82 thoughts on “On Reddit, folks are wondering if Patent Examiners Wish they Thought of That

  1. 12

    “On Reddit, folks are wondering if Patent Examiners Wish they Thought of That”

    At the Patent Office, I bet that examiners are wishing that their Applicant had been the one to think up ‘that’.

  2. 10

    What the patent attorney is looking for is that genius applicant that comes up with that new invention.

    The 1% inspiration and 99% perspiration is true to profiteering on a worthy invention. The mantra, it’s the client’s invention, let the client do the work. I’ll take part of his perspiration.

    1. 10.1

      What the patent attorney is looking for is that genius applicant

      Happens in a Flash….

      (Oh wait, Congress was explicit about NOT needing that…)

      😉

  3. 9

    I bet people working at the Patent Office spend a lot of time wishing that the applications on their desks were never filed.

    1. 9.1

      It’s amazing how much people whose only job, and source of income, is examining patent applications actually hate patent applications.

      If you’re one of those examiners, do yourself, and all of the rest of us, a favor and find another job.

      1. 9.1.1

        I am not sure what it means to hate ‘patent applications’. Do the afflicted print out paper copies only to burn them?

          1. 9.1.1.1.1

            Aggreived examiners do not hate the applications. Their issues are obviously with applicants and attorneys (mostly attorneys. Even the most exasperating pro se is likely pitiable).

        1. 9.1.1.2

          “Do the afflicted print out paper copies only to burn them?”

          No. They post whiny diatribes on patent law blogs about “everyone filing obvious dreck.”

            1. 9.1.1.2.1.1

              As somebody whose livelihood is “examining” that “obvious dreck” I think the words you’re looking for are: Thank you.

              You’re welcome.

              1. 9.1.1.2.1.1.1

                Indeed, it would seem that cases that warrant some of the diatribes this blog receives would be really welcome for examiners, since they could find that killer prior art in no time and get a quick and easy disposal.

      2. 9.1.2

        AAA JJ, imagine the peasant/worker in merry old France circa 1789. Would you be shocked to find that they hated the privileged classes that treated them like curs despite that their only job and source of income was to serve these privileged classes?

        1. 9.1.2.1

          I don’t think anti-applicant/attorney attitudes of examiners have anything to do with attorney treatment of examiners.

          Examiners see applicants and attorneys every day who are trying to abuse the system. That is not endearing.

          1. 9.1.2.1.2

            Ben, then there are multiple reasons why examiners can become “unhappy” with the examination system and their role in it. I also know a lot of them do not like the civil service system they are caught up in where they are both coddled and, at the same time, treated like cogs in a machine.

            1. 9.1.2.1.2.1

              “I also know a lot of them do not like the civil service system they are caught up in where they are both coddled and, at the same time, treated like cogs in a machine.”

              That’s a funny way of saying it.

              I think they’d be less unliking of the civil service system if they had infinite knowledge about the total setup. The most exasperating part about the civil service system is how breathtakingly large the “requirements” etc. are. You could easily be here 30 years and never know half of them.

            1. 9.1.2.1.3.1

              To the “examiner class” filing applications and expecting a competent examination is “abusing the system.” They view their job as “gittin’ dem counters!!!!!” not providing what was paid for.

          1. 9.1.2.2.1

            That’s just Ned partaking in the “Malcolm swagger” that anyone seeking patents simply “must be” G-g-g-grifters.

      3. 9.1.3

        Back in the day, patent examiners were experts in a select field of art. But some kind of “quality shift” caused top examiners, say in the field of jet turbines, to be assigned positions to the field of folded boxes.

    2. 9.2

      Interesting remark. The useful art is not the same anymore. Soon, AI programs will rule, until proven otherwise. Rage against the machine.

  4. 8

    Re: The comment on Unites States Patent and Trademark Office (USPTO) personnel spending a lot of time wishing they thought of that …

    Could not say the levels were high or low but 35 USC 4 on applying for or directly/indirectly applying for pagent makes that fairly irrelevant.

  5. 7

    Bros, legal question here.

    A question if you happen to know the answer. Did a case awhile back, did a restriction, he elected device, cancelled method, got device allowed. Now have a “CON” (what they call it in the ADS) from that parent, but has method claims nearly but not the exact same as the previously unelected (and cancelled) method claims. These claims are now within a hair’s breath of an ODP rejection. Unless they get protection from ODP because of the previous restriction. I think this new case should actually be called a “DIV” and it should get protection from ODP because of previous restriction. Any thoughts?

    Note they specifically call it a CON instead of a DIV in the ADS (for whatever reason). Do I need to make them call it a DIV before they can get protection under 121 or do they get it automatically as the CON legally is a DIV regardless?

    1. 7.1

      I feel like I remember a case that specifically said if they don’t call it a div then they don’t get the protection…I think that was with a con too, so pretty much what you’re describing. In that case it was being challenged in court so it was too late to reclassify it; they were trying to argue against the ODP argument being brought against them in litigation. I’ll try to find the case.

      1. 7.1.1

        Thanks for the heads up there guys. But I’m really looking more for what you guys think I should do in such a situation. Just send them an ODP and make them sort it out, or just resolve over the phone if possible?

    2. 7.2

      There was a case several years ago, authored by Newman IIRC, where the CAFC went anal and said if you don’t call it a div, you don’t get protection under 35 USC 121. So if you as an examiner want to a be a jerk, give them the OTDP rejection and let them figure out the problem. If you want to be nice, call them, tell them to file a new ADS that makes this case a div rather than a con of the parent, and no OTDP rejection.

      1. 7.2.1

        Yes that was what I was thinking. I guess I’ll just have to decide, maybe go ahead and call them and see what’s up.

      2. 7.2.2

        if you as an examiner want to a be a jerk

        If the examiner really wanted to be a jerk, let the deficiency pass, only to be found later in enforcement actions.

    3. 7.3

      Whats the problem with ODP? If it hadn’t been restricted these claims would expire when the “first” patent expired and would be sold or not with the first patent. They respond to the ODP with a terminal disclaimer and the claims expire and get sold or not with the first patent… same, same.

      Its just a shell game to grab more fees…

      1. 7.3.1

        Les, if there is a terminal disclaimer, there is only one invention in two patents. Now, there are consequences in court. One does not get royalties per claim, only per invention.

        1. 7.3.1.1

          Well, they originally believed it was one invention. Else why were the claims in one application? Were they trying to perpetrate a fraud on the Office?

          Of course, with the restriction requirement, the Office has insisted that there are two inventions…. If the application qualifies as a divisional, it is a divisional, independent of which check box was checked.

        2. 7.3.1.2

          “if there is a terminal disclaimer, there is only one invention in two patents.”

          I’m not sure where you get that from. What coerces a TD from one is an allegation, not that there is one invention, only that one invention would have been obvious in view of the other.

          1. 7.3.1.2.1

            One cannot get multiple royalties — either per claim or if the claims are divided into two patents. There is a reason for the terminal disclaimer that also requires common ownership.

            1. 7.3.1.2.1.2

              A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

              MPEP 804

                1. They certainly are not the same ones remaining in the parent, now are they Ned?

                  What are the chances that they are closer (FAR closer) to those restricted?

                  (In other words, your reply attempts a difference without a distinction).

                2. Anon, the issue is simply this: section 121 protects applications filed on restricted claims. If the claims in the so-called divisional not the same claims or directed to the same claimed invention that were in the parent application that were the subject of the restriction, they do not get the benefit of section 121.

                3. Ned,

                  What exactly do you mean with your use of the term “directed to”…?

                  The Supreme Court has coated that term with a rather thick layer of gloss (one that surely covers the meaning of my post at 5:12 pm that you are replying to).

                4. Your reply is non-responsive.

                  Not the “to” portion, what does “directed to” mean?

                  In the present context, as I have stated, my post certainly qualifies the “different claims” as STILL “directed to” that which was deemed by the Office as a different “invention.”

                  You seem unable to grasp what the Court has done with their wax of nose mashing, and the direct (even if unforeseen) consequences that MUST accompany their (rather poor) scrivining.

                5. Things for you to think about before you respond, Ned:

                  Congress directed that it is the inventor that defines what the invention is (the claim as a whole).

                  The Court has indulged itself with its ultra vires and unlimited “Gist” t001, which can be (and often is) unrelated to what the claim as a whole actually sets forth.

                  Once you deviate from what the claim actually is (as a whole), then you are untethered to BOTH what Congress wrote as well as what may actually BE in the claim (which, as a whole, defines what the invention is). Your so called “novel subject matter” is, how precisely again, tied to the law…?

      2. 7.3.2

        “Whats the problem with ODP?”

        I’m not saying there is a problem but if they can get protection by calling this a DIV then I’d rather resolve the case now.

        1. 7.3.2.1

          Seems like the stand-up thing to do. But offhand, I do not believe I’ve ever gotten OTDP when the parent and con claims were in such differing categories as device, method.

          Maybe I have and just don’t remember it.

          1. 7.3.2.1.1

            Since 6 is aware of the “stand up”thing to do, it may well be the ethical thing to do.

          2. 7.3.2.1.2

            He redrafted the method claims so that they somewhat mirror the device claims now except with some small differences.

            1. 7.3.2.1.2.2

              Ah well, if the claims are now substantively different than the ones declared a different invention, then maybe the label “Divisional” is no longer fairly applied. THAT is the question you should be asking, not whether ticking a different check box grants dispensation.

              I’m not sure of the answer now, but I think the intent of the rule is that: if he had made that amendment in the original application the restriction have been withdrawn, then the application is no longer entitled to the benefits of being a required restriction….

              1. 7.3.2.1.2.2.1

                “Ah well, if the claims are now substantively different than the ones declared a different invention, then maybe the label “Divisional” is no longer fairly applied. THAT is the question you should be asking, not whether ticking a different check box grants dispensation.”

                I know it is a separate question, and indeed I asked both questions. But, these claims as written are still pretty close to the originally drafted method claims in the parent. And there would be a “linking claim” still present to the old method claims in the new claim set. So, yes, I’m pretty sure that they’re the same invention as was previously method claimed.

                Plus, the claims aren’t technically “the invention”, as I’ve explained 1000 times here. The inventive methods in the spec are def different from the inventive structures (though they ultimately produce that structure). The methods are long and complex.

  6. 6

    There’s an interesting article in Fortune about Google’s petition for cert in Cioffi v. Google (their petition for a rehearing en banc having been denied):

    link to fortune.com

    The cert petition can be read here: link to scribd.com

    Questions presented:

    1. When construing an ambiguous patent claim, shoul courts generally consider the record of the patent’s prosecution as relevant context, 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 PTO’s earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant as this Court has held, or consider the amendment history relevant only to the extent that it clearly and unambiguously disavows claim scope, as the Federal Circuit has held?

    On page 17, Google’s petition cites a PatentlyO post authored by Dennis, approvingly (“The contrast between [the CAFC’s Symantec decision and its decision in Google] led the leading intellectual-property blog to highlight the conflict: ‘Symantec appears roughly to follow the suggestions outlind by Google’ in its rehearing petition in this cas and the two panels ‘reached a different result.'”)

    The cited PatentlyO post here:

    link to patentlyo.com

      1. 5.1.1

        MM, thanks for the links.

        What happened: the applicant coined a term not used in the spec to distinguish over the prior art. The district adopted that distinction in construing the term, the Feds reversed, saying the “ordinary meaning” of the coined term (yeah, you heard that right) should control absent a clear disavowal. Cert. petition followed.

        According to the petition, there is a split in the circuit where the prosecution history is always consulted when a claim term has not well defined meaning. Another line uses “ordinary meaning, the claims themselves, and then looks for disavowals.

        The idea that any coined term, not used in the specification with no clear meaning in the art can have an “ordinary meaning” is almost laughable. If this is true about the Federal Circuit, then indeed, something in Denmark stinks.

  7. 4

    As an examiner, it is a bit of a relief to see comments like:

    “I do patent procurement in-house. I assure you both sides of the aisle spend some time thinking “this is dumb””

    And:

    “I’m in-house too. I’ve actually been told, “we don’t care, just file it!””

    I know that most of present company wouldn’t cop to it, but its nice to think that not everyone filing obvious dreck earnestly believes they have an invention.

    1. 4.1

      The person who has to “so believe” is the inventor.

      I certainly hope that you realize that the prosecuting attorney does not have to share that conviction.

      (I also hope that you are aware that the prosecuting attorney often does not represent the inventor – but rather is one step removed by being a representative of the inventor’s employer)

    2. 4.2

      “I know that most of present company wouldn’t cop to it, but its nice to think that not everyone filing obvious dreck earnestly believes they have an invention.”

      Idk, pretty much everyone in my field did “make an invention” and it is one that eventually with narrow enough scope being claimed will be patentable.

      That being said, it is a sure thing that most of these inventions aren’t ultimately going to be worth anything.

      1. 4.2.1

        Do applicants in the chemical arts file claims to process results with disclosures limited to the concept of the result?

    3. 4.3

      As somebody who’s in-house, my advice to my clients is: if it’s novel, file it. Leave the non-obvious arguments to me. That’s what you’re paying me for.

      And everything’s “obvious” to the old hands that have been here for 20, 30+ years. Unfortunately, their understanding of the legal concept of obviousness is rather non-existent. So while we smile and nod our heads at them, their opinion doesn’t count for much when it comes to whether to file.

      1. 4.3.2

        ““Unfortunately, their understanding of the legal concept of obviousness is rather non-existent.”

        The longer I’m here the more I blame poor legislating for that. Maybe if they’d rewrite the statute to not be stupi dly worded for what they actually want it “to mean” then this wouldn’t be such an issue.”

          1. 4.3.2.1.1

            “And if you could rewrite it, it would say…what?”

            All the dozens/hundreds of things the courts have weighed it down with over the years and which are “accepted practice” and which congress wants to accept. They can explain how a person of ordinary skill varies with the art, and how they can’t be an expert, and what constitutes an expert in various situations and blah blah blah a mile long of conditions and considerations of evidence. Oh and what the “burdens” are and all this that and the other things. They can put Graham in there for all to see. etc etc on for miles.

            1. 4.3.2.1.2.1

              Lol: in other words, 6 has no clue on how to write a forward looking prospective law, and would merely add a million and a half band-aids….

      2. 4.3.3

        And everything’s “obvious” to the old hands that have been here for 20, 30+ years. Unfortunately, their understanding of the legal concept of obviousness is rather non-existent.

        Otherwise read as “People who actually have knowledge that approximates knowledge like the hypothetical person of skill in the art would have find something obvious, but I tell them they’re not lawyers.”

        The lecturing ought to be the other way around, Jack.

        1. 4.3.3.2

          “Otherwise read as ‘People who actually have knowledge that approximates knowledge like the hypothetical person of skill in the art would have find something obvious, but I tell them they’re not lawyers.’”

          Actually, the “old hands” are really much more like patent examiners: their hindsight is 20/20. That’s why they need “lawyers” like me to “lecture” them about obviousness.

          You really need to get out more, Jack.

  8. 3

    It’s not quite how I see it.

    More like: That! Seriously? No way! Anybody with half a brain could have thought of that!

  9. 2

    As near as I can tell, they all think, “I did think of that, and so did these other guys if you add a few words to what they said out of context that I these still other guys used.”

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