Tafas v. Dudas: Summary Judgment Hearing February 8, 2008

Jill M. BrowningPatent attorney Jill Browning attended today’s Tafas v. Dudas hearing on behalf of Patently-O and provides the following report.
Judge Cacheris entertained arguments relating to the three pending summary judgment motions in the consolidated cases of Tafas and GSK vs. Dudas, taking the matters under advisement and indicating that the Court would present a final decision as soon as his docket permitted. A brief summary of the almost 2 hours of argument follows.

Substantive vs. Procedural: The Court actively directed the parties with questions throughout the argument, beginning with questions directed to why the proposed rule changes were “substantive” and following up with a question regarding the proposed remedy if the Court were to determine that the proposed rules were substantive.

GSK responded by indicating that the proposed rules were substantive because they (i) affect individual applicants’ rights and/or obligations (i.e., limit the number of continuations and claims); (ii) reflect a change in existing law and/or policy and (iii) interpret the patent statute.

In response, the USPTO argued that the debate between identifying the rules as either “substantive” or “procedural” was the plaintiffs’ attempt to distract the Court from the real issue, which, according to the USPTO, is whether Congress delegated the proper authority to the USPTO to enact the proposed rules.

The PTO’s authority arises from 35 U.S.C. § 2(b)(2). The arguments primarily focusing on subsections (A) and (B), which state, in relevant part, that the USPTO:

  • (2) may establish regulations, not inconsistent with law, which-
  • (A) shall govern the conduct of proceedings in the Office;
  • (B) shall be made in accordance with section 553 of title 5;

Plaintiffs read the above statute as requiring the USPTO to comply with both (A) and (B), which would mean that the USPTO may only enact rules that (i) are not inconsistent with law; (ii) govern the procedures to handle the applications at the USPTO; and (iii) that are enacted only after the USPTO engages in the notice and comment rulemaking procedures of the Administrative Procedures Act (“APA”). Thus, plaintiffs indicated that the USPTO would not properly be permitted to enact even procedural rules without engaging in the notice/comment procedures of the APA.

The USPTO advanced the position that a fair reading of 35 U.S.C. § 2 clearly supports its position that Congress delegated the authority to the USPTO to enact the proposed rules.

PatentLawPic199Further, the USPTO argued that the proposed rules are not “substantive” because they are not directed to the substantive eligibility requirements (such as novelty or written description) for an applicant to obtain a patent. According to the PTO, the proposed rules merely affect the “timing,” as they encourage applicants to claim their invention early.

To support this position, the USPTO analogized to powers granted to other agencies to impose timing restrictions, pointing out that agencies’ ability to completely cut-off third parties benefits applications have been upheld. In response, Plaintiffs pointed out that the USPTO, as an agency, is different from other agencies because the USPTO was not awarding “benefits” as other agencies such as, for example, the FCC when it grants the right to certain bandwidths. Here, the patents applicants have the “benefit” and are electing to confer that benefit to the public in return for the limited right to exclude others for the term of the patent.

Remedy – Void Rules: With respect to the proposed remedy, GSK and Tafas argued that, should the Court find that the rules proposed are “substantive” in nature, as opposed to only affecting the procedural aspects of examining patent applications, then the rules should be struck as void and not remanded to the patent office. The USPTO indicated that, should the rules be found to be “substantive,” then they should be accorded less deference.

Plaintiffs argued that the proposed rules retroactively impact applications already on file, abrogating the quid pro quo the applicants believed it had when it filed the application (i.e., disclosing its trade secrets to the public in return for the limited monopoly). When an applicant filed its application, it was permitted to file an unlimited number of continuations, RCE’s and claims (subject to extreme cases wherein the Federal Circuit has permitted the USPTO to refuse further applications).

PatentLawPic201Property Interest in Patent Application: The USPTO argued that the “quid pro quo” is a fallacy because an application is not a property right (only patents are property rights) and, moreover, there are no property rights in “procedures.” Further, the USPTO argued that the applicant is the party who elects to disclose the trade secret – the USPTO is willing to maintain the confidentiality of all applications filed. Further, the USPTO appeared to concede that substantive rules cannot be applied retroactively, but compared the proposed rules to newly enacted Federal Rules of Civil Procedure, indicating that newly enacted Federal Rules were routinely applied to pending cases, as these proposed rules should be applied to pending applications. The USPTO indicated that, should the Court find the rules have an improper retroactive impact, the Court should simply change the effective date of the Rules.

Mr. Walsh of the USPTO presented arguments relating to Sections 120 and 132. Echoing the concerns already articulated by his co-counsel, Mr. Walsh further indicated that the USPTO had experienced a significant increase in applications, particularly continuation applications. The proposed rules were a reasonable restriction on the growing numbers of applications and provide ample opportunity (at least 8) for the applicant to present its position to the Examiner, after which, they should appeal to the Board. Further, if the applicant believes that it requires additional applications, the applicant can petition for permission to file an additional application, he must only indicate why they need additional bites at the apple.

He further indicated that delay in presenting claims has never been favored and that Section 120 does not compel the USPTO to accept an unlimited number of continuation applications. With respect to Section 132, the USPTO’s proposed new rule 114 limits application families to a single RCE. The USPTO argued this limit is justified (and more stringent requirements could be imposed) because the wording of § 132 is that the applicant can “request” the continued application, indicating discretion on the USPTO’s part regarding whether or not to grant the request. The USPTO further argued that, should the petition to file additional RCE’s be denied, the applicant has the remedy of judicial review.

In response, plaintiffs pointed out that an increase in patent application filings or other administrative burdens cannot grant the USPTO the authority to enact rules.

Notes:

  • Arguing Attorneys included John Desmerais of K&E for GSK; Lauren Wetzler and Steve Walsh for the Administration; Jim Nealon of Kelley Drye for Tafas.
  • Insider prediction (not DDC): Court may rule that rules are substantive and that PTO lacks substantive rulemaking authority. This allows the court to give a clean ruling without worrying potentially more difficult secondary issues.
Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

88 thoughts on “Tafas v. Dudas: Summary Judgment Hearing February 8, 2008

  1. If the PTO must comply with subsections (A) and (B) of 35 U.S.C. § 2(b)(2) then it must also comply with (C)-(F). Thus, any regulation must (i) not be inconsistent with law, (ii) govern the conduct of proceedings in the Office, (iii) be in accordance with § 553 AND, at the least, (iv) “provide for the development of a performance-based process…”

    Is this really the argument the plaintiffs want to make?

  2. Not sure I understand the procedural versus substantive distinction argument. Is the USPTO not allows to promulgate these types of rules?

  3. Pretty close but I would add:

    to 1. that not only the ability, but the WANT (this is rather crucial) to measure the chemical composition of the Se is present to POSITA, and is likely one of the, if not the first test he would perform after “he” created the original Se method. As in, the next day, or more probably, during his invention of it. Maybe the next week at the latest. Using the same equipment he had from the S.

    and 6. They know the levels of Se+ and Se- matter, it is the normal composition of the active ingredient after all and are assumed by one of ordinary skill to exist in all similar compounds, but they also know that their previous disclosure was sufficient to POSITA wanting to duplicate their invention 20 years hence, or even in the interem and might not even bother telling licensees, and that variations thereon would involve but routine lab experimentation.

    7. No extraordinary results are shown by the new applicant, as in their Se+ and Se- specific compound is not disclosed as being special compared to the Se previously known (but strangely ommited by the applicant). So there isn’t even a secondary consideration.

    The rl equiv of this also has some steps tacked on (of course in seperate inds. right?) to the end to control the composition and thickness of the rubber after it’s made, Reference #10 teaches a method of using those steps to control the composition and thickness of Se made rubber. Though this doesn’t really impact the question of Se+ and Se- because that method would probably work on all Se made rubber anyway.

  4. #6 Great example. Thank you for taking the time to write it up. Let me see if I can restate what you said to make sure I have it. Feel free to let me know if I’ve missing an important point or read anything into it that wasn’t there.

    There are references in the art that teach:

    1. That sulfur is known to catalyze vulcanization.
    2. That the sulfur used in vulcanization normally contains small amounts of S+ and S-.
    3. That said small amounts are measurable by optical means.
    4. That a patent has been issued which discloses and claims the use of Se to catalyze vulcanization. The specification of said patent discloses experimental results but does not disclose what the Se+ or Se- levels in the Se used was.

    An Applicant files an application four years after the effective date of reference #4 disclosing and claiming a method of vulcanization comprising using a group VI element (e.g. Se) with small amounts of Se+ and Se-. A dependent claim has the limitation that the concentrations of Se+ or Se- are measured by optical means.

    You believe, based on your experience in this area, that it is likely that the earlier inventors of reference #4 measured the levels of Se+ or Se- in the experiments they ran and these same inventors appreciated the fact that the actual levels of Se+ and Se- impacted the effectiveness of the process, but that said inventors did not disclose the actual levels in their earlier application or their belief that the actual levels mattered because:
    1. the ability to measure Se+ and Se- levels using optical means would have been obvious to POSITA given that levels of S+ and S- are measured by optical means and that S and Se have similar chemical properties, hence it was not worth mentioning;
    2. the existence of some small amount of Se+ and Se- in the actual Se they used would have been obvious to a POSITA. Hence again it was not worth mentioning;
    3. disclosing the actual levels of Se+ and Se- in their publication would have facilitated someone infringing their claimed process (i.e. vulcanizing using Se irrespective of the levels of Se+ and Se) since they had reason to believe that the actual levels mattered;
    4. they believed that the actual levels of Se+ and Se- would not have been patentable as a separate invention;
    5. they planned on disclosing the effective levels of Se+ and Se- to their licensees anyway;

    Do I have it right so far?

  5. Lowly, what is fair/unfair depends onwhether you are holding the gun or looking down its barrel. My job is to opine whether the competitor’s A publication will turn into an issued claim that is valid and infringed. My client is grateful for advice solid enough for his investment decisions. The degree of confidence I have is directly proportional to the tightness of the amendment regime in Europe. And don’t run away with the idea that it’s somehow easier to amend in UK. Have you ever studied the English court decisions, starting with the Bonzel rapid exchange stent delivery catheter case,revoking patents because a prosecution amendment introduced what we call “new matter” (don’t confuse the European novelty test for new matter with your test for new matter). And Bierbelly, have you ever had the conduct of a case in which the holder of a European patent seeks interlocutory injunctive relief? I thought not. BTW I like your image of a bull to signify Europe. It’s an extremely old image of course, but nice all the same.

  6. “From Europe, I would second the idea expressed above (Darling Feb 11, 3pm), of checking out the EPO sister app on http://www.epoline.org. Interestingly, the EPO is now turning out top quality first exam reports (they call them EESR’s) within a few months of the filing of the app. That’s quite a transformation from the decades (up to quite recently) when the EPO couldn’t get its exam reports out until years after filing. Readers will also be aware that the EPO offers fast track exam,called PACE, that really works, with no requirement for fee or for a reason. Now I wonder why PACE is requested in less than 5% of cases. Maybe because Applicants like the combination of i) A publication of the app as filed, to intimidate and ii) slow progress to crystallisation of the claims, so that the long-running legal uncertainty leaves the competitors too timid to go to design freeze, yet Applicant free to capture any competitor that is brave enough to go to market.”

    Yeah, too bad that patent protection in EP isn’t worth teats on a bull.

  7. Yes Mark that’s what I’m saying, or at least he wants it to not be detailed. Apparently, as described to me, we want you to have to say what your position is for the record, not us be describing it to you. Also, if I just never explianed myself I might have more RCE’s… then again, I might just have more appeals, but either way I wouldn’t have spent a lot of time explaining myself. Even so, your amendments are usually rejected as set forth in the rejection portion, not the response, though I’m all the time talking about it in the response part in some desperate hope that the app isn’t too dumb to realize what he needs to do, or that his position is hopeless. So far I haven’t been able to get across “You’re fed” in such a way that it would probably get past my primary. So, I just do what I can.

    And Irene, if your invention is a battleship then a torpedo or two just add character right? If your invention is a PT ship then it’s another matter though isn’t it? Have you considered what types of cases you’re taking on? If someone brought you “A method of exercising a cat with a laser pointer” would you accept it? Do you have the fortitude/wherewithal to set your foot down? These are all good questions, but remember there are many in your profession who would answer a bit differently than you and that the sins of the many often punish the good as well. T v D is just the latest embodiment. And perusing your reasons for more actions again I find nothing that wouldn’t be solved by a simple call to the spe/director if blatantly true.

    I’ve gtg, tt you guys probably next week, doing something on the weekend I hope if I hurry myself. I’ll be back for JD before I go though.

  8. Max,

    I could understand the point if these were translated applications. However, when the applications were originally filed in english, and are being examined by english speaking epo examiners, it is vexatious and, quite frankly, unfair to my clients.

  9. Don’t see how. What effect are you imagining Mark? The translations never were definitive. Scope of protection is defined by the claims, in the language of the EPO proceedings. Even if everybody implements London, nothing changes legally, only the cost at grant comes down.

  10. Hold on,

    Examiner6k, are you saying that your primary is telling you not to tell us WHY you’re rejecting our amendments and arguments.

    I see a big problem with reducing backlog right there.

    I know that in half of the interviews we do, my supervising partner and I look at each other and just say, “why didn’t he just say that in the amendment?”

    If the examiners would just tell us what they’re thinking, it would be alot easier to amend the application in a way that pleases them instead of just guessing at what their problem is with it.

  11. Won’t the London Agreement fix most of the translation issues, and maybe reduce the effect of the “exact word” problem with EPO practice?

  12. Lowly, you might find EPO practice on amendment to be vexatious but there are solid local reasons for it. Europe is multi-lingual, and translation is never one-to-one (so the content counts, not the precise choice of English words). English is a foreign language (imagine you are an Examiner at the Japanese Patent Office and some Applicant wants to re-write the spec. Is he adding matter? How do you decide. Same problem on mainland Europe, with English). We have First to File (so, to be fair to the other applicants, Applicants MUST be held to that which they disclosed on their filing date). We have the Protocol to Art 69 EPC (so scope of protection is not given by the strict wording of the claim). Rarely will the claim that is optimal for USA be optimal for Europe. Alright?

  13. examiner#6k,

    Whoa! chill! have a cup of tea and take a deep breath!
    Yeah, in the instance I mentioned, we got a very thorough, thoughtful action showing that the invention wasn’t patentable after all, and that’s that. It’s dead. I have better things to do with my limited time than beat a dead application, like write up new ones. Obviously, there are applicants that won’t take no for an answer, especially if there is a lot of money anticipated in potential business, but the behavior isn’t universal.
    As for “poop,” my point was that there are an unfortunate number of times that the process is torpedoed by “poop” generated by incompetent examinations.

  14. From Europe, I would second the idea expressed above (Darling Feb 11, 3pm), of checking out the EPO sister app on http://www.epoline.org. Interestingly, the EPO is now turning out top quality first exam reports (they call them EESR’s) within a few months of the filing of the app. That’s quite a transformation from the decades (up to quite recently) when the EPO couldn’t get its exam reports out until years after filing. Readers will also be aware that the EPO offers fast track exam,called PACE, that really works, with no requirement for fee or for a reason. Now I wonder why PACE is requested in less than 5% of cases. Maybe because Applicants like the combination of i) A publication of the app as filed, to intimidate and ii) slow progress to crystallisation of the claims, so that the long-running legal uncertainty leaves the competitors too timid to go to design freeze, yet Applicant free to capture any competitor that is brave enough to go to market.

  15. John,

    While I agree with you on the superiority of the EPO’s searches (and am equally appalled that 6k admits his colleagues don’t even know the address of the wipo site), the EPO examiners have their own quirks at least as annoying as those of us examiners.

    At least US examiners let you make amendments. When i say that, I refer to the fact that the EPO examiners will often object to amendments unless those exact words are contained in the spec. It doesn’t matter if one of even the most minimal skill in the art would understand that the spec discloses a feature of an amendment; if the exact word isn’t there, the EPO examiners will often reject you and not accept your arguments as to why the amendment is supported. It seems they want one of no skill in the art to be able to understand that a claim is fully supported by the spec. This can be quite vexatious.

  16. Good Irene, that’s really good that you accepted a final. That explains why I have so many RCE’s coming in! But please, tell us a little further what you plan to do now that your original “invention” is shot all to hell? Just like the 35 or so finals I have sitting on my docket, yours will probably fall in the 90% catagory that don’t give up, they’re the little engine that could, lacking the heart of the invention, lets move on to the specific implementation one line limitaions at a time, nobody on your side cares one little whit about if it was merely the work of a skilled tradesman. I would address the rest of your diversions, but in brief: you put poop in the system, you’re going to get poop out of the system and yeah, I used to detail my “not responsives” but my primary is getting on me for going even over a page with them and I understand why he doesn’t want me to. It’ll give you, the one of us trained in arguing (even though I love it too), the upper hand, and little ol me, I don’t have 30 years of arguing experience to benefit the people of this country even if your position is wrong, right?
    I’ll get to you JD, spamfilter’s a bch for me today.

  17. “If it were so obvious, why was it not done before?”.

    That quote has nothing to do with American jurisprudence, but is something said by Lord Diplock, possibly in Catnic, and possibly one of the most brilliant things ever said by a judge in a patent case. Nonetheless, even though of no precedential value here, it’s still a valid question in itself. I think merely asking that question points out why “obvious to try” shouldn’t be a valid reason to find obviousness or lack of inventive step, as the case may be.

    Still, post KSR we are stuck with “obvious to try” in the US. At the same time, KSR still cautions against hindsight, and yet hindsight is the very thing that suggests that any random combination would have been “obvious to try” at the time of the invention. This is one of the many things that tells me that KSR is a decision of the vague and woolly kind. It is not even consistent with itself.

    If we must find new arguments post KSR, we could do worse than to ask the above question.

    Ummm … what does any of this have to do with Tafas v Dudas?

  18. step back,

    Love your posts.

    Yes, I am aware that (some of) the definition(s) of substantial evidence includes the word “scintilla.”

    So my understanding of the rule is quite good. Thanks.

    And I never said it requires “detailed” evidence. I said it requires some evidence, i.e. at least a scintilla.

    However, I’d like to see that scintilla first before I start declaring certain patents to be “bad patents.”

    JD

  19. Examiner #6k wrote:
    “if you’re claiming things well the first time, then why would you possibly need more than a time or two to come back (if even that?!?!?!)”

    How about this for a few reasons – an examiner who:
    1. doesn’t understand high-school level chemistry, let alone the technology in the patent application
    2. doesn’t understand patent law
    3. submits garbled actions (like citing one reference, beginning an argument, and then pasting in several pages of text from another, uncited, reference and continuing the argument based on that)
    4. refuses to accept well-reasoned, documented, supported arguments, without explaining why (just writes “not persuasive”)
    and/or…
    (people with more experience than I have can fill in the blank)

    Frankly, I just want consistently competent, timely examination, not dependent on luck-of-the-draw. And, yes, when competent examination results in a legitimate final rejection, I accept that. In fact, I just have in the last week or so.

  20. Two insightful posts upstairs:

    One by JTS here:
    link to patentlyo.com

    One by John Darling here:
    link to patentlyo.com

    When juxtaposed with each other, they show the spot where we get into problems.

    As JTS tries to say, there are options that seem “obvious to try”, but why bother because what we got now is good enough and therefore nobody does actually try out the supposedly “obvious to try” option. When his scientist friend does actually bother to try it out, he recognizes unexpected results which then provide motivation for actually trying & using the never-tried-seemingly-obvious variation. In short, the inventor recognizes unexpected benefits from that path and but-for the work of the inventor, no one actually tried the supposedly obvious-to-try option.

    Later, it is all too easy for the examiner (and others) to poo poo the work as being nothing more than another obvious-to-try variation.

    With this in mind, we should revisit JDarling’s understanding of the substantial evidence rule. That rule does NOT force the examiner to come up with detailed “evidence”. Quite to the contrary. It allows the examiner to come up with the most minimalist of evidence necessary to support his position even though reasoned minds might debate the sufficiency of the evidence. The “substantial evidence rule” gives the benefit of doubt (a.k.a. deference) to the examiner’s position.

    This is why I harp over and again about the need for patent prosecutors to put “evidence” into the appeals record. Without evidence to support your position, you automatically lose unless the examiner has zero evidence. But examiners are rarely that bad. They usually do have the minimalist evidence on record to support their position. That’s all they need: prima facie evidence. Nothing more. Once they reach that low threshold, the burden of proof-by-evidence shifts to the applicant.

    Yes, it’s a rotten deal. But that is what the Dickinson v. Zurko case resulted in: deference goes to the agency finding of facts. KSR makes the situation doubly bad because obvious-to-try has been made into a valid basis for unpatentability.

    KSR has erased 50 years of obviousness/ nonobviousness law. We must begin afresh with new ideas, new arguments.

  21. 6k,

    Here’s a practice tip for you. Find out if the application you’re examining has an EP equivalent. If so, go to epoline.org and take a look at its prosecution history.

    From that prosecution history you will see the search results of an examiner who 1) actually knows how to search and cite art that is actually relevant, and 2) actually understands obviousness (inventive step, whatever you want to call it).

    “…containing A LOT of citations to very relevant prior art. Hell, he points specifically to why he knows what he knows and provides wonderful information as to why it will be inherent in his invention.”

    No offense, but based on your complete lack of understanding of the requirement for substantial evidence, and complete lack of understanding of what actually constitutes substantial evidence (hint: your vague recollections of your roommate’s junior year science project are NOT substantial evidence), I have very little faith that your understanding of the legal concept of inherency is all that it should be. Though I’m quite sure you will forge ahead with rejections based on inherency nonetheless.

    As has also been explained to you many times on this site, there is no requirement to disclose information in the EPO, JPO, etc. Only the U.S. has such a requirement. Presumably this is because the EPO, JPO, etc. examiners are competent searchers. Your explanation that most U.S. examiners don’t even know where the WIPO site is is a rather d#mning indictment, by you, of the competency of your colleagues. Shall we skip the convictions and proceed straight to sentencing?

    Congrats on finding the WIPO website. You may move to the head of the class.

    If you’d like some help searching any other websites, e.g. JPO, Australia, CIPO, etc., please feel free to call my assistant. She’ll be glad to help you. (That’s a joke of course. Please don’t call, my assistant is way too busy burying boxes of documents to take your call.)

  22. Wow, examiner#6K – put the steel balls away and get a grip. Read JD’s and JTS’s comments, and then calm down. It will be okay. And please don’t get me started on the crap references some Examiner’s have used to reject my claims – talk about non-analogous art – I’m simply flabbergasted at times – and that is from the examiners who speak the king’s English (no offense, but there really should be a requirement that English be a first language for the Examiner’s, regardless of how intelligent they are – language is HUGE when trying to understand and interpret claims and the prior art, in my opinion).

  23. I’ll get back to your very detailed post shortly jd, but here’s an updated of the RL equivalent case to the one above presented. I searched the prior art under the inventors name, found an application that was filed as the national of a WIPO case, after finally searching back through everything I find out that the WIPO case published more than a year before this one was filed (many examiners don’t know where the f the WIPO site even is). Good times, this WIPO case broadly discloses the applicant’s invention without getting into specifics about what the exact settings on the machinery that puts in the “Se” are best to use for x specific purpose. Finally, after much searching etc. I google stumble upon, what’s this? A publication by the author, 3 months after the filing date of the application, containing A LOT of citations to very relevant prior art. Hell, he points specifically to why he knows what he knows and provides wonderful information as to why it will be inherent in his invention. They’re a crapton of one or two liners in other publications with a graph, gl finding all of those without someone telling you where some are. You expect me to believe that he went and found all these references for his paper AFTER he made the invention just so he could look smart? What would be the point in that? You further expect me to believe he doesn’t have to file an IDS telling the information he knew at the time of his publication?

    WHERE’S THE IDS SUBMISSIONS AFTER THAT PAPER WAS WRITTEN HUH? NOT HOLDING ANYTHING BACK ARE WE?

  24. If I am PTO management and I know the policies I am trying to implement is widely rejected by practioners, what do I do, I use someone on my payroll to defend and voice for me.

    A cheap way to do it, isn’t it? Guy is my yes man/woman, he/she does what I tell him/her to do.

    Are you one of the guys, 6,000…

  25. E#6k, I know a research scientist who is brilliant in his field… the father of a whole branch of health-related science. He said many of his best ideas and greatest breakthroughs came from “the obvious”. Where other researchers would discount an idea or theory as “that’s been tried”, or “that’s so obvious it can’t be true”, or “it’s so clear, why waste time with it”, he would look at it and say, maybe there’s more to this, maybe no one has really looked into whether A causes B; he questioned what was believed or assumed, and made great discoveries along the way.

    I’m not expressing it well, but the notion is that innovation often truly appears obvious in hindsight. Also, sometimes things seem so obvious in hindsight that you swear you’ve seen it before… only you haven’t. It’s a trick of the mind. So how do we deal with this dilemma in the patent world? It’s called proof. Inventor is entitled to a patent unless there’s some objective proof that the invention is not patentable. Your job, examiner, is not to strictly issue only new/non-obvious patents. You need not be, and can’t be, perfect. Your job is to search the prior art and see if there is any objective proof that the invention is not new/non-obvious. If you can’t find the proof, then you issue the patent. It’s really quite simple. Do rely on your knowledge and experience, but only to help you track down that solid proof and glue it together if need be. But it’s pure arrogance to rely on memory, intuition, and, dare say … hindsight, to deny a patent (not that you do this). If an examiner allows a patent and it turns out later to have been old, examiner can honestly say: I did my best, I searched and searched, I rejected and rejected, and allowed, but there are practical limits on examination (time, scope of search, etc.) and how was I to know about obscure reference X?

    When I started in this field, after some years in tech/engineering, I felt that many patents I worked on were obvious, had been done before, etc. Sometimes I’d try to prove it to myself, but usually couldn’t. It’s a phenomena in this field. The newer you are the more in-tune you are with state fo the art… everything seems to have been done before. As you get more experience, you realize that you don’t know it all and the state of the art doesn’t freeze in place the moment you get out of the trenches.

    So the answer to your hypo is easy. Do your best to legitimately prove (per rules/MPEP/etc.) why no patent should issue. If you’re confident, let it go to appeal. But when you’ve done your best to support a rejection and you’ve failed, issue that NOA and move on to the next app.

  26. Does the outcome of summary judgment at the district level really matter anyway? It is assumed that the losing party will appeal to the CAFC. There are really no issues of fact being determined right now. I can’t imagine the CAFC would let these rules pass.

  27. examiner#6k: “First, and imo PTO was kickin arse n taking names. At least from this presentation of what went down, Tafas may as well say goodnight.”

    I’m reminded of a classic Seinfeld episode here. “…it’s almost as if you have no [legal] training at all!”

  28. JohnDarling,

    curious,

    You got that right!

    Posted by: JohnDarling | Feb 11, 2008 at 09:15 AM

    Good posting, JohnDarling!

    The best I’ve read in a long long time.

  29. “A method of vulcanizing rubber using a group VI element which contains small amounts of Se+ and Se-. Dependent claims say: wherein the small amounts of are determined by optical means.”

    I’ve run into these types of claims too. Generally, they can be invalidated with legal argument (based on inherency, obviousness, etc.) just like any other claim once prior art has been found (or admitted) in a legal proceeding (though it would be nice not to have to fight the presumption of validity).

    But perhaps the PTO should follow the European example on this one. One of the elements of the European claim requirements is that a meaningful search must be possible (Rule 63). If “no meaningful search” is possible on a claim, the claim is rejectable for that reason.

    I think it would be good if the same prima facie rejection could be made in the USPTO of such claims (though there may not currently be legal basis to do so). Once the rejection has been made, the burden of proof would shift to the applicant to show, by a preponderance of the evidence, that the prior art does not contain such features alleged to be unsearchable or to show how the features are in fact searchable.

    Even without such a rejection, the Examiner can likely afford himself of 37 CFR 1.105(a)(viii) (“Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items”) to require a showing why the applicant believes such [non-searchable] limitations were not present in the prior art known to the applicant. If the applicant is not willing or able to make such a showing regarding the prior art, then his averment in the declaration (“I believe I am the first inventor…) may come into question.

    Of course the new rules and patent reform do nothing to address the difficulty of claim limitations that extend beyond the scope of a feasible meaningful search, since they were written from a perspective divorced from actual practice.

  30. “Just out of curiosity, or am I the only one, does anyone think fee diversion has anything to do with this? I mean, if the PTO was able to hire more examiners, pay them better, and retain them, might they not be trying so hard to curtail their workload or shuffle work onto the applicant. I must admit that I’m not an experienced PTO-watcher, but that’s my sense. I would welcome any comments in that regard.”

    As I am just in the process of scrolling through these comments, pardon me if this has already been suggested. IMO, the PTO has no intention of hiring more examiners…that’s not in line with King Reagan’s thinking about government, i.e. that it should be smaller, in fact, squeezed to the point of non-existence. Every additional patent examiner represents 2-3 fewer soldiers, which we all know are the only suitable recipients of our tax dollars.

  31. 6k, a couple things.

    1. For every “crap” application you get and deal with, I get an office action with terrible art, written in barely recognizeable english. I respond to it, and only thereafter does the examiner do a real search and come up with some quality art.

    2. When I write an app, I always disclose the very best references I can find. So does everybody who I work with. It seems to me that you may be dealing with a lot of applications that originated in Europe and are now entering national phase in the usa. Is this true? From what I’ve seen, the quality of claims drafted by our EU friends isn’t up to par with those drafted by patent attorneys in good usa firms.

  32. Sofa King is correct.

    6k, I didn’t create the requirement that PTO fact finding be supported by substantial evidence. The APA and Zurko did.

    If I’m an accused infringer, should I be able to invalidate the patent being asserted against me on the defense of, “Oh come on, your honor, everybody knows that the claimed feature is old as heck. Just because I can’t produce any evidence of it doesn’t mean it’s not notoriously old and well known.”?

    If it’s so notoriously old and well known, there’s evidence of it somewhere. Go find it. If you can’t find it in the time allotted for your precious count, do exactly what Sofa King suggests, allow it and move on.

    We understand that examination in the Office is imperfect. For all of the criticism I’ve made of PTO (mis)management, I have NEVER whined about “bad patents.” I’m well aware of the time constraints examiners are under. We have two reexam procedures available to those who are so concerned about “bad patents.” Use them. If these patents are so clearly invalid, it shouldn’t take all that much to invalidate them.

    You have plenty of people on this site constantly harping that Amazon’s one-click patent is a “bad patent.” Is it? How should I know? What I do know is that it’s been litigated to the ends of the earth. With no expense, time and/or effort spared I’m sure. And now it’s in re-examination and the PTO has agreed that the insertion of “purchasable through a shopping cart model” to the independent claims puts the case in condition for issuance of the re-exam certificate. So what I’m sure is tens of thousands of hours, and millions of dollars, of litigator time has resulted in this. And the re-exam certificate will issue. And there will still be people whining about what a “bad patent” it is. You’ll hear from them. Trust me. When you do, ask them, “What is your EVIDENCE?” And what you will hear is the same old, same old, “everybody knows that’s obvious.” Great.

    6k, you admonish us practitioners to “talk to” Mr. Dudas and Mr. Doll. You assure us they are human and will listen if we propose solutions to their problems.

    You are wrong. Dead wrong. So wrong it’s off the charts.

    They have been told over and over and over and over and over and over and over and over and over and over that the current production scheme they have in place is broken beyond repair and rewards examiners for poor quality first actions. I know that’s true, all of the practitioners posting on this site know it’s true, and you can bet your last dollar that PTO (mis)management knows it’s true.

    What have they done? NOTHING.

    They’re in negotiations for a new CBA with POPA as I write this and what are they doing to address the concerns of examiner retention raised by the GAO report?

    You tell me. You’re so sure you’ve figured out all of the GAPING deficiencies in the system. Tell all of us what your buddies Dudas, Peterlin and Doll are doing to address the issue.

    They’ve collected extra claim fees, and now extra page fees, for 20+ years on the theory that “more claims require more examining resources.” They’ve taken applicants’ money and have never given applicants, or examienrs, what was paid for.

    And here you are, all of one and half years into the system, spouting your nonsense that all applicants and practitioners are witholding references, overclaiming, etc.

    You know absolutely nothing. The garbage that PTO (mis)management has poured into your head during your brainwashing sessions is beyond belief. During the nine years that I was an examiner, there was never any suggestion, or even thought, that applicants and/or practitioners were engaged in the types of things you routinely accuse us of. Now we have the current crop of (mis)managers proposing incomprehensible rule changes and issuing 129 page Federal Register notices that the entire 760,000+ case backlog and 32+ month pendency is entirely the fault of applicants and practitioners.

    And they’ve got THOUSANDS of freshly recruited examiners, including you, believing it.

    Wonderful. I’m eternally optimistic that we can make real progress under these conditions.

  33. 1. Look on your periodic chart.
    2. I have to kind of agree, unfortunately, not everyone here does, and I can see their view as well because the courts don’t have time for the massive amounts of bs spewing forth from corporate america, we’re not a nation of farmers anymore. What I just described above would be a “bad patent”, esp. if I didn’t at least get the first amend listed above.
    3. that’s a good point, but I need something to do to take a break while I’m here on Sun evening amirite? And I’d promised T and someone else before, though I posted in the wrong thread doh.

  34. Max: double entendre? Moi? (We know now why you get paid so much.)

    Examiner #6k:
    1. I forget, what’s group VI mean? (I was pre-med.)

    2. I sort of agree with JD. Why not set your own definition of 103 obviousness — “If I can’t blow a hole in it after 4 hours of honest searching, it’s not 103.” Then let the courts or a reexamination worry about it. Move on the the next case.

    3. And why not spend more of your weekend jogging on the tow path and less sitting on the patent blogs? You’ll feel more refreshed on Monday, your output will soar, and I won’t have to sit around all weekend waiting for your next entry. Great Falls is beautiful, even in the winter.

  35. Oh, and finally, lets say you went to rubber making school, and you already heard about the Se vulcanization process, and hell, lets go one step further, one of your classmates USED the method for his project, and you just so happen to remember vaguely that he bought the Se from a generic provider (well known to not be 99%+ pure), and that he made a presentation on the full setup of his experiment and what he used (he likely looked at Se under optical observation means). What now? Allow it? Off. notice the ind? Tell the applicant to go f himself? What do you do? You have 18 hours to find art, and make a decision. After your 18 hours are up, you still have no “better” art except the 103 stuff we talked about above. What’s your decision? What’s your decision when he amends “group VI element” to “Se” in claim 1 in response to your 103? Take it to your spe and give him a hearty chuckle and get 20 subs to look through? Good Game, you’re working nights and weekends, and you’re at 80% production while your other amendments are rotting giving you workflow points (bad thing). All because some arsehole wants something embarrasing that there is no “proof” against (assuming you don’t call your college friend, or he did it differently).

    JD will tell you I should allow the claims, hell, allow the original ind. That’s just great JD, gg on being a good examiner.

  36. Lets go one step further, how would you “attack” the application, try to find a Sulfur vulcanizing process that happened to have some Se in it and reject the app? You’ll probably find it, and they “won’t get a favorable first action” (lol, I wonder why?) Or, would you try to find a reference that states that Se usually contains Se+ and Se-, and then find a reference teaching optical determination of chemical compositions and 103 all that in with the original primary ref teaching Se in vulcanization? Let’s say you find all that art to do those things, which do you present to the applicant? Do you spend 10 hours writing it all up, or do you spend 5 hours writing up one or the other?

    Welcome to one day in my life, do the same thing tomorrow, and the day after that, and the day after that, then come back and tell me oh, at least some of your apps are great inventions and you wouldn’t know an invention if it bit you in the behind!

  37. So, you tell me, can you tell, upon first reading the claims and knowing what one of ordinary skill knows, and what the prior art says, if they’re likely patentable or not? Can you see the blatant tom trickery being played in claim 1? Can you imagine that it will be hard to prove that one of ordinary skill knows that the Selenium has Se+ and Se- in it already? Can you also see what they might have a snowflakes chance in hell at getting claims towards by the end of prosecution? I’m betting yes on all accounts. Can you also see why I would think it’s beyond a shadow of a doubt that they are not disclosing all their relevant info? (they submitted 0 references, except maybe some found by Korea’s patent office already). Finally, can you tell me specifically why in the sam hell I have half a docket full of this crap?

    I’ll tell you why, because this guy wants to get a piece of the sweet sweet action by disclosing nothing more than his ordinary skill and performing routine lab work gave him. The american people are certainly in his debt, and there would be a fair quid pro quo, oh wait, not.

  38. Alright, several folks were wondering what’s a good example of these applications that I get that I’m always raising a rucuss over. Ok, I’ll give you an analogy. Vulcanization of rubber involved high heat, and the addition of sulfur. Ok, so lets say for instance, the sulfur used has a certain amount of sulfur in it’s elemental form and also contains smaller amounts of other sulfur forms (not trace amounts, small amounts) when viewed through optical means of determining chemical composition. This is the industry accepted standard. Then one day, someone invents a method of using Selenium (right under sulfur in the periodic table and it may or may not work irl, I don’t know, I’m using this as an example) and it works great, is advertised in all the journals for many years, everyone knows about it. Now, 4 years later an application is filed for guess what? A method of vulcanizing rubber using a group VI element which contains small amounts of Se+ and Se-. Dependent claims say: wherein the small amounts of are determined by optical means.

    Now comes the kicker, you go back and find, and then read the reference magazine article (or patent, or wherever the original Selenium invention was published) and you don’t find any mention of it having Se+ or Se-, or those amounts being determined by optical means. Why? Because they know that anyone with half a brain in that art knows that they can use optical means to find out what the selenium has in it, and they’ve probably already done it and know that the same selenium they’re using has Se+ and Se- in it, but they don’t want to go blabbing about it to people that know that in all liklihood it does, and because they’re rather not give you every last detail because they know you’ll have to liscense it from them anyway, and they know no patent would issue by such an extra disclosure because of it being the same process as they made.

  39. Just, thanks, now perhaps you can do me a favour. Tell me I did understand aright the double meaning in “SOFA KING”. Given the above communication failure of “for Cunard” I’m thinking perhaps I was imagining things when I saw that particular pseudonym. Alternatively, perhaps I’m noticing things that are escaping other readers.

  40. MaxDrei,

    I disagree with your last comment – I think your joke was just fine. Please keep ’em coming, practice makes perfect, and please take my other advice. You’ll thank me in the morning.

  41. Outsider,

    With all due respect, it appears your understanding comes up short in more ways than one.

    A) If you try forkin’ hard (FOR CUN-ARD) you’ll get Max’s joke.

    B) I think Max should stick to forkin’ joke telling and give up his sarcasm, ridicule, scorn, disrespectful, distain, mockery, cynical etc. and quit being rude, haughty, impudent, arrogant, egotistical, insolent etc. and learn to appreciate others even us Americans and eat humble pie when he forks-up in one of his comments :o}

  42. I don’t get the joke, MaxDrei, but I do appreciate your non-American-centric views and insightful comments. Keep them coming. And never mind JAOI.

  43. Sorry. Correction. Telling jokes is another thing I’m bad at. It is of course elderly Lady A who is nearly deaf.

  44. Sofa King reminds me of the misfortune suffered by young Lady B, newly rich wife of a member of the board of Cunard the shipping company, at a grand charity dinner in London, also attended by elderly Lady A, member of an old aristocratic family owning half of Scotland. The conversation was flagging somewhat, because Lady B is almost DEAF:

    A: (sweetly) and what does your husband do?

    B: MY HUS-BAND WORKS FOR CUN-ARD.

    A: (recoiling slightly) Yes. Well. My husband works quite hard too, I suppose.

  45. No, no, no, no . . . real.

    I agree with you that IDS is correct — Information Disclosure Statement (see USPTO form SB08A). But IDS is totally distinct from ISD. ISD is some sort of intrauterine device.

    And then there is (the hopefully now defunct) ESD — Examination Support Document of the “new rules” — which I hope none of us ever see again this side of Hades.

    But as for FAOM, I 100% disagree that it is “correct” just because some ‘crats at the USPTO didn’t have enough imagination to use FOAM, which has 50-fold more value as an anagram. Somebody needs to file another amicus brief with J. Cacheris on this issue. I mean, like, this is substantive, man. We need to change USPTO to US-POT while we’re working on it.

  46. “To answer mark Nowotarksi’s question about why the “why the USPTO is fighting so hard” for these rules, and why John Doll has been the most forceful advocate, I suspect that the reason is found in 35 U.S.C. § 3(b)(2)(B)

    (B) Salary and performance agreement.–The Commissioners shall be paid an annual rate of basic pay … In addition, the Commissioners may receive a bonus … based upon an evaluation … of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary.”

    Points to Ponder,

    Thanks for pointing out this very interesting piece of informtion (aka there’s money to be had by the PTO hierarchy in these Rules). Yet another potential piece (and not stretching the imagination too much) in this puzzle as to why the PTO hierarchy is opposing the GSK/Tafas suit so vigorously.

  47. “FOAM????? Did you say “FOAM???” First Office Action on the Merits.”

    FAOM is correct – ever since the beginning of the count system at the PTO. (You may use FOAM if you like… you can also call an “IDS” an ISD [Information Support Document] if you like because it’s easier to say or remember. But that’ll never make the people who use the correct acronym wrong, and if you use ISD with Examiners, they’ll probably think you don’t know better, unless they don’t know better.)

    On the other hand, if you want you could also change FAOM to FOAOM, or FQAQM if such a meritorious action brings sorrow to the applicant (e.g. so middle-schoolers can understand it, and so it looks like a crying face when you IM it to your GF…)

  48. FOAM????? Did you say “FOAM???” First Office Action on the Merits. Absolutely perfect, Mark.

    It’s an anagram and a mnemonic. Why is that the PTO insists on the brain-dead FAOM? It’s not even pronounceable. I raised this point last August when the PTO used FAOM over and over in the Federal Register in their doomed attempt to change the rules and everybody else started using it.

    You are absolutely right. Just because the PTO mules are brain-dead doesn’t mean we have to be.

  49. Mark,

    Do you think a billion dollars is enough to motivate some kind of embezzlement in progress?

  50. “Just out of curiosity, or am I the only one, does anyone think fee diversion has anything to do with this?”

    Patent Pilot,

    This is another interesting take. I’m reminded of the the old saying “follow the money”. One of the consequences of a growing backlog is that there is growing escrow fund of unearned application fees. Last I checked a PTO annual report, they had about a billion dollars in unearned fees that they couldn’t tap until more applications got an FOAM.

    If one of the consequences of the new rules was to get applicants to abandon applications, then those escrowed dollars would flow back into the PTO.

  51. “Similarly, the “annual performance agreement” and “measurable goals” criteria for bonus have not been disclosed”

    Points to Ponder,

    Now there is an angle I haven’t thought about. Is there any reason why at least the measurable goals shouldn’t be made public?

  52. “The examiners, of course, keep hyping the pay angle, but it always takes my breath away when I see the salaries these kids straight out of college make at the PTO.”

    Maybe you never lived in DC where everything is twice the price as anywhere else and you rent is 2.2x the price.

    As to why paying more will get you a better examiner… um, apparently the “smart people” who are apparently lawyers right now would probably be happy to do the job if it paid just as well as their supposed high stress positions outside the office. Not only that, but apparently all the people who are better than me and my ilk that elect to not work at the office might take a stab at it. I’m yet to find these people that don’t speak decent english who I apparently share the building with. I would believe you if you told me though that they can’t write english for crap (my gf outside the office has this trouble). Call them.

    People still don’t understand the “shuffling of work to the applicant” is nothing more than making you show us you actually think you have an invention, rather than just something you made. I sent the guy who wrote infamous claim 4 a mail when I read a paper by him detailing almost exactly this point, he’s a nice fella, and he as well as myself believe that “it’s up to us to show them” that what the pto, and the courts (indicated in KSR best) want is for you to show us a reason you think you have an invention rather than just an application of your chosen fields skills (chemist, microbiologist, doctor, chip designer etc.) The time of the “I HAZ INVENTEN PROVE ME WRONG!” is over. Sorry.

  53. Dear Sofa King Annoyed,

    So sorry you don’t enjoy my pitching patriotism. It’s kinda’ my hobby and it makes me feel good. I wish you’d try it sometime – you’ll thank me in the morning.

    Regarding your “geesh” remark, with all due respect, judging by the lack of judgment expressed in your comment, I’ll bet if MaxDrei peed in your face you’d swear it was Löwenbräu ;o)

    However, I am constrained to agree that, while some of Max’s comments would be worthwhile if standing alone, Max mixes his comments with so much bias dung* it destroys any value his thoughts may otherwise have had, at least for patriotic me.

    * and sarcasm, ridicule, scorn, disrespectful, distain, mockery, cynical etc., as well as rude, haughty, impudent, arrogant, egotistical, insolent etc.

    In regard to your comment:

    “…especially as we move toward a global patent system.”

    you missed my message by many miles:

    The deterioration of our patent system is but one symptom of what is happening to America’s prestige and world leadership as we speak. I for one am not interested in seeing our nation join the pack of second-rate nations.

    AMERICANS SHOULD ASPIRE TO LEAD, NOT FOLLOW.

    AMERICANS ARE DESTINED TO LEAD, NOT FOLLOW.

    AMERICA’S PATENT SYSTEM IS THE HEART OF OUR INTELLECTUAL INFRASTRUCTURE.

    I thank you for your comments, and I thank you for the opportunity to repeat and emphasis my patriotic message.

  54. To answer mark Nowotarksi’s question about why the “why the USPTO is fighting so hard” for these rules, and why John Doll has been the most forceful advocate, I suspect that the reason is found in 35 U.S.C. § 3(b)(2)(B):

    (B) Salary and performance agreement.–The Commissioners shall be paid an annual rate of basic pay … In addition, the Commissioners may receive a bonus … based upon an evaluation … of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary.

    Bonus information was disclosed in earlier PTO annual reports. Strikingly, the last few years’ PTO annual reports have all failed to disclose bonus information – every year, oops, this information comes available just after publication of the annual report. E.g.,

    link to uspto.gov at page 23 (PDF page 25).

    Similarly, the “annual performance agreement” and “measurable goals” criteria for bonus have not been disclosed – but I’ll bet you an awful lot that backlog is high on the list of bonus criteria. I will also bet you a lot that of Commissioner Doll’s statutory obligation to “be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent … operations, ” for instance, ensuring compliance by examiners with criteria in the MPEP and 37 C.F.R. § 1.104 for evaluating patentability to make sure that no applications are rejected for unauthorized reasons and without required explanation – is either not on the list, or very low.

  55. I don’t see it PatentPilot. The examiners, of course, keep hyping the pay angle, but it always takes my breath away when I see the salaries these kids straight out of college make at the PTO. I didn’t make that kind of money with a PhD in academia for many years. I mean, the reference point they want to apply is what they could get paid in a top-shelf firm as a patent attorney. Or as a skilled patent agent. Besides, I don’t see how paying an 1diot more money makes them any less of an 1diot. Or how paying someone who can’t speak English more money suddenly makes them articulate.

    As to (TM), geesh, I wish you would take your American jingoist B$ back to your American Legion club. I find Max’s incisive comments very much to the point and worthwhile. The American patent system, just like America in general, sucks in a lot of ways that other country’s systems don’t, and vice versa. Max consistently identifies and compares strengths and weaknesses, and I find that very helpful, especially as we move toward a global patent system. If you want to engage in a flag-waving political debate, move over to Huffington Post.

  56. Hi patentpilot,

    For what it may be worth, I think you hit the nail on the head, and then some:

    In fact, whatever appropriations or increase in patent fees it may take, it is self-evident that it is imperative to put in place the best PTO management possible (maybe Professor Dennis Crouch & Ms. Jill Browning), pay Examiners at least enough to attract the most competent in their respective fields and provide government & private funding to young aspiring American inventors (and maybe some old codgers like me), sort of like an American Intellectual & Innovation “ROTC” financial aid program.

    What about it Dennis, does Mizzou want to lead the way?

  57. Just out of curiosity, or am I the only one, does anyone think fee diversion has anything to do with this? I mean, if the PTO was able to hire more examiners, pay them better, and retain them, might they not be trying so hard to curtail their workload or shuffle work onto the applicant. I must admit that I’m not an experienced PTO-watcher, but that’s my sense. I would welcome any comments in that regard.

  58. Max also said in another thread titled, Tafas v. Dudas: Challenging PTO Rules Potential Feburary 8th Decision:

    “So, we’ve got Max h8ters, Dudas h8ters, Doll h8ters…”

    Max, you finally got that one right:
    Birds of a feather belong together, you (MaxDrei), Dudas and Doll.

    If there’s any justice in this world, you’ll find yourselves together in heil if you don’t atone for your sinful ways :o)

  59. Max wrote above:

    “Or is it just JAOI(TM)?”

    I quote the last two concluding sentences in the penultimate comment above to which mad MaxDrei refers directly above.

    MaxDrei wrote this:
    “I am not in any doubt that the US patents system is (sounds great doesn’t it?) the world’s ‘strongest’. I’m just not sure about its capacity to adapt.’

    Yes, after years of much worse and much of the same from Max, I am passionately rude v Max. So allow me this further observation:

    I, Just an ordinary inventor, consider Max’s remarks to be sarcasm, ridicule, scorn, disrespectful, distain, mockery, cynical etc., as well as rude, haughty, impudent, arrogant, egotistical, insolent etc.

  60. “Jill, if you’re following the comments, was there any argument on the PTO’s attempt to amend Rule 104 to allow examiners like ole’ #6k here to apply the MPEP as if it has the effect of statute?”

    Sofa King,

    Thanks for bringing up the “hidden land mine” that the PTO so nicely planted in our midst in the form of amended Rule 104 to allow changes to the MPEP to have the effect of Rules without any comment from the public, and which makes Rule 105 (as awfully interpreted by the Federal Circuit in Star Fruits) pale by comparison. How does amended Rule 104 possibly square with the APA? As I’ve already said above, this PTO hierarchy has no shame and no sense of obeying the APA.

  61. I ought to correct my last comment. The quotation from the President of the EPO should have read: It’s not the most intelligent or strongest, it’s the most adaptable that survive”. And, I should draw the attention of JAOI(TM) to the negative comments I made in my last post, about the European patent system (30 years’ delay, 7 years’ delay). Are we now to expect outraged European readers to take me to task? Or are my remarks on the US system repulsive whereas the ones on Europe are not. Or is it just JAOI(TM)?

  62. AMERICA’S PATENT SYSTEM IS THE HEART OF OUR INTELLECTUAL INFRASTRUCTURE.

    Will somebody please impress upon Judge Cacheris that America’s patent system is the heart of our Intellectual Infrastructure.

    Anyone?, anyone?, Bueller?, Bueller?, Jill Browning, Esq.

    I mention Jill Browning, Esq. because Ms. Browning is as strong an advocate as any patent practitioner ever was, the best, and I believe Ms. Browning would agree that America’s patent system is the heart of our rapidly crumbling Intellectual Infrastructure.

  63. AMERICANS ARE DESTINED TO LEAD, NOT FOLLOW.

    The deterioration of our patent system is but one symptom of what is happening to America’s prestige and world leadership as we speak.

    I for one am not interested in seeing our nation join the pack of second-rate nations. Look what has happened to America under Bush’s watch. Just consider in hindsight where America would be today if the Iraq war budget had gone into American innovation to kick the oil habit!

    The dangerous predicament America finds itself in today started under Clinton’s morally bankrupt administration. Our sad predicament is worsening due to Bush’s unwavering megalomaniac attempt at globalization.

    Now and for the foreseeable future, what would serve the world’s interests best is if America reverted to strong statesmanship and leadership. Americans are destined to lead, not follow.

    Our next President will make or break our nation. Our choice is more critical than ever. Don’t forget to rally for Mike Bloomberg when he throws his hat in the ring, and don’t forget to vote.

  64. AMERICANS SHOULD ASPIRE TO LEAD, NOT FOLLOW.

    MaxDrei’s penultimate comment on another thread:

    “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?”

    MaxDrei’s last comment on this thread:
    “The word ‘h8te’, when used in relation to an object that is a human, has no place on this patent law blog.”

    MaxDrei asked for a comment, so here’s one for Max.

    Re: “h8te,” I for one do not agree. For example, it is interesting to note the first example Merriam Webster provides for the object of the verb “h a t e”, i.e., “h8tes his country’s enemies”:

    “Main Entry: h8te
    Function: verb
    Inflected Form(s): hat•ed ; hat•ing
    transitive senses
    1 : to feel extreme enmity toward – h8tes his country’s enemies”

    Interestingly, Merriam Webster’s meaning of “sarcasm” seems to be describing the whining tone of mad Max’s main agenda:

    “Main Entry: sar•casm
    Function: noun
    Pronunciation: ‘sär-“ka-z&m
    Etymology: (omitted)
    1 : a sharp and often satirical or ironic utterance designed to cut or give pain – tired of continual sarcasms”

    I for one am sick and tired (I h8te) Max’s continual sarcasms directed toward mocking our patent system and his continually foisting frail foreign patent system attributes at us, attributes which, generally speaking, lack the voracity of the American patent system, voracity which has in the past contributed to America’s lead in innovation.

  65. M. Slonecker writes of the “legislative process” and its management with pincers. Interesting to reflect on what’s going on, in other parts of the global forest, round other camp fires, using other forms of pincer. What’s their “legislative process”? Take Europe for example. Still no litigation regime after 30 years of the EPC. EPC 2000 finally into force in December 2007 for goodness’ sake. Meanwhile, the Chinese have just found a French company to be infringing a Chinese Gebrauchsmuster (petty patent) and awarded damages of EUR 30 million to the Chinese claimant. The Chinese are litigating their patents in USA too, aren’t they? They file more apps these days than the whole of Europe, don’t they? The President of the EPO is launching a number of initiatives to manage the new reality. As she says “It’s not the strongest or the most powerful that survive but, rather, those that are capable of adapting”. I am not in any doubt that the US patents system is (sounds great doesn’t it?) the world’s “strongest”. I’m just not sure about its capacity to adapt.

  66. A very useful summary of the vagaries comprising Administrative Law can be found at:

    link to books.google.com

    Why do I post this link? In large measure it is because so much discussion of the proposed rules has taken place without a firm foundational understanding of the crucial differences between “legislative” (aka…”substantive”) and “interpretive” (aka…”procedural”) rulemaking. The authors draw heavily upon the fine work of Ken Davis (my Admin Law professor) and his colleagues who drafted what is now known as the APA, and explore case law that has attempted to give meaning to these somewhat ambiguous terms. The specific details of the paper aside, one point that does jump out at the reader is that a label assigned to a rule by an agency is in no way determinative of whether or not a rule is legislative or interpretive.

    The USPTO of course wants these rules characterized in such a way that it can avoid the downside of APA requirements associated with legislative rules. Tafas/GSK, quite predictably, want a ruling that the USPTO has deliberately engaged in conduct calculated to mischaracterize what it views to be the actual nature of the rules…rulemaking pronouncements having the operative effect of “legislating” by the USPTO.

    I have no intent to engage in a long dissertation of this subject, but do want to at least provide information that may serve to bring the competing views into better focus and the challenge now facing the Court in the Tafas/GSK/USPTO case. My sole observation that I issue as a challenge to those having joined one of the two competing “camps” is this: Do the proposed rules in any manner operate to materially alter the statutory scheme that now comprises Title 35? Personally, I can easily identify several prominent changes (i.e., “conflicts”) to the statutory scheme, and note that several of the changes proposed by these rules have previously arisen and been explored in appellate court decisions that contradict the position the USPTO is now pressing before the Court.

    As a side note, a question has been posited why the USPTO seems bound and determined to defend the rules at all costs. I submit that a close examination of Mr. Dudas’ and Ms. Peterlin’s CVs provide strong clues. Admittely a gross generalization, Mr. Dudas has experience working within the Senate committee structure, and Ms. Peterlin shares similar experience working within the House of Representatives committee structure. They are no strangers to the legislative process, and it is not beyond reason that their familiarity with the legislative process, coupled with access to members of the committees, has resulted in a “pincer-like” approach lobbying for legislative “reform” while at the same time utilizing the rulemaking process to expedite the promulgation of rules such that they will be at the ready when and as “reform” legislation is enacted. Personally, I believe they are each chagrined to have discovered the date for “reform” legislation moving to the right, and the proposed rules being so strongly challenged.

  67. Mark,

    The idealist in me would say that the PTO finally got into the “we are supposed to serve the public interest” mindset and promulgated the rules to fix all the problems you identified. Sure, they are not new, but the PTO has historically been Exhibit A in the catalog of slaves to special interest (i.e. patent attorneys and patent holders) capture.

    The cynic in me meets LG half-way. There are probably a few points of impetus on the politics side:

    1. Patents are kind of in the news after Blackberry. Surely you have noticed. Although not directly related, the PTO probably feels general heat.

    2. Lemley and Moore article.

    3. FTC report.

    4. Lots of publicity on PTO backlog and ridiculous patents coming out of the place.

    5. Star Fruits making the PTO feel that they have a good shot at the Federal Circuit these days.

    Many others factors that just place “broken patent system” as a political pressure point.

  68. “So why the passionate defense? Even if the rules did everything the USPTO says they would do, who cares? What does the leadership of the PTO get out of it? To whom are they accountable to?”

    Mark N.

    It’s sad to say that this “hell bent for leather” defense by the PTO (and especially its hierarchy) is primarily all about politics and political survival, nothing else. They try to make these Rules look “noble” but they’re not. Most of the examiners I’ve seen comment on them, with the exception of #6k, don’t like them anymore than the patent bar does.

    It comes down, as far as I can tell, to the PTO hierarchy seeing the “backlog” issue as making them look bad and so they need to shift blame to the patent applicants and their representatives by alleging “rampant abuse” which they never prove with any verifiable facts. Never mind that the PTO hierarchy has so mismanaged the PTO (for almost 14 years, the last 7 by the current administration) that has now lead them to the pickle they’re in.

    For example, the examining corps has a turnover rate that would make any other business weep (and likely go out of business). The GAO has documented the reason why examiner’s leave is because of the production quota pressure they feel from the PTO hierarchy. But the PTO hierarchy spins this into “they leave for personal reasons.” Which would you believe, the GAO or the PTO heirarchy?

    The PTO hierarchy hoped also they would stay below the “radar screen” with these Rules, but now they’re really on it after this GSK/Tafas suit (please do thank those folks for stepping forward to take these awful Rules head on at significant expense and political risk). The PTO hierarchy is so desparate now that it has even played the “the Red Scare” card by setting their OED arm after us to try to “cow” us into submission to these Rules with threats of disciplinary action and loss of our license to practice if we didn’t make our clients “toe the line.” Talk about a “chilling” effect on our ability to do the very job the PTO disciplinary rules require us to do for our clients.

    To put it frankly and bluntly, the PTO hierarchy knows they’ve been backed into corner primarily of their own making, and the only way out for them is to hope for a 99 yard “Hail Mary” touchdown pass from Cacheris. With that, I’ll leave it to you to figure out why this PTO hierarchy is so entrenched and stubborn that it wastes our time and our client’s money on defending the indefensible.

  69. “I have yet to hear an adequate explanation for why the USPTO is fighting so hard for them.”

    I’ll tell you why– the two kings at the USPTO are too arrogant to admit that they went too far this time. So in their stubborness, they forge on, hoping the courts will vindicate them all along. If they don’t press on, they are basically admitting they were wrong in the first place.

    The whole thing is really silly. For all the money that was spent on the rules (writing and revising them, setting up the computer systems, training examiners, litigating, etc.) they could have instead hired more examiners which would have had a much better effect on pendency than the slight (if any) reduction in pendency with the new rules.

  70. There’s something about these rules that I’m having trouble articulating. Perhaps someone can help.

    I have yet to hear an adequate explanation for why the USPTO is fighting so hard for them. Yes, we would all like to see pendancy reduced. Yes, there are many companies who are burned by the fact that applicants can keep applications alive to redraft claims to cover newly introduced infringing products. Yes, multiple patents emerging out of a single application are a burden to keep track of. But none of these issues are new and most major companies that I am aware of have policies and procedures in place to deal with them. Furthermore, I don’t know anyone who has said that it is the USPTO’s job to take care of these problems (apart from pendancy).

    So why the passionate defense? Even if the rules did everything the USPTO says they would do, who cares? What does the leadership of the PTO get out of it? To whom are they accountable to?

    Or is it all simply a turf issue.

  71. jk, are you jking me or what?

    Anyway, there’s two ways of looking at “substantive”, or having practical or real effect. And they directly correleate to the two methodologies of claiming.

    The rules would be substative if you’re a person who likes to not present what you actually invented up front (overclaim, and/or split your “invention” up into 3+ different supposedly inextricably intertwined sentences that are all required to sufficiently describe it, because doing any more, or any less would mean that they all fail 112), and instead like to make the office chip your claims into a masterpiece at a bargain price, using a hand chisel/hammer. This is what most of my applicants do.

    The rules are not substative if you’re a person who chooses to present what you invented up front in clear and precise language (claim well, or claim very narrowly, and only use the bare amount of sentences NEEDED to describe it, thus fulfilling 112 for all the sentences) and, after having been rejected soundly (you can’t find any real holes to appeal or argue with the SPE) you abandon your case. This is the view the PTO is taking, and currently “assume” (lol) that applicants are doing. You are doing this right? You’re not holding up the system by claiming something other than a very precise, complete, short and sweet claim to your invention right? Right?

    Now, whether Cacheris understands (or buys into) that this is really what he is deciding is anyone’s guess, but it sure as heck is. The question of “substative” only amounts to how you feel people claim (or need to claim) their inventions. The PTO has them in somewhat of a catch 22 here when it gets down to it, if you’re claiming things well the first time, then why would you possibly need more than a time or two to come back (if even that?!?!?!), and if you’re distinctly claiming things that are all one invention, why would you need more than a sentence or two? (why would you need more than one sentence?!?!?!?!) If you don’t really need those things, then the rules will not affect you whatsoever, and thus, are completely unsubstantive. They present that they’re being overly generous even with 5/25, and some chances to come back, and frankly, they’re right. The thing is, will the judge allow things to run amuck as they currently are, or will he impose order? And again, the effect on me is questionable, I’m hardly hurting by people getting unlimited RCE’s. I freely admit though that the ruling will go somewhat against the office because of the paperwork etc. not explained well

    I wonder what would happen if everyone submitted their taxes like they do patent apps, try 1: I made 0$ last year. response: We’ll send you to jail. try 2: I made 150000$ last year. response: Thanks for your cooperation.

  72. My prediction is that once J. Cacheris digests that Polecat brief, Dudas is gonna’ smell like he’s got a polecat hung around his neck.

    If this is your idea of kicking a and takin’ n, examiner#6k, I hope I never see what your idea of a 103 rejection looks like.

    Jill, if you’re following the comments, was there any argument on the PTO’s attempt to amend Rule 104 to allow examiners like ole’ #6k here to apply the MPEP as if it has the effect of statute?

  73. 6,000:

    “I always wondered why they were called requests for continued examination if it was a matter of right, hah, because it’s not”

    Even you are right, a continued examination is not a right, to ask for a continued examination is. To ask for a continued examination you have to file “requests for continued examination”. Questions?

  74. A patent application is not a “right”? If it is not, a pending application is not a right either. But a pending application is a “thing” I have spent lots of money on and sometimes I can sell it for a value. A patent application may be worthless because the application may be rejected, but, it may worth a lot because it’ patent may be granted. It is like a lottery ticket. It can be worthless, but it can worth a fortune. Who says before a lotto is drawn, the owner of a lottery ticket does not has a right to the ticket.

  75. “First, and imo PTO was kickin arse n taking names.”

    Examiner 6#k,

    In my “not so humble opinion” you don’t know what you’re talking about. Unless Cacheris completely chucks what he said in his PI opinion, nothing that the PTO says now changes what has already been stated over and over again by GSK/Tafas (and many others), namely that, in view of the statutes, case law and even earlier statements by the PTO themselves, these Rules are “substantive” in effect and the PTO has absolutely no authority to enact “substantive” rules. That and the fact that the PTO has yet to explain how they have such authority when, as was correctly pointed out by GSK/Tafas and other supporting Amici, that Congress has tried (unsuccessively so far) to pass legislation to provides the PTO with the authority which the PTO alleges it has now. That alone should sink the PTO’s boat, notwithstanding the unlawful “retroactivity” of these Rules, the fact that these Rules were created while flouting and improperly manipulating the APA, RFA and OMB procedures, etc. And if I were in the PTO hierarchy, I would be sweating bullets over what Cacheris thinks of the Polestar Capital Brief which shows the really “Dark Side” of the PTO hierarchy in this matter and which the PTO tries to strike based on the astonishing logic that “you can’t prove I’m a forger (or fudged the certification to the OMB on the impact of these Rules), because you’re trying to prove I’m guilty by asking the court to admit an unforged copy of the original (or what should have been in the administrative record) which I, the forger, destroyed (or what should have beeen administrative record, but for the fact that the PTO “negligently or deliberately” manipulated it).”

  76. Per the article for this thread, GSK is purported to have stated that the proposed rules are “substantive” because, inter alia, they “interpret the patent statute”. I much prefer the use of the terms “legislative” and “interpretive” as coined by Mr. APA himself, Kenneth Culp Davis. The latter are granted a significant degree of deferrence before the courts, whereas the former are not. A much more apt phrase would have been to say “amend the patent statute” because the proposed rules do, in fact, impose requirements on applicants over and above that which Congress has expressed in Title 35. For example, pray tell where in Title 35 authority can be found to add an additional requirement to what Congress has expressed as the requisite elements of an application (spec, drawings, claim(s), declaration, fees)? There is no case law I have ever seen that allows an agency to use a general grant of the power to make rules to override and expand upon detailed statutory provisions. Everything I have ever seen and had the opportunity to cite is precisely to the contrary, and that is from the Supreme Court on down through the federal court system.

  77. “and heck, who knows, maybe later it’ll be repealled once the backlog is down and we really need work. Right?”

    I just wanted to repeat that.

  78. First, and imo PTO was kickin arse n taking names. At least from this presentation of what went down, Tafas may as well say goodnight. I always wondered why they were called requests for continued examination if it was a matter of right, hah, because it’s not. Of course, I’m not turning any of them down 😉 See, if anything this whole thing will likely hurt me personally, but overall, it’s still an improvement for the system as a whole, and heck, who knows, maybe later it’ll be repealled once the backlog is down and we really need work. Right?

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