Slow and Steady: PTAB Continuing to Address Backlog of Ex Parte Appeals

By Dennis Crouch

The Patent Trial and Appeal Board (PTAB) is turning a corner in terms of its backlog of pending ex parte appeals with a significant drop in the backlog in March 2013. Still, there are more than 25,000 appeals pending decision by the board of administrative patent judges.

[Updated] I collected a small large sample of file histories (here, only 21 500+ file histories) for ex parte PTAB appeals decided in April 2013 to find an estimate of the current timeline for appeal decisions. The chart below shows a histogram of the decision timing based on the number of years from applicant’s filing of an appeal brief until the PTAB’s decision on the merits of the case. The median and average appeal pendency under this calculation is just over three years.

199 thoughts on “Slow and Steady: PTAB Continuing to Address Backlog of Ex Parte Appeals

  1. Same thing on two different threads – neither of which score points for you.

    Funny that you chose someone (Wittgenstein) related to logic, but continue to struggle mightily with that concept.

    Are you aiming for the title of The Ultimate Mr. Irrelevant?

  2. And as I already said, I have already answered that question.

    You really have a comprehension issue here

  3. As I already explained, let’s say for this example that it really does work, so credible utility is not an issue. Now try answering it.

  4. Asked and answered – it’s already there.

    Go (back) and read the answer already provided.

    As mentioned (now several times) there is more than one part to the original answer.

  5. Then you should be able to provide an answer that doesn’t center around credible utility. Let’s see you try.

    Go.

  6. What you “already explained” has already been taken into account.

    You comprehension problem is really that severe.

    Try reading the rest of the answer.

  7. As I already explained, let’s say for this example that it really does work, so credible utility is not an issue. Now try answering it.

  8. Jezuz – I have already answered the question, you dooche.

    Did you have a different question in mind?

    Do you need some other concept explained to you so that you can understand the answer already supplied to you?

  9. As I already explained, let’s say for this example that it really does work, so credible utility is not an issue. Now try answering it.

  10. Not sure why you think that – you still appear to be the one with the comprehension disorder.

  11. Now try reading the rest of the answer.

    As I said: the comprehension part is a “you” problem.

  12. As I already explained, let’s say for this example that it really does work, so credible utility is not an issue. Now try answering it.

  13. Actually, I’m not sure the case will get docketed to the examiner for writing the answer if there are no arguments presented to any appealable matter (presumably, Ned isn’t arguing against any of the rejections presented in the final rejection). It might be noncompliant, but I’m not sure.

  14. You might run into credible utility problems with that one. Not to mention that that power, while possibly displayed outside of the mind, is still considered to reside fully within the mind.

    D+ for effort though.

  15. “The non-analogous art argument seldom works.”

    It does if you argue it correctly.

  16. Whether a reference is analogous art is a question of fact, which the examiner has to establish by a preponderance of the evidence. The burden of persuasion is on the examiner throughout the entire prosecution of the application.

  17. I haven’t really decided, I was thinking stay here a little while even while I could hotel as I have a whole circle of friends and I’m productive in the office. But I don’t know what your setup is.

    Send me your firm’s information at examiner6k@yahoo.com and I’ll check it out and get back to you.

    Just to be clear though, regarding benes I was referring to tuition assistance as that seems to be a problem at some firms.

  18. The examiner refused to enter the amendment that disposed of all outstanding issues on the grounds that he wanted to consider the materials in the IDS. I don’t think he has that right.

    From what I gather Ned, the situation is that you made changes after final and the examiner has refused to enter them.

    While the examiner’s proffered reason does indeed sound bogus (if he has already indicated his review of the items on the IDS, he cannot backtrack now), the admission of amendments after final is NOT a right of the applicant, and is up to the discretion of the examiner (and yes, that includes the niceties listed in MPEP 714.13 and 37 CFR 1.116).

    You may win a battle against the examiner in showing his reasoning is flawed, but may lose the war on having your amendments entered.

  19. You might run into credible utility problems with that one. Not to mention that that power, while possibly displayed outside of the mind, is still considered to reside fully within the mind.

    D+ for effort though.

  20. If I give you the answer yet again, you will fail to comprehend it yet again.

    What would be the point of that?

    There is no dodging – there is only you not comprehending.

    I suggest that you get back on your medications.

  21. “It’s indisputable that in certain instances it can be so construed.”

    I’m not sure if where someone specifically defines his term to go against the art really counts for the purpose of this discussion MM. But if you insist on your newbishness then you may do so by yourself bro. But you, like other newbs, are forgiven for your newbishness since apparently the powers that govern can’t be bothered to setup some sort of helpful framework for these situations.

  22. “In any case, why not just amend the claim? If the construction of the “metal” is the key to patentability here, why leave any ambiguity at all? Just amend the claim. Done.”

    Some people worry about festoing the entire claim and/or bogus WD challenges down the road that they wouldn’t have to face if they win on claim construction now? If the claim is otherwise original, meh, I could see fighting for it. I do not however personally think it is worth 10k unless there is some hella equivs you’re worried about.

  23. Same points to you Malcolm, sicne you always crow about how great you are.

    Let’s see some examples of that greatness – for surely, you have shown nothing yet.

    What are you afraid of?

  24. YOU’RE STILL DODGING THE QUESTION! ANSWER THE QUESTION! STOP ASSERTING THAT YOU’VE ANSWERED THE QUESTION AND JUST ANSWER THE QUESTION!

    PLEASE!

  25. LOL – more of the same lame accuse-others-of-that-which-you-do Malcolm.

    You are the one diving low to throw out “putdowns” of a sexual nature. What’s next? Race? Cancer survivors? Grieving sons?

    You are one classless act, Malcolm.

    Truly, the scorn I give to you is very much deserved.

    And the funny thing is, you act like none of this is archived, and caught in plain black and white for all to see your baseness and your petty gamesmanship. You are clueless to how you are perceived, how your positions are in ruins due to your self-defeating tendencies.

    But like I said – it’s a win-win for me, and life is good.

  26. Oh really? What was that Examiner’s name?
    You have already been provided the names of Examiners in the 3600 group that don’t allow applications absent an reversal by the PTAB.

    I know this because I have provided them to you.

    Really? What pseudonym were you commenting under then, S-ckie, and how many have used in the meantime? I seem to recall a little checking up being done on your allegations and it turned out that you were holding onto a very very tiny piece of stick.

  27. Malcolm has the excuse that he doesn’t know squ#t about mechanical engineering, electrical engineering, material science, metallurgy, etc.

    My only “excuse” is that you are keeping your awesome claim and the laughable prior art hidden from everyone while you trash this (imaginary?) Examiner. Why bother hiding anything? Your claims are the best, man. They are valid and they are the claims your client is entitled to. So let’s see ‘em. What could you possibly be worried about?

  28. parts made out of a material that’s been around since the early 1990’s.

    So the field of endeavor is recycling?

  29. No, it is evidence that one person

    More than one. Quite a few more than one. I hardly think I exhausted the list of references.

    In any case, why not just amend the claim? If the construction of the “metal” is the key to patentability here, why leave any ambiguity at all? Just amend the claim. Done.

  30. Oh really? What was that Examiner’s name?
    You have already been provided the names of Examiners in the 3600 group that don’t allow applications absent an reversal by the PTAB.

    I know this because I have provided them to you. This statement about certain examiners in the 3600 group is nothing exceptional. It has been known for years (probably close to at least a decade).

  31. Vacuous and putrid accusations from you Malcolm. Let’s compare them to a couple of your ‘doosies,’ shall we?

    Malcolm, what is the controlling law regarding the exceptions to the printed matter doctrine?

    Malcolm, please tell us again that you agree that “configured to” is structure.

    Oh, this is a very fun game Malcolm. Just not for you.

  32. No. I am waiting for you to addres the points I keep on raising.

    You know, the ones you keep on avoiding.

    You need to have your little pet theory robust enough to actually cover the types of claims that are legally available.

    You keep on ‘forgetting’ that.

  33. I have.

    At least twice now.

    Whether or not you understand the answer is a different matter. That would be a “you” problem.

  34. “It’s evidence that sometimes when persons of skill in the art say “metal” they intend it to include metalloids. ”

    No, it is evidence that one person redefined the term explicitly to mean something else in a context where he is specifically given permission to be his own lexicographer, not where he is at liberty to redefine an accepted term of art that is present the world over. No one man, or small group even, has the power to redefine a standard term for everyone else in the whole world where the vast bulk is against them. What’s next? I start writing publications where “foot” actually means 13 inches so then magically 3 feet = 39 inches instead of 36? What manner of tar dation do you think you’re peddling here exactly?

  35. And just to be clear for MM, none of this is “because 6 says so” it is because the art says so, routinely.

    Except when the art says otherwise. Hence the need for care when drafting claims whose validity hinges on terms such as “metal.”

    I do agree that the prosecutor prosecuting this case is a t ard and that he can and should simply safely disclaim metalloids, arguing if a tar dation rears its ugly head, that was what was always intended by the term in the first place. And he will still get his “full scope to which he is entitled”.

    Well, then we don’t disagree about much, do we? It seems all we disagree about is whether the term “metal” can be reasonably construed to include metalloids. It’s indisputable that in certain instances it can be so construed. I’m told (commanded is more like it) that in this very specific instance that’s not possible. You’ll forgive me if I’m skeptical, given the manner in which the conversation unfolded.

  36. Being deliberately obtuse is a speciality of IANAE’s.

    It’s a trick he picked up from the little circle (you will note who else often employs that vacuous trick).

  37. he has been caught volunteering admissions that toast his precious dogmas.

    Right. And you were caught playing with yourself behind some bushes by an elementary school.

    Fun game, anon.

  38. if you want to credibly whine…

    …Not since anon

    LOL at you IANAE.

    Perhaps the tinly veiled attempt to ‘out’ the person is what is being resisted. And you quite forget how much effort your little circle mates Malcolm and Ned put forth to avoid answering simple questions. And even better – the ones they avoid are directly on point to the discussion, and not some trap you wish to put out there.

    You really received several major Calvinball face sp1kes today IANAE.

    You might want to check with your doctor before going to sleep tonight.

  39. I am still waiting for you to support your B$ theory

    You mean my “theory” that Prometheus’ claims would be found ineligible because you can’t rescue ineligible subject matter (a new thought) by reciting a single old eligible step? You’re waiting for me to “support” that?

    LOL.

  40. The game went like this: “Malcolm says: well if they don’t agree with me, they can say so”

    Actually, you disengenuous t00l, at least with respect to Prometheus I showed you direct quotes from their own postings that indicated their agreement with me. Somehow you forgot that? Sad.

  41. it’s clear to me that Malcolm is somehow involved with running Patently-O.

    Well, yes, I get the checks from Lord Soros (registered mail) and at the Quaretly World Socialist Planning Meeting we pass them out to the leftist academics who have been on good behavior.

  42. C’est la vie.

    There is another option: Malcolm is allowed to run rampant as the poster boy of how NOT to effectively campaign for your agenda.

  43. Oh he realizes it Alun – he has been caught volunteering admissions that toast his precious dogmas.

    He is simply bankrupt on the intellectual honesty factor.

    It’s a pity that he does not realize the damage he does to his own agendas. But he is too full of himself to allow for that truth to soak in. He llives in a world so full of spin, that he has forgotten what a fact without spin looks like.

  44. And should we even get to that pathetic attempt at a Crybaby’s Veto that was launched because you and your little circle were getting trounced on every thread? Your poor little dogmas being whipped with reason and intellect? Your ‘theories’ shoot through with so many holes that the soapbox you climb upon collapsed and sent you sprawling into the gutter?

    LOL indeed.

    As I said earlier, Malcolm,…

    …do not address the points that I raise and I win.
    Try to address them and show yourself to be the vacuous f001 that you are and I win.

    It’s a win-win for me.

    Life is good.

  45. The non-analogous art argument seldom works. It once worked for me in a case where the Examiner cited a photo album as prior art for a case concerning a kitchen chopping board! On appeal.

  46. Where I went to university I was taught that a semicondctor is neither a conductor or an insulator, and that metals are conductors. Granted I am an EE, not a chemist, but I am tempted to wonder if someone who believes otherwise even inhabits the same planet?

  47. As for waiting, I am still waiting for you to support your B$ theory and explain a few things, like how it allows for the fact that [oldstep]s claim alone are perfectly eligible, which means that [oldstep]s and [newthought]s are also eligible, as well as controlling law about claims having elements that are considered mental steps are perfectly eligible (and distinguishing those claims that are ONLY mental steps – let’s stay away from your petty strawmen).

    Hmmm. A complete lack of intellectual honesty from you on all of these points is also well archived.

    Make my day INDEED.

    And another thing that is due from you is the simple question as to how you would enforce your patent on something from nature’s warehouse. You keep on forgetting to address that very simple question (you even tried to steal that question and make it your own – that too is archived).

    Maybe because it flies directly in the face of the words of the Supreme Court and its foundational understanding that those items in nature’s warehouse are free to all men.

    LOL indeed. Lot’s of words from you Malcolm. Still nothing of substantive value.

    Maybe YOU should shttcan the insults for awhile, at least until you have provided a few answers.

    Frankly, you will not do so, because you cannot do so.

  48. I’ve gotten some traction out of arguing non-analogousness, but not by simply arguing that the examiner hasn’t established analogousness. Good luck with that.

  49. As for causing a tr_@inwreck – that would be you and the low quality blogging that I explained in detail and to which you merely [shrugged] and stood by.

    You know, low quality blogging like confusing spin for fact, like misrepresenting facts, law and what other people post (like you do on a rather routine basis), as well as outright and blatant ly1ng (which you also do on a rather routine basis – for example, the controlling law regarding the exceptions to the printed matter doctrine), amongst other indicators of poor blog quality.

  50. In pieces due to the filter:

    On the contrary, plenty of people here, including Dennis and Jason and other well-informed parties agree with me about many “hot button” issues

    LOL – we played that game and everyone agreed with me – it’s archived, you know.

    The game went like this: “Malcolm says: well if they don’t agree with me, they can say so” to which I used your own ‘logic’ and found that the entire world quite in fact agreed with me. They still do. No one has posted otherwise.

  51. “And what rule prevents you from calling an attorney at ANY point in prosecution?”

    My excellent and prescient examiner actually did call me; after my written response to his 1st OA (where he had rejected all 100+ of my claims).

    After just a couple of phone conversations over a few day period, all questions were answered and all issues were settled; with an allowance on all 100+ of the now-amended claims.

    No RECs.

    No appeals.

    No crying to the SPE.

    And yes; I got all the scope I was looking for and legally entitled to.

  52. “Evidently not.”

    Different field of endeavor.

    Your deliberate obtuseness is ponderous, f#$@king ponderous.

  53. We [...] are getting patents on parts made out of a material that’s been around since the early 1990’s.

    Evidently not.

  54. “…but using it to build stuff once its properties are known is generally not inventive.”

    I wish you were advising our competitors.

    We, and our competitors, are getting patents on parts made out of a material that’s been around since the early 1990’s.

    “It’s highly non-inventive to build car parts or aircraft parts out of the lightest suitable material available.”

    Right, Examiner IANAE. Until you actually try to build them.

    At least Malcolm has the excuse that he doesn’t know squ#t about mechanical engineering, electrical engineering, material science, metallurgy, etc. for s#$cking as bad as he does. What’s your excuse?

  55. Sorry, continuing before that little “part 1″ post:

    And just to be clear for MM, none of this is “because 6 says so” it is because the art says so, routinely. You may consult official lists of metals also which I have a hard copy of but which the closest I can find on the web quickly is:

    link to google.com

    But if you’re absolutely stuck on acting a ne wbie, then sure, go on running your mouth about how o my go d the indefiniteness is just soo bad and it is a perfectly good rejection! Fact is, it is only a rejection that looks acceptable on its face, but not once you know anything about what you’re talking about.

    Though on the whole, and in a post that for some reason did not post, I do agree that the prosecutor prosecuting this case is a t ard and that he can and should simply safely disclaim metalloids, arguing if a tar dation rears its ugly head, that was what was always intended by the term in the first place. And he will still get his “full scope to which he is entitled”. Though that should be his last choice, his first choice being smart enough to know how to convince an examiner that a metalloid is not a metal, and that the official lists of metals that do not include Si are in fact not l ying due to the official definition of the term. And that should be his last choice because I can assure him he is far from assured to win on appeal as I know personally the person down the hallway won an appeal on this very issue having his rejection affirmed even though by the time the affirmance got back to him he was experienced enough to know he wouldn’t have made the rejection in the first place. Still, that guy went abandoned before the examiner had any opportunity to reverse himself. The people at the board are tar ds, especially if you draw a panel of ex-bio guys (which can happen and did happen in that case) to deal with mat sci and it is a toss up as to whether or not they will agree with you unless you come down just as hard as you’d need to come down on the examiner to convince him. So my sincere advice is to go ahead and put forth the effort to win at the examiner level unless you really want PTA or whatever benefit or have a spare 10k or whatever sitting around.

  56. If I made an engine block out of a composite of carbon is that obvious/not inventive because engine blocks are made of iron or aluminum? If previous aircraft engine fan blades were made out of metal but somebody figured out how to make them of composite material that was lighter, thus allowing significant weight and fuel savings, while still meeting all FAA requirements, would that be inventive?

    No. The material itself is inventive, if you invented it, but using it to build stuff once its properties are known is generally not inventive. It’s highly non-inventive to build car parts or aircraft parts out of the lightest suitable material available.

    That goes double when the so-called “inventive” material being used is “metal”. Your client didn’t invent metal, did he?

    So tell me, what field of endeavor are you in? It’s starting to sound like you’re making this whole story up.

  57. “On the contrary, plenty of people here, including Dennis and Jason and other well-informed parties agree with me…”

    There was a theory on this site awhile ago that Dennis was Malcolm. While I don’t believe that Dennis is Malcolm (there’s no way Dennis would have that level of understanding of DNA bits and protein fragments), it’s clear to me that Malcolm is somehow involved with running Patently-O. If that’s the case, the credibility of this site is pretty much shot.

  58. It previously referred to the fra king metal gate in the old timey transistors before poly si was worth using in commercial devices all that often. We then moved on to making gates out of poly si, but the name still sticks out of tradition. The usage there does not mean that people making MOSFETs think poly is a metal. Since the poly si rage is waning as devices shrink and get faster we’ve since moved back to using actual metals as the gate. Notably W for many devices. And none of this affects what is technically considered to be a metal since there is a very specific chemical definition, which si fails, for a metal.

    link to en.wikipedia.org
    part 1

  59. “I’d love to know in what field making something that previously existed out of metal is inventive.”

    You may actually s@#k at this more than Malcolm.

    There are plenty of fields where “making something that previously existed” from a different material is “inventive.” Have you never heard of alloys and composites? If I made an engine block out of a composite of carbon is that obvious/not inventive because engine blocks are made of iron or aluminum? If previous aircraft engine fan blades were made out of metal but somebody figured out how to make them of composite material that was lighter, thus allowing significant weight and fuel savings, while still meeting all FAA requirements, would that be inventive? If you don’t think so, then I suggest you look for a new line of work because you very clearly s$%k big time at patent prosecution.

    If I thought you had any actual clients they would have my deepest sympathies.

  60. It previously referred to the fraking METAL gate in the old timey transistors before poly si was worth using in commercial devices all that often. We then moved on to making gates out of poly si, but the name still sticks out of tradition. The usage there does not mean that people making MOSFETs think poly is a metal. Since the poly si rage is waning as devices shrink and get faster we’ve since moved back to using actual metals as the gate. Notably W for many devices. And none of this affects what is technically considered to be a metal since there is a very specific chemical definition, which si fails, for a metal.

    link to en.wikipedia.org

    For fra ks sake, you don’t need an expert to spell this out for you, just read the wiki.

    “The ‘metal’ in the name MOSFET is now often a misnomer because the previously metal gate material is now often a layer of polysilicon (polycrystalline silicon). Aluminium had been the gate material until the mid-1970s, when polysilicon became dominant, due to its capability to form self-aligned gates. Metallic gates are regaining popularity, since it is difficult to increase the speed of operation of transistors without metal gates.

    Likewise, the ‘oxide’ in the name can be a misnomer, as different dielectric materials are used with the aim of obtaining strong channels with applied smaller voltages.”

    And for a list of terms that should be used, though aren’t always, because people (especially patent drafters) are ta r ds: “An insulated-gate field-effect transistor or IGFET is a related term almost synonymous with MOSFET. The term may be more inclusive, since many “MOSFETs” use a gate that is not metal, and a gate insulator that is not oxide. Another synonym is MISFET for metal–insulator–semiconductor FET.”

    Likewise I can assure you that we still refer to a nitride gate dielectric transistor as a MOSFET even though there literally is no oxide. And also sometimes people will call it an MNOSFET if it has NO as the dielectric, and possibly someone has called them a MNFET. But generically and routinely they are still referred to as MOSFETs even if there is no O at all and if there is no metal at all simply because that is the traditional name for the genus of devices that operate in a certain way and have a certain generic structure. And yes, I get that this is confusing for newbs but it isn’t confusing for your local foundry operator.

  61. Uhm, it does. You don’t think it does?

    Of course it does. Which is why, if you want to credibly whine about being the victim of an oppressive examiner’s unreasonable rejection, you might care to tell us what field of endeavor your claims are in.

    Not since anon have I seen someone put so much effort into not answering a simple question.

  62. “Not sure how the case being on appeal will affect that, though.”

    If Ned filed his brief, it’s pretty simple: the examiner can respond with the examiner’s answer for the remaining count (or fraction of a count or whatever is left) or re-open.

  63. The accuse-others-of-that-which-you-do game?

    No. The “attack-a-strawman-out-of-desperation” game. The game you’re playing now, anon.

    No one can take that title away from you.

    Pretty sure you’re still the champ, S-ckie. It’s not even a year since you were busted.

  64. “You keep saying it depends on what art everything is in.”

    Uhm, it does. You don’t think it does? You might want to re-read section 103(a) as a little refresher.

  65. you still have never answered me about spam filters

    Right, and you’ve never explained why you hide behind bushes near the grade school. Maybe you can just answer the question or admit that your li’l “prior art avoidance” strategy was A Big L i e.

    that very practice.

    Merely posting under a pseudonym is not what qualifies you (and others) for the designation of S-ckie, anon. If that were the case, then LB and 6 and MD and many other anonymous commenters would qualify. The issue, Trollboy, is posting under dozens of pseudonyms in an effort to create a “trainwreck” (e.g., simple blogtrolling — your expertise) and/or create the impression that you represent some bullwark of like-minded commenters who are being unfairly targeted by a “vocal minority.” That’s what you did here, anon. For years. You were busted. Or, as you say things in your bizarro fantasy world, you “voluntarily changed your commenting habits.”

    Maybe you should “voluntarily” change your commenting habits back to the “glory days”, anon. See what happens. I seem to recall you saying that it “worked for you” in some manner. Give it another shot.

    no one else will [agree with you]

    On the contrary, plenty of people here, including Dennis and Jason and other well-informed parties agree with me about many “hot button” issues. I’m still waiting for you to identify one credible person who believes (as you do) that a claim in the form [oldstep]+[newthought] is eligible for patenting. Just one, anon. Make my day.

    And while you’re squatting in Nature’s Warehouse, maybe you can explain to me why a short isolated piece of DNA is an eligible “product of nature” but a longer isolated piece of DNA for recombinantly expressing a useful protein is an ineligible “product of nature”. Apply your “test” to the facts, in English, for everybody so we can see how it works. That result is, after all, where the Supreme Court seems to be headed, right? Let’s seem some of that good ol’ anon “substance.”

    Or maybe you can just chuck out some insults — don’t forget to include some italic and bold formatting because it makes them so much more “devastating”! LOL.

  66. One other thing, Ned: If you do petition this, keep in mind that the petition doesn’t toll your response period, so depending on how late you file the petition and how long it takes the PTO to respond to it, you may have to file an RCE anyway. (Not sure how the case being on appeal will affect that, though.)

  67. For the record, the field of endeavor in my case is not metal oxide semiconductors.

    For the record, what field of endeavor is your case in? I’d love to know in what field making something that previously existed out of metal is inventive.

    You keep saying it depends on what art everything is in. Curious that you seem to be withholding that very basic information on purpose.

  68. “It’s evidence that sometimes when persons of skill in the art say ‘metal’ they intend it to include metalloids.”

    It depends on what “art” Malcolm’s “patent literature” is from.

    You seem hung up on metal oxide semiconductors. For the record, the field of endeavor in my case is not metal oxide semiconductors. So if the examiner cites me some reference from the metal oxide semiconductor art and says, “See, metal includes silicon” my response is going to be, “Well, maybe it means that to one of ordinary skill in the art of metal oxide semiconductors, but it doesn’t mean that to one of ordinary skill in the art of the subject matter we’re seeking to patent.”

    You really s$%k at this too.

  69. Malcolm,

    The accuse-others-of-that-which-you-do game?

    You own that game.

    No one can take that title away from you. Just like the title of the site’s biggest crybaby.

    It’s archived!

  70. then why do you wonder if I would agree with … myself?

    LOL – it’s no wonder – it is because no one else will.

    And it is no “allegedly” – the posters used your exact arguments and nuances, down to the very mistake I correct you on the Prometheus dead letter comment.

    And what is funny is that you do rail against “suckies” all the while engaging in that very practice.

    The word for you (still): Hypocrite

    By the way, you still have never answered me about spam filters.

    Do let ‘us” know. (along with all the other answers that you never seem to be able to provide)

  71. Why not show me such a case

    Metal oxide semiconductor field effect transistor. They’re all the rage, these days. Lots of people are using them. Patents all over the place.

    When you build one, what’s the “metal” made of?

  72. You mean where someone took the time out of their day to redefine the term so that it does specifically include it.

    It’s evidence that sometimes when persons of skill in the art say “metal” they intend it to include metalloids. That makes it a reasonably broad interpretation of the claim term, unless metalloids are specifically defined out in either the spec or the claims being examined.

    The only mystery here is why someone who insists so vehemently that the claims clearly don’t include silicon is equally vehemently opposed to amending the claims to explicitly say so.

  73. Really? Why not show me such a case, since “lots of people are”? Let’s see one where they didn’t have to go out of their way to redefine a term, and instead simply argue, or assert in court, that a metal includes metalloids. Bonus points if you can find one where they won.

    Gort ahead, I’ll be waiting.

  74. “As used herein, the term metal includes metalloids”

    You mean where someone took the time out of their day to redefine the term so that it does specifically include it. Try again as hat.

  75. He’s going to get a disposal count (probably only 0.5 counts because he got 1.25 for the FAOM and .25 for the FR) by writing the examiner’s answer. But he actually has to do something for that count. If you file an RCE, he gets the disposal count (i.e. abandonment count) for you filing the RCE, and then he gets 1.75 counts for allowing your RCE on the first Office Action after the RCE. So his options are: 1) set up an appeal conference and write the examiner’s answer for 0.5 counts; or 2) be a t00l and hope you file an RCE for 2.25 counts. He chose option 2. He lost. Won’t stop him from trying the same shenanigans on somebody else in another case. Or on you again if he gets the chance.

  76. Presumably the case hasn’t been allowed yet. If the examiner had already allowed it and then Ned filed an IDS (paying the fee and making the certification), then the examiner would get a Printer Rush eventually (11 days-on-average to complete).

    By the way, Ned, are you sure this is an appealable matter, and not a petitionable one? The PTAB can’t force the examiner to allow the case; all they can do is reverse rejections.

  77. a field of endeavor that has absolutely nothing to do with applicant’s field of endeavor,

    What are these two “fields of endeavor” that have “absolutely nothing to do with” another?

  78. it’s clear from our specification that metal does not include metalloids.

    Then disclaim them and move on. What’s the problem?

  79. AAA JJ, I have a final rejection and do have not option but to file an appeal and/or file an RCE.

    The examiner refused to enter the amendment that disposed of all outstanding issues on the grounds that he wanted to consider the materials in the IDS. I don’t think he has that right.

  80. And when you cite that “patent literature” to me and it’s from a field of endeavor that has absolutely nothing to do with applicant’s field of endeavor, I’m going to educate you in the law of evidence and let you know that the probative value of your “patent literature” as it relates to the BRI of the term “metal” as used in our claim is zero.

  81. Example: Reference A, a peer-reviewed paper in scientific journal.

    Reference B: an abstract of a poster presented at a meeting by the author of Reference A, which recapitulates the abstract/summary in Reference A and nothing more

    Reference C: a general review in French with one line summarizing the Reference A author’s conclusions

    In other words, a very typical fact pattern. Let me know if you come up with some great inequitable conduct argument re the failure to disclose Reference B or C. Vast numbers of “copiers” are waiting for your insight!

  82. And it’s clear from our specification that metal does not include metalloids.

    So disclaim metalloids explicitly, and get your client the full claim scope he’s entitled to, and save him some money on an appeal.

    A wonderful patent agent once told me that “Obtaining claims the client is entitled to is the objective.” At least, he thought he was wonderful. Always seemed to have trouble with simple rejections, though.

  83. Malcolm, I cannot get into too much detail, but the IDS materials were submitted prior to a final rejection and marked considered by the examiner. The final rejection raised some formal matters, rejected several dependent claims based on a bad edit I made. I then corrected the formal matters, cancelled or fixed the bad edit of the dependent claims, but he refused to enter the amendment citing the fact that he thought the previously submitted IDS raised new issues. Note, he did not give me a new rejection.

    I intend to simply cancel the dependent claims, leaving nothing but allowed claims.

    That leaves the formal matters, which I believe I fully complied with in the amendment I entered.

    So, what are we going to argue about on appeal. The formal matters that I fixed? The dependent claims I cancelled? The art that examiner considers relevant, but which he wants to consider but not enough to pull the final or give me a new rejection.

    Bizzare…

    He can enter another rejection at any time, but I think a bit much that he wants me to file a RCE. What is he looking for, credit?

  84. “Then we do a quick check for this phrase in the patent literature:

    ‘As used herein, the term metal includes metalloids'”

    That’s nice. But the BRI has to be consistent with 1) applicant’s use of the term AND 2) the interpretation one of ordinary skill in the art would reach after reading applicant’s specification. And it’s clear from our specification that metal does not include metalloids.

    Again, I’d say nice try, but it really wasn’t.

  85. Fact is I can assure you that nobody that is using “metal” in the way this guy is would consider Si to be a metal and infringe their claim.

    Fact is, lots of people are, particularly in the art where you’re likely to claim “metal” and the examiner is likely to find the exact same structure in silicon.

  86. Well, instead of having the ta rd examiner present applicant’s case at the pre-appeal or appeal conference, they could let the applicant and/or applicant’s representative present their case at the conference. It’s been suggested to them many, many, many times, and they’ve never agreed to it. Seems to me the ball’s in the PTO’s court on your suggestion.

  87. 6 that nobody that is using “metal” in the way this guy is would consider Si to be a metal and infringe their claim.

    Because 6 says so! So reassuring. Then we do a quick check for this phrase in the patent literature:

    “As used herein, the term metal includes metalloids”

    Oops. Another bubble burst.

    Ready to talk about “pre-emption”?

  88. I’m not the one posting whiny comments

    LOL

    LOL LOL LOL.

    No wait,

    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL

    ahhh – the site’s biggest crybaby has spoken.

  89. they are ones you use over at PatentDocs.

    LOL. If that’s true, then why do you wonder if I would agree with … myself?

    Makes me curious though: do you obsess about me allegedly posting under different user names on other blogs or just that one? In any event, do let me know if my “alter egos” there ever “join forces” and post thousands of comments a year pretending to rail against a “vocal minority”. Then we’ll have nice li’l talk, S-ckie. Mkay?

    By the way, did you ever find the name of a single firm that uses mailroom staff to screen attorney eyes only material sent by registered mail and then discards it if there is relevant prior art in the mail? Pretty sure that was you who made up that nonsense. Or was it someone pretending to be you? Do let us know.

  90. “The non-metallic nature of silicon is ambiguous, at best”

    Actually it isn’t.

    “:A metalloid” is not a metal. That’s why there is loid on the end.

    “difficult to classify unambiguously as either a metal or a nonmetal. ” It is hard to classify a metalloid as a metal or not so therefore it is a metal? Interesting way of looking at things MM.

    Fact is I can assure you that nobody that is using “metal” in the way this guy is would consider Si to be a metal and infringe their claim.

    “Despite this lack of specificity the term continues to be used in the chemistry literature.”

    Which just so happens to be a good thing, although in this case it is irrelevant since the term “metalloid” was not used. Metal was. And as the article notes, it is difficult to classify the group of things as a metal.

    “The Examiner seems to be making a perfectly reasonable rejection.”

    Yes, that’s what everyone who sees this issue for the first time thinks. Trust me, the 10th or 20th time you see it you will be quite over such nonsense.

  91. “The only appeals I’ve had have been in cases where the Applicant’s attorney has not picked up the phone to have an interview and instead chose to appeal as soon as possible and bill their clients for an appeal brief. I’ve found this to be a very curious pattern.”

    It is a cycle of tar dation that the office would do well to nip in the bud by requiring substantive interviews pre-appeal as a matter of procedure.

  92. “…happy to provide examples if there is any doubt…”

    Happy to review any examples you care to provide.

  93. “Were these references newly revealed to you in a foreign Office Action or something like that?”

    If they were, and Ned submitted them according to the rules, then the examiner must consider them.

    Uh … yes, that’s why I asked Ned that question.

    “If they are not more ‘pertinent’ than the references already cited, why are you bothering to cite them?”

    So that he doesn’t have to spend a whole bunch of money defending against an inequitable conduct charge if the patent is asserted.

    Oh … you mean the amount of money that a patentee will spend asserting the patent is a consideration that informs how the patent is prosecuted? Gee, I thought it was all about getting clients “valuable claims” that “they are entitled to”.

    The examiner’s refusal to consider the references is not an appealable matter. It’s petitionable.

    And the petition isn’t going to help if the references were submitted late.

    This is not an unusual call for attorneys to make. If a reference is plainly redundant with what was cited elsewhere (and yes it is possible to make that call — happy to provide examples if there is any doubt) then forget about it. It won’t cost anything to defend. Improper allegations of inequitable conduct are just as sanctionable as any other defense.

  94. Wouldn’t it be more logical for Malcolm to post some of his (picture-perfect) claims that he is so rightfully proud of so that we all can learn from such a master?

    I’m not the one posting whiny comments about how I have to appeal everything to get my clients “what they are entitled to” because some imaginary Examiner is refusing to allow claims this week, or because the Examiner doesn’t read the claims as narrowly as I read them.

    The types of Office Actions that the practitioners before the Identifying-Stuff-to-Buy art unit complain about are the types of Office Actions that I look forward to. They are easy to address, if we take those practitioners at their word (a highly dubious proposition, given that they still pretend to misunderstand basic stuff like the ineligibility of [oldstep]+[newthought] claims).

  95. “Were these references newly revealed to you in a foreign Office Action or something like that?”

    If they were, and Ned submitted them according to the rules, then the examiner must consider them. If any of the claims are deemed unpatentable in view of any of the references, alone or in combination with any other references in the IDS or already of record, then the examiner must re-open prosecution and send out an OA. If they are not, the examiner must initial the references on the IDS and sign it, and issue a supplemental notice of allowance.

    “If they are not more ‘pertinent’ than the references already cited, why are you bothering to cite them?”

    So that he doesn’t have to spend a whole bunch of money defending against an inequitable conduct charge if the patent is asserted.

    The examiner’s refusal to consider the references is not an appealable matter. It’s petitionable. The appeal will be dismissed. Ned just waited his client’s money on notice of appeal and appeal brief fees.

  96. Maybe we should laugh at the art field with the lowest quality ranking per Prof. Crouch’s posts – you know the one, the one whose average ranks so low even as it is skewed with your stellar work.

    Nothing like laughing when you are the one being laughed at.

  97. Wouldn’t it be more logical for Malcolm to post some of his (picture-perfect) claims that he is so rightfully proud of so that we all can learn from such a master?

    Wouldn’t that ‘inform’ the discussion to a much better degree?

    lol – real answers or examples from Malcolm – Just. Not. Going. To. Happen.

  98. What would Francis and Keeping It Real have to say about this?

    Are those the names of the aliens who keep contacting you through your fillings with news about “implicit agendas” and the like?

  99. “…a claim obtained over that reference based on self-serving attorney argument is, quite frankly, not something to write home to your mommy about.”

    Self-serving argument? I was wrong about it not being possible to overstate how much you s%$k at this.

    “…epecially for practitioners in certain ‘fields of endeavor’ which are apparently too embarassing even for the practitioners to identify for us.”

    Not sure why you’re so hung up on this. It’s not a business method or a computer implemented (i.e. BIG COMPUTER BRAIN) invention if that’s your implication.

  100. B-b-b-but he is a patent agent with a PhD and deserves more nice things than those d_@mm other lawyers get.

    At least Malcolm keeps muttering this to himself as he shines his nice aluminum headgear.

  101. Let’s see, typical vacuous statements, unwarranted putdowns of the computer art field and “S-ckie the S-ckpuppie” sayings…

    What would Francis and Keeping It Real have to say about this?

    I wonder if Malcolm ever realizes just what a caricature of a buffoon he has become.

  102. clearly more knowledgeable about the law

    HUMPTY II HAS SPOKEN!!!!!! BOW DOWN!!!!!

    anticipation rejections can be sustained based on an “at best ambiguous” prior art reference.

    If the only “ambiguity” is metal-versus-silicon and your specification is silent on the distinction, a claim obtained over that reference based on self-serving attorney argument is, quite frankly, not something to write home to your mommy about. But go ahead and whine about it here. It’s therapeutic, I imagine, epecially for practitioners in certain “fields of endeavor” which are apparently too embarassing even for the practitioners to identify for us.

  103. “So you have those kinds of clients that love getting claims that are ambiguous and may be invalid as a result.”

    The claim is not ambiguous. There are no grounds to reject it now, or invalidate it later, under either first or second paragraph.

    It would be impossible to overstate how much you s#$k at this.

  104. Clients love getting the claims of the full scope that they are entitled to. You might want to try it sometime.

    You might want to try it sometime too.

    You assert that your client is entitled to “metal”, so long as that excludes “silicon”. So why not disclaim silicon, which you know is anticipated, and get your client the claims of the full scope he’s entitled to?

  105. Clients love getting the claims of the full scope that they are entitled to.

    Yes, and they also love getting free bags of money! Very persuasive, potent stuff. I see why Examiner’s fear you.

    Is your client entitled to a claim that includes silicon? Apparently not. So you have those kinds of clients that love getting claims that are ambiguous and may be invalid as a result. I get that. There’s lots of such clients. It’s nothing to be ashamed of.

  106. I’m not in private practice. I’m getting these claims because: 1) they will be valuable to my client; and 2) because they are entitled to them.

    And I am an attorney. One clearly more knowledgeable about the law than somebody like you who thinks that anticipation rejections can be sustained based on an “at best ambiguous” prior art reference.

    Keep making those amendments and getting those picture claims allowed. You’re a wonderful patent agent. You deserve nice things.

  107. S-ckie the S-ckpuppie: That’s why you really, really, really, really s@#k at this.

    There’s money to be grifted by playing patty-cake with the PTO and S-ckie figured out how to do it. So impressive! Congrats, S-ckie. Maybe when you become an attorney Mr. Schroeder will show you the secret handshake.

  108. “Clients love that.”

    Clients love getting the claims of the full scope that they are entitled to. You might want to try it sometime. You’re clients will love it. You might love it too.

  109. I don’t have the time, or the inclination, to give you a tutorial on the case law of “field of endeavor,” Examiner Mooney.

  110. So it’s your practice to expressly define every commonly understood term used in your spec?

    Certainly, if I plan to rely on that term to distinguish the inventor’s claim from the prior art. These nuances are sometimes lost on newbie patent agents. Don’t feel bad. After all, you get to charge the client for the whiny tantrum you’ll need to throw because of that failure. Plus, just think about all that yummy PTA after the appeal!!! Clients love that.

  111. “I doubt that.”

    That’s why you really, really, really, really s@#k at this.

  112. What’s the “field of endeavor”, Johnny? The art of calling your stockbroker with a metal phone? The art of determining that there is some real estate available for purchase? The art of informing your bank that your son’s credit card should be deactivated if he tried to purchase something with it in Palm Beach?

    Or something less technical than that?

  113. So it’s your practice to expressly define every commonly understood term used in your spec? How much do you draft for those disclosures?

    BTW, I didn’t draft the application. It was really well drafted by somebody else.

  114. I have always found this argument funny. If the claims were so invalid, then it would be very easy to find references with which to reject them and get a quick disposal. Yet when the Examiner finds claims to be so invalid they actually do more of a halfway job in rejecting them which cause the needless appeal. If the Examiners would reject properly in the first place the number of appeals would go down (and RCEs would go up and they would get more disposals).

  115. the examiner hasn’t met it. And can’t meet it.

    You’re saying that it’s impossible for an Examiner to “meet the burden” of showing that the term “metal” includes “silicon”? In a non-chemical case? When you have nothing in the specification that indicates otherwise?

    I doubt that. But, hey, keep whining about it. If you whine about it for the next five years here maybe you’ll even get a judge to agree with you.

  116. If the Office is not making an argument, the the attorney/agent should not argue the non-existent argument so as to not create PHE.

    For a 103 rejection, the burden is on the Office (see MPEP 2142). If the Office is not meeting that burden (e.g., making the potentially correct 103 argument) then the attorney/agent should not call the Examiner. Once the Examiner meets the burden, then a call can help decide where to go.

    This comes down to if the Examiner did it right the first time, then there would not be an issue. However, the Examiner screwed up (going 102 as opposed to 103) and wants the attorney/agent to amend claims as opposed to having to give another non-final and get less of a quota count. Attorney/agents don’t want to amend unless compelled (nor should they) so they appeal.

    Maybe both parties are wrong, but to me its clear the Examiner is more wrong since he/she made the first mistake and the burden is clearly on him/her.

  117. No. It means what one of ordinary skill would understand it to mean in the context of the disclosure.

    Right, your disclosure that doesn’t define “metal”, even though that element is the only difference between your claim and the prior art. How much did you charge for drafting that disclosure?

  118. “Ultimately, of course, you’ll need to explain why the use of ‘metal’ instead of ‘silicon’ in your ‘non-structural’ case is inventive and worthy of a patent.”

    No I won’t. The burden of persuasion is on the examiner. And remains on the examiner throughout prosecution. And the examiner hasn’t met it. And can’t meet it.

    You must really, really s#ck at this.

  119. What is g—ge?

    Most of what comes out of the computer-implemented art unit where you practice.

    Are you suggesting that Ron file claims that he knows ahead of time will be allowed and/or that he knows ahead of time that a court will find valid?

    No, I’m suggesting that Ron claim “The earth and everything in it” and then when the Examiner cites something “in the earth” then Ron can whine and cry here about the Examiner didn’t read the specification.

  120. “No.”

    Thanks. But I already knew that.

    “You just need to whine and cry here like a big baby because ‘metal’ means only what you say it means.”

    No. It means what one of ordinary skill would understand it to mean in the context of the disclosure.

    “How could the Examiner not appreciate that??”

    Several explanations: 1) lousy training; 2) no consequences for not understanding and/or misapplying the law; 3) incentives (e.g. 1.25 counts) for sending out FAOMs; 4) path of least resistance (i.e. junior examiner knows SPE/primary will blindly sign anything put in front of them as long as all claims are rejected); 5) etc.

    “Besides, eventually you’ll get your patent with lots of PTA! Hooray!”

    Obtaining claims the client is entitled to is the objective. PTA is gravy though.

    “Plus you got to whine and cry here in the meantime about silicon not being a metal because you say it isn’t.”

    Answered this nonsense above.

    “You are a wonderful patent agent.”

    Thanks. But I already knew that too.

    “You deserve nice things.”

    Yes, I do.

  121. It’s non-analogous because the examiner hasn’t presented any evidence

    “Waaah!!! Waaah!!!! The sky isn’t blue because you haven’t proved it with a preponderence of evidence!!!”

    What’s the “field of endeavor”, Johnny?

  122. The third result from your “silicon metal” Google search is the best you got?

    No, it’s just the third result from the silicon metal search. The Wiki entry I posted earlier is better at explaining the ambiguity. Again, it’s your problem. If it were my client, I’d have done the research about the prior art and recognized the possibility that a disclaimer as to silicon might be necessary. Ultimately, of course, you’ll need to explain why the use of “metal” instead of “silicon” in your “non-structural” case is inventive and worthy of a patent. If you’re in the computer-related arts, that probably won’t be too hard because that particular practice area amounts to little more than a bunch of kids running around on a playground calling each other names until one of them needs to take a nap. And then: PTA! WOoooo-hooooo!!!!!!!!!!

  123. What is g—ge? I’m trying to understand your suggestion to “file some valid claims.”

    Issued claims are presumed valid. A court can deem claims valid.

    Are you suggesting that Ron file claims that he knows ahead of time will be allowed and/or that he knows ahead of time that a court will find valid?

  124. No. It’s non-analogous because the examiner hasn’t presented any evidence that establishes, by a preponderance, that the secondary reference is from the same field of endeavor as the claimed invention or that it addresses any known need or problem from the same field of endeavor or that the reference, based on the subject matter with which it deals, would have logically commended itself to the applicant’s attention. That’s why.

  125. The third result from your “silicon metal” Google search is the best you got?

    I’d say “Nice try” but it really wasn’t. I’d also say “You can do better” but you can’t.

  126. The examiner has a secondary reference for that dependent claim. It’s non-analogous art.

    Really? What is it “non-analogous”? Because you say so?

  127. “Did you define “metal” in your specification to exclude silicon?”

    Do I need to?

    No. You just need to whine and cry here like a big baby because “metal” means only what you say it means. How could the Examiner not appreciate that?? Besides, eventually you’ll get your patent with lots of PTA! Hooray! Plus you got to whine and cry here in the meantime about silicon not being a metal because you say it isn’t. You are a wonderful patent agent. You deserve nice things.

  128. Lulz

    I do have a dependent claim that recites the preferred metals in a Markush group. The examiner has a secondary reference for that dependent claim. It’s non-analogous art. I noted that during our conversation. The examiner told me not to bother making that argument either.

  129. If you need to ask, you wouldn’t understand.

    Translation: “I just want to whine about my rejected claims!!! Why are you picking on me?!?!?!?”

  130. Back to the blog subject of ex parte appeal backlog reduction.

    1. Regular Board PGR’s are yet yet available [and will be unlikely to be used very much even when subject patents start to issue due to their mere 9 month from filing date limitation and virtually unlimited estoppel.
    2. Business method Board PGR’s are running well below PTO original estimates.

    Hence, the big Board APJ staffing increase for the above plus IPR’s should be able to handle a lot more ex parte appeals.

    However, the Board is supposed to be giving top priority, [very fast turnarounds] on appeals from reexaminations and reissues. Publishing statistics on THAT might light a hotter fire under them.]

  131. This is not a “structure” case, Examiner IANAE

    Apparently it’s a case that’s anticipated by the prior art and the only difference between that art and your claim is that your claim comprises a “metal” and the prior art recites “silicon” … which is a metal.

    link to glbsm.com

    I think you’d be better off it were a “structure” case. What’s the invention? A method of instructing your stock broker to sell shares using a metal phone? Or something less interesting than at?

  132. “Did you define “metal” in your specification to exclude silicon?”

    Do I need to?

    “The non-metallic nature of silicon is ambiguous, at best:”

    ROTFLMAO

    “The Examiner seems to be making a perfectly reasonable rejection.”

    The standard of anticipation is that the prior art discloses the identical invention in as much detail as is recited in the claim, not “Well, it’s kind of sort of ambiguous as to whether the reference actually discloses the identical invention.”

    “If your claims do not include silicon…”

    They don’t.

    “…then simply amend them.”

    Any suggested amendments you have in mind would be, I’m quite sure, fascinating.

    “What’s the problem?”

    If you need to ask, you wouldn’t understand.

  133. He said he wanted to review the art in an IDS I filed. I think he thought I would file an RCE. But, I could give a rats a** as I think new art is no more pertinent than the art of record.

    Just so we’re clear on the facts: you presented new references in an IDS after a Notice of Allowance and you want the Examiner to sign off on the references but the Examiner is not willing to do so unless you file an RCE. Right? Were these references newly revealed to you in a foreign Office Action or something like that? If they are not more “pertinent” than the references already cited, why are you bothering to cite them?

  134. Metallic hydrogen is a state of hydrogen in which it behaves as an electrical conductor. Your 103 rejection will postulate that it would have been obvious to substitute metallic hydrogen for silicon because it would be a better electrical conductor, since silicon is a lousy conductor. Your argument that the resulting structure will not work for its intended purpose will be met with a form paragraph about bodily incorporation.

  135. They don’t read my applications, they reject against references that are not even close to the same field and ground their rejection in unintelligible logic.

    It almost sounds as if the Examiners that get your applications are drunk or mentally ill. Perhaps you should mention that “possibility” in your next Response.

    Or maybe you’re just full of sh-t, Callistus, and you st-nk at drafting claims. Please post some of your claims here along with the rejections and then we can have an informed discussion.

  136. One examiner proudly proclaimed to my attorney that his group (3600) was not allowing any patents at all

    Oh really? What was that Examiner’s name?

  137. the possibility that some attorneys are milking inventors and driving up the number of appeals

    The “possibility”? ROTFLMAO.

  138. You must have an insanely high first action allowance rate if you “know” your claims are valid upon filing.

    You must waste an incredible amount of your client’s time and money blindly filing claims on invalid g—ge. Oh but wait: that’s money in your pocket. Well done!

  139. You must have an insanely high first action allowance rate if you “know” your claims are valid upon filing. Well done!

  140. I think five of those appeals are mine – maybe six I can’t remember anyone after all these years. In each of them, my attorney called the examiner multiple times prior to filing an appeal.

    While I sympathize with the possibility that some attorneys are milking inventors and driving up the number of appeals, the volume of appeals is way to high to believe that the problem is solely with the attorneys.

    The best explanation is that the examiners are at fault. For reasons unknown to me, the examiners I’ve come to know have fun rejecting applications for nonsensical reasons. It’s a game. They don’t read my applications, they reject against references that are not even close to the same field and ground their rejection in unintelligible logic. When confronted with a solid counter, they find another nonsensical rejection and the process continues. One examiner proudly proclaimed to my attorney that his group (3600) was not allowing any patents at all and that I would have to appeal for that reason.

    It is a national disgrace and is slowing innovation in the US.

  141. He said he wanted to review the art in an IDS I filed.  I think he thought I would file an RCE.  But, I could give a rats a** as I think new art is no more pertinent than the art of record.
     
    So up we go, all claims allowed.

     
    Sent from Windows Mail
     

  142. This is not a “structure” case, Examiner IANAE, so your resort to boilerplate bullsh!t ain’t gonna help.

    “If you don’t have a persuasive 103 argument for metal…”

    I have several of them. In the spec.

    “And expect him to reopen with a 103 if you get the 102 rejection reversed on appeal.”

    When I get it reversed. And there won’t be any re-opening when I do.

    “Or maybe even when you file the appeal.”

    That’s usually what happens. And if it happens in this case I will immediately reinstate the appeal. And get even more PTA.

  143. I had a phone interview with an examiner yesterday about a claim that requires one element be formed of metal, and the reference discloses the element is formed of silicon. I argued to the examiner that silicon is not a metal.

    Did you define “metal” in your specification to exclude silicon? The non-metallic nature of silicon is ambiguous, at best:

    A metalloid is a chemical element with properties that are in between or a mixture of those of metals and nonmetals, and which is considered to be difficult to classify unambiguously as either a metal or a nonmetal. There is no standard definition of a metalloid nor is there agreement as to which elements are appropriately classified as such. Despite this lack of specificity the term continues to be used in the chemistry literature.

    The six elements commonly recognised as metalloids are boron, silicon, germanium, arsenic, antimony and tellurium.

    The Examiner seems to be making a perfectly reasonable rejection. If your claims do not include silicon, then simply amend them. What’s the problem?

  144. Its not the attorney/agent’s job to tell the Examiner how to reject their client’s claims better (and may be considered unethical if he/she did so).

    Grow up and file some valid claims.

  145. If the Examiner isnt saying its 103, then the attorney/agent should not argue that point and simply argue that the 102 is not correct.

    Of course you should argue the 103. For one thing, because “a person skilled in the art wouldn’t even think of making that change” is more persuasive than “metal doesn’t include silicon” (especially when the “metal” in metal-oxide-semiconductor has been silicon for years now). But also because if you use your brain, you know a 103 is coming next once you overcome that 102.

    This is not a situation where the attorney/agent should call the Examiner.

    No, it’s clearly a situation where the attorney should sit in his office and complain to anybody who will listen that he’s being “forced” to file an appeal because he refuses to do his job properly in a way that will advance his client’s application.

    But hey, at least you get to bill for an appeal brief. Again, a waste of the system. But it’s not your fault, you were “forced” to file it. Reasoning with the examiner would have been unethical.

  146. This is an example of the point I made. All the Examiner has to presumably do is make a 103 rejection saying that it would be obvious to replace silicon with metal. However, the Examiner has this as a 102. If the Examiner isnt saying its 103, then the attorney/agent should not argue that point and simply argue that the 102 is not correct. I have seen many times this situation occurs and the Examiner at least forces the attorney/agent to file an appeal brief. Again, a waste of the system. All the Examiner has to do is take the time to make the correct rejection and argument. Instead, they dig their heels in for no good reason. This is not a situation where the attorney/agent should call the Examiner. Its not the attorney/agent’s job to tell the Examiner how to reject their client’s claims better (and may be considered unethical if he/she did so).

  147. the examiner refuses the issue a notice of allowance.

    Two questions spring immediately to mind.

    1. On what basis is he refusing? Does he have objections to the spec or something?

    2. How do you think an appeal will help?

    Actually, three.

    3. Do you even get PTA for an appeal if there aren’t any claim rejections to reverse?

  148. They are going to get a case where all the claims have been allowed but the examiner refuses the issue a notice of allowance.

    That may be a strange case to appeal but the situation is not unusual at all. There are other requirements for obtaining a patent besides allowable claims.

  149. Well I just filed an appeal where the PTAB is going to get a very strange case. They are going to get a case where all the claims have been allowed but the examiner refuses the issue a notice of allowance.

  150. AnotherExaminer, I have to second the motion of others here that examiners often call me if we are close and there are only minor issues to clear up.

  151. If you’re going to tell them something magical on the phone, why didn’t you write it in the Office action like the MPEP requires of you?

    Who’s the problem again? And what rule prevents you from calling an attorney at ANY point in prosecution? My phone number and email address are right there on the paper you’re supposed to be reading.

    “And write my claims for me, too! That part is kinda hard and scary.”

  152. that power, while possibly displayed outside of the mind, is still considered to reside fully within the mind.

    Is that what your special friends told you?

  153. a claim that requires one element be formed of metal, and the reference discloses the element is formed of silicon.

    His examiner sense is tingling, all right. What you got was a 103 presented as a 102, but as a 103 rejection it’s perfectly reasonable. Choice of known materials for a known structure (if the structure was new, you wouldn’t be arguing about materials).

    If you don’t have a persuasive 103 argument for metal when the prior art shows silicon (for conducting electricity, presumably), expect to have a hard time with any examiner. And expect him to reopen with a 103 if you get the 102 rejection reversed on appeal. Or maybe even when you file the appeal.

    We all have anecdotes about the person on the other side being unreasonable. There are thousands of us, and thousands of them, and we each deal with thousands of cases. Unreasonable individuals need to be dealt with, but they don’t necessarily point to a problem with the system (unless it’s the hiring system).

  154. I had a phone interview with an examiner yesterday about a claim that requires one element be formed of metal, and the reference discloses the element is formed of silicon. I argued to the examiner that silicon is not a metal. The examiner told me “don’t bother making that argument because I’m interpreting the claim broadly.”

    Lulz

    I’ll get the claim. Unamended. The examiner can either allow it in response to my arguments, or I can get a couple years of PTA.

  155. “If you’re going to tell them something magical on the phone, why didn’t you write it in the Office action like the MPEP requires of you?”

    Dat’s da truth, da plain truth!!!!!!!

  156. If you’re going to tell them something magical on the phone, why didn’t you write it in the Office action like the MPEP requires of you?

    Who’s the problem again? And what rule prevents you from calling an attorney at ANY point in prosecution? My phone number and email address are right there on the paper you’re supposed to be reading.

  157. The only appeals I’ve had have been in cases where the Applicant’s attorney has not picked up the phone to have an interview and instead chose to appeal as soon as possible and bill their clients for an appeal brief. I’ve found this to be a very curious pattern.

  158. This is very disturbing. While everyone probably had a good laugh at the ‘are you drunk’ letter the truth is I think every attorney/agent has had multiple experiences with Examiners that are just unreasonable. Either the Examiner clearly ignores claim features, gives ‘wave of hand’ obviousness rejections, make blatant mistakes in rejecting, give a comically brief review, or reject a claim simply for being ‘too short’ without actually establishing a rejection of such a claim. The only recourse at times is appeal. To have to wait 2-4 years for such matters to be resolved is unacceptable. It is a chicken-egg situation – the PTAB is probably backlogged with these types of appeals and thus the true ones that need review of the PTAB are needlessly delayed, but with no other recourse many of these types of appeals essentially must filed. There needs to be a way to get rejections with these problems fixed without resorting to appeal. I know people say you can get the Examiner’s boss involved. However, that does not always work and you sure are not scoring any points with the Examiner (who likes having their boss called in anyways).

  159. OK, but let’s assume I have some way of demonstrating credible utility. And, telekenesis clearly afffects things outside the mind.

    The question remains: Would telekinesis be unpatentable because it is a mental process?

  160. You might run into credible utility problems with that one. Not to mention that that power, while possibly displayed outside of the mind, is still considered to reside fully within the mind.

    D+ for effort though.

  161. B-b-b-b-but the AIA was suppposed to change all of that…

    Hmmm, let’s see: more expensive, less quality, stability, and predictability and no real improvement in time…

    I see a change alright.

    /off sarcasm

    /on

    APPEAL EVERYTHING(TM)

    /off

  162. “Slow and Steady: PTAB Continuing to Address Backlog of Ex Parte Appeals”

    Slow; very, very slow

    And with the sequester and with increasing filings — the backlog will probably stay about the same for many, many years

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