by Dennis Crouch
In Cioffi v. Google, the Federal Circuit sided with the patentee, Cioffi — holding that the district court erred in its construction of the asserted patent claims and thus vacated the holdings non-infringement and invalidity via indefiniteness. (Non-precedential opinion). Now, Google has petitioned the court for an en banc rehearing asking the court to “strictly construe” claim amendments against the patentee.
1. When construing a patent claim, should courts generally consult the prosecution history as context for resolving ambiguities, or is prosecution history relevant only if it clearly and unmistakably disavows claim scope?
2. When a patent applicant has amended a claim to overcome the Patent and Trademark Office’s earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant, as the Supreme Court has held, or consider the amendment history to be relevant only to the extent that it clearly and unambiguously disavows claim scope, as this Court has held
The issues raised here are parallel to those raised in the failed Google v. Vederi petition for writ of certiori. In that case, the Google asked (but the Supreme Court refused to answer):
Whether, when an applicant for a patent amends a claim to overcome the PTOs earlier disallowance of the claim, a court should (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held.
In my 2015 discussion of Vederi, I wrote that the following:
[T]he Federal Circuit has strayed significantly from Pre-1952 disclaimer law exemplified by cases such as Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942); Keystone Driller Co. v. Nw. Eng’g Corp., 294 U.S. 42, 48 (1935); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789–90 (1931); I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443–44 (1926); and Hubbell v. United States, 179 U.S. 77, 84 (1900).
Google relies upon many of these as well as additional cases for its argument. It writes:
The Supreme Court has long held that amendments made to overcome disallowance must be strictly construed against the applicant and in favor of the public. E.g., Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37 (1942); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789-90 (1931); Hubbell v. United States, 179 U.S. 77, 84 (1900).
In its decision in the case, the Federal Circuit considered prosecution history statements and actions, but was ultimately swayed by a claim differentiation argument. “We do not find, moreover, that anything in the prosecution history overcomes the presumption created by these claim differentiation principles.” For me, an important question (that I cannot answer at this point) is whether Google’s legal argument is actually relevant to the facts-on-the-ground. That is, would this shift in the law also shift the outcome of the case? That question is critical.
= = = = =
I’ll note here that the Federal Circuit’s recent decision in Columbia University v. Symantec appears roughly follow the suggestions outlined by Google here. That case, was decided by Chief Judge Prost along with Judges Dyk and Huges. It is not surprising to me that those three judges reached a different result than the Cioffi panel of Judges O’Malley, Plager, and Bryson.
For this petition, Google added known Supreme Court and appellate litigator Daryl Joseffer to the brief. Joseffer also filed the Google v. Vederi petition. The hiring of Joseffer suggests that Google will push this case to the Supreme Court if it fails at the Federal Circuit.
Asserted patents in the case are U.S. Patent Nos. RE43,103; RE43,500; RE43,528; and RE43,529.
What does it mean when there is a “disallowance of a claim”? Does this mean that the USPTO allowed a claim and then withdrew the allowance for that claim, or does this refer to a rejection of the claim?
Neither. The patents were reissue patents. They were “disallowed” because the applicant amended the previously allowed claims in a manner that allowed them to be rejected again.
It is a rather strange/ confusing way of putting it though.
I see, thank you.
I acknowledge UH Grad’s comment at 2, but permit me to try to understand Google’s Petition question no. 2 – “strictly construed” – using a numerical hypo. Suppose the original claim was to a range up to 10. The Examiner’s BRI includes up to 15 which overlaps prior art. Applicant amends with a range up to 5. (Assume all values from 1 to 10 are described, but 5 guarantees an allowance.) The examiner states in a reason for allowance that the BRI is up to 10 but this does not overlap prior art and the claim is allowed.
With the examiner’s statement, it seems reasonable to me that the claim could be construed to include as much as 10. However, in this case, the summary does not give the reasons for allowance. Thus, Google argues that the claim is strictly construed to be 5 or less. However, there was no disavowal of a range of 5 to 10, so the CAFC did not limit the range to 5 or less.
In support of the CAFC, assuming the examiner is doing their job even if BRI is not stated explicitly, should not all allowed claims be give their broadest reasonable interpretation?
It is a plain (and deliberate) fact that BRI in the Office is meant to be different than the scope of claims for a granted patent.
anon,
Such seems to be the case, but why is that so? Applicants are allowed to claim as broadly as the prior art allows. Both applicant and examiner have some expertise in the art and there was some meeting of the minds on a reasonable claim construction before allowance. If the prosecution history is clear, both the applicant and the public should have notice of what the claims cover. Why should a do-over be required in court?
One excuse could be that the prosecution history is never clear enough to understand what was actually allowed. (The PTO had a Pilot Glossary Initiative, now suspended for reasons I don’t know.) Are there other reasons?
“Such seems to be the case, but why is that so?”
Not “seems” – is.
As I recall, the reason for this is explicitly because the Office feels that if it examines to a larger target, then “for sure” the claim that gets through will be “more certain” to be valid over any possible “real” reading of its scope.
Yes, you would be correct in thinking that such a view might very well mean that claims with legitimately valid scope will be “denied” allowance at the Office because the Office “version” is not truly accurate.
This is due in part because the applicant’s “views” do NOT count as to a “meeting of the minds” when it comes to the allowance/rejection of the examiner (this is NOT a contract type of situation where such “meeting of the minds” has legal effect).
As to the “Pilot Glossary Initiative,” that was d00med to F A I L from the start, because ALL language is inherently inexact, and for ANY glossary, which would be made up of words, you would STILL have the same exact problem of needing to use words to further “clarify” those words – turtles of words all the way down.
“anon” ALL language is inherently inexact, and for ANY glossary, which would be made up of words, you would STILL have the same exact problem of needing to use words to further “clarify” those words – turtles of words all the way down.
That’s an argument against using words to describe inventions. I’m pretty sure that’s not the argument you want to make.
A more likely explanation for the failure of the glossary initiative is the river of tears cried by applicants who either arent up to the task of defining terms or don’t want to define terms for some super mysterious reason about which it would irresponsible to speculate.
Actually it is the argument that I want to make, and your “spin” of my argument is just not correct.
We HAVE TO use words to describe inventions and I do NOT make an argument against using words.
Instead (you might want to take notes), we must deal with the inherent limitations of words, which means (gasp) that you cannot be as anti-patent as you want to be.
Further, your offer of “a more likely explanation: is STILL a F A I L, because my original post is indeed correct, and you have (conveniently?) ig nored the actual point in front of you that the words used are (still – Oh Noes) words.
You had to try really really hard to get this so really really wrong.
Yes. BRI is needed to determine whether the claim is allowable over the prior art. Determining whether a claim is allowable over the prior art requires deference to the prior art. Reason being that applicant can make up a new word for an old thing. BRI provides a buffer against this.
In court, the patent holder seeks to hold an infringer liable for a product created after the patent issued. This requires the claim language to be construed more strictly to prevent post hoc constructions by the patent holder to twist the claim language beyond what was accepted at the time of invention to encompass the infringing product.
The prosecution history estoppel aspect only comes into play when the patentee tries to expand the claim language to capture the infringing product.
So the “do over” is not necessary to objectively determine the meaning of the term. The patent holder is asking for the do over in many cases because it did not foresee how the infringer would be able to design around the patent.
Of course, the opposite is also true. The infringer will try to redefine terms after the fact so they don’t read on their product.
The prosecution history rarely has anything to say about these unforseeable issues. It focuses on how the patent can get around the prior art, not some unknown future device.
“Determining whether a claim is allowable over the prior art requires deference to the prior art. Reason being that applicant can make up a new word for an old thing. BRI provides a buffer against this.”
Talk about an odd way of putting things….
What does “deference to the prior art” even mean?
Further, BRI is not about guarding against “new words.” BRI applies no matter whether the words are “new” or not.
You have a decidedly biased anti-patent view here. Rather than “The patent holder is asking for the do over in many cases because it did not foresee how the infringer would be able to design around the patent.” you should take a more objective view that claim construction aims to provide the full protection of what was invented in light of the (necessary) limitations of language. You give some lip service to infringers “playing the game,” but you still have an implicit bias against the patentee.
Ryan, “The infringer will try to redefine terms after the fact so they don’t read on their product.”
Duh.
I’m very confused why this should be a problem. (Aside from that you will get Aller’d half the time anyways instead of the Examiner finding art). If you amend down to 1-5, you get 1-5, because if that’s not the case you have essentially tricked the public, as some guy can read your patent, happily produce 6-9, and then magically be infringing? Now, we know that isn’t often reality, but it represents a real obfuscation of the purposes of patent law.
Alex,
If this were a process patent, you are right. The plain meaning of 5 is 5 with a penumbra to 6. I should have said my numbers should be taken as measures of broadness. (Thus, 1 is a very detailed specific embodiment and so on.) That is how the examiner can say the BRI of 5 ranges up to 10.
Also, if this were a process patent, if one wants to cover up to 9, then one has to claim it. But in a process patent, the BRI of 9 is at most 10. In my hypo, the BRI of 9 could be 14 which reads on prior art.
LOL – and this does not even broach the fun p0ke-in-the-eye of those who want exacting “objective physical language” because the moment you allow a range, you leave behind the actual claim language of a singular objective physical language description of a single invented item and instead of claimed an up-a-rung abstraction of a set of things.
“you leave behind the actual claim language of a singular objective physical language description of a single invented item and instead of claimed an up-a-rung abstraction of a set of things.”
Nobody that adopts the view of requiring objective physical structure objects to “leaving behind the actual claim language of a singular objective physical language description”. They only object to the WAY in which that is done in some circumstances.
6,
Love the way you pipe in and continue to confirm that you just do not grasp the concept of the ladders of abstraction.
Oh I understand it alright. Indeed, they went on about it at some length in sculpture class (my one and only “fun” elective I got to take in school). I note that I understand it so well that I know why it gets you and yours into trouble with the lawl.
You say that you “understand it” but that is merely a claim, lacking any evidence on the record here.
In fact, your statements evidence a lack of understanding.
Still.
Further troubled, your BRI is NOT necessarily stopped at 10 – and may very much depend on what you discuss int eh specification (think, for example different scales such as logarithmic or sinusoidal between different values or heck, even the pH scale….
This hypo is ridiculous. Why would the applicant amend unnecessarily beyond what was agreed as allowable? Also, under Phillips, the court would never get to the prosecution history because the plain language of the claim is clear. The claim covers 1-5.
DC: I’ll note here that the Federal Circuit’s recent decision in Columbia University v. Symantec appears roughly follow the suggestions outlined by Google here.
I’m not sure about the “roughly following” (although that’s a wishywashy term) but I do think the CAFC got it right in Columbia University. Specifically, when the specification is internally inconsistent, patentees shouldn’t be able to cobble together post-hoc explanations in court as to why one would “figure out” which of the contradictory positions is “correct”. The fact that an argument made in prosecution is consistent with one of the positions is irrelevant. An ambiguity introduced by an internally contradictory usage or definitions of terms may be properly addressed by a reissue that admits and fixes the error, and that’s about it.
As a policy matter, the patentee’s inconsistent positions on the scope of its own claims should always be dealt with by the court in a manner which promotes the invalidation of the patent. Note that this is not simply a matter of “construing the claim” in, say, a narrower manner that leads to a result of non-infringement with respect to a particular defendant.
When, for instance, a patent asserts in court that a hundred different parties are infringing its patent with their five hundred different products, if there is no way a reasonable person can reconcile that positions taken with the asserted claims then the patent should simply be chucked in the trash. The point is that the patentee must know what it’s claims mean when it brings suit. How can it be otherwise? The patentee can be wrong, of course, in which case the patentee may lose a particular case for one reason or the other. But the patentee can’t file suit with the belief that its claims mean vastly different things until a court informs it otherwise. That’s an effective admission that the claims are ambiguous on their face. Allowing patentees to behave like that without severe penalty (invalidation of the patent, at a minimum) is absurd, unrealistic, and unfair. But it’s the way things have been working for quite a while.
The bottom line is that contradictory positions should always be held against the patentee, wherever and whenever those positions are taken.
As for the specific questions posed by Google:
1. When construing a patent claim, should courts generally consult the prosecution history as context for resolving ambiguities, or is prosecution history relevant only if it clearly and unmistakably disavows claim scope?
Like the specification, the prosecution history is always relevant to understanding whether the terms are, in fact, ambiguous. If ambiguity is introduced during prosecution as a result of a statement made by the prosecutor which contradicts an earlier position, then the patent should be found invalid as indefinite, full stop. Proecution is not the time to be introducing new terms into claims or employing experts to first introduce specialized technical definitions of terms based on some passing statement in the specification about the relationship of the invention to the prior art. That information belongs in the specification as filed.
2. When a patent applicant has amended a claim to overcome the Patent and Trademark Office’s earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant, as the Supreme Court has held
The answer is yes but if the amendment introduces ambiguity, you don’t “resolve the ambiguity” by choosing the narrower interpretation of the claim. You find the claim indefinite and you kiss the patent buh-bye.
“Specifically, when the specification is internally inconsistent, patentees shouldn’t be able to cobble together post-hoc explanations in court as to why one would “figure out” which of the contradictory positions is “correct”.”
I fully agree with Malcolm on this point.
The examiner did not read the Provisional Applications. If he had, he would have issued an objection to the specification based on the inconsistency. The claims were allowed given the meaning given the meaning the Examiner understood from the utility application alone and which the Inventors now claim in court.
That boilerplate incorporation by reference was included without going through the provisionals with a fine tooth comb is unfortunate, but given the limitations of time and money should not be unexpected and should not invalidate the patent. The patent office and the courts can make as many mistakes as they want without penalty. Why are applicants expected to be perfect 100 percent of the time?
Be that as it may, Les, the words chosen DO count.
“As a policy matter, the patentee’s inconsistent positions on the scope of its own claims should always be dealt with by the court in a manner which promotes the invalidation of the patent.”
This however, is simply anti-patent rubbish.
Sure would be refreshing to see Google advocate for the validity of a patent.
Find one of Google’s many incredibly junky patents, practice it and tell them you are practicing it.
See what they do. The bonus is that you’ll probably get a little taste of how awesome it feels when someone asserts some ridiculous junk patent against you.
What does this comment have to do with Google advocating for the validity of a patent?
PatentBob,
Don’t you know (yet), Malcolm is on record as feeling that ALL software patents are – per se invalid or ineligible (whatever)…?
And don’t you also know (yet) that Malcolm has a real self-l0athing issue because (supposedly) he is a patent attorney that helps clients create property – personal property at that – that is something that does not belong to the commons, and that people (gasp) will try to make money off of that property or (Oh Noes) actually enforce the property rights by bringing a lawsuit…?
These are NOT new things, PatentBob. In fact, this month we all are celebrating the Decade of Decadence that Malcolm has brought to this “ecosystem.”
What does this comment have to do with Google advocating for the validity of a patent?
Everything.
My gob, man, learn to read.
I hope someone/some company advocates for a patent that squarely places the issue of computer-implemented inventions in front of the CAFC and the Supreme Court. A nicely defined set of encryption claims, for instance, where everyone agrees the encryption scheme is new and useful, but the claims only capture the sender or receiver. That is, the sender takes in data, performs an encryption algorithm on the data, and the output is encrypted data. Also, it would be beneficial if the claims also had a system, where the system claims weren’t rejected under Alice but the claims directed to the sender or receiver were.
I agree.
Especially when one considers that in the FULL cycle (encrypt and decrypt) – the end result is NO different than what you started with, and yet, MASSIVE utility has been achieved.
encryption claims
Because those are soooooooo plainly eligible.
“Also, it would be beneficial if the claims also had a system, where the system claims weren’t rejected under Alice but the claims directed to the sender or receiver were.””
Good luck finding that purple squirrel.
You seriously think that such would be “purple squirrel” difficult….?
One that satisfies all of his criteria? Yes.
The Court would have to re-write Phillips to account for what it means to strictly construe amendments and arguments against the patentee.
Exhibit Supply, Keystone, Smith, Hubble, and ITS Rubber are obviously the root of the Festo doctrine. Their discussion of “strictly construing” seems to have more to do with establishing the rule that the patentee is stuck with claim limitations, even if they were more than was necessary to overcome the prior art before the examiner. Little is said beyond that which would set a different legal standard for determining what falls within the scope of a disclaimer.
All examiners are aware of this bs. I’ve had hundreds, if not thousands of amendments following my prior art rejections and I have yet to have a single one which was for the purpose of limiting because my art read on your scope. I’m amazed at your collective goodwill to repeatedly cut your clients’ valuable scopes purely to keep me happy and move prosecution forward when I apparently haven’t made a proper 103 rejection in my entire career.
As I’ve said before this is the biggest problem with the MPEP right now – the MPEP is premised on the notion that the applicant can do only one of two options: Either argue against the examiner’s theory or concede the examiner’s theory and amend to moot the theory. 90% of arguments ignore the theory and I have yet to a see a single amendment that said they were amending to get around the prior art. This opens up unconsidered (to the MPEP) third and fourth options – one where the theory is not attacked but the scope is not changed and one where the scope is changed but not in a manner to get around the theory. When rejections are withdrawn in the third and fourth circumstances it creates a problem for the record.
The easy solution, of course, is to simply put in requirements that mandate the two originally considered options – 1) require a statement that the amendment is for the purpose of getting around the rejection or it will not be treated as a bona fide response and 2) Summarily uphold all rejections for arguments not directed to the examiner’s theory of rejection (which ought to be occurring at the appellate level anyway, it just doesn’t occur below it)
The harder-but-more-appropriate response is to allow a third and fourth option but modify the compact prosecution rules to allow a rejection to be asserted in response to any applicant action so long as the rejection has a causal connection with the applicant’s act. So if, for example, the applicant argues that the example in the reference does not teach how to do step A, and applicant doesn’t teach how to do A either, Applicant’s argument would trigger an enablement rejection, because now the record shows that there is no teaching in the art of how to do A. This gives the applicant the freedom to speak how they want, but holds them to the consequences of their speech.
What clearly cannot keep happening is what happens now – where the applicant says something to get around a rejection but then comes back later arguing just the opposite.
RG – I’m trying to follow your argument here. I’m in favor of Applicants being unable to amend to overcome a rejection and then later argue that the claim covers the thing that was cited. That’s plain logic. However, I do believe that many Applicants amend claims to simply accept subject matter that the Examiner is willing to allow – and this should be acceptable. This approach not only reduces examination cost for the Applicant with respect to that application, but also frees up the Examiner. The Applicant can file a continuation if they want to fight for the broader scope.
“However, I do believe that many Applicants amend claims to simply accept subject matter that the Examiner is willing to allow”
It certainly should be allowed. The cost savings of not fighting tooth and nail over every limitation are gigantic, especially when the difference is scope is practically non-existent like it is in many cases.
We amend claims all the time, even when we believe the Examiner is completely wrong. Many clients will not appeal, as appeal costs $2,800 just in fees and takes 3+ years. When it was cheap to appeal, we appealed all the time. Now, it’s completely different.
I just completed a Response where I thought the Examiner’s arguments were complete gar bage (respectfully). We nonetheless amended the claims and filed an RCE instead of appealing.
Plus, the current rules for 103 are such that it’s very difficult to argue against such rejections. Even for two references that no one would ever combine, it has become impossible to argue against this. And the Pre-Appeal Brief Conferences have become such that if you have a 103 argument, you lose. They seem to let those go to appeal.
The danger of amending is facing a(nother) clear case of patent profanity (read that as not-so-unnoticed-“unforeseen” consequences) if a decision comes down with any sense of undue harshness towards applicants that amend.
Those pesky “scriviners” will still fight for the full rights of their clients.
That is true. This is highly client-dependent. There are clients who fight tooth and nail against amendments. Most do not, though. And even I look at the extreme cost of appeals and the length of time it takes appeals to get through and wonder if it’s worth it.
I just completed a Response where I thought the Examiner’s arguments were complete gar bage (respectfully). We nonetheless amended the claims and filed an RCE instead of appealing.
Which is fine, but that act is an admission that the rejection is proper. When a prima facie case is made and you don’t challenge the prima facie case, the conclusion stands. This underlying issue (that you think the examiner is wrong and want to move forward yet preserve the challenge) is the flaw in the procedure I’m talking about.
However, I do believe that many Applicants amend claims to simply accept subject matter that the Examiner is willing to allow – and this should be acceptable
Well this is a special situation. I have no problem with another claim being put forward (either in a continuation or as a different independent) when allowable subject matter is identified. I’m not talking about allowable subject matter in my main post – that is directed to where the Examiner makes a rejection and the applicant responds in a manner that may or may not overcome the rejection and may or may not require further search.
RG, by “theory,” do you mean “construction” of the claim language? By reading the claims on a reference, you implicitly construe the claims.
As I have argued, we two searches, a first to flesh out the claim construction/claim clarification issues, and the second to search the claim as clarified.
“RG, by “theory,” do you mean “construction””
He means the grounds of rejection (claim construction + designation of parts in the ref).
6, same thing. When the examiner reads the claim on a reference, he tells us his construction.
“he tells us his construction.”
Mmmm, sort of. Maybe. Somewhat.
Mmmm, sort of. Maybe. Somewhat.
Good answer 6.
A claim construction is, in essence, a definition of a term that identifies the necessary characteristics of the thing being described.
When an examiner reads the claim on a reference (and presuming that the Examiner specifically identifies the alleged teaching being relied up to teach a particular claim limitation — something some Examiners do better than others), what the Examiner has provided is not a definition but an example.
The problem with definition by example (particularly when only a single example is provided) is that you can only guess as to which one(s) of the characteristics of the example are relevant.
Consider a claim to a motorcycle and a bicycle is presented as an example of a motorcycle. They both can have spoke wheels, but is that a defining characteristic? They both can have gears and a chain (or equivalent) driving the rear wheel, but is that a defining characteristic? They both can have handle bars for steering, but is that a defining characteristics?
Now, instead of a bicycle, I trot out the latest tricked-out Harley Davidson. I could easily identify a hundred design features on that Harley Davidson yet only a few could be considered defining characteristics of a motorcycle.
Simply put, an example is a poor excuse for a claim construction — particularly in the first example in which the example (i.e., a bicycle) and the claim limitation (i.e., motorcycle) share many of the same features but one does not define the other.
That post pretty much hits the nail on the head in describing what is wrong with the lethal combination of BUI and requiring only “notice” from the examiner as to the reasons for rejection.
But does not the legal definition of “notice” carry with it the fact that the notice itself must be sufficient?
If, as “Why 112 when 101” points out (and you and many others have pointed out the NON-sufficiency of “BUI”), what the examiner claims as “notice” is not in fact legally sufficient, has the government met even the first step (much less any semblance of a FULL examination) of establishing a prima facie case?
On the other hand, does “notice” change after a “first pass” by the office and a mere challenge by the applicant?
Yes, the duty of persuasion never leaves the Office – but how low is that first hurdle for the Office, and in fact, and in deed set very low, that self same low level is just how easily met by the applicant? This last point merely reflects that if examiners want that prima facie level set very low for their “ease” of a first pass, that self same low level does NOT rise for the applicant to overcome, and in the end, in a FULL examination, such initial back and forth does NOT change what the Office must do in its examination – which is why the previous thread sorely needed to be amended and note the actual duty of the Office for the full examination cycle.
I agree. My own personal view of the “prima facice” requirement (i.e. the burden of production) for examiners is that any gibberish they clack out on their keyboards is sufficient to make a “prima facie” case. Because if my client still wants the patent, I have to respond and point out the errors in the rejection. And as soon as I do that, the burden of persuasion (i.e. preponderance) is on the examiner. If they want to meet their burden of production and establish “prima facie” cases with nonsensical gibberish, that’s fine by me. I don’t reward, coddle, encourage, or embolden such shenanigans by the examiner, so it doesn’t affect me. If their second OA doesn’t meet their burden of persuasion, I appeal. Plain and simple.
Alas,
FAR too many on these boards (both attorney [supposed and otherwise], and examiner) do not seem able to grasp the legal requirements of examination.
Surely, many such “teaching moments” have been lost, and if it takes patent profanity – such as might develop in this case – to wake people up, well, then that might be bitter medicine to take.
“But does not the legal definition of “notice” carry with it the fact that the notice itself must be sufficient?”
You’re quite right about this anon. But the bar is rather low for notice, if because of nothing else historical precedent and bureaucratic necessity. You might think that it’s easy to forsee and explain what the applicant will not understand in an OA but only a true master will get that right consistently.
Keep reading 6 – as low as the bar may be for the examiner to set it – that is the same level of “low” that it is for the applicant to step over it.
“that is the same level of “low” that it is for the applicant to step over it.”
Eh, idk bro. There are a lot of caveats in there. Like that you have to make a rebuttal and all that, just like we discussed the other day. I tend to agree with the posters in here that, when push comes to shove generally the situation on the ground is that the standard is a bit more high for the response. Even if it is supposed to be that low, which is debatable in the first place. You’re fighting the federal government here anon, don’t expect the deck to be stacked equally on each side.
…AND there goes Ned on his Windmill Chase…
“Eh, idk bro”
LOL – then you better think about it a bit more.
There is only one bar in play – there simply is NOT “two bars” in play.
That one bar necessarily reflects the single item.
You want that bar to be considered “really low”…? Then you must accept that the same low bar is there for the applicants.
Caveats have nothing to do with your attempt to have (somehow) two different bars in play.
Your “only a true master will get that right consistently” has nothing to do with the single actual bar in play.
Your “fighting the federal government here” has nothing to do with the single actual bar in play.
If anything, as David Boundy shared with the administrative law angle, the field would be slightly tilted against the federal government (if you wanted to have any disparity). Your “sense” of bureaucratic necessity is opposite of the APA – your job just does not exist for the convenience of you.
Good comments patentcat – I do wish that the Office would listen to such constructive ideas.
“Then you must accept that the same low bar is there for the applicants.”
Well, there’s nobody here with a gun to my head. Or to anybody’s head here at the PTO.
“Caveats have nothing to do with your attempt to have (somehow) two different bars in play.”
Sure they do, because that’s a rather huge caveat. You have to submit upon dem facts usually from dat reference or other evidence, and then all your evidence has to meet evidentiary standards just like ours does. And it has to be relevant etc. etc. And on and on and on, and so in practice that bar gets “higher”.
Now, to be clear, I’m rather generous to people on their responses myself. If they have something they want considered I’m happy to hear them out. But not everyone is so giving of their time and happy to have their decision making challenged.
“Your “fighting the federal government here” has nothing to do with the single actual bar in play.”
Bro, your OCD is flaring up. Just chill. I get what you’re talking about, but I’m telling you things that affect “the bar” in real life. I know you don’t like that they do, but reality is here knock knock knockin on your door. If you don’t want to hear about it and put your hands in your ears then fine.
I don’t know man, after a few years of observation I think the issue isn’t so much the standard that is “required” and is moreso just the culture at the office. Promulgate an entitlement culture and you wouldn’t have quite so many rejections. Promulgate a culture of rejections and you will have people stretching out to the limits of what they are allowed to get away with.
I think the “culture” that is promulgated at the PTO is pretty clear: 1) reject everything (because there are zero consequences for doing such); 2) make as many final rejections as possible (because, again, there are zero consequences for doing so improperly); 3) cross your fingers and hope that when faced with the irreparably broken petitions process and/or the ridiculously long appeal process the applicant will, in an attempt to “work with” the examiner, buy the examiner first class passage on the RCE gravy train; 4) rinse; and 5) repeat. As long as there are zero consequences for getting it wrong, and in fact very nice rewards for getting it wrong, the system we have now is never going to be changed. Take RG for example, he’s not satisfied with getting two counts for getting it wrong, he wants even more counts for getting it wrong. He wants counts ad infinitum with no expectation of ever getting it right.
That’s the “culture” you have over there. Those of us trying to navigate the process are just doing the best we can given that “culture.”
“I think the “culture” that is promulgated at the PTO is pretty clear: 1) reject everything (because there are zero consequences for doing such); ”
That right there is what I’m saying. But before Dudas (and especially wayyyyyy back when like the 40’s, 50’s n 60’s) the culture was the arse opposite. There may have still been a lot of rejections back then, but the culture promulgated certainly wasn’t the same. They were legit trying to promulgate a culture of entitlement. As no doubt they should have been, as back then men were men and inventions were hard n fast inventions, not this mamby pamby etherreal nonsense in verbiage. But that’s the price we pay for letting business methods and comps into the patent system. The system as a whole overreacts.
“2) make as many final rejections as possible (because, again, there are zero consequences for doing so improperly);”
This one at least the people at the top are making somewhat small steps to remedy. They want, according to themselves, in a perfect prosecution, 1 non-final and an allowance where appropriate, and only a final if we really can’t get to an agreeable allowance. That’s supposedly their perfect prosecution. Of course, the official training guidelines don’t say that. It’s under the table.
“; 3) cross your fingers and hope that when faced with the irreparably broken petitions process and/or the ridiculously long appeal process the applicant will, in an attempt to “work with” the examiner, buy the examiner first class passage on the RCE gravy train; 4) rinse; and 5) repeat. ”
Those aspects are only in some AU’s like mostly in business methods and comps as far as I can tell. Which might even be where they belong. Of course there are some other few AUs that follow this nonsense as well, probably from bleed over from the business methods and comps having influenced policy.
“As long as there are zero consequences for getting it wrong, and in fact very nice rewards for getting it wrong, the system we have now is never going to be changed.”
I somewhat agree with you there man, but on the other hand there literally cannot be “huge” consequences for getting it wrong. The reason is simple, the training is insufficient to make people know how to do it correctly in every instance, and the people in charge (at least at middle management level), aren’t necessarily on their game enough and or courageous enough to make the correct call each time. It really does take no small amount of backbone to stick your neck out for a handfull of juniors each week, every week signing cases. Not only that, but there really are legitimate issues that come up with simple human failures in either the applicant explaining what they’re talking about to the office, or the office understanding what the applicant is talking about. It would be rather insane to come down too harshly from a management perspective, otherwise you’d have an office staffed by nothing by air with no “examiners” in sight.
“Take RG for example, he’s not satisfied with getting two counts for getting it wrong, he wants even more counts for getting it wrong. He wants counts ad infinitum with no expectation of ever getting it right.”
Well, something like that anyway. He’s a bit of a character it is true. Though frankly I do agree with him to an extent. And the reason is because the office’s staff can only, as a maximum, perform their jobs up to the training level that they have, and on the information that they have up to the point that they can understand it. And not paying people for work they did in accordance with the training level that they have is kind of bs. And that shizzle goes on all the time.
You can sit and say “oh well examiner x was wrong this time” “oh well examiner x was wrong this other time” ad infinitum, but frankly you’re probably asking too much from the average examiner.
AAA JJ: “I think the “culture” that is promulgated at the PTO is pretty clear: 1) reject everything …
6: That right there is what I’m saying. But before Dudas (and especially wayyyyyy back when like the 40’s, 50’s n 60’s) the culture was the arse opposite. There may have still been a lot of rejections back then, but the culture promulgated certainly wasn’t the same. They were legit trying to promulgate a culture of entitlement. As no doubt they should have been, as back then men were men and inventions were hard n fast inventions, not this mamby pamby etherreal nonsense in verbiage. But that’s the price we pay for letting business methods and comps into the patent system. The system as a whole overreacts.
6: I thing there was a time before Dudas where the Office was eagerly handing out business method patents that they could not prove were disclosed by the prior art, which was and still his hard, given the paucity of public disclosure of business methods in patents.
Since the outcry over State Street Bank reached a fever peak and the courts lead by the Federal Circuit in Biski struck back against the Rich court (Lourie demarks the era’s of the Federal Circuit as before and after Rich), the PTO itself has gotten the message.
It is a shame that that one case is caused the patent system so much damage. Business method patents are primarily responsible for the troll phenomena. It is not an accident that eBay came out the way it did because the patent of concern was a business method patent. The need to crack down on bad patents is behind all the new PGR procedures, especially the CBMs procedures. And of course, the current activities in Congress to further weaken the patent system is primarily motivated because of “trolls,” which in turn is a phenomena caused by business method patents and State Street Bank. What a tragedy.
(Supposed to go here:)
…AND there goes Ned on his Windmill Chase.
I somewhat agree with you there man, but on the other hand there literally cannot be “huge” consequences for getting it wrong. The reason is simple, the training is insufficient to make people know how to do it correctly in every instance, and the people in charge (at least at middle management level), aren’t necessarily on their game enough and or courageous enough to make the correct call each time.
Are you referring to the fact that many SPEs don’t have any experience in the art in which they supervise? Also, strangely enough, you end up with more senior examiners who didn’t end up learning the state of the art as a whole, because their SPE/the senior examiner they reported to didn’t understand the art, etc.
Couple this with applicants who sometimes use non-standard terms for fairly common things, and you can see why keyword matching is common.
Way back, when I first came from academia, I suggested to my then-SPE doing art-based training, in a sort of seminar series, where everyone could research and do a presentation, but it never really went forward; maybe I was too new and he didn’t want to do anything outside the box yet.
The technical training is pretty good as far as the individual sessions address specific topics, but horrible as technical training. The problem is it’s so specific, and there are only a few sessions a year, so only a very very small amount of examiners could actually apply it in their art area. Again, this is why I suggested a seminar series.
The office needs 5-6 sessions dedicated to each art unit/group of art units per year, not 5-6 dedicated to each TC, along with other types of continuing technical education so examiners can know the art well enough to look at an application and say “Oh, this is just a standard X with [what the applicant views as their invention]”, or “oh, they’re calling this Y but it’s more commonly known as Z”. Many examiners get there in a few years, but some manage to stumble along in ignorance for quite some time.
whoops, goes here:
Good comments patentcat – I do wish that the Office would listen to such constructive ideas.
“Are you referring to the fact that many SPEs don’t have any experience in the art in which they supervise? ”
That’s part of it. But not the whole of it. There are plenty of people that can sneak up to SPE without understanding evidence, or any burdens, or any of the “advanced”/”basic building block nobody pays attention to” issues that would stop a rejection from issuing. It’s hard for people to be “caught” with the current clear error standard (which is probably appropriate) and unless someone eventually catches them and corrects them they just keep on keeping on.