could walk back. And, since the truck had already survived being rolled by its previous owner, going into a ditch (or tree) would be no big deal.

Now for the next challenge. I had been keeping the truck in the garage until the windstorm blew out a wall panel in my shed, forcing me to move everything in the garage. The truck had now spent the night in 4 degree temperatures.

Would it start?


I made it down the hill in a more-or-less-controlled fashion, got to Fedex Kinko's, approved the proofs, and made it back to my house. (I made sure I got a good running start before going up the hill.)

December 30, 2006 (Saturday)

The order is ready.

I took the truck and the trip was uneventful.

The copies from Fedex Kinko's were perfect, as usual.

January 4, 2007

In order to make sure I had enough time to get the copies made and to check them I had dated the Appeal Brief and Appendix January 4, so today is the day for signing them and mailing them.

It started raining late last night. It is scheduled to turn into snow and continue snowing all day. Because I am on a mountain at 6,023 feet it will start here first.

I decided to get an early start. I also decided to take the truck again.

It was a good idea. Cartwright road, although it is a paved road (one of the few up here), was icy.

I made it to the Post Office and, while I was in town, got some provisions. By the time I got home it was snowing pretty good.

For some reason I keep thinking of the movie Fate is the Hunter with Glen Ford, Nancy Kwan, Rod Taylor, and Suzanne Pleshette (and many other of my favorite actors).  It's where a series of completely unrelated failures, none of them serious by itself, combine to make an airplane crash. (

At least I didn't crash.

Appeal Brief

jm_dcs_brief.pdf            Appeal Brief in Adobe Acrobat (PDF) format.

This file was produced by CutePDF from the original document produced using Microsoft Word 2000 and is searchable. To maintain searchability written signatures are omitted. And, since it is searchable I have removed my actual email address.

Otherwise, it is identical to the printed document filed.

jm_dcs_brief_s.pdf        Appeal Brief in Adobe Acrobat (PDF) format.

This file was produced from a graphic image of the original document and is not searchable.

It is identical to the printed document filed.

jm_dcs_brief_paged.htm       Appeal Brief in html format.

Due to the limitations of html there are formatting differences between this version and the printed document filed. In addition, written signatures are omitted and my email address has been removed.

This html version contains active local links to the documents cited. Footnotes at the bottom of the page have been omitted to take advantage of the hyperlink abilities of html.

However, the contents are the same.

Page numbers are marked and broken as in the original document.

jm_dcs_brief.htm       Appeal Brief in html format.

In this html version the page breaks are removed to give a continuous flow. This is the best version to read online.


jm_dcs_appendix.pdf      Appendix in Adobe Acrobat (PDF) format.

This file was produced from a graphic image of the original document (using CutePDF) and is not searchable.

It is identical in content to the printed document filed.

jm_dcs_appendix.htm        Appendix Index in html with active local links to the individual Appendix documents.

The individual Appendix documents are in Adobe Acrobat (PDF) format.

January 4, 2007 (continued)

In December the Office of the Solicitor downloaded just about everything on my web site, most of which has absolutely nothing to do with this case. (uspto_looks.doc)

One of the accesses came from a Google search for "Jed Margolin."

My web site is open to the public. Everyone is welcome to visit, even the Patent Office, but as John Whealan solemnly intoned during our telephone conversation, "this is a respectful process" and that the case will be argued on its merits, not on procedural matters, and I fail to see how pictures of my neighborhood and my new driveway (or Googling me) have anything to do with the merits of the case.

Respectful Process, indeed.

Last night I discovered something even more interesting.

A document in the Image File Wrapper has been tampered with.

This is the Examiner Summary of the Telephone Interview of August 5, 2005.

There are now what appears to be initials added to the first page of the document (upper right corner).

They are not in the document that was mailed to me. There were not in the document originally posted in the Image File Wrapper.

OriginalNew One

I pointed out in my Appeal Brief that:

1. The Examiner’s Summary was dated and mailed on October 12, 2006, more than 14 months after the telephone interview. This was after BPAI issued its ruling and after I filed my Notice of Appeal.

2. The Examiner’s Summary was signed only by SPE Rupal Dharia. Since his is the only signature on the Summary it must be assumed that he wrote it. However, Dharia was not present during the telephone interview.

3. The Summary contains errors ranging from distortions to outright fabrications.

Are these new markings the Examiner's initials?

Will the Solicitor argue that, while the Summary was not written by the Examiner, he approved it?

I don't know. It doesn't matter. The document has been altered.

The Patent Office has tampered with evidence in a Court case.

Isn't that a felony?

Respectful Process, my ass.

Speaking of which, take a look at this.

January 10, 2007

I have now spent several days on the phone trying to find out when the document was altered and who altered it.

On January  4 I called the Electronic Business Center and spoke to Amy. Amy said she did not have the information I was asking for and did not have access to obtain the information I was asking for. She suggested I call OIPE and the Inventor’s Assistance Center (IAC).

I called IAC and, as I expected, they also do not have access to get the information.

On January 5, 2006 I called Mr. John Leguyader, not knowing that he is now the Director of Technology Center 1600 and no longer works in the Office of the Commissioner. I was told to call Mr. John Love who does work in the Office of the Commissioner.

Since he was unavailable I spoke to his assistant, Ms. Pam Kim, who promised me that Mr. Love would call me back. He didn’t.

On January 8, 2007 I called Mr. Love again who was still unavailable.

I called the Commissioner’s Office and asked to speak to Ms. Margaret Focarino, the Deputy Commissioner For Patent Operations. She was not available and I was given to Mr. Steve Griffin. Mr. Griffin promised to look into it.

In the meantime, Mr. Griffin suggested I call Mr. David Freeland the Chief Information Officer. The reason for this is because he, supposedly, has access to the server information.

I will note that ICANN regulations require that each domain registrant supply valid contact information for the web site’s System Administrator. The Patent Office's domain ( does not. It lists David Przech at 703-305-9208 as the contact person. There is no such person listed in the USPTO telephone directory and the telephone number is not a valid telephone number. Under ICANN rules, failure to provide valid contact information is grounds for removing the domain name from the DNS system.

When I called Mr. Freeland I spoke to Anne. Naturally, Mr. Freeland was not available. I was eventually connected to Mr. Scott Williams, Deputy CIO.

Mr. Williams suggested I call the Inventor’s Assistance Center. I told him his suggestion was not helpful and, besides, I had already called the IAC. Frankly, Mr. Williams did not seem to take this matter seriously. In fact, he seemed to find it amusing.

Eventually Mr. Williams promised to have Catherine Kirik in the Search and Information Resources Administration call me. Instead, I was called by Mr. Jeff Wong in that department. Mr. Wong is a good man but he does not have access to the resources needed to deal with this problem.

While I was spending my time on this latest wild goose chase Mr. Williams was conferring with the General Counsel. This is the same as the Solicitor's Office, the same people who are my adversaries in the Federal Court Case.

In other words, instead of investigating this serious breach of security, he lawyered-up.

According to Mr. Williams, the General Counsel's Office advised him:

1.  It is a minor alteration of the document.

2.  Don't talk to me.

I sent a strongly worded fax to the Director of the USPTO, Mr. John Dudas, and pointed out that he is listed on the Court case as the Appellee and that someone in the Patent Office has committed a felony in his name by tampering with evidence before the Court. Here is my letter.

If I receive a response I will post it.

In the meantime I received an odd email from Mr. Piccolo, the Associate Solicitor. He asked:

"Mr. Margolin, the Federal Circuit's Pacer system currently has a due date only for you, do you agree?"
This is what Pacer reported: pacer page

I figured that either Mr. Piccolo was unsure of his reading ability or he was up to something.

This was my reply:

Mr. Piccolo,


I am not responsible for the operation of the Pacer system. If you have any questions about it I suggest you contact the Court.

My corrected Appeal Brief and corrected Appendix were delivered both to CAFC and the Solicitor's Office on Friday, January 5. I have attached the USPS records. If you have not received the package, I suggest you look for it. Also, please see Practice Notes at the end of Federal Circuit Rule 25.

And, finally, you may have already heard that one of the documents in the Image File Wrapper has been tampered with, namely "Examiner Interview Summary" dated and mailed 10/12/2006. My Appendix contains a faithful scan of the original document.

I believe it is in the best interests of the USPTO to identify the culprit who has found a way to tamper with documents without leaving any apparent trace. This would be more productive than the General Counsel's advice (reported by Mr. Scott Williams, Deputy CIO) that the change is minor and that Mr. Williams not talk to me.


Jed Margolin

I included the reference to the Practice Notes at the end of Federal Rule 25 because Mr. Piccolo seemed interested in due dates. The Practice Notes state (among other things) that when a filing is rejected by the Clerk (as my Appeal Brief was, because I used Arial instead of Times New Roman): "The timeliness of a response is computed from date of service of the original material."

I checked with the Court Clerk. It means the timeliness of the Solicitor's Appelle Brief is dated from the service of my original brief which was received by the Solicitor's Office on December 21. It did not get reset to January 5.

The reason I sent him to the reference and let him figure it out for himself is because that is one of the annoying tactics he has consistently used on me. My philosophy is that you get what you give.

It's possible that Mr. Piccolo may have been planning to use my response to constitute my consent to giving him an extension of time for the filing of his Appelle Response.  Not long ago, if he had asked my consent for an extension of time I would have done the gentlemanly thing and given it. I don't feel quite so gentlemanly about it now.

January 12, 2007

The thing is, Piccolo is not stupid. He would know exactly what his due date is.

Here is a case that I recently found: CAFC 2006-1311 (Patent Application Number 10/190,039) IN RE MARY K.HAYS.

The inventors are Mary K. Hays and Allison Park, represented by Counsel William L. Krayer.

If you look up the prosecution history on Public PAIR (go to the Public PAIR Portal and enter Application Number 10/190,039) you will see how the Patent Examiner and BPAI treated them. It was bad.

Once it got to CAFC the Solicitor conceded that BPAI's decision was in error and then announced he had found new grounds for rejection and asked the Court to remand. The Court did so.

In other words, after putting Hays and Park through Hell and costing them what has got to be an enormous amount of money, the Patent Office gets to do it to them again.

Piccolo might be telling me that the reason there is no due date for his Brief is that there isn't going to be one; that he is going to pull the Whealan Gambit on me.

If he does, I am ready. I think my response will include a reference to 35 U.S.C. 261 .

Mr. Piccolo has taught me a great deal about the process.

Respectful Process, indeed.

January 17, 2007 (Wednesday)

According to Pacer it appears that my corrected Appeal Brief and corrected Appendix have been accepted for filing. pacer page.

And Mr. Piccolo has the due date he wanted.  (His Brief is required to have a red cover, which is why Pacer gives a due date for the Red Brief.)

Except now that he has the due date he wanted he doesn't like it. He wants an extension.

As is his practice, he went about it in a very annoying manner.

He sent me an email on the afternoon of January 17 asking if I would consent to an extension of time of 14 days for his brief. This is the attachment to his email.

If you are asking for an extension of time of 14 days or less, and the other party gives consent (or does not respond), the Court Clerk has the authority to grant the extension without having to bother a judge. If the other party says "no" (and files the appropriate papers) it has to go to a judge.

January 18, 2007 (Thursday)

In the morning I sent him an email giving my consent. Shortly afterwards he sent me an email saying he had already filed his motion asking for an extension of time.

I sent him an email asking him to verify that he had filed his motion without giving me even one day to respond.

He advised me to file my consent with the Court. And, he was pissed off that I keep copying Solicitor Whealan on my emails to him (Piccolo). I figure that since Whealan is listed as the Principal Attorney on the case he should be keep informed about what is going on.

Despite the extreme inconvenience of producing the required paperwork and rushing up to the Post Office to mail it, I did it. (I mailed it from the Post Office in Virginia City which is at 6,500 feet; my mountain is only 6,023 feet so I needed to rush up to the Post Office.)

See my consent. Remember, he filed his motion before he read my email giving my consent.

And, since this was a response to a motion I also faxed it to the Court.

January 30, 2007 (Tuesday)

Pacer was finally updated this morning. (Pacer page)

Piccolo got his extension; his brief is now due on February 13.

My request that he be sanctioned was denied.

Apparently, rude behaviour is part of the Process.

Good. Now I don't have to be nice to him anymore.

February 2, 2007 (Friday)

I received this in the mail today.

Without meaning to, it looks like I hit a nerve.

I didn't think Whealan had one.

February 8, 2007 (Thursday)

Piccolo's Brief isn't due until next Tuesday so I have some downtime. It isn't long enough for me to work on something that requires my full attention (like visualizing how the shape of a plasma is affected by a complex, 3D, rapidly changing, magnetic field) so this is a good time to write about some things going on at the Patent Office that people should know about.

1.  This appeared in the Federal Register on January 3, 2006 (more than a year ago) and does not seem to have attracted much attention. It's under Department of Commerce, Patent and Trademark Office, 37 CFR Part 1, [Docket 2005-P-066]: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims.


The Patent Office says that Applicants are abusing the Continuation Process and it is causing the pendency of applications to increase.

They propose to deal with this by limiting the number of RCEs (an RCE is a Request for Continuing Examination) to one.  After that, you can get more, but only by "a showing as to why the amendment, argument, or evidence presented could not have been previously submitted."  It means that whether or not you get another RCE is up to the discretion of the Examiner. (Good luck with that.)

The Office is making every effort to become more efficient, to ensure that the patent application process promotes innovation, and to improve the quality of issued patents. With respect to continued examination practice, the Office is proposing to revise the patent rules of practice to better focus the application process. The revised rules would require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. It is expected that these rules will make the exchange between examiners and applicants more efficient and effective. The revised rules should also improve the quality of issued patents, making them easier to evaluate, enforce, and litigate. Moreover, under the revised rules patents should issue sooner, thus giving the public a clearer understanding of what is patented.

The real reason seems to be to reduce late claiming.


Late claiming occurs when the applicant adds new claims to cover what has arisen in the marketplace since filing the original patent application.

I don't have anything to say about late claiming (right now).

Instead, I want to talk about the Law of Unintended Consequences.

Here's why.

There is a dance that Patent Examiners ("Examiners") and Patent Attorneys and Patent Agents ("Practitioners") do. Or maybe it isn't as much a dance as a game of Chicken.

As long as the Examiner keeps rejecting the Application and the Practitioner keeps responding (and filing RCEs) the Examiner keeps getting more Performance Counts and the Practitioner keeps getting more billable hours.

Here is one explanation of the Count system:  Although it's incomplete (Examiners lose partial counts for missing their deadlines), it contains the startling news that if your application goes to a new Examiner, your application may be rejected (repeatedly) just to give the new Examiner experience.

And what better way to practice than on a pro se Applicant? {Excuse me, my blood pressure just went through the roof; I will have to take a break.}

I'm back.

Most of the work for the Examiner is in the First Office Action. After that, it just means some easy counts. For the Practitioner, the responses are easy billable hours. Going to BPAI and CAFC takes some work and lots more billable hours.

Everybody wins, except the client, especially if the client is an independent inventor.

When the Patent Office limits the number of RCEs, then the Practitioner will have to make a choice, especially during the RCE:

1.  Narrow the claims to get the patent allowed even the client will end up with a worthless patent (assuming the Examiner is willing to allow anything at all);

2.  Afterwards, tell their client that they are out of luck.; they just spent a bunch of money for nothing.

3.  Stand and fight for their clients.

If the Practitioner stands up and fights, it will mean that more cases will go to BPAI.

BPAI is supposed to be an impartial administrative review court. In my case they acted as the Examiner’s advocate, and not just because they affirmed the Examiner. (They misrepresented the Patent Office's official position on claim interpretation.)

More cases will go to CAFC.

The Court might not appreciate this increased workload caused, not because of something they did, not because of something Congress did, but because of what the Patent Office did on its own.

It might be more efficient to shut down the Patent Office, send everybody home, and replace it with the New Patent Office. The way the New Patent Office will work is that you file a patent application and they issue a patent.

If someone doesn't think you deserve a patent, you go to Court and let the Court settle it.

Most valuable patents end up being litigated anyway.

BTW, once of the big proponents of limiting RCEs is my good friend John M. Whealan, who spoke last June at the American Bar Association Intellectual Property Section Conference held in Boston.

A new feature of the Annual Business Session that was recommended by our Long-Range Planning Task Force was an open forum for members to express their views on a topic of current importance. This year, the open forum focused on the proposed new PTO rules on continuation practice and limitations on examination of claims. The discussion was very ably led by John Whealan, Deputy General Counsel and Solicitor of the USPTO and our members, Steve Caltrider, Mark Garscia and David Westergard. As many members commented, this discussion was productive, cordial and highly professional. The program was recorded and will be transcribed, so that the Section and others can benefit from the numerous constructive ideas that came out of the discussion.

With more cases going to CAFC John will have to hire more staff. Lots more staff.

2.   Virgule Signatures

When you file a patent application (or any paper) with the Patent Office, you have to sign it. When you are filing paper, it's easy. You just sign it.

When you use the new Electronic Filing System (EFS) you have two choices:

a.  Print out the document that needs to be signed, sign it, scan it, and convert it back to electronic form.

b.  Use a virgule signature.

A virgule signature allows you to sign the document electronically. The Patent Office calls it an S-Signature.


(2)  S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by § 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwritten signature of § 1.4(d)(1) or an Office Electronic Filing System (EFS) character coded signature of § 1.4(d)(3). Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office Electronic Filing System as an EFS Tag(ged) Image File Format (TIFF) attachment, for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) are as follows.

(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and

{The rules continue for awhile.}

Here are some sample virgule signatures from the USPTO:

It should be easy, but this is what is going on.

The Patent Office has hired a bunch of paralegals whose job it is to carefully scrutinize virgule signatures in patent applications and reject ones that don't exactly follow the rules.

When that happens, the Practitioner gets a Notice of Missing Parts. The Practitioner is supposed to resubmit the document.

The problem is that the paralegals have not been properly trained and are rejecting perfectly valid virgule signatures.

Why are they doing this?

When you file a patent application you get a filing date. But if the application is incomplete the filing date is reset to the date when it becomes complete.

They are doing this to reduce the apparent pendency of patent applications. It's called "cooking the numbers."

Now the Examiners have caught on to this trick and are using it on things like responses to office actions. Examiners are required to respond to filings within a prescribed period of time. If they don't, they can lose fractional performance counts. When they reject a filing for a lack of a proper signature and the Practitioner corrects it, it restarts the clock for them.

I'm not making this stuff up. I subscribe to a list server for people (mostly Practitioners) who use EFS, and this is a hot topic. (The Patent Office seems to go out of its way to torture Practitioners.)

Some Practitioners are talking about going back to filing everything on paper.

On one hand the Patent Office wants people to use EFS. On the other hand, they are punishing people for using it.

Wikipedia has a good entry on virgules:

This definition is from the Free On-line Dictionary of Computing (provided by the Imperial College London)

virgule character

Rare, and ambiguous: slash or comma.

"Virgule" (or rather, Latin "virgula", meaning "little rod" or, vividly enough, "little penis") was the name of a punctuation character shaped like a small slash and used in the Latin writing system much like a modern comma -- hence the ambiguity of this term in modern English.

Compare French "virgule" and Italian "virgola", meaning "comma" (not "slash"); Italian "doppia virgola" and "virgoletta", both meaning "double quote".

The Free On-line Dictionary of Computing, © 1993-2006 Denis Howe

Feel free to make up your own tasteless joke about the USPTO's preoccupation with virgules.

February 16, 2007 (Friday)

On Tuesday (February 14) Fedex delivered an envelope to me.

I was hoping it was a Valentine's Day card, but no such luck.

When I opened it, I found:  The Red Brief.   {click here for ominous music}

Here is a scan of the Red Brief in PDF form.

I used OCR to convert it to an html file to make it easier to search and to cut-and-paste quotes from, so here is the Red Brief in html version. Naturally, the PDF version is the controlling document.

The Red Brief contains a reproduction of my patent application Figure 1 on an unnumbered page between numbered pages 1 and 2. (It's on the back of Page 1.) Figure 1 is also reproduced on an unnumbered page between numbered pages 2 and 3. (It's on the back of Page 2.) The pages in Briefs are supposed to be sequentially numbered. They are also supposed to be single-sided.

I sent Piccolo an email asking if this was a mistake and if he was going to file a corrected Red Brief, and if he was, was he going to remove the figures or keep them in and renumber the remaining pages. (If he renumbers the pages my references to them in my Reply Brief will be wrong.)

He emailed back that it was done on purpose.

He didn't say what that purpose was, since when he referred to Figure 1 in the Brief it was to the page in the Appendix where I had put it.

In any event, the Red Brief was accepted for filing because it appeared in Pacer this morning. pacer entry.

It's a Mystery.

The due date for my Reply Brief (the Gray Brief) is Friday, March 2.

That doesn't give me much time.

See you on the other side.

March 2, 2007 (Friday)

I finished my Reply Brief on Sunday night.

I brought it to Fedex Kinko's on Monday. This time, in addition to the paper copy I brought the original MS Word 2000 file on a USB drive. My concern was that, if they they used the MS Word file, would it be printed at exactly the right size?

If the size was enlarged, the margins would be too small. If it was reduced, the font size would be too small.

Their computer was able to read the USB drive without any problem and they printed a few pages for me right then. The size was exactly right so they used the file to make the copies.

It worked out really well.

I approved the proofs on Tuesday and picked up the order on Wednesday.

I could have gotten it done faster but it would have meant making two trips in one day. (Just as I had finished the Brief on Sunday the snow flurries we had been having turned more serious so I had to use the truck all week. The trip into Reno was a little more difficult, especially in late afternoon when the roads in my neighborhood started to freeze.)

I mailed the Brief yesterday (Thursday, March 1).

The Court's copies (all twelve) were delivered this morning. According to the USPS, the Solicitor's copies (two) arrived at the Arlington processing center today at 11:55 am and are ready for pickup. The Solicitor's Office must like getting their mail a day or two late. Otherwise they would send someone to pick it up in the afternoon, instead of in the early morning when they are getting the previous day's mail.

I think I did a good job on my Reply Brief (the Gray Brief) even though I only had about eleven days to do it.

I will post it after it appears in Pacer.

March 6, 2007 (Tuesday)

My Reply Brief appeared in Pacer this morning so I assume it has been accepted for filing (Pacer Entry).

That should be it. According to the Federal Rules of Appellate Procedure Rule 28(c): " Unless the court permits, no further briefs may be filed."

Note that I have added more-direct links in the beginning of this article for those who want to skip the drama and only see the briefs.

My Reply Brief (Gray Brief)

jm_graybrief.pdf            Reply Brief in Adobe Acrobat (PDF) format.

This file was produced by CutePDF from the original document produced using Microsoft Word 2000 and is searchable. To maintain searchability written signatures are omitted. Otherwise, it is identical to the printed document filed.

jm_graybrief_s.pdf        Reply Brief in Adobe Acrobat (PDF) format.

This file was produced from a graphic image of the original document and is not searchable. It is identical to the printed document filed.

jm_graybrief.htm       Reply Brief in html format.

Due to the limitations of html there are formatting differences between this version and the printed document filed. In addition, written signatures are omitted and my email address has been removed.

March 22, 2007 (Thursday)

The case has been calendared for Monday, May 7, 2007.  (Pacer Entry)

March 27, 2007 (Tuesday)

Yesterday I received a letter from the Court titled Notice of Submission Without Oral Argument informing me that there would not be oral arguments in the case.  I knew that from the beginning.

The Guide For Pro Se Petitioners and Appellants (page 140) says:

Oral argument (usually 15 minutes or less) is rarely needed in pro se cases. However, you may request to argue your case before the court, giving reasons why that would aid the court. If you are granted oral argument you must bear your own travel expenses to the court.

What they really mean is that oral argument is rarely permitted in pro se cases.

The fiction that there was ever any real possibility of oral argument serves only to give the Solicitor the opportunity to file a response to my Reply Brief.

Someone appearing pro Se, or counsel for a party, may file a memorandum presenting reasons why oral argument would assist the court or answers to points in an opposing brief that might otherwise have been presented at oral argument, or both. The memorandum, not to exceed 5 pages, may be typewritten on 8 1/2 by 11 inch paper. An original and six copies of the memorandum should be filed on or before April 16, 2007.

The letter also informs me that, although the case is calendared for May 7, nothing is actually going to happen in open court on that day.

I called the Court Clerk to ask what exactly what the process is, but was told It's a Secret.

May 7, 2007 (Monday)

It's Calendar Day.

According to Pacer the case has been assigned to Judges Newman, Schall, and Dyk. (Pacer Entry)

June 6, 2007

On June 4, Pacer reported a new Principal Attorney: Stephen Walsh.

Whealan is now only Of Counsel.  (Pacer Entry)

Here is the entry for Mr. Walsh. (Pacer Entry)

I thought someone was supposed to mail me a copy. I didn't get one.

According to  (May 18, 2007)

PTO Solicitor John Whealan has been seconded to the US Senate to iron-out the patent reform details. Stephen Walsh, a career PTO official, will reportedly Whealan's shoes as Solicitor. Congratulations to both men!
In other words, Whealan's new job is to lobby the Senate to pass the Patent Reform Act of 2007.

Usually when someone at the USPTO gets promoted they issue a press release. I don't see one for this.

June 15, 2007 (Friday)

CAFC released their decision today. Decision (PDF)

The Court completely affirmed the Patent Office.

The Court failed to address my arguments.

I expected better from them.

June 16, 2007

Here is the decision converted to text. The PDF version is the controlling document. Decision (html)

Pacer still isn't working. It was broken all day yesterday, too.

Yesterday morning it did not allow me to even log on.

Then it reported that my case was not available and that it may have been sealed.

Since yesterday afternoon it has reported, "Not enough storage is available to complete this operation."

Perhaps the reason they can't fix it is because no one at CAFC knows what a server is.

June 17, 2007

My Comments

The Court erred in summarizing my argument about the definition of a subscriber. (Page 5, first full paragraph):

With respect to the term “subscriber,” Mr. Margolin argues that the Board erred in finding that a device, rather than a person, could meet this term. The Board, however, did not make such a finding. The Board found that the Ellis patent describes a PC user who is a person (not a device) who subscribes to a service that provides Internet access. In the ‘801 application, the subscriber is referred to as the owner of the Home Network. ‘801 application, [Paragraph] 16.

1.  The Examiner insisted that my subscriber is a device and used that definition in rejecting my claims. (Blue Brief Page 13: "Who is a Subscriber?")  As long as the Examiner defined my subscriber as a device, amending my claims would have been futile.

2.  BPAI agreed that my subscriber is a person but still found the Examiner's rejection reasonable. (Blue Brief, Page 27: "BPAI's understanding of key terms is different from the Examiner's.")

BPAI erred in finding the Examiner's rejection reasonable and the Court's finding of "substantial evidence" to support this ruling is based on a faulty reading of the record.


The Court speaks of the two-step analysis of determining whether a claim is anticipated under 35 U.S.C. §102. (Bottom of Page 2 to Top of Page 3):

A claim is anticipated under 35 U.S.C. §102 when the same invention, including all of the claimed limitations, appear in a single reference. The determination generally involves a two-step analysis, wherein the Board first construes the claims for purposes of examination, applying to the proposed claims the broadest reasonable meaning of the terms thereof as they would be understood by a person of ordinary skill in the field of the invention. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The purpose of this examination practice is to facilitate precision in claiming by imposing rigor during prosecution, because claims are readily modified before patent issuance. Id.

The first step is to construe the claims. However, since claim construction is a question of law the standard of review is de novo. [Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc)]

The Court erred in using a standard of review of "substantial evidence" in construing my claims which gave deference to the Patent Office. The standard of review for construing my claims should have been de novo.


The central point in this case is, from Claim 1: What is a home network server in a subscriber's home?

The Examiner professed not to know what a home is because the word has so many meanings. As a result, my home network server became only a network server.

Again, BPAI understood the common definition of the word home but still found the Examiner's rejection reasonable. (Blue Brief, starting at Page 27: "BPAI's understanding of key terms is different from the Examiner's.")

Denied the common meaning of the term home, amending my claims would have been, once again, futile.

And, once again, the Court erred in using a standard of review of "substantial evidence" in construing my claims which gave deference to the Patent Office. The standard of review for construing my claims should have been de novo.

My request that the Court give judicial notice of the common meaning of the term home was ignored.


Okay, then what is a network server?

I described what my home network server does. (Blue Brief, Page 10).

To boil it down, a Home Network Server is used in a home to network various clients such as PCs, sensors, actuators, and other devices which are used to control and/or monitor the home's systems such as HVAC and security as well as appliances such as refrigerators, washers, and dryers. The Home Network Server also provides the Internet connection to the various client devices in the Home Network. The use of a Home Network Server, as opposed to the use of peer-to-peer networking, allows a robust operating system to be used.

At a late stage of the prosecution (Examiner’s Answer to Margolin’s Appeal Brief to BPAI, Appendix Page A158) the Examiner introduced the Microsoft Computer Dictionary 5th edition to define what a server is.

From Microsoft Computer Dictionary, Fifth Edition, ©2002 Microsoft Corporation, page 474:

server   n. 1. On a local area network (LAN), a computer running administrative software that controls access to the network and its resources, such as printers and disk drives, and provides resources to computers functioning as workstations on the network. 2. On the Internet or other network, a computer or program that responds to commands from a client. For example, a file server may contain an archive of data or program files; when a client submits a request for a file, the server transfers a copy of the file to the client. See also application server (definitions 1 and 2), client/server architecture. Compare client (definition 3).

The Examiner chose definition 2: "On the Internet or other network, a computer or program that responds to commands from a client," and somehow that became any computer connected to anything else.

In my response (Margolin’s Reply Brief to Examiner’s Answer, March 16, 2006, Appendix  A165) I noted that the Microsoft Computer Dictionary listed two definitions and the Examiner had used the less common one.

BPAI chided me for not providing evidence that Microsoft Computer Dictionary listed definitions with the most commonly used meaning listed first. (Final Order issued by the Board of Patent Appeals and Interferences,  Appeal No. 2006-2005, August 24, 2006, Appendix  A4)

Afterwards I discovered that there are two methods used by dictionaries when there are two or more definitions for a word: chronologically (or historically), ranging from earliest to most recent sense; and logically, ranging from more to less important or frequent sense.

Most dictionaries state which criteria they use. Unfortunately, the Microsoft Computer Dictionary does not.

I contacted Sandra Haynes who is listed as the Project Editor in the Microsoft Computer Dictionary (Fifth Edition). She said she didn't know which method was used because she was just the editor; all of the real work was done by the contributors.

I asked if there had been Writer's Guidelines for the contributors. She said she didn't remember but would look for them. She never got back to me.

I contacted Charles Petzold, one of the listed contributors. Petzold is a noted author. Among other things, he wrote Programming Windows. In an email he said:

I don't remember any guidelines about the ordering of multiple definitions, but I would be shocked to the point of sudden death if I learned that the  Microsoft Computer Dictionary was based on historical principles like the OED.
He asked why I was so interested in the matter. I told him and then never heard from him again.

After being told that Bill Gates (or his staff) always answers mail, I sent him a fax. I received no response.

The reason I did not bring up this issue in my Blue Brief was because of Phillips v. AWH.

Apparently, the Court has retreated on the use of dictionaries back to Texas Digital. This should be front page news.

And now that the use of the Microsoft Computer Dictionary has the Court's blessing, it should be especially useful in patent litigation against Microsoft.

Does the Ellis specification encompass my home network server?

Yes and No.

Yes: The Ellis specification encompasses all known technology as well as all technology yet to be invented.

No: During prosecution of the Ellis patent he specifically removed network server from the definition of his PC in order to get his claims allowed. He also defined server in a reasonable way. (Red Brief, Page 21):

From Ellis’ Response, Page 24 Second Paragraph [35]:
          The Examiner appears to have rejected claims 27-41 because of a belief that UNIX and NT servers can be run on personal computers and can be made to function temporarily as a master personal computer or as a slave personal computer, as similarly recited in claims 27-41. However, a UNIX or an NT server functions as a server, not as a master personal computer or as a slave personal computer, which require applications not found in UNIX or NT operating systems. Therefore, Applicant submits that neither Seti@home nor a UNIX or an NT server running on personal computers discloses, teaches or suggests:  …………….
Ellis then discusses how this relates to his claims.  Ellis uses PCs for distributed computing. His PCs do not run the specialized software used in servers. At the time Ellis’ invention was made, UNIX and NT were the most popular operating systems used in servers. They did not run the standard PC applications that Ellis felt it was essential to use on his PCs.

The Examiner accepted every other definition of every other term in Ellis, but not server.

Can a term in a single specification have two mutually exclusive meanings?

Can a specification be so broad as to be useless as prior art?

I asked the Court to consider this question in my Gray Brief (Page 7, "Is it possible for a specification to be so broad as to make it inadmissible as prior art?")

The Court ignored this issue.


The Patent Office fabricated evidence (the Examiner Interview Summary for August 5, 2005 [Blue Brief, Page 31]) but they didn't do a good job of it, so then they tampered with it (Gray Brief, Page 26).

Since the Court failed to address this issue, it appears that the Court countenances fraud as long as it is perpetrated by a Government Agency.


And finally, I find it difficult to believe this decision was written by a Judge, or even someone who had read and understood the record.

Jed Margolin
Reno, NV
June 17, 2007

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