PTO: Some Claim & Continuation Rules will Not be Effective Until After Injunction is Lifted

PTO Notice:

"USPTO is identifying the applicability date of those regulatory provisions relating to applications containing patentably indistinct claims which are enjoined in Tafas v. Dudas, 530 F. Supp. 2d 786 (E.D. Va. 2008). Should the injunction be lifted, those regulations will apply only to applications filed on or after any new effective date that would be published by the USPTO in the future.

. . . .

The USPTO anticipates that it will be some time before the litigation concerning the Claims and Continuations Final Rule is finally resolved. The USPTO is concerned that some applicants may be taking preparatory action anticipating the new requirements of 37 CFR 1.78(f)(1) and (2), as added by the Claims and Continuations Final Rule, due to the possibility that the injunction by the district court in Tafas will be removed. The purpose of this notice is to aid applicants who might otherwise feel the need to take such preparatory actions by identifying the applicability date of the provisions of 37 CFR 1.78(f) in the event that the injunction by the district court in Tafas is removed. Specifically, the changes in 37 CFR 1.78(f)(1) and (f)(2) will only apply to applications filed on or after any new effective date that would be published by the USPTO after the removal of the injunction. Thus, in the event the referenced injunction is lifted, applicants will only need to comply with the identification requirements of 37 CFR 1.78(f)(1) in applications having an actual filing date on or after this new effective date. Likewise applicants will only have to identify other commonly owned applications that satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in applications that have a filing date on or after this new effective date. Similarly, the rebuttable presumption of 37 CFR 1.78(f)(2) will only apply to applications having an actual filing date on or after the effective date. Furthermore, the rebuttable presumption will only exist with respect to an application that satisfies the conditions set forth in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new effective date.

78 thoughts on “PTO: Some Claim & Continuation Rules will Not be Effective Until After Injunction is Lifted

  1. “He’s right, there’s probably only one examiner in the whole corps that does that as a junior.”

    And is that a good thing or a bad thing, MM spy?

  2. I stay away from specifics about myself :)

    There are other junior examiners that do this… I just only know of them doing so in my art unit.

  3. I know who MM is I think. He’s right, there’s probably only one examiner in the whole corps that does that as a junior. How many years you have behind you MM?

  4. MM,

    I wish there were more primarys/SPEs like yours. Believe me, the applicant’s attorney (that’s me) is always interested in where the Examiner sees allowable subject matter, even if the claims, as presented, aren’t there yet. If the basis for allowance looks reasonable, I usually tell the applicant they’re nuts not to accept the deal (if they want more, I tell them to consider pursuing a continuation and take what’s allowable). I, like the applicant, aren’t usually interested in beating our collective heads against the wall when there’s a reasonable (and justifiable) way to achieve allowance.

    I view prosecution as being a process of negotiation. Sometimes a deal can be struck, sometimes it can’t. I don’t mind the “sparring” as long as we’re making progress. But the sooner the applicant/representative and Examiner can determine whether or not a deal can be struck the better.

  5. The first thing I do when I recognize a quick path to allowance is go run it by my primary and ask to call the applicant and offer it. I look for these paths all the time, and I frequently find them. My production is stellar and easily achieved because of this. But then, I have a primary and SPE that allow me this avenue. I don’t personally know of any other junior examiner outside my AU that is allowed to do this.

  6. “If you’re giving up and appealing after your first final, you’re giving up too soon.”

    Lowly,

    Not always. I’m experienced enough to know whether or not stalemate has been reached with the Examiner. So what I try to do as early as possible is reach either a basis for allowance, or a clear indication that nothing I can do will achieve a basis for allowance (stalemate). Sometimes that requires filing an RCE, sometimes that means we’re at the end of the productive road with the Examiner, meaning appeal or give up.

    Occasionally, the Examiner suggests (explicitly or implicitly) that there is an allowable basis, so I’ll continue to work with the Examiner on allowable Claims (I one time had to go through at least 4 Office Actions to finally get the Examiner to tell me, after some pushing by me, what he thought would make the Claims allowable). Sometimes, it isn’t clear that the Claims are quite where they should be, or that a stalemate has been reached, and thus an RCE is in order, especially if the Advisory Action refuses to enter the amendment after final as “raising new issues”.

    But if you get the same nonsense from the Examiner on final as in the first Office Action (including using the same references), plus the Examiner enters the amendment after final for the purposes of appeal (which puts you in the best position for appeal), why wait to get rejected once again? In my opinion, in those situations, filing an RCE is just a waste of time and client money. And as pds has astutely said, why put anything further in the record which may come back to haunt you in subsequent licensing/litigation?

    If the current Examining Corps were more amenable to “negotiating” a basis for allowance, including holding productive interviews (with fewer of them involving SPEs because the Examiner has no signatory authority), as they once did, I might agree with you that you can pull the trigger too early by appealing after final. But the circumstances now (including the current PTO hiearchy’s view that “quality” examination means lower allowance rates) don’t generally favor reaching a reaonable basis for allowance, no matter how many RCEs you file.

  7. “If you’re giving up and appealing after your first final, you’re giving up too soon.”

    That’s right, file an RCE!
    :)

  8. “My experience has been that the Examiners simply go to final even after you point out the formal deficiencies in their rejections. That’s fine, because the Examiner has often already made up their mind that they’re not going to allow anything, and the only way you’re going to get allowable claims is to go to the Board. ”

    If you’re giving up and appealing after your first final, you’re giving up too soon.

  9. “I made this point before, but it is worth repeating, the more you can force an examiner to write more about the examiner’s analysis, the better chance you’ll have to find holes in the examiner’s analysis.”

    PDS,

    Amen again to this. I’ve even had Examiners say stuff in the Advisory Actions that is tactically unwise, and sets them up for a pre-appeal brief review request.

    Lowly,

    I also argue misinterpretations of the refences (as well as elements/features of the claims that are missing from the references), but the key thing in pre-appeal review is to point out where the formal defects are in the Examiner’s rejections under the Rules, MPEP and controlling case law. For example, that’s where 37 CFR 1.104(b) and 1.104(c)(2) come in. Also when I say “evidence” is a critical issue for appeal, what I mean is that you’ve got to show that the Examiner hasn’t pointed to “evidence” that is supported in the references relied upon to demonstrate anticipation/obviousness. As pds correctly points out, you’ve got to consider the reference(s) in the context of the claims as a whole. I’ve run into plenty of Examiners who don’t do this, but simply argue that the missing element/feature is “well known” or some other such nonsense; unless you know the context in which this element/feature is “well known,” it’s hard to argue an improper combination of references (and I do raise TSM defects in pre-appeal review requests because that is a legal deficiency in the combo rejection).

    SF,

    My experience has been that the Examiners simply go to final even after you point out the formal deficiencies in their rejections. That’s fine, because the Examiner has often already made up their mind that they’re not going to allow anything, and the only way you’re going to get allowable claims is to go to the Board. These formal deficiency arguments are to set up the pre-appeal review request, and to show that the Examiner’s rejections won’t stand up under the Rules, MPEP or controlling case law.

  10. “I’ve heard of firms paying agents during law school, but not subsidizing law school tuition.”

    There are several firms in NYC and Boston who will pay you a nice salary as a patent agent in addition to paying 100% of your law school tuition. I work at one, and am having my law school degree completely paid for – no commitment to work for them after. I don’t have a PhD, but an undergrad degree in ECE from a great school (most of my colleagues have at least a masters, but it is definitely not necessary). Getting this type of patent agent job is hard, but not impossible.

    Some of these firms include: Wilmer Hale, Ropes and Gray, Baker Botts, and Fitzpatrick Cella Harper and Scinto.

  11. You get an OA with a rejection A in view of B, which is just a garbage rejection. Modifying A in that way would totally destroy A, no one would ever do it. But as you study both of these references, you realize that a rejection of B in view of A would be a darn good rejection.

    Any comments on what you should do?

  12. pds & eg: When you’ve raised 37 CFR 1.104(b) and 1.104(c)(2), do you ever see a second non-final or do they just go final on you?

  13. Yep, you got it Jim… you use the hours per balanced disposal along with the number of examining hours the examiner worked (80 hours a biweek minus any leave and minus any other time the SPE gives the examiner for other duties) to calculate the number of counts needed each biweek.

    One insignificant detail though – there is no GS-10 at the PTO. The 0.8 position factor (the divisor is called “position factor”) is for GS-9, and when you get promoted you go right to GS-11. No idea why.

  14. “Why? If the reference DOES disclose the claim features but the examiner just cited the wrong part of it, the board will just reverse and issue new grounds of rejection.”

    Again, art dependent … many times I seen a claimed limitation that could argueably be identically disclosed by several features in the prior art. However, my claim limitation isn’t sitting in isolation. Typically, there are other limitations that interact (physically/electronically/digitally) with that original claimed limitation. Once I can nail down the Examiner on “A,” I can then make better arguments that A doesn’t interact with B and C, as claimed.

    I made this point before, but it is worth repeating, the more you can force an examiner to write more about the examiner’s analysis, the better chance you’ll have to find holes in the examiner’s analysis.

    For example, I’ve gotten rejections (many times) comparable to this:

    Dependent claims 2-8 are rejected under column 5, line 36 through column 6, line 24 of Reference A.

    By forcing the examiner to specifically point out each of the elements for each of these claims, the examiner may give in and allow some of the dependent claims and/or the examiner may be forced to cite a secondary reference to cover these claims, which could result in another non-final action (particularly useful if the examiner’s analysis of the independent claim gets clearer and stronger, which forces me to amend).

    If you ever have to guess as to how the examiner is construing the claims or what specific teachings in the prior art are being relied upon to teach the claimed limitations, then you should argue it.

  15. “You do make some interesting points about estoppel… have you actually encountered issues when your patents were litigated due to such arguments? I was trained by a few older guys who have had a ton of their patents litigated and the ‘rule’ they taught me was that it’s ok to characterize the prior art, so long as you’re right, but only use exact quotes from the claims and never characterize them.”

    You can use exact quotes from the prior art to establish what the prior art teaches. However, when you say that “Reference A does not teach feature X,” you cannot rely upon quotes from the prior art. As such, I would rather argue that “the Examiner has failed to establish that Reference A teaches feature X.”

    As far as I know, no application for which I wrote the original specification has been litigated (but there are a lot out there that I have no idea what has happened to them).

  16. “Do I understand you correctly?”

    Nope. The numbers you’re looking at are hours per balanced disposal (which is two counts), not counts. Thus a GS-10 has more hours to complete a count than a GS-11 (about 1.5 more?).

    Thanks from me as well, MM. Very helpful.

  17. MM,

    Do I understand you correctly? A GS-10 is expected to make more counts (20.5/0.8 = 25.63) than a GS-11 who is expected make more counts (20.5/0.9 = 22.78) than a GS-12 (15.12)?

  18. “But if you don’t attack the formal deficiency of the rejections, you will have no grounds for a pre-appeal brief review request which can be useful for back the Examiner into a corner.”

    wut? I pre-appeal rejections all the time without attacking the formal deficiency of the rejections. In my pre-appeal, I simply show why the examiner’s interpretation of the art is wrong. I win about 2/3′s of them (mostly because I don’t pre-appeal unless a reference is missing a claim element that the examiner is asserting it discloses. i won’t bother pre-appealing improper combinations of references).

    ” You astutely point out the “evidence” issue which will be important on appeal. ”

    Why? If the reference DOES disclose the claim features but the examiner just cited the wrong part of it, the board will just reverse and issue new grounds of rejection.

  19. It’s obvious what the PTO is doing here with this Notice. They realized that the retroactivity of the shot-down rules was a huge problem. So now they issue a Notice they can point to later on that the rules were not to be retroactive.

  20. “It is typically art-dependent. Give me claims in an art where everybody calls feature A by the same name, and I don’t need the examiner to get into specifics. However, where a claimed feature could have many different names and/or the claims involve terms that aren’t widely used, I want to know exactly what the Examiner is asserting teaches the claimed limitations.

    My philosophy is that the more the examiner writes, the more ammo you have against the examiner. Also, by forcing the examiner to explicitly point out the teachings being relied upon, you force the examiner (hopefully) to think a little more about the claim language and consider whether a particular passage actually teaches the limitations at issue.

    Remember, the examiner pointing out, within the prior art, a teaching that allegedly corresponds to a particular limitation is a finding of fact. If you go to appeal, you’ll want to have all these findings of fact lined up so that you can argue them. Otherwise, you’ll have to wait until after the examiner’s answer to make your points. Also prevents surprises that you could have easily handled by amendment when the action was non-final.

    Although I’ll argue the formal deficiencies when they present themselves (which is almost always), I will always try to make an argument as to the actual limitations versus the prior art (i.e., the prior art fails to teach X and Y).

    However, when the examiner’s arguments are really deficient, it is difficult to tell exactly how the examiner is construing the language of the claims and/or what features the examiner is relying upon. The examiner shouldn’t just make the rejection, the examiner should EXPLAIN the rejection.

    By not forcing the examiner to do his or her job, you are simply condoning a bad examination.

    One last thing, when you are arguing the formalities, you are saying to the examiner “I know the rules, and I’m going to call you out on anything you do that is improper.” Hopefully, this will motivate the examiner to give you a better explained rejection the next time.”

    PDS,

    I heartily agree with your comments, which better explain the reasons for attacking formally deficient rejections than did mine. You astutely point out the “evidence” issue which will be important on appeal. I also argue that the reference(s) don’t shown certain claim features/elements, which is part of the formal deficiency attack. But if you don’t attack the formal deficiency of the rejections, you will have no grounds for a pre-appeal brief review request which can be useful for back the Examiner into a corner. I was writing my piece late last night, and trying to summarize to GP why I think his view that Office Actions have been going downhill in quality is on target. And thanks for explaining and clarifying what I said.

  21. “2) Your pointing out that no part of the reference teaches the claim features is a litigator’s dream … establishes a lot of estoppel. If you’ve got 3 features that you aren’t sure are disclosed, argue that the Examiner has failed to establish that the prior art teaches these features. With this type of argument, you are not saying that these features aren’t in the reference, you are arguing that the examiner has not met the initial burden of establishing a prima facie case of anticipation/obviousness. There may be a time during litigation when (i) it is established that one of the 3 features is actually shown in he reference (in which you’ll be accused of misrepresenting the reference) or (ii) to obtain infringement you want a broad interpretation of a particular claim term that you cannot get with your arguments that “NO interpretation of the references could possibly show the claim features.”"

    I should rephrase what I said. I don’t actually say that no interpretation of the references could possibly show the claim features. I say that the reference doesn’t disclose the claim features (although that doesn’t seem much different). When the examiner has pointed out what sections of the reference he considers to disclose the claim features, I will refer to them and show that those sections don’t actually disclose the features the examiner said they do.

    You do make some interesting points about estoppel… have you actually encountered issues when your patents were litigated due to such arguments? I was trained by a few older guys who have had a ton of their patents litigated and the ‘rule’ they taught me was that it’s ok to characterize the prior art, so long as you’re right, but only use exact quotes from the claims and never characterize them.

  22. Ok I’ll take your questions one at a time…

    First, how many new apps do I have on my docket? At this time I think it’s 24 (I’d have to log in to be sure but I’m pretty sure that’s what it was when I left yesterday). Usually when my new docket gets down below 20 applications, my SPE will docket me back up to thirty-something. How many apps a SPE keeps on his examiner’s dockets is pretty much up to the SPE, but I think they mostly do what mine does, and keep it around 30. There are plenty of undocketed apps that the SPE grabs more from when needed. They don’t docket hundreds to us at once because that would just be asking for cherry-picking. By keeping our dockets smaller, we have less choice in what to examine, and we’ll have to pick up that 100 claim case before we get more easy ones.

    I typically read one application a day… I give myself about a day and a half to act on each application (I’m about to turn GS-12, so I have that time). First day I read and begin the search. Second day I finish the search and write the OA, then read the next app.

    I “completely” read each app. “Completely” is in quotes because I have come to recognize the general format of most apps and I skip sections like where the applicant essentially repeats the claims (I read the claims first, then the spec, then the claims again). In many cases, this repetition of the claims is a pretty large portion of the spec, which sometimes raises flags for me to look for enablement. When I read the spec, I’m looking for specific things:

    1. If I didn’t fully understand the claims, I’m looking for a rephrasing of them that I might understand better
    2. I check the “background of the invention” section for admitted prior art elements or citations to references that might not be in the IDS.
    3. I look for synonyms for claim terms I might not have thought of.
    4. If the claims included certain ranges or values for things like efficiency, etc. I look to make sure there is an explanation of how this is achieved in the spec, and I particularly look to see if the problem blocking the prior art from achieving those values is addressed by this explanation.
    4. And more, those are just some examples…

    Some other arts have much more time and some have much less, so the thoroughness may vary; particularly for those with less time…. expectancies have not been reviewed since the 70′s, and of course many arts have grown vastly since then.

  23. Oh, and as for determining how many counts an examiner must do, each art unit has an “expectancy” measured in hours per balanced disposal (BD). A BD is two counts. The average GS-12 expectancy is 20.5 hours per BD. A primary divides that by 1.35 to get his expectancy. Below GS-12 it’s divided by 0.9 for GS-11, 0.8 for GS-9, etc…

    So, let’s say a primary has 70 hours of examining time in a given biweek (10 were taken up with other time for reviewing etc.). His AU has a 20.5 expectancy, so his is 15.2. That’s 15.2 hours for two counts, so cut that in half and you get 7.6 hours to read the application, search it, and write the first action. To make 100% for that biweek, he’ll have to do 9.21 counts, or essentially 10 counts because the only fractional counts are for PCT searches (which are half a count)… So he could alternately do 9 actions and a PCT. that’s just to make 100%; everyone wants bonuses and an outstanding rating, so he’ll at least need 110% which would be 10.13 counts or 11 actions.

  24. MM,

    Thanks for your comments. Believe it or not, they provide me insight of how an examiner may treat OAs. The “workflow” of which you comment explains why a response to an OA and/or amendment doesn’t take as long as the first OA.

    If you don’t mind, I’d like to pick your brain with just a couple more questions.

    How many new applications do you have sitting on your docket? I have this vision that the answer is hundreds, but that is my conclusion after reading the press releases about the shortage of examiners.

    How many applications do you read per day or week? I realize that sizes of applications vary, but could you provide an average, e.g., 4 hours per 20 written paragraphs and 10 figures? With all of the press releases, I have this vision that you guys may scan an application without completely reading it. I realize that I might be stereotyping the whole examiner corps, but I have always wondering since beginning my prosecution practice.

    Thanks, and thanks again in advance.

  25. For the earlier poster who wanted to know how the count system works, here it is…

    We get a count for a first action on the merits and a count for a disposal. So basically there are two counts possible for each application (exception being RCE’s).

    Things that count as a first action on the merits: non-final rejection, first action allowance.

    Things that count as a disposal: allowance, abandonment, RCE, examiner’s answer.

    Things that give NO counts: written restriction requirement, 2nd, 3rd, 4th… nth nonfinal rejection, final rejection, any misc. action.

    An RCE counts as a disposal and resets the application’s counts, so an RCE results in a count and the possibility of two more counts.

    A first action allowance is both a first action count and a disposal count, so that’s two for one. Unfortunately, many examiners are afraid of OPQA because their supervisors are afraid of OPQA, and this fear congeals into a “rule” in their heads that they should always find some way to reject at least on the first action. Eventually (after less than a year at the PTO), they forget why they even started using that “rule” and possibly even forget that a first action allowance is even possible. Then there are examiners with smart primaries like mine (with a employee number in the 50k’s… I’ve seen patents from the 80′s with him on them as primary) who teach them to find the true point of novelty in the invention, search it, and offer an examiner’s amendment if needed to get those two counts…

    there is more to the system than counts; examiners do have to worry about workflow, so even though they get no counts for second nonfinals and finals, they do them… If they leave amendments sitting on their docket for more than 2 weeks after getting them forwarded to them (note this usually happens a month or more after the reply was actually received, and there is nothing the examiner can do to speed it up), then they lose workflow points. If an examiner has a negative workflow balance at the end of the bonus period, he gets no bonuses no matter how high his production is. An examiner can, however, keep putting off a particular amendment by continuing to work on other amendments as soon as they come in (which gives him positive workflow points to offset the negative points being given by the one he’s putting off), but one cannot sustain this for long.

  26. “To reiterate what I said, I’m going to comb the reference anyway and will point out how no part of the reference, under any interpretation, can possibly disclose X. I like to think that I’m a lot more careful and thorough than an examiner. While I am with you that I do like to know exactly what the examiner is asserting teaches the claim features, it doesn’t matter a whole lot to me in the end for the above reasons.”

    1) Easy when it comes to a reference that is maybe 10 pages long … not easy when the cited reference approaches 40 pages or the occassional 300 page reference I’ve seen cited.

    2) Your pointing out that no part of the reference teaches the claim features is a litigator’s dream … establishes a lot of estoppel. If you’ve got 3 features that you aren’t sure are disclosed, argue that the Examiner has failed to establish that the prior art teaches these features. With this type of argument, you are not saying that these features aren’t in the reference, you are arguing that the examiner has not met the initial burden of establishing a prima facie case of anticipation/obviousness. There may be a time during litigation when (i) it is established that one of the 3 features is actually shown in he reference (in which you’ll be accused of misrepresenting the reference) or (ii) to obtain infringement you want a broad interpretation of a particular claim term that you cannot get with your arguments that “NO interpretation of the references could possibly show the claim features.”

    Remember … the burden is on the examiner to establish a prima facie case. Force the examiner to do so. You can characterize the reference if you want to, but the more YOU say, the more it will be held against your client at some later time.

  27. “Yes, Examiners get counts for the Examiner’s answer. However, it is generally easier (less time-consuming) to respond to a RCE than it is to write an Examiner’s answer and get the exact same production count. This probably explains the relatively quicker turnaround time for RCEs and longer times for appeals.”

    Also, answers require a conference among the Examiner, SPE and a Conferee, which takes time to schedule and resolve.

  28. “I take it you assume that ALL patent examiners are “virulently anti-patent”?? In any regard, there is no shortage of practicing patent attorneys out there that are former patent examiners. If they can make the transition from PTO to private practice, it really shouldn’t be any different today – - then again, I’m talking about the “average” (open-minded) examiner and not particularly e6k who is not representative of ALL examiners at the PTO.”

    I work with several former examiners. However, they are many years out of the PTO. It would be interesting to see how opinions change in that first year in private practice.

    I know/hope they aren’t all as bad as 6k..

  29. “I am very curious to see how someone so virulently anti-patent, such as E6k, changes his views once he’s on the other side of things.”

    I take it you assume that ALL patent examiners are “virulently anti-patent”?? In any regard, there is no shortage of practicing patent attorneys out there that are former patent examiners. If they can make the transition from PTO to private practice, it really shouldn’t be any different today – - then again, I’m talking about the “average” (open-minded) examiner and not particularly e6k who is not representative of ALL examiners at the PTO.

  30. “It is typically art-dependent. Give me claims in an art where everybody calls feature A by the same name, and I don’t need the examiner to get into specifics. However, where a claimed feature could have many different names and/or the claims involve terms that aren’t widely used, I want to know exactly what the Examiner is asserting teaches the claimed limitations.”

    To reiterate what I said, I’m going to comb the reference anyway and will point out how no part of the reference, under any interpretation, can possibly disclose X. I like to think that I’m a lot more careful and thorough than an examiner. While I am with you that I do like to know exactly what the examiner is asserting teaches the claim features, it doesn’t matter a whole lot to me in the end for the above reasons.

    “My philosophy is that the more the examiner writes, the more ammo you have against the examiner. Also, by forcing the examiner to explicitly point out the teachings being relied upon, you force the examiner (hopefully) to think a little more about the claim language and consider whether a particular passage actually teaches the limitations at issue.”

    Now this I like…

    “Remember, the examiner pointing out, within the prior art, a teaching that allegedly corresponds to a particular limitation is a finding of fact. If you go to appeal, you’ll want to have all these findings of fact lined up so that you can argue them. Otherwise, you’ll have to wait until after the examiner’s answer to make your points. Also prevents surprises that you could have easily handled by amendment when the action was non-final.”

    In my appeals, I not only attack the examiner’s rejection, but show how NO interpretation of the references could possibly show the claim features or how NO combination of the references could possibly produce a working replica of the claims. If the examiner can surprise me in his answer, doesn’t that mean that I haven’t considered every asinine argument that he might make? (and that therefore I haven’t done my job?)

    “By not forcing the examiner to do his or her job, you are simply condoning a bad examination.”

    I know I’m probably being defeatist, but I don’t think my meager efforts are going to turn the tide, so I try to just get the case allowed and don’t worry about making the examiner do his job better in the future :-x

    “One last thing, when you are arguing the formalities, you are saying to the examiner “I know the rules, and I’m going to call you out on anything you do that is improper.” Hopefully, this will motivate the examiner to give you a better explained rejection the next time.”

    I’ll certainly concede this point to you.

    It’s always interesting to me to read the different approaches taken by various practitioners on this blog. I think it helps me evolve my own way of doing things beyond what I was taught…

  31. “I’m curious. Where does attacking the formal deficiencies get you? To me, all it seems like it would get you is another action with those deficiencies corrected. Perhaps attorneys like me are part of the problem, but I don’t really go after examiners for those. I prefer to argue the claims vs. the art, as that’s how you’ll actually get a NOA.”

    It is typically art-dependent. Give me claims in an art where everybody calls feature A by the same name, and I don’t need the examiner to get into specifics. However, where a claimed feature could have many different names and/or the claims involve terms that aren’t widely used, I want to know exactly what the Examiner is asserting teaches the claimed limitations.

    My philosophy is that the more the examiner writes, the more ammo you have against the examiner. Also, by forcing the examiner to explicitly point out the teachings being relied upon, you force the examiner (hopefully) to think a little more about the claim language and consider whether a particular passage actually teaches the limitations at issue.

    Remember, the examiner pointing out, within the prior art, a teaching that allegedly corresponds to a particular limitation is a finding of fact. If you go to appeal, you’ll want to have all these findings of fact lined up so that you can argue them. Otherwise, you’ll have to wait until after the examiner’s answer to make your points. Also prevents surprises that you could have easily handled by amendment when the action was non-final.

    Although I’ll argue the formal deficiencies when they present themselves (which is almost always), I will always try to make an argument as to the actual limitations versus the prior art (i.e., the prior art fails to teach X and Y).

    However, when the examiner’s arguments are really deficient, it is difficult to tell exactly how the examiner is construing the language of the claims and/or what features the examiner is relying upon. The examiner shouldn’t just make the rejection, the examiner should EXPLAIN the rejection.

    By not forcing the examiner to do his or her job, you are simply condoning a bad examination.

    One last thing, when you are arguing the formalities, you are saying to the examiner “I know the rules, and I’m going to call you out on anything you do that is improper.” Hopefully, this will motivate the examiner to give you a better explained rejection the next time.

  32. EG,

    I’m curious. Where does attacking the formal deficiencies get you? To me, all it seems like it would get you is another action with those deficiencies corrected. Perhaps attorneys like me are part of the problem, but I don’t really go after examiners for those. I prefer to argue the claims vs. the art, as that’s how you’ll actually get a NOA.

    Even if an examiner points out that he is correlating col 7, lines 14-16 to claim feature X, that has never stopped me from pointing how NOTHING in the entire reference properly discloses X. therefore, while it is helpful for examiners to give such pinpoint cites, i don’t fret if they don’t — i was going to comb the entire reference anyway.

    Anon,

    “I don’t know why you are so curious. Most of the attorneys posting here pretend to know all there is to know about what’s going on inside the PTO such that any newly “ex”-Examiner input would be useless.”

    I am very curious to see how someone so virulently anti-patent, such as E6k, changes his views once he’s on the other side of things.

  33. GP,

    I don’t think you’re imagining that the quality of Office Actions is going south. I see more and more Office Actions where the rejections have glaring formal deficiencies (for example under 37 CFR 1.104(b) and 1.104(c)(2)) that I spend most of my time attacking these formal deficiencies. For example, trying to get some Examiners to explain where or what in the reference corresponds to or is functionally equivalent to various elements/features is almost an excercise in futility.

    Many Examiners just parrot the claim language and never explain at all where that language is taught specifically in the reference (some Examiners will even cite entire columns without telling you where the relevant teaching really is). And when it comes to 103 rejections, I’ve yet to see recently an Examiner that can articulate a proper combination of references (contrary to their belief, TSM isn’t dead). Some Examiners even allege that missing claim features are “well known” or take “Official Notice” (that’s right “Official Notice”) that certain features exist, but can’t even find a reference to show those missing features.

    For some Office Actions, it’s clear that English (American or otherwise) is not that Examiner’s native language. If the Examiner can’t write intelligible grammatical English, that just adds to the problem of conversing about what the differences are between the technology in the references and the claims. (I was even told by some colleagues from the AIPLA that it was considered demeaning to comment on the language issue, but it’s very true.) And from what I hear, the current examining corps comprises at least 50% Examiners with 3 years or less experience. Most telephonic interviews are pointless unless the issue is a “no brainer”. It’s really sad.

  34. anon or any other examiner,

    Is there any documentation to show the “counts” or counting method on which examiners are measured, graded, promoted, etc…? I’ve heard much about these issues, but without more, I am having trouble understanding the examiner’s required tasks or motiviation to complete the required tasks.

    Thanks.

  35. “I would also be interested in the views of other examiners who have recently entered private practice.”

    I don’t know why you are so curious. Most of the attorneys posting here pretend to know all there is to know about what’s going on inside the PTO such that any newly “ex”-Examiner input would be useless. Besides, Examiners leaving the PTO for $$$greener$$$ pastures in private practice is no new phenomenon.

  36. “They don’t get counts for the Answer? No wonder the ones I’ve read are such shoddy work.”

    Yes, Examiners get counts for the Examiner’s answer. However, it is generally easier (less time-consuming) to respond to a RCE than it is to write an Examiner’s answer and get the exact same production count. This probably explains the relatively quicker turnaround time for RCEs and longer times for appeals.

  37. Lowly – yes I know. The Count system is insane. But it’s ridiculous that Examiner’s have any control over the order in which they do things.

    Is it just me or has the general quality of Office Actions gone down dramatically in the last 24 months?

    The number of shabby mistakes on Office Actions seems to have gone through the roof – from my perspective.

    Great for GP’s pocket book – crappy for Patents.

  38. “They get counts for responding to a RCE. They don’t get a count for writing an Examiner’s Answer. Is it any surprise they sit on appeal briefs?”

    They don’t get counts for the Answer? No wonder the ones I’ve read are such shoddy work.

  39. “It’s out of control stupidity that an Examiner can respond to an RCE 3 months after it’s filed but sit on an Appeal Brief for 8 months.”

    They get counts for responding to a RCE. They don’t get a count for writing an Examiner’s Answer. Is it any surprise they sit on appeal briefs?

  40. “Here’s the 1st rule change I’d make . . .

    Examiners get work docketed in the order it comes in, and have no discretion to do things out of order.

    It’s out of control stupidity that an Examiner can respond to an RCE 3 months after it’s filed but sit on an Appeal Brief for 8 months.”

    There are MPEP provisions in place that deal with work flow. For example, 708+. And we all know about MPEP 707.02 and how scrupulously that is applied.

    Of course, e6k will no doubt remind us all about how each and every SPE has the MPEP tucked away in his/her photographic memory and follows its provisions VERBATIM. (But first he’s gotta look up MPEP 707.02 and 708+.)

  41. Here’s the 1st rule change I’d make . . .

    Examiners get work docketed in the order it comes in, and have no discretion to do things out of order.

    It’s out of control stupidity that an Examiner can respond to an RCE 3 months after it’s filed but sit on an Appeal Brief for 8 months.

  42. MM, just go along with the PTO plan for about a year and a half. Then leave the PTO and work for a firm while you finish the remaining school work. You can pay the PTO back with your TSP money and move on. Do it this way, honestly. Also, firms are usually cool about bar exams and such. I wish I had done this, but I had some serious family matters unfolding at that time (an still ongoing).

  43. While neither I nor my daughter would have any culinary objection to eating macaroni and cheese every night, I doubt such a diet is recommended for the growth of a 6-year-old.

  44. hmm… I guess that’s probably how the guy I heard of has things set up (i.e. paid but not subsidized), and his friend just blew things out of proportion…

    Well, I can’t get out of the DC area (I live on the outskirts of Fairfax county, but it’s still expensive), and given my family situation I can’t just go to living on Ramen again for 3 years, so I guess I’ll stick with the plan of using the PTO’s tuition program… Maybe when I interview in a few years I’ll mention my postings so that the interviewer knows I haven’t been rendered useless during my time here…

    Or I’ll just claw my way up to Commissioner and fix things from the inside, whatever.

  45. “I’ve heard of firms paying agents during law school, but not subsidizing law school tuition.”

    Agreed. You’d need to be something special for a firm to consider that (ie. have a PhD in a very specific area where the firm is in need of someone who can handle very complicated applications).

  46. MM (from JPE’s blog, not mooney): I’ve heard of firms paying agents during law school, but not subsidizing law school tuition. If you go to law school where the cost of living is reasonable (i.e., get out of DC), you can probably work part-time during the year and full time during the summer and cover most, if not all, of the necessities. But you still might need some student loans.

  47. e6k “If you do enter private practice, please rejoin the blog. I’d be interested in seeing how your views change (and they will. drastically.) in the first year or so of practice.”

    I agree. Please do, e6k.

    I would also be interested in the views of other examiners who have recently entered private practice.

  48. “I’m having some interviews for some other jobs at some firms here soon so I might not be around the office much longer.”

    I can only imagine how you’ll come across in an interview… and I can only imagine how fun it would be to reprogram you. If you do enter private practice, please rejoin the blog. I’d be interested in seeing how your views change (and they will. drastically.) in the first year or so of practice.

    Just so you know, if you turn in a 1 claim wonder that complies with YOUR idea of 112, you may be fired on the spot ;)

  49. e6k – be sure to mention that you’re e6k when you interview… that should seal the deal!

    JD – I can understand passing on 6k, but you’re on my list of folks to come see when I leave… I think we’d get along pretty well!

    Incidentally, I’ve heard that some examiners that have left the office early got jobs at firms that paid for them to go to law school… how much truth is there to that, and how would the pay during that period likely compare to my GS-12 through 14 pay that I’d experience during my 3 years in law school if I stayed at the PTO? I have a wife and kid to support, so I can’t do anything that will rock the boat financially…

  50. Alas, as I’ve said before, somebody else is going to have to experience the pain (pleasure?) of de-programming 6k.

    In 6k’s honor, I’ll find a copy of that Helen Keller movie (you know, the one with Pattie Duke) and watch it.

    I will stayed tune to read all about his conversion. Should be funny.

  51. “I’m having some interviews for some other jobs at some firms here soon so I might not be around the office much longer.”

    I think John Darling’s firm is looking for some people.

  52. We have new rules about posting on the interwebz with a name that implies you work for the office (or maybe even your real name if you work for the office) about topics involving the pto policies etc. Apparently a disclaimer is not seen as sufficient to have what you say as not being the official office stance. At least the rules are new to me lol, maybe they’re old and I just read them, but I think they were recently added. Any other guys posting here, MVS, LL, 2600 might check the new rules of the road.

    And yes, you know my opinion on the destiny of the rules so I don’t need to repeat it.

    I kind of wish I was Peterlin MM, if you knew anything about her you might wish the same. I doubt if I’ll ever get to be 2nd in command of an organization like this. At least she had an opportunity to make a huge difference even if she may not have (or maybe she did and many of you don’t know about it). And I doubt if I’ll ever get to globe trot around chilling with exotic animals I’m “saving”. Then again, who knows? Maybe by the end I’ll be glad I’m me instead.

    I’m having some interviews for some other jobs at some firms here soon so I might not be around the office much longer.

  53. I was kind of hoping Dennis would do an article summarizing e6k’s patent philosophy, kind of like a grand sending off party. [cue "taps"]

  54. “I think he announced his departure a week or two ago. Something about new work rules forbidding him from spending time on internet forums during working hours, and that he didn’t want to use his non-work time here. Someone please correct me if I’m wrong.”

    Poor E6k. :( Maybe he got tired of being slapped down?

    I still remember when, after oral arguments in Tafas v. Dudas, he proclaimed that the PTO was kicking as$ and taking names and would surely win. Oops :-x

  55. “Anybody noticed that E6k disappeared?”

    I think he announced his departure a week or two ago. Something about new work rules forbidding him from spending time on internet forums during working hours, and that he didn’t want to use his non-work time here. Someone please correct me if I’m wrong.

  56. Well, I guess there is an upside to Monica Goodling and not hiring prosecutors at Justice because they were actually good…

  57. After the USPTO’s abysmal arguments before the District Court, and their mail-it-in-and-hope-for-the-best appellate brief, this notice is so hilarious.

  58. Note that all the PTO did was announce no retroactivity for the Rule 78(f)(1) and (2) presumption of double patenting, and requirement to show distinctness. They did not renounce the retroactive effect of the continuations and 5/25 rules. This admission by the PTO kind of sews up GSK’s retroactivity argument for the continuations and 5/25 rules, doesn’t it.

    Yes, T, the PTO’s rulemaking office DID tell OMB that the cost of 78(f) was precisely zero.

    The PTO’s incompetence (or lie?) was flagged by Dr. Richard Belzer in his efforts at OMB: link to reginfo.gov Perhaps the reason that the PTO was forced to withdraw Ruel 78(f) is precisely becasue they failed to accurately account for it under the Paperwork Reduction Act, as Dr. Belzer informed OMB. The patent bar (and the entire technological and innovation sector of the economy) owe Dr. belzer a deep debt of gratitude.

  59. Ironic, insofar as one of the reasons that the rules were immediately effective (i.e., applied to applications pending on the date they were published in final form, August 21, 2007) was to avoid a land rush of application filings like those that accompanied the changes when GATT was implemented (20 year term from earliest priority date) in 1995 and when AIPA became effective (publication of applications) in 2000. The Office recognized that it couldn’t afford to be inundated with a flood of new applications to avoid rules intended to reduce the backlog.

    Now they say these portions of the rules will not have retroactive effect. Especially ironic, since a good part of GSK’s argument was that applying the new rules to pending applications changed the circumstances under which inventors had made their decision to file an application rather than maintaining a trade secret. Perhaps we will hear at oral argument that the CAFC should ignore GSK’s protestations in this regard, in view of this new interpretation on how the rules will be implemented.

    In any event, it may behoove applicants to get every divisional, continuation and other application on file now, before there is any possibility that the injunction will be lifted. Of course, this is the icing on the cake for current PTO management: having lit the fire, they get to leave before the house burns down (and no doubt will blame whoever is left for failing to put out the flames).

  60. They’re concerned I may be taking preparatory action anticipating the new requirements of 37 CFR 1.78(f)(1) and (2), as added by the Claims and Continuations Final Rule, due to the possibility that the injunction by the district court in Tafas will be removed?

    Why? Didn’t they tell OMB that such preparation would take no time?

  61. This notice is the ultimate in insult, given that the USPTO web site continues to carry the Notice on these blocked Rules on the rightmost portion of the home page long after Cacheris’s decision was issued. The current PTO hierarchy has nothing but absolute gall to even suggest when these Rules might be effective. And like others have suggested, the Federal Circuit would have to have complete “binding precedent amnesia” for the USPTO to have a “snowball’s chance in you know what” in getting Cacheris’ decision reversed.

  62. There’s a 0.0000000000000000000000000000000000001% chance the Fed. Cir. will reverse the district court’s ruling.

    Take whatever precautions you think appropriate.

  63. Does anybody believe, given the previous sleight-of-hand with the effective date, that the new “effective date” would be more than one day after a decision in favor of the PTO?

    I hadn’t thought of taking precautionary measures yet, but I guess it’s time to start getting ready–thanks, PTO, for the reminder.

  64. Wishful thinking on the part of the PTO.

    The rules simply do not pass Administrative Law muster. Besides the District Court’s finding on SJ (resulting in the Permanent Injunction), just read any of the briefs written by Kirkland Ellis for its client Smith Kline, and you’ll be convinced, too. In a nutshell, they are textbook samples of awesomely persuasive briefs.

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>