USPTO Takes Action to Reduce RCE Backlog

By Dennis Crouch

The USPTO’s backlog of requests for continued examination (RCEs) continues to grow. The chart above shows the backlog of RCEs that have not received a first action on the merits since the RCE filing. The increased backlog is explained by both a slight rise in the number of RCEs being filed each month and a slight drop in the number of RCEs being examined. The drop in examination rates for these RCEs is explained by changes in the docketing, quota, and count system for examiners. These changes implemented by former Director Kappos slightly decreased the “counts” given for examining RCEs and also allowed examiners to delay examining RCEs without direct penalty. You’ll note the annual dip in the backlog around September – the time when some examiners rush to make their end-of-fiscal-year numbers.

The chart below shows the number of RCEs filed each month and also the number of RCEs that receive a first action on the merits (office action or allowance). These figures are smoothed with a six-month moving average. The gap between these figures represent the monthly growth in unexamined-backlog.

The USPTO has recognized that the rapid growth in RCE backlog is unacceptable and has been searching for the best response. As a stop-gap measure, USPTO Commissioner of Patents Peggy Focarino has announced that the count system will temporarily revert to the old system that gave full credit for RCE work. Focarino writes:

[T]he RCE credit will be adjusted from 1.75 (or 1.5) to 2.0 until September 30, 2013. . . . With this additional credit, I am asking each of you to help reduce the RCE backlog. With these changes it is anticipated that the RCE backlog will be reduced significantly by the end of this fiscal year. . . . Thank you for your continued hard work and dedication as we strive to be the Best Place to Work in the Federal Government.

My understanding is that examiners will now receive 1.25 counts for a first action following an RCE and an additional .75 counts at the disposal. This puts RCEs on par with original examination. Taken together with the increased fees for RCE filing, I expect that this change will entirely stem the tide of RCE growth. However, it does not address the very real concern of why so many RCEs are necessary.

219 thoughts on “USPTO Takes Action to Reduce RCE Backlog

  1. Time for you to leave your fantasy world Malcolm:

    1) The patent troll fantasy has been repeatedly debunked by Peter Zura’s 271 Blog article explaining that Troll’s rarely if ever prosecute their own patent applications.

    2) “unlimited bites” – has been repeatedly debunked. See Tafas and the claims and continuation rules debacle.

    3) “get a broad patent” – Um, EVERYONE wants as broad (and valid) a patent as possible. THAT”S WHAT OUR CLIENTS PAY US TO GET. Your smear attempt at painting this as a “troll” activity necessarily FAILS.

    4) “along with 500” Huh? You might want to try basing your accusations in reality.

    5) “Why should they have to pay” Nice strawman – no one is making this argument.

  2. I liked the hand wavey part Eugene did where he didn’t bother to cite even one piece of art even for his primary reference.

  3. Because they’re forever hoping (praying really) that the office will all of a sudden miraculously reform itself and all their actions will be perfect. Or at least their clients are. That’s why. And also, even though they don’t want to admit it, they’re probably not competent to do so anyway.

  4. That’s ridiculous. But it’s not a granted claim, is it?

    Of course, it’s no less ridiculous than using a computer to identify “available real estate” or turn off your kid’s credit card (or process any other kind of information that was routinely processed before computers). Those sorts of claims are routinely granted by the USPTO and resolutely defended or praised by the same commenters here who think our patent system isn’t sufficiently coddling in its treatment of applicants.

  5. Ned Heller Said : “I just responded.”

    Hello Ned:

    I know in the past your do dog has eaten your responses, or something like that. Is that what happened this time?

    If so will you repost the quote and proper pin cite now please ?

    Of course if you want to now admit the Court never said such and you simply made it all up, or made an honest mistake, and thus are wrong, please kindly do so now, and we can all move on.

    Thank You

  6. Ned Heller Said : “I just responded.”

    Hello Ned:

    I do not see a response with the exact quote of the Supreme Court saying, “The integration must modify the otherwise eligible process to produce a new result. If it does not, it is not integrated.” Did you post it in another thread perhaps? Please let me know

    Thank You

  7. The patent troll fantasy: file a giant nearly impossible to understand specification and a claim that covers the Internet using words that nobody has ever used before. Then get unlimited bites at the apple for no cost arguing with an Examiner who gets a percentage of pay docked every time he construes the claim in a way that the troll “clearly did not intend”. Get a broad patent, then let the “market” decide how much it’s worth by asserting it against everyone with any money, along with 500 equally sh-tty patents.

    Of course, even if that happens, the He-Man Patent Luvvahs Society will still complain. Why should they have to pay any fees at all? Constitution! Innovation! Merka! Rinse. Repeat.

  8. It’s not that hard to cite the closest art the first time. That’s what we’re really wanting.

    Here’s an idea: if you want that so badly maybe you should find the closest art yourself and explain how your invention is different, right there in the specification. That would save you time and money. Why wouldn’t you want to save time and money?

  9. “The clients are demanding too high a volume.”

    Blame the applicants.

    Not sure why “blame” comes in. That assumes a mistake has been made. Here the assertion is simply a cause (clients are demanding too high a volume) that explains an an observed effect (processing is slower than it would be under optimal conditions).

  10. Asked and answered Malcolm.

    Translation: “I flailed upthread. Weren’t you paying attention?”

    Seriously, defend your statement that RCE’s are filed only because of PTO failure. It would be a fascinating fact, if only it were true. So prove it.

  11. “ALL claims are to be examined fully, be it independent or dependent. It is people like you that give examiners, both here & in real life a bad name.”

    Why on earth do you say that? Did I say anything to the contrary in anything I said in this thread? No? Then STFU old man.

    “Good thing you were never reporting to me or in the art I came up in. You would never have made it with that attitude.”

    With what attitude you old stupi d fck? I displayed no “attitude” above, I stated what the informal policy is, boo frakin hoo me a river. Jes us h Chris t, it was your generation that gave us this fed up system in the first place, stop blaming me for it as if I PERSONALLY did something wrong. Because I sure as f did not.

  12. “Do you know how asinine that sounds?”

    How asinine? People in my art having been doing it for decades, who am I to contend with TRADITION? Bottom line is, just like official notice, it is just a time saving device used by a bureaucracy. Just deal with it in the time honored fashion and consider the claim more or less unofficially stated as being allowable if put in independent format. Look, there are people, known as signatory examiners, who feel they are more comfy NOT allowing things. You’re dealing with human beings not something rational.

  13. I know what to do ya jack arse, I’m telling you what to do with people that aren’t doing what you’d like.

    I personally only use like 3 of the 103 caselaws (ranges and order of steps along with elimination of elements where function not retained) that I know of and yes I know all about the arguments against its use in such a manner and I know all about this that and the other related thereto, and I don’t use them all the time if whatever the limitation is doesn’t seem obvious to me.

    Although I totally would use the whole aesthetic changes thing and I’ve considered using the change in shape thing. But the thing is, in my art changing the shape usually leads to some real consequences, so I usually wouldn’t use that even if I started.

  14. Of course, you all don’t wan t to hear that from someone in the office, do you.

    That’s exactly what we want to hear. It means that you don’t have your head entirely in some nether region, and would invite a toned down reply.

    Thanks.

  15. A great article taht shows how braod some applicants are filing claims.

    link to ipwatchdog.com

    How’s this sound to you?

    1. A method of treating pain by topical application of an analgesic composition to the skin of a patient comprising a) placing an analgesic composition in an environment with a temperature of less than 10° Centigrade, b) keeping said analgesic composition in said environment for a period of time sufficient to reduce the temperature of said composition c) removing said composition from said environment, and d) applying said composition topically to the region of pain.

    MVS

  16. I always hated for my examiner’s to give a 1st action final & rarely did myself. It’s not fair to the applicant. The only time I would do it (be it for RCE, FWC, etc.) was when they filed without any response. If there were at least arguments, I wouldn’t make it final because the applicant paid for their 2 new actions. That was the general policy in the art I came up in, as well.

    MVS

  17. JD, I thought you were dead. :)

    Haven’t bothered posting in here just because it is so much like those taking heads on MSNBC. All chanting to themselves.

    How about getting together for a beer sometime & catch up on old times? You can tell me about all the exciting searches you did for toilet paper rollers.

    MVS

  18. bad joke,
    Again, you are arguing things I never said. Pure straw man. Where did you get that I said anything about not reading the spec??

    Yes, read the spec, claims, everything. Understand the invention. THEN do the search. That’s what I always preach & do.

    My point was about the asinine idea that any new art should be made non-final because, based on that idea, the search was not complete.
    My point was, and is, that no matter how completely the spec is read & understood, there are always things that might be added that the art of record does not anticipate or make obvious and thus require some additional search.

    Of course, I’ve had all too many cases where art was cited (not applied) in the FAOM & the applicant still amended to read on the cited art. Obviously, the attorney never bothered to look at what was cited or the parts referenced.

    MVS

  19. 6,

    I’ve said it before & will again. You are a f00l. ALL claims are to be examined fully, be it independent or dependent. It is people like you that give examiners, both here & in real life a bad name.

    Good thing you were never reporting to me or in the art I came up in. You would never have made it with that attitude.

    MVS

  20. bad joke,
    How about reading some of the stuff Anon is posting & respond to that. You 2 seem to have a somewhat different opinion on what the examiner should be doing.

    And, for the record, I have literally issued thousands of patents & always tried to find something allowable & instruct examiners I trained to do so. You all may not realize it, but my opinions about office quality isn’t that much different from you all (just not as extreme). I think that actions, as a whole, can & should be better across the board. Of course, you all don’t wan t to hear that from someone in the office, do you.

    MVS

  21. Anon,

    I have said SO many time. Do a complete search, did out what, if anything is, or can be suggested to be, allowable, and do the action. Why do you all try to put words in my mouth?

    And as I have repeated the search is supposed to cover what is claimed & reasonably expected amendments. The field of the invention would obviously be included as well as any relevant areas. To say that “any claim by an examiner that he must conduct a new search only means that the first search did not cover the entire application” is being disingenuous and pure hyperbole and you know it.

    If you can not understand that there are limits, in particular with time, as to what can be searched. All “relevant” art should be searched, yes. But that is different from saying that “all possible” art should be searched & made of record.

    MVS

  22. bad joke,

    The MPEP indicates that the search is supposed to cover what is claimed as well as what can reasonably be expected to be added by amendment. This is what I was referencing if you my remarks again. This discussion was about how comprehensive the search should be.

    That’s one of the problems with this blog. A person responds to one point and someone else attacks you on a different issue because they read the remarks out of context.

    MVS

  23. Anon, I still don’t understand your point, and maybe you don’t understand what I previously said. Let’s keep it a simple analogy: let’s say you’re an attorney with a firm, they’re getting a steady stream of work, and you can write 4 applications a month (I have no idea what typical attorney workload is, or if you even write and prosecution patent applications). Now, lets assume companies A-C have 2 new patent applications they’d like drafted each month. A reasonable approach would be to work on each in the order they’re given to you. However, let’s say your boss tells you not to ever work on any applications from company “C” until all of those from companies A and B are completed. The result is you never work on applications from company C, since you’re constantly getting work from companies A and B which you must do first. That’s what’s happening to RCEs, at least on my docket. My docket is constantly refilled with new CONs and DIVs, and those CONs and DIVs are pushed to the front of the line as far as oldest new assignment every time, no matter when they were docketed to me. See the problem yet?

  24. Here’s a clue for you, 6tard: if the only way you can reject a dependent claim is by “taking Official Notice that it’s inherently obvious to optimize the prior art through routine experimentation and optimization as a matter of design choice, then just indicate the claim allowable if rewritten in independent form. In other words, if the feature is not within the scope and content of the prior art, or if it is but it wouldn’t have been obvious to modify a reference, or combine references, to provide the feature, the claim is allowable.

    You should know this by now.

  25. Asked and answered Malcolm.

    You might want to get a clue and try reading the rest of the posts on the thread instead of spending your time on a vacuous anti-software patent frolic.

  26. What about about FIRST Action FINAL’s with RCE’s? I’m seeing a lot more of those recently. Examiner’s are instructed to go to a final action as soon as possible (or allowance).

  27. That is even more of a point against you 6. You don’t even have to fend off competition.

    In fact, that classic p1ss poor ‘government’ bureaucracy thing is every bit part and parcel of the problem.

  28. Huh? First before what? Before the first office action? How do I know I’m going to get a bogus OA? Just assume it? How do I know when the First OA is going to be issued? How do I know when to call the examiner?

    First before filing my response? What for? The examiner has done a word search and cited paragraphs that have words in common with my claims. The examiner has not read my application and has not read the references and is not prepared to justify the position of the examiner or respond to my counter arguments.

    Moreover, the MPEP states that the Office can not be trusted and I am not allowed to rely on any agreements made verbally during an interview. More often than not, the examiner has to clear everything with his supervisor and will not remember my position clearly enough to articulate a convincing argument when ever he gets a chance to relay my position.

  29. The clients are demanding too high a volume.

    Blame the applicants.

    Classic.

    (and I am not even getting to the other major problems with your ‘Widget’ analogy)

  30. “You are right – McDonalds is doing much better business.”

    meh, they don’t have a “potential monopoly over the entire US on a little market” on their menu now do they?

  31. “?? 6, placing a rejected element in independent form does not address the basis of rejection”

    Trust me. It isn’t just my AU and my TC that considers what I just told you to be unofficial policy. Sure, make some bs argument in your reply for giggles since its totally required. But make it ind. and the rejection on 103 caselaw will more than likely go away. There are some few that will maintain the rejection I’m sure, but they’re in the minority by far.

  32. “Not that I need it, but thanks for confirming that the fees applicants are paying for search and examination of dependent claims is a total rip off.”

    Rip-off? Lol, all the fees are set in the aggregate bro. You get a deal and then some on every app filed.

    Why you tar d brains have such a hard time understanding this is quite beyond me. Although I personally disagree with the whole charging for additional claims myself, they figure that it is warranted because making people that submit reasonable amounts of claims pay extra in the aggregate to pay for your tarded amount of claims being examined is rather fair. I say we just go ahead and disallow the examination of deps all together and likely all but one (perhaps up to three) independents. If you really really really want more examined you can pay full application price for each. But the traditionta rds in charge are tots against that. Because because because TRADITION! And policy! And stuff!

  33. Looks like a couple others have taken up the cause of sending this know nothing, do nothing, useless, mid-level (mis)manager stooge back into hiding under his rock.

    Thanks.

  34. “Both things result in the rejection being looked over carefully by 2 SPEs.”

    Lulzapalooza!!!!!!!

    Thanks for the laugh. Just what I needed on a Friday afternoon.

  35. you could always read part of the application to see what the actual invention is

    Translation: “Don’t make me write claims. They is too hard and I might limit myself accididently.”

  36. “Also, if you are new at the USPTO, you may not have heard of the “RCE gravy train.” I’ve seen prosecution histories where there were 4 or 5 (and even more) RCEs filed in an application.”

    I’m not a new examiner and I’m familiar with the game of forcing an RCE to squeeze another 2 counts out. I’m just not the type that likes to play that game. I’m not here to screw people out of money, that’s a different branch of government.

    “Actually, the best remedy is to file an appeal, but your point is well taken. However, certain applicants resist filing appeals.”

    No actually the best remedy is to file the pre-appeal like I said, and not the appeal brief. Go look at the statistics on PatentCore, the pre-appeal requests are just as successful at getting an allowance or at leat getting the examiner to reopen prosecution and we have the same type of internal pre-appeal conference for pre-appeal requests as we do when you file an appeal brief. Both things result in the rejection being looked over carefully by 2 SPEs.

    The only difference is that you can’t bill as many hours to your clients for the pre-appeal request as you can for a full blown appeal brief. However, for the client the pre-appeal request is cheaper and has statistically the same or better outcome. So who is playing games with the counts/billable hours now?

  37. Try defending your statement that “it’s both sides fault [that RCE's are filed] is cr-p”, Oh Substance Spewer.

    Go ahead. In English. Use your machine translator to help you.

  38. It’s an unreasonable predication

    That’s a “you” problem.

    And we agree with you that it is unreasonable that the Office and POPA haven’t fixed that problem yet.

    What are “you” waiting for?

  39. Let’s say a factory has 10 workers who can make 1 widget a day. This factory takes orders coming in at about 10 widgets a day, so that works out nicely. Then they get a new client, and need to make 12 widgets a day. They still have only 10 workers, each capable of making only 10 widgets a day. What happens? They get behind on their orders. First day they are down by 2, next day by 4, then by 6, and so on. So the effect is a steadily rising backlog, *even though* the number of orders is staying the same. The clients are demanding too high a volume. Now, the reasonable thing to do is for the factory owner to either stop taking orders (not possible for the PTO) or hire more workers, which the USPTO is. That is the cause of the problem and the solution, in a nutshell. A sustained 20% increase in filings leads to a big backlog, despite the same number of RCEs being examined each month (11,000/month now and in 2009). Only solution – bow to customer’s wishes and increase production.

  40. “Moreover, isn’t the whole system predicated on the assumption that the Office can find the relevant art?”

    It’s an unreasonable predication given how few hours examiners have to search and write rejections (e.g. doing the entire search and writing the rejection in 6-8 hours).

  41. Day 1 – everything the applicant can ever do is in front of you.

    Day 1.

    You are charged with examining the totality of the submission.

    All of it.

    If doing your initial examination, you note patentable material that is not claimed, perhaps you should note that to the applicant, instead of QQ’ing that the applicant makes an amendment.

    Having everything POSSIBLE in front of you at the onset, any claim by an examiner that he must conduct a new search only means that the first search did not cover the entire application (which the examiner has been paid to examine).

    Reasonable? What is reasonable is that you should stop crying a river and do your job.

  42. saying it’s still up near the peak

    It also says that there is basically 0% growth for the last three years.

    Your “b-b-b-but 20% increase was three years ago and well before the backlog explosion.

    You and Malcolm do share math and analytical skills, don’t you?

  43. Oh, and the explosion in the first graph occurs around December of 2009, so it is very valid to look at the increase from that point as opposed to since the peak during the summer of 2010.

  44. Define “straightforward,” and keep in mind the aim of getting the most bang for the buck (as a universal business proposition).

  45. For once, you’re right 6.

    It’s not that hard to cite the closest art the first time. That’s what we’re really wanting.

  46. Well, you could always read part of the application to see what the actual invention is insetad of only the first independent claim. What am I saying? Read the application you’re being paid to examine? Sorry for the confusion.

  47. the chart says ~11,000 were filed a month in 2010, and ~13,000 are being filed a month in 2013. That is not about the same. Not a huge increase, I admit, but a sizeable one. And far bigger than the change in RCE examinations.

  48. Says something flat lined after a peak is another way of saying it’s still up near the peak. In Mar of 2010, ~11,000 RCEs were filed a month, the last data point is ~13,000. That’s nearly a 20% increase. Also, a second peak that’s only a few dozen lower than the peak 2 and half years ago occured just last summer.

  49. What? Why wouldn’t you just find and cite the best art the first time instead of using some junky art that you couldn’t quite shoehorn into the meaning of the claims, but did anyway? Assuming of course, that you’re not a lazy governmnet employee.

    A clarifying amendment should be for the purpose of excluding the cited art which should be the best art. I don’t mind making them, but it’s totally bogus for an examiner to slack off and not find the art the first time.

    You want to compact prosecution? Do the search right the first time.

  50. A vacuous attack.

    Nothing vacuous about it at all. I’ll grant you that it’s an obvious point: greedy self-entitled privileged people never stop complaining about how their lives would be better if only the government would stop putting roadblocks in their way. First it was the allowance rate that was way too low (because why would anyone file an application on something that wasn’t really patent-worthy). Then it was the appeals backlog (because the Examiners are rejecting my claim to a method of identifying which Michael Jackson CDs grandma is missing from her collection — using a POWERFUL COMPUTER BRAIN). Now it’s the RCE backlog (see previous parens).

    Dennis: it does not address the very real concern of why so many RCEs are necessary.

    That’s a question, not a concern. The concern might be “are there too many RCEs being filed”? I’m not sure how to answer that question but I’m pretty sure the last people you’d want to ask are the commenters here who think you should be able to claim a method of thinking a new thought merely by sticking any old eligible step in front of it or who equate attempts to regulate patent trolls with communist Russia.

  51. You are the problem. There is no “other side of the table”. Your job is to issue valid patents. What difference does it make to an examiner that the claims are amended? Absolutely none. So long as they get the appropriate credit for reviewing each submission and responding (say half of a first action count), then there is no problem for an examiner doing their job properly.

    Why in the world would you be anticpating amendments? Your job is to issue valid claims. You look at the claims in front of you (not broadest unreasonable interpretation), and either allow or reject based on that art. If you reject and the applicant amends, look at the new claims. It’s the easiest thing in the world, and yet you try to complicate it with “anticipating” amendments? You definitely belong at the PTO.

  52. “if the PTO brass wants to reduce RCE backlog, they should simply change the oldest new docketing procedure to stop giving CONs/DIVs priority over RCEs. ”

    Makes sense to me.

  53. Um, Eliza, do you see that it peaked three years ago and has been basically flat lined since and it has been in this flat line time that the backlog has ‘exploded?’

    Maybe you and Malcolm attended the same math classes…

  54. I find the second graph surprising and telling. What I have always heard and believed is that the huge increase in the RCE backlog the last few years is the result of examiners examining fewer RCE, which the graph does bear out, but only slightly. On the other hand RCE filings, which I would have guessed would have gone down some in light of the higher allowance rate and programs like QPIDS and after-final consideration, are actually increasing, and by more than the decrease in examiner production (RCE increase ~2,000/month, vs. examining decrease of ~1,000/month). I now see the problem in a completely different light.

  55. At a time of record allowance rates and record number of patents being granted, it’s extremely important that we all listen to the Very Serious Software Patent Lovers Society complain about how their applications are not being allowed fast enough.

  56. This “it’s both sides” fault is also crp.

    Right, it is always the Examiner’s fault when claims are rejected. This the second commandment in the Pro-Patent Bible Thumpers Society handbook.

  57. Hello Ned:

    Sorry to interrupt you and Les. But I do believe you never answered my question. Can you please provide the exact quote of the Supreme Court saying,

    “The integration must modify the otherwise eligible process to produce a new result. If it does not, it is not integrated.” ?

    Of course if you want to now admit the Court never said such and you simply made a mistake, and thus are wrong, please kindly do so now, and we can all move on.

    Thank You,

    101 Integration Expert

  58. “It is not possible to anticipate each of these types of variation.”

    If you literally could not anticipate such a negative limitation based on applicant’s original disclosure then it lacks WD.

  59. “I don’t think I’ve ever had art cited after an allowance that resulted in me having to reopen prosecution and send out a rejection, which would tell me I didn’t do a good job and didn’t find the best art up front. ”

    I had it one time, and I wasn’t particularly ashamed of not having found a JP ref.

  60. ?? 6, placing a rejected element in independent form does not address the basis of rejection.

    Or did you cut and paste the wrong form paragraph in your answer here?

  61. “All those rejections are is the examiner noting that the PTO is not going to spend the time on beveling the edges unless you’re serious about making it a basis for an allowance.”

    Not that I need it, but thanks for confirming that the fees applicants are paying for search and examination of dependent claims is a total rip off.

    Please feel free to carry on doing your record breaking outstanding quality work.

  62. if that is what you’re getting then that is what you’re getting

    I people wonder why applicant’s rights are pursued…

    Sorry bro, this is the government, not mcdonalds.

    You are right – McDonalds is doing much better business.

  63. Based on your response, you are obviously one of those that even if I said that I agree with you completely you would argue then that is not what you meant.

    Of course they would. These folks are attorneys.

  64. Doesn’t really matter if you “should” if that is what you’re getting then that is what you’re getting. Sorry bro, this is the government, not mcdonalds.

  65. No, definitely not, but what else could I suggest? My main point here is that meaningful dependent claims, reasonable independent claims, and appeal of improper rejections do wonders in expediting prosecution with any reasonable examiner. If you’re unlucky enough to get an awful examiner (let’s face it, there are people awful at their jobs in every field, and the PTO is no exception), and you’ve got an examiner completely ignoring dependent claims, what else can you do but appeal it? Hey, he’ll/she’ll apparently never learn if you don’t call him/her out on it. But despite all of this, I don’t think the RCE backlog is even related to RCE filings (which have remained mostly flat).

  66. Don’t you know how to get rid of some bs caselaw rejection? Just put the claim in independent format. All those rejections are is the examiner noting that the PTO is not going to spend the time on beveling the edges unless you’re serious about making it a basis for an allowance. If you don’t know this by now, considering you’ve been practicing for like 5 years+ at least, then you’re hopeless.

  67. MPEP 706.07(a) has the stronger language (i.e., “shall” instead of the “should” you quoted above):

    Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

  68. Lulz.

    I just love posting some variation of “stooge” and have you come running. But mostly I’d really like to send you crawling back under the rock you hide under day in and day out as an admittedly failed SPE now useless know nothing, do nothing, mid-level (mis)management stooge. I guess you’re feeling brave again. Don’t worry, I’ll take care of that.

    I post at Gene’s site fairly frequently. While I continue to read Patently-O, posting in this echo chamber is rather pointless. Unless there are stooges to shoot down.

    Here stoogey, stoogey.

  69. “and nothing is settled”

    in other words, bad fundamentally misunderstands the prosecution system as it is setup.

    What is made final is the decision of the USPTO to not grant you a patent on your application bro. Just because congress gives you a get out of jail for 100$ option does not mean that this is not a final agency decision.

  70. It’s from “Tommy.” You should listen to it.

    In general it means that there are none so blind as those who refuse to see, none so deaf as those who refuse to hear, etc.

  71. And why not using your real name any more, JD? Afraid of getting caught at posting stuff under your name?

    MVS

  72. No, it doesn’t. The “BRI” of the Office is almost always too B as in not R. So, the rejection gets argued without amendment.

  73. Oh, and you say ” The more incredibly broad or pedestrian the claim, the easier it is to have art to reject.”

    Do you realize how contradictory this is with your original premise???

    Yes, extremely broad claims are easier to reject. But that does not address the issue of a complete search or anticipating how the applicant is going to amend those “incredibly broad or pedestrian … claim”.

    This argument makes absolutely no sense when taken in context with your other argument. At least TRY to argue coherently and consistently.

    MVS

  74. I DO my job. And do it correctly. Maybe you should do likewise.

    You obviously have a reading comprehension problem. I NEVER said anything about searching “just the claims” or “just the key words in the claims” any any such B$. That is your strawman argument.

    I point out that there are limits as to what level of details can be searched & you accuses me of saying only the words in the claims should be searched. You fail reading 101 or what?

    Based on your response, you are obviously one of those that even if I said that I agree with you completely you would argue then that is not what you meant.
    I say that a complete search for what can reasonably be expected to be added should be done and that the search should cover what the invention as disclose is and you argue that it isn’t a complete search. You try to argue that the “nuts and bolts” isn’t something that you are arguing but you then appear that IS what you want. Make up your f-ing mind!

    MVS

  75. You’re wasting your time with this one. He’s been told many times before, messiahs have pointed towards the door, but he’s never had the guts to leave the temple.

  76. You can not reasonably expect

    Yes I can and yes I do.

    That is what I am paying for – a full and complete examination of the application. Not just the claims. Not just the key words in the claims. No one is making the strawman argument (except you) about “every nut and bolt.” The more incredibly broad or pedestrian the claim, the easier it is to have art to reject. Your QQ is completely misplaced.

    types like you

    Bite me. Stop making excuses and do your job.

  77. Random, this is right, and I agree.

    IMHO, BRI forces clarifying amendments that many times require a fresh search and an RCE. I would hope that the “brass” would recognize this reality in some fashion.

  78. how does a quality examination prevent an RCE to consider an IDS after allowance?

    Qpid, stu…

    Well you understand (I hope)

  79. At least it allows the opportunity for a SPE and a QAS to also look at the rejection to see if it’s any good.

    Why don’t you put a second set of eyes on it.

    Oh wait, that was only for allowances…

    Silly me.

  80. anon,

    You can not reasonably expect every nut & bolt, or other minor detail, be searched for in a disclosure of 50-100+ pages, which we often see. And such a search is not required – neither by the MPEP or elsewhere. The search should cover what is claimed as well as as what can “reasonably” be expected to be added or modified in the claims. If the applicant decides to add some minor or relatively meaningless limitation for the sole purpose of overcoming the art and not really defining what the invention is, it often can not be anticipated.
    For example, I have had an applicant amended to eliminate a feature (negative limitation) just to avoid a reference (i.e., the reference was doing something additional that the applicant didn’t). It is not possible to anticipate each of these types of variation.

    IF the applicant actually CLAIMED their invention from “day 1″ instead of claims that read on everything in the field for the last 50 years there would be a lot better chance of quit resolution & getting the best art in with the FAOM. But, of course, you are one of those that believe that applicant bears NO responsibility for anything that goes on in prosecution & it is all the examiner fault. It is attitudes like that that cause much of the problems with the system!

    I am one of those that always try to help the applicant & do a complete action & get the case allowed ASAP, but types like you make that very difficult.

    MVS

  81. You have to file a notice of appeal in order to file a pre-appeal request. That now costs $800 and starts a 2 month clock for filing an appeal brief (which is partially tolled if the pre-appeal review takes longer than a month).

    Should I have to appeal to get the examination I paid for in the first place?

  82. My experience is the same as yours. After allowance citations never or almost never result in reopened prosecution.

    Furthermore, Examiner’s almost never rely on IDSs information, not matter when it is submitted.

    Moreover, isn’t the whole system predicated on the assumption that the Office can find the relevant art?

    So… why don’t we just get rid of the IDS requirement, at least as far as publications are concerned. Public use info and the like can remain citable, and should be able to be done at least prior to the first office action…

  83. I meant the fee (if there even is one) for the pre-appeal request. If it’s a dependent claim you’re willing to hang your hat on and have as your allowed claim, why wouldn’t you put it in independent form and file the pre-appeal? At least it allows the opportunity for a SPE and a QAS to also look at the rejection to see if it’s any good.

  84. Basically,it sounds like you want to go back to the way it was in the 70′s where any change would be non-final. Of course, back then examiners used the (in)famous short-forms & the got counts for each action, be it 1st, final or allowance.

    And any competent an modify a claim so that the prior art (particularly a 102) no longer reads on the claim. Might be an amendment that isn’t reasonably anticipated or even something like a negative limitation.

    Sorry, this isn’t reasonable.

    Would YOU like it if the applicant were to be limited to only the claims as filed with no amendment? It is basically the same from the opposite side of the table. Applicant’s often file exceedingly broad claims & only narrow when they get prior art applied. That is their right and the examiner can not anticipate EVERY possible way they might be amended.

    MVS

  85. See above.

    EVERYTHING from the applicant is there on day 1.

    Sorry, ALL extra searches are (or should be) on the Office’s dime.

  86. Well, that answers that question (it is something I’ve legitimately always wondered why it takes over 3 months to send in an IDS after a foreign correspondance). I feel for you in those situations, especially when the foreign correspondance doesn’t cite better/more pertinent art. But it’s something that’s entirely not the Examiner’s fault and a factor in RCE filings. I don’t think I’ve ever had art cited after an allowance that resulted in me having to reopen prosecution and send out a rejection, which would tell me I didn’t do a good job and didn’t find the best art up front. Better communication between offices would be great, but it’s already taken a long time for us to have access to and view the corresponding prosecution of a few of the other offices, and most of the time that system doesn’t even work correctly. I’m skeptical that communication could ever be improved where I’d instantly get an IDS from a foreign patent office when they file a correspondence. It’d be great, but you’re talking about a level of international competence that I’m extremely skeptical could ever be accomplished.

  87. The fee for an extra independent claim is dirt cheap? I should pay a fee on top of the examination fee i already paid which covered examination of my dependent claims?

    I donthinsolucy.

  88. To Just saying’s point, once an application is filed, EVERYTHING possible from the applicant’s side is there.

    The line of “you made an amendment and now I have to do an entire new search” is unadulterated crp.

  89. Thanks for the thoughtful reply.

    I got an OA this week. I opened the pdf and it’s 7-8 pages (with the PTO-326 and cover sheet). I’m scrolling through it with my mouse and I get to page 3 or 4 and I see this regarding dependent claim 11 (about a minute or so into my very initial review of the OA):

    “With respect to claim 11, which recites that elements X and Y have complementary beveled edges, absent persuasive evidence it would have been obvious to make the edges of the reference complementary beveled edges because it would be a mere change of shape within the level of ordinary skill in the art. See In re Bullsh!t Boilerplate case law that I’ve never read.” (I think it was In re Dailey, but can’t recall offhand.)

    Now if I were an SPE or primary and responsible for reviewing and signing off on this OA, I would have sent it back to the junior with the following explanation:

    Your rejection of dependent claim 11 is pure unadulteraed horsesh!t. Go do some more searching, find a reference that shows the feature claimed, and then provide an articulated reasoning with rational underpinning why it would have been obvious to modify the reference or combine the references to include the feature recited in claim 11.

    You may be, and I hope you are, the most conscientious primary examiner in the whole PTO, and maybe you would have done exactly what I would have done, but you know, and I know, and you know that I know that you know, that 99+% of primaries and SPE’s are signing off on gargabe rejections like that thousands of times a day. And until that stops, your very worthwhile suggestion is much less worthwhile thant it should be.

  90. In the foreign jurisdictions, it is assumed that the Office can find the relevant art on its own and doesn’t need the applicant to send it citations.

    Accordingly, foreign practitioners find it bizarre that they have to constantly inform us every time they get a new office action and have a hard time remembering to do so. Accordingly, it is often not until we remind them yet again, when we report the notice of allowance, that they do a review and find art that was cited six months earlier…

  91. As Alun Palmer points out, the reason we have to have two searches in US prosecution is In re Morris. A first search according to BRI. A second after clarification of the claims one way or another.

    The PTO caused this problem with the positions it took in that case. Now they need to recognize that two searches are normally required by not permitting an examiner to enter a final in the face of an amendment to the claims after the first office action. If the examiner needs to conduct a second search, that should be the house. BRI and In re Morris is their creation.

    The examiner, however, needs some credit for that second search — some.

  92. I think that the whole canard of a final action based on new claims and new art is the problem. If my changes made you find new art because the old art wasn’t on point, then we’re advancing prosecution, and nothing is settled, much less “final”. As long as you’re out there finding new art, I should get to keep amending. Once you reject on the same art, NOW we’re ready to RCE, appeal, etc.

  93. Why aren’t *you* keeping track of them? I’m going to cite the best art available, and if it’s not the art that the JPO/EPO examiner cited (sometimes their actions can be god awful anyway), it’s probably not going to end up on my 892. Rule 1.97 gives you a three month window to have the IDS considered after-final anyway under 1.97(d) and (e), does it not? And didn’t the PTO waive the issue fee exclusion as well under the quick path IDS pilot? So what’s your excuse if you’ve sat on a foreign correspondence for over three months without filing the IDS and thus can’t include the statement under 1.97(e)?

  94. I throw them a bone on one RCE. We all know what’s going on. If that’s what you need to give me what I deserve, so be it. The second one? Now you’re getting greedy.

  95. Kappos created the RCE backlog on purpose. He changed the rules so that RCE would not be taken up for …what was it… 18 months? As I recall, he seemed to think that would discourage RCEs. He was wrong. If you need to file an RCE, you need to file an RCE.

  96. If a dependent claim isn’t addressed, it’s an improper rejection. I know there are Examiners out there that feel dependent claims shouldn’t be taken seriously, but this is wrong. My suggestion would be if a dependent claim is ignored in a rejection and distinguishes from the prior art, file a pre-appeal request while moving the claims into independent form. As I understand it, the fee is dirt cheap anyway, and it forces the Examiner to explain their rejection to their SPE and a QAS.

    In the meantime, hopefully training gets better for new Examiners. I’m involved in training myself, and I try to make it a point to my junior examiner that doing a bad rejection, even on a dependent claim, is a clear error just like allowing a bad claim (plus it does a diservice to Applicants and can result in a slower, less efficient prosecution cycle). But I acknowledge the current training academy is less than ideal, and individual training when they reach the art unit can be spotty. Hopefully it gets better. I don’t know of any hard solutions other than doing a better job of choosing trainers and possibly providing refresher courses to the trainers before they’re involved in the process.

  97. RCEs after allowance are caused by new citations in related foreign applications.

    If the rules were such that the Office kept track of and considered foreign citations on their own, without requiring the applicants to file IDSs, that problem would go away.

  98. Oh, look at that first graph, a steady climb (just like the design patent application graph).

    Oh, look at the second graph, a veritable explosion.

    LOL – anyone have any extra math skills around?

  99. MPEP 706.07: “Before final rejection is in order a clear issue should be developed between the examiner and applicant.”

    The above requires that a clear issue be established in the first office action.

    Typically, a first office action includes a copy of the claims, with parenthetically injected cited paragraph numbers sprinkled here and there, with little or know explanation. The applicant is forced to guess at the analogy begin drawn, often where there is none to be found, because the paragraph is being cited merely because it has a word or two in common with the claim. There is no clear issue established at this point. Accordingly, the next office action should typically not be made final.

    Even if First Office Action made the position of the Office clear, a clear issue would still not yet be established because the examiner has not yet considered and responded to the applicant’s traversal.

    Accordingly, typically a clear issue is not established until at least the applicant has had an opportunity to consider a reply to arguments presented in a second office action. Accordingly, typically, the action should not be made final until at least the third action.

  100. Sure, the work needs to get done, and I do plenty of it, tyvm. But the bottom line is, if my oldest new docketing tells me I need to do 2 CONs, 1 DIV, and 1-2 regular new a biweek, the RCEs are pushed back at the end of the line, and I’m told working on cases out of order results in no docket management credit, why would you expect the RCEs to get done out of order and in a timely manner? That’s my point, the current system, whether it’s a bug or behaving as intended, is pushing RCEs to the back of the line. I have no doubt that’s currently driving the drastic increase in RCE backlog.

    And I *do* a quality examination the first time around. You don’t know me or my work. Like I said, it takes two to tango, and it’s not my fault if Applicants do a poor job in amending and I’m forced to go final. You think that I like final rejections? Yeah, doing twice the amount of work for 0.25 count credits, plus spending the time to deal with an after final response is more enjoyable than simply cashing in a 0.75 allowance count and spending 1-2 hours processing it. I know there are some Examiners that used to, or still do, ride the RCE gravy train, but I’m not one of them. And I still get my share of RCEs.

    By the way, how does a quality examination prevent an RCE to consider an IDS after allowance? Roughly 25% of my RCEs are those. How again is my quality examination supposed to prevent *that*?

  101. Careful there, O. You’ll have the “examiners and applicants are equall to blame” police knocking down your front door any minute.

  102. “My suggestion? Meaningful dependent claims after non-final (or before non-final). If you’ve got some dependent claims that are specific enough for designation of allowable material, at least there’s an avenue for allowance even after final without RCE.”

    This is a good suggestion. However, when the dominant paradigm for all the newbie GS-7′s and 9′s is, “Well, if I reject every single claim I know my SPE or primary will sign it regardless of the merits of the rejections” it kind of breaks down. Maybe in a few years when many of the recent new hires have progressed far enough to have partial signatory authority, your suggestion will be more worthwhile.

    In the meantime, what do we do about the hordes of newbie examiners who very quickly realize that rejecting every single claim, no matter how silly, ridiculous, outlandish the rejection, is the path of least resistance to that oh so sweet 1.25 counts for a FAOM?

  103. So RCE filings have remained essentially the same but the RCE backlog has skyrocketed. Seems like the USPTO is to blame for the backlog.

  104. Nice deck chairs there.

    The work (no matter which bucket you attempt to put it in), needs to get done.

    Do the work.

    The only way to stop the repeats is to do a quality examination the first time around.

  105. So the office should change the policy of compact prosecution? What would that do to overall pendency? RCE filings are driven as much by Applicant’s behavior as Examiner’s. It takes two to tango, and it’s your responsibility to submit responses that expedit prosecution.

    My suggestion? Meaningful dependent claims after non-final (or before non-final). If you’ve got some dependent claims that are specific enough for designation of allowable material, at least there’s an avenue for allowance even after final without RCE.

  106. I think the RCE causes of the increase of RCE backlog are misunderstood, possibly even by PTO brass. In my opinion, the increase in RCE has nothing to do with an increase in RCE filings. I think it likely has more to do with changes in docketing procedure.

    I think it’s little known that current docketing procedure not only lumps continuations and divisionals on the same docket as RCE, but also gives priority to the continuations and divisionals. Every new biweek, we’re assigned three new “oldest new” cases to work on for our continuing new docket. And every biweek, the continuations and divisionals get pushed to the front of the line, no matter how long the RCEs have been on the docket. So even though I’ve had RCEs on my docket for months now, the oldest new cases assigned have always been later-docketed continuations/divisionals. We don’t get docket management credit for working on cases out of order (it’s generally discouraged), so as a result, my RCEs haven’t gotten any attention.

    It’s not that I don’t want to work on my RCEs (I do), but it would cause me to work on cases out of docketing order. I was planning on doing this for some of my older RCEs anyway, out of pure sympathy for the time it’s taken, but the increase in credit will give me more reason to do so.

    Anyway, the point I’m trying to make in this lengthy post is that if the PTO brass wants to reduce RCE backlog, they should simply change the oldest new docketing procedure to stop giving CONs/DIVs priority over RCEs. Or put the RCEs on a separate docket altogether.

  107. “Actually, the best remedy is to file an appeal…”

    I always file a pre-appeal. No extra fee required. Keep it short and sweet.

    “I have always believed that rewarding an Examiner who writes a bad rejection with a RCE is counterproductive. However, I am definitely in the minority.”

    You are correct. Giving examiners first class accommodations on the RCE gravy train is entirely counterproductive. But I’m not sure you’re in the minority in believing that. I think a sizable majority of the patent bar believes that, they just don’t see the appeal route as the better option. Personally, I think that’s wrong, but I may be in the minority.

    Don’t file RCE’s. Appeal everything.

  108. BWJ,

    While that may work as a way to punish those that do a poor job, it would also punish those that do it properly.

    For example, on the FAOM the examiner applies relevant prior art that meets the claims as properly construed ivo the spec. The applicant amends & the examiner has to add new art to meet the added limitations & makes the action final. Now, under your proposal, the examiner is punished even though they did everything properly. Seems like a case of unintended (bad) consequences.

    Not saying that there are many examiners that do a poor job on the FAOM, but punishing all is not reasonable.

    MVS

  109. “Where do the bizarre interpretations come from?”

    The come from the fact that U.S. examiners ignore

    “The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach”

    By the way, the above is more unreasonable than the actual standard, which indicates bri must be consistent with the interpretation that those skilled in the art would reach AFTER READING AND UNDERSTANDING THE SPECIFICATION.

  110. The PTO is allotting more time to examine RCEs? I bet John Darling is gnashing his dentures right now. LOL

  111. I get so sick of the “it’s solely the examiners! / it’s solely the applicants!” RCE finger pointing. Both have a significant effect on RCE likelihood.

  112. One problem associated with all of these cases is the lack of focus in the original claims. Generally, applicants are focused on selling product, but are relying on examiners to unearth relevant art rather than do their own research to determine what part(s) of the invention are actually new contributions to the art. Inevitably, this causes piecemeal prosecution. This strategy no doubt proven to be very lucrative to large entities who can afford the fees and still capitalize on minute improvements, but it requires a good deal of patent searching to ensure that th system is not reduced to a registration system (which would produce even more litigation than we have now). This work is being heaped on the examining corps who, despite some game playing with counts and so-called “bogus” rejections, are the most cost effective work force for patent research, especially considering you have to pay for examination anyway.
    There’s no good answer other than, write more straightforward claims, get more straightforward office actions.

  113. Sorry, but I completely disagree. It gives me more time to search the amendment submitted with the RCE.
    Since you aren’t the typical examiner that haunts this blog, I’ll actually respond to your comments since you appear to be willing to engage in a real discussion.

    In a FAOM, you are examining (FOR THE FIRST TIME), the entire application. You’ve got to address formalities, 101 & 112 issues as well as searching the prior art for ALL the claims. In a RCE, unless the applicant presents an entirely new claim set, all you are searching for is what amendments that were made. In my experience, that typically involves adding merely a limitation or two to the claims. IMHO – this is nowhere nearly as onerous a task as a FAOM. Thus, it is reasonable to give more credit for a FAOM than subsequent actions.

    Also, if you are new at the USPTO, you may not have heard of the “RCE gravy train.” I’ve seen prosecution histories where there were 4 or 5 (and even more) RCEs filed in an application. In those instances, the Examiner is doing much less work (IMHO) than if the Examiner was doing FAOMs but getting the same amount of credit. For an applicant that is willing to file RCEs at the drop of a hat (some applicants are not), there is an incentive for an Examiner to keep prosecution going – while some Examiners resisted that temptation many did not.

    I really don’t see the link between “bogus rejections” and RCEs.
    See above. With the right applicant, bogus rejections lead to the RCE gravy train.

    best remedy for a bogus rejection is filing a pre-appeal request
    Actually, the best remedy is to file an appeal, but your point is well taken. However, certain applicants resist filing appeals. That has changed over the last 5 years as more and more applicants are willing to appeal, but the number of appeals filed are still dwarfed by the number of active applications in prosecution. Hence, most applicants will not appeal. Many applicants think it is more productive to “work with the Examiner” so they amend and file RCEs to placate the Examiner – this is PRECISELY the attitude that leads to the RCE gravy train.

    Personally, I have always believed that rewarding an Examiner who writes a bad rejection with a RCE is counterproductive. However, I am definitely in the minority.

  114. Hopefully this will help. I personally have had RCEs that have lingered for almost two years without action, which is inexcusable. But, I know that under the old system, a lot of Examiners were gaming the system by applying overly broad claim interpretations to justify applying weak art, and hold the relevant art in their back pocket. Then, when you make minor amendments to overcome the bogus art, apply the relevant art and make the rejection final, and deny any attempts to further amend the claims after-final. At that point, they have the applicant over a barrel: either file an RCE to address the new rejection, or appeal on an incomplete record.

    I think this is a major failing of the RCE system. But it could be easily remedies by revising the after-final amendment regime by requiring the examiner to enter an amendment after-final that directly addresses newly-cited art. This would encourage the Examiner to actually read the specification (which I know most do not do) and apply the best art at the outset.

  115. Perhaps I should add that in my experience before the EPO the bizarre clsim interpretations are mostly delivered by US patent attorneys. When taken up on it, they are outraged and feel abused. In justification of their drafting they cry “112-6″ or “I am my own Lexicographer”.

    Where do you find these US patent attorneys that you associate with, Max? They sound like a particularly dim bunch.

  116. Perhaps I should add that in my experience before the EPO the bizarre clsim interpretations are mostly delivered by US patent attorneys. When taken up on it, they are outraged and feel abused. In justification of their drafting they cry “112-6″ or “I am my own Lexicographer”.

    The problem for them (and perhaps also for 6 and Friends) is that such justifications indeed do fly, but only in the USA.

  117. Alun can you tell me what is wrong with in re Morris, as such?

    Looking at the USPTO instructions how to do Morris, I see:

    “The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach”

    Examiners at the EPO also do BRI. It is the best way I know to get the claim clear before it passes to issue. So applicants from outside the USA understand BRI. But I do not hear that the interpretations taken by EPO Examiners are bizarre.

    Of course, the EPO does not do continuing applications. No churning at the EPO. But a refusal is too harsh. Only a very small number of applns at the EPO get refused. Instead, any claim directed to new and unbvious subject matter described in the application as originally filed gets through to issue first time around.

    Where do the bizarre interpretations come from?

  118. “If I’m an examiner that writes quality rejections, I’ll continue to do so, and if I’m an examiner that writes poor rejections I’ll continue to do that too.”

    This is actually probably true.

  119. So, the AIA got rid of the Hildebrand doctrine by statute. I guess the next step in interntional harmonisation should be to ditch In re Morris the same way?

  120. So by the time we have rewritten a foreign origin claim that wasn’t designed for the weird BRI interpretation under In re Morris, what do you know? We are in RCE territory.

  121. Speaking as someone who mostly represents foreign clients, we are caught between foreign clients that don’t like to appeal, often because the reversal rate on appeal is very low in their own countries, and examiners that don’t search hard enough to find the best art the first time around. This is compounded by BRI, which enables examiners to make frankly quite bizarre rejections against foreign origin claims from countries where In re Morris, or anything remotely like it, is not the law.

  122. Thanks Exr. Am I right that the new RCE count scheme is now on par with the current count scheme for first-time applications? That’s what I meant to say in the post.

  123. Sorry, but I completely disagree. It gives me more time to search the amendment submitted with the RCE. If I’m an examiner that writes quality rejections, I’ll continue to do so, and if I’m an examiner that writes poor rejections I’ll continue to do that too.

    I really don’t see the link between “bogus rejections” and RCEs. RCEs filings are at the sole discretion of Applicants and the best remedy for a bogus rejection is filing a pre-appeal request. Punishing examiner’s for something that is at Applicant’s sole discretion was a horrible idea.

  124. Correction: the change doesn’t completely go back to the old system (under the old system the counts were assigned at different times in prosecution), but it does restore the .25 and .50 counts lost for doing FAs on RCEs.

  125. KSR broadened the scope of what can be considered analogous, allowing the Patent Office to cite and apply unexpected/unanticipated prior art in its rejections. Applicants often need RCEs to overcome these rejections.

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