Off-the-Record Examination: Is Conventional Wisdom Wrong?

By Dennis Crouch

Interview summaries. In a recent post, Professor Chao discussed the common practice of examiner interviews where the patent attorney discusses outstanding issues with the patent examiner. No transcript or recording of the discussion is kept, although there is a requirement that a summary of the interview and its results be written and placed within the file history. Professor Chao argues that the summaries are insufficient because all-too-often, a seemingly valid rejection simply vanishes following an examiner interview. For evidence, Chao also cites discussions at a recent Stanford Law School conference “where two prominent professors separately complained about how opaque the interview process was.”

Although Chao’s proposal has significant practicality problems, I also had the same sense of the problem — that the interview summaries create opacity in a process where transparency should rule. However, since Chao’s essay was posted, I have followed up with two “reality checks” that have raised my optimism on interviews.

First the rule — MPEP §713.04 walks through a number of elements that are required as part of an interview summary. These requirements include a fairly detailed list:

The complete and proper recordation of the substance of any interview should include at least the following applicable items:

(A) a brief description of the nature of any exhibit shown or any demonstration conducted;

(B) identification of the claims discussed;

(C) identification of specific prior art discussed;

(D) identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the Interview Summary form completed by the examiner;

(E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;

(F) a general indication of any other pertinent matters discussed;

(G) if appropriate, the general results or outcome of the interview; and

(H) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form, PTOL-413, is entered.

The requirement is detailed, and the point is that interviews are not “off the record” even if not audio-recorded or transcribed. One problem with these requirements is that they lack an enforcement mechanism other than the examiner’s “careful review.” There is no direct way to challenge a patent issued because of an inadequate interview summary other than inequitable conduct — a defense that requires substantial proof of intent to commit fraud. Still, patent attorneys are bound by the ethics requirements to comply with the law in good faith and act with candor in all dealings with the USPTO — the result is that we should largely expect compliance with the required standards. Helping this along, the interview summary form now particularly asks applicants to describe the issues discussed, claims discussed, prior art discussed, and the interview substance.

Looking at the Interview Summaries: After reading through the rule, I then thumbed through a handful of interview summaries and have been happy to see that, in fact, the invention summaries are generally detailed pointing to the particular issues discussed and the resolution of those discussions. Now, the summaries are not as detailed as you might see in an office action rejection or subsequent response, but they do provide substantial context, meaning, and understanding.

To find these, I first downloaded the PAIR files for a random set of recently issued patents and then sorted them to find file histories where issuance/notice of allowance occurred fairly quickly following the interview since that represents the complained-of situation. The four below are simply the first for interview summaries that I looked-at:

Application No. 13/308105:

Attorney had proposed more restrictive claim language in accord with examiner’s determination of un-obvious claims over the prior art and also proposed withdrawn subject matter directed to encapsulated forms. Examiner to enter the amendment over currently pending claims with consideration to be given to a divisional for the encapsulated invention when presented. See examiner’s amendment for allowed claims of current case.

Application No. 12/875,772:

The examiner indicated amending the claims to more clearly identify “the first processor,” “the second processor”, and the “processing components” as depicted in figure 2 would overcome the prior art rejection in Key in view of Fukushima.

Application No. 13/117,944:

Prior art discussed: Bednar

Applicant called to discuss the invention and potential differences between the prior art and the disclosed invention. Applicant discussed a couple of amendments to the independent claim to attempt to overcome the current prior art. It was suggested to the Applicant to add a limitation to further define the spacer to be vibration dampening or made of a vibration dampening material in addition to the spacer extending past or beyond the cable slot toward the riser so that it is not only present in the cable slot and so it may support also add support the barrel. These limitations appear to be fully supported by the figures and do not appear to be present in the prior art reference as Bednar only shows the spacer/dampeners to be present in the cable slot portion of the barrel. These limitations will also require an updated search and therefore no determination of patentability has been made. When these amendments are filed the examiner will update the prior art search and reconsider the currently applied rejection.

Application No. 13/685,368

The examiner and applicant’s representative discussed a set of proposed Examiner’s amendments to place the application in condition for allowance. The amendments set forth clarity, proper antecedent basis, and suitable claim structure to overcome any issues with respect to 35 U.S.C. 101 and 112. The specifics of agreements reached are incorporated in the replacement listing of the allowed claims as set forth in the examiner’s amendment section of the attached notice of allowability. Consequently, the discussion and agreements reached resulted in the allowance of the instant application.

To my eyes, these interview summaries do a very good job of providing information to the world regarding the issued discussed, the conclusion drawn, and the reasoning for those conclusions. Of course, more detail is possible and may be preferable, but this small sample has gone a significant way toward changing my view of the off-the-record nature of examiner interviews.

81 thoughts on “Off-the-Record Examination: Is Conventional Wisdom Wrong?

  1. OT, but on the record,

    link to c-span.org

    C-Span has the audio of the Alice oral arguments, and after listening to the tone and tenor of the voices, I am even more convinced that Alice prevails.

    Perry too clever by half – he should have checked as to what was stipulated below as he banked a major part of his argument on something he had already gave up below.

    1. Anon, the Supreme Court’s got a problem and it was illustrated by the exchange between Ginsburg and Verrilli where Verrilli defined “abstract” to be anything that is not an advancement in science, technology, or the industrial Arts, and the riposte by Phillips that what the government essentially wants is to overturn Bilski by re-defining “abstract idea” to be the same thing as “useful Arts.”

      Recall Judge Moore’s dissenting opinion below, where she said,

      “The claimed data processing system at issue here does not incorporate a machine into the claim in a manner that would constitute insignificant pre- or post-solution activity. These claims are to a system of tangible machine components with limited specialized functions programmed consistent with detailed algorithms disclosed in the patent. How can this system, with its first party device, data storage unit, second party device, computer, and communications controller, be an “abstract idea”? Although these claims could certainly be challenged under § 102 or § 103 or even § 112, no contortion of the term “abstract idea” can morph this physical system into an abstract idea.” CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1314 (Fed. Cir. 2013).

      I note the relative silence in the or argument of Roberts, Scalia, Alito and of course Thomas. I don’t think these Justices have changed their mind about Bilski. Kennedy seemed to be on the fence. Justices Breyer, Ginsburg, Kagan and Sotomayor seem to be favorably disposed to the government position.

      This looks to be a close case, but I think given the way Kennedy was closely questioning Carter Phillips that he will now side with the “conservatives,” Breyer, Ginsburg Kagan and Sotomayor to confine patentable subject matter to its traditional subject matter. Oddly, this will effectively overrule Bilski, just as the Justice Department seems to advocate.

      1. See my detailed breakdown on the Justices after the publication of the oral argument transcript.

        (Hint: Sotomayor is not on the side that you think that she is).

        I do not see Kennedy switching sides. He was closely questioning all parties and not just Philips.

        Further, listening to the actual voices makes me lessen the detriment of Philips’s delivery and to augment the detriment of Perry’s delivery. As I noted, Perry was too clever by half – giving up too much and staking an argument that was in substantial part negated by the stipulations already made by the parties. He may have thought himself ‘dazzling’ in the spotlight, but the distinct impression I was left with was one a used car salesman – eloquent, but without content.

        1. anon, I had the same impression about Phillips and his inability to answer the questions of the court. He never seems to focus in on the claimed invention. It went something like this:

          Question: What the invention? The business method or the computer?

          Answer: No answer — just a lot of words that skirt the issue.

          His strongest point was to rely on Bilski saying that what the government was trying to do was to overturn it.

          There is no doubt that they are.

          1. Also check out his last say at the end of the transcript.

            There is nothing left of the Perry/Verrulli stand when you consider all that they have relinquished and all that was stipulated by both parties on the record prior to the oral arguments.

          2. Ned,

            Your view on the following…? :

            link to yahoo.com

            This is exactly the type of patent eligible subject matter that Perry sacrificed and put on the record in the Alice case. This admission by Perry is on the record. Period. Perry’s admission that this exact type of thing being patent eligible is an admission against interests and is not something the Court should feel free to ignore.

            1. anon, the Google algorithm is clearly eligible if claim as a process from reading the garbled script to outputting a decoded script.

              I think Verrilli would agree as well.

              But that does not mean that Perry is going to lose. It simply means that if he is going to win, the Supreme Court will have to tell us why the one is eligible and the other not. That is hard to do without essentially adopting the government position.

            2. Check again your position on the algorithm – this is something that is currently done completely in the mind of a person.

              In fact, the intent of the CAPTCHAs is to delineate between a machine and a person.

              I cannot fathom how you think Perry’s admissions against interests – especially given the additional fact pattern of exactly what was stipulated by both parties prior to the oral argument lead you to believe that Perry will prevail. Any decision by the Court will not come from Perry’s efforts but in all objective measures come (if at all) despite Perry’s far-too-slick blunders.

            3. anon, as I said, I think CLS Bank prevails if Kennedy joins the “conservatives” (the Stevens wing) and essentially puts a useful arts capper on eligible subject matter.

              I think Thomas, Alito, Roberts and Scalia will vote to preserve Bilski by saying that using a computer is sufficient.

              This is close, if I am right. If not, it will be 9-0 as everyone will adopt the governments position, which will be essentially a cave to Stevens.

            4. This is close, if I am right. If not, it will be 9-0 as everyone will adopt the governments position, which will be essentially a cave to Stevens.

              Cannot see that happening.

              At all – a surefire constitutional crises would be invoked.

  2. Also OT, but nonetheless indicative of Big Corp:

    link to finance.yahoo.com

    Because “data wants to be freeee!” (except this free is conveniently defined as free ability tot do whatever by Big Corp because you the consumer wanted to exercise your freeeee!

  3. OT, but yet another nod to the data just wants to be freeee! storyline:

    (and this one has an interesting – albeit unstated – link to the Nuitjen case)

    link to news.yahoo.com

    also, pay attention to the ‘policy’ line of “we don’t like it – never mind that we have no law and no facts.”

  4. Dennis, in an earlier post, you raised the question of whether institution decisions that deny institution of an IPR on 315(b) grounds are appealable at all given 314(d) that states that decisions under 314(a) are not subject to appeal.

    In St. Jude Medical v. Volcano Corp., No. 2014-1183, the PTO has apparently moved to dismiss an appeal by St Jude Medical of a denial of institution decision based on 315(b) grounds, citing 314(d) and (a). See, Hunton & Williams April Client alert, “Are the Board’s Institution Decisions on § 315 Eligibility for Inter Partes Review Appealable?” link to google.com

    Could you possibly look into the status of that motion and perhaps post links to the briefs of the parties?

    The Federal Circuit does not appear yet to have decided the motion.

    1. Also, Dennis, while congress and the courts struggle with the issues involved in severing and staying retailers from manufacturers, the PTO has taken a position that complicates the matter just a bit. (The PTO position has yet to receive Federal Circuit sanction.) The PTO position is that a suit against a manufacturer that is old enough to bar an IPR, does not bar an IPR by its reseller/distributors. This of course will force prudent patent owners to sue such retailers/distributors preferentially because the obligation to indemnify, if accompanied by a right of control, is recognized as 315(b) privity by the Board such that the case against the reseller/distribute will bar a later IPR by the manufacturer.

      The Board’s approach seems at odds with good public policy.

  5. Methinks that that MPEP requirement, which is binding ONLY on examiners, should be made into a rule.

  6. Reminds of my time prosecuting when I would interview the examiner, ask to see a draft of the interview form, correct it (literally), examiner would change it per my edits. Meanwhile, I had the office action and claims on my laptop, would edit right there, ask Examiner to print the response out, I would sign it, and say I am filing it today. This let the Examiner know that the he could issue the notice of allowance right away and move the case out.
    The neutered file history would show a vague/non-transparent interview summary, an office action response that showed little, and hence no transparency.

  7. Even if this would really make a difference in patent litigation[?], I would tend to agree with those suggesting that there will be some examiners [as well as some practitioners] who would be opposed to recording interviews. If they were recorded, they may be inhibited in asking questions about things they find confusing or troubling that could otherwise lead to beneficial amendments. [Even though examiners normally cannot be called as a witness in litigation on a patent.]
    P.S. If an examiner was really bamboozled in an interview to allow unpatentable claims, we now have IPRs as a partial remedy.

    1. “We now have IPRs as a partial remedy.”

      ?

      I think the Board actually looks at whether the same issue was before a prior examiner and decided.

  8. Just so we can all keep our eyes on the ball here as the dust gets kicked up: the folks who are objecting most loudly to the recording of Interviews are the same folks who are constantly telling us that “better examination” is the only answer to improving the patent system.

    But look at what happens when we try to put a clear light on the weakest point in the chain?

    In the earlier thread we were told by a practitioner (and we have no reason to believe this person was joking or abnormal in anyway) that if the Interviews were recorded, applicants would lost the ability to have a “frank” discussion with the Examiner about the claims. Try to wrap your ahead that one. Another practioner said the “Examiner’s Union” would never let it happen. What?

    There’s obviously something going on here. And yet, based on four (?!?!?) samples pulled “randomly”, Dennis seems to be suggesting that there’s “nothing to see here.” Really? Seems to me that there’s a lot to see. Or more accurately: a lot to listen to. Oh but wait: if we start recording Interviews between patent applicants and government representatives — much loved by applicants everywhere — then suddenly nobody will want to have them anymore. And that will be The Worst Thing Ever because …. why?

    Maybe some genius can explain why many people seem to believe that recording Interviews that are relied on to obtain patents is The Worst Thing Ever that will ruin Interviews totally.

    It’s also worth keeping in mind, of course, that we aren’t talking about people applying for an entitlement like food stamps or welfare (entitlements to scrap by in an existence that very few people choose for themselves) but an entitlement that (potentially) gives you the right to sue other people, ruin their lives, and make a fortune (and you never need to do a darn thing except write some claims).

    1. Just so we can all keep our eyes on the ball here as the dust gets kicked up

      LOL – from the biggest dust-kicker of them all.

      Way too sad.

      Interviews are hardly the weakest point in the chain.

      Nothing need change except execution by those whom focus already should be on (hint: do the Fn job).

      Your QQing certainly is not helping, given how you oddly want to see the complimentary aspect of ALL interactions including examiner-spe and examiner-“quality control” be on the record as some sort of anti-on the record position.

      You are oblivious to real world affects. Why not eliminate ALL such ‘clandestine’ conversations throughout law? Eliminate the attorney-client confidentiality privilege. Why not? According to you excessively narrow reasoning, such a privilege can only be used to hide things and there can be no ‘reasonable’ policy for wanting any sense of ‘security’ or ‘openness’ that should not be on the record anyway, right?

      Lastly, your sense of “entitlement program” evidences your h@tred of the system and a fundamental lack of appreciation of Quid Pro Quo.

      But that is already abundantly on the record, right?

    2. Tell us all again (or for the first time) why during the Disqus era you chose to have the highest level of secrecy concerning your posts?

      Tell us all again how you think that intellectual honesty is not required – even by lawyers advocating on this social media vehicle – because this is merely a blog and not a court?

      You know what is on the record? Your duplicity and hypocrisy.

      1. Tell us all again how you think that intellectual honesty is not required

        Tell us again how you stopped beating your wife.

        Or maybe just get your meds adjusted.

  9. I’m trying not to laugh here.

    Dennis Crouch: The requirement is detailed, and the point is that interviews are not “off the record” even if not audio-recorded or transcribed. One problem with these requirements is that they lack an enforcement mechanism other than the examiner’s “careful review.”

    Thanks, Dennis. We all know about “the requirement.” And we all know about the problem.

    Dennis looks at four random cases. Here’s one of those four examples Dennis provides to show everyone that the summaries he looked at are “generally detailed” (what?) and “point to the particular issues discussed” and their resolution:

    The examiner and applicant’s representative discussed a set of proposed Examiner’s amendments to place the application in condition for allowance. The amendments set forth clarity, proper antecedent basis, and suitable claim structure to overcome any issues with respect to 35 U.S.C. 101 and 112. The specifics of agreements reached are incorporated in the replacement listing of the allowed claims as set forth in the examiner’s amendment section of the attached notice of allowability. Consequently, the discussion and agreements reached resulted in the allowance of the instant application.

    This is boilerplate, Dennis. Nobody can even be certain what art unit this is, although we could all take a guess, I suppose. Maybe this is some sort of late April Fool’s joke?

    Here’s another:

    Attorney had proposed more restrictive claim language in accord with examiner’s determination of un-obvious claims over the prior art and also proposed withdrawn subject matter directed to encapsulated forms. Examiner to enter the amendment over currently pending claims

    Worthless b.s. that adds nothing to the file history that wouldn’t be evident from the mere entry of the amendment. Where is the support for this amendment in the specification? Why did the Examiner determine that this particular amendment was non-obvious? Who proposed the amendment – the Examiner or the applicant? Did the applicant initially refuse to enter the amendment until convinced by the Examiner that anything broader was obvious? What was the argument?

    That’s two out of those four examples that are pretty jacked up. So we’re up to 50%. Yes, this is “an admittedly small sample.” Shall we look at another?

    The examiner indicated amending the claims to more clearly identify “the first processor,” “the second processor”, and the “processing components” as depicted in figure 2 would overcome the prior art rejection in Key in view of Fukushima.

    Again: why? “The Examiner said the sky is green and the applicant could claim the universe”. Um…. okay. But why? Apparently the applicant wanted to Interview the case because there were prior art problems. With or without this summary we could all see the rejection and the claim amendments and write the summary ourselves. What happened in the Interview? What was the point of the Interview if the Examiner had already indicated the amendment that needed to be made and the applicant was willing to make the amendment? If the applicant was not willing to make the amendment prior to the Interview but changes his/her mind, why did that happen?

    These Interview summaries are not supposed to be mere descriptions of the amendments that were made and the rejections that were withdrawn just prior to Allowance. What would be the point of that?

    The Interview summaries need to explain in detail why the rejections were withdrawn. “The Examiner was convinced to allow the claims” or “the applicant agreed to amend the claims” is not an “explanation.” It’s just a summary of what everyone can see from looking at the file history.

    So we’re looking at 75% of the Interview summaries looking like complete b.s. worthless garbage, at least from the perspective of anyone trying to figure out what happened at the Interview.

    more detail is possible and may be preferable

    Understatement of the year, so far anyway.

    Chao’s proposal has significant practicality problems,

    Please identify them.

    1. Maybe you should actually read the posts made Malcolm, instead of hunting for sound bytes you can bring with you when you step up on your soapbox.

    2. So what if it is “boilerplate”? Boilerplate language serve a purpose–to document mundane matter. Most interviews are pretty mundane. In my opinion, prolixity (like the length of your post) is more of a problem in patent prosecution. I prefer pith.

  10. Dennis, thanks for your follow up. I have a few thoughts. First, the basis for my post is admittedly anecdotal. As a former litigator, I found interview summaries to be frustratingly short. Although this view is shared by many other litigators and academics, I wonder if the patent office is doing a better job now. Maybe, that is informing your findings?
    Second, training can certainly teach examiners to create a better record. But I still don’t think that is as good as recording. Off the record, many prosecutors readily admit that they are NOT seeking clarity for their clients. They want claims that give their clients flexibility. Although that may be good for their clients, that is not in the interest of the public.
    P.S. For the crazy commentators. I was primarily a patent litigator. I did run a company’s patent program for a couple years. I wrote opinions, negotiated and drafted patent licenses too. Overall, I practiced 20 years before joining the academy. No, google nor any other company fund me — just the university.

    1. Why don’t you stick to making suggestions for what you know, Professor? “Crazy commentators… .” Please. Read the Washington Post article on Google’s lobbying efforts. That is but a mere tip of the iceberg. Please. Moreover, how could you take such an attitude when one of your great leaders Lemley regularly takes big money from corporations?

      Ask yourself if your own efforts are being guided by the flow of money. Look at the judicial history of anti-trust, employment etc. All have been guided by big corporate money over the last 50 years. No academic should deny that. Certainly some of the best law professors in the country that taught me held that view.

      Moreover, you say you are a litigator and license negotiator. Great. Why didn’t you mention that in litigation there is an acknowledgement of the value of NOT recording conversations. There are many, many examples of this. For example, in custody cases some states have conflict resolution meetings lead by a judicial person. Nothing said in the conferences may ever be referred to in court. Great value to letting people speak openingly and then later having to put everything on the record. As a real world example, I often spend an hour explaining the prior art and invention to the examiner. I don’t think the examiner would be so willing to admit their ignorance if they were being recorded.

      What we crazy commentators see is a giant horde of academics coming up with the solution of the day to “fix” the PTO when they have never even practiced before the PTO. Never conducted an interview. Never argued before the board. Never written a patent application. Never worked with inventors. Etc. And more often then not, don’t even have a science background so often produce absurd arguments regarding the actual invention.

      Your voices are drowning out the voices that need to be listened to. Why don’t you try to actually listen to the people that have spent many years being real practicing registered patent attorneys.

      1. “What we crazy commentators see is a giant horde of academics coming up with the solution of the day to ‘fix’ the PTO when they have never even practiced before the PTO. Never conducted an interview. Never argued before the board. Never written a patent application. Never worked with inventors. Etc. And more often then not, don’t even have a science background so often produce absurd arguments regarding the actual invention.”

        Agreed. I doubt Mark Lemley, Arti Rai, Vivien Chen, et al. would be proposing any of the nonsense they are proposing if they spent a year or two doing prep and pros day in and day out.

        1. Quick question, and a serious one at that. If you guys, or the bar as a whole, are so concerned about these folks who are out there not doing prosecution work and having to deal with that headache, why not float a job opportunity to them doing just that? Then a year from now they’ll have that exp and either not make their proposals or propose something else.

          1. “…why not float a job opportunity to them doing just that?”

            Lulz. Because they don’t want to do it.

            Remember Prof. Arti Rai? Go read her entirely silly article “Who’s afraid of the APA” (95 Geo. L.J. 269) and then try to convince yourself that she’s knows her elbow from a hole in the ground about what actually goes on during prosecution of a patent application. It’s simply inconceivable to conclude, after reading her nonsense, that she’s ever even seen a patent application, let alone written and/or prosecuted one.

            She worked at the PTO. Remember that little 9 month lark of hers? In a completely useless “policy” position. She ran screaming from the building back to her ivory tower. So in a job with zero production requirement, zero billable hour requirement, and pretty much with nothing to do but opine once in a while, she lasted 9 months. You think she could actually last a year in a prep and pros practice? I’d give her til lunch. Of her first day. Maybe.

    2. And just to be clear: the professor that taught me antitrust law told me how corrupt the system was. The professor that taught me banking law told me that most of the senators on the banking committee belong in prison and gave us specific examples of how regulators were corrupted by being rewarded with big jobs after getting the regulation the banks wanted enacted.

      So, please. Those of us that have worked within the beltway know what it is like.

    3. And the sad thing is that the way to improve the PTO is simple. Move it so examiners can live off their wage. Own a house. Raise kids. Spend the time and money to educate the examiners. And maybe the biggest problem is learning how to route the patent applications to the right examiner so the examiners can build more specialized knowledge.

      The average examiner should have an MS in their field at least. The core of examination is the examiners. Sheeesh.

      Or how about another idea of the day from a professor without a science background who couldn’t write a patent if their life depending on it.

    4. Hmmm,

      Admittedly anecdotal and ‘feelings’ without considering side effects…

      Off the record, many prosecutors readily admit that they are NOT seeking clarity for their clients.

      More anecdote and feelings?

      Do you recognize what you are saying? Having flexibility is NOT the same thing as saying that you desire a lack of clarity. Flexibility comes from well drafted claim sets and a proper application of the ladders of abstraction.

      Your view of flexibility and your admitted litigation only genesis shows that you should not be teaching, much less advocating on this material. You do not understand what you are talking about. You should include at least some minimal drafting experience before you expound upon how drafting is carried out.

    5. If you want a paper to write, here’s one: do a study of the Office Actions that an examiner writes and see how related they are. The less related they are the more problems there is.

      1. NWPA – can you explain this a bit more. Are you saying to look at the relatedness of office actions within a particular case/family? And, if the second OA raises completely different grounds for rejection then there is a problem with the examination? (Assuming no significant amendments to the claims).

        1. What I mean is to look at the technology that the examiner is given. There is a big problem in that examiners are given applications in all sorts of different areas. The examiners need to be experts in small areas with SPEs acting as bridges. That is the way it is supposed to be structured.

          Actually, you response made me think of a way to do this. Look at the references cited in the office actions by the examiner. The more references (and different classifications of the references) likely means that the examiner is getting applications from too many different technology areas.

          Sorry really busy at work. That needs editing.

          What you wrote may be a way to judge the quality of the examiner’s rejections. What I am saying is finding out a way to determine whether or not the applications being assigned to the examiner cover too many technology areas. My guess is the biggest problem at the PTO is that the applications are not assigned well. A very good examiner that I have spoken with many times and is a SPE said something to the effect that if the applications are assigned properly and the examiner knows his job, then there are really only a couple dozen references the examiner really needs to know to do 90 percent of their work.

          And speaking with many examiners confirms this.

          1. “There is a big problem in that examiners are given applications in all sorts of different areas. ”

            I happen to agree, but the management doesn’t want examiners to overspecialize. They see the generalization as a feature of the current docketing distribution of cases, not a problem.

            But frankly even if I were stuck in the sub-sub-field of my art that is the most time consuming of all of them that we work on I could still breeze through cases so much more if I were given cases explicitly from there. And, allowing more specialization like that allows for more tailoring of BD’s. The addition of the new classification scheme should help in breaking those sorts of things down.

            1. but the management doesn’t want

              LOL – pretty quick of you to accept “what management doesn’t (or does) want” when it is convenient for you 6.

              I wonder if you spent as much time here as actually championing something within your ranks just how far you would make it.

              My guess if the march does not include lemming hill, you would find a way to shirk the call.

            2. “LOL – pretty quick of you to accept “what management doesn’t (or does) want” when it is convenient for you 6.”

              Alright anon you want to talk about me for a second, I’m game I suppose. I’m not sure how you’d like for me to “not accept” which cases are allotted to me anon. Perhaps you can share how you propose for me to “rebel” against my being given cases outside of a narrow little sub-field? Do you just want me to “champion” this? If so, be sure that you’ve chosen wisely because I can only champion a few things at a time.

              “I wonder if you spent as much time here as actually championing something within your ranks just how far you would make it.”

              Trust me, I champion a lot of things within my ranks. Too much probably. Like, a sht ton compared to most ordinary examiners. But docketing practices are pretty far down my give a dam list. Just because NWPA thinks it is A BIG PROBLEM (the sky is falling!) doesn’t mean I think it is. I think it is just one more area amongst many thousands for improvement.

              You’d actually be surprised at how much progress I make on a lot of things I champion anon. You might remember a time when we pretty much had no intranet here at the PTO. You might not know the architect that was on that project before the professional web architects. You might remember a time before the pre-first action interview pilot was around. You might remember a time when the after final consideration pilot didn’t exist. If you worked here you’d remember a time when there was a huge problem with EAST. If you were an actual attorney then you would remember a time when many juniors I’ve had a hand in training were sending you sht for actions and are now worlds better. You might know right now that there are substantial real steps we can take to increase quality and verify those steps were taken. If you worked here you’d remember a time when a lot of things that I (and others many times) have pressed for things that ultimately impacted you or examination.

              Yet you sit on here and btch and moan about me and those same people usually every month, though less this month than normal. I guess you’re becoming marginally more self-aware as the years press onward.

            3. You are still delusional in your hissy fit 6.

              And yes, you too are a legend in your own mind. Given your ‘legal’ reasoning (or more precisely, the consistent lack thereof) on these boards, you “championing” anything of import is really highly doubtful.

            4. anon, 6 seems to be a great examiner. Lot’s of good ideas, and initiative. He is really interested in his job and in the law. I hope he goes far in the PTO.

              He and RandomGuy both seem to get it in terms of the fundamentals. It is you and guys like Night your fellow travelers that insist on the things that clearly are not true – as in a CRM is a new article, or that a programmed computer is a new machine.

              To follow your logic is to engage in double-think, where one really believes he sees five fingers when four are held up.

            5. LOL – youare doing that “He-must-be-genius-he-agrees-with-me” thing again.

              6’s understanding of the law would fit in a nano-thimble.

            6. “You are still delusional in your hissy fit 6.

              And yes, you too are a legend in your own mind. Given your ‘legal’ reasoning (or more precisely, the consistent lack thereof) on these boards, you “championing” anything of import is really highly doubtful.”

              I expect no better of an analysis from you anon. Since it has been discovered that you’re a psychopath that is.

            7. LOL – oh, how very Malcolm of you 6.

              Problem is, your own delusional and projecting habits simply eliminate any veracity in your attempted rantings.

              I do hope you seek out appropriate medical help and get well soon.

            8. “Problem is, your own delusional and projecting habits simply eliminate any veracity in your attempted rantings.”

              Being contemptuous of those that attempt to understand you is not making people think you’re less of a psychopath anon. It’s one of the symptoms.

            9. You assume a symptom not present, as clearly you have no desire to understand.

              Further, any contempt I have for you is fully earned – and is most definitely not related to even your view of your own attempt to understand.

              Or perhaps you missed the bevy of posts blasting your nano-thimble understanding of law…?

              It more than appears that any “non-understanding” is merely yet another symptom of yours: projections.

              Have you talked with your doctor about these conditions of yours yet?

      2. As I have posted elsewhere – one can lay this problem directly at the feet of the Supreme Court (specifically the KSR decision), and the unintended consequence of super-powering the double-edged sword of PHOSITA.

        Enabling laziness of looking beyond “of the art to which the invention pertains” and opening up the world of prior art that can be used for obviousness rejections is clearly implicated in what we see happening during patent prosecution.

        We reap what the Court has sown. Do not blame the scriviners for playing by the rules put in place by the Royal Nine.

    6. …or maybe touch base with Hal Wegner and find out why the Executive Branch is still operating ‘off the record’ as far as who really is in control of the Patent Office (with no Senate-vetted actual head of the agency) and continued behind-closed-doors Large Corp influence peddling.

      1. Only crazy commentators would think that having a shadow director of the PTO might mean that businesses have an undue influence. And only crazy commentators would be concerned that the new director met with a group of business people in the Oval Office prior to be hired by Obama.

        I mean really. There is no corruption or political influence in DC. It is a government by the people, for the people and all that.

      2. anon, could it possibly be because they wanted Michelle Lee as Director, but she refused to go through confirmation?

        1. Such – even as conjecture – seems highly doubtful and would not excuse the responsibility for dutifully filling the vacancy (which per Hal Wegner is not beyond problematic even for the reputable Miss Lee) by the leader of the Executive Branch (and didn’t that same person run on a platform of ‘visibility?’).

    7. So here’s what I find interesting. Bernard and Dennis both looked at small subsets — as, quite frankly, have most of us. Dennis’ subset was random and Bernard’s (and mine) involved litigated patents. They produced very different results.

      What if both are correct? I.e., the average, randomly chosen interview record is reasonably detailed and transparent, but the average interview record in a litigated patent is anything but? Would that tell us anything?

      I think this may be one more data point suggesting that the worst patents appear most likely to be litigated. And if that is the case, continued attempts to improve the prosecution of the average patent are unlikely to provide benefit commensurate with the effort involved. Rather, our focus should be on fixing the outliers.

    8. Bernard,

      As one who has done patent prosecution now for almost 37 years, you’re wasting electronic ink to think a patent examiner (or their union) will ever agree to what you propose. Frankly, it’s often the patent prosecutor who wants a more complete record in terms of what was agreed to (if anything) during the interview. Having an examiner renege on what was agreed to at the interview does sometimes happen, and if you’ve got no written record of it, it’s difficult to hold that examiner’s “feet to the fire,” as well as explain to your client how the “deal” you told them about vanished.

      My late father (also patent prosecutor and patent interference specialist) told me the story of having an interview with an examiner that was attended by the client (fortunately). Later the examiner reneged on the deal that was struck. If my father’s client hadn’t been there at the interview, and seen the examiner do a “180 turn” right before his eyes, my father would’ve had some explaining to do to the client.

      1. Frankly, it’s often the patent prosecutor who wants a more complete record in terms of what was agreed to (if anything) during the interview.

        That seems like an easy problem to address, Eric.

        Having an examiner renege on what was agreed to at the interview does sometimes happen, and if you’ve got no written record of it, it’s difficult to hold that examiner’s “feet to the fire,”

        If the Examiner made a mistake and “reneges” on a deal that was predicated on that mistake, it shouldn’t matter what you do to the Examiner’s feet. Examiners aren’t obligated to “stand by their word” when their word was premised on bad law or non-existent facts. Let me know if you need me to explain why that’s the case.

        1. “Let me know if you need me to explain why that’s the case.”

          No need to explain, Malcolm, you’re obviously clueless. Once more, what you think, believe, or say doesn’t count for squat with me and many others who comment on this blog. Over and out again.

            1. Yes – it is amazing how he fails to see an easy way of depriving me of much of my fun. All that he would need to do is post his views in an intellectually honest manner, much fun would be lost.

              Of course, ripping him apart on the merits would still be available.

    9. Prof. Chao, I think the patent office has recognized that the interview summaries need to be fleshed out and thus amended the MPEP sections that Prof. Crouch noted in his update. As a result, the examiners now know what to put in the interview summaries and that is why they are getting better.

      I wonder what would happen if the rules were amended to allow applicants, at their option and at their discretion, to record interviews so that they, if they wished, could make the recording of record particularly if there was an issue about whether the examiner agreed to a particular position or not. As many have noted here, the problem seems to be that the patent office does not want the interviews recorded for number of reasons. In addition to the language problem many examiners have, I think the real reason they do not want interviews recorded is because they do not want any commitment by the examiner on anything to be binding on the office.

      1. Ned,

        No rules need to be amended to allow applicants to tape interviews.

        I know of several places where such taping is standard practice. The mere taping of an interview does not implicate the fear you touch on: “not want any commitment by the examiner on anything to be binding on the office” given the rule that I have already posted that all official business of the Office is conducted in writing.

        Once again, when one clears away the dust that gets kicked up, the underlying emphasis should be on simply doing the Fn job. And yet, so many people try so hard to divert the focus onto other things.

  11. “in fact, the invention summaries are generally detailed pointing to the particular issues discussed and the resolution of those discussions. Now, the summaries are not as detailed as you might see in an office action rejection or subsequent response, but they do provide substantial context, meaning, and understanding.”

    I don’t see the problem — I always make a good record

  12. Yeah D, the problem arises in the self-selecting nature of cases that will later end up being asserted by folks. When you’ve got something clear on the record the chances you can responsibly move forward with enforcement decrease. When the reasons for allowance are not so clear, and the claims themselves are not so clear, the ability of folks to enforce goes up.

    That said, of course it is the case that the PTO does a pretty good job in the majority of cases regarding interviews. Nobody cares about the majority of cases for precisely that and other reasons.

    1. When the reasons for allowance are not so clear, and the claims themselves are not so clear, the ability of folks to enforce goes up.
      You really don’t understand the process goes into determining what patents/claims to assert. What is stated (or not) in an Examiner’s interview is an extremely small part of the process.

      BTW — from experience, I don’t know of any Examiner who will accept an applicant’s disavowal of patent scope during an interview. Everyone I have talked to wants a claim amendment. In fact, that is the first thing that usually comes out of their mouth — “what amendment do you have?”

      1. “What is stated (or not) in an Examiner’s interview is an extremely small part of the process.”

        I agree. It’s a very small part of the process.

        “I don’t know of any Examiner who will accept an applicant’s disavowal of patent scope during an interview”

        Yeah this appears to be a much more old school way of doing things.

      2. I don’t know of any Examiner who will accept an applicant’s disavowal of patent scope during an interview. Everyone I have talked to wants a claim amendment. In fact, that is the first thing that usually comes out of their mouth — “what amendment do you have?”

        How very true, ON!

    2. 6 – I agree that there may be some bias in the selection of cases for enforcement. I’ll see if I can run this same type of scenario on patents being asserted. DC

  13. Dear Malcolm:

    Fifth (polite) request: Please be a dear and kindly point out exactly where I can find Prof. Crouch advocating for the taping of interviews.

    The point about whether or not Prof. Crouch would agree now is not the point of the comment. Clearly, you made (another) assertion that seems you have pulled out of your arse.

    Kindly do better than “recall” and provide the link to this item that you ‘recall’ so that everyone can see the veracity of your claim.

    That is a much better idea.

    1. Tr0llb0y, we all know you’re a psychotic fruitcake but try to take a deep breath and digest this:

      DC: I also had the same sense of the problem — that the interview summaries create opacity in a process where transparency should rule.

      You see that? Suffice it to say that “I knew Dennis felt this way.” That’s what I remembered. Note that I didn’t accuse Dennis of arguing that the USPTO was a “gestapo regime” (that would be you who made that comparison). And I didn’t accuse Dennis of recommending that firms use their mailroom staff to screen registered letters to attorneys and discard letters containing prior art so the attorneys don’t see them (again — that’s your suggestion). All I said that was Dennis understood that there were good reasons for recording Interviews and (to the best of my memory) had articulated such an understanding.

      Now go ahead and try to pretend that whatever I said is equivalent to some nutjob fantasy about me that exists only in your pathetic peabrain.

      1. Suffice it to say that

        LOL – no Malcolm, that will not suffice.

        What part of “The point about whether or not Prof. Crouch would agree now is not the point of the comment. Clearly, you made (another) assertion that seems you have pulled out of your arse.” did you not understand?

          1. Your move, Dennis.

            LOL – love the attempt at a Crybaby Veto Malcolm.

            What’s the matter, you want to not be held accountable for what you blather (again)?

            Aren’t you the same guy who is always screaming for “proof”? and yet you cannot be bothered to provide a little veracity for what you chose to put “on the record.”?

            Why don’t you just admit when you pull something out of your arse, instead of piling it higher and deeper?

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