USPTO Grant Rate by Technology Center

The following graph is based on the file histories of about 25,000 utility patent applications from the past few years. I looked to find the percent that were issued as compared to the total number of disposals (issued patents + abandoned applications). I grouped the results according to the technology center associated with the respective patent examiner.

PatentlyO054

116 thoughts on “USPTO Grant Rate by Technology Center

  1. ping, the whole question is still open. The Supremes have yet to rule.

    I for a long time was persuaded that Alappat was right. Now, I agree that 6 has made a good case.

  2. 6, you have me persuaded. Good job

    You both have me persuaded. Neither knows a lick about law, or about the arts in question.

    The machine is not new; and it really is a non sequitur to say that any program could be implemented in hardware.

    No Ned, it is not a non sequitur. Jus cause you don’t understand it correctly, doesn’t make it so (cept of course in the now famous IMHO-Ned law world). I’d cite it properly, cept Ima lazy, but Ned, read In re Allapat – it’s a nice en banc piece that even the USPTO recognizes (see also their Bilski contribution) that a gen purp computer when programmed becomes a new machine (and 6 – that’s in the main body, which means the en banc ensemble agreed to it, not just one judge). Folks, it really is that simple – whyza you have such a mental block about it, I cannot figure – must be the galactic distance to that other world.

  3. Posted by: 6 | May 27, 2010 at 09:21 PM, “First off, and primarily, they never describe the structure in terms that differentiate it from any other structure in the prior art. In STRUCTURAL TERMS, NOT FUNCTIONAL TERMS, NOT METHOD STEPS, BUT STRUCTURAL TERMS. Never, to my knowledge. Second off, authorship and publishing is hardly “manufacturing”. They are the acts of writing and transferring the written word to (nearly always) pre-made media. Not making the media itself. This is “post manufacturing work” by definition, unless the publisher also manufactures it’s own books/cds in house, in which case they are a manufacturer/publisher not strictly a manufacturer. Those are the two main reasons. And they’re very clear. Crystal even.”

    6, you have me persuaded. Good job. Programs that cause an old machine to perform a new function are patentable as methods. The machine is not new; and it really is a non sequitur to say that any program could be implemented in hardware.

    The issue of patenting computer programs as machines and articles of manufacture goes mainly to infringement issues as the Aussie said above. If the Australian laws say it is not infringement to make and sell a material or apparatus useful in practicing the patented method outside of Australia, then fix that law. If the fix makes no sense for good reasons, then so be it.

  4. stop pawning off your work 6 – Iza be the lazy one, ‘member?

    sides – it was you he was talking to and it was you that messed up what he was saying. Get to it Sunshine.

  5. “In other words, let’s assume for the sake of this argument that you said something completely different than what you said. ”

    Not really, the cupboard analogy is a carry over from another thread, sorry I didn’t represent it to him in total. That’s why I figured he would assume it, but apparently he hasn’t been paying attention that long.

    But go ahead Ping, point out his “logiclol” or go ahead and tell us why this cupboard should be distinguishable based upon the words rather than the specific structure that gives rise to the functionality. Go ahead, I’d love to hear you try.

  6. “Try again and try to actually stick to the logic our new poster has presented.”

    LoL WuT “logiclol”?

    Go ahead, point it out.

  7. I agree, but let’s assume, for the sake of this argument, as I had figured you would pick up by analogy to this situation (I was wrong, you’re kind of bad at analogies), that the claim merely recites writing the words on the cupboard and distinguishes from the prior art only in terms of having those specific words on the cupboard.

    In other words, let’s assume for the sake of this argument that you said something completely different than what you said. “Then I can agree with what you completely did not say.”

    Gee, 6, I don’t know about being bad at analogies, but I’d say that you were none too good at actually engaging in somebody else’s logic.

    Try again and try to actually stick to the logic our new poster has presented.

    It’ll be kinda like the great hall you never came back to (oh! the nightmares of Mommy as bailiff).

  8. Mooney the grimacing clown writes:

    “I’d love to see one, and so would my clients.

    you forgot “…if I had any”

    LOL

  9. “Furthermore, if you can actually find some way in which writing a poem on a cupboard results in the cupboard becoming useful as a bottle opener (when it was incapable of this function before the poem was written on it), then I have difficulty seeing why you should not be granted a patent for that. ”

    I agree, but let’s assume, for the sake of this argument, as I had figured you would pick up by analogy to this situation (I was wrong, you’re kind of bad at analogies), that the claim merely recites writing the words on the cupboard and distinguishes from the prior art only in terms of having those specific words on the cupboard.

    I agree with you that, analogously, the first person to write anything on a CD with a laser was entitled to a claim covering such a method and to a CD with pits etched into it. Those are structural features you’ll notice. Just as the first person to write a poem on a cupboard and makes it useful as an opener should be able to distinguish his cupboard in terms of structural features thereof. But he shouldn’t be allowed to write his claim such that all he does is recite the words of the poem as his distinguishing feature, or the functionality of the cupboard now being an opener. Notice that according to our resident BIO guy MM, that sht don’t fly in BIO claims. And I’ll inform you that it don’t fly in any other arts either.

  10. “It is one thing to have an opinion that a particular form of subject matter should not be patentable (we all have those), quite another (it seems) to engage in a genuinely intelligent debate as to the basis of your opinion. You have been reduced to insults, ALL CAPS, and other forms of derision in only two posts.”

    This is hardly my second post on this topic. I’d say we’re about to hit several hundred shortly.

    I reiterate that my “opinion” is not that they are not patentable, but merely that the PTO is allowing claiming practices which are improper. I have yet to see a court smile upon such claims. Indeed, the only case I’ve seen that involved a Beauregard in court had the judge up in arms against the claim practice.

    “I disagree with you, and I can explain cogently why that is. ”

    I haven’t noticed you doing so. I’ve only noticed you going on and on about how the medium is functional (surprise surprise, any blob of cd plactic shaped in a cd-like shape is “functional”) which nobody has nay sayed. What I’ve been trying to drill into your head, through use of caps and otherwise, is why whether or not a cd is functional doesn’t matter in how it must be distinguished from the prior art. We use structural terms here in the US.

  11. The difference between what? I don’t know what you mean by the difference between one thing. Please explain it to me.

    Sigh.

    It seems my hero takes a fall whenever he ventures into the p(W)inted (M)atter (D)octrine area. I think that subject clouds his mind and his usual zing has a hard time getting started.

    Obviously, there was more than one thing in mind when BioPatAtty talks about the point of patents – the thing that BPA says is wrong, and the thing (unsaid) that would be the correct point. If something is wrong, then something else has to be right, right?

    BPA, would the correct point have anything to do with the “exclusion” property of patents (some would say the “negative only” right)?

    I think I remember reading somewheres about patents not being the same as a right to make money, therefore the remedy needing to be aligned with the actual right involved. Ima sure that IANAE has covered this ground when he wasn’t so tired.

  12. anon: There is no rule of law that biotech claims cannot be expressed functionally

    Really? So I don’t need to recite structure in my composition claims? All I need to do is appeal and voila! Wow. Can you give me some examples of a granted and valid chem/bio composition claim that doesn’t claim the novel aspects of the composition in structural terms? I’d love to see one, and so would my clients.

  13. >>You strike me as an unimaginative person.

    When you lose on substance it is time for MM to get mean and ask for a cite.

  14. My “theory” does not make music on CDs patentable. Playing a CD does not cause the CD player to execute any novel or inventive method that can be specified in a patent claim by virtue simply of its reproduction of the recorded music.

    Really? As a matter of law? Do you have a cite for that? You strike me as an unimaginative person.

  15. More outstanding spin from IANAE. The guy’s a genius. Noboday tell him though, that all his spin has already been covered in the Printed Matter Doctrine discussion (or as I like to sometimes call it the p(W)inted (M)atter (D)octrine).

  16. BioPatAtty:

    Not exploiting a patent would seem to defeat the point of getting it in the first place, no? You expect far too much. I’m not convinced that many of these characters actually work in the business.

  17. AusAttorney: It is disingenuous to assert that such claims cover, or are equivalent to, merely “writing down a method”. They cover what would have traditionally been called a “vendible product”, ie a computer storage medium (CDROM or the like) bearing a computer program that implements a specified method.

    Sorry, didn’t mean to gloss over that important aspect of the claim. It’s equivalent to writing down the steps of a method on a thing you could sell to somebody. Like a mug or a sheet of paper. Does that make it sound any more patentable?

    AusAttorney: You do not infringe such a claim by simply “writing down the method”.

    Sure you do, unless you write it in some way a computer can’t read. Computers can read printed text on paper, by the way. Even printing out the issued patent is an infringement of a Beauregard claim, whether or not that’s the format the patentee chooses to sell.

    AusAttorney: The method executed by the player is the one that it was preconfigured to perform, namely to read and decode the information on the disc, and reproduce the corresponding artistic work.

    That’s an excellent argument against the patentability of any program written in an existing standard programming language.

    AusAttorney: By the same token, patents can also be obtained covering media containing encrypted information, where the encryption algorithm is novel and inventive.

    That’s product-by-process, and you’d probably have to decrypt the data to know it’s been encrypted that way, which is pretty much impossible if your encryption algorithm is any good. But still, at least the claimed invention is something special about the actual data on the medium. By the by, I’m curious to see whether Bilski carves out some space for encryption algorithms, which are genuinely useful but do nothing more than move data around.

    AusAttorney: You are entitled to your opinion, but the CAFC, and numerous other authorities … disagree with you.

    Foreign authorities probably have less precedential value in the US than you think. Also, have you read the CAFC decision in Beauregard? Not exactly a ringing endorsement of the claim format.

    AusAttorney: It’s surely invalid for obviousness, though, since it encompasses any method of recording a program for writing on a piece of paper (also known as “printing”) onto a computer-readable medium that is distinguished from the prior art (eg saving a copy of a printer driver program to your hard drive) only by virtue of the particular phrase that is to be printed.

    So… a recording of a program on a computer-readable medium that is distinguished from the prior art only by virtue of what’s written on the medium is inherently obvious? Great. We don’t need 101 at all, then.

    BioPatAtty: I would have liked to have believed that someone who allegedly works in the field would have known the difference.

    The difference between what? I don’t know what you mean by the difference between one thing. Please explain it to me.

    If you want to discuss the difference between an exclusive right and an injunction, please refer to my previous comments on the subject. I’m in no mood to go through that again.

  18. Isn’t the whole point of patents that once you invent something you get to be the only person who uses that invention?

    Posted by: IANAE | May 27, 2010 at 03:30 PM

    I cannot even begin to describe how completely WRONG this statement is. Unfortunately, this is a recurring theme in the lay press about patents. I would have liked to have believed that someone who allegedly works in the field would have known the difference.

    Perhaps I expected too much.

  19. “Maybe I’m having difficulty because my personal rate of grants per utility application filed is upwards of 95% (higher than that if I subtract out the university and/or government agency apps).”

    You must have the most conservative clients in the world then. Your clients never want to take a gamble and file on something that’s razor close to the edge of the prior art? Mine do that all the time. Sometimes, it works out for them. Sometimes, it doesn’t.

  20. you can troll almost as much as IANAE.

    Watch your step, boy – nobody is even close to my main man.

    It is one thing to have an opinion that a particular form of subject matter should not be patentable (we all have those), quite another (it seems) to engage in a genuinely intelligent debate as to the basis of your opinion. You have been reduced to insults, ALL CAPS, and other forms of derision in only two posts.

    Your post implies that you are an Examiner, which makes this behaviour not only insulting, but disrespectful and unprofessional.

    Must be new here – AusAttorney meet 6, 6 meet AusAttorney.

    Just a note AusAttorney, if you be looking for “to engage in a genuinely intelligent debate” let me know when you find it, cause you may find the long lost NAL too. I haven’t had me a four page essay in awhiles.

  21. ” Since biotech applicants aren’t allowed to claim functionally like, say, software applicants…”
    Quote from Mooney. The problem is that the standards for patentability are the same. There is no rule of law that biotech claims cannot be expressed functionally – it is just that TC1600 management has come up with a lawless list of claims that examiners are instructed to refuse to allow on 112 grounds (e.g. claims to methods of prophylaxis, solvates, etc.). Hence the low allowance rate. The majority of appeals on 112 issues from TC1600 result in the examiner being reversed. A few of the SPEs are Jack&&&&es.

  22. AnotherJuniorExaminer:

    My “theory” does not make music on CDs patentable. Playing a CD does not cause the CD player to execute any novel or inventive method that can be specified in a patent claim by virtue simply of its reproduction of the recorded music. The method executed by the player is the one that it was preconfigured to perform, namely to read and decode the information on the disc, and reproduce the corresponding artistic work. It is well-established that the artistic work itself, in whatever form, is not patentable.

    On the other hand, patents have been granted that cover encoding and decoding methods and apparatus, and all recorded media created to contain information (music, video, data etc) that is encoded in a specific manner, using a novel and inventive encoding method. For example, US5920272 and US5969651 both cover media employing the low-level spectral coding used in the DVD specification.

    By the same token, patents can also be obtained covering media containing encrypted information, where the encryption algorithm is novel and inventive.

    6:

    It is one thing to have an opinion that a particular form of subject matter should not be patentable (we all have those), quite another (it seems) to engage in a genuinely intelligent debate as to the basis of your opinion. You have been reduced to insults, ALL CAPS, and other forms of derision in only two posts.

    Your post implies that you are an Examiner, which makes this behaviour not only insulting, but disrespectful and unprofessional. You are entitled to your opinion, but the CAFC, and numerous other authorities (including the European Patent Office and the UK Courts, where computer programs per se are expressly not patentable) disagree with you.

    I disagree with you, and I can explain cogently why that is. By contrast, your insulting example claim has nothing to do with Beauregard claims. It is a process claim that defines a transformation of a physical article, and thus statutory subject matter under Bilski. It’s surely invalid for obviousness, though, since it encompasses any method of recording a program for writing on a piece of paper (also known as “printing”) onto a computer-readable medium that is distinguished from the prior art (eg saving a copy of a printer driver program to your hard drive) only by virtue of the particular phrase that is to be printed.

    Furthermore, if you can actually find some way in which writing a poem on a cupboard results in the cupboard becoming useful as a bottle opener (when it was incapable of this function before the poem was written on it), then I have difficulty seeing why you should not be granted a patent for that. A cupboard is statutory subject matter, and one bearing a poem that imparts new functionality is indisputably novel and inventive! Good luck with figuring out how to do it.

  23. “The novel structure, if you insist upon it, is the computer-readable configuration of the medium (whether this be optical pits and lands, magnetic domains, or even holes in a punchcard), which has never before existed, since executable code to perform the method has never before been written.”
    -AusAttorney

    I’d be careful how you phrase that. Punchcards reminds me of the player piano case (WHITE-SMITH MUSIC PUB. CO. v. APOLLO CO.) in copyright law. Under your theory all music recorded on cds is patentable because when executed on a computer it cause the computer to play make sounds that the computer had never made before and the pits and lands on the cd are novel.

    I personally think that all programs should be restricted to method claims so that the problems of identifying structure in the system claim, and trying to overcome the intellectually dishonest nature of beauregard claims could be avoided. But we’ll see in the next few weeks what the Supremes do.

  24. “It limits the claim to something that is only infringed by activities that actually encroach upon the patentee’s rights.”

    What does that have to do with anything?

    So a claim to:

    A method comprising:

    Writing instructions to write “AusAttorney is du mb and cannot tell what a distinction is” on a sheet of paper on a computer readable medium with a laser beam.

    DOES NOT LIMIT the claim to something that is only infringed by activities that actually encroach upon the patentee’s patent rights? LoL WuT? Oh man, you can troll almost as much as IANAE. Come on man, there is no meaningful distinction. Sorry. The only “distinction” that there even could be, but really isn’t, is the supposed distinction that the “instructions” are to control a machine to function in some manner as opposed to be only limited to viewing by humans aka, subject matter under the PMD. I suppose that the poem written on a cupboard to that just happens to make it useful as a bottle-opener is similarly not covered by PMD. Riiiiight.

    ” Furthermore, it is novel and inventive (assuming the method is novel and inventive) ”

    Now product/apparatus claims are distinguished in terms of method steps? Ex Parte Lyell says differently, and so do a few cases that have recently cited that case. Guess what they said? They said that products and apparatii are distinguished in terms of structure, not method steps. In fact, some cases have explicitly noted that this is axiomatic and unquestioned/unquestionable as Ex Parte Lyell insisted it was.

    “The novel structure, if you insist upon it, is the computer-readable configuration of the medium”

    I do, and I’ll be wanting an up close picture of it in the drawings, “configuration” of/ and all of the structural features separated from the prior art structures to help me discern the difference. Look forward to making that drawing for me.

    “which has never before existed, since executable code to perform the method has never before been written.”

    So you say, but that’s what my review is about to determine. And I need to know specifically what that structure is to make sure it hasn’t been done before, I’m not interested in your functionality nonsense, I’m looking for the structure. And if you don’t provide it, look forward to getting a copy of Mrs. Spear’s album in the mail with your OA. I also need to know the structure to determine if there would be an obvious combination of “1′s and 0′s” that might preclude patentability because I am not above combining the pits in Mrs. Spears works with the pits in a copy of Avatar if there is a motivation to combine.

    “This might pose a bit of a problem in the US, where it is arguable that the Beauregard claim is effectively expressed in “means plus function” form, and should therefore be interpreted according to 112(6). ”

    I thank you sir for another cannon ball that may be fired in my barrage if I ever get such a claim. So far they’ve all pus sied out and elected only the other Groups and then never file a DIV. FRAK! Pus sies! And just because I give them a, tiny, teensey even, preview of some of the rejections/objections that are coming shouldn’t stop thems that has ballz! It surely wouldn’t stop Mr. NWPA, so one day we will face off on the field o’ battle. Sure, it’ll probably cost his client upwards of 30k for him to respond to all the rejections, but no matter. His clients have deep pockets and he r invincible!

    “Perhaps you can try once more to articulate a little more clearly precisely what your problem is with these claims, and why patentees who develop and sell software should not have the same protection for their products under the patent law as other manufacturers?”

    First off, and primarily, they never describe the structure in terms that differentiate it from any other structure in the prior art. In STRUCTURAL TERMS, NOT FUNCTIONAL TERMS, NOT METHOD STEPS, BUT STRUCTURAL TERMS. Never, to my knowledge. Second off, authorship and publishing is hardly “manufacturing”. They are the acts of writing and transferring the written word to (nearly always) pre-made media. Not making the media itself. This is “post manufacturing work” by definition, unless the publisher also manufactures it’s own books/cds in house, in which case they are a manufacturer/publisher not strictly a manufacturer. Those are the two main reasons. And they’re very clear. Crystal even.

  25. ‘So, writing with a laser beam in computer code language rather than plain english. Gotcha. I know, I know, you love to make and rely on that “distinction” that doesn’t exist.’

    Of course this is a meaningful distinction. It limits the claim to something that is only infringed by activities that actually encroach upon the patentee’s rights.

    The claim relates to an article of manufacture, that is functional in nature. Furthermore, it is novel and inventive (assuming the method is novel and inventive) in the real sense that there has never before existed, until the patentee created it, any prior article capable of performing the same function when inserted into a computing device.

    The novel structure, if you insist upon it, is the computer-readable configuration of the medium (whether this be optical pits and lands, magnetic domains, or even holes in a punchcard), which has never before existed, since executable code to perform the method has never before been written.

    This might pose a bit of a problem in the US, where it is arguable that the Beauregard claim is effectively expressed in “means plus function” form, and should therefore be interpreted according to 112(6). But this is not an issue under 101 (as you seem to be suggesting). Nor is it an issue in almost every other jurisdiction.

    Perhaps you can try once more to articulate a little more clearly precisely what your problem is with these claims, and why patentees who develop and sell software should not have the same protection for their products under the patent law as other manufacturers?

  26. “CDROMs (or equivalent) are the primary commercial product of software developers, no different from any other physical product produced and sold by “traditional” manufacturers.”

    I agree, let’s make them patent them in the same fashion as well ok? Distinguish in terms o structure and I’m down with your sickness.

  27. “You infringe it only by producing, or otherwise dealing with, a computer storage medium containing an executable program that, when executed, actually implements the method.”

    So, writing with a laser beam in computer code language rather than plain english. Gotcha. I know, I know, you love to make and rely on that “distinction” that doesn’t exist.

  28. “Did she also ask why patent law is the only reason she could even have a first test?”

    Did you tell her that a gov sponsored group was doing the exact same research as Myriad and was only beat by a few days? Hmmm, I’ll answer yours so you answer mine. But, no, I doubt if she did ask that, she probably asked something akin to “is patent lawl the only reason why I could even have a first test” and you answered, sagely, “no”.

    “If not, you can still explain to her that Myriad has not stopped liking money since her first test, and will gladly test her a second time.”

    You might be unfamiliar with the concept of “second opinion”. Maybe you need a wiki to help you out.

    link to en.wikipedia.org

    In this case the “physician” is the person doing the test, aka Myriad and company B. I know these concepts can be hard to grasp, but at least try IANAE.

    “If she wasn’t comfortable making that tough decision based on a single test, she shouldn’t have gotten the test. ”

    LoL WuT? With logic like that, if we aren’t comfy getting into a car accident we shouldn’t buy a car. Hmmm, idk about that just like idk about your original statement. Similarly, if you aren’t comfy making the decision to take the AIDS bad-for-your-body cocktails based on a single test then should you not get tested? Hmmm, I just don’t know about this logic IANAE. You usually can do better. Much better.

    “Might have been. So what?”

    You just gave yourself a papercut making your ultra-paper thin argument. Why? See next comment :)

    “but neither would have gotten there at all if nobody had organized the meet and put up the prize money.”

    Maybe you didn’t hear, the gov fully funded one of the groups, and they weren’t going to patent the gene, or were not going to enforce it if they were talked into it to disclose it in patent form. Does a soldier voluntarily enter battle before cleaning his gun and ensuring it is in working order? Review ya facts before you step into the arena sonny.

    I’m not going to bother with your nonsensical arguments based on terribly faulty logic, no doctor would ever spout this sort of mess. Not even the 100% pro-patent “patentdoc” Noonan bothers with it.

    Also, I suspect you’re trolling me and I will feed you no longer.

  29. Regarding Beauregard claims…

    It is disingenuous to assert that such claims cover, or are equivalent to, merely “writing down a method”. They cover what would have traditionally been called a “vendible product”, ie a computer storage medium (CDROM or the like) bearing a computer program that implements a specified method.

    You do not infringe such a claim by simply “writing down the method”. You infringe it only by producing, or otherwise dealing with, a computer storage medium containing an executable program that, when executed, actually implements the method. CDROMs (or equivalent) are the primary commercial product of software developers, no different from any other physical product produced and sold by “traditional” manufacturers.

    I do not think the position can be stated better than it was by the Honorable Mr Justice Kitchen in Astron Clinica Limited [2008] EWHC 85 (Pat) (at [9]):

      ‘…the applicants all exploit their inventions by selling computer programs stored on a computer readable medium or by Internet download and competitors can, of course, do the same. This presents the applicants with the problem that, without computer program claims, they can only protect their inventions by invoking the contributory infringement provisions of section 60(2) of the Patents Act 1977 (“the Act”). What is worse, those provisions give no protection against the production and sale of programs in the United Kingdom if they are intended for use abroad.’

    Beauregard claims are neither harmful nor unnecessary. To suggest that they are is merely to advance a particular ideological position without articulating precisely what that position is. If you are opposed to the grant of patents for computer-implemented inventions, just say so and argue your case rationally. Don’t set up Beauregard claims as a straw man.

  30. couldn’t think of how to spell that sht and didn’t want to look it up. I never crushed on her like 99% of american boys did. I always thought superman should go for someone hotter and more intelligent than a journalist :(.

    Two words: March 1975

  31. Kappos started out strong as maverick but now he is all talk and no action (a.k.a. Dudas). Instead of cutting costs he added another layer of management. On May 20, 2010 he announced another layer of directors bring the total directors to 29. Examiners once welcomed him with changes he made for compact prosecution and production. But, now most simply dismiss him which can be seen from reduced responses to his blogs and other initiatives.

    I don’t expect the allowance rate to continue because layers of management bogging down an Examiner have returned. In August 2009 all management stepped aside in fears of what Kappos might do. Now they are back with Kappos’ blessing.

  32. She asks you why patent law should be allowed to prevent her from having another test

    Did she also ask why patent law is the only reason she could even have a first test?

    If not, you can still explain to her that Myriad has not stopped liking money since her first test, and will gladly test her a second time.

    If she wasn’t comfortable making that tough decision based on a single test, she shouldn’t have gotten the test. Why pay $3k for information you know you’re not going to use?

    A couple of days or a week difference in the disclosure?

    Might have been. So what? Two people got to the finish line in rapid succession, but neither would have gotten there at all if nobody had organized the meet and put up the prize money. It’s unfortunate that there was no prize money for second place, but there are about 7 million other events with similar prizes.

  33. “You see the iron brains have created multiple problems by refusing to treat information processing methods on the terms those skilled in the art treat the methods.”

    If they want to live in a fantasy land where they treat the methods as something other than what they are in order to better do their work then that is their business, not that of those around them.

    “You’re not a real American.”

    I couldn’t think of how to spell that sht and didn’t want to look it up. I never crushed on her like 99% of american boys did. I always thought superman should go for someone hotter and more intelligent than a journalist :(.

    “I don’t see why it’s so fundamental to give people a “right” to a second opinion on diagnostic tests when the first opinion is patented. ”

    You might see differently, or more clearly, when it’s your testicles on the line bub. Or your wife/mother/sister/relative blah blah blah’s breast. Not to mention the possibility of death during surgery. You do know that there is a chance of death on the operating table from these operations right?

    I’d love to see you around the thanksgiving table talking to your younger niece who happens to have just had this test and tested positive. She asks you why patent law should be allowed to prevent her from having another test to make sure she needs to have her breast cut off. I guess you’d just look over at her and say “I’ll tell you why, tough sht sista, company A (Myriad?) beat the other company to making the discovery by a week so you don’t get that info, make your decision, breast or no breast”. Shortly thereafter you’re probably disowned by the fam but no biggie, so long as your patent lawl right to exclude trumps every other concern.

    ” The technology to give even the first opinion didn’t exist before, so people should be happy to have even that during the patent term.”

    The case for that nonsense in the instant case is so paper thin you probably just got a paper cut. A couple of days or a week difference in the disclosure? You may as well just come right out and be arguing for us to consider the entire patent system ridiculous in total now. Don’t worry, I won’t mind a bit, because what leads you into this nonsensical realm is really that youre dealing here with nothing but the psuedo-neo-Useful Arts and the patenting thereof, which always leads to these kinds of nonsensical messes. Patenting manufacturing methods and products etc doesn’t cause this nonsense, and the framers were wise in the extreme to strictly limit the congress’s ability to pass lawls to make patentable subject matter extend beyond such.

  34. “What makes the 2nd better than the first?”

    Who says the 2nd is “better”? Not me. Having them both is “better” though because it rules out some margin of error and may very well alert you to a false positive, thus saving your breasts and the trouble of getting them chopped off.

    “The first says “you’ve got the gene for breast cancer”. The second says “you don’t”. How’s that working for you?”

    That is the ideal situation (other than having the first one come back negative in the first place) because you know that you need to have it done a few more times to get a good picture of what is going on, and you have hope that the first one was just a f up.

    “The test kit and method steps to perform the test were clearly patent-eligible subject matter.”

    Says you. I’m not 100% certain about the method step claims in this case as I didn’t really pay too much attention to them. Were they tied to a particular machine? I wonder about the “transformationlol” that they no doubt implicitly include. The court recently ruled on the subject, but I don’t think it was an en banc decision regarding those diagnostics. Further, I believe that is a great question for the USSC to answer for us. Methods with no other transformation involved other than having made a diagnosis and incidental transformations made to accomplish such are rather iffy.

    If the court in Bilski should adopt Stern’s take on things (which would be dam near ideal) then I’m not 100% convinced that diagnostic methods were considered within the useful arts nor should they be today. They are useful, no doubt, but they are necessarily limited to the doctoring arts, they are not involved in manufacturing etc any more than a business method is. They are, quite likely, a scam like so many other types of claims we allow these days.

    That’s not to say that I don’t think there should be “protectionlol” for these types of claims to encourage innovation in the space. Congress may very well should encourage the doctoring arts and should draft a statute to do such. They might also decide, in drafting this statute, to provide exceptions for 2nd opinions and other wise things of the sort.

  35. 6,

    OK, so you want a second opinion? What makes the 2nd better than the first? The first says “you’ve got the gene for breast cancer”. The second says “you don’t”. How’s that working for you?

    Besides the political issue (“No one should own your genes”), the underlying issue in the Myriad case was cost. The test kit and method steps to perform the test were clearly patent-eligible subject matter. So insurance won’t pay for the test and you can’t afford it. Why is this any different from a pharmaceutical? If your insurance won’t pay for it and you can’t afford it either, you can’t get your drug until it’s available as a generic. Pretty slippery slope just because the molecules involved happen to be related to a DNA sequence.

  36. Or you could be a Agent that can’t run a Patent through the prosecution stage.. and you just gotta keep it fer yerself…regardless of the situation you face..

  37. ping Funny how that particular group has a bunch of practicioners that can’t get the hang of writing a quality patent. Care to explain that a little better Malcolm?

    Maybe I’m having difficulty because my personal rate of grants per utility application filed is upwards of 95% (higher than that if I subtract out the university and/or government agency apps).

    Possibly a part of the answer could be the greater proportion of apps in the 1600 art unit filed by universities and/or government agencies who readily let most of the apps die if, for whatever reason, there is no licensing money to pay for the prosecution.

  38. You see the iron brains have created multiple problems by refusing to treat information processing methods on the terms those skilled in the art treat the methods.

  39. >>PTO: Hahahahahahaha. You get your single >>enzyme sequence.

    We’ve discussed this problem with before. There have been papers that discuss the problem is not recognizing that improving how function x is done is important. the measure though is space and time. The problem the courts don’t want to recognize these metrics.

  40. Geez, I guess I owe 6 a coke for my Superman comment. As they say, great minds …

    …but 6: Louise??! Louise Lane?!?

    You’re not a real American.

  41. You might have missed the Ebay decision,

    Pretty sure I’ve mentioned it before.

    I don’t see why it’s so fundamental to give people a “right” to a second opinion on diagnostic tests when the first opinion is patented. The technology to give even the first opinion didn’t exist before, so people should be happy to have even that during the patent term.

    Nobody is required by the patent to undergo radical preventive surgery that they would never have even considered without the test results. Even the diagnostic test itself is optional. If you don’t like what you might do with the information, don’t pay $3k to get the information in the first place.

  42. “Isn’t the whole point of patents that once you invent something you get to be the only person who uses that invention?”

    You might have missed the Ebay decision, but in a sense you are nearly right. Regardless of your slightly missing the mark, it isn’t so that you get to be the only one who uses that invention such that someone wants to kill you for giving them a result that there is a “good chance” that they have a breast cancer gene that indicates there is a good chance they need to have their breast cut off so they don’t die without you allowing someone else to independently verify that “good chance” or drive it further towards a 100% chence.

  43. adjusts the grant rate valve

    b-b-b-ut you either have a patent or you do not. I am not sure where in the law there is any type of “adjust valve”. Funny how that particular group has a bunch of practicioners that can’t get the hang of writing a quality patent. Care to explain that a little better Malcolm?

    As to the descent (yet again) into Printed Matter Doctrine land, yu’all need to wrap your heads around that concept before pollutin my boards with that half-thought stuff. I aint have the time to be learnin ya again and again like I been doin. It aint like it hasn’t been the law since forever, and it aint like both the courts and the Office have agreed what it is. Take the time to untwist your knickers and move on.

  44. Malcolm, if you change “here’s your patent” to “here’s your sign” I think you’ve got a pretty decent system there.

    Don’t forget to name me as a co-inventor if you save your idea on a disc somewhere. Oook.

  45. Spec: One enzyme sequence with novel function A, useful for treating cancer.
    Claim: “Enzyme with novel function A.”
    PTO: Hahahahahahaha. You get your single enzyme sequence.

    Spec: Method for making a computer do novel function X, useful for sorting your recipes by weight of ground beef needed. No code disclosed.
    Claim: Disc that can make a computer do X.
    PTO: Thank you for making America great. Here’s your patent.

  46. except for the fact that he is forclosing all use of an algorithm with the claim, and plainly that is disallowed.

    Also I note that no patent, DNA or otherwise should be allowed to stop someone from getting a second opinion in their doctoring.

    Isn’t the whole point of patents that once you invent something you get to be the only person who uses that invention?

  47. “What would superman say to you after he built his ice castle with a crystal.”

    “Lois is going to get her freak on when she sees the inside of this pad.”

  48. you can assume that I’ve made the determination that if the Examiner prevails as to claim 1 then claim 10 is likely to be obvious (as is any intervening claim).

    That sounds like a very silly thing to assume. It also sounds like something you don’t want anybody to assume, because if it were true pretty much all of your dependent claims would be useless. Litigators would love to be able to look into file wrappers and infer that any claim not separately argued automatically falls if claim 1 falls.

    Claim 10 was presented for examination. If the examiner determines that claim 10 is allowable if rewritten in independent form, that’s fine. That’s his job. You don’t have to agree with him. You don’t agree on claim 1, so why would you expect agreement on claim 10?

  49. “What about that DNA 6?”

    Meh. I don’t mind those patents so much as I find them distasteful. I mean, sure, a chemical is patentable, but on the other hand, what they really want to patent is the information content of the chemical as noted by the DC in that case. And, it just so happens that the info content and the physical structure in that case are indistinguishable. They are clearly disallowed from patenting just the informational content and that is what they are trying to achieve with a claim to the chemical, so it likely should not be allowed. It’s similar to the case in Benson, sure the shift register machine thing he claimed is a machine and would be patentable, except for the fact that he is forclosing all use of an algorithm with the claim, and plainly that is disallowed. All of which is very similar to the general purpose computer reprogramming claims where software per se is disallowed from being claimed and thus a claim to the only realistic use for that software, being on a gen purpose comp, should also be disallowed.

    All of these situations are exceedingly similar in those respects and that makes them distasteful and likely improper.

    Also I note that no patent, DNA or otherwise should be allowed to stop someone from getting a second opinion in their doctoring. That should be statutorily implemented already and I was surprised to find it wasn’t. I’m pretty sure I’d like to be 1000% sure I had the testical cancer gene before they go a snippin’.

  50. “Examiners don’t know or care what claim scope is valuable for your client. Their job is to tell you what’s allowable and what isn’t, and it’s completely expected under any administration that they will be more likely to allow narrow claims than broad claims.

    If you want broader claims than the examiner is willing to allow, that’s your job.”

    Perhaps you didn’t read what I wrote carefully. One of my comments was that I was getting allowable claims on claims I didn’t argue.

    Although not always true, but if I don’t argue, e.g., dependent claim 10, dependent upon claims 9, 4, and 1, then you can assume that I’ve made the determination that if the Examiner prevails as to claim 1 then claim 10 is likely to be obvious (as is any intervening claim).

    The fact that an Examiner will allow a claim that wasn’t even argued evidences their attempt to push allowances (on narrow subject matter) as opposed to doing their job which is to allow everything that should be allowed — even broad independent claims.

  51. Ph.D.’s from Harvard and MIT that have 50+ patents and have created products that have sold 100′s of millions of dollars are flakes. Try again.

    Just so you know, making lots of money is not indicative of inventing anything. It’s indicative of being very good at business and having a good business model.

    And as for being flakes, I’m sure you’d say the same about the PhD’s in the patent office that examine your applications.

  52. What about that DNA?

    The convenient thing about DNA is that it’s always coded in the same language. Even if you formally claim it as a polymerase-readable medium (or whatever) containing instructions for producing a particular protein, that narrows down the actual structure of the DNA to a well-defined set of sequences. That is to say, your claim is always effectively equivalent to the actual structure of the DNA.

    What if you claim a computer-readable medium containing instructions for telling a computer to toss a salad in a particular way? What structure of a computer-readable medium infringes? What if I make a computer that tosses a salad that way in response to an Atari Space Invaders cartridge? Is the code for Space Invaders invalidating prior art?

  53. “If he can enable such a medium as the one described, i.e. one that engages with a computer, then by all means, file a claim to just that, you’re the first to have invented it so far as I’m aware.”

    I’m pretty sure Jeanne Dixon engaged with a computer in the years before her untimely death. I suspect that there are other examples of mediums that engage with computers.

  54. Ph.D.’s from Harvard and MIT that have 50+ patents and have created products that have sold 100′s of millions of dollars are flakes.

    What about NYU alums with masters degrees? Or do people with all those patents still need a fancypants PhD from Harvard to prove their legitimacy?

  55. “You know, if you’re going to be that obsessively reductionist, it’s going to get difficult to have an intelligent discussion of this topic.”

    Hey, all I’m saying is: enablement. If he can enable such a medium as the one described, i.e. one that engages with a computer, then by all means, file a claim to just that, you’re the first to have invented it so far as I’m aware.

  56. “What would superman say to you after he built his ice castle with a crystal.”

    That he isn’t real? That he just invented a crystal that can shape ice and that he’d love to describe in detail the structure of this crystal for me so that he could obtain a patent therefore? Idk? What do you think he’d say?

  57. “Ph.D.’s from Harvard and MIT that have 50+ patents and have created products that have sold 100′s of millions of dollars are flakes. Try again.”

    Do any o them have lawl degrees? Do they have any clue about patent lawl?

    In any event, you’re one to talk, you routinely call the PhD’s who naysay your scams flakes, or worse.

  58. NWPA Ph.D.’s from Harvard and MIT that have 50+ patents and have created products that have sold 100′s of millions of dollars are flakes.

    You said this. I didn’t.

  59. >>hand-wavey functy-duncty thing they thought up.

    Ph.D.’s from Harvard and MIT that have 50+ patents and have created products that have sold 100′s of millions of dollars are flakes. Try again.

  60. Those are the ones that engage a machine to perform a method.

    Sort of like the instructions on paper that engages the robot chef to toss your salad.

  61. NWPA I would like to see the two of you in a conference room with me and one of my inventors and see you try to explain to them why what they are doing is not an invention

    Oh, there’s an invention there all right. It’s just that the valid, patentable description of it is going to look different from the hand-wavey functy-duncty thing they thought up.

  62. And DNA isn’t anything either. It just sits there while other molecules move up and down it.

  63. It just sits there, and is occasionally rotated with a light shined down upon it.

    You know, if you’re going to be that obsessively reductionist, it’s going to get difficult to have an intelligent discussion of this topic.

  64. >>It just sits there, and is occasionally >>rotated with a light shined down upon it.

    What would superman say to you after he built his ice castle with a crystal.

  65. “Those are the ones that engage a machine to perform a method.”

    How does a CD or other medium, medium-rare or medium-well engage a machine to perform a method? Hmm? I’ve never seen such a Beauregard in all my life, never have I ever witnessed one which recited actively engaging a machine to perform a method. Sometimes they go on and on about reciting instructions to engage or etc. but never have I witnessed one where the claim actually engages the machine.

    Besides, no CD engages a machine to do anything. I, on the other hand, might engage a machine to do something, and I might insert a CD with some instructions to assist me in instructing the computer what to do. But as I said, the CD doesn’t engage the machine to do squat. It just sits there, and is occasionally rotated with a light shined down upon it.

  66. “And, Sarah, I like to read your posts because it is fun to speculate what the meaning of the words may have.”

    I agree that is rather fun until they get so bad that I really can’t even hazard a guess anymore.

  67. “I would like to see the two of you in a conference room with me and one of my inventors and see you try to explain to them why what they are doing is not an invention. ”

    I would tell them point blank that it likely is an invention, now all they have to do is describe the actual structure of the medium for me rather than the “information”, it’s supposed functionality, or the functionality of a completely different device and do so in a manner that distinguishes from the britney spears CD I would be holding in my hand.

    And if they absolutely insisted that the information or function was the only thing special I might also explain to them that authorship is not inventorship, nor is something that was merely authored something that was invented and that the two are mutually exclusive.

    I’d then like for you to explain to them why what they are doing is an invention. You will likely then leave a changed man when I’ve responded, put your comments in context and they lol@ux1000000000000.

    “They find your position archaic and destructive. ”

    I agree with them on both counts. It is both archaic and it is also destructive of patents that are not authorized by congress and which ought never be.

  68. try to explain to them why what they are doing is not an invention.

    I’m not saying performing the method isn’t an invention. I’m saying writing down the steps of the method isn’t an invention. Unless you are prepared to name yourself as an inventor on every Beauregard claim for drafting the corresponding method claim.

  69. INSANE/Mooney/Willton

    A veritable “Three Stooges” of PatentlyO all from the same keyboard no less.

  70. >>a medium because they’re neither rare nor well->>done

    >>a medium because they’re neither rare nor well->>done

    I would like to see the two of you in a conference room with me and one of my inventors and see you try to explain to them why what they are doing is not an invention. I think the two of you would walk out quite changed. And MM I know people that invent both in EE/CS field and the biotech field. They find your position archaic and destructive.

    And, Sarah, I like to read your posts because it is fun to speculate what the meaning of the words may have.

  71. I suppose they are directed to a medium because they’re neither rare nor well-done.

    Double entendre!! Kudos!

  72. NWPA One thought: why do you and MM insist on trying to understand Beauregard claims in terms of what came before? Often that is not possible in innovation.

    It’s always possible and it’s always necessary.

  73. Those are the ones that engage a machine to perform a method.

    The ones that write down the steps of a method. They don’t claim the machine, and they don’t claim performing the method. They’re the electronic equivalent of those push-button-receive-bacon signs on the electric hand dryer, or a mug with a surprisingly instructional poem.

    I suppose they are directed to a medium because they’re neither rare nor well-done.

  74. >>Those are the ones that claim writing down the >>steps of a method, right?

    Those are the ones that engage a machine to perform a method.

    One thought: why do you and MM insist on trying to understand Beauregard claims in terms of what came before? Often that is not possible in innovation.

    Sarah I never know what you are talking about, but now I know every once in a while it is directed at me. So, I guess my comprehension has gone up.

  75. For those of you poo-pooing the GAU 1600 allowance rate, I must ask: how many of you actually prosecute biotech patent applications?

  76. Beauregard claims are perfectly fine.

    Those are the ones that claim writing down the steps of a method, right?

  77. Malcolm Argentina needs to be backed up… sock puppetry.
    Aggressive, Assertive, Devisive Knowledgable, things he has no knowledge of. It’s all about the Bull. The Bull is what gets them in trouble. And I see that there are a lot of those. Take a look see (such as in my case) how many are taking it literally by the Horns.*If you get my horn?
    Maybe a graph on Birthdays in relationship to the law and the lawless…… That Graph may be patentable subject matter. If I can’t Patent it I will share it.

  78. MM: Do you want to argue that the sub-field of technology you are inventing in is, in fact, very predictable so anyone can do the experiments and get the result without undue experimentation? How will that affect your other applications?

    Or do you want to argue that the art is so unpredictable that until you actually make the thing, you have no reasonable expectation of success? How will that affect your applications?

    Or do you want to draft and file a properly enabling disclosure of the thing you’ve actually invented, so you don’t have to rely on skill in the art to fill the gaps in your application?

    So many choices.

    6: Maybe you should have had that interview after the first Nonf?

    Or after the first final, depending on whether the rejection was reasonable on its face. Lots of rejections are worth one written reply. But yeah, that’s generally the right approach when it’s obvious that the agent and the examiner are not communicating, and it’s equally obvious that whatever the agent is doing is not advancing his client’s interests at all.

  79. ping is still implies that the applicants in this art area are m)r)ns who over claim and have done so for years without any hope of learning how to do a better job of drafting claims that reach the overall (and not just puter-related) allowance rates.

    No, it doesn’t. It implies that the art unit continually adjusts the grant rate valve to keep the quality of patents high.

    Zak To suggest that an attorney merely has to “hack away” in their art unit to be successful does an extreme disservice to them.

    If you believe that is true, you should direct your ire to those who defend Beauregard claims.

  80. ” just recently had an interview on a case where the same (alleged) 102(b) art was applied in the same rejection for three or four cycles.”

    Maybe you should have had that interview after the first Nonf? Lololololololololololol, you lawlyers crack me up.

  81. Mooney,

    It is nice to know your disdain for others includes both patent attorneys and examiners.

    Trust me Mr. Mooney most of the examiners I deal are competent at their jobs. To suggest that an attorney merely has to “hack away” in their art unit to be successful does an extreme disservice to them. They deserve your respect, or at least professional courtesy.

  82. the grant rate you see is a realistic one

    This still implies that the applicants in this art area are m)r)ns who over claim and have done so for years without any hope of learning how to do a better job of drafting claims that reach the overall (and not just puter-related) allowance rates.

    Still gonna defend that, Sunshine?

  83. Zak If the applicant cannot have it both ways under §103 and §112 then why should an examiner?

    That is an appropriate question. As an Applicant, however, you still have to pick your poison. The key is to be sure that you are prepared for the side effects of the antidote. Do you want to argue that the sub-field of technology you are inventing in is, in fact, very predictable so anyone can do the experiments and get the result without undue experimentation? How will that affect your other applications?

    Or do you want to argue that the art is so unpredictable that until you actually make the thing, you have no reasonable expectation of success? How will that affect your applications?

    This is elementary stuff, of course, if you’re practicing in the 2600 area. Of course, if you are simply hacking away in an art unit where the average education level on both sides is a B.S. in “engineering” or “computer science” (and an MPEP prep course), you might not ever have to deal with nuance like this.

  84. zak This makes me wonder if the examiners in 1600 are not considering or disregarding the unpredictability of the invention

    Nope. It’s not that.

    if the low allowance rate is because Applicants are claiming to broadly due to the unpredictable nature of their inventions to later abandon what fizzles out.

    That’s closer to the truth. Since biotech applicants aren’t allowed to claim functionally like, say, software applicants, and other “touchy feely” “technologies”, a narrow claim often means an easy design around. Of course, the design-around itself is usually not patentable given the application disclosure, and (in the case of drugs) the cost of bringing the biotech design-around through the clinic is often enough to deter competitors.
    But the best answer is simply that the 1600 Examiners are, for the most part, doing their job (as I’ve been saying for years) and the grant rate you see is a realistic one, albeit probably still a tad on the high side.

    Let’s face it: the 78% grant rate for the 2800 art unit is a joke. That’s design patent territory. At least half of those patents are easily invalidated.

  85. …Appeal after teh second rejection…?
    …submit a letter of protest about teh SPE to the Technical Director…?
    …get IANAE on the case – he be the man!

  86. Is this what the art of prosecution and Examiner Interviews have been reduced to?

    I agree, your anecdote is truly lamentable.

    If you had to do it all over again, what would you do differently?

  87. I just recently had an interview on a case where the same (alleged) 102(b) art was applied in the same rejection for three or four cycles. The same (vague) arguments were pasted in each rejection without advancing prosecution an inch despite refining the arguments each time for the benefit of the record (art fails to disclose A), and requesting further clarification of the basis for the continued rejection.

    In the interview the Examiners SPE said something along the lines of,

    SPE: “oh, you say the art fails to disclose A!!? where is it in the claim?”

    APP: “Claim 1, line 3″

    SPE:”Oh, well now were on to something, well I think I can find that in the art, did you see reference 7,777,777, for example?”

    APP:”Well, 7,777,777 is not of record, and we’ve been making the same argument against 7,666,666 for the last two years”

    SPE:”Tell you what, if you include the limitation of claim 12, I’ll allow it”

    APP:”Why claim 12? That seems a little arbitrary…”

    SPE:”Well, anyway, I’m SURE we can find feature A in the art”

    APP: ” > Sigh < ”

    Is this what the art of prosecution and Examiner Interviews have been reduced to???

    Sadly the answer seems to be yes.

  88. The Applicant argued before the USPTO that it was not obvious over the cited prior art and then argued before the court that it was enabled due to the cited prior art.

    That’s not necessarily inconsistent. Enablement and obviousness are very different things. Got a link to the decision?

  89. PharmaPatents,

    Regarding: Examiners in 1600 having no qualms rejecting a claim under 112 for lack of enablement because the field is so unpredictable and also rejecting the claims under 103 because the invention was obvious

    That basically reminds of the contradiction presented in the IN RE ‘318 PATENT INFRINGEMENT LITIGATION case decided by the CAFC last September. The Applicant argued before the USPTO that it was not obvious over the cited prior art and then argued before the court that it was enabled due to the cited prior art. If the applicant cannot have it both ways under §103 and §112 then why should an examiner?

  90. ME: “I think the chances of getting anything here are low.”
    Client: “Okay, well then I’ll find someone who is willing to try.”

    Since when are “I think the chances of getting anything are low” and “I am willing to try if you are willing to pay” mutually exclusive? Both of those sound like important parts of one’s duty to one’s client.

  91. I would have expected 2600 to be leading the way. I know for a fact that there are a TON of patents with allowable matter held up there from reject reject rejct. Examiners frequently told me so when I had matters in that unit.

  92. wait wait wait. How’d I miss this nugget from Boss12?

    “In fact, some patent attorneys prolong prosecution even when allowable subject matter has been indicated. They do this for the same reason . . . to pump their clients for more billable hours.”

    He thinks you get paid by the hour for patent prosecution. bwhwwhaahahahahahahahahahahahahahahahahahahah

    /breathe/

    bwahahahahahahahahaahahahahahaha

    Maybe it’s because the Examiner has named some worthless dependent claim as allowable and the client is entitled to broader claims? I’m sure you think that’s impossible because examiners are perfect in their broadest unreasonable interpretation huh?

  93. Zak, Examiners in 1600 have no qualms rejecting a claim under 112 for lack of enablement because the field is so unpredictable and also rejecting the claims under 103 because the invention was obvious and there would have been a reasonable expectation of success.

  94. Boss12, it’s good to know that you have no concept of “client”.

    ME: “I think the chances of getting anything here are low.”
    Client: “Okay, well then I’ll find someone who is willing to try.”

    Glad I could double your knowledge.

  95. You gotta be kidding me. That has to be the most unprofessional statement I have ever heard you make. An inventor is entitled to whatever claim he wants unless the prior art shows that someone else thought of it first. And showing that the claim is unpatentable over the prior art is the examiner’s job.

    It’s unprofessional to say that it’s the client’s agent’s job to advocate for the client’s entitlement to a broad claim? I guess I’m unprofessional, then.

    If the examiner tells you a broad claim is unpatentable and a narrow claim is patentable, he’s done that part of his job already. It’s your job to respond to that determination, unprofessional though it may seem to you.

  96. Thought-provoking, from Zak. If he were to prosecute at the EPO, arguing “it was not predicted” rather than “it was not predictable” he would also get through to issue.

    “Not predicted” is like “no TSM”. So maybe “not predictable” is, at a stretch, just good old TSM wearing new KSR underwear.

  97. I am somewhat surprised by the above table. The standards for nonobviousness enumerated in KSR hinged on predictability. Traditionally, the mechanical arts have been considered the predictable arts while the biological and chemical arts have been considered unpredictable arts. Yet the grant rate for 1600 is lower than the grant rate for 3700.

    I primary prosecute medical devices patents classified under 3700 and have successfully overcome obviousness rejections by casting the invention as something unpredictable. This makes me wonder if the examiners in 1600 are not considering or disregarding the unpredictability of the invention or if the low allowance rate is because Applicants are claiming to broadly due to the unpredictable nature of their inventions to later abandon what fizzles out.

  98. Dennis -
    If you have the technology, I sure would like to see your data broken down by examiner name and on a monthly or yearly basis (trend lines).

  99. IANAE

    “If you want broader claims than the examiner is willing to allow, thats your job.”

    You gotta be kidding me. That has to be the most unprofessional statement I have ever heard you make. An inventor is entitled to whatever claim he wants unless the prior art shows that someone else thought of it first. And showing that the claim is unpatentable over the prior art is the examiner’s job.

  100. Clients are often surprised, how contributions to the art can qualify for 20 years of the right to exclude, even though they are trivial. Conversely, I maintain that I can have a patent for everything I put forward that is new, useful and enabled, unless the PTO can prove it is obvious. I contend that, in a fair and law-abiding world of due process, actually proving my thing obvious ought to be well-nigh impossible for a PTO Examiner.

    So, gimme my patent. Do it now please.

  101. Examiners (still in the Dudas mentality) have interpreted that to mean “if you are going to give them anything, give them the least valuable, most narrowest claim you can.”

    Examiners don’t know or care what claim scope is valuable for your client. Their job is to tell you what’s allowable and what isn’t, and it’s completely expected under any administration that they will be more likely to allow narrow claims than broad claims.

    If you want broader claims than the examiner is willing to allow, that’s your job.

  102. Ping, if you can get a patent on a business method by having a computer perform some step of it, then I can get a patent on a product of nature by isolating it.
    ~ Courtenay Brinckerhoff

  103. The number for 2400 appears too low. The TC was created less than 2 years ago from parts of 2100 and 2600. How does that affect the data collected?

  104. TBG–hear, hear! I would love to hear somebody at the PTO explain why 1600 is so much lower than the others. Dennis–is there an easy way to break this down even further (either by 10s or by individual group)? I bet 1644 is the lowest of all.

  105. “In fact, some patent attorneys prolong prosecution even when allowable subject matter has been indicated. They do this for the same reason . . . to pump their clients for more billable hours.”

    hahahahahaha … like recently, when I’ve gotten a half-a-dozen calls from Examiners giving me indications of allowable subject matter — almost all of them directed to the most narrowest of dependent claims, and including claims I never argued.

    Just because you get an allowable claim doesn’t mean you should take them to allowance. Similarly, just because there has been an increase in the rate of issued patents doesn’t mean that valuable patents with deservedly-broad claims are being issued.

    I wouldn’t be surprised if the word came down from up high to get applications allowed and Examiners (still in the Dudas mentality) have interpreted that to mean “if you are going to give them anything, give them the least valuable, most narrowest claim you can.”

    FYI — few attorneys need to pump their clients for more billable hours. There is almost always too much work to go around. Also, many of the clients aren’t dummies — they can tell a frivolous claim amendment from one that attempts to get around the prior art while still maintaining meaningful claim scope.

    This work is too lucrative to be playing those types of games.

  106. The Big Lebowski: “Well, at least know I’m not going nuts: those examiners in GAU 1600 really ARE a bunch of #$%^&.”

    Effective and efficient patent prosecution is best achieved when both the patent attorney and the examiner make the necessary efforts: a) find the best prior art; b) determine whether there is a patentable difference between the invention and the best prior art; c) if there is a patentable difference between the invention and the best prior art, write each independent claim in a way that recites the patentable difference in a novel and unobvious way; and d) if there is NOT a patentable difference between the invention and the best prior art, abandon the application.

    Of course, a patent attorney wouldn’t select option “d,” so long as she can pump her client for more billable hours. Instead, the patent attorney would prolong prosecution needlessly (i.e., file RCEs) to get more billable hours.

    In fact, some patent attorneys prolong prosecution even when allowable subject matter has been indicated. They do this for the same reason . . . to pump their clients for more billable hours.

  107. TBG, I second that regarding 1600. On the other hand, group 2800 is wonderful! (And who is 2400??? Ooook! Ooook!)

  108. TBG, we all know that the allowance rate is so low for this area because the applicants here are especially greedy and write such over-broad claims…

    …or try to claim products of nature (like your DNA)…

    …or espouse odd claim forms like bo-regard claims or try to do everything on a computer… no wait, these people know what computers are, right?

  109. Well, at least know I’m not going nuts: those examiners in GAU 1600 really ARE a bunch of #$%^&. And in the area of technology where patents probably matter the most for spurring investment in research.

    Or maybe it’s just b/c they get so many more apps from Mooney than the other GAUs…

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