TAFAS v. DUDAS: PTO Asks CAFC To Allow Office to Implement Limits on Continuations and Claims

Tafas v. Dudas (on appeal at the CAFC)

After being rejected by the district court, the USPTO has appealed its case to the Federal Circuit. On appeal, the USPTO asks the appellate court to allow the patent agency to implement new rules that place limits on the number of claims filed with each patent application and the number of continuations that may stem from each patent application. [File Attachment: pto tafas brief (144 KB)]

The PTO asks the CAFC to review three specific issues:

  1. Whether the PTO's new limits on claims and continuations are within the scope of the Office's statutory rulemaking authority;
  2. Whether the new limits conflict with the Patent Act; and
  3. Whether the PTO must provide additional notice and comment for its rule changes.

The PTO summarizes its arguments as follows:

1. The Final Rules are within the scope of the USPTO's rulemaking authority under the Patent Act. The Act's primary grant of rulemaking authority, Section 2(b)(2), authorizes the Office to issue rules that "govern the conduct of proceedings in the Office," "facilitate and expedite the processing of patent applications," and "govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office." The USPTO correctly determined that the Final Rules fit within these grants of rulemaking authority. By setting filing and documentation requirements, the rules regulate the conduct of proceedings in the Office and the conduct of attorneys and other representatives, and by discouraging unnecessarily repetitive filings and providing examiners with needed information, they facilitate and expedite the processing of patent applications.

In holding that the Final Rules are ultra vires, the court made no effort to measure the Final Rules against the actual terms of Section 2(b)(2), nor did the court give the USPTO's interpretation of that provision the deference required by Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), and its progeny. Instead, the court held that the Office is confined to issuing procedural rules and that the Final Rules are impermissibly substantive. But the cases on which the district court relied do not engraft a rigid procedural/substantive distinction onto Section 2(b)(2). And even if they did, the Final Rules would still pass muster, for they regulate the procedures used in proceedings before the Office rather than the substantive criteria for the awarding of patents. The district court's conclusion that the rules are substantive rather than procedural rests on APA cases that do not involve that distinction at all, and the court's standards for measuring the "substantiveness" of rules are at odds with the Supreme Court's jurisprudence under the Rules Enabling Act.

The court compounded these errors by erroneously holding that Section 2(b)(2)(B), which provides for the USPTO to issue rules "in accordance with" 5 U.S.C. § 553, requires the Office to engage in notice-and-comment rulemaking even when Section 553 expressly provides that notice and comment are not required.

2. In the course of its ultra vires analysis, the district court held that the Final Rules are inconsistent with other provisions of the Patent Act. That holding is likewise incorrect. The court mischaracterized the effects of the Final Rules, misconstrued the statutory provisions, misunderstood the judicial precedents concerning those provisions, and failed to give the USPTO's construction of the provisions the deference required by Chevron.

The district court held that Rules 78 and 114 conflict with Section 120 and 132(b), respectively, because the rules place "hard limits" on the number of continuation applications and RCEs that an applicant may file, while the statutory provisions entitle applicants to make an unlimited number of such filings. But the rules do not in fact limit the number of continuation applications and RCEs that may be filed; they simply require an applicant to show the need for further filings once a threshold number of filings has been made. And even if the rules did impose fixed limits, they would not conflict with Sections 120 and 132(b). Section 120 was enacted by Congress simply to provide a statutory basis for continuation practice, not to vest applicants with the right to file an endless stream of continuation applications.

Likewise, Section 132(b), which directs the Office to issue regulations providing for continued examinations, does not entitle applicants to file an endless series of RCEs. The district court held that Rules 75 conflicts with Section 112 ¶2 by limiting the number of claims that may be included in a single application. But Rule 75 places no limit whatsoever on the number of claims in an application, and Section 112 ¶ 2 does not address the permissibility of such a limit in any event. The court also held that Rule 75 and 265 conflict with the provisions of the Patent Act that assign the USPTO the burden of examination and the burden of establishing a prima facie case of unpatentability. But there is no conflict between those provisions and the rules, which merely require applicants to provide information about their claims and prior art so examiners can discharge their burdens more accurately and efficiently.

83 thoughts on “TAFAS v. DUDAS: PTO Asks CAFC To Allow Office to Implement Limits on Continuations and Claims

  1. “I’d still catch you near an alley and beat your a ss after your crowd dispersed. Mr. big wedgie man, come on down, Starbucks is just down the corner.”

    Belligerence is becoming only in apes.

    “Obviously an error is an error on the examiners part, that’s the definition. The problem is, the more claims are in the app the more likely the error is to occur. And that is not the examiner’s fault. ”

    If an examiner fails to read a claim, it’s his fault. While I believe the statistic that as the number of claims increases, the more likely error is to occur, the errors themselves are always the examiner’s fault.

    Why do examiner refuse to act like professionals and take responsibility like professionals? What would happen if I told my clients that the longer the disclosure I receive, the more likely I am to misunderstand pieces of it and the more likely I am to screw up the application? They’d find a new firm. When I know something is longer, I double and triple check everything to make sure I have missed nothing.

    Reply
  2. “How is the retention rate, e6k? What percentage of examiners who are hired are still at the PTO three years later? five years? ten years?”

    I don’t recall the numbers, you can look them up on PO.

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  3. “I still think you deserve an atomic wedgie.”

    I’d still catch you near an alley and beat your a ss after your crowd dispersed. Mr. big wedgie man, come on down, Starbucks is just down the corner.

    Obviously an error is an error on the examiners part, that’s the definition. The problem is, the more claims are in the app the more likely the error is to occur. And that is not the examiner’s fault.

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  4. “Does anybody (e6k, perhaps) know why the PTO adheres so strongly to its current count system and does not providedthe examiners, or the applicants, the “extra examining resources” that have been paid for?”

    Being charged 25$? for each extra claim does not even begin to cover the costs of examining that one claim if it’s not some worthless throw away claim. Especially as you get higher and higher in claim numbers. If you were paying 80-100 you might start to see a difference.

    I wouldn’t be averse to allowing you to designate infinite claims as “throwaway” claims that are only there for Doctrine of claim Differentiation or some other purpose and do not cost you anything, nor are examined for any but 112 and 101. Saying you used an LED as a light source for instance may be a throw away claim in some applications where you know if they have a light source there are references that can be easily 103’d in.

    “How many times have you called an examiner about the status of a filing and been told, “Well, I can’t act on it until it’s on my docket and it’s somebody else’s job to process it and put it on my docket”?”

    What else do you want them to say? It is literally impossible for them to send you an action. If they try it will be rejected by the system and sent back until the LIE’s clear the case through PALM. Do you want us to go out of our way to try to work a miracle that cannot be performed with less than godly, or at least SPE, powers?

    “Throwing your fellow examiners under the bus …. how like you.”

    Hardly, I could mess that up just like them. And I’m just telling you the official line from OPQA, all examiners hear about it in presentations.

    “An examiner inferring limitations into a claim? Come on, now you are really stretching believability. Ignoring limitations … sure, but adding them in?”

    I’m just telling you what OPQA says, argue with them all you like. I don’t know anything about any allowance errors committed personally because I have yet to be caught on any. However, I will say that based on personal experience when I have a case that needs to move, because of workflow etc., and I see an allowable claim I for dang sure want the rest to be good to go as well. So much so that I’ve barely caught some more broad added claims that read right smack 102b on the prior art.

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  5. Yup.
    Has the government of the people, by the people and for the people been transformed into the government of the employees, by the employees and for the employees?

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  6. “My guess is that the current system is enshrined in the examner’s union contract, and they are scared witless to try to renegotiate with the union.”

    They’re not scared to negotiate with POPA. More like frustrated beyond reason.

    There is no modification to the CBA (collective bargaining agreement) that POPA does not view as an attempt to screw the examiners.

    The bottom line is: examiners whine that they want to be treated like professionals, but they don’t want to act like professionals. They want to act like assembly line, piece meal, clock punchers.

    How many times have you called an examiner about the status of a filing and been told, “Well, I can’t act on it until it’s on my docket and it’s somebody else’s job to process it and put it on my docket”?

    Do professionals act like that with their “customers”?

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  7. Does anybody (e6k, perhaps) know why the PTO adheres so strongly to its current count system and does not providedthe examiners, or the applicants, the “extra examining resources” that have been paid for?

    My guess is that the current system is enshrined in the examner’s union contract, and they are scared witless to try to renegotiate with the union.

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  8. you make good points in the posting above, somebody.

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  9. “…and what is all this about a time crunch?…do you mean you are given the same amount of time to prosecute a 5 page 5 claim application as you are a 50 page 100 claim application?”

    That is correct. The PTO has been collecting extra claim fees, and extra page fees since 2004, on the theory that “more claims require more examining resources.”

    They have never provided the examiners, or the applicants, the “extra examining resources” that have been paid for. The time allotted for examination of each application is fixed, regardless of its length or the number of claims.

    BTW, the error rate does not include improperly rejected claims. The PTO does not regard improperly rejecting claims to be an error. They consider it to be the examiner’s job.

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  10. The best explanation I’ve had as to the “magic” that causes the errors is that usually this happens when an examiner is ready to get rid of the case (2nd RCE maybe?) and thinks that all of the issues have been discussed and will be taken care of in the next reply, then the attorney comes back in the next response and adds in another small broad claim that gets overlooked as the examiner allows the case.

    Throwing your fellow examiners under the bus …. how like you. I knew you had it in you 6K.

    Like an examiner … after be able extort 2 RCEs from an applicant, is going to overlook a NEW and broder claim being added? Come on … stop working on your fiction novel.

    “you’ll simply have a narrow claim and then a more broad claim and the examiner will infer a limitation from the more narrow one as being inherent/implicit in the more broad one when it really isn’t and it gets allowed”
    An examiner inferring limitations into a claim? Come on, now you are really stretching believability. Ignoring limitations … sure, but adding them in?

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  11. “Personally, I feel like most people who have a problem with the new rules usually aren’t the ones that cause the problematic situations, but you have to understand that not all practicioners practice like you do and problems do arise as a result of “dmb sht” that some people toss in.”

    But you’re ok with the –punish the whole class for the actions of a few– policy?

    By the way, does the error rate count claims that were rejected that should have been allowed?

    …and what is all this about a time crunch?…do you mean you are given the same amount of time to prosecute a 5 page 5 claim application as you are a 50 page 100 claim application?

    If so, isn’t that rediculous?

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  12. “The best explanation I’ve had as to the “magic” that causes the errors is that usually this happens when an examiner is ready to get rid of the case (2nd RCE maybe?) and thinks that all of the issues have been discussed and will be taken care of in the next reply, then the attorney comes back in the next response and adds in another small broad claim that gets overlooked as the examiner allows the case. Those situations and perhaps the more prevelant situation where you’ll simply have a narrow claim and then a more broad claim and the examiner will infer a limitation from the more narrow one as being inherent/implicit in the more broad one when it really isn’t and it gets allowed.”

    All of those are due to examiner screwups. At least you recognize and admit that. ;)

    I still think you deserve an atomic wedgie.

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  13. “Are you saying that the best claims are written by the inventors, themselves with no assistance from patent counsel?”

    You have a little trouble with irony, curious?

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  14. Malcolm:

    Are you saying that the best claims are written by the inventors, themselves with no assistance from patent counsel?

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  15. “I would assume that the applicant would thus know how best to claim his invention and how many claims are required?”

    Indeed. For the same reason, the best contracts are not drafted by attorneys trying to protect as much of their clients’ right as possible, but by the clients themselves. That’s why attorneys don’t even bother writing contracts anymore. You can’t even hire one to do it. What would be the point?

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  16. According to Mr. Dudas, “the applicant knows more about their invention that [sic] anyone else.” link to patentablydefined.com

    I would assume that the applicant would thus know how best to claim his invention and how many claims are required?

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  17. It looks like examiners should give applications with more than 25 claims, a second or a third review before allowing them.

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  18. How is the retention rate, e6k? What percentage of examiners who are hired are still at the PTO three years later? five years? ten years?

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  19. “The error rate goes up if there are more than 25 claims?”

    Yes, apparently this is well known to those in OPQA and can be seen from even a cursory review of the error stats.

    The best explanation I’ve had as to the “magic” that causes the errors is that usually this happens when an examiner is ready to get rid of the case (2nd RCE maybe?) and thinks that all of the issues have been discussed and will be taken care of in the next reply, then the attorney comes back in the next response and adds in another small broad claim that gets overlooked as the examiner allows the case. Those situations and perhaps the more prevelant situation where you’ll simply have a narrow claim and then a more broad claim and the examiner will infer a limitation from the more narrow one as being inherent/implicit in the more broad one when it really isn’t and it gets allowed.

    I can say with a huge amount of certainty that as claims go up the overall complexity of the analysis (where is this limitation where is that limitation?) goes up and the time crunch gets worse. This is not a good situation for errors. I could prosecute 20 1 ind 9 dep cases with less errors than 5 cases with 10 widely differeing inds, no matter how many deps there were.

    As to hiring, you already know we’re hiring at training capacity. As to more fees, you also already know that those aren’t set by the office.

    Personally, I feel like most people who have a problem with the new rules usually aren’t the ones that cause the problematic situations, but you have to understand that not all practicioners practice like you do and problems do arise as a result of “dmb sht” that some people toss in.

    I’ve had probably 10 cases or so with 1 ind and maybe a few deps. Not only are they easier to examine/search, they’re a lot “safer” and easier to allow.

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  20. “Wonder if the Justice Depart told the PTO to take the case to the FedCir, albeit for non-patent reasons??

    Sorry for being dense, but what reasons might the Justice Departement have that you are alluding to?

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  21. Wonder if the Justice Depart told the PTO to take the case to the FedCir, albeit for non-patent reasons?

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  22. Actually, taking this case to the Fed.Cir. may have been the stupidest thing the PTO could do. The Fed.Cir. is rabid about the notice function of claims. If the PTO limits the number of claims artificially, it limits the ability of the patentee to give notice of his protected — or it limits his protected subject matter. Either way, the result is substantive.

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  23. Further, remember that applicants are *paying* for the added claims. Perhaps the PTO would consider giving the examiners more time for those applications with longer claim sets. Oh yes, and hire more examiners.

    Regarding error rates, the only ones of which are apparent are the ones that are allowed are litigated (or there is an outcry over for some reason). There is no quantification nor qualification of rejections that are simply not warranted and thus are a drain on the applicant’s time and money. Like T, I fail to see how the addition of a few more claims leads to *issuance* of an application.

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  24. “As far as I know Doll isn’t going anywhere for quite some time.”

    Well, considering how well connected you are, that comes as quite a shocking revelation.

    LOL

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  25. “If you read the explanation you will see that more claims take longer to examine and this leads to backlog. They aren’t concerned about 20 claims so much as they are with ones that go over 25, this is particularly because the error rate goes up quite a bit for apps with more than 25 claims. The office does not want a high error rate on its record, nor does it want a high error rate because they know it’s harmful to the public and the patent owner.”

    The error rate goes up if there are more than 25 claims?

    What happens if there are 2 different applications with 20 claims each (thats a total of 40)? Is the first one prosecuted without error and the next one prosecuted with errors? What about the third application (60), what about the fourth (OMG 80)?

    Whats the magic that causes errors simply because a claim is presented on a sheet of paper near other claims?

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  26. “Did any one else notice the bit about the huge need to limit claims to 25 because the average application used to have 14.4 claims and now OMG their is a crisis because the average application has 21 claim?

    How is 21 claims where the basic filing fee covers 20 a surprise or a crisis?

    How does allegedly setting the limit at 25 alleviate the crisis of 21?

    Are they being perhaps disingenuous about setting the limit to 25? Do they realize that rule 75 actually sets the limit at 5?”

    If you read the explanation you will see that more claims take longer to examine and this leads to backlog. They aren’t concerned about 20 claims so much as they are with ones that go over 25, this is particularly because the error rate goes up quite a bit for apps with more than 25 claims. The office does not want a high error rate on its record, nor does it want a high error rate because they know it’s harmful to the public and the patent owner.

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  27. “Dudas and Doll are outta there”

    As far as I know Doll isn’t going anywhere for quite some time.

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  28. As T mentioned, this is one of the problems with the PTO rules.

    Besides the retroactive problems associated with the rules, and the well-publicized fact that the PTO will enforce the continuation/RCE portion to exclude filings at all costs, the claim limitations portions are simply arbitrary.

    Further, no studies of which I am aware have been publicized that indicate that the proposed changes will actually help matters.

    The list of problems with the rules can continue ad nauseum, as many comments have pointed out over the last year or so however while change is likely, one really hopes that Dudas and Doll are outta there and replaced by administrators who can actually solve the backlog problems with reasonable solutions (e.g., lobby Congress for the $ to hire more examiners as the $ is being raked in, increase examiner training/time to review new apps).

    BTW Dudas was recently named one of the Top 50 Most Influential People in IP by Managing Intellectual Property magazine. Well, one would certainly hope that this would be the case.

    Now can we please get back to discussing issues rather than merely posting personal attacks on individuals?

    Just my $0.02.

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  29. Did any one else notice the bit about the huge need to limit claims to 25 because the average application used to have 14.4 claims and now OMG their is a crisis because the average application has 21 claim?

    How is 21 claims where the basic filing fee covers 20 a surprise or a crisis?

    How does allegedly setting the limit at 25 alleviate the crisis of 21?

    Are they being perhaps disingenuous about setting the limit to 25? Do they realize that rule 75 actually sets the limit at 5?

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  30. “Unlike the majority of reactionary fundamentalist doofuses on the Supreme Court, I don’t think the CAFC is interested in alienating itself from most of the civilized people who actually rely on its judgments.”

    I see you’re reading from my playbook Mooney. Congratulations on wising up.

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  31. “Maybe e6k should read what the PTO states as their role – ”

    Maybe you should stop listening to bs PR.

    Cry all you like, cite feel good directors and do whatever else. It doesn’t matter all you’re doing is glossing over the fact that you’re not, and you never will be.

    Also, like I said, you’re not a nuisance unless you make yourself one. You’re just a person applying for a legal right to exclude. That’s fine, the gov. deemed it worthwhile to do, and you’re willing to foot some of the expense. So be it.

    Here’s a good example of someone who voluntarily chooses to make himself a nuisance and tells you as much right in his article: link to ieeexplore.ieee.org

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  32. “That’s because they’re not really customers. They are people applying for a government granted legal right to exclude.”

    Maybe e6k should read what the PTO states as their role –

    “The role of the USPTO is to grant patents for the protection of inventions and to register trademarks. It serves the interest of inventors and businesses with respect to their inventions and corporate products, and service identifications.”

    Sounds to me like the PTO views us as clients…

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  33. “That’s because they’re not really customers. They are people applying for a government granted legal right to exclude.”

    This is the exact reason you should have gone too, e6k. You and Dudas see inventors as nuisance.

    Even the IRS calls a taxpayer a customer.

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  34. “USPTO is the only organization I know that refuses customers openly and tries every effort to see it happen. The only reason it has such a mentality and can still survive is that it is a government agency. If the PTO is a private business entity, Dudas would have been fired long time ago. May be this is the only solution, to privatize the USPTO.”

    That’s because they’re not really customers. They are people applying for a government granted legal right to exclude.

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  35. “Do you mean all the limitations in one claim, which is of course far narrower than the recitation of 17 individual claims and of course a penalty?
    Or, do you mean in some sort of Markush recitation, which the PTO is seeking to prevent by other rules, and which a jury would find confusing and misunderstand?
    And, what if I do not so desire?”

    Either one, you can roll all the deps up, or do a Markush. You can also include apparatus language as well as product language and composition language in a single method claim (and apparatus in product claims etc). Some of it might not count towards patentability but who cares really? (lol) In the end it’ll come down to you trying to convince me that providing incentive for people to claim their invention rather than a more abstracted version is a bad thing. You’re not ever going to convince me of this. It’s not a bad idea to have incentives for applicants to claim less to balance the inherent incentive of greed to claim more.

    “e6k, adults are talking. Why don’t you go upstairs and play with your X-Box?”

    I don’t have one, wanna buy me one for xmas?

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  36. USPTO is the only organization I know that refuses customers openly and tries every effort to see it happen. The only reason it has such a mentality and can still survive is that it is a government agency. If the PTO is a private business entity, Dudas would have been fired long time ago. May be this is the only solution, to privatize the USPTO.

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  37. There are a couple of funny parts in this brief, like the comparison of how FRCP Rule 15(c) is limited by Rule 15(a), so of course proposed rule 78 can limit a STATUTE?! Or, how about the complete avoidance of the retro-applicability of these rules – the PTO does not mention it once that the rules were to apply retroactively. K&E should ahve a field day with this.

    On a related note, did anybody happen to catch the oral argument at the CAFC last month where the panel cornered the USPTO attorney on the Chevron issue, and on 3 occasions here response was “I am not authorized to answer that”?

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  38. I quote from the district court opinion:

    “Section 120 as interpreted in Henricksen prevents the PTO from crafting its own lmitations to the number of continuation applications that may be filed. This sentiment is supported by Symbol Techs., Inc. v. Lemelson Med.,… where the Federal Circuit held that the doctrine of prosecution laches “should be used sparingly lest statutory provisions be unjustifiably vitiated.”…This holding suggests that a decision by the PTO to limit the number of continuing applications would run contrary to the mandate of Secton 120.”

    Thus, limiting the number of continuation applications contravenes the statute and is therefore outside the authority of the agency.

    Need I say it: If an agency acts outside its authority, arguably under the APA it is not acting in a constitutional manner.

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  39. “Section 120 was enacted by Congress simply to provide a statutory basis for continuation practice, not to vest applicants with the right to file an endless stream of continuation applications.”

    But the CCPA’s interpretation did construe this section as giving applicants those rights.

    Case over.

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  40. Will the Suporemes really step in and muck this up? I kinda doubt it, they are just trying valiantly to save face (the Director and his direct reports) until they leave next January. I bet they hope the case languishes…

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  41. I suspect the PTO know they will lose here and are trying to get before the Supreme Court. Someone else already said that. How long does it take to get on the Federal Circuit docket? I know it shouldn’t take long for the Supremes to grant or deny cert. IOW, what are the chances of running this case out past the election? Past inauguration day?

    That’s a funny word, inauguration, didn’t augurs originally study entrails for divination? How would that connect with the inauguration of the new emperor? Err, I mean new president. Apparently one meaning of inaugurate is to consecrate by augury, and the college of augurs would have inaugurated the emperor. So, to have an inauguration you should have an augur predicting the future from entrails. Perhaps that could be re-introduced.

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  42. “That is not a penelty, you can put all of the ‘subject matter’ in one big claim if you so desire. It might be rejected.”

    e6k, adults are talking. Why don’t you go upstairs and play with your X-Box?

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  43. e6k

    “That is not a penelty, you can put all of the “subject matter” in one big claim if you so desire. It might be rejected. ”

    Do you mean all the limitations in one claim, which is of course far narrower than the recitation of 17 individual claims and of course a penalty?

    Or, do you mean in some sort of Markush recitation, which the PTO is seeking to prevent by other rules, and which a jury would find confusing and misunderstand?

    And, what if I do not so desire?

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  44. “and they do have the authority to set their fees.”

    Um, no we don’t, they were lobbying congress for just that thing, this past year. We have limited control over the fees that allows for tiny adjustments to address costs.

    “The penalty for not doing so is the loss of allowed subject matter.”

    That is not a penelty, you can put all of the “subject matter” in one big claim if you so desire. It might be rejected.

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  45. The PTO itself cites, in the MPEP, a number of older cases of the Fed Cir’s predecesor court, where a res judicata rejection was reversed due to a difference in claims: In re Fried, 312 F2d 930, 136 USPQ 429 (CCPA 1963); In re Szwarc, 319 F2d 277, 138 USPQ 208 (CCPA 1963); In re Hellbaum, 371 F2d 930, 136 USPQ 571 (CCPA 1967); In re Kaghan, 387 F2d 398, 156 USPQ 130 (CCPA 1967); In re Craig, 411 F2d 1333, 162 USPQ 157 (CCPA 1969); In re Fisher, 427 F2d 833, 166 USPQ 18 (CCPA 1969). They also cite a few older cases where the claims were not different, but where new evidence was submitted: In re Herr, 377 F2d 610, 153 USPQ 548 (CCPA 1967); In re Russell, 439 F2d 1228, 169 USPQ 426 (CCPA 1971); In re Ackermann, 444 F2d 1172, 170 USPQ 340 (CCPA 1971). See also, Paperless Accounting v Bay Area Rapid Transit, 751 F2d 1226, 224 USPQ 418 (Fed Cir 1985) (law and policy favors liberal filing of CIPs).

    But see, In re Freeman, 30 F3d 1459, 31 USPQ2d 1444 (Fed Cir 1994) (issue preclusion in a reexamination case); Pennwalt v Akzona, 740 F2d 1573, 222 USPQ 833 (Fed Cir 1984) (where cip filing was prima facie acquiescence to 112 rejection in parent); also Waldemar Link v Osteonics, 32 F3d 556, 31 USPQ2d 1855 (Fed Cir 1994); Symbol Technologies v Lemelson Medical, 277 F3d 1361, 61 USPQ2d 1515 (Fed Cir 2002) (applicability of prosecution laches due to unreasonable and unexplained delays); In re Bogese, 303 F3d 1362, 64 USPQ2d 1448 (Fed Cir 2002) (no substantive advancement of prosecution together with examiner’s express warning or notice; PTO’s applicability of forfeiture rejection due to deliberate delay not unreasonable). Thus the PTO could have a case if they were clearer with
    their “further showings” requirement. The Bogese case also discusses limits to the PTO’s rulemaking and discretion in this regard and potential abuses by the PTO in applying these “rare” persistent refilings too broadly. So that case goes both ways.

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  46. From a judicial realist’s perspective, is there any chance in hell that the CAFC would take this case and overturn most or all of the District Court’s findings, even if they had a legally reasonable argument for doing so?

    Unlike the majority of reactionary fundamentalist doofuses on the Supreme Court, I don’t think the CAFC is interested in alienating itself from most of the civilized people who actually rely on its judgments.

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  47. “SF – thanks, do you have the case name or citation handy?”

    I think it’s Molins, but I’m not sure.

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  48. Regarding the limits of continuations, etc:

    The PTO might have done better to make an argument based on res judicata or stare decisis, which is something the judges would understand. Even so, they’d have to get around CCPA/Fed Cir. precedent limiting the applicability of such doctrines in continuing applications where there is a difference in claims, as the PTO has itself readily admitted (see MPEP 706.03(w)). The PTO might have to ask the Fed Cir. to reexamine its own precedent on this subject and reverse itself en banc. Otherwise, I can’t see how the district court could be in error that the PTO rulemaking is inconsistent with 35 USC 120 and 132(b), as interpreted by the Court in its precedent.

    As for the PTO’s argument that the rulemaking doesn’t actually place “hard limits” on the number of continuing applications, their own commentary accompanying the rulemaking clearly suggests that any petitions that include the required “further showings” would be universally denied. At the very least, the court should require the PTO to provide concrete examples of under what circumstances such a petition to examine a continuation beyond the limited number would be granted.

    Reply
  49. The Brief is full of half truths and therefore shows the weakness of the PTO position.

    Take this tidbit from pages 9 and 10″

    “Final Rules 75 and 265 are designed to facilitate the Office’s examination of applications containing a large number of claims, by requiring applicants to provide
    information about the claims and prior art to assist the examiner in determining the patentability of the claims. See, e.g., JA57 (72 Fed. Reg. 46721). Final Rule 75
    permits an applicant to present up to five independent claims and twenty-five total claims for examination without providing any specific information about the
    10 patentability of the claims.”

    That may be what the rules were designed to do, but its a crappy design. The effect of rule 75 is to REQUIRE the filing of an onerous ESD when ever more than 6 claims of any kind are filed. The penalty for not doing so is the loss of allowed subject matter.

    Take for example the situation where the applicant seeks to avoid filing and ESD and so files only 3 independent claims, 2 of which have 6 directly depending claims and one of which having 5 directly depending claims. Thats 3/20, well withing 5/25.

    Now then, the examiner finds the 3 independent claims to be just a tad too broad and rejects them, while allowing all the dependents.

    In the interest of compact prosecution, the applicant amends to cancel the 3 rejected claims and place the 17 dependent claims in independent form, thereby securing the broadest allowed protection.

    eeeeeeeeeeeeeeeeeeeeeee

    WRONG! No ESD was filed before the FOAM. Therefore 17/0 violates 5/25 and the applicant must give up 12 allowable claims.

    Through the looking glass insanity and SUBSTANTIAL RULE MAKING.

    Reply
  50. It is a perfectly fine appellate brief, but I’m not sure it wins the day. Here are some outstanding issues.

    1) Substantive: I think it’s a sign of weakness that the PTO devoted so much space to this argument and Chevron deference. That is, the PTO cannot win on a relevant issue so it argues highly technical issues to create some confusion. (The Rules Enabling Act, really?, you argued the REA??, well OK) While not in evidence, the Court may be aware of Sen. Specter’s letter that states the PTO has no substantive authority, Congress is not giving you any, and you guys suck. (well the last part is my interpretation). GSK wins

    2) Hard cap: Of course it is a hard cap. The Federal Circuit can walk its way through the rules and see that’s the effect. The PTO, when it sent out Bob Spar to advertise its proposed rules, bragged that the intent of the rules was to create a hard limit on claims and continuations. It will be hard to back away from that now. The district court simply called it what it was. GSK wins

    3) Backlog: It is unclear whether the new rules solve the backlog problem, but the Court will probably defer to the PTO. PTO wins

    4) Late claiming: Poorer argument since the Federal Circuit has said that late claiming is a legitimate practice. See Symbol Tech. v. Lemelson; Hakim v. Cannon. While there may be policy reasons for limiting this practice, Moore & Lemley suggest that Congress make this change. It’s not up to the PTO. GSK wins

    5) Trade secret: The district court seemed to like the argument that the new rules altered the trade secret/public disclosure bargain. While this may be directed to retroactivity, it’s a mistake to avoid this issue entirely. GSK wins

    I agree with Supreme Commander, the PTO should just lobby Congress to enact a progressive fee schedule for claims and continuations. This will fix the whole thing. And it should fit on one page in the Federal Register :)

    Reply
  51. I can’t fathom any way in which limiting continuations and RCE’s is not substantive… especially continuations.

    I predict the PTO being smacked down once again.

    They could have accomplished the same thing via fees (charge out the wazoo for apps with more than 5/25, etc) and they do have the authority to set their fees.

    I will do a dance the day the current administration is out of there.

    Reply
  52. SF – thanks, do you have the case name or citation handy?

    Reply
  53. “There is Fed. Cir. precedent that applicants have no substantive duty to conduct a prior art search.”

    The precedent says that the duty of disclosure (e.g., rule 1.56) does not include a duty to search. The precedent does not say the USPTO is forbidden from creating a new rule that required a search.

    Reply
  54. ESD may survive in some form, but surely the pre-filing search requirement will get dropped. There is Fed. Cir. precedent that applicants have no substantive duty to conduct a prior art search. I don’t see the USPTO being able to win the procedural-substantive debate there. Also, as SF mentions, the search part of the ESD regulation has vagueness issues.

    I’m still of the opinion that the USPTO could have addressed several of the “problems” that gave rise to this rules package with fees instead. Over 5/25 = more $$$; Each further RCE/Cont = more $$$; etc.

    Reply
  55. Well, I’ll likely be out of the picture by the time resolution has occurred, but . . .

    I wish I could be a fly on the wall at the PTO for the first few months after the RCE and continuation ban, the new appeals rules, and claim limits.

    Net effect – Examiners are going to have to work much harder to get their counts.

    You think Office Actions are pathetic now? Wait till the Office starts hemorrhaging the old time core who are used to Examining 2 new applications a month.

    Should be a trip.

    The best part is that the proposed rules demonstrate the PTO’s utter and complete denial about the great count scam.

    Reply
  56. JV: I agree that the ESD requirement for over 5/25 (or some form thereof) will eventually be implemented. I don’t know whether the current rules are too vague. But if they are, the USPTO will add the specificity. As MM notes, change is coming. I wonder if they are holding onto the final IDS rules so that they can change them if the Feds require greater specificity for the ESD.

    Reply
  57. “I wouldn’t be all that surprised to see the PTO get RCE limits and the okay to pass some type of claim count/ESD requirement. But limits on continuations at a number as small as two and the right to retroactively apply the claim count rules just isn’t going to happen at the federal circuit.”

    The King Solomons of the Fed. Cir. are not splitting this baby.

    Reply
  58. Perhaps losing at the CAFC is just the path PTO has to take to get in front of the Supreme Court. I don’t see the PTO getting enough of what they want from the Federal Circuit.

    I wouldn’t be all that surprised to see the PTO get RCE limits and the okay to pass some type of claim count/ESD requirement. But limits on continuations at a number as small as two and the right to retroactively apply the claim count rules just isn’t going to happen at the federal circuit.

    Reply
  59. The rules are dead because they affect applications retroactively. Dead, dead, dead. Unless they’re not. Seriously, if the PTO had grandfathered in previously filed applications, they may well have gotten their rules approved initially.

    Now, the courts will probably continue to shoot the PTO down because they’ve proven themselves unworthy of the benefit of the doubt (affecting, for example, the Court assessment of the PTO assertion that an Applicant could theoretically get more continuations), and they will let Congress implement any fixes needed, which is what probably should have happened anyway.

    Reply
  60. “obsession” sounds like a bit of projection to me Mooney… and everyone else too

    I can understand that you’re a little sensitive about your financial situation, what with all that bitterness about those who are doing well in Aspen.

    Reply
  61. “Yes, change is coming, maybe you will get a real job.”

    And maybe you’ll start obsessing about someone else’s comments.

    eeeyeah right

    Reply
  62. e6K, nobody called you. Atoms don’t move in wires and you are still a m0r0n.

    Reply
  63. anon, I’m not ready to say that the PTO has anything to hope for. Personally, and I think this opinion is widely shared, the rules are just not workable and they should never be implemented. They are too complex to implement and there are seriously undefined conditions that result in applications with no discernible status such as a case or line of cases whose parent issues. In such a situation, the new Rule 75 begins to fall apart from the top.

    As for getting something positive, that would be anything other than a total smackdown, which is what they are headed for IMO with the tone of the brief. Like a remand to provide a revised set of rules that are procedural. I would never file an appeal brief with that much “you got it wrong” all over it, much less a federal
    appeal impugning one of the top patent venues in the country.

    Reply
  64. Calling examiner6k, calling examiner6k, please report to your station, we have a Tafas v Dudas thread.

    Huff huff huff, I’m here, I’m here.

    Where to begin, where to begin?

    The rules are procedural. End of story.

    Now for some responses.

    “Bad tactics.” “In this case, the PTO has done nothing but try to present a huge laundry list of supposed errors in the district court’s approach.”

    Agreed All Seeing, but you can’t help but throw out a laundry list of items if the DC got a laundry list of items wrong, any one of which might be fatal to the USPTO’s position.

    “Still – I wonder if the PTO cites to Lyng v Payne, 476 U.S. 926 (1986) (procedural rules limiting one’s ability to apply for a benefit do not raise substantive due process concerns) or to JEM Broadcasting, 22 F.3d 320 (D.C. Cir. 1994) (rules that merely “encode[] a substantive value judgment “on the appropriate balance between a defendant’s rights to
    adjudicatory procedures and the agency’s interest in efficient prosecution”” are not per se substantive).

    Those would be good backup to the essentially (regrettably) valid Chevron and RTFM[R&S?] arguments.”

    You sir are a boon to the boards and justice.

    “None of Chevron, Star Fruits, and Skidmore say anything about the ability to turn a statutory positive into a regulatory negative.”

    I agree, except for one thing, that statute does not specify how many subsequent applications are to be allowed. Reading the absence of a limit as mandating there is to be no limit because you want unlimited doesn’t mean the statute actually mandates it.

    Reply
  65. “change is coming”

    Yes, Mooney, but is it change we can believe in?
    I guess we’ll know in November or whenever this case is decided.

    Reply
  66. What “humbler objective” would you suggest?

    I’m seriously interested, because you seem to think that the PTO is in a tough spot, given the facts and the law, but that there’s still room for it to get something positive out of this case. I’m curious as to what that is.

    Reply
  67. can someone please explain to me under what level of deference the PTO can interpret a statute reading “an application … for an invention disclosed … in an application previously filed … *shall have the same effect* … as though filed on the date of the prior application”

    in this way:

    “every application beyond the second application for an invention disclosed in a previous application *shall not have the same effect* as though filed on the date of the prior application”

    None of Chevron, Star Fruits, and Skidmore say anything about the ability to turn a statutory positive into a regulatory negative. Some help please?

    Reply
  68. Not sure who you are shilling for anon…[]

    Reply
  69. “[T]he type of interpretations and deference that the PTO is asking for reach far beyond PTO operation and could potentially [bring PTO up to speed with] every administrative agency in Washington[.]”

    “Washington is [all about] that right now.”

    Reply
  70. “turn Administrative Agency Law on its head …”

    Have you *read* any precedential admin law cases?

    Reply
  71. Nice try Mooney, go back to your agenda of breathless glib commentary…

    signifying nothing.

    Yes, change is coming, maybe you will get a real job. I hear the salad bar is where the big money is.

    Reply
  72. I’ve said it before and I’ll say it again: change is coming, somehow, some way.

    At least now everyone has had time to get used to the idea and hopefully has begun changing their practice in anticipation of the inevitable.

    Reply
  73. Actually, I don’t think the brief is the “best possible.” I think a humbler brief with a humbler objective would be more effective. I am saying that I think the argumentative nature of the position can be explained as an act of desperation.

    The problem is that the type of interpretations and deference that the PTO is asking for reach far beyond PTO operation and could potentially affect every administrative agency in Washington and Washington is not geared up for that right now. I don’t think this case screams “it’s a great time to turn Administrative Agency Law on its head.”

    Why do you think Whealan left?

    Reply
  74. Haven’t read the brief. Hope the PTO loses; those rules would be a pain in the *.

    Still – I wonder if the PTO cites to Lyng v Payne, 476 U.S. 926 (1986) (procedural rules limiting one’s ability to apply for a benefit do not raise substantive due process concerns) or to JEM Broadcasting, 22 F.3d 320 (D.C. Cir. 1994) (rules that merely “encode[] a substantive value judgment “on the appropriate balance between a defendant’s rights to
    adjudicatory procedures and the agency’s interest in efficient prosecution”” are not per se substantive).

    Those would be good backup to the essentially (regrettably) valid Chevron and RTFM[R&S?] arguments.

    Reply
  75. “There are many ways to mount an appeal that would have a much different flavor, but that would require a slightly different set of facts. The problem is, the PTO is not in a very good position IMO.”

    So, basically, you don’t like the brief but you still think it’s about the best possible under the circumstances…

    Reply
  76. What I guess I’m saying is the PTO’s position seems overly argumentative and egotistical. “Oh EDVA, you just don’t understand, these rules aren’t what you say they are, they are something completely different. CAFC, please back us up on this.”

    eeeyeah right.

    There are many ways to mount an appeal that would have a much different flavor, but that would require a slightly different set of facts. The problem is, the PTO is not in a very good position IMO.

    Reply
  77. A good appeal (and one that is likely to win) is narrowly focused on a particular issue or interpretation. In this case, the PTO has done nothing but try to present a huge laundry list of supposed errors in the district court’s approach.

    Its not that you can mount an appeal without some allegation of error. But when you go in with guns blazing alleging in essence that the district court is a group of idiots that got everything wrong, then you are bound for trouble.

    Its like the difference between a well trained sniper versus Barney Fife with a machine gun.

    Reply
  78. “Talk about hubris, I’m not sure the PTO is going to have a winning day by simply talking about how “wrong” the district court was, especially the venerable Eastern District of Virginia.”

    With all due respect, AllSeeingEye, how exactly do you appeal a district court’s rulings without asserting that the court got it “wrong”?

    Reply
  79. Talk about hubris, I’m not sure the PTO is going to have a winning day by simply talking about how “wrong” the district court was, especially the venerable Eastern District of Virginia. I guess Dudas is not making a lot of friends in Alexandria.

    Reminds me of that petition by the litigator who forgot to file a copy of the specification. Its amazing how the number of accusations that the administrative entity screwed up goes up dramatically when there are no legs to stand on.

    In the case of the petition, the attorney accused the Examiner and the PTO of delay in notifying the attorney of the screw up, in this case, the PTO is accusing the district court of getting it completely wrong. Bad tactics. They are just begging for a smackdown.

    Reply

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