Intense Double Patenting War!

It is hard not to be a little bit entertained when an attorney loses his cool during prosecution. Let us provide you with an example. Application 15/428,001 is seemingly owned by Cochlear Limited, an Australian company. The case seems to have been originally filed by the Minneapolis law firm of Merchant and Gould. But the case gets transferred at some point to Martin J. Cosenza, who is a partner with the Virginia law firm of Pilloff & Passino, LLP.

Anyway, Mr. Cosenza filed an extremely heated after final response on 12/24/2018. For those of you playing along at home, that was Christmas fricken Eve. So keep that in mind. If you want to get a copy of the document from the USPTO’s PAIR system, just look for the response after final filed on 15/428,001 on December 24. Otherwise, here is a direct link to a pdf copy of the response:

Applicant Xmas Response

Dang. This attorney is heated up! Here is one of my favorite parts:

“We proffered through geometric though and logic reasoning why the Double Patenting rejection is inconsistent with the rejections, and we are told that our logic is not valid. Not the first time we have heard that. (One would think that my clients would have gotten rid of me by now for such illogical assertions that simply cannot be correct.)”

And of course, we must highlight the logic puzzle laid out that ultimately leads to an accusation that the USPTO is unfamiliar with the organization of the animal kingdom. For example:

“The analogy is apt and it supports our position. Is it the USPTO’s position that all mammals are the same? That is the problem. Also, the bird is not a mammal. Thus, our point is valid. The bird is different, and the record indicates that the monkey and the mammal are different from the bird.”

Finally, after repeatedly belittling the examiner for using stock and cut-and-paste language, the attorney declares:

“We again repeat our scholarly and righteous arguments.”

Anyway, you get the idea. It is worth reading the whole response. It is a trip. But the best part is that the Examiner wasn’t having it. This Examiner is officially our hero. He fires back with a 21 page Advisory Action on January 10, 2019. You can find it in PAIR or here is a direct link to open the document:

Examiner Advisory Action

This Examiner must have spent at least an entire day writing this advisory action, if not even more time than that. He even addresses the attorney’s logic puzzle analogy! And claim charts! He throws down the friggin claim charts, y’all. He fires a couple of shots at the attorney but he stays calm, cool, collected and professional. In short, he absolutely roasts the attorney’s arguments…one at a time….totally and thoroughly. Well done, Examiner Christopher Flory, well done.

We will most definitely have to check back with this application to see what move the attorney makes next. Our prediction? I think we are going to see a terminal disclaimer and that will just about be the end of it.


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