Board of Patent Appeals and Interferences (BPAI)

Eight Reasons: I am undergoing a project to better understand the role of the Board of Patent Appeals and Interferences (BPAI).  There are several reasons why BPAI is now receiving more limelight than ever. Here are eight such reasons: (1) every proposed patent reform bill includes an expanded role for a patent administrative court, such as the BPAI; (2) as various technology centers make patents more difficult to obtain, more cases are appealed to the administrative court; (3) under the proposed rule changes to limit continuation applications, more cases will likely be appealed; (4) as the value of patent rights continue to grow, important cases will continue to be challenged; (5) the publication of patent applications means that BPAI decisions can now also be immediately published; (6) the current large batch of examiners without much experience requires a serious check on potential abuses of naiveté; (7) under Judge Fleming, the BPAI has begun to open up to more public input and scrutiny; and (8) BPAI decisions are now available via Google search and Westlaw search.

BPAI is a Busy Court: It is important to recognize that the BPAI is deciding 3,500 cases every year. Thousands more are ‘settled’ prior to a BPAI decision either because the patent examiner withdrew a rejection (and likely re-opened prosecution) or the patent applicant filed a continuing application or abandoned the case. The BPAI usually sits in three-member panels, although there are occasionally ‘stacked’ panels for important cases such as Lundgren or Bilski.  In my one-year sample, over seventy different Administrative Patent Judges (APJs) authored opinions. 

As part of my initial study, this week, I created a database of information on recent BPAI decisions and coded them by issues discussed.  My database is derived from decisions available on Westlaw. Consequently, it is missing some decisions. In particular, Westlaw decisions do not include appeals associated with unpublished patent applications.

The table below looks at board decisions for each technology center. The relative numbers are interesting — showing a low affirmance rate for rejection of business method cases (TC 3600) and a high affirmance rate for chemistry cases (TC 1700). The BPAI offers its own calculation of these numbers based on all of its decisions that are roughly parallel. [LINK] ScreenShot037
(Note, the table does not add-up to 100% because I excluded decisions to remand and deny rehearing).

Independence of the BPAI: One serious question about the competence of an internal patent appeal board is whether that body can act independently from the examining corps. Most of the BPAI judges are former examiners and they all work for the PTO Director. Although not conclusive, the above numbers give me some cause for hope that the BPAI does act independently. Over the past several years, many of the art units of TC 3600 has been notoriously difficult on applicants (especially e-commerce and business method groups). The BPAI’s low affirmance of rejections from that technology center may indicate that the Board has taken an independent stand against overzealous rejection practice.  There are many other explanations, including some selection bias or difference in quality of attorneys. In addition, there is a skew of judges — i.e., Judges with a technical background related to a particular technology center are more likely to judge cases from that technology center. The BPAI rightfully does this to ensure that every case has at least one administrative patent judge (APJ) who is prepared to understand the technology at issue.

Issues on Appeal: Far and away the most decided issue is that of nonobviousness. Almost 80% of decisions involved a discussion of nonobviousness and 30 U.S.C. 103(a).  Unfortunately for patent applicants, nonobviousness decisions were also the most difficult for applicants to win. In my study, decisions involving Section 103(a) were affirmed 63% of the time; decisions involving anticipation under Section 102 were affirmed 55% of the time; and decisions involving Section 112 were affirmed 52% of the time. As more issues are added to an appeal, the chance of affirmance goes down, and the chance of a split (reverse-in-part) decision goes up.

As might be expected, split decisions tend to be longer than others: 4500 words for split decision vs. 3500 words other decisions.  If a short decision arrives at your desk, you may assume it is a remand.

Notes:

280 thoughts on “Board of Patent Appeals and Interferences (BPAI)

  1. 280

    God’s sakes why do I always say through when I mean threw? I should start proof reading a bit on here I guess.

  2. 279

    You did not make a very convincing case, so I have to disagree, and I disagree because the “controlling case law” is not applicable for the reasons stated above, and additionally the snippet “This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support” is coming from a case where the alleged common sense was clearly taught against by the art, and was not a fact. After noticing that sub·stan·tial evidence is evidence greater than a scintilla of evidence that a reasonable person would find sufficient to support a conclusion we see that indeed his Notice did not have evidence in the record whereas the applicant DID (he traversed properly, and even through in ref’s). Any reasonable person would very well rely on the statement about LED’s in conjunction with the motivations as being sufficient to support a conclusion if there was no evidence or even a statement to argue the fact stated. My point is, that snippet is taken largely out of context that invalidates its use here, and even when taken out of context still doesn’t apply.

    But as to “It was written by PTO lifers who have no idea how to respond to persuasive arguments other than to say, “Nuh-uh.”” I would have to say that you are right, however, to be quite fair, that’s all they have to say, and that’s all the time they’re really alloted to respond. And let’s be honest, all attorney’s are are “nuh uh”ers too. A good example of this is you arguing what you said you’d argue instead of rationally arguing the Notice taken.

    “Right now, you could argue that water is comprised of oxygen and hydrogen and he would still argue you were wrong” Nah I wouldn’t, but as a matter of fact me and an office mate were having nearly that exact discussion the other day. The question was “if applicant recites using O (or H, doesn’t matter) and the reference has water in it (H2O)” does that make him anticipated, rendered obvious or is the designation of the specific elemental only form of O sufficient to distinguish? We came to the conclusion that in that case it would distinguish, but there are cases in my art where such a thing would not distinguish as the material would be comprised of distinct elemental parts rather than a bonded molecule like water. But I don’t know, we could be wrong.

  3. 278

    JD

    Here’s a thought …. 6K = Ted Kaczynski???

    Very similar writing styles. I could almost see Kacyzynski writing what 6K has written.

    Regardless, at this point, he is a lost cause. Right now, you could argue that water is comprised of oxygen and hydrogen and he would still argue you were wrong. My suggestion is to let that boat sink on its own. It isn’t a matter of if, it is a matter of when.

  4. 277

    “Applicant’s traverse was inadequate because it failed to point out any supposed errors and merely alleged that the examiners Official Notice was not substantive evidence ”

    To be brief, “merely alleging that the examiners Ofificial Notice was not substantive” evidence is pointing out your error. And it’s not a supposed error. It’s an error.

    You really should stop relying on MPEP form paragraph boilerplate. It’s so silly. If you actually took the time to read it, you would see what drivel it is. It was written by PTO lifers who have no idea how to respond to persuasive arguments other than to say, “Nuh-uh.”

  5. 276

    I wrote you a detailed response, but I can’t get it past Dennis’s spam filter. I’ll check it again and try to force it through.

  6. 275

    But please, if you insist on furthering your ridiculous, overused, already well invalidated argument show just tell me your convincing argument (full flowery language) to this:

    The examiner takes Official Notice that the use of LEDs is old and well known in the illumination art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute an LED for the light source in the system of Who. One would have been motivated since LEDs are recognized in the illumination art to have many desirable advantages, including reduced size, high efficiency, low power consumption, long life, resistance to vibrations, and low heat production, over other light sources.

    Assuming the factuals are met above it. After I have finaled you, and quoted ” applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. If the traverse was inadequate, the examiner should
    include an explanation as to why it was inadequate.” Applicant’s traverse was inadequate because it failed to point out any supposed errors and merely alleged that the examiners Official Notice was not substantive evidence and requested an affidavit or other documentary evidence. Since the examiner was not relying on purely personal knowledge and thus no affidavit or other cited documentary evidence is required. Thus, the common knowledge in the art statement is taken to be admitted prior art because the applicant’s traverse was inadequate.

    Respond convincingly and I’ll reasonably cede you the whole discussion. Later that is, I’ve got to finish up and action.

  7. 274

    Now you’re back down to an F. Okay, an F+. But like I said before, only because you make me laugh.

  8. 273

    Realizing- Serving to make real, or to impress on the mind as a reality; as, a realizing view of the danger incurred.
    Or
    1. to grasp or understand clearly.
    2. to make real; give reality to (a hope, fear, plan, etc.).
    now apparently equals
    Conclusion:
    1-2 irrelevant
    3. a result, issue, or outcome; settlement or arrangement: The restitution payment was one of the conclusions of the negotiations.
    4. final decision: The judge has reached his conclusion.
    5. a reasoned deduction or inference. (requires you to reason through and deduce something, or infer something)
    6. Logic. a proposition concluded or inferred from the premises of an argument. (

  9. 272

    This is one of my favorites from 6k:

    “Realizing that something is by definition something else is not a conclusion, but a finding.”

    Uh, that’s an F. Well, maybe a D-. But I’m grading on a curve.

  10. 271

    “Last time I checked, I either new [sic] a fact or didn’t know a fact. I also either knew a fact was common knowledge or didn’t. I have yet to take an assessment of the anything in having that knowledge and stating it.”

    Epistemology according to 6k. Descartes is rolling over in his grave.

  11. 270

    “However, as even you will readily admit, stating a fact is hardly taking an “assesment of basic knowledge and common sense”. ”

    No. I won’t.

    Your statement is, without substantial evidence support, just that: a statement by the examiner. It is no more evidence that a statement by applicant or me.

    Your attempts to differentiate between the BPAI’s “assessment of common knowledge” and your “statement of fact” are laughable.

    “And I will tell them that if I had to, but I’d probably choose instead to write eloquently when I needed to.”

    I’m ROFLMAO.

    So you’re gonna just turn on the eloquence when you need it? You’re funny.

    You write like most engineering grads, i.e. terribly.

    Based on the quality of your posts to date, I’d say you’re looking at solid C-‘s for the first semester. Plenty of room for improvement though.

  12. 269

    Oh and JD, the lulz do not end there, my bad, I forgot, perhaps MOST importantly “This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.” As we see here, assessments (

  13. 268

    Overruled and modified are two seperate things my good man, as you well know. Also, no you might want to read Zurko, inside you will see that we are not to rely on common knowledge as the basis, or principle basis of the rejection. Unfortunately for you, and the others like you, that load of horse manure will hardly but never avail you to argue because we aren’t using the noticed fact as the basis, or principle basis of the rejection. In any event, you will also notice that after you fail to adequately traverse the notice it is established as fact. So, when you request an affidavit, bam, you just got yourself established facts right there already on the record. Pretty convenient huh? Best thing about it is that you’re right, if the case went to the board from FOAM then there would be no substantial evidence, but since it doesn’t the substantial evidence is right there on the record.

    On a side note, JD, why, I didn’t realize we were talking about only situations where “method claimed for improving security in computer systems w[ere] obvious”. lol. Neither am I taking notice of “it is basic knowledge that communication in trusted environments is performed over trusted paths.” nor am I motivating it as it “would have been nothing more than good common sense” nor am I implying that the “prior art teaches communicating with the user over both a trusted and an untrusted path.” which indeed, would invalidate my own Notice taken. And I’m certainly not referring to “what is “basic knowledge” or “common sense” to one of ordinary skill in the art.” that is based upon “nothing more than good common sense”. Let’s be clear that I’m not making any “assessment of basic knowledge and common sense [that] was not based on any evidence in the record and, therefore, lacks substantial evidence support.” Finally, the court ignored the “Second, applicants claim that there is no substantial evidence support for the Board’s finding of motivation to combine the cited references to yield the claimed invention” point. lolx2. Let’s get something straight, the rational for their stated fact being a fact was “hur, it’s common sense”. This contrasts with my rational for my stated fact being a fact “It is a fact”, there is no rational required, as there is no rebutal from the other side to be made I do not need to include a rational for stating that as a fact, however, if I indeed DID need to rationalize it thus, it would indeed be improper. As a matter of fact JD, I just read Zurko the other day, but it’s always pleasant reading. Welcome to the new world order JD, where people read words for what they say instead of what you want them to say.

    Further reading in Zurko that’s relavent:
    “As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” and, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.” Clearly, they cannot accept evidence that has it’s base in “hur, it’s nothing more than good common sense”. This however stands in contrast to “It’s a fact”. Finally, to get even more specific, in conclusion it is stated “The Board’s conclusion of obviousness was based on a misreading of the references relied upon and, therefore, lacks substantial evidence support.” http://www.smh.com.au/articles/2004/05/03/1083436532813.html?from=storylhs they fight hard for their stuff too, sans lawyers. Holy krapo, he’s no. 3 in the world for alive holders http://www.usatoday.com/tech/columnist/kevinmaney/2005-12-13-patent_x.htm

    In Re Zurko archived for you guys, take a read sometime here:
    link to caselaw.lp.findlaw.com

    Be careful not to own yourself in the face with it like JD here just did.

    On a side note, if they had combined the refs differently it seems to me like they could have put the case together well and won easily. Then again, I don’t have the ref’s before me. Seems like what they should have done was taken a trusted data path from one ref, 103’d it in the primary combination and then taken notice that “It is well known that data travelling over a trusted path is safe data in the blank art” if they lacked safe data or whatever. Make a factual statement notice instead of one clearly contradicted by fact (one does not have to transmit “safe data” over a trusted pathway, regardless of it being common sense to do so) and not relying on common sense to make up the difference, and such notice certainly not being verifiable in 5 mins or less. Case over, presto. Unless they didn’t have those ref’s at rejection time, in which case, that should have been allowed, as it was improper to take notice.

    Why any court would make a ruling to be misconstrued so heavily by the likes of JD etc I do not know when the case is open and closed so easily. Just say “so, you’re relying on common sense for why this is supposedly done when references clearly point against it?” hmmm, not good enough, reversed. Done, no messy crp laying around. Of course, KSR on the other hand …

    And yes, you guys know what gives me more kicks than watching reruns at 12 at night.

  14. 267

    “but lets go through a more detailed example more akin to what happens IRL showing the factual inquries (that aren’t even strictly required See KSR.”

    So KSR overruled Graham? You’re hilarious.

    Any assertion, or notice you take, that is not supported by substantial evidence is not established as fact. You may want to read the APA and Zurko.

    “Further, you could tell what I was talking about anyway.”

    Tell that to your law professors after you get your first semester grades.

  15. 266

    “If you have a case no. hit us up, unless you’re anon on here. I don’t really see why attorney’s would go anon on here, but whatev.”

    I believe that my writings here involve topics I would not broach with the examiners I deal with, nor is my style of presentation here the same as in my formal dealings with the Office. However, I wouldn’t want an examiner to form an off-base opinion of me based on my postings here and have that opinion taint our official dealings.

  16. 265

    “I do take exception to the unsupported assertion that [say, copper oxide] and Colorant X are functional equivalents.” That my friend would fall under esoteric at the least to my chemically untrained mind, barring him relying on personal exp, with an affidavit it would be improper to have taken notice, unless I’m just so far from POSITA in chem that I wouldn’t know. It would seem to be very valid to traverse that as being esoteric notice improperly taken. You’ll likely win that appeal, don’t sweat it. I hope that wasn’t just a dep though…

    This however, while pertaining to one of your RL cases, is nowhere near the amount nor type of basic sht I see in my cases day in and day out that aren’t in every last reference spelled out for POSHITA reading it. Trust me when I say the examples above are a very close fit for stuff I see day in day out.

    Oh, and please, don’t use misquotes from Zurko (it’s so cliche), everyone knows by now that unless he is using his notice as the Basis of the rejection, (i.e. the equiv of a primary ref) then Zurko is not applicable and it doesn’t sound like your case has that going on, unless perhaps you’ve got all this stuff in the ind.

    One big question comes to mind though, have you asked him yet if there’s anything that he feels you might be overlooking in your analysis, why it would be different, and does he suggest anything for you to do differently? If not, I would suggest that before full blown appealing. Let us know how it turns out. If you have a case no. hit us up, unless you’re anon on here. I don’t really see why attorney’s would go anon on here, but whatev.

    One last thing though, I’m pretty sure that functionally equivalent

    You’re right pds. Even typing fast this has become too much.

    ^

    That was what I had written, then I remembered something about a thing I never use. He didn’t take notice because he’s “making a prima facie case of equivalence” See MPEP 2183. In that case, you’re probably boned without a 132. From what you’ve told me it seems like all you put in the claim was probably a. a function b. something that was not excluded by any explicit definition in the spec for an equiv and c. is an equivalent of the mean or step plus function limitation (or else the examiner wouldn’t have used this section). If your only difference is the being difficult to bring in solution, if you don’t have that in the claim you’re very likely boned, even if like you say, POSITA wouldn’t have in a million years considered using it. Sorry. All you can do now is met the burden of proof of non-equivalence. If I were you, I’d put in some stuff about the delivery of the thing in the solution in the claim and get an allowance, or use 132, but its up to you esp. since I don’t really know the case.

    In any case, don’t ruin our Off. notice convo with your structural equivs hijacking (lol). They’re totally different monsters with totally different ways of overcoming them.

    I’m outta hea yos.

  17. 264

    And Dennis, my apologies for participating in this massive threadjack.

    I do have a case with very similar reasoning on appeal, but I’ve not yet received the Examiner’s Answer Brief. Looking at your data, I’m still optimistic despite it originating in 1700. Here’s hoping I don’t get “pwnt in the face”, as the kids call it.

  18. 263

    Your flashlight blub/LED example is a poor in relation to “RL”. Let’s go with one on my docket right now:

    Invention pertains to novel incorporation of a colorant into a plastic. The colorant, Colorant X, is a large molecule bristling with reactive groups and difficult to bring into solution unless some fairly harsh solvents are employed. It produces a very attractive greenish hue, though. (Conceptually, I am reminded of a certain former girlfriend.)

    The examiner asserts — not but does not take “official notice” — that Colorant X and [say, copper oxide] are functional equivalents in the colorant art. For our purposes, we can assume no difference if the examiner HAD used the magic words and formally taken Official Notice in the USPTO-prescribed manner. The examiner does not say why or in what context they’d be functional equivalents, why anyone might view them as such, or why a PHOSITA in this particular art niche might view them as such. [Say, copper oxide] *is* disclosed in a prior reference for coloring a plastic item.

    Clearly, I’m not about to argue that [say, copper oxide] wasn’t known in my art; it was. I do take exception to the unsupported assertion that [say, copper oxide] and Colorant X are functional equivalents. (Note that I’m still in the realm of what the examiner asserted was FACT; I’ve not yet reached the readily-substituted reasoning underlying his obviousness conclusion.) I’m not arguing against the obviousness per se — I’m arguing against the assertion of functional equivalence. The examiner stated only that they were functional equivalents, meaning that they were seen by the PHOSITA as readily interchangeable. That asserted fact is completely wrong. Sadly, I think the examiner knows that in his chemically-trained heart … but I suspect what he knows to be true chemically does not comport with the marching orders he’s been given re: forming rejections.

    (For those few wondering, I’ll just get a 132 declaration that (a) they are not functionally equivalent in this art, and (b) PHOSITA would never, ever, EVER contemplate Colorant X as a ready substitute for [say, copper oxide], reciting myriad chemical reasons why not. Even if I dig my heels in on the Notice-that-isn’t-Official, the case stays with this examiner until it’s disposed of … and a PO’ed examiner is even less my friend. Also, I’m a repeat player with a small cadre of examiners, so taking the diplomatic/pragmatic path goes a long way.)

  19. 262

    6K

    The time you’ve spent on this thread, you could have researched and provided evidence for every “Offial Notice” you’ve ever taken in your career.

    Your buttons are easily pushed.

  20. 261

    My top reply didn’t come out well thanks to this system, I’m not retyping it. Suffice to say all the info is pertinent, all the factuals are fulfilled, and notice is taken to establish a fact. Your arguments to anything other than the notice taken are not what I’m discussing anyway, and you well know it. You just love your straw men.

  21. 260

    “of course nobody is going to come back and argue that LED’s aren’t well known.” That’s right, nobody will traverse my official notices, because they are true facts and not the conclusion of obviousness based thereon. They would traverse my conclusions of obviousness, one would think, but I have only had one do so yet, and it is a weak traversal of my conclusion of obviousness having to do with timing, it will not suffice to get him off the hook in that case. And they will also try requesting an affidavit, asserting that I am relying on my personal knowledge (that I gained in a lab, work exp, etc that is Not available to the public) rather than knowledge I know to be common (i.e. knowledge that is common to publications available to the public) because it is the only thing they can do, there is no room to traverse the conclusion of obviousness, and certainly not of the noticed fact. So, such a request will not avail them. And again, I’m not stupd enough to use it when there are really good traversals against it, I can usually think of them just as well as you attorney’s can. In those cases if he traverses the finding of obviousness where I used Off. notice, then fine, he may be right, and it may well be patentable, pending a search of the thing indicated clearly in his traversal I’d allow an ind. with it in it.

    Let’s be clear though, I’m not putting LED’s in incubators (I don’t know if that would be innappropriate or not, but it seems that it wouldn’t be appropriate), just as shown above I’m taking LED’s to put in flashlights (so so obvious combination) or putting copper wires in a wiring scheme (VERY obvious combination).

    As to my ability to write a sentence, you should know that the sentences that I’m writing here are largely typed quickly and without any regard to sounding wonderful, I’m not being paid to type you an action right now. Further, you could tell what I was talking about anyway. I do however have an action to go finish up for someone else right now though.

    If you have any further arguments, Please address them to the taking of notice, and Not the Subsequent conclusion of obviousness. That is not under discussion here, or at least it’s not under discussion by me anymore, I tire of it. Your pertinence discussions etc. only lend credence to my claims that I’m awesome because all I get back are “Hur, give us an affidavit” because I locked them up so tight with the factual statement that’s all they can do. This last guy literally chucked the kitchen sink at me (3+ pages) because I used his Background section for one minor part and noticed one other part (all in the last dep). Guess what he did everything but? Disclaim that he was referring to prior art in his Background section, adequately traverse the notice and convincingly traverse the obviousness conclusion. He literally typed out 3 pages of fluff heeing and hawing. I kind of like this attorney, I work with him a lot, so I’m considering getting him a ref. anyway. Even so, I’m not letting him off the Background until he makes a statement to the effect that he was indeed not referring to the prior art, and his argument to the obviousness is going to have to get a Lot better.

    Oh, and JD, that’s a nice Straw Man collection you have up there.

  22. 259

    Also, fyi, I’m not “concluding” anything when “The examiner takes Official notice that using LED’s as light producing elements is well known”, I am rather Stating A Fact. I did not say “Well, me and Dan and Bob down the hallway think this is obvious, therefore it is common knowledge”. I did not say to myself “well, I learned this in school so all of my classmates know this as well”. I say to myself “This subject matter is available to the public and widely known and is thereby By Definition common knowledge” not “and is thereby common knowledge”. Realizing that something is by definition something else is not a conclusion, but a finding.

  23. 258

    Again, despite your arguments towards pertinence etc., you seem to fail to see the difference in traversing the obviousness conclusion and in traversing the official notice (statement) of a fact. Let me make this clear to you JD if indeed you don’t get it, taking official notice IS NOT reaching a conclusion of obviousness it is however stating a commonly known fact. It is also not the combination of both of the steps of stating a fact and then concluding obviousness. Got that? Nothing else. AFTER we have taken notice we may then later in the action base a conclusion of obviousness on the stated fact as I just did above.

  24. 257

    JD replies: Why yes nobody will traverse your notice taken, but but you still don’t make a case of obviousness because you don’t resolve the factual’s because your fact isn’t pertinent!

    I concur with you JD, if we saw the above examples in a vacuum, but lets go through a more detailed example more akin to what happens IRL showing the factual inquries (that aren’t even strictly required See KSR. But I use anyway) being resolved.

    The spec describes a flashlight in the shape of a purse (and functioning as a purse) using an LED as the “light producing element”. Who et al. teaches a flashlight in the shape of a purse (and functioning as a purse) using an old light bulb.

    Claim 3 is rejected under USC 103(a) as being unpatentable over Who et al. (“Who” US 9999999, patented 01/01/1985).

    As to claim 3, Who shows the flashlight design of claim 1 above, but fails to show using an LED as the light producing element. (

  25. 256

    I never stop arguing. You should know that by now.

    Here’s what your missing (in addition to about a million other things that I don’t have time for in this post): your taking Official notice “that feature x is well known” fails to resolve the factual inquires you’re required to determine.

    You are required to determine 1)the scope and content of the prior art, 2) the differences between the prior art, and 3) the level of skill in the art. (I’m leaving out 4) secondary considerations as they are not relevant to the taking of Official notice.)

    When you conclude, “The examiner takes Official notice that LED’s are well known” you have failed to resolve the 3 factual inquires. What is the scope and content of the prior art? What is the prior art? It is the pertinent prior art. You might want to re-read 35 USC 103(a), i.e. the law. Your notice that “LED’s are well known” may not be so when you actually consider the PERTINENT prior art, for example the incubator art, to use Clive’s example. Because you have failed to correctly determine the scope and content of the pertinent prior art, and the differences between ther pertinent prior art, and the level of ordinary skill in the pertinent prior art, your taking of Official notice is bullsh#t.

    So when you make a half-a$$ed statement like, “The examiner takes Official notice that LED’s are well known,” of course nobody is going to come back and argue that LED’s aren’t well known. They don’t have to. Because your attempt to resolve the 3 factual inquires with some general statement as to what is “well known,” without any effort to address the pertinent art, means you’ve failed to make a prima facie case as you haven’t properly resolved the factual questions.

    It’s very similar to what I see with arguments regarding non-analogous art. The examiner makes a ridiculously broad assertion like, “Applicant’s field of endeavor is inventing, therefore the reference is analogous.” Complete nonsense.

    “It’s true that it is good practice to do such, but it would hardly be proper for them to not final you on the next action (if such a thing were going to happen other than depending on that notice taken) since you were aware of the grounds of rejection.”

    I don’t care what you get on the LSAT, if this is any indication of your ability to write a coherent sentence, you are in big trouble.

  26. 255

    Oh, my bad, pds, I missed you:

    “Burden of proof, evidence, prima facie case, when the burden is shifted …. all of these are concepts one deals with in law school and as an attorney. However, these are concepts that the average examiner has problems with, as you evidence every day on this board. ”

    No, I understand them very, very well thanks. I also understand very very well that you are refusing to believe that there has been a changing of the gaurd when it comes to what substantial evidence in fact is. Sorry.

    Fyi, a good indication of something I “know” is common knowledge is something that was taught to me, and a room full of other people called “classmates” most of whom are all POSITA as well. There was no “conclusion” to make. If I had to make a “conclusion” then the fact would almost of necessity have been esoteric, and would be improper to take notice about in the first place. The personal knowledge clause, as I believe I have made clear, relates to personal experience you have working in your field that you did not publish or otherwise make well known to others in your field. That is why such instances of this being used are so rare, the likelihood that someone would submit an application to an examiner that worked specifically in that guys niche doing exactly the same thing as he did is very low. In essence, the personal knowledge clause is to take notice of something that might be a bit esoteric (thus not being “common knowledge” which is what notice is usually taken of, but it nonetheless being something you know has been done before i.e. “old in the art” because you did it) etc. and would not be appropriate to take notice of otherwise. That is the ONLY time an affidavit is required. Commit this to memory, lest a few examiners with half a brain take you to the board and bump our affirmance rate before you understand this not hard to handle concept.

    I used some parenthesis for you, I hope you can understand it now. Anyway, if you don’t understand it by now, I’m sorry, I don’t think I can teach you any more straight-forwardly. Just seeing JD et al. stop arguing should probably be enough of an indication to you that I’m spot on. They are your peers so far as I understand. Have a hard head all you like, it’s your time/money to spend on an appeal.

  27. 254

    You’re simply not getting it. Oh well. There’s some bourbon waiting for me at home.

  28. 253

    “but that the well-known element is a poor fit and/or had to be heavily adapted to work with the other elements of the invention”

    Then say that on the record and you’re golden. Oh, and be sure you told what those heavy adaptations made by your client were in your spec. And maybe even put some in the claims? But be forwarned, you’re traversing the conclusion of obviousness, not the Off notice taken of the fact. As such, you may well want to make that clear in your action lest the examiner (louse that he is) overlook that and final you anyway. Remember, you’re likely talking about a dep as well, so I don’t know how you personally handle having allowable matter in a dep formerly improperly rejected.

    Be clear JD, you if you are traversing the “use” of something that was only taken on notice to exist, then you are correct, you will be traversing the notice taken as being insufficient evidence to base a conclusion of obviousness on. You’re still not traversing the notice taken. You’re traversing the conclusion based on the fact, since the fact is insufficient to base such a conclusion upon. However, that said, you and I both know that that’s going to be a tough sell in very many circumstances. Though, as brought up, there are some where it would be appropriate.

    I’m not too sure if I agree on the thing about calling them out on not using the words “official notice”. It’s true that it is good practice to do such, but it would hardly be proper for them to not final you on the next action (if such a thing were going to happen other than depending on that notice taken) since you were aware of the grounds of rejection. It would be like leaving out saying 2 limitations that are blatantly present in the reference in your discussion and limitation by limitation matching. Sure, he may have forgotten to put them in, but, you are made very aware of the basis of the rejection.

    On the subject of the using the new KSR stuff like that, well, I don’t know how to help you guys, I see their point of view, and I see yours. You say it’s improperly interpreted, but in all honesty, it’s not. KSR lowered the bar significantly for the examiners making a prima case, contrary to what you may wish to believe. That said, the only thing that does is shift the burden of proof to you. Show them why it’s not so obvious and you’re golden.

    I’m through with this subject for now though, it was good chatting, but after having thoroughly discussed it, and, I believe, having come out clearly in the top position that’s it for me. Funny enough, I just got another request for an affidavit …

  29. 252

    DJR,

    Agreed. But it’s not me that you have to worry about using you as an example. It’s your friends in PTO (mis)management.

    MVS,

    It’s 5:00 PM somewhere. I’ve been indulging in some 10 year old Old Rip Van Winkle bourbon lately. (Non-duty hours, of course.) It’s a steal at $22/bottle. I highly recommend it.

  30. 251

    “JohnDarling”,

    I think I may need a drink & it’s barely past noon! I actually AGREE with what you said @ 11:40am regarding the taking of notice without the examiner actually saying it.

    This is bad & sloppy examining & they should be called on it. They think that if they do not say “Official Notice” that they have a better chance of getting the case signed. For THAT instance, I would agree that calling them on it & the record not showing it IS a legitimate response. Also, the examiner (and maybe the attorney, also) may not realize it, but based upon what I have been told (as well as what I have read) if the examiner did not explicitly state that they were taking notice then they loose the “protections” of 2144.03. I would say that if they add a new reference to the rejection to show it they could not make it final.

    MVS

  31. 250

    JD,
    No, I do not think that I, as in me personally, need more time. That is evidenced by my production. However, there are plenty of people here that do. I have an officemate that struggles to get 100% despite being a good examiner, hard worker, and working voluntary OT. Please do not use above average workers as an example for justifying keeping production where it is for everyone else. I work my a$$ off to get 130%, and just because I can do it, that doesn’t mean that everyone else can. I don’t know, I may have been lucky in getting a favorable art. There are people here who work in art areas that didn’t even exist, or were in their infancy in 1976.

  32. 249

    Clive,

    What you are experiencing is the use of Official notice without the examiner actually invoking it. I also get that “well known” rejection all the time. I just reply, “It appears the examiner is relying on Official notice without actually stating that Official notice is being taken. Regardless of the examiner’s basis, there is no substantial evidence support provided for the allegedly well known feature.”

    This is why the PTO should just prohibit the use of Official notice. What it leads to is exactly the kind of short circuit analysis you talk about in your example. “Well, that feature’s well known, therefore it must be obvious to use it.”

    Unfortunately, according to some “experts,” there is no way to traverse such nonsense without committing inequitable conduct.

  33. 248

    I may well be wrong in my quick analysis but frankly, I’m going to need to see a pass/fail grade from someone whose opinion I respect before I can know for sure.

    Happily, I don’t get official notices in my office actions. Unhappily, what I tend to get is:

    “The [delete this part] use of LEDs is old and well known in the illumination art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute an LED for the light source in the system of ***. [delete this part].”

    Not official notice, not supported by any substantial evidence. Sometimes it really is true (and unlike pds, I don’t traverse it in those cases), and sometimes it seemingly springs from the examiner’s keyboard as a convenient bridge between what art he does have and the obviousness conclusion he desires to reach. Perhaps these examiners have misunderstood KSR to mean they need only show that every element of the claimed invention existed before the filing date, regardless of whether they were ever used together or even are suitable for combination.

    More generally, though (and germane to the “QQ some more, lawyer” characterization), it may well be that the noticed fact is true in a vacuum, but that the well-known element is a poor fit and/or had to be heavily adapted to work with the other elements of the invention. Using the substitution of LEDs for incandescents as an example, LEDs also are notorious for low light output, low heat output, and at narrower wavelengths. If the light formerly used had to be bright and/or broad-spectrum, utilization of LEDs may or may not be an obvious substitution. If one has an egg incubator that relies on the illumination *and the heat* generated by an incandescent light source, halogen source substitutions likely are obvious but LED source substitutions likely are not. As always, context is important.

  34. 247

    rce4me,

    Thanks for the answer.

    Unfortunately, I don’t see PTO (mis)management giving you any more time.

  35. 246

    @JohnDarling

    Not to speak for DJR but I’m a GS-11 (GS-12 in April) with ~105% production putting in 10-20+ hours of voluntary overtime per bi-week in order to properly do my job and present reasonable, quality work. And yes, I think that more hours/bd are necessary to produce quality work (at least in my art).

    @DJR

    I’ve only used Official Notice roughly 3 times in my 3 years at the office for similar reasons (SPE did not sign any actions relying on Official Notice)

  36. 245

    “Actually, I’m a GS-11 (GS-12 in May) with 130% prduction.”

    So are you one of those who thinks you need more time?

  37. 244

    E6k,
    Actually, I’m a GS-11 (GS-12 in May) with 130% prduction. Trust me, I’m far closer to your position than JD or pds. I’m personally not against official notice, but my SPE doesn’t like it, so I learned to get by without it. Also, I learned a long time ago that attorneys like to play dumb. So, I just accept the fact that the attorney will most likely force me to find some proof for him anyway (even though I know it, I know that he knows it, and that any kid in grade school would know it), so I usually just find the ref earlier rather than later.

  38. 243

    I agree pds, there is a big difference, and the big difference is the motivation. If however I lay down the smacketh with a great motivation, you my friend have litte recourse but to bring up secondary considerations or the ol’ “but there’s things that teach away from it too” arguments (or go the ineq. conduct route and state a false non-factual reason as to why my fact would be false). That’s fine, you can bring them up all day long, but understand that the notice of the fact is now taken as fact, you are now traversing the 103 “conclusion of obviousness” portion and not the fact itself which will be with you on the record for the rest of the case as a fact. Your options are, a. disprove the fact (i.e. kill the notice) or b. present a good argument as to why it is unreasonable to combine them, aka teaching away, secondary consideration “long felt need” etc. (i.e. fight the conclusion of obviousness). Refuse to disprove the fact at your own risk. That is, if it can be disproved. Also, refuse to find a reference teaching away from my fact at your own risk.

    This is why they’re paying you the big $, let’s have an argument on the record. Convince me. Trust me, I’m much easier to convince than the board is going to be.

    Oh, and trust me, my inherency arguments got nothing on my Implict arguments ;) Remember dear sir, explicit OR implicit. In my art, that counts for a lot. That however is something I VERY rarely even get a comment on, much less a real argument.

    Hmmm, let me see if I can motivate the LCD example, One is motivated by the want to save power and/or space at the same time as providing a display means.

    How’d I do? LCD’s use less power and/or save more space than CRT’s amirite?

    5 secs later straight from world of pwnage forums (no less lol) “LCD = Small
    , sleak, larger screens, less radiation, less eye strain, and less power drainage.”

    There you have it, prima case, rock solid, though my notice would be “However the examiner takes Official Notice that it is commonplace to replace CRT’s with LCD’s” and then use the motivation above. Not that it really saved me time, I could have just found someone replacing a CRT with a LCD in this case. Some other things however, require a bit more time to find, but are still “instantly recognized” by one o ordinary skill. These are the useful times in my art. I know I hit it correctly when they fail to traverse it as not being a fact, or when they admit it is a fact, but then argue the combination.

    The funny thing? I could probably official notice every last thing (including ind) in 50% of my cases and be 100% correct on all the notices, and the attorney’s arguments would look the same as they do when I just get a reference. Except he’d throw in “The examiner official noticed my whole app OMFG SPE DO SOMETHING” at the end. Want to kill the backlog in less than 5 years? Take away the taboo on off noticing the ind. and teach the examiners when it’s appropriate to use and how to do it properly. (Assuming KSR didn’t already, which is highly up for debate)

    Good lord DJR, you make us look bad “shudder”. You better be 1 year-. Stick around, we’ll get your behind up to speed. Stop taking notice on motivations, just say the motivation. No, Off. notice does not require inherency. You seem to be missing the point of taking notice. Off notice is you the examiner making a factual statement well known to POSHITA (or only to yourself personally if you want to use an affidavit, that’s rare though, don’t do that much it would be doing an esoteric limitation that you have personal experience (i.e. in the lab etc) about). After you take notice of a fact, you then make a conclusion of obviousness, preferably with motivation. If you don’t have the motivation, I wouldn’t recommend using notice in the first place. Here’s a form paragraph for you to fill out, change the things it in as you need to.

    The examiner takes Official Notice that the use of LEDs is old and well known in the illumination art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute an LED for the light source in the system of      . One would have been motivated since LEDs are recognized in the illumination art to have many desirable advantages, including reduced size, high efficiency, low power consumption, long life, resistance to vibrations, and low heat production, over other light sources.

    ^lifted from a nice primary in lighting.

    You might modify this as:

    The examiner takes Official Notice that the use of copper as an interconnect material is old and well known in the semiconductor devices art. It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute a copper interconnect for the interconnect in the system of Primary Ref 1. One would have been motivated since copper interconnects are recognized in the semiconductor device art to have many desirable advantages, including very low resistance, and low atomic migration over other interconnects.

    Thus, you save yourself the trouble of finding the 2ndary for a copper interconnect (I usually use it for things a tiny smidgen more complicated than that, but also give better motivations). Though, you then have to put up with JD’s trying to coerce a reference out of you anyway. That is a minor annoyance at best however, as the above is rock solid. If you want to find him a ref though, it’s admirable.

    Be forwarned, do not use this on an ind. claim.

    DJR, repeat after me the lawyer mantra “traverse, traverse, traverse, argue, argue argue” this indeed is likely what spawned “reject, reject, reject”.

    Aight, I had to stop by again before I step out, now I’m def out.

  39. 242

    What I am curious about is why traverse official notice in cases where anyone of ordinary skill in the art would accept it as either inherent or ridiculously obvious? I rarely use official notice in my OAs, only occasionally using it to provide a reason to combine two refs (e.g. it would be obvious to combine a and b as it is well known that copper is a conductive material suitable for use as an electrode), with ref b in this example being a similar device to ref a, having copper as an electrode material. I can definitely see traversing the taking of official notice on more esoteric limitations. However, I don’t understand making the traversal in cases where you know you won’t win. I’m at home right now and don’t have my MPEP with me, so correct me if I’m wrong, but I don’t believe that official notice requires inherency. So, why traverse a taking of official notice that 1 day = 24 hrs (or more realistic cases, like my copper example). Yes, if you interpret a day as a sidereal day, its not exactly 24 hrs, and a day on Venus isn’t 24 hrs either, but you know full well that the examiner would be able to find a ref teaching that 1 day = 24 hrs. I realize that it should be just as easy for the examiner to find a ref in the first place, but to me, it seems like a waste of time and money for all involved to traverse official notice in the ridiculously obvious cases. By the way, here is a ref for 1 day = 24 hours.

    link to studyzone.org

    If a 4th grader would know what you are going to traverse, it just isn’t worth it.

  40. 241

    PDS argued “There is a big difference between taking official notice that “LCD is a type of display” and saying it would have been obvious to replace the CRT of the prior art with an LCD based upon official notice that both CRTs and LCDs are displays and therefore can both be used to display an image.”

    You are correct, if you read your statement very carefully. The former is what you take notice of. The later is where you need to provide your motivation why obvious. ( Or, in our post KSR world, maybe argue that it would have been obvious to try ;) ) That is the difference between the 2.

    MVS

  41. 240

    “BTW: There is a big difference between taking official notice that “LCD is a type of display” and saying it would have been obvious to replace the CRT of the prior art with an LCD based upon official notice that both CRTs and LCDs are displays and therefore can both be used to display an image.”

    You might want to re-read Leapfrog on that point . . . and KSR for that matter.

  42. 239

    6K … you need to bone up on the doctrine of inherency. Your “official notice” arguments reek of inherency arguments gone bad.

    Inherency … just like official notice … I always like to see when an examiner tries to use it since they almost never use it properly.

    BTW: There is a big difference between taking official notice that “LCD is a type of display” and saying it would have been obvious to replace the CRT of the prior art with an LCD based upon official notice that both CRTs and LCDs are displays and therefore can both be used to display an image.

  43. 238

    “By not commiting ineq conduct you will not succesfully traverse one of my notices. I make sure of this before I notice you, otherwise there was no point.”

    This represents a new high in ridiculousness. Even for you.

  44. 237

    6K: You earlier wrote …
    I respond: unfortunately the rejection of claim 2 is apparently not clear as the rejection is based not solely on personal knowledge specifically held by the examiner, but on common knowledge held by POSITA

    You then write …..
    We’re not in the business of “concluding” what is common knowledge, we either know it is, or we don’t know it is, there is no “conclusion” to be made as to that.

    So, on one hand, you state that “common knowledge” is based upon your personal knowledge (i.e., “we either know it is, or we don’t know it is”) yet if someone traversed under 37 CFR 1.104(d)(2) (i.e., “[w]hen a rejection in an application is based on facts within the personal knowledge of an employee”), you say that such a traversal isn’t proper.

    It would be fun to take you to the BPAI. Oh, and if someone did traverse your taking Official Notice (and even if you didn’t think it was proper) and you didn’t provide any evidence for the BPAI to consider in support of your Office Notice, then expect to be slammed. Unlike you, the BPAI understands the APA and the requirement for substantial evidence to support an agency decision.

    “Also FYI pds, while the MPEP doesn’t have the force of law, 37 CFR 1.111(b) does.”
    Good luck in using that to get around your burden of providing substantial evidence.

    “By not commiting ineq conduct you will not succesfully traverse one of my notices.”
    Again, you don’t understand inequitable conduct and/or the initial burden placed on the examiner. I can argue that an examiner has not established a prima facie case of anticipation/obviousness/indefiniteness/etc. without ever characterizing what the reference does or does not teach. If I’m not characterizing the reference, how can I be making a misstatement of fact? These are tried and true tactics that have been employed …. probably since before you were born. BTW: There is a significant difference between arguing “the examiner has failed to establish that reference XXXX disclosure feature GG” and arguing “feature GG is not disclosed by reference XXXX.”

    Burden of proof, evidence, prima facie case, when the burden is shifted …. all of these are concepts one deals with in law school and as an attorney. However, these are concepts that the average examiner has problems with, as you evidence every day on this board.

  45. 236

    ex6K purported that “Anyway, in bigger news, today I just heard about a spe demoting himself to primary so he can hotel. Pretty sad when your mgmt is DEMOTING themselves. I hear this isn’t even nearly the first time this has happened. Why would people want to do such a thing if the SPE gravy train is so wonderful?”

    Actually, I know of a few that have done that. Can not blame them. I was that close (hold fingers together so that only a few atoms are between them) to doing the same thing. I was lucky in that the TC worked with me & I was able to go to a position more to my liking (as well as beliefs in the correct way of doing things) plus I can hotel. I would never go back to being a SPE. Not worth the non-gravy train headaches.

    MVS

  46. 235

    Oh and pds, your problem appears to be that you believe that a statement cannot be factual “It is commonly held that 24 hours make up a day” or “Screens are commonly LCD in today’s market” because of technicalities that lead to the possibility of making other factual statements “There are reasons that one would not consider a day to be 24 hours”. That is irrelevant. If I make a factual statement, in light of which your claim is concluded to be obvious, the only thing that will save you is explaining why my statement was not factual. Get it? Stating other facts DOES NOT CHANGE the fact stated by the examiner, unless they stand contrary, not supplementary, to the originally stated fact.

    My demand for evidence is itself evidence that the “fact” is not admitted. Get it?

    JD, yeah, I get it, unfortunately, that is irrelevant. Your not admitting that my factual statement is true, does not point out why there are any specific errors in my factual statement. Inadequate traverse. Get it? Though on the other hand, I’m sorry you get so many bad takings of notice. The real problem is they don’t teach it well, they make you pick it up either a. on your own, or b. from a primary. People that get it from a primary in my experience use it better. I’ll be honest, I was given a nice little form paragraph that I modified for my own purposes or I might leave one of the parts out myself in a hurry. If they gave even that FP out there would be fewer bad notices given out.

    Anyway, I’m out for tonight got another action to do. Hah, a one liner as the ind. Gotta love em. One google search, bam, ind. is gone. Now for the deps…

  47. 234

    Oh and come on pds, “I wouldn’t hesitate to traverse Official Notice that there is 24 hours in a day” just blatantly shows that you don’t understand that adequately traversing it will involve “arguing that there isn’t 24 hours in a day” in order to specifically point out the supposed error of the examiners factual statement. Please, give us an example wording of such a response to :

    However, the examiner takes official notice that it is commonly held that there are 24 hours in a day. Therefore it would be obvious to one of ordinary skill in the art, at the time the invention was made, to have used 24 hours to designate the time period of a day in the alarm clock taught by Who et al. with the motivation of using an adequate representation of the time designated as a “day” in the circuitry and/or programming of the clock.

    Please, demonstrate for us your LEET lawyer skillz on how to force the examiner to provide you with a reference so that we may tear your response limb from limb. Complete with copy pasta from the MPEP if you will be so kind. Also, try to do so without perpetrating ineq. conduct, just for kicks.

    Anyway, in bigger news, today I just heard about a spe demoting himself to primary so he can hotel. Pretty sad when your mgmt is DEMOTING themselves. I hear this isn’t even nearly the first time this has happened. Why would people want to do such a thing if the SPE gravy train is so wonderful?

    JD: “Why would an applicant request that evidence?” I know why they would, it’s irrelevant. For one, they don’t need to anymore, because when they fail to do anything but request a reference the fact is then taken as fact, the FOAM now is the evidence. Asking politely MIGHT get you a reference anyway if you spur the examiner to be generous and disregard what he SHOULD do. But then again, a guy like you that believes in doing all the shoulds wouldn’t want them to do that. Also, you’ve stumbled upon why the off. notice is open to abuse, if I notice you, you fail to respond adequate, there may have been some “teaching away” or etc. etc. to consider, but guess what? Mgmt cares less now, now it’s your responsibility to find that ref “teaching away” and submit it as evidence. That’s the whole point of the way things are working now, shifting yet more of the search for “questionable” limitations to the applicant rather than the examiner, or letting the limitations die. Again, this is specifically what was told to us, if you have some little thing like that you want us to see, you show it, not us show you then you point it out and show us back.

    And yes, I know who the TQAS’s are briefed by, I just called you out like you’re so fond of calling examiners out, on the specifics of the wording of the question: Who briefs you? I answer: The TQAS’s. I did this, and will continue to do so to you, so that one day you might delawyerise yourself a bit and realize the futility of such inanity and stop doing it. (Unless of course money is involved in which case you should always do dumb sht like that to slow down the process and cost everyone more $ and time amirite? btw, that’s one of the problems in the patent system today, and what mgmt is trying to combat).

    “Your comments about inequitable conduct demonstrate that you have zero understanding of that concept.”

    HAHAHAAHAHAHAHAHAAHAHAHAHAHA, dream on. Lets at least wait until next week for me to have to blow up more of your battleships ok? Oh, here “inequitable conduct, which includes the following: (a) failure to submit prior art likely to be deemed relevant; (b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references; (c) misstatements of fact”. By not commiting ineq conduct you will not succesfully traverse one of my notices. I make sure of this before I notice you, otherwise there was no point.

    Bloom- while JD is sort of right (the ignoring parts that aren’t afforded patentable weight = promo), I have had to write 4 or 5 2nd non’s, and really, the only reason to ever write a 2nd non is not making sure all the limitations were met. So, if you ever get a 2nd non, know that that examiner “got in touble”. “what trouble” you might ask, well, if you do it too often the Primary looking over your work will start to kick things back to you before they get sent out causing major production issues, and if you do it way too often your workflow will overwhelm you and you will eventually be fired. No, it’s not big trouble, but then again, it’s not big trouble for the lawyer either.

    Hey, sorry my post was late, wrote it awhile ago didn’t put in the secret code so this and the above posts will be a bit out of line with some of the above posts. But yeah, JD, you just keep on traversing forgetting to include the “why” and we’ll just keep on sending you finals with our previous statement of fact now official evidence of the fact.

  48. 233

    Please, more attorney’s chime in and display for us your bold faced misinterpretations of the section on Off. Notice. I know it’s a tough read, but come on, you’re supposed to be the best of the best, not 9th grade readers with a propensity to qq and make excuses, and squirm around after you have the evidence presented the contrary of your position.

    Oh, and pds, “the board will smack you down if I don’t adequately traverse your off. notice” HAHAHAHAHAHAHAHAAHAHA, good one. If by that you mean, write Affirmed at the bottom, yeah, I agree, they’ll smack me right down to an RCE. FYI, the but, but’s are going to be you saying “I used all the magic words but, but failed to specifically point out the supposed errors in the examiner’s action, oh, I just lost, nevermind”. Specifically point out the reason, or your crppy appeal is going straight to helping our affirmance percentage. Don’t have anything to specifically point out? Don’t waste our time. Want to point out something stupd that makes you look stupd for saying it? Wait till you get a stupd response back addressing the same, this time with “FINAL” written below it. Who knows, if you make us laugh hard enough, we might cite you a reference. Oh, and you’re right, arguing something stupd (like stating that the fact that nonpaper envelopes exist somehow shows that it is not a fact that it is common knowledge that envelopes are made of paper, a statement you notice does not say envelopes are ALWAYS made of paper) above isn’t malpractice, and it’s not ineq. conduct, it’s not addressing the issue, which, btw, will also be deemed not adequate because you didn’t point out any errors in the examiners factual statement, you merely presented another factual statement. A practice that while cute, is off topic and will be held as such. Engage in it at your own peril should the examiner be on his toes that day. Also FYI pds, while the MPEP doesn’t have the force of law, 37 CFR 1.111(b) does.

  49. 232

    “is not proper Official Notice to begin with.” Fen, I’m going to presume you’re not spending much time on this, because otherwise I’m going to have to accuse you of being just plain stupd, and I would hat e to do that. Here, I’ll give you a hint for your further studies into this matter so that you don’t end up failing to adequately traverse, this: “sound technical and scientific reasoning to support his or her conclusion of common knowledge” is not interpreted as “sound technical and scientific reasoning to support his deeming x a fact which is common knowledge” it is interpreted properly as: “sound technical and scientific reasoning to support his conclusion that the subject matter of the claim is common knowledge”, look up the case if you need convincing. We’re not in the business of “concluding” what is common knowledge, we either know it is, or we don’t know it is, there is no “conclusion” to be made as to that. The “conclusion” to be made is the legal conclusion of obviousness, which as JD points out, must be based on the “fact” which must be established (not concluded).

  50. 231

    “I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice.”

    Precisely why I don’t get any real traversals back. The Attorney’s I’m dealing with usually aren’t complete retards. If they traverse it properly it will be something of substance. Except change “malpractice” to “ineq. con.”

  51. 230

    “outputting video to a display” and one dependent claim says “the display is a CRT”, while another says it is an LCD and another dependent says is a plasma display. The reference (a 102 for claim 1). For the 1st dependent the reference is a 102 since it uses a CRT rather than an LCD or plasma. Personally, I would take notice (with explanation & motivation not included here) that using either a LCD or plasma in place of the CRT of the reference is well known and conventional.

    It all depends …. a CRT is an analog output. On the contrary, a PDP/LCD are digital outputs. The “outputting video to a display” that may work for a CRT may not be appropriate for a LCD … or so says common knowledge before applicant’s invention. It really depends upon the facts and how they are being used.

    “Although I generally agree with pds, I wouldn’t traverse taking notice of 24 hours in a day.”
    I used that example because, at first blush …. “hey, everybody knows there are 24 hours in a day.” However, it all depends upon how you define “day” Is it the time it takes for the Earth to revolve around the sun divided by 365? Then the answer is no. A sidereal day (i.e., a single rotation of the Earth with respect to the distant stars) is 23.934 solar hours. A day is 24 hours long if it is based upon 86,400 SI seconds, with each second defined as the duration of 9,192,631,770 periods of the radiation corresponding to the transition between the two hyperfine levels of the ground state of the caesium-133 atom.

    In certain instances, whether or not a day is not precisely 24 hours may be relevant. In other instances, it may not be. Regardless, the point is that even “well known facts” are not necessarily true.

  52. 229

    “JohnDarling”,
    Guess we will have to disagree. Yes, it is your right to challenge the taking of notice. No problem. And I can agree with the legal underpinnings that you want to traverse everything to protect you client for litigation. Even you traversing puts you on record of not agreeing that “X” is not well known. Still OK. I just disagree that simply stating that you disagree meets the burden stated in the MPEP.

    Your interpretation of the quote “stating why the noticed fact is not considered to be common knowledge or well-known in the art” seems to be forgetting the word “WHY” in there.

    It does not state “an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating the noticed fact is not considered to be common knowledge or well-known in the art”, which seems to be the way you are interpreting it.

    It states “an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating WHY the noticed fact is not considered to be common knowledge or well-known in the art”

    Your response of “It’s not considered to be common knowledge because the examiner has not produced any evidence that it’s common knowledge. If it is, in fact, common knowledge, the examiner should have no trouble producing such evidence.” does not address the WHY part that is required. Sorry…

    Now what I used to do (& encouraged my examiners to do) was tell the applicant that their traversal was not sufficient to meet the requirements of 2144.03 BUT ALSO to cite (not apply) a reference that supports the taking of notice. That usually stops the attorney cold. And I have been upheld at the Board when doing such (whether it is because the attorney knew they had a losing case on that point or the Board agreed with the notice, I do not know, off hand). That way, we have covered ourselves & you have done what you need to to cover yourself.

    As an example:
    if I have a case where claim 1 says (at the end)
    “outputting video to a display” and one dependent claim says “the display is a CRT”, while another says it is an LCD and another dependent says is a plasma display. The reference (a 102 for claim 1). For the 1st dependent the reference is a 102 since it uses a CRT rather than an LCD or plasma. Personally, I would take notice (with explanation & motivation not included here) that using either a LCD or plasma in place of the CRT of the reference is well known and conventional.
    Now, is that really something you think is worth fighting for and the examiner showing that an LCD or plasma is conventional. (I can take pictures as Best but if you want :) )
    And is simply saying that they are not conventional & well known establish that they are not so well known that anyone with enough money can buy one? No.

    It seems that this would just be a waste of everyone’s time & effort and take away from what the invention really is. (And these are the types of things that I am talking about taking notice on. Not things that are esoteric in the art or the point of novelty.)

    As to the request about what you did, the answer is really simple. I just want to know if you actually practiced as an examiner what you preach that examiners should be doing OR if you are a hypocrite that says everyone should do something but would not do it themselves. Much like soon-to-be former governor Spitzer. It goes to credibility one way or another.

    MVS

    PS, I know who LL is. We worked in the same TC before I moved positions. Part of the reasons I picked the name. Sometimes we agree; sometimes not.

  53. 228

    MVS,

    I didn’t say your reading of 2144.03 was wrong, I said it was misplaced. :-)

    Saying “it is not in the record” is not nonsense. It is my job to force you to provide evidence of your “findings” of fact. I explained why in the previous post. Because the “evidence” you supply may help my case. See? (Of course, it may not help my case, but either way, it’s required for the consideration of the subject matter as a whole.)

    And the Fed. Cir. agrees with me. Your “findings” have to be supported by substantial evidence. And please spare me these arguments that “everybody knows that using x with y is so notoriously old and well known that nobody ever bothered to write it down.” If a feature is so “notoriously old and well known” then you can find a reference. This is the information age for Pete’s sake.

    “Or are you one of those that believe that there is no circumstance where official notice is proper? If so, did you ever take it??”

    1) I’m not opposed to the taking of Official notice. Like I said, I’ve reviewed many file histories where it was taken and not challenged. That’s the choice of the practitioner and the applicant not to challenge. Perfectly acceptable. For them. Not for me.

    Although I generally agree with pds, I wouldn’t traverse taking notice of 24 hours in a day. Or something like notice that water boils at atmospheric pressure at 212F. But that’s not what I get. I get “Examiner takes Official notice that feature x is an obvious design choice.” I swear to you, I get that several times a month. That exact wording. I must not have any OA’s coming from your AU/TC.

    2) What difference does it make if I took Official notice when I was an examiner? You’re attempting to make the same argument LL makes: Well, if JD did it when he was an examiner, then I can do it too.

    If I was a short cut takin’, law breakin’, count wh#re when I was an examiner, so what? (For the record, I was not.) Okay, so I’d be a hypocrite. Again, so what? Are we going to let all of those stock brokers that Mr. Spitzer put in jail out just because we now know that he’s a hypocrite?

    Any time you and LL wanna stop making that phony argument, feel free. Please. The rightness or wrongness of your actions is not dependent on whether I, or anybody else, did it, or is doing it. Your actions are either lawful, or they are not. You are either resolving questions of fact with substantial evidentiary support and then drawing sound legal conclusions, or you are not. If you are making up rejections that aren’t even close to prima facie because you don’t feel like issuing the application, then your actions are arbitrary and capricious and an abuse of your discretion, i.e. unlawful. You and I previously discussed an application in which that exact scenario is playing out. The examiner in that case is clearly breaking the law. He should stop it.

    BTW, when I use “you” and “your” I’m not referring to you and LL specifically, I’m referring to the examining corps in general. I have no doubts that if I called you to discuss an issue I was having with one of your examiners, I’d get a fair hearing. Now all I gotta do is figure out how to get my cases in your AU/TC.

    One more BTW, “STATING WHY THE NOTICED FACT IS NOT CONSIDERED TO BE COMMON KNOWLEDGE OR WELL-KNOWN IN THE ART” is clearly met by, “It’s not considered to be common knowledge because the examiner has not produced any evidence that it’s common knowledge. If it is, in fact, common knowledge, the examiner should have no trouble producing such evidence.”

    pds is correct on this. If I traverse your taking of Official notice on those grounds, and you pull this nonsense that my traversal is inadequate and the “fact” is taken as admitted, that ain’t gonna fly. My demand for evidence is itself evidence that the “fact” is not admitted. Get it?

  54. 227

    “johndarling”,

    WHY is our reading of 2144.03 wrong? And specifically the phrase (& I quote with emphasis added):

    “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which WOULD INCLUDE STATING WHY THE NOTICED FACT IS NOT CONSIDERED TO BE COMMON KNOWLEDGE OR WELL-KNOWN IN THE ART.”

    Simply stating “no it’s not” does not meet this criteria any more than it would when made by a 5-year old child! There is no way you can honestly say it does. You need to provide SOMETHING to support your traversal. Saying that “it is not in the record” is a nonsense argument. OF COURSE it is not in the record. If it were the examiner would not be taking official notice. Or are you one of those that believe that there is no circumstance where official notice is proper? If so, did you ever take it??

    I, personally, see no way 2144.03 can be read any other way. If you maintain that it is, I respectfully “traverse” your assertion are request that you provide actual evidence to support your position.

    MVS

  55. 226

    PDS writes:

    “These are things like a control system having a signal sent to the controller (where the control system and controller were taught, as well as some other system “communicating” with the controller,”

    What exactly did you take official notice of regarding the control system and controller? If it was that such devices exist … then OK. However, how the control system works, where it is placed, how it controls the device, and how the controller operates can vary significantly.”

    I took official notice that a signal is present when my art already taught feedback sent to a controller in a control system without specifically using applicant’s almighty patent-trend setting and cutting edge terminology “signal”. Everything was taught but the word “signal”. Response was literally: “Applicant respectfully traverses the Examiner’s Official Notice that a signal is present.”

    “As for “whatever was providing it feedback,” are you assuming that the control system was providing “feedback”? I wouldn’t make that assumption. The data being sent to the controller may be independent of the data being sent from the controller. If so, the data being sent to the controller is not feedback.”

    The claim spelled out that a signal was sent to the controller of the control system. Therefore, I didn’t have to assume anything. All I did was look for prior art in the same field showing controllers of control systems can receive feedback (“signals”) in order to control something. That’s what controllers do. They control things based on provided (usually from sensors) data.

    “”power being something that is generated from an engine”
    I know of “engines” that don’t provide power. Can you guess what they are?”

    Engines that run off fuel provide power.

    “”envelopes being made of paper”
    Really?? You need to come up with some better examples, because I’ve got some non-paper envelopes to show you.”

    Official Notice was taken that envelopes can be made of paper, not that all envelopes are paper or that envelopes can only be made of paper.

    “”I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice.”
    You really don’t know what “malpractice” involves, do you? The far better case of malpractice would be for the attorney not to traverse your Official Notice, no matter how well know your fact was. Me, I wouldn’t hesitate to traverse Official Notice that there is 24 hours in a day. Requesting factual support for a position is not inequitable conduct no matter how well-known the fact may be. I’m not arguing that there isn’t 24 hours in a day, I’m just asking that you provide evidence of that fact for the record.”

    If that is the way the IP system should be (and I’m not saying it should, just playing devil’s advocate), so be it. If that is the case, the USPTO can be one of the few Government Agencies that the concept of Administrative Official Notice doesn’t apply to. It would be pointless to be able to take Official Notice of facts such as: envelopes can be made of paper, signals are sent to controllers of control systems, engines provide power, a day has 24 hours in it, if you still have to provide evidence of such.

  56. 225

    “What exactly are the consequences for an office action that fails to address claim limitations (or fails to address some claims at all), or that clearly transitions to just making up citations after claim 3 or so?”

    Leo, I’ll tell you what the consequences are: a promotion and a bonus.

    Why do you think you see these fairly often?

    This is a serious response.

  57. 224

    Ex6k: “Maybe not make a junior prosecutor get in trouble for not properly traversing? Well, I get in trouble for not properly making sure all limitations are met, what’s the difference?”

    I’m curious – what kind of trouble? What exactly are the consequences for an office action that fails to address claim limitations (or fails to address some claims at all), or that clearly transitions to just making up citations after claim 3 or so? I see these fairly often (although I’m sure none of them were from you). Is there really any accountability for quality of office actions? This is a serious question…

  58. 223

    “True, but all he had to do was say, no, you’re wrong because x is not well known to one of ordinary skill or x would not be used for y motivation. Simple as that. Problem is, if he said that, then he’d look like a fool, and may well get hit for ineq. conduct later (and should if he did imo).”

    As pds correctly notes above, traversing the taking of Official notice is not arguing that the “fact” is not well known, it is a request to produce the evidence that establishes the fact is well known. Why would an applicant request that evidence? Because the determination of obviousness requires the consideration of the subject matter as a whole. So if the “evidence” you provide in support of the taking of Official notice also teaches directly away from the claimed invention and/or a combination with the other references in the rejection, applicant is going to argue that. Until you find a reference that doesn’t.

    Your comments about inequitable conduct demonstrate that you have zero understanding of that concept.

    Who do you think “briefs” the TQAS’s who “brief” you?

    Duh.

  59. 222

    MVS,

    I do always traverse Official notice when it is taken. More than adequately. But I have reviewed plenty of file wrappers where applicants/practitioners never even address it. That’s unfortunate. But not my problem.

    Contrary to 6k’s “understanding,” and apparently your own, in order to traverse the taking of Official Notice, applicant only has to explain why the noticed fact is not considered to be common knowledge or well-known in the art. As is clearly noted in MPEP 2144.03, the facts consituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and not amenable to the taking of official notice. That’s all I gotta say. And if I’m feeling particularly ornery, I’ll throw in that your reliance on official notice for “feature x” is not supported by any substantial evidence.

    Your reliance on 2144.03 C and Rule 111(b) are misplaced. As that section clearly states, in the absence of any demand by appellant for the examiner to produce authority for his statement, the Board will not consider the contention. In other words, if applicant demands evidence, the Board’s gotta consider applicant’s demand for evidence. As also noted in that section, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. The corrollary, of course, is that if applicant’s arguments are more than a mere allegation, and the arguments reference the taking of official notice, that is adequate.

    That section also states “[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings to satisfy the substantial evidence test.” As we all know, “must” means “must.”

    BTW, thanks for kicking back any improper taking of official notice. You should be aware that you’re the exception, and as diligent as you may be, you’re probably not able to review everything going out of your AU or TC.

  60. 221

    randomexaminer

    Good comments. I do realize that 6K’s comments are not representative of examiner’s as a whole.

    I also realize that much of what he writes is an attempt to get a rise out of us … I definitely ignore some of his more inflammatory comments. However, his comments are a good mechanism to discuss the law. Although 6K may be the most prolific writer on this board from the PTO, there are likely many examiners who read the board but do not post and many of my comments are directed to them through 6K. Although 6K may be a lost cause, I don’t want some of his inaccurate comments about the statement of the law to go uncorrected.

  61. 220

    “These are things like a control system having a signal sent to the controller (where the control system and controller were taught, as well as some other system “communicating” with the controller,”

    What exactly did you take official notice of regarding the control system and controller? If it was that such devices exist … then OK. However, how the control system works, where it is placed, how it controls the device, and how the controller operates can vary significantly.

    As for “whatever was providing it feedback,” are you assuming that the control system was providing “feedback”? I wouldn’t make that assumption. The data being sent to the controller may be independent of the data being sent from the controller. If so, the data being sent to the controller is not feedback.

    “power being something that is generated from an engine”
    I know of “engines” that don’t provide power. Can you guess what they are?

    “envelopes being made of paper”
    Really?? You need to come up with some better examples, because I’ve got some non-paper envelopes to show you.

    “I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice.”
    You really don’t know what “malpractice” involves, do you? The far better case of malpractice would be for the attorney not to traverse your Official Notice, no matter how well know your fact was. Me, I wouldn’t hesitate to traverse Official Notice that there is 24 hours in a day. Requesting factual support for a position is not inequitable conduct no matter how well-known the fact may be. I’m not arguing that there isn’t 24 hours in a day, I’m just asking that you provide evidence of that fact for the record.

    BTW: Don’t worry about me not properly traversing Official Notice. I already know the MPEP section (I cite it in my response), and I make sure that I use all the magic words. Also, remember, the MPEP is not the force of law. If you take Official Notice of something, and the applicant traverses (say in an Appeal Brief) and you don’t provide substantial evidence that supports your position, the BPAI will probably smack you down. The BPAI isn’t going to be persuaded by your argument (“but, but, but … they didn’t write the magic words …. and my SPE told me that it was OK”). Instead, the BPAI will inform you that applicant’s intent to traverse was perfectly clear and you should have provided the evidence to back up your assertions.

  62. 219

    And if one looks just a smidge higher on the page than E6k did when pulling his quote:

    “If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge. See Soli, 317 F.2d at 946, 37 USPQ at 801; Chevenard, 139 F.2d at 713, 60 USPQ at 241. The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice **>so as to adequately traverse the rejection< in the next reply after the Office action in which the common knowledge statement was made." So ... "However, the examiner takes Official notice that using [x] is old and well known in the [technical] art. It would therefor have been obvious to one of ordinary skill in the art at the time the invention was made to [employ?] [x] in the blank of Ref A." ... is not proper Official Notice to begin with. The burden therefore has not yet shifted to the applicant to traverse. How can the applicant traverse the "sound technical and scientific reasoning to support his or her conclusion of common knowledge" if it's not been "set forth explicitly"?

  63. 218

    Oh and JD, if you don’t do the “an applicant must specifically point out” part it will not avail you. So far people have been complying with my usage thus pretty well. This is the first outlier.

    “And who “briefed” you? Oh yeah, those same idiots from PTO (mis)management who wrote the continuation and claim examination rules that have been found to be unlawful.”

    Strangely enough, I don’t believe our TQAS’s have much input on those, they mainly disseminate the information.

    And no MVS I hardly think I know everything, I think that the folks around here blatantly spit in the face of the way things are done when it suits them, but expect the examiners to be as nice and sweet as your everyday southern girl. I’m merely calling out one chief amongst them for doing so, and even then, only in response to his calling out what I offered as merely a funny example. I may have suspected it would lure JD and the rest of them in to the discussion though it’s really a continuation of a conversation we were having before.

  64. 217

    MVS – thanks for the citation. Official Notice was never meant to be such a hassle – the roots in Administrative Law and further back are designed to allow time-saving measures for menial points. The problem is that some Examiners abuse Official Notice (I knew some that used this essentially as a crutch because of ridiculously low production goals 3 decades out of date), and some Applicants and their representatives abuse the ability to call an Examiner out.

    Just as some have said in this very thread that Examiners aren’t the only audience of their replies to Office Actions, Applicants and their representatives weren’t always my only audience. Sometimes I was writing things for my SPE, sometimes for the BPAI, and sometimes, in a few rare cases, I would write things into an Office Action for a court. I can recall a couple of these cases where the Official Notice I took was so well established as a benchmark level of science within that field that it would have bordered on malpractice for an Applicant’s Representative to go on record traversing the Official Notice. These are things like a control system having a signal sent to the controller (where the control system and controller were taught, as well as some other system “communicating” with the controller, and I took Official Notice that a signal was involved in the electrical communications between the controller and whatever was providing it feedback; or things like power being something that is generated from an engine; or envelopes being made of paper).

    These were all specific examples of facts I took Official Notice of that were improperly traversed by Attorneys. My strategy when that happened was to go on record and essentially state something like: “Although Applicant’s Representative has not properly traversed the Official Notice taken that envelopes are made of paper, evidence in the form of the Smith patent titled “Paper Envelope”/Johnson Technical disclosure from the year 1809 has been provided showing that such facts are indisputable. It is noted for the record that Applicant’s Representative has attempted to dispute a benchmark fact within the entire industry of paper products that envelopes are known to be made of paper.” Hopefully this makes the case if such a patent was ever granted that a court, and particularly an adverse party can show the types of arguments that the Applicant’s Representative was presenting before the USPTO.

  65. 216

    “And if they had “ordinary” skill, then they would be able to do what the ordinary inventor does … i.e., practice their art in the real world.”

    Um, I can assure you that I have ordinary skill in my art, one near the top, if not the top of my class, especially considering my specific area. I can certainly perform as one of ordinary skill in the lab or on the manufacturing floor. I can assure you that people that have been here for 20 years are not too “hands on experienced” but they’d make out ok. At the same time though, I will admit to you that some of the “worst” people from my school actually work here too. On the other hand, more of the “good” people work here than the “bad”.

    On a side note, if, according to you, what you guys submit in applications is practicing the art, then we can practice the art right here from our ivory tower with no more than a patent drafting mad libs page, literally, I’m not trying to be funny. Let’s try to remember that we function almost purely on the “intellectual” side of things, and much less so the “practical implementation” of ideas side. Even so, there are very many jobs that require such mad intellectual skill.

    “However, if you cannot find a reference(s) that establishes these “facts” within 5 minutes, then perhaps these facts aren’t as well known as you believe. You may be being a PITA etc.”

    True, but all he had to do was say, no, you’re wrong because x is not well known to one of ordinary skill or x would not be used for y motivation. Simple as that. Problem is, if he said that, then he’d look like a fool, and may well get hit for ineq. conduct later (and should if he did imo). The new mechanism, looking to you like us just being a PITA, is really us recalling the use of the “time saving” tool of Off. Notice, which had been reduced to nothing more than a “time-spent shifting” tool by the over-use of it in the past. Well, our mommies let us out of our rooms and the smack down on us has been lifted, though we have been warned if we abuse it as was done years ago it’ll be laid right back down. In the mean time, deal with it like a real man, claim things that aren’t blatantly obvious in view of well known facts, or argue.

    Oh, and tbh with you pds, I wanted to just cite him a reference, I actually started out writing back that I would be happy to cite him a reference if he properly traverses, but then I read the end of the relavent portions of the MPEP, and was reminded I “should” tell him that now what I stated is taken as fact. I didn’t make that policy btw, that’s just how it is. So what good would it do for me to cite a ref? It’s already taken as fact in the eyes of a court, what would citing a reference do except maybe make the bigcorp “inventor” sleep a little better at night? (that is if he even understands what happened) Maybe not make a junior prosecutor get in trouble for not properly traversing? Well, I get in trouble for not properly making sure all limitations are met, what’s the difference? We live and learn that way.

    Many comments I make here may lead you guys to believe that I just run buck wild with reckless abandon in my RL matters, when indeed, I’m probably one of the more conservative. Don’t take that to mean that I don’t believe there should be substantial change to the system, but I was trained that way and was just getting used to doing it that way when it was changed around. I haven’t made the switch just yet, as nobody is really pushing me to. Though, to be very honest with you, people that can’t even be bothered to make a base arguement towards some issue in order to secure a monopoly really don’t get much sympathy from me.

    “I work in an art with an expectancy of 31.6” Sweet Jesus, if I did around 2.5 cases a week I might not have a problem either, but alas, the production system is how it is. And yeah you’re right about the consume your life part, but it’s quite normal over here in my art for it to during the first promo you get (either from 9 to 11 or from 7 to 9, with 7 to 9 usually being the “worst”) this is because we’re “supposed” to do 3 amends 3 nonfinals a bi week with RCE’s thrown in for kicks and good times. What it boils down to however is writing minimum 4 amends and 5 or 6 nonfinals at the beginning of the transition, leveling out to 3 amends after awhile, and then the nonfinals dropping to 4, and then finally, dropping to the 3. Most people take another promo around the “4” time, and have the whole cycle consume them a bit again for awhile. Completely normal over here, everyone I know that went through it says the same thing. Also, sometimes I post from home while getting away from the little lady or if I can’t sleep. I get substantial kicks from besting attorney’s (and judges when possible) at their own game. Substantial. Try winning your case in court sometime on a “technicality” or merely reading the law and not being guilty when everyone is presuming you’re guilty already (judge included). You’ll leave feeling right as rain. Indeed, probably what motivates me the most to be an attorney is getting paid to win arguments. Though the law interests me as well, mainly in a “I’d like to be making them” sort of way though ;) What better way to congress than to be a lawyer?

  66. 215

    Oh, and if I do see an action where the examiner takes notice without the necessary explanation and motivation, I make sure it gets kicked back as an improper taking of notice. Or if they take notice of esoteric material or an item that is the point of invention. Those things are improper and the examiner needs to redo/correct them.

    MVS

  67. 214

    “johndarling”,

    If the examiner properly took notice (which, counter to what you preach, happens more often than once a millennium ;) I always had my examiners not only take notice, but explain WHY it was well known (give example, if possible) and provide the necessary motivation. I and many other did this. This does satisfy the requirements of 2241.03.), then your “traversal” would be properly treated as not being sufficient in accordance with MPEP and would be treated as such.

    Whether you like it or not, this IS in accordance with the law. Simply saying what you quote is just boilerplate B$ & should be treated as such.

    MVS

  68. 213

    So I cut and paste this quote from the MPEP into my response:

    It is never appropriate to rely solely on “common knowledge” in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 (“[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”). While the court explained that, “as an administrative tribunal the Board clearly has expertise in the subject matter over which it exercises jurisdiction,” it made clear that such “expertise may provide sufficient support for conclusions [only] as to peripheral issues.” Id. at 1385-86, 59 USPQ2d at 1697. As the court held in Zurko, an assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support. Id. at 1385, 59 USPQ2d at 1697.

    My traversal is “adequate” because I have informed you that your assessment of what is “basic knowledge” and/or “common sense” has ZERO substantial evidence support.

    That was tough.

  69. 212

    “johndarling”
    regarding your “discussion” with ex6k, at least for official notice, just the attorney saying that “the references of record do not show the feature so you have to show me a reference that does show it” is NOT a proper traversal of the taking of Official Notice.

    “johndarling”, I KNOW that you are smarter than this! Anyhow …

    Please see MPEP 2144.03(item C) which is reproduced completely, below, for support. A few pertinent quotes are:

    “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.”

    “A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate.”

    “If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained.” and

    “If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.”

    MPEP 2144.03(item C) states:

    C. If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding With Adequate Evidence

    To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b). See also Chevenard, 139 F.2d at 713, 60 USPQ at 241 (“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”). A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. See 37 CFR 1.104(c)(2). See also Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 (“[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings” to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual
    statements and explanation to support the finding. See 37 CFR 1.104(d)(2). If applicant does not traverse the examiner’s assertion of official notice or applicant’s
    traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or
    that the traverse was inadequate. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.”

    MVS

  70. 211

    “randomexaminer”

    re: remarks to/about ex6K –

    AMEN, brother! I agree with completely. Be nice if he listens & not think that he knows it all in 18 months.

    MVS

  71. 210

    “Like I told you, we were specifically briefed that we are now no longer required to pull the reference absent your ADEQUATE traversal.”

    And who “briefed” you? Oh yeah, those same idiots from PTO (mis)management who wrote the continuation and claim examination rules that have been found to be unlawful.

    I’m really impressed.

  72. 209

    To answer the comments above, the point in Solomon is, that the baby did NOT get split. It all came right in the end, thanks to the extra evidence that caused a reversal of the first instance decision. And in civil law countries, the Examiner is deemed the PHOSITA, not actually a PHOSITA. They are nearly all humble enough to understand the difference, which results in compact and efficient prosecution, with mutual respect (Exr #6K) between Exr and prosecuting atty. “Give me a break” cries out IronicSlip. From what, exactly? Where are the failures, in the European system? Tell me about them. Where are all those “Swinging on a Swing” cases?

  73. 208

    “And if they had “ordinary” skill, then they would be able to do what the ordinary inventor does … i.e., practice their art in the real world.”

    Yeah – – thank God for all the retard examiners who are such losers that they can’t possibly aspire to be anything but a loser examiner at the loser PTO or EPO.

  74. 207

    6K – a little advice from a fellow examiner.

    First, the attorney’s job is to get their clients claims that are as broad as possible, and it’s our job to examine them. Just do your part, and everything will be fine. When an application comes across my desk with incredibly broad claims, I couldn’t be happier. That just means I don’t have to worry about the possibility of working any VOT. I work in an art with an expectancy of 31.6, so there is nothing better in my book than being able to polish off a first OA in maybe 4 hours or so.

    Second, from your postings at all hours of the day (including posts at 11:30 on a Saturday night), it appears as though patent examining is consuming your life. That’s just sad. Don’t let it. It’s a tedious job, but that’s what it is – a job. It’s what we do to earn a paycheck so that we can go home and live our lives. You come across as a very bitter person, particularly for someone who is clearly very young, and for what? Lighten up, go to some happy hours, and for god’s sake, take your girlfriend out on Saturday nights instead of trolling on patentlyo. Life is short.

    And to the attorneys out there, please don’t think that we all (or any of us for that matter) think like 6K. He is clearly still learning the ins and outs of the patent system, and doesn’t yet have a grasp of the big picture. My advice is to simply ignore his immature and silly posts. My guess is that a lot of what he says is just done to get a rise out of you – at least I hope that’s what it is.

  75. 206

    “On the contrary, I have never heard of any law student becoming a patent examiner after graduation …. there may have been a couple, but I’ve never heard of one.”

    Make that one.

  76. 205

    “There’s a reason ‘ordinary skill’ is called ‘ordinary’ mo ron.”

    And if they had “ordinary” skill, then they would be able to do what the ordinary inventor does … i.e., practice their art in the real world.

    I wonder if you actually read what you write before you hit the “post” button.

    I doubt it.

  77. 204

    “Like I told you, we were specifically briefed that we are now no longer required to pull the reference absent your ADEQUATE traversal.”

    The difference between somebody doing their job and somebody being a PITA is that the person doing their job would have stated “despite applicant’s improper traversal of the examiner taking official notice (see MPEP XXXX), reference is made to REF A and REF B, which establish the facts relied upon by the examiner in the prior Office Action).” By doing it this way, you get to show the attorney that you were right about the facts and the attorney didn’t know how to properly traverse your official notice. Otherwise, you are just being a PITA. However, if you cannot find a reference(s) that establishes these “facts” within 5 minutes, then perhaps these facts aren’t as well known as you believe.

    As to your criticism of David Boundy, perhaps you should have looked at the title of this thread … i.e., Board of Patent Appeals and Interferences (BPAI). His comments were the most relevant addition to this thread in quite some time.

    As for his numbers for attachment C, I’ll let David Boundy speak for them, but it appears that they were in response to a FOIA request. Spreadsheet D appears to be a combination of statistics provided by the USPTO.

    “I think you people at the BPAI are retards that don’t know how things work at the office at all”
    Perhaps in your ignorance, you don’t understand the role of comments in a rule making process and that the people drafting these rules aren’t necessarily familiar with all statistics associated with the BPAI.

    BTW: You should read pages 73 and 74 (out of 132). I’m going to have to work some of that language into my Appeal Briefs. Many of my appeals involve an examiner not providing sufficient detail in a rejection. I would like to see more of my appears remanded back to the examiner for more information (i.e., the “substantial evidence” JD and I were talking about).

    To be honest, I really enjoyed those comments.

  78. 203

    “At the EPO, the Exr is the PHOSITA” … what a fallacy that is. I wonder how many of those EPO examiners could hang up their rejection stamps and practice their “art” in the real world. Likely not enough to justify the legal fiction that an examiner is a PHOSITA.”

    HAHAHAHAHAHAAHAHHAHAHAHAAHA
    AHAHAHAHAAHAHAHAHHAHAHAHAHA

    No, really,

    AHHAHHAHAHAAHAHHAHAHAHHAHAHAHAHA

    There’s a reason “ordinary skill” is called “ordinary” mo ron.

  79. 202

    “You’ll have to forgive me if I find that hard to believe.”

    Too bad. The phrase “obvious design choice” was not mine but his.

    “I get several of those “examiner takes Official notice that x would be an obvious design choice” type “findings” a month.”

    Not from me.

    “It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”

    Unfortunately for you and him, the facts relied upon are.

    “In other words, you have to cite the reference without any argument from applicant/attorney.”

    Wrong. “without any argument” needs to be replaced with “without adequate argument” as laid out above for you to read JD.

    Still PWNT JD. Stop trying to squirm out of making an adequate traversal and just make one. Unless, as I said originally, anything you would say the contrary would sound outrageously stupd and contrary the laws of physics or would paint POSHITA as a 5th grader or less. There’s a reason he didn’t adequately traverse, and it’s not that he doesn’t know which section to cite properly. That would be, because his claim is obvious based on facts well known.

    Just for you JD, I include my near quoted words from the OA:

    However, the examiner takes Official notce that using x is old and well known in the blank art (< that's the fact for you JD, in case you have trouble figuring it out, I figured I'd put this in () because that's apparently what lawyers need in order to glean any meaning from a statement). It would therefor have been obvious to one of ordinary skill in the art at the time the invention was made to x in the blank of Ref A. One is motivated by (insert well known technical motivation) (< that's the finding of obviousness based on the fact above and sufficiently supported by a motivation) As has been clearly demonstrated, E6k did indeed pwn this applicant in the face, and the applicant further attempted to use "mad lawyer skills" to misrepresent what the examiner actually did, following in JD's footsteps. Thus, at least by association, and in light of comments made thereby, JD is found to be PWNT as well. Like I told you, we were specifically briefed that we are now no longer required to pull the reference absent your ADEQUATE traversal. He didn't bother to argue my notice was improperly taken, because it wasn't improperly taken. What he requested, specifically, was an affidavit under 37 cfr 1.104(d)(2) which is only for cases of the examiner relying on knowledge specifically known "only" to him, and not likely known to POSHITA. I on the other hand am taking notice of a fact commonly known to POSHITA and thus no affidavit is required. Furthermore, nothing in my original taking of notice would lead one to believe such a situation under 1.104 was at hand. You're PWNT so hard you don't even know what hit you. "Executive summary: examiners are affirmed about 20% of the time - that is, examiners must concede (or are found to have committed) error (procedural or substantive) about 80% of the time." David, what's your point? Even though it's in your paper I'm sure, I'd like you to state that for the discussion so I might further ridicule you and expose your weak position for the horrendously weak position it is. Also, while you're at it, do you mind showing us how you got your numbers for attach C and D? Oh, and hey, toss in what you believe your chances are at affecting the decision made? In your arrogance, are you prepared to state for the record that you believe the BPAI did not already know that the figures, when calculated the way you have, are at least around the numbers you have arrived at? Maybe your paper should have led off with "I think you people at the BPAI are retards that don't know how things work at the office at all". Regardless, I'm sure the intelligent people at the board can read between the lines enough to glean it from the whole of your work. Though, just like you understand their desperation, they understand yours, so maybe they'll take that into consideration.

  80. 201

    driedmax : solomon? i wont get into what happened in that judgement … and the subsequent treatment of those people … and, which one is the classic one? (raphael?) … but, split the baby, your industry champions determine the “facts and arguments” when they feel like it is “evidence” … ex post publication for 9 months … give me a break!

  81. 200

    “Why, asks Erez Gur, are there problems at the USPTO that don’t surface at the EPO? Answer: EPO practises no-nonsense civil law and USPTO practises adversarial English common law.”

    Uh … no. Practice before the USPTO isn’t supposed to be adversarial. There is no prosecutor/plaintiff, defendant, and judge weighing evidence. Obtaining a patent is an administrative procedure … akin to obtaining a driver’s license or submitting a new drug for FDA approval. You submit the application, and so long as the application evidences that the rules/law are met, you obtain your license/approval/patent.

    “At the EPO, the Exr is the PHOSITA” … what a fallacy that is. I wonder how many of those EPO examiners could hang up their rejection stamps and practice their “art” in the real world. Likely not enough to justify the legal fiction that an examiner is a PHOSITA.

    “There is no Binding Precedent.” i.e., we make it up as we go along.

    I rarely recommend to a client that they file in Europe. Unless the client has a killer invention worth beaucoup bucks, filing in Europe is a waste of money. Getting a good search report may be the only reason I might recommend filing overseas.

  82. 199

    Why, asks Erez Gur, are there problems at the USPTO that don’t surface at the EPO? Answer: EPO practises no-nonsense civil law and USPTO practises adversarial English common law. At the EPO, the Exr is the PHOSITA and all proffered “Facts and Arguments” are weighed under the Priciple of the Unfettered Consideration of Evidence. Like in the classic painting of the age-old Judgement of Solomon, advocates adduce “evidence” and fresh evidence coming in on appeal is decisive to the outcome. There is no Binding Precedent. All rubbish, I know, but it sure rattles through the cases.

  83. 198

    So you took Official notice of facts, but the attorney, on his own initiative, rephrased your position in his traversal as you taking Official notice “as to x being an obvious design choice”?

    You’ll have to forgive me if I find that hard to believe.

    I get several of those “examiner takes Official notice that x would be an obvious design choice” type “findings” a month. In that exact wording. I suspect you’ve seen that “shortcut” in other OA’s, or some primary, SPE, or mid-level (mis)management stooge told you about this “great thing called Official notice.”

    “The real problem is, he is just trying to do like you purport to like to do, get me to give a reference without making any outrageous argument.”

    I don’t have to make any argument, outrageous or otherwise, to get you to give me a reference. You really should read 2144.03 (again?), as it clearly states, “It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”

    In other words, you have to cite the reference without any argument from applicant/attorney.

    PWNT even more harderer.

    QQ

    BTW, expecting you to do your job correctly, and then asking you to do it correctly when you don’t, is not ridiculousness. Unfortunately, it’s one of our tasks. One that examiners like you make tedious and repetitious, but necessary nonetheless.

  84. 197

    Oh and bloom I’m not clubbing the applicant, I’m clubbint the lawyer for sending in ridiculousness for me to review. I dislike people who do that. Really, you dislike examiners sending you ridiculousness, how’s that different?

  85. 196

    “applicants respectfully request that the examiner provide some specific evidence as required by 37 cfr 1.104(d)(2)” is a traversal.”

    Let’s get very specific here bloom, where’s the part about making the traverse ADEQUATE?

    FYI: “to adequately traverse such a finding, [in order to properly traverse] an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” Straight from the MPEP, with ref to CFR 1.111b. I can, and I did use his lack of adequacy in his traversal to “club him”. I’ll do my job when people stop throwing complete bull sht at my face in their response. Learn2respond.

    “Official Notice can only be taken of facts. Facts which are capable of instant and unquestionable demonstration as being well known. Official Notice can not be taken of legal conclusions, i.e. whether something is an “obvious design choice.” Learn to take Official Notice.
    PWNT. QQ for you.”

    Lol, I didn’t say that it was an obvious design choice that’s his words, I took notice of facts. Learn2read JD. PWNT harder. The real problem is, he is just trying to do like you purport to like to do, get me to give a reference without making any outrageous argument the contrary the factual statement, because any argument the contrary would have to be outrageous and everyone would see the limitation for what it was, crp.

  86. 195

    An analysis that includes the effect of appeal conferences, but not pre-appeal review, is in my notice-and-comment letter on the appeal rule.

    Executive summary: examiners are affirmed about 20% of the time – that is, examiners must concede (or are found to have committed) error (procedural or substantive) about 80% of the time.

    /media/docs/2007/11/boundy.pdf

    The summary table is at page 65, the underlying statistics obtained from the PTO are at pages 51-65.

  87. 194

    “Bull$hit!! Try telling that to your malpractice provider – – the entire practice of patent prosecution is about deadlines – – a “clerical” issue, as you call it, can be lethal to obtaining patent protection. Btw, ever heard of the “duty to supervise,” or I suppose you never look over your paralegal’s work.”

    Your comments are not relevant to the issue being addressed. Everybody makes mistakes. However, it is the type of mistake being made that is important. Missing a filing date (probably a foreign filing date because the missing of most other filing dates can be cured) is a clerical issue and has nothing to do with whether or not a young attorney is being properly mentored on the law, which was the issue being discussed.

    “I know of several law students who have done just that, although more than a few of them have since moved on to other opportunitie$$ including positions in BIGLAW firms you swear would never touch a former examiner.”

    Classic example of examiner (mis)reading comprehesion … what I ACTUALLY wrote was the following:

    “In some firms, being at the PTO could help. However, I know of other firms that wouldn’t touch someone from the PTO … the problem being is that you have to untrain them first. Bad habits are hard to break.”

    As such I NEVER wrote what you attributed me to writing. Instead, I made it clear that firms have accepted former PTO employees. In fact, at the big law firm I worked on for quite some had quite a number of former PTO examiners. I will say, however, that their opinions of today’s examiner does not differ substantially from the opinions I’ve expressed on this board.

    My guess is that a good portion of those attorneys that went into the PTO, as an examiner, after law school tried to get jobs in private practice as a patent attorney but couldn’t. As I noted earlier, there are a lot of attorneys that just cannot break into patent prosecution based upon their credentials. However, for those that are close, but not close enough, a little PTO experience may help them over the barrier.

  88. 193

    “On the contrary, I have never heard of any law student becoming a patent examiner after graduation …. there may have been a couple, but I’ve never heard of one. You need to find better examples.”

    I know of several law students who have done just that, although more than a few of them have since moved on to other opportunitie$$ including positions in BIGLAW firms you swear would never touch a former examiner.

  89. 192

    “Missing a filing date (which is a clerical issue, not a legal issue)”

    Bull$hit!! Try telling that to your malpractice provider – – the entire practice of patent prosecution is about deadlines – – a “clerical” issue, as you call it, can be lethal to obtaining patent protection. Btw, ever heard of the “duty to supervise,” or I suppose you never look over your paralegal’s work.

  90. 191

    “Examiner Y, you think stuff like this is confined only to small patent shops?? What about the big and “prestigious” F&R getting slammed for missing a filing deadline???? Point is, f$ck-ups happen, even at the big firms.”

    Missing a filing date (which is a clerical issue, not a legal issue) is far different from being taught patent law by someone who is 20 years behind in the law, firmly believes that picture claims as independent claims are best because they get quick allowances, and continually writes “the invention is ….” throughout the specification.

    Similar to my examiner example, I would rather take a patent attorney with zero years of experience than an attorney with 5 years of experience who was mentored by somebody giving out that type of advice. It is far easier to teach someone how to do it right the first time around than it is to retrain somebody.

    again ….. bad habits are difficult to break.

  91. 190

    “Newsflash: One of the top guys at Fish & Richardson graduated from Suffolk – – nuff said. There are plenty of patent attorneys from $hit law schools making loads of money out there. You don’t exactly have to be Harvard law review to do well in patent law.”

    Although this observation is several years old … a good portion of the top patent attorneys in today’s big law firms wouldn’t even be able to get a first interview at the same law firm today. The point being is that although poor credentials won’t necessarily keep you from being successful but poor credentials will definitely keep you from landing your first job at a big-name law firm (who also tend to be the types that pay the big-time salaries).

    “I wouldn’t suggest anyone working for one of these firms anyway. IMO, the best patent attorneys are former examiners – – for the same reasons that the best criminal defense attorneys are former prosecutors.”

    Thanks for the laugh. Prosecutorial jobs are highly sought after. They offer prestige, possible political contacts, and lots of trial experience, the type most attorneys don’t get until they’ve been practicing for many, many years. Although the pay isn’t great, it isn’t bad. As such, a lot of talented attorneys initially become prosecutors at the state or federal level. On the contrary, I have never heard of any law student becoming a patent examiner after graduation …. there may have been a couple, but I’ve never heard of one. You need to find better examples.

    I would rather have an newly-minted attorney with zero PTO experience than a former examiner with 5-years of experience at the PTO. Actually, I would rather take an examiner with 1 year of experience at the PTO than one with 5 years at the PTO. The 1 year of experience is enough for the examiner to have gotten some idea of the ropes but not yet fully indoctrinated into the mindset of “reject, reject, reject,” with the belief that poor grammar, poor analytical skills, poor knowledge of the law, and cutting corners is acceptable, as is often evidenced by 6K.

  92. 189

    “Uhhh – – yeah – – and one of them just happens to have a spot on the Federal Circuit now. Maybe you can work that “a$$-elbow” line into your next brief.”

    I’ll do my best.

    “Re claim 2 examiner takes official notice as to x being an obvious design choice based on the examiners official notice.

    Official Notice can only be taken of facts. Facts which are capable of instant and unquestionable demonstration as being well known. Official Notice can not be taken of legal conclusions, i.e. whether something is an “obvious design choice.”

    Learn to take Official Notice.

    PWNT.

    QQ for you.

    As for your ultimate admission to law school, assuming the application doesn’t require you to demonstrate any proficiency with grammar, syntax, spelling and/or reasoning, I’m sure you’ll do just fine. Just try to remember that law school admissions doesn’t speak baby talk, er, I mean leet speak.

    LL, never claimed to be a super-examiner. Did claim to do the job according to the law. Unfortunately, that’s a rare trait these days. Of course, when the message from PTO (mis)management to the examining corps is, “You are not required to obey the law, in fact, we actively encourage you to disregard it, or even break it at your leisure,” it’s not hard to understand why.

  93. 188

    Ex6k,

    “applicants respectfully request that the examiner provide some specific evidence as required by 37 cfr 1.104(d)(2)” is a traversal. You can’t use the fact that you failed to provide support for your “official” notice, as required by regulation, to club the applicant over the head. Why don’t you just do your job?

  94. 187

    Hahah, here’s a good one for you guys.

    Re claim 2 examiner takes official notice as to x being an obvious design choice based on the examiners official notice. applicants respectfully request that the examiner provide some specific evidence as required by 37 cfr 1.104(d)(2). I respond: unfortunately the rejection of claim 2 is apparently not clear as the rejection is based not solely on personal knowledge specifically held by the examiner, but on common knowledge held by POSITA and unfortunately at this point the applicant has failed to “adequately traverse such a finding, [in order to properly traverse] an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” and thus “the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate.” See MPEP 2144.03 (for the curious as to why that is now considered incomplete see CFR 1.111b)

    PWNT.

    Learn2traverse.

    Look for this coming in an action near you.

    On the other hand it probably took me longer to up the equiv of the above in my action than it would have taken me to find and 103 part x.

  95. 186

    MaxDrei

    Your letter was not in character.

    Inventors invent products or cool ideas. The Patent Attorney extracts the inventive core (pith and marrow, if you will), compares it to the prior art and then writes claims describing the Inventor’s contribution to the art.

    Many (but not all) Inventors fail to understand what obviousness is or isn’t, why written references that were never products are art or why a small improvement can support broad claims because its contribution to the art is significant.

    When Inventors write claims, the claims are long and have endless unimportant limitations. They get a patent with claims that are impossible to infringe. For Inventors who want to hang a piece of paper on the wall, that is great. For entrepeneurs who want to get investment and establish a company to employ people, it is useless.

    6K, LazarusLong and you wish the Inventor/Attorney could really tell you what the invention is. The truth is, every Attorney wishes that the invention could be discussed in a normal way with the Examiner, preferably over a beer, (see MVS’ contribution on March 5, 1:32 or Lowly’s on March 5, 1:54). Sadly, the USPTO forbids you from doing that, see Malcolm Mooney’s response of March 5, 1:58.

    As an aside, Max, you of all people should know that something is wrong with the examination process at the USPTO and not with evil patent attorneys. Why is it that none of these issues exist in prosecution before the EPO or the UKIPO? Why is it that these problems did not exist 4 years ago?

  96. 185

    “Idk pds, how exactly are those places “bad”? They seem just fine to me unless you just don’t like your boss. You’re making decent at least I’m sure, and probably living the small town dream right?”

    “Because stuff like this happens to you: [see above link]”

    Examiner Y, you think stuff like this is confined only to small patent shops?? What about the big and “prestigious” F&R getting slammed for missing a filing deadline???? Point is, f$ck-ups happen, even at the big firms.

    link to law.com

  97. 184

    “Idk pds, how exactly are those places “bad”? They seem just fine to me unless you just don’t like your boss. You’re making decent at least I’m sure, and probably living the small town dream right?”

    Because stuff like this happens to you:
    link to intelproplaw.com

  98. 183

    “Uh, Sen. Leahy is the chairman of the Senate judiciary committee. That’s the committe responsible for changes to the USC. You’ll figure all of this out after a few years of law school. Assuming you can get in.”

    Uh, oh rly? How long will Mr. Leahy be the chairman? How long will Mr. Leahy be in office? You’ll figure these things out when you finally grow a brain that lawschool apparently took from you.

    Me have trouble getting into lawschool, hahahahahah, trouble getting into, and going to while working, a top notch school, there’s the only difficulty. Get off your highhorse Mr. I have a solution to nothing but like to spout off regularly about how others perform illegal actions everyday. I believe I would be speaking for the entire judiciary when I say get that crp outta here. We’re paid to excersize our judgment as well as the strict formulations of the art. If not, I wonder how many of those cases that you argue “It wouldn’t be reasonable to combine x and y” would ever get issued? You’ve been an examiner, you know good and well it’s a judgment call as well as any strict legalistic performance in most likely a majority of cases. Almost every 103 that crosses my desk I could just as easily say “nah, not reasonable” to. I’m beginning to think you’re just trolling tonight, and I’d like to see some ref’s from Leahy saying he’s out, because last I heard he was planning to pick it up next year etc., maybe some lobbyists got to him? Maybe some other lobbyists will get to him before next year?

    “Bad habits are hard to break.”

    I don’t know about that, maybe for some, but if you told me tomorrow that my one job was to disregard all my technical know how and start writing up the broadest claims under the sun in groups that are clearly restrictable without having provided an IDS or meaningful background section, no drawings showing what is clearly new compared to the prior art, and telling the inventor he has a wonderful and most inventive idea etc., I’m pretty sure I could manage it. By the time I was partner, or started my own firm I would certainly have started filing things more as I think would benefit prosecution and conform the best with the law and the spirit of the law. I probably also try to be an activist for change, as I will probably be here soon on other non-patent issues anyway. Funniest thing is, I would consider myself fairly conservative overall.

    Besides, when I do get into practice it’ll probably be in a field I’m only loosely familiar with, and then I won’t have hardly a clue about what would be obvious, so I’ll be your happy everyday ignorant of the art lawyer.

    Justanex- Idk I can’t remember, ask JD I’m sure he’ll remember.

    Idk pds, how exactly are those places “bad”? They seem just fine to me unless you just don’t like your boss. You’re making decent at least I’m sure, and probably living the small town dream right?

  99. 182

    “However, if you want to go into a good law firm after you graduate, you had better have graduated from a quality law school, . . .”

    Newsflash: One of the top guys at Fish & Richardson graduated from Suffolk – – nuff said. There are plenty of patent attorneys from $hit law schools making loads of money out there. You don’t exactly have to be Harvard law review to do well in patent law.

    “However, I know of other firms that wouldn’t touch someone from the PTO … the problem being is that you have to untrain them first. Bad habits are hard to break.”

    I wouldn’t suggest anyone working for one of these firms anyway. IMO, the best patent attorneys are former examiners – – for the same reasons that the best criminal defense attorneys are former prosecutors.

  100. 181

    “Yeah, ’cause everyone knows that you need to graduate summa cum laude from Harvard and have a 175+ LSAT to ever have a chance at getting into law school.”

    However, if you want to go into a good law firm after you graduate, you had better have graduated from a quality law school, gotten good grades, and have a relevant technical degree. Otherwise, you could be stuck working in some small 2-person shop where the senior attorney has been practicing for 25 years and hasn’t read a case out of the Federal Circuit since it was formed.

    There are plenty of bad places to work … not just with regard to the money, but also with regard to the mentoring. I don’t disagree that there are bad attorneys out there, I’ve seen some of their work product and wonder why there aren’t more malpractice suits. However, if you want to make the big bucks, you better have some good credentials … the big firm I worked at wouldn’t even sniff at a potential summer associate unless he/she had an Ivy League education or came out of some of the bigger name schools (e.g., Duke, UNC, UCLA, etc.) or had a PHD. Patent prosecution is not any easy gig to break into. I’ve seen lots of resumes from aspiring patent attorneys that will likely be forced into another practice area for lack of good credentials.

    In some firms, being at the PTO could help. However, I know of other firms that wouldn’t touch someone from the PTO … the problem being is that you have to untrain them first. Bad habits are hard to break.

  101. 180

    LL

    To echo JD’s comments, what is the big deal with Hyatt v. Boone? Unless there are two cases out there with the same name, the one I found is an interference. The issues dealt with in this case involve determining whether or not both parities could claim priority from earlier applications. As an aside, your example is definitely the exception and not the rule …. not many people get to file patent applications that cover some fundamental aspects of an incredibly huge industry (i.e., the semiconductor industry). Moreover, with the change of patent term from 17 years from issue to 20 years from filing, the ability of someone to hold a particular technology hostage for a long time (e.g., like Lemelsen) has already been severely curtailed.

    Regardless, I don’t want to get on your case too much. Unlike 6K, you’ve got experience to back your opinions, and unlike 6k, you realize that working with attorneys is far better than playing “hide the ball.”

    However, I would like to see 6k get his law degree and come on over to the bright side … it will be amusing to see how his comments change when he eventually becomes educated. Until then, he’ll provide us with some entertainment.

  102. 179

    “You’ll figure all of this out after a few years of law school.

    Assuming you can get in.”

    Yeah, ’cause everyone knows that you need to graduate summa cum laude from Harvard and have a 175+ LSAT to ever have a chance at getting into law school.

  103. 178

    “Most of the nonsense you hear about “bad patents” is made by those who know absolutely nothing about patent prosecution, e.g. academics and “researchers” like those at NSF. Ignore those people. They don’t know their a$$ from their elbow.”

    Uhhh – – yeah – – and one of them just happens to have a spot on the Federal Circuit now. Maybe you can work that “a$$-elbow” line into your next brief.

  104. 177

    “JD, first off, I at least get together a shaky case that can’t be easily rebutted. Getting the “killing blow” is what you seem to think I should have every time, the first time. I disagree. Further, as a finder of fact, I am currently under instructions to utilize what knowledge I currently possess in addition to all written documents I find to support my position. To do otherwise would be folly on the part of the office, the courts, and any applicant who wishes differently. And yeah, like LL says, and as I’ve said before, and many have said before. The ones here discussing the issue are likely not the problem people in the first place.

    Well, except for that case where you put the exhaust? on the front of a motor and appealed it. Thank god for KSR blowing Graham’s worthless pos down eh? But hey, I shouldn’t poke too much fun because the examiner probably could have found the correct art to begin with, still the case shows on it’s face the types of things you call out. Specifically, ridiculousness.”

    Posted by: examiner#6k | Mar 08, 2008 at 03:40 PM

    Which case was that 6k?

  105. 176

    LD, do you ALWAYS take things out of context & twist things to meet your own ends??

    You say, partly quoting me,
    “I also don’t understand how you conclude “I have issued many broad claims. Some, seemingly extremely broad.” If you didn’t have the art, it seems to me that you issued a claim that was exactly in line with what applicant was entitled to. And breadth of the claim involves more than just avoiding the prior art. A broad claim is not really that broad if it is easily avoided and/or designed around. No offense, but you don’t have any experience advising applicants on that.”

    I CAN say that the claims are “seemingly broad”, particularly with respect to the prior art, because I HAVE SEARCHED FOR IT. I know the prior art & what applicant disclosed. So I can tell if it is “seemingly broad” or not. I am not advising the applicant on anything. That is “supposed” to be your job! You were (according to yourself) a super-examiner. You should understand what an examiner means when they discuss a “broad” claim. I.e., short, few limitations, not a lot of crap in it, etc.

    And I said I allowed them. Isn’t that “obeying the law” like you profess you want???

    As for Hyatt v Boone, again look back at the context. It was in response to a question why some people file claims that are excessively broad. I never said that the examiner should have found something, either. But I do get POed for cases like that since he collected something like $100,000,000 (no typo) for something where later court proceedings showed he was not entitled to the patent claims. Simple as that. I know of others. Just that is the easiest one to cite.

    thanks,

    LL

  106. 175

    Uh, Sen. Leahy is the chairman of the Senate judiciary committee. That’s the committe responsible for changes to the USC.

    You’ll figure all of this out after a few years of law school.

    Assuming you can get in.

  107. 174

    “patent reform is dead” Things like this take time, while I was hopeful for it at first passing committees, when Bush spoke out against it then I knew there’d be problems. If Leahy is out, it’s a shame but not a huge problem. Just because he championed it for awhile doesn’t mean there will not be another to take his place.

    “We can chat.” except your reasoning is already painfully obvious, and there is no need to argue over such bs. You’re rejected, end of story, makes my day go faster. Though, I’m very nice about doing something like that, you’ll still not catch me doing it a lot before first action. A friend of mine does though.

    “we just want the law applied” Lol, why’s that? So you can take your crappy patent and strong arm people into settling for large $? Hmmm, I think yes. Again, nobody gives a crp what the lawyers are wanting. People give a crp about 1. the INVENTORS are wanting and 2. the GOVERNMENT is wanting. Imo, more so no. 2. Notice very carefully the category “3. lawyers” does not exist. This is by design.

  108. 173

    LL,

    Please give me a brief history of Hyatt v. Boone. I’m not sure why you’re so obsessed with it.

    Was the evidence that ultimately invalidated Mr. Hyatt’s patent evidence that could have, should have, and would have been found by the examiner in the normal course of examination? If not, I’m not sure what your point is. If the examiner could have never found the evidence that was used to invalidate Mr. Hyatt’s patent, then the examiner’s decision to allow it was perfectly reasonable.

    Like I said, applicants and practitioners understand that patent prosecution is not perfect. We don’t expect it to be. We expect it to be conducted according to the law. That’s pretty much it.

    We’re all aware that patents get invalidated. However, I have never stated that the invalidation of a patent is an indication that the examiner didn’t do the job correctly, or that the patent was a “bad patent.” I’ve never made any posts about “bad patents.” You must be confusing me with somebody else. Most of the nonsense you hear about “bad patents” is made by those who know absolutely nothing about patent prosecution, e.g. academics and “researchers” like those at NSF. Ignore those people. They don’t know their a$$ from their elbow.

    I also don’t understand how you conclude “I have issued many broad claims. Some, seemingly extremely broad.” If you didn’t have the art, it seems to me that you issued a claim that was exactly in line with what applicant was entitled to. And breadth of the claim involves more than just avoiding the prior art. A broad claim is not really that broad if it is easily avoided and/or designed around. No offense, but you don’t have any experience advising applicants on that.

    As to your question, Batman responds as follows: I don’t submit claims that I know are “common” (assuming you mean that to mean “obvious”). I submit claims that I believe are exactly on the line of patentability. As I explained previously, that’s my job.

    As for the question of who knows the “art” better, as has been explained by others, and me, numerous times in the past, engineers/inventors don’t have this encyclopedic knowledge of patents and NPL that you and so many examiners seem to think they have. They don’t spend all day reading patents. So when Mr. Dudas makes his nonseniscal statements about applicants being in the position to know the best prior art, he’s talking out of his a$$. He doesn’t know what the heck he’s talking about. Like a lot of things he says. I wish somebody would challenge him on some of these ridiculous statements he makes as if they were well established facts. He simply doesn’t know what he’s talking about.

    Yes, LL, I do expect you to find the “best” prior art. That’s your job. Not mine, not applicants. If you determine that the “best” prior art is something I’ve submitted, then I expect you to tell me that as early in the prosecution as you can. But if it is something I submitted, then you can bet that I’ve considered it when drafting the claims, so if you have any questions why I don’t think it anticipates/renders obvious the claim(s), please feel free to give me a call. We can chat.

    6k, glad to know Congress has your back. Of course, patent reform is dead for this year, and Sen. Leahy has already stated he won’t bring it up again next year, so if that’s gettin’ your back, you’re pretty easy to please apparently. Keep posting. Your silliness keeps us all in stitches.

  109. 172

    “Imagine the fodder if the speech were unguarded.”

    I know, utopia-like isn’t it? Patents issued on what the inventor thinks is his contribution, and only that, or not if there is art against it. Man, what a happy day you have envisaged there. Happy inventors, happy examiners, everybody wins amirite?

    Again, I think that we might have such insight into the subject as to be a thread-ender.

  110. 171

    “(Personally, it seems very short sighted to try to find a solution to a problem without 1st knowing what has already been done to overcome the problem, but I am not running a company, so…)”

    To any normal person it does LL, it’s only to people who fear the patent regime that such an insane course of action seems prudent, or in the alternative the “inventor” who suddenly saw an obvious combination of elements, slapped it together, and called himself an inventor. Though, in their defense, the art is so large, and so badly classified, and so hard to search through without someone telling you what to do, that if your google’s and NPL’s miss then there is a great chance you likely wouldn’t see art to solve your problem.

    And no, that’s not the way I usually do it, that’s the way my primary would RATHER I word my actions, bare minimum explanation, expound on it if they call you on something so so unclear. And I certainly see why this is beneficial, I’ve more than a couple of people try to “twist” my words, or call me and get something explained in a way that very vaguely supports their position from me, and then use that explanation to support their bs argument.

    RCE’s are a bad thing for examiners? I was under the impression they were my bestest friend in the whole wide world. Cases that have actually put in enough money to justify a serious search by someone who now knows enough about that niche to be searching like a champ. I cannot tell you how much easier a search on a final or RCE is to perform and find relevant art than it is to cold search it. My art has many facets to it, why things are done etc. You have to read a certain volume of literature in each obscure corner of the art to finally piece together all the basics that the people in that niche take for granted in every reference, and these sometimes vary hugely. Sure it gets a lot easier after awhile, like the other day I picked up a case and said to myself, are these guys kidding me? Everyone does it this way for x reason already. As in, as soon as I read the claim. But I suppose that took “hindsight bias” eh attrny’s? Not surprisingly, he had submitted an IDS with wonderful art attached (from both his search and the foreign searches I believe) because, surprise surprise, he made an obvious combination all but blatantly spelled out in a reference already.

  111. 170

    Herr Drei writes: “In my experience, Inventor and Exr would get along just fine, because they have a pretty similar understanding concerning what’s egregiously lacking in patentability. The problem is the attorney in the communication chain sitting between them and blocking direct communication. Inventor doesn’t understand the claim but trusts that he has successfully communicated to the drafting attorney what is the content of his technical contribution to the art. Out of that, attorney drafts the claim. Inventor can vaguely see his contribution in there but doesn’t grasp “metes and bounds” too well, so is mystified by the Exr’s objections. Attorney’s self-interest lies in not revealing the way he was thinking (?) when he wrote the claim. Anger ensues (at least when the claim is extinguished in EPO opposition proceedings, and the CEO wants to know why).”

    The problem, Max, is that the inventors have no awareness of the legal effect given to anything they say to the Examiner. That effect extends to both prosecution (how the Examiner will use it against them) as well as afterwards (how licensees and potential litigants will use those words against the patentee). The patent is a LEGAL document.

    Your observation seems to say that having a non-legally trained inventor freely converse with a (usually) non-legally trained examiner will produce a good legal document. MY experience says that attorneys can twist what is said even when a prosecuting attorney, particular in his choice of words because he knows too well the potential consequences of a misstep, is doing the talking. Imagine the fodder if the speech were unguarded.

  112. 169

    “MaxDrei”, you are largely correct. I always LOVED it when the applicant came in with the lawyer for an interview. We could actually get down to what their invention really was and get it in the claims. Once you can get out what the inventor feels is their contribution in the art you can get it in the claims. Then it is you & the applicant agreeing, the lawyer is stuck in the middle. Unfortunately, they do not come in that often.

    “PDS”,
    I understand what you say. Honestly, some may not make much common sense, personally, but if that is the way your experience shows, I will accept that. (Personally, it seems very short sighted to try to find a solution to a problem without 1st knowing what has already been done to overcome the problem, but I am not running a company, so…)
    And yes, I also agree that the examiner is usually in a better position to know what is in the art than the lawyer (contrary to what some unnamed lawyers have said here & elsewhere ***cough-cough JD cough***). The examiner may well see thousands of the same type of subject matter over a year (apps + refs), while the lawyer may only see a handful (apps + refs). And inventors are often very specialized in a very narrow field & may not know related art.
    Also, it does not personally bother me if the claims read on something relatively new (within 5 years, maybe). It is when they are so broadly drafted they read on things decades old or even read on a definition of a whole subclass. While I can see the occasional situation where a person may not realize the breadth of a claim initially, it happens much to often with too many different applicants/lawyers to always be accidental.

    “6K”,
    I really HOPE that you were being facetious when you said “That’s by design, we’re specifically instructed to keep the actions short and as non-descriptive as possible, this is two reasons. One, create the confusion you describe above. And two, to not give you any ammo for your reply by misstating something, you want ammo, go get it yourself from your spec”
    No one that is any good does this anymore. Back in the 70s & 80s we could get away with it (even the old short form of A v B rejections). Today? No. At a minimum you need to put some explanation into the rejection as to how you are reading the reference on the claims. The applicant is not a mind reader. You may be interpreting it one way and a reviewer another. If you do this on the sig program, you sill be shot down quicker than a dying spy satellite. It will (and does) lead to a lot longer prosecution, too many RCEs, and reopening of cases. Really BAD advise.

    thanks,

    LL

  113. 168

    “The problem is the attorney in the communication chain sitting between them and blocking direct communication.”

    Well, that about wraps things up here.

    /endthread

  114. 167

    Like JAOI(TM) I too haven’t been bothered to read the thread in full but, nevertheless, I have the impertinence to offer a comment, and it’s this. In my experience, Inventor and Exr would get along just fine, because they have a pretty similar understanding concerning what’s egregiously lacking in patentability. The problem is the attorney in the communication chain sitting between them and blocking direct communication. Inventor doesn’t understand the claim but trusts that he has successfully communicated to the drafting attorney what is the content of his technical contribution to the art. Out of that, attorney drafts the claim. Inventor can vaguely see his contribution in there but doesn’t grasp “metes and bounds” too well, so is mystified by the Exr’s objections. Attorney’s self-interest lies in not revealing the way he was thinking (?) when he wrote the claim. Anger ensues (at least when the claim is extinguished in EPO opposition proceedings, and the CEO wants to know why).

  115. 166

    “rejections is that when I read them I KNOW, without a doubt,” similarly, I KNOW without a doubt, that in many cases the attorney couldn’t possibly be as ignorant as to truly believe that the claim before me is patentable. Some of the times I KNOW without a doubt that they know there is nothing in the entire app of merit and it’ll boil down to splitting some hair somewhere to “get something” after 3 RCE’s and much deliberating on if a 5th ref is really appropriate to pull in. But hey, nonetheless, there’s the app on my docket, and nonetheless there’s the rejection on your “docket”.

  116. 165

    “As JD continually preaches, all I want is a decision based upon substantial evidence.” Sorry spam caught that and I forgot to hit the asdflkjasdfj bs in.

    Nobody but you and JD care what you and JD want. I’d like for apps to stop filing overclaiming apps, doesn’t seem that you care much. Funny that. Funny that congress has my back, because, unlike you and me, me and them want the same thing.

    “if you want to use personal knowledge as a basis for your rejection, I hope you (unlike most examiners I run across) actually explicitly state that you are relying upon X or Y assumptions, etc.”

    Yeah I do, and I think that’s why I pwn so much face, and also why I spend most of my evenings here late. I think in all my personal contacts with attorney’s we genuinely disagreed on something maybe 3 times, and even then, they had to give my position somewhat of a nod, even if not being fully convinced (ala their app telling them not to be).

    “When that happens, it can seem that my arguments are off-point because I’m an imperfect guesser so that my arguments may not be specifically directed towards your supporting (but unstated) rationale.”

    That’s by design, we’re specifically instructed to keep the actions short and as non-descriptive as possible, this is two reasons. One, create the confusion you describe above. And two, to not give you any ammo for your reply by misstating something, you want ammo, go get it yourself from your spec. “just let the art speak for itself” is how I’ve had it put to me. Which, in all honesty is how it used to be done before this limitation matching bs. You’re a spoiled generation of lawyers as far as actions recieved go that’s for sure. Just imagine getting all those “horrible” actions back with as much explaination as was given in the 70’s.

    Oh, and your cited article is interesting. Quite astounding really, that college grads that consist overwhelmingly of non-technical people (at least at most schools) don’t get any more technical minded at college. No, really, it is. And then we come to alternative medicine, yep, it goes up, most college grads here about the placebo effect and realize that it helps many many patients for various things (most probably imagined in the first place).

    The problem with using that article to back your position is that the examiners in the technical arts many times are the people who understand the scientific process and moreso their art, all too well, and are not your avg joe intercollegiate rugby player being asked about UFO’s and copper bands, but is instead one of ordinary skill in that art, being asked specifically about that art.

  117. 164

    “Although JD uses the magical words “substantial evidence,” you still don’t seem to get it. In most instances, whatever “knowledge” you possess is not substantial evidence. Moreover, unless you can establish that your “knowledge” pre-dates the priority date of the application being examined, a good attorney is going to slam you on that issue every time.”

    No, I don’t think you seem to get it. I went to school specifically studying this very subject for around 3+ years (which ended right before most of my apps were filed). I know good and well what many of the basic components are, and how they’re used, and in many cases, why they’re used that way. So far the best argument I’ve had is “hur, but using it RIGHT THEN isn’t obvious” or “hur, but your motivation isn’t a good one”, and in each instance even of that, they admit what I said was old was indeed old. Here’s an excerpt for you: The limitation the examiner has taken official notice as to being old in the art is indeed old and well know, but to have used it in the *insert manner* as the applicant has done is not. As to if they are used that way, or for my motivated purpose, eh, I hardly sweat that. Nothing a quick jaunt through the art won’t cure, and nothing that their admission on the record didn’t cure anyway in light of KSR. Both em will be finaled np. Hah, one of them didn’t choose to amend his ind. (not official noticed) over the meaning of the word “energized” in a reference. He’s got me ROFLing some srs MAyO over here. Hey, what can I say, he’s one of those who likes to pay I guess.

    “You don’t invest a couple of thousand dollars upfront (before you spend the millions) to do a patent search — companies just don’t work that way.”

    They will be soon.

    “(if examiners are complaining about IDSs that are too long, what would they say if all potential 103 art was included?)”

    I know more than one company that does this. Every time. Your 30 ref IDS have nothing on the 200 monsters that aren’t too rare in my art.

    ” it is cheaper to just file the application, as is”

    We know that, and that’s why we want to change the system. Nobody ever said you were entitled to using us as your wall to throw ideas against for 1k a pop.

    “and then executing the formal documents can add weeks/months to when the application actually gets filed.”

    And we care why? Is this some QQ?

    Excuse me while I go address an apps QQ.

  118. 163

    “The inventors SHOULD know what is common in their field (at least the ones I have talked with seem to) since they are trying to improve upon what is already out there.”

    Most inventors do know what is out there already, but that knowledge is limited. For example, the inventor may not know what was filed (and unpublished) in the 18 months prior to their application being filed. Many inventions are not immediately commercialized (and thus remain unknown). Moreover, many inventions, even if commercialized, are difficult to reverse-engineer. As a result, there may be a vast amount of prior art that an inventor may not know of that an examiner in the art may have been seeing for quite some time.

    Another thing to consider is that inventors understand their inventions, but they do a very poor job of understanding the claims and how those claims may read on the prior art. In fact, many examiners (and even attorneys) don’t really “get” claim language. Anyway, the examination is based upon the claims, and depending upon how the claims are written, the claims may inadvertently encompass subject matter never intended by the claims.

    I remember once doing a case we received from a foreign associate in which the examiner cited 10 different references under 102 for rejecting claim 1. When I re-read claim 1, I came away understanding why the claims were much broader than the attorney originally intended them to be. However, this is why there is an ongoing examination process. Once I saw the error of the claims, I was able to add in some claim limitations that completely knocked out the cited prior art. Did the original attorney attempt to “over-claim” the invention? Very unlikely. It was just merely a case of the attorney not realizing the breadth of how certain claim limitations could be interpreted.

    “Why would some company spend maybe millions of $$ if they do not at least think what they are doing is different from out there. It seems pretty short-sighted to invvest millions and not spend a few thousand to know, at least in general, what is already done.”
    It is comments like me that indicate, at least to me, that examiners need to get out into the real world more often. You don’t invest a couple of thousand dollars upfront (before you spend the millions) to do a patent search — companies just don’t work that way. If there is a problem, they work to solve it (as well as the hundreds of other problems they need to solve), and you cannot do a patent search on each one. If the company is IP savvy, they’ll actually have a system in place to identify those “solutions” that may be patentable.

    Often-times, however, the attorney will be presented with an already-completed product (with the money already invested) and be asked by the company “what can we patent on this?” Just to be clear, in most instances, the company will know what is already being done out there, but the “out there” is usually the commercially, known solutions … not the solutions that may have been buried in a patent and never implemented.

    “SO, again I ask “But answer me this Batman, why file claims that any common person should know are old???”
    Because both the inventor/attorney did not have the knowledge of common person??. I know you’ve been told this before, but it is worth repeating, in MOST instances, neither the attorney nor the inventor are experts in the art. There are exceptions, but the answer to your question probably lies in this observation. The quid pro quo for obtaining a patent is not for the inventor to know what is already out there. Instead, the inventor is only required to explain what they think there invention is … it is the examiner’s role in this process to know (probably better than any inventor in many instances) what else is known out there in the prior art and make factual findings as to this knowledge.

    While I’m thinking about it, I wanted to make this point earlier, but I never got around to it. When it comes to patent searches, a fair number of the companies I work with do pre-filing searches. However, these searches are NOT based upon the claims being filed. Instead, the search is based upon a general description of the invention. Assuming that no anticipatory art is out there, the attorney then drafts the patent application. On the contrary, when an examiner performs a search, the search is performed on the actual claim language, which likely describes the invention in a far different manner than the initial general description provided by the inventor to the private searcher. Also, the examiner isn’t just looking for a complete match. Instead, the examiner is also looking for 103 art as well.

    There are a number of reasons why most attorneys don’t perform pre-filing searches (comparable to that done by the PTO) after the application is prepared. First, a comparable search to the PTO would have to include 103 references which would drastically increase the number of references found (if examiners are complaining about IDSs that are too long, what would they say if all potential 103 art was included?). Moreover, even if a decent reference was found in the search, unless the application was poorly written in the first place (i.e., it doesn’t provide enablement for alternative and/or narrower embodiments), then the art shouldn’t change how the specification is written … only how the claims are written. Considering the cost of not only performing the search, but also the cost of reviewing the search and possibly redrafting the claims, it is cheaper to just file the application, as is, and then subsequently amend the claims, as necessary, based upon art applied by the examiner. Moreover, the whole searching, reviewing the art, redraft the application, getting applicants’ comments, and then executing the formal documents can add weeks/months to when the application actually gets filed. For these reasons, so long as the specification is well-written to begin with, it is more cost- and time-effective to just file the application, as is, without performing this additional search.

  119. 162

    PDS, yes, an examiner can not just state something is well know. They (either initially or later; e.g. when taking official notice they need to follow the procedures in MPEP 2144.03) need to support it with evidence. Now, that evidence can be of many forms. It can be articles, patents or even affidavits that they themselves take out (have known a couple that have done this).

    And, yes, the examiner needs to explain his/her rational for for their interpretations. I always make sure my examiners do, anyhow.

    But what I (& I think 6k) are trying to get across is that we all too often see claims that not only us examiners but anyone who works in a given field for even a short period of time (and sometimes things any ordinary person knows – & I am NOT talking UFO & such) are common. The inventors SHOULD know what is common in their field (at least the ones I have talked with seem to) since they are trying to improve upon what is already out there.

    Why would some company spend maybe millions of $$ if they do not at least think what they are doing is different from out there. It seems pretty short-sighted to invvest millions and not spend a few thousand to know, at least in general, what is already done.

    SO, again I ask “But answer me this Batman, why file claims that any common person should know are old???”

    thanks,

    LL

  120. 161

    “Further, as a finder of fact, I am currently under instructions to utilize what knowledge I currently possess in addition to all written documents I find to support my position.”

    Although JD uses the magical words “substantial evidence,” you still don’t seem to get it. In most instances, whatever “knowledge” you possess is not substantial evidence. Moreover, unless you can establish that your “knowledge” pre-dates the priority date of the application being examined, a good attorney is going to slam you on that issue every time.

    In this regard, you should take a look at Dickinson v. Zurko and 5 U.S.C. § 706.

    Although these numbers may have changed in the interim, here are some numbers to chew on:

    “30 percent of adult Americans believe that UFOs are space vehicles from other civilizations; 60 percent believe in ESP; 40 percent think that astrology is scientific; 32 percent believe in lucky numbers; 70 percent accept magnetic therapy as scientific; and 88 percent accept alternative medicine.”

    link to michaelshermer.com

    Personally, I don’t want an examiner to reject (or allow) an application based upon what they “believe” to be true. As JD continually preaches, all I want is a decision based upon substantial evidence.

    Oh … as an aside … if you want to use personal knowledge as a basis for your rejection, I hope you (unlike most examiners I run across) actually explicitly state that you are relying upon X or Y assumptions, etc. One of the things that I find most frustrating about rejections is that when I read them I KNOW, without a doubt, that the examiner has employed some rationale in rejecting the claims (either not giving a limitation patentable weight, or broadly reading a claim, or expansively reading the teachings of the prior art) that the examiner has not shared in the rejection. Unless that rationale is shared with me, I cannot agree with the examiner (and amend/delete the claims) or disagree with the examiner and make an argument specifically directed to the examiner’s analysis. Instead, I’m left trying to guess as to why the examiner believes a certain claimed element is allegedly identically disclosed by the prior art. When that happens, it can seem that my arguments are off-point because I’m an imperfect guesser so that my arguments may not be specifically directed towards your supporting (but unstated) rationale.

  121. 160

    Sorry that’s not a quote and shouldn’t be in quotes. It was an implication from the above statement that examiners with no “evidence” (meaning written texts) are relying on nothing but a “gut feeling” (not a quote, but a “” statement).

  122. 159

    “what 6k and LL like to do … use gut feeling … ”

    JD, first off, I at least get together a shaky case that can’t be easily rebutted. Getting the “killing blow” is what you seem to think I should have every time, the first time. I disagree. Further, as a finder of fact, I am currently under instructions to utilize what knowledge I currently possess in addition to all written documents I find to support my position. To do otherwise would be folly on the part of the office, the courts, and any applicant who wishes differently. And yeah, like LL says, and as I’ve said before, and many have said before. The ones here discussing the issue are likely not the problem people in the first place.

    Well, except for that case where you put the exhaust? on the front of a motor and appealed it. Thank god for KSR blowing Graham’s worthless pos down eh? But hey, I shouldn’t poke too much fun because the examiner probably could have found the correct art to begin with, still the case shows on it’s face the types of things you call out. Specifically, ridiculousness.

    Oh, and another thing, you can hee and haw about how the examiners should be responsible for making bad calls, how about we start charging people based on the allowability of the case, and further, holding them beholden to the people of this country should they try to hold a monopoly over them without sufficient belief that one is deserved? We can let the evidence serve as the guide on who gets charged what, and fined when, etc. There are many ways to change the system that would be very acceptable to all involved, but you stubbornly cling to the all but completely failed (give it time) system of the past.

  123. 158

    JD,

    Firstly, read the preceding. Secondly, glad to see I can still twist your tail when I want :)

    Thirdly, I DO get it. You clearly missed the points.

    I never said that I was the “moral arbiter” of anything. There is a HUGE difference in saying what I LIKE and what I DO. I have issued many broad claims. Some, seemingly extremely broad. However, if there is no art (or other issues), I allow them. It does not matter if I like them or not. That is our job! I literally have my name on thousands of patents, so I do not mind allowing cases.

    However, just like you lump all examiners together, I can lump all lawyers or applicants together. Works both ways. You want to meet in the middle & be reasonable? I would like that. If not, we both rant …

    And I agree that if something is excessively common (and has been) art should be able to be found. If not allow it. However, when you lawyers file claims that can literally be read on Edison patents you get frustrated with what some people are doing with the system (I have had this situation personally. And I don’t work in light bulbs or projectors, but more complicated art. And not only did I reject the claims on Edison’s original “movie” patent, I also rejected it on art more like what was disclosed, so covered both ways. Had another where I was able to (properly) use a wagon wheel patent from the 1870’s.) Yes, I (& most examiners) can reject excessively broad patents (& I am not talking about the ones in the gray area or close to the lines.), but it it s waste of my time & even yours.

    As for the mention of Hyatt, that was in response to why applicants/lawyers file real broad claims. I don’t remember you rebutting any of that. You just, once again, take shots at the examiners. I am starting to think that you wish you never left & are taking it out on those that stayed ;)

    Go ahead & file broad claims. I DO NOT CARE. But answer me this Batman, why file claims that any common person should know are old???

    thanks,

    LL

  124. 157

    to “Clive Fenster”,
    My intent was not to offend you or some others. My remarks were more directed to JD & his rants earlier. I was being rather extreme to make the point (much like JD likes to do but he always seems to miss it when others do). It seems that being subtle does not work here, so I went the other extreme.

    When you see claims that are, and have been, everyday items for years (or decades) it gets frustrating and you do have to question the intents of the filers (be it the applicants or the lawyers). Just like there are a lot of good examiners who regularly do good to excellent work & try to get the case disposed of ASAP (though certain people here won’t admit it), there are a lot of good lawyers that try to do the best they can for their applicants. However, there are those on both sides that do not. That’s all.

    And the other thing to remember is that here & in other blogs you have (usually) the best & most interested on both sides. So when one side starts throwing bombs about how bad the other sides work is, those on the other side get REALLY POed since they are not the ones doing the bad work but are getting hammered anyhow. Something to remember.

    Again no offense intended.

    thanks,

    LL

  125. 156

    Gentlemen,

    I don’t mean to but-t into your spat, lord knows I get into plenty of my own, and I haven’t been following this thread in any detail. However, patent rights are boundless in more ways that one. Think about it.

    For example, determining whether or not a patent claim is valid, and what a patent claim covers, is like measuring a cloud — impossible – it requires a (mythical) crystal ball, or waiting until Lady Justice sings, sings again, and sings yet again, and the passes into the hereafter:

    Given the vagaries of and tensions among one CAFC panel decision to the next, and given that some panels pay no mind to their own en banc decisions such as Phillips, and some do, and the growing tendency of the CAFC to render politically correct, result-oriented whimsical decisions owing in significant part to the corrosive atmosphere created by CISCO’S NOW DEFUNCT TROLL TRACKER PATENT BLOG and other such Organized Big Business (OBB) fraud, the validity and scope of any given patent claim is indeterminable with any degree of certainty whatsoever unless litigated right on up to the Supreme Court.

    Yes, it is sorry state of affairs that has been adding to our nation’s decline in world leadership and prestige. Owing in large part to OBB’s greed-at-any-cost corporate interests (they got theirs and now want to close the barn doors behind them), our American patent system, once the strongest and most respected in the world, is rapidly becoming a laughing stock and object of ridicule in the international IP community.

    This is Jaoi(TM) and I approved this message, and, God willing, I will have more.

  126. 155

    “Even if the claims read on something that any common high-school drop out would know about”

    So, LL, if it reads on something any common high-school drop out would know about, why can’t you find it?

    I’m disappointed, I must say. I actually thought you understood. But clearly you don’t.

    You don’t have to allow my application, LL. As long as you have the evidence to establish a prima facie case of unpatentability.

    If you don’t have the evidence, then yeah, you gotta allow it. You can’t refuse to allow my application because you “feel” that the claims are “too broad” or because you don’t like me, or you don’t like the applicant. To refuse to allow an application that you have no evidence to reject is to abuse your discretion, act arbitrarily and capriciously, and contrary to law. You shouldn’t do that.

    You and 6k still don’t get it. You love to rail on and on about Mr. Hyatt’s patents. The examiner’s job is to examine the application. We don’t expect examination to be perfect, but we do expect it to be conducted according to the law.

    No matter how thoroughly you search, you are never going to have access to all of the evidence. You’re never going to know about possible prior use or sales by others that may establish unpatentability. You’re not going to know about every Norweigan white paper sitting on a shelf in some library in Oslo. You’re not. Get over it. Accept it.

    Do the best search you can in the time allotted. Make findings of fact supported by substantial evidence, and draw the most reasonable conclusion you can, again in the time allotted, and move on to the next case.

    You and 6k seem to think that you’ve been appointed the moral arbiters of what is “worthy” of being patented, and that some how it’s okay for you to go with some “gut feeling” that the claims are “too broad” and, despite your inability to produce the evidence necessary to make a prima facie case, it’s perfectly acceptable for you to refuse to allow an application that, despite your best efforts, you can’t make out a prima facie case against.

    You’re wrong. Both of you.

    And no, I’ve never submitted anything that I knew, or even thought, was unpatentable. Some of it is right up to the line, but that’s my job.

    Your belief that practitioners routinely submit claims they “know” to be unpatentable is, unfortunately, all too typical of the mindset of the examining corps. Given that you’ve been at the PTO 23+ years, and 6k’s been there all of a year and a half, it just goes to show how quickly the bitterness sets in and how long it lasts.

    Sad.

  127. 154

    Mr. Long writes: “Oh, and ANY lawyer that tells you that he is interested in getting the best VALID patent is either piling it on REAL deep or has his name as an inventor. They only care that they get as broad claims as they can get away with (valid or not), just as long as they can some sort of plausible deniability that they didn’t know that the claim was not valid.”

    Mr. Long, you’ve always struck me as a civil fellow. I’ve previously posted that I am interested in getting the best valid claims that I can. I didn’t want to let too much time pass without thanking you for calling me a liar.

  128. 153

    Oh, and ANY lawyer that tells you that he is interested in getting the best VALID patent is either piling it on REAL deep or has his name as an inventor. They only care that they get as broad claims as they can get away with (valid or not), just as long as they can some sort of plausible deniability that they didn’t know that the claim was not valid. Afterall, it is the examiner’s job to find the “best art” (right, JD). The lawyer just tries to weasel around the art. Even if the claims read on something that any common high-school drop out would know about, the lawyer just says “I didn’t see any art that showed it so I thought the claims were valid.”

    Basically, this is the B$ that JD is shoveling, above. Don’t let him fool you. What he means by “follow the laws” is “don’t reject his application”. Afterall, he would NEVER file something that was not patentable. ;)

    thanks, night all.

    LL

  129. 152

    anon asked
    “Where do you draw the line then between your client’s “invention” and the prior art? Also, isn’t an overly broad patent just as “worthless” as a narrow patent – – i.e. why would a potential licensee pay $$$$$ in royalties for something (an overly broad patent) that is a litigation magnet.”

    That is an easy one that anyone that has been around the IP system for a while can answer (even without a fancy, or not so fancy, law degree). Because it is usually cheaper and more cost certain to pay the blood money than the fight it in court. As simple as that. Trolls that get those broad-a$$ patents then go after the smaller start-up companies that can not afford to fight. If they do fight, even if they win the cost would probably put them out of business. Only after the trolls have gotten what they get from the little guys do they move up the food chain. Eventually someone will call them on it & kick them where it hurts. In the meantime, they still have all those lovely royalties they have collected over the years. See the history of Hyatt & the single-chip processor that TI eventually got shot down (effectively) in Hyatt v Boone.

    thanks,

    LL

  130. 151

    “And that’s a patent attorney’s job. We are to get the broadest protection available for our clients.”

    “If all we claimed were the one specific embodiment the client intended ot manufacture, patents would be worthless, because nobody would ever infringe. Everything would be held by trade secret, innovation would suffer, etc.”

    Where do you draw the line then between your client’s “invention” and the prior art? Also, isn’t an overly broad patent just as “worthless” as a narrow patent – – i.e. why would a potential licensee pay $$$$$ in royalties for something (an overly broad patent) that is a litigation magnet.

  131. 150

    “They are not intended as some sort of incorporation-by-reference clause that permits an applicant to add features that might be known to person having ordinary skill in the art.”

    Then why would you cite it as supporting your amendment? Hur, you wouldn’t. They did.

    JD says: “Obey the law” i.e. issue bad patents when your search time is up. JD continues: “Here’s how you know your art is not the best at your command: Preappeal”

    Strange, I didn’t realize that issuing bad patents because of inappropriate search times allotted was a good thing JD. And I certainly didn’t realize that all those “preappeal>reopen” situations that I haven’t seen even one of were what was supposed to tell me when I’m using not the best art. I kinda was of the belief that I would know that it’s not the best art because I’m not a jackas, but that I can conveniently ignore such a fact anytime I please and nobody is going to do a dam thing about it but file RCE after RCE on their overclaims. Funny thing too, it seems to be working out exactly that way (except sans the ignoring part so far). With one appeal brief (not pre-appeal so far as I can tell) filed that I’m going to blow the fck away (See clip relating to VA above) without reopening I’d say I’m doing pretty good. Step into my parlor said the good examiner to JD.

    But, I guess as soon as the mgmt admits it has to follow the law and the applicants do the same, we’ll all be that much happier, not that it will solve any actual problems, except the applicant’s part. Ever claim more than what you or or your client really believe is your applicant’s invention JD? Ever submit an app you know is horsecrp? Not even once?

    Oh, that’s right, you do it every single day.

  132. 149

    “According to APILA, the mean salary in 2006 for patent attorneys with 0-4 years of experience was $136k”

    AIPLA monetary information is skewed toward the high end because many small and moderate firms do not pay to maintain the membership and many attorneys don’t pay the fees to maintain their membership. If the corporation I work for did not pay for my membership, I would let it lapse.

  133. 148

    MVS,

    I have received some very good Office Actions. However, they are so few and far between that they are essentially anomolies (sp?).

    I didn’t evade the question. You clearly agree that “Quality = Reject, Reject, Reject” is a problem. The problem with it is it’s a violation of the APA as the actions taken to enforce “Quality = Reject, Reject, Reject” are 1) an abuse of discretion, 2) arbitrary and capricious, and 3) contrary to law.

    You can’t begin to solve any problems at the PTO until the (mis)management acknowledges that it is required to obey the law (i.e. the APA) and ensure that its employees obey the law. It really is that simple.

    BTW, I see Office Actions from far more than 20-25 examiners. In a two week period? Probably not. But over the course of a year? Definitely. And I get OA’s from across the entire PTO, while you see them just from the AU’s or TC that you review. In other words, my sample is bigger than yours. :-)

  134. 147

    “curious”,

    As to your question about A+B+C vs A+B+X. In my opinion, the examiner needs to explain/provide evidence WHY they “deem” C is the same as X. This can be anything from citations of parts of the references, explanations, etc. But there needs to be something to support their assertion. Just stating this does not make it fact. Personally, I would kick it back for correction.

    It sounds like your response would be fairly easy. Establish WHY C & X are not the same (or equivalent). If the examiner is reasonable, that should work. If they are not, pre-appeal or petition would be a way to go. Maybe an interview with the examiner & the SPE (even if the examiner is a primary) could get things worked out (It really depends on the TC, art unit & SPE. Some are better & more reasonable than others.).

    MVS

  135. 146

    JohnDarling, ranted “Here’s my plan, solution, whatever you want to call it, for solving the PTO’s problem: Obey the law.” and
    “Here’s how you know your art is not the best at your command: you do the typical stretch of a reference beyond any recognition in order to get the reference to “read on” your broadest Unreasonable interpretation of the claims; applicant responds and points out how ridiculous your rejection is; you do the typical final rejection with boilerplate form paragraphs and cross your fingers that the RCE gravy train is going to pull into the station; applicant (pre-)appeals; and you re-open.”

    Your standard non-answer, avoid the question and throw out generalities. Are you really Malcolm using “johndarling”‘s name instead? Sounds like it :)

    Now, serious discussion.
    Do ALL examiners do everything 100% by the book? No, Do all attorneys? No. OK We all agree that there are bad ones on both sides. And that won’t change on either side.

    johndarling, I can probably safely say that I regularly see more cases from more different examiners (at least from by TC) than you do (unless you regularly look at cases from 20-25 different examiner every 2 weeks). The vast majority DO follow the rules/law in their action and use relevant prior art.

    However, somewhere between 10%-20% (of IPR cases) have some serious deficiencies – bad/improper art; improper rejections; not responding to arguments’ etc. These are the cases that have to get redone. And these are the examiners that need to do a lot better work (or, in my opinion, if they can not do better, find a new job).

    People like you throwing out the 80-90% that do reasonable to excellent work because of the minority not only demeans everyone but just makes the whole process more adversarial and less likely to improve.

    You can cite this bad action or that one. The examiners say “well that’s not how I do it.” Examiners can cite this bad application or that bad response, and you respond “That’s not how I do it.” And you assume that since that’s not how you do it, the examiners are just whining & no one really submits bad applications or bad responses. Well, you are WRONG.

    Now, let’s quit making generalities and broad allegations that do not apply to the vast majority of actions/cases/responses.

    He11, I would be happy to just hear you even admit that you have ever gotten a good office action. It would be a nice change from you. Have a good one! :)

    MVS

  136. 145

    Off-thread question, I know.

    Will the citation of each of the McKesson-type Office Actions and Responses from related applications each count as a citation of a prior art document under the new proposed rules? You can get up to 20 pretty quickly.

  137. 144

    “Of course, the fact the applicant could have just claimed his invention in that manner to begin with hardly phases the attorney’s position that they’re doing their best. Riiiiight. No, what you’re doing your best at is just what you know you’re doing, trying to get the absolute broadest coverage that you can get away with.”

    And that’s a patent attorney’s job. We are to get the broadest protection available for our clients.

    If all we claimed were the one specific embodiment the client intended ot manufacture, patents would be worthless, because nobody would ever infringe. Everything would be held by trade secret, innovation would suffer, etc.

  138. 143

    6K: The phrase “the present invention has been shown with reference to embodiments thereof, it will be understood by POSITA that various changes in form can be made without departing the invention” and other caveats like it are primarily intended to avoid features from the specification being imported into the claims, when the claims don’t recite those features. There’s nothing improper about relying upon that such caveats for that purpose.

    They are not intended as some sort of incorporation-by-reference clause that permits an applicant to add features that might be known to person having ordinary skill in the art.

  139. 142

    “I always get 110%.”

    So what’s your problem? And if you can do all of your required production, plus 10% more, why do you need more time?

    6k,

    Here’s how you know your art is not the best at your command: you do the typical stretch of a reference beyond any recognition in order to get the reference to “read on” your broadest UNreasonable interpretation of the claims; applicant responds and points out how ridiculous your rejection is; you do the typical final rejection with boilerplate form paragraphs and cross your fingers that the RCE gravy train is going to pull into the station; applicant (pre-)appeals; and you re-open.

    That’s how you know your art is not the best.

  140. 141

    6k, and MVS,

    Here’s my plan, solution, whatever you want to call it, for solving the PTO’s problem:

    Obey the law.

    Far less than a 100 words, 6k. Pretty simple.

  141. 140

    I haven’t decided quite yet, I’m still way too far away from actually applying, so much studying to do to get those last 10 points on the LSAT, so little time to do it in having this job. Gotta get to it, but frankly, it’s not happening for awhile, I’m just now finally getting used to GS-9 production levels. I assure you it’s not a picnic in my art. Heck, most other examiners marvel that we do my art at all. Kinda surprises me actually sometimes. I should have just done printers and been bored.

  142. 138

    e6k

    “is x a species of genus c or otherwise implied to be c to one of ordinary skill?”

    nope

    Just “deeming” one thing to be another at the point of novelty is not sufficient.

  143. 137

    Oh and before I head out, I rejected a guy over a limitation that some other examiner found to be a “good enough” limitation in a parent, and I didn’t get the director in on it. Too bad for that guy. Looks like his parent will get pwnt AND he’ll be filing out the wazzoo to get this one issued. learn2distinguish (l2d) and learn2havesupport (l2hs). The case I’m looking at right now for instance, not going anywhere but through first action final, or an allowance if he chooses to mellow down a bit. Ha te to do it, but dang what option are these people giving me? I’m generous to a point, but get srs after awhile.

    Hot da mn diggity MVS, no. 3 is awesomesauce in a can, it hadn’t occured to me that we wouldn’t really need to “strike” so much as just slow down the work. I mean, I’ve heard of that being done, but just never remembered it. POPA might can’t suggest it, but anyone with the “send to all” button on their email sure can. Particularly, a group of someone’s with a job waiting on the outside should anything adverse happen to the ringleaders. Of course, should they choose to martyr any one of us, we could simply film the whole thing on this handy camera they’ve provided for us and broadcast such film on an easily attainable site location. This is the beauty of the interwebz.

    Anyone see about how Anonymous is taking on sciento logy? We’re having a rally on the 15th. See you there guys?

    Bebe- I doubt seriously that I’ll stick here past 3 years, I’ll make it to 2 years though and get “hired”. Then I’ll beat it to a firm that will better accomodate my going to lawschool.

    Curious- is x a species of genus c or otherwise implied to be c to one of ordinary skill? Point us to the app so we can laugh at a. you or b. the examiner.

    And curious, that’s a funny case, but that’s got nothing on this amendment I just picked up, the guy literally based his amendment’s limitations on what he had to do in response to my objection to his drawings. I’m pretty sure that an examiner’s objections to the drawings aren’t a good place to draw support for an amendment limitation from. So far as I know, that’s evidence of not owning the invention at time of filing. On the other hand, the situation could go one of two ways based on how is drawings are and one of ordinary skill’s knowledge thereof. I’ve got him in a catch 22, but even if I didn’t, the spec suggests that his invention was really going the “other way” instead of the way he went with his new drawings. Bad bad bad. That’s what I call a KILLER 112. How do you get around something like that? I mean sure, he can amend the claims to get rid of that limitation and use something else, but they’d eat him alive in litigation with this on the record. Ineq conduct here he comes! learn2drawyourinvention (l2dyi). Frankly, I don’t think this guy knows what he’s doing, he’s labeled things in the claims clearly differently than what they are even in his new drawings, it’s a huge mess.

    Here’s a hint to you da’s out there, when you have to rely on “the present invention has been shown with reference to embodiments thereof, it will be understood by POSITA that various changes in form can be made without departing the invention” in the spec for your support in the spec ur doin it wrong. No, seriously, you are.

    Man, examination is so much easier when it doesn’t require searching. I’ve got to get me some moar o this.

    e6k out yos.

  144. 136

    MVS: your posting regarding “non-final and final” errors struck a chord with me today.

    My application claims A + B + C where the prior art shows A + B + X

    I am working on a response to an OA in that application today where the examiner rejected the claim over that prior art and as to element C, he said only that he “deemed” X to be C

  145. 135

    Oh, and “johndarling”, as to your (I assume rhetorical) question about why don’t all examiner just work @ 95%, I think that you know the answers. For those that do not, a couple of big reasons:

    1 Newer examiner want promotions, & to get them they need to be around 108%. @ 95%, you stay where you are & hope your spe doesn’t try to question your quality (no matter how good it is, someone can ALWYAS find (or make up) something wrong as an “error”) (or even work-flow) as a punishment measure.

    2 Too many examiners want the bonus for 110% (in addition to keeping their SPE happy). Of course, this is a stup-id financial move since the bonus pays LESS than an equivalent amount of OT for the production would pay. And now, with nearly everyone having a laptop & able to work OT from home, time/travel/family constraints should be less of an issue.

    3 And, most importantly, based on what POPA has always said (I am not a labor lawyer, so I can not confirm the accuracy of this. Anyone out there able to?), the examiners CAN NOT, as a group, nor can POPA suggest, a work slow-down like you propose. We were always told that it was illegal for govt. employees to do so. Just like we can not strike (see “air traffic controllers; Reagan administration”).

    Other than these issue, great idea, johndarling :) Any way to overcome these issues? Any others great ideas?

    MVS

  146. 133

    “Anyone see a problem here??”

    Yeah MVS that was what I was bringing up further up in the conversation except I wasn’t sure that the primaries were doing that, though I strongly suspected it. They don’t “produce” hardly one little bit more than me, it’s fkin rediculous. Don’t get me wrong, most of them I know know their art quite well and COULD produce a great deal more than me. The only thing is, they have to spend time messing around with us Juniors so much because we have such large inc. numbers. So Idk, you look at primaries as the primary producers of production, well yeah I guess if you look at it through a skewed perspective. This is one reason I’m considering stopping trying to resolve cases by an examiner initiated conference. If they don’t want to talk, screw it, take your best shot at the prior art. I’ll just sit here and build a nice RCE train for someone to inherit when I leave. Of course, the fact the applicant could have just claimed his invention in that manner to begin with hardly phases the attorney’s position that they’re doing their best. Riiiiight. No, what you’re doing your best at is just what you know you’re doing, trying to get the absolute broadest coverage that you can get away with.

  147. 132

    Dennis,

    did this research have any significatn findings as to appealed re-exams? Just curious, as they are being examined differently now (outside their traditional art group) and if that change has affected anything.

  148. 131

    I agree with JD’s piece on their stratagy, but then again, let’s be clear, JD’s plan (from what I’ve read of it) wouldn’t have had any more of an effect and very likely less of a positive effect and worsening the problem. On the other hand, their strat does have at least a snowball’s chance in heck of working somewhat, if the applicant’s allow it to. I’m fairly sure that mgmt isn’t doing what they’re doing “just for the fun, or giggles, of it” nor because they are particularly stup id as JD etc. seem to believe. They know they walk a fine line between having examiners quit en masse and in having applicant’s raise a huge ruckus. JD, if you please, give us a copy paste of your plan to end the PTO’s worries so that we may blow it further out of the water than anyone can hope to blow mgmt’s. You do have that ready to copy paste in under 100 words by now right? In the end, I have to stand by what they did: Something, and a Something that was nigh garunteed to have no real bad effect for the office, which is precisely what they wanted to do.

  149. 130

    Further, if you look at Burden’s testimony you’ll see numbers that clearly reflect the reality you can ask anyone about IRL around here. link to judiciary.house.gov on page 5.
    30-44 percent of new examiners leave within 3 years. Look at the numbers man. hired 1k, lost 500, hired 1k, lost 500, hired 1k, lost 500. Now, if like you say, the 3+ year people only attrition at a 4% rate, then where are those extra 300+ people coming from per year? Oh yeah, those less than 3 years. Strangely, that number is near 30 to 44 percent of 1200 new examiners as stated on the first line of the paragraph. Remembering that it takes around 3 years to really “get into the job”, you think that 60%- of the hires actually becoming productive members of a TC is a good number? To each his own opinion I suppose, I however, would consider that fairly abysmal and any private sector employeer that required specialized training lasting years for it’s employees would see it that way too. Law firms get around this by having the schools do all their basic training for them. I don’t believe any young attorney’s go to the PATA (patent attorney training academy) after law school do they?

    Finally, and most strangely, last presentation I heard they only wanted to hire a pathetically small number (88 iirc) of examiners for my entire TC for the entire next year. This is information from the inside, you heard the scoop right here. I guess this is because they magically retained such a high number through artificially upping the salary for the first 4 years and not firing anyone. Their “sins” about not firing will return to haunt the PTO, but they’ll be long gone or will merely spin the “challenge” in another way.

  150. 129

    O and JD, ffs I know the difference in the words, it says quite specifically I must cite the “best” art there, but who’s to define what is encompassed by “best”. FYI, should I take a notion, “best” is what I say it is. Maybe when they teach you that “best” art is Very subjective in light of a very broad claim, you’ll understand why it’s my call baby, not yours, nor anyone else’s. Who’s to say a 103/102 is any better than another 103/102 showing things completely, but also oppositely than the first does? A QAS? Hah! And even if they do, I doubt you’ll ever come across a case of anyone getting dinged for that, at all. You start shirking your should’s and examiners very well may start to run amok, especially if you’re a repeat customer. Trying to say otherwise is you pssing straight into the wind, hope you don’t (haven’t already) hit yourself in the eye. Besides that, all it takes is a call to the attorney and they’ll hee and haw (but to date not say “we aren’t required to tell you”) until they show you right where the spec supports it and you can put it on record. This is especially telling when they have no real support. You and I both know things are exactly as I describe them here.

    Oh and yeah, Dudas’s reforms working for attrition? Are you kidding me? Haha, I loled at his citing “initiatives”, what were they? Nobody knows! Except some examiners, his initiatives were a. paying more for the initial 4 years and b. not weeding out the truely bad newbies. Oh, and practicing law is non-analogous in the way you propose because you guys are just switching firms like nobody’s business, not getting OUT of the patent lawyering period. If we look at those numbers I wager they’d be around 5%- amirite? Yes, probably more like 2%- of brand new attorney’s leaving practice as soon as they start.

    Also, let’s be very clear as to what happened in 2006. First class to the PTA came in around mid-year. OVER 50% left. The next class had around 40% attrition, mine had around 40% also (these are numbers of attrition BEFORE first year was acheived) the after a few more classes came in Everyone, as opposed to just the EE’s, got a retention bonus of no less than 4k (I’m not sure if this is 4 or 9) and the EE’s got 9k (4k for each year lasting up to 4 years, or for EE’s 9k for each year lasting up to 4 years). Essentially, the GS7’s Came In at around my GS-9 salary level (and GS9’s around an 11’s). Gee, I wonder how they got those numbers down to 15% in 2007? I’m not even convinced they in fact did get it down, they’re using some trick of accounting (not including the “interns” that we are “considered” for the first 2 years and instead magically changing this evaluation to look at people going into their 2nd year, but when they are actually “hired” as an “employee”) to make the numbers look good. There is simply no way I can be hearing the attrition rates of 50% for so many classes and it somehow magically average down to be 15% Down from 20% even considering a grade level bump in pay accross the board. Even when further considering that they told all the managers to AVOID Firing Sucky People. All I have to say is, I hope you enjoy your new and improved retained people, because if you like the ones you have now, you’ll Really like the new ones. No, seriously, you will.

  151. 128

    JohnDarling:> And if the job is a “living hell,” why are you working there?

    I always get 110%. But that is why we have such a turnover problem.

  152. 127

    As a 2nd point about the “quality=reject” mentality:

    If you keep rejecting cases, and creating RCEs and continuation, rather than disposals, fewer and fewer real NEW (cases that are not a con, cip, div or rce) cases ever get examined. As it is now, (based on surveys I have seen for a few arts) a primary actually acts on far fewer NEW cases than a junior (GS 7-11) examiner, even though the primary’s production is a couple times higher for the same # of hours. Many primaries, particularly in the electrical & business methods areas, only do (at most 1-3 new cases a PP. Many not even that; often they do zero new cases in a PP & still meet their production. However, the production is somewhere around 7-12 counts a PP. The junior examiner generally cranks our 4-5 new cases a PP and they need 4-6 counts a PP.

    Anyone see a problem here??

    I “think” that this was the justification for the limiting the # of continuations in the rule package that was (rightfully) shot down. If you have fewer continuations/rces you have to do more new cases to meet your production. That is simple math.

    Now, the same effective thing can be done if we just change the attitude at the office from “quality=reject” to one of find allowable subject matter, identify it to the applicant & try to get it in the claims. As well as get the best art in the case the 1st time around and make as solid rejections you can in the 1st action. We get this change of attitude, the backlog will drop without any legislation.

    MVS

  153. 126

    “Faced with that type of Orwellian newspeak from PTO (mis)management, how do you propose to convince them to double the time per application?”

    JD, they hardly require such convincing to up the time for examinatin, they would love to. If you stop submitting so many crappy overclaim “combination” apps that after we “make art work” you “make limitations work”, thus making the backlog go down, and we’ll spend a full week on every app k?

    You know that. They don’t want to spend 20 hours max per app for their health. They want to do it so we can get to the next person in line’s application. If we were the DMV and we looked at our line it would wrap around small towns twice, with many people being in line in more than one place.

    New question: Every new administration brings a new Director iirc. I hear Obama has quite some ideas for IP reform though so if that’s your bag baby then YEAH!. If you’re not for reform, then I believe McCain goes more along those lines from what I’ve been able to scratch out of his campaign stuff. I however have no opinion about who would make a better president they both seem decent to me.

    “Double the time alloted per application, forbid more than 45 hours work per week, and limit the number of claims examined (not filed) in any one action to 20 or less and you will see better patents and you will reduce the backlog.”

    Now we’re cooking with gas.

    Pitchford- sorry about that man, that’s just what I read in several reports of the avg get out of school salaries, I’m well aware if you don’t go to a bigger firm you’ll be making much less. Then again, from what I hear, you’re working a lot less too, so it balances out accordingly. What question did I dodge?

    Bier- if I didn’t tell them such then I would be shirking my ethical responsibilities, although yes, I would not word it as such. I would plainly tell them that it would be a very hard sell, and would be very likely to not cover anywhere near the claims that we are sending on first action, but that was only my own personal judgment, and that should they feel it is a good decision then we should definitely go ahead with prosecution. I might even state to them why I feel as I do, and perhaps they can tell me why there’s is differentiable from what I say, and MAYBE that would lead us to finding the real novelty in their idea. You’re right, a law education does make a difference and you guys do a lot more than meets the eye (though I know about a good portion of it anyway) and would not justify anywhere near equal pay, except for one little thing. Perhaps you can guess what that one little thing is, perhaps not. I’ll leave it to you to cipher it out since it’s been stated about 100000 times on here before.

  154. 125

    Personally, based upon what I see, the the allowance “errors” are a much smaller problem that are the IPR (non-final and final) errors. And these errors are a bigger problem and are a substantial part of what has caused the backlog to balloon in recent years. Not the only cause, mind you, but a significant one.

    The problem is that “bad” or “erroneous” allowances are out there for everyone to see and the ones selected (the stick or swing) are easy for anyone to understand & ridicule. That’s why the emphasis on allowance error rate. Combine that with the 2nd pair of eyes (an AWFUL idea) and most examiners are afraid to allow anything that is not very detailed. And then combine in SPEs that are afraid to sign any allowance that is not real detailed, it just gets worse.
    (You all wonder why SPEs are more likely to sign a bad rejection than a bad allowance? Easy answer. They are rated on the number of allowance errors they get from OPQA. They are NOT rated based on the # of IPR errors they get back from OPQA. In that instance, what would you do? Honestly?)

    As for the errors rates that upper management throws around, yes, they are of questionable quality ;).
    Based on #s I have seen, the number of cases that are sent back from OPQA are at least 2 times (sometimes 3x) the final number of errors that are reported. Many of the other kickbacks are negotiated away by the TC (Either by saying accept error A if OPQA drops error B. Or by making “kitchen-sink” arguments, no matter how extreme. Or by making proposals that the examiner make a “reasons for allowance” that the claims are interpreted a certain way so that the art found by OPQA wouldn’t read on the claims, even if the spec. doesn’t match the reasons. ETC. You get the idea. – And of course, the spectre of J. Doll hangs over it all. After-all, once he commits that the office will meet the quality goal, it is known that it WILL meet it, no matter what it takes.)

    You want allowances to go up & less B_$ rejections? Stop complaining about the occasional “swing” (I h4te those types of patents, but they really are a very small issue & have little to no real impact) and make a bigger deal (in town hall meetings, emails & letters, interviews with SPEs, etc.) about the bad rejections. Hopefully with good examples. Also, have the SPEs be rated on the IPR error. ANd, at least as importantly, make OPQA a separate entity that is not under the directer of patents, but is external to the office. Also, the rebuttal process should not be where the TC & OPQA get together to determine what will be held as an error but an entity that is not held to the meeting of a given error rate but is there to determine what the numbers really are.

    Until these types of changes are made, the “quality=reject” mentality will not change.

    MVS

  155. 123

    The comments on quality are amusing. PTO management’s idea of quality just means rejecting everything, which is easy to do with ‘Dadaistic mosaics of irrelevant art’, LOL! Our idea of quality would of course mean reasoned rejections based on the closest art, but this cannot be measured by the kind of puerile analysis that their management engage in, which is at least one reason why none of their antics actually raise quality in the real world. I would say that they are only fooling themselves, but sadly they probably are fooling some of the politicians.

  156. 122

    Erez,

    The events of autumn ’07 have gone exactly according to PTO (mis)management’s grand plan.

    PTO (mis)management has done a masterful job of insulating itself for criticisim and from the consequences of their unlawful behavior.

    They get criticized for issuing patents on swinging on a swing and exercising cats and peanut butter and jelly sandwiches, so they decide, “Okay, we won’t issue anything. We can’t be criticized about ‘bad patents’ if we don’t issue anything.”

    So the backlog and pendency swell as the examining corps labors under their directive that “Quality = Reject, Reject, Reject.” Applicants, the patent bar, Congress, etc. all raise a ruckus about the pendency and backlog. “Do something!!!” we all scream.

    PTO (mis)management responds, “Well, it’s not our fault. We’re examining a record quantity of applications at record quality. We measured it. It’s 96.5%. The backlog and pendency must be somebody else’s fault. It’s the fault of applicants and practitioners filing too many silly applications, too many continuations, too many RCE’s, and not coming to the patent office prepared to prosecute their application, and purposely delaying prosecution by waiting to claim what their invention years after the initial filing date. It’s their fault. But because you want us to do something, we’ll do something. We’ll change the rules to punish the applicants and the patent bar. That’ll stop them and solve the backlog and pendency problems.”

    Now you know, I know, the examiners know, and PTO (mis)management all know that those rules weren’t going to do diddly squat in reducing the backlog or pendency. But PTO (mis)management did something.

    Two possible outcomes: 1) the rules go into effect; or 2) the rules get enjoined/declared unlawful. I’m pretty sure PTO (mis)management was aware of the possibility of 2). I saw Mr. Whelan speak at a BADC meeting in/around April 2006 and he was asked about the legality of the rules and he said, “We’ve thought about that. And we think we have a 50-50 chance, so go ahead and take your best shot.” I’m paraphrasing a bit, but just a bit. He definitely claimed the PTO had considered the possibility of a legal challenge to the rules (though probably not before they were put into effect), that they thought they had a 50-50 chance of the rules being upheld, and that applicants should go ahead and challenge them if they didn’t agree with the rules.

    So, if the outcome is 1), great. The rules go into effect, and by the time it’s proven that the rules have no effect on the backlog and pendency, all of PTO (mis)management has moved onto comfy jobs working for the exact same applicants/practitioners that they previously demonized. Holding themselves out as “experts” on navigating the byzantine PTO rules. Making nice coin advising applicants and practioners on how to game the rules they wrote. Pretty sweet. Where do I sign up?

    If the outcome is 2), no sweat. PTO (mis)management can claim, “You wanted us to do something. We did something. Not our fault that the court wouldn’t approve. Change 35 USC through legislation.” Wash their hands of the mess and walk away.

    You gotta admit, it’s a pretty ingenious strategy.

  157. 121

    I think the initial IDS requirement has its merits. You should have to tell the Office about anything you are aware of.

    The ongoing reporting requirement is bogus. It just leads to this huge exercise in wasting time citing art from one application to all of the other applicants you have pending for a client.

    This may not be a problem when you’re talking single digit numbers of cases per client, but when you hit the 4 digit case load with a client, it can be a bit of an issue.

    And for the Examiners, we file those supplemental IDS’s not because we just want to bury you, but because the courts require us to file on anything even remotely tangentially related.

  158. 120

    IDSs are useless because they either waste an Examiner’s time or are not used.

    Attorneys necessarily IDS (a new verb) more art than is really needed and (usually) draft the claims around the known art. The art cited in an IDS is what the Inventor is familiar with so samples only a small patch of the relevant “art space”.

    So yes, the art in an IDS can be mischaracterized to cobble together a rejection, but everyone’s dream is to get solid relevant rejections so prosecution can be efficient.

    An Examiner is a person who is uniquely positioned to acquire a deep and broad knowledge of art in a specific field. But the way to get that knowledge is not by relying on the crutch of the IDS but by searching inventions in your art unit.

    And JohnDarling, I don’t see how the USPTO could be convinced of making effective reforms. That would require admitting that the events of autumn ’07 were unnecessary.

  159. 119

    For those who are more politically savvy than myself:

    Would McCain, if elected, fire those SOB’s in the PTO, or would he let them stay?

    Would Obama be a better choice for this reason (ensuring they are thrown out), and possibly for other good reasons with regard to IP issues?

  160. 118

    Why are IDS’s useless? Every application I draft and file has an IDS containing references a lazy examiner could easily use to cobble together a 103 rejection, or references an unfair examiner could mischaracterize to make a 102 rejection.

    The PTO does, lately, however seem to be under marching orders of “grant no patents.”

  161. 117

    my guess is that those who respond to salary surveys are more likely to be making good money than are those who do not — thus, surveys are skewed high

  162. 116

    John Darling I agree with you these mismanagers will never see reality much like everyone else in this administration they will simply see what they want to see and massage data to say what they want it to say (Iraq). The only thing we can do is vote them out of office next election which something I plan to do. Amen to examanonymous, I couldn’t have said it better.

  163. 114

    examanonymous says:

    High attrition equals large backlog at the PTO because the cases that are left behind by departing examiners must be picked up by another examiner which means that at least one remaining examiner is no longer doing new cases so, in terms of backlog, for every examiner that leaves they prevent at least another examiner from doing new cases. Thus a 15% attrition rate is really at least a 30% attrition rate in terms of the backlog!

    To which I say: and this is problem on more than one level b/c in my experience those cases left behind are at least 50% of the time complete garbage b/c the examiner was either new and naive and signed by the SPE who is often just as poor an examiner and thus there are a whole lot of mistakes or was a primary who checked out long ago looking forward to retirement or another job or simply should never have been given that much authoritity to begin with.

    So, not only is that case going to add to the backlog, but very likely it is going to require starting over from scratch with a RR and possibly the big time hassel of getting a micro-managing group director signiture to justify why new rejections are being applied that call into question the validity of an issued parent case (issued by the same naive newbie or lazy primary).

    Of course I am in the “unpredicable arts” so I would not be suprised if other examiners have had very different expereiences, just like for some TCs obtaining an acceptable production of 95% can be done relatively easily in 40 hrs.

  164. 113

    Lowly,

    I am not sure where you are getting your stats, but only new associates at large national firms make in the vicinity of $150k their first year. At the not so big firms and local big firms, they probably start at $90-110k. At boutique firms or small firms they aren’t even making that.

  165. 112

    “As everyone here knows, the quality of examination has gone down over the years.”

    Erez,

    Unfortunately, Mr. Dudas and Mr. Doll are not here. According to them, quality is at an all time record breaking high.

    If you tell Mr. Dudas and Mr. Doll that examination quality has gone down (in fact, it is so low it would be hard to imagine how it could get any worse, but I’m sure 6k will think of something), they will not believe you. They will cite you the results of their “second pair of eyes” and “OPQA” and “IPR” (in process review) programs to “prove” that you are wrong. Quality is at an all time record breaking high they will tell you.

    Faced with that type of Orwellian newspeak from PTO (mis)management, how do you propose to convince them to double the time per application?

  166. 111

    An examiner’s ability to meet the production requirement is not relevant to the problems of the USPTO. The fact that 60% of examiners get bonuses for overproduction doesn’t prove anything.

    Any examiner can send out an office action in an arbitrarily short time if that is what management demands. The question is whether the search and arguments are reasonable.

    As everyone here knows, the quality of examination has gone down over the years. Many rejections are Dadaistic mosaics of irrelevant art only tangentially related to the claims.

    But the examiners are not to blame. Claims have become, justifiably, more amorphous and more numerous. Examiners are not given enough time and do not have reasonable search tools. The IDS is practically useless and the ESD will be worse. SPEs seem intent on not allowing even patentable claims.

    Double the time alloted per application, forbid more than 45 hours work per week, and limit the number of claims examined (not filed) in any one action to 20 or less and you will see better patents and you will reduce the backlog.

  167. 110

    Mark,

    Starting salary at the big firms is $160k in most markets, $145k in others. 6k isn’t off his rocker at all to say $150k, although that certainly isn’t the overall average because most attorneys don’t end up in big firms. I’d say your average first year patent prosecutor makes somewhere in the $90k-$110k range, before bonus. If they aren’t making at least that, they should seek other employment.

    Some people graduate with loans; some don’t. I was fortunate that my grandfather left me enough in trust to pay for my legal education. I had scholarships for my undergraduate and masters degrees.

  168. 109

    Examiner 6k,

    Last time we had a pay discussion, you dodged my question. You now say that new associates make north of 150k/yr.

    That is a lie. Period. Whoever told you that, or wherever you read it was fibbing.

    Drop a bit over a third off of your figure, then add on a 100k law school debt, and see where your income for new associates comes out. You’ll find that it’s much closer to your income than the lies you’ve been told.

    It’s impolite to speculate as to what people make, and it’s completely rude to make wild assertions that are clearly erroneous.

  169. 108

    I’m having a hard time believing that Mr. Dudas’s prepared statement, that is entered into the House records, that 60% of the examiners in FY 2006 did, at a minimum, 10% more than is required is a lie. That would be a colossal blunder that even he is not capable of.

    It doesn’t matter what 60-70% of departed newbies state as their reason for leaving. The facts are that 85-90% of newbies stay, despite the production requirements. And for those that stay past three years, only like 4% leave later.

    Don’t think that GAO report will win the day for you. It’s already been thrown on the pile of unread reports along with the other GAO reports, including the one criticizing PTO (mis)management for spending a $1B on a “paperless” system that doesn’t work. (I still can’t understand why it takes two weeks for my EFS filed response to get into IFW.)

    I’ve seen both Mr. Dudas and Mr. Doll speak at various meetings, and they both claim that “studies have been conducted” regarding the “millenial” issue. You can bet your bottom dollar that they believe it is a factor in attrition. Like I also noted, Mr. Dudas also believes that the initiatives taken by PTO (mis)management in the past two years to reduce attrition are working. Is he lying about that too? I don’t know. But if the attrition rate does go down, whatta you gonna argue next?

    I doubt there are any numbers available on the attrition rate of first – third year patent prosecution associates, but I will tell you from personal experience that it is probably higher than 10-15%. And we ain’t going out of business.

    The push from PTO (mis)management is to decrease, not increase, hrs/BD. If they somehow manage to get AQS’s and ESD’s and all this other nonsense they want, you better believe you’re gonna see a decrease in the hrs/BD. If that happens, get ready to jump ship.

  170. 107

    “Your opinion is rtarded, but I guess that never dawned on you, it probably will soon though when we get quite a raise and you’ll still thing it pays “pretty well-paying” instead of “overpaying”. The fact that the technical expertise required to review your complex applications in under 20 hours is in high demand in addition to the ability to negotiate the legalities of the system make for quite a combination of skills, not completely unlike your own.”

    If you really think that what you’re doing in examining applications is equivalent to what we do, you’re wearing blinders. Yes, what you do is similar to SOME of what we do, but it’s only maybe 25% of the whole picture. It doesn’t justify equal pay. This is one case where the law degree does make a difference, whether you like to hear that or not.

    Just wait until you get out of PTO and experience your first time of drafting an application out of whole cloth. It ain’t as easy as you think. And you can’t just tell your client “You’ve got nothing here. Forget about it.” I’m sure your supervising attorney will LOVE to hear that.

  171. 106

    “According to PTO (mis)management, the attrition amongst newbies is due to a) personal reasons, and/or b) the “millenial” generation issue (i.e. those in the 20 something generation view all jobs as essentially temporary, and don’t expect to work at some place their whole careers and get a gold watch). Those that do stay beyond 3 years, however, become RCE gravy train riding lifers. Hooray for the RCE gravy train.”

    Well John he lied about this one as the GAO report clearly spelled out that 60-70% of the examining core leave due to production. So if he lied about that isn’t reasonable to assume that he lied about 60% of examiners doing 110%. Haven’t we seen enough evidence that this administration has problems telling the truth (Iraq). You are correct in that this issue would be a loser in a court room. What is going to take is an honest commisioner that has years of patent experience to lower BD and do you honestly think that 10-15% attrition is industry norm? Do you have that much attrition at your job? Most bussinesses would go out of bussiness with an attrition rate that high.

    High attrition equals large backlog at the PTO because the cases that are left behind by departing examiners must be picked up by another examiner which means that at least one remaining examiner is no longer doing new cases so, in terms of backlog, for every examiner that leaves they prevent at least another examiner from doing new cases. Thus a 15% attrition rate is really at least a 30% attrition rate in terms of the backlog!

  172. 105

    Invisible Guy,

    For the 201st time, I will try to explain this to you, as you’re clearly incapable of understanding that I’m playing devil’s advocate.

    So here we go: The reason PTO (mis)management does not adjust hrs/BD is because they believe (again, they believe, not me, not you, not anybody else, but they) that the evidence and the facts do not justify a change in the hrs/BD. As I clearly posted, according to PTO (mis)management: 1) 60% of the corps can do 110%; 2) the corps examined a record breaking number of applications last year 3) at record breaking quality levels (96.5%, however the heck they measure that). 4) Attrition is a problem, but no worse than any other industry and the initiatives put in place the last two years are working.

    That is what PTO (mis)management believes. Go read Mr. Dudas’s testimony that I linked. It is a fascinating insight into the Orwellian world that PTO (mis)management lives in.

    So that is PTO (mis)management’s EVIDENCE that hrs/BD do not need to be changed.

    What is your evidence? I’ll tell you what your evidence is. It’s a bunch of anecdotal tales from examiners and departed examiners that they have to work voluntary overtime to “make production.”

    If you could somehow get a cause of action against PTO (mis)management and were able to present your case to a jury that knew nothing about the PTO production system, and you and/or POPA, presented your evidence (e.g. about 5,500 weepy examiners all telling tales of woe about how much voluntary overtime they had to do “just to keep their jobs”) and then PTO (mis)management presented its rebuttal case (e.g. “Ladies and gentlemen of the jury, 60% of those examiners who just testified not only ‘just kept their job,’ they did, at a minimum 10% more than they were required to do, and got paid a bonus for doing it”), it would take all of about 10 seconds of deliberation for the jury to find in PTO (mis)management’s favor.

    Got it?

    So what does that tell you and the rest of the examining corps? Well, what it should tell you is that 30+ years of whining “we need more time” hasn’t convinced anybody who has the authority to give you more time to actually give you more time. So it should tell you that your strategy is not working. Yet you keep whining.

    What you need is evidence that the examiners need more time. Whining is not evidence. And don’t think the GAO report is gonna rebut PTO (mis)management’s evidence. They’ve already addressed it. Again, go read Mr. Dudas’s testimony.

    When you have a significant majority (e.g. about 85%) of the examining corps doing right about 95%, then you will have a case. Of course, in order to do that, you have to convince your colleagues to do their 95.00001%, and then go home and relax. No more voluntary overtime to get bonuses, no more taking annual leave to get your production into the bonus territory. (Why anybody would do that, I don’t know, but I hear the tales anyway.) No more kowtowing to your id1ot SPE.

    Then you will have an argument that you need more time.

    You willing to do that? Is there anybody there willing to do that?

    My guess is no.

    But I’m a cynic.

  173. 104

    “John, many SPEs will make your life a living hell if you do not have 110% production. For many examiners, 110% is the minimum acceptable production. By calling 100% the minimum production and calling 110% an award production, and then forcing examiners to do 110%, that is the Office’s cover for refusing to give more time. Trust me, for many examiners, 110% is not optional.”

    So? If 110% is not optional, and 60% of the examining corps can do it, and get paid a bonus for doing it, what’s the problem?

    And if the job is a “living hell,” why are you working there? Life is too short for that. Free yourself. But for the love of God, don’t just sit there and take it and then whine about how your job is a living hell. You’re an educated person. Go do something else.

    6k, you may want to read Rule 104(c)(2), which states that if the examiner rejects the claim, he/she “must” cite the best art at his/her command.

    When, or should I say if, you get to law school, they will teach you the difference between “must” and “may” and “shall” and “should” etc. It’s pretty clear you haven’t learned it in your meteoric year and half rise to GS-9.

    “And I also see that you can’t see the difference between calling someone out on making a completely false statement and in calling someone out for misrepresenting the facts but still having a valid point in light of ALL of the facts.”

    If examanonym had a “valid point,” then why did he/she need to “misrepresent” the “facts” to make such a valid point? Examanonym’s statement that since second pair of eyes hardly any examiners do more than 95% is absolutely, completely, utterly and totally false. And I posted the EVIDENCE that proves it is false. If you have some EVIDENCE that examanonym’s statement is not false, then by all means feel free to post it.

    I won’t hold my breath waiting for your evidence.

  174. 103

    I didn’t say you didn’t have them I asked for some examples. Though strictly speaking I meant more towards prosecution.

    To respond to your example however, I have not been accused of such, but I have been under moments of intense pressure, be they less than that I will admit. I’ll get there soon enough I assure you. When I do, I suppose I’ll hope that I didn’t admit something that would lead a reasonable person to believe such a thing, and when the time came I would thoughtfully put forward my reasons to rebut such an allegation. Perhaps you can give me more specifics for any one of these apparently routine situations?

  175. 102

    6K – “Hey attorney’s, I and other examiners have given lots of situations where it’s a tough call on what to do from my side, any of you mind coming forward with some situations where your job was particularly hard and/or demanding?”

    Ever had your deposition taken by some a$$hat, liberal-arts-major litigator looking for a nice juicy sound bite taken out of context to try to show that you committed inequitable conduct? Ever been accused of inequitable conduct in federal court? Most patent attorneys involved with prosecuting economically significant patents have had this experience. Having had this experience myself, let me say that your “tough call” that will be reviewed by several levels of your superiors, the BPAI, and CAFC just don’t sound that tough to me by comparison.

  176. 101

    “IMO, examining is a pretty well-paying”

    Your opinion is rtarded, but I guess that never dawned on you, it probably will soon though when we get quite a raise and you’ll still thing it pays “pretty well-paying” instead of “overpaying”. The fact that the technical expertise required to review your complex applications in under 20 hours is in high demand in addition to the ability to negotiate the legalities of the system make for quite a combination of skills, not completely unlike your own. I interviewed for quite a few jobs before I landed here. Here’s a brief rundown for you of just a few. When I started here I was making 69k, and I now make around 77 iirc. Job no. 1 50k Richmond Va (cost of living around 3/5 of DC’s, if not lower) Job no. 2 80k Buthol of Texas (cost of living around less than 1/2 of DC’s) Job no. 3 70k I’m not even sure where this multi-nat wanted to drop me, but it’s definitely not in a big city of any kind, probably in Iraq etc. Job no. 4 50k NOVA. And I routinely get inquiries from other companies in Re posted resumes (what can I say, I picked a good major) so I’m guessing I’m in demand. I took this job because it came through quicker than the 2 I liked, and I missed an interview for the one that was probably the best one (no. 3) so I could dick around with a second interview here that wasn’t even needed. On the whole, I’m glad I did for one reason, it pointed me to law, which I was otherwise disregarding heavily. That really is the major benefit of working for the USPTO. Realizing that you’re currently doing a job that’s harder than writing a bs spec about some random crap “invention” some guy sends you information about and then slapping on some “as abstract as possible” claims. Subsequently responding to an action chock full of “bad art” “horribly applied” “illegally” with pages and pages of bs based on case law. Frankly, I look FORWARD to the jump to attorney from here, and not even because of the money, because your job merely hinges on what is right in front of you, not on what is “supposedly” out there that either you, or a SPE thinks is out there.

    Hey attorney’s, I and other examiners have given lots of situations where it’s a tough call on what to do from my side, any of you mind coming forward with some situations where your job was particularly hard and/or demanding?

    Oh, and hey JD “And even if it did, “should” ain’t exactly “must.”” I’ll remember that the next time I’m considering if I should send the best art, or just the barest applicable art on first action ;) They might get the best art on, eh, IDK, 5th RCE? I would do it, but I feel so sorry for the poor bstards by RCE time. Oh, and yeah, I do learn something new about the law every day here. And I also see that you can’t see the difference between calling someone out on making a completely false statement and in calling someone out for misrepresenting the facts but still having a valid point in light of ALL of the facts, but I’m sure that’s hard to understand, being an attorney. You guys do this every day, I’m sure it gets to be old hat after awhile.

  177. 100

    “We hold that § 2163.04(I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).

    MPEP 2163.04(I)(B), in turn, states:

    A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.

  178. 99

    “Excuse my ignorance, but where exactly did you get this quote from?”

    From the section you cited (I muffed the cite by grabbing the internal cites). Here is the entire passage 2163(II)(A):

    *****”There is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at 96; however, with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should * * * specifically point out the support for any amendments made to the disclosure.”); and MPEP § 2163.04 (“If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). ******

    Typically vague MPEP poop. Regardless of how strictly you want to read it, I think it goes without saying that, in practice, failing to indicate where in the specification (or originally filed claims) one can find support for a new amendment is begging the Examiner to spank you. At the very least, you are just forcing him/her to waste his/her precious time. Is that a good idea?

    (thanks to Question for also providing the cite)

  179. 98

    “Want to be paid like an attorney? Get a law degree. Stop whining if you don’t have the drive.”

    True – – there are many patent attorneys from sh1t law schools making plenty of money out there – – it’s really not that hard.

  180. 97

    JohnDarling, for the 200th time says: “The reason they don’t change the production goals is simple: 60+% of the examining corps is getting a bonus for doing 110+% of their required production. What’s the argument that examiners need more time? 60+% can not only do the required production, they can do, at a minimum, 10+% more.”

    John, many SPEs will make your life a living hell if you do not have 110% production. For many examiners, 110% is the minimum acceptable production. By calling 100% the minimum production and calling 110% an award production, and then forcing examiners to do 110%, that is the Office’s cover for refusing to give more time. Trust me, for many examiners, 110% is not optional.

  181. 96

    IMO, examining is a pretty well-paying, cushy job for an entry level scientist or engineer. Want to be paid like an attorney? Get a law degree. Stop whining if you don’t have the drive.

  182. 95

    Last time I checked, the MPEP did not have the force of law. And even if it did, “should” ain’t exactly “must.”

    Why is it that European examiners don’t need applicants and practitioners to hold their hand and point out support for amendments? You don’t even have to to use underlining and bracketing to show the changes to the claims. Somehow, EPO examiners just “get it.” Same with the duty of disclosure. None in EPO. EPO examiners just “get it.”

    Are U.S. examiners so incompetent that they need so much baby sitting by applicants and practitioners? Maybe we can get the EPO examiners to come over here and baby sit our examiners.

  183. 94

    “You did nothing but call him out on not wording his point well”

    Wrong. I clearly told examanonym that his/her statement was false.

    And in the later post I provided the EVIDENCE that the statement was false.

    The fact that you can’t understand that is not surprising, given that you are an examiner.

    “So, you heard the man examiners lets all just become law students”

    You should regard every day at your job as an opportunity to learn something (more) about the law.

    Again, I’m not surprised you don’t understand that.

  184. 92

    “I was getting at the case where Claim 1 says “A widget comprising A, B, and C.” Applicants patent from 10 years ago says “The widgets of the instant invention have A, B ,and C.”

    Good story. When I was an examiner, I had like 5 different cases which clearly belonged together, but had been separated obviously so the attorney (corporate) could make his numbers. I found art from the 1940s which disclosed precisely the same composition, just made in a different way. 5x rejections + 4x double patenting rejections. 5 abandonments! When I left the office, I went to a law firm that represented same corporation, and picked up the foreign prosecution of the same case! Dilemma.

  185. 90

    “See MPEP § 714.02 and § 2163.06 “when filing an amendment an applicant should show support in the original disclosure for new or amended claims.””

    Excuse my ignorance, but where exactly did you get this quote from? It does not appear in either of the sections you cited. The closest that I found was “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” (MPEP 2163.06(I)) That section is generally referring to the abstract, specification and drawings only. And yes, I know that technically claims are part of the specification, but not the way the MPEP is using specification in this section.

  186. 89

    MM @ 3/4 2:33 “Could it be that it is extraordinarily difficult to function at a high level, day in and day out, processing and coherently responding to issues arising from diverse and (in some cases) highly technical applications, knowing that some of it is important, some of it is pure crap, and any misfire will cost you your vacation?”

    MM @ 3.5 6:10: “Assume all you want. You know what they say about assuming: you make an ass out of you and your client when you get that Final Office Action.

    Properly done, the risk of damaging a patent’s scope or validity by pointing out the support in the specification for a claim amendment is zilcho. Either you have the support or you don’t. Frankly, it looks better for the patentee in litigation if it appears that they weren’t trying to hide the ball.”

    MM, Preach on! Some of your best posts.

    CliveFenster @ 3/5 10:24 “By and large, inventors have a poor grasp on “patentability”.”

    I was getting at the case where Claim 1 says “A widget comprising A, B, and C.” Applicants patent from 10 years ago says “The widgets of the instant invention have A, B ,and C.” I’ve found this situation literally dozens of times – if not a patent, then a journal article (and for claims 2-20). I think you got it, but just clarifying.

    Lowly @3/5 11:50 “Of course YOU do a proper art search and never issue crap first office actions that completely mischaracterize the (crappy) art you found and give the claims in the broadest unreasonable interpretation that you can. ;)”

    Well, I try to do a good search, etc. I have a lot of cases go abandoned, and have plenty of claim sets look like hamburger when I’m done with them. I’m just pointing out for every newbie examiner out there that you guys trash on these boards, there is plenty of crap being shoveled by reg no.s in the 30,000 range.

  187. 88

    Again Dennis you are talking out of your butt. You have no idea what goes on with anything at the Patent Office. All you can do is sit there in that frozen tundra called the state of Missouri and flap your lips like a horse neighs. It is amazing what people do that have so much time on their hands that they have nothing better to do than draw up conclusions from data that they admit is not at all conclusive. They only reason that I am piping up is because there is nothing good on television at the moment. If there were I would be rather looking that mind numbing imagery, then the this mind numbing thing called a blog and the internet. I have better things to do with my time than sit here and pontificate on things that have nothing to do with the concerns and issues vast majority of the world’s population (finding food, shelter, and clothing).

  188. 87

    JD, why haven’t you convinced Congress to allow you to kick arse and take names here in the PTO? You that stuck on your private practice?

    And as to you last comment to me, yeah, I’m sure my logic does have you befuddled, it’s really hard for a lawyer to see beyond the one reference that you’ve cited into the broader realm of things that are (like the other testimonies from the same hearing). You did nothing but call him out on not wording his point well, which is what most lawyers arguments seem to boil down to, since they’re obviously smart enough to understand what the other person is saying regardless of how poorly they said it. All I’m saying is stop wasting your time and ours erecting straw men and address the actual issue I’m quite sure you’re aware is at hand. It appears you did this later, but only very superficially to Just an Ex Examiner.

    And oh yeah, the problem with your examiner world view is that nearly every last examiner that the office wants to stay is perfectly capable of becoming a lawyer. On my worst sick day of my life I’d make a 150 on those weak arse bias you guys call LSAT’s. Only the terrible examiners that you ha te will be left to send you garbage actions. So, you heard the man examiners lets all just become law students, scrw it, leave this examining job to illegal immigrants with no degree whatsoever.

    I’m pretty much lost in the rest of the convo right now and have an action to type so see you later.

  189. 86

    “so I had to search not only the composition, but the polymer too.” Split that son of a right down the middle with a combination/subcombination no questions asked? Unless they put it all in one claim, then yeah it might be a biggy. But, hey, that’s a good example of the complexities of the arts increasing, a specific structure made by a specific composition made of a specific polymer. All of the three are “well-known” (in three ref’s) now we have to string them all together.

    As to if you think their bs stringing together of references produced a prima case or not, well that’s up to you. If they didn’t, you know the drill. If they did, you also know the drill. Fact remains, you’re claiming exactly what you can tell they’ll make a rejection of later, and undoubtably you can probably tell WHY (the motivation) they’ll cite as their reason for doing so. Overall, you seem to be an admitted overclaimer, pure and simple, except you feel the statute 103 is “totally bs man”.

    “What’s with the whining about having to work more than 40 hours to meet your goals?” Are you fin kidding me? You also started out at your job where you have to work over 40 hours making 150 Thou dollars too didn’t you? Don’t give me this “qq I went to lawschool and have bills”, or “I’m so much smarter than you examiners and am well trained in the art of writting bs”. Guess what? You’re getting paid nigh on well double what we are, and you’re choosing to work there, there are law firms where you don’t have to work as much. We can’t just move to the next firm and examine applications at 40- hours per week (and get paid 4k less) if we feel like it. Let’s be clear, the pay here is Not special compared to jobs Which do not require 40+ hours. Welcome to the real white collar working world, where in demand people prefer jobs that allow them to not be stressed out everyday, and actually start, support, and go home to see a family.

    Just like bier, we’re bouncin’ on outta here. Look for me on this board in a few years on the other side of the conversation spouting “103 is sooo bs man, those ref’s aren’t combinable!” “You examiners complain too much, just examine the application, apply the “law”, and allow my bs claim already” “Man, why do examiners never cite me any good art and make me argue their rejections?”

  190. 85

    “is anyone aware of a US provisional that was shot down for priority purposes in the EPO”

    Not sure what you mean exactly but I’ve certainly seen EP prosecution histories where claims were denied or found invalid during opposition as not finding support in the earliest priority document.

  191. 84

    … in a related question (for MaxDrei or others), we already have the Fed Cir’s railroad case where a provisional didn’t have 112 support, but is anyone aware of a US provisional that was shot down for priority purposes in the EPO?

  192. 83

    “European examiners on the other hand… if those exact words, in that exact order, were not used in the written description, forget about it.”

    In the US, you can focus on the detailed description and the drawings and, if the claims aren’t ideal, no worries because section 112 is toothless. EPO is very, very strict. If you’re going to file in Europe, you better warn the client about the additional $3K-$5K in claim drafting costs needed to prepare the alternative claims, multiple dependencies, etc. because if the words ain’t in there, you won’t get to claim it.

  193. 82

    Honestly, US examiners are not bad about the 112 rejections. They usually will actually read the written description to find the support, and they will allow things that are implied in the written description to be incorporated into amendments. Most 112 rejections I’ve seen were deserved.

    European examiners on the other hand… if those exact words, in that exact order, were not used in the written description, forget about it. it doesn’t matter that someone of NO skill in the art would understand the written description to impliedly disclose X, if X isn’t there, you will not be allowed to amend to include X.

  194. 81

    See MPEP § 714.02 and § 2163.06 “when filing an amendment an applicant should show support in the original disclosure for new or amended claims.”

    In spite of this, Lionel writes: “I assume the examiner has read my description (or at least will upon seeing my amendment).”

    Assume all you want. You know what they say about assuming: you make an ass out of you and your client when you get that Final Office Action.

    Properly done, the risk of damaging a patent’s scope or validity by pointing out the support in the specification for a claim amendment is zilcho. Either you have the support or you don’t. Frankly, it looks better for the patentee in litigation if it appears that they weren’t trying to hide the ball. That fact, of course, is obvious to most patent attorneys who have participated in or watched the challening of a patent’s validity in court.

  195. 79

    MM wrote “It’s a pretty sad day when you see stuff like this:

    “ex6k “MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec.”

    “Lowly “This is because we don’t want to give future litigators ammunition which they can use to completely distort the interpretation of the claims.”

    “Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously. That’s beyond pathetic.”

    Who the hell cites to the written description? I assume the examiner has read my description (or at least will upon seeing my amendment).

  196. 78

    “This argument employs false logic, namely that the job of an attorney is equivalent to the job of an examiner. I urge you to attend the next gathering of a large amount of Examiners (such as a POPA meeting) and tell them that, particularly when most of the examiners (from what the GAO report says) are working large amounts of non-paid time in order to do the work they are only getting paid 40 hours a week to do.”

    Isn’t POPA the organization that constantly tells the examiners that they do the same job as the attorneys, but just get paid less?

    I seem to remember a steady stream of newsletters from POPA decrying the fact that first year associates in law firms were making as much, if not more, than GS-15 examiners.

    My reaction to that “news” was “so what?” If you want to make as much as a first year associate, become a first year associate.

    Problem solved.

  197. 76

    “What’s with the whining about having to work more than 40 hours to meet your goals? There is no way I can possibly reach my minimum monthly billables working only 40 hours a week. You don’t see me crying over it. Welcome to having a white collar job.”

    Posted by: Lowly | Mar 05, 2008 at 03:33 PM

    This argument employs false logic, namely that the job of an attorney is equivalent to the job of an examiner. I urge you to attend the next gathering of a large amount of Examiners (such as a POPA meeting) and tell them that, particularly when most of the examiners (from what the GAO report says) are working large amounts of non-paid time in order to do the work they are only getting paid 40 hours a week to do.

    An Attorney working more than their billables to bill at their rate is not equivalent to an examiner working more than 40 hours in order to make 40 hours of production. Vastly different pay scales, different degree requirements, and different professional responsibility requirements. More importantly, you as an applicant’s representative, have the choice to tell your applicant how much time it took and bill them for that amount. Examiners have no choice in the matter. Their production requirements were determined at a time when the average length of a subclass was a couple hundred patents at most, rather than in the thousands. When the height of technological innovation was the start of the microchip, airbags barely existed, television was analog if even color…

    Further, it’s incongruous to design production requirements , advertise salary rates for those production requirements and then spring upon the masses that all along those were just minimum benchmarks and you expect those benchmarks to be met regardless of the hours worked. Fortunately, Congress designed production based upon an hourly system and type of technology. Unfortunately, it’s 3 decades (or roughly a couple of industrial ages) out of date.

  198. 75

    “So, to say that ‘nobody does over 95%’ is false yes, but to say ‘nobody does over 95% (in the time alloted)’ while technically false, is obviously speaking as a generality, including the fact that they put in extra time to make the 95%+, and is true.

    Considering all the facts, and the use of common language, JD be honest, who’s looking more foolish now hmmmm?”

    So examanonym’s statements were 1) false, 2) technically false, and 3) obviously speaking in generalities, but I’m supposed to be the one looking foolish?

    Your logic never ceases to amuse.

  199. 74

    What’s with the whining about having to work more than 40 hours to meet your goals? There is no way I can possibly reach my minimum monthly billables working only 40 hours a week. You don’t see me crying over it. Welcome to having a white collar job.

  200. 73

    Being able to make your numbers in the PTO depends on a lot of things. New examiners have a particularly tough time (at least I did) unless they inherit someone else’s amended docket. I was lucky enough to be assigned a bastard docket that no one else wanted and wasn’t very active. No amended cases, not enough new cases coming in, complicated by the fact that it was a composition docket, but most of the actual “inventions” were the polymers used in the compostions…so I had to search not only the composition, but the polymer too.

    Add to that the fact that my SPE was a **ick, and like was said above, would tell me to go find better art rather than permitting me to allow a case. I bolted after 2 years.

  201. 72

    “Question did not misrepresent your position”

    Uh, yes he/she did. And if you can’t see why after I spelled it out for you both, you are retarded, high or simply a liar, in addition to your bizarre obsession with me.

  202. 71

    “The linked testimony is not objective as it was given by the head of the USPTO and therefore biased to show exactly what you’re purporting (that since so many examiners are able to make 110% production, obviously production quotas aren’t out of date and are completely reasonable).”

    So you’re telling me that Mr. Dudas lied to a House committee? You’re telling me he doesn’t have the personnel records that establish, as a matter of fact beyond contravention, that the PTO paid bonuses to these 60% of the examining corps in FY 2006?

    Those are some pretty serious allegations.

    So why doesn’t PTO (mis)management adjust the hours/BD? Here’s all you need to know:

    1) According to PTO (mis)management, in FY 2006, 60% of the examiners could not only do 100% of their production, they could do, at a minimum, 10% more.

    2) According to PTO (mis)management, in FY 2007, the examining corps examined a record breaking number of applications.

    3) According to PTO (mis)management, in FY 2007, the examining corps performed all of its functions with record breaking quality.

    4) According to PTO (mis)management, the attrition amongst newbies is due to a) personal reasons, and/or b) the “millenial” generation issue (i.e. those in the 20 something generation view all jobs as essentially temporary, and don’t expect to work at some place their whole careers and get a gold watch). Those that do stay beyond 3 years, however, become RCE gravy train riding lifers. Hooray for the RCE gravy train.

    That’s all you need to know.

    “From what you can see, just because 60+% are getting 110% production, doesn’t mean they are doing it in the time allotted.”

    Of course they’re not doing it in the time allotted. They’re doing the extra 10% to get a bonus. So examiners have to work extra to get a bonus? Welcome to the real world. It can be a pretty scary place.

    Not much shocks me. I worked at the PTO. I’m well aware that PTO (mis)management, including upper, mid, and lower levels, is populated by a bunch of spineless, legally ignorant stooges. In my experience, I’ve found that going up the chain of stooges rarely resolves any issues.

    “Even after I stopped doing bonuses (after realizing the rewards were not consistent with the enormous amount of effort required to get them), I was still working more than 40 hours a week to get just 100%.”

    While that may have been true for you, and you apparently got fed up enough to leave over it, as the facts clearly show, the attrition rate for examiners who make it past 3 years is rather low. So as long as PTO (mis)management gets “enough” recruits to make it from raw newbies to die-hard lifers, they figure they’re doing all right.

    You and I know it’s nonsense, but we were smart. We got out. :-)

  203. 70

    “(2) didn’t bother to read the refs I sent in.” Basically, Bier willfully chooses to claim what is in the IDS.

    “Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons.” Of course, and so would examiners, for time reasons. And so would the Office because of backlog reasons. And so would the Everyman living in America. But unfortunately, we get people like Bier, so we have to be very wary of such things.
    ———————————–

    I never claims what’s in my IDS, but I do provide what are, IMO, the BEST references, from which a competent examiner could undoubtedly string together some BS rejection for a FAOM. Instead, what I see in a typical FAOM is the examiner finding some reference which is completely unrelated to the techonolgy, and proffering some BS logic as to how it could be modified to be our invention.

    Perhaps I’m making a mistake? I should provide a first, independent claim which undoubtedly invokes the best reference, and work from there. At least the Examiner would start on the right track, instead of searching for BS.

  204. 69

    MM … you are beyond pathetic.

    Classic MM …. instead of answering the question’s question, you change the subject. Classic troll behavior.

    “that statement” made by question was very comparable to your declaration, in which you ended with the comment “[t]hat’s beyond pathetic.” A strawman argument is based upon a misrepresentation of an opponent’s position.

    Question did not misrepresent your position (i.e., “Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously) by stating “yes, prosecutors often do not provide the complete arguments which they would otherwise provide for fear that the arguments would provide fodder for litigators later.”

    Both statements refer to the practice of not providing complete arguments to an examiner, and both statements refer to using litigation as a justification/excuse.

    One would think that people would stop responding to your comments. Unfortunately, there are always new people on this board who don’t realize that trying to engage MM in a coversation is comparable to wrestling with a pig … the pig enjoys a good romp in the mud, but the pig-wrestler is left tired, covered in filth, and ultimately accomplishing nothing.

  205. 68

    6k,

    I have yet to receive a 112 rejection of my amendments. Why? Because I *DO* check to see that they are supported by the specification. I have had quite a few patents allowed based upon one or two word amendments, by the way.

  206. 67

    “It’s not that I’m adverse to giving the Examiner exact cites to where the support for my amendments are”

    Hah but before I go I have to grab this one. No, lowly, of course you’re not. And of course the reason that each and every one of those 1 in 5 do not point me to the specification is because they are relying on “what is implied to one of ordinary skill” or “what is implied to one of ordinary skill by the drawings (which aren’t to scale at all)”. Yeah right, you guys are scared to death of pointing to it, because you know I’ll slap yo bia arse with a 112 faster than I can read your whole “Arguments”. To date, I have had 2 people I “let off” because it was reasonably inferable, and 3 people I’ve busted with a 112. 2 of the 3 did not get an action on the “merits” of the amended limitations because they were “indistinguishably indefinite” or something like that.

    Fine with me, pay your RCE fees and make yourself look REALLY dumb come litigation time.

    Don’t pretend I don’t know why you do this too, because you’d rather put in a one word limitation relying on what’s implied rather than put in the 50+ word limitation “picturesquingly?” describing exactly what your spec actually says and definitely implies to one of ordinary skill (this is the limitation that comes in after RCE lolz).

    gtg, ttyl.

  207. 66

    “newbie,

    What does 5 say?

    I rest my case.”

    Posted by: JohnDarling | Mar 05, 2008 at 10:48 AM

    Page 5, “6. Patent Attrition”, point #5 isn’t the only point made in that testimony, and considered in a vacuum is even less logically compelling.

    A few MAJOR points of context that shed light on “What 5 says” are:

    -The linked testimony is not objective as it was given by the head of the USPTO and therefore biased to show exactly what you’re purporting (that since so many examiners are able to make 110% production, obviously production quotas aren’t out of date and are completely reasonable).

    -That 110% production number doesn’t factor in how many people left the office specifically because they couldn’t currently make production or knew that such levels of production over a sustained period of time would be impossible.

    -page 5 of the GAO’s report from Sept. 2007 (/media/docs/2008/08/d071102.pdf) clearly contradicts any claims that the majority of Examiner can get their production done in the time allotted. From what you can see, just because 60+% are getting 110% production, doesn’t mean they are doing it in the time allotted. The years that I did bonuses, were not done in less than 41 hours per week. Even after I stopped doing bonuses (after realizing the rewards were not consistent with the enormous amount of effort required to get them), I was still working more than 40 hours a week to get just 100%.

    In summary, the report by the GAO is more insightful and objective than Dudas testimony before Congress. My reasons for leaving the USPTO are pretty much right in line with what that GAO report says. Another reason I left that you and others might be interested in JD, is that I got tired of the spineless management who refused to stand by decisions they enforced. Specifically I’m talking about cases where I said “Look, Attorney argued my art (that you told me to stretch and apply) doesn’t meet these claims after this amendment/in this Appeal Brief.” Usual response: “Go find better art.” As shocking as it may be to you, Examiners don’t like the Appeal, Re-Open, Appeal, Re-open cycle any more than Attorneys do. My suggestion if this ever happens is to go to the source. Demand an interview with the Examiners Supervisor because they are usually the ones forcing that Examiner to apply specific art, but won’t stand behind that art when Appeal time comes. Keep going up the chain if you have to (Supervisor, Appeal Conference Specialist, Director, whatever). I was never happier than when an Applicant’s Representative requested an Interview with my SPE so I could show them how much my hands were actually tied.

    JustanExExmr

  208. 65

    “17 and there are 15 of us left. Not much attrition there, but in my opinion we had one of the better trainers.”

    LOL, yep, about the same for my class, except we lost 3 because one got fired as we transitioned (for sucking horribly). But, as we come into the 1.5 year turn we’re now down 3 more which puts us at almost 50% gone (we had 13 to start with). We have one girl who has gotten near perfect on LSAT’s she’ll be leaving shortly, me and 2 other guys I know are about to pull the same thing. Of the ones who are left 1 pretty much hates the job (because she has a rough boss that ends up making her pull 20+ hours of overtime every bi-week, in her words, not mine, though, knowing her boss personally I’m surprised she gets off with a mere 20 hours extra) and can easily find employment elsewhere with her masters.

    “examanonym,
    Go to page 5 (of 19) of Mr. Dudas’s testimony before the House committe.
    link to judiciary.house.gov
    Who’s ridiculous now?”

    Lol JD, ok, so lets assume that’s true. I wonder why it is that examiners can have 60% of them doing 105% production (10%+95%). I’ll tell you why, because, like me, the difference in 95 and 105 will turn out to be around 2-3 cases in a quarter. We’ll happily stay all night instead of the long night for a few days to go ahead and get the promo (requires 106%). And then factor in the “old guys” who are apparently riding the gravy train and we see where the 60% comes from.

    HOWEVER, lets not confuzzle this with people just happily exceeding their quotas no problem. If we look at Burdens testimony then we see quite quickly that it’s over 50% (60%+ iirc) who pull overtime and/or use leave to make the 95%.

    So, to say that “nobody does over 95%” is false yes, but to say “nobody does over 95% (in the time alloted)” while technically false, is obviously speaking as a generality, including the fact that they put in extra time to make the 95%+, and is true.

    Considering all the facts, and the use of common language, JD be honest, who’s looking more foolish now hmmmm?

    I gtg talk to you guys later tonight.

  209. 64

    “yes, prosecutors often do not provide the complete arguments which they would otherwise provide for fear that the arguments would provide fodder for litigators later. Why is that statement “beyond pathetic”?

    I don’t know why “that statement” is beyond pathetic. I do know that I didn’t make “that statement”. You did. That’s called a strawman argument. Look it up. It’s pretty lame.

    If you want to know what statement I made, you need to scroll upthread just a tiny bit and actually read what I wrote. You can even cut and paste the exact comment, word for word. That’s a good way to break the habit of attacking strawman.

  210. 63

    “This is the reason that the file history should (at least in general, if not completely) be inadmissible for future legal proceedings (be they infringement or invalidity, etc.)”

    Wouldn’t it be great if we could eat rocks? Like, if you were hungry, you could just go outside and grab a rock and munch on it. Yummy!

  211. 62

    Malcolm

    yes, prosecutors often do not provide the complete arguments which they would otherwise provide for fear that the arguments would provide fodder for litigators later. Why is that statement “beyond pathetic”?

  212. 61

    “Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously. That’s beyond pathetic.”

    You don’t seem to understand. I could potentially be sued for malpractice if I did one of the things I said that I don’t due and a patent was invalidated due to it.

    I very much agree with MVS that the file history should be inadmissible. It’s not that I’m adverse to giving the Examiner exact cites to where the support for my amendments are, and it’s not that I wouldn’t like to not be limited to the exact words of the claim when making an argument, it’s that I’m afraid to do so (and rightfully so).

    Blame the darn litigators ;)

  213. 60

    “Lowly:, you said
    “This is because we don’t want to give future litigators ammunition which they can use to completely distort the interpretation of the claims.

    Have you ever wondered why attorneys often only use direct quotes from the claims or spec (and often won’t even quote to the spec) when arguing a point? We do that because we don’t need some asshat litigator, 10 years down the road, completely twisting what we said when construing the claims.”

    This is the reason that the file history should (at least in general, if not completely) be inadmissible for future legal proceedings (be they infringement or invalidity, etc.) Even if they just did not let the reasoning for things being done be admissible (and let the facts be admitted. e.g., what was changed, what references were used, etc.) it would be a big improvement.

    If we can do that, then I think we would see a big improvement in the relations between attorneys and examiners, as well as a decrease in the backlog (after-all, if you do not have to worry about your words coming back to haunt you, you may be more willing to point out your support for things & what the invention really is doing). Might even help overall quality (which, no matter what they say, is not very good.)

    MVS

  214. 59

    It’s a pretty sad day when you see stuff like this:

    ex6k “MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec.”

    Lowly “This is because we don’t want to give future litigators ammunition which they can use to completely distort the interpretation of the claims.”

    Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously. That’s beyond pathetic.

  215. 57

    Random Examiner,

    “Of course you do I’m sure . . . its all those “other attorneys” that dont . . .”

    Of course YOU do a proper art search and never issue crap first office actions that completely mischaracterize the (crappy) art you found and give the claims in the broadest unreasonable interpretation that you can. ;)

    I think it’s safe to say there are crappy patent attorneys out there, and there are crappy examiners out there.

  216. 56

    6k,

    “MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec.”

    This is because we don’t want to give future litigators ammunition which they can use to completely distort the interpretation of the claims.

    Have you ever wondered why attorneys often only use direct quotes from the claims or spec (and often won’t even quote to the spec) when arguing a point? We do that because we don’t need some asshat litigator, 10 years down the road, completely twisting what we said when construing the claims.

    A patent is pretty much worthless unless you can sue somebody with it or scare somebody with it into a licensing agreement.

  217. 54

    random.examiner writes: “I’m guessing most of your clients know if they have a patent or not. Why dont you ask them, …”

    By and large, inventors have a poor grasp on “patentability”. I’ve worked with inventors who felt that ONLY newly-created things were patentable (e.g. elements created in cyclotron) and that any new combination of existing things/concepts wasn’t. “Only God works from scratch” held no water with them.

    I’ve had other inventors who thought of patentability in the same terms as academic publishing: “smallest publishable unit”.

    It may well be that the attorney/agent learned of the prior work and believed the claims (as filed) to be patentable over them. But I do agree, an inventor search should be done by the drafter. How the inventor has characterized that work is one thing; what the publication actually discloses is another. For that latter determination, I put on my adversarial hat and view the prior work disclosure through the eyes of an examiner just itching to reject the still-in-draft-stage claims.

  218. 53

    2. Says 15.5% attrition in 0-3 years, but then later he says 1st year attrition is 15%, so does that mean more people are leaving their 2nd and 3rd year? That doesn’t seem right, talk about convoluted. Anyways, I’m coming up on my 1st year as an exmainer, my class started with 17 and there are 15 of us left. Not much attrition there, but in my opinion we had one of the better trainers.

  219. 51

    While I report that institutional client prefer first action allowances for cost reasons, I side with bierbelly that I don’t like them either… They give you a sense that you’re leaving too much on the table.

  220. 49

    Lowly @ 3:23 wrote:

    “Why do you think that attorneys and inventor knowingly file patents that are obvious? Have you ever spoken with an inventor? You seem to think that some engineer locked away in a lab knows every patent that has been published or issued, and every paper that has been published, on a topic. I have no clue why you think that the attorney/inventor is withholding prior art from you. For every patent I write, I spend some time searching and disclose what I find.”

    Question for my fellow examiners: how many of you make rejections over applicants prior work? I do it all the time to the point it has become comical. I’m talking the words of the claim are straight out of a prior patent. Journal articles are another issue altogether as few patent attorneys submit those.

    Question for attorneys: Do any of you look at your clients previous patents? Does that factor into your claim drafting AT ALL? A bar is a bar. Period.

    I dont expect attorneys to search. I do expect a bare minimum recognition that something was done before your client did whatever you claim he/she did. Guess what? The best art is often their own! Look at it! You might have even drafted it!

    Someone will be quick to pounce on the Office’s responsibility to do an inventor search. I agree, and I do one . . . but why wouldn’t you want those patent numbers published on page 1 of that patent to tell the world that your client really did something different than what they’ve done before?

    Failure to give the office that art is just bad lawyering. I guess what I’m saying Lowly is you would be pretty shocked at what you find that Applicants really should know about and was not disclosed. I’m guessing most of your clients know if they have a patent or not. Why dont you ask them, and if they are improving something they did in the past, draft your claims accordingly and give me the reference on an IDS.

    Of course you do I’m sure . . . its all those “other attorneys” that dont . . .

  221. 48

    Hah hah, and my last encounter with pds, bloom, fen, etc. NSFW depending on where you work and their policy on owning people old school:

    link to leonidasunstoppable.ytmnd.com

    Ok ok, I know I know let’s keep it professional, that’s it for the links. Examiners, that link will really get you in the mood to write an action btw.

  222. 47

    “Seems to me it happens several times a day on this site.”

    Hey look, someone caught me pwning VA on video:

    link to i10.photobucket.com

    Alright alright it’s not the best footage, and the camera kind of dips there at the end, but it was the best I could find on short notice.

  223. 46

    TJ — The BPAI only serves as a one-way correction mechanism: Correcting against new examiners who may set the patentability bar too high. In my recent experience, new examiners appear more likely to follow PTO policy favoring rejection as opposed to being duped by a patent attorney.

    It is important that the BPAI be able to stand somewhat above the fray and apart from PTO policy of the day. Rather, the Board should favor a stable approach to deciding cases according to the law.

  224. 45

    TJ says: “If an applicant abuses the naive examiner, the undeserving patent issues and the case will never be appealed.”

    Doesn’t the SPE review any allowance before the Notice is mailed? Presumably, the SPE isn’t naive. Doesn’t second-set-of-eyes do their level best to kill allowances before issuance– I mean, perform a quality review to ensure only the most solid reasoning underpins the allowance rationale?

  225. 44

    Dennis,

    How does the BPAI affect the fact that “the current large batch of examiners without much experience requires a serious check on potential abuses of naiveté”?

    If an applicant abuses the naive examiner, the undeserving patent issues and the case will never be appealed.

  226. 43

    “(2) didn’t bother to read the refs I sent in.” Basically, Bier willfully chooses to claim what is in the IDS.

    “Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons.” Of course, and so would examiners, for time reasons. And so would the Office because of backlog reasons. And so would the Everyman living in America. But unfortunately, we get people like Bier, so we have to be very wary of such things.

  227. 42

    “Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons.”

    I, on the other hand, cringe at first action allowances. It usually means either (1) the examiner didn’t conduct a search, or (2) didn’t bother to read the refs I sent in. Also, there’s usually not enough time to get the International Search Report before the patent issues. Not good for validity.

  228. 41

    Re: 6,055,910 reminds me of Dan Akroyd’s old SNL skit as toy maker Irwin Mainway.

    His company’s extremely dangerous products included “Bag O’ Glass”, “Bag O’ Vipers”, “Bag O’ Sulfuric Acid”, “Mr. Skin Grafter”, “Pretty Peggy’s Ear Piercing Kit”, “Doggy Dentist”, “Chancellor Tron’s Secret Police Confession Kit”, “Johnny Switchblade Adventure Punk”, and “Chainsaw Teddybear”. Mainway also defended certain Halloween costumes such as a military outfit that included an actual working rifle (“very popular in Detroit!”), an entirely black and non-reflective uniform called “Invisible Pedestrian” (which had a warning on the package that read “NOT FOR BLIND KIDS”), an airtight plastic bag that was to be affixed over the head with a rubber band called “Johnny Space Commander Mask,” and an oil-soaked costume called “Johnny Human Torch”, which came complete with an oversized lighter.

  229. 40

    Huh,

    Looks like a typo. I have not lost a pre-appeal brief request yet. But I don’t always file one. The only time to do it is when you are extremely confident in your position, or when your client asks you to.

    As for RCEs, I would say there is a perverse incentive in both the Examining Corps and law firms to file RCEs. Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons.

  230. 39

    Since when does you’re = your? Doh, yeah misspellings I hardly count against the apps unless it makes a word that’s indecipherable or they have a lot. I mean seriously, this is a for fun site, they’re submitting a legal document requesting a “monopoly” over the american people.

  231. 38

    Since when does you’re = your? Doh, yeah misspellings I hardly count against the apps unless it makes a word that’s indecipherable or they have a lot. I mean seriously, this is a for fun site, they’re submitting a legal document requesting a “monopoly” over the american people.

  232. 37

    link to youtube.com

    Hey guys didn’t mean to interrupt our all important discussion, but I know there’s a lot of Barack supporters around, take a glimpse.

    “Oh and I’m lucky if I get 1 RCE per bi-week so I would like to see where this gravy train is.”

    Yeah, same with me, although strangely, I haven’t written but like 3 2nd non’s and 1 of those has now gone to a very tight 3rd non (I finally found the needed art for one thing) that I gave him out of sympathy because he amended after the 2nd non but I figured I’d give it to him since I did a bad first action.

    At the same time, my buddy down the hallway gets 3 RCE’s on his easy as pie art now just about every week. It may be that he put in like 3 extra cases from PTA through now, but his RCE train got going a lot faster than mine is and 3 extra couldn’t make up the difference. What they tell me is that I’m supposed to do 3 amendments (and supposedly get 3 disposals from amends I did 6 months ago) and 3 non-finals per bi-week. If I mess up, then I have to do a 2nd non. In that event, I have to work harder the bi-week that one comes up the amended docket. However, reality has shown no MORE than a high of a one time 2 RCE’s in one bi-week, and AT LEAST 3 finals per bi-week, AS WELL AS 5+ (avg) non-finals to be issued. I’m banking on the fact that at some point all my good work HAS TO BE REWARDED. It just hasn’t started happening. It “should” start happening around the turn of year 2 at the very latest. The harder your art is I suppose the longer it takes to get responses back.

    Heck, at the rate I currently produce I should be an “expert” primary level. It’s supposedly 8-10 counts per bi-week ON A BAD WEEK. If not for holiday leave taken out, and my working it, I would be a count or two behind.

    “I do a search … I want the examiners to have the best art out there … I need freedom”

    Those are the most particularly funny cases I have. You’re cases are the minority. Very rare cases indeed, LONG IDS, no priority so you know the app (nearly? always bigcorp) is just giving them to you. Now, these cases are good because they have very narrow claims to start out with and are thus more likely to be allowable (because he’s seen some art). However, it turns out on nearly all of them (so far) that they boil down to an obvious combination (of likely 2 ref’s on the IDS). The cases are really nice because, even if you horribly fail in your search, you already have art hah. Oh, and btw, I don’t mean you can’t say what you like, but ffs, keep it short and leave out the bs.

    Just like in my amendments, every last point you guys make could be easily squelched by my citing but a few more ref’s (of my own applications I’ve handled) nearly 100% of the time.

    If you’ll excuse me, I just finished my coffee and I’m about to go bust someone with a 112 over an amendment not supported by the spec. Question, should I even bother searching such a case?

    MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec, 1 of every 10 WILL NOT HAVE SUPPORT. And no, nobody lets us send “Your reply was incomplete” notices, because, strangely enough, THE ATTORNEY’S DON’T LIKE IT. I suppose they like to pay RCE fees instead. Yeah the caps I’m yelling. Yeah, supposedly the job gets so easy after a few years. But really, lets start examiners out working the exact same as they will be at GS14, that’s a great system. Change the system for gods sakes.

  233. 36

    “Ever since the office initiated second pair of eyes hardly any examiner does more than 95%.”

    Your argument is new, false, and ridiculous.

  234. 35

    MVS,

    Blame the clients for straight translations from a foreign application. A lot of foreign clients want the cases filed as is. I do some of these (although I do get to clean them up a little), and I would love to get to spend more time fixing them up and making them more readable. Unfortunately, the client does not want this and will not pay for it. It’s not my fault.

  235. 34

    “Lowly”,

    I agree with you about a lot of the stuff that comes from the office as well (though I do not consider obvious misspellings & grammar in the same category as clearly wrong references or really bad claim language messed to the point of near incomprehensibility or straight translations from a foreign application). One (the later) effects the substance & validity of the patent, the other (the former) is a nuisance for whomever is trying to decipher the action or response, but does not really effect the validity of the patent that issues.

    When I see cases that the examiner is citing bad art or citing sections that clearly do not teach what the claim says, etc. I kick it back for correction (I am NOT talking about 2nd pair of eyes BS review – that needs to go for morale as well as production & probably quality improvements as well.). If it is held as a “error” or not depends on the issue (& the TC), but hopefully the examiner will learn from it & not make the same mistakes in the next case. Kickbacks for grammar or misspellings, on the other hand, are probably a waste of time, however.

    MVS

  236. 33

    “Have you had the chance to talk to PTO officials as to why they do not change the production goals?”

    The reason they don’t change the production goals is simple: 60+% of the examining corps is getting a bonus for doing 110+% of their required production. What’s the argument that examiners need more time? 60+% can not only do the required production, they can do, at a minimum, 10+% more.

    Once an examiner has a pipeline of cases built up from which they can draw (i.e. milk) RCE count after RCE count, production is relatively simple. Search the case once (haphazardly, if you’re feeling particularly motivated), issue a garbage first Office Action, ignore all of the amendments and/or arguments presented by applicant and issue a garbage final rejection, cross your fingers and hope they file an RCE. Even if they do appeal, take a minor hit and re-open and issue a rejection that is even sillier than the one that was appealed. Cross fingers again. Try to get 4, 6, maybe even 8 counts out of every single application.

    The newbie examiners who leave are the ones who don’t have the intestinal fortitude to build up the pipeline necessary to run this scam on a daily basis.

    The RCE gravy train is pretty easy to ride. Once you’ve run fast enough to catch up to it and jump on. Those newbies who left weren’t fast enough to get on. That’s all.”

    This is a complete joke. Ever since the office initiated second pair of eyes hardly any examiner does more than 95%. This argument is for an old time under different management. Without allowances it is impossible to 110% no matter how many RCE’s we get. Oh and I’m lucky if I get 1 RCE per bi-week so I would like to see where this gravy train is. Fact is that it doesn’t exist and there many, many legit reasons why RCE’s are needed. Moreover, I won’t enter anything after final because we have absolutely no time to look at it. Furthermore, anything submitted after final could have been submitted before final and in that case you should have to file an RCE.

    Your argument is old and rediculous.

  237. 32

    MVS,

    If I filed an amendment such as you describe, I’d expect to be fired by the partners here. I’m sorry that you have to deal with shoddy work.

    However, I get shoddy work from Examiners all the time. Poor grammar, misspellings, incorrect citations (ie. they cite to paragraph 17 but what they quoted was actually from 23), misspelling the name of the reference, etc.

  238. 31

    “(you can add 1000 dep’s in after allowance if you so choose, we don’t care)”

    What art unit are you in?? Every time I’ve tried to add dependent claims after a notice of allowance, they refuse to enter them without juicing the applicant for an RCE.

  239. 30

    MVS,

    I wasn’t referring to any “mistakes” of a clerical, grammatical, spelling, syntax (I could go on, but you get the point) nature that 6k may have made in any of his posts. I was referring to the overwhelmingly large number of comically uninformed statements that he makes on a regular basis.

    Even you have to admit, 6k doesn’t know what he’s talking about.

    VA

  240. 29

    RE: “‘Otherwise, they want us to learn the way they did, having our ass handed to us by the attorney. I haven’t really had this happen yet’

    Seems to me it happens several times a day on this site.”
    from “Veteran Attorney”

    I really get sick of you attorneys acting like you never make mistakes. Most of the time it looks like you never even proof-read the amendments that you file.

    I was just reviewing a case that is a good example. attorney amended the claims, including changing dependencies of some of them (none cancelled). In the process, he really messed up all of the antecedents for because of the amendments and change of dependencies. Now, the examiner not only has to do the art but has to go back & try to figure out what the attorney meant and make all the necessary 112, 2nds. All because the attorney was too lay/incompetent/rushed (choose the right one).

    Are the attorneys at fault for all of the backlog & problems with prosecution? No. But you guys are responsible for your fair share of it. About time you all start to admit it. Most seem in denial (though, I have to admit that “johndarling” has admitted that attorneys are enablers in the whole RCE/count process in another thread).

    MVS

  241. 28

    “Otherwise, they want us to learn the way they did, having our ass handed to us by the attorney. I haven’t really had this happen yet”

    Seems to me it happens several times a day on this site.

  242. 27

    6k,

    Why do you think that attorneys and inventor knowingly file patents that are obvious? Have you ever spoken with an inventor? You seem to think that some engineer locked away in a lab knows every patent that has been published or issued, and every paper that has been published, on a topic. I have no clue why you think that the attorney/inventor is withholding prior art from you. For every patent I write, I spend some time searching and disclose what I find.

    Why do you think that attorneys want to get patents that will be found invalid in litigation? I want to get the broadest protection for my clients that will be upheld in litigation. I want the examiners to have the best art out there.

    Not allow attorneys to argue as they see fit? Are you serious? I need the freedom to be able to explain why I think that you’re wrong.

  243. 26

    “Golly, this sounds very similar to the complaints of many patent prosecution associates.”

    But a firm can justifiably charge more for a longer and/or more complex invention write-up. Estimates and final costs routinely vary technology, length of the specification, number of claims, … Do examiners find the same slack in their system?

  244. 25

    “Why is there so much turnover among examiners? For someone with just an undergraduate degree, the pay isn’t bad. I know plenty of engineers who recently started at LESS than the amount examiners make.” Um yeah, I thought about doing that myself, but 49k in a town where your rent is 500 compares very nicely to the tax-eaten 65k in a town where your rent is 1200, and you have to pay to park your car, gas is 3.15 (usually I try to get it at 2.90 when it dips, or I go out o town) etc. etc. You guys know of the cost of living differences in DC, I was living decently on FOURTEEN THOUSAND DOLLARS before I moved here. The taxed portion is not non-negligable. Bottom line is, the pay is nothing special at best and arguably worse.

    “Please explain — and please post your suggestions for making it less of a nightmare. Thanks” I’ve got to jump in right here. Punish by penalty of death asserting something you know to be obvious as an application or amendment (or even leaving off of the IDS a great deal of ref’s used in the creating of the “combination”). And second, limit remarks attorney’s can make to very specific statements instead of having to wade through 4 pages to read “the reference doesn’t show x feature” or, “it would be unreasonable to combine a with b”. Third, and most importantly, no dependent claims and 5 max ind. claims. (you can add 1000 dep’s in after allowance if you so choose, we don’t care). And four, make a pre-first action interview, and possibly an admission on the record of what the applicant knows to be already in the art, mandatory. Five, eliminate the 2nd pair of eyes. Either the third or the fourth one being implemented would likely eliminate the backlog and have all examiners pretty happy even with the production system. Also, obviously you could ease up on the production system and make us feel like we accomplished something worthwhile in the alloted time instead of the alloted time + weekend. Some arts are fine, some aren’t.

    “Have you had the chance to talk to PTO officials as to why they do not change the production goals?” Um he hardly needs to, they’re in place to ensure that we produce at least a set amount, and to judge who gets awards and promo’s. Mainly to ensure we produce x amount.

    Good post though Denise, though perhaps I disagree with you on one point, the needing a check for the young examiners, that should fall to the people reviewing the work, but frankly, they only bust us for something HUGELY wrong. Otherwise, they want us to learn the way they did, having our ass handed to us by the attorney. I haven’t really had this happen yet, but I’ve had many times his arguments were blatantly the truth so I learned not to do things a certain way. Lunch is over, gtg.

  245. 24

    A co-worker passed that one along to me and it was too darn funny to not share with others. I could only imagine meeting with a client who wanted to patent that.

    Ah, 1700. I do very little work in that area. I like using pre-appeals to force an examiner to sit down with his supervisor and explain the ridiculous position that he has been sticking to.

  246. 23

    Lowly,

    Perhaps I should also mention that I do a lot of work in the 1700 TC.

    BTW, funny patent. At first I thought it was a new toy from Hasbro.

  247. 22

    Lowly,

    I file a pre-appeal brief request when I have done at least two RCEs and think the Examiner is wrong. However, as I have not yet received any decisions from the Board on the ones I’ve appealed, I don’t have any support for my belief that the Examiner is wrong.

  248. 20

    One thing left out of this discussion is how many “appeals” end up with the PTO withdrawing a rejection before the appeal enters BPAI jurisdiction and is considered by the Board. Anectodal evidence is that there is a large percentage of appeals that end up being self-reversed by the examiner. Similarly left out: cases where the examiner allows the application in view of the appeal before there is any decision. I’d wager that for every appeal brief that gets a decision, there are 1-2 other briefs that lead to allowance or self-reversal.

    Leaving out these dispositions really changes the conclusion. If cases are counted as “reversals” of the rejection, then the affirmance rate drops A LOT.

    Word from the inside is that BPAI judges are told to go to any lengths possible to uphold the examiner; there is heavy institutional bias toward the examiner’s finding of facts, claim interpretation, etc. On the other hand, I haven’t seen many boldly unreasonable holdings from the BPAI. Anyone have experience with really poor BPAI decisions?

    In 2100 and 2600, it’s good to see better reversal than the ~30% of previous years. Read some recent appeals in these art units and you’ll see that a lot of junk apps filed early in the decade are coming to the BPAI to die, as they should.

  249. 19

    from what I can tell, examiners are not in it for the money, though they expect to be fairly compensated. They want to be treated with respect and work in a productive collegial environment and have some personal/family time. With their technical degrees and good academic records, they can easily find other jobs (and many have). Since it is very expensive to recruit and train new examiners only to have them leave in a couple of years before they start becoming productive, good management would make the adjustments (institute more realistic production goals) to retain them.

    (I am sorry I forgot that the PTO problems are caused by patent attorneys “gaming” the system and not by poor PTO management.)

  250. 18

    “Have you had the chance to talk to PTO officials as to why they do not change the production goals?”

    The reason they don’t change the production goals is simple: 60+% of the examining corps is getting a bonus for doing 110+% of their required production. What’s the argument that examiners need more time? 60+% can not only do the required production, they can do, at a minimum, 10+% more.

    Once an examiner has a pipeline of cases built up from which they can draw (i.e. milk) RCE count after RCE count, production is relatively simple. Search the case once (haphazardly, if you’re feeling particularly motivated), issue a garbage first Office Action, ignore all of the amendments and/or arguments presented by applicant and issue a garbage final rejection, cross your fingers and hope they file an RCE. Even if they do appeal, take a minor hit and re-open and issue a rejection that is even sillier than the one that was appealed. Cross fingers again. Try to get 4, 6, maybe even 8 counts out of every single application.

    The newbie examiners who leave are the ones who don’t have the intestinal fortitude to build up the pipeline necessary to run this scam on a daily basis.

    The RCE gravy train is pretty easy to ride. Once you’ve run fast enough to catch up to it and jump on. Those newbies who left weren’t fast enough to get on. That’s all.

  251. 17

    “According to our survey of patent examiners, 67 percent, regardless of their tenure with the agency, agree with union officials that the agency’s production goals are among the primary reasons they would consider leaving USPTO.”

    Golly, this sounds very similar to the complaints of many patent prosecution associates. Could it be that it is extraordinarily difficult to function at a high level, day in and day out, processing and coherently responding to issues arising from diverse and (in some cases) highly technical applications, knowing that some of it is important, some of it is pure crap, and any misfire will cost you your vacation?

    Monetary compensation certainly eases the pain but, as noted above, there are limits.

  252. 16

    Dennis:

    Have you had the chance to talk to PTO officials as to why they do not change the production goals?

  253. 15

    @ coast: read the report I linked above. Particularly, the charts on pages 31-36 are pretty informative.

  254. 14

    “Many consider the job to be a Kafka-esque nightmare”

    Please explain — and please post your suggestions for making it less of a nightmare. Thanks

  255. 13

    “According to our survey of patent examiners, 67 percent, regardless of their tenure with the agency, agree with union officials that the agency’s production goals are among the primary reasons they would consider leaving USPTO. Moreover, we estimated that 62 percent of patent examiners are very dissatisfied or generally dissatisfied with the time allotted by USPTO to achieve their production goals. According to our survey, 50 percent of patent examiners are also very dissatisfied or generally dissatisfied with the way in which the agency’s production goals are calculated, and a number of respondents noted that the production goals are outdated, have not changed in 30 years, and some technologies for which they evaluate applications had not even been discovered at the time the agency’s production goals were set.”

    /media/docs/2008/08/d071102.pdf
    [GAO report on USPTO hiring/retention/backlog problem]

  256. 12

    “Why is there so much turnover among examiners? For someone with just an undergraduate degree, the pay isn’t bad. I know plenty of engineers who recently started at LESS than the amount examiners make”

    There’s more to life than money. Many consider the job to be a Kafka-esque nightmare.

  257. 11

    Why is there so much turnover among examiners? For someone with just an undergraduate degree, the pay isn’t bad. I know plenty of engineers who recently started at LESS than the amount examiners make.

  258. 10

    In reference to the 6th reason that Dennis cites, a recent announcement about how great the Patent Training Academy is (yeah right) disclosed that since January 2006, 1400 new examiners have graduated from the academy with another 760 currently enrolled. So, that means 2160 new examiners hired since Fiscal Year 2006. In the announcement, it also states the Patent Corps is now over 5550 examiners. But, I read that and immediately thought, 2160 of 5550 examiners have 2 years or less of experience. Now, that is scary.

    Also, when I was hired in 2005 (the last incoming “class” before the Academy began), they told us that there were 5000 examiners, including the 900 or so who were hired in that year (FY2005). So, they’ve gained a net 550 examiners after hiring 2160! I know that some people retire, too, but that certainly leads me to believe that there needs to be more pressure put on the office for retention, rather than just for hiring. It doesn’t help to hire 1200 people and have 500 of them quit within the first year.

  259. 9

    Some more things to add to the eight reasons the BPAI has become more important:
    (9) The Board has learned to write their opinions with clear findings of fact and conclusions of law, so that Zurko deference is given to their factfinding when the CAFC reviews their decisions. Before, their opinions often read like office actions.
    (10) Also under Judge Fleming, they added the “informative opinions” that get around the old requirement of agreement by at least half the APJs, so that the Board can develop a body of (at least semi-) precedential law.
    (11) With the new Federal rules essentially getting rid of “unpublished” opinions by allowing their citation in other cases, the CAFC may summarily affirm (“36”) cases where it generally agrees with the BPAI and doesn’t want to write a new opinion that could be misconstrued. And with such a summary affirmation by the CAFC, there is a good argument that a nonprecedential BPAI opinion is now Federal Circuit law, to be followed by the Board and the examiners.

  260. 8

    I have huge problems with a couple 3600 art units myself, and I’m not talking business method units. I am always grateful when applications get classified to 3700 instead. Why must 3600 be so unreasonable?

  261. 7

    Dennis, thank you for the research and breakdown. In a former life, we were reluctant to appeal (consumed to much time and money); now, the reticence is gone. Good to have the snapshot and trends for what are fairly uncharted waters.

    I’ve only had one Pre-Appeal Brief Request not result in a reversal (partial or complete). That one is now on appeal, as is another case with a highly related point of contention. (Didn’t bother with the Pre-Appeal Brief Request there, although in hindsight I probably should have.)

  262. 6

    Huh,

    In what situations are you using pre-appeal briefs? I will file one when the examiner is 100% dead wrong and my success rate has been fairly good.

    Lately it seems all we do is lose on a full appeal, no matter how good our argument and no matter how awful the examiner’s argument, and it’s better to rely on pre-appeals, rce’s, and examiner interviews to get what we can for the client.

  263. 5

    When I first became and examiner back in the mid ’70s, I was told that a good examiner would be reversed by the Board about 1/3 of the time. The reasoning was that about 1/3 of the appealed cases were cases in which the examiner had a good rejection and should have never been appealed based on the art, but were being appealed for other reasons; these should be affirmances. The other 2/3s are cases in which there was a genuine basis for disagreement on the obviousness, and so about 1/2 of these should be affirmances, the other 1/2 reversals, because reasonable people can, and do, disagree on the judgement of obviousness. If an examiner, it was said, had a reversal rate much lower than 1/3, then they were allowing too many close calls, if much higher then they were taking too many cases on appeal on weak rejections. The numbers above seem to still basically reflect this wisdom.

  264. 4

    Chuck Burpee: The table includes outcomes of Affirmed, Reversed, & Split. The TC percentages do not add to 100% because there are other potential results from the board, including “Remanded” and “Rehearing Denied.”

  265. 3

    Caveman, are you batting 1.000 or 0.1000? Not sure if that’s a typo. Because I’m about 0.1000 on my pre-appeal brief requests for review.

  266. 1

    Dennis, please don’t forget the cases that don’t make it to the BPAI because of a successful pre-Appeal Brief request for review was submitted. The pre-Appeal Brief request is a powerful tool for applicants who want one last chance to consolidate their position and force the Examiner to undergo the scrutiny of supervisors and peers. Unfortunately, often times, the pre-Appeal Brief request is the first time the Examiner has really sat down and taken a hard look at the case. Not surprisingly, the result is often allowance or reopening of prosecution. Personally, I am batting .1000 on mine – even where obviousness issues are present.

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