136 thoughts on “Filing of Continuations and RCEs: 1998-2007

  1. “RCE filing rates increased as PTO allowance rates decreased.”

    That’s because, every time you file a RCE, the PTO considers the RCE a new application and adds a +1 to it’s list of applications that were never allowed.

    While allowance rates are dropping, they are still much higher than the official numbers from the PTO.

  2. “The PTO has made it much more difficult to obtain allowance of claims which just a few years before would be allowed; and the reaction of practitioners was to file RCE’s to try again to get the claims allowed, perhaps by making minor claim revisions and/or by presenting different and/or more extensive supporting arguments.”

    I disagree. Examination quality has gone down. Due to this and examiners gaming the system for counts, practitioners typically have to file RCE’s just to get the action that SHOULD have been the FOAM.

    Unless I’m dealing with a primary, half of the time I don’t even know what the position of the examiner will really be until I file the RCE and get the real search performed.

  3. RCE filing rates increased as PTO allowance rates decreased. No one should be surprised. Practitioners are not trying to “game” the system, just trying to best represent their clients in view of changing PTO practices and new decisions from the courts.

    link to patentlyo.com

  4. Fun and games.

    I file a lot of RCEs. Some times we didn’t get the initial claims right the first time around. And, indeed, every once in awhile will find a case where a dummy claim was filed for a rush continuation before issue of the parent case, and a preliminary amdt wasn’t filed in time.

    But most of the time, it involves final rejections that shouldn’t be finals. Also, the standard policy for several of our larger clients is to try an amendment after final to clean up the claims for appeal, but most of those are rejected, so just file the cleaned up claims as an RCE, and then if not allowed, appeal. A surprising number of our RCEs are allowed on the first office action after the RCE after having the after final amendment rejected.

    I know and respect Prof. Lemley, but cannot help but wonder if he fully realized the gamesmanship going on with RCEs, primarily on the part of the examining corps, but also on the part of some practitioners. He is measuring something, but I suspect he isn’t measuring what he thinks he is.

  5. justagEEk — that would be an interesting/informative graph.

    The PTO has made it much more difficult to obtain allowance of claims which just a few years before would be allowed; and the reaction of practitioners was to file RCE’s to try again to get the claims allowed, perhaps by making minor claim revisions and/or by presenting different and/or more extensive supporting arguments. Now in view of KSR and the recognition of new PTO patentability standards, many patent practitioners are not pursuing the broader claims and so allowance rates are increasing. RCE and continuation filings probably would have decreased last year had it not been for the threat of the PTO’s proposed rule changes. It will take awhile for those RCE’s and continuations to work their way through the PTO, but that was a self-inflicted wound.

    If the PTO can use better managerial techniques to increase the examiner retention rate and to provide the examiners with improved and additional searching tool, the backlog will slowly decrease IMO.

  6. There have been rare times I’ve presented claims directed to a competitor’s product in a continuation. The claims were supported by the disclosure … else I wouldn’t have drafted them that way or filed them. Typically, the competing product is merely an embodiment of what is disclosed in my client’s application, not some new evolution over it. Technically, sure, the inventor hasn’t considered every last potential embodiment, so he hasn’t considered the one that the competitor put out. But if that competing product is fairly described in the spec such that claims properly can be presented in a continuation, then there is absolutely nothing unethical about so presenting them.

    Interesting approach some have to this discussion. Take the posted RCE trend, cast continuations with claims drawn to competing goods as the demon (as if that’s the problem, rather than the RCE as a means to continue the fight toward allowance), strongly imply that the great majority of attorneys are knowingly unethical (with no supporting evidence and in disregard of not one but two different disciplinary codes waiting to punish the bad actor), and mock anyone who disagrees and says he’s honest/diligent. It must be an election year.

  7. Query, I regret to inform you that I don’t know of any blogs where you can slag off the European patent system. I don’t even know of any where Europeans can slag off the European system. So, there’s a gap in the market. Dennis spotted it many years ago. Occasionally he posts items on European aspects, and contributers duly slag off the European system. If you want more such items, why not suggest it to Dennis. Your criticisms of the European system I will read with great interest (like M Mooney’s yesterday, on “technical”, in another thread). Meanwhile, if I may, I will continue blogging. The responses to my comments I often find valuably educational. That’s why I do it.

  8. Mooney, I told you to stop using my name. And stop calling me all the time. I don’t want to see you anymore.

  9. Every time I think about whether to file an RCE or not, I like to err on the side of filing an RCE because of my innate greed and my underlying desire to do a disservice to my client. But then that is just the type of person and patent attorney I am, edstirling.

  10. Max

    Are there any European weblogs where we Americans can post our comments on the deficiencies of the European system?

  11. Dear RCEsFuelTrolls:

    Do litigators have any responsibility for the high cost of today’s patent litigation?

  12. Eye, I confess, I have no experience with expert witnesses in US patent trials, only with the way the English court 1) hears technical experts in patent trials and then 2) reaches a decision. There’s one judge and no jury. The judge has a science or engineering background, and was a patent trial advocate for many years, before he took up judging. The expert’s task is to help the court to put on the mantle of the PHOSITA. I suppose all this is a million miles away from a patent trial in the USA, with a jury deciding on the facts. Not sure your medical malpractice idea helps us here. Professionals can see the problems their fellow professionals face (There but for the grace…..go I). So, if a technical expert were to be accused of malpractice, I also wouldn’t have much confidence in a bunch of patent trial technical experts filling the jury bench. But if the patent case is about “chemistry”, the finder of fact ought to know what “chemistry” means, no?

  13. I guess you are being sarcastic Max. I also guess you don’t have a lot of experience dealing with “experts.” The other problem with professional “experts,” is that once they have weighed in on one matter, they become sort of a lesser tribunal of their own. If the jury pool is a limited universe of “experts” sooner or later they will encounter a situation where they will be in a position to contradict themselves somehow. With a lay jury selected from a deep pool, you don’t have that problem.

    You brain surgery analogy is poor. Its like suggesting that I said a lay person should prepare the application. I said no such thing. But I can guarantee you that if I was a plaintiffs attorney in a medical malpractice case I would not want a bunch of doctors in my jury pool.

  14. “This is about greed. RCE = easy money for practitioners and examiners alike. Nobody is ever “forced to file an RCE”.”

    I don’t charge extra for a RCE. I charge what I would for any response.

  15. This is about greed. RCE = easy money for practitioners and examiners alike. Nobody is ever “forced to file an RCE”.

  16. Great comment, Eye. A jury with some inkling of the technical content of the case will be harder to “work with”, you write, so best fill the jury bench with “regular” people who know nothing. And, anyway, they will do the job better because they think(?) outside the box and see something the experts don’t see. Do I take it that, when you need heart surgery, you will be dismissing the “technically trained” surgeon, and asking instead for a regular person to do the surgery, because that person might see a key thing, that the surgeon doesn’t. Is that your point? Or is it that patent litigants can make do with regular juries but, for your own case, you want the best “technically trained” expert you can get?

  17. Fuel,

    the problem is that as the jury gets smarter, they become harder to work with, more susceptible to influence, and more subject to their own technical or political biases, such as an angry computer professional with a bug up their bu tt about Microsoft. I, for one, never underestimate the ability for “regular” people, not only to fathom complex technology (subject to the ability of the attorney to simplify it without making it too simple), but to add some outside-the-box wisdom that would be impossible with a technically trained jury.

  18. “who discloses an inoperable invention?”

    Who asks such a naive question? Did an adult capable of typing actually ask that question??? The pollyanna’s around here really make me want to puke.

  19. e6k, it was real. a real mutha. i hear you bro, I am older and more jaded, but was where you are now dude and all i have to say is, for those about to work out, i salute you!

  20. MaxDrei, when the “wheels of justice” turn slowly, stupidly, and without tether to the realities of the practice, lawyers tend to make a lot more money. Other than that noble cause, I can think of no good reason for supporting the present continuation practice which can yield such ridiculous and unfair results.

    I’ll readily admit my bias as a litigator — although I’ve represented both patent holders and alleged infringers — but the sooner the prosecution bar stops blaming examiners for every fault in the system and starts taking a share of the responsibility, the better off everyone — including our clients — will be.

  21. I’m deeply impressed, Fuel, that you are an experienced US patent attorney. I am bound to conclude that there are hundreds more US patent attorneys out there, with views like yours. I had no idea. Normally, they keep such provocative thoughts to themselves. Anonymous blogs do have their uses.

  22. MaxDrei, I don’t know what you’re getting at, but I’m quite American, I assure you.

    Hank,

    “If you’re upset that the PTO is doing a miserable job, especially when it comes to reviewing continuations for written description and enablement, take a number and get in line.”

    I’m not saying that the PTO is guiltless in this mess, but it defies reason to lay 100% of the blame at the feet of the examiners. You know very well how the sausage is made, and perhaps these continuations might hew closer to the spec if the prosecutor spent ten more minutes explaining to the client how over-aggressive claiming can risk 112 problems. But then, the prosecutor has little reason to worry about her client getting caught, since so few patents are invalidated on 112, so why spend time in your budget that could be used for other tasks. Sure, that voice in your head may be telling you, as you read the spec, that these claims don’t seem to match up very well, but ignore it — it’s the examiner’s job, and if it gets past the examiner it just means you did a really good job, right?

    “And there’s certainly no patent that is so clear that a tricky defense attorney, like you perhaps, can’t gin up some thoroughly phony inequitable conduct charge either.”

    I can’t speak for others, but I’ve only had one case where we asserted inequitable conduct. We may have suspected it in others, but good-faith is as much a requisite element of pleadings as it should be in applications.

    “Heck, let’s just strike the whole 7th Amendment. Certainly nobody is as smart as us lawyers.”

    So you have no problem with the validity of your client’s patent — claiming inventions devised by inventors with degrees in science and engineering and years of experience in the field, subjected to years of scrutiny by a Patent Office examiner, and litigation teams with technically-trained lawyers and paid experts with degrees and experience in the same field — being adjudicated by a random selection of people including high school dropouts and humanities majors with no technical experience, after only a few days exposure to the facts of the case?

    I grew up in a blue collar family and have great respect for anyone who works hard, but the simple fact is that these cases are not amenable to rational disposition by a lay jury. I’m not saying these cases should be decided solely by lawyers, but perhaps a jury of people with training and experience in the relevant art might be a step in the right direction?

  23. Well guys it’s been a great stay here on PO, but we have new rules of the road being implemented and I’m not supposed to post anymore if my interpretation of the rules is correct. At least from work. Either way I started back working out and I don’t really have time in my day for doing both. I might occasionally stop by from home and check up on TvD etc. but I bid you all farewell.

  24. “…lax rules governing continuation practice have created opportunities for prosecutors to game the system to obtain for their clients claims for subject matter that they didn’t possess at the time of the alleged invention.”

    The rules are not lax. The rules are very clear: if you file a continuation, have co-pendency, and properly make your priority claim, you’re entitled to file the continuation.

    If you’re upset that the PTO is doing a miserable job, especially when it comes to reviewing continuations for written description and enablement, take a number and get in line.

    I am familiar with the presumption of validity and the clear and convincing burden, but what it sounds like is that you’re upset that litigators for patentees are able to shout louder than you.

    “There’s no patent so clear that it is immune to being thoroughly obfuscated by patentee’s counsel during a jury trial.”

    And there’s certainly no patent that is so clear that a tricky defense attorney, like you perhaps, can’t gin up some thoroughly phony inequitable conduct charge either.

    “Judges don’t get the technology most of the time, and jurors can’t be expected to either. Certainly one aspect of patent reform ought to be a constitutional amendment exempting patent litigation from the Seventh Amendment right to a jury trial”

    Heck, let’s just strike the whole 7th Amendment. Certainly nobody is as smart as us lawyers.

  25. Crikey. What’s going on? Yet another newcomer to this blog exhibiting like the little boy who pointed out that The Emperor has no clothes. Seen from outside the USA, what RCEsFuelTrolls writes is The Voice of Reason, screamingly evident for a long time, from “first to file” and “added subject matter” Europe. Could it be that the person calling him/herself RCEsFuelTrolls is not actually a patriotic American but, rather, some tricky fellow mailing out of somewhere like China.

  26. “Me too. But let’s be clear – there’s nothing unethical per se about drawing a claim to cover a competitor’s product that appeared after an application’s priority date. If there’s insufficient Section 112 support for the claim, then that’s another matter.”

    It’s absolutely unethical if there’s a reasonable belief that the inventor didn’t possess the newly claimed inventions at the time of the priority date — despite whatever after-the-fact rationalization can be done with the specification during prosecution of the continuation. That should be recognized as a breach of the duty of candor. There ought to be a higher burden placed on the applicant to show precisely where in the original spec that each limitation in the continuation claims is supported. If the inventor truly had possession of the invention, and the original application simply didn’t capture the full scope of the disclosure in the spec, then there’s nothing unethical about the practice — but more ought to be asked of the prosecutor and her client to ensure that the new claims are not being supported by mere post-hoc redefinition of terms in the spec.

    “Yes, judges do need to be better educated about written description and enablement. You’re a litigator. Why don’t you do it?”

    Who says I don’t? Just because the arguments fall on ears deafened by the sound of the patentee’s attorneys screaming “presumption of validity!” from the rooftops, doesn’t mean we don’t try. Judges get to see these cases for a few weeks. Prosecutors get to see them for years. Who’s in the better position to prevent abuses?

    “So if you’re such a hot shot litigator, how hard can it be to invalidate all of these terrible continuation patents on written description or enablement grounds?”

    I never claimed to be a “hot shot” but if you’re unfamiliar with concepts such as the presumption of validity, and burden of proof, then you surely aren’t one either.

    “Or have you tried that and failed?”

    The results have been mixed. There’s no patent so clear that it is immune to being thoroughly obfuscated by patentee’s counsel during a jury trial. Judges don’t get the technology most of the time, and jurors can’t be expected to either. Certainly one aspect of patent reform ought to be a constitutional amendment exempting patent litigation from the Seventh Amendment right to a jury trial, and more judges ought to recognize their limits and appoint special masters and court-appointed experts to assist with understanding the relevant art and arriving at dispositions that are both legally and technically sound.

    “Surely these lowly prosecutors can’t be capable of such sophistry as to defeat the valiant efforts of one so mighty as yourself?”

    I’ll ignore your tone, and just say that I don’t where I disparaged prosecutors as a group. I’m merely stating what should be painfully obvious to everyone: lax rules governing continuation practice have created opportunities for prosecutors to game the system to obtain for their clients claims for subject matter that they didn’t possess at the time of the alleged invention. Whether the prosecutor is acting merely as a zealous advocate for her client or is crossing the line into inequitable conduct is simply a matter of degree, based on the specific facts of that file.

  27. your mutha,

    You are correct as usual.

    LL,

    0 for forever is a pretty low average. But keep swinging away. You may actually make contact at some point.

  28. loosey, those upstairs are metally deficient politicos. they are the cause of all that is bad in ip. i would like to personally kick them all out on their keisters. i would actually pay for that privilege!

  29. “Raoul Duke”,

    You are fight about most SPEs, unfortunately. However, that is only part of the story. Most will just give cursory reviews to those that are normally doing things well & spend more time on those that are not (or are newer).
    Also, thanks to the people “upstairs”, most SPEs have a lot more to do than just review & train. Personally, I think that the training & review are the most important thing that a SPE should be doing. Those upstairs have different views & think that the SPEs should be doing all types of special projects & such that are a lot less importance to the office in long run. And the SPEs ratings are tied to having to do all these projects, most of which they are volunteered for & are not doing by choice. If your director tells you to do project XYZ your options are pretty limited. It is a bad situation & needs to be changed as I have said b4. It wasn’t like that years ago, but for a long time (not just under the current group) it has been getting worse.

    thanks,

    LL

  30. “I don’t think it was sarcasm. Or a POPA rep.
    Wrong on both counts.”

    Speaking from 1st-hand knowledge based on the way you worked (& work?), jd? Of course, you are SURE you know it all & are always right, aren’t you?

    Oh, & based on the way “your mutha” f’er messed things up in just-n-examiner’s blog, it seems like you two are close brethren (or one in the same). Both obnoxious and self-righteous snobs.

    LL

  31. “Question for the examiners that post here:
    Do you feel that your SPEs are doing their job in reviewing your Office Actions before they get sent out?”

    No.
    My SPE is responsible for about ten junior examiners. On an typical biweek, I’ll churn out 6-7 non-finals, 3-7 finals, maybe an after-final or two, and usually one or two allowances, each of which need to be reviewed/signed. Extrapolating these numbers over all ten juniors, my SPE would typically have to review/sign/authorize between 115 and 150 total cases each biweek. Usually, my SPE plows through these cases in about five hours a few days before count Monday. That works out to ~2.5 minutes/case requiring review.

    In ~11 months under this SPE, I have yet to have a non-final returned to me for using a poor reference. I have, however, had to write a few second action non-finals for (admittedly) stretching a 102 reference way too far. Therefore, I think it’s safe to conclude that this SPE gives only the most cursory review to the cases he/she signs, and, to answer the question, is not “doing their job in reviewing your Office Actions before they get sent out.”

  32. “My basis is purely anecdotal, based on the fact that, of the last twenty or so patents at issue in my litigations against ‘patent holding companies’ (or whatever euphemism you wish), all but two were continuations. Those continuations were filed after the accused products were on sale, and years after the parent applications were filed.”

    So if you’re such a hot shot litigator, how hard can it be to invalidate all of these terrible continuation patents on written description or enablement grounds?

    Or have you tried that and failed?

    Surely these lowly prosecutors can’t be capable of such sophistry as to defeat the valiant efforts of one so mighty as yourself?

    LOL

  33. I see loose lips longley is at it again. Folks, don’t fall for his chummy ways. He’s part of the problem, not the solution.

  34. “XMNR”, I think that someone didn’t get your sarcasm. Or, if it wasn’t sarcasm you must be a POPA rep.

    LL

  35. “No, we want other time for phone calls.”

    Finally, an honest examiner.

    Thank you.

    Listening to the nonsense from your colleagues about how they personally do everything correctly, but it’s somebody else’s job to ensure the other examiners do, was getting tiresome.

  36. jd,

    ME?!?! “holier-than-thou”? Be serious! Go back & read some of YOUR diatribes, both above & other threads, & see who is the one acting “holier-than-thou” all the time.

    LL

  37. “I’d like to see a study that delves into the details of this phenomenon by looking at the filing dates of continuations relative to their parents, the litigation of continuations, the frequency with with continuations are found invalid compared to other patents, etc.”

    At least one of those studies (the litigation of continuations) has already been done.

    Unless your study was done to determine the percentage of continuation patents that are invalidated under 112, 1st compared to parents that are invalidated for that reason, I don’t see the point.

    Yes, judges do need to be better educated about written description and enablement. You’re a litigator. Why don’t you do it?

  38. “You’re an examiner. You probably wouldn’t even answer the phone unless you were getting a count for it.”

    No, we want other time for phone calls.

  39. “I’d like to see a study that delves into the details of this phenomenon by looking at the filing dates of continuations relative to their parents, the litigation of continuations, the frequency with with continuations are found invalid compared to other patents, etc.”

    Me too. But let’s be clear – there’s nothing unethical per se about drawing a claim to cover a competitor’s product that appeared after an application’s priority date. If there’s insufficient Section 112 support for the claim, then that’s another matter.

  40. “What’s your basis for your claim that this practice is “increasingly common,” or that this is an “elephant in the room”, especially if you’re “wondering” about the timing of continuations, as you stated in your first sentence?”

    My basis is purely anecdotal, based on the fact that, of the last twenty or so patents at issue in my litigations against “patent holding companies” (or whatever euphemism you wish), all but two were continuations. Those continuations were filed after the accused products were on sale, and years after the parent applications were filed.

    It’s an “elephant in the room” because prosecutors don’t want to talk about it. I talk with prosecutors at my firm, and the perception is that “Oh, others might do that. The patents I write are as pure as the driven snow.” No one stops to question the ethics of the practice; all energies are focused on artfully drafting the claims to find support, through sophistry however dubious, in the specification, irrespective of the obvious lack of good-faith from the client. I’d like to see a study that delves into the details of this phenomenon by looking at the filing dates of continuations relative to their parents, the litigation of continuations, the frequency with with continuations are found invalid compared to other patents, etc.

    Sure, the current rules are in place to permit recoupment of a broader scope of the invention than was originally claimed, and the fact that applicants are permitted this safety net is a policy decision that perhaps ought to be revisited.

    “So how do you propose revising continuation rules to thwart this practice?”

    Honestly, I don’t know. Perhaps demanding more comprehensive descriptions of the nature/scope of the invention, the preferred embodiments, and each limitation of each claim. Perhaps formal education for judges on patent law, with a critical eye toward written description problems in continuation applications. The Federal Circuit seems to be coming around, albeit slowly, in cases like Liebel-Flarsheim v. Medrad and Tronzo v. Biomet. But foreclosing dishonest patent holders from having their cake and eating it too is a tricky proposition when you have an army of skilled prosecutors willing to stretch a spec like taffy in order to make a buck.

    Not to disparage the vast majority of prosecutors I know who are upstanding individuals. :)

  41. jd,

    No. I don’t examine, or act, the way you used to when you were an examiner (& the way you apparently still do based on your bitter posts). I have better habits & a better mentor than that.

    LL

  42. JohnDarling,

    I’m trying your approach today in a response to a final. Thanks for the idea. I was going to just file an RCE but I like this idea better…

  43. “who discloses an inoperable invention?” There’s more than you might think. People that patent before the build the device come to mind. Just because you think it might work doesn’t mean that it will. There are millions of problems that can go wrong between drawing board and prototype in my art, and they often do, and they’re often in the prior art.

    “in any case, the prior art there clearly teaches AWAY from using a lever, so using one is non-obvious”

    Sorry, just because I say using a part x is worse than using a part y doesn’t mean it was non-obvious to use part x. It depends on the context. For instance

    I have an invention/claim which is a bicycle with two wheels and a sophisticated gear mechanism.

    One peice of prior art shows a bicycle with two wheels and a gear mechanism. Another peice of prior art shows that same gear mechanism used on a unicycle that allows for great speed but says that if it is used in a bicycle it doesn’t allow for up hill peddaling because it will break, so it isn’t good to use in a bicycle. Are you going to tell me it’s not obvious that you can, and would be motivated to, use that gear mechanism in a down hill speed racing bike? This example is also one that shows where the claimed invention isn’t all the way operable if perhaps they have a figure showing the bicycle going uphill with that gear mechanism being used. But, maybe nobody had made one before they filed.

  44. “I don’t care about “credit” from some moderator or you.”

    You’re an examiner. You probably wouldn’t even answer the phone unless you were getting a count for it.

  45. “There’s blame to be had by examiners, but the prosecutors ought to recognize that they’re standing in a glass house, before they start throwing stones.”

    Nobody files RCE’s to “wait for the industry to develop.”

    Most continuations are filed because it is impossible to get the claim scope you are entitled to in the first go round of examination given the “quality = reject, reject, reject” mentality that rules the PTO.

    You take what you can get, and then go back for what you are truly entitled to.

  46. jd,

    I don’t care about “credit” from some moderator or you. Particularly from you! I just like to point out when you are wrong. Of course, if I did that ALL the times you were wrong it would be a full time job in itself. So, I just do it if I get to it. Like above.

    LL

  47. “I wonder how many of those continuations are filed after the applicant has been sitting around long enough to observe the trends and standards development in the industry.”

    Given the pendency of applications today, probably quite a few.

    “The elephant in the room is that, whatever your opinions regarding the current quality of examination, continuation practice needs to be changed in some manner to thwart the increasingly common practice of using continuations to obtain new claims over things the inventor never honestly contemplated at the time of invention.”

    What’s your basis for your claim that this practice is “increasingly common,” or that this is an “elephant in the room”, especially if you’re “wondering” about the timing of continuations, as you stated in your first sentence?

    So how do you propose revising continuation rules to thwart this practice?

  48. Question for the examiners that post here:
    Do you feel that your SPEs are doing their job in reviewing your Office Actions before they get sent out?

    I feel that in the last few years, the SPE clearly has not read the action, if they had they wouldn’t have signed it! Seems to me proper review would be excellent training/mentoring and increase the quality of the restriction/FOAM/etc. And, from comments I’ve seen, I feel like the SPE is merely acting as a gatekeeper to keep examiners from allowing cases. OR am I misunderstanding what SPEs are suppose to be doing?

  49. Getting back to the graph, I wonder how many of those continuations are filed after the applicant has been sitting around long enough to observe the trends and standards development in the industry.

    Too often it seems that inventors and their assignees only “fully realize” the scope of their invention long after they have the benefit of seeing what everyone else is doing.

    The elephant in the room is that, whatever your opinions regarding the current quality of examination, continuation practice needs to be changed in some manner to thwart the increasingly common practice of using continuations to obtain new claims over things the inventor never honestly contemplated at the time of invention.

    I’m sure the prosecutors here will chime in with arguments that this (a) doesn’t happen or (b) when it does happen it’s easily dealt with via 112 defenses. Well, the fact is that expertly written specs are sufficiently vague (and useless for public notice) to support all sorts of claims, and crafty litigators can always latch on to a sentence or two in the spec and argue that it’s sufficient for enablement. This, combined with the fact that most judges are too cowardly to smack down clear abuses of continuation practice with written description arguments, leads to the well-deserved backlash we’re witnessing today.

    There’s blame to be had by examiners, but the prosecutors ought to recognize that they’re standing in a glass house, before they start throwing stones.

  50. “It doesn’t necessarily have to be after final. But I have had 3 finals withdrawn in the past 4 months using this argument.”

    That’s it; I’m trying it. :-)

  51. “We’re talking about an after-final response, right? How effective do you find this to be?”

    It doesn’t necessarily have to be after final. But I have had 3 finals withdrawn in the past 4 months using this argument.

    But I currently have 2 pre-appeals where I’ve stressed it and noted the examiner’s complete failure to address any arguments. The pre-appeals are with the same examiner who apparently just doesn’t get it.

    How effective is it? I don’t have any statistics for you, but according to e6k, all of the SPE’s over there have photographic memories with the MPEP nicely saved and follow it verbatim, show it should work every time.

    Right?

    LOL

    LL, if you really need credit for your posts, by all means, have some credit.

    Just increase the quantity of your blog post production to 110+% and I’m sure the moderator will rate the quality of your posts as outstanding.

    You do work at the PTO? Correct? That is how it works over there, no?

  52. “Every now and again I run into those types of situations. The question then becomes: Is the instant invention just as worthless/inoperable etc. as the prior teaching described it as? If it is, then it was obvious because you’re just using the sucky feature from the prior art rather than the good feature. Nothing special there. If you managed to use a lever and it resulted in something that worked better than expected then I might let you off.”

    who discloses an inoperable invention? wouldn’t that run afoul of the enablement requirement? in any case, the prior art there clearly teaches AWAY from using a lever, so using one is non-obvious. It doesn’t matter how “sucky” the invention may be, if it’s novel and non-obvious, you are to allow it.

    I wish you would stop harping on the unexpected results thing. How does a lever ever ‘work better than expected?’ It’s a darn lever and all sorts of calculations can be performed, so that whatever it accomplishes won’t be ‘unexpected.’

    “I was owned because of procedural issues mostly. The one where I lost on the merits was because he completely misconstrued what the prior art actually said in his background and I used that against him in a 103.”

    What procedural issues were you owned on? As I recall, your SPE found your 103 to be insufficient. Was the attorney’s description of the prior really an effort to mislead the patent office, or was it just perhaps a reasonable interpretation rather than the PTO’s typical ridiculously broad and completely unreasonable interpretation?

  53. Hey, JD,

    You said “Clive, you’ve accurately described the ticket buying process the examiners use to hop on the RCE gravy train.” You may not have noticed (or read? comprehended?) but it was I who brought that up & said examiners that do that are wrong & Clive was agreeing with me. And I DO work at the PTO.

    thansk,

    LL

  54. “for the love of god, you never ever want to use a lever in this application, as a widget cannot be selectively operated by a lever”

    Every now and again I run into those types of situations. The question then becomes: Is the instant invention just as worthless/inoperable etc. as the prior teaching described it as? If it is, then it was obvious because you’re just using the sucky feature from the prior art rather than the good feature. Nothing special there. If you managed to use a lever and it resulted in something that worked better than expected then I might let you off.

    “Prepare to be owned during a pre-appeal conference, as you have indicated has happened to you in the past.”

    I was owned because of procedural issues mostly. The one where I lost on the merits was because he completely misconstrued what the prior art actually said in his background and I used that against him in a 103.

  55. “In your response, note the “Examiner Note” to Form paragraph 7.38 in MPEP 707.07(f).”

    We’re talking about an after-final response, right? How effective do you find this to be?

  56. “This happens to me routinely: the rejection relies on a primary reference for its gist, and a secondary reference to supply a tidbit. My response (I believe) knocks out the primary and secondary references. The second/FINAL action continues to rely on the primary reference, replaces the secondary with a new secondary reference, makes the rejections final, and ignores my remarks, deeming them moot in view of the new grounds. Both actions relied heavily on that primary reference and it’s clearly become the centerpiece of the prosecution, but the Examiner deliberately refused to engage in a discussion of its teaching/interpretation.”

    Clive, you’ve accurately described the ticket buying process the examiners use to hop on the RCE gravy train.

    In your response, note the “Examiner Note” to Form paragraph 7.38 in MPEP 707.07(f).

    But of course we all know that all of the SPE’s over there know the MPEP like the back of their hand and follow it verbatim, right?

    ROFLMAO

    “(And like Mr. Long, I’m not saying this is how it should be and I’m not complaining, I’m just saying how it is.)”

    You should be complaining. Don’t you know it’s your job to make the examiner do it correctly?

  57. “This happens to me routinely: the rejection relies on a primary reference for its gist, and a secondary reference to supply a tidbit. My response (I believe) knocks out the primary and secondary references. The second/FINAL action continues to rely on the primary reference, replaces the secondary with a new secondary reference, makes the rejections final, and ignores my remarks, deeming them moot in view of the new grounds. Both actions relied heavily on that primary reference and it’s clearly become the centerpiece of the prosecution, but the Examiner deliberately refused to engage in a discussion of its teaching/interpretation.”

    Clive, you’ve accurately described the ticket buying process the examiners use to hop on the RCE gravy train.

    In your response, note the “Examiner Note” to Form paragraph 7.38 in MPEP 707.07(f).

    But of course we all know that all of the SPE’s over there know the MPEP like the back of their hand and follow it verbatim, right?

    ROFLMAO

    “(And like Mr. Long, I’m not saying this is how it should be and I’m not complaining, I’m just saying how it is.)”

    You should be complaining. Don’t you know it’s your job to make the examiner do it correctly?

  58. Well Lowly, I must agree that “a widget cannot be operated by a lever” does rather seem to teach a bit away from your claimed “widget selectively operated by a lever”. Bit like the prior art statement “Nobody will ever run a 4 minute mile” fails to disclose the idea of running a 4 minute mile, I suppose?

  59. “Lowly, if a reference includes the words “use a widget to do Y” it discloses the idea of using the widget to do Y, doesn’t it, regardless whether the words disclosing the use are preceded by other words that tell you that the disclosed use isn’t a good idea. Exr is right, no? Mind you, if you are arguing what’s obvious, as opposed to what’s disclosed, that might be different, no?”

    I should be more specific.

    The claim will be something like the following.

    A device comprising:
    a lever; and
    a widget selectively operated by said lever to XYZ.

    The examiner will assert that reference reciting “a lever” and “a widget selectively operated by a pulley. the widget is not operated by a lever because, for the love of god, you never ever want to use a lever in this application, as a widget cannot be selectively operated by a lever,” discloses the features of my claim.

  60. Lazarus writes: “On the flip side, another pet peeve of mine is when examiner’s make a final & just say the applicant’s remarks are moot because of new grounds but the rejections keep some or all of the same references that were explicitly argued by the applicant. This is wrong. The examiner needs to address ALL of the remarks presented if they apply the any or all of the rejections being made in the new action. I too often see examiner’s try to do this & I kick them (actions) back when I see it.”

    This happens to me routinely: the rejection relies on a primary reference for its gist, and a secondary reference to supply a tidbit. My response (I believe) knocks out the primary and secondary references. The second/FINAL action continues to rely on the primary reference, replaces the secondary with a new secondary reference, makes the rejections final, and ignores my remarks, deeming them moot in view of the new grounds. Both actions relied heavily on that primary reference and it’s clearly become the centerpiece of the prosecution, but the Examiner deliberately refused to engage in a discussion of its teaching/interpretation.

    Now I’m facing the appeal-or-RCE fork in the road. I have no idea how the Examiner will respond to my remarks on the merits of the primary reference; appeal takes much longer and is costlier than the RCE; and I don’t like being blindsided.

    (And like Mr. Long, I’m not saying this is how it should be and I’m not complaining, I’m just saying how it is.)

  61. Lowly, if a reference includes the words “use a widget to do Y” it discloses the idea of using the widget to do Y, doesn’t it, regardless whether the words disclosing the use are preceded by other words that tell you that the disclosed use isn’t a good idea. Exr is right, no? Mind you, if you are arguing what’s obvious, as opposed to what’s disclosed, that might be different, no?

  62. “I think he said, usually no. Lol, I should try his method. Simply recheck the refs and maybe at the most skim the arguments. Reading all that sht takes away too much time. Takes you guys 6 pages to say “Um, x feature isn’t shown in the way it is used in the claim”. It’s like pulling a needle out of a haystack to find your actual argument half the time.”

    Prepare to be owned during a pre-appeal conference, as you have indicated has happened to you in the past.

    I can’t count how many times an examiner asserts “reference X discloses a widget to do Y” when the reference actually says “for the love of god, never ever use a widget to do Y.” I win 100% of the time on these if I take them to pre-appeal.

  63. Posted by: exaiminethis | Jul 24, 2008 at 01:36 PM

    Thanks for the reply. I understand current US practice, and I was speaking as to how I’d like to see it changed.

    Re: 2600examiner’s comments, first, I assume when we’re discussing page length we’re talking about the remarks section, not the entire amendment. Usually, my listing of claims is longer than the remarks section.

    A lot of the remarks though are hopefully made to keep the record clear. When I make amendments, I state what amendments are made and where they find support in the specification. I state which claims are rejected by what references and my understanding of the examiner’s reasoning, so the examiner (if they read the remarks) can know what point I’m rebutting. Just these two practices mean my remarks section is usually longer than one page.

    Posted by: 2600examiner | Jul 24, 2008 at 10:37 PM

    –If the remarks are long I am interested… If they’re short most of the time I just assume…–

    Are you saying you read the long remarks but not the short remarks? I usually try to keep my substantive remarks short so the examiner will decide that reading them does not take up too much time. I guess my reasoning was incorrect. I now have incentive to be long-winded and rehash the same point multiple ways. My managing partner will be pleased; when clients see a long response, they’re more willing to pay the bills (regardless of how convincing the response is).

    Most recent examiner annoyance: the last five office actions I’ve received in one case have exactly the same paragraph in response to my five different arguments and amendments. Finally, the client has agreed to pay for the appeal.

  64. How about giving examiners counts for responses after the first OA and advisory actions (or at least partial counts?) and increase QC reviews on responses so Exmrs who might be inclined don’t blow them off.

    (With the caveat that QC reviews would be done by attorneys who work for the PTO and not the politicized, poorly trained flunkies who are currently manning/womanning the ranks of QC reviewers. Plus the reviews should be done in the spirit of increased training rather than punishing.)

    This might increase Examiner incentives to do a more thorough job on these pre-RCE, post-first OA actions, since right now examiners essentially get no credit for half of their work product. (Imagine if you couldn’t bill for most of the time you spent working? Even the most professional souls would feel the sting of spending time on actions that don’t go towards billabe hours.)

  65. “I think (hope!) that 2600examiner misspoke. You MUST read all of the applicant’s remarks. Not necessarily word-for-word, as some of it will be boiler-plate & form paragraph stuff (just like actions), but you do need to read and consider all of the substance of the remarks.”

    I am familiar with MPEP 707.07(f), but would say that I’m only supposed to read all of the applicant’s remarks. My SPE doesn’t check most of my cases until count Monday, so no one’s really in a position stop me from ignoring remarks if I want to. If the remarks are long I am interested to know if there’s a reason. If they’re short most of the time I just assume there are no arguments and go forward with a “moot in view of new ground of rejection”.

  66. What I find frustrating is when I have spent time and made a solid argument and the examiner’s only response in his next action to my argument is “the examiner does not find the argument to be persuasive.”

  67. I think (hope!) that 2600examiner misspoke. You MUST read all of the applicant’s remarks. Not necessarily word-for-word, as some of it will be boiler-plate & form paragraph stuff (just like actions), but you do need to read and consider all of the substance of the remarks.

    If you review the rejections & art without 1st reading the remarks, how can you determine if what the applicant is arguing is valid or not??? Seems to me that you will be wasting more time doing it your way. If you read their remarks & THEN review the art with an eye towards what they argue, you will be a lot more efficient.

    Now, if you were trying to point out that a lot of the times when the applicant amends the claims ALL of the arguments are directed to JUST the newly added limitations (often the case), then you are right that there isn’t much to respond to in your action. However, until you actually READ the remarks you really do not know if that is what they argued or not.

    Though, it does often seem like some lawyers like to just right pages & pages of fluff when they are just arguing the newly added limitations. They will go on & on how the rejection was wrong because the references don’t show the newly added limitations and point it out for every claim. Well, OF COURSE the rejection didn’t point out these limitations because they weren’t in there before! (Pet peeve of mine.) Why waste our time & yours, as well as the applicant’s money, when instead of 18 pages (when you reproduce the newly amended claim in your response as well) you can sum it up by saying something like: “The references of record do not show the limitation of XXXXX as now recited in claim 1-99.” Same effect & saves time & money.

    On the flip side, another pet peeve of mine is when examiner’s make a final & just say the applicant’s remarks are moot because of new grounds but the rejections keep some or all of the same references that were explicitly argued by the applicant. This is wrong. The examiner needs to address ALL of the remarks presented if they apply the any or all of the rejections being made in the new action. I too often see examiner’s try to do this & I kick them (actions) back when I see it.

    thanks,

    LL

  68. Looks like filings have been rather steadily and unremarkably rising. So much for Mooney’s bubble…

  69. “Why is this? Because the PTO has about 60 APJ’s for an examining corps of 5,000+. And PTO (mis)management is further reducing the workload of the APJ’s by forcing applicants to do their job too. Heaven forbid the APJ’s actually read the app, and the prior art references, and the OA’s, and the responses too!!!!! What is this world coming to?????!!!!!!! Let’s just force the applicants to “summarize” it all for them.”

    Prof. Wegner, is that you? :)

  70. “I think he said, usually no. Lol, I should try his method. Simply recheck the refs and maybe at the most skim the arguments. Reading all that sht takes away too much time. Takes you guys 6 pages to say “Um, x feature isn’t shown in the way it is used in the claim”. It’s like pulling a needle out of a haystack to find your actual argument half the time.”

    I just finished an amendment with a response that was 18 pages long. The claims were amended based on my non-final. I was surprised at the length given the amendment, so I did skim the arguments. There was nothing in there that needed to be addressed.

  71. “Do you at least READ the attorney’s arguments? You are not infallible and are capable of misreading and misunderstanding the art, you know.”

    If I need to, yes. If the attorney amends around my previous rejection, the arguments are just going to be that the old rejection doesn’t teach the new claim limitations. If they didn’t amend and I still like my rejection, then I OCR their arguments one-by-one and explain why I disagree.

    “Because with your nearly one and one half years of experience and your BS or MEng, there’s no possible chance you misinterpreted the reference or missed something in Applicants’ spec that defines a claim term… Gotcha.”

    If I get to the point where I’m keeping a rejection of a claim that hasn’t been amended, of course I have to respond to arguments. My point was if there was no amendment usually there’s a reason. If there’s a clear error on my part I’ll usually see it without having to read the arguments first.

  72. Here’s an interesting read:

    link to oceantomo.com

    Conclusion:

    “We believe the U.S. Patent Office is doing a good job currently and that patent quality is as high if not higher now
    as it was five years ago. Patent quality is also being recognized and rewarded in existing and emerging markets for intellectual property transfer and in the
    broader capital markets. Thankfully, for those of us in the profession, we are beginning to see data—already there—confirming what we believed all along.
    Patent quality can be measured; it is improving; and it makes a difference.”

  73. “Do you at least READ the attorney’s arguments?”

    I think he said, usually no. Lol, I should try his method. Simply recheck the refs and maybe at the most skim the arguments. Reading all that sht takes away too much time. Takes you guys 6 pages to say “Um, x feature isn’t shown in the way it is used in the claim”. It’s like pulling a needle out of a haystack to find your actual argument half the time.

    Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah Blah
    insert argument here
    Blah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah Blah

    ^ that is the attorney’s response. I love the guys that come in with a one page response. Gets the job done so much faster. EVERY TIME.

    Funny that 2600 also thinks overclaiming is a large problem.

  74. “Truth be told I rarely have a need to read attorney’s arguments. If there’s an amendment, the arguments are usually irrelevant. If there’s no amendment I’ll recheck my references (a couple of times I’ve misinterpreted abbreviations in figures). The few times I’ve gotten to a stage with no amendment and no perceived errors the arguments usually revolve around my claim interpretation. At that point I go final and suggest a minor language change.”

    Because with your nearly one and one half years of experience and your BS or MEng, there’s no possible chance you misinterpreted the reference or missed something in Applicants’ spec that defines a claim term… Gotcha.

    You seem like a bright guy/gal and I’m sure you actually meant to say that that you DO read the arguments in detail and double check the spec, claims, and refs to make sure you didn’t make a mistake. Please be sure to apply a little more rigor to your rejections than you do to your blog responses. Half-cocked statements like yours above are exactly what practitioners are seeing in their joke finals. And that’s why we’re so mad about having to spend our clients’ money on appeals and RCEs.

  75. 2600examiner,

    Do you at least READ the attorney’s arguments? You are not infallible and are capable of misreading and misunderstanding the art, you know.

  76. Clive — I agree. In the past, it was easier to work out allowable claim language with an examiner in a telephone or personal interview. Thus, the filing of an RCE/CPA/continuation was often not needed.

  77. The times I’ve filed an RCE, it was because I didn’t have the Examiner’s clear position until the second (and of course, FINAL) office action. At that point, I DID need to amend a little and/or introduce some argument that always seems better received if it comes via declaration rather than mere attorney arguments.

    Another factor is that Examiner’s just don’t seem as willing to work with applicants these days. Several years ago, I could have an interview, figure out what part of my claim was offensive, how the Examiner was interpreting a term/phrase/reference, discuss those points of friction, and come away with some sense for why my claims were being rejected. These days, I actually have a hard time *getting* the interview (literally, *no* response to voicemails and written PTOL-413A Interview Request forms). I don’t think it’s the Examiners being rude, I think they’re reluctant to try to be helpful when they have no idea how Big Brother is going to react to the allowance they might issue.

  78. I’ve only ever withdrawn two final rejections. One was the third case I ever worked on (first rejection wasn’t that great). Applicant’s only argument was the date on the reference was bad. It wasn’t so I went final. When they came back AF with proper arguments I reopened. The funny thing was I didn’t respond within 10 days and the attorney called me and asked if I was going to send out an advisory because the three months was coming up and they didn’t want to pay for extension of time fees on an RCE. Second time my reference/claim interpretation wasn’t really that bad, but I ended up finding a much better reference. I tried to think of a way to cite it in the advisory action, but finally decided just to reopen.

    I’ve been at the PTO almost 1.5 years and I’ve yet to be appealed. I’ve started to get quite a few RCEs. I think my quality is good (I did get a positive review at usptoexaminers.com), because a healthy majority of responses I get involve an amendment of some kind. The reason for excessive RCEs is IMO initially filing overbroad claims with imprecise language that can easily be interpreted in a million different ways. I’m not offended by the practice and understand wanting the PTO to draw the line, but I don’t feel any sympathy when a practitioner has to file an RCE after filing overbroad claims initially. If you start on Mars it’s difficult for me to bring you back down to Earth with one office action.

    Truth be told I rarely have a need to read attorney’s arguments. If there’s an amendment, the arguments are usually irrelevant. If there’s no amendment I’ll recheck my references (a couple of times I’ve misinterpreted abbreviations in figures). The few times I’ve gotten to a stage with no amendment and no perceived errors the arguments usually revolve around my claim interpretation. At that point I go final and suggest a minor language change.

    While I don’t think I make too many bad finals, I do admit to stringing together a few consecutive non-finals when I’m struggling with searching and know my SPE won’t let me allow the case. I’ve only done this a few times (I don’t feel guilty about it either). Last time it wasn’t until the third action that I found a reference that I’d be willing to stick with through a final (it was really tough searching for a specific use of an AND gate).

  79. “”So yes, current prosecution practice does start off with the assumption that the examiner’s positions are correct.”

    ROFLMAO”

    I thought the same thing to myself lol. You get the presumption of allowability until I read your first claim. Then it’s like, man, damit, no allowance today.

  80. I get what you’re saying. The problem is what you’re saying is nonsensical.

    Allow me to demonstrate:

    “Whose fault is it when a drug addict knocks over a store to get money to pay for their habit? Theirs or the dealer that got them hooked? You are the ones that got the examiners ‘hooked’ on the RCE count wagon.”

    Really? The applicants and patent bar paid examiners bonuses for gaming the production system with the typical, “issue unintelligible FAOM, ignore applicant’s arguments, punch up boilerplate form paragraphs, issue final rejection, and cross fingers wishing for RCE gravy train to appear” scam?

    What are you hooked on?

  81. StoopidQ,

    Actually IPR cases (non-finals & finals) ARE reviewed by OPQA. The kickback error rate (to the TC) is around 20-25% last I saw. Which is atrocious! And this does not count the cases where the rejections are not well laid out or explained, which would raise the % somewhat more. These are only for cases where there is clearly an improper (or missed) rejection.

    One problem is that the office publicizes the “allowance error rate” and not the IPR error rate. I think if this rate was more well known (it can be found for previous years if you dig thru the PTO site enough) there would be more of an uproar. Thing is, more publicity goes to a “bad” allowance rather than “bad” rejections. Until that gets changed, I doubt the office policy will change (unfortunately. The attitude needs to change.)

    thanks,

    LL

  82. Lowly – I’d need to file the RCE *and* an amendment. And then wait. And then hope I’d get a real examination this time.

    Maybe I should just schedule a telephone interview with the Examiner and the Primary every time from now on. But that doesn’t make them give you a real rejection either. They say try this language, and I do, and then I get a final rejection.

  83. JD, why is it everyone else gets what I was saying EXCEPT for you? Are you just being obstinate or what?? (I would bet on “what”)

    As to your question of “Whose fault is it?”, I’ll answer with a question. Whose fault is it when a drug addict knocks over a store to get money to pay for their habit? Theirs or the dealer that got them hooked? You are the ones that got the examiners “hooked” on the RCE count wagon.

    As to your question of “why an applicant should have to appeal to get a ‘bad final’ withdrawn”, because, right now your options are to appeal, abandon or file an RCE. I assume you don’t want to abandon. We are discussing why RCEs are high & how to reduce it. Ergo, appeal. That should be simple enough for even you.
    I’m not defending or supporting the current system. Just explaining what it is & why.

    Another reason why you should appeal a “bad rejection” is because it is part of your job to defend/uphold (or whatever word you want to use) your clients rights. If they get a bad rejection, it is your job to do what is necessary to get that rejection withdrawn. If appeal is your best course of action to get it withdrawn, it is your job to advise the applicant of that course of action. Simple enough again?

    thanks,

    LL

  84. “a steady climb for 9 years, i wouldn’t exactly call that a ‘trend’ ”

    I just had to see those words again. Wow.

  85. How much are you charging to file an RCE? Why is your time more expensive for a RCE than a typical office action?

    (am I giving clients too much of a break? lol)

  86. I have never succeeded in having a final withdrawn. The last time I tried (this week) the Examiner told me that he used to work with attorneys more, but his supervisor yelled at him and told him to always final on the second action. I thought I had a pretty good argument – the first rejection didn’t make a lot of sense, and my response explained why (no claim amendments). The second and final action repeated the first rejection in full (of course) and then added that he (rather mystifyingly) interpreted my claim language to mean the same thing as the prior art. So I was asking to have the final withdrawn so I could amend the claims to clear up that my language meant what was described in the spec and didn’t include his exceedingly broad interpretation. Of course he wouldn’t accept my amendment after final because he would have to do more searching.

    The Examiner was a good guy, really – he pointed out that I could appeal or petition based on various arguments. I explained that I knew that and I had done these things with clients who had legal budgets. But this inventor was paying his own bills. That’s when he told me that his supervisor wanted second action finals every time.

    I would definitely pay a double examination fee to get two non-final rejections, even for my solo inventors. Because the cost to them isn’t the fees – it’s my time.

  87. I took a look at one of my applications where I had filed multiple RCE’s and noted that the primary reason was that the inventor and/or I had discovered new art which we wanted to bring to the examiner’s attention. So we went to the time, expense and delay of doing it.

    (As a practical matter the proposed new rules which are before the FedCir would not allow us to do that. Everyone loses.)

  88. “You can make the examiner do a good job.”

    Ignoring for the moment that this is wrong, why is it the applicant or attorney’s responsibility to make the examiner do a good job?

  89. JTS,

    As I posted earlier, total filings have not gone up near as much as the PTO has claimed because they count each RCE as a newly filed application in their stats. – According to IPO

  90. Leopold,

    I didn’t attack LL. I told him he was wrong. He is. He knows it too.

    BTW, interesting that he never bothered to answer my question as to why an applicant should have to appeal to get a “bad final” withdrawn.

    He didn’t answer it because he can’t. Because he knows that his, “It’s up to you guys to fix the system” nonsense is just that: nonsense. He knows very well how it works over there. He’s not fooling anybody. Well, maybe somebody. But certainly not me.

  91. It seems to me that it may be a better balance to:

    1) Give a greater amount of time/counts for each new application and remove a count for an RCE, and/or

    2)As there is no QC for bad rejections, give negative counts to an examiner(/primary) if prosecution on an application is reopened after an appeal is filed.

    And yes, I do know that either of these are likely to happen when pigs fly.

  92. “BTW, would your proposed rules be substantive or procedural?”

    Entirely procedural.

    “They have to eat that time. That can become very painful.”

    Boo-frickin’-hoo.

    The applicant eats the Notice of Appeal and Appeal Brief fees. And the fees for preparing the Brief to comply with the ever increasing onerous rules. Just to have the Brief bounced as non-compliant because the evidence appendix states “No evidence is relied on” instead of “None.”

    “In reality, very few out of all the cases actually go thru the “appeal, re-open, appeal, re-open, appeal, re-open, etc.” Most just fold & file an RCE. A lot do go thru 1 iteration (wrong, but that is what happens). A very small % go thru more than that.”

    50% of cases that are appealed are re-opened. While the percentage of cases that are appealed may be a small percentage of all the cases filed, that fact is disgraceful.

    The examiners also know that there is a built in safety valve for them. If every RCE were replaced by an appeal, the pendency at the Board would skyrocket. Applicants would be advised that an appeal is too lengthy, so just file an RCE. Back to square one.

    Why is this? Because the PTO has about 60 APJ’s for an examining corps of 5,000+. And PTO (mis)management is further reducing the workload of the APJ’s by forcing applicants to do their job too. Heaven forbid the APJ’s actually read the app, and the prior art references, and the OA’s, and the responses too!!!!! What is this world coming to?????!!!!!!! Let’s just force the applicants to “summarize” it all for them.

    Whose fault is it?

  93. pds, I agree with you. Of course, your response implicitly acknowledges the problem with that approach: “EVENTUALLY, they’ll either call to propose some (typically meaningless) amendment (to save face) or file an exmaminer’s answer or reopen again…” Many of my cases aren’t being picked up for 4 years – another 4 years of prosecution isn’t fair to the applicant, and certainly isn’t doing anything to improve quality or reduce backlog.

    JD, with all due respect, I think your attack on LL was unfair. As I understand it, he wasn’t describing the system as it should be, but as it is.

    To e6k, also with all due respect, if your applicants actually do have good attorneys and you’re receiving lots of notices-of-appeal, then that might be a clue that your office actions aren’t as consistently good as you think they are. In my opinion, a good attorney might occasionally appeal a close question, but usually I’ll amend in a close call.

  94. PDS wrote:

    “A disturbing trend, however, is the growing number of cases where we file an appeal brief, only to have the examiner voluntarily re-open prosecution. This is awfully expensive, slow, and simply unfair to the applicant. Any thoughts on this?”

    My response to this is easy (and something I’ve discussed before) … I then take the examiner for a ride on my “no count merry-go-round.” With just a couple of exceptions (which represents a very low percentage of the cases that I have had reopened), the second rejection is just as bad as the first. In this case, I just put them back into appeal (the client doesn’t have to pay the notice of appeal or appeal brief fees second time around) and the shell for the appeal brief is already done.

    Eventually, they’ll either call to propose some (typically meaningless) amendment (to save face) or file an exmaminer’s answer or reopen again. If they want to reopen yet again, I put them right back on the merry-go-round.

    In my small way, I’m trying to do what I can to break examiner’s RCE addiction. Unfortunately, there are plenty of attorneys/client all too willing to keep examiners high on a steady supply of RCEs.

    Have to agree here. Bite the bullet for appeal early if you’re confident the claims are in a reasonable form (not ridiculously broad, etc.). The fees and shell and much of the work in the brief (claim support analysis) can be duplicated at no cost to client. In other words, subsequent appeals are much cheaper. Also, when Examiner re-opens prosecution, it is non-Final action. Thus, you get a similar benefit of an RCE… compare the RCE cost to the Notice of Appeal and Appeal Brief fees and it’s close to a wash. Downside to the appeal is of course a lot more prosecution history estoppel than you might want, but a good attorney should minimize this problem.

    A monkey in the wrench? Yep. In Dec. 2008 the new appeal rules will push up the cost of preparing appeal briefs.

    This is the antidote to the RCE addiction for sure. I am tired of making reasonable concessions and receiving shoddy or re-treaded examination in return.

  95. seriously what’s the big deal. a steady climb for 9 years, i wouldn’t exactly call that a ‘trend’

    e6k, please weight in and pronounce on this topic. k, thx, bye.

  96. PDS, it sounds like you get it. Now just convince your brethren of it & we all will be heading to a better system.

    thanks,

    LL

  97. JD, once again YOU are failing to actually READ what was written & are jumping to your own conclusions.

    When the examiner does the “‘appeal, re-open, appeal, re-open, appeal, re-open, etc.’ game”, (which I agree is wrong & they should not be able to do & have said so before as you well know!) the examiner is loosing (as is the applicant, of course). The examiner gets no counts for all of that “appeal, re-open, appeal, re-open, appeal, re-open, etc.” They have to eat that time. That can become very painful.

    If you all keep filing the appeals INSTEAD OF RCEs, the examiners will know that is what you are going to do & they will either have to get it right from the start or leave because they can not make production. Either option is good overall. By giving the RCEs YOU are helping to keep these examiners in the PTO & ENCOURAGING them to keep doing what they are doing. After all, you are letting them get away with it.

    What YOU seem to be missing now, but have said before repeatedly, is that YOU all are the enablers of the system.

    In reality, very few out of all the cases actually go thru the “appeal, re-open, appeal, re-open, appeal, re-open, etc.” Most just fold & file an RCE. A lot do go thru 1 iteration (wrong, but that is what happens). A very small % go thru more than that.

    And, if you actually READ what I wrote, I did not defend the process of “appeal, re-open, appeal, re-open, appeal, re-open, etc.” It is bad examining and should be stopped. Said so many times.

    However, until they change the rules (which I would all be for, assuming that the applicant couldn’t throw in some new arguments in their brief about something that was not an issue before the final (assuming still the original grounds of rej.)), the system is what it is. We all have to deal with it. And YOU all are the ones that can change it by NOT giving the RCEs out like crack to a kid.

    BTW, would your proposed rules be substantive or procedural? :)

    thanks,

    LL

  98. The raw RCE filings chart is meaningless — what does it tell us? Nothing. Total filings go up, total RCEs go up… go figger. A meaningful statistic would be how many RCEs are filed per application before final disposition.

    Also, consider that it is completely natural for RCEs to gain in porportion relative to total filings as original filings has increased. If each original application is assumed to have an average of more than one RCE (let’s say 1.5 avg), then as the number of applications increase, the porportion of RCEs will also increase. In other words, the larger the pool of applications, the greater weight RCEs could have (if we assume avg. RCE per app is over 1). Of course another factor is examination turn around. If examination is fast, then an app might have more RCEs in a given year. If examination is slow, then the same app and same RCEs would be spread out over multiple years.

    The real issue that most posts relate to: how many RCEs per application, and is it getting worse. There’s not enough information in the posted statistics to derive this.

    These kind of statistics keep showing up on O’Patently, but usually with little background explanation, little analysis, and not much take-away information. yawn

  99. “A disturbing trend, however, is the growing number of cases where we file an appeal brief, only to have the examiner voluntarily re-open prosecution. This is awfully expensive, slow, and simply unfair to the applicant. Any thoughts on this?”

    My response to this is easy (and something I’ve discussed before) … I then take the examiner for a ride on my “no count merry-go-round.” With just a couple of exceptions (which represents a very low percentage of the cases that I have had reopened), the second rejection is just as bad as the first. In this case, I just put them back into appeal (the client doesn’t have to pay the notice of appeal or appeal brief fees second time around) and the shell for the appeal brief is already done.

    Eventually, they’ll either call to propose some (typically meaningless) amendment (to save face) or file an exmaminer’s answer or reopen again. If they want to reopen yet again, I put them right back on the merry-go-round.

    In my small way, I’m trying to do what I can to break examiner’s RCE addiction. Unfortunately, there are plenty of attorneys/client all too willing to keep examiners high on a steady supply of RCEs.

  100. “So yes, current prosecution practice does start off with the assumption that the examiner’s positions are correct.”

    ROFLMAO

  101. “Lower, under curent US prosecution practice, once the examiner has established a prima facie case of anticipation or obviousness in a first office action, the burden shifts to the applicant to either 1)amend or 2) come forward with convincing arguments and/or evidence to rebut the prima facie case. So yes, current prosecution practice does start off with the assumption that the examiner’s positions are correct. ”

    This misses the point. An examiner’s rejection does not establish a prima facie case simply because the examiner has mailed out an office action. If claimed element X isn’t in the cited reference, then the examiner hasn’t made a prima facie case of anticipation. Correctly pointing the missing X to the examiner does not rebut the prima facie case. It rebuts the examiner’s position that such a case has been established.

    Said another way, the PTO *could* allow applicants one good faith attempt to rebut a rejection by arguing that the examiner had not made a prima facie case without making the next office action final if the examiner remained unconvinced. Such a system would not change the burden transfer upon making a prima facie case, it would instead change the process by which the prima facie case is established.

  102. “If the examiner maintains a “bad” rejection & final, then appeal (or pre-appeal). Chances are you will get a new non-final.”

    “Because of that, I really do not have too much sympathy for most of the complaints about all the RCEs that you “have to” file. No one is forcing you to do it. You are doing it to yourselves. You can make the examiner do a good job. Or you can let them get away with doing bad rejections. The choice it YOURS!”

    LL, your ability to get it wrong every time never ceases to amaze.

    Why should an applicant have to appeal to get a “bad” final withdrawn?

    Given the examiner’s ability to endlessly play the “appeal, re-open, appeal, re-open, appeal, re-open, etc.” game, how can the applicant make the examiner do a good job?

    The “appeal, re-open, rinse, repeat” game is PTO (mis)management letting examiners get away with bad rejections, not applicants.

    Change the rules to require the examiner, in response to an Appeal Brief, to either issue an Examiner’s Answer or a Notice of Allowance. No new grounds. No re-opening.

    Change the rules to require BPAI, in response to a Brief and an Answer to affirm, affirm-in-part, or reverse. No remanding. No new grounds.

    Simple.

    But it will never happen because the position of PTO (mis)management is: Applicants should get it right the first time, but examiners will be given an unlimited number of opportunities to get it wrong.

    So if it’s PTO (mis)managements position that examiners can issue an endless stream of “bad” finals, and just re-open every time the applicant bears the burden and expense of an appeal, whose at fault for all of these RCE’s?

    Let me guess, LL, it’s applicants’ fault.

    What color is the sky in your world?

  103. “A disturbing trend, however, is the growing number of cases where we file an appeal brief, only to have the examiner voluntarily re-open prosecution. This is awfully expensive, slow, and simply unfair to the applicant. Any thoughts on this?”

    My primary has advised this before. It doesn’t make too much sense to me, unless it was to make workflow all work out that week. The one other reason he said this is decent to do is because it makes you actually argue your position the very best that you can so we have it on the record. The more we have on the record the easier it is to allow things so I hear.

  104. “However, such a practice perpetuates the practice of examiner’s issuing finals on bad rejections.”

    I would agree with you PDS except for that it has been my experience that the only time attorneys will file an RCE is when forced to amend or there is a serious question as to if my argument would stand at the board (that happened in all of one whole case). Things might be different down in your neck of the woods, but unless you mean, “Don’t amend and file the RCE when the rejection is bad” then my experience just doesn’t lead to the same conclusion.

    Then again, from all accounts I receive I’m dealing the the best of the best lawyers in most cases and nearly all of them are so big they for sure have ample dollars and time to go the appeal route.

  105. Lazarus, your comments are appreciated, and match well with my experience. The small group of attorneys I work with rarely file RCEs. We’ll file an RCE when a new reference needs to be submitted after final, and we’ll file an RCE in the (unfortunately rather rare) event that the final office action is on the money and was properly made final. I personally have experienced surprisingly good results with short after-final arguments, and nearly all of our notices of appeal result in the re-opening of prosecution, often from a pre-appeal conference. That said, our clients are generally willing to take our advice with regards to abandonment (occasionally) and taking allowed dependent claims (somewhat more frequently).

    A disturbing trend, however, is the growing number of cases where we file an appeal brief, only to have the examiner voluntarily re-open prosecution. This is awfully expensive, slow, and simply unfair to the applicant. Any thoughts on this?

  106. “What bothers me about the final on second office action is that it assumes the examiner’s positions in the first non-final office action are correct. My response to the non-final should be a chance for me to convince the examiner the originally-filed claims are patentable. Then, if the examiner is still unconvinced, fine, I’ll amend and the examiner can search the amended claims. Under the current system, I have to file an RCE just to amend the claims. That is silly”

    Lower, under curent US prosecution practice, once the examiner has established a prima facie case of anticipation or obviousness in a first office action, the burden shifts to the applicant to either 1)amend or 2) come forward with convincing arguments and/or evidence to rebut the prima facie case. So yes, current prosecution practice does start off with the assumption that the examiner’s positions are correct. However, to be fair, prosecution really starts (on the examiner’s end upon picking up the application for search) with an assumption that the claims presented as originally filed are patentable. Upon filing the application, the burden shifts to the examiner to provide arguments and evidence that the claims are not patentable (in the form of a first office action). If the examiner has done this and applicant choses to maintain the claims as they are and instead only argue in their response, and the arguments and/or evidence is not found to be persausive, sorry! — the next office action will be made final by the examiner. Applicant does not get another “free” oppurtinity of making the choice to 1) amend or 2) argue after prosecution has closed because they already had that oppurtunity. Either appeal or pay the RCE fee.

  107. Also, there seems to be a belief (or just a reaction) by Examiners that any second office action is a final. Many times I get a crap FOAM, argue the case without amending, and get a final with new art. They don’t even bother to mention why the action should be a final. On several occasions over the last year I’ve just called them and asked them to withdraw the final and they have – like they just hadn’t thought of that before.

  108. LL:

    To an extent I disagree. I can appeal the rejection, the Examiner can reopen prosecution and make a new rejection, I can appeal the rejection, the Examiner can reopen prosecution and make a new rejection, & c. The Examiner has all the time in the world, while we have to explain to the client why we can’t get the Examiner to allow claims that are clearly allowable.

  109. If there were not such a backlog and long delay at the Board, I would appeal far more cases. The PTO should significantly increase the size of the Board and its staff. More applicants would thereby appeal final rejections. As the examiners realize that more of their final rejections were being appealed, they would issue less frequent and stronger final rejections.

    (But then the count system would be upset.)

  110. I agree with PDS. I used to work more frequently with clients who were interested in portfolios, and would accept 95% of the claim scope they should have been able to receive for 75% of the cost. It was more cost effective to file an RCE to further explore allowable claim scope than to appeal.

    With the draconian new appeal rules coming into effect, soon, appeal is even less attractive as an alternative.

  111. LL,

    I’ll concede that you are correct that one stat should not be taken out of context. I was sharing my personal views and the reason why I’m forced to routinely file RCE’s.

  112. “Lowly”, you said “you know the USPTO will use this RCE statistic as an example of ‘poor application quality,’ when really it shows poor examination quality.”

    I really have to disagree with your conclusion that “it shows poor examination quality.” The rise in RCEs, by itself, doesn’t show anything except that the # of RCEs being filed are increasing. Your conclusion based on the sparse stats is as incorrect as would the office saying that it shows “poor application quality”.

    We would need to see a LOT more data to make a conclusion one way or the other. Such as: the increase of filings; the increase of foreign filings vs US applicants; how many RCEs are filed per original application before ultimate disposal; types of amendments filed with the RCEs; type of action after RCE (rej or allow); etc.

    Taking one stat out of context is not valid analysis and just creates more noise than solutions.

    thanks,

    LL

  113. While I will agree that, at least in many areas, the quality (I do not equate rej to quality) of examination has gone down over the years, to solely blame the increase of RCEs on the examiners (or the PTO as a whole) is wrong.

    You lawyers, as well as the applicant’s, have a share of the “blame”. And I am not talking about the subject matter (no matter how trivial) that is filed. If the applicant pays the fees, they are entitled to examination.

    As JD (& others, I believe) have admitted here & elsewhere, you lawyers are are enablers to the examiners. By rolling over all the time & filling the RCE you are actually encouraging the examiner to keep rejecting. If the examiner knows that a given applicant will roll over all the time & file an RCE (or FWC back when), then they can take some liberties in their rejections because they know that they can get easy counts & not have to worry about an appeal.

    And this is not new, though it does seem to be more prevalent now than years ago. For example, there was (still is) a certain applicant/firm (nameless for now) that we all knew NEVER filed an appeal. NEVER. So, of course, examiners could (& did) stretch references a little farther & push a rejection. (Not defending the process, just stating the way it is with humans.) Others, we knew would appeal ASAP. For those, you had to be more careful & make sure you nailed down everything. No different now than it was 5-10-20 years ago in this regard.

    Bottom-line, if you amend your claims, you are inviting (begging for?) a new grounds of rejection & a final. If you don’t, the examiner is stuck with their 1st grounds of rejection or making a non-final (no count). If the examiner maintains a “bad” rejection & final, then appeal (or pre-appeal). Chances are you will get a new non-final.

    So, it really is all in your (lawyers/applicant’s) hands. If you file decent claims (which may well cost a bit more than a straight translation we usually see from foreign apps., for example) so that you do not have to amend “for clarity” and do not give in if the art isn’t good (i.e., appeal), there is no need to be filing all those RCEs.

    Because of that, I really do not have too much sympathy for most of the complaints about all the RCEs that you “have to” file. No one is forcing you to do it. You are doing it to yourselves. You can make the examiner do a good job. Or you can let them get away with doing bad rejections. The choice it YOURS!

    thanks,

    LL

  114. “Isn’t the appeal fee less than the RCE fee? If the rejection is so atrocious, why not appeal?”

    Only the notice of appeal fee is less than the RCE fee. However, once you also pay the fee for an appeal brief, the fees are greater. Of course the fees are not really the determining factor.

    First, attorney time is likely to be significantly greater for the appeal than the RCE – especially once/if the new appeal rules go into effect.

    Second, the RCE is usually MUCH faster – you might get to appeal in 7 months, depending on the art unit, if you’re lucky (I recently had a case that even after 2 years had not gone before the Board, thanks to the Examiner dragging his feet all the way).

    Generally, this means that an RCE will be filed if it appears that you can still advance prosecution with the Examiner (depending on factors including the Examiner, willingness to amend claims, urgency for patent, budget for prosecution, etc.). Given the amount of discretion allowed for declaring an Office Action final, this all translates into a system where one needs to pay a fee for every two Office Actions.

  115. From my perspective (which may be different from other perspectives), the reason why there are so many RCEs is that clients and/or attorneys are reluctant to appeal.

    Given the cost to appeal, it may be more cost-effective to file an RCE. However, such a practice perpetuates the practice of examiner’s issuing finals on bad rejections.

    If you were an examiner, what would you do if faced with a good argument after a FOAM? Would you make it final, with the great expectation of getting an RCE? or would you reopen prosecution? Any rationale examiner is going to write a two paragraph “Response to Applicant’s Arguments” and make it final. If the applicant actually appeals, then the Examiner may be forced to reopen. However, why should the examiner proactively reopen prosecution when the applicant is likely going to file an RCE anyway. If prosecution is going to be reopened without a count, force the applicant to file an appeal brief. It is a simple calculus for any examiner to make. They are just working stiffs like the rest of us, and based upon the way they are credited for doing work, this is the most rationale action for them to take.

    Of course, all of this contributes to the backlog problems. Instead of searching for better art after the first response, the examiner won’t look for better art until after the appeal brief or RCE is filed, which, on average, will add another 6-8 months to the process. Do this a couple of times and the time it takes to examine an application has been increased 1 to 1 ½ years.

    There are two ways to solve this problem, which could be implemented separately or together. One way is to simply stop feeding the crack (err, I mean RCE) habit of the examiners. The second way is to change the count system. As attorneys, there is nothing we can do about the later, but we can definitely change the former.

    Moreover, if for some crazy reason the continuation/RCE rules actually get put into place (which I highly doubt), IMHO, it would be borderline malpractice not to appeal a bad rejection. You cannot give up your limited bites at the apple just to feed an Examiner’s RCE addiction.

  116. As an aside, IPO has pointed out that the USPTO apparently considers an RCE a “new” application, just like a CPA. The increase in filings and the decrease in allowances are both significantly less if applications where RCEs have been filed are only counted once.

  117. “Would attorneys be more accepting of limitations on the number of RCEs if they received two non-finals before a final?”

    No.

    Can anyone imagine how many more appeals would be filed if these rules were passed?

  118. Isn’t the appeal fee less than the RCE fee? If the rejection is so atrocious, why not appeal?

  119. “How it works most of the time now: get FOAM with horrible art and horrible rejection, argue, get finaled, file RCE and argue, o hai guyse now I found good references so I don’t need to address how pitiful my former rejection was.”

    And don’t forget that often times the Examiner changes for each of these steps due to turnover!

    I think that every prosecutor knows that the higher volume of RCE’s is a direct result of the current count system at the PTO – an Examiner get rewarded for providing a bad final rejection in the form of a new RCE and its associated count.

  120. Lets not ignore Dudas’ want to use rejections as a method of determining “quality exam.” By asking his Examiners to reject patents, he has increased the need to file RCEs and CONs.

    Lets get a Driector that knows something about practice before the Office.

  121. Would attorneys be more accepting of limitations on the number of RCEs if they received two non-finals before a final?

    Personally, what bothers me about the final on second office action is that it assumes the examiner’s positions in the first non-final office action are correct. My response to the non-final should be a chance for me to convince the examiner the originally-filed claims are patentable. Then, if the examiner is still unconvinced, fine, I’ll amend and the examiner can search the amended claims. Under the current system, I have to file an RCE just to amend the claims. That is silly.

  122. “To be fair, it’s also being driven by attorneys that are reticent to say anything real in prosecution and end up taking many small bites at responses. That in turn is driven by the courts as in Festo and other cases reading anything and everything into claim limitations.”

    I’ll characterize the daylights out of the prior art, just not my claims. Honestly, a good attorney doesn’t need to characterize his claims or use anything other than direct quotes therefrom to argue the differences over the prior art.

    What kills me is that you know the USPTO will use this RCE statistic as an example of “poor application quality,” when really it shows poor examination quality.

  123. To be fair, it’s also being driven by attorneys that are reticent to say anything real in prosecution and end up taking many small bites at responses. That in turn is driven by the courts as in Festo and other cases reading anything and everything into claim limitations.

  124. Heartily agreed. Examination is atrocious and the liberalization of final action practice has made the process overall a tremendous waste of applicants’ resources.

  125. Heartily agreed. Examination is atrocious and the liberalization of final action practice has made the process overall a tremendous waste of applicants’ resources.

  126. This is because examination quality has fallen over the past 10 years. The only way you get a decent office action before your first RCE nowadays is if you’re lucky enough to get a primary.

    How it works most of the time now: get FOAM with horrible art and horrible rejection, argue, get finaled, file RCE and argue, o hai guyse now I found good references so I don’t need to address how pitiful my former rejection was.

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