Ex Parte Patent Appeal Results

The chart above shows the results of ex parte appeals grouped by the fiscal year of the appeal decision. In the data, I eliminated administrative dismissals and other non-merits actions from consideration. At this point, I don't have a good explanation for the gradual shift in outcomes.  It may be driven by the underlying patentability of the claims; the selection of cases for appeal; shifts in the law; and also changes in Board decisionmaking.  2012 figures presented here are only through July 2012.

92 thoughts on “Ex Parte Patent Appeal Results

  1. “But if you do not challenge him at the examiner level, I think you have no basis to complain on appeal.”

    Wrong … another person who doesn’t know how to argue before the USPTO. You don’t give up any arguments if you don’t make them during the examination stage.

    You should read ex parte Frye. The examiner is not given deference and Federal Circuit case law requires all findings of fact be supported by substantial evidence. Graham requires that the Examiner make findings of fact. If they are unsupported by substantial evidence, then the Examiner loses — plain and simple.

  2. “I do think it’s perfectly reasonable to state that the combination of a lens and light is prima facie obvious IN ANY CONTEXT given the known uses of lenses and absent a showing of unexpected results or clear teaching away in the art the combination is obvious as a matter of law.”

    You do?????????

    You must be one of those attorneys who are afraid to tell the examiner that they he/she is wrong. I can only imagine how much allowable subject matter you’ve left on the table over the years because your knowledge of substantive law is woeful.

  3. Eh?

    You need to learn some case law. I suggest you bone up on administrative law and understand the burdens placed on the examiner. You should also think about the underlying statutory/case law from which 37 CFR 1.104 derives.

  4. “Examiner that he needs to prove that computers could process information about TV shows that handicapped people watched on-demand back in 2009!”

    Nice strawman … do you have anything relevant to add?

    “It takes a real donkey to fight for those invalid claims that shouldn’t be allowed.”
    It’s up to the USPTO to present a prima facie case of invalidity. If they don’t, then I have no problem being a donkey.

  5. “the result was justified regardles of the case cited.”
    I don’t give a sh)t about the result. I care about due process and whether APJs actually know the law.

    My facts are not going to be the same facts. However, I’m going to have to deal with the same same APJs — who apparently don’t read the cases the cite.

    Due process — as an attorney, I hoped you would have appreciated it’s worth. Apparently, I was wrong there.

  6. I’ll just wait here patiently.

    Are you really that obtuse? The point is not whether or not I find one, but rather the fact that you never seem to bother.

    Obsession. Think about it.

  7. We weren’t talking about combining any known devices. We were talking about lenses being used with lights and achieving nothing more than what lenses combined with lights are known to achieve.

  8. There are plenty of bad patents – even in your own backyard

    Show me one that just issued on Tuesday along with your explanation of why it’s “bad.”

    I’m not saying that there wasn’t one. But let’s see if you can find one. Because I can find a computer-implented one, I guarantee you that.

    I’ll just wait here patiently.

  9. “He’s just doing his part to increase the backlog, one appeal at a time.”

    Maybe if I lose an appeal I’ll feel bad. I’ll let you know if that ever happens.

  10. It’s not my job to scold people when they insult each other. That’s always been your purview

    “Not being your job” doesn’t stop you from QQ’ing when you want to (talk about the biggest “pearl-clutcher” on the thread).

    although “civility” only seemed to matter when it was a member of the “vocal minority” who allegedly broke one of your rules.

    My first comment in this string was geared to your lack of civility – that much is true. But it wasn’t one of “my rules” that was broken. It was Prof. Crouch that asked that civility be maintained.

    You seem to have a problem doing so – and my comments to that effect are factual, as your problem maintaining civility is in fact geared to specific subject matter. Now, if you take my comments as insulting, it can only be because the behavior they describe is insulting.

    And yes, you have an obsession with software and business types of patents. There are plenty of bad patents – even in your own backyard, and yet your venom is reserved for only particular types.

    And no, your behavior is wanton, regardless of whether or not you think you have reasons for it. That is the point I am making.

    Sorry, exactly what point you were trying to make is not clear. Maybe after your nap you can try again.

  11. You’re wrong again. The examiner never attempted to remedy the deficiency of Lee by relying on the “well known fact” that “it is conventional in the art to use lens means” until the 11/9/06 final rejection. The applicant pointed out this error in their 2/12/07 appeal brief.

    “Just as the patent applicant cannot supplement the record with new evidence on appeal.”

    You might want to review the rules.

    “… the examiner does not have to respond to requests for support for well known facts on appeal.”

    As I explained to you, applicants are not required to “request support” for factual findings of examiners. All applicants are required to do is point out the examiner’s error in not providing support.

    “It is easy to see why your appeal went awry.”

    As I noted above, this is not my case.

  12. AAA, "But in this case, the examiner had an opportunity to support his position. In the examiner's answer. The examiner chose not to. And the APJ's gave the examiner a pass."
     
    This is exactly wrong!
     
    One cannot and should not be able to supplement the factual record on appeal. Just as the patent applicant cannot supplement the record with new evidence on appeal, the examiner does not have to respond to requests for support for well known facts on appeal. Not at all. Nada. Zilch.
     
    It is easy to see why your appeal went awry.

     

  13. We’re talking about putting a lens in front of a light here. Are you really going to bill your client for the time it takes to ask the examiner why a person of skill in the art would think to put a lens in front of a light?

    He’s just doing his part to increase the backlog, one appeal at a time.

    So awesome. And so clever! The rest of us are just “lazy”, I guess.

  14. “OK, AAA, your statement seems to assume that the examiners do not have a right to rely on well known facts. But they do.”

    They can rely on any facts that are well known enough to be supported by substantial evidence.

    “What you seem to think is that you can challenge lack of support on appeal, and never give the examiner an opportunity to support his position.”

    That’s not what I think. But in this case, the examiner had an opportunity to support his position. In the examiner’s answer. The examiner chose not to. And the APJ’s gave the examiner a pass.

  15. “I suppose you could tell your client that you’re saving him the petition fee to withdraw the non-finality of the action.”

    Withdraw the non-finality? Huh? Don’t you have some papers to grade or something?

  16. OK, AAA, your statement seems to assume that the examiners do not have a right to rely on well known facts.  But they do. 
     
    What you seem to think is that you can challenge lack of support on appeal, and never give the examiner an opportunity to support his position.  In my view, you have to raise the issue at the examiner stage.  If you challenge him, citing the rule, and he does not respond, you have a basis to win on appeal.  But if you do not challenge him at the examiner level, I think you have no basis to complain on appeal.

    This is somewhat similar to raising an issue for the first time on appeal, never having given the examiner or the District Court an opportunity decide the issue. That's an improper use of appellate resources.
     
     
     

     

  17. And all applicant is required to do is point out the lack of support.

    We’re talking about putting a lens in front of a light here. Are you really going to bill your client for the time it takes to ask the examiner why a person of skill in the art would think to put a lens in front of a light? Post-KSR? I suppose you could tell your client that you’re saving him the petition fee to withdraw the non-finality of the action.

  18. “One must ask the examiner to support his finding.”

    Wrong again.

    “If you do not, I think the presumption concerning the facts is against you.”

    Examiners are not entitled to any presumption.

    “Lesson, follow the rules.”

    Rule 111, which is binding on applicants, requires applicants to point out the errors in the examiner’s rejection. Lack of substantial evidence support for required findings of fact is an error. And all applicant is required to do is point out the lack of support. There is no requirement that applicants request the examiner to provide support. Examiners are required to provide support whether applicants ask for it or not.

    Less, learn the rules.

  19. AAA JJ, I still beg to differ.  One must ask the examiner to support his finding.  He is required to do so.  If you do not, I think the presumption concerning the facts is against you.
     
    Lesson, follow the rules.

  20. “I do think it’s perfectly reasonable to state that the combination of a lens and light [OR ANY KNOWN DEVICES] is prima facie obvious IN ANY CONTEXT given the known uses of lenses [OR ANY KNOWN DEVICES] and absent a showing of unexpected results or clear teaching away in the art the combination is obvious as a matter of law.”

    I get this rejection a lot. And I overcome it every time. No dust kicking needed.

  21. Outrageous lies.

    LOL. Clutch those pearls harder!!!!

    You neglect the “without doing a stitch of honest work” portion.

    Sitting in a bathtub is “work”? I don’t think so.

    Anyway, you’re just trolling me now. It’s time for your nap.

  22. So any combination of elements that are each known, whether for a couple millennia or just a couple decades, is per se obvious?

    Not at all. Nice strawman, though! Super huge and super strawy.

    I do think it’s perfectly reasonable to state that the combination of a lens and light is prima facie obvious IN ANY CONTEXT given the known uses of lenses and absent a showing of unexpected results or clear teaching away in the art the combination is obvious as a matter of law. None of those facts (unexpected results or teaching away) are present in this case, of course.

    This is very straightforward stuff. Anybody can kick dust up at the USPTO and applicants do it all the time, mainly because they can do nothing else. And because it works, of course, which is why high rates of issuance of bogus patents are widely acknowledged by people who pay attention.

    The less-recognized problem with dust-kicking applicants is the waste of the USPTO’s time, which would be better spent examining applications that weren’t so easily decimated.

  23. Let’s revisit the thread. You were compelled to insult me when I made a simple, irrefutable observation

    Outrageous lies. You neglect the “without doing a stitch of honest work” portion.

    You insult. You cover your insult. You think your inslut is reasonable. You then accuse me of insulting you.

    Prof. Crouch, no comments (or action) on the dead prisoners mounting? Is this really the type of material you are willing to have? I am more than willing to engage at that level if you think it OK.

  24. 1) you didn’t blow your referee whistle either – shocking.

    Nothing shocking about it. It’s not my job to scold people when they insult each other. That’s always been your purview, although “civility” only seemed to matter when it was a member of the “vocal minority” who allegedly broke one of your rules. That was the point I was making.

    Let’s revisit the thread. You were compelled to insult me when I made a simple, irrefutable observation: virtually ANYONE can sit in a bathtub (or anywhere for that matter) and come up with reams of novel and grantable claims in the computer-implemented “arts”, in contrast to other arts where you don’t get past first base without investing vast sums of money performing necessary research which requires substantial skill. I never said that this fact was “illegal”. I simply pointed out that this fact affected how and why entities in different “arts” decided what claims to pursue.

  25. So any combination of elements that are each known, whether for a couple millennia or just a couple decades, is per se obvious?

    Thanks for that lesson, Examiner Mooney.

  26. 1) you didn’t blow your referee whistle either – shocking.
    2) your insults are anything but reasonable.
    3) the fact that you think your insults are reasonable shows that intervention by Prof. Crouch is required.

    Prof. Crouch, witness the mindset of a person willing to keep the dead prisoner bodies coming. I am respecting your wishes of not fighting fire with fire, but the stench of the decaying prisoners is mounting.

  27. anon: Try to remember that this is the new Patently-O.

    How can I forget? As usual, you are all over me for expressing my reasonable opinion about a subject, an opinion which you just happen to disagree with (SHOCKING!), but somehow (SUPER SHOCKING!) you forgot to blow your shiny referee whistle on this comment upthread:

    you are an id iot — plain and simple

    Go figure.

  28. Employing sockpuppets …has nothing to do with the content

    You’re right. It has to do with the perjorative use of the term “obsession.” By you of all people. And I explained as much already in my earlier comment.

    (which you have admitted to in the past)

    Indeed. Two or three times over the many years. As I recall I made that admission for two reasons: (1) because I’m honest and (2) to contrast my behavior with your behavior. To this day I’m not sure that you have ever admitted to using sockpuppets (but we all know you did and you did so “obsessively”). I’m guessing you are still using them because the annals of psychology show that habits like that are really, really, really hard to break.

    wanton insulting of an art field

    It’s not “wanton” if I can provide reasons. And I certainly can. Do you want to see some new ones from this past Tuesday? Let me know.

  29. lenses were “used for decades” and concluded it would have been obvious to use a lens

    Other than the patentee wasting the USPTO’s time to the detriment of every other user of the system, is there anyone on earth who disagrees with the proposition that the use of a lens (“an optical device which transmits and refracts light, converging or diverging the beam”)with a light source is obvious for a couple millenia (roughly)?

    Just checking.

  30. Employing sockpuppets (which you have admitted to in the past) has nothing to do with the content (or here, your lack thereof) and wanton insulting of an art field. That you even deign to make excuses for your insults is yet another insult.

    Prof. Crouch, how much more of this?

  31. Nor does it explain your obsession with broadly insulting that art unit

    Perhaps if I employed dozens of sockpuppets to berate anyone who disagreed with me on any subject it would be fair to accuse me of having an “obsession.”

    But a few comments a week highlighting/reminding the unremarkable proposition that the examination of computer-implemented “inventions” is performed non-stringently by the USPTO hardly merits the label.

    I’m glad you’re standing up for that art unit, though. I suppose someone has to.

  32. “US patent Law is a bad Joke”, can’t you say that about some aspects of all law

    I should be more clear: I’m talking generally about the law as ineptly and weakly applied by the USPTO, not the laws per se (although the law which allows the existence of licenses to serve as evidence of the non-obviousness of the licensed claims is indeed a bad joke).

  33. just saying: FYI -getting broad claims and narrow claims isn’t mutually exclusive. You can do both.

    I already acknowledged this at 7:43: “your point is well-taken and typically clients are not forced to choose between broad invalid claims and narrower valid claims, i.e., usually they can afford both.”

    most clients don’t understand the full scope of the claims and what is covered and what is not

    Indeed. That’s why clients often choose to waste money pursuing (and obtaining) broad claims that read on the prior art.

    A monkey can accept allowable claims

    Agreed. It takes a real donkey to fight for those invalid claims that shouldn’t be allowed.

    I find that attorneys that get narrow claims are mostly lazy and incompetent

    Because it takes so much skill and effort to type “I claim the world and everything in it” over and over again. “Now watch me pound the table and tell the Examiner that he needs to prove that computers could process information about TV shows that handicapped people watched on-demand back in 2009!” Yes, that’s why we went to law school.

  34. “The lack of supplied tangible evidence supporting the rejection is of little consequence to the patentability of the claims.”

    Huh?

  35. still there in 103: Patentability shall not be negatived by the manner in which the invention was made.

    Indeed it is still there. Of course, the presence of that language does absolutely nothing to explain why laughably obvious computer-implemented inventions are granted by the USPTO every week.

  36. Ned, you’re wrong. Independent claim 37 recited that the light transmissive portion was a lens. The claim was rejected under 103 over Lee (single reference), which did not even include the word “lens.” The examiner waved his magic wand, “asserted” that lenses were “used for decades” and concluded it would have been obvious to use a lens in Lee. The appellant clearly stated on page 12 of their 5/6/00 brief that the examiner’s position was “unsupported.” The Board “agreed with and adopted” the examiner’s “findings” and stated that appellant hadn’t explained why the examiner’s “assertions” (their actual wording) was improper. Applicants do not have to explain why unsupported, conclusory statements regarding factual issues are improper. Simply noting that there is no support is all that is required.

  37. “I guess, these rants are completely and utterly a result of the complete lack of respect given to the examiners and the PTO by the posters on this blog. I am annoyed by the elitest and holier-than-thou attitude.”

    You don’t work with examiners, do you? Let’s see …
    Little/incorrect knowledge of the law, check
    Oftentimes poor oral/writing skills, check
    Made up facts, check
    Painfully sparse analysis, check
    Missing findings of fact, check.

    What’s not to love?

    “Reviewing for compliance with regulatory requirements and then sifting through hundreds of possible prior art documents located in any number of places to locate 50+ limitations can not be easy”
    That’s their job. They get paid quite well given their education. This isn’t to say that they aren’t give the proper resources/training to do their job. However, they are not going to get the proper resources/training if we don’t complain.

    “this elitest attitude and attorneys that have this attitude are just as much a problem”
    I don’t give a flying f–k about attitude. I just want the job done right.

    Doctor, “John — I’m having a bad day at work, and when I delivered your baby, I dropped it on its head.”
    John, “That’s OK doc … I know you are working really hard and mistakes happen and you did the best you could. BTW, is it true that junior is going to be a wheelchair for the rest of his life?”

  38. “If one challenges the examiner to submit evidence of well known facts, he has to provide evidence. Rule 104(d)(2). If he does not, I would suggest the proper way to “appeal” is by petition, not by appeal. Violation of a rule is the responsibility of the Director, not of the Board.”

    Failure of the Examiner to provide substantial evidence for findings of fact is a violation of Federal Circuit case law. Thus, the proper way to address the issue is by appeal. I wouldn’t trust the petition brach at the USPTO to get me a cup of coffee.

  39. “The ideal is to get the claims issued early enough so the competitors don’t bother wandering into the same space.”

    Like a patent is going to stop some competitors — how idealistic (and unrealistic).

    If you aren’t getting your clients the broadest possible claim, you are not doing a good job. FYI — getting broad claims and narrow claims isn’t mutually exclusive. You can do both.

    In my experience, I find that attorneys that get narrow claims are mostly lazy and incompetent. They’ll take what the examiner offers and they’ll wave the Notice of Allowance in front of the client “see, look what I got you, aren’t I brilliant!” However, most clients don’t understand the full scope of the claims and what is covered and what is not.

    It only dawns upon them 5 years later when they see somebody practicing their invention and then go back to look at the claims and see all the junk the attorney “accepted” to get the application allowed that also precludes them from going after their competitors.

    I have little respect for those attorneys. A monkey can accept allowable claims — it takes an attorney to fight for claims broader than what the examiner initially wants to give.

  40. I guess, these rants are completely and utterly a result of the complete lack of respect given to the examiners and the PTO by the posters on this blog. I am annoyed by the elitest and holier-than-thou attitude.

    As an attorney, I get annoyed with some work product, but I also understand that generally, reviewing a patent application isnt necassarily an easy task. Reviewing for compliance with regulatory requirements and then sifting through hundreds of possible prior art documents located in any number of places to locate 50+ limitations can not be easy. Its this understanding that allows me to smile and more on when workproduct is not up to my standards.

    To me, the law degree is not enough to support this elitest attitude and attorneys that have this attitude are just as much a problem as those examiners that do not provide all the evidence.

  41. This is the crux of my argument …

    Attorney’s want broadest claim for their client, even ifs its easily challenged, because of all the factors above.

    Attorney’s want narrow claims issued to all “other” clients, even if it means relaxing the evidence requirements.

    The same incompetence argument would be made if an allowance was issued because lack of finding “lens” in the alloted amount of time. PTO can not be incompetent because it rejects and also be incompetent because it allows the same claim scope. The lack of supplied tangible evidence supporting the rejection is of little consequence to the patentability of the claims. A lens is known or its not, whether the examiner bothered to do his job and find it.

    “US patent Law is a bad Joke”, can’t you say that about some aspects of all law, regardless of nation and discipline. Patent law (like many other disciplines) objective reasonableness. We all know its not objective reasonableness, but subjective to what you think an ordinary person finds reasonable.

  42. Seriously??? You didn’t look at the “case law” cited? If you weren’t able to pick up on this horrendous misrepresentation of the law, then you are an id iot — plain and simple.

  43. The claims are to a “top center” brake light having a transparent portion encased by a non transparent portion to form a logo.

    LOL. A back-lit sign!!!! Predates electricity.

    And because it lights up, it can also be used to signal stuff like “the electricity is on” or “someone is pressing a button or pedal connected to the electricity that turns the light on” or “grandma just clapped.”

    This is ancient and well-known. Why is this on appeal? Because there is a “lens” on the light?

    US patent law is a bad joke.

  44. without doing a stitch of honest work

    Now talk about unsubstantiated insults and a holier-than-thou attitude….

    Just checked – yep – still there in 103: Patentability shall not be negatived by the manner in which the invention was made.

    You wear that sense of injustice so deeply MM.

  45. AAA,

    The claims are to a “top center” brake light having a transparent portion encased by a non transparent portion to form a logo. A dependent claim apparently adds a lens, but that claim is not set forth in the opinion.

    In discussing lens, the BPAI agrees with the examiner that the use of lenses in brake lights is “obvious because lens have been employed for many decades, including the relevant time period, in brake light devices.”

    Apparently the only objection raised to the examiner’s statement about the use of lens in brake light was to the time period for their use. The examiner responded that the lens were used in the relevant time period. The appellant did not respond to this statement in the reply brief.

    When an examiner cites well known matters without evidence, one can challenge that, and require his proof. Another way is to file an affidavit stating the contrary as a matter of fact. But, since one cannot submit new evidence on appeal….

    If one challenges the examiner to submit evidence of well known facts, he has to provide evidence. Rule 104(d)(2). If he does not, I would suggest the proper way to “appeal” is by petition, not by appeal. Violation of a rule is the responsibility of the Director, not of the Board.

    link to bitlaw.com

    link to bitlaw.com

    link to bitlaw.com

  46. the attorney — likely the party with the least amount of knowledge of the prior art.

    Also likely the party with the greatest knowledge of patent law relating to obviousness, which is something most clients like to pretend does not exist. Regardless, your point is well-taken and typically clients are not forced to choose between broad invalid claims and narrower valid claims, i.e., usually they can afford both.

    if you have an issued claim that is too narrow and doesn’t cover your client’s competitor’s product, then be prepared for a VERY UNHAPPY client

    The ideal is to get the claims issued early enough so the competitors don’t bother wandering into the same space. Many biotech claims don’t cover “competitor” products because the client doesn’t spend the money required to develop their competitor’s technology and, as a result, they aren’t entitled to claims covering that technology.

    Of course, this situation may not apply in “arts” where you can simply relax in the bathtub and “innovate” to your heart’s content without doing a stitch of honest work because everything is enabled and the Examiners aren’t taught how to make an obviousness argument.

  47. Just, thanks for the reference.

    To summarize the opinion:

    Claim term recites X.
    Examiner relies on Ref. A, paragraph 2, to show X.
    Applicant discusses paragraph 1.  Applicant says nothing about paragraph 2.

    BPAI: We agree that paragraph 2, shows X. Further, Applicant cannot prevail because Applicant did not address the examiner's reliance on paragraph 2.

    Just, Without more, and I haven't fully investigated, I see nothing wrong with the BPAI opinion.  

  48. “This preference is especially true in the case of non-practicing entities.”

    This preference is for ALL clients. You get the broadest possible claims and then file continuations on the narrower embodiments infringed by others.

    If you have an issued claim that is subseqently invalidated as being too broad, then that is easy to explain and it isn’t the fault of the attorney — likely the party with the least amount of knowledge of the prior art.

    However, if you have an issued claim that is too narrow and doesn’t cover your client’s competitor’s product, then be prepared for a VERY UNHAPPY client. Getting broad claims are in the best interest of the client and attorney.

  49. If you want an example, look as this:

    link to des.uspto.gov

    The Supreme Court case cited is Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985).

    Read the Supreme Court case here:
    link to law.cornell.edu

    When you are looking at case, do a search for “silence.” Read where the passage “Silence implies assent” comes from. Then explain to me how these APJs aren’t incompetent.

  50. “If there is no evidence, it is just the examiner’s opinion.”

    ???????? How long have you been practicing? At a minimum, 90% of what I read in Office Actions are “examiner’s opinion.”

    “The examiner must have evidence for prior art rejections, and must supply reasoning if the prior art does not disclose the subject matter identically.”
    What, citing column 8, line 2 through column 12, line 55 for all of the limitations not evidence and reasoning enough? Don’t laugh … I’ve seen that “analysis” before (many times).

    “Was the BPAI sustaining rejections without evidence or reasoning?”
    All the f’ing time. Many APJs are like most examiners, they will try to get away with anything if they think they can.

    For example, on’t get me started on a couple APJs that like to cite from a book on Nixon for the propsition that “silence means assent” if an Appellant doesn’t file a Reply Brief (i.e., they cite this and then presume that Appellant agreed to everything argued by the Examiner within the Examiner’s Answer).

    I know who they are and if they ever try that one on me, I’ll rip them a new a__hole that they’ll be bleeding from for years.

  51. Ned, go read the BPAI decision, page 7, in 10/354,842, where the APJ’s “agree and adopt the examiner’s finding” that the use of a lens would have been obvious. Then read page 7 of the examiner’s answer, where this “finding” is allegedly provided by the examiner, and tell me what substantial evidence, other than the examiner’s say-so, was provided. Then look at page 12, second to last paragraph, of the appellant’s May 6, 2009 appeal brief, where the appellant clearly argues that the examiner’s “position is unsupported” and that the primary reference (Lee) doesn’t even include the word “lens.” And then ask yourself if the BPAI is affirming findings that have no substantial evidence support.

    I am not involved in that application. I remember it from Karen Hazzah’s blog posting.

  52. Just, “Examiner findings were presumed to be correct until proven wrong (contrary to Federal Circuit precedent – which requires findings of fact to be supported by substantial evidence) and if the Examiner’s findings of fact were outright missing, the BPAI was more than happy to supply those missing findings (without designating a new grounds of rejection) or simply ignore those omissions altogether.”

    How can a finding of fact not be supported with evidence? If there is no evidence, it is just the examiner’s opinion.

    The examiner must have evidence for prior art rejections, and must supply reasoning if the prior art does not disclose the subject matter identically. Was the BPAI sustaining rejections without evidence or reasoning?

  53. My duty is to my client — not to the public, at large. As such, I will always err on the side of claiming too much

    Given a choice, many entities prefer a “weak” (relatively easy to invalidate) patent with broad claims over a valid patent with strong, narrower claims that are easy to design around. That is because the invalid patent with broad claims represents at least a transaction/analysis cost to the maximum number of potential infringers who may be compelled by those costs to accept a license (recall that in our poorly reasoned system such licenses are actually accepted as “evidence” of validity). This preference is especially true in the case of non-practicing entities who have little or no money invested in the development of an actual commodity or the manufacture thereof (i.e., there is nothing tangible for the troll to “protect” with the narrower claim).

  54. “Wouldnt you agree that the attorneys bear some of the burden on providing the client and the public with the appropriate patent scope and not just any scope.”

    My duty is to my client — not to the public, at large. As such, I will always err on the side of claiming too much instead of too little — although I won’t claim anything that I know is prior art.

    BTW — knowing what claim scope to go after requires an intimate knowledge of the prior art. Although an inventor may have great knowledge of the prior art, oftentimes (most of the times), the inventors work in a vacuum and don’t know what else is out there. This is where the examiners come in — who should be experts in their particular field. It’s the Examiner’s JOB to say when we’ve overstepped our bounds on claim language.

    “Appeal statistics will always be on the side of the side of the reversal/reopen”
    If so, that is a sad state of affairs. There are plenty of clients that don’t want to appeal. This means that they are getting short-changed.

  55. I am not an examiner, but also not a huge fan of whining. I hope your response to OAs are not as whiny as these posts.

    My whole point was that laying the blame solely on the PTO is completely misplaced and comes across as whining. Attorneys offer incompetent work product as often as examiners and if you believe otherwise you are sorely mistaken.

    Wouldnt you agree that the attorneys bear some of the burden on providing the client and the public with the appropriate patent scope and not just any scope. I agree with the two premises above, but was just noting that focusing on the quality of examiner is not the only answer, when other problems such as attorney quality also contribute to overall patent examination quality.

    Appeal statistics will always be on the side of the side of the reversal/reopen. When the attorney is wrong or incompetent, they can file an RCE to remedy.

  56. There’s something about your writings that brings a smile to my face, JJ. Thanks for that.

    John, better than the “Make them do it” approach is the “Nudge them in the right direction” approach. For example, instructing letters from the USA these days tell us here in EPO-land to get the number of claims down to 15, just so as to be sure not to pay the EPO any claims fees whatsoever. Actually though, some inventions need more than 15 claims to do full justice to the inventor’s contribution to the art. In the context of the overall cost of world-wide filing, you would think an additional EUR 225 would be not the most important issue. But no, the imperative of not letting the EPO get any more than the minimum EUR seems to outweigh any other consideration. I take my hat off to the EPO, that they achieve such a huge shift in Applicant behaviour with something as puny as a measly EUR 225 fee.

    Then there’s the “Appeal to their self-interest” approach. Here in unforgiving, First to File, problem and solution Europe, what you file on your filing date is all-important. Anybody who does not do a decent patentability study BEFORE filing (so as to be able to formulate a decent set of claims)is crazy, risking loss of everything. FItF and the AIA will bring USPTO Applicant behaviour round, I’m sure, in the fullness of time (25 years or so).

  57. I hope your OA’s are of better quality than that rambling and incoherent post.

    So as to make this post not just whining, I propose as a solution that you make at least an attempt to proof read what you’ve written before posting. You might want to try that with your OA’s too.

  58. Its interesting to see how some attorneys approach the quality of examination. Examination may be in some situations incompetent, but making broad generalizations are at best make you seems incompetent. Complaining without solutions is just whining. The task of sorting through millions of documents is not entirely easy and made made more difficult by just as incompetent attorneys.

    Regardless of what the PTO does, its going to result in allegations of incompetence. If they allow a case because they cant locate the evidence in a reasonable amount of time, its OK if its your case, but incompetence if its a competitors. If they reject a case without proper evidence, its incompetent if its your case, but OK if its a competitors case.

    Appropriate claim scope is a combined duty to both the examiners and attorneys, not just the examiners. Relax IDS scope and make applicants do a complete search before filing and therefore resulting in less whining.

  59. Thanks JCD (and AAA JJ),

    Not sure I see the “it costs more money” as a viable answer, because that “more money” does not come from taxes or a general account, but rather from the users of the system (plus have you seen the fee increases anyway?). So “more money” should not dissuade the focus or intent of a legislative solution that should fix the actual problem the Office may have.

    Regarding time of examination, I think there is some truth in what you say (AAA JJ), but I would think that any solution would need to dig deeper and figure out why. To me, this is an indictment of the ‘count’ system – or otherwise described as a the one-size-fits-all-Widget mentality. I think a first step in fixing the system must come from a true realization that not all applications are created equal (by true, I mean not just in a fee-setting manner). And “unequal” does not just come from a pencil thickness test, page count or claim count test, but rather from a panel of experts initial judgement of complexity and level of examination effort thought to be necessary.

  60. “Probably because the only obvious solution to this problem is to hire more qualified examiners (which costs more money)…”

    Not in this economy. They are being bombarded with applications and have their pick of the litter when it comes to experience and qualifications.

    “…and/or give examiners more time to do their job (which costs more money).”

    Giving the examiners more time will not result in increased quality. If, for example, an examiner working a docket in a particular class has to crank out a BD every 20 hours (given the GS-12 expectancy for that class and the examiner’s position factor), giving that examiner, say, 24 hours (an increase in time of 20%) for each BD is not going to change the substance of the search or examination that examiner does one iota. What the examiner is going to do is the same cr#ppy text search and the same cr#ppy OA (e.g. The reference doesn’t show half of what’s claimed, but the examiner takes Official notice that it would be inherently obvious to optimize the reference as a matter of design choice in the absence of any criticality or unexpected results). The examiner is either now going to spend 24 hours producing that cr#p resulting in fewer cases being examined by that examiner, or still do it in 20 hours and get a bonus for doing 20% “more than expected.” So why give them more time?

    “I guess there’s at least an argument that it stems from an improvement in examination quality…”

    No there’s not.

  61. Probably because the only obvious solution to this problem is to hire more qualified examiners (which costs more money) and/or give examiners more time to do their job (which costs more money).

    It would be interesting to see some of these stats broken down by art unit. In my experience the 75% figure (of cases being reopened on appeal) is actually a bit low, but I’m obviously looking at a small sample size (maybe 50 appeals).

    With respect to Dennis’ original query, it’s so hard to say owing to a variety of factors, many of which have already been noted in comments, such as potential changes in the reopening rate, as well as potentially changing pendency rate (making it tough to discern when appeals were originally briefed), but I wonder if the recent trend of decline isn’t largely due to KSR (you can interpret this as KSR simply raising the bar for patentability or KSR providing boards more leeway to uphold examiner rejections).

    I guess there’s at least an argument that it stems from an improvement in examination quality, but I’m not sure this squares with most opinions based on anecdotal evidence.

  62. I wouldn’t say we are spoiled. I personally would prefer the short form OA of the 1970′s to the nonsense that I get sent today. The increase in length of OA’s has only resulted in a decrease in quality.

    I was paraphrasing Mitt’s comments. I shouldn’t have injected politics into the conversation. Let’s stick to discussing the terrible quality of examination.

  63. AAA, we are spoiled today. Back when I started practicing patent law, many times all we got was a one-page action. It comprised in a first section a list of references. A second section listed the rejections. A prior art rejection might be 102(b)/103 followed by an explanation, comprising A v B.  If the examiner want to be generous, he would add a second page explaining his reasons.

    Now I would agree that following KSR the examiners are not providing evidence anymore, and at times don't even provide a rationale.  Clearly this is insufficient.

    Regarding Romney, did he really say that, or is at an interpretation of what he said?  Did Marie Antoinette really say, "Let them eat cake?"

  64. Examiners do not respond to allegations that their rejections lack articulated reasoning with a rational underpinning because the MPEP lacks a form paragraph rebuttal.

    Or you get a response like “In response to applicant’s argument that the examiner did not provide articulated reasoning with a rational underpinning, Ref B teaches X.”

  65. This one is easy. The increase from 2005 to 2008 was three-fold. First, the USPTO became better at the appeal conference phase in weeding out the bad rejections. Second, you had the BPAI responding to any obviousness rejection with the three letters – “K,” “S,” and “R.” Third, you had the “Dudas culture,” which emphasized rejections (and affirmances of rejections).

    From my extensive dealings with the BPAI over this entire time period, the worst decisions I ever got came out during the period of 2005-2009. This was the time when the USPTO was trying to push the burden of establishing patentability on applicants instead of recognizing that the USPTO had the burden of showing unpatentability. Examiner findings were presumed to be correct until proven wrong (contrary to Federal Circuit precedent – which requires findings of fact to be supported by substantial evidence) and if the Examiner’s findings of fact were outright missing, the BPAI was more than happy to supply those missing findings (without designating a new grounds of rejection) or simply ignore those omissions altogether.

    Under the guidance of Kappos, on February 26, 2010, the BPAI issued the precedential opinion of Ex parte Frye, which reset everything. Additionally, there were several shakeups in the higher ranks of the BPAI that removed the old guard that was still following the misplaced guidance of the Dudas regime.

    I still see the BPAI bending over backwards to affirm rejections. However, it isn’t nearly as bad as it was a few years ago. It’ll take some time to change the culture back to where it was.

    “Hopefully the underlying patentability is the driving factor in the results.”
    Hardly … the BPAI has changed its standards in response to external factors (only some of which are legally-based).

  66. I don’t know if I agree or disagree with you, Ned. Where the examiners usually fail is in providing the evidence. Lots of hand waving, very little real evidence. The “articulated reasoning with a rational underpinning” is also a stumbling point for them too. Too many improper per se determinations. If I had a nickel for every “The claims are obvious because it has been held that…” (cite to inapposite, boilerplate case law)rejection that I receive I’d be wealthy enough to have dinner with Mitt Romney and listen to his explanation as to why he doesn’t care about anybody who simply can’t understand that to be successful all you gotta do is go to Harvard law and business schools.

  67. AAA, just a small point here, but the examiner does not have to do very much to establish a prima facie case in terms of explanation and the like. All he has to do is notify the applicant of the statutory problems he has been the claims, and his evidence, to shift the burden to the applicant to provide evidence and/or reasons for patentability.

    Only in the examiner’s brief does he really have to explain why he was right and why the applicant was wrong.

  68. There was a large spike of affirmances post-KSR (decided in April 2007) as the APJ’s cut and pasted the “common sense” and “jigsaw puzzle” quotes from KSR into their decision writing software application to affirm rejections that were appealed pre-KSR. Now that applicants are actually able to brief their cases and address KSR, that joy ride for the APJ’s is over.

  69. One could look at this chart as evenly split between affirmance and rejection, except that affirmances went up under Jon Dudas (and my general sense is that it was harder to get a patent under Dudas than other administrations).

  70. Thanks,

    Although 99+% is a bit more d_amming than the 87.5% gross number…

    One wonders why this was not the focus of the legislature as to a meaningful patent reform.

  71. I wouldn’t make that argument from Mr. Katznelson’s data. The reasons for re-opening, while certainly including examiner errors, are fairly numerous. Personally, I find examiner error in about 99+% of the OA’s that I receive. Whether the error is of sufficient quality and nature to require an appeal is a judgment call. I simply don’t have time to address every error in every OA that I’m responding to. Sometimes you gotta just hit the highlights and move on to the next case.

  72. Are you saying AAA JJ that roughly 50% (estimated from the grpah) of 25% (the started appeals that are actually picked to enter the process) result in a finding of no examiner error?

    12.5% with no examiner error? Or conversely, 87.5% of items starting the appeal process have some examiner error?

  73. Thanks for that hard-hitting (and shocking) contribution JJ. This time, I didn’t laugh at all. It’s definitely no laughing matter.

  74. Thankfully Ron Katznelson has already provided those numbers. We know that about 75% of the applications in which a pre-appeal request or an appeal brief gets filed, prosecution gets re-opened.

  75. It’s useful to keep in mind the proposed BPAI rules that David Boundy and Ron Katznelson successfully shot down a few years ago. If you go back and read the FR notice proposing the rules, and the FR notice of the final rules, the mindset of the APJ’s who wrote those horrible rules was clearly, “The burden is on the applicant to prove the examiner is wrong.” There was no recognition of the fact that the burden of establishing a prima facie case of unpatentability is on the examiner, and remains on the examiner throughout the prosecution of the application. It was quite a display of ignorance of administrative law from the BPAI.

    There is still a substantial percentage of the APJ’s (mostly the lifers) who still, to this day, do not understand that applicants do not have to “prove” that the claims are patentable, and that when the examiner fails to establish a prima facie case all that is required is for applicants to explain why there is no prima facie case.

    Of course the generally poor quality of advocacy from the patent bar only makes the situation worse.

  76. There are a few things to keep in mind:

    The PTAB is not a neutral third party (i.e. article III court).
    The acting (and active) boss of the PTAB is the director.
    The Office is the entity controlling which requests of appeal are accepted into the queue (and thus stats like those presented here are inherently biased). For a better, more complete picture you would need to add in all the cases wherein prosecution is reopened after notice of appeal is given.

  77. Good start. How does this data correlate with other data? I’d love to see this graph overlaid against others that have similar curves, keeping in mind that you might have to adjust the time axis because of lags.

  78. How did you handle the situation where the BPAI comes up with its own rejection – does that show up as an affirmance? I have the impression that they have been increasingly willing to attempt to do the examiners’ jobs for them.

    Another question – can you remind us when the pre-appeal pilot program went into effect? Perhaps it had at least a temporary effect in weeding out some of the cases that were most likely to be reversed?

  79. hoho – Right. Hopefully the underlying patentability is the driving factor in the results.  My post could have been more articulate. I was thinking about the change in averages and what we can say about that change.  Its hard to say whether we've had rise in the quality of inventions being appealed that accounts for the lower affirmance rate. 

  80. the rate of affirmance versus reversal “may be driven by the underlying patentability of the claims.”

    Really? You don’t say? (Sarcasm)

Comments are closed.