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September 30, 2008

Comments

Don,

The Tafas brief does serve as a nice compliment to the GSK brief. I too noticed the Tafas brief pointing where Tafas disagreed with the USPTO's statement of facts.

My primary critcism of the Tafas brief (as with prior documents submitted for Tafas) relates to form issues. The Tafas brief could use some more proofing for typos and consistency in formatting. Also, some of the sentences ran fairly long and could have been broken up to make the brief more readable. That's what the GSK brief appears to have done.

Other than that, the Tafas brief should hopefully put the final nails in the USPTO coffin on these awful Rules.

Mr. Whealan's public statements on the proposed rules were incredibly foolish. I attended a Bar Association of DC meeting in late April/early May of 2006 (right around the time comments were due) and a member of audience stated that the rules were contrary to the law and somebody might challenge them. Mr. Whealan stated that the PTO had considered that possiblity, thought they had a 50-50 chance of winning, and to go ahead and take your best shot.

Thanks to Dr. Tafas, GSK, and the folks at Kelley Drye and Kirkland for taking a great shot.

JD,

I agree, definitely "kudos" to Tafas, GSK and their respective counsel for being our "knights in shining armor".

I wish one of the teams would have at some point addressed the absurdity of rule 75's prohibition against placing allowable dependent claims in independent form.

i.e. file 20 claims, 3 of which are independent (and no ESD for the obvious reasons), have the 3 independents finally rejected but the dependents all allowable if placed in independent form. But, that would be 17 independent claims now violating 5/25. So applicant can't take allowable subject matter.

That's fair.

T,

You point out another very good reason why proposed Rule 75 is so misguided and insane. Makes sense to prevent allowable subject matter, doesn't it? Hopefully, the Federal Circuit will bury this misbegotten Rules package for good. Get that popcorn ready for the oral argument in December.

T states "I wish one of the teams would have at some point addressed the absurdity of rule 75's prohibition against placing allowable dependent claims in independent form". I note it is discussed in the Tafas brief.

jwint

I saw rule 75 mentioned in both briefs. However, I did not see this particular aspect discussed. Please point me to chapter and verse.

Thanks

T

jwint -

FYI I see the discussion at the bottom of page 35. However, that is in the context of a continuation. The absurdity I mentioned does not require the filing of a continuation. That little trip through the looking glass can occur during the prosecution of an original and only application in a family.

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