USPTO’s Data Visualization Center and Patent Dashboard

The USPTO has publicly released its data visualization center and patent dashboard. The site does an excellent job of providing a visual overview of the current USPTO state-of-affairs in terms of patent backlog, pendency, and allowance rate. The site also breaks-down those numbers in various ways that may be useful for advising your clients.  Data-downloads on the site provide unprecedented public access to PTO numbers that were previously either uncalculated or largely kept secret.

PTO Director Dave Kappos additionally sees the dashboard as providing patent office accountability and publicly facing the challenge of reducing patent pendency. Kappos writes on his blog:

An important part of the effort to reduce pendency is better understanding the numerous factors that contribute to examination delays and measuring their impact in a way that makes the USPTO more transparent to the public.  By looking at the whole picture, we can more effectively develop ways to increase the efficiency of the examination process.  While we know we have to hire more examiners to reduce the backlog, we also know that we must re-engineer the way we do business at the USPTO and have already implemented a series of initiatives designed to improve efficiencies.  These process changes will empower our workforce to be more effective and have already begun to yield important gains.

. . . [The Dashboard] will help the entire IP community to better understand our processes, and enable applicants to make more informed decisions about their applications, especially as we develop more opportunities for applicants to control the timing at which their applications are examined.  The new dashboard, which will be updated monthly, will also be used internally by the USPTO to analyze and improve our examination process and to track the effectiveness of our improvement efforts.  We intend to further refine the dashboard and welcome your input about ways we can improve it.  A dedicated mailbox [feedback@uspto.gov] has been set up for your comments and we intend to monitor your feedback carefully. 
 
The dashboard introduces six new measures of pendency designed to give a better overall picture of the contributions of different parts of the examination process to application pendency.  For example, the traditional total pendency measure stops the clock with the filing of an RCE, which may not provide an accurate measure of the total time it takes to complete the examination of an application through request for continued examination (RCE) practice.  A new measure, called "Traditional Total Pendency Including RCEs," looks at pendency of applications from filing of the original application to ultimate disposal of that same application, including any additional time attributable to RCE filings in those applications where RCE filings are made.  Similar measures are provided relative to divisional applications and other types of continuation practice.  We also provide information about pendency for applications in appeal practice.

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132 thoughts on “USPTO’s Data Visualization Center and Patent Dashboard

  1. Ned,

    You haven’t even seen the claims and you’ve paved the road to he ll with your good intentions?

    Sheesh.

    let me stir the pot:

    2. The improved acoustic isolation apparatus of claim 1 further comprising a damping pad supported on at least one of the high compliance areas.

    As for the indy, the claim is to a compliance area – seems pretty broad to me.

  2. Ned: The amendment brought the claim language into conformity with term used in the specification, which was “defined” to mean “thinning” the housing.

    It may be “defined”, but it’s not defined. The closest the spec comes to a definition is: “In FIGS. 4A and 4B, the acoustic compliance area 50, is a thinned area…” That’s clearly an example, as it refers only to the embodiment currently being described. Nowhere in the spec is language to the effect that “the term ‘compliance area’ as used in this document should be understood to mean a thinned area…” and nowhere is it implied that a thinned area is the only possible type of compliance area.

    It really doesn’t matter what is shown in the preferred embodiments when the claim is drafted so broadly that the “compliance area” could pretty much be anything at all.

    I note that the claims were finally allowed after they were amended to explicitly recite the reduced thickness. Was that really so hard? Was all this arguing really necessary, when the only distinction was between claim narrowing by estoppel and claim narrowing by amendment?

  3. IANAE, well for the benefit of the reader, below is claim 1 that was on appeal. I do not have a copy of the dependent claims. It would be interesting to see if they claimed the pad as a separate element.

    The third amendment changed “on” to “as a portion of.” The examiner had cited Brown as showing a pad clamped “on” the housing. The amendment brought the claim language into conformity with term used in the specification, which was “defined” to mean “thinning” the housing.

    I admit, I was surprised that the term was actually defined in the specification given that the Federal circuit said that this was the problem — an absence of a definition. One thinks that the Feds never read the specification.

    1. (Thrice Amended) An improved acoustic isolation apparatus for reducing the acoustic noise produced by a system having at least one excitation source attached at a contact point to a support member, the acoustic isolation apparatus comprising:

    at least one acoustic compliance area integrally formed [on] as a portion of a selected area of the support member so as to impede selected frequencies of acoustic noise resulting from the coupling of the vibrations of the excitation source to the support member, the acoustic compliance area formed [on] as a portion of the support member such that [increased compliance is provided to] the support member has increased compliance substantially surrounding and extending radially about the contact point.

  4. But it seems inconsistent with In re Suitco.

    It’s not inconsistent. The question in both cases is how broad you can go before the claim is unreasonably broad. The answer in both cases revolved around what the claim actually says and how far you can stretch the claim terms before they break.

    In Suitco, Rader said that a “top surface” can’t reasonably be construed to read on an intermediate surface that has some other surface on top of it. He’s right. He and I only part ways on the question of whether the top surface is actually claimed.

    Had Suitco claimed a “surface” instead of a “top surface”, it would have been construed more broadly, and it would have looked a lot more like Morris. They’re two sides of the same coin.

  5. Any fair reader will understand that the compliance area and the pad are two different things.

    Sure, as long as the claim recites them as separate parts. For example, if they have some spatial relationship to each other in the claim such as “a damping pad supported on the acoustic compliance area”.

    The specification describes the process of integrally forming.

    The specification describes a process of integrally forming. Preferred embodiments are non-limiting examples, remember? They don’t exclude from the claim any other process of integrally forming, unless the claim itself is so restricted.

    If you want to know what the claim means, you have to read the claim.

  6. “Absent a clear definition, the entire spec is by way of example of what the claims mean. The spec is not limiting in any way.”

    Agreed. That is the holding of Morris.

    The generic rule of law then should be,

    “broadest reasonable interpretation not inconsistent with definitions or clear usage from the specification.”

    That is a better formulation of the PTO practice.

    But it seems inconsistent with In re Suitco.

  7. Namwarts, the “compliance” area is “formed” in the housing. Intergrally forming the compliance area is described as thinning the housing. The pad is described as an additional part that can be used “in cooperation” with the compliance area.

    Any fair reader will understand that the compliance area and the pad are two different things. Only the compliance area is integrally formed. The specification describes the process of integrally forming.

    Take another look. Perhap you misunderstood.

  8. Ned Heller,

    Shame on you.

    The term “integrally formed” is used four times in the patent – twice in the summary and twice in the claims. Nowhere in the detailed description is the term used. Clearly, in this particular case, “in light of the specification” is at best an empty phrase and cannot sustain your position.

    Additionally, nestled in between the two uses in the Summary is this quote:

    A damping pad may be provided, supported on the acoustic compliance area, for damping acoustic coupling in cooperation with that achieved by the acoustic compliance area.

    In context, the term of art used paints a completely different view than the one that you present. Using citations from a case to mislead is not something that I think you want to be associated with. The Examiner violated no law or doctrine here. The ghost you are chasing is not here.

  9. Ned: I have also repeatedly asked what does “consistent with the specification” mean when, according to Morris, the PTO is entitled to ignore the specification when construing a term that is not clearly defined in the specification?

    It’s the same issue over and over again. Absent a clear definition, the entire spec is by way of example of what the claims mean. The spec is not limiting in any way.

    Since the vast majority of BRI claim constructions differ from the applicant’s intended meaning only in their breadth (as opposed to a completely different and inconsistent meaning), the spec really doesn’t matter. If the preferred embodiment is covered by what you think the claim means, it will still be covered by the claim under BRI, because BRI should be strictly broader than any other reasonable construction. Therefore, no matter how broadly you construe a claim, it will never become inconsistent with the specification.

    If the examiner’s construction is in a completely different direction (e.g. “a monitor having a high resolution” being read on a prior art monitor displaying the minutes of a town hall meeting with voting results at the top), then you can look at the spec. But normally it’s simply not an issue because the examples in the spec are powerless to narrow the claim.

  10. Ping, the PTO gives lip service at best to the demand of the law that the claims be construed in light of the specification and/or are consistent with the specification. The Federal Circuit finally got wise in In re Suitco. That case, if I recall correctly, was not discussed in this forum and I don’t know why. However it is a major case, extremely important in re-examinations where it seems that every claim construction is absurd.

    I have asked here just how In re Morris is consistent at all with the requirement of the law that claims be construed consistent with the specification? No one reading the Morris specification (see 6081406) would ever construe the claim the way the patent office did. In light of the specification, that construction was completely absurd. The purpose for the invention was to selectively thin the casing to form a compliance area. To construe the claim term to read on a multipiece construction, in fact the identical prior art discussed in the background section of the patent application, is beyond laughable.

    In if you think I’m the only one that sees the PTO’s claim construction regime as being a problem, read Kevin Noonan’s comment,
    link to patentdocs.org

      “The problem, according to the Court, is that the Office has ignored the part of the standard that limits the bounds of what is “reasonable” to what is consistent with the specification: the rubric is not merely that claims must be given “their broadest reasonable construction” but that they be given “their broadest reasonable construction consistent with the specification” (emphasis added). Moreover, claims are to be read “in light of the specification as it would be interpreted by one of ordinary skill in the art,” citing In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).
      The opinion particularly rejects the Office’s reliance upon and justification of its construction because the patentee used the term “comprising” in the claim. “The broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention,” according to the opinion. Citing Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (perhaps on the panel’s mind after its extensive citation in the en banc Ariad v. Eli Lilly appeal), the Court held that the Office must always construe claims “in light of the specification and the teachings of the underlying patent.” Here, both the “express language of the claim and the specification” mitigated against the Office’s construction, and “require the finishing material to be the top and final layer on the surface being finished.”

    Now take a breath and consider
    whether the PTO construction was at all consistent with the specification when one considers what the Morris patent actually said, and I quote:

      SUMMARY OF THE INVENTION

      The present invention provides an improved acoustic isolation apparatus comprising an acoustic compliance area integrally formed as a portion of a support member, such as the housing assembly of a disc drive assembly, for the purpose of reducing resonant vibration from an excitation source, such as a motor component in the housing assembly. The acoustic compliance area provides an increase in compliance to the support member along a selected axis while maintaining required rigidity of the support member. A damping pad,may be provided, supported on the acoustic compliance area, for damping acoustic coupling in cooperation with that achieved by the acoustic compliance area.

      When integrally formed as a portion of the structure member, the acoustic isolator is formed by selectively reducing the thickness of the structure member, such as the wall of a housing assembly, to provide a determined increase in compliance in the selected axis.

    link to google.com

  11. Ned,

    Nammy and IANAE be trying tell ya nicely – your “So what?” is so you be a fool. Your “So what?” is made up o’ wishful thinking and conjurin something that just aint there. Ya keep sayin they be ignorin, but ya keep not showin just how that be true.

    When will people learn that being nice ta fools won’t make them stop and re-think their position?

  12. Namwarts, I personally disagree with the finding of the Morris panel that the term had no specific meaning in view of the specification. So what?

    I have also repeatedly asked what does “consistent with the specification” mean when, according to Morris, the PTO is entitled to ignore the specification when construing a term that is not clearly defined in the specification?

    And, is Suitco inconsistent with Morris because Suitco relied on a “purpose of the invention” statement from the specification to overturn the PTO?

    Suitco relied on In re Bond, a 1990 decision decided before Morris. Is Morris even good law on this issue?

    Again, what does “consistent with the specification” mean in the context of BRI?

  13. Ned,

    In Morris, the Feds resisted citing the specification. They had to, or they would have had to reverse.

    IANAE is not the stubborn one here. Several posters have tried to convince you that your argument is as empty as the Morris specification when dealing with the particular term of art.

    Lord help me, Ping is right.

  14. Ned: The Feds rested their claim construction in Suitco mainly on citing the specification. There is no indication that anything else was really important to them.

    The construction in Suitco would have been perfectly reasonable had the claim not included the word “for”. Rader never worked in patent prosecution, but you and I do. We both know that amending out the word “for” would have easily overcome the rejection without any need for appeal. Instead, they had to force the case high enough in the chain that they found a judge who didn’t know how claims are construed in prosecution, and missed a very important point.

    But other than that one word, I would completely agree with the claim construction in Suitco. If the claim had been drafted to make “top surface” limiting, you wouldn’t have needed the spec at all to construe it correctly.

    Ned: In Morris, the Feds resisted citing the specification. They had to, or they would have had to reverse.
    Now, you keep insisting that the term construed in Morris covered the preferred embodiments. The examiner, Board and Feds never said that it did.

    They never had to say that it did. The question before them was whether the term covered the prior art.

    No amount of reference to the specification will save a term that is so broad as to cover both the preferred embodiments and the prior art, absent an explicit definition. The term was broad enough to cover any embodiment that could possibly have been described. It didn’t matter what the spec said.

    The problem in Morris was the claim, not the spec. The claim was too broad, and could easily have been narrowed by amendment to claim what the invention really was instead of wasting time and money on an appeal.

  15. IANAE, you ARE stubborn. The Feds rested their claim construction in Suitco mainly on citing the specification. There is no indication that anything else was really important to them.

    In Morris, the Feds resisted citing the specification. They had to, or they would have had to reverse.

    Now, you keep insisting that the term construed in Morris covered the preferred embodiments. The examiner, Board and Feds never said that it did. The whole point of the appeal was that it appeared the term was construed to cover the prior art and not the preferred embodiments and for this reason was inconsistent with the specification. The Feds appear to have resolved the issue by allowing any art-recognized meaning if the claim term was not defined in the specification. They specifically held, that absent a clear definition (explicit or implicit) from the specification, that the examiner’s construction, divorced from the specification, would be sustained.

    This, meine freunde, means the claim term was construed without regard to the specification. This apparently was the PTO position at the Board level — that unless a claim term was “defined” they could set down the specification and pick up the dictionary and construe the claim term any way they wanted to.

    Now compare Suitco.

  16. “FTR, 6, Syzmbor is not my case. I resolved the issue in my case by doing the Examiner’s job for him (i.e., finding prior art showing the feature “at the end”) ”

    LOLOLOL. God broje, this story just keeps getting better and better.

    ” I mean, he even thinks “an end” can mean “the middle.” ”

    I don’t think that I ever actually said that.

  17. In Suitco, the Rader construed “for finishing” to be a “final” finish:

    Based on the “top surface” language. There may be several layers, but only the final one is on top of all the others.

    It’s not an unreasonable construction, except that (as I have said more than once now) he completely missed the word “for” that everybody at the PTO recognized as intended use language.

    If you claim actually doing something to a top surface, doing that same thing to an intermediate surface should neither anticipate nor infringe. Pretty basic, I should think.

  18. “There’s a difference between reading limitations into a claim and deciding what the limitations mean that are already in the claims.”

    Really?

    In Suitco, the Rader construed “for finishing” to be a “final” finish:

    “When read in the appropriate context of the claim language and specification, the broadest reasonable construction is clear: the phrase “material for finishing the top surface of the floor” refers to a clear, uniform layer on the top surface of a floor that is the final treatment or coating of a surface. It is not any intermediate, temporary, or transitional layer. Because the PTO based its rejection on its unreasonable construction, this court remands with instructions to conduct a new invalidity analysis using the appropriate construction.”

    I dare you to find “final” in the claim.

    Mein Gott, what a difference between Suitco and Morris!

  19. Thanks very much, Karen, for that cite to Syzmbor. 6 was convinced at one time that we were the same person, but now he apparently thinks I’m “Barry.” lol He’s easily confused. I mean, he even thinks “an end” can mean “the middle.” How ridiculous is that?

    FTR, 6, Syzmbor is not my case. I resolved the issue in my case by doing the Examiner’s job for him (i.e., finding prior art showing the feature “at the end”) and submitting it in an IDS. But the incompetence displayed by the Office here does not absolve the Office of also being (Harry Potter points wand at Snape) “Reedikulas!”

  20. “reading limitations into the claims” happens every time a claim term is construed to choose a limited meeting overbroad or meetings or different meanings.

    There’s a difference between reading limitations into a claim and deciding what the limitations mean that are already in the claims.

    For example, when the word “connected” is construed to mean “having any kind of connection at all between them”, that is a decision about how to understand a word that is already in the claim, in the absence of any further details in the claim about the nature of the connection. The construction is consistent with the specification because the preferred embodiments would infringe the claim as construed.

    When the word “connected” is construed to mean “connected via a data connection that involves a protocol exchange” (or whatever) because that’s what the preferred embodiment shows, that is reading limitations into the claim.

    Even in litigation, I would have a problem with two elements of a claim being “connected”, in view of prior art showing a mechanical connection. The language is simply unreasonably broad, if the spec contains no explicit definition of the term. The way to fix the problem is to draft the claims more clearly. When proper claim drafting sacrifices breadth for clarity, it is only the unwanted breadth of the prior art, e.g. “connected” including mechanical connections or “integrally formed” including two parts stuck together.

  21. “reading limitations into the claims” happens every time

    Here we go – more IMHO-Ned law. Ned, do you know the difference between the definition of a word and reading limitations associated with a word?

    I think even 6 knows that ya can’t read limitations into the claims, although I think ya went for his “How to Mis-read” manual in ramblings above.

  22. IANAE, “reading limitations into the claims” happens every time a claim term is construed to choose a limited meeting overbroad or meetings or different meanings. I assume you agree that this is justified when a claim term is defined in the specification. But other than this, just what does the term “consistent with the specification” or its companion “in light of the specification” mean if one cannot use the teachings of the specification in any manner to choose among different, art-recognized claim term meanings?

  23. Karen Hazzah: The BPAI found the Examiner’s reading of “end” as “midpoint” to be unreasonable and to contort the plain meaning.

    I disagree with the holding in that case. The midpoint of a bristle is even more end-like when it’s bent in half. Besides which, this whole messy appeal could have been avoided by the simple expedient of amending the claim to recite straight bristles with a first end and second end, which sounds like it was the actual invention anyway.

    Ned: But even he seems to agree that a definition that does not read on the preferred embodiments is an unreasonable construction.

    Provided the claim can also be reasonably construed in a way that does read on the preferred embodiments.

    Ned: The only way to interpret this, in my view, is that if there are numbers of ways to interpret a claim term, the examiner is NOT bound to construe the claim to cover the preferred embodiments unless the claim term is defined or used consistently to mean just that one thing.

    Ned: but the end result was a construction that read on the prior art but which did not read on any the preferred embodiments.

    Ned, the construction in Morris did cover the preferred embodiments. It simply was broad enough around the preferred embodiments to also cover the prior art. That’s exactly what happens in every single case that is found invalid under 102 or 103. Nothing to see here.

    When the claim construction doesn’t read on the preferred embodiments, you get a 112. If you don’t see a 112, the real issue is that the claim as drafted is simply way too broad.

    Ned: Now from the above, a person of ordinary skill in the art would have no difficulty in understanding what the claim term “integrally formed as a portion of” meant.

    That’s a classic case of reading limitations from the spec into the claim. We’re not dealing with an omnibus claim. You can’t go back to the spec, consider what the invention seems to be, and then interpret the claim to mean exactly and only that. The specification gave examples (we sometimes call them “embodiments”), not a definition. We always want our claims to read broader than our examples. This time it bit the patentee on his behind.

    If the actual invention was manufacturing the part as a single piece, that should have been both described and claimed. It was neither. It’s not the Federal Circuit’s job to sort that out for the applicant, any more than it was their job to put a computer in Bilski’s claims.

    The Morris claim was properly and reasonably construed to mean that the two elements were stuck together and acted like a single piece, whether that was done during manufacture of the part or as a separate step. And anyway, a claim to a single-piece construction should pretty much always be rejected as obvious over stuck-together prior art.

  24. Ned,

    Your statement of “It was an art recognized term only if one were to completely ignore the specification. has no foundation.

    I hear what you are saying. I understand what you are saying. But you are not establishing why the examiner was “unreasonable. Anyone can be their own lexiconagrapher, but that is not the situation here.

    The term is a term of art and does have a general broad meaning which was used by the examiner and which is not contradicted by the specification. Your mentioning of the foundations of this art term, neither detract from its use or meaning. In fact, the contrast with the lack of established meaning from the specification is even more glaring.

    The applicant used a term of art.

    The applicant did not define that term of art to be anything different than what a PHOSITA would understand it to be. The applicant did not use that term of art in his detailed description to even give a basis for the argument that you make. The basis to limit is just not there.

    The examiner used a definition of that term of art that a PHOSITA would recognize, even in light of the specification. This is true even though you continue to cry foul at this point.
    There is nothing that specializes the term to cabin the meaning from the one used by the examiner. If there is, show it – pin cite to it, if you cannot, that you must agree that the specification clearly does not limit the term in question in the way that the applicant intended. Can you do that in order to advance the discussion?

    If the applicant wanted a limited views of this term of art, he needed to expressly do so in the application – as filed, or failing that, have some inclination that he wanted to specifically limit the term of art to only the meaning that he intended in his description.

    He simply did not do this. No such limiting indication are present. I do not understand why you continue to add to the application as written in order to reach the desired result. Are we reading the same specification?

    You keep claiming that the examiner choose a meaning “regardless” of the specification. I have invited you to show me where in the specification is this applicant meaning that the examiner is ignoring. You mention the summary of the invention, but there is no support for your view there. That is merely the use of the term, and not its explanation. The applicant simply does not have the written description support for the argument he and you are making.

    Ned, please show me what compels you to hold this view. Show me a pin cite and we can discuss the applicants rationale foundation for choosing to artificially limit the meaning of a term of art.

    What apparently happened here is that the applicant’s representative tried to wordsmith a special meaning, but just lacks any support in making that differentiation. I think you see what the applicant intended, and you are adding in the intended limited meaning subconsciously. I think you need to painstakingly go through the specification and try to find the explicit support to back up what you are reading in. If you do this and can show that, you may convert some of us reading your defense. If you cannot, I think that you need to entertain the thought that you indeed are over-reading the case.

  25. Znutar: “Sorry Ned to not get back sooner on the topic, but basically I think you’ve built a theory on the back of Morris in a vacuum. Viewed in isolation, I could buy your theory, perhaps. But what value is there in consulting the intrinsic record to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor? Under your construction why would an examiner care what the inventor might have meant? If the courts are trying to tell us that “consistent with the specification” means “not foreclosed by the specification” then the courts have chosen some funny language to do so. Morris notwithstanding, I cling to the belief that “consistent with the specification” means that one of ordinary skill in the art would recognize some nexxus between the offered construction and the specification. Perhaps the construction doesn’t cover the preferred embodiment, perhaps the construction doesn’t cover any illustrated embodiment, but there has to be some logical reason to link the examiner’s construction to the specification, and “you didn’t define the term” is not a logical reason to link the examiner’s construction to the specification. “

    Look at my post immediately above. Namwarts has essentially the same view. However, what happened in the In re Morris was that the examiner adopted a claim construction of a term that had no relation to the specification. He and the Board used definitions from dictionaries, and other case interpretations of “integral with” (not integrally “formed with”) from mechanical arts in general. There was nothing at all that related his construction to the specification. His interpretation was sustained on the principle that the applicant in that case had not made the meaning of the claim term expressly clear, either by defining it or by using the term in connection with a description of the drawings.

    All one can understand from this case is that “consistent with the specification” and “in light of the specification” are meaningless. In re Morris stands for the proposition that one has to define the term or make its meaning unambiguous, or else the examiner can adopt any meaning he chooses regardless of the specification.

  26. Namwarts: the second is that the examiner has chosen a reasonable interpretation, not based on some arcane meaning, but by a meaning that is PHOSITA approved, even in light of your specification (which again is lacking any backing for a different, albeit desired, meaning).

    It’s hard to talk about what is reasonable and unreasonable unless we talk about specific cases. Let’s take In re Morris for example. The invention related to reducing acoustic noise caused by motors in a disk drive. The problem was the coupling of vibrations from the motor into disk drive’s casing. The prior art used a pad clamped between the motor and the casing. The invention “formed” into the casing, structures to increase compliance between the motor attachment and the rest of the casing. The summary of the invention section described the invention to be a compliance region “integrally formed as a portion of” the casing.

    Now from the above, a person of ordinary skill in the art would have no difficulty in understanding what the claim term “integrally formed as a portion of” meant.

    Without more, the construction given the claim term by the PTO was unreasonable as it was not an art-recognized meaning of the term “in light of the specification.” It was an art recognized term only if one were to completely ignore the specification.

    So even adopted your own rule, I find In re Morris to be inconsistent with it.

  27. The wankers here seem to believe that the biggest problem with the USPTO right now is that they aren’t allowing enough claims.

    Nah Malcolm, the pure allowance aint what buggin people – it still be that lack of systematic logic behind the work product o’ the Office that be buggin.

    People aint seein a quality product yet. They aint goin away until they do.

  28. Sorry Ned to not get back sooner on the topic, but basically I think you’ve built a theory on the back of Morris in a vacuum. Viewed in isolation, I could buy your theory, perhaps. But what value is there in consulting the intrinsic record to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor? Under your construction why would an examiner care what the inventor might have meant? If the courts are trying to tell us that “consistent with the specification” means “not foreclosed by the specification” then the courts have chosen some funny language to do so. Morris notwithstanding, I cling to the belief that “consistent with the specification” means that one of ordinary skill in the art would recognize some nexxus between the offered construction and the specification. Perhaps the construction doesn’t cover the preferred embodiment, perhaps the construction doesn’t cover any illustrated embodiment, but there has to be some logical reason to link the examiner’s construction to the specification, and “you didn’t define the term” is not a logical reason to link the examiner’s construction to the specification.

  29. 6,

    I thought the question was rather open ended.

    Much like your head, as all your brains just roll out.

    Nammy,

    There is no way that O’l Ned is going to be able to read and follow that – he needs a nap between his reading of “proper” and “citation”.

    Speaking o’ which, Ned, how you be doing on that homework assignment with those citations? I give you a hint – someone dropped a link to the Rulez that pretty damm well lay out why your little fantasy land ignore the specification prior to search and first office action be wrong. You be pretty quiet of late – must still be choking on your words “of law, boy“.

  30. Ned,

    but the end result was a construction that read on the prior art but which did not read on any the preferred embodiments.

    Please consider that if a term is used in a claim as it is supposed to be used by a PHOSITA in light of the specification, and not otherwise defined in the specification (as in the instant case – this is an admitted fact), then that claim term appears to lack written description support for what the applicant wants it to mean. The applicant may have wanted to define that term as intended in the embodiments, but as everyone admits, did not do so — unless you are somehow convinced that the specification did define that term, contrary to how everyone reads the case. If you can convince me of that, I might lean more your way.

    It appears to me that you have become caught up in a ghost of an argument and that if you take a step back and realize that the examiner performed to the law, and realize what was actually in the specification, you might think differently about the outcome.

    Here’s a possible answer: Since claims are read as a whole, a term that is common in the art does not need written support, as specifications do not need to repeat everything that a PHOSITA would know. Since the term is not used or defined in the specification, it is not a surprise then that the preferred embodiment is not addressed by the meaning of that particular term that the examiner reasonably assigned to the art-specific common term. This would be a completely legitimate examination, there would be no violation of the “consistent with the specification” doctrine, because the term is not defined in the specification, and the applicant would have been put on notice to either use a different term (since that term had an accepted art meaning which the specification as filed could not (and this is important – did not) define differently.

    I put to you that there are no construction rule violations here. In re Morris, does not hold differently than the accepted doctrine.

    Returning to your hypothetical with a bit of nuance, if would be as if you decided to use the terms “connected” and “connecting” in your claims, but did not define them in the specification. You can yell and stamp up and down that you meant a specific and limited meaning, but if you did not prepare your specification appropriately, and “connected” and “connecting” had legitimate art meanings that would be understood by a PHOSITA even in light of your specification that you did not intend, the examiner has not violated claim construction cannons by holding onto a reasonable definition.

    And directly to your second post of “A claim term construction that does NOT read on the preferred embodiments is NOT a “broader” construction, it is unreasonable.“, you need to add two very important caveats:

    The first is that your specification lacks a definition or even an explanation of the term, thereby leaving that term open to a reasonable interpretation and

    the second is that the examiner has chosen a reasonable interpretation, not based on some arcane meaning, but by a meaning that is PHOSITA approved, even in light of your specification (which again is lacking any backing for a different, albeit desired, meaning).

    Now I do find some of the language in Morris to be strained, and some downright seemingly heretical, but the holding in Morris does not stray from the doctrine. The ghost of what the applicant wants, but did not write must be chased away.

  31. “All that later stuff, like RCE, abandonment and even allowance wasn’t part of the calcs of the question.”

    He didn’t make that clear. I thought the question was rather open ended.

  32. A claim term construction that reads on BOTH the preferred embodiments and the prior art is BROADER.

    A claim term construction that does NOT read on the preferred embodiments is NOT a “broader” construction, it is unreasonable.

    What this suggests to me is that In re Morris is inconsistent with the rule of construction laid down may decades ago that the PTO is entitled to construe the claims broadly, but consistent with the specification. Morris needs to be overruled.

  33. Namwarts, but the end result was a construction that read on the prior art but which did not read on any the preferred embodiments. This is the point that I’ve been trying to make here.

    So, we have a situation where a claim term has two (or more) possible meanings: one that reads on the preferred embodiments and another that reads on the prior art. I agree with you that what we learn from In re Morris is that the PTO is not bound to choose the meaning that reads on the preferred embodiments.

    So when the court states that the rule is “broadest reasonable interpretation consistent with the specification,” what it means is that a claim term must be used in the specification in a way where the meaning is unambiguously clear. Otherwise the patent office can choose a meaning that reads on the prior art but does not necessarily read on any of the preferred embodiments.

    The appellants in In re Morris argued that “consistent with the specification” had to mean that the meaning chosen must read on the preferred embodiments. Their argument contended that the interpretation given the claim term by the PTO did not read on the preferred embodiments and therefore was unreasonable.

    But this is what most of us seem to understand “consistent with the specification” to be. What I’ve been trying to point out is that this is not the holding of In re Morris.

  34. Cepts Sunshine, the question wasn’t how many points for things later – it was specific to the action. All that later stuff, like RCE, abandonment and even allowance wasn’t part of the calcs of the question.

    Dude – c’mon this is 6 – consider the source.

  35. dude, you’re assuming that the examiner doesn’t reopen and then pull a herculean “force an RCE” manuver right straight out of his arse. However, according to those on this board, examiners do that so often that we may as well assume it as a given.

    But you’re right I was off. Technically it would now be 2.75 counts instead of 3.

  36. “Can someone remind me how many points an examiner gets for reopening prosecution in response to an appeal brief?”

    “3″

    Not sure what (if?) “6″ is thinking here.

    An examiner gets ZERO counts (points) if reopening prosecution in response to an appeal brief. An examiner gets ONE disposal count (point) for writing an examiner’s answer in response to an appeal brief.

  37. The Feds affirmed, not really addressing the inconsistency issue all all

    I would have to disagree Ned. The Feds did address the issue at the heart of the matter. Just because they did not find an inconsistency claimed by the applicant, does not mean that any such inconsistency existed, nor does it mean that the Fed’s treatment failed to address all pertinent issues.

    I refer to the Discussion, paragraph 13: Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants. Nowhere in the technical description of the invention does the application use or define the phrase “integrally formed.”

    The facts of this particular case resolve to how to reasonably construe a term of art that is not otherwise differentiated “in light of the specification” – that explicit term being “integrally formed”. While the applicants argued for only a special meaning, that special meaning was not in the specification. The applicant failed to make his case that he meant only that special limited meaning. The examiner correctly used the meaning of the term as understood in the art. This is not a case where the examiner used a rarely used obscure definition buried down a list some five layers deep for the term in question. The examiner used a definition that PHOSITA would readily accept in the case law portion of “light of the specification.” As much as the applicant tried to make the point that that portion was violated, it was not – and the applicant’s empty and conclusory statements just were not compelling.

  38. Zuntar, look at Morris. It describes the whole prosecution history and to some degree the issues on appeal. The examiner said claim term, “integrally formed as a portion of” read on the Brown prior art discussed in the patent because the Brown removable rubber pad that was sandwiched between the motor and casing was “integrally formed ON” the casing.

    The appeal to the board was this construction was wrong because it was inconsistent with the specification, which disclosed forming a compliance structure (thinned sections in a preferred embodiment) into the casing itself when it was manufactured. The Board affirmed on the basis that “integral with” included sandwich structures. The Feds affirmed, not really addressing the inconsistency issue all all, but holding that the so long as the examiner’s construction of the term is found in the extrinsic art, it will be sustained unless the specification defined the term or used it in the specification in a way that was unmistakably clear.

    The only way to interpret this, in my view, is that if there are numbers of ways to interpret a claim term, the examiner is NOT bound to construe the claim to cover the preferred embodiments unless the claim term is defined or used consistently to mean just that one thing.

    So when later cases say “consistent with the specification,” this is what they mean. They do not mean that a construction reading the claim term on the preferred embodiment is the right one unless it is all but mandated by the specification.

  39. Why is that?

    Because it’s not my problem. If I represented Microsoft perhaps it would be. I’m responding to the problems I have dealing with the PTO. I did not know we were supposed to limit our discussions to only those issues certain windbags find most compelling or egregious. I don’t think the Office ought to be granting invalid claims either. But if I’m pushing claims that shouldn’t be allowed, then let the Office put a stake through them and we can all move on to something else. I’ll tell a client an application is toast if the examiner brings forth the right art. It just doesn’t seem to happen very often. Maybe it should happen more often, but that’s the quality of the examination for you. You get a hasty word search to find 4 of 5 limitations, and then some giant stretch to cover the fifth, or some ill-conceived boilerplate combination under 103 because it’s the fastest way to points and a bonus.

  40. Q: “They never seem to complain about Examiners allowing claims that are invalid. Why is that?”

    A. We leave that to you, Malcolm.

  41. The wankers here seem to believe that the biggest problem with the USPTO right now is that they aren’t allowing enough claims. They never seem to complain about Examiners allowing claims that are invalid.

    Why is that?

  42. Ned, I’ll accept that Morris (1997) says not a word about “consistent with the spec.”

    What do you make of all of this blather in MPEP 2111:

    During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” >The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard:

    The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must “conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” 37 CFR 1.75(d)(1).

    415 F.3d at 1316, 75 USPQ2d at 1329. See also< In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).

    Why do you suppose the Manual explains this all in the introduction? I take it to mean that cases after Morris explain that the BRI must be consistent with the spec which seems, well, “reasonable.” So I don’t get how the lack of “consistent” in Morris is supposed to compel examiners to avert their eyes from the spec lest they go blind. They seem awfully quick to use the spec to support their position when such an argument can be made, but are loath to consider the spec otherwise. If examiners are required to ignore whether a construction is consistent with the spec, why do I get back arguments about why it is consistent, like “you didn’t define the term, therefore it’s consistent.” I don’t get examiners pushing back that “consistent with the spec” isn’t a requirement of their analysis.

  43. “6, you appear to admit that 10% of the time, that’s not the problem.”

    Of course, you’ve got your drafting errors and ambiguities and you’ve got your times when the examiner just wants to be an arse etc. etc.

    “But, more to the point, I think it is unrealistic and overly punitive to require a patent drafter to predict exactly what aspect of a feature is going to be claimed, and the type of language that, in the Examiner’s opinion, will distinguish the claim over art the Applicant hasn’t even seen.”

    Is it the examiner’s fault that the applicant is a cheapskate and/or won’t search the art? No, madam, it is not.

    “Now I keep talking about a circumstance in which the feature is illustrated to be at one end of the elongated member, and the spec says that it is at one end of the member.”

    Yeah, I just saw that case over at all things pros. Is that your case broje? Ahem, Barry. Or is Barry your boss attorney?

    “Now, I haven’t mentioned this previously, but if the feature is located int he middle and not close to one end, the apparatus does not function as intended, and can’t be used in the way the Applicant teaches.”

    Nobody cares.

    “But the Examiner sys the amendment is not limitation at all because “at one end” reads on “in the middle.” ”

    That isn’t really what he said in that “hypothetical” case. What he said was that your interpreting the portion which you refer to as a middle is actually an end in the reference. There is a difference.

    “Every suggestion of alternative language, such as “not in the middle,” “located entirely at one end,” “closer to one of the ends than the other of the ends,” is shot down by the Examiner as insufficient, because in his mind, he can move the target about where one end starts and the other begins at will.”

    Lol wut? Surely you could find some language that would distinguish the two and amicably resolve that situation. Poor advocacy Broje. Gotta put some force behind your suggestions not just throw them out there limp fish.

    “he says there is no way to do it, and tells us to claim a different feature. ”

    His (and your own) inability to come up with the right language doesn’t excuse your going to the board to obtain a plainly invalid claim now does it? Come on Broje, I understand it’s a tough life, but you can do better.

    ‘Now do you really think that’s the Applicant’s fault? The Examiner isn’t saying the needed language isn’t in the spec; he is saying that it would have been impossible to put the needed language in the spec in the first place.

    So it’s that 10% of the time that I am talking about. How’s that for honesty?

    I’m going to be honest with you broje, that claim was so lolably easily resolved that your failure to do so has me much more worried than the 10%.

    ” I know that claim differentiaon is only taken into account in Court, and not during prosecution.”

    Is that right? I take it into account myself, is that improper?

  44. Zuntar, your post at 1:34 pm represents the exact problem IANAE and I have been discussing for days. For PTO support, see In Re Morris, 44 USPQ2d 1023 (Fed. Cir. 1997). You will search Morris in vain for any suggestion that a claim term has to be construed to be “consistent” with the specification. If the meaning of the term is not limited to a specific meaning by definitions or some other very clear usage in the specification, the PTO seems to be entitled to read the claim on the prior art if a definition can be found that will support that reading and regardless that such a definition would exclude the preferred embodiments.

    Now IANAE and I have been debating whether a definition of the term construed in Morris could be found that would read on BOTH the prior art and the preferred embodiments. But even he seems to agree that a definition that does not read on the preferred embodiments is an unreasonable construction. But you will look in vain in Morris for such a holding.

    Actually, that was the issue on appeal in Morris, but the Federal Circuit nicely avoided it.

  45. Thanks for the point to Syzmbor!

    “It was a monotonous job, and Yossarian was disappointed to learn that the lives of enlisted men were only slightly more interesting than the lives of officers. After the first day he had no curiosity at all. To break the monotony he invented games. Death to all modifiers, he declared one day, and out of every letter that passed through his hands went every adverb and every adjective. The next day he made war on articles. He reached a much higher plane of creativity the following day when he blacked out everything in the letters but a, an and the. That erected more dynamic intralinear tensions, he felt, and in just about every case left a message far more universal.” – Catch-22

    This pretty much mirrors patent examination, in my mind.

  46. In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, must always be compared against the use of the terms in context, and the intrinsic record must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.); ACTV, Inc. v. The Walt Disney Company, 346 F.3d 1082, 1092, 68 USPQ2d 1516, 1524 (Fed. Cir. 2003)

    Once an examiner has determined which of the different possible dictionary meanings is most consistent with the use of the words by the inventor, as I know they all do, apparently the examiner is still free to insist that one of ordinary skill would read the term to mean one of the other possible dictionary meanings so long as the other meaning encompasses the prior art.

    My favorite argument goes like this: The examiner equates a feature in the prior art to a claim term, and not a word is given to justify the association. But that’s OK, the burden is now on me to disprove the association. So, I drag out a technical dictionary which provides three definitions, none of which particularly supports the examiner’s position, but one of which is very much consistent with the use of the term in the spec. I show how the feature, as presented in the prior art, is not consistent with any of the definitions, let alone the one most consistent with the use in the spec. I have now offered a credible rebuttal – the burden should now shift back to the examiner to find fault in the reasoning. The examiner’s reply doesn’t address any of this, however. The response is either “the spec doesn’t define ‘X’ so I interpret ‘X’ to be ‘Y’” (no further justification given) or “‘X’ and ‘Y’ are ‘equivalent’” (again no further explanation). Putting “equivalent” in quotes always adds weight to the argument. What caselaw are you relying on? What evidence in the spec? Where did the notion come from that any construction of any term is somehow consistent with the specification where the specification does not explicitly provide a definition? I. e., “You didn’t define ‘dispersed’ in the spec, therefore ‘compacted’ is consistent with the spec.” What kind of logic is this? This is why we go to appeal. If I could have predicted that an examiner would have equated, say, “compacted” with “dispersed” I could have written into the spec “dispersed as used herein does not comprise compacted” and then amended the claim accordingly, if need be. But I don’t have any modifiers of dispersed in the spec to fall back on, and I shouldn’t have to, at least in this kind of situation.

  47. Lots of discussion above about whether it’s reasonable for an Examiner to read “end” as “middle.” I found this to be a very timely discussion, because the BPAI just issued a decision that is considers this issue: Ex parte Syzmbor. The BPAI found the Examiner’s reading of “end” as “midpoint” to be unreasonable and to contort the plain meaning. If you’re interested, I discussed Syzmbor on my blog.

  48. So the dictionary definition of the term could have five different definitions and the patent office construction of the term could “include” all of them?

    One of the Canons of Claim Construction is that the claim term should not be interpreted in a way that would cause the claim not to read on the Applicant’s disclosed invention.

    link to patentlyo.com

    So, if they all can be used while still fulfilling that requirement, than yes. But if a definition used would cause the claim to no longer read the preferred embodiment(s), then that definition should not be used.

    However, some of those rules might not apply during prosecution. for example, I know that claim differentiaon is only taken into account in Court, and not during prosecution. So I am not sure if the prohibition against construing claims so that they no longer cover the preferred embodiment(s) apply during prosecution. I would think so, becasue the Exmainer is required to look to the originally filed specification for intrinsic evidence and express definitions. But the claim differentiation doesn’t apply until the final claim set is obtained. Does anyone know for sure which of the Canons apply during prosecution?

  49. Willton,

    The point must be too subtle for ya – “reasonable” is the crux. Moral of the story is not broad terms – there be nothing wrong with breadth (that be typically a good thing when it comes to patents). The “wrong” thing is what be reasonable – or not – and whobe deciding what be reasonable – or not.

  50. The issue, 90% of the time in these situations, is that it is only linguistically impossible to distinguish the prior art because applicants do not have WD support for the linguistics it would require. And that’s really nothing more than a failure on the applicant’s side at drafting.

    6, you appear to admit that 10% of the time, that’s not the problem.

    But, more to the point, I think it is unrealistic and overly punitive to require a patent drafter to predict exactly what aspect of a feature is going to be claimed, and the type of language that, in the Examiner’s opinion, will distinguish the claim over art the Applicant hasn’t even seen.

    Now I keep talking about a circumstance in which the feature is illustrated to be at one end of the elongated member, and the spec says that it is at one end of the member. Then the amendment is made to specify that it is at one end of the member in order to overcome art that shows it in the middle. Now, I haven’t mentioned this previously, but if the feature is located int he middle and not close to one end, the apparatus does not function as intended, and can’t be used in the way the Applicant teaches. But the Examiner sys the amendment is not limitation at all because “at one end” reads on “in the middle.” Every suggestion of alternative language, such as “not in the middle,” “located entirely at one end,” “closer to one of the ends than the other of the ends,” is shot down by the Examiner as insufficient, because in his mind, he can move the target about where one end starts and the other begins at will. Asked to propose any language that will suffice to specify the clearly illustrated and significant difference between the disclosed invention and the prior art, he says there is no way to do it, and tells us to claim a different feature.

    Now do you really think that’s the Applicant’s fault? The Examiner isn’t saying the needed language isn’t in the spec; he is saying that it would have been impossible to put the needed language in the spec in the first place.

    So it’s that 10% of the time that I am talking about. How’s that for honesty?

  51. So the dictionary definition of the term could have five different definitions and the patent office construction of the term could “include” all of them?

    If it is a reasonable construction, then yes.

    Moral of the story: stop using such broad terms.

  52. So the dictionary definition of the term could have five different definitions and the patent office construction of the term could “include” all of them?

    It depends on what those definitions are. If you claim “resolution” I don’t think a BRI could encompass both the sharpness of a computer image and formal decision taken by a voting assembly. If there’s a single broad definition of the term that subsumes the other four, then yes.

    But here we’re talking about a single very broad definition, not two mutually exclusive definitions. Connected means having some form of connection, and any form will do. It’s the same issue as in Morris. The claim term is simply too broad to meaningfully limit the scope of the claim.

  53. Paul F Morgan: “An above suggestion is to subtract applicant response delays from PTO backlog numbers. However, even in an application with three [rather than two] applicant responses, each having maximum response delays by paying all response time extension fees,* that is only 3 times the statutory six months maximum for response, thus only 18 total months of applicant delay.”

    Are you saying 18 months is not that long?

    The point I was trying to get across is that by removing applicant’s case-by-case, variable response time from the measure of pendency a more accurate measure could be taken of pendency that is under the PTO control. If one (the PTO) is trying to improve pendency you can only improve what you control.

    Can someone tell me what is wrong with that thinking? While DDC seems to think that the content of the office action does control applicant’s response, I have seen no evidence of that, but even if so how is that under the control of the PTO? Issue only positive office actions? That would require applicants to file non-BS claims. Pendency is not ALL on the PTO….it takes
    two to tango!

  54. Namwarts, good point that about “connecting” having both a common meaning and a different special meeting to one of ordinary skill in the art. This could form the basis of an argument.

    IANAE, “include?”

    So the dictionary definition of the term could have five different definitions and the patent office construction of the term could “include” all of them?

    I understand your point, I just think it has to be wrong.

  55. Shouldn’t you be charging for this advice?

    In the interest of broad claiming, I will say only that people who need this advice ought to be charged.

  56. But that’s clearly a case of bad drafting. If you’re going to use a word as obviously broad as “connected”, either define it explicitly in the spec or mention the protocol exchange in your claim. Or define a communication channel over the connection, or something.

    IANAE, Shouldn’t you be charging for this advice?

    Listen up, kids.

  57. Ned: The examiner interprets the claim terms connected and connecting to read on prior art stations that do not have the signalling protocol at all, but which are physically connected by wires.

    The examiner is not construing “connected” to mean physically connected by wires. He is construing “connected” to include physically connected by wires. His construction is simply that “connected” without more means a connection of unspecified type, which might be either the physical wires of the prior art or the data link of your spec. And he’s right, unless your claim does something with that connection.

    But that’s clearly a case of bad drafting. If you’re going to use a word as obviously broad as “connected”, either define it explicitly in the spec or mention the protocol exchange in your claim. Or define a communication channel over the connection, or something.

  58. Ned,

    I am not sure I get your hypothetical – it seems to have a forced conclusion, maybe it’s just me.

    Without actually looking at the claim set and how you use “connected” and “connecting”, or seeing what the specification actually says, I will have to take your word that “the only reasonable construction” is the signaling version. An important question to be answered is Why is that version the only reasonable construction? Other questions also come to mind. Was it expressly defined so in the specification? Is this “reasonableness” determination a legal one, or a subjective one? Is it only the applicant that feels this way?

    Secondarily, it seems that your hypothetical does not have the term in question with two alternative and distinct meanings in the art. Rather, there appears to be an art meaning and a common usage meaning. This is just a guess (as we do not have actual claims to look at), but the common usage meaning may be on its face not supportable if the “connecting” language (art) is being mistaken for common usage and the system is already connected (common). One cannot be in the process of connecting something that is already connected (both common).

  59. if applicant wants his claims to be narrowly interpreted to cover just his disclosed embodiment, then he should amend the claims IMHO

  60. IANAE, Just to give you an example, suppose the invention relates to signalling protocols between two stations physically connected to each other by wires. The result of a successful protocol interchange is the denoted as “connected” in the spec and the interchange itself, “connecting.”

    The examiner interprets the claim terms connected and connecting to read on prior art stations that do not have the signalling protocol at all, but which are physically connected by wires.

    You object that while the meaning of connected used by the examiner “embraces” both the examiner’s meaning and the meaning used in the specification, they are alternative and distinct meanings, and that the only reasonable construction of the term in light of the specification is the use of the term for signalling.

    Who is right and why?

  61. Ned: IANAE, in our prior discussion on this topic (BRI), you seem to suggest that where a term had “alternative meanings” to one of ordinary skill in the pertinent art, one reading on the preferred embodiments and another reading on the prior art, that a proper construction could include both meanings. I don’t think this is right.

    I don’t think that’s necessarily right either if the two meanings are truly distinct and non-overlapping, though I can’t think of an example of such a term – much less an entire claim that would leave room for such ambiguity. What exactly did I say in that prior discussion, and can you think of an example?

    I don’t know of a case that has considered the point, but I would think such a claim would be fatally flawed under 112 anyway so the issue should never arise.

  62. IANAE, in our prior discussion on this topic (BRI), you seem to suggest that where a term had “alternative meanings” to one of ordinary skill in the pertinent art, one reading on the preferred embodiments and another reading on the prior art, that a proper construction could include both meanings. I don’t think this is right. I can understand that a claim term that has a broad meaning that includes both the prior art and the preferred embodiment is a proper construction. But it does not necessarily follow that where a term has two different meanings, that a broadest reasonable interpretation would include both of them not just the one that was consistent with the specification.

    Do you have any Federal Circuit or other cases (including board of appeal cases) that has actually considered this point?

  63. Taking the lead from the USPTO, instead of hiring more attorneys and agents to write responses, I will hire web designers to create a dashboard so I can see how much work I have to get done and estimate how many EOTs it will take for me to clear my docket.

  64. Paul: response time extension fees which many clients refuse to reimburse their attorneys for.

    If the client instructs the attorney in good time and the attorney needs an extension, why should the client pay? If there is a delay in reporting the rejection or in filing the response, perhaps the law firm needs to hire more people to deal with its backlog.

    Backlogs are evidence of poor management, right?

    And all these big law firms have fancy websites. Maybe they should have put those web designers to work drafting OA responses instead.

  65. TINLA: IANAE, if you were really on the button, you would ask me why the Court didn’t just let the Applicant’s assertion about what the claim terms mean win the day on the basis that it is part of the prosecution history.

    No… Every prosecution history argues that the claims are allowable, but that doesn’t make the claims allowable. Applicant’s arguments may limit the claim in the issued patent, but unless those arguments are convincing to the examiner they won’t get the patent issued. There’s a big gap between arguments giving rise to estoppel (which must be argued by the infringer in court, and aren’t really up to the examiner to interpret) and an express disclaimer of claim scope.

    I continue to fail to understand why applicants have no problem insisting that their arguments should limit their claim scope, and yet they’re so strongly resistant to amending that limitation into the actual claim. Make your amendment, take your patent, and get out of the queue. There’s a backlog, in case you haven’t noticed.

    MVS: (That was always a favorite way to get cases allowed. Just call the attorney & say “You argue that the claim requires ABC. I don’t see it requiring that. Explicitly put it in the claims & I’ll allow it.” Worked almost every time.)

    That’s always been my favorite rejection, because it’s the easiest to respond to. “You argue XX distinguishes over the art, but that’s not what I construe XX to mean/XX is not recited in the claim.” I think examiners mean that more often than they say it, and I wish they’d take an extra minute sometimes to make their thoughts clearer on paper.

    MVS: Oh, and as for “definitions” in the spec, most of the time the attorney argues that something is “defined” they point to where the spec says that element A “can be” such & such. That is NOT a definition. It is a suggestion.

    Been there, done that, learned the lesson. Examples are not definitions.

  66. MVS above makes an excellent point for both examiners and applicants.
    It also reminded me of a favorate Board question at oral arguments on appeals:
    “Mr/Ms.____, you argue that claims ____ should be allowed because of ______. Please show us where we can find that in the claim itself.”

  67. An above suggestion is to subtract applicant response delays from PTO backlog numbers.
    However, even in an application with three [rather than two] applicant responses, each having maximum response delays by paying all response time extension fees,* that is only 3 times the statutory six months maximum for response, thus only 18 total months of applicant delay.

    *which many clients refuse to reimburse their attorneys for.

  68. I’ve enjoyed reading the back-and-forth between IANAE & TINLA IANYL.

    What the discussion shows, specifically the remarks by TINLA IANYL, is that attorneys want to claim XX (broad language) but want it interpreted to mean XXXX (narrow language) for examination purposes.

    Simply put, if you want the limitation of “the end” to be interpreted to mean “the terminal portion” of the item or to mean something like “the last 5%” of the item (or whatever) don’t argue it, CLAIM IT! If you say that the limitation should be read to mean that anyhow, what scope are you losing to actually claim it that way? (That was always a favorite way to get cases allowed. Just call the attorney & say “You argue that the claim requires ABC. I don’t see it requiring that. Explicitly put it in the claims & I’ll allow it.” Worked almost every time.)

    Oh, and as for “definitions” in the spec, most of the time the attorney argues that something is “defined” they point to where the spec says that element A “can be” such & such. That is NOT a definition. It is a suggestion. IF you want a definition, make it explicitly clear (& some specs do) that you are defining something by stating “thingamabob is defined in the specification & claims to mean gorgon”. THAT is a definition.

    MVS

  69. “Given that, I think that if the Examiner is making it linguistically impossible for the Applicant to amend the claim to distinguish over the cited reference(s), then it is no longer true that “Applicant always has the opportunity to amend the claims during prosecution.” ”

    Broje, you need to be honest with us here. The issue, 90% of the time in these situations, is that it is only linguistically impossible to distinguish the prior art because applicants do not have WD support for the linguistics it would require. And that’s really nothing more than a failure on the applicant’s side at drafting. So sorry.

  70. IANAE, if you were really on the button, you would ask me why the Court didn’t just let the Applicant’s assertion about what the claim terms mean win the day on the basis that it is part of the prosecution history.

    I think the way this works is that if the prosecution history reveals that the Office accepted the subject matter disclaimer by amendment or argument, then the Applicant can point to the prosecution history to show that there was an agreement as to what the claim terms meant and the Office must be held to that agreement.

    So, long story short, I think it is the case that Examiners have the discretion to allow Applicants to disclaim subject matter by argument, and that they are not required to make it so hard.

    Given that, I think that if the Examiner is making it linguistically impossible for the Applicant to amend the claim to distinguish over the cited reference(s), then it is no longer true that “Applicant always has the opportunity to amend the claims during prosecution.” In that circumstance, I think the applicant ought to be able to make the disclaimer by argument and win before a Court, especially if it can be demonstrated that the Examiner shot down every suggested amendment, and refused or was unable to propose satisfactory language.

  71. in the end the Court looked in the spec and saw nothing to support the distinction the applicant was trying to argue.

    No. The court looked at the prosecution history and saw nothing to support the distinction the applicant was trying to argue. Big difference. If the prosecution history weren’t relevant, why did they refer to it, instead of saying that the BRI doesn’t take the prosecution history into account, and that prosecution history is only relevant to a Court?

  72. See how they considered the prosecution history and the way the applicant distinguished over the art cited to be pertinent to claim term interpretation during examination?

    No, I don’t see that. I see that the Federal Circuit had to consider the argument because the applicant made the argument, but in the end the Court looked in the spec and saw nothing to support the distinction the applicant was trying to argue.

  73. What part of the case are you referring to? I read it and I saw nothing of the kind.

    This part:

    American Academy also asserts that the prosecution history of the original application that matured into the ’989 patent supports its construction of the term “user computer.” During prosecution, the PTO rejected the claims of the application based on a prior art patent to Anderson. The applicant characterized Anderson as including remote transaction terminals and a host data processing system, in which the host, and not the remote terminals, processed the transactions. American Academy argues that the failure of the applicant and the examiner to characterize the host computer as a “user computer” is evidence that a user computer is intended to service a single user. However, the applicant distinguished the Anderson reference on the ground that the application programs were run on the host computer, rather than on remote transaction terminals. In effect, the applicant analogized the system of Anderson to the mainframe and dumb terminal configuration described in the Background of the Invention section of the ’989 patent, with the remote transaction terminals of Anderson likened to dumb terminals. Thus, it would not have made sense for the applicant to compare the host computer of Anderson with the user computers of the application, since the user computers of the application were intended to replace devices analogous to the remote transaction terminals of Anderson. Accordingly, the discussion of the Anderson reference in the prosecution history of the original application for the ’989 patent does not support American Academy’s position.
    41 Finally, American Academy points to an inconsistency between the Board’s construction of the term “user computer” and that of the district court in American Academy’s litigation against Novell. In the district court litigation, the court construed “user computer” to refer to a computer that serves one user at a time. However, the Board is required to use a different standard for construing claims than that used by district courts. We have held that it is error for the Board to “appl[y] the mode of claim interpretation that is used by courts in litigation, when interpreting the claims of issued patents in connection with determinations of infringement and validity.” In re Zletz, 893 F.2d 319, 321 (Fed.Cir.1989); accord In re Morris, 127 F.3d 1048, 1054 (Fed.Cir.1997) (“It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.”). Instead, as we explained above, the PTO is obligated to give claims their broadest reasonable interpretation during examination. Under that standard, it was proper for the Board to construe “user computer” to encompass the mainframes and minicomputers of the cited prior art.

    See how they considered the prosecution history and the way the applicant distinguished over the art cited to be pertinent to claim term interpretation during examination? See how they considered the interpretation by the court to be not pertinent?

  74. The dashboard is interesting and may be useful for the USPTO to convince Congress that it needs more funding, but its not really helpful to applicants, becasue USPTO-wide statistics are not a good indicator of what is happening in a specific group/art unit/application.

    I also find the 95% quality statistics hard to swallow. Do you pass quality review if the claims are rejected for reason A and quality review determines that the claims should be rejected for some reason? The Applicant only can respond to the rejection that was made, so if reason A is bogus, that should fail quality review.

    Do you pass quality review if the claims are rejected for reasons A, B and C and quality review determines that reason B (but not A or C) was valid? That gives a “pass” on bogus rejections that Applicants have to respond to.

    As for the Examiner numbers, of course Examiners will leave for various reasons, but the same number or more should be hired, particularly in this economy when law firm hiring is down.

  75. Even the court in that case considered it pertinent what the Applicant argued and the prior art that was cited during prosecution.

    What part of the case are you referring to? I read it and I saw nothing of the kind.

    What I did see was the court saying that the PTO is free to ignore unpersuasive arguments about what claim terms mean, when they’re conclusory and based on no evidence, and when there is no explicit and limiting definition in the spec.

    The case you cited is pretty much a love letter to BRI.

  76. IANAE and MM, even the case that the PTO relies on here:

    **>Although< claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004).

    Even the court in that case considered it pertinent what the Applicant argued and the prior art that was cited during prosecution. They didn’t agree with the assertions about what the prosecution history revealed, but they did consider it relevant to the claim scope during reexam. The only thing that Court discounted as irrelevant was an interpretation of the claim language made by a Court during enforcement of those claims in the issued patent.

    So this is yet another case where the PTO has misinterpreted and misapplied caselaw in the MPEP. Here, they take some statemernts from that case out of context to make it seem like they don’t have to consider the prosecution history, when even that Court in that case apprently considered the prosecution history to be relevant, and that it should be considered by the BPAI in interpreting claim scope.

    When we write the original application, we get to expressly define claim terms in the spec. When we add claim terms during prosecution that are supported int he drawings, then we should be permitted to expressly define them at that time as consistent with the disclosure int he drawings.

  77. Thus, the Examiner is still required to take into account the prosecution history when determining the meaning of the claim term.

    You’re interpreting MPEP 2111.01 to mean that a claim term means whatever you say it means? LOL.

  78. Thus, the Examiner is still required to take into account the prosecution history when determining the meaning of the claim term.

    See, now you’re the one taking liberties with interpretation. That part of the MPEP doesn’t say that every bit of the prosecution history is necessarily relevant, but simply that the prosecution history may be one possible source of information about what a person skilled in the art might understand a term to mean.

    Though really the knowledge of a person skilled in the art is a question of pure fact, so the only remotely convincing source of such information in the prosecution history would be Rule 132 affidavits. I’ve gotten such cases allowed on the strength of Rule 132 affidavits before, but if you’re not going to file one you shouldn’t expect the examiner to back down from any reasonable interpretation of a claim term.

    In any event, I maintain that if you’re going to argue that your claim term should have a meaning narrower than its broadest reasonable interpretation, and if your ultimate claim scope is going to be that narrow because of estoppel anyway, you really have nothing to lose by explicitly amending that scope into the wording of the claim. Your client doesn’t care if you win the argument with the examiner, he just wants his claims allowed.

    My arguments in that respect should prevent the Examiner from taking a different view.

    If that were true, a monkey could do our jobs. Competently, I mean. I’ve seen quite a few applications that looked like they were drafted on a thousand typewriters.

  79. it doesn’t matter what estoppel will apply in court, because (1) the examiner has to take the broadest reasonable interpretation of the claims anyway,

    IANAE, you are simply wrong if you think the Examienr does not have to take the prosecution history into account when interpreting the claim language. While it is the case that MPEP 2111.01 states:

    **>Although< claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004) (The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation >in light of the specification< .).

    However, it goes on to say:

    “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., *>415 F.3d 1303, 1313< , 75 USPQ2d 1321>, 1326< (Fed. Cir. 2005) (en banc). ... The ordinary and customary meaning of a term may be evidenced by a variety of sources, >including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.”< Phillips v. AWH Corp., *>415 F.3d at 1314< , 75 USPQ2d **>at 1327.<

    Thus, the Examiner is still required to take into account the prosecution history when determining the meaning of the claim term. If you think I do not routinely say expressly what the amendment language means, and how it distinguishes over the cited reference(s), then you are mistaken. My arguments in that respect should prevent the Examiner from taking a different view.

  80. Back in my day the see-saw had three different pivot locations, so you could place the fulcrum off-center to accommodate two people of different mass.

    I remember those. That was so the massively challenged kid wouldn’t catapult the skinny kid over the monkey bars, as I recall.

  81. “From your point of view you want us to have blueprint claims that only the inventor’s prototype could ever infringe,”

    Not really. I want you to say what you mean. That’s about it. There are your run of the mill tardtorneys who don’t understand this. Then there are the quality attorneys who draft a patent properly.

    The question that every attorney needs to ask themselves is: Do you want to be a tardtorney or a quality attorney?

    “In fact you can quote me as saying that the art of claim drafting is being vague to exactly the right extent.”

    There are two types of vagueness that are relevant here. The first kind is just the deletion of unimportant things but still getting all the important things across clearly. The second kind is deletion of important things so much so that you don’t get your point across clearly and get busted. It might be a fine line, but I like to encourage drafters to be competent enough to know the difference and adhere to it strictly. Furthermore, to err on the side of caution, at least in the spec.

  82. Alun Palmer: We are always intentionally vague.

    Judging by your comment and my recent exchange with Ned, I don’t think you two know the difference between “vague” and “broad”.

    One is good, the other is bad. I leave the determination of which is which as an exercise for the reader.

  83. TINLA: But when you have a prior art reference that shows a feature in the middle, and then you amend to say at an end to distinguish over that reference, then you will be estopped in court form attempting to assert that claim against an allegedly infringing product that has the feature in the middle.

    Yes, you amended to say “at an end” with the intention of distinguishing over that reference. However, your amendment was not specific enough to distinguish over that reference, because an “end” can mean any length of the member that extends continuously to the extremity.

    Furthermore, it doesn’t matter what estoppel will apply in court, because (1) the examiner has to take the broadest reasonable interpretation of the claims anyway, (2) the examiner can’t be expected to apply every single nuance of the court’s ultimate claim construction anyway, and (3) you haven’t distinguished the reference anyway, so you’ll still have to narrow the claim further.

    And all because the word “end” is capable of meaning more than you’d like it to mean. Amending subsequently to a prior art rejection isn’t the same thing as distinguishing the prior art by amendment.

    TINLA: Only in some hyper intellectual world devoid of reason and context could “at an end” be construed as “in the middle.”

    No, it can also be so construed at the playground, by children on the see-saw. Back in my day the see-saw had three different pivot locations, so you could place the fulcrum off-center to accommodate two people of different mass. In that case, the lighter person’s “end” of the see-saw would be more than 50%. That’s a perfectly reasonable construction of the words you chose to use. If you’re not happy with that construction, use better words.

  84. Ping, I want my “at an end” to be interpreted more broadly than “all the way at one terminal end.” I have illustrated embodiments that show it “all the way at the end” and “near one end” as in IANAE’s “end portion.” By amending to say “at an end” to overcome a reference that shows it “in the middle,” a PHOSITA, upon reading the specification, claims, and prosecution history, would be compelled to interpret the claim to mean “not in the middle, but not necessarily all the way at one end.”

    In the grown up art units, we would put some written description support in the specification saying that “in some embodiments, the doohickey can be attached anywhere along the terminal 49% of the unit” or something like that.

    Otherwise it’s vague, bro’. “The middle” is not a precise term. “The end” is not a precise term. Deal with it.

  85. Alun We are always intentionally vague. In fact you can quote me as saying that the art of claim drafting is being vague to exactly the right extent.

    I love it when the truth leaks out.

  86. you aint listening – IANAE shifted the question just enough to “end portion” and was no longer talking about your “end”. His “end” aint the same as your “end”.

    Ping, I want my “at an end” to be interpreted more broadly than “all the way at one terminal end.” I have illustrated embodiments that show it “all the way at the end” and “near one end” as in IANAE’s “end portion.” By amending to say “at an end” to overcome a reference that shows it “in the middle,” a PHOSITA, upon reading the specification, claims, and prosecution history, would be compelled to interpret the claim to mean “not in the middle, but not necessarily all the way at one end.” Why can the Examiner interpret it otherwise?

    It seems to me that ten years ago we did not have Examiners playing all of these word games. You made an amendment and it was interpreted in a way that it distinguished over the cited reference as it was intended to do. But this new word game disease started under Dudas and now has infested the Office, resulting in the problems we have now with pendancy. Something needs to be done to stop Examiners from interpreting amendment language in the way most unfavorable to the Applicant, or we will continue to have these problems.

  87. The Patents Dashboard is a content free cartoon like presentation of data doesn’t scratch the surface of the complexity or urgency of the pendency issues facing USPTO or our economy.

    Consider the graphics to data ratio…big colorful dials with dismal data stuck in the middle. Can you tell from these “gauges” that pendency is going up, that the number of examiners is going down or that the backlog will be around for a long long time?

    CALLING EDWARD TUFTE…WE NEED A VISUALIZATION MAKEOVER.

    link to searchthewayyouthink.blogspot.com

  88. 6, sure you want to discourage intentional vagueness. From your point of view you want us to have blueprint claims that only the inventor’s prototype could ever infringe, but those kind of claims are no use to our clients. We are always intentionally vague. In fact you can quote me as saying that the art of claim drafting is being vague to exactly the right extent. That’s why we write arguments and not agreements. Anyone expecting an examiner and a patent prosecutor to see claims the same way is living in cloud cuckooland.

  89. TINLA,

    you aint listening – IANAE shifted the question just enough to “end portion” and was no longer talking about your “end”. His “end” aint the same as your “end”.

  90. DDC say: “applicants typically respond much more quickly when examiners indicate particular amendments that would lead to claims being patentable over the prior art”.

    And this information comes from where? Supposition? Many times I have seen examiner’s suggestions completely ignored.

    None the less….it can not be denied that applicant’s response time is out of control of the PTO.

    Perhaps then all the PTO needs to do is change the SSP to 1 month in order to decrease pendency?

    How about if applicants would merely present INITIALLY the broadest along with the most specific set of claims they are willing to take…that might speed up the process and reduce the pendency.

  91. “That’s exactly how you might understand a playground see-saw, for example. You sit at one end, the other person sits at the other end, though neither of you is sitting on the lateral extremity. Anything this side of the fulcrum is your “end” of the see-saw. Unless you can further define the attachment point, e.g. relative to other attachment points on the elongated member, you’re in for a fight.”

    IANAE, in this case, the Examiner was saying that an end could be 50% or even more of the length of the elongated member. But when you have a prior art reference that shows a feature in the middle, and then you amend to say at an end to distinguish over that reference, then you will be estopped in court form attempting to assert that claim against an allegedly infringing product that has the feature in the middle. On that basis, the Examiner should admit that the limitation distinguishes over the reference. Only in some hyper intellectual world devoid of reason and context could “at an end” be construed as “in the middle.” It’s ridiculous, and I can’t believe you are defending such an interpretation and saying that it is the drafter’s fault.

  92. why does an organization that complains about insufficient resources, etc spend money on things like the dashboard? Certainly thee resources could have been better used.

  93. Dude asked: wouldn’t it be more beneficial to have a gauge showing the pendency minus applicant’s response time? After all this is the only part of the pendency that is under their control.

    DDC Responds: I don’t think that your premise is entirely accurate. Namely, applicant-examiner behavior is typically dynamic and responsive. Actions taken by the examiner certainly impact the timeliness of applicant responses. For instance, applicants typically respond much more quickly when examiners indicate particular amendments that would lead to claims being patentable over the prior art. If we were dividing blame/praise, the PTO should probably receive some of the credit for the rapid applicant response in that situation.

  94. “Examiner’s do wind up backing off the rejection when they see what kind of impossible linguistic obstacle they have created, ”

    I enjoy those situations. It’s usually drafting incompetence that leads to them. Or intentional vagueness. Both of those are things which I wish to discourage, not encourage.

  95. Since the PTO is trying to improve its pendency…wouldn’t it be more beneficial to have a gauge showing the pendency minus applicant’s response time? After all this is the only part of the pendency that is under their control. Wouldn’t this be a more accurate measure of the PTOs pendency time and how they are improving (or not)? I suppose it is not done as the process of getting such data might be complex however the way it is measured now shows time that is out of the PTO’s control.

  96. What about claiming “at an end of an elongated member” and the Examiner still says that reads on “in the middle and nowhere near the end” as shown in the art?

    Ooh, that’s a good one. I’ve prosecuted claims like that before.

    If you show an embodiment where it’s at an “end portion” rather than right at the tip, the examiner is entitled to construe that “end portion” to be as big or as small as he needs it to be. Maybe the elongated member is split down the middle between a first end and a second end, according to his construction. He can’t reasonably construe it to be limited to the very extremity, because then it wouldn’t cover your preferred embodiment. And even if that were reasonable, it still wouldn’t be broadest reasonable.

    That’s exactly how you might understand a playground see-saw, for example. You sit at one end, the other person sits at the other end, though neither of you is sitting on the lateral extremity. Anything this side of the fulcrum is your “end” of the see-saw. Unless you can further define the attachment point, e.g. relative to other attachment points on the elongated member, you’re in for a fight.

    That’s a classic case of the broad construction being the drafter’s fault.

  97. What about claiming “at an end of an elongated member” and the Examiner still says that reads on “in the middle and nowhere near the end” as shown in the art? And when I ask the Examiner to come up with any words in the English language that will effectively limit the claim to the difference I want to to claim, he says it’s not his job to propose language, and eventually tells me to just claim some other unclaimed feature (that I already know is in the prior art).

    This sort of thing happens ALL THE TIME. Occasionally, Examiner’s do wind up backing off the rejection when they see what kind of impossible linguistic obstacle they have created, but Examiners mostly get so invested in defending their unreasonable interpretation of amendment language, that no word or phrase can possibly distinguish over the art, even though a difference is clearly illustrated and discribed. Sometimes, a call to the supervisor helps, but there are a suprising number of supervisors who are willing to play along with simply blocking any effective claiming of the patentable feature.

  98. What irks me is when an Examiner states that my amendment to say “black” includes shades of “white,” won’t back off his brodest unreasonable interpretation of the claims and calls my argument unpersuasive,

    When I first realized that the examiner probably feels the exact same way about me, it completely changed my life.

    If you really claimed “black”, sure, that’s a bad rejection. But when you claim “a black portion” or “a black region” or “a black surface” or “comprising black” and the examiner cites a black and white checkered surface, he’s not wrong. It’s entirely possible that you didn’t claim exactly what you thought you claimed. What’s more, your arguments will never be persuasive until you allow yourself to understand what the examiner means, and respond directly to that.

    If the examiner’s interpretation is truly unreasonable to a person skilled in the art, file a one-page Rule 132 affidavit. Even if it’s signed by the inventor or his boss, it’ll probably do the trick.

    although the arguemnt constitutes estoppel by argument that prevents the claim from being interpreted the way the Examiner says,

    If you’re so confident about that, put it in the claim. What have you got to lose at this point? And at least your client will understand why his claims are so limited when they wind up in litigation.

  99. What irks me is when an Examiner states that my amendment to say “black” includes shades of “white,” won’t back off his brodest unreasonable interpretation of the claims and calls my argument unpersuasive, although the arguemnt constitutes estoppel by argument that prevents the claim from being interpreted the way the Examiner says, the client abandons the application, and the Office calls that “error free.”

    Regarding the “dashboard,” I’d like to see a redline on those “pressure guages” at 36 months and above. And I think the Office will soon have switch to a logarthmic scale to accomodate the apparently inevitable growth in pendancy.

  100. Not to mention the obvious selection bias that applicants appeal only cases they think they can win on appeal, and abandon/amend the ones they think they can’t.

    You’ve been away from teh game too long, and your ivory sheen shines through.

  101. Either that or it has a strange assessment of what an “error” is.

    It probably does, but our assessment is likely equally strange.

    Many of us, not only because we’re on the internet, but also because we’re lawyers, consider any statement adverse to our client’s position an “error”. I don’t mind the examiner making a reasonable rejection that I have to argue against, even if it turns out that my original claims are good over the art. If the examiner thinks a rejection is reasonably arguable, it’s up to me to explain to him why my client is entitled to that claim.

    What I don’t like is second actions that completely ignore the arguments in my first response, or declare them “moot” but present substantially the same rejection again.

    Even a high reversal rate at the BPAI isn’t necessarily evidence of an error, unless you have actually seen the Board explicitly state in 50% of cases that the examiner has made an error. The BPAI may side with the applicant for a variety of other reasons, most notably the applicant spending more money and arguing more clearly on appeal, the applicant arguing in person on appeal after having never requested an examiner interview, changes in law in the interim, or the case being a judgment call that could have gone either way.

    Not to mention the obvious selection bias that applicants appeal only cases they think they can win on appeal, and abandon/amend the ones they think they can’t. If we’re only winning 50% of appeals for our clients, maybe we’re the ones doing something horribly wrong.

  102. The USPTO’s assessment that 95% of its non-final and final Office Actions are error-free is delusional. Either that or it has a strange assessment of what an “error” is. My own experience is that the vast majority of Office Actions are riddled with errors with probably about half of rejections being withdrawn without any amendment being needed.

    The BPAI reversal rates expose the USPTO “error” statistics as fantasy: the reversal rates – where the Examiner is administratively adjudicated as having made an error – are about 50%, and those are the cases where the Examiner and her supervisor have had numerous opportunities to reconsider and withdraw the erroneous rejections.

  103. Looks more like a tachometer than a speedometer to me. We all know higher numbers on the tachometer mean less efficient running and worse economy. Not to mention what it says about the guy behind the wheel.

    I’d like to see a “redline” region above 60, as well as an odometer showing the most recent patent number issued – or perhaps the most recent application number filed/examined.

    J. Daulton: The PTO should put more people to work doing the fundamentals — examining applications — and less people to work on generating fancy computer graphics.

    I don’t think they get examiners to do the website graphics.

  104. How many bureaucrats and how many tax dollars were used to put together this visual presentation to tell us information that we already suspected? The PTO should put more people to work doing the fundamentals — examining applications — and less people to work on generating fancy computer graphics.

  105. I almost forgot guys, 4th IDS done today.

    In other news, water is still wet and Ned still will not answer the request for case law validating his wacky version of BRI-IMHO-Ned Law.

  106. Sorry, the fine print does indicate that the pendency of divisionals shown is the total time from the original [priority claimed?]filing date to the issuance of that divisional, thus including prior parent pendency, but I could not do a “cut & paste” for you.

  107. Finally, honest patent application pendencies:
    “Traditional Total Pendency Including RCEs”

    Plus a revealing disclosure of 69.4 months pendency for divisionals? [Amazing, when you consider that this makes the real pendency the sum of all that plus the preceeding pendency for its [identical specification] parent application before the divisional was filed?]

  108. I almost forgot guys, 4th IDS done today. 2 references, both meh relevant to the spec or claims, but neither will be good enough to use in any sort of rejection save perhaps a dep claim (doubtful).

  109. “Better add some room for that there “top speed”.”

    Glad I’m not the only one that noticed the margins for growth of the pendency on some of those is very tight. How long before they’re having to “normalize”/”right-size” the board pendency gauges?

  110. Anyone else note the irony that a speedometer style of gauge is used and that the “faster” you go, the “slower” the Office is?

    Better add some room for that there “top speed”.

  111. I was hoping for an easy-to-understand five-color-coded system, where each color had a simple label with a circular definition. You know, such as red corresponding to “Severe”, meaning that there is a “Severe Risk of Backlog”.

    But I guess they wanted to go this way instead.

  112. “The number of examiners has been decreasing?”

    Mhmmm. What? Did you think a little thing like a recession would keep examiners from leaving and some getting fired? We lost 2 in my AU this past year. My best friend atm is leaving shortly as he’s now in grad school. Just now gained one examiner in my AU though.

  113. “If examiners realize that they are going to be faced with an appeal as opposed to an RCE they will issue better (or maybe even fewer) final rejections.”

    You say that but you offer no evidence. On the other hand, I myself being someone in a position to know (as I can directly dictate the outcome) naysay you.

  114. What is needed is to significantly increase the number of Board judges and thereby reduce the appeal time.

    This makes appeal a more desirable option than RCE after a final rejection.

    If examiners realize that they are going to be faced with an appeal as opposed to an RCE they will issue better (or maybe even fewer) final rejections.

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