Of the patents issued thus far in 2010, more than 25% carry the baggage of a file history with at least one request for continued examination (RCE) and that rate is expected to rise. RCEs are also filed in a significant number of patent applications that are eventually abandoned.
Patent Office management sees the high RCE rate as a symptom of a breakdown in the prosecution system. In their view, after two rounds of negotiation, the parties should have arrived at final positions — either by identifying appropriate patent-worthy claims or else by determining that no-such patentable subject matter exists. At that point, further negotiation with the same examiner makes little sense in the ordinary case. If the applicant and examiner come to an agreement then the case is concluded, otherwise the applicant appeals to a higher authority.
The Problem of RCEs: Although RCEs do generate USPTO revenue, they are troublesome because they frustrate the USPTO's goal of reducing the large backlog of 730,000+ unexamined patent applications. Furthermore, the current RCE fee of $810 ($405 for small entities) do not cover PTO expenses associated with the ongoing examination. The cost differential is made-up with maintenance and extension fees. In most of the RCE'd cases, the applicant and examiner eventually do reach an agreement without an appeal to the Board — but only after more rounds of discussion. This re-working of applications raises costs for patent applicants, delays patent issuance, prevents work on the backlog of cases, and generally makes all the parties look silly.
No Solution Yet: Historically, the patent examiners count system provided some incentive for examiners to induce the filing of RCEs. The count system has been modified to reduce that incentive. Despite this disincentive, RCE filings do not appear to have dropped in any significant way. Another growing RCE disincentive involves patent term adjustment (PTA). The long examination backlog is leading to unprecedented PTAs that can add additional months and years to the term of a patent. Although the filing of an RCE cuts-off the ongoing accumulation of (type-B) PTA, folks are continuing to file RCEs.
Explaining why RCEs are Filed: Although not universal, the broadest independent claims of a patent application are often narrowed during prosecution. It is important to recognize, however, that the narrowing amendments typically involve the inclusion of limitations already found in dependant claims. In the negotiation context, the dependent claims begin to look like pre-set negotiable points. It obviously takes time to reach some mutual agreement between the applicant and the PTO. Perhaps the usual case does need more than two rounds. However, my sense is that the high RCE numbers persist because initial office action rejections regularly fail to directly address the claimed invention and (consequently?) necessary claim amendments are not proffered by the applicant until after the final rejection. At that point, an RCE may be required. Of course, even in the best of times RCEs are sometimes unavoidable — such when prompted by the late discovery of important prior art. The additional time delay of RCEs may be helpful in other cases such as when limitations that distinguish the invention from the prior art are buried in the specification.
The PTO is looking for ways to reduce RCEs and more generally reduce the re-working of applications. To that end, I would like to ask two general questions that will help me create a follow-on survey:
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What is your explanation for the large number of RCE filings?
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What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)
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Do some patent attorneys disagree with my notion that the amendment process is a negotiation?
David, you complain that the examiners apparently have not read the specification prior to conducting a first search and issuing a first office action on the merits. Personally, I think it is a better practice for the examiner is not to read the specification before they conduct a search so they can read the claims the way they are written. Often the claims have ambiguities that can only be ascertained by not reading into them implicit structure for the specification.
In analyzing claims in issued patents, I simply draw them out on a blackboard the way they’re written before I read the specification. Others who have read the specification first tend to draw them out entirely differently. Obviously, the claims in the circumstances are subject to more than one interpretation and the problem of the ambiguity of the claims should have been addressed during prosecution.
Obviously, you may not understand this problem the way I do because I tend to deal with enforcement of patents rather than prosecution to a great degree. But what I’m telling you is very very important and I hope you listen and understand what I’m saying.
I’d like to add from reading some of the comments that are targeted towards examiner’s not doing their job or not rejecting the claims properly. People, there is an obvious way to tackle this without filing RCE. MPEP 707.07 is a tool to use and should be used prudently when examiner’s do not do they job. Also note the time period for requests in MPEP 710.06. Obviously, when an examiner does not tackle the dependent claims, one cannot understand the completeness of the rejection, which is a crucial matter to be addressed for a proper response by the applicant.
I tend to file RCEs for the pupose of having prior art considered that was not cited during the prosecution. I also file RCEs more often when the applicant wants to micro manage the prosecution – it can be hard to explain to the client the negotiating ptifalls of RCEs and the negotiation advantages of filing an amendment/response that the Examiner is unlikely to enter or for which in return all we get is an advisory that says almost nothing.
Although I tend not to file RCEs and although I tend not to go to appeal, I do tend to have an active after final “prosecution” (you need to do your negotiations at some point).
On the one hand, probably the number of RCEs could be reduced if the Examiner’s were to read the applications and references being cited. On the other hand my impression is there are a fair number of attorneys that also appear not to have read the references being argued. When reviewing cases prosecuted by others, it often looks to me like a conversation between two deaf people, neither the Examiner nor the attorney directly address the concerns of the other.
Although I would like to see both attorneys and Examienrs spend more time reading understanding the references the are citing, and talking to each other rather than at each other, eliminating that would mean applicants would need to spend more money on paying the attorneys to spend more time on responses to Office Actions, and the PTO would need to spend more money (I would estimate 2 or 3 times more money) on the examination to give Examiners more time to spend on each Office Action.
The number fo RCEs could also likely be reduced if the Attorneys made every argument for patentability and arguend every dependent claim for which a good argument exists. However, the Applicants would likely pay significnatly more for that, and that would of course increase the amount of prosecution history.
Finally, it seems to me the effort to reduce the number of RCEs is just silly. Just change the accounting method and count RCEs as new applications when calculating the lenght of the pendencies of applications. It takes time to reach agreements in negotiations, and I am not sure that it is wise to limit the negotiating styles of the Examiners or attorneys. Effective negotiations requires each side to be fully engaged and to directly address the other’s concerns, which takes time that I am not sure that the PTO or the applicant really want to spend. Although it is not my style, if some people prefer to file an RCE rather than spend the extra time in the original application, is it really so terrible if that is what works for them?
For Bierbelly: ( If you should ever return to this thread) Try using the term “bite” or “bite end” of the rope. In the knottical world, that is unambiguous.
This does not solve the overall problem, but it should rope in your examiner.
I’m reading an Office Action right now, specifically a nonenablement rejection, in which it is excruciatingly clear that the Examiner has utterly failed to understand the claimed invention and the relevant science behind it. That is, I am certain, why a significant number of RCEs are filed.
We file RCE’s because we are trying to obtain relevant and useful patent protection without unnecessarily sacrificing scope of coverage, and examiners are too quick to issue office actions made final. Most examiners merely reiterate first action rejections in the second action regardless of claim amendments made by the applicant. The regulations should be changed so that a final cannot issue until after filing of a second response rather than after a first response. The regulations should also require examiners to conduct at least one telephone interview (to discuss the merits of any rejections) with applicants prior to issuance of a final. Simply put, giving applicants a single bite at the apple merely stifles prosecution and is not conducive to furthering it. Also, many examiners could learn a lot from a few of their own peers who actually propose claim amendments to applicants and/or proactively contact applicants via telephone in an effort to advance prosecution. I believe these simple changes would help both the USPTO and applicants to accelerate examination and reduce the substantial backlog of applications.
1.What is your explanation for the large number of RCE filings?
The reason is that the prosecution to a final rejection is not a negotiation, and it usually does not get us closer to recognizing what is allowable. For example, if in response to a first OA you make even a minor change to any claim you will get a final on the basis that your amendment necessitated it. Getting a final means the discussion is over. What was the “negotiation”- the examiner sent an OA and you responded. Now to respond after final you have to file an RCE. And, even interviews are pretty useless because the examiner won’t give any kind of qualitative response to your proposals-she just says “send it in and I’ll look at it”. It basically derives from the conversion of the PTO into a NoPTO. I think now under Kappos we may be returning to the idea that the examiner should help find allowable claim structure.
In short, when we get a final we haven’t yet developed the negotiation to a point of agreement or even to know what the examiner might be willing to allow
2.What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)
Allow us to have an interview before the examiner sends a first OA, and give more flexibility after final and get rid of that “amendment necessitates the final” trick.
3.Do some patent attorneys disagree with my notion that the amendment process is a negotiation?
My comment above answers that-it isn’t really a negotiation, and it shouldn’t be seen that way anyway. It should be a discussion of how to express in the claim what the examiner will allow and of course a discussion of whether the examiner’s rejection follows the legal criteria (if we could only find out what that is after KSR).
Sorry Ned I had my head in thin wide and elongated. Was speaking of the strength of that claim, and how it reads.
Sarah, you befuddle me with an intelligent post.
I don’t think the issue you ask about was before the court. The claim construction regarding “uniform” was not in dispute and the issue before the court was patentability, not infringement.
You might want to refer to earlier the case where the issue of claim construction of “uniform” was in dispute and report back.
So is the Court saying any thickness is still Infringement on the Suitco case, because, thickness is never clearly defined in the Patent?
ty ty ty
TINLA, that text is a quote from In re Suitco, an April Fed. Cir. case.
link to cafc.uscourts.gov
Can Ned and pingerdoodle stop this rtardedness? Ned, ffs, it’s always a good idea to read the spec before doing the first search. Trust me. Ping, stop fing with him. It’s also always good to read the claims first so as to get a feeling for what the claims by themselves present, and then temper that with understanding from the spec if it appears as though it is warranted. Je sus you two children.
In the mean time check out this article:
link to allthingspros.blogspot.com
Good article. NWPA will want to see it as well no doubt.
Ping,
Where did you find this section of text?
“Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to claim 4’s use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising . . . means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).
The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).”
Also, i d i o t, please reread Morris for the above “back and forth.” It is actually there in the case.
Slowly, now ping, just for you. I said “initially.” I then said the applicant should respond with evidence. I then said, and you failed to quote my posts entirely, the examiner should conduct a second search with the claims now limited to the invention the applicant intended to claim in the first place.
What you leap to is the unwarranted assertion that the “final” claim construction be the initial claim construction. You totally ignored the back and forth of actual practice — a point I made long ago. What this seems to suggest is that you skipped Evidence in law school.
You are a true loon, ping. You are intentionally misconstruing things just to be an a s s.
“you seem to have purposefully misunderstood my point ”
Like five times Ned?????
More like you were spouting off and got nailed (again).
Once, maybe, Twice, doubtful. Five times – O the gall. Hope those words are tasty!
I agree with fish sticks, except maybe there is often not even one round of “negotiation”. The Examiners I deal (TC 1600) with tend to ignore declarations, attorney argument, the law, logic and the MPEP. Once they decide, they decide and that’s pretty much it. Getting two rounds of true negotiation in a case is a minor miracle.
ping, you seem to have purposefully misunderstood my point about and examiner initially reading, and examining the claims without reference to the spec so that he is not biased toward a narrow construction but reads the claims exactly the way they are written. I do not suggest that his initial construction of the claims is the final construction. What I suggest is that the applicant can rebut the examiner’s claim construction by evidence. This evidence can include definitions from the specification, usage in the specification which is unambiguous, and extrinsic evidence of how the examiner’s construction is plainly inconsistent with what one of ordinary skill in the art would understand the term to mean.
Were we seem to have the most difficulty here, ping, is “usage in the specification which is unambiguous.” In the Morris case, the phrase “integrally formed as a portion of” was not actually used in the specification. It was used only in the background section. Thus it was not defined; and it was not used in an unambiguous way in connection with the drawings or other description.
Now if Suitco stands for no more this: if a claim term is used in the specification and its meaning is clear from the specification, and a claim construction that is inconsistent with this is unreasonable, then I have no beef with that case. I am not convinced that Suitco so limited.
However, if a claim term is not used in the specification as in the Morris case, or if the claim term is used inconsistently so that it does not have a single, unambiguous meaning, as in the Chef America case, the law commands that the examiner choose the broadest available meaning to those of ordinary skill in the art, and this specifically means that in the patent office that the examiner choose the meaning that reads on the prior art. In court, to the contrary, where there are two possible meanings to a claim term, one which preserves the validity the claim and one which leads to its invalidity, the claim construction that preserves the validity of the claim is the one chosen. Phillips
I hope this discussion somewhat clarifies the issues.
No Maxie, – that’s a case where applicants poorly wrote the claim and the court went by the claim language – try to follow – we are talking about claim language. You, a Blimy should be cognizant of claim language.
ping asks Ned for just one case. Personally, I think of the Chef America case, in which the specification describes how to make loaves with a surface temperature of >400°F, but the CAFC decrees that but claim defines a method of making charcoal. Ned, ping, I see this as just one case in which:
“….the courts have directed claim construction to be done in purposeful ignorance of the specification.”
Ned,
Do you try to be this delusional?
How is anything that you have recently posted been anything but confirmation of my position and condemnation of yours?
To wit:
“ BRI — what I think this means in practice is that the examiners search and reject the first time without reading the specification… But this, IMHO, is exactly what they SHOULD do.”
Posted by: Ned Heller | Jun 30, 2010 at 11:42 AM
“I think it is vitally important that the examiner search and reject in the first action without having read the specification.”
Posted by: Ned Heller | Jun 30, 2010 at 02:02 PM
“the examiner needs to read the claims the way they are written without limiting them in any way to the specification.”
Posted by: Ned Heller | Jun 30, 2010 at 02:39 PM
“But during original ex parte, we really need the examiner to read the claims they way they are written without regard to the spec”
Posted by: Ned Heller | Jul 01, 2010 at 11:40 AM
“In order for it to work properly, the examiners really need to read the claims before they read the spec because BRI commands this.”
Posted by: Ned Heller | Jul 01, 2010 at 11:51 AM
None of the above is congruent with your post of Jul 01, 2010 at 03:15 PM, where you finally make some sense:
“There the PTO was able to maintain a broad construction of a claim term based on dictionaries and prior cases that were very much inconsistent with the structure being claimed in specification and demonstratively so. The problem was, the claim term being used was not DEFINED in the specification to have the particular limited meaning intended by the drafter and consistent with the structure he intended to claim. Such it is with words, and terms. They can cover the corresponding structure. But they can cover more as well. Unless the meaning is expressly clear, meaning that there is only one possible meaning of a term where more than one is possible, the PTO is commanded by law to take the broader meaning.”
Finally you start making some sense – however, your diatribe about reading the claims sans spec is plainly not supported by Morris or any case law. Morris’ holding is not ignoring the specification. It just so happened that the words in question had a broader established meaning outside the spec – like I said about obviously well known terms of that art.
However, you then retreat to not understanding that BRI has to conform to Supreme Court direction and think that just because BRI came later, it don’t need to cotton to the direction given by the Supremes. Worse, you think Rader conflicts with Morris. It don’t. And the Fed’s don’t hold opposite what I say – they hold to what I say.
I said: “you cannot have a justifiable prior art construction (in the art) and the same word used by the inventor that an examiner uses flatly inconsistent with the intent and purpose of the described invention.”
The court found the prior art construction by the examiner justified – not unjustified. You did not read my answer carefully enough.
The reason for the justifiable holding comes later and I comment “For less than obviously well known terms of that art, the inventors’ creative use of that word prevails if and only if the inventor’s intent can so be deemed from the specification.”
This is exactly what the courts held: “Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants.”
Getting back to your nutcase view of it being proper for examiners to not read and ignore the spec, the Court in Morris agrees with me (and not you) by noting “it would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant’s written description”
Ned – find me one single case where the courts have directed claim construction to be done in purposeful ignorance of the specification. One. Perhaps the nuance of “in light of the specification” is just too much for you to handle. Go back and take your reds, blues and greens and then carefully re-read my posts. Only because you are so insistently wrong (five explicit times listed) do I take this much trouble typing all this out. That and I enjoy watching you eat all those words. Are they yummy?
edit: “meaning that reads” instead of “meeting read”
Thank you Dragon.
Actually, ping, the detailed example is from Morris. The FEDs held the opposite of what you suggested.
On the second, simpler example, you hit on a good point. If the claim term has two meanings, it does not mean that one of the two meetings is broader than the other of the two meanings. They are just different– which was the point being made in at least one of the two recently published AIPLA law review articles criticizing BRI. “Different” does not mean “broader.” Further, the Director has a duty to examine the “invention,” implying that he as a statutory duty to choose the meaning “consistent” with the specification. However, the contrary view is that the requirements for clear claims set forth in section 112, paragraph 2, requires the “different” meaning in order that any ambiguity be eliminated from the claim by a clarifying amendment.
Obviously in court, a claim term that has two acceptable meetings to those of ordinary skill in the art, the construction chosen is the one consistent with the specification. But in the patent office, in contrast, the broadest reasonable interpretation standard would require that the patent office choose the meaning that reads on the prior art in order that a clarifying amendment pick the one actually intended by the scrivener. In practice, I think examiners actually choose the meaning that reads on the prior art over a meeting read on the specification, and will stick to their guns regardless of one’s arguments to the contrary that the examiner’s construction is inconsistent with the specification.
However, circling back to the Morris case and In re Suitco, it seems that Suitco, in contrast Morris, required that the construction that reads on the specification be the one chosen. Now this seems flatly inconsistent with the prior authority, which leads me to believe that Rader’s new view of what is “reasonable” has to be somewhat attributed to the change in the law represented by the “Phillips” case. That case seem to overrule any prior theory that a claim term could be read more broadly than the specification, which was the fear I believe of the courts prior to Phillips.
Regardless, Rader’s opinion seems flatly inconsistent with all prior precedent on this topic in that if a claim term has two acceptable interpretations to those skilled in the art, one that reads on the prior art, and one that reads on the specification, the prior case law seemed to require that the “broader” construction be the one chosen. Suitco seems require the narrower construction.
Ned,
Your hypos (both the convoluted one and the simple one) are defective. You have not put enough branches over your snare. What’s worse, is hat your convolutions make me type more, and since Ima lazy, if I have to type more I am far less likely to be nice about your waning faculties.
In the convoluted one, you cannot have both situations you describe – you cannot have a justifiable prior art construction (in the art) and the same word used by the inventor that an examiner usesflatly inconsistent with the intent and purpose of the described invention. While an inventor may be his own lexiconagrapher, black cannot be white when dealing with obviously well known terms of that art. For less than obviously well known terms of that art, the inventors’ creative use of that word prevails if and only if the inventor’s intent can so be deemed from the specification. By positing that it would be flatly inconsistent, you have answered your own question.
The critical link is the specification, which you have contradicted yourself in your ever-brilliant citations. This fact betrays your prior mistaken post (dealing with examiners ignoring the specification prior to searching) and is fully aligned with my observations and any case law you want to present. Ya see Ne, the Law and I are buds, and we have yet another instance where you have to eat your words about me.
As to the second hypo, you do not indicate the breadth of the two meanings and one cannot tell which is the broader one. Either or both can be relatively narrow and highly dependent on context, which of course, leads one right back to my observations and your cited (but do you understand your own cites?) references. Claims must (hint: nuances with “always“), be read in light of the specification.
6 answers the Crouchsters question – examiners are being trained to do a p_ss-poor job in order to meet time goals. They simply are not examining the application to the degree and rigor the applicants feel that they deserve and applicants file RCE’s to get what should have been done in the first place. The Courts (not the MPEP, 6) have dictated what is reasonable. It is simply unreasonable to examine an application by examining claims alone.
Reminds me of an adage – If you don’t have time to do it right the first time, when will you find time to do it right later?
ping, lets keep it simple:
Term has two meanings to those skilled in the art.
Meaning 1 reads on the prior art but does not cover any embodiment.
Meaning 2 reads on the embodiments but does not read on the prior art.
Which is the “broadest” “reasonable” construction?
ping, decide the hypo, please. We can discuss the nuances later.
You tell me, Ned – what does this mean:
“Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to claim 4’s use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising . . . means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).
The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).”
Feel free to expound on the citations called forth. Try to especially delve into the nuance of “claims should always be read in light of the specification and teachings in the underlying patent.” I know “always” is such a nuanced word and all.
All right ping.
Assume a claim term, “integrally formed as a portion of.” It is part of a claim to a structure that is described in the specification as a structure that is as part of, but not bolted to, a larger structure. The prior art shows a structure that performs the same function as the described structure, but which is bolted to the larger structure. The examiner construes the claim term to cover the prior art. He justifies his construction based upon prior usages of the term “integral” to describe “bolted on” structures in prior interpretations of that term by the Board of patent appeals.
Clearly, the construction given the term by the examiner does not read on any of the preferred embodiments, and is flatly inconsistent with the intent and purpose of the described invention.
Given what you know of the In re Morris case and the In re Suitco case, what is the proper construction, and why under “broadest reasonable interpretation,” of the disputed claim term.
Radar’s Supreme Court authority, however, did not hold that BRI was done in light of the specification as it was an older case decided long before there was BRI.
As I said, Rader’s opinion seems to be in conflict with Morris.
Let’s compare
“prior Supreme Court authority, which he in fact cited in this case to support his opinion.”
with
“Ned’s “Later, if the examiner’s construction is inconsistent with the specification, the applicant can make that argument.” misses the legal point (no surprise) that the BRI is done in light of the specification – c’mon Ned – I know you can find me a cite saying exactly that. Why don’t ya look for that after taking the right number of reds, blue and greens?
Posted by: ping | Jul 01, 2010 at 01:33 PM ”
See Ned, that wasn’t so hard when you have the reds, blues and greens matched up properly. A little more tabasco sauce for your words?
And oohhhh, I get to feel all scholarly quoting meself.
Actually I think the Federal Circuit has two lines of authority “broadest reasonable interpretation.” In the “Morris” case, the Federal Circuit expressly held that if a claim term had two meetings, one which covered the disclosed invention and a broader one which those of ordinary skill in the art had previously recognized as a proper construction, the examiner had to choose the broader construction and was restrained and this only if the claim term was defined in the specification.
However in the recent case of “In re Suitco,” the Federal Circuit seem to hold that a construction that did not cover the preferred embodiments was “unreasonable.” That opinion was authored by Judge Rader, who we all know has little respect for prior panel decisions inconsistent with his views, especially when they conflict with prior Supreme Court authority, which he in fact cited in this case to support his opinion.
Patently-O do not post In re Suitco for discussion; but I believe it should have because it was an important decision. A very important decision.
Max, I think you’ve got something there — the EPO examiners search the invention disclosed in the specification, and require claims to be expressly (amended) limited to the claim term definitions described in the specification.
This is a dramatically different approach from what happens in United States, but it does explain why European searches are so good and do not have to be repeated.
Yet another clever contribution wiped out by the ha_te filter.
Man I… o never mind.
Enjoy the fireworks “peeps”.
Ned, I don’t understand. EPO Examiners operate a BRI standard too, you know. If you claim to be your own lexicographer, that impresses the EPO not at all. The EPO would invite you to write your special definition into your claim, verbatim. Until then your claim remains, hopelessly broad, under BRI.
But EPO Examiners often write that they have already performed their novelty and obviousness analysis(as then set forth)as if the claim had already been so amended. Thinking about it from their point of view, whatever is the point of searching more widely than strictly necessary. It’s a better use of precious time to drill down further into what the inventor is describing as the contribution to the art, rather than in fruitless contemplation of the hopeless text of claim 1 as filed.
After all, an EPO Examiner only gets one go at it, so it had better be done right.
Perhaps that’s the practice point of difference?
“peeps”?!
Mooney, you’re waaaay too cool for patent law. Consider getting out now.
Alun, the Morris case is republished here: link to openjurist.org
You should know the whole concept of BRI has been heavily criticized in two recent AIPLA law review articles precisely for the reasons you state. The invention examined and allowed is by definition not the same as the invention disclosed and claimed. In theory, the BRI invention is mearly “broader” than the claimed invention. But in practice, BRI more often than not leads to the examination of quite different inventions. The reason for this is when a particular term is given is “broadest” possible meaning, it often is a different meaning than intended by the applicant, not a broader version of the intended meaning.
Anywhere but in the US, it seems, claim construction seeks to determine the “proper” construction of the claims. This actually requires the claims to be read “narrowly” to some degree to cover the disclosed embodiments. This is why initial searches elsewhere are “better.”
As I have said before, BRI and compact prosecution are inconsistent with each other. Something has to give as the initial action and response help clarify the claims so that the second search and action is directed to the invention the applicant intended to claim in the first place.
Firstly, I don’t see RCEs as a problem per se. I don’t believe that compact prosecution works, or will ever work, and paying the fee is how we get around that.
For once, I think Max is right. Separating the search from the examination altogether in the EPO produces the best searches available from any patent office in the world. The US piecemeal approach to official searches wastes time in the long run, as you get a narrow search that has to be re-done every time you amend. Maybe the USPTO could learn from the EPO, although I suspect that the NIH (Not Invented Here) principle might scupper this idea. One thing is for sure, right now the PTO is doing very poor searches.
Broadest Ridiculous Interpretation often leads to bizarre ways of reading the claims that completely floor the Applicant, especially when the Applicant is not in the US. Thus, the most common type of amendment is to change the wording so that it can’t be wilfully misinterpreted.
BRI is completely unnecessary, as no court will ever interpret the claims in this way, but sadly at least one court did authorise the PTO to interpret claims differently than the courts. I believe the precedent is Morris, but someone with a bevy of paralegals at their disposal can have them look it up for us. If we could get congress to eliminate BRI, this just might shorten prosecution. I’m sure that the average Examiner’s approach to BRI is far broader than Morris (or whatever it’s called) intended, but then I’m sure they’ve never read it, and they couldn’t cite it to save their lives (yes, I can’t either).
Why do people feel compelled to pick on 6?
Thanks for playing, 6.
I cannot fix the closest art till I know what the inventor is announcing in his/her app as the technical field and the technical problem solved by the invention.
I guess you are looking at EPO file wrappers on the case parallel to the one you are examining in the USPTO. Choice of the closest art in the EPO might appear to you to be arbitrary but it isn’t. If, for example, Applicant amends claim 1 from “A piston…” to “A piston of an ic engine…” and D1 was a piston for a hydraulic pump, then the amendment would oblige the EPO Exr to develop a new approach to obviousness, starting from a prior art disclosure (D3) of an ic engine piston.
OK?
And Cy, you have a point. EPO Examiners must be able to operate in all of English, French and German, actively and passively, even when (as isusual) their own language is not English, French or German. I fear 6 might not qualify, right 6?
“I am fascinated that you find such difficulty determining which is the “closest” prior art. ”
I’m fascinated that you didn’t answer the supposedly simple question max.
And btw, the designation of D1 is all too often arbitrary in your precious EPO in the files I read. They simply go on to use D3 etc. as new D1’s throughout their analysis just as my primary reference switches in and out occasionally.
And also, F logic games.
NWPA: “We need to get your aunt to schedule our bathroom visits.”
Does MM’s aunt have a POWERFUL COMPUTER BRAIN?
MM: >>Using this program in a floating system, you >>can determine your place in the airplane >>bathroom queue with less than a 2% decrease
>>(average) in .mpg download time.
We need to get your aunt to schedule our bathroom visits.
I urge you seriously to consider joining the EPO.
Don’t you have to pass a test? 6 is still trying to figure out those logic puzzles on the LSAT.
6: I am fascinated that you find such difficulty determining which is the “closest” prior art. Perhaps what you need is a structured approach, a sequence of enquiries that is always exactly the same sequence of questions (such as the one used by Examiners in the EPO under the appellation “Problem and Solution Approach”)) that begins from what the inventor wrote about her own invention in her own specification, in her own words, giving those words full credit, reading them through the eyes of the PHOSITA, as he was, at the filing date of the app, without knowledge of the claimed invention, and looking for the prior art document that is the best springboard to completion of your obviousness attack, at the end of the invariant strict sequence of enquiry steps.
For then, the question what is the “closest” prior art is not difficult to answer.
And because the sequence of enquiry steps is always the same, any half-competent prosecution attorney will immediately eat you for breakfast, if the logic of any single step in the sequence is even marginally weak.
You would enjoy the challenge, I am sure. I urge you seriously to consider joining the EPO. It would be fun to have you against me.
In a world in which examiners go trawling to find selected key words form a claim that happen to be close enough together, it is natural to start using obscure language like “fireplacing a terminal library system”. This is just Darwinian evolution applied to the patent ecosystem.
Besides, if something really is new, then there can’t be a word for it yet can there? Otherwise it couldn’t be new.
Besides, most terms sound pretty ridiculous when they’re brand new. How about “mouse”?
IANAE It’s very hard to respond to a rejection when you’re not sure what the examiner thinks the claims mean.
Of course, every Tuesday you can find issued patents in the softy wofty art unit that attempt to describe “inventions” using completely ridiculous made-up or borrowed terminology, e.g., “A process for fireplacing a terminal library system, comprising archiving a log retrieval number, wherein said log retrieval number is selected from a pre-determined council circle autograph; and sorting said retrieval number according to a binomial popcorn algorithm.”
Total breakthrough technology, peeps. Using this program in a floating system, you can determine your place in the airplane bathroom queue with less than a 2% decrease
(average) in .mpg download time.
In my practice we actually file very few RCEs, less than 5%. We adopt the approach or ideals of the patent office. If you cannot convince the examiner with two attempts that claims of interest are novel, inventive and enabled, move on to appeal. My response to final rejection is essentially an informal draft of an Appeal Brief. To date, in 50% of the Appealed cases the examiner rejections were reversed. In 50% of the other cases prosecution was reopened. The cost of filing the Appeal is similar to the RCE, but there is one advantage. In each case, we are issued a non-Final OA after the case is reopened. In contrast, the filing of an RCE is often followed with a second final rejection.
Translation: “Some clients will let you keep milking them pretty much endlessly as long as you keep telling them that the broad claims they want are valid.”
DC On the topic of the number of RCE’s, I filed a typical RCE yesterday that was necessitated by the Examiner’s apparent gamesmanship. It seems to be a new fad amongst newer examiners to generate creative ambiguities around claim language, and assert rejections without informing the applicant that they are applying the broadest dopiest definition they can think of even though they probably know that no one in the art would adopt such a definition.
Translation: “I can’t write a decent claim to save my life. Prosecushun is hard.”
By the way, examiner 6, if you need to cite another reference to address the new limitation I added to overcome your previous rejection, I don’t think it would be fair for you to go final since I have not had an opportunity to respond to your new rejection.
Furthermore, you should have clearly anticipated how I would have amended the claim and went ahead and rejected the claim as I would have amended using the best art possible. If you still choose to issue a Final Rejection, I may take the matter up with your SPE and Director.
You are further reminded that the examiner is obligated to point out allowable subject matter to applicant as soon as possible, so after searching and writing the Office action, you should search through all 200 pages of the specification and 40 pages of drawings and perform an additional search of the subject matter contained therein to find some way of writing me a set of allowable claims that I can then present to the client.
Customer service. End the RCE gravy train. I use to be an examiner in the paper roll art. Etc.
“…Go ahead tards, which is the best reference? Pick your D1 and state why. ”
Clearly reference E, which you should have found had you done your job properly is the best reference since it shows not only steps a-h, but also steps j-z which are discussed in the specification on pages 80-150 but have not yet been claimed and which you should have anticipated might be added onto the claims at a later date in prosecution if you were any sort of competent examiner. So since you did not cite or use reference E, either you’re incompetent at your job or you’re clearly gaming the system to get more RCE’s.
Further, references A-D are clearly not good references because steps f-h are claimed while none of the reference A-D shows steps f-h and there is no good motivation to combine any of references A-D to arrive at the claimed invention having steps f-h. Any attempt to do so would not achieve the sort of synergy allowed for by applicant’s invention and absent use of hindsight reasoning, one could not have possibly arrived at steps f-h using any of the combination of references A-D. Further, any attempts to modify A-D in any manner would change them from their intended purpose. Further, A-D by taken individually or as a whole teaches away from an invention having steps f-h since none of the references discloses steps f-h.
However, since reference E has not been cited by you and I’m unaware of reference E and it’s not part of record, without conceding that your Office action is in any shape or form correct, the following amendment is made solely for purpose of advancing prosecution:
A method comprising steps f-h, wherein step h is performed using a computer having a wireless card or RAM.
None of references A-D shows “[a] method comprising steps f-h, wherein step h is performed using a computer having a wireless card or RAM” (emphasis added) nor would any of references A-D make the invention now claimed obvious.
The application is in condition for allowance and a notice of allowance is earnestly solicited. If, however, any issues remain which could be resolved by telephone interview, the examiner is requested to contact the attorney who despite having practiced as an engineer for 20 years prior to becoming a patent attorney honestly believes he is complying with the ethical requirements that he not set forth any claims that he does not believe is patentable and truly believes he has not set forth any arguments he does not think is valid and therefore truly believes that the addition of the limitation of a computer having a wireless card or RAM performing step h makes the claimed method patentable over the prior art.
Ok, I finally found a great exemplary case and remembered to tell you guys about it.
My spec goes into detail about a process that comprises steps a-h (along with minor steps in there as well). My claims claim only the last 3 steps f-h and specify a bunch of the characteristics of the product under manufacture.
Which reference is the best reference?
Reference A: shows clearly steps a-e and none of the product specifics.
Reference B: shows clearly steps c-g and some product specifics.
Reference C: Shows steps g and h and some others of the product specifics.
Reference D: shows all product specifics and no method steps, save perhaps for “form this particular product” implicitly.
Keep in mind this is a real life example. Go ahead tards, which is the best reference? Pick your D1 and state why.
In my practice we actually file very few RCEs, less than 5%. We adopt the approach or ideals of the patent office. If you cannot convince the examiner with two attempts that claims of interest are novel, inventive and enabled, move on to appeal. My response to final rejection is essentially an informal draft of an Appeal Brief. To date, in 50% of the Appealed cases the examiner rejections were reversed. In 50% of the other cases prosecution was reopened. The cost of filing the Appeal is similar to the RCE, but there is one advantage. In each case, we are issued a non-Final OA after the case is reopened. In contrast, the filing of an RCE is often followed with a second final rejection.
I spend a lot of time reading Board Decisions of appealed cases. I am amazed by some of the arguments being made by applicants that the claims are non-obviousness. Applicants are not willing to come to some sense of reality that their claims are indeed obvious under the appropriate standards of 103 and Graham. For some reason, Applicants fail to recognize when they lave a losing case, and that they need to find support in the application and amend claims to avoid the cited art.
“You shouldn’t need an RCE in that case. The examiner should enter your amendment and allow your claims in any event.”
Idk about that IANAE, sometimes I enter and sometimes not. Sometimes those suggestions are made merely to get around the current prior art. That is ez to do, and all too often that is all a practicioner wants. Specifically, I’m saying to you, that is all they want, and indeed all they explicitly say they want, with particular emphasis on the important parts of that statement. Additionally it’s a mite more difficult to pontificate from on high that x is patentable over all prior art, especially if you’re a junior examiner and you’re discussing the case AF with only one reference in front of you.
But wait, I forgot, the “best” reference is always the “best” reference, no matter how you characterize the subject matter. Right? LOLOLOLOLOLOLOLOLOLOLOLOL.
Take home: Even though we be omnipotent, examiners can amend straight into the prior art just as easily as you can.
“Or he says simply that “D is shown in the drawings.””
Was D shown in the drawings?
IANAE:
You are right, but many times suggestions are given for claims (over the phone, in the text of an office action) which if used without an RCE, will win you an advisory action.
The claim includes A, B, C and D where D really is the only point of novelty.
Frequently, I receive rejections where the examiner argues in some detail where A, B and C are shown in the reference(s) but conveniently fails to point out where D is shown.
Or he says simply that “D is shown in the drawings.”
“I am amending my claims in accordance with the suggestions of the Examiner”.
You shouldn’t need an RCE in that case. The examiner should enter your amendment and allow your claims in any event.
An RCE should only be filed under the following conditions:
“I need to amend to overcome prior art”
“I need to amend the claims to put my application in better form for appeal”
or
“I am amending my claims in accordance with the suggestions of the Examiner”.
Otherwise, Appeal.
Even if new art is cited in view of a Final Rejection, Appeal if you have a position. Or, better yet, call the Examiner for an interview and discuss the case.
“>80% of examiners currently have a tenure at the PTO shorter than the backlog of cases at the Board.”
this
2. Institute penalties for Examiners who are reversed on appeal to the Board.
>80% of examiners currently have a tenure at the PTO shorter than the backlog of cases at the Board.
1. Examiner unwillingness to withdraw rejections; based on failure to consider the totality of the record after issuing the first Office action.
2. Institute penalties for Examiners who are reversed on appeal to the Board.
3. Yes, I disagree. See (1) above.
I would rather have the issues joined by a back and forth, where the examiner states his original interpretation in his rejection.
Yes, it would be nice for examiners to be explicit about their interpretations, especially when it’s clear that the BRI isn’t what the applicant meant. I’ve had some rejections that were pretty good in that respect, but too many others where I had to infer the examiner’s interpretation from the cited art. It’s very hard to respond to a rejection when you’re not sure what the examiner thinks the claims mean.
Hed, I re-read your post. What you seem to suggest is that the examiner conduct two searches initially, one based on BRI and the other based on a “proper” construction. This would it is suggested obviate a second search after the claims are “clarified” in some manner, such as by adding clarifying limitations.
This might work to some degree, but the examiner would still be guessing to some extent what the applicant really wanted to claim.
I would rather have the issues joined by a back and forth, where the examiner states his original interpretation in his rejection. The applicant would then respond, clarifying his claim in some fashion. The examiner would then conduct a second search.
This should be enough. But it has to be built into the system. RCEs and its predecessor regimes , i.e., file-wrapper continuations, actually did this. But if RCEs are dislocated from the original prosecution, we really have created a dysfunctional system that will eventually backfire big time in Kappos face. I wonder what planet Kappos came from? It is as if he did not understand the system; but he was patent counsel at IBM. Maybe rising to the top a big corporation has nothing to do with competence.
You see IANAE, there is a section of the population who believes that when one searches the prior art one does so without regard (for the most part) to what is claimed. One simply takes the subject matter of the application and get a general feel for every last nuance (in demi-god like fashion) and then commence a general search on the whole concept, merrily finding prior art that either discloses part of the general concept+all nuances which you are magically remembering or not. Then one takes the results you found and sort through them to find “the best reference(s)” dun duhduhduh! This reference is magically the best in all circumstances no matter how one could possibly characterize the subject matter in the application. One then turns to the claims and observes if the best reference magically reads thereupon. One then turns to the claims and observes if the best references magically create a prima facie case of obviousness. Finally, after all this, one figures out what the claim truly means, because if an interpretation reads upon the prior art then it is obviously unreasonable in view of the specification and the claim could not have meant that. If, on the other hand, no interpretation reads on the prior art or obvious combinations thereof then all interpretations are valid without regard to the specific embodiments in the specification. You then may make a [rejection or an] allowance based upon this determination. This all works out perfectly within the alotted time in fairy tail land, and you also get a pony or unicorn (your choice!!!!111!!!!) to ride whilst performing the above procedure.
And to be sure, except for the part about the pony and unicorn, and perhaps a few others, I can see it happening just so in some arts which these individuals no doubt practice.
I’m saying B”R”I should be used only when there’s no better art.
How can there be any better art than the art that invalidates the properly-construed claim?
How can you even search for art before you know what the claim means?
Here’s a quick primer for you:
Step 1: figure out what the claim means.
Step 2: compare the claim to the prior art.
Step 3: is claim valid? Y/N
Step 4: discuss
Ned – you completely missed my procedural point. I’m saying B”R”I should be used only when there’s no better art. This still satisfies your (one-track-minded) policy concerns of testing claim breadth. I urge you, or anyone else who doesn’t take the time to understand what other commenters are saying, to take the time to do so.
IANAE and 6, I see we largely agree here.
ping, you statement of the law may be “correct.”
But, as always, you seem to be unfamiliar with its nuances.
Now, you asked for a case. See, In re Morris, cited above in the post to Hed, and the discussion of that case in my post. You can see that claim terms have to be defined in the specification in order to be given a specific meaning. Otherwise the terms has to be given the broadest meaning that one of ordinary skill in the art would give them.
Now there are recent cases, even from the district courts, that if claim construction results in an absurdity — so be it. The courts are not free to rewrite the claim to conform to the disclosed embodiments or to make the claim definite.
Now, if a claim term is actually used in the specification and used consistently to mean one thing only, that IMO, is all but a definition.
It would be, except that so many of us are in the habit of using inclusive language like “may” or “for example”, even when providing only a single consistent example for what the word represents. Leaving your options open is great, but it precludes you making the argument that you didn’t leave your options open.
Maybe we need to be more like Europe, where the applicant has to decide what he has invented before filing the application.
Hed Neller wrote: Ned-
I don’t mind BRI, but it is wasteful in many circumstances.
FAOM: rejection using art based on broad (usually unreasonable) claim construction.
Response: amend claim to define term exactly as in spec
Final: rejection using all new art based on reasonable claim construction.
There’s often no reason that the (best) art from the Final couldn’t have just been applied in the FAOM – the Examiner knew exactly what the claim term reasonably meant without amendment. Of course, if the art from the Final didn’t exist, the very broad interpreation and art in the FAOM would be fair (and the Final should be an allowance after my amendment). That’s how BRI should work.
Hed, I urge you or anyone who doesn’t understand BRI to read In re Morris, 44 USPQ2d 1023 (Fed. Cir. 1997). There the PTO was able to maintain a broad construction of a claim term based on dictionaries and prior cases that were very much inconsistent with the structure being claimed in specification and demonstratively so. The problem was, the claim term being used was not DEFINED in the specification to have the particular limited meaning intended by the drafter and consistent with the structure he intended to claim. Such it is with words, and terms. They can cover the corresponding structure. But they can cover more as well. Unless the meaning is expressly clear, meaning that there is only one possible meaning of a term where more than one is possible, the PTO is commanded by law to take the broader meaning.
As a practical matter therefor, if a claim term is not defined and it has a broader meaning to those skilled in the art than the particular embodiments disclosed, the PTO must use the broader meaning.
To many applicants intending their words to claim certain structures, it may appear that the PTOs art is far afield. It is not, so long as the term is not defined in the specification and it has the meaning given it by the examiner to one of ordinary skill in the art generally.
Now, if a claim term is actually used in the specification and used consistently to mean one thing only, that IMO, is all but a definition. I think that might be a good argument back to the examiner that his construction is unreasonable in light of the specification.
Anonymous Patent Examiner–that’s a very interesting observation. I was unaware of that. It is very enlightening.
I think much of the recent frustration is because the political masters to whose whims we are all subject just decided to stop allowing patents so they could argue to Congress that the drop in allowances proved an increase in quality. (Remember, they’re politicians and so reality is so important as it is to the rest of us.) So there was a lot of top down pressure on the Examining Corps to just reject claims on whatever ground comes to mind.
Couple that with the requirement that an allowance must be “approved” by two other Examiners and you have a disaster. It is very, very easy for those other two Examiners to veto the allowance because they don’t have to sign their name to the crap that, through no fault of the Examiner or the practitioner, then comes out in the next Office Action.
One of the take aways, then, is that much of this is all inflicted on us by the politicians. Go figure…
It’s apparent that this discussion includes people from both sides of the Examiner/Applicant divide. Some restraint on both sides might benefit this discussion. There are good Examiner, and there are bad Examiners. There are good practitioners, and there are bad practitioners. Anybody who is actually participating in this discussion obviously cares more than the average person, and so are more likely to be on the good side than the bad side.
I’m starting to believe that RCEs frequently result from poor decisions on the part of either the Examiner or the practitioner. So, I think that parties on each side of the divide need to appreciate that both sides’ views are legitimate to at least some degree.
But the question was “What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings?” That is going to drive the focus more strongly onto the Examiners’ actions, conditions, etc., to a much greater degree than those of the practitioners.
I think, too, that there is a strong lesson here between the Office’s expectations regarding the rules it puts in place versus the reality of their implementation. I think the Office believed RCEs would be relatively rare, used only to get that last amendment in before appeal or from that interview after final. Instead, it’s become the crutch I described earlier, for all the reasons both sides have put forth.
“Obviously, the whole concept of burdens of production of evidence”
Ned, should we add these to the long list of words that you’ve had to eat when making comments back to me?
There’s a little something about properly establishing a prima facie case (and the fact that mere conclusionary statements don’t cut it) that was covered in evidence.
Now granted that you have a number in the twenties and have forgotten much more than I have learned – the problem Ned, is that you have forgotten much more than what a practicioner should know.
It be time to hang it up.
” So that’s where NAL went?”
Nah, that’s where she wanted to go though.
“the LAW (ping, your favorite enemy)”
I lol you Ned – Only the IMHO-Ned-Law is my enemy with the miscites and oops-let’s-leave-out-that-section types of analysis. The LAW and I are buds. We understand each other.
6,
Godhood? – So that’s where NAL went? Such the chick – just because you have a kid you think you created life. Still, if she agrees with me, then she can’t be all that bad, can she? (Don’t worry – I aint gonna go into your odd phantasy life about her and your Mommy)
Maxi,
Added Matter means what it means in US law – ya know – the gold standard one. Put simply – day one of your app is (by and large – prelim amends might be grey) also day last of changing your app. I’m pretty sure that if an examiner did their job correctly, any new matter added in by amendment is grounds for rejection – and no search needed for that grounds. And I’m pretty sure you don’t realize that I aint talking about Euro law in my comments – but you not be that quick that way, just like a Blimey.
It all still comes down to doing the job right the first time around. Examiners are supposed to understand what they are examining. When they don’t – thats when you have problems. That includes searching before they understand what they be searching for. 6 – don’t boo-hoo to me about the lack of time for doing your job – talk to POPA and get them to get ya a better deal. Oh wait – POPA aint worth anything.
Ned’s “Later, if the examiner’s construction is inconsistent with the specification, the applicant can make that argument.” misses the legal point (no surprise) that the BRI is done in light of the specification – c’mon Ned – I know you can find me a cite saying exactly that. Why don’t ya look for that after taking the right number of reds, blue and greens?
Ned-
I don’t mind BRI, but it is wasteful in many circumstances.
FAOM: rejection using art based on broad (usually unreasonable) claim construction.
Response: amend claim to define term exactly as in spec
Final: rejection using all new art based on reasonable claim construction.
There’s often no reason that the (best) art from the Final couldn’t have just been applied in the FAOM – the Examiner knew exactly what the claim term reasonably meant without amendment. Of course, if the art from the Final didn’t exist, the very broad interpreation and art in the FAOM would be fair (and the Final should be an allowance after my amendment). That’s how BRI should work.
“To far too many examiners, the fact that “Coke adds Life” renders Coke prior art against a “means for resurrecting a corpse.””
Wait just a second here, are you suggesting that Coke is not a “means for resurrecting a corpse”? I know some Coke executives who might disagree with you.
“They wouldn’t have to reach that far for art if only the New Testament had provided an enabling disclosure.”
Hmmm..maybe Coke is a lot older than we thought…
Prof. Crouch’s original post mentions that 25% of granted patents have at least one RCE in their prosecution history and asks why so many applicants file so many RCEs.
Perhaps the question should be rephrased: Why do so many cases with RCEs result in granted patents? After all, these are cases where the examiner issued a final rejection.
The lesson to practioners is that RCEs are successful and “final” isn’t really that final after all.
However, that is not the law.
The law is that you have to distinctly claim your invention, and you get a patent unless your invention is anticipated or obvious.
If you get an art rejection based on the proper BRI of your claim, either your claim isn’t distinct enough or your invention isn’t patentable over that art.
“But during original ex parte, we really need the examiner to read the claims they way they are written without regard to the spec and given them a broad, but reasonable construction. The applicant can then amend to clarify, or argue unreasonableness based on definitions from or conflicts with the specification.”
————————-
However, that is not the law. And they wonder why there are so many RCEs…
Examiners seem to forget that BRI applies to the claim as a whole, not to individual words in the claim.
Great, then you can explain to the examiner why his interpretation that ice is an NSAID is inconsistent with the later limitation that the NSAID is administered intravenously, or something. You should get a second nonfinal.
To far too many examiners, the fact that “Coke adds Life” renders Coke prior art against a “means for resurrecting a corpse.”
They wouldn’t have to reach that far for art if only the New Testament had provided an enabling disclosure.