New BPAI Final Rules

by Dennis Crouch

There are now 25,000 ex parte cases pending resolution before the Board of Patent Appeals and Interferences. For the most part, cases being decided today are appeals from final rejections mailed back in 2008 – at a time when the backlog was 80% less than today. And, as the chart below demonstrates, the backlog continues to grow at an alarming pace. Today, the USPTO published a new set of final rules of practice regarding ex parte patent appeals before the Board. The new rules do not directly address the backlog, but do refer to "streamlining" as an important purpose of the rules. As an aside, the recently published FY2011 USPTO Performance Report also fails to mention the BPAI backlog.

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New Rules: The newly published rules are designed to "streamline" practice before the Board of Patent Appeals and Interferences (BPAI) and only apply to ex parte patent appeals. As published, the rules will become effective in on January 21, 2011. The PTO had previously published a similar final that never went into effect and that is now formally withdrawn.

Changes include:

  • Jurisdiction: The Board will take jurisdiction over appeals automatically upon either the filing of the reply brief or expiration of the reply briefing filing deadline. Examiners will no longer be required to acknowledge the filing of a reply brief before the Board claims jurisdiction. (Historically, awaiting examiner acknowledgement took an average of 55 days).
  • Petitions During Appeal: Under the new rule, any petition (or information disclosure statement) filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends and will not be considered "of record" in the appeal. The primary exception to this is with regard to a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief. In that case, the applicant can await the petition decision and thereby avoid having to file a request for extension of time in which to file the reply brief.
  • New Grounds of Rejection: The rules clarify that an argument in the examiner's answer that uses evidence that was not relied upon in the office action will be considered a new ground of rejection. In addition, a rejection will be considered a "new grounds" when the "basic thrust" of the rejection as presented in the examiner's answer or the Board's decision is different than that presented in the office action. However, an examiner or Board's use of certain extrinsic evidence such as dictionaries will not, according to the new rules, automatically result in a new ground of rejection. The rules also include a loosening of the requirements on requests for re-hearing so that an applicant can present new arguments in a request for rehearing that respond to the merits of a new ground of rejection and allows the applicant to request rehearing for the purposes of arguing that the Board's decision contains an undesignated new ground of rejection.
  • Removal of Briefing Requirements: Removal of several briefing requirements, including statements of the status of claims, the status of amendments, and the grounds of rejection to be reviewed on appeal as well as an evidence appendix or a related proceedings appendix.
  • Claims Being Appealed: The new rule will require the Board to presume that the applicant is appealing all rejected claims.

103 thoughts on “New BPAI Final Rules

  1. 103

    Perfect opportunity now to make a clean break for the incestuous Board (if they are going to play at being judges, a sense of impartiality is required – as opposed to being Super Examiners) with the mandate from the AIA to reformulate the Board.

  2. 100

    “An opinion is needed only if the reasons for reversal are not stated in the applicant’s briefs.”

    I agree.

    The Board got away with new grounds of rejection masquerading as affirmances for many years. It’s going to be a hard habit for some of the APJ’s to break, particularly the careerist affirm at all cost APJ’s.

  3. 99

    If the Board would like to affirm, but not for the reasons stated by the examiner, I think Board should still reverse and remand and not try to rescue the examiner.  An opinion is needed only if the reasons for reversal are not stated in the applicant's briefs.

     

  4. 98

    I seem to recall a PTO notice recently that would allow applicants to speed up examination of RCEs

    Must have been an internal Office memo.

  5. 97

    If the Board affirmed the examiner “for the reasons set forth in the examiner’s answer” then the PTO would be reversed at the Fed. Cir. about 99% of the time. As it is, with the Board backstopping sh!tty rejections with undesignated new grounds, and with the cost of a Fed. Cir. appeal in the $39-50k range, the PTO’s affirmance rate at the Fed. Cir. is about 90%. The PTO is not going to give up that one little bragging point. Reversing the examiner “for the reasons set forth in the Appeal Brief” however can be, and should be, done often. The PTO cannot appeal reversals of the examiner to the Fed. Cir. so there’s no need for the Board to write long winded reversals. If the rejections are incorrect, and the Applicant’s arguments point out why they are incorrect, simply reverse for the reasons stated by Applicant. Simple and neat. And it might make a dent in the 25,000+, and rapidly growing, backlog.

    Or they can continue to operate as if nothing is wrong. Disposing of barely half of the cases that are docketed to them each month.

    Whatever.

  6. 94

    Have you seen how they are treating RCEs these days? File an RCE and your application goes into a deep, black pit — never to be seen again

    I seem to recall a PTO notice recently that would allow applicants to speed up examination of RCEs.

  7. 93

    “Then you can experience the bliss of having to waste time rejecting an original claim that is blatantly anticipated by art discussed in the background, or art that you can find in a 3 minute search.”

    So you’re getting 1.25 counts to reject claims on background art or art that takes 3 minutes to find, what are you complaining about?

    ” And few things are more invigorating than the smell of stale carpeting on Sundays when the A/C is off.”

    Why are you in the office on Sunday when you’re getting 1.25 counts to reject claims on the background art or art you found in 3 minutes? Can’t you get that done during Monday through Friday?

    You have the easiest job in the entire federal government. And you’re still whining. Bitter doesn’t begin to describe you.

    P.S. You’re welcome.

  8. 91

    Cool double standard there, what a surprise.

    Incredible to whom? Any bitterness I have is a natural reaction to years of dealing with counterproductive obnoxious schmucks who lack the sack to admit when they’re beaten.

    Frankly it sounds like you’re just jealous that you didn’t score one of those nifty “COPA 2011” aluminum bottles they passed out the other day (made in the USA ftw). You can’t get trinkets like that by whining (though sometimes they’ll show up on ebay).

    Why not join us and show us how it should be done? Then you can experience the bliss of having to waste time rejecting an original claim that is blatantly anticipated by art discussed in the background, or art that you can find in a 3 minute search. Or the thrill of wading through hundreds of irrelevant IDS references because the assignee happens to be an aggregator. And few things are more invigorating than the smell of stale carpeting on Sundays when the A/C is off. You’re truly missing out…

    p.s. You are the first person who has ever called me a “hack”. Thank you!

  9. 87

    Overpaid, underworked, but still incredibly bitter PTO hack says, “But an ‘analysis’ section stating only ‘We agree with Appellants’ contentions. See Br. 10-23.’ is perfectly fine, right?”

    Yes.

    Now go get a real job, loser.

  10. 86

    Yes, I have noticed that as well. I know they changed the rules but I expected maybe just a few extra months of waiting. You’re right- they are transported to another dimension or something and then, when you have completely forgotten that you ever filed the application, an Office action shows up. So that’s probably not helping the appeals backlog…

  11. 85

    Amen. I had never appealed a patent application until about 2006 or so…never had to. Either my application was dead based on valid rejections (and quietly abandoned) or I worked something out with the Examiner. I tried to do that in one case I just appealed and was told that my application was “too short” (I think it is about 30 pages, double spaced). Huh? Also, quite a few “it’s obvious in the absence of unexpected results” with no statement of how to combine the references (probably because they were pretty uncombinable). Got a reversal recently where the APJ did point out that there needs to be SOME kind of prima facie case before the applicant has to prove unexpected results.

    I now look up the Examiner and see how many cases he has allowed. I dealt with one primary who, as a junior examiner, had ONLY ALLOWED EIGHT PATENTS. So about 1.5 patents PER YEAR? And it’s a pretty high-tech area (not business methods or software or some other areas where there might be 101 or other difficult issues or mousetraps where there might be a lot of obviousness issues). When I am up against someone like that, I don’t even bother with pre-appeal (in all other cases, I go pre-appeal but I figured there was truly no point with this person).

    I find it very sad as there just seems to be a lot of discontent (see my above posts) that is totally unnecessary. Train your junior examiners well and then trust their judgment. Respect them. I train people in my job and I try to let them be as independent as possible (we talk about strategy for claims and then for responses and I let them do it themselves and only make changes that are necessary as when the claims are confusing, missing an element, or have antecedent basis problems). Then when they get an allowance, it’s something they can be proud of and they grow in the profession and in their own confidence.

    And, unfortunately, attorneys who are former examiners from that era also lack good communication skills and respect for examiners so it’s like a kind of “lost generation” and that is just sad…

  12. 83

    The point is that the avenues of getting a proper examination are choked in the first instance.

    Appeal backlog is a symptom – it is not the disease.

    The backlog of applications that have not even seen any action is still out there (one big OOPS from the AIA that does not help that situation).

    The backlog of applications that have been picked up and put back done is still out there. The Kappos’ cap on RCE-churn abuse has helped s l o w the buildup of these (anyone notice how little RCE abuse is spoken of compared to the Dudas regime days?).

    Everywhere you look there is a backlog.

    Someone posted what Dudas had sown, so we now reap.

    That is the golden truth.

    Take a look at the Reject-Reject-Reject (no possible mathematical reason why)rejection curve from a largely stable historical rate of around 70% or so dropping to below 40%. Applicant behavior did not change before during or after this anomaly – take that curve and flip it upside down and it matches the curves of backlog build-up we see everywhere.

    The Office will not get out of in a day what it dug itself into over more than six years of bad, results driven examination (as opposed to examination on the merits).

    Let’s stop hearing about how hard it is and how difficult a job it is (reminiscent of the CRRP anti-software report) and let’s DO THE FN JOB.

    The sooner we stop thinking of patents as a bad thing and start thinking that they are a good thing the sooner we can get a proper mindest for wanting more of the good patents.

    The agenda of constantly focusing on “bad patents” needs to be put out to pasture. That’s exactly the doctrine that led us to the Dudas regime and the Reject-Reject-Reject and the costly and very much bungled Tafas affair. THAT is the disease. It’s time to embrace the good and aim for more of that good. The minor bad that comes along for the ride should not be the tail that wags the dog.

  13. 82

    SO the point of the “LOL’s” is…

    …what exactly?

    Do you care to actually make a point MM, or just act like a m0r0n?

  14. 81

    “fire every single APJ who starts their decision with, “We begin by adopting the examiner’s findings as our own…” ”

    But an “analysis” section stating only “We agree with Appellants’ contentions. See Br. 10-23.” is perfectly fine, right?

    t o o l

  15. 80

    “The board should write an opinion only if it has something to say. Otherwise, simply affirm the rejection and adopt the examiner’s reasoning, or overturn it and adopt the applicant’s.”

    Yeah … and they should do that for the Federal Circuit, Supreme Court, and all courts …. yeah … that’s a great idea.

    /sarcasm off

  16. 79

    Of course, I predicted the end of software patents …. what 4-5 years ago??

    They are unpatentable today, right? I mean, they’ve disbanded the 2100 and 2400 Tech Centers, right?

  17. 78

    “Virtually everything in the rules package makes it *EASIER* to file appeals.”

    Virtually everything that has been made easy was already so easy that you could get your paralegal to do it.

  18. 77

    “The soon to be 5+ year pendency for appeals will act as a deterrent to the filing of a lot of appeals.”

    Have you seen how they are treating RCEs these days? File an RCE and your application goes into a deep, black pit — never to be seen again. At least with an Appeal, you have chance to get PTA.

  19. 76

    AAH BJ: I thought you got all of your applications allowed without appeals.

    That’s true, thank you.

    How would you know [that the soon to be 5+ year pendency for appeals will act as a deterrent to the filing of a lot of appeals?]

    How did I know that Judge Newman was going to get smoked in Apotex? How did I know that Bilski’s claim was going to get shot down? How do I know that Prometheus’ claim is going to bite the dust? How do I know that at the end of the day Moore/Rader’s view of claim construction is going to prevail? How do I know that the applicants in Therasense are not going to prevail at the district court level? How did I know that the existence of the term “directed to a human organims” in the AIA means pretty much zilcho to 99.9% of the US biotech industry? How did I know that KSR didn’t mean the end of the world for US patents? How did I know that signals were going to be held ineligible for patenting? How do I know that Judge Dyk’s dissent in Genetics Institute will eventually be the law?

    Ponder these questions to your heart’s content, sockie.

  20. 74

    They should just write picture claims and get all first action allowances. Like Malcolm advocates“.

    Fixed.

    Everyone knows Malcolm is an Office Hack and not a real attorney.

  21. 73

    “Nevertheless a lot of effort can go into a short letter”

    Oh I know, JD once told me about an appeal brief it took him 6 hours to write that could have been summed up as: Dear Examiner, You plainly put the wrong reference number down, please to be sending us a rejection with the correct reference number whatever it may be. Thx in advance.

    But instead, he billed 6 hrs! Tell me that is not a man all about business!

  22. 71

    The soon to be 5+ year pendency for appeals will act as a deterrent to the filing of a lot of appeals

    Wrong.

  23. 69

    The soon to be 5+ year pendency for appeals will act as a deterrent to the filing of a lot of appeals.

    Of course anybody who files an appeal is abusing the system. They should just write picture claims and get all first action allowances. Like Malcolm does.

  24. 68

    The point is how dare you play the patent game to begin with – don’t you know that all property is evil? Yay Communism!

  25. 67

    The board should write an opinion only if it has something to say. Otherwise, simply affirm the rejection and adopt the examiner’s reasoning, or overturn it and adopt the applicant’s.

  26. 65

    They’re not a tiny bandage on a gaping wound – they are a shotgun blast to the gaping wound.

    Virtually everything in the rules package makes it *EASIER* to file appeals. Do you think that will increase or decrease the backlog? You would have to be insane to think that applicants won’t file more appeals because of these rules.

    Most of the rules are, ostensibly, directed to streamlining appeals. But, in reality, whatever marginal benefit that streamlining provides will be shattered by the dramatic increase in filings.

    Despite all of the above, the new rules are still the RIGHT THING TO DO, because no inventor should have to go through tons of expense and government red tape to file an appeal

  27. 63

    This rule package is little more than a tiny bandage on a gaping wound.

    These rules are “applicable to all appeals in which a notice of appeal is filed on or after January 23, 2012.” Except for rare situations (e.g., you file an appeal in which a first decision has already been rendered), any Notice of Appeal filed on January 23, 2012, isn’t likely to be decided for another 5 years (1 year for the appeal/examiner’s answer/reply brief) and AT LEAST 4 years sitting at the BPAI. Thus, the new 41.50, 41.52, 41.54 won’t be implemented until another 5 years.

    The rules regarding the changes in the content of the Appeal Brief are directed to minor aspects that take little more than 20 minutes to complete. The Rules gets rid of the potential for a second Examiner’s Answer, but that happens in probably <1% of all appeal. Everything else is fluff.

    BTW – having the Appeal go automatically from the Examiner to the BPAI after the filing of a Reply Brief isn't going to change real pendency one day. Whether it wait 4 months with the Examiner or goes immediately into the backlog, there are still going to be 25K+ appeals that need to get done first before your appeal gets decided.

    Granted, I like the discussion that dictionary definitions are not "Evidence" and that you can "officially" request that new grounds of rejection be designated in a Request for Rehearing. However, most panels don't have a problem with dictionary definitions and you can already request that new grounds of rejection be designated in a Request for Rehearing. Also, as discussed above, these provisions won't be in full force for at least another 5 years.

    A big to do about nothing …..

  28. 61

    1. RE: “As published, the rules will become effective in on January 21, 2011.”

    Actally, its 2012 and January 23: “This rule is applicable to all appeals in which a notice of appeal is filed on or after January 23, 2012.”

    2. Here’s the link
    link to regulations.gov

    3. Per the BPAP website; “Please note that the August 12, 2004 version of the Board Rules (69 FR 49960) is in effect and should be followed.”

    There have been plenty of rules enacted after August 12, 2004, but we have to follow the August 12, 2004 rules. Are these new rules more of the same? Meaning that, along with all the other rules enacted after August 12, 2004, are we to ignore the January 21, 2012 rules and instead follow the August 12, 2004 version of the Board Rules (69 FR 49960)?

  29. 60

    AAH BJStill don’t have any examples of this abuse you complain so bitterly about?

    LOL.

    AAH BJDon’t file RCE’s. Appeal everything.

    LOLOLOLOLOLOLOLOLOLOOLOL!!!!!!!!

  30. 58

    AAA JJ said in reply to Ert Zog…

    Don’t file RCE’s. Appeal everything.

    LOL. Our trxlls are a friggin joke.

  31. 57

    Correct effective date? “all appeals in which a notice of appeal was filed on or after January 23, 2012”

  32. 52

    These new rules make it a cost effective prosecution strategy to park your application in the appeal docket, rather than file an RCE.

    Welcome back, Submarine Patents!

  33. 51

    > Notably this is quite ironic because “the big boys” have so many patents that anytime they go in for licensing negotiations they can probably pull the old “well you don’t infringe these patents of ours but unless you give us 10k right now we’ll come back tomorrow with some you do” and not even be so worried about getting all the best subject matter. But they have the $ and the time so whatev.

    I have represented some of the biggest in the licensing business and I have represented students on a shoe string budget. No matter who they are it is my duty to my client to deliver the best results and beautiful cases if you wish to call it that.

    Also I put my reputation on the line when I represent a client and it is my sincere wish to deliver service. I realise it might not always look like as lot of hard work to the examiner, indeed that is never a point in itself. Nevertheless a lot of effort can go into a short letter.

    As for what is valuable, well, who knows? Experience shows first appearances can be very deceptive. I therefore make no assumptions other than that the client felt it was worth protecting and customer is king. Therefore I will have to treat it as higly valuable, no matter how it appears to the examiner or to me.

  34. 50

    6 I think you hit the nail on the head when you spoke about having to convince the SPEs. In certain technology areas, such as those with SPEs who were barely a year or two as primaries, the SPEs seem to have an adversarial attitude with their own examiners. I also don’t understand this attitude as their ratings are based on Examiners’ production so you would think that they would want to HELP their examiners move along cases quickly by identifying allowable subject matter, getting decent claims in the case and moving it along (personally I disliked continuations as an Examiner since we had almost always crystallized the issues by the second action- thus I would rather call than issue a final). And I had every kind of applicant because I was an examiner for two different tech centers (one chemical, one electrical, the first for 5 years, then a long break being an attorney, then came back as electrical).

    So I think you have identified a critical problem- maybe due to hoteling and fewer primaries, the SPEs do not know (and therefore do not trust the judgment of) the junior examiners. Well, that is sad and makes for an unhappy workplace. I must say I was lucky enough to have worked for some great SPEs but I did know one or two on my floor (cough, John Doll, cough) who were like that with their Examiners. I guess some people never change.

    Yeah, it’s hard to “make a deal” with an attorney and then have your SPE say no. That would be pretty embarrassing and also would not provide you with any motivation to make a deal in the first place.

    Me, I still keep in touch with one of my SPEs (one died) even after all these years.

    So thanks for explaining, I think my eyes are being opened a bit.

    erbiumfiber

  35. 49

    Hey Ned did you wait till I got off to say that? Sorry I missed your comment. But obviously it doesn’t matter. I guess I just hadn’t gotten the Scope of the existence. But I do now. Again so sorry I missed your comment Ned, so why don’t you say something nasty to me or about me like you usually do… Oh I forgot, you do that when you think you have the upper Hand.

  36. 48

    Oh I know what his supposed “point” is, and I’ve already addressed it on numerous occasions. Indeed, I addressed it in this very thread.

  37. 44

    2. They deserve congratulations because it is the right thing to do, even though it will increase the backlog.

    3. That’s right: the rules mostly eliminate bureaucracy and red tape that prevents people from filing appeals. Getting rid of those obstacles will result in lots of more appeals being filed. Indeed, the cost of preparing an appeal should decrease substantially.

    Agreed. As I noted upthread:

    . In fact, these rules are a rather nifty handout to applicants and it would be hard to imagine a more applicant-friendly set of rules, short of a rule stating that all appealed cases are going to be automatically granted as patents on January 1, 2012.

    Heckuva job, Kappos.

  38. 42

    the examiners have no say in whether an appeal is filed though. Even the best and most persuasive rejections can be appealed

    Way to miss the point of the post you responded to 6: 75% of pre-appeal requests and appeal briefs result in re-opening by the examiner. – in other words, your non-sequitur of “who controls what being appealed” has nothing to do with the sheer number of appealed items being re-opened for examination.

    No wonder you are not persuasive – you lack simple logic.

  39. 41

    “If you can’t convince your SPE, who hasn’t read the application, the prior art, or the applicant’s responses, that your rejection is more rad than his/her rejection, I can’t imagine that your “quality” is very good.”

    Amazingly enough my spe probably has read a great deal of all of those things when I discuss a given appeal. He was actually quite a good and thorough examiner back in the day. Although, as I mentioned, I did not say that I “could not” convince him. Although I will say that I did not on one occasion. That is probably a subtlety lost on you.

  40. 40

    1. The BPAI and PTO deserve huge congratulations on these new Rules!

    2. They deserve congratulations because it is the right thing to do, even though it will increase the backlog.

    3. That’s right: the rules mostly eliminate bureaucracy and red tape that prevents people from filing appeals. Getting rid of those obstacles will result in lots of more appeals being filed. Indeed, the cost of preparing an appeal should decrease substantially.

    4. The final rules package, like the NPRM, includes a skewed discussion of new grounds of rejection. The discussion does not include the words “Leithem” or “Stepan.”

    5. The final rules also seem to assume that an appeal brief or reply brief (where the applicant cannot file amendments or evidence) constitute a “fair oppportunity to respond” to new rejection. See In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976).

    6. Overall, though, congratulations and thanks to the BPAI and PTO!

  41. 39

    “…everything being a rather tough call in which case that is me volunteering to have a difficult battle for allowance with the spe”

    You can’t persuade your SPE? You must not be very persuasive. Maybe there’s a class you could take.

  42. 38

    “So how about saving everyone time and suggesting to the attorney the subject matter that is promising and might lead to an allowance?”

    Well for one thing I probably did (indeed I seem to recall that I did in that case but I also recall possible 112 1st issues with what I had in mind), but in the instances where I do not, it usually boils down to one or two of two things: everything being a rather tough call in which case that is me volunteering to have a difficult battle for allowance with the spe, or that there is so much allowable my putting my finger on one particular thing, or even a few particular things, usually isn’t all that helpful when it is clear from the record that there is plenty in the application that would be fine.

    “This is the adversarial attitude that I don’t understand. In the ancient times when I was an Examiner, I would say at least 50% of my allowances came from phone interviews that I initiated suggesting Examiner’s amendments. ”

    Some arts are more amenable to that than others, although I do use it on occasion. For instance, I deal on occasion with “the big boys” who want exactly what they’ve claimed exactly because they think it will be far and away most valuable, they already have a pretty good handle on the art and think it clearly patentable, and want to make the office present a beautiful prima facie case on the record ala NAL or else they’ll appeal. So they don’t want to just take the allowable subject matter, and when they do, they’ll file a continuation and you can continue the “battle” in a year. Notably this is quite ironic because “the big boys” have so many patents that anytime they go in for licensing negotiations they can probably pull the old “well you don’t infringe these patents of ours but unless you give us 10k right now we’ll come back tomorrow with some you do” and not even be so worried about getting all the best subject matter. But they have the $ and the time so whatev.

  43. 37

    “So how about saving everyone time and suggesting to the attorney the subject matter that is promising and might lead to an allowance?”

    Because that require him to be persuasive. Which he is clearly not.

  44. 36

    So how about saving everyone time and suggesting to the attorney the subject matter that is promising and might lead to an allowance? This is the adversarial attitude that I don’t understand. In the ancient times when I was an Examiner, I would say at least 50% of my allowances came from phone interviews that I initiated suggesting Examiner’s amendments. Win-win for everyone- fewer appeals, higher quality allowed applications, faster prosecution.

  45. 35

    If you can’t convince your SPE, who hasn’t read the application, the prior art, or the applicant’s responses, that your rejection is more rad than his/her rejection, I can’t imagine that your “quality” is very good.

  46. 33

    I try to use my powers only for good. Bickering about who totally has the radest rejection in town isn’t politically conducive or conducive to his thinking that my “quality” is subjectively high from his perspective come ratings time.

  47. 32

    So the John Doe Trademark was really a Jane Doe and it was really mine. And he did it pretending to be me because he couldn’t do it legally? Could it be? And if it is so, How can a Case be filed against John Doe when the Name was not John Doe on the Trademark Case. Query what is A and what is B.. Is A Atty. and B Associate?

  48. 31

    “I get my clients’ patents granted without appeals, often without office actions.”

    You’re the One True Prosecutor.

  49. 29

    “Do you think that seeing such examples would shxt you up, sockie?”

    IDK, why don’t you at least try?

  50. 28

    In other cases it is shorthand for “AAA JJ is a tard”. But I wasn’t going to bring that up until you were a tard again.

  51. 27

    “Not really, because, as I’ve told you, the vast majority of them is simply the examiner not wanting to take the time and trouble to go through the appeals process.”

    Now you’re just lying. Which is sad. Even for you.

    “I’m curious, if I filed an appeal today, and it goes to the board, should I expect an answer by 2016?”

    At the current rate of dispositions, don’t count on it.

  52. 26

    Do you have some examples of this abuse you can share with us,

    Do you think that seeing such examples would shxt you up, sockie?

    I don’t.

    I’ve never appealed a claim that I “knew” was a “giant stinking t urd”.

    Of course you “never” did such a thing! You’re the One True Prosecutor. Along with everybody else.

  53. 25

    So you can’t persuade your SPE to go up with your rejection? Are you not persuasive? Maybe you should take a class.

  54. 24

    Not really, because, as I’ve told you, the vast majority of them is simply the examiner not wanting to take the time and trouble to go through the appeals process. Like scheduling a conference, showing up to a conference, getting the spe to the conference, etc. etc. Oh and like the having to “acknowledge” a reply brief, but at least these rules do one thing well.

    I do love how you guys abusing the appeals process has now led to it being less and less effective for cases that actually go though.

    I’m curious, if I filed an appeal today, and it goes to the board, should I expect an answer by 2016?

  55. 23

    So appealing a rejection that fails to establish a prima facie case, and getting the rejection reversed after being reviewed by a panel of APJ’s (who are statutorily required to be technically and legally competent) is “lucky”?

    I’ve never appealed a claim that I “knew” was a “giant stinking t urd”. I’ve appealed many claims where the rejections were giant stinking t urds.

    Do you have some examples of this abuse you can share with us, or are you just blathering per usual?

  56. 22

    Idk though brosky, the examiners have no say in whether an appeal is filed though. Even the best and most persuasive rejections can be appealed. Indeed, I had a great one (that persuaded an attorney in an interview) appealed the other day, and then it went abandoned 7 mo later. And I lulzed. Most heartily. Sad thing about that app though, there probably was some decent stuff in there that they could have gotten a patent on.

  57. 19

    If an applicant appeals a rejection and the rejection is reversed, how is that abuse?

    It’s abuse if you and the applicant know that the claim at issue is a giant stinking t urd but you keep appealing because, hey, you just might get “lucky.”

    Go ahead. Tell me that never happens.

  58. 18

    Isn’t it amazing that in 75% of the applications in which a pre-appeal request or appeal brief is filed, the same arguments that were “unpersuasive” all of a sudden become persuasive? And then prosecution is re-opened.

    Is that magic?

  59. 17

    I don’t need a tissue, sockie. I get my clients’ patents granted without appeals, often without office actions.

    Thanks for obsessing about me, though.

  60. 16

    And I should note that it wasn’t me wanting to present a slightly different grounds it was my spe, and only me by association. Which, if I had to take a wild guess might be the source of many new grounds after appeal. The examiner likes their rejection, but the spe wants to go with something slightly (or a lot) different.

  61. 15

    Well you’re going to need to come up with something better than these bpai rules to stop that.

    I would suggest this new thing called being persuasive. Perhaps we could teach attorneys about it on a massive scale, require a class before admission to the bar.

  62. 13

    “And fire every single APJ who starts their decision with, “We begin by adopting the examiner’s findings as our own…” Your job is to review the examiner’s findings, not adopt them as your own. If you’re too lazy to do the job, go back to examining.”

    You do know that is fancy shorthand for saying that they found the exact same thing as the examiner did in many cases correct?

  63. 12

    “This informal nonsense where the office is reopening prosecution but the applicant still wants to proceed to the board needs to stop.”

    This nonsense where applicants want their appeal of really sh!tty rejections to be reviewed and reversed but the examiner wants to hide their cr#ppy work from scrutiny needs to stop.

  64. 11

    “I don’t agree. For years examiners have been making undesignated new grounds of rejection in answers. These rules are only designed to stop that abuse.”

    I doubt if it is that much so an “abuse”. In both cases I’ve ever wanted to present even a slightly a new grounds after appeal the applicant wanted to proceed to appeal anyway with just slightly changed arguments. And even if it was, meh the total number of appeals is a tiny part of an examiner’s docket.

  65. 10

    75% of pre-appeal requests and appeal briefs result in re-opening by the examiner. Maybe we should start offing unpersuasive examiners.

  66. 8

    “The idea that “streamlining” the rules is going to have any effect on the backlog is preposterous. It’s like putting a band-aid on a compound fracture.”

    Amen to that brother. The only way to staunch the flow or heal the crack in this case is to start offing unpersuasive lawlyers.

  67. 7

    Also, I should note, that if they’re going to do something like this, then they need to make sure to provide applicant with a formal mechanism with continuing with the appeal if they want to. This informal nonsense where the office is reopening prosecution but the applicant still wants to proceed to the board needs to stop. To have it such that the applicant officially has no choice to continue with the appeal violates the express statutory language. Once the thing has been appealed then it is appealed. Procedure should not, according to most I’ve heard on the subject, trump express statutory provisions.

  68. 6

    “The rules clarify that an argument in the examiner’s answer that uses evidence that was not relied upon in the office action will be considered a new ground of rejection.”

    Wonderful, now I have to cite any new art I wish to rely on while explicitly stating that I do not rely upon it. Come on now, that’s no way to have to do things. Crazy rules. Indeed, that might be a substantive issue over which the PTO actually has no rulemaking authority.

  69. 5

    A review of the BPAI dispositions shows that TC 3700 (mechanical) has by far the worst affirmance rate. Applicants are waiting 2+ years to have really sh!tty rejections reversed. See, e.g. 11/214,280. Hiring more examiners in TC 3700, or any other TC, and having them trained by the idi0ts currently supervising those art units isn’t going to improve the quality of examination.

    Who are these “abusers of the appeal process” that you refer to? If an applicant appeals a rejection and the rejection is reversed, how is that abuse?

    “In fact, these rules are a rather nifty handout to applicants and it would be hard to imagine a more applicant-friendly set of rules…”

    I don’t agree. For years examiners have been making undesignated new grounds of rejection in answers. These rules are only designed to stop that abuse.

    The Board’s been doing the same thing. Backstopping sh!tty rejections with undesignated new grounds. The recent decisions in In re Leithem and In re Stepan Co. have highlighted this egregious practice of far too many “affirm at all cost” APJ’s.

    What would have been truly applicant friendly is a corallary to the notion that unanswered arguments are accepted as true. Or as that ahole Colaianni likes to say, “Silence equals assent.” Any applicant argument not addressed by the examiner should be accepted as true.

    And fire every single APJ who starts their decision with, “We begin by adopting the examiner’s findings as our own…” Your job is to review the examiner’s findings, not adopt them as your own. If you’re too lazy to do the job, go back to examining.

    You know who you are.

  70. 4

    The idea that “streamlining” the rules is going to have any effect on the backlog is preposterous. It’s like putting a band-aid on a compound fracture.

    There was always only one way to deal with the backlog and that was to hire a lot more Examiners so the PTO could do a better job in the first instance dealing with the reams of crxp claims that the PTO is being inundated with (particularly those in the software and computer-implemented “art” units).

    But better examination is the last thing most abusers of the appeal process want. In fact, these rules are a rather nifty handout to applicants and it would be hard to imagine a more applicant-friendly set of rules, short of a rule stating that all appealed cases are going to be automatically granted as patents on January 1, 2012.

  71. 3

    The rules themselves seem OK, but can the Board’s backlog problems be sufficiently reduced without the Board starting to use per curium decisions [like the CAFC] for rejections or appeals that are not even close cases, and without giving reexaminations and reissues the priority they are supposed to get, and need to have?

  72. 2

    The backlog at the Board is a disgrace and a scandal. The idea that “streamlining” the rules is going to have any effect on the backlog is preposterous. It’s like putting a band-aid on a compound fracture.

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