This is to offer thanks and praise to the UIC John Marshall Law School, to its intellectual property journal, and to its editors, for being an inspirational companion during my patenting career.
THIS JOURNAL ENABLED ME TO PURSUE MY VISION FOR WINNING ALLOWANCES OF PATENTS. At my first patenting position, my supervisor encouraged me to read file histories in order to train myself on patent prosecution, and so I followed her advice. Eventually, I learned that file histories and, in particular, PTAB opinions that were part of the file history, were great teaching devices, especially in situations were the rule of law from a Federal Circuit case made no sense. An example is the rule of law in NetMoneyIN ("in order to anticipate . . . must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.") Now, what does "arranged as in the claim" mean? What? I learned what it meant, by studying 200 PTAB opinions where the opinion applied NetMoneyIN. And so, I became a devotee of PTAB opinions and the associated file histories, as a guide for applying Federal Circuit case law such as NetMoneyIN. To date, I've published 18 articles on patent law, half in UIC Review of Intellectual Property Law, and half in JPTOS. These journals enabled me to pursue my vision for acquiring a practical approach for reliably and winning allowances. In my rebuttal arguments, I include a table of quotations from a dozen PTAB opinions. I do not cite PTAB opinions as precedent, but I cite and quote them to show the examiner how Federal Circuit cases are applied. My approach to drafting rebuttal arguments has proven to be an effective weapon for overcoming rejections, especially where the examiner is possessed with the notion that the rule of a given Federal Circuit case is only narrowly applied to the facts of the case.
EDITORS. For UIC Review of Intellectual Property Law, my manuscripts always get accepted within a week, and time to publication is 6 to 8 months. The editors sometimes add small amounts of new writing, such as adding elegant flourishes to my comments located in the footnotes. The editors take it upon themselves to re-format the footnotes, where needed, to conform to Bluebook style. Typically, any figures and flow charts that are part of my text migrate on their own during email transmissions, and the editors are very careful to re-position the figures and flow charts to their correct locations, when I request that their positions be corrected. Aside from the footnotes, the editors of this journal refrain from re-writing any part of the text. This restraint is one of the best qualities of the editorial staff of this journal. Two of my articles in this journal were cited in opinions from the U.S. District Court, Northern District of Illinois. These two opinions are New Medium v. Barco (opinion by Judge Richard Posner) and NetFuel v. F5 Networks (opinion by Judge Rebecca Pallmeyer).
PRACTICAL CONSEQUENCES. Attached are images from most of my articles from UIC Review of Intellectual Property Law. Also attached is praise from AIPLA for one of my articles from UIC Review of Intellectual Property Law. My articles from another journal (JPTOS) were cited as "Authority" in an Amicus Curiae submitted to the U.S. Supreme Court (Nautilus v. Biosig), and in a Writ of Certiorari submitted to the U.S. Supreme Court (Nidec Motor v. Ocean Motor). If you want examples of my rebuttal arguments where I applied the teachings of my articles in UIC Review of Intellectual Property, and where the result was allowance, just ask me. read more