Rising Claim Counts

Patent.Law050

The chart shows the average number of total claims and independent claims for each year of issuance. The sample is drawn from 28,000 randomly selected patents that issued from 1977 and 2005. (For those who want data, the following table shows the average claim numbers by filing date.)

Year Avg Total Claims Avg Ind Claims n
1975 10.6 2.2 358
1976 10.1 2.0 616
1977 10.2 2.1 620
1978 10.7 2.0 615
1979 11.7 2.1 619
1980 11.3 2.0 608
1981 12.4 2.2 585
1982 11.6 2.1 593
1983 11.7 2.2 593
1984 11.4 2.1 614
1985 11.0 2.1 674
1986 11.8 2.3 689
1987 11.9 2.2 718
1988 12.6 2.3 824
1989 13.2 2.3 912
1990 12.9 2.5 912
1991 12.5 2.4 918
1992 13.0 2.5 932
1993 14.8 2.7 1005
1994 14.6 2.7 1173
1995 16.1 2.9 1344
1996 17.2 3.0 1329
1997 17.1 2.9 1645
1998 16.7 2.9 1562
1999 17.9 3.0 1666
2000 18.4 3.0 1717
2001 18.9 3.1 1615

87 thoughts on “Rising Claim Counts

  1. 87

    Bruce, (jan 4 6:13 PM)

    I wish the Examiners would not have to respond claim-by-claim to 100 claims.

    It would be better for all involved if the Examiner would find a relevant document that most closely resembled the invention, and which by itself knocked out most of the 100 claims.

    The Examiner would just send the document with a 1-page letter saying “this wipes out your claims”

    The Inventor/Attorney could then come back with a valid independent claim differentiated from the art.

    There would be less estoppel, fewer unbased assertions and less time wasted.

    In reality, too often vaguely related documents are mosaiced together to make a hallucigenic 103 rejection of valid claims describing a really good invention.

  2. 86

    Getting back to the original post, I find it somewhat humorous that I am taking a break here from responding to a 100+ claim rejection. I was somewhat in shock to find two days ago when I started back to work this year, that the top four applications on my docket had over 300 claims combined.

    Kudos for all the examiners who actually do the work of responding (mostly) claim by claim to these applications.

  3. 85

    I too am bothered by the finding of the motivation from the second reference. It would seem to be much better if the second reference had been found through searching the relevant subclasses, but it seems to me that instead it is more often today discovered by key word searching.

    So, what I seem to be finding these days too often for my likes is that what I think is a novel and nonobvious combination is put together and claimed. Then, the examiner searches by keywords based on the claims, and, voila, finds all the elements based on the keywords from the claims. But that means that the references are really being put together through hind sight.

    Sure, if the secondary reference has the motivation AND is analogous art, then fine, you might have nonobviousness. But I routinely see secondary references from left field that have something in them that can be considered motivation. But why would the inventor be looking in the nonanalogous art in the first place?

  4. 84

    SF-

    “Requiring the primary reference to provide a motivation was hardly a requirement under the rigid TSM (the motivation could have come from the secondary reference unless the secondary reference was not analogous art). I suppose that, if I don’t expect more from the Board, I won’t be surprised when they fall short of following the law.”

    Even under rigid TSM, you could also rely on other prior art as a reason to combine the references.

    My own experience, the real problem with most improper combination rejections is that the Examiner’s don’t bother to provide any evidence for a reason to combine the references. Usually the references are just combined based on a conclusory statement with no support at all provided by the Examiner.

    And, from what I can tell, in most of the Federal Circuit cases where the combination rejection failed the TSM test, the combination would have failed a hypothetical “Has the Examiner provided any reason supported by evidence for combining the references? test.”

    After KSR, whatever standard the Federal Circuit ultimately arrives at for combining references, I would bet that it will not allow for the Examiner to combine references based on a conclusory statement with no evidence to back the statement up.

  5. 83

    “The BPAI had a habit of reversing in the later 90’s and early 00’s on the grounds that the primary reference did not disclose motivation for combining the secondary reference with the primary reference, under the auspices that motivation was lacking entirely, with no mention or reversal of my very own reasons outlined and provided within the secondary reference for why such features are beneficial to combine. Ask any Examiner working in a Mechanical Art during those periods, I don’t think they will tell you that is surpising.”

    Requiring the primary reference to provide a motivation was hardly a requirement under the rigid TSM (the motivation could have come from the secondary reference unless the secondary reference was not analogous art). I suppose that, if I don’t expect more from the Board, I won’t be surprised when they fall short of following the law.

  6. 81

    “Regardless of whether you state the issue is “whether references can be combined” or “whether the combination of references teaches or suggests the claimed invention”, these are one and the same in the end. If the references can’t be combined, it doesn’t matter whether they teach or suggest the claimed invention. The ultimate test is the latter, assuming the former exists. If the former does not, the latter need not be examined any further.”

    SF-

    Sure. I’m just trying to illustrate that you don’t have to use the point of novelty to combine references. In fact, if you use a reason other than the point of novelty, a combination rejection would be less vulnerable to an impermissible hindsight argument by a patent attorney.

    Thanks to the heavy reliance on computer term searching, Examiners often seem to just look at references as collections of terms and not as documents that teach and suggest technological concepts. Because the Examiners often don’t try to understand the full teachings of the references or fully read the Applicant’s application, they tend to cite references that may use the term in a claim but which have nothing to do with the overall concept of the claim instead of using references that teach the concepts of a claim but which do not use the exact wording of the claim.

    I’ve seen several cases where an Examiner has made a combination rejection where the two references taught away from each other, but where one of the references should have been used as a 102 reference by itself, had the Examiner understood what the reference taught. It’s always strange as a patent practitioner to have to amend claims based on what you have seen in a reference, even though the Examiner has set forth an improper rejection in the Office Action.

  7. 80

    SF –
    The BPAI had a habit of reversing in the later 90’s and early 00’s on the grounds that the primary reference did not disclose motivation for combining the secondary reference with the primary reference, under the auspices that motivation was lacking entirely, with no mention or reversal of my very own reasons outlined and provided within the secondary reference for why such features are beneficial to combine. Ask any Examiner working in a Mechanical Art during those periods, I don’t think they will tell you that is surpising.

    Ender –
    Regardless of whether you state the issue is “whether references can be combined” or “whether the combination of references teaches or suggests the claimed invention”, these are one and the same in the end. If the references can’t be combined, it doesn’t matter whether they teach or suggest the claimed invention. The ultimate test is the latter, assuming the former exists. If the former does not, the latter need not be examined any further.

  8. 79

    JustanExExmr wrote:

    “Clearly, reversing these, violates even your own previously stated incorrect combinatorial technique of moving the novel limitations to the secondary reference.Please stay on point. Either this is a valid 103, or 103 should be eliminated according to most attorneys and even the BPAI for a period before they finally got some sense in their head. In other words, the law does not require that motivation to combine a secondary reference, B, with a primary reference, A, come from the secondary reference. If it did, obviousness is negated, and the only rejections that can ever be made are novelty. Again, in other words, if the main reference “suggests” that the elements of the secondary reference can be combined with it, why even employ a secondary reference???? You’ve already got the teaching right there in the main reference!”

    Like many Examiners, you are confusing the issue of whether references can be combined with the issue of whether the combination of references teaches or suggests the claimed invention. These are two separate issues. References could be combined for many reasons other than the point of novelty. I showed just such a reason in my reworking of your proposed rejection. See MPEP 2144.01 for example:

    “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)”

    The reason you sometimes have to employ a secondary reference is that some elements of the claim may not be in the primary reference. The reason that the teachings of the two references can be combined may be that they share elements that may not even be part of the claimed invention.

  9. 77

    JustanExExmr: It’s surpising to me that, even under the rigid TSM test, that the Board would reverse your rejections as outlined. Did you lose on the grounds that the secondary reference was non-analogous art or did the Board actually say that you needed the secondary reference to teach adding the missing element to the entire combination of the primary reference (turning 103 into 102)?

  10. 76

    Ender wrote:

    “Under your suggested methodology, 35 U.S.C. 103 ceases to exist altogether because the primary reference A must disclose that it would be obvious to combine B with A, thus eliminating obviousness and requiring that patents granted only meet a novelty standard.”

    No. The rejection should have been Reference B in view of A. Reference B teaches it is known to coat material (c) with titanium Reference A teaches the remaining limitations a, b, c. Because Reference B teaches coating the material of (c) with titanium, it would be obvious for a person of ordinary skill in the art to coat the material (c) of the device of Reference A with titanium.”

    No. I already stated that Reference A was the only one that met the “apparently novel” limitations (a) through (c), while reference B was just being employed to teach a well known coating, for the reasons already stated. Clearly, reversing these, violates even your own previously stated incorrect combinatorial technique of moving the novel limitations to the secondary reference. Please stay on point. Either this is a valid 103, or 103 should be eliminated according to most attorneys and even the BPAI for a period before they finally got some sense in their head. In other words, the law does not require that motivation to combine a secondary reference, B, with a primary reference, A, come from the secondary reference. If it did, obviousness is negated, and the only rejections that can ever be made are novelty. Again, in other words, if the main reference “suggests” that the elements of the secondary reference can be combined with it, why even employ a secondary reference???? You’ve already got the teaching right there in the main reference!

    Ender wrote:
    “As shown above, Primary Reference B provides motivation for combinining Secondary Reference A with B.”

    If I were the Examiner in that case, I dispense with secondary reference A and point to the relevant passages of reference B showing that it anticipates combining the features of A with B. No need for A. No need for motivation. Everything taught within one reference.

    In today’s patent system, and thankfully not the draconian one of old, my primary, SPE, Director, SPRE, QAS, BPAI, CAFC and Supreme Court would support this.

  11. 75

    “I could not agree with you more! I have preached this to examiners that I have trained. Some “get” it & some don’t. Those that don’t struggle forever. Unfortunately, upper management (even before the current group) got in their heads that you could do the search & learn the art good enough with just text searching and that it would be “quicker and more efficient”. Clearly, anyone who understands the examination process “should” know that this is not the case! Unfortunately, when I raised the issue at the time with a certain person who is now the guy behind many of the rule changes comping out, I was told to either support the changes or shut-up.”

    Thanks Lazarus. And you illustrate why the problems with obviousness with respect to claim rejections at today’s USPTO had virtually nothing to do with whether the TSM test is used or the “KSR Test” (whatever that may be) is used. A big problem is that the Examiner’s in many areas do not know their art very well to put together a well thought out rejection based on where the art has been and where it is going.

    15 years ago, the typical Examiner in most technology areas, seemed to find a lot more relevant art than they find today and could talk a lot more intelligently how the references could be used to support a rejection.

  12. 74

    Ender, you said
    “with the the USPTO’s shift away from searching by class and towards searching by term, the Examiner’s don’t really get to know what is in their art. When I used to search by class as a private searcher, it’s amazing what I learned was well known in a particular subclass; imagine what an old-time Examiner would know after searching a particular subclass hundreds of times.”

    I could not agree with you more! I have preached this to examiners that I have trained. Some “get” it & some don’t. Those that don’t struggle forever. Unfortunately, upper management (even before the current group) got in their heads that you could do the search & learn the art good enough with just text searching and that it would be “quicker and more efficient”. Clearly, anyone who understands the examination process “should” know that this is not the case! Unfortunately, when I raised the issue at the time with a certain person who is now the guy behind many of the rule changes comping out, I was told to either support the changes or shut-up.

    If you just text search, you have no understanding of the history of the art or what the terminology that is standard now used to be. Simple example: “pixel” is something well known & understood. A standard term of art. Couple decades ago this was not the case. Terms like picture element, pixcel, and pel were used instead. If you just use “pixel” you would miss all the old terms. If you never searched the subclasses, you will never learn this & can miss good prior art. Pretty much all arts have similar terms. Those who do not learn from history are doomed to repeat it … which is a big problem if you are repeating (allowing) the stuff from history ;)

    thanks,

    LL

  13. 73

    “The kind of hindsight ranted about is exactly the permissible kind. Yes it is true that absent a paying gig that requires evaluation of the patentability of applicant’s claims, there is no motivation for the examiner to combine anything to get anything. But to apply that standard means establishing that the applicant’s invention was not only obvious, but was also inevitable. That just isn’t the law.”

    When would an invention that is obvious not be inevitable when a particular problem is presented to a person of ordinary skill?

    When would an invention that is inevitable not be obvious when a particular problem is presented to a person of ordinary skill?

    I think one of the reasons that obvious ideas are not patentable is because such ideas are believed to be inevitable i.e. that no patent grant is necessary to cause inventors to come up with such ideas.

  14. 72

    “If the reason for combining is only found in the secondary reference, why would there be motivation for person of ordinary skill even know about the secondary reference with the primary reference, but for the Examiner using the application as a roadmap to combine the two references?”

    My bad. That should have said

    “If the reason for combining is only found in the secondary reference, why would there be motivation for person of ordinary skill even know to look for the secondary reference to combine with the primary reference, but for the Examiner using the application as a roadmap to combine the two references?”

  15. 71

    “Now, with the Internet, Google, etc., (seemingly) all things are available to a person who wants to find it. If I am looking for ways to stop a bike, I probably wouldn’t just look at bikes. I would look at all ways to stop moving objects & see what is out there & if it would be practical to use in my bike. Anything from stopping a skateboard to a rocket and beyond could be “relevant” to my design and looking for possibilities for my invention.”

    A good point and this illustrates the reason of why any kind of “obvious to try” standard is so dangerous. Taken to an extreme, every invention ever made was “obvious to try.”

    One of my biggest problems with KSR is how much the techincally ignorant justices downplayed how hard it can be in practice to adapt a technology from one field to another or even recognize that a technology from one field could be adapted from another by making a few changes.

    For example, should the carburetor have been patentable over a perfume spray bottle?

    link to time.com

  16. 70

    “If the reason for combining is only found in the secondary reference, why would there be motivation for person of ordinary skill even know about the secondary reference with the primary reference, but for the Examiner using the application as a roadmap to combine the two references?”

    I think the above analysis is off base.

    Even under the old rigid TSM analysis, the PHOSITA was presumed to know all of the analogous art. No motivation to know about a reference is required to make a rejection. What was required by law was a motivation to make the combination/modification recited in the claims given a complete knowledge of what’s out there.

    The kind of hindsight ranted about is exactly the permissible kind. Yes it is true that absent a paying gig that requires evaluation of the patentability of applicant’s claims, there is no motivation for the examiner to combine anything to get anything. But to apply that standard means establishing that the applicant’s invention was not only obvious, but was also inevitable. That just isn’t the law.

    The CAFC TSM test avoided *impermissible* hindsight by requiring a documented motivation to combine. While that standard probably did reject some subjectively obvious creations, it did avoid hindsight. Under KSR, that particular obstacle to impermissible hindsight is gone.

  17. 69

    Not saying that I necessarily believe this, but just a thought to throw out there…

    If you can throw the relevant search terms into a search engine and can get a primary and secondary reference to put together from very different arts, an argument can be made that a POSITA would have known of (or found relevant) these two disparate references since they both turn up in the same search query. The standard for what is “relevant” today is different than 20, 30+ years ago. Now, with the Internet, Google, etc., (seemingly) all things are available to a person who wants to find it. If I am looking for ways to stop a bike, I probably wouldn’t just look at bikes. I would look at all ways to stop moving objects & see what is out there & if it would be practical to use in my bike. Anything from stopping a skateboard to a rocket and beyond could be “relevant” to my design and looking for possibilities for my invention.

  18. 68

    “While some may not be as technically gifted, the average should be about the same, so there should be no real difference.”

    The big difference is not in the technical gifts of examiners then versus now. The big difference is in experience then versus now. The USPTO just does not have the pool of experienced examiners that it used to have and the turnover among the younger examiners is much more rapid. Plus, with the the USPTO’s shift away from searching by class and towards searching by term, the Examiner’s don’t really get to know what is in their art. When I used to search by class as a private searcher, it’s amazing what I learned was well known in a particular subclass; imagine what an old-time Examiner would know after searching a particular subclass hundreds of times.

    ” Again, it’s also hard to discern what “may be new in the invention” when it’s outright hidden from the Examiner due to concerns of prosecution history estoppel, or simply because as some of your colleagues on this board say, the applicant’s representative isn’t given the time (i.e., isn’t paid the money) to draw up anything more than a boilerplate patent application, as vague as can be, in every section, including the background and the claims.”

    If an examiner understand what the claims mean, a 112 rejection for indefiniteness is a an appropriate response from the Examiner.

  19. 67

    “Under your suggested methodology, 35 U.S.C. 103 ceases to exist altogether because the primary reference A must disclose that it would be obvious to combine B with A, thus eliminating obviousness and requiring that patents granted only meet a novelty standard.”

    No. The rejection should have been Reference B in view of A. Reference B teaches it is known to coat material (c) with titanium Reference A teaches the remaining limitations a, b, c. Because Reference B teaches coating the material of (c) with titanium, it would be obvious for a person of ordinary skill in the art to coat the material (c) of the device of Reference A with titanium.

    As shown above, Primary Reference B provides motivation for combinining Secondary Reference A with B.

    35 U.S.C. 103 works just fine. Neither Reference A nor reference B is a 102 reference, but there is clear motivation to combine A with B. Also, if B suggested using the coating on devices that including say elements (a) and (c), B might make the claim obvious by itself if (b) is sufficiently trivial or well known in the art.

    Based on your hypothetical, your cases should have been reversed.

  20. 66

    Ender wrote:
    “In other (and more common) cases, the burden is on the examiner to show that the secondary reference explicitly/inherenently discloses the reason (i.e., the motivation) that such a feature is included.”

    This illustrates the “backward thinking” I was talking about. If the reason for combining is only found in the secondary reference, why would there be motivation for person of ordinary skill even know about the secondary reference with the primary reference, but for the Examiner using the application as a roadmap to combine the two references?”

    Answer to your hypothetical (this scenario was extremely common amongst cases I examined, yet still got kicked back from the BPAI):
    Reference A discloses all of the claimed limitations (a) through (c) (including what is purported to be the novel limitation(s).) Reference A does not disclose that limitation (c) is coated with titanium. Reference B discloses that it is well known to coat the same material of (c) with titanium in order to improve strength and reduce weight. A in view of B.

    Under your suggested methodology, 35 U.S.C. 103 ceases to exist altogether because the primary reference A must disclose that it would be obvious to combine B with A, thus eliminating obviousness and requiring that patents granted only meet a novelty standard. If Reference A teaches limitations (a) – (c) and spells out that it is obvious to manfuacture the material of limitation (c) with a titanium coating, there is absolutely zero need to even do an analysis under 35 U.S.C. 103. 35 U.S.C. 102(b) preempts that section, claim is rejected, case closed.

  21. 65

    “In other (and more common) cases, the burden is on the examiner to show that the secondary reference explicitly/inherenently discloses the reason (i.e., the motivation) that such a feature is included.”

    This illustrates the “backward thinking” I was talking about. If the reason for combining is only found in the secondary reference, why would there be motivation for person of ordinary skill even know about the secondary reference with the primary reference, but for the Examiner using the application as a roadmap to combine the two references? The “secondary reference” should have been used as the primary reference in the example you make. In fact, had the Examiner looked more carefully at the secondary reference, it might have enough information to be a 103 reference by itself without needing the primary reference.

  22. 64

    Ender wrote:

    “However, I’m not really sure combining references based upon what is missing from the primary reference is necessarily an improper reason for combining. In other words, if the primary reference wasn’t missing anything, there would be no reason to look to 35 U.S.C. 103, it would be a statutory bar rejection under 35 U.S.C. 102(b) instead. For the very reason that the primary reference is missing one of the claimed limitations, the Examiner is directed, specifically by the MPEP, to go and look for secondary references if they exist.”

    This reasoning illustrates why over 95% of the combination rejections I see are wrong i.e. they are done backwards. In most rejections, the primary reference should be the reference with the novel feature. The secondary reference should just fill in the features not in the primary reference but which are generally known. The mere fact that a feature is missing from reference A should never be the sole grounds for motivating a combination with another reference; to combine references solely for this reason is to admit that the references are only being combine due the using of the application as a road map i.e. by using improper hindsight.”

    I think perhaps there is a misunderstanding as to what I was saying. When I say that combining references based upon what is missing from the primary reference is a proper reason for combining, it is assumed (and should be understood) that the primary reference is the better of the two or more references used in the 103, and discloses the more apparently novel features claimed. I’d guesstimate that the vast majority of the examining corps operates this way, or was taught to. I can’t recall ever meeting and talking with a single examiner in nearly a decade that used as their primary grounds for motivation, the lack of that feature in the main reference. That is just silly and would have been struck down before Examiner’s Answer or Final Rejection by every single one of my SPEs and Primary Examiners over the years. At the bare minimum, motivation needs to be a matter of common sense/design choice/an inherent benefit (i.e., one would be very hard pressed to argue that adding a third dispensing line in a soda fountain beverage dispensing manifold, to a main reference disclosing two of these, is not a matter of design choice based upon case law supporting the holding that duplication of essential working parts of a machine is a matter of design choice and that the same provides the inherent benefit of higher output/more beverage choices). In other (and more common) cases, the burden is on the examiner to show that the secondary reference explicitly/inherenently discloses the reason (i.e., the motivation) that such a feature is included. What I’m telling you, is that even when this burden has been met, and even when Applicants arguments were drawn to entirely different areas besides hindsight/improper motivation/combination, the BPAI still had a habit in the mechanical arts, for almost half a decade or more, of reversing Examiners, based upon the faulty logic that the motivation to combine was wrong due to the reason that the main reference did not teach why it would be obvious for the feature in the secondary reference to be combined with the features of the main reference. What I’m also telling you, is that if the main reference had taught that, the Examiner would not then have had to search any further at all for that claim, due to the fact that they would have had a 102(b) rejection.

    Ender wrote:
    “Back in the 70’s and 80’s when I first started doing searching, there was always at least one Examiner and often several Examiners in an Art Unit that were extremely helpful to consult before beginning a search. They could readily look at the proposed search and identify what might be new and what was definitely old. I’m also presuming they searched based on this knowledge i.e. they looked for the potentially new feature knowing they could find any of several references for the old feature.”

    I’d posit the reasoning for this is that it’s much easier to determine what the novel leaps and bounds in a field are, the smaller the size of the field and the less complicated, technically speaking, the field is.

    Ender wrote:
    “These days, many Examiners appear to not know their technology well enough to be able to just focus on what may be new in the invention. Instead they appear look for all of the features simultaneously and then combine the references using the application and claims to stitch the references together with little real thought as to why anyone in the technical field would actually put the references together.”

    While some may not be as technically gifted, the average should be about the same, so there should be no real difference. Again, it’s also hard to discern what “may be new in the invention” when it’s outright hidden from the Examiner due to concerns of prosecution history estoppel, or simply because as some of your colleagues on this board say, the applicant’s representative isn’t given the time (i.e., isn’t paid the money) to draw up anything more than a boilerplate patent application, as vague as can be, in every section, including the background and the claims.

  23. 63

    “However, I’m not really sure combining references based upon what is missing from the primary reference is necessarily an improper reason for combining. In other words, if the primary reference wasn’t missing anything, there would be no reason to look to 35 U.S.C. 103, it would be a statutory bar rejection under 35 U.S.C. 102(b) instead. For the very reason that the primary reference is missing one of the claimed limitations, the Examiner is directed, specifically by the MPEP, to go and look for secondary references if they exist.”

    This reasoning illustrates why over 95% of the combination rejections I see are wrong i.e. they are done backwards. In most rejections, the primary reference should be the reference with the novel feature. The secondary reference should just fill in the features not in the primary reference but which are generally known. The mere fact that a feature is missing from reference A should never be the sole grounds for motivating a combination with another reference; to combine references solely for this reason is to admit that the references are only being combine due the using of the application as a road map i.e. by using improper hindsight.

    Back in the 70’s and 80’s when I first started doing searching, there was always at least one Examiner and often several Examiners in an Art Unit that were extremely helpful to consult before beginning a search. They could readily look at the proposed search and identify what might be new and what was definitely old. I’m also presuming they searched based on this knowledge i.e. they looked for the potentially new feature knowing they could find any of several references for the old feature.

    These days, many Examiners appear to not know their technology well enough to be able to just focus on what may be new in the invention. Instead they appear look for all of the features simultaneously and then combine the references using the application and claims to stitch the references together with little real thought as to why anyone in the technical field would actually put the references together.

  24. 62

    Ender wrote:
    “This illustrates one of the common problems with the heavy reliance of Examiners on what I call “computer word search rejections”: Examiner finds two references that collectively have all of the terms of the claims and then combine them based on either the point of novelty in the applicant’s claims or based on what is missing from the primary reference, both of which are improper reasons for combining references.”

    I’ll concede that combining references based upon the point of novelty is an improper reason for combining references, if by that you mean dividing up the novel limitation between separately combined references pursuant to 35 U.S.C. 103. However, I’m not really sure combining references based upon what is missing from the primary reference is necessarily an improper reason for combining. In other words, if the primary reference wasn’t missing anything, there would be no reason to look to 35 U.S.C. 103, it would be a statutory bar rejection under 35 U.S.C. 102(b) instead. For the very reason that the primary reference is missing one of the claimed limitations, the Examiner is directed, specifically by the MPEP, to go and look for secondary references if they exist.

    Ender wrote:
    “In several cases, had the Examiner actually had the time and/or taken the time to understand the secondary reference (which I call Reference B), the Examiner could have made a stronger rejection by stating that Reference B shows the novel feature in the claims and reference B could be combined with any of 100 references in the same field that include the non-novel features because these features are used precisely the same way in the claimed invention as in the 100 other references.”

    Now this is what you are really saying, i.e., that the Examiner used the wrong main reference. No argument from me on that one. I was a culprit of this many times myself, due to the simple facts that (as shocking as this may be to some of you): (a) text searching was about the only way to find any relevant art at all due to the voluminous amounts of patents in the apparently “relevant” subclasses I worked in; (b) there was not enough time to read a single entire reference, much less 10 or more of them, given that I was alotted less than a single working day to read a new specification and claims, understand it, search all of those claims within a single invention (i.e., barring a restriction), and write an Office Action on all of those claims; (c) more often than not, there was more than one “best main reference”.

    Ender wrote:
    “Because many Examiners are so focused now on finding terms using computer searching, that they fail to actually try to understand what the references actually teach and, in particular, suggest. I don’t have the statistics, but I would bet there were far higher percentage of single reference 103 rejections vs. 103 combination rejections in the past, because without term searching, Examiners would be more focused on understanding their references, thereby allowing them to find the suggestion of what the applicant believes are the novel features of his/her claim.”

    Your reasoning may be true but I would bet that those far higher percentages exist due to the fact that SPEs, from pressure by their Directors, from pressure by higher ups with input from the BPAI, simply aren’t letting Examiners write up single reference 103 rejections.

  25. 61

    “Can you point us to the section of the MPEP where it states that “references in widly different technologies shall not be combined”? I am having a little fun here, but either the art is analogous or it’s not. If your client’s purported invention is a metal coating process, just because it’s in a chemical art class, doesn’t mean it’s not analogous to combine with a metallic surface on some machinery.”

    1. The MPEP does not supercede the statutes, the case law or 37 CFR. The MPEP is just the internal guidelines for the USPTO. In fact I think one of the absolute weakest points that USPTO has made in the GSK case is that any holes in the new Claims and Continuation Rules can be filled in by the MPEP. If this were true, the USPTO would never need to bother with amending 37 CFR which forces USPTO to comply with the Administrative Procedure Act; the USPTO could just keep amending the MPEP to effectively modify any and all rules in 37 CFR.

    2. I wish the example you present was what I am talking about. When I talk about non-analogous arts, I don’t mean just different subclasses, I mean totally different technologies that would only be brought together because someone was doing computer term search and did not understand the references containing the terms.

    I understand that similar art are in different subclasses; a classic example is in the food art where the food process patents and food processing apparatus patents were (still are?) not only in different classes, but were (still are?) the primary responsibility of entirely different art units (a chemical art unit for the processes and a mechanical art unit for the machines).

  26. 60

    “The most ironic part of this is that if the main reference had had that suggestion, it would have obviated the need to go search for a secondary reference.”

    This illustrates one of the common problems with the heavy reliance of Examiners on what I call “computer word search rejections”: Examiner finds two references that collectively have all of the terms of the claims and then combine them based on either the point of novelty in the applicant’s claims or based on what is missing from the primary reference, both of which are improper reasons for combining references.

    In several cases, had the Examiner actually had the time and/or taken the time to understand the secondary reference (which I call Reference B), the Examiner could have made a stronger rejection by stating that Reference B shows the novel feature in the claims and reference B could be combined with any of 100 references in the same field that include the non-novel features because these features are used precisely the same way in the claimed invention as in the 100 other references.

    Because many Examiners are so focused now on finding terms using computer searching, that they fail to actually try to understand what the references actually teach and, in particular, suggest. I don’t have the statistics, but I would bet there were far higher percentage of single reference 103 rejections vs. 103 combination rejections in the past, because without term searching, Examiners would be more focused on understanding their references, thereby allowing them to find the suggestion of what the applicant believes are the novel features of his/her claim.

  27. 59

    Anonymous 2100 examiner wrote:
    ‘To me, such responses reek of the attitude “you can’t prove what I may or may not know, so it is not unethical for me to argue this”. Far too often, I have heard from people currently attending law school that they are essentially taught that as long as there is no proof that you intentionally argued something you knew not to be true, no ethical violation exists.’

    I have never heard the statement you quote, so you must work at a more cynical place.

    Having said that, I would never ascribe malice where a lack of resources would make more sense.

    Bad filings are not because the applicant’s attorney wants to bs or snow the examiner. Bad filings are a result of an attorney that does not have the time to invest to understand the technology and does not have the time to prepare a proper filing.

    Just as certain search results don’t include the real prior art because not enough time is spent searching, and certain responses are cut and pastes of the previous response, so too pathetic filings are sent in because not enough time is spent on the filings.

  28. 58

    Anonymous 2100 Examiner wrote:
    “From speaking with a lot of old timers at the PTO (to me, being those that have been there more than 5 years), engineers and scientists having to deal with bogus arguments is just as much of a factor in attrition as the dated production system.”

    I had been there for the better part of a decade when I left. It wasn’t the main reason I left, but certainly a noticeable chunk of the pie chart on reasons why I left the USPTO. While it certainly may be true that these examples of truly horrible examiners and attorneys are only representative of a small minority of each group, the problem is that this small minority of people (and by extrapolation, applications), take up more than their fair share of the other party’s time.

    Ender wrote:
    “I would like to focus on the technical arguments too, like I used to do 10 years ago. However, over 90% of the rejections I see are improper based on the case law or fail to meet the clarity requirements of 37 CFR 1.104(c). References in wildly different technologies are regularly combined using the application in blatant disregard of the case law of hindsight rejections.”

    Can you point us to the section of the MPEP where it states that “references in widly different technologies shall not be combined”? I am having a little fun here, but either the art is analogous or it’s not. If your client’s purported invention is a metal coating process, just because it’s in a chemical art class, doesn’t mean it’s not analogous to combine with a metallic surface on some machinery.

    Ender wrote:
    ” Often sole the motivation for combining the references appears to be: “Because reference A does not teach feature 5 of Claim 1, a person of ordinary skill in the art would be motivated to find some reference, even in an unrelated art, that describes feature 5.””

    It’s kind of funny that you say that, and here is why. During my nearly 10 years at the USPTO, I was the type of Examiner that always looked to the teaching reference in a 103 rejection for the reasons that that feature was included. With the exception of two or three cases, all other cases I sent to the BPAI were reversed when the arguments “improper hindsight”/”no motivation to combine” were presented. Do you want to know why? It was because apparently the main reference in the 103 combination did not have any suggestion to combine with the secondary reference. The most ironic part of this is that if the main reference had had that suggestion, it would have obviated the need to go search for a secondary reference.

    Ender wrote:
    “I also regularly read rejections where: (1) it is not clear what item in the reference the Examiner believes corresponds to the feature of the claim, (2) the term in the reference although identical to the term in the claim refers to a completely different technology or (3) the selection referred to is taken out of context of the full reference and the full reference actually teaches away from the claimed invention.

    A major problem at the USPTO today, is that while the Examiners are scientists and engineers, that are not well-trained in how to construct rejections that meet the relevant requirements of the case law and the patent rules.
    I still remember being at an interview where an SPE described how he put together combination rejections using the application as a guide to finding the relevant art to put together.”

    My only comment to those would be to insist on clarification on everything that is unclear about an Examiner’s office action, at every instance, and every single time it is unclear. Good luck!

  29. 57

    “Without more, a mere statement that a reference renders something obvious does not perform the key Graham factual inquiry: identifying the difference between the prior art and the claim.”

    What do you think the BPAI would do with a case like Mooney describes assuming that a viable rejection could be made using the reference?

    I couldn’t tell from MM’s description whether the flaw in the rejection was a substantive failure of the reference or just a poorly written office action. If this was a non final rejection, it’s possible that the next office action will contain additional explanation along with a final rejection. Perhaps an interview is in order to make sure that doesn’t happen without you at least understanding the examiner’s position.

    One of the issues with prosecution, is that things relating to examination formalities are not supervised by the board. Instead they are between the applicant, the examiner and the examiner’s supervisor.

    “the rules allow no new arguments before the borad”

    As I read the new rules, they require pointing out where an argument was previously made, but don’t prevent the making of new arguments. In fact the rules acknowledge situations where an argument could not have been made prior to appeal (for example, examiner raises an issue in an advisory action)

  30. 56

    SF-

    That is why the new Appeal rules are so damn funny. They require us to make legal arguments to the Examiners who dont understand or care about case law (because the rules allow no new arguments before the borad). Another example of your patent office at work.

  31. 55

    This analysis is esentially worthless because it does not break down claims by art unit. During this period entire new tech areas have developed and thus the change in claim number might simply reflect computers and biotech coming into existence, and has nothing to do with patent policy.

  32. 54

    EG,

    A few chapters of MPEP 8ed R6 are available for d/l on the USPTO website, 700, 1800, and 2100. R6 2100 contains KSR material. MPEP 2143 discusses rationales (A)-(G) that may be used to form a prima facie case of obviousness. Other parts of R6 2100 discuss other aspects of KSR.

    link to uspto.gov

  33. 52

    “We know caselaw exists both for and probably against your claim, so frankly, unless you have a dang good case to back you up that is spot on, and solid reasoning in that case, then you may as well mosey away from that bs.”

    Usually, it’s a waste of time to cite caselaw to examiners who don’t have the time to read a case, who haven’t had any legal training to aid in that analysis, and who wouldn’t care even if they had the training and the time. They understand novelty and obviousness in general and citing caselaw isn’t going to be persuasive very often, if ever. Argue the facts, that is, the content of the claims and the prior art.

    The only time to discuss caselaw is if the examiner cites it. (It happens occasionally and, every time I’ve seen it done, the examiner misstated or misapplied the law.)

  34. 51

    “Assuming the anticipation argument is easily dealt with, is this an improper obviousness rejection without an explicit discussion of combining the various teachings in Jones to obtain the claimed invention(s)?”

    Without more, a mere statement that a reference renders something obvious does not perform the key Graham factual inquiry: identifying the difference between the prior art and the claim. More importantly, this mere statement does not provide the “reason” why the addition of the missing element is obvious. (Of course, if the missing element isn’t discussed, how could the reason for adding the element be discussed?) Even the Supreme Court and the USPTO believe that the reason for rendering an addition/modification obvious must be articulated.

    I believe the MPEP states somewhere that a prima facie case must be sufficiently detailed to allow the applicant to respond. Without the missing element identified and without the reason for adding that missing element, the applicant could not possibly know how to respond.

    Don’t let that examiner go final on you!!!

  35. 50

    “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”

    Just Visiting,

    Yeah, the MPEP authors may latch onto this unfortunate piece of blather by SCOTUS in KSR International. I’ve already seen one patent attorney (yes, patent attorney) early on refer to this rhetorical nonsense as establishing a “market forces” test for obviousness. Tell me where “market forces” comes out of 35 USC 103? IMO, “market forces” is less a reflection of 35 USC 103 than is the TSM test. Also, for SCOTUS to say that you may simply look in a “different” field denigrates the language in 35 USC 103 about the PHOSITA being one “to which the subject matter pertains.” If the PHOSITA “to which the subject matter pertains” would be motivated to look into “different” field that’s one thing, but that’s not the norm under 35 USC 103.

  36. 49

    Paul Cole- I’m not familiar with that particular decision quite yet but I will take a look at it and review what it is about. I notice off the surface just from your remarks however that the particular judge sitting in from the bench must have either been advocating divisional’s filed, that all of those things would be classified together, or that for some reason all of those inventions are specifically interbound together. I’m not in that art, but come on, searching for a fence made of barbed wire while at the same time searching for an article of manufacture that is a metal strand with other metal strands wrapped around it, while searching for etc. etc. all as one invention? Not in this patent system today, you’re talking about thousands of relevant art pertaining to each catagory today. Of course, back then maybe it was a different story.

    bierbelly- You say there is no benefit from hiding art, and in many arts that may very well be true. However, in my art where even the most patentable inventions are simply another way of using well known methods 99% of the time the line becomes a lot less clear about what is relevant and what is not unless the applicant clearly provides you with what he started with, and even some small admissions of the things that he did that were blatantly obvious. And let me assure you, it is very rare that they started with a blank chalkboard, even if what they started with was purely from their memory of a device they saw in a magazine 10 years ago etc. However, the problem then arises with them using well-known process to replace certain other well-known processes all over the place in their invention to achieve well-know benefits. However, as we all know, it’s kind of bad for an examiner to “peicemeal” together a rejection putting in references showing whatever small contributions the app took and put in place in their “invention”. So, in legal terms, they’ve now “invented” lol something. Sometimes it’s enough to not be lol, so we give a patent. Sometimes they try to amend some lol in after the first action. However, if they were upfront about what the art already says then they couldn’t put in rediculous “more specific” claims and try “to get something” i.e. not give up like they should, and instead try to prove it’s an invention based solely on laudable additions that teach the american people nothing. Fraudulent in my opinion, but legal none the less, and I can see the other side of the coin.

    However, if you don’t contribute, and claim only what you contributed, I’m very likely to not issue you a patent and let your app sit until I find art.

    Like you said, it’s all business, but the problem is, nobody likes the business aspect when they just plain did not make a contribution and they paid 10k? 30k? 50k? for a top dollar lawyer to prosecute their case and they paid 600$ for me to reject them, and they paid 400$ for other people at the pto to toss their app around.

    Anon 2100 examiner- that’s pretty much it. More years in the art than I have had life and spewing more bs than a factory smokestack does smoke. And not only that, but reading references impossibly badly. I mean come on, if the applicant is so cheap as to not want to pay you to read the ref. then their app obviously isn’t going to amount to much and nobody cares. If you’re swamped with cases, then maybe you need to hire someone like myself to chug the easy ones along? Pay for my law school and you have a deal.

    Mooney- I know, this crap has got to go. We know caselaw exists both for and probably against your claim, so frankly, unless you have a dang good case to back you up that is spot on, and solid reasoning in that case, then you may as well mosey away from that bs. Some aspects of the “law” I’ve read so far have somewhat left the basics behind, and when that happens it’s the “law” that has to change. Thankfully, as noted above, the supreme court has the american people’s back.

    curious- if that’s the best response you have then you probably don’t have an invention. Unless it’s WAY out there in terms of non-analogous. If you’re prepared to go to appeal with your reasoning then send it in. So yes, I agree, I’ve yet to see a convincing one across my desk, although I stick to analogous art anyway.

  37. 48

    “Just Visiting writes “I personally don’t believe non-analgous art arguments have much traction anymore.””

    Like most issues, it’s a question of degree, i.e., how non-analogous is the art in question?

    In so-called “unpredictable” areas, the art needs to be very close or the “reasonable expectation of success” (a steadily diminishing bar) won’t be satisfied.

    In more “predictable” areas, the secondary reference need not be in the same “field” per se (provided it is in a similarly “predictable” field) as long as there is no plainly evident reason that one skilled in the art would not expect the element in the secondary reference to achieve its function in the context of the primary reference.

    Here’s a related question: what do folks think of a rejection that is phrased thusly, “Claims 1, 4-6, 7-23, 35-46 and 54-55 are anticipated by or, in the alternative, rendered obvious by Jones,” followed by a description of the elements allegedly taught by Jones but without any discussion of combining the elements in Jones. Assuming the anticipation argument is easily dealt with, is this an improper obviousness rejection without an explicit discussion of combining the various teachings in Jones to obtain the claimed invention(s)?

  38. 47

    Just Visiting writes “I personally don’t believe non-analgous art arguments have much traction anymore.”

    “Does anyone else agree or disagree with this?”

    I probably overstated things a bit, but I think eventually the MPEP authors will latch onto this particular section of the Court’s KSR opinion.

    “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”

  39. 46

    Just Visiting writes “I personally don’t believe non-analgous art arguments have much traction anymore.”

    “Does anyone else agree or disagree with this?”

    I probably overstated things a bit, but I think eventually the MPEP authors will latch onto this particular section of the Court’s KSR opinion.

    “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”

  40. 45

    Just Visiting writes “I personally don’t believe non-analgous art arguments have much traction anymore.”

    Does anyone else agree or disagree with this?

    Thanks (I am addressing that very issue in a response I am working on today.)

  41. 44

    “A major problem at the USPTO today, is that while the Examiners are scientists and engineers, that are not well-trained in how to construct rejections that meet the relevant requirements of the case law and the patent rules.”

    Whereas the typical patent prosecutor went to a prestigious law school? LOL.

  42. 43

    “References in wildly different technologies are regularly combined using the application in blatant disregard of the case law of hindsight rejections.

    I’m afraid that post KSR, this is fairly close to what the law allows. Just finding the pieces and a “reason” rather than “a motivation” is about enough to put the ball in the applicant’s court to prove non-obviousness. I personally don’t believe non-analgous art arguments have much traction anymore. I also believe most of the case law on regarding hindsight has been weakened. The SC says that hindsight is addressed by having the decision maker aware of the issue.

    I think we’re pretty much left with teaching away, showing that the combination doesn’t work, and objective indicia of non-obviousness once the examiner finds the bits and pieces.

  43. 42

    “I completely agree with you. I would say that, at worst, 1 out of every 10 responses I receive is as I described above. However, what you must realize is that most examiners are engineers and scientists that would rather discuss the technological merits of the disclosure and the art rather than deal with arguments that boil down to “the words are not the same, so the art neither teaches nor suggests the claimed invention”. Having to respond to one or two of these in a bi-week will start an examiner thinking “I really don’t need this…maybe I should head back out into the field.”

    From speaking with a lot of old timers at the PTO (to me, being those that have been there more than 5 years), engineers and scientists having to deal with bogus arguments is just as much of a factor in attrition as the dated production system.”

    I would like to focus on the technical arguments too, like I used to do 10 years ago. However, over 90% of the rejections I see are improper based on the case law or fail to meet the clarity requirements of 37 CFR 1.104(c). References in wildly different technologies are regularly combined using the application in blatant disregard of the case law of hindsight rejections. Often sole the motivation for combining the references appears to be: “Because reference A does not teach feature 5 of Claim 1, a person of ordinary skill in the art would be motivated to find some reference, even in an unrelated art, that describes feature 5.”

    I also regularly read rejections where: (1) it is not clear what item in the reference the Examiner believes corresponds to the feature of the claim, (2) the term in the reference although identical to the term in the claim refers to a completely different technology or (3) the selection referred to is taken out of context of the full reference and the full reference actually teaches away from the claimed invention.

    A major problem at the USPTO today, is that while the Examiners are scientists and engineers, that are not well-trained in how to construct rejections that meet the relevant requirements of the case law and the patent rules.
    I still remember being at an interview where an SPE described how he put together combination rejections using the application as a guide to finding the relevant art to put together.

  44. 41

    “One of my clients asked me today it is true that USPTO examiners are expected to turn down a proportion of applications, so if the examiner is under quota he’ll be looking to turn down what he considers as borderline applications?”

    “Higher Quality” = lower allowance rate, see link below:

    link to uspto.gov

    Of particular note is the relationship among USPTO’s quality initiatives, fewer granted patents, and higher affirmance rates on appeal.

    “In 2000, a record high of 72 percent of all patent applications became patents. In contrast, 51 percent of patent applications were granted in FY 2007.”

    Given this is how the USPTO views “quality”, your paranoid fear appears to be well-founded. Whatever the “written policies” in the MPEP, it’s pretty clear that Examiners, on average, are being required to reject more cases to make the USPTO’s “quality goal.”

  45. 40

    Anonymous 2100 Examiner complains about ‘arguments that boil down to “the words are not the same, so the art neither teaches nor suggests the claimed invention”.’

    Actually, a recurring problem I see with examiners (much greater than 1 in 10) is that words in the claims are ignored and those words form limitations that are not in the prior art. I cannot tell from the office action if the words being ignored are ambiguous or the examiner just doesn’t know what the words mean (oftentimes the words are defined in my spec).

    I often suspect that the examiner’s understanding of the invention is used to reject the claims and that understanding is not always based on the limitations of the claim.

  46. 39

    One of my clients asked me today it is true that USPTO examiners are expected to turn down a proportion of applications, so if the examiner is under quota he’ll be looking to turn down what he considers as borderline applications?

    I thought that USPTO examiners are awarded points on a different basis but would be interested to hear the comments of others. Is this a paranoid fear from someone who doesn’t understand the US system or is there some justification to this view?

  47. 38

    Just Visiting says: “One of the problems with these discussions is that they are dominated by anecdotes of problem attorneys and incompetent examiners. Certainly each of those people exist in some numbers but I’m not convinced that they dominate the landscape the way each side describes them here.”

    I completely agree with you. I would say that, at worst, 1 out of every 10 responses I receive is as I described above. However, what you must realize is that most examiners are engineers and scientists that would rather discuss the technological merits of the disclosure and the art rather than deal with arguments that boil down to “the words are not the same, so the art neither teaches nor suggests the claimed invention”. Having to respond to one or two of these in a bi-week will start an examiner thinking “I really don’t need this…maybe I should head back out into the field.”

    From speaking with a lot of old timers at the PTO (to me, being those that have been there more than 5 years), engineers and scientists having to deal with bogus arguments is just as much of a factor in attrition as the dated production system.

  48. 37

    >> if you make a dependent that is more broad than the independent…”
    >>Not sure how this is possible, but in any case, I don’t recall suggesting that.
    > “give me an example” I will get back to you on that. I’m looking for a good one.

    It’s always improper for a dependent claim to be broader than the independent one, but it’s not at all impossible or even difficult to write one.

    I saw a case many years ago where the drafter did that inadvertently by inverting the order of claims in a biotech case. The invention involved using an insect cell line in a certain way, and the claims as originally filed (before they were quite properly rejected) read:

    1. … taking a cell line from a (specific kind of moth) and (doing something with it) …
    2. the method of claim 1, where the cell line is from an insect of order leptidoptera.
    3. the method of claim 2, where the cell line is from an insect.

    Thus the base claim claimed a very restricted kind of insect, the next dependent claim broadened that to any butterfly or moth, and the next claim broadened that to any insect. Obviously, the claims were intended to be the other order but somehow got filed backward. You could also have the same situation in chemical cases, where one claim gives a specific chemical, and the dependent claim says “wherein the chemical is any salt”, or something like that.

    You can also have an even more improper broadening dependent claim if the dependent claim explicitly omits something which was in the base claim:

    1. A widget comprising an automatic frammistat, a gronkheiser coupled to the frammistat and a field-effect-transistor overload switch.
    2. The widget of claim 1, in which there is no overload switch.

    I’ve also seen that in chemical cases, where a dependent claim says that some chemical in the main claim is omitted, or at 0% or something like that, so that the main claim is a compound of a, b and c, and the dependent claim tries to broaden that to just a and b.

  49. 36

    “Some of these people have more years of education and experience in the art than I have had years of life, yet they argue as if they just woke out of a 60 year coma and have never seen a color television, much less a computer.”

    One of the problems with these discussions is that they are dominated by anecdotes of problem attorneys and incompetent examiners. Certainly each of those people exist in some numbers but I’m not convinced that they dominate the landscape the way each side describes them here.

    Not going to join the mud slinging, but I did want to point out that I don’t think it advances the discussion.

  50. 34

    “After receiving a response to an OA from an attorney, I will often visit the website of the attorney’s firm to look up the attorney’s background, especially when the response suggests that the attorney has never touched a computer. Some of these people have more years of education and experience in the art than I have had years of life, yet they argue as if they just woke out of a 60 year coma and have never seen a color television, much less a computer.”

    Which is one reason that I continually suggest that computer programs, as well as business methods, should be eliminated from the patentable subject matter in 35 USC 101…it’s BS. If a 13 year old kid can do it, it doesn’t represent an advance over the skill in the art.

  51. 33

    “I am sorry, but sending in a response to an OA that is longer than the original filing and loaded with bs arguments that anyone with a minimal amount of knowledge in the art knows to be bogus does not move prosecution along.”

    [high fives this Examiner]

    Personally, I’m glad there are folks like this person at the PTO because it makes the services of the exceptionally skilled attorneys more desirable to inventors whose inventions are “on the edge.” Over time, a rising tide of such Examiners will leave the hacks exposed and floppin around on the beach.

    [pours self a large colorful cocktail]

    Happy Kwanzaa!

  52. 32

    bierbelly says: “I find it disconcerting that the PTO seems to have fostered the idea that outside attorneys are intentionally withholding information from the examiners. I suppose it has bowed to the Bush Administration’s overall attacks on attorneys as being the scum of the earth.”

    OK, I may have become a bit cynical in my relatively short time at the PTO, but I have to disagree with you, bierbelly. There is honest, and then there is “honest”. By “honest”, I mean presenting arguments that suggest the attorney is willfully and impossibly ignorant of the facts of the case and of the technology. Far too many attorneys that I have dealt with have fallen into the “honest” category.

    After receiving a response to an OA from an attorney, I will often visit the website of the attorney’s firm to look up the attorney’s background, especially when the response suggests that the attorney has never touched a computer. Some of these people have more years of education and experience in the art than I have had years of life, yet they argue as if they just woke out of a 60 year coma and have never seen a color television, much less a computer. To me, such responses reek of the attitude “you can’t prove what I may or may not know, so it is not unethical for me to argue this”. Far too often, I have heard from people currently attending law school that they are essentially taught that as long as there is no proof that you intentionally argued something you knew not to be true, no ethical violation exists.

    I am sorry, but sending in a response to an OA that is longer than the original filing and loaded with bs arguments that anyone with a minimal amount of knowledge in the art knows to be bogus does not move prosecution along. For many examiners, wasting our time will simply foster animosity and makes us unwilling to go out of our way to help you.

  53. 31

    “Do not waste our time with 18 dependent claims. Focus on your invention in the ind. and maybe 2 important dependents.”

    The way the inventions disclosed in an application are claimed (including the number of claims) is up to the applicant, and not the examiner. If the examiner finds that the claims do not meet the statutory requirements then he rejects/objects them. If the claims exceed a certain number, then the applicant may have to pay an extra claims fee. The fees which the applicants pay including filing, issuance, maintenance, etc. should cover the PTO costs for carrying out the examination

  54. 30

    “Do not waste our time with 18 dependent claims. Focus on your invention in the ind. and maybe 2 important dependents.”

    The way the inventions disclosed in an application are claimed (including the number of claims) is up to the applicant, and not the examiner. If the examiner finds that the claims do not meet the statutory requirements then he rejects/objects them. If the claims exceed a certain number, then the applicant may have to pay an extra claims fee. The fees which the applicants pay including filing, issuance, maintenance, etc. should cover the PTO costs for carrying out the examination

  55. 29

    Thanks Examiner 6K for the sage advice.

    “if you make a dependent that is more broad than the independent…”

    Not sure how this is possible, but in any case, I don’t recall suggesting that.

    Just Visiting

    “give me an example” I will get back to you on that. I’m looking for a good one.

  56. 28

    Thanks Examiner 6K for the sage advice.

    “if you make a dependent that is more broad than the independent…”

    Not sure how this is possible, but in any case, I don’t recall suggesting that.

    Just Visiting

    “give me an example” I will get back to you on that. I’m looking for a good one.

  57. 27

    “Do not waste our time with 18 dependent claims. Focus on your invention in the ind. and maybe 2 important dependants. Add in more dependents, if you simply must, after an acceptable ind. is found for allowance.”

    How do you propose that we do this when 312 amendments are routinely rejected even when proper? The dependent claims have to be there up front in case the independent claims are allowed on the first action (hollow laugh).

  58. 26

    Max, that particular application had a total of 12 claims, two of which were independent. I has some room for more claims and thought that adding one more for differentiation would only possibly help if it ever reached litigation.

    I do not add claims simply to drive up the number, nor do I believe anything is gained by doing so. The subject matter of the added claim was directed to one narrow aspect related to the core inventive concept. On the other hand, I’ve written other applications and had trouble fitting all the “more narrow” inventive fall-back aspects into 30 claims.

    I have no answer to your first question. That is why I was asking. We disclosed several ways to use the invention. The dependent claim stuff was drawn to one narrow field of use, but was not written for fall-back. I had others for that purpose, which were directed to a particular type of practical embodiment.

    My personal opinion is that I think a lot of things we do are getting silly. I believe every claim should stand alone. That is why they are separately written. The scope should depend on the disclosure as a whole (which is why we write so many words), taking into consideration the skill of one in the art (sometimes overlooked).

  59. 25

    In reference to my 12/23/07 comment:

    A federal district court has put a preliminary injunction on the claim limitation rules referred to in my previous comment.

    -Ben

  60. 24

    …and JohnG, can you estimate, how much Claim 1 scope would you have lost, if you had NOT added the dependent claim for claim differentiation purposes? I am curious: out of all the dependent claims you write, what percentage are claim differentiators, and which are present to define fall back positions of deliberately narrower scope, that correspond to significantly enhanced performance enhancement of the combination of technical features recited in claim 1 (ie a height contour line on the way to the summit Best Mode)? Would that proportion be more than 50%? If so, you draft claim sets more internationally than the bulk of cases arriving on my desk for EPO filing.

  61. 23

    Me too Caveman. I just filed an application a few days ago in which I added a dependent claim specifically for purposes of “broadening” an independent claim in accordance with the doctrine of claim differentiation. I had also explained to the client the reasons why this claim was added. I’d hate to have been behind the eight ball here and actually narrowed the independent claim!

  62. 22

    “More often than not, claim differentiation issues bite the patentee in the A$$.”

    Could you provide an example. The only problematic cases I’m familiar with are those where the court refused to give claim differentiation any weight. I’m not aware of cases where an independent claim was narrowed because of a limitation in a dependent claim.

  63. 21

    Examiner #6K:

    I find it disconcerting that the PTO seems to have fostered the idea that outside attorneys are intentionally withholding information from the examiners. I suppose it has bowed to the Bush Administration’s overall attacks on attorneys as being the scum of the earth.

    In reality, we do searches (or have them done by more competent “searchers”, at least we hope they are more competent than we), we submit the results, and then the examiners complain that they’re given too much to review. We’re damned if we do and damned if we don’t.

    Also disconcerting is many examiners’ view (yours included) that writing, filing, prosecuting and obtaining the patent is the end game. First, it’s not a game at all, it’s serious business. Second, we try to obtain patents for a reason, which is to protect our considerable investments in technology from copyists. Our careers do not revolve around pulling the wool over examiner’s eyes, and as bobpriddy indicates above, there is no benefit to us or our clients in the long run of hiding known prior art from the PTO. To do so would not only result in huge expenses of fighting invalidation (which is a necessary counter-claim during infringement suits, so that’s going to happen anyway), but revocation of our license to practice, which can have very detrimental effects on our home and family (in case you might have forgotten that part).

    All in all, I have not found a group of more honest people than the patent practitioners that I’ve met. Litigators…well, that’s another story. ;^)

  64. 20

    Applicants don’t need huge numbers of claims, but inventions are more complex and take more claims than might at first be thought.

    Take the Glidden patent on barbed wire (which as those who are interested in such things will recall went up to the Supreme Court and was held valid). To claim that invention properly, you need to claim:

    1. The barbed wire structure.

    2. The method of making barbed wire.

    3. The barb as a component of the barbed wire.

    4. A fence made with the barbed wire.

    Why does the inventor need a claim to the fence? Answer: amongst other things for licensing. If you are the inventor and are negotiating licence terms would you prefer a royalty of 5% on the value of the barbed wire or 5% on the value of the fence? If you don’t have a claim to the fence, what clear basis do you have for claiming a royalty on the fence as opposed to the lesser value of the wire component in it?

    Examiner 6K is right in some respects: you do not need vast numbers of claims to minor details, but you do need enough claims to do the job and protect the invention in all its aspects.

  65. 19

    bob- I would like everyone to note that this attorney just told us why he insists on ruining the patent system. In litigation he doesn’t feel like he would be getting his if he merely claimed his invention up front. Further, this is a direct result of the complexities of the art increasing. Guess what the answer to this is?

    1. Tell us up front everything pertinent you know about the field. Not just ref’s/NPL, put down what you know in the prior art section. Tell us what your contribution was. Finally, if you are found to not have contributed, then for the love of god give up.

    2. Do not waste our time with 18 dependent claims. Focus on your invention in the ind. and maybe 2 important dependants. Add in more dependents, if you simply must, after an acceptable ind. is found for allowance.

    3. Do some kind of search before first action and do a submission. Consult an expert if you are not one and neither is the applicant.

    4. Recognize this takes time and money so only do it on things you really know have a shot and do not use the USPTO as your wall to bounce ideas off of.

    5. Perhaps most importantly, redefine your “zealously represent the applicant” bs attorney’s are living by right now to “zealously assist the applicant to find, clearly define, protect, and benefit from, his contribution to the american people”.

    Luke- The claims allowed are a misleading number because you can get infinite dependent claims allowed from any allowable independent claim. Comparing this to any other number is rubbish and only serves to make the USPTO and everone involved with the process more comfortable that all’s well with the system. This number also jumps around a lot iirc.

    Caveman- if you make a dependent that is more broad than the independent there is a FP for a 112 rejection, it is flat-out not allowed in the VAST majority of cases (there may be some exception somewhere).

    Examiner #6k

  66. 18

    I did not say claim differentiation creates a “substantial risk” of narrowing the base claim. I’m throwing an idea out (e.g. that claim differentiation may in fact have the effect of narrowing the application and thus the scope of the base claim) for contrast.

    All I’m saying is that the idea of “using” claim differentiation to broaden the scope of a base claim does not make sense in my opinion. Courts don’t need claim differentiation to interpret a claim broadly. So, while I would advocate keeping issues of claim differentiation in mind, I wouldn’t set out to “use” the notion of claim differentiation to try to manage the scope of my base claim while drafting my dependent claims. I would only be mindful that I did not create any potential limiting effects that might arise from the application of the doctrine. That’s pretty much all I’m trying to say here.

    More often than not, claim differentiation issues bite the patentee in the A$$. To me that seems to be a limiting or narrowing phenomenon. Most often, a patentee who is trying to get a broad interpretation of, say, a base claim, from a court is prevented from doing so because of a claim differentiation issue.

    That’s all I’m saying.

  67. 17

    I know you’re just a humble CaveMan, so I’ll trust that you won’t be upset that I don’t believe that claim differentiation will create a substantial risk of narrowing the independent or “base” claim.

    It’s a not a cure-all but claim differentiation provides one more reason that a court can interpret the independent claim broadly instead of limiting it to the preferred (or only disclosed) embodiment. In a perfect world, you’ll have several different embodiments of a broad concept — thus eliminating the claim construction issue. But often, your inventor will have one embodiment only and claim differentiation provides at least some reason for keeping the claim broad. (I think “keeping the claim broad” is a better wording than “broadening the claim” since the real issue is whether a court will ignore the plain meaning of the term and narrow it to screw you over.)

    In any event, Merry Christmas CaveMan! (and everyone else)

  68. 16

    Max and curious,

    I’m not discounting claim differentiation, I said “notwithstanding” claim differentiation. But if you think about it, the dependent claim, by the same sword of claim differentiation, narrows the base claim to other than know stent materials.

    I’m just saying that you don’t need a dependent claim to have a broad base claim. And we can’t really talk intelligently without considering the scope of the description. If the description was sufficient to enable a broad claim to any “biologically compatible” material, then claim 2 as you propose it is unnecessary, duplicative, undesirable, possibly smelly, and should be directed to another feature entirely.

    In my humble opinion, it would be counterproductive to “use” a dependent claim to “function” as a broadening device for a base claim. If it has that effect so be it, but like I said, it more likely will have a narrowing effect.

    I am a big fan of short, focussed, positively recited claims with at least one “hook” beyond the prior art. Dependent claims should cover additional and alternative features.

    To the poster above who decried the use of dependent claims all pinned to one base claim, where have you been? Since Festo, in my opinion, its the only way to write claims. The caveat is that you better write a good independent claim, one with a hook.

  69. 14

    That the numbers of claims are rising over time is hardly a surprise – technology is an ever expanding field, bringing with it ever increasing numbers of patents you need to differentiate yourself from.

    Note that the graph seems to show the number of independent claims have increased by about 50% – from 2 to 3, but the dependents have doubled – from 8 to 17. That’s a strong pointer to claim differentiation being of more concern these days.

    However, I’d like to see an analysis of the correlation between claims issuing and claims filed.

    Isn’t the USPTO, or any examining office for that matter, more concernend with the latter?

    If the numbers of claims filed are rising faster than the numbers of claims issued, then the office may have a ligitimate beef about people filing rubbish. But if the numbers of claims filed has less than doibled, that means applicants are doing better than they were in the past (the contrary of what the PTO’s position is).

    So how do those numbers stack up?

    Cheers, Luke

  70. 13

    Then you’re smarter than most, Bob. The cases we get from USA, for filing at the EPO, have loads of dependent claims, yes, but none of them are any use once claim 1 goes down. They fall with claim 1, because they’re no more inventive than claim 1. That might be because their authors actually don’t want to show the USPTO, when the app is first filed, any “fall back position” that, in terms of scope of protection, better corresponds to the contribution to the art than over-broad claim 1. Once the PTO Exr sees it, he might get the idea to hold Applicant to that narrower scope, and reject claim 1 in consequence. Or?

  71. 12

    Fostering a desired claim interpretation has been one of the motivating factors for me to include increasing numbers of claims, but patentability fallback is the main one. In many years of preparation, prosecution, licensing and litigation, it has been my experience that generously funded U.S. and EPO pre-filing searches seldom uncover all of the important prior art, and frequently do not uncover the most pertinent prior art. As the art becomes more volunminous and both applicant and examiner searching grow more “chancy”, I’ve felt an increasing need, for the applicant’s good, to build into applications increasing numbers of carefully calibrated, graduated fallback claims. A case in point was a patent I prosecuted, issued with 51 claims and litigated. Only three infringed claims survived the “new” prior art uncovovered by the defendant during the litigation. Had the number of claims been limited to 25, 20 or 15, the risk to the patentee of an unfavorable outcome would have been greatly increased.

  72. 11

    Caveman, when claim 1 is directed to (say) a stent made of biologically compatible metal, and dependent claim 2 recites “wherein the metal is selected fom the group consisting of (here list all known stent construction metals)” then I take the function of dependent claim 2 as being to pump out the scope of claim 1 to include (by a Doctrine of Claim Differentiation) metals not so far known as suitable for stent construction. I see plenty such dependent claims (and few directed to fields narrrower than claim 1, that correspond to enhanced performance methods or apparatus).

  73. 10

    Another question – since I started practicing about 3 years ago, the USPTO has always given you 3 independents, 20 total claims for your application fee. I would expect that most patent writers aim for this number and am not surprised that this is what the graph shows (though median numbers would probably support this suggestion better than average numbers). Has this always been the case, or did the USPTO previously give you fewer total claims for your application fee?

  74. 8

    “You need all those dependent claims, to swell the scope of the main claim.”

    Sorry Max, this doesn’t make much sense to me as dependent claims tend to limit and not swell the scope of the main claim. Claim differentiation notwithstanding. Maybe there’s something you’re trying to say here that I’m missing.

  75. 7

    “You need all those dependent claims, to swell the scope of the main claim.”

    Sorry Max, this doesn’t make much sense to me as dependent claims tend to limit and not swell the scope of the main claim. Claim differentiation notwithstanding. Maybe there’s something you’re trying to say here that I’m missing.

  76. 6

    The commentators who blame it on the shrinking DOE are right. You need all those dependent claims, to swell the scope of the main claim. Which takes a deal of explaining, to anybody outside USA. Europe, being multi-lingual, has an advantage. Rarely is an infringement judge construing a claim in his own (non-English) language. So, he goes for the substance, not the nuance. So too England, with its yardstick “What was the claim writer using the language of the claim to mean”. Germany and Japan cope because they are coming from a history of “central claiming” where the claim is interpreted expansively anyway. So, summing up, only USA needs a claim differentiation doctrine, only USA forbids a “dependent on dependent” claim heirarchy, so only USA needs such an inordinately long list of claims. Or?

  77. 5

    Related to this article is the new rule on claim number.

    The USPTO, on November 1, 2007, imposed a new rule that limits the number of claims that can be included in a patent application. I believe the new rule limits applications to no more than five independent claims and twenty-five total claims.

    I’m curious as to how the federal courts will rule on such a restriction. I’m also curious as to whether the USPTO has the authority to make such a rule.

    Ben at link to windycityip.com

  78. 4

    I wonder if this trend follows the number of Fed. Cir. opinions approving of claim differentiation. I draft dependent claims almost solely for either broadening my independents through differentiation or giving me fallback positions. (I also include one picture dependent now in light of liebel – sheesh)

  79. 3

    It’s probably worth pointing out that excess claims in Europe are about to get very expensive next year. 200 euros for every claim past 15, for a start. See http://www.epo.org or the ipkat (www.ipkat.com) for more details.

  80. 2

    Certainly not the huge increase “patent reformer” rhetoric would have suggested. It seems the rise in total claim number (which is predominantly due to more dependent claims) tracks the CAFC’s assault on the doctrine of equivalents, whihch makes sense – if DOE can’t be used, a greater variety of dependent claims are needed for literal infringement.

  81. 1

    An important question for future policy decisions [other than draconian arbitrary de facto absolute limits on the number of claims, as curently attempted by current PTO management] is: was there a noticeable dip, or not, in the number of claims per application AFTER the adoption of significantly higher fees for extra claims? Can this data be broken down on that basis?

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