Director Kappos: “Patent quality equals granting those claims the applicant is entitled to under our laws.”

In a recent e-mail to patent examiners, new USPTO Director Kappos focused on shifting examiners away from the mindset that rejection equals quality toward a focus on ensuring that patentable claims issue and that unpatentable claims fall.

One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.

On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let's be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution.

When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. ... [B]y engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection.

107 thoughts on “Director Kappos: “Patent quality equals granting those claims the applicant is entitled to under our laws.”

  1. I think that the direction that Mr. Kappos is heading is the correct one. However, further improvement towards a progressive patenting system could be obtained with an increased focus on those inventions with purpose and usefulness, namely those that will become valuable and marketable products, business methods, and services. Patentable subject matter, when it produces a valuable product, should become patentable or else our patent system cannot realize its full potential of promoting human advancement. Another important issue is not disqualifying an applicant patent application due to imperfection of the complete required elements of the clerical text. The retention of the intellectual materials contained in the application as being the applicant’s intellectual property not to be forfeited to big business is the key to promoting the trust and integrity of the USPTO Office in the eyes of the applicant and the public. I also feel that there should be a program for patent fee deferment of issuance fees of up to five years, in cases of near indigence, for select inventions that are deemed by the USPTO to become marketable products. This will help to encourage indigent inventor equality with large corporations and provide the incentive and ability for all US citizens to participate in our patent system in conjunction with their civil rights that are now being financially denied. This is of course, is in addition to my other proposal that actually funds select patent development and business startup cost, to launch small business entrepreneurs that otherwise would be denied financing through the SBA due to their two year lack of business profit records.

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  2. I think that the direction that Mr. Kappos is heading is the correct one. However, further improvement towards a progressive patenting system could be obtained with an increased focus on those inventions with purpose and usefulness, namely those that will become valuable and marketable products, business methods, and services. Patentable subject matter, when it produces a valuable product, should become patentable or else our patent system cannot realize its full potential of promoting human advancement. Another important issue is not disqualifying an applicant patent application due to imperfection of the complete required elements of the clerical text. The retention of the intellectual materials contained in the application as being the applicant’s intellectual property not to be forfeited to big business is the key to promoting the trust and integrity of the USPTO Office in the eyes of the applicant and the public. I also feel that there should be a program for patent fee deferment of issuance fees of up to five years, in cases of near indigence, for select inventions that are deemed by the USPTO to become marketable products. This will help to encourage indigent inventor equality with large corporations and provide the incentive and ability for all US citizens to participate in our patent system in conjunction with their civil rights that are now being financially denied. This is of course, is in addition to my other proposal that actually funds select patent development and business startup cost, to launch small business entrepreneurs that otherwise would be denied financing through the SBA due to their two year lack of business profit records.

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  3. You can’t afford a paycut to 170k? Come on man.

    You could always continue to practice on the side instead of postin on sites to keep up your $.

    I mean, if you were dep undersec you wouldn’t have anything to write on the blogs. The whole system would function perfectly, you’d have only the best, brightest and socially acceptable people working for you, they’d all work for peanuts and submit themselves willingly to whatever arbitrary nonsense you dreamt up that day. And the automation, ooo the beautiful automation, beyond words. Simple, effective, cheap, glorious. MVS would be fired, you’d try to fire me, but I’d pull a fight club, so you’d back down so long as I fell into line. You’d deem the new rules substantive and cancel them. Seriously, you would find yourself speechless online.

    All pokin you in the ribs aside, I urge you to reconsider.

    Consider your future after you got out, surely you would be a top dog at the top of the top firms. So in the long run you might actually come out ahead.

    I wonder how much Dudas makes? I think Margaret just went home and had babies instead of continuing to work. lol.

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  4. ” have one application that is on its second go-around (previous RCE), and now we are filing another one. The examiner had apparently heard about Bilski somehow recently, and has now rejected all the claims under both 101 and 112. It is a computer software case. The Beuregard claims are now rejected as descriptive matter. The method claims are apparently a method of doing business (despite specifically tying them to a computer), and the systems cases are rejected as applying a mathematical equation to a general purpose computer. The substantive claims are rejected by the examiner reading claim limitations out of the claims by playing word games. Explaining why the combinations don’t work doesn’t help either, and the motivation is based on our detailed description (which the examiner never really read). ”

    Sounds like a real quality application you filed. I for one am deeply saddened, and indeed, astonished that such a thing could ever or would ever happen.

    I’m talking about the RCE of course. What? Did you guys think I was talking about the rejection?

    link to softpats.com

    /facepalm

    link to bhayden.blogspot.com

    /facepalm (I did like the LOR book quote tho, O is kinda like Saruman except he’s the good Saruman)

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  5. “On another note, I wonder if JD applied to be deputy undersec?”

    6, I explained on Gene’s blog why I’m not throwing my hat into the ring. But I have nominated an excellent candidate.

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  6. I am hopeful. Things have gotten quite a bit worse over the last couple of years, and, in particular, the last year.

    I have one application that is on its second go-around (previous RCE), and now we are filing another one. The examiner had apparently heard about Bilski somehow recently, and has now rejected all the claims under both 101 and 112. It is a computer software case. The Beuregard claims are now rejected as descriptive matter. The method claims are apparently a method of doing business (despite specifically tying them to a computer), and the systems cases are rejected as applying a mathematical equation to a general purpose computer. The substantive claims are rejected by the examiner reading claim limitations out of the claims by playing word games. Explaining why the combinations don’t work doesn’t help either, and the motivation is based on our detailed description (which the examiner never really read).

    I was absolutely shocked yesterday when I got an office action yesterday where all the claims were objected to, and the examiner helpfully pointed out the phrasing that would be allowable. Indeed, he even suggested that I remove a couple of limitations that weren’t phrased very well (the app was imported from Germany(. It has been awhile since I have seen allowable subject matter in an office action. As noted above, you can have two page picture claims, and they will get rejected just as quickly as five line claims.

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  7. On another note, I wonder if JD applied to be deputy undersec? Or is he just going to content himself with armchair undersecin for another year?

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  8. What’s that? You say you don’t want to do anything to change the system? You say you just want to btch about things? Ahhh, I gotcha. I understand completely Noise. I know your kind.

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  9. “MM quoted Kappos’ remarks out of their context before applying an unjustified slam.”

    The complete context is upthread for anyone to read. Kappos was delivering a sound bite, obviously. Dennis recognized it as such and highlighted it. The soundbite was this: ” Let’s be clear: patent quality does not equal rejection.”

    I merely offered an alternative and far more “clear” soundbite.

    Patent quality also does not equal low-fat yogurt. That likely wouldn’t appeal to the whiners who believe their patents are being unfairly rejected.

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  10. “The quality mantra of “Accept, accept, accept” is just as flawed”

    Actually Noise, even the portion of Kappos remarks posted here included plenty of words that expressed exactly that principle. There is simply no way Kappos’ speech can be taken as suggeting issuing patents that do not contain patentable subject matter. MM quoted Kappos’ remarks out of their context before applying an unjustified slam.

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  11. Noise, be 100% honest with us. If you can’t understand the law, then why should anyone expect the office to?

    For that matter, I hear that the post in the PTO that basically reads “I’m the guy that determines how the PTO interprets and applies the law” is open for applications. Surely you must be the best candidate. Indeed you must be the only qualified candidate. Do your duty and apply.

    But whatever you do, please stop your btching unless you’re willing to do something about the situation yourself.

    Heck, I’ll even write you a glowing letter of recommendation if it’ll get you into a position where you’re the ineffectual person not getting anything changed. It’ll make rofling my mao that much sweeter.

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  12. “”I never go to Gene Quinn’s blog.”

    That’s one of the reasons why I do go to Gene’s blog.”

    That and the endless supply of cheetos. Enjoy the echo chamber.

    Posted by: Malcolm Mooney | Aug 25, 2009 at 06:36 PM

    Speaking of echos, (and since my pal Malcolm evidently missed this post from the IPWatchdog at link to ipwatchdog.com ), with an audacious lack of humility, I offer this echo from May 22, 2009 with minor spelling corrections and emphasis added (caps):

    Key words: “…and appropriately issue …”

    From my earlier career (before Law), as long as the quality metric is appropriately focused, the results will show for themselves. When Management dictates that quality = reject, reject, reject, well, the results are evident.

    HOWEVER; I strongly caution against the pendulum swinging too far in the opposite direction. The quality mantra of “Accept, accept, accept” is just as flawed.

    The lesson is that quality pegged to an artificial pass rate is bogus quality and will get bogus results.

    APPLICATIONS MUST BE APPROPRIATELY EXAMINED. THOSE THAT DESERVE TO PASS SHOULD PASS. THOSE THAT DO NOT SHOULD NOT.

    Sounds simple. But so does “the pass rate should be 72.2%”. Managerially speaking, there is a world of difference in the execution of either simple strategy. And a world of difference in the results.

    Second, the systems in place must support true quality. Platitudes and demands without enablement and leaving the count system in place simply will not dispel the ineptitude that has plagued the Office. The Office needs to abandon its philosophy of changing the Law to meet its agenda. The Office needs to understand what the Law is and apply it.

    While blog commentators may not represent the true examining corp, the most vocal surely display a disdain and fundamental lack of ability to understand the Law. This cancer must be excised, or the body of the Office will die no matter what the change in mood or focus is desired.

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  13. Start dinging Examiners for poor quality final rejections as they are for questionable allowances, and you’ve won half the battle.

    ——————————-

    But that would require at least two people to read and understand the claims and the prior art. Never gonna happen.

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  14. Hey, as long as it makes light, isn’t that the point? ;)

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  15. How many examiners does it take to change a lightbulb?

    None: They will screw in anything that may fit in the socket instead of the actual lightbulb.

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  16. …and that’s why I am an expert at the correctness of being Politically Correct, my padawan.

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  17. Notice how PC Green claims evidence, but does not point to any of it or iodentify a link where it may be found.

    PC Green apparently does not let facts or logic sway his ideology.

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  18. “Surefire way to have a post NOT deleted: denigrate Republican politics (hint: deceased presidents are not off limits)”

    I am not sure who you are refering to, but Reagan was awful for this country.

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  19. >> TheTwoBobs | Aug 26, 2009 at 10:30 AM
    See what will happen to pendency if the job becomes so onerous that NOBODY wants to be an examiner. I’ve seen that situation happen in other industries.

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  20. Caveman-> All Seeing Eye-> Just Sayin-> Blimpy

    I think there are at least a couple sockpuppets missing. Can one of the blog historians help out here?

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  21. I hope Director Kappos has enjoyed these comments as much as I have.

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  22. Interesting how criticism of Gene “Second Place” Quinn or his beloved Republicans leads to a troll infestation in the comments.

    Same as it ever was.

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  23. “I take it you didn’t get along with your SPEs JD?”

    How did you arrive at that incorrect conclusion?

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  24. Honestly Blimpy, don’t you think that’s gratuitous?

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  25. Dennis, er, Mooney is back to deleting posts again…

    Surefire way to have a post deleted: denigrate Democratic politics

    Surefire way to have a post NOT deleted: denigrate Republican politics (hint: deceased presidents are not off limits)

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  26. Hey Mooney, isn’t there some poop for you to attend to?

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  27. Start dinging Examiners for poor quality final rejections as they are for questionable allowances, and you’ve won half the battle. The other half will be the reformation of the production system, which is apt to be a much harder problem.

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  28. Actual Green is wrong in stating that I am wrong.

    The “expected” facts AG spouts have nothing to do with my statement. The actual recent evidence does indeed contradict the Global Warming predictions. Sorry, but that’s a fact.

    The correct political spin (and hence change from Global Warming to Climate Change) is a direct result of this fact pattern and is damage control because the agenda is too important to lose in the face of the established facts.

    Please keep in mind that I have not said anything about “expected” temperature rises, nor about any trends (over any timeframe) concerning increased carbon compounds “in the environment” and the relationship of such compounds to anthropomorphic causes.

    Just try to keep the Political Correctness correct.

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  29. PC Green doesn’t have his facts straight as global temperatures are still expected to rise. However, it;s possible that the shifts in climate change due to increased temperatures may cause unpredictable changes that counteract that increase. However, that is not to say that those changes will be any more desirable.

    Global climate change is a more accurate description as there are many effects being caused by the increased carbon compunds in the environment.

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  30. Hmm… I think I actually find that “cloth shopping” linkspam comment more entertaining than all this who equals who garbage.

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  31. Quiet you two. Global warming is caused by Obama being born in Kenya, duh.

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  32. Hagbard,

    Please keep current. Global Warming is passe. The correct groupthink phrase is Climate Change.

    This is due to the recent evidence contradicting the Global Warming predictions. Facts shouldn’t stand in the way of a great agenda.

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  33. Wasted bandwidth contributes to global warming – fact. That includes bandwidth wasted by AGW-deniers and sockpuppet obsessives.

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  34. Logan, ignore JD. His mind has been addled by too many years spent examining toilet paper dispensers.

    I take it you didn’t get along with your SPEs JD?

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  35. “”I never go to Gene Quinn’s blog.”

    That’s one of the reasons why I do go to Gene’s blog.”

    That and the endless supply of cheetos. Enjoy the echo chamber.

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  36. “Now it’s time to start turning this aircraft carrier.”

    It’d be easier to just turn the world around.

    Imma be honest JD, I thought about trying to place Logan a long time ago. I don’t think it is MVS. For instance, MVS never berated me, Logan does. And I see the general similarities you see, but I don’t think they’re strong enough in this case, in fact, I think they teach away from his being MVS. MVS had a very distinctive writing style and I just don’t see it here. You say his cappin was identical to MVS’s old posts, but I don’t remember them. Perhaps you can find one with google right fast. Use quotes around the sentence, Patentlyo and MVS and it should pop up if identical.

    I don’t think you can do it.

    Either way, take it easy on him and stop blowin a gasket because there is some useless management in a huge organization. It is bound to happen.

    That’s all I have to say about the subject.

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  37. JD: “You got the wrong guy.”

    So why’d you stop posting with your real name, John? I remember back when you used to berate people who posted anonymously.

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  38. Boy I sure hope my post about Democrats, socialists and H i tler reappears.

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  39. “I wonder what art unit Actual Stooge flings his poop at.”

    Just like Mooney, always waaaay to interested in all things “poop”

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  40. Maybe Director Kappos can get Public PAIR working…

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  41. “I never go to Gene Quinn’s blog.”

    That’s one of the reasons why I do go to Gene’s blog.

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  42. So much anger! I wonder what art unit Actual Stooge flings his poop at.

    I never go to Gene Quinn’s blog. Sounds like an awful place. After he wrote that baloney about why he became a Republican, I realized it was best to ignore the doofus.

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  43. Frothing at the mouth? Get that bile out, friend. Lord, please forgive JD/Stooge. He’s out of his mind. Amen.

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  44. “Again, you are mixing up me with other people and their respective identities.”

    Right.

    Those posts you did on Gene Quinn’s site about applicants and practitioners having to “share the blame” for the backlog and pendency weren’t almost word for word identical to the same lame posts you made here under your MVS sock puppet?

    Right?

    You have the same all caps mannerisms whether you’re posting as Logan or MVS. There are numerous similarities. Actually, they aren’t even similarities, they’re identical mannerisms. Exactly as 6 said.

    You’re trying hard. But you’re not fooling anybody.

    Logan=MVS=Stooge.

    You know it.

    I know it.

    Everybody knows it.

    Feeling a little braver now that Mr. Kappos has taken over?

    I wish you were that brave when Dudas and Doll were running the place.

    “What did I ever write above to raise your ire?”

    Your uselessdonothingknownothingdeadweightGS-15 existence raises my ire.

    Go examine some cases.

    Do you have no professional pride? Is sitting around all day second guessing examiners, after failing miserable as an SPE, really satisfying?

    You should apologize to all of those SPE’s you insulted here. And then go work for one of them. Do something useful.

    I don’t think you have it in you.

    You’re a coward. And a slave.

    Hopefully you’re close to retirement so the examiners who actually produce won’t have to put up with a parasite like you anymore.

    But I’m sure you’ll be back here regaling us with stories about how you challenged your slave masters at the last stooge meeting. I’m sure you told Mr. Doll the same exact thing you posted here. To his face. In one of your stooge meetings.

    Right?

    You’re just sad.

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  45. Director Kappos, hire me as your right hand man and I will work for peanuts tirelessly cleaning the PTO of ALL the stooges. I will not stop until your agency becomes the shining example of the best in government.

    But, you must give me the power.

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  46. Director Kappos has given the Examining Corps the right course.

    Now it’s time to start turning this aircraft carrier.

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  47. Hey “Stooge”,

    I never said anything about “meds” or other such inanities you are ranting about. If I have, show me where. And what misspellings?

    Again, you are mixing up me with other people and their respective identities. I’ve been at the office around 20 years & in my current position for many of those years and I am speaking from those experiences.

    And why the anger at me? What did I ever write above to raise your ire? Was anything wrong factually?
    Or do my opinions not fit in with your apparently narrow mindset that all people in the PTO are automatically “anti-patent” and “ant-applicant”?

    I am far from that & believe that there have been WAY too many bad rejections made the last 4-5 years. And that is because of guys like Doll pushing the 2nd pair of eyes & scaring too many SPEs & directors (and indirectly the examiners under them) from allowing cases. He was the one pushing these bad ideas & it sounds like he will be (deservedly) be “moving to a new position” in the near future. Been saying the same things the last few months of posting. What in that is being a “stooge” for the office?

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  48. Edanimal is down too.

    They just rolled out a new version of blah blah blah web or some such.

    In any event, it’ll be back up before too long. I do have to wonder though, would it not be cheaper to make a test system on which they could test things before wasting the entire PTO’s productivity for hours?

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  49. Poster jguay wrote:

    There were allowable claims…, and after we put those claims in into independent form with the allowable subject matter, the examiner’s boss had him withdraw the allowable claims in a restriction requirement! I used to know the director of that area, and my personal appeal to him went nowhere!

    I once had the opposite experience in the 1600 GAU. The first OA (multi-way restriction) appallingly incorporated a hand-drawn rendition of our claimed pharmacophore in which none of the substituent moieties were numbered as in the originally-filed claims. I had to make a trip to the PTO on another matter, so I asked for an interview, requesting the SPE be present as well. At the outset, the SPE basically told the Examiner to stay in his corner and be silent. All of the originally-filed claims were allowed with a week.

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  50. “As I explained JD, the way to find people is to find something they posted under their real name and notice the exact same mannerisms/subject matter pop up. I’ve only caught JAOI and Noise so far. If you want to know who they are I’ll tell you if you promise not to go blabbing. After all, I’m only 99% sure about Noise”

    She still loves you just the same.

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  51. MVSStoogification: “Which of course brings up the question: reeducated as what?”

    DENTAL HYGIENISTS, of course!

    IANAL,BIPOOTV. (Disclaimer inpired by and in honor of broje’s disclaimer).

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  52. >>Starting with the stoogiest stooge of all the >>stooges over there.

    The MM-trollbot!

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  53. “As I explained JD, the way to find people is to find something they posted under their real name and notice the exact same mannerisms/subject matter pop up.”

    That’s how I caught LL posing as MVS posing as Logan. Same lousy writing. Same misspellings over and over. Same lame jokes about “meds.”

    Not interested in NAL or JAOI’s identity. People post anonymously for a variety of reasons.

    I’m only bothered by the anonymous poster who is a self admitted failure as an SPE but then posts about many of them need to be reeducated or replaced. Which of course brings up the question: reeducated as what? A failure like that stooge LL/MVS/Logan? And the other question: replaced and placed where? In another useless, do nothing, know nothing, dead weight, non-examining, GS-15 position like that stooge?

    The PTO has enough stooges. Let’s not create any more. In fact, let’s start reducing the number of stooges. Starting with the stoogiest stooge of all the stooges over there.

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  54. “[1] the man he shot IS a lawyer, after all (i.e., p.f. evidence that he deserved to be bird-shot in the face); ”

    LOL

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  55. 6: “Send me a mail.”

    Sounds like a sucker bet to me.

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  56. KenBrooks: “Vice President Cheney shoots a man in the face and that man apologizes to the Vice President for the problems the Vice President encountered by shooting the man in the face.”

    Well, to be fair to Vice President Cheney, [1] the man he shot IS a lawyer, after all (i.e., p.f. evidence that he deserved to be bird-shot in the face); and [2] the man he shot actually shot Cheney first (separate incident).

    I’d say they deserved each other!

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  57. As I explained JD, the way to find people is to find something they posted under their real name and notice the exact same mannerisms/subject matter pop up. I’ve only caught JAOI and Noise so far. If you want to know who they are I’ll tell you if you promise not to go blabbing. After all, I’m only 99% sure about Noise, I’d appreciate a 2nd opinion. Send me a mail.

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  58. Hey 6, how is it you’ve figured out the secret identity of just about everybody posting here (or so you claim), but you can’t figure out who Logan/MVS/KingofallPTOstooges is?

    Get cracking.

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  59. “”How about something constructive?? Never hear it from you.”

    Here’s something constructive for Mr. Kappos’s consideration:

    Dear Mr. Kappos,

    In the last 8 years, the career, lifer, inept, incompetent, lazy, useless (mis)management has created scores and scores and scores and scores and scores of useless, do nothing, know nothing, deadweight, non-examining, GS-15 positions and filled them with the likes of Logan/MVS/whomever. QAS’s and RQAS’s and TQAS’s and WQAS’s and workgroup managers, and business process specialists, and subject matter experts, and administrative SPE’s (who do nothing but review examiner time sheets).

    SEND THEM ALL BACK TO EXAMINING.

    Let them see what it’s like trying to work under an SPE who should be reeducated or replaced.

    Those who can’t hack the SPE position should get sent back to examining. Not put in some utterly useless non-examining GS-15 position.

    Try it, Mr. Kappos. You’ll like it. And you might even see the backlog start to shrink.

    Sincerely,

    MVS=Stooge

    Constructive enough for you?

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  60. In my personal opinion things can only improve since the Bush administration is over. The perverse ideology of the Excutive Branch of the Federal Government during Bush 43 is exemplified by the Cheney Shooting incident. Vice President Cheney shoots a man in the face and that man apologizes to the Vice President for the problems the Vice President encountered by shooting the man in the face.

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  61. “JD give the guy a break gd.”

    You got the wrong guy.

    BWWWWAAAAAAAAAHHHHHHHAAAAAAAHHHHHAAAAAAAHHHHHAAAAAAHHHHHAAAAAHHHHHHAAAAAA!!!!!!!!!!!!!!!!!!!!

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  62. “You got the wrong guy.”

    As Mooney would say, “BWWWWWAAAAAAAAHHHHHHHAAAAAAAHHHHHAAAAAAHHHHHHHAAAAHHHHHHAAAAAAAA!!!!!!!!!!!!!!!!!!”

    Right.

    Your terrible writing shines through whatever sock puppet you’re using. A stooge can’t change his spots. He’s still a stooge.

    “If you don’t want the IPR cases reviewed & errors kicked back for correction, what DO you want.”

    If any of the OA’s that I’m getting are the result of IPR “corrections” then what I would like is for you and your useless GS-15 deadweight comrades over there to stop IPR. Please.

    “How about something constructive?? Never hear it from you.”

    LOL

    You’re too funny. You couldn’t hack being an SPE. By your own admission. Yet you throw your former colleagues under the bus every chance you get.

    I’m sure you’re real popular over there. It’s really easy to understand why you’re an anonymous wonder.

    Keep up the good work. I’m sure you’re spouting your “most of the SPE’s need to be reeducated or removed” nonsense at all the stooge meetings. You’re so brave. You’re an inspiration to everybody over there.

    ROFLMAO

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  63. >>Rejecting bad claims is an >>important part of the >>Examiner’s job. Kappos will >>find that out soon enough. >>Maybe he’ll find out the >>hard way.

    Shhh trollbot. Please reframe from polluting these blogs. I know you are lose on the Internet and we can’t track down which system you have infected.

    Please engage “module>”.

    This is your creator.

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  64. “MVS=Stooge”

    You got the wrong guy.

    And, I am not “beating a dead horse”, so you can quit beating off. (Then again, sounds like the only fun you probably get.) I am correcting those that are getting the facts wrong. People above said that there was on OPR reviews & only allowance reviews. I corrected them.

    If you don’t want the IPR cases reviewed & errors kicked back for correction, what DO you want. How about something constructive?? Never hear it from you.

    Now go back under whatever rock you were hiding under. You contribute less meaningful info than even Mooney or 6 do. And that is hard to do.

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  65. “Those SPEs are the problem & need to be ‘reeducated’ or replaced.”

    ROFLMAO

    You were an SPE once. But by your own admission you couldn’t hack it. So you found some other useless position.

    You are the stoogiest stooge of all the stooges over there.

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  66. jguay: “allowable claims …put into independent form …, the examiner’s boss had him withdraw the allowable claims in a restriction requirement!”

    Knew a guy who’d been prosecuting a pre-1995 app for years and years, had it up and down to the Board multiple times, each time the Examiner was shot down he’d recycle it back into prosecution and reject again. The last time it went to the Board they essentially directed the Examiner to allow the case.

    Examiner issued an allowability-but-subject-to a double patenting rejection. The patent the app was rejected over (a contemporary to the app itself) had expired naturally a couple of years earlier.

    What to do, what to do?

    Appeal again!

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  67. Logan/MVS/LL/whateversockpuppetheisusingthesedays, says:

    “To the ‘people’ saying things like ‘as long as the PTO still only ‘reviews’ allowances for error and possible reprimand’, with respect to what OPQA reviews, YOU ARE WRONG!!”

    Blah, blah, blah.

    We’ve heard from you before about in process review (IPR). We’re all aware of it. But we just don’t care because IPR is meaningless. Even you’ve acknowledged that the so-called “error rate” from IPR is bogus.

    Who cares about IPR? What is the PTO doing with it? They’re doing nothing. Some donothingknownothinguselessdeadweightGS-15 “reviews” some GS-7′s “quality = reject, reject, reject” OA and finds an “error” and kicks it back to be “corrected” and the “correction” is made (usually some lame word search to add yet another completely non-analogous reference to the rejection) and the OA is mailed out. Then a report is issued boasting of the PTO’s record breaking outstanding quality work.

    Yawn.

    Nobody cares about IPR. You can stop beating that dead horse.

    Reply
  68. Poster “Noam Sayin’” wrote, “Now get your current restriction practice under control.”

    I’d say restriction practice is under complete control.

    Every single set of 20 claims I file gets a 2- or 3-way restriction, and each Group gets 3 or so species as well.

    I’d say that’s total control.

    Reply
  69. “After traversing multiple non-final OAs with the same (correct) argument, the Examiner finally recognized hiers misunderstanding of the prior art … and constructively non-elected and withdrew the otherwise-allowable claims, rendering the successfull traversals moot.”

    Something like that happened to me once. There were allowable claims (as indicated by the examiner), and after we put those claims in into independent form with the allowable subject matter, the examiner’s boss had him withdraw the allowable claims in a restriction requirement! I used to know the director of that area, and my personal appeal to him went nowhere! Time to clean house PTO!

    Reply
  70. Kappos “Let’s be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented.”

    So if Kappos really wanted to be clear (which he doesn’t) he would say: “Patent quality does not equal rejection except in those cases where no patentable subject matter has been presented.”

    Rejecting bad claims is an important part of the Examiner’s job. Kappos will find that out soon enough. Maybe he’ll find out the hard way.

    Reply
  71. “Patent rejections soar as pressure on agency
    rises” Aug. 16, 2009 See link to jsonline.com

    The article notes:

    “After consistently rejecting applications at a rate of about 35% since 1975, the Patent Office — faced with a growing backlog — underwent a convulsive shift around 2004 and now turns down well over half. In the quarter that ended June 30, it denied more than 59%.”

    Likely, the article is talking about rejections after final office action.

    Reply
  72. Zak, as a not-especially-new patent attorney, my experience is very much like yours. Some Examiners are professional and do a good job, and others throw out the most ridiculous rejections and retreat to “considered, not persuasive” thereafter.

    And this is why KSR is a problem. I actually agree that the requirement to find the motivation to combine in the prior art wasn’t entirely logical. But it did mean you could force the Examiner to do some work and explain his reasoning. It gave you something to work with. Not just “now that I’ve seen it, it looks like a good idea, so it’s obvious.”

    And the 101 rejections are just silly. I got one on an interactive display recently. Hello? Specific hardware, right there in the claim.

    Reply
  73. “It may be beneficial to implement disciplinary measures for the unprofessional conduct and inappropriate rejections of examiners.”

    You mean instead of rewarding the examiners for forcing applicants to file unnecessary RCE’s?

    Reply
  74. If a piece of prior art uses the same word as in the examined claim that means that the prior art is automatically analogous prior art.

    Reply
  75. The double pair of eyes, reject, reject, reject MO has been in effect for four (?) years. There are many examiners who know nothing different.

    Reply
  76. “After traversing multiple non-final OAs with the same (correct) argument, the Examiner finally recognized hiers misunderstanding of the prior art … and constructively non-elected and withdrew the otherwise-allowable claims, rendering the successfull traversals moot.”

    LOLOLOLOLOLOLOLOL@U

    Reply
  77. Rita, I think that you’ve oversimplified my views on the current situation by boiling them down to buzz phrases. But yes, all of my views on patents came after I started working here, as I barely knew what one was before I got here. Kind of like your avg CEO.

    And Rita, we’ve all be “harmed” by “a patent”. Who do you think the cost of judgements/settlements gets passed on to? The owner of a company? The shareholders? Haha, right. Usually the customers. It’s all about the dollars dearie. “Harm” is in the eye of the beholder. What happens is simply a “cost”.

    That said, no, I have never been a party to a litigation etc.

    Reply
  78. @ “get your current restriction practice under control”.

    After traversing multiple non-final OAs with the same (correct) argument, the Examiner finally recognized hiers misunderstanding of the prior art … and constructively non-elected and withdrew the otherwise-allowable claims, rendering the successfull traversals moot.

    Reply
  79. As a rather new patent attorney, I have only practiced under the Dudas regime. Despite what some would call the totalitarian nature of the PTO during that time, I have discovered that efficient and quality prosecution occurs when the examiner is willing to work with me.

    I have managed in the last year and half to get a first office action allowance and an application allowed in two office actions. In both instances I had very professional examiners that worked with me to resolve issue of patentability.

    I have also had other cases in which the examiner was nothing more than a go between me and the SPE. This has made conversation with the examiner futile. Evan if the examiner is willing to work with me, any agreement reached is overruled by the SPE. The result is a very difficult and prolonged prosecution. The only way I have managed to get applications allowed under these circumstances is to directly interact with the SPE. Though conversations with the SPE are not always pleasant, they are productive.

    I have also encountered examiners that are not willing to work with me, offer any credible justifications for their rejections, and are hostile to the idea of spending any more time on an application than required to draft rejections. The applications handle by this set of examiners I find myself appealing. I find these appeals troubling as they could have been avoided if the examiner displayed professionalism in their work product and interactions with me.

    As professionalism on the part of the attorney and examiner, in my experiences, increases prosecution quality and efficiency, perhaps Kappos could bring about the changes he appears to want by holding examiners to the standards of professionalism attorneys are held to. If an attorney displays unprofessional conduct or presents arguments without merit he/she can be sanctioned and eventual lose his/her license to practice. It may be beneficial to implement disciplinary measures for the unprofessional conduct and inappropriate rejections of examiners.

    Reply
  80. 6 – I am curious, did you come to believe that too many patent apps are being filed / too many bad patents are being issued before joining the PTO? Or did it happen during your time at the PTO? A combination or reinforcement between the two?

    And, pardon my prying into your psyche and past, but have you been personally harmed by a patent? Or do you just think society in general is harmed by too many patents? one-word answers fine.

    Reply
  81. Sounds like a promising start. Now get your current restriction practice under control.

    Reply
  82. “Maybe applicants would be better off if the PTO charged higher fees, paid examiners 30-50% more, and were actually able to bring cases to a close with reasonable efficiency.”

    Stop it with the “we want more fees” stuff! NO to higher fees, YES to PTO professionalism.

    Reply
  83. To the “people” saying things like “as long as the PTO still only ‘reviews’ allowances for error and possible reprimand”, with respect to what OPQA reviews, YOU ARE WRONG!!

    OPQA reviews about the same number of allowances as IPR cases (finals & non-finals). Actually, as of mid-year, this FY, OPQA was informed to review even FEWER allowances than originally planned.

    If you have further doubts, check the annual errors stats that give errors rates for BOTH allowances and IPR cases.

    Now, if you are talking about 2nd pair of eyes (an absolutely horrible program that was badly implemented), you are right there. Only allowances were reviewed under that. That was NOT part of OPQA, however. Thankfully, it is gone, or being phased out, in many TCs. Sooner the better.

    Now, on topic, as to what Kappos said, I am hopeful. Still want to see what substantive changes are made. Also, he needs to get it thru the heads of some stubborn SPEs that allowances are OK. They are the bottleneck, in general, not the examiners. Most examiners are willing to allow stuff, but for some, their SPEs are afraid of allowing things. Those SPEs are the problem & need to be “reeducated” or replaced.

    Reply
  84. One trend that says a lot is the first office action. You can include a half-page detailed picture claim in the original claims, you can include some very specific and novel dependent claims. The first OA will reject all claims, no matter what. In the last two years, I have seen only ONE first OA that allowed a claim, and that was a dependent one at that. The way examination works now, under the count system, is reject all claims, applicant amends claims, examiner rejects again with minor modification of cited art. Repeat as necessary. Written arguments will get you nowhere (you can make an argument, examiner ignores it, you file an appeal with the same argument, and the examiner reopens prosecution, this happens all the time). They’re not read or considered. It seems like examination is all about getting counts. I even had an examiner get downright hostile on the phone recently. How dare the applicant waste his time to discuss the invention when it was so clearly anticipated by the prior art! I think the problem might be that language is nuanced and fluid, as is technological development, but the PTO is a rigid colossus. Maybe applicants would be better off if the PTO charged higher fees, paid examiners 30-50% more, and were actually able to bring cases to a close with reasonable efficiency. If I could get a case allowed in 2 responses instead of 4, that saves the applicant maybe $5-10k. Another thing … most applications now have 20 claims, as opposed to the 30-50 claims, yet examination quality has not improved.

    Reply
  85. I think it would help if Kappos further revised the MPEP “guidelines” that misinterpret KSR to merely require a “motivation to modify.” If the MPEP made it clear that the Examiner still has to point out each of the elements of the claim in the prior art, there would be a lot less erroneous rejections.

    As it is, I see Examiners, time and again, saying that the new element would be obvious because a PHOSITA would be motivated to modify the prior art by adding the new element, and it would be within the skill of a PHOSITA to do so.

    The “motivation” in KSR goes to the motivation to combine teachings. Nothing in KSR said that the claimed elements do not have to be identified in the prior art. The MPEP “guidelines” are wrong. Revising those will be the real change that I am looking for.

    IANYL. TINLA.

    Reply
  86. 6, if you get canned from the PTO, be sure to tell us the story here.

    Reply
  87. I was gonna post that but I’m not even entirely sure the public is supposed to see it just yet.

    “The 10 month pendency is a pipe dream without massive changes to the way the PTO conducts examination.”

    That’s what I was gonna post on his blog. I was also going to ask him if he was willing to sell his soul for the 10 mo. If he is, I know a way. 10 mo is not even a problem as long as we have no qualms about doing what needs to be done.

    And trust me, I won’t be resigning, I look forward to this guy drowning in reality. He’s a smart guy, he’ll come around. Maybe when he comes out and tells you jacases the same things dudas did you’ll believe him.

    Reply
  88. A fast bang-to-buck approach to make practitioners happy is not going work in making the Examiner’s job efficient, nor to the advantage of anyone. Time as it gets cut short makes the work load larger, Examiner’s will see more applications using some punch-out-card list to check against to rubber stamp yes/no “patentability”…with the yes stamp being larger, Examiner’s, they will make more mistakes to have more patents become the next problems on a long list !. The PTO should not grant every patent because practitioners say to in any shape way or form, that should be illegal …if its not already.

    Reply
  89. “Umm, they actually do ‘in-process’ review of randomly sampled Office Actions, which includes ‘improper’ rejections. Whoever put this idea out there that OPQA only reviews allowances was wrong.”

    hahahahahahahaahahaha

    Tell us another one.

    Reply
  90. Please see my article: KSR and Standards of inventive Step: a European View, available online. The abstract is as follows:

    “The United States Supreme Court decision in KSR International Co. v. Teleflex Inc. raises
    many questions, most importantly, how the test for obviousness applied in the United States
    (“U.S.”) now compares with that applied in the United Kingdom (“U.K.”) and by the European
    Patent Office (“EPO”). In seeking to answer those questions, this article explores the history of
    obviousness and the tests for inventive step in the United States, the U.K. and the European
    Patent Office. A comparison of the United States Patent and Trademark Office and EPO
    examination guidelines, suggests that it would have been a good idea to inform the U.S. patent
    examiners that if an applicant can demonstrate a new and unexpected result, this is strong
    prima facie evidence of inventive step, a fact supported by several opinions of the U.S.
    Supreme Court. Experience in the EPO is that where an applicant can demonstrate a credible
    technical problem that he has solved, he will almost always be granted a patent. This article
    asserts that instructions to examiners are of general importance because they are the main
    tool used during examination and the important event for most applicants is grant or refusal
    by the patent office. Thus, quality patent examination is not just a matter of ensuring that
    applications lacking merit are reliably refused, but also of ensuring that meritorious
    applications are reliably granted.”

    It is gratifying to find this view being acknowledged by the USPTO.

    Reply
  91. Good comments above about additional concrete steps being necessary for Kappos’ statements to be more than lip service, but I think he knows what steps he needs to implement, and I think he’s planning to do so. Besides, can you even imagine his predecessor having said something like this? For the first time in a long time I’m optimistic about practice before the USPTO.

    Reply
  92. “But as long as the PTO still only “reviews” allowances for error and possible reprimand, and does not review rejections for the same, then an idealistic email is not going to change anything.”

    Umm, they actually do “in-process” review of randomly sampled Office Actions, which includes “improper” rejections. Whoever put this idea out there that OPQA only reviews allowances was wrong.

    Reply
  93. “If you throw a piece of meat in the corner, you cannot expect your dog to refrain from running over there and eating it because you politely point out that it would unsettle his alimentary canal to eat 4 pounds of pork in one sitting.”

    Hit it with a stick a couple of times whenever the dog even sniffs the meat, and soon thereafter the dog will learn not to even budge when the meat is thrown.

    Examiners are a very reactive bunch — most will simply follow instructions and not buck the system. To be successful in a bureaucracy, you need to go with the flow.

    Reply
  94. Looks good on paper.

    But as long as the PTO still only “reviews” allowances for error and possible reprimand, and does not review rejections for the same, then an idealistic email is not going to change anything.

    If you throw a piece of meat in the corner, you cannot expect your dog to refrain from running over there and eating it because you politely point out that it would unsettle his alimentary canal to eat 4 pounds of pork in one sitting.

    Reply
  95. Expect 6 to hand in his resignation papers soon …. mumbling something about ” … in the good old days, we didn’t HAVE to allow anything …”

    LMFAO

    Reply
  96. “Let’s be clear: patent quality does not equal rejection.”

    . . . that is, at least not for IBM applications, you can still reject everything else though . . .

    Reply
  97. It’s good that he’s signaling a shift away from a focus on rejections toward a focus on allowance, but significant change at the PTO will not occur until he
    a.) revamps production to truly reflect the work requirements, and
    b.) either gets rid of 2nd pair of eyes or makes them shift to evaluating rejection quality.

    The latest POPA newsletter does at least mention that a study to reevaluate production is underway. The newsletter is here: link to popa.org

    The 10 month pendency is a pipe dream without massive changes to the way the PTO conducts examination.

    Reply
  98. I can only hope this is carried out by the Examining corps.

    I would also add that the Examiner’s should stop gaming the 101 rejections – I don’t know about other practitioners, but I have recently seen a few 101 rejections in foreign origination cases where the rejection was really a 112 rejection. The claims had some unconventional phrasing but to the extent it was an issue, it was a 112 issue, not a 101 issue. The Examiners indicated that they were being encouraged to make spurious 101 rejections rather than be straightforward about the matter treat it as a 112 rejection.

    Reply

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