USPTO RCE Backlog Coming Down

In its most recent annual report, the USPTO indicated that 560,000 non-provisional utility patent applications were filed during the fiscal year. (FY2013). The report fails to mention that 30% of those “new” filings were not actually new, but rather were merely Requests for Continued Examination (RCEs) filed by applicants in already pending cases. For many patent applicants, RCEs have become an expected element of the prosecution process in order to provide for a third-round of communication with the examiner.

Over the years, the USPTO has vacillated on its view of applicant Requests for Continued Examination (RCEs). In 2009, the office began a program to delay further consideration of RCE’d applications. That action resulted the rapid growth of a backlog of RCE filings awaiting examination. The USPTO is now addressing that backlog and appears to have it largely under control.

As part of its program to reduce RCE filing, the USPTO is pushing several of its initiatives including Quick Path Information Disclosure Statement (QPIDS) and After Final Consideration Pilot (AFCP 2.0).

181 thoughts on “USPTO RCE Backlog Coming Down

  1. From: link to popa.org :

    The Task Force has been working hard for several months trying to hammer out an agreement on changes and we are continuing to work towards that end to insure that the Pendency Award will continue to be available to the Corps. The Task Force has, unfortunately, encountered several difficult issues that have not as yet leant themselves to readily apparent and reasonable solutions.

    What are these “several difficult issues?”

    1. I’m pretty sure that is old news and the issue has been resolved but iirc it was the procedures for handling specific types of cases (printer rushes, stuff that’s been reviewed but not yet sent out etc. etc.). Most at issue was how long we’d have to get those things done and the impacts on workflow iirc.

      Basically mgmt was just pissed that there were so many of these kinds of cases laying around not finished when they’re supposed to be of the utmost priority to finish and send out.

      1. Thanks 6 – the lack of “readily apparent and reasonable solutions” sounds to be much more serious than the minor issues you responded with.

        Either the POPA like the sky-is-falling approach, or there are even more serious issues lurking.

        1. It’s all just drama for someone outside like you. Though yes, the number of unfinished cases of those sorts somehow blew the frak up under the new workflow procedure. I don’t have any issues myself, but I guess others are being more laid back about getting them out.

            1. Anon says:

              “Either the POPA like the sky-is-falling approach”

              I confirm that he’s right by noting:

              “It’s all just drama for someone outside like you. ”

              Anon responds with a psy chopathism that loosely translated means that I was attacking him for no reason other than whatever was said was said by him.

              True to psy chopathic form there anon. No empathy, followed by a psy chopathism.

              1. LOL – there you go again, projecting your own actions…

                (note, the manner of your “confirming” was less than forthright)

                Further, it is you lack of empathy that is on display here.

                Your gamesmanship is,um, well, obvious.

  2. There is literally nothing that can be done at the PTO to make the People Who Never Stop Complaining About the PTO happy. That’s because the point of the complaining is not to encourage the PTO to more rigorously examine patents — that’s the last thing these people want! — but to encourage the PTO to grant more patents more quickly, period — especially if those patents are computer-implemented j nk because, hey, those are the most important patents that ever existed. If the People Who Never Stop Complaining About the PTO can find a way to make the PTO squirm and lose focus on what it’s supposed to be doing (rigorously examining patents on behalf of the public it exists to serve), rest assured that the PWNSCATP will pour their energy into that endeavor.

    All that matters to these people is More Patents, All the Time, Easier to Enforce. Once you accept this, then their strange and often contradictory statements are readily explainable.

    1. That’s because the point of the complaining is not to encourage the PTO to more rigorously examine patents — that’s the last thing these people want!

      Pure horsehockey.

      1. That’s because the point of the complaining is not to encourage the PTO to more rigorously examine patents — that’s the last thing these people want!
        You’ve been told time and time again by “pro patent” people that they want BETTER examination. However, you still throw out this BS. It is bad enough that you are a troll, but being a blatant liar puts you even a step lower than a troll.

        Just because we abhor USPTO’s deck chair shifting maneuvers regarding the backlog does not mean we want less rigorous examinations. On the contrary, we want the BEST prior art cited as soon as possible during examination. It makes more quicker (and cheaper) examination for our clients and results in better patents that can greater withstand validity attacks down the road.

        BTW — the person on this blog that criticizes the USPTO the most is YOU. Perhaps you need to look into the mirror — a scary thought, I know.

        1. we want the BEST prior art cited as soon as possible during examination.

          Then tell everyone what the BEST prior art is and explain in plain English

          (i) if your invention is a machine, what were the failings of the prior art and what objective structural changes have you made to your machine which improves upon the prior art;

          (ii) if your invention is a process, what are the new steps which effect physical changes to the material being acted upon.

          Otherwise it can be nearly impossible to be sure whether the “best” prior art that the Examiner picks is the “best” prior art that you (or anyone else) would have picked.

          Tell everyone: what’s the “best” prior art for a claim to a computer implemented method for determining available space for 1/8th diameter cans of peas on shelves wherein said shelves are 12.5 x 12.9 inches long, and wherein said shelves are capable of holding no more than 40,000 of said cans and wherein the shelves also hold 5000 public domain movies on compact disc in standard jewel cases arranged as efficiently as possible.

          Tell us what the “best” prior art is for that claim.

          1. Then tell everyone what the BEST prior art is and explain in plain English
            “Best” is entirely subjective. Is the best a 103 reference that teaches all the limitations except for key limitations (to the extent that they can be identified)? Is the best a reference that discloses those key limitations but are missing teachings in other respects? What about a reference that is kind of close but it nonanalogous prior art?

            Regardless, we have a burden under Rule 56 to disclose material prior art. What is “best” is up to the Examiner.

            if your invention is a machine, what were the failings of the prior art and what objective structural changes have you made to your machine which improves upon the prior art
            Sometimes known — and this information may be worth putting in. However, many inventions are made with little knowledge of the prior art and their failings.

            if your invention is a process, what are the new steps which effect physical changes to the material being acted upon
            Since I don’t deal in mental processes — not needed.

            Otherwise it can be nearly impossible to be sure whether the “best” prior art that the Examiner picks is the “best” prior art that you (or anyone else) would have picked.
            The Examiner makes the rejections — not the inventor. As such, the Examiner gets to choose what is the “best” prior art. Moreover, the Examiner’s job is finding the “best” prior art (in the relevant field) and making rejections — as such, the Examiner should be much better at it than applicant.

            Tell everyone: what’s the “best” prior art for a claim to a computer implemented method for … .
            Couldn’t resist throwing a straw man in there? You know I’m not going to answer that question, so why ask it?

          2. Well… first you get a 112 rejection because 1/8 diameter is indefinate.

            But, doing my best to give you a first action on the merits:

            System and method for selecting and arranging products on a shelf
            US 20030171979 A1
            Abstract
            An interface that integrates electronic item assortment information and electronic shelf management information allows for easy analysis of changes to shelf sets for products. Financial information is updated based upon changes to a schematic representation of products to be displayed on the shelf. A comparison by category may be performed and a baseline used for comparison of proposed modifications.

            link to google.com

        2. we want the BEST prior art cited as soon as possible during examination

          You would agree that if you had narrowly tailored claims you would necessarily have to receive prior art that read on them or the claim would be allowed, right?

          And MM’s statement not withstanding, you would agree that if there was disclosure as to which limitations you believed were different from the prior art, it would result in better art being cited, right?

          I’m not suggesting you are required to do it, I’m just saying there are things you could do.

          Can I ask you, in all honesty, why you don’t include one, as anon puts it, picture claim out of all your claims? How could one not cite art that reads on your invention if you’re claiming exactly that?

          1. You would agree that if you had narrowly tailored claims you would necessarily have to receive prior art that read on them or the claim would be allowed, right?
            Ha … ha ha … giggle … snort … oops, I think I just spewed some coffee. That’s a good one.

            You are assuming that the examiner was done properly in the first place … even as to those narrowly tailored claims. Hold on … I’m about to spew some coffee again.

            You should quit your day job and become a comedian.

            you would agree that if there was disclosure as to which limitations you believed were different from the prior art, it would result in better art being cited
            Keep forgetting the statement from the Federal Statement that recognizes “virtually all [inventions] are combinations of old elements”?

            I’m not suggesting you are required to do it, I’m just saying there are things you could do.
            Put yourself in my shoes. Let’s say I think (or my inventor thinks) that a particular limitation (A connected to B) is within the prior art. However, as it turns out we were wrong. Do you think I want to put a statement on the record that A connected to B is old when it might not be true? Making a mistake that costs your client patent scope or even a patent itself is something no patent attorney wants to do.

            Can I ask you, in all honesty, why you don’t include one, as anon puts it, picture claim out of all your claims? How could one not cite art that reads on your invention if you’re claiming exactly that?
            There was a time when I might do that. However, most clients don’t have an unlimited budget, and such, they aren’t go to be paying a lot of money for additional claims. Frankly, I am loathe to include limitations comparable to “wherein the operating system is Windows.” I find those types of limitations (i.e., limitations that are easily deemed obvious) to be far from helpful during prosecution. However, I see that type of stuff all the time. I prefer meaningful dependent claims, but some attorneys are just lazy and/or there isn’t much to the invention beyond what is found in the independent claims. Writing good claims, however, isn’t something the USPTO can require.

            While picture claims might get you all the prior art, you can accomplish the same thing by including meaningful limitations in a multitude of different dependent claims.

            1. “While picture claims might get you all the prior art, you can accomplish the same thing by including meaningful limitations in a multitude of different dependent claims.”

              In other words you already know how to get the “best prior art” that you supposedly want.

              While on the other hand MM wants more rigorous examination.

              1. In other words you already know how to get the “best prior art” that you supposedly want.
                The fact that I know how to get the best prior art doesn’t mean that the Examiner will deliver it. Instead, what I frequently get is the reference(s) used to reject the independent claim that are (even more) misconstrued to arrive at the narrower limitations.

                Dependent claims are easily where the worst examination is found.

              2. “The fact that I know how to get the best prior art doesn’t mean that the Examiner will deliver it”

                Doesn’t sound like you know how to truly get it then if the examiner may not deliver it.

                “Instead, what I frequently get is the reference(s) used to reject the independent claim that are (even more) misconstrued to arrive at the narrower limitations.”

                Yes I’m familiar with that. That doesn’t seem to have anything to do with the best references having been delivered though.

                “Dependent claims are easily where the worst examination is found.”

                Of course! And for good reason!

            2. “Let’s say I think (or my inventor thinks) that a particular limitation (A connected to B) is within the prior art. However, as it turns out we were wrong. ”

              Oh no, I admire your persistence in trying to educate examiners 6, Mooney, and Random, but trust me, you’re wasting your time. All examiners believe, sincerely, that all applicants are aware of “knock out, killer, 102 prior art” and are desperately trying to conceal it from the examiner. They have been brainwashed at the PTO into believing that. No matter how many times you explain that applicants’ knowledge of the prior art is imperfect and incomplete they are not going to believe it. They think that because they do nothing but read patents all day, that’s what applicants do. They remain willfully and triumphantly ignorant on this issue.

              And they actually believe that because they’ve read lots of applications, that they know how to write one. You’re never going to cure them of that self-delusion.

              1. Yes and you see the examiners and the anti’s trying to shift the burden of knowing the prior art from the examiner (PTO) to the applicant.

                Basically, it is the federal government that tries to do as little as possible and charge as much as possible. And the antis realizing that shifting the burden makes patent more expensive.

              2. “They have been brainwashed at the PTO into believing that.”

                Actually that’s just what explanation naturally presents itself as the first logical explanation for what occurs here upon being dumped into this nonsensical protectionist environment from our otherwise strictly capitalistic society.

                No “brainwashing” is required.

                “No matter how many times you explain that applicants’ knowledge of the prior art is imperfect and incomplete they are not going to believe it. ”

                I actually do. For at least the last 5 years I’ve been consistently surprised that the applicants were smart enough, or knew enough, to come up with the invention at all.

                “They remain willfully and triumphantly ignorant on this issue.”

                O give it a rest.

              3. “Actually that’s just what explanation naturally presents itself as the first logical explanation for what occurs here upon being dumped into this nonsensical protectionist environment from our otherwise strictly capitalistic society.”

                Lordy but your writing is f#cking awful.

              4. “You really do not get why you have your job, do you?”

                Sure I do. As I’ve told you many times, I’m a homeless man on the side of I-95 because of the entitlement program established under 35 U.S.C 102.

              5. You must have missed the day they discussed Quid Pro Quo (which shoots your “entitlement program” thingie down.

                I see that you are confused because of the presence of a single word. You might want to note context.

            3. “However, most clients don’t have an unlimited budget,…”

              Another thing which examiners will never understand.

              “… and such, they aren’t go to be paying a lot of money for additional claims.”

              Presenting more than 20 claims is a waste of the client’s money. The PTO has been charging extra claim fees on the claim that “extra claims require extra resources” but has never provided applicants, or examiners, the “extra resources” (i.e. more time) to examine those extra claims. Extra claim fees are a complete and total rip off.

              If you are filing more than 20 claims in an application. Stop it. Right now. I mean immediately. You are doing your client(s), and the examiner(s), a disservice. If you really need more than 20 claims, file a second application.

              1. Definitely. Shadow director Lee is busy explaining about first mover and why we don’t need patents. She doesn’t have time for these sorts of things.

            4. Put yourself in my shoes. Let’s say I think (or my inventor thinks) that a particular limitation (A connected to B) is within the prior art. However, as it turns out we were wrong. Do you think I want to put a statement on the record that A connected to B is old when it might not be true? Making a mistake that costs your client patent scope or even a patent itself is something no patent attorney wants to do.

              I certainly understand why you don’t do it. I’m just saying, that’s something you choose to do which results in you not getting as good of an examination. That’s fine by me.

              I should point out though that you’d be upset if we essentially did the converse of that. If I went through your spec and wrote an enablement rejection on everything that wasn’t enabled by the spec itself (which it probably isn’t if your inventor thought it was well known), you’d have to come back with an affidavit or prior art showing that limitation was enabled by the state of the art prior to filing, since arguments of counsel cannot replace evidence where evidence is necessary (which would be this case, as the only evidence of record would be the spec). In other words, I could compel you to essentially make the admission in a lot of the cases anyway. But that also would not help examination.

              I have had attorneys call me up and say they need to be shown an example of limitation X (which is never the standard I am held to, I only need show it would be obvious, not that it preexisted). That’s exceedingly helpful, because at least now I know what they think is important. Then I can at least say to them “I know you think X is important, I searched for X and I found this, if you think it’s worth appealing, appeal, otherwise abandon.” He doesn’t do that interview (where he makes it clear the case turns on being shown X) and my natural response is to simply argue back saying that I’m not required to show X pre-exists for it to be obvious.

              1. “I should point out though that you’d be upset if we essentially did the converse of that. If I went through your spec and wrote an enablement rejection on everything that wasn’t enabled by the spec itself (which it probably isn’t if your inventor thought it was well known), you’d have to come back with an affidavit or prior art showing that limitation was enabled by the state of the art prior to filing, since arguments of counsel cannot replace evidence where evidence is necessary (which would be this case, as the only evidence of record would be the spec). In other words, I could compel you to essentially make the admission in a lot of the cases anyway.”

                Lulz. You’re one of those examiners who thinks that writing “Claim 1 is rejected as non-enabled because it is unclear how A is connected to B” can meet your burden to establish by a preponderance the fact that the invention is not enabled. And that you’ve shifted the burden to applicant. Lordy if I had a nickel for every one of those non-enablement rejections I’ve shot down with a simple one sentence reply I’d be living on a beach in the Caribbean right now.

                “I have had attorneys call me up and say they need to be shown an example of limitation X (which is never the standard I am held to, I only need show it would be obvious, not that it preexisted).”

                Lulz and lulz upon more lulz. Oh no, is right, you should be a comedian.

                It’s impossible to overstate how wrong this idea of yours is. Again, if I had a nickel for every rejection to the tune of, “Well, neither reference X nor reference Y shows A connected to B, but it would have been obvious…” that I’ve shot down with one sentence I would be flying my private jet straight off my Caribbean beach to my chalet in St. Moritz.

                Keep the laughs coming, please.

              2. sad thing is, random examiner keeps on thinking that he is absolutely right “on the law,” and keeps on pointing to some imaginary scoreboard that he thinks backs up his fantasies

              3. He has the usual nonsensical examiner notion that simply typing it up in an OA makes it so, e.g. simply stating “it’s unclear how A is connected to B” makes a prima facie case of non-enablement. 6tard suffers most from this delusion of the examiners (6tard, Random and Mooney) who regularly post here. Random appears to be more intelligent than 6tard, but it’s clear he’s been spending too much time at the PTO’s Kool-Aid Cantina.

      2. OK.

        Show everyone an example of a patent that was granted this morning that you think shouldn’t have been granted and explain why you believe that.

        That should be pretty easy for you if want more rigorous examination of patents. If you can’t do that, then why should we expect you to know the difference between what you are (supposedly) wishing for and what is happening right now?

        It’s easy to pile on some j nk that’s already been piled on by a judge or nine. Maybe you could show everybody a computer-implemented patent that you think is ineligible under “current law” that has been granted and which hasn’t been declared ineligible yet by a court. Or some similarly pending claims at the PTO. Or are there none? A positive answer to the last question would represent a bold and impressive prediction which you should feel perfectly free to make, and make expressly.

        1. zzzzzzzzzzzz

          You missed the point below about the absurdity of focusing so closely on individual claims.

          Oh wait, you did not miss that – you embrace that absurdity at every chance you get (but run at every chance when substantive law discussions break out).

          Go figure.

          1. “You missed the point below about the absurdity of focusing so closely on individual claims.”

            Wait wait wait, it’s absurd to focus on individual claims? Jes us H chr ist! Why didn’t anyone tell me that when I started work?

            I would very much like to hear, in your, or anyone else’s opinion, why this is absurd. All tomfoolery aside. For srs.

            1. No M0R0N, in our discussions here – you, at the Office focusing on claims – that’s a different story (and one you should know well: Do your Fn job)

              1. Sure, even “in our discussions here” how it is “absurd”? The validity of individual claims is quite important imo. Doubly so if you take a good healthy sampling of individual claims. Focusing on individual claims seems to me to be of the utmost importance in determining the quality of patents issuing forth.

                So how is it “absurd to focus so closely on individual claims”? I’m genuinely interested to know. Again, for srs. And I’m willing to be persuaded on that subject.

              2. Sure, even “in our discussions here” how it is “absurd”? The validity of individual claims is quite important imo. Doubly so if you take a good healthy sampling of individual claims. Focusing on individual claims seems to me to be of the utmost importance in determining the quality of patents issuing forth.
                The platform is yours — go at it to your heart’s content.

        2. Show everyone an example of a patent that was granted this morning that you think shouldn’t have been granted and explain why you believe that.
          Here is a better one, why don’t you show us an example of a patent granted this morning that you believe should have been granted.

          BTW — I won’t answer your question, because you are asking me to basically review the file history, review the prior art, and then identify how the USPTO got it wrong. Depending upon the claims/technology, I need about $5-10K to do that (but that is not going to get you much of a write-up). However, if you want to deposit that money in my Paypal account, I’ll consider it.

          1. Come on. I was hoping to see some money in my Paypal account. At the very least, I was hoping to see what MM considered to be a worthwhile patent.

            How long does a guy have to wait before MM finds a good patent?

    2. “More Patents, All the Time, Easier to Enforce”

      Cynical, but accurate.

      But, what they do not realize that there really is a payoff when prosecution results in clear and clearly valid claims. The patent is respected, etc.

      But if the patent examiner does not do his or her job, the enforceability of a patent is doubtful. All it does is buy the patent owner a lawsuit and/or an IPR.

      Of course, there are some companies who could care less about whether a patent they receive is valid. All they want is a patent to add to the tremendous heap they already have for bragging rights and to make the pile more intimidating by increasing its size. Here the slogan should be

      More Patents, All the Time.

      1. there are some companies who could care less about whether a patent they receive is valid. All they want is a patent to add to the tremendous heap they already have for bragging rights and to make the pile more intimidating by increasing its size. Here the slogan should be

        More Patents, All the Time.

        Right.

        There’s a really easy way to dredge the swamp, by the way.

    3. >All that matters to these people is More Patents, All the Time, Easier to >Enforce. Once you accept this, then their strange and often contradictory >statements are readily explainable.

      Mor0n Milly (MM) you see here is a case where you acting like the religious zealots.

  3. POPA’s leader speaketh:

    As this news broke last week, POPA and management met daily to discuss the situation and the growing concerns over the continued misrepresentation of our employees and programs at the USPTO. I held interviews, or attempted to hold interviews with various media outlets including the Washington Post, GovExec.com and Fox Business News. During these interviews, I made clear that the anecdotal problems set forth in the leaked 32-page document, itself an internal, factually inaccurate, draft document not intended for public availability, were management issues, not telework issues. If you are interested in my comments, you can read last Wednesday’s Federal Diary at:

    blah blah

    Finally, I am scheduled to discuss this topic on Federal News Radio today at 5:08 PM.

    POPA will try and keep you informed as these stories continue to develop.

  4. POPA’s leader speaketh:

    As this news broke last week, POPA and management met daily to discuss the situation and the growing concerns over the continued misrepresentation of our employees and programs at the USPTO. I held interviews, or attempted to hold interviews with various media outlets including the Washington Post, GovExec.com and Fox Business News. During these interviews, I made clear that the anecdotal problems set forth in the leaked 32-page document, itself an internal, factually inaccurate, draft document not intended for public availability, were management issues, not telework issues. If you are interested in my comments, you can read last Wednesday’s Federal Diary at:

    link to washingtonpost.com

    You can also read the GovExec.com interview at:

    link to govexec.com.

    Finally, I am scheduled to discuss this topic on Federal News Radio today at 5:08 PM.

    POPA will try and keep you informed as these stories continue to develop.

  5. First, it has been a farce long perpetrated by the US PTO when they first and continued to identify an RCE filed in a pending patent application following a final rejection as a filed new application. Only a government entity could do this with a straight face. New applications are only those for which a new number is assigned and is straight forward black and white standard.

    Second, the above comments reflect both sides and in my opinion are not the norm. Generally, today for the patent application filing fee, you get 1) a restriction/species election requirement (not always, but very often); 2) a search of the elected claims and a first office action review, usually based on a compilation of a key word search and cut and paste to match the claim language and the use of standard cut and paste justification language; and 3) a final office action. Unless the final identified allowable claims if rewritten in independent form or only 112 rejections, any amendments to the claims are likely not be entered, and to get them entered, you must file and pay for an RCE. It is about 50/50 as to whether the examiner will actually review the Applicant’s response and analysis of the prior art especially when the key word search compilation looks sufficient. With the filing of the RCE, the examiner will enter the more substantive amendments and you get, in most cases, a first and second office action review with the second also being made final. Then a second RCE petition and fee or a petition for appeal.

    From the applicant’s perspective, you pay so much and you only get so much examiner time. Far less than what they are having to pay their patent attorney.
    From the PTO’s perspective, the amount of revenue for the search and examination only covers so much examiner time and expense (salary). The applicant wants more examiner time, they should have to pay additional, e.g., the RCE fee.

    From the examiners perspective, with a final and then an RCE, they get extra clicks. Some obviously take advantage of this and just cut and past their last office action, and get the extra clicks without doing any additional work. The Applicant gets lucky when they have an examiner assigned that takes the RCE filing seriously and considers the RCE submitted claims in a new light. However, some only do this if significant amendments to the claims have been made to differentiate over that which the examiner cited in the prior office action. The examiners rarely admit or fully consider that their prior rejection was inaccurate or that their prior interpretation of the prior art reference was incorrect/wrong. Applicant’s arguments are helpful, but if they highlight the poor interpretation of the examiner of the prior art or the compilation of key words with generic “justification for combination” language, the examiner will rarely fully consider them, unless the Applicant files a petition for appeal and an appeal brief.

    Applicants need a way to pay for and have a second examiner or supervisory review what the examiner has rejected when filing a special RCE that is short of having to file an appeal to the PTAB.

    1. Applicants need a way to pay for and have a second examiner or supervisory review what the examiner has rejected when filing a special RCE that is short of having to file an appeal to the PTAB.

      They have that already.

      1. PABRFR only goes as deep as glaringly clear errors that a supervisor can see in a few minutes.

        When the gibberish is hip deep and a you have to review the application and the cited documents to understand that what the examiner is asserting, they just ship you off to appeal and the associated expenses.

        Additionally, you have to pay a notice of appeal fee to get PABRFR. That is unfair.

        1. I probably don’t have any satisfactory solutions for you then. Reviewing examiner actions is pretty much what appeals are for.

          Still, one other suggestion is to contact the examiner for an interview after first action instead of waiting until after final. At the very least, it shows that you’re taking the case seriously right out of the gate. In a lot of cases, the phone calls only start coming in after final, when the attorney is trying to avoid incurring an RCE fee, even though it would have been a lot more productive to have the same conversation a few months earlier.

          1. You don’t know that the examiner is unreasonable or confused until you get a response (or lack thereof) to your counter argument. That “response” comes in a “Final Office Action”. That’s why the calls start then.

            1. You don’t know that the examiner is unreasonable or confused until you get a response (or lack thereof) to your counter argument.

              LOL. You can usually tell that the examiner is unreasonable or confused from the first action. Perhaps you don’t fully appreciate the extent of that unreasonableness/confusion until the Final…

              1. Well, I like to give the benefit of the doubt. I assume the first action is based on the results of a computer word search and is merely a mechanical translation of the words search results into the format of an office action.

                That is, I assume the first action is ridiculous because little or no thought went into it. The computer said paragraph 32 had a number of words in common with claim 4 so, here is claim 4 with a parenthetical reference to paragraph 32.

                So, I explain, in my response that paragraph 32 is about someone that saw a race horses and claim 4 mentions a saw horse.

                I assume that the rejection will be dropped when the examiner reads my remarks and understands his/the computers error.

                When the rejection is maintained in a Final Office Action. That’s when I want to talk to an Ombusman that can smack the examiner and his supervisor.

              2. I can tell from the first OA on the merits what type of examiner I’m dealing with. Some are lazy primaries churning out garbage and hoping for a ticket on the RCE gravy train from the get go. Usually I won’t even bother to interview those primaries. Some are timid newbie juniors who learn quickly that any OA that rejects all of the claims will get signed no matter how silly the rejections are. From those types of examiners I get lousy final rejections that include nothing but form paragraphs. From me they get pre-appeal brief requests for review.

                From the good primaries, and from the juniors that are trying to do a good job, I’ll get OA’s that at least make sense, and include art that isn’t just plain ridiculous. I’ll interview those examiners and get a better understanding of their position by asking some questions and listening to their answers. If their position has merit, i.e. is one I wouldn’t be comfortable appealing, I’ll suggest some amendments and explain why I think they overcome the position/interpretation of the examiner. I’ll ask the examiner if they proposed change(s) would overcome the rejection, but don’t insist on an answer. I don’t ask if the proposed change would make the claim allowable. Only if it would overcome the current rejection.

                Some examiners are helpful. Some are not. The ones who are helpful are even more helpful if they see that you are at least trying to understand their interpretation and propose a way over/around it. The ones who are not helpful will forever sit back and refuse to answer you in an interview and send you OA after OA of, “Nice try. But nope. Try again.” and will gladly let you file RCE after RCE ad infinitum while you try “to work with the examiner” or tell your client that “we don’t want to get on the examiner’s bad side.”

                I don’t wast time, my client’s time, my time, or the examiner’s time, with that. I make a good faith effort to understand and address the examiner’s position/interpretation, and if I see cooperation will continue to engage the examiner (e.g. through the AFCP 2.0, which despite the comments below I’ve had good success with), but won’t hesitate to appeal if the rejections are improper.

                If you can’t figure out what kind of examiner you’re dealing with after a FAOM, an interview, and a subsequent action, you’re doing something wrong. If you’re amending claims that are allowable as is, but are attempting to “work with” or “appease” the examiner in hopes of getting an allowance, you’re definitely doing something wrong. Stop it.

              3. I’m more than just pretty sure that AAA JJ’s views have not changed due to his time on this blog.

                He pretty much still rips You (both the royal you as an examiner and you personally for your inane posts) a new one on a regular basis.

              4. “AAA JJ becoming more enlightened as he spends more time here.”

                I been at this a long time, son. I wouldn’t be surprised if you were one of the young pups I sent back to his SPE with his tail between his legs.

              5. “I been at this a long time, son. I wouldn’t be surprised if you were one of the young pups I sent back to his SPE with his tail between his legs.”

                Sure you have! But not long enough to recognize when a response is non-responsive eh? But, maybe, you’re getting there “old timer”. Stick around another couple of years and I might whip you into shape yet.

          2. At the very least, it shows that you’re taking the case seriously right out of the gate.

            Examiners need to be convinced that I’m taking a case seriously? Why would my client spend $6-$15K for a patent application if it wasn’t serious?

            1. Because of the huge number of times that a solid first action rejection is met with the weakest arguments imaginable. That’s why I mentioned in a different comment that many attorneys don’t really bother reading the action before they respond. For example, I’ve done written description rejections or indefiniteness rejections where I mention two deficiencies in the claim, and the attorney only fixes the first one, without even arguing the second one.

              Now, you might be serious in every case you work on, and in every response you file. That’s great, and if that accurately describes you, then you should take pride in that. But there are tons of attorneys out there who lack your strong work ethic, and they usually just do the bare minimum to get a response filed before the SSP, leading to an easy final rejection and a big waste of time and money for their client.

              1. But there are tons of attorneys out there who … usually just do the bare minimum to get a response filed before the SSP, leading to an easy final rejection and a big waste of time and money for their client.</I.

                You're probably right, unfortunately.

        2. “When the gibberish is hip deep and a you have to review the application and the cited documents to understand that what the examiner is asserting, they just ship you off to appeal and the associated expenses.”

          Learn to express yourself better and more concisely. If you can’t express the problem in 99% of instances in a couple of paragraphs you’re a failure bro.

          Abject and utter.

        3. Additionally, you have to pay a notice of appeal fee to get PABRFR. That is unfair.

          You paid for an examination, you got an examination. You want two other examiners to also look at it you probably should be paying something for that, don’t you think?

          That’s like saying you lost at the district court level, now you have to pay for an appeals court to look at it? That’s so unfair.

          1. “You paid for an examination, you got an examination. You want two other examiners to also look at it you probably should be paying something for that, don’t you think?”

            If I got an examination, I wouldn’t be looking for supervisory review. What I got was a rejection based on gibberish.

            If you get your car back from the mechanic and it isn’t fixed do you expect to pay the same guy again to have it fixed?

            1. I guess it depends on how you define “examination.”

              If you define as a “cursory knee jerk claim key word search cut and paste and ignore any sense of context” then Random Examiner’s view “carries the day.”

              But I am pretty sure that no reasonable person would think that such should suffice for an actual “do your Fn job” examination.

    2. it has been a farce long perpetrated by the US PTO when they first and continued to identify an RCE filed in a pending patent application following a final rejection as a filed new application. Only a government entity could do this with a straight face. New applications are only those for which a new number is assigned and is straight forward black and white standard.

      RCE’s were never treated as “new applications” for all purposes so there was no subterfuge or shenanigans intended. They were treated identically to “new applications” by the PTO when determining where to prioritize the case for docketing purposes. That said, it was pretty easy in most cases for applicants to persuade an Examiner to pick up the RCE sooner they would pick up a newly filed application (my experience and the experience of pretty much everyone in chem/bio anyway).

      From the applicant’s perspective, you pay so much and you only get so much examiner time. Far less than what they are having to pay their patent attorney.

      I can’t track the syntax here. Applicants get far less time than what they are having to pay their patent attorney (doesn’t make sense)? Or Applicants pay far less to the PTO than what they have to pay their patent attorney (makes a lot of sense but I’m not sure what your point is)?

      I’ve been following the prosecution of computer-implemented j nk cases for years and it’s pretty easy to see what the source of the problem is in most cases.

      The examiners rarely admit or fully consider that their prior rejection was inaccurate or that their prior interpretation of the prior art reference was incorrect/wrong

      And applicants will never admit that their claims are j nk. And a lot of them are, including a lot of the granted claims. There were quite a few issued this morning, in fact. Do you want to see some?

      Applicants need a way to pay for and have a second examiner or supervisory review

      Or you can get that review for free. Here’s what you do: post the pending claims here and someone will analyze them for you. How’s that?

      1. You really have no clue do you? RCEs being treated as new applications are primarily an outcome of union negotiations years ago related to counts.

        I hope your clients routinely seek second opinions.

    3. This is exactly the problem:

      ” The examiners rarely admit or fully consider that their prior rejection was inaccurate or that their prior interpretation of the prior art reference was incorrect/wrong. Applicant’s arguments are helpful, but if they highlight the poor interpretation of the examiner of the prior art or the compilation of key words with generic “justification for combination” language, the examiner will rarely fully consider them, unless the Applicant files a petition for appeal and an appeal brief.”

      This however, is NOT the solution:

      “Applicants need a way to pay for and have a second examiner or supervisory review what the examiner has rejected when filing a special RCE that is short of having to file an appeal to the PTAB.”

      I should not have to pay a second time to get a professional examination.

      Applicants need a way to challenge the gibberish in any Office Action by asking an Applicants Ombudsman to review the record as a sanity check and when the applicant is correct hold the Examiner and his supervisor responsible for the wasted time.

    4. Stonecold, your “general” experiences exactly mirror mine – especially this part:

      It is about 50/50 as to whether the examiner will actually review the Applicant’s response and analysis of the prior art especially when the key word search compilation looks sufficient.

      Yeah, I wrote an article a few weeks ago about how little attention many examiners give to arguments between a non-final and a final.

      Many examiners seem to consider their work for each round of prosecution to be 90% complete when they submit the non-final office action. Everything after – the post-non-final interview, the final office action, and any after-final practice – is considered a formality to wrap up the case and get their disposal count. They believe that the onus is on the applicant to make substantial changes that will force them to update their search when preparing the next non-final office action following the next RCE.

      I’m sure that when creating the 37 CFR provisions on examination procedure, the drafters thought that examiners would give the applicant’s response a long, thorough consideration before preparing the final office action. But the system is set up to encourage and reward this kind of behavior.

  6. Dennis:

    Regarding : ” For many patent applicants, RCEs have become an expected element of the prosecution process in order to provide for a third-round of communication with the examiner. ”

    What is this third- round of which you speak? Are you counting the filing of the Application as the first round? If so, don’t. Examiner’s don’t read applications.

    Are you counting something filed after the Final Rejection? Don’t. Examiners don’t read responses After Final rejection. See 1.2.1.1. I asked one once, who refused to enter my amendment after final, if he had even looked at the remarks section, which traversed the finality. He said: “No! WHAT WOULD I DO THAT FOR!? NO. NO. NO I DID NOT.”

    He was reversed on appeal, of course.

    An RCE buys you a second round of communication, if you are lucky. Mostly it buys you a copy and pasting of the final office action.

      1. The tired mantra of “let’s see the claims” and ignore a discussion on the larger aspect of the law….

        (sigh) Brier Rabbit, your tricks are old and stale.

        1. The tired mantra of “the larger aspect of the law” and ignore a discussion on the merits of the case….

          (sigh) Brier Rabbit, your tricks are old and stale.

          1. ignore a discussion on the merits of the case
            No examiner or attorney is going to discuss of the merits of his or his case on this blog. Those asking to do so know this as well and are just asking the question to kick up dust — just like you.

            (sigh) Brier Rabbit, your tricks are old and stale.

          2. Not only that, but the discussion of a single case – and the limited play of facts of a single case simply pale in comparison to a more sturdy discussion of the law.

            Time to grow up RH.

            1. a more sturdy discussion of the law

              Something that Billy and Slo Mo are incapable of providing but they do love to pretend that they are very serious people with everyone’s best interests in mind. Of course, we all know that the opposite is true.

              Last time we checked, Slo Mo still believes that the way to analyze a claim for eligibility is to determine if the claim recites a “process.” According to Slo Mo, if the answer is yes, then you’re good to go.

              Is that how Slo Mo advises his clients? Or is that just the game that Slo Mo likes to play when he’s commenting here? Ignorant or dishonest. It usually boils down to one of those two with Billy and Slo Mo. Watch and see.

              1. From the guy who refuses to give honest and cogent answers based in law and fact, who posts that intellectual honesty is not required on a mere blog, who runs every time a simple answer is asked of him, who employs a short script of unethical mischaracterizations of law, of facts, and of what others post…

                …and yet another entire alternate universe of irony factories goes KA-BLOOEY !

      2. If you ever prosecuted anything, you’d be able to discuss these issues with respect to your own cases. It’s just ridiculously apparent that you have never prosecuted an application, much less enough to have any valid input on these issues.

    1. An RCE buys you a second round of communication, if you are lucky. Mostly it buys you a copy and pasting of the final office action.

      This mainly happens because the attorney didn’t read the final office action the first time around. So it’s like we’re giving you another chance.

      1. While I may grant you the rare occurrence of such, my examiner friend, the higher likelihood is very much the other way around, with the fault staying with poor examination.

        I will note that there are good examiners, and that you, Apotu, are likely one of them. But you do need to open your eyes to the bigger picture and the shear number of scandals being exposed of simply unacceptable examiner behavior (and the extremely poor grasp of legal concepts as exemplified by the posts of your fellow examiners on these boards).

        1. the shear number of scandals being exposed

          LOLOLOLOL.

          Oh, it’s all so scandalous!

          Thank goodness we have Billy here keeping score.

        2. While I may grant you the rare occurrence of such, my examiner friend, the higher likelihood is very much the other way around, with the fault staying with poor examination.

          Sounds like someone is being bad by RCEing what should be appealed if that is the case.

          I will note that there are good examiners, and that you, Apotu, are likely one of them. But you do need to open your eyes to the bigger picture and the shear number of scandals being exposed of simply unacceptable examiner behavior (and the extremely poor grasp of legal concepts as exemplified by the posts of your fellow examiners on these boards).

          I’m sure Apotu has seen the scoreboard.

      2. Quit acting like we don’t understand the count system and how to game it. You all do it. We all know how. Now let’s deal with reality.

  7. Posts 11 and 12 are pertinent:

    link to patentlyo.com

    And careful about the assumption of overall down trending, Random Examiner, as the FOAM last two data points indicate the opposite of what you are portraying: spikes upward, rather than a continued trend downward. Prof. Crouch chose an apt picture: squeezing the balloon – clamping down on RCE’s – just moves the air in the balloon somewhere else. Personally, I would have used something like:

    link to moodyeyeview.files.wordpress.com

    1. The question isn’t whether you squeeze the balloon to move it one place or another – the only question that matters is whether the overall size of the balloon is deflating.

      The balloon is deflating. It’s not deflating as fast as it could be if we do other things (such as properly teaching 112s to prevent all the RCE filings), but it’s deflating. That’s because the office is using the only metric that actually matters – counting RCEs as new cases and comparing cases completed to new cases coming in. Whether its an RCE or a new case, it represents the same amount of work the office has been paid to do, and thus the cases are fungible for the purpose of the office administration. When the total number of cases disposed of is greater than the total number of cases we’ve been given to do within a given time frame the balloon is deflating. Sometimes what you like to call “gaming” may appear that its working better in some places than others – squeezing the balloon. That doesn’t change the fact that the balloon is deflating, as it is undeniable that we are completing more cases than we are being given.

      Once you realize the only thing that matters is disposals versus “new” (new being both newly filed and RCEs) cases, the only question is how small the balloon is supposed to get before we’re considered to be fine. That volume actually increases as the number of examiners currently employed increases.

      1. That volume actually increases as the number of examiners currently employed increases.

        LOL – you see, that’s merely one aspect where you got things @$$backwards.

        You don’t add thousands of workers in order to dilute the backlog and say “b-b-b-but we have less backlog per worker…”

  8. Just to clarify: the initial drop, which occurred back in 2013 was due to the RCE pendency reduction program, which gave more counts for completing RCEs (usually out of order due to how they were being assigned). However, the main cause of the increase in pendency was due to bad RCE docketing procedures implemented a few years back. After the temporary increased RCE counts program ended, they finally fixed the root cause of the problem, which was the docketing procedures of CONs, DIVs, and RCEs.

    1. Just to clarify, what is the change in docketing procedure, and is not the RCE counts program re-instated?

      I do believe that Hal Wegner ran a series of exposes on this issue (hint: see my links above – currently in moderation). The RCE program – since it does not address actual new applications inherently creates the problem that the sum total of time for complete examination of any real new application is increasing again – even as we have added 1,000’s of new examiners, each hands on examination is taking longer and longer.

      The system is broken people – time to re-engineer it from scratch.

      1. The big change is that CONs and DIVs now get placed on the Regular New docket along with all the brand new cases. RCEs go on a docket by themselves now, so you always are supposed to work on at least one RCE every two biweeks.

        They used to go on the Continuing New docket along with RCEs, and they would get picked by the system as Oldest Effective (i.e., work on this one next) before the RCEs in most cases. For more established examiners who were receiving CON/DIV cases regularly, this could potentially mean that your RCEs wouldn’t reach the surface for years.

        They also implemented procedures to alter how oldest cases were selected, such that examiners with several dozen RCEs on their dockets would only get oldest cases selected from their RCEs.

        A more minor change was that they restored some of the credit for RCEs that they took away with the revised count system some years back. As it stands this quarter, you get the full 1.25 counts for the next action on an RCE if that RCE is the fifth or later RCE that you’ve worked on that quarter (instead of the 1.0 or 0.75 counts it would otherwise be worth).

        1. Thanks Apotu – that last paragraph especially was one noted by Hal Wegner, who insightfully noted that there is an efficiency trade off that is being gamed with the Office manipulation of counts and RCEs and treating RCE counts for work (on already examined material) being “counted” as completely new apps by the Office regardless of the FACT that applicants can never add new matter in an application and the some total of what to be examined is present on DAY ONE.

          By all rights, RCEs should NOT be treated as earning the same level of counts as new apps – and regardless of the docket games, an examiner will (as would any human being gaming the system) naturally put less effort into work that counts less. This reflects my “you get what you measure” comment above.

          You get what you measure: the system is fundamentally broken and needs to be re-engineered from scratch.

          The best part here (the most ironic really), is that innovation in business methods holds the key to fixing the patent examination system, as this is purely a business method type of problem.

          Those who would cut off their nose to spite their face continue to deny the reality of the situation – and to fruitlessly pursue fixes (like throw more bodies) at the problem that will NOT solve the problem.

          1. As a precursor to the “new” count system (not so new now, since we’ve had it since 2010), the PTO had a consultant come in and analyze our work process and work credit system. At the time, we got 1 count for a first action and 1 count for a disposal. There were no counts for final rejections, and much of the time, that disposal count came from an abandonment or an RCE.

            Their determination, perhaps unsurprisingly, was that the system could be improved by giving credit proportional to the work that was actually done, and award it when the work is actually done. Why we needed someone to come in from outside to tell us that is beyond me. But in response, they changed it to 1.25 counts for a first action, 0.25 counts for a final, and 0.5 counts for a disposal, with RCE first actions being worth 1.0 counts for first RCE and 0.75 for second and subsequent RCEs.

            Still, the system seems to be based on a notion that the PTO should give us credit in connection with events that the PTO gets paid for. They get paid for new filings, so we get work credit for first actions. They get paid for issuances, so we get work credit for allowances. They get paid for RCEs, so we get work credit for RCE disposals and the next action after RCE. They get paid for appeals, so we get work credit for writing an examiner’s answer.

            As far as starting from scratch goes, I’m not really sure how to come up with a system that provides a better framework than the count system. The benefit of a count-based system is that it allows the PTO to give the same credit for the same type of action, but still takes into account the differing skill levels of individual examiners as well as the difficulties of different art areas. If we just rearrange the counts given for each type of case, then it’s not really starting from scratch.

            1. RCE weights were modified not once, but twice in order to “game” the system back to a point where examiners were picking them up.

              There are serious fundamental flaws with this system, and part of it (not a small part) has to do with the fact that the count system does NOT allow a non-uniform, non-Widget approach to each application, and every application is treated as universally interchangeable with any other application (regardless of fees charged for things like extra claims).

              (btw, I do enjoy your posts -thanks for being ad hominem free)

              1. RCE weights were modified not once, but twice in order to “game” the system back to a point where examiners were picking them up.

                I don’t understand why everything that changes what an examiner chooses to work on constitutes gaming. It’s a loaded word meant to convey that something improper is going on.

                There are serious fundamental flaws with this system, and part of it (not a small part) has to do with the fact that the count system does NOT allow a non-uniform, non-Widget approach to each application, and every application is treated as universally interchangeable with any other application (regardless of fees charged for things like extra claims).

                This is at least a cogent response. Of course, over the long run these issues will iron out (i.e. for every application that has 70 claims you’re going to find one that has 3, even though neither is common). But what are you going to do? You can’t accurately gauge how much work each application is worth compared to others like it without examining each application in comparison to others like it, which means you would essentially double the work the office must do – an examination to correctly place the value of examining the case. That seems like a lot of extra unnecessary work just to make sure each case is treated with the proper amount of work. Does that consideration take into account the applicant’s tendancies? The assignees? The attorney’s? Should an examiner get more credit for working on a case where the attorney has a history of being stubborn? Is that “gaming”?

            2. ” I’m not really sure how to come up with a system that provides a better framework than the count system.”

              How about this? How about we show up to work for our allotted time periods, and gasp, managers assign work to be performed then oversee the work being done?

              If it works for just about every other white collar job I don’t see why it couldn’t work here.

              1. How about we show up to work for our allotted time periods, and gasp, managers assign work to be performed then oversee the work being done?

                And how do you make sure that the manager is assigning an equal amount of work (which is clearly nonfungible) to each similarly situated person other than via a count system? Number of claims? Subjective difficulty of the work? What about managers that aren’t from the art unit they oversee? Are you going to hire people to say how much each piece of work is worth? How do you pay those people?

                Lets say you go to a straight hour system – how do you get your best performers to do all of their effort when it’s clear they won’t get any more pay than the next guy? Or are you just going to eat all of that production loss?

                Count system is clearly the best system we could have (best production/overhead tradeoff) unless you’re going to restructure the entire office and model it on the standard courtroom. Assign cases, hardest cases to your best/most experienced examiners who are paid more than the others. Have only one round of examination capped by argument to a PTAB judge and disallow RCEs. You could do that, but you’d have to hire a ton more PTAB judges, like an order more of what you have right now. I suppose if you summarily made all the primaries into PTAB judges you could restructure and finish examination within a 6-9 month window which would remove all the RCE overhead.

              2. I suppose if you summarily made all the primaries into PTAB judges you could

                LOL – burn the system down that much faster – that cannot even get it right the first time through and you want to make judges out of them?

            3. As far as starting from scratch goes, I’m not really sure how to come up with a system that provides a better framework than the count system.

              If we want a quantitative measure of performance, which we do, then a count system (and perhaps the one with the current weights) is certainly necessary. But the count system should be just one factor in assessing examiner performance and shouldn’t be a complete substitute for supervision/management.

              From the perspective of one who has read thousands of office actions, if there is any real quality assurance or supervision at all, it is very uneven. Yes, there are lots of cr@ppy attorneys/applications as well, but at least applicants get to pick their attorneys – they don’t get to pick their examiners.

              1. DanH, I do not disagree with a count system, but it is important to count things that actually advance prosecution.

                I also think that compensation should be more liberal in terms of awarding examiner’s for the work to actually do and provide them incentive to work really hard. As I mentioned to others here, I once worked during a summer vacation while in college at a factory operating a specific machine to produce specific parts where we had a quota for the day. I got paid for every part above the quota. If I worked really hard I could double and sometimes triple my base daily wage.

                Let us say that the quota for an entire month for an examiner is 100. If he produces 200, I would suggest that he be compensated by essentially doubling his pay. What do you think?

                Others would say that that is not enough – that anything above the quota should be paid at time and a half or better.

              2. Let us say that the quota for an entire month for an examiner is 100. If he produces 200, I would suggest that he be compensated by essentially doubling his pay. What do you think?

                In your scenario, I think that there’s likely something wrong with the quota and/or the quality of the examiner’s work. Barring that, then both the pay and the expectations need to be adjusted for that examiner.

                Two points: First, this is hard, mentally taxing work, if done properly. If you put in 40 hours of honest work in a week, you should be tired. In my experience, productivity goes way down after that, so I don’t believe that you can produce double the work by simply working twice the hours in a week. That’s the reason I’m not interested in my associates clocking 50-60 hours per week. Perhaps you can get away with that performing document review for discovery, but you can’t do high quality patent preparation/prosecution like that. Second, it’s certainly true that some people are more productive than others, and of course they should be paid more than others. But that should be done by adjusting their pay grade along with an adjustment in the expectations (and perhaps getting rid of those who can’t keep up).

                I’m sure the current system is indeed intended to reflect an average amount of time needed to do a decent job. Some cases are going to take more, while others are going to take less. But it’s human nature for the examiner to feel that he has earned a “bonus” when the cases take less and to conversely feel that he’s being cheated when the cases take longer. When there is no simple way to monitor quality, that’s inevitably going to lead to cheating on quality. That’s why you’ve got to have active and effective supervision and quality assessment.

                These problems exist in some form or another at every large company. In the corporate world, though, there are market forces that provide at least some corrective influence. You need extra good leadership in the government sector to address these problems, or you just have to accept the inefficiencies.

              3. All excellent points Dan. The product produced must be of quality; and it does seem that if one works excessive hours that the quality will go down.

                I also think about the rules regarding pilots that they have to take mandatory downtime after every flight. Which is why I have always wondered why in training doctors that forced stay on duty for up to 48 hours during training. It seems to me that the longer the are on the job the more prone they are to make mistakes. I also think that one of the reasons for battle fatigue is because battle forces one to stay alert for too long a time.

                That being said, if there was a requirement that the examiner is not work more than 40 hours in a week, and the count system was completely adjusted so that the counts were available for any action that advanced prosecution, including additional searches under the examiner’s discretion and perhaps with the payment of an additional search fee by the applicant, I do not see why we should not compensate examiner’s to produce above quota at least at the same rate as their base pay and perhaps even at a rate higher like most union jobs.

          2. innovation in business methods holds the key to fixing the patent examination system

            Wow — you’ve identified the problem, Billy!

            Maybe you should call Mrs. “Innovation in Business Methods” and ask her nicely for the key. What’s holding you back? I heard she’s a nice lady, at least after she’s had her morning coffee.

          3. fruitlessly pursue fixes (like throw more bodies) at the problem that will NOT solve the problem

            If your problem is that you have a claim to a new composition or device, where that new composition or device is described in objective structural terms that distinguish that device from the prior art, and you are not satisfied with the rate at which your patent claim is moving through the system (absent paying the extra money for an accelerated examination), then it’s very likely that additional hiring would help to address your problem. More “bodies” = more people with more time to address your personal needs.

            But maybe you have a different problem.

      2. “The system is broken people – time to re-engineer it from scratch.”

        Anon will never be satisfied until he can submit and application and get an action by dinner and an assured allowance by the next morning.

        1. Wrong – and excessively bad mischaracterization 6, as I have always stated that a rubber stamp of Accept-Accept-Accept is as wrong as the rubber stamp of Reject-Reject-Reject.

          Since you have nothing intelligent to add, may I suggest that you think for awhile and try again when you do come up with something intelligent?

          1. What I said was obviously hyperbole to mock your continued shrieking about everything going wrong and needing to be rebuilt from scratch even as the vast vast majority of things are very much so going right. It is not a “mischaracterization”. Mr. I have no empathy.

      3. the sum total of time for complete examination of any real new application is increasing again – even as we have added 1,000′s of new examiners, each hands on examination is taking longer and longer.

        Perhaps that’s because the PTO is realizing that they actually need to carefully examine every one of the computer-implemented j nk claims they’ve been innundated with at record-shattering levels these past few years.

  9. amazing how PTO suddenly sprung into action to “fix” RCEs after the Court decision that said they would not count against the applicant for PTA purposes… until this point they were pretty much ignoring these cases, letting them sit on the back burner because they did not cost them anything

    1. There are lots of reasons that Examiners might prefer certain cases over others. My experience is that an Examiner can be encouraged to pick up a case and examine it if there is something worthwhile there and if the atmosphere hasn’t been poisoned.

    2. amazing how PTO suddenly sprung into action to “fix” RCEs after the Court decision that said they would not count against the applicant for PTA purposes…

      Well of course. The examiners are responding to the count system which responds to the managers which respond to court ruling. It wasn’t unreasonable to say that RCEs would toll the statute (after all, a continuation plus abandonment does). Once they were told that was wrong the office shifted priorities. There’s nothing surprising about that at all.

      1. responding to the count system” is merely a polite way of saying “gaming the system” coupled with the age old adage of you get what you measure.

        Examination sorely needs to embrace innovation.

          1. More of something good: like patents (yes, properly examined patents) – is ALWAYS good.

            You seem to have a fundamental lack of understanding of this basic notion.

            Once the Quid Pro Quo is met, more is – in fact – ALWAYS better. That FACT is merely the Office meeting its constitutionally designated role.

            1. the key is to embrace business method patents

              Preach it, Billy!

              After all, we can all see how the record-breaking number of business method patents granted over the past decade or two has already improved the patent system. Right?

              LOL.

      1. Ned,

        Are you referring to Exelixis II? I think that JNG is referring not to the that case (and the timing of that case), bit rather to the first case, which would tie directly to the historical timing here.

  10. Hmm, if the time to FOAMs is going down and the RCE backlog is coming down, I guess the office is just actually catching up. Which is what I said. And again I’ll say, it’s not due to any program, but simply the brute force method of throwing more examiners at the problem.

    1. Well, the RCE backlog wouldn’t really be resolved by throwing more examiners at the problem, because RCEs don’t get transferred to new examiners unless old examiners are leaving. So the RCE backlog, at least, is being reduced because of the revised docket management system and (to some small degree) the bonus counts for doing more than 4 RCEs in a quarter.

      1. the RCE backlog wouldn’t really be resolved by throwing more examiners at the problem,

        That depends on what you mean by both “resolved” and “backlog.”

        Let’s say the 20k number in 2009 represents an average of 3 RCEs on each examiner’s docket. That means one is being worked on and two are waiting. That number is fair, or even low for the office. You couldn’t reasonably expect to have less than 3-4 at any given time unless you set a rule that required all RCEs to be completed before other work (which would just create an amendment/FOAM “backlog”) and somehow controlled when applicants were allowed to submit RCEs. In other words, a “backlog” of zero is impossible, and a number close to that would actually represent a negative report on the office. Backlog is bad word to use. The office necessarily must have some RCEs and some amendments waiting, so this isn’t a question of finding zero.

        We also have a lot more examiners now, so you would naturally expect for there to be more total RCEs waiting. That doesn’t represent an increase in waiting time, since the ratio of RCE to Examiner is the same.

        So I would say if the data shows the office at maybe 40-45k of RCEs awaiting action the office is doing just fine. With numbers like that you would still expect about 4 RCEs on a docket and thus expect an RCE action in about the same amount of time as an amendment action, which is what the office should shoot for in my view. i.e. If you have a “backlog” of 40k, I would consider there to be no issue, and it would be “resolved.”

        The office is about 33% over that, but trending toward it. Moreover, as more examiners are hired the workforce can absorb more RCEs before pushing past the 4th-RCE-on-a-docket number (over time and on average, of course). So the number of “stable before you have a problem” RCEs is trending up as well.

        because RCEs don’t get transferred to new examiners unless old examiners are leaving

        Examiners are always leaving, we have high turnover. That being said, the graph above, and the FOAM one, are not good graphs because there’s not a stable examiner population. The office embarked on a hiring splurge – you would expect time-to-first-FOAM to go down (as all the new examiners picked up first cases) and shortly thereafter RCE’s pending to go up (as all those first cases came back for RCE). To see it trending down while hiring continues (as has been continuing) is great news.

        1. That depends on what you mean by both “resolved” and “backlog.”

          LOL – the irony in the statement of “redefining”… (see GA’s rant of the use of judicial “quotes” to redefine the meaning of words – which reminds me of the great Presidential quote, Sept 13, 1998 – “It depends on what the meaning of the word ‘is’ is.

          1. For someone who has the career you do you’d think you would know that words can mean different things.

            “is” is sometimes a definitional statement: A quarter IS worth 25 cents.

            “is” is also sometimes a species/genus statement: A quarter IS money.

            The difference between the two being that the latter usage allows for other possible things that meet the language, while the former does not. No other coin is worth 25 cents, while other coins are money. The president was making clear that the question was ambiguous because it called for two different answers depending upon whether “is” was being used in the definitional or genus/species sense.

            If one defines “backlog” as the amount of cases waiting higher than zero, we will always have a backlog so long as we allow people to actually file RCEs. That’s how the graph uses it, and it’s wrong because it’s a meaningless standard. If one defines “backlog” as I do – the delta between a healthy number of waiting RCEs and the number of RCEs we in fact have waiting, then the backlog is doing better than the graph appears to show.

            You’re right though, I am kinda like Bill. Thanks!

  11. largely under control
    Before the USPTO’s actions in 2009, the RCE “backlog” was around 15K. Now it around 60K. Reduced, yes — under control, no.

    BTW — the AFCP 2.0 is a joke. I’ve seen those requests routinely ignored.

    1. BTW — the AFCP 2.0 is a joke. I’ve seen those requests routinely ignored.

      Yeah it’s not a good program. Partially because Applicants try and treat it like a free RCE FOAM and partially because the concept as a whole is bad.

    2. Meh, idk, imo it doesn’t seem to be like most applicants even understand what the program is even for. Like Random mentioned below, it is not for getting yourself a whole new full review of your case. It’s for when barely any issues remain, but you’re pretty much there.

      Put it like this.

      AF = for when you’re taking some indicated as allowable subject matter or overcoming some 112 etc. (just something super ez)
      AFCP = for when you’re trying get something already indicated that it’d likely be allowable in you an interview or which seems pretty clearly to not require much of anything because you’re so clearly headed to allowance.
      RCE = everything else.

      Don’t bother us with AFCP’s for the wrong thing. Or it’ll be “summarily ignored”. Because guess wut? You’re not doin it rite.

      1. It’s for when barely any issues remain, but you’re pretty much there.

        Yeah this is what I’ve noticed too. I’ve seen cases under 2.0, elected not to take them and the applicant files a RCE with only the indication to consider the previously filed after final. If what you’re writing is a RCE you’re just wasting everyone’s time by submitting it under AFCP 2.0. The program isn’t designed for that at all.

        1. A lot of attorneys were treating AF submissions like a free RCE prior to AFCP 2 too. I like to believe that the program came about because examiners were in the habit, for good reason, of ignoring everything after final.

          1. A lot of attorneys were treating AF submissions like a free RCE prior to AFCP 2 too

            Under pre-2.0 there couldn’t be a scope change, so at least submitting a pre-2.0 forces the examiner to state on the record there is a scope change, which protects the applicant from a first action final in the RCE, so that’s a reason.

      2. AFCP = for when you’re trying get something already indicated that it’d likely be allowable in you an interview or which seems pretty clearly to not require much of anything because you’re so clearly headed to allowance.

        I suggest you read the guidelines:
        if the examiner determines that additional search and/or consideration is required and could be completed within the allotted time, then the examiner will consider whether the amendment places the application in condition for allowance (after completing the additional search and/or consideration, if required)
        Even if new limitations are presented (but would only require a limited search), then it meets the guidelines.

        1. Yeah the guidelines were what I just said re re.

          “or which seems pretty clearly to not require much of anything because you’re so clearly headed to allowance”

          See that?

        2. if the examiner determines that additional search and/or consideration is required and could be completed within the allotted time, then the examiner will consider whether the amendment places the application in condition for allowance (after completing the additional search and/or consideration, if required)

          The “allotted time” is two hours (keeping in mind it’s two hours to review the file and determine your other art doesn’t teach the limitation first before beginning the search). There’s plenty of SPEs who won’t allow any limitation with only two hours spent searching for it, and thus there’s no occassion for the examiner to consider if it’s in condition for allowance. The end result being that if a limitation may make the case allowable, you probably can’t take it under 2.0.

          There’s exactly one time when I take a 2.0 – when there is a single limitation with no other argument which I know I will find. If there’s argument, I’m forced to respond to the argument whether I take it under 2.0 or not, so I do that first, and after the review of the art and the writing of the argument there’s usually not enough time left to search for the limitation properly. If there’s multiple limitations it probably shouldn’t be under 2.0. If it might render the claim allowable (i.e. I might not find it) then I’m clearly not taking it under 2.0. If it’s, in actuality, a RCE submission, it should stand to reason that I can’t do in 2 hours what I’m normally doing in 20.

          But let me tell you a story of why this doesn’t work: I know of someone who took a 2.0, misread the claim, and said the prior art taught the amended limitation. Applicant immediately appealed. Examiner had to give a second non final. At that point I came up with my one limitation that I’ll find rule, because I would expect every applicant to do the same thing and because I know that nobody is perfect (even if I have a perfect record over the past year).

          Why would anyone do 2 hours of work for 2 hours of credit and risk being wrong (even if its a small risk), thus putting 30+ hours of work already done at risk, when they could not take it under 2.0, likely get an RCE and get 20 hours credit for probably the same document being submitted as an RCE?

          Regardless, the rule should be that if the examiner tries to teach a 2.0 and fails, applicant can’t appeal the issue. You got two chances at examination. If you want a third free search, okay, expect us to try our best if we’re going to get hours for it. But if we make a mistake you’re not out any money, so I don’t know why you would get a second non final out of it.

          1. There’s plenty of SPEs who won’t allow any limitation with only two hours spent searching for it
            As I said, the AFCP 2.0 program is a joke — or maybe I should have said it was a farce.

            I don’t need AFCP 2.0 to put allowable dependent claims into independent form. I also don’t need AFCP 2.0 to correct minor procedural errors. What is AFCP 2.0 good for anyway?

            Regardless, the rule should be that if the examiner tries to teach a 2.0 and fails, applicant can’t appeal the issue.
            Yet again — you completely forget that the job of the USPTO isn’t to reduce its patent backlog — it is to issue valid patents (and deny patent applications that deserved to be denied). The due process rights of Applicants don’t get sacrificed for the convenience of the USPTO.

            1. “What is AFCP 2.0 good for anyway?”

              A case that is pretty much assured to be in condition for allowance with minimal required extra search or consideration is mostly what it is for, though there are a couple other things. (3 hrs to be exact).

              1. A case that is pretty much assured to be in condition for allowance with minimal required extra search or consideration is mostly what it is for, though there are a couple other things.
                That doesn’t describe the type of application. It only describes the impact on the Examiner. Try again and try to be more informative.

              2. “That doesn’t describe the type of application. It only describes the impact on the Examiner. ”

                That’s how the “type of application” is herein defined. Take it or leave it, nobody really cares, the whole program is a gift.

              3. That’s how the “type of application” is herein defined. Take it or leave it,

                LOL – the little red queen / humpty dumpty has so decreed….

                As to the notion that “nobody really cares – there be 6 projecting (yet again) his own lack of caring.

                He is quite oblivious to his projecting affliction.

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