Tafas v. Dudas: Challenging PTO Rules Potential Feburary 8th Decision

The challenge against the USPTO’s implementation of its new continuation and claim rules continues into its seventh month. On Friday, February 8, Judge Cacheris is hosting oral arguments on the competing motions for summary judgment.  Previously in this case, Judge Cacheris indicated his holding from the bench — this case may be no different.  

As I have mentioned before, at best, this case is a likely partial-winner for Tafas. The patentee’s two best arguments are (1) the illegality of strictly limiting the number of continuations and (2) retroactivity problems.  Two additional arguments are also potential winners: (3) that the ESD requirements are vague (not just costly) and (4) that the PTO followed improper procedures in implementing the rules.

Even if the rule challengers win, the PTO would still be able to implement portions of the new rule that limit the number of claims in newly filed applications.  However, the court could potentially require that notice-and-comment process be entirely redone — thus changing the timing.

  • Docket & Briefs on Justia
  • Polestar Amicus is particularly interesting [as discussed by PatentHawk]
  • PLI’s Quinn will be blogging from the event.
  • Regarding Paragraph two above, I also predicted the Patriot’s to win. . .
  • One argument against the possibility of ‘splitting’ the rules is that no party has asked for that rule — both sides are going all or nothing.
  • It is also interesting to consider why none of the plaintiffs or amici have been able to pursuade the Senate to include limits on PTO power in the proposed Patent Reform Act of 2007.

134 thoughts on “Tafas v. Dudas: Challenging PTO Rules Potential Feburary 8th Decision

  1. 134

    “Oh, excuse me, I forgot ‘QQ searching is too hard (expensive)!’.”

    You admit on the one hand that you absolutely KNOW some bit of information to be out there but can’t find it. On the other hand, you expect every inventor to find the most relevant art without undue effort. If (when) he fails — in your subjective view based on the results of your search — you accuse him of deliberately hiding art of which he is aware or, oddly, of not deserving a patent because he’s ignorant of the “true” art that you found. I can’t resolve the contradiction or the “reasoning”.

  2. 133

    E6: “Sure, they’re hugely ignorant of the art in some cases. Maybe even all the cases that I say at least some of them are not being on the up and up disclosure wise. Maybe, and lets assume for a second that it is completely 100% true. What then? We see the whole other side which I’ve particularly pointed out several times. Ignorant people in their art do not believe they have an invention. They believe they made something and that’s it. It’s only through comparison with what came before it would they have any clue, even the faintest notion of if they have an invention, much less a full blown belief that they have an invention. Up until the point of comparison it remains just you excersizing your ordinary skill.”

    They are ignorant of the written prior art, not of the state of the art. People in the business of developing colorants for polymers or textiles have a sense for what’s been done or, more importantly, what’s not been done. *To their knowledge*. They figure out a way to use a pigment in an polymer environment that, to their knowledge, it hasn’t been used in before … they conclude they’ve invented something. Or they remark that they aren’t aware that it’s ever been done, and then the patent attorney concludes they’ve invented something (because, unlike you, we work with these people and consider them honest until proven otherwise).

    While it may be good practice, there is no legal requirement that an inventor perform a search of the art before filing. For smaller companies, it just isn’t done, except perhaps for the inventions thought to be of greater value to the company. (Actually, I’ve worked for clients ranging from the largest international companies to the smallest start-ups. Across the board, my general observation is that no searching is done.) Even if it were done, we’ve already discussed the great variation in searching and weeding through the search results. There is no reason to assume that the inventor who does search will find the best art or the same art that the Examiner finds; in fact, there is every reason to believe the opposite. That variety makes neither a cheater or liar, though.

  3. 132

    examiner#6k –

    Thanks. Now I can see you don’t really want to have a serious conversation.

    1) It was 17 allowable.

    2)Re: “You submit an ESD beforehand (or maybe after)” No, the new rules are arbitrary and capricious and do not allow for the ESD to be filed after the first office action. So, the solution you offer here is to always file and ESD, which you need like a second behind…so, Mr. Dudas et al. are clearly lying (as is the habit of the whole “born again” Bush administration) when they assert that it is just to help prosecution.

    3) There was no restriction requirement. Dependent claims are found allowable if placed in independent form every day.

    4) There is no way to amend to achieve 5/25 and receive as broad protection as the examiner recognizes the inventor is entitled. To receive that requires 17/0. Remember,these claims have been examined and found to be allowable. But the arbitrary rules prevent 12 of them from being placed in independent form, which would require no further examination. It isn’t even clear to me why placing dependent claims in independent form requires the payment of additional independent claim fees. Accordingly, the new rules represent an unconstitutional taking.

  4. 131

    Clive and Lionel,

    The proposed continuation/claim examination rules will never go into effect, so worrying about their impact is a waste of energy.

    Unfortunately, all of the time, money and effort that PTO (mis)management caused us to expend between 8/22/07 and 10/31/07 is gone.

    It’s a write off. (To quote another classic Seinfeld episode.)

    Keep filing those 300 claim apps!

  5. 130

    Oh, Clive and Hutz, yeah right, I understand quite well what’s going to happen to it. I realized you probably weren’t talking about the art invalidating it, but that the art blew it up in any fashion. Though, I’m pretty sure based on some of the big boys sending me refs that you can’t be punished for submitting bad refs, they send tons of horrid ones not even in the same field hardly.

    I also know the types of people you’re talking about very very well. I met them all through school, all my profs just about WERE them before they were profs, and I know several of them personally. Sure, they don’t always go out and find a piece of art that teaches them what to do explicitly, but in a very large portion of the cases they do get training in some form or fashion, from the job, or from journals. Sure, they’re hugely ignorant of the art in some cases. Maybe even all the cases that I say at least some of them are not being on the up and up disclosure wise. Maybe, and lets assume for a second that it is completely 100% true. What then? We see the whole other side which I’ve particularly pointed out several times. Ignorant people in their art do not believe they have an invention. They believe they made something and that’s it. It’s only through comparison with what came before it would they have any clue, even the faintest notion of if they have an invention, much less a full blown belief that they have an invention. Up until the point of comparison it remains just you excersizing your ordinary skill.

    That’s my position, and there’s really nothing reasonable to be said (or has been thus far on this site) in opposition. Oh, excuse me, I forgot “QQ searching is too hard (expensive)!”. And I say that in the most respectful manner possible.

    I’ve gotta get back to work I’ll be here late anyway :(

  6. 129

    I need an ESD like I need a second behind. All I really need apparently is inventors who are not ignorant (which by the way Fenster I specifically used ignorant in my previous posts how you used it) of their fields work to submit apps. But, the ESD will discourage people from filing apps with so many claims it takes an hour to just read them and instead I can read for an hour about why his deps make no difference in the case. See the rules for what they are man, not their effect on you. We know we can find art, we also know that some applicants aren’t being forthwright with the art they submit as art, and finally we know we don’t want to find art on every “inextricably linked” unrestrictable species in your application for 1000$ (or two counts). All this is doing is helping to target three or four birds with one stone. (why a fourth? We want to up fees. Not for more money, though that be nice, we want a larger barrier for bs. Won’t give us fee setting authority? We’ll make it cost more to file a bad app anyway, pick your poison)

    In summary, be glad we let you submit dep’s at all (and have them examined, if not for that then we wouldn’t give a darn what you put in dep form it could be 5/1000 and I wouldn’t care if all 5 are allowed) and that you still have an outrageously cheap option if you wish to take it.

  7. 128

    3. You amend in such a way as to leave you with 5/25 claims.

    Someone peruses the ESD for blatant errors, then I look it over and make the final call if it gets past them. I don’t particularly have a habit of rejecting anything out of hand and am very reasonable, hell I might even consider an afterfinal if I see jesus himself in the amendment you submit. There will be no argument so far as I’m concerned, either you do it as will be directed or you don’t get the benefit of it, the first 5/25 of your app are still valid and I won’t cancel them.

  8. 127

    My bad T, I’d thought you were the guy looking for an example application and I posted the example in the wrong dudas thread. Anyway, in re link to patentlyo.com

    Yes, I’ve read the rules, and considered their consequences. You’ve asked what happens when you get 15 allowable claims? One of three things.

    1. You submit an ESD beforehand (or maybe after) anticipating that this application is so special that you would go outside the realm of normal prosecution and independentize all your allowables, rather than taking one limitation and moving it up, or at worst, splitting the claims in two groups and putting limitations as necessary. This requires some forethought on your part. You might also want to file seperate apps and hope they’re not deemed obvious.

    2. You take the restriction requirement the examiner tried to impose at the beginning because your claims are all directed to 17 different embodiments of the same genus i.e. a species, or in the alternative, maybe a combination/subcombination. (otherwise the restriction would probably have gone through even if you didn’t like it)

  9. 126

    E#6k wrote “If by punished you mean it was determined they did not have a valid claim to stop someone else from doing x action, then yeah, I’ve heard of it. Was I particularly sympathetic to their cause? No. If a basic textbook just torpedoed your pt boat outta the water then you probably had no reason to be shooting your pt boat guns at someone.”

    No, he did not mean that. He meant that they were punished for submitting non-material references or for trying to play hide the salami with an actually relevant reference.

    And you clearly have never worked much in a non-academic setting outside the PTO. Because the OP was correct. Most of the inventors I work with are very ignorant of what goes on in the prior art. EVEN OUR OWN sometimes. A number of times our internal review system has had to reject inventor’s submissions because they came up with a solution that someone had come up with for a different product 10 years earlier. These guys are problem solving and looking forward. If it wasn’t part of their schooling or their lab work, they likely do not know about it.

  10. 125

    I’m not at all talking about invalidation of claims based on the cited textbook. Your response tells me you are not particularly aware of the lives patents lead for the seventeen or so years after they leave the USPTO and especially when asserted against another.

    I would suggest that you reach out to your favorite dictionary.com for the definition of “ignorant”. I did not use it in the college bar sense (as you seem to approach conversations on this board), but as “lacking knowledge or information as to a particular fact; uninformed, unaware.” That is to say, the inventors largely are unaware of the published prior art. They know the general state of the art. They have a good feel for what’s been done before from a commercial perspective (i.e., they haven’t seen, read or heard about the product they’re trying to invent) because that’s the business they’re in. And most corporate inventors are not publishing papers; the only prior art of their own you may find would be prior patents and published applications.

    I initially had typed a much longer reply, but then I realized it was a waste of my time to write it, and most of the board’s to read it. They already know what happens in litigation, and they already know the behavior and prior art knowledge of the typical inventor. You clearly do not and, to be frank, I don’t think you care to know. The knowledge would challenge your position, and your postings indicate that you’re willing to view such information only as something to be attacked because it doesn’t fit your patent-prosecution world view.

  11. 124

    Please do tell us, anon, what you do in the following situation, because your answer, no matter what it is, will be fascinating.

    You pick up the oldest new case on your docket, you read it, you formulate your search, you conduct your search, you determine the closest prior art, you objectively determine the facts (i.e. resolve Graham’s four factors – 1) scope and content of prior art, 2) differences between prior art and claims, 3) level of skill in the art, and 4) any secondary considerations), and, applying all of your education and experience, you make an sound, objective, factually and legally supported conclusion that the claims are allowable.

    What do you do?

    Do you prepare the Notice of Allowance and turn it in for counting? Or do you make a BS rejection?

    Can’t wait to hear your answer.

  12. 123

    Please show me where in any of the posts I’ve made on this thread I stated that my alternative is allow, allow, allow, or that every application I’ve ever filed is/was worthy of a first action allowance.

    I stated very clearly that patent examination should be conducted according to the law, i.e. 35 USC, 5 USC and the years of binding precedential decisions.

    Examination conducted according to the law is 1) objectively determining the facts that are supported by substantial evidence, 2) weighing all of the facts/evidence/arguments, and 3) making a sound legal conclusion by a preponderance of the evidence.

    Conducting examination according to an unwritten policy of “Quality = Reject, Reject, Reject” is a violation of applicants’ due process rights. If you’re as “educated” as you claim to be, you would understand that. There is simply no credible argument that can be made that a system that puts the answer (i.e. reject no matter what) before the gathering and weighing of the evidence is lawful. None.

    Your inability to understand these very simple concepts is truly sad. You’ve wasted a lot of time accumulating a bunch of worthless acronyms. Congratulations.

    Just remember 2+2=5. You’ll be much happier that way.

  13. 122

    examiner#6k – I understand nonresponsive examiners. I deal with them every day. But, why did you SAY you would respond, when you had do intention of doing so?

  14. 121

    “Doll’s quality = reject, reject, reject philosophy is not bad in and of itself”

    “Yes it is.”

    Only for those incompetent patent attorneys who don’t know how to draft an allowable claim.

  15. 120

    “Mr. Pitchford is wrong. Not because that’s my opinion, but because he’s wrong by any objective measure. Arguing that the government should condone, heck even actively promote, illegal actions on the part of its employees is wrong.”

    So I take it that every application that you have ever filed in the PTO is/was worthy of a first action allowance?

    What exactly is your alternative? Allow, allow, allow, allow? Rubber stamp everything that comes through the doors of the PTO?

  16. 119

    anon,

    No. But my arm’s a little sore from constantly patting myself on the back. (Assuming that’s what you meant by that non-sequitur you posted.)

    Mr. Pitchford is wrong. Not because that’s my opinion, but because he’s wrong by any objective measure. Arguing that the government should condone, heck even actively promote, illegal actions on the part of its employees is wrong.

    “Trial by fire generally produces the strongest metal (in the iron age anyway). I think at least one rejection is probably good to establish some dialogue and meaning.”

    Let’s examine this in another context. What if I say, “Quality = Convict, Convict, Convict”? Is that wrong? Shouldn’t we just convict all criminal defendants? I mean, if we just convicted them once, and then made them respond to prove their innocence, their “innocence” would be stronger because it’s “tried by fire.” That’s a great idea, isn’t it?

    Like I said, you really should put all of your acronyms to better use.

  17. 118

    If by punished you mean it was determined they did not have a valid claim to stop someone else from doing x action, then yeah, I’ve heard of it. Was I particularly sympathetic to their cause? No. If a basic textbook just torpedoed your pt boat outta the water then you probably had no reason to be shooting your pt boat guns at someone. Be glad there’s no law that punishes you for shooting your little guns at someone.
    In response to your challenge, I never said there was one. My challenge to you, cite for me from the MPEP where you have to submit all art you know of that is relevant to examination (factoid, your previous work, or ANYTHING with a good date).

    “Now in-house, I was/am appalled at how ignorant my inventors are of the prior art.” So what makes them “believe” they have an invention then if they’re so ignorant? See my very first position on the subject. Don’t allow ignorant people to gain the right to exclude others with a presumption of validity after 10 hours (avg) of a search. Otherwise, if they’re not ignorant, show me the art. And come on man, if it’s art by them that I find, what excuse do they have? O, dur, I couldn’t see how in the world that would be relevant hur hur. I guess the fact that it is the generic disclosure of their “more specific, new” invention never occured to them? Or was it you that told them they didn’t need to submit it? I’ll never know… but what I will know is that something needs to change and thankfully the people in power agree. Learn to not be ignorant. I had a great idea the other day for a laptop feature, 2 hours later I had art that beyond 102’d it. Gee, that was SOOOO ROUGH to search, I think I pulled a hammy. I still don’t know why laptops don’t have those features for sale.

  18. 117

    E6 writes: “I also know that the people working on this brainstorm will either a. consult some basic references just to narrow the specific numbers they want to use down or b. think back to all the articles they’ve been reading in Your Art Journal Vol 89, No. 2 and think, HEY GUYS, I’VE GOT IT! We’ll use x process to make our y product better (just like they used it on z product last month in that magazine!)! Yeah Mr. manager I came up with that idea all by myself. Dmb Manager: (We should patent this idea, this is big). Yeah, it WAS big before your employee who knows nothing about legal terms of inventing mean and thinks he did a big thing (which hey, to his credit, he’s one of ordinary skill, they get paid to make ordinary combinations right?).”

    As a former private-practice attorney, I met with innumerable inventors from clients large, medium, and small, corporate and academic/institutional. With the singular exception of the academics, nearly every other inventor did NOT launch his efforts along the lines you outline above.

    Now in-house, I was/am appalled at how ignorant my inventors are of the prior art. Not because I want them to find it for me, but because I believe it would provide fodder for their creative undertakings and teach them what is already known — the entire point of the quid pro quo. They hold basic knowledge that they learned in college/grad school/post-doc positions, and they hold specialized knowledge that they acquired through personal experience (e.g. lab work). As to the latter, it is not “prior art”, it is the inventor’s own knowledge gained through his own experimentation and reasoning. As to the former, my challenge to you: point me to *any* citation, MPEP or legal opinion, where an inventor is *required* to disclose the most common factoids in his art.

    Are you aware that patentees have been punished in litigation for submitting basic information? The prevailing view is that the examiner (and rest of the world) already knows it, and a patentee submitting high-school and college chemistry books, for example, is trying to bury the examiner in references and hide something important.

  19. 116

    And Mr. Pitchford, I know good and well how it works, I’ve done the brainstorming things you speak of in industry. I also know that the people working on this brainstorm will either a. consult some basic references just to narrow the specific numbers they want to use down or b. think back to all the articles they’ve been reading in Your Art Journal Vol 89, No. 2 and think, HEY GUYS, I’VE GOT IT! We’ll use x process to make our y product better (just like they used it on z product last month in that magazine!)! Yeah Mr. manager I came up with that idea all by myself. Dmb Manager: (We should patent this idea, this is big). Yeah, it WAS big before your employee who knows nothing about legal terms of inventing mean and thinks he did a big thing (which hey, to his credit, he’s one of ordinary skill, they get paid to make ordinary combinations right?).

  20. 115

    “This is a free country. (Last time I checked anyway.) You’re entitled to be wrong.”

    Tell me VA, does your back hurt from you constantly kissing your own @ss???

  21. 114

    Just to jump in right fast while I’m on but a small break: “computer readable STORAGE medium” does not make your claim fit a catagory when it’s in the preamble. I see this all the time. A computer readable STORAGE medium containing instructions to cause a computer to: Retrieve x data. Retrieve y data. Compare x data to y data. Woot! You claim says: 0!

    You didn’t accomplish anything “in the real world” or having a “tangible” result you only compared some electricity with some electricity. 101’d. Make a printout of the comparison next time or display it to a user on a screen, but for gods sake do something. Don’t even try to tell me that the preamble was required to “breath life” into the claim. Yeah, it was required to breath it over into a statutory catagory, we’ve all been trained to reject it already, just deal with it. You’re not breathing life into the claim, we know what the claim says: get data x, get data y, compare. If you disagree with these interpretations you have bigger software fish to fry in the PTO than the examiner you’re working with.

  22. 113

    That last sentence should read, “There is simply no prior art to cite of which they are aware.”

  23. 112

    “How do you explain the 30% of my docket that has NO IDS AND NO PRIOR ART SECTION? What about the other 40%+ with an IDS that only has stuff from other searching offices or related apps (still having large numbers of references)? You literally could not do jack squat in my art without references.”

    So, the inventors should cite every textbook they ever read? If the invention involves mathematics in any way should they cite their calculus textbook?

    They should be citing what they are aware that exists in the art. In most cases though, THEY HAVE NO REFERENCE. They simply know what exists and what they invented and the background describes the problem that they solved. This is especially true in the software realms. There is simply no prior art to cite.

  24. 111

    This is a free country. (Last time I checked anyway.) You’re entitled to be wrong.

    Rejecting the application to “build a record” is bullsh#t.

    Read the app. Formulate and conduct search. Make objective findings of fact supported by substantial evidence re 1) scope and content of prior art, 2) differences, 3) level of skill, and 4) secondary considerations. Weigh all evidence and make sound legal conclusion. Patentability is determined by preponderance of evidence, i.e. the evidence shows/suggests that claimed invention is more likely non-obvious than obvious.

    Simple.

    Reject, Reject, Reject to “build a record” is, like I said, bullsh#t. You should know that by now.

  25. 110

    I disagree. Trial by fire generally produces the strongest metal (in the iron age anyway). I think at least one rejection is probably good to establish some dialogue and meaning. I think the philosophy quickly turns bad when your amendments are refused because “further searching is required” (but never done). That, and the examiner issues a final rejection despite the fact that the examiner’s arguments can’t pass the smell test following your amendments. These are problems with “reject reject reject” which point to the inherent problems (no rce’s) in the proposed new rules.

  26. 109

    “Doll’s quality = reject, reject, reject philosophy is not bad in and of itself”

    Yes it is.

  27. 108

    Examiner 6k and VA

    You guys have a misunderstanding that your contentious wording is just exaggerating.

    Doll’s quality = reject, reject, reject philosophy is not bad in and of itself, it’s the collateral damage that makes it bad.

    Getting a first OA with some 112 issues (a’ and the’s), maybe a 101 on a computer readable STORAGE medium, and a 102 rejection that’s really just looking for you to better link your elements isn’t bad. Practicioners take those for what they are, an honest office action. The problem comes when you fix all of those issues, and now 102 doesn’t teach everything embodied in the claims.

    At this point, the Examiner should either allow, or put forth a 103 with a valid argument. The problem is that counts and time don’t allow that. He can’t go find that other reference and make that argument, so he holds to the 102 rejection which is now, in light of the amendments, just a bad/weak rejection. So, now the practicioner is looking at a final with a bad rejection and both parties know it’s weak.

    So at this point, reject reject reject has left the practicioner with two options, argue and appeal (which will usually reopen prosecution), or amend, even though you don’t think you should, and file an RCE. The problem is that the amend and RCE will put you right back in the same situation with a good first OA, and a bad second. However, it’s generally cheaper and the clients prefer to go a little narrower than necessary so we go with the RCE.

    These new rules will continue to give us bad second actions because that underlying problem (counts and add’l searching basically not allowed) has not been addressed. They will also take away the RCE from us. That’s my problem with them. They don’t accomplish their “intended” goals.

    Why enact something that won’t accomplish the stated purpose, but only damage the existing system? (It will increase appeals and backlog, because we’ll have to do that instead of filing an RCE in order to preserve the RCE.)

  28. 107

    Examiner 6k,

    Just a little FYI to help you understand why 40% of your docket has no initial IDS. That’s not how industry works. These guys don’t go out looking for references, reading articles, and then figure out how to alter the teachings to acheive their goals. It’s quite the opposite.

    They never read anything really, unless they’re having trouble. That is, they identify a problem and a goal. They then set off to solve the problem. It starts with brain storming, some trial and error, and then they develop a final specification or prototype for the solution. If they’re having trouble getting started in the brain storming part, they may look and see what others have done. That’s the last time they look at anyone else’s work. When they have a solution, the project manager then says, “Hey, I wonder if there is any patent protection available here.” They send a disclosure/summary to the corporate counsel, and he sends it to outside counsel. Outside counsel writes up an application and files it. That’s it. In probably 99% of your cases, there was no search. The 60% of cases with IDS’s are because a couple of the inventors said, “Hey, this one article I once read might be relevant.” So the outside counsel files an IDS with the article.

    Understanding the reality of the situation might help you understand why your assertion that we’re all just hiding the most relevant art is patenty false. We never get the art because no one has looked for it.

    If there is a search, outside counsel commissions it, and will file an IDS with all of the search results. Those are the ones with over 3 references in the IDS.

  29. 106

    Well, I do so agree with M Slonecker, that the judges are the custodians of the system and, if they do their job properly, that can sweep away most of the ills that the system suffers today. Trouble is, the higher court judges manifestly lack any practical experience of patent disputes, and any real life understanding of core concepts like “disclosed” or “obvious”. In the land of Binding Precedent, they know they are the pilots of the ship, they know how to steer the ship, but they don’t know where the treacherous shallow shoals lurk. That’s bad luck for the paid crew and the paying passengers, who end up fighting with each other.

  30. 105

    examiner#6k – ooops that should read: Still waiting for the reply you promised on 2/9 for the post I made on 2/8.

  31. 103

    If there is a blow up, it will occur primarily because of the largely one-sided presentation made to members of the cognizant congressional committees. The Patent Deform Act (have I tipped my hand?) now on the table has in large part arisen from the perception held by those unfamiliar with the process that has been cultivated by “agents of deform”, eg., some in academia totally removed from the process, large businesses (aka…campaign contributors) annoyed with these troublesome pieces of papers called “patents”, and other special interest groups who stand to significantly benefit from such deformation. The ones who stand to lose the most are inventors, and particularly those who are rapidly being priced out of the market by the continuing rise in office fees.

    I read last night an interesting article in the most recent ABA Journal concerning how the patent system is changing. Its most important point in my view is that the system is changing under judicial guidance in a direction, whether for good or bad being debatable, that calls into serious question if so-called reform is even needed for the vast majority of perceived problems with the system. An important lesson I learned many years ago is that most things have a way of resolving themselves if only you resist the urge to jump into the fray and do something…anything. I believe that lesson applies in this situation with equal force.

  32. 102

    M. Slonecker, it is more like both ends of the rope burning. It is only a matter of time when this one blows up.

    I have given up. I choose to stay on the sidelines wait this out.

    We need Obama to win and magically make all our problems go away. And, of course, to execute the evildoers :)

  33. 101

    Many of the comments exchanged between practitioners and agents in threads such as this one are truly disheartening. For any number of reasons some examiners view practitioners with a jaundiced eye, suggesting things ranging from the deliberate withholding of material information to the abusive use of continuations. In contrast, some practitioners view examiners likewise with a jaundiced eye, suggesting things ranging from a bias against applicants to a deliberate abuse of the examination process in order to collect internal credits important in evaluations of their performance by their supervisors.

    As long as a dialogue continues along the above lines it is clear that nothing meaningful will result in educating one another about their respective roles within the “patent system/process”. Worse however, at least in my estimation, is that “buzzwords” will continue to fly back and forth without either side having agreed on just what those “buzzwords” mean and how they apply to the roles of practitioners and examiners alike.

    How nice it would be to cast aspersions aside and focus solely on areas of agreement and disagreement so that meaningful discourse can occur that is relevant to pereceived problems with the system now in place and what can/might be done to address such problems in a cooperative and mutually beneficial manner. Merely by way of example, it is clear that there is a significant disconnect in understanding by examiners of what practitoners must do to avoid charges of inequitable conduct, discipline by the USPTO, etc. Conversely, there is a disconnect in understanding by practitioners what it is examiners are required to do in order to identify relevant prior art, as well as details about the tools they must use, precisely how those tools are used, etc.

    I believe we all share a common goal, and that goal is grounded in the constitutional provision pertaining to the useful arts. Achieving that goal, however, is well nigh impossible so long as the two sides continue to avoid a constructive dialogue by each pulling on opposite ends of a rope.

    In the immortal words of Rodney King, “Can’t we all just learn to quit beating each other to a pulp?”

  34. 100

    “I guess I don’t feel any “sillier” than you “wasting” your time getting a JD when there are plenty of patent agents (with no more than a bachelors degree) doing the same work that you do.”

    You have the typical myopic view of most examiners. You think that the only tasks a patent attorney performs are application and amendment/response writing.

    You really should put all of those acronyms of yours to better use. Not necessarily private practice, but something more useful, and enjoyable, than “Quality = Reject, Reject, Reject.”

    Good luck.

  35. 98

    Good point Mark Nowotarski, Any patent system is stressed by some suspiciously old-looking feature, recited in a pending claim, yet not to be found (in so many words) in the documentary prior art. Example: a numerical range of some fancy parameter that the drafting attorney defines in the specification, a parameter chosen deliberately as one which nobody had bothered to measure before. The EPO Guidelines for Examiners deals with the issue at length, and it isn’t a problem in Europe because the EPO operates a sort of “reversal of the burden of proof” squeeze on the Applicant. I’m not a US prosecutor but I am imagining that the USPTO is precluded from operating such a reversal. Mark, how does the USPTO handle those occasions?

  36. 97

    “Don’t you feel just the least bit silly wasting your time getting a PhD just to pump out drivel OA’s to the tune of Mr. Doll’s “Quality = Reject, Reject, Reject” drum beat? You could do that with a bachelors.”

    I guess I don’t feel any “sillier” than you “wasting” your time getting a JD when there are plenty of patent agents (with no more than a bachelors degree) doing the same work that you do.

  37. 94

    “Are you saying … or something else entirely?” In some cases yes but I don’t think that was the point of what I said in previous posts.

  38. 93

    I agree with much of what you say VA, 2nd eyes etc. but pulling all the relevant art in such a short search for ALMOST ANY application in my field is nigh on impossible (I think some attorneys take this under advisement though to an extent). Sure, I can find knockout art for their claims, and for the “big concept” on display, but they can drone on and on about technical features of the product and make something that is all but impossible (especially for a newbie to the classification sys) to reject, in their entirety, legally without relying squarely on my tech training, which I was hired because I have, and there’s a reason people pay big $ for me in private sector, because I’m not some empty headed biz major, I actually had a background when I got out of the masochistic (by every description I’ve ever read) teaching facilities that are the schools in my field.

    Slone- Yes, bad patents are no doubt at the heart of the matter. Here’s a question for you, and VA too, if Doll didn’t reject reject reject (the end result of which btw, nearly 100%, is narrower claims, or a good argument for the record, by strictly legal, or maybe not strictly legal means) then do you think the number of bad claims, which are the middle chamber of the heart of the matter, would be higher, or lower? Write down your answer, this will be important later. Then perhaps we ask, what’s the percentage of bad patents (claims), the question then immediately arises: What are bad patents? Are they patents containing claims which are too broad? Yes. Are they patents that have no merit to their presumed inventive concept, given a very detailed search and/or in view of one truly of ordinary skill? Yes. In view of the preceding I would venture to say, conservatively, that over half of all allowances will be “bad” if we look at their lifetime, and assuming necessary investigation is performed during their lifetime. How, given the legal setup within which we exist, can the Office combat such a problem? See your answer you wrote down about what reject reject reject does.

    The truly bad thing about this is, all of those will be presumed to be good right along with the good ones. And it will require a much stronger showing than I have to make to overturn validity of those claims making up the bad patent.

  39. 92

    “For me, D8nw1n1an evolution is a fact and a cornerstone”

    Max,

    I hear what you are saying, but I think the issue is not whether something is a fact or not, but whether it has been previously disclosed. If someone filed a patent application on a method that relied on natural selection (e.g. genetic algorithms for solving multi goal non-linear optimization problems) then I would think that an examiner would not have a problem coming up with “Origin of the Species” as prior art.

    I’ve even seen the Bible being cited as prior art for a business method patent. Leviticus is chock full of them.

  40. 91

    Examiner #6,

    Just checking, but did you post an example of a “cornerstone” of a given technology that was not be readily discoverable in a prior art search? I didn’t see it in all of the above and I wasn’t sure if I missed it or not. Feel free to pose a hypothetical if you feel that a real life example hits too close to home.

    One that occurred to me was Method to Swing on a Swing, US 6368227. I can certainly see how an examiner would feel that the invention is clearly anticipated by the common play of children on a playground, but not have access to any prior art that he or she could cite. That seems to me, however, to be quite an outlier in terms of patentable subject matter. Anything a little closer to home?

  41. 90

    examiner#6k,

    Believe it or not, I do read what you have been saying, but am at a loss to understand its import. Are you saying that most applications on your docket describe and claim “inventions” that simply no matter how claimed do not meet the tests embodied in 102/103, do meet the tests but you find it is like pulling teeth to identify the truly relevant “pieces” of prior art, or something else entirely? I ask this because so much of the discussion regarding the proposed rules seem to be based on the premise that far too many “bad” patents are being issued or have been issued over the past several years.

    Is it your position that “bad” patents are the culprit as so many wrapped up in political jargon seem to believe, and if so are you able to provide a swag as to what you might believe to be the percentage of such “bad” patents? 10%? 20%? 30%? A higher number? I ask these questions not to attack/dissect/parse/etc. your opinion, but to simply try and get a clearer picture of what you have seen or are seeing.

  42. 89

    “You surely have some individuals in the whole of USA that can do the judging job. Comments? ”

    Max, we have plenty of such individuals. However, nobody who cherishes independent thought is going to volunteer to work in a post-grant opposition system administered by a PTO that is run by political appointee hacks and the current crop of career flunkies.

    Mr. Doll has been brainwashing literally thousands of examiners that “Qaulity = Reject, Reject, Reject.” Go back and read examiner#6k’s comments where he admits that he wasn’t “allowed” to allow anything while in the PTA (patent training academy). So Mr. Doll has set up an 8 month long “training academy” to teach examiers that “Quality = Reject, Reject, Reject.” Not to train them to make findings of fact supported by substantial evidence and sound legal conclusions by a preponderance of evidence. The vast majority of these examiners are damaged beyond repair. They cannot be rehabilitated. They honestly believe their job is to reject every single claim of every single application that comes across their docket. They’ve been told the answer is, “Reject.” They’ve been through Room 101 and they’re all happy.

    However, for those of us that remember the old days, there’s no way we would subject ourselves to that.

    I was an examiner once before. Before the dark times. Before the empire.

    And when I worked there, the job was to examine the application. You were expected to develop a knowledge of the art you examined and consider all the evidence and arguments and make a reasonable decision on patentability. Once you demonstrated knowledge of your art, experience and judgment in applying that knowledge, you were entrusted to make independent decisions.

    So the PTO takes some criticism, well deserved or not, about some “bad patents” (e.g. peanut butter and jelly sandwiches), and what’s the response from Mr. Doll and his cabal of lifers? The PTO pulls the rug out from under every experienced examiner and institutes “second pair of eyes.” So now a system that worked for the vast majority of applicants and examiners is thrown into total chaos so that PTO management won’t have to read any more articles about patents being issued for methods of swinging on a swing.

    Great.

    The most damaging thing Mr. Doll et al. have done to the PTO is instilling the belief in the minds of many of its employees that they are not required to obey the law. That attitude is going to be pervasive in the corridors of the PTO long after Dudas, Peterlin, Doll, Love, et al. are gone. Long after.

    Those of us who believe that our country, however imperfect, is a nation of laws simply would not want to work in such an environment.

    But hey, like I said before, getting APJ money, benefits, vacation, and federal holidays to punch a 40 hour clock and attend secret meetings with those looking to invalidate patents they find troublesome might not be so bad.

    Where do I sign up?

  43. 87

    Don’t get me wrong though, very many of them took some “inventive skill”, problem is, the “inventive skill” that they portray is nearly always addressed on first action, then we settle in to start pulling deps (or other matter) up to try to make the 103 unreasonable. Well that’s just great, I’m not issuing patents for inventions (which it’s usually 100% crystal clear what they feel is the inventive concept, they kindly throw it right smack in the first tiny claim, sticking out like a sore thumb, then when it’s found, oh, no wait, did I say I invented that? Hah, no my bad, I meant someone else did and I applied it to x application), I’m issuing patents for slightly, maybe, just maybe, non-obvious combinations.

  44. 86

    Do you honestly believe a sizable minority of the applicants whose applications you examine are witholding references?

    No, I believe a sizable majority are. You simply do not build an airplane with zero references, nor a transistor, nor a database, nor even a ham and cheese microwaved sandwich (to cite the best patent ever). How do you explain the 30% of my docket that has NO IDS AND NO PRIOR ART SECTION? What about the other 40%+ with an IDS that only has stuff from other searching offices or related apps (still having large numbers of references)? You literally could not do jack squat in my art without references. Even if you are smart enough to do it just from your head (which in some few cases that would be the case), you still got a HUGE amount of basics from somewhere, maybe from your own work over the last 20 years you’ve been publishing/patenting as you go along. Guess what? We’d like to know about it.

    Assuming you are correct in the lack of inventive skill required for the inventions you examine, wouldn’t that suggest the possibility of independent invention?

    No. N mother fin O. I swear to god, maybe it’s just my art that’s like this, but the possibility that even ONE of the apps that fall into the category we’re discussing that’s on my docket simultaneously generated that same principle or method without information from the actual inventor is so remote that I would feel more comfortable staking my life on it than I do staking my life on going outside for fear of lightning striking me dead on a clear day. Whereas, the possibility of them generating that application with zero references (how many they voluntarily provided) and no prior art is so close to zero one over infinity literally would not do it justice.

  45. 85

    examiner#6k –

    1) I’m eagerly awaiting your promised reply to my earlier post.

    2) In that earlier post, I referred to 37 CFR 75. It may be that it’s 37 CFR 1.75 … I don’t remember…

    3) In response to your reply to someone else where you assert that anyone should be able to state their invention in 25 claims I respectfully submit the following:

    The English language and claim drafters are not perfect.

    Words are subject to interpretation.

    In a court room, infringers will twists and contort a claim way out of its intended meaning.

    Multiple independent claims, describing the invention in different words are submitted in an effort to combat this. Just to increase the chances that infringers can’t successfully contort the meaning of one of the claims away from their infringing device or activity.

    The need for dependent claims comes from the fact that no one is an expert on everything that is out there, the fact that examiners routinely go beyond “broadest reasonable interpretation” into unreasonable interpretation of a mistranslated –trying-to-hide-the fact-that-English -is -a- second language-to-me-and-I’ve-never-seen-this-word-before-so-I-will-treat-it- as-if-it-is-this-other-word-that-has-many-of-the-same-letters-in-it– interpretation and the fact that the PTO wants to issue a final office action at the drop of a hat. We don’t know where the novel is. We make a guess with claim 1 and try to lay out a series of fall back positions reciting extra detail or extra features.

    If you didn’t go final every time we make an amendment adding some detail from the spec that wasn’t in an original claim or using other words that you may have seen before, we wouldn’t have to present a zillion claims at the get go.

  46. 84

    CliveFenster said it right : “supposed to be non-adversarial”. But exhortations to be nice to one another get nowhere, when the PTO has a one million backlog and Applicants have invested plenty already in the app, and know that the issuance of a claim, any claim, is a lottery jackpot ticket. What’s needed is a legal environment that exerts a pull on the prosecution dialog back towards the shared, common objective of issuance, but ONLY of claims every single one of which is robust enough to withstand, post-issue, preponderance of evidence, prior art attacks adjudicated by a first instance no-nonsense, experienced, specialist patents judge, who awards costs against the loser. Being without that pull towards common-sense reality is like driving a car with a steering system that ain’t self-centering. Take your hand off the wheel for an instant, and the car crashes. The legislator carries the responsibility to build a steering system that’s inherently self-centering. You surely have some individuals in the whole of USA that can do the judging job. Comments?

  47. 83

    SA2117

    … how is it that only pharma needs patent protection? are you now a patent picker? why practice law if you can identify the financially valuable patents … better yet, would you rather have stock in google or merck?

    government should not be a job creator in and of itself and should reduce the barriers to risk taking commensurate with all entrepreneurial activities … entrepreneurs and innovators are being hurt the most … raising any bar on their ability to protect their intangibles in light of the historical success at job creation is simply illogical .

    no one is preventing you from doing just what the “rules” say … the discussion is about why a government agency would go out of its way to do things (whatever streak of things you prefer) that dont appear to solve the issues everyone else (and now apparently said agency) can identify … government knows better than the market, of course. we all know how many jobs were created over the past 7 years with that knowledge.

    picking winners as national champions in any given industry (including our government’s clear support for pharma) is certainly a model that i cannot see as reasonable … btw, can we patent intelligent design?

    fact is you can certainly start following the rules TODAY … so, why don’t you practice your position? would like to see my hasty generalization applied to a real world prosecution …

  48. 82

    What’s your PhD in? Pyschology?

    Congrats on all your acronyms. How they workin’ out for ya?

    Don’t you feel just the least bit silly wasting your time getting a PhD just to pump out drivel OA’s to the tune of Mr. Doll’s “Quality = Reject, Reject, Reject” drum beat? You could do that with a bachelors. Like 6k.

  49. 81

    anon writes “I just think it’s amusing when you paint ALL Examiners with a very broad brush.”

    Personally, I think it’s depressing. Before boards like this, attorneys and examiners interacted essentially only through interviews and written prosecution. Neither venue could be home to acrimony. Now, cross-chatter like you describe just hardens positions and drives us farther apart. Examiners are all buffoons without law degrees who can’t cut it in the real legal world; attorneys are all conniving liars focusing on minutiae and wearing down the examiner. Neither is true, but the continued statements to that effect (explicit or implicit) make it that much more difficult to engage in what is supposed to be a non-adversarial process.

  50. 80

    “Maybe it’s you who’s miserable. You must be an examiner. That would explain a lot.”

    I am an Examiner and I’m definitely not miserable. I just think it’s amusing when you paint ALL Examiners with a very broad brush. Not all of us are 22 year olds fresh out of undergrad. Did you ever stop to think that the same Examiners that you so often degrade on this board may in fact be MORE educated than you? There are more than a few of us with masters, PhDs, and JDs, even some former attorneys (GASP!!). What acronyms do you have after your name Vet? – – I mean other than the JD from your 4th-tier law school? To use your own comment “I’ve met you many times before” – – bulging wasteline, receding hairline, V1agra-dependent, know-it all patent attorney who believes that he’s God’s gift to US patent law – – again, you really do need to get over yourself.

  51. 79

    “You all have simply blown off the comments and assumed one of several things all leading to the same underlying thought, that is, that I don’t know anything.”

    Ah, no, we correctly deduced from your post that you don’t know anything. Your second, and final, post confirms the correctness of our deduction.

    “I have only posted to this board twice, and I think I’ll be done with this one.”

    Please don’t make us any promises you’re not going to keep.

    “BTW, no I am not #6.”

    No, you’re some mid-level PTO stooge doing the lamest impersonation of a patent attorney in the history of lame patent attorney impersonations.

    Nice try, but we ain’t buying it.

  52. 78

    anon,

    Only you seem to have been led to believe that I’m miserable in my chosen profession. I don’t know who led you there, but it wasn’t me. (That earlier post to Malcolm was sarcasm. Try googling “sarcasm.” Better yet, have 6k look it up for you on dictionary.com. It’ll explain a lot.)

    As I said, I find 6k hilarious. I enjoy sparring with him and others on this site. Including that pompous horse’s patootie Malcolm. Why should trash talking be the sole province of overpaid athletes?

    I need to get over myself? Wow. That’s profound. Is there anybody else on posting on this site that could also use some of your awesome amateur psychology? I don’t know, maybe examiner#6k, or Malcolm, GideonPope (aka, King of the basement home office practitioners) etc. etc. etc.?

    Maybe it’s you who’s miserable. You must be an examiner. That would explain a lot.

    2+2 really does equal 5. Just accept it. You’ll be happier. I promise.

    Have a great weekend!

  53. 77

    EG Vetran Attorney and Mark Richard,

    You all have simply blown off the comments and assumed one of several things all leading to the same underlying thought, that is, that I don’t know anything. This is quite an intelligent argument, but it really does not address much of anything. You guys belong in the same camp as #6, you’r all a bunch of blow hards.

    I don’t particularly agree with the rules, but their just rules. One person mentioned or at least implied that I was too idealistic. Maybe. However, I am so tired of all the game playing on both sides, as evidenced by #6. About the only industry, and I mean ONLY, that can lay claim the new rules really affect them is the pharmaceutical industry. In their case they truly require a great deal of time to work out just which molecules may prove efficacious, and thus may require several continutations to really refine their true invention. But even they can deal with the new rules. As for the remainder of the industries, you all file a specification with the patent office, you claim what you think is the invention and that should be it. You should not be able to, many years down the road, to say oh look XYZ is doing roughly the same thing I disclosed so let’s figure out a way manufacture some claims out of whole cloth to get them. I don’t think that is right, unless you have specifically invented that which you now claim to have invented. If you invented you should have claimed it in the first place, or at least in the first 3 cons and an RCE.

    What does this all have to do with the new rules? Nothing, at least as far as the PTO’s justification is concerned. The PTO claims it will solve a big back log. I think that is wrong or a lie. Because the effect of the new rules is to put a stop to the game playing I just mentioned, and it will not significantly affect the back log. To do this the PTO actually has to put some of the money it takes from applicants back into the PTO, rather than in the defense budget. I much prefer the European system; if you want it you better write it down at the time of filing, done. You guys can wax on about how great our system is, but it’s not. The system is broken. It does not enhance the progress of the arts, it’s now becoming an anchor.

    I have only posted to this board twice, and I think I’ll be done with this one. There’s too many people posting here with too much time on their hands. Nevertheless, I will keep reading because I find it informative. So all of you who have time, please keep posting.

    Cheers:)

    BTW, no I am not #6.

  54. 76

    “Like I said, I’ve met you many times. So have most of the practitioners posting on this site. You’re all the same. An entire army of Winston Smiths. Useless to anybody but your masters.”

    Vet – – you really do need to get over yourself – – if you’re really as miserable in your chosen profession as your posts would lead some to believe, then why don’t you just do something else???

  55. 75

    e#6k wrote “What I think is that the applicants claiming a small subsection combination did nothing more than an obvious combination in light of the references he possessed and in many cases did not submit to me.”

    Seriously? Has any Applicant ever hid a reference -sure. Do you honestly believe a sizable minority of the applicants whose applications you examine are witholding references? You’re completely misinformed if that’s the case.

    You seem to be under the impression that patent attorneys routinely try to hide references. That’s no difference than assuming that examiners simply do keyword searches on claims and slap references together without any reference to the spec.

    Assuming you are correct in the lack of inventive skill required for the inventions you examine, wouldn’t that suggest the possibility of independent invention?

  56. 74

    And seriously Dennis – censoring the word h@te? It’s one thing if you do not want vulgarity, but what other words are verboten so I do not have to spend time figuring out ways around the spam filter.

  57. 72

    I don’t have time for a full contribution just now, but I will say:

    MM, true true. When I go into an interview there is at max TWO, usually ONE, or more likely ONE HALF of a substantive issue. The one halves? are easily taken care of while the attorney blubbers on and on with their c’mons etc. or assertations that x isn’t shown when it blatantly is even if they want to fancy it up in nice clothing words. So far I’ve had 5? interviews, 8 including ones with just me and the attorney talking, the 3 have all resulted in amendment allowances, the other 5 are the same with one exception where I sent a better rejection and all was well with the amendment gods later on. Yes, in two of them my rejections were weak, and they argued fairly well, but on the whole, even a weak rejection stands sometimes.

    Suffice to say, yes, I’ve sent a few bad actions, especially when brand new (I couldn’t have allowed it even if I wanted to, forced to reject all in PTA back then) but I knew they were weak when they went out, if you argue it, and I can’t do better now that I’m decent, you’ll get an allowance. According to the people who run things even weak rejections should be made (along with 103’s with a 102(e) ref by the applicants company), and to be honest, there is a real benefit to doing that for the applicant.

    And as to people saying I personally invented x y z inventions, no, I never said I invented many of them, I said I’ve done or made a lot of them before. That, my good fellow, does NOT imply in any way shape or form that I invented it. If I thought I’d invented any of this stuff then I wouldn’t be working here right now. What I think is that the applicants claiming a small subsection combination did nothing more than an obvious combination in light of the references he possessed and in many cases did not submit to me. And to be honest, if I were in the industry right now and wanted to submit an app for my little combination that I worked so hard on that I felt nobody had ever done before then I wouldn’t want to blab all about how I got the idea for my little combination from x professor 4 years ago and from seeing the production line there at work needing that combination and then my sticking it in and maybe changing it to fit a little bit. Yeah, I’d think it was new (in an old to new sort of way), and I’d probably be law illiterate enough to think it was nonobvious (if I even knew that was required). Am I starting to get a better picture of what is going on for the app? Maybe, but it’s not nice to say that it’s just legal stupidity on his part so I won’t.

    Oh and also, sure a lot of apps of mine have “invented” subject matter, but they don’t want to get down to claiming that because the patent would be all but (if not completely) worthless.

  58. 70

    My penultimate sentence got a bit confused there. I will try again. The word “h8te”, when used in relation to an object that is a human, has no place on this patent law blog.

  59. 69

    Hi Vet Atty, it was more the pseudonym “One of Many Max H&ters” that I had in mind when I wrote my last contribution. For crying out loud, how does he KNOW that he’s “One of Many”? I think that we patent attorneys should use words carefully and advisedly. I’m really sceptical whether there is any place on this blog for an object of the word “h&te” that is a living human being. If it’s needed even on this blog then the patents world really is in a sorry state.

  60. 68

    Malcolm,

    Not all of us are as fortunate as you. Based on your posts, you are clearly of the opinion that you are the only patent attorney who’s ever represented a client that actually invented something. Well, at least those potential clients that somehow managed to survive your withering cross examination without breaking down into a blubbering mess and whispering through buckets of tears, “It’s true, Malcolm, I really didn’t invent anything.” You’re a regular friggin’ Perry Mason you are.

    Even the poor self deluded inventors who haven’t caught onto the fact that everything’s already been invented by Examiner#6k in his junior year tech fair project are entitled to some representation. As you’re too pure to do so, can’t you just leave it to the rest of us poor unfortunate souls?

  61. 67

    … thank you all for the very interesting commentary … seriously

    VA – truer words were never spoken … i wonder if patent troll tracker will track the movements of all of the office brass into the private sector … and whether any of these folks end up at companies doing offshore search for the USPTO …

    optimistically, it is my fervent hope that practitioners continue to stay involved in the dialog — especially vis-a-vis clients (many who rarely vote have actually written letters to their rep/sen after cost projections, risk assessment, insurance considerations) …

    sen feinstein & sen schumer are still likely swing votes … filibuster-proof majority does not appear to be a fait accompli … maybe there is a silver lining to microsoft-yahoo … and our more pressing economic situation …

    driedmax … you are one poor family feud … “I imagine that life as a USPTO Examiner is filled with exchanges in which the prosecuting attorney is adamant that X is “not proven”. I imagine that I too would find myself increasingly “jaundiced”.” — JADED perhaps … you should stop drinking to reduce the jaundice …

  62. 66

    Max,

    To clarify, I don’t hate Mr. Doll. Never said that I did. I find his arrogance and ignorance to be frightening, but I don’t hate him. To the extent that I compared him to O’Brien, as you may remember, even Winston Smith came to love O’Brien.

    Don’t hate you either, Max. Actually, I find your posts informative. Doesn’t mean I agree with all of them, but they make me think.

  63. 65

    “I politely point out every one of the voluminous errors in your OA, and then proceed to demonstrate just how silly your rejection is. Again, politely.”

    Such “demonstrations” by the “veteran” attorneys I know proceed along these lines: “C’mon, Examiner. If that’s obvious than everything is obvious. C’mon. C’mon. I mean, really. C’mon. Are you serious? C’mon. Please let’s be serious. C’mon now! Nobody taught this before. What are patents for? We’re not asking for much. C’mon. We’ve prosecuted this thing for years now and we’re getting nothing at the end of the day? C’mon. Seriously!!!!”

  64. 64

    So, we’ve got Max haters, Dudas haters, Doll haters, assertions that Doll “hates” Applicants, whatever next? And claims that are multiply “dependent” on multiply “dependent” are hated so much that they are banished from the jurisdiction. Dysfunctional, or what?

  65. 63

    “When he’s finally gone, some prosecution mill/boutique will hire him to some useless position so they can put out a press release that they’ve got a former PTO commissioner. Or he’ll go work for one of these “habitual filers” (as Malcolm calls them) such as MS or IBM and suckle at the very teat of those whom he used to d#mn.”

    I doubt it VA, everyone has that MF’s number. The sooner he is gone, the better.

  66. 62

    JAOI(TM),

    It changed when Mr. Doll became the commissioner. Mr. Doll, IMO, hates all patent applicants and all patent practitioners. IMO, he has no respect whatsoever for the law and actually believes that the law is whatever he decides it should be. I’ve seen him speak on several occassions and he makes no effort to hide his contempt for any of the three I mentioned. Read his comments during meetings of the Public Advisory Committee (or whatever it’s called, the one with the inventor of the Segway on it). I read the transcript on some website. I’m sure you can find it.

    When he’s finally gone, some prosecution mill/boutique will hire him to some useless position so they can put out a press release that they’ve got a former PTO commissioner. Or he’ll go work for one of these “habitual filers” (as Malcolm calls them) such as MS or IBM and suckle at the very teat of those whom he used to d#mn.

    He’s entitled to cash in. I guess. I wish he’d do it sooner rather than later.

    Irregardless (as 6k would say), it’s gonna take years to undo the damage he’s done. He has so deeply engrained the whole “Quality = Reject, Reject, Reject” mindset in the examining corps that it could be decades before the effects wear off. But we gotta start some time. Re-education camps for the examining corps would be a good beginning.

  67. 61

    MaxDrei wrote “Shame that claim drafters in USA are forbidden to use that standard claim-drafting structure, used everywhere else on planet Earth, namely, multiple-dependent claim itself dependent on a multiple-dependent claim.”

    I wish we could use multiple dependent claims at all without paying through the nose.

    Also, I wish the US were like every other patent system and we would just eliminate the prior art disclosure requirement. A lack of confidence in our examiners’ ability to conduct searches is built into the system.

  68. 60

    e#6k wrote “Though, to be quite honest with you, a solid techinical background is a huge curse, and but a little benefit in this job. I’m not kidding you. The more solid your background, then it’ll be just more you want to reject (and know you should) that you can’t find art for.”

    And the idea that you are simply engaging in hindsight reconstruction never enters your mind?

    “Hmm, I cannot point to any prior existence or suggestion in the art, but this is so easy to understand, it must be out there.”

    I actually think eliminating the strict TSM test was good, but posts like yours suggests there needs to be method to limit arbitrary, unsupported Examiner positions.

  69. 59

    Dear Veteran Attorney & Leopold Bloom,

    It didn’t use to be that way.
    The patent examination system use to work OK.
    When/why did it change?

  70. 58

    “I think I’ve already made a grave error by posting to 6k using my real name. I hope I never have a case that lands on his desk, as he knows who I am but not vice versa.”

    Alun,

    I’m not sure I understand your concern. Do you think 6k would actually treat your app any different just because he knows you post here? Based on his posts, do you think he could possibly give you a worse examination than if he’d never read any of your posts?

    Besides, he knows your app doesn’t have anything allowable. He doesn’t even have to read it. He knows there’s nothing patentable in your app before you’ve even written it. So what’s your worry?

  71. 57

    “… by the time the app gets to examination it’s been 2yrs …”

    I wish! In my area it’s more like 4. Add 6 or 8 “quality” rejections that are almost invariably withdrawn, plus a game of “chicken” where I file a Notice of Appeal and an appeal brief, and then the rejection is mysteriously withdrawn, and you’re talking about 6-10 years pending. No wonder everything looks obvious – It’s been in the market for 5-9 years, in some cases since before #6k graduated from high school!

  72. 56

    “Again, if you think you have a much better plan than they, convince them, they’re people.”

    They have received hundreds of recommendations for improving “the system.” They have not listened to any of them.

    “…unjaded by years of practice on either side, just pointing out the glaring faults of the system…”

    It’s amazing that you’ve figured out the glaring faults of the system after a year and a half as an examiner. Then again, you know exactly what goes on in the private practice of law and industry, despite zero years of experience in either, so maybe it’s no so amazing.

    Not mad at you, 6k. I think you’re hilarious. I’m sure Mr. Doll and Mr. Dudas are cheering you on from their offices high atop Mr. Lehman’s Taj Mahal. They’ve brainwashed, uh trained, you well.

    I’ve met you many times. You’re every junior examiner I’ve interviewed over the past 3-4 years. I come in smiling, shake your hand, exchange a few pleasantries and get down to the business at hand. I politely point out every one of the voluminous errors in your OA, and then proceed to demonstrate just how silly your rejection is. Again, politely. You give your primary/SPE that look of, “Gee boss, he’s right. This is a pretty stoopid combination. What do I do now?” Your primary/SPE gives that look of studied concentration and tells me to go ahead and file my arguments in writing. (Or he/she gives you that look of, “How could you make such a ridiculous rejection?” when it was he/she who signed it.) Which, of course, I do. I then get a final rejection with a bunch of boilerplate form paragraph responses to my arguments. I file a request for reconsideration, get a lame advisory action indicating my arguments aren’t persuasive. No other explanation. File a pre-appeal brief request. Get a notice of panel decision telling me to file my brief. Which, again, I do. Then you re-open. You finally get around to applying D1 from the corresponding European application, which I submitted to you two years ago and up until this point you’ve ignored in favor of two, or three, completely off-base U.S. patents. Of course, by the time you finally get around to D1, my European associate has already persuaded the EPO examiner to withdraw any rejections based on it.

    Like I said, I’ve met you many times. So have most of the practitioners posting on this site. You’re all the same. An entire army of Winston Smiths. Useless to anybody but your masters.

    “Strangely, things are new, but applying a basic concept to x y and z process is NOT NEW, it is at worst obvious and at best implicit to the skilled artisan in terms of rejectability.”

    And the Supremes think the Fed. Cir. is too concerned with protecting patent applicants from hindsight reasoning.

    Ah, the irony of it all.

  73. 55

    6k:

    “Bloom- You’re a funny man, and mischaracterize well, you must be an awesome attorney. Books were used, but very seldom in the classes for my art, why? Because one could not be found that kept up sufficiently fast, and my professor simply took to collecting the information himself and making slides (which he planned to start publishing yearly and maybe make a book from, which I really need to see if he did). Strangely, things are new, but applying a basic concept to x y and z process is NOT NEW, it is at worst obvious and at best implicit to the skilled artisan in terms of rejectability. Why can’t I find a written reference in many cases? My old professor spends days at conferences, thousands of hours reading journals, and picking out the big relevant breakthrough portions which are directly applicable across the spectrum of the art. Others then take these breakthrough portions and apply them to their products. Is it now patentable? Mmmmm, sometimes. But only when something new arises, and when it wasn’t an obvious application of that principle. So, lets be specific, why would I have a hard time finding a reference?”

    If your “reference” is not out for a year before the filing date (due to swearing behind and filing lag), then it’s not a reference or known in the art in the first place. Maybe that’s why you’re having trouble? Because you think something is known after reading an application, but can’t find a reference more than 3 years old (by the time the app gets to examination it’s been 2yrs plus the 1 for swearing behind a reference) because it has only been published and ACTUALLY known in the art for the last 2 years (after the filing of the application)? This is the problem with hindsight, and the source of much examination confusion caused by KSR.

  74. 54

    Examiner 6k,

    Why have you changed stances?

    You previously said that all of the new rules would improve your efficiency, but now their effect on you is merely “questionable”?

    Since you concede that you do not see their benefit to you, yet you know that they will cost applicants 10’s of thousands, can we just agree that they’re not the answer to any “problem” in PTO rules?

    And since you acknowledge that we will not make admissions against the interest of our clients in any search report, why not just acknowledge that they are expensive to applicants and useless to the Office as well?

    Your stance is just confusing me now.

  75. 53

    I think I’ve already made a grave error by posting to 6k using my real name. I hope I never have a case that lands on his desk, as he knows who I am but not vice versa.

    As I’ve already done that, I think I may as well say that I think his big problem is that he doesn’t understand the law. For example, he either doesn’t know or doesn’t care exactly why the PTO lacks the authority for this rules package.

    And I say this as a patent agent, i.e. arguably you could say I have no more legal education than he does. The difference, I suppose, is that I had to learn to pass the test, and continue to learn all the time. I’m not sure he’s even trying.

  76. 52

    Oh, and btw, MikeP, from what I understand, most of what we do here at the office is all about, and by that I mean completely, 100% all about, preventing lawyers from crying about the process, if they cry enough my spe will usually relent, I’ve seen this happen, and I’m informed by the primaries this is the way it works. Then again, that’s kind of how it should be, there’s a balance to be found and everyone knows it.

  77. 51

    T- I’ll get to that later, long post.

    People talking about me upset about rules going down- I am upset? Psshhh, they’re coming, just as Denise forsees, one way or another, the impact on me personally by them will be questionable, because now I might have to read an extra 20 pages of skirting the issue bs. But, we’ll see how it goes. Hopefully it works out for the better.

    VA- as always, still mad are we? And no I’m hardly in CompSci, I hate that crap, no seriously, I do. Though one of my buddies here is in it, and you’re right, she rarely sees anything new that she or her sorority sisters didn’t invent while engaging one another. And by that, I mean right smack dab in the middle of the festivities is when the invention occured.

    I kind of agree MikeP, but there’s problems with that on the other side and lawyers would probably cry more about that than about the search report.

    Good lord guys, I’m one person. Yeah, wonky, new to the system, unjaded by years of practice on either side, just pointing out the glaring faults of the system, and supporting those in power’s efforts to correct them. Again, if you think you have a much better plan than they, convince them, they’re people. But they’re the ones responsible to DO SOMETHING, and it needs to be done. Finally, we all know whatever solution is implemented has almost a 100% chance of having faults, we’re humans here.

    I’ve got a big day and lunch is over, I’ll tty tonight for the more detailed.

  78. 50

    Mark- probably the most important response, I’ll be thinking of a good one that doesn’t point directly to me or my art (which may as well be me). If I wanted to use my real name, I’d post under it.

    Slone- thanks for the detailed breakdown, but I for one will save my professionalism for the office thanks. In case you hadn’t noticed, nobody ever said this was a professional site, though many who use it prefer to behave that way everywhere. Atm, I don’t. You’re right, that’ll probably change down the road.

    Bloom- You’re a funny man, and mischaracterize well, you must be an awesome attorney. Books were used, but very seldom in the classes for my art, why? Because one could not be found that kept up sufficiently fast, and my professor simply took to collecting the information himself and making slides (which he planned to start publishing yearly and maybe make a book from, which I really need to see if he did). Strangely, things are new, but applying a basic concept to x y and z process is NOT NEW, it is at worst obvious and at best implicit to the skilled artisan in terms of rejectability. Why can’t I find a written reference in many cases? My old professor spends days at conferences, thousands of hours reading journals, and picking out the big relevant breakthrough portions which are directly applicable across the spectrum of the art. Others then take these breakthrough portions and apply them to their products. Is it now patentable? Mmmmm, sometimes. But only when something new arises, and when it wasn’t an obvious application of that principle. So, lets be specific, why would I have a hard time finding a reference? Actually I started writting the response but I’ll get to it later, just like a response to T.

  79. 49

    NO DECISION TODAY.

    As just reported on the PLI blog, the court did not render a decision from the bench and took the case under advisement for a decision as soon as possible.

  80. 48

    If you guys think it just started with Bush, then we have more issues than I thought. This stuff has been big from the beginning. Of course, that’s why Congress took steps such as requiring a technical background for USTPO officials. It’s too bad the judiciary selectively chose not to enforce that rule.

    As to the clarity argument about “technical training”, if a rule says that you need “legal training” for a job, and you want to argue whether attending an unaccredited law school qualifies, then yeah, we’re going to need some clarification. But that scenario doesn’t match the facts now does it? The current scenario is more like walking in and saying, “Well, I did attend high school,” which I think we can all agree doesn’t qualify as “legal training.”

    The point being that the political appointee problem has been going on for a ridiculously long time, and it’s affecting every agency, not just the PTO. Congress needs to institute guidelines for policital appointments and the judiciary needs to step up and eforce them where Congress has done so.

    Just think of the mismanagent in other agencies: TSA has more than one of the most common American names on the no fly list because of dead Irishmen, and FEMA (I’ll just leave it at that).

    And then there’s incompetence brought on by poor management: ICE, Homeland Security, TSA, CIA, etc.

  81. 47

    Dear iwasthere,

    Re you comment about “examiner#6k”:
    “His anger over the rules going down is another give away.”

    I mostly skip #6K’s posts so I don’t have anything in depth to say about him/her.
    Of course, anyone pro PTO rule changes isn’t worth dung.

    Re:
    “These Bush political types are trying to jam new rules in all over Washington, not just PTO, and they have no respect for the rule making process or achieving a sound national policy result. Just ad hoc hacks working for what they think is most likely to land them a job next year for payback. No leadership in the executive branch, just opportunists.”

    BINGO, you got that right, I couldn’t agree with you more.

  82. 46

    The answer is simple: give examiners more time, by making their work requirements a function of the work they do, INCLUDING the number of claims, the number of figures and the pages of specification.

    The second piece of this is to charge more aggressively according to the amount of work the Examiners will have to do. The fee schedule can be jiggered to encourage separate patents, each with a nominal set of claims, but would not mandate it.

    You get a better class of Examiner and the quality of examination skyrockets. And best of all, I don’t have to teach a new Examiner the technology, the patent rules, AND simple English all at the same time.

    Why does this seem like rocket science? Why do people go to such tortured lengths to solve a simple problem? The “disparate impact” it will have?

  83. 45

    You’re giving him too much credit. 6k is just one of the horde of new examiners at the PTO. He got his degree in computer science two years ago and in his year and a half at the PTO he hasn’t seen a single invention that isn’t “lame” or something that he, and/or his frat buddies, didn’t already invent during one of their circle jerks or while playing their PSP’s.

  84. 44

    Agree 6K sounds like the new prototype. But, on the whole he sounds more like one of the many political appointees foisted deep into the system. His knee jerk ‘trial lawyers is bad peoples’ sounds right out of the republican congress playbook (which they can’t help repeating). So he is probably a refugee from the hill who found himself a job at pto or commerce. His anger over the rules going down is another give away. These Bush political types are trying to jam new rules in all over Washington, not just PTO, and they have no respect for the rule making process or achieving a sound national policy result. Just ad hoc hacks working for what they think is most likely to land them a job next year for payback. No leadership in the executive branch, just opportunists.

  85. 43

    You’re all missing the point on 6k. He is the prototype of the new examiner. O’Brien (aka John Doll) has taken him into Room 101 and convinced him that 2+2=5 (aka Quality = Reject, Reject, Reject). 6k is much happier now. Independent thought was so scary.

  86. 42

    “Help me understand something, however. How can a fact be the “cornerstone” of a given technology and yet not be readily discoverable in a prior art search? Can you give an example?”

    Try to keep up, Mark. See, Examiner#6k went to one of those modern colleges, where they don’t use books. Technology moves so fast that those of us who rely on written material are hopelessly behind the times. Strangely, at the same time nothing is new. Examiner#6k can tell, usually before he even reads the claims, that an application is old hat. The fact that he can’t find a written reference isn’t his fault – the patent attorney is hiding it, or someone has failed to update dictionary.com.

    Sadly enough, I think that’s a pretty accurate paraphrasing of #6k’s previous posts.

  87. 41

    Make him qq Mr. Slonecker! I have a feeling #6k is a combination of pto people who are politically motivated (but it maybe a single wacky person).

  88. 40

    Shame that claim drafters in USA are forbidden to use that standard claim-drafting structure, used everywhere else on planet Earth, namely, multiple-dependent claim itself dependent on a multiple-dependent claim. I gather that such a claim is beyond understanding. Is that right? But it sure does compress claim numbers, quite dramatically.

  89. 39

    Michael S.

    Thanks for setting Examiner #6k straight that we can agree to disagree, but be careful about making it personal. I’m very careful now not to make my responses to an Office Action personal, but simply to address the issues/rejections/objections pointed out by the examiner. This lack civility and adversarialness is yet another unfortunate outgrowth of the mismanagement by the PTO hierarchy, and it’s hell bent desire to run its agenda down the collective throats of the patent bar, the patent applicants, and the examining corps. But the “silver lining” in all this controversy is that we, the patent bar and the examining corps, may have finally found we’ve got common ground, that many of us truly care about the integrity and value of the U.S. patent examination system. (Sorry if I’m now waxing too philosophically.)

    Also, Leopold B. was right to say I reacted too emotionally initially to Dennis’ post (Dennis, again my apologies to you for that, nothing personal intended, keep posting all this needed IP news we need to hear). My response to SA2117, while still having my passion, was much more with my head, instead of just my heart.

  90. 38

    examiner#6k –

    Have you read the proposed rules and considered their consequences? For example:

    Proposed 37 CFR 75 (b) would prevent amendments that would cause the application to exceed 5/25 if an ESD wasn’t filed before the First Office Action.

    So, if I file a nice reasonable application with 3/20, with each of the independents having 5 or 6 directly dependent claims, and you finally reject the independents but find all the dependent claims to be allowable…how does this get resolved? I can’t amend to place the dependent claims in independent form…that would be 17/0 and violate 5/25. How is that fair? Should I just give up 12 allowable claims?

    I have a much stronger motivation now to file a pre-appeal request for review, and then to appeal. Is that going to make things more efficient?

    What if I do file an ESD. Who is going to read it and determine whether or not it is adequate? Or do you intend to just reject them out of hand? How is the arguing about the adequacy of ESD going to make things more efficient?

    Why do you need an ESD? Aren’t you going to do your own search? If so, why isn’t your search adequate? Is it the PTO’s position that Examiner’s can’t find the relevant art on their own?

  91. 37

    I’m finding it interesting too. For me, D8nw1n1an evolution is a fact and a cornerstone, as it is too for quite a few USPTO Examiners and US patent attorneys. But I imagine it would be quite hard to prevail with that view, against somebody in USA who does not accept it as proven. I imagine that life as a USPTO Examiner is filled with exchanges in which the prosecuting attorney is adamant that X is “not proven”. I imagine that I too would find myself increasingly “jaundiced”.

  92. 36

    Examiner#6,

    Thank you for your response. I’m actually finding this exchange very interesting.

    Help me understand something, however. How can a fact be the “cornerstone” of a given technology and yet not be readily discoverable in a prior art search? Can you give an example?

  93. 35

    Mr. Slonecker,

    As a general rule I don’t like to pssoff Examiners even though I’ve run into some really incompetents over the years, but I just wanted to say I greatly admire your writing skill just above – I’ve never seen finer. Bravo.

  94. 34

    examiner#6k,

    Some persons who comments on the many topics presented at this site have developed reputations of being argumentative, acerbic, consistently critical of differing opinions, etc.

    Even on their worst days, however, they have seldom, if ever, crossed to line you appear to gleefully step across in a consistent and predictable manner in order to express invective and direct insulting comments to the entirety of the genus comprising practitioners representing clients in matters before the office. The clear inference from your many comments/posts reflects a deep seated conviction that practitioners as a collective whole care little about the “system” and are not to be trusted, deliberately withhold information material by any materiality standard to secure a favorable outcome for their clients, flood the office with irrelevant paperwork either out of malice or as a part of a deliberate attempt to obfuscate and hide issues, have only marginal familiarity with the technological area underlying an invention, etc., etc. ad nauseum. Your presumptuos disdain could not be more apparent.

    In all the years I have dealt with members of the examining corps I have never had the experience of dealing with an examiner having your self-described expertise and intellect. I have likewise never had the experience of dealing with an examiner exhibiting your jaundiced view of the rule of law. For the most part the examiners I have dealt with expressed their opinions in a civil manner, were open to likelihood that honest differences of opinion can and do exist, were willing to participate in telephone and/or office interviews to facilitate prosecution, and acted as men and women of honor and principle.

    Perhaps someday you will aspire to follow their lead, as well as learn that the expression of personal opinions carry far greater weight and the power of persuasion when they are presented with specificity and factual support, a lesson that appears you have not yet come to understand. Until then your posts emasculate whatever force may underlie your opinions and come across as no more than those of a truculent child having little regard for the institution and system within which you work and profess to support. I find it difficult to believe this is a reputation to which you aspire.

  95. 33

    That would depend, is it a cornerstone of that technology that even the lowliest of the low (people I’m barely more knowledgable than) in their field should know? In that case, the QR people are going to tell you, without smiling, that that would be a clear error. If it’s something that I saw in a grad class, or happened to be my senior project etc. etc. was about then maybe, maybe not, you’re then throwing yourself on the mercy of the QR people AND your boss(es) though you’ll probably pull through. If it’s something where I barely even have the faintest clue about, or have never heard of it, or have seen even hide nor hair of in my search, or completely goes against the grain of the art, then it’s at least not embarrasing to bring up allowance with the aforementioned people. Which, in the end, is a lot of what “proper” to allow is all about, rather than “I didn’t find it in my surch dur”. That, my good friend, will just get you a citation of enough subclasses to max your reference list on EAST out with (15k max I believe) to look through. Trust me when I say that really helps things. Hmmm, spend 2 more days looking at art and get one count? Sounds like a winning idea to me! Hell, what am I talking about? I shouldn’t make fun, I’ve done that.

    Though, to be quite honest with you, a solid techinical background is a huge curse, and but a little benefit in this job. I’m not kidding you. The more solid your background, then it’ll be just more you want to reject (and know you should) that you can’t find art for. I know several people that are that way. If you want to be successful, then being a good searcher, knowing where all the basics are written down, just plain brute force searching hard, and having the gift of gab come allow time will take you farther than being lex luthor evil genius knowledgable. On the other hand, even if you know it exists, and you make some art work, and it comes back convincingly argued, or amended around, then you do a little more searching and you still can’t find it, you can begin to understand that maybe, just maybe, you’re one of the precious few people in that art that were really aware of that specific thing. (you’d be kidding yourself of course usually but at least it’ll make you feel better and you can get on with life)

    Excuse me while I revise a final to go out before tomorrow. I’ll see you guys later.

  96. 32

    “sometimes I know beyond a shadow of a doubt a thing or process exists and for the fin life of me…I can’t find it period. I find the next best thing and ‘make it work’.”

    Suppose another examiner examined the same case, found the same prior art, but wasn’t otherwise aware, through personal knowledge or conviction, that the invention existed before. Would it have been proper for said examiner to allow the claims?

  97. 31

    In any event, you might be getting bogus art regularly, but that’s the extreme exception here in my office, so I can’t really speak much to it. Although, what I can speak to is that sometimes I know beyond a shadow of a doubt a thing or process exists and for the fin life of me it’s not classified where it should be, or I can’t find it period. Guess what happens then? I find the next best thing and “make it work”. The art is too big and word searches don’t always cut the mustard. And fyi, official noticing the ind., even on something as easy as the foundation of your art is taboo, big time taboo. Especially for juniors. So remember that the next time you get a crappy piece of art, it’s not because we necessarily think that that is a perfect representation of art that we know exists but that we can’t sit here all day and trump up that reference that your app has sitting in his bookcase entitled Your Art 101, volume 1, Niche 1.

    Spoon feed me some good art, see how far you get with that.

  98. 30

    Hahahahahaha, JTS you kid, you kid. Yes, we all know you submit the closest relevant art in those types of cases (which actually I do use in rejections quite often), but as you all know, those research papers are 3-7 pages long (your spec is 40), dealing with something one paragraph down in the general books about your subject, and they show completely different designs doing the exact same thing you’re doing. But, of course, THEY”RE COMPLETELY DIFFERENT DESIGNS, and you’ll jump on that like a happy attrny in a briar patch. So, we have to go and find something that not only IS what you made, but LOOKS like what you made, and then sometimes, functions like what you made and tells us about all the inherent properties of what you made. Thanks for that last part a real class act that one.

    Heck, many times I get apps where they’ve made the exact same thing as someone else, using a different process, when the process is the art equivalent of what the previous person used. Gee whiz captn, which art is better? The one that shows every limitation of his claim that I found and uses his process, or the one that looks just like his product and a 103 with using the different process to make something that looks totally different but is still that process? News for you, officially it’s the one that 102b’s the claim and looks nothing like what you made, and maybe doesn’t even do the same thing and is made by a different species of the same genus containing the species of process you used (but didn’t claim yet mind you, overclaimer anonymous). Unnofficially of course, if we could get through all this overclaiming bs at the get go, you’d get your nice little 103 with your relavant piece of prior art you submitted and the world will still go around. Till then, keep up the good work trumping up the very best overclaim limitations you can!

  99. 29

    Examiner#6k,

    I’ve prepared a lot of applications for research-type inventions… apps where the inventors are PhDs and have submitted corresponding papers to peer-reviewed publications. The inventors are often leaders in their field, which is usually small anyway. We file the closest, best-known prior art… stuff right out of the bibliography of the research papers. What happens at the PTO? Does the examiner ever rely on the disclosed prior art? No. They cite some bizzare and irrelevant US Patent, of course. You can spoon feed the PTO the best art, but they don’t use it, and it’s not just in research-type apps.

    I hope I’m wrong, but I’m pretty sure examiners don’t seriously consider submitted art, and I suspsect it’s because it’s so much easier to do an illusory examination by electronically searching U.S. patents for keywords in claims, which also lets the examiner quickly cite to paragraphs, line numbers, etc.

  100. 28

    SA2117,

    You’re wrong. Patent attorneys would actually have more work to do under the new rules. The new rules would be good for business. I represent real people, real investors, and I like to see they’re treated fairly. I think it’s unfair to change the rules in middle of the game. The rules aren’t just bad for the public for the havoc they’d create, they’re bad because they divert attention from the real problem: poor examiner retention and a truly warped count system, which the PTO stubbornly clings to.

    You seem to be a practicing attorney. Since you think the rules would benefit the public, why don’t you advise your clients to start voluntarily following the rules? Next time you or your client sees valuable unclaimed subject matter in a pending app, tell your client that, for the public good, they shouldn’t try to claim it in a Continuation … it would just gum up the PTO. Next time you have a really important invention in front of you that needs independent claims to cover methods, devices, and media for clients, servers, protocols, and APIs, tell them to only file 5 independent claims, for the public good. Next time you have 200 references that an opponent is citing in litigation of a related patent, tell your client they only need to disclose the 20 that are most relevant, so as not to overburden the examiner (or else pay $100,000 to file them in an IDS). I hope you represent my clients’ competitors…

  101. 27

    And the thing that distresses us EG is that it had to come to this in the first place. Stop the ways the system is abused, and it would all go away, but, instead of doing it voluntarily (the bar imposing restrictions on what gets submitted by attorneys, or just a common understanding amongst yourselves or whatever the hell you need to do, nobody gives a shlt) you’re making it be manditorily. And you happened to get some bad things tagged on to the end of the reform. That’s your bad, not the other side’s.

    I have to say that I agree about the damages part, but then again, it did need toning down a bit at least. Being able to hold up (or extort relevant parties involved in) the production of a computer system because you have the patent on the base transistor that is required to fit with all the other architecture is horse baloney, and don’t think that it wouldn’t be possible right now. Fortunately, examples that extreme don’t come along because there are other factors stopping it from happening. That doesn’t stop it from happening on the small scale though.

    And frankly, the presearch never would have been required if you’d simply all tell us what your inventor knew before he added his “contribution” and state what the contribution was. Simple as that, it wouldn’t even be hard to get a patent, or be rejected convincingly, on first action, if you’d just do that. Pendency would take a nose dive, litigation would be as it should be, and the world may very well turn into Utopia, dogs will lie down with kittens. But, lets be honest, nobody wants that amirite? They want more than their share, up to as much as they can have. Well, that’s fine. We all know what happens in those kinds of situations.

    You’ll excuse me I just got an election so I have a case to do.

  102. 26

    Yes, and in a total twist, also no.

    If you’re a regular you know my position is that SCOTUS basically said “obviousness requires judgment, so deal with it and here’s a few ways to deal with it…”. Though I admit, that might have been almost verbatim what I was trained under, but after reading everything here, and the case, it still seems pretty true to me.

  103. 25

    Leopold,

    Thanks for giving me some perspective here. Maybe I should partake of the “malted beverage or wine” I suggested for viewing tomorrow’s hearing. And I do plan to something this weekend other than the practice of patent law (doing this during the work week is enough.

    Unfortunately, the Director of the USPTO position is an appointment, and as you can probably tell, “politics” isn’t my strong suit. (And why would I want to take on a job that is conducive to ulcers, heart attacks or stroke!) What would certainly help the USPTO is the following (and which doesn’t require much, if any, Rule making or legislation): (1) let the USPTO use all of the funds from the user fees it receives to hire and retain the best qualified patent examiners; and (2) appoint a qualified Director and Deputy Director who will manage the USPTO competently and responsively to the users of the USPTO patent examination process. Not an easy or quick task to achieve, but certainly one that would have long lasting and beneficial effects.

    To SA 2117: I respect you right to express you views, even if I don’t agree with them. And if you think what I express is to preserve a “way of life [I] have become so accustomed to living” you’re very sadly mistaken.

    I’m a second generation patent attorney (my dad was also a patent examiner for 11 years) and I was taught early on to respect the rule of law, as well as the U.S. patent system as protecting the smaller inventors (the Davids of innovation) against the Goliaths of industry who usually view our patent system as simply a “necessary evil” that they could just as easily do without. Without a strong, efficient, and fair U.S. patent system to protect the Davids of innovation, the Goliaths of industry will simply pound them into to sod. And that wouldn’t bode well for the competitiveness of this country, a fact that is even recognized outside this country by at least one Chinese judge (Judge Cheng) who said the current so-called Patent Reform legislation (just calling it “reform” makes me nauseous as it reforms NOTHING that matters importantly to the U.S. patent examination systemw) will weaken our patent system so that foreign products will be even easier to import. That means further lose of American jobs. And if you don’t believe, go ask Judge Cheng

    What distresses and angers me most about what the PTO hierarchy is doing with these awful, god-forsaken Rules is that it isn’t for any “noble purpose,” much as they try to portray it that way, but simply for political reasons, namely that they feel that are being blamed (many say rightly so because of mismanagment for close to 14 years) for the “backlog” of ~750,000 patent applications that remains unexamined, and that the blame for that (so says that PTO hierarchy) is really due to the system is being “rampantly abused” by its users. Never mind that the facts don’t support that view (for that, see the Biotechnology Industry Organization (BIO) Report, “PROPOSED PATENT REFORM LEGISLATION: LIMITATIONS OF EMPIRICAL DATA USED TO INFORM THE PUBLIC POLICY DEBATE, which points out the failure to provide persuasive data for these alleged “abuse” problems and which may be found at: link to bio.org). Never mind that the PTO hierarchy “spins” the recent GAO report that says the PTO’s retention problem has to due with the production quotas PTO hierarchy imposes on its examiing corps which don’t address the quality of examination or how long it takes to examine certain patent applications.

    No, I’m not primarily concerned about preserving a “way of life [I] have become so accustomed to living” (I’m at a stage in life where I do what I do because I like to do it, not because I need to earn a paycheck for it). Instead, I’m greatly concerned (as I’ve told the 2 Senators from my state in asking them to oppose S. 1145) in not letting the last advantage this country has (its innovation) being sold down the river for political gain and lucre. And if you think that these Rules (as well as the so-called Patent Reform Legislation) are truly for anything other than primarily political gain, you’re extremely naive.

    And Leopold: with that I’ve spoken my piece, so let’s bring on the weekend!

  104. 24

    “If you can’t say wtf your invention is within 25 claims, you have problems with our language, or you have two or more inventions.”

    You might simply have two or more patentably indistinct inventions that don’t require the examiner to do anything more than cut and paste after reject the first few claims. The PTO doesn’t seem to care that patentably distinct claims do have a real purpose outside of the office. Instead they seem to want to pretend there’s some burden on the office because an examiner gets two or three counts while doing only the work required for a single OA.

  105. 23

    examiner#6k: “SCOTUS cleared up obviousness a bit”??

    I almost spat my coffee out at that. Was it intended to be funny?

  106. 22

    Pitchford, I’d say he’s read quite a few, but he obviously has a brain, instead of thinking the sky is falling. (like many though when SCOTUS cleared up obviousness a bit) When even I’ve read quite a few and couldn’t really care less how much it “costs” to read references and jot some notes about (in return for a monopoly over the american people) I’m pretty sure all attrnys have.

    MM, come on man, I don’t know what area you practice in, but the 5/25 is to provide another barrier from people from sending us on huge wild goose chases every application they feel like spending an extra grand of their corps money on, literally, for giggles. If you can’t say wtf your invention is within 25 claims, you have problems with our language, or you have two or more inventions. I’m not the most exped person, but it’s fair to say I’ve read 10’s of thousands of claims if not more, and I’ve looked over hundreds of thousands of references, and I’m yet to see one that couldn’t be adequately protected by 25 claims, much less 75 which is the real hard limit by the new rules. There may be the Occasional, and I mean OCCASIONAL exception to this, but it would be just that. And tbh, japan’s system of one claim works out just fine. They chop your hands off if you submit more than one claim, true story.

  107. 21

    I don’t know, but I like him already. My guess is a young attorney, he speaks with that trained tone, and also he says “we attorneys”. He’s obviously not old enough to be stuck in his old ways yet though, so he must be young. We should call him:

    YA

  108. 20

    “So now you can’t write your response to say “gee, reference 2 does not have a suggestion to combine with reference 2 so I get my patent; and then the PTO issues the patent.” Those days are over where the PTO is in the business of collecting money to rubber stamp patent applications as patents following the requisite 1st office action and collection of sufficient fees. This is a good thing in my opinion.”

    Um, yeah, but what does this have to do with those jackked up rules?

  109. 19

    There is no quid pro quo for continuation applications. The quid pro quo is for the original application (giving up trade secret protection for a monopoly covering the original application). Continuation applications, however, result in the applicant giving up nothing and receiving an additional monopoly.

  110. 18

    SA2117

    You have not read one substantive review of the implications of these rules or the pending “patent reform” legislation, have you?

    That’s rhetorical. Your answer was already clear.

  111. 16

    EG and other who share his so-called passion:

    You are simply fearful of losing the way of life you have become so accustomed to living. The patent system has been abused for way too long by small companies and large companies alike. The system has been gamed way too long by attorneys, both prosecutors and their henchmen the litigators. I’m not saying I completely agree with all the rules or even with the way they were implemented. But it seems to me that they’re just rules, changed as they may be, and they seem to have the effect of making it a bit more difficult to get patent protection and much more difficult to game the system. The law is changing as well in order to make sure that obvious stuff does not get through the patent system and to make it more difficult to game the system. So now you can’t write your response to say “gee, reference 2 does not have a suggestion to combine with reference 2 so I get my patent; and then the PTO issues the patent.” Those days are over where the PTO is in the business of collecting money to rubber stamp patent applications as patents following the requisite 1st office action and collection of sufficient fees. This is a good thing in my opinion. The patent office is in the business of representing the public. We patent attorneys are not PTO “customers,” rather the public is the PTO’s client, a client that has not been well served in the past with the complicit aid of the Federal Circuit. The pendulum is swinging the other way, hopefully it will not swing too far. Enablement is another example where we’re seeing a change for the better.

    Peace, Love and Cheers:)

  112. 14

    On thinking it over, if all else fails, maybe I could write stuff for Mr. Monk(TM) and carry around his wipes as he figures out one of his investigations.

    I wonder wonder wonder (who wrote the book of Mr. Monk(TM)) if I’m funny enough?

    Be cautious, maybe you don’t want to encourage me too much (or does that imply I want you to encourage me?; I wonder?).

  113. 13

    EG: The USPTO will go back to the drawing board and probably abandon continuation limits. But you can bet they will use what they’ve learned from this litigation to prepare IDS rules and ESD rules that address the objections now raised by GSK, et al. The real question is whether they’ll get religion and actually comply with the rule making standards the second time around. If they do, you can count on some form of IDS and ESD rules successfully coming into effect — regardless of whether the patent reform act is passed.

  114. 12

    BREAKING NEWS:

    I just heard from Mr. Monk(TM). He has a suspect:

    Dudass (did I spell that OK?) and his henchmen are among the serial patent killers.

    Stay tuned

  115. 11

    EG, with that kind of passion, you have my vote for the next Commissioner. Oh, wait, I don’t get a vote…

    Hopefully the Judge sees things as clearly as you do. But, please consider taking the weekend off… :-)

  116. 10

    Leopold (and to you too Dennis),

    Sorry, I did react too emotionally to this post. But that’s because I feel there’s also more at stake here tomorrow than just the patent system, which I do value very highly and am very concerned about given the current so-called Patent Law Reform Legislation that is about to go up for a vote in the Senate this month, and which could potentially completely undo any ruling that Cacheris hands down tomorrow. (And, yes, I’ve already written my two state Senators urging them strongly to vote against S. 1145 in its current form.)

    What I’m very concerned about is this: will our government (and its agencies like the PTO) be forced to “toe the line” to obey the law and procedures put in place, like the APA, RFA and OMB procedures? What I see here, as do others, in these PTO Rules is a gross abuse of the process for enacting agency Rules that are inconsistent with statutes, as well as case law. But for the efforts of Tafas and then GSK here to hold the PTO’s “feet to the fire”, these awful Rules (and do mean awful) could have been enacted. And don’t forget that there are yet more Rules (e.g., the new IDS Rules) that the PTO is all too willing to dump on us (and our clients) which could have even more adverse impact.

  117. 8

    It will be rock and roll tomorrow, that’s for sure. I for one plan to attend – wouldn’t miss this one for the world. If it’s anything like the PI hearing, it will be most interesting.

  118. 7

    “…what your post suggests is that Cacheris is not only completely blind … but that Cacheris completely suffers “amnesia” and forgets why he granted a preliminary injunction against these Rules in the first place.”

    Gee whiz, EG, lighten up. The post suggests nothing of the sort. In fact, YOUR post suggests that if the outcome is anything less than total annihilation of the PTO then Judge Cacheris is a blind amnesiac, etc. Are you sure you want to go on the record with that?

    You might be a bit too emotionally involved in this thing – when’s the last time you took a vacation day?

  119. 6

    “…what your post suggests is that Cacheris is not only completely blind … but that Cacheris completely suffers “amnesia” and forgets why he granted a preliminary injunction against these Rules in the first place.”

    Gee whiz, EG, lighten up. The post suggests nothing of the sort. In fact, YOUR post suggests that if the outcome is anything less than total annihilation of the PTO then Judge Cacheris is a blind amnesiac, etc. Are you sure you want to go on the record with that?

    You might be a bit too emotionally involved in this thing – when’s the last time you took a vacation day?

  120. 5

    EG — I agree with much of your post. Although, I don’t think that the fact that the PTO has lobbied for explicit congressional authority has much weight. I’ll also agree with you that the administrative law procedures are quite weak.

  121. 4

    Dennis,

    In my opinion and with due respect, your post greatly underestimates the plaintiff’s (GSK and Tafas) ability to prevail against the PTO on what the Rules mean substantively and how those Rules were created by flouting and violating the APA, RFA and OMB procedures. In fact, what your post suggests is that Cacheris is not only completely blind as to how the PTO has grossly and improperly manipulated and flouted the APA, RFA and OMB procedures in creating Rules that are clearly inconsistent with the patent statutes, case law and even the PTO’s own prior statements as to what its authority is, but that Cacheris completely suffers “amnesia” and forgets why he granted a preliminary injunction against these Rules in the first place. For example, and as the GSK reply correctly points out again, the PTO has yet to answer the question as to how it has the authority it alleges it has when Congress has recently tried (and failed) to statutorily grant that authority. If Cacheris completely reneges on what he said and held in his preliminary injunction memorandum, then I’ll flatly tell you and anyone else that the APA, RFA and OMB procedures are simply meaningless words that have no force as law.

  122. 2

    “Even if the rule challengers win, the PTO would still be able to implement portions of the new rule that limit the number of claims in newly filed applications.”

    Unless there is another section in Title 35 that is stated to take precedence over 35 USC 41(a)(1)(B), I have a difficult, it not impossible, time understanding how the USPTO can lawfully impose a claim limit on applications in the absence of an amendment to Title 35. True, an absolute “claim limit” is not being imposed, but then again an ESD requirement for applications exceeding the limit cannot in any reasonable manner be inferred. The only obligation imposed by law is a monetary scale for more than a defined number of independent claims, total claims, and the presence in an application of a multiple dependent claim.

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