Ex Parte Appeal Outcome by Assignee 2005-2013

By Dennis Crouch

The following table shows the decision outcome of ex parte appeal to the BPAI/PTAB for a number of patent owners, including the top-twenty-five owners of appealed applications as well as a few others with particularly high or low win rates. As a reminder, in ex parte cases, the PTAB reviews rejections by the patent examiner. Thus, an affirmance always represents a decision upholding the examiner’s rejection. A reversal fully-sides with the patentee and “AIP” are cases “affirmed-in-part.” PTAB decisions normally stick — that is –the vast majority of affirmed cases are subsequently abandoned by the patentee while the vast majority of the reversed and AIP cases are subsequently issued as patents.

Anyone considering these numbers should keep in mind that appeal statistics can be largely driven by the cases selected for appeal rather than by the quality of counsel handling the appeal. Parties with an especially high affirmance rate may be less selective than those that are typically more successful. However, I would also suspect that a company like Boston Scientific or Medtronic puts much more effort per application (i.e., $$$) than does IBM or HP.

99 thoughts on “Ex Parte Appeal Outcome by Assignee 2005-2013

  1. Thanks AE,

    As I mentioned, one particular case involved merely the authority of the SPE, and an in fact, the result of an’updating’ search (that search having been performed without approval and after Appeal decision) was used by the SPE to in essence say, “hey, we found art and that gives us sufficient cause.” My associate realized that the art found was colorable, so did not pursue the apparent violation (the associate did not report to me). But our discussion centered on the fact that the examiner went off on his own and performed the search in the first place. Why was this particular search not performed earlier in the examination process? Why did the examiner force the applicant through the appeals process?

    By the way, this was prior to the pre-appeal review option and in the thick of the RCE gravy train days, and the associate’s client decided that the appeals path was better than the RCE path – in part because this examiner was being obstinate about an errant view of the prior art).

  2. “should” isn’t optional in this case.

    37 CFR 1.198 says “When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner WILL NOT BE REOPENED or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title WITHOUT THE WRITTEN AUTHORITY OF THE DIRECTOR, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.”

    Since neither 1.114 nor 41.50 apply to reversals, the federal regulations are clear (are they not?) that it is mandatory to get the TC director’s signature or approval for an examiner to reopen after being reversed.

    Reopened without the TC director’s written approval violates the federal regulations examiners are required to follow, and such violations should be brought to everyone’s attention quickly (i.e. the SPE, Director’s office, etc.).

  3. Yes, Malcolm – but note the key word: Substantive, which rules out your bogus views (just like your claims that I have 1ied personally about you, and yet you have failed to ever present an actual 1ie. Sure you attempted some obfuscations, but I shredded those – check the archives).

  4. I did not say ‘was,” I said “might.”

    If it is a process allowed to be patented under the (current this Earth) law, then the “might” applies.

    You may have some real advance there in the configuration that allows super wuick and efficient processing. In that case, yes – very much you could be guilty of infringement.

    Why does this seem like a difficult concept for you, Malcolm?

  5. Take special note of that last sentence in the quoted section of MPEP 1214.04. Any office action that reopens prosecution after a full reversal of the Examiner requires that the TC Director actually sign the office action.

  6. Then neither the examiner, nor the SPE followed proper procedure. MPEP 1214.04, “If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC Director’s approval is placed on the action reopening prosecution.”

    In my TC, the policy is very clear, NO reopening after a reversal without Director approval.

  7. The director’s approval?

    Are you sure, AE?

    I have seen several reopenings after reversal because the examiner obtained their SPE’s approval after completing a post-appeal-decision new search, ‘just to update.’

  8. Like anything else that is novel, non-obivous and useful**, there just might be a patent on it.

    Like using a computer to extract data from the PTO’s database? Using the computer to take that data and make a table with the data so it’s easier to interpret the data?

    That’s patented? LOL. Come and get me.

  9. “Just like your past claim to have extensively discussed a particular case and my showing that to be a pure fabrication.”

    Dude I discussed it with IE, at his insistence. I’m sorry if you can’t find it. It literally went on for pages and pages. Tbh, I would be surprised if you weren’t all up in the thread yourself.

  10. Interesting point there AE,

    And does tedn to mirror the carpet bombing patent eveything as long as there is no resistance approach of Microsoft. I have noticed that they tend to use patents as strictly a numbers game (portfolio stuffing).

  11. Nah, you’re right, I’m kidding

    LOL – translation: B U S T E D

    Just like your past claim to have extensively discussed a particular case and my showing that to be a pure fabrication.

    Seems to be a habit with you, 6.

  12. An examiner that isn’t properly construing my claims in the first place isn’t likely to going to get better

    Maybe.

    And maybe after talking with the examiner, and seeing where his resistance is coming from and addressing that may change his position from that of his first one.

    And then again, maybe not. Prime example here confirming your view being 6 and his pathological clenching of his anti-software patent lemming-like ways.

  13. All options need to be considered, and appealing everything simply is not a universal answer
    I agree. However, I treat it as the default answer.

    An examiner that isn’t properly construing my claims in the first place isn’t likely to going to get better if I go the RCE and Amendment route.

  14. If an examiner is reversed they have to get Director’s approval to do anything but allow the case. Hence the large number of patents following straight reversals.

  15. Definitely shows the completely different strategies used by the various companies, i.e. IBM appeals early and often, whereas Microsoft works with examiners and rarely appeals.

  16. Nah, you’re right, I’m kidding (though I did leak that memo/blog post before it went public). But be honest, what did you take away from the piece that Gene did on the higher ups looking through the “quality” of rejections in the biz methods and finding nothing amiss? Obviously, over there, the higher ups see quality being equal roughly to: reject. I’ll be totally honest with you, I was kind of surprised to hear them saying that.

    I’ll tell you something sad anon, even though davi k was somewhat of a dunce when it comes to patents, he at least wrote a good director’s blog. Now that he’s gone the assistant director just kind of flubs it.

  17. It was a very simplistic 103 to be clear. But yeah I definitely provided some explanation, just enough to say “use this part to connect these other two parts”, I wasn’t doing anything flashy or complex, just putting a connection portion between two parts to connect them, and even had explicit motivation in the reference. Though, the applicant also argued, and which I agreed with him on, it was difficult to see how the reference was achieving it’s stated goal of using that part. Frankly to this day I question how the art meant to achieve the goal it stated. But, it’ll nearly all be 100% moot anyway since he didn’t split the dep off and his ind is likely going to be allowed.

    I agree with you about not having to puzzle through a bunch of different interpretations, that wasn’t really this case though. Hey:

    link to youtube.com

    you ready?

    /dance

  18. I was just poking some fun at the card man, NWPA’s twin brother.

    You (and he) do have a valid point in that the statistics are not what they appear to be in part because it is the Office that controls what gets through, and what gets kicked back to the examiners without ‘counting’ in the Appeals stats.

    You would think that with such control, that the appeals stats would be much higher in favor of the Office – especially given the internal conflict of interest of an Article I court having as its ‘boss’ the same ‘boss’ as the examiners, and the Article I court so tightly entwined with the promotion of Office policy. Wait, we are seeing this very problem emerging in the post-AIA cases…

  19. You might lump them together by workgroup – most/all of the TCs are arranged this way now, where several art units examine the same or closely related art, and that collection of art units is a workgroup. They arrange it that way mainly for management purposes.

    For the most part, all art units in a workgroup will have the same three digits the same.

    One caveat, TC 2600 restructured recently – they used to have really big single art units per art area, and have switched to the workgroup-style structure, so you would need to find out all of the correspondences between the old numbers and the new numbers for this to work.

  20. the fallacy of APPEAL EVERYTHING (TM) is well illustrated

    Not sure what that means? Regardless, those number don’t include the large percentage of appeals that never make it to the PTAB. I always say that my best arguments never see the light of day because the application is allowed or the Examiner reopens.

  21. Come back after you’ve actually read the briefs MM.

    Until then, your words are mere conjecture and supposition.

    Two things you’ve shown repeatedly to us all for far too many years you’re, sadly, quite the master of.

  22. I see 6. You just said rejected based on this reference. I am not sure what would happen. I think you would probably just have to evaluate what is in front of the applicant for the rejection. I would assume that the applicant would have to read the art cited by you so I suppose it is possible that the art itself contained the arguments. Frankly, I am not sure what the standard is. But, given KSR, I think you would have to at least give a good reason to combine which would mean that you would have to have some explanation of the art.

    I am pretty sure, though, that there are a couple of cases that say that he applicant should not have to puzzle through all the different possible interpretations.

  23. Nah, it was a chemical synsthesis thing in the Star Trek replicator and the singular vat of all elements that now becomes 102 for all chemical combinations.

    (hey, don’t get mad at me – this is 6′s doing)

  24. had you actually read the briefs (which makes clear the applicant is pro se), you’d have known all this.

    What does the applicant’s pro se status have to do with anything?

    given cases including Beckman Instruments, Inc. v LKB Produkter AB, Motorola, Inc. v. Interdigital Tech Corp, In re Payne, In re Kumar; as provided in the rehearing request at “V.”; that finding was in error … since (alleged) prior art incapable of enabling a claim … cannot render that claim obvious.

    Not sure what you’re responding to here. The claims the Federal Circuit found obvious are obvious: dead. Unless Mr. Pro Se is going to appeal to the Supreme Court.

    prior art incapable of enabling a claim … cannot render that claim obvious

    Did the Federal Circuit find that the prior art was “incapable of enabling” any of the claims?

    Remind me again what the “art” is that is recited in the claims and how difficult it would be to “enable” the simplest embodiment falling with the scope of the claims. Then remind me what is in the applicant’s specification that accounts for his claims being enabled for the full scope while the prior art existing the day before the application was filed is so void of “enabling” teaching.

    I seem to recall this was some computer-implemented functionality that was being claimed. Now you’re making me think it was about a chemical synthesis method for an unexpectedly powerful and efficient, structurally defined rocket fuel composition.

  25. LOL

    That should be easy enough for you to prove, 6.

    But in this reality, there is no such second memo.

    Thanks for playing.

  26. Or would someone try to prevent me from doing that?

    That depends. Like anything else that is novel, non-obivous and useful**, there just might be a patent on it.

    **and the rest of patent law being met

  27. and then runs away

    LOL – It’s opposite day for MaxDrei, who has proven that he does not want anyone challenging his soapboxing.

    When was the last substantive thing that I ran away from MaxDrei? Please, entertain us.

    That you pick out Ned and Malcolm is beyond irony. They are the other members of the little circle club who CRP and run away.

    The amount I ‘yap’ is directly related to the amount of CRP you shovel.

    Don’t like it? Don’t shovel CRP.

    It really is as easy as that.

  28. “Are there any claims pending that the PTO has indicated are allowed as they stand?”

    You betcha. A fair number allowed by the examiner; and some more via the board.

    “Since the date of that thread, the Federal Circuit upheld all of the claims which the PTO rejected as obvious.”

    And; given cases including Beckman Instruments, Inc. v LKB Produkter AB, Motorola, Inc. v. Interdigital Tech Corp, In re Payne, In re Kumar; as provided in the rehearing request at “V.”; that finding was in error … since (alleged) prior art incapable of enabling a claim … cannot render that claim obvious.

    To say nothing about the multiple other basis he supplied for non-obviousness.

    Of course, had you actually read the briefs (which makes clear the applicant is pro se), you’d have known all this.

  29. Ah yes, the Latchways case. Thanks for that LBZ.

    I was aware that there is no explicit prohibition on minority views within an EPO Panel. It would be surprising if there were. I had supposed that such minority opinions never rise to the level of what one might dignify with the appellation “Dissent Judgment”.

    You say that reasoned dissents laid open on the public part of the EPO file occur “rarely”. Do you know of any EPO file at all, apart from the difficult and expensive Latchways case from 1992, where I can read such a dissent?

    As to Latchways, I see that the Applicant subsequently got his EPO search report, at which point he abandoned the application without even paying the exam fee!

  30. Whom do you think leaked that particular memo anon? Whom do you also think it was that has read the followo on memo that said “The previous memo forgot to mention that the previous memo only applies to arts in the useful arts, and that quality in other arts which are outside the useful arts, such as e-commerce, does in fact equal reject.”?

    Because I have both memos right here.

  31. Hey LBZ, that is a great Link. Many thanks for that. I see that, in aggregate, only 57% of ED refusal decisions get confirmed in DG3. What is more, the data is for decisions handed down in calendar 2012, so it is bang up to date data.

    But Readers, do bear in mind that at the EPO Applicants in receipt of a reasoned Decision to Refuse very often mull it over and end up agreeing to prosecute their appeals with amended claims, that are rather more pragmatic than those refused by the Examiners.

    In fact, I stand by my assessment that, if you can’t get particular claims past the Examiners, the prospects of getting them past an EPO Board of Appeal are slim indeed.

  32. I just forgot to add that I agree with your assessment that having a three men division instead of a single examiner is a failsafe mechanism that ensures that decisions are, if not of better quality, at least more consistent with each other.

  33. Although all three examiners sign the decision, they may do so declaring that they disagree and issue a dissenting opinion; in practice however this occurs rarely, even if the decision was not really unanimous.

    As for the Boards, there is nothing in the EPC that prevents them from issuing a dissenting opinion together with a decision, the most egregious example of that being G3/92.

  34. Based on 2012 data, the ratio of the Boards of Appeal is: 57% dismissed, 23% order to grant, and 20% remittal for further prosecution. The numbers vary however quite significantly from Board to Board and consequently, from one technical field to another.

    Source: link to k-slaw.blogspot.nl

  35. you are assuming that the 200 have been completed

    Right. Maybe J N Gross will let us know the name of the Examiner he’s referring to so we can get a better sense of what is going on. That would be greatly appreciated.

    Or I could throw some change at Chris Holt et al. and get the information that way.

    Or I could just gather the information myself, maybe with the help of a computer that I’ve programmed to make the collection and analysis of the public data proceed more quickly and efficiently. Or would someone try to prevent me from doing that?

  36. Too many cases to mess around with the ones that have been to appeal is the “justification” for this.

    That’s unfortunate.

  37. you could use your “simple math” to show that my statement is false

    LOL – it is false.

    Your turn.

    As far as the prejudice thing goes, well, you are the one that brought the kerosene to your bed, so that’s a ‘you’ problem.

  38. the many worthwhile claims already “approved”

    Are there any claims pending that the PTO has indicated are allowed as they stand?

    you (MM) apparently overlooked .

    Since the date of that thread, the Federal Circuit upheld all of the claims which the PTO rejected as obvious. That’s what I meant by “more dead”.

    Furthermore, it’s not over yet: Watch for that which is yet to come.

    That sounds exciting! I wonder if the applicant or his counsel reads this blog. You know, so that if some commenter presents a non-cumulative argument for invalidity or ineligibility of a pending claim then he/she would need to disclose it to the PTO.

  39. keeping quality high over there by any means necessary

    LOL – 6, you missed the memo: “quality does not equal reject”

  40. “Does anyone know the stats for what happens after a reversal? Are reversed cases typically allowed, or does the examiner just cite new art?

    Back in the day an examiner could reopen. Nowadays though unless it’s a slam dunk rejection being proposed the higher ups don’t want to deal with the case any more because we have so many to deal with already. Likewise, requests for rehearing are not to be done as specified in MPEP procedure. Too many cases to mess around with the ones that have been to appeal is the “justification” for this.

  41. one of my Examiners has allowed less than 10 cases out of 200 in the past 5 years, and more than half of those were only because he was reversed on appeal.

    So out of 200 cases, this Examiner allowed approximately 3, only 10 of the rejected cases were even appealed, and he was upheld on roughly half of that handful of appeals? Sounds like he’s due for a serious promotion.

    I still got a bunch of good claims (see for example 10/771,094).

    I don’t see a Notice of Allowance in PAIR. Which claims do you think are “good”? What’s the name of your content-providing business? I might switch from my current provider if you provide better rates and fewer ads.

  42. Does anyone know the stats for what happens after a reversal? Are reversed cases typically allowed, or does the examiner just cite new art?

  43. “Of the 11, 9 were in my favor in that 6 were complete reversals, and 3 were a split decision (affirmed in part) although I still got a bunch of good claims”

    Well what would you like us to say? Sometimes the office forgets to properly use 101.

    “According to Chris Holt’s site (Patentcore) one of my Examiners has allowed less than 10 cases out of 200 in the past 5 years, and more than half of those were only because he was reversed on appeal.”

    Well at least they’re keeping quality high over there by any means necessary. Looks like another 5% and he’d be at 100% quality. But 95% isn’t bad, all said. Who knows? Some of those applications may not really be “e-commerce” and might be directed to the useful arts.

    “It is not properly reviewing actual final Office action “decisions,” but, rather, whatever new concoction the Examiner decides to float in the Appeal Answer. ”

    They have a really bad habit of doing that and similar things. They also have a habit of making up a completely new rejection that the examiner never even put on the record for them to review. Them finding a new grounds of rejection to make is one thing, but completely ignoring the examiner’s rejection in the course of their “review”, supposedly of the office’s action of making a rejection on those grounds, is inexcusable.

    I really do thing that a mandatory checklist should be provided to the board to fill out for every appeal and the first thing on the list should be:

    1. Did you review the grounds of rejection on the record? Yes/No, circle one.

    ^that would prevent a huge number of reversals. And perhaps if they made it even more stringent:

    1. Did you review the grounds of rejection on the record and put forward in the final action? Yes/No, please circle one.

    ^That would address your concerns and my own.

  44. “… application (09/832,440) that was proferred on that thread as an example of “poor examination” is now more dead than it ever was.”

    As even a cursory review of each sides’ briefs clearly demonstrate, had the Fed Cir panel done no more than merely follow their very own factual, legal, and procedural precedent and jurisprudence, the appellant would have easily prevailed on all the contested claims.

    Which in any case says nothing of the many worthwhile claims already “approved” that you (MM) apparently overlooked … rendering your mischaracterization of it’s death far from accurate.

    Furthermore, it’s not over yet:

    Watch for that which is yet to come.

  45. You are forgetting your simple math

    On the contrary, it seems that you forgot “your simple math.” If you had remembered your “simple math”, you could use your “simple math” to show that my statement is false rather than simply engage in your usual behavior of insult-slinging and changing the subject.

    Maybe you should accuse me of being prejudiced against blacks based on some comment I allegedly made that you refuse to identify for everyone? Isn’t that your preferred method of “argument” these days?

  46. Thanks for that BJ but it is not as gloomy as you suppose. Here’s why.

    The Examiners decide in accordance with their “bible”, the EPO’s MPEP, namely “The Guidelines”. But it is the Boards that make the law that goes into The Guidelines. Good attorneys know which way the wind is blowing at Board of Appeal level and so, in an appeal case, know which recent Board decisions (not yet in The Guidelines) to base themselves on, to win the Appeal.

    So, no automaticity. Take each case on its merits. Some refusals are eminently reversible. But not many, I grant you.

  47. Just occasionally, anon sees fit to alert us by prefacing his remark with a note that what will follow is, exceptionally, not snark.

    So, readers, (including NWPA), you can take it that, if that prefaratory note is absent, what anon writes will be in his piss poor default snide/snark mode, as immediately above, and therefore appropriate simply to ignore.

    By entering into any discussion with him (Malcolm, Ned) you give him what he craves. He is a yapping dog that nips you on the ankle and then runs away. Paying attention to the whelp only increases the amount he yaps.

    anon, I suggest you make a fresh start, but under a different pseudonym.

  48. So you think then that they’d appeal this explicitly procedural matter?

    To be clear, his argument wasn’t that they weren’t coherent enough for him to respond to, as they were quite coherent and when contacted he did not seem at all to be asserting a lack of coherency. His argument was that they wasn’t sufficient explanation. And when we discussed it on the phone it appeared that he understood the grounds quite well, when I noted explicitly just what had been said without much, if really any, further explanation. Whether or not he subjectively felt they were explained well enough for him to respond to is another matter. One which happens to be irrelvant. But in any event, I do agree that such would be a valid argument before the board, if he were inclined to ever make such an argument. Until that time, I don’t really think we need discuss it.

    As an aside I also don’t think it would be all that humiliating to lose on that argument. Whether or not a board panel is ta rded enough to not understand a very simple and straightforward rejection is entirely up to them. After having seen some of their past misteps I place very little confidence in their not being that ta rded, especially if I draw a panel of softiwaftie non-useful arts guys or bio gentlemen.

    “I have not made that argument at the board, but I spoken to people that said they did and won. Although, I have never seen a board decision to that effect.”

    Very interesting. Still, I don’t see how this purely and explicitly, procedural matter is a matter for the board rather than a petition. It almost makes me think that you’re not understanding what his argument was. A lack of coherency of an explanation may well be a substantive matter, a procedural lack of sufficient explanation to put them on notice of what the grounds of rejection are at all seems a matter of procedure. They’re two different matters. Perhaps we are talking about entirely different things.

  49. I agree. If you appeal the EPO, you lose. It might as well be automatic. However, it always seems as though the EPO examiners are much more reasonable about claim terms, reading a WHOLE prior art reference, etc. You’re much less likely to have to appeal to be heard.

  50. It would also be interesting to see this broken down roughly by art unit.

    I’ve had roughly 12 appeals pending since 2007 or thereabouts in the system on e-commerce stuff, and I’ve now received decisions on 11 of them in the past year. Of the 11, 9 were in my favor in that 6 were complete reversals, and 3 were a split decision (affirmed in part) although I still got a bunch of good claims (see for example 10/771,094).

    I suspect I’ve fared better than most, but it’s a bittersweet victory after more than 10 years of pendency. According to Chris Holt’s site (Patentcore) one of my Examiners has allowed less than 10 cases out of 200 in the past 5 years, and more than half of those were only because he was reversed on appeal.

    Of the two remaining I plan to appeal to the CAFC on the basis that the Board is, once again, exceeding its jurisdiction. It is not properly reviewing actual final Office action “decisions,” but, rather, whatever new concoction the Examiner decides to float in the Appeal Answer. I’m optimistic on these two as well and will keep you posted.

  51. Probably he would have argued exactly what he said in his response to the board. That your arguments weren’t coherent enough to respond to and thus cannot be a prima facia case of obviousness. That is a valid argument before the board. (And, it would be humiliating for you to lose at the board faced with that argument.)

    I have not made that argument at the board, but I spoken to people that said they did and won. Although, I have never seen a board decision to that effect.

  52. In fact, the number of patent grants continues to grow at unprecedented levels.

    You are forgetting your simple math (yet again) Malcolm.

    Feel like actually commenting on the actual history of the Reject-Reject-Reject era?

  53. Yeah for sure, if there is an appeal you really really really want to win there isn’t much excuse for not making such an airtight case and holding the board’s hand through everything so precisely you’re all but assured to win.

    I’ll tell you something that I really appreciated that I saw for the first time the other day NWPA. I finally got someone arguing explicitly, in response to an office action, that I hadn’t procedurally made out a prima facie case due to lack of what they felt was sufficient explanation. (an argument I seem to recall that I myself advocated for in pioneering fashion on these very boards) In other words, they felt like my explanation was too simplistic to adequately put them on notice of the grounds of rejection. I’m curious though whether or not if they wanted to have my decision reviewed if I mainted the same grounds of rejection whether they would appeal or petition. In the instant case under discussion, we talked on the phone regarding that matter and others and I think I got him all straightened out. In that case there wasn’t really any more explanation to be given, the rejection that I was making was as simple as what I’d literally put down and no more. But I would have liked to have seen what route they went down for review. Any thoughts?

  54. One thing that it may have done is encourage prosecutors to quit pursuing their broadest claims which resulted in examiners allowing applications faster.

    Or not. See, e.g., 09/832,440.

    My point about the soaring grants is that KSR didn’t “change things a lot”, neither from the perspective of the metrics Dennis cited nor from the perspective of patent grants.

    It’s one of the “oddities” about the state of the system. In the run-up (at least) to both the KSR and Bilski and Prometheus decisions, the “unfavorable” holdings were decried by the usual patent bulls as horrifically consequential. In fact, the number of patent grants continues to grow at unprecedented levels.

    Is the reason for this that applicants are purusing narrower claims? Let’s take a look at what’s in today’s Official Gazette.

    [ten seconds later]

    Here’s what appears to be a broadening reissue of pure j*nk: RE44,477

    1. An interactive method for substituting replacement radio commercials in place of a plurality of broadcast radio commercial streams on an Internet radio program broadcast by a radio station to an Internet hosting service based on user preferences indicating demographic, and personal preferences, comprising the steps of:

    You can imagine the steps. Anybody can. That’s because they are laughably obvious (in spite of the fact that the patent claims priority back to 1999, before the “invention” of commercials or targetting people with them). The reissue appears to have removed a limitation regarding using “a processor” to perform one of the steps.

    For whatever reason, I couldn’t access the list of links to granted patents it the general/mechanical or electrical fields (only the list of links to chemical patents showed up). I’m sure there is much more where RE44,477 came from.

  55. Dennis,

    A breakdown by art unit would be very interesting to me. Of course, the granularity wouldn’t be perfect, but it would be a useful reference.

    Regardless, thank you very much for the above data.

  56. Or if they mean a lot to them. I wrote a couple of appeals for a giant corporation for products that they wanted the patents for. I think it was like a $20-$30K appeal brief with lots of 131 stuff.

  57. KSR opinion CAUSED the number of granted patents to soar???

    One thing that it may have done is encourage prosecutors to quit pursuing their broadest claims which resulted in examiners allowing applications faster.

  58. KSR changed things a lot

    If by “changing things a lot” you mean “caused the number of granted patents to soar”, then you might be right about those big changes.

    Here’s a “classic” thread on the subject (warning: this was near the peak of the S*ckpuppetry Years, where “anon” would converse with his alter egos):

    link to patentlyo.com

    One amusing follow-up: the j*nk computer-implemented application (09/832,440) that was proferred on that thread as an example of “poor examination” is now more dead than it ever was.

  59. On the other hand, Black and Decker only filed 40 some appeals. If you pick only the cases you’re most likely to win on to appeal then surely your percentage would go up.

  60. Good points all.

    Not all appeals start from the same place. Some clients will appeal at the drop of the hat … other won’t. Some clients have a generous budget for appeal. Others want you to appeal on a shoestring budget. Some companies have good attorneys; others, well …

  61. art unit and tech center, while the first is probably too granular even the second may be overly broad — particularly in TC3600.

  62. This feels a little bit like mixing apples and oranges, since KSR changed things a lot.
    Hardly.

    For FY 2013, the numbers are 53.9% (affirmed), 29.1% (reversed), 13.8% (AIP), and 3.2% (other). Barely different from the composite numbers above.

    The effect of KSR on prosecution was overblown (thankfully). The USPTO paid lip service to the TSM test prior to KSR, so it didn’t change things when they could “officially” do the same.

    While KSR may have had some impact, it was a small impact.

  63. It’s an interesting table, but I would think that the success rates would vary with the average quality of their applications (including adequate support for adding needed claim limitations), the unreasonableness or severity of the examiners in a typically assigned examining group for some, the applicant’s demands for claim breadth, and the cost-effective selectivity of what to appeal or not, as much as the skill of the appealing patent attorneys? Most of these factors can be affected both by how much clients are willing to pay [less, it seems now in many cases] and how much supervision they are willing to provide.

  64. Thanks. At the EPO, no case is ever allowed or refused till all three members of the Examining Division have appended their rspective signatures to the substantive reasons for the collective Decision. There are no Dissents.

    In such a system, a maverick Examiner cannot sustain his unreasonable or indefensible position.

    It is expensive in Examiner time but saves on appeal-writing time.

    The 3-member Examining Division is a system that was in from the start of the EPO in 1978, only because the tyro Examiners were coming in to Munich from all over Europe, all inculcated already with different ideas how to decide on patentability. The EPO, starting with zero filings and called upon to compete for business with national Patent Offices, needed a consistent service to its user community.

  65. My rather limited experience with appealing at the EPO is that you lose. And, that the only way to win at the EPO is convince the examining division that you are right. I think, though, that the examining division at the EPO is much more reasonable than at the PTO. If I have a good argument, it will not be ignored out right at the EPO, but at the PTO very good arguments are often just dismissed out of hand. The examiners don’t seem to have the time to understand what you are talking about at the PTO.

  66. Disagree with your conjecture?

    LOL, with absolutely no actual knowledge of the European appeal data, smart money would take that bet based only on your history, MaxDrei.

  67. At the EPO, pre-issue, on ex Parte appeal from a refusal by the (3 member)Examining Division, I would hazard a guess that the corresponding figure is 10/75/15%. That is, the likelihood of a reversal is very small. Once you get refused by the Examining Division, the game’s up. Your only chance would then be to change to a better European patent attorney.

    But I’m curious. Would be interested to learn if anybody here disagrees with that.

  68. Dennis, can you provide a timeframe for the data? Does this chart include ALL decisions for these assignees?

  69. I think I won (total reversal) about 80% of the cases I appealed for them. But, I am sure my percentage would have been lower had they let me appeal all the cases I wanted to appeal.

  70. I used to write appeals for one of the ones in the chart with a very high percentage. They were very picky about which cases we appealed. In other words, the percentage is probably so high because they only let us appeal the really clear errors by the examiners.

  71. Litigation experience is counterproductive to prosecution in my experience. Most litigators struggle with broadest unreasonable interpretation and its application; they’re more likely to appeal when they should be amending to better define.

  72. Well worth appealing if it is medical device technology. The stats show it well.

    Why? Perhaps because Examiners in those arts are too harsh. Not hard to assert that any alleged invention there is no more than commonsense.

    Or perhaps because Applicants in those arts are represented by litigation-seasoned attorneys who are better able to secure what they want from the Board? Incidentally, SAP seems to have such attorneys, BellSouth not.

  73. Dennis,

    This is very interesting, thanks. Any chance you could provide us similar data (or any statistics) for pre-appeal brief requests for review. I haven’t any statistics on the program in several years and many attorneys think it’s become less effective .

  74. This feels a little bit like mixing apples and oranges, since KSR changed things a lot. What do these numbers look like when you limit the data to, say, 2008-2013?

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