By Dennis Crouch
This is a continuation of an analysis of ex parte appeal decision outcomes at the US Patent Office (USPTO). The focus of this post is on individual art-unit groups within the USPTO and decisions by the Board of Patent Appeals and Interferences (BPAI, now renamed PTAB). The chart may provide helpful information to both patent applicants and examiners considering whether to appeal. The set-up in these ex parte is always the same – the patent applicant is appealing an examiner's final rejection. Thus, a reversal means that the patent applicant wins on all counts and, in most cases, a patent issues soon thereafter. Under the MPEP, "[t]he examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references." A new rejection following reversal requires approval from one of the Technology Center (TC) directors. Cases that are affirmed-in-part result in some claims being allowed. And an affirmance sustains all of the examiner's rejections. Now, to be clear, a Board affirmance does not mean that all of the claims in the patent are rejected since some of the claims may have been previously allowed and the applicant only appealed the rejected claims.
The chart includes particular information on what happens following affirmance of an examiner rejection. In patent prosecution the patent applicant can keep prosecution going indefinitely through the amendment / RCE process. The setback of an appeal-affirmance is no different. Following affirmance, the patent applicant can amend claims, file a request for continued examination (RCE) and keep going. It appears that a substantial number of patent applicants who want to continue prosecution prefer at that point to instead file a continuation application – beginning the process somewhat afresh and potentially with a new examiner. To highlight these options, I included information on the percent of applications where the case was abandoned following affirmance and also where the case was abandoned following affirmance without the continued prosecution of a child (continuation) application.
To create the chart below, I first generated a database of all ex parte decisions by the Board of Patent Appeals & Interferences (BPAI) decided between January of 2005 and August of 2011. I used these cutoff dates because accurate data from decisions prior to 2005 is more difficult to obtain and I wanted to allow some time following the decision to 2011 cutoff date to trace the eventual outcome. The August 2011 cutoff allows for two-years of post-decision outcome tracing. I then took a random sample of about half of those Board decisions and obtained the electronic filewrappers from the USPTO's PAIR database associated with the underlying applications. The filewrapper allowed me to identify the art unit associated with the case; whether the application has been abandoned, patented, or is still pending; and whether any continuation applications have been filed that claim priority to the original application.
The chart below is grouped by Art-Unit Group that includes up-to-ten art units and roughly follows mid-level grouping done at the USPTO. Thus, Art-Unit Group 1610 includes all art units ranging from 1610-1619. More information on these art units and technology centers is available here: http://www.uspto.gov/about/contacts/phone_directory/pat_tech/. The chart then includes the number of Board decisions included in the sample, the percentage of those decisions that are reversed, affirmed-in-part, and affirmed; the percentage of affirmed cases that were then abandoned following affirmance; and finally the percentage of affirmed cases that were then abandoned following affirmance without a child-application that is either still live or patented.
Some notes: The Art Unit Groups with the highest affirmance rates are now defunct (2840 and 1750). The lowest affirmance rates are in Art Unit Groups 3650 (Material and Article Handling), 3630 (computerized vehicle controls), and 2480 (Video Compression/Recording).
|
Art Unit Group |
Decisions in Sample |
Affirmed |
Affirmed-in-Part |
Reversed |
Abandoned following Affirmance |
Abandoned Without Child Following Affirmance |
|
1610 |
300 |
57% |
7% |
35% |
90% |
58% |
|
1620 |
166 |
58% |
11% |
29% |
79% |
58% |
|
1630 |
182 |
45% |
13% |
41% |
83% |
63% |
|
1640 |
176 |
57% |
9% |
34% |
87% |
59% |
|
1650 |
123 |
63% |
12% |
25% |
87% |
52% |
|
1710 |
157 |
51% |
10% |
38% |
83% |
58% |
|
1720 |
116 |
52% |
11% |
37% |
77% |
57% |
|
1730 |
111 |
63% |
8% |
29% |
80% |
59% |
|
1740 |
96 |
61% |
6% |
30% |
90% |
66% |
|
1750 |
28 |
79% |
7% |
14% |
82% |
50% |
|
1760 |
200 |
70% |
8% |
22% |
78% |
48% |
|
1770 |
116 |
61% |
8% |
31% |
85% |
61% |
|
1780 |
221 |
60% |
10% |
29% |
83% |
52% |
|
1790 |
1050 |
66% |
10% |
23% |
87% |
57% |
|
2110 |
112 |
64% |
13% |
22% |
74% |
58% |
|
2120 |
78 |
64% |
13% |
22% |
78% |
66% |
|
2130 |
25 |
44% |
24% |
32% |
64% |
55% |
|
2140 |
38 |
66% |
16% |
18% |
76% |
76% |
|
2150 |
86 |
56% |
16% |
27% |
58% |
48% |
|
2160 |
285 |
54% |
13% |
33% |
69% |
57% |
|
2170 |
270 |
56% |
16% |
27% |
77% |
60% |
|
2180 |
148 |
61% |
13% |
25% |
67% |
57% |
|
2190 |
90 |
57% |
14% |
27% |
76% |
69% |
|
2420 |
65 |
58% |
11% |
31% |
63% |
50% |
|
2430 |
132 |
64% |
14% |
18% |
71% |
53% |
|
2440 |
173 |
52% |
14% |
32% |
57% |
44% |
|
2450 |
145 |
55% |
20% |
24% |
66% |
55% |
|
2460 |
26 |
65% |
4% |
31% |
71% |
65% |
|
2470 |
31 |
58% |
13% |
29% |
56% |
50% |
|
2480 |
18 |
33% |
22% |
44% |
50% |
17% |
|
2490 |
15 |
67% |
13% |
20% |
80% |
40% |
|
2610 |
291 |
53% |
14% |
32% |
76% |
59% |
|
2620 |
351 |
52% |
16% |
32% |
81% |
65% |
|
2810 |
163 |
57% |
10% |
32% |
69% |
56% |
|
2820 |
86 |
64% |
13% |
23% |
76% |
51% |
|
2830 |
185 |
65% |
11% |
22% |
73% |
56% |
|
2840 |
20 |
80% |
15% |
5% |
88% |
88% |
|
2850 |
113 |
63% |
13% |
24% |
79% |
68% |
|
2860 |
18 |
67% |
11% |
22% |
75% |
33% |
|
2870 |
105 |
66% |
13% |
20% |
74% |
57% |
|
2880 |
76 |
57% |
17% |
26% |
77% |
63% |
|
2890 |
53 |
55% |
9% |
36% |
79% |
62% |
|
3610 |
93 |
52% |
18% |
29% |
75% |
54% |
|
3620 |
343 |
54% |
13% |
32% |
81% |
58% |
|
3630 |
167 |
32% |
25% |
43% |
79% |
66% |
|
3640 |
113 |
42% |
25% |
34% |
81% |
66% |
|
3650 |
162 |
31% |
29% |
40% |
76% |
54% |
|
3660 |
73 |
49% |
18% |
33% |
92% |
64% |
|
3670 |
148 |
43% |
20% |
36% |
79% |
57% |
|
3680 |
207 |
43% |
17% |
38% |
77% |
54% |
|
3690 |
113 |
58% |
15% |
27% |
62% |
45% |
|
3710 |
146 |
53% |
20% |
27% |
82% |
61% |
|
3720 |
274 |
42% |
21% |
36% |
85% |
59% |
|
3730 |
194 |
46% |
18% |
36% |
81% |
52% |
|
3740 |
198 |
34% |
20% |
43% |
75% |
54% |
|
3750 |
87 |
40% |
16% |
43% |
86% |
66% |
|
3760 |
250 |
45% |
18% |
36% |
82% |
41% |
|
3770 |
114 |
38% |
21% |
39% |
81% |
53% |
|
3780 |
74 |
54% |
19% |
27% |
85% |
60% |
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RoA,
You have never been involved in one of these, have you?
Your numbers (or lack thereof) are a bit squishy. Yes it is expensive to appeal to the Federal Circuit, but it is still a real possibility for many, which I’m sure the judges are aware of. The other party to the proceeding (such as it – perhaps it is better to say “adverse brief filers”) have no appeal rights and thus will not appeal regardless of USPTO “resources” you mention.
LOL – How passe’ Didn’t Malcolm get the GAO memo that references to “trolling” are out of vogue?
Besides, the translation from Malcolm is that the only thing worse than a patent right is anyone attempting to enforce that right.
That’s what Jane says, anyway.
(psst, Malcolm – you are still invited to get into a line of work that has a work-product you can believe in).
And do let everyone know how “hard” it is to buy an optical scanner, when you finally figure that out
As contemplated by the inventor, the color bars are positioned on top of the vehicle –> “reference is now made to FIG. 3, which is an example of a cone-shaped surface 310, positioned on the roof of vehicle 110, which encodes information through a series of color stripes 320.” I would like to see you use your store bought optical scanner for that purpose. Oh … and even if you could scan it, you would need SOFTWARE to create something useful out of the data you received.
Ah yes. That’s called “patent tr0lling”.
Patent trolling, patent enforcement … only the meek really care about what it is called.
Of course this chart is particularly useful to those who have memorized art unit numbers and what art is involved. You think someone could translate the chart into English?
Did you have a point to make here, Malcolm? Do you remember that this is a patent blog?
BZZZZZZT – wrong Malcolm.
As usual with your vacuous spin attempt.
Bottom line still applies: do the job right the first time.
Translation: “Just give me more patents, all the time.”
why don’t you use the mechanisms provided by the Office for correcting the ‘horrors’ that seem to consume you
LOL. Great “argument”, TB! Deep stuff.
Why don’t you use the mechanisms provided by the Constitution to correct the “horrors” that seem to consume you?
Rhetorical question.
Hey MM, who do you think infringes that claim?
No idea. Guess we’ll find out when the tr0ll starts tr0llin’ with it.
I try not to be bombastic.
You should try harder to understand the difference between “hard to invent at one point in history” and “easy to purchase the old components.”
Me writing “I’m not a big fan of claim 1 …. way too many limitations” is about as harsh of criticism as I’ll publicly render against the work product of another attorney.
You’re so awesome.
You can prove “use” of the invention and go after the deep pockets based upon that. It won’t be a clean case to make, but it is doable.
Ah yes. That’s called “patent tr0lling”.
Keep up the learnin’.
And do let everyone know how “hard” it is to buy an optical scanner, when you finally figure that out.
Applicants are paying attorneys large sums of money to write an appeal brief
Some Applicants do. Many do not (and that includes many of the top appealing companies).
Given both sides ability to “cherry pick” the cases that get to the board, and all else being equal, Applicants should be getting reversals 50% of the time and Examiners being affirmed at least in part 50% of the time.
You forget that not all appeals that are written ever make it to the PTAB. The affirmance/reversal rates are for those appeals that the examiner feels comfortable taking to the PTAB.
whereas examiners are given 0.50 counts to write a response (roughly 2-8 hours depending on art and GS level
If you did a good examination in the first place and followed the rules by putting everything in the written record, then the response should be easy. All you need to do is to point to the written record.
If you say so, but I don’t understand the reluctance to condemn these claims for what they are.
I know this is an anonymous blog and certain posters don’t have a problem writing just about anything. However, I try not to be bombastic. Me writing “I’m not a big fan of claim 1 …. way too many limitations” is about as harsh of criticism as I’ll publicly render against the work product of another attorney.
While I know it is popular here, not everybody screams bloody murder to accompany every point they make.
… but it is doable.
If you say so, but I don’t understand the reluctance to condemn these claims for what they are. Some poor Schmuck paid for this crp. Disgraceful.
“should be getting reversals 50% of the time and Examiners being affirmed at least in part 50% of the time.”
Nope – that’s where you are wrong. Anything ‘close’ and the Office has the final say about kicking out (or not letting it into, to be more precise) of the Appeals system.
Sure, the applicant does have some control (the RCE option), but that is no saving grace for your position versus mine.
Bottom line still applies: do the job right the first time.
I’m not seeing the appalling part. You act as though it’s only the examiners that cherry pick cases that go to the board. Applicants also cherry pick cases in the form of filing an RCE instead of appealing.
The cases that get to the board are likely to be genuine disagreements about interpretation or what a reference teaches, with valid arguments on both sides. Given both sides ability to “cherry pick” the cases that get to the board, and all else being equal, Applicants should be getting reversals 50% of the time and Examiners being affirmed at least in part 50% of the time.
However, all else isn’t equal. Applicants are paying attorneys large sums of money to write an appeal brief, whereas examiners are given 0.50 counts to write a response (roughly 2-8 hours depending on art and GS level). Given the uneven amounts of money and time spent on appeals, Applicants should be getting vastly more reversals than they are.
Hey MM, who do you think infringes that claim?
You could argue other imbalances favor the agency, but the biggest imbalance favors the applicant.
Uh no. Most Applicants cannot spend the $$$$$$ it takes to take an appeal to the Federal Circuit. You can probably file 10 applications for the money it takes to go to the Federal Circuit (and that is a lowball estimate). On the other hand, the USPTO, to the extent that it has to go to Federal Circuit, has plenty of resources.
LOL
+1
Instead of whining here, why don’t you use the mechanisms provided by the Office for correcting the ‘horrors’ that seem to consume you?
Yes, it’s to remind everyone of the kind of j*nk that the PTO issues every week.
That would only work if you had a positive reputation in the community … you know, the kind of reputation you will NEVER have.
Malcolm’s mewling QQ serves no good.
Period.
I agree, the additional number is not as riveting, but it does reinforce at least the perception that the examination is not on point enough to dissuade the applicant from his continued efforts.
A solid examination should cause one of two things to happen in short order:
1) allow
2) abandon
That’s it.
There is nothing wrong with a solid rejection – it allows the client to make a decision with confidence.
There is everything wrong with a CRP rejection – the client, appraised that the rejection is CRP, will most likely want to continue prosecution (in any of the available paths of Appeal, RCE, Continuation of combination thereof.
As I have posted in the past, the fruits of the Reject-Reject-Reject era are shown in the mountains of backlog – and the proper way to eliminate this is to do the job right the first time through.
It’s really hard to do. Just like chopping up 100 pounds of carrots into really tiny bits is super hard … unless you have an old food processor.
I know you have a reputation to uphold … the lowest signal to noise ratio.
there is very little chance that he can enforce these claims
Not necessarily. You can prove “use” of the invention and go after the deep pockets based upon that. It won’t be a clean case to make, but it is doable.
I am not rude.
You are mistaken about that, as well as what you are attempting to portray as an asymmetry.
Being wrong is no reason to think that I am insulting you by merely pointing out that you are wrong.
You’re rude.
Fundamental notions of fairness include procedural due process protections, such as the right of appeal. One party going before a tribunal has the right of appeal, the other doesn’t. Yes, there are administrative reasons to justify it, but the imbalance is still there.
You could argue other imbalances favor the agency, but the biggest imbalance favors the applicant.
Even if the inventor’s technology is universally adopted, there is very little chance that he can enforce these claims.
What a relief, we can all go back to having stripes on our fast cars.
That being said, I try not to judge inventions.
I’m not judging the invention, I’m judging the claim. Even if the inventor’s technology is universally adopted, there is very little chance that he can enforce these claims. That’s not because they have “too many limitations” – it’s because they have too many of the wrong limitations. The inventor was r!pped off – that’s the disgraceful part.
Eh, that doesn’t do much for me. That an application includes some “arguably patentable material” doesn’t mean that the applicant did a very good job of claiming it.
Was there a purpose to your rant
Yes, it’s to remind everyone of the kind of j*nk that the PTO issues every week.
I’m not a big fan of claim 1 …. way too many limitations.
LOL. How about those color stripes though?
It’s really hard to do. Just like chopping up 100 pounds of carrots into really tiny bits is super hard … unless you have an old food processor.
ROTFLMAO
“There’s a huge asymmetry in procedural due process and it’s tilted in favor of the applicant.”
LOL – not sure you understand the concept you are trying to apply.
Not sure exactly what ‘easy to reverse’ means to you, either.
You (especially you) cannot fix what was not broken, 6.
Put.
The.
Shovel.
Down.
It gets worse.
Factor in the 1,662 cases that were abandoned, but with a child application first filed (granted a mixed message), and we are now at 63% of the cherry picked applications with some arguably patentable material.
These numbers seem about right. There’s a huge asymmetry in procedural due process and it’s tilted in favor of the applicant.
On one side, the applicant may appeal adverse decisions as a matter of right. On the other side, there are essentially no appeal rights. The tech. centers will typically not request reconsideration of adverse decisions period.
One would expect the USPTO to defer to its “intra” agency administrative tribunal. However, the concept of procedural fairness (right of appeal) is there for a reason – judges have told me it is just plain easier to reverse the examiner. These pressure points are there when a case is decided.
If you are going to be snarky, at least try to do it correctly. Applicants don’t “examine” patents.
Of course, as pointed out previously, many applicants (or the companies to which the applications are assigned) have different appeal philosophies. Some don’t appeal anything (no matter how bad). Others will appeal anything. Some clients have agents/attorneys that are experienced to spot Examiner BS, others are not so lucky. Some applicant prefer “clarifying amendments” instead of appealing. Also, you completely omitted the very large percentage of appeals that don’t make it to the PTAB because the Examiner reopened or allowed the application.
As such, your “1-2% of the patents examined” number is highly questionable.
Indeed. But how much of the 3 columns of description in this patent do you think are devoted to explaining how all that is done?
I said it was hard to do (in response to MM’s rant who thought that the technology was simple). However, the fact that it is hard to do doesn’t mean that many of these issues have already been addressed.
Regardless, how the computer recognized these doesn’t appear to be an important part of the invention.
This patent is disgraceful, in my humble opinion. But it’s not the examiner’s fault.
I’m not a big fan of claim 1 …. way too many limitations. That being said, I try not to judge inventions. What seems useless today may be the next big things 10 years from now.
… and your comment at 11:50 about ‘examiner fault’ which quite clearly shows that you are (once again) aiming at the wrong target.
Why is that, because nothing is ever the drafting agent’s fault? In the case that MM identified, the claims, which the examiner did not write, are atrocious, for reasons different than what MM is kvetching about. Do you disagree?
“Given that even entering the Appeal Process is somewhat controlled by the Applicants (since they can kick out the most egregious examples of applicant’s poor work), looking at the straight numbers reveals that at least some error of examination or prosecution by the applicant needed to be corrected in 4,005 of the 8,996 cases – or 45% of the (cherry picked) examiner work product (as judged by the super-examiners) or approximately 1-2% of the patents examined in a year, and which are the most contentious of the lot, requires at least some do-over.
That is absolutely an attestation to the work quality of the office being so record breakingly high.”
Fixed.
Your cheering on of Malcolm, above, and your comment at 11:50 about ‘examiner fault’ which quite clearly shows that you are (once again) aiming at the wrong target.
That is absolutely appalling.
I agree with you, especially when these statistics are coupled with the ballooning number of appeals. It would be different if most of these cases involved close questions on claim construction, indefiniteness, or the like. But the board tends to defer to the examiner on the borderline cases – these reversals are generally for gross errors that go through two or three layers of review.
(and of course Leopold has already shot an arrow into the ground at his feet above)
Now what are you talking about?
Given that even entering the Appeal Process is somewhat controlled by the Office (since they can kick out the most egregious examples of examiners’ poor work), looking at the straight numbers reveals that at least some error of examination needed to be corrected in 4,005 of the 8,996 cases – or 45% of the (cherry picked) examiner work product (as judged by the super-examiners) requires at least some do-over.
That is absolutely appalling.
(and of course Leopold has already shot an arrow into the ground at his feet above)
BTW … getting a computer to optically recognize anything is a fairly difficult endeavor. You have to potentially deal with different types of lighting, angle of work piece relative to lighting and camera, shadows, etc.
Indeed. But how much of the 3 columns of description in this patent do you think are devoted to explaining how all that is done?
This patent is disgraceful, in my humble opinion. But it’s not the examiner’s fault.
Ah yes. A “plurality of color stripes.” Because nobody could figure out how to get a computer to recognize and process color stripe data until very recently. It’s especially hard with orange for some reason. Computers just can’t stand orange! Why? It’s a real mystery.
God … another useless rant by MM. Was there a purpose to your rant besides taking up 1/2 of the viewable real estate in my browser?
BTW … getting a computer to optically recognize anything is a fairly difficult endeavor. You have to potentially deal with different types of lighting, angle of work piece relative to lighting and camera, shadows, etc.
Ouch. I assumed that this case was pro se. I was wrong.
Claim 1 recites the roads and a plurality of vehicles situated on those roads.
Nice.
Thanks Bob – I have fixed that error. I had transcribed the labels incorrectly.
“It appears that a substantial number of patent applicants who want to continue prosecution prefer at that point to instead file a continuation application – beginning the process somewhat afresh and potentially with a new examiner.”
Dennis, do you have data on this? In my experience, continuations are assigned to the same examiner.
Dennis:
The results don’t seem right (based upon the actual numbers). I believe you have the “Affirmed” and “Reversed” columns switched.
Reminds me: can any “insiders” explain to me why the Official Gazette doesn’t display an “index” (by class) of this week’s granted Electrical patents? This appears to be a recurring glitch.
The Mechanical and Chem patents indexes display correctly (i.e., they show up in the left column when the link to the desired index is clicked).
link to uspto.gov
The lowest reversal rates are in Art Unit Groups 3650 (Material and Article Handling), 3630 (computerized vehicle controls), and 2480 (Video Compression/Recording).
What exactly is covered by the 3650? Are those methods of stacking supermarket shelves and shipping objects to people?
As for 3630, well, there’s still much work to be done there.
Try to believe this incredible j*nk handed out to “Bruce Delean” (US8090489):
1. A transportation system, comprising:
a network of roads for traveling to and from various destinations;
a plurality of vehicles for transporting passengers, each vehicle situated within said network of roads, and each vehicle comprising:
a power supply;
a positioning system, for identifying the position of said vehicle;
a transmitter, coupled with said positioning system, for displaying position and velocity information of said vehicle on a display surface attached to the vehicle;
a receiver for scanning the displayed position and velocity information from other vehicles in the vicinity of said vehicle; and
an automatic steering system, coupled with said receiver, for steering said vehicle through the network of roads without collision, in order (i) to travel to a destination designated by the at least one passenger, when said vehicle is transporting the at least one passenger, (ii) to travel to a source for picking up the at least one passenger, when said vehicle is empty, and (iii) to travel to an available docking station, when said power supply is low; and
a plurality of docking stations, each docking station situated at a roadside of said network of roads, and each docking station comprising a charger for charging said power supply of a vehicle that is docked at the docking station;
wherein said displayed position and velocity information is encoded as a plurality of color stripes, and wherein said receiver comprises:
a scanner for scanning the plurality of color stripes; and
a decoder for decoding the plurality of color stripes into position and velocity information.
Ah yes. A “plurality of color stripes.” Because nobody could figure out how to get a computer to recognize and process color stripe data until very recently. It’s especially hard with orange for some reason. Computers just can’t stand orange! Why? It’s a real mystery.
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