Patently-O Bits and Bytes No. 31

  • PatentLawPic286In re Volkswagen(5th Cir. en banc). A self-titled “ad hoc committee of intellectual property trial lawyers in the Eastern District of Texas” have filed a brief in the pending VW case arguing on the substance that the E.D.Tex. courts do not excessively retain cases in a way that is any different from other jurisdictions.  The AIPLA amicus brief in the same case argues that too many cases are being heard in Texas. [Trial Lawyer Brief] [More Info].
  • The non-profit IP Hall of Fame is asking for nominations for inductees in the 2008 IP Hall of Fame.  The award is designed to honor individuals who have made significant contributions to today’s Intellectual Property System. www.iphalloffame.com. The award will be limited to five inductees this year. A couple of notes: (1) The Hall of Fame is non-profit, but sponsored by the for-profit IAM-Magazine. (2) I am a member of the Hall of Fame Academy and will vote on the inductees. (Being on the academy is different from being an inductee).
  • John Doll (Commissioner for Patents) will be taking questions on May 13 (11:00 am CST) as part of a webinar sponsored by Kirkpatrick & Lockhart. It appears that you must pre-register for this FREE event. LINK.
  • While much of the proposed patent reform legislation has been directed toward easing pain felt by major corporations being sued for patent infringement, one proposed measure would move inequitable conduct issues to the PTO for a decision. NY Times discussed this last week as a battle between Innovator and Generic Pharma – with the lobbyists winning. [LINK]
  • USPTO Publishes Common Application Format for EPO and JPO  [Via IP/Updates]
  • Pfizer’s Lipitor ‘893 Patent Survives Reexamination [Via Patent Docs]

37 thoughts on “Patently-O Bits and Bytes No. 31

  1. 37

    Just because I know from first glance the claims aren’t likely patentable doesn’t mean I skip the spec JD, where did I ever say anything other than that I read the spec? And I’m talking the whole way through, or at least all the way through the elected species, usually hitting the other species just in case it seems like they might be obvious. Man I like this guy here, he’s a fiesty one:

    link to uspto.gov

    “Try reading the spec — you can even term-search it for the Markush members.”

    Fyi you can’t do that in Edan, much to my dismay. So instead we get to find the pub and search that in east.

    “Chances are very high that those members share a common property or feature that prompted their collection in the Markush group.”

    I know this, everyone knows this, but the applicant doesn’t want to say what that is because he knows this is not in his interest to do so. Should I now just divine it?

    So tell me Fen, what should I do when there ARE NO merits to the amendment and the claims are not changed whilst there is no substantive argument? I’m getting from apps what is analogous to getting “Applicant’s arguments have been considered but are unpersuasive” from examiners is. Sure, I can go final, but what it should be is non-compliant and if they don’t respond then I get my count in one month rather than 6 eh?. Why could this possibly be even remotely fair? Because by filing the bs that they did they’re just extending their statutory period by paying 1k dollars for RCE, they’re not “furthering prosecution”. So far as I know that’s against the spirit of the statute 133 especially if one considers “prosecuting” to be what the rules “define” it as See rule 111. I’ve had more than a couple of cases like this mind you.

  2. 36

    “Try reading the spec”

    ROFLMAO!!!

    Clive,

    This is e6k you’re talking to. He of the, “I don’t even have to read the app to know it’s not patentable” approach to examination.

    Read the spec. That’s a good one! Keep ’em coming!

  3. 35

    “By the book” doesn’t mean selecting the most inefficient/penal way of dealing with an issue. Any book-permissible way of dealing with the issue is appropriate, and the most efficient among them *should* be selected. If the examiner can either issue a picayune OA and force the wheel to turn before addressing the merits of the amendment, or he can address and dispose of the issue simply via examiner’s amendment, I’d expect the more expedient route to be taken. OTOH, when the examiner rejects claims without making his record (that is, not fulfilling any book-rule by failing to provide the required reasoning underlying the rejection), he is not acting “by the book”.

    “I’m going to let you in on a little secret here, it’s just a way of lessening the burden of looking through lists of words or, in the alternative, getting the applicant to admit, as he likely should anyway, that all the compounds have some specific property that made him choose them so it would have been obvious to use any compound with that specific property (where the properties are known in tables/graphs in the prior art that the applicant likely didn’t submit).”
    Try reading the spec — you can even term-search it for the Markush members. Chances are very high that those members share a common property or feature that prompted their collection in the Markush group.

  4. 34

    “So what you’re saying is I shouldn’t let them off if it’s debatable.”

    Not at all, e6k. I gave you a list of reasonable possible explanations that came to my own mind. I’ve got at least four toes in the limpid pool of judicial realism. I was merely curious about what your personal answer would be to the question.

    I’m no longer curious.

  5. 33

    So what you’re saying is I shouldn’t let them off if it’s debatable. Duly noted. Perhaps you’re right, perhaps I should spend even more time one things that most examiners, see examiner above, don’t even spend any time on. But in the end I’m pretty sure I get to judge what I spend extra overtime on and what I don’t. Maybe you have a law somewhere that says otherwise?

    As to my hours, let’s see, standard employee works 80 hours a bi week (or is supposed to lol) takes 30 mins x10 lunch and 30-45 mins x10 of breaks. All in all you’re looking at 7 hours a day worked x 10 = 70 hrs. Last bi week I was here for over 100 hours easily (really more like 12x11hrs=132 but we’ll assume an easy week alright? Only two amends rather than 9 along with standard counts) and if we assume -20 hours of bsing on here while breaking/lunching we come out with, surprise surprise, I’m one of the few working a full 80 hours. And that’s if we assume a week where I work only 100 hours. Hmmm, sounds like the case of the pregnant? woman that was sued by the office for not working her full day only to have the court find out she was in fact working overtime. Strange how the office works out like that isn’t it?

    But hey, if you’re implying that I should spend the hour or two I spend on here bsing so that I can work an extra 3 or so hours a day along with an extra day each week writing apps up instead addressing bs arguments that I probably can’t win then I’ll take it under consideration.

  6. 32

    “With respect to the lack of time, I think that’s the worst of the honest answers you could have given, particularly in light of the amount of time you spend here commenting.”

    When you don’t even have to read the spec, or the claims, to know they aren’t patentable, and when you consistently find killer, knock out, drop dead art every time with your 10 second google search, you got plenty o’ time! amirite?

    PWNT

  7. 31

    e6k, on why he “sometimes” lets a close, “debatable” issue slide in the Applicants’ favor:

    “Anytime it’s actually debatable, mainly because I don’t have time nor the will to debate it.”

    Thank you for your answer. With respect to the lack of time, I think that’s the worst of the honest answers you could have given, particularly in light of the amount of time you spend here commenting. With respect to the lack of “will,” I think that answer is too vague to be useful.

  8. 30

    “Regarding E6k, I am generally appalled at his immaturity and many examiners would disagree with many of his arguments. Please remember that his opinions and actions do not necessarily represent those of other PTO employees.”

    When you’ve read as much lolable subject matter on these boards as I have you might see things a bit differently. You’ll even get to read stuff that goes against current policy being presented as the current policy it’s great fun.

  9. 29

    Hey teacher- because searching a Markush claim with 100 different compounds listed in the alternative takes a hella lot of time. Currently we cannot split up a Markush but this rule would allow for it.

    I’m going to let you in on a little secret here, it’s just a way of lessening the burden of looking through lists of words or, in the alternative, getting the applicant to admit, as he likely should anyway, that all the compounds have some specific property that made him choose them so it would have been obvious to use any compound with that specific property (where the properties are known in tables/graphs in the prior art that the applicant likely didn’t submit).

    And frankly the office is right, looking through those types of lists to find a certain compound in the art is both time-consuming and should be irrelevant to the invention if all the compounds were choosen because they had some well known common property. The argument is that the office should have to search all those compounds to properly examine the claims that the Markushes typically depend from, but as we all know that’s not necessarily true, if the claim says “a polythiophene” and the examiner is to search that claim then searching for “polythiophene” or “(poly)thiophene” or another well known way of saying polythiophene should suffice. We as examiners are not reasonably expected to have a list of every polythiophene in existance and search for those everytime we want to look for a polythiophene. What apps are well aware of is their power to get around references teaching any of the specific polys in the deps by excluding it from the group of compounds in the dep claim and moving up the dep. This is what the office wants to stop because essentially the examiner must pick off each and every species if they ever want the claim to “die” rather than get hustled into allowing it. Oh and pds, wanting claims to “die” isn’t taking it personally, it’s wanting them perma abandoned rather than having the pressure of being responsible for finding every species of the thing and/or wasting the time of dredging up every individual species. C1-10 anyone?

  10. 28

    A few things:

    Regarding the big waste of time that is the notice of noncompliance: We think they’re just as much a waste of time as you do. Please look at who sends them out- It’s not us! The paralegals (LIEs in PTO parlance) kick your responses back before we even see them. In several years at the PTO, I have never sent a notice of non-compliance- We do not get paid for them and it is a waste of time for everyone when a quick phone call can usually solve the problem.

    Also, it’s not the LIE’s fault because they are just following the orders of their management which will make a ridiculous rule at the top level which ends up wasting inordinate amounts of time for everyone. The LIEs don’t like it but they can be disciplined if they make an error so they continue.

    Has anyone noticed that applicant responses are taking longer to be responded to by examiners? This is because LIEs have been told to prioritize out-going correspondence. If you file a response to an office action today, it will take at least 5 weeks until the examiner even sees it. This is up from around three days 6 months ago.

    Regarding drawings, 11 angry patent attorney’s example of not have the optional steps in the flowchart is not something I would object to for similar reasons to those he gives, but some coworkers are a little more strict. The rule does, after all, say that each and every aspect of the claims should be illustrated. There is no draftperson- unless the LIE kicks the drawings back, the examiner is generally responsible for insuring proper drawings.

    Most experienced examiners really only care about the claims because we don’t have time to object to all the (many) little problems in applications. When I was new, I used to write a little objection for every little grammar problem in the spec, but I wised up fast.

    Regarding E6k, I am generally appalled at his immaturity and many examiners would disagree with many of his arguments. Please remember that his opinions and actions do not necessarily represent those of other PTO employees.

  11. 27

    6k,

    You should read the comments on the proposed Markush rules. In particular, Mr. Wegner’s and Mr. Berridge’s. They make the correct argument that the proposed rules are contrary to the law, and thus beyond the PTO’s rule making authority.

    Wait a minute. Didn’t we see this exact same scenario play out just recently? Didn’t the attorneys from K&E just mop the floor of the EDVA with the minions of the legally ignorant PTO (mis)management?

    All of these pending rules packages are dead. IDS, BPAI, Markush. If PTO (mis)management is foolish enough to proceed, there will be a line of people around the courthouse all eager to shoot them down.

    QQ for you.

  12. 26

    Yes they shut it down sometime before or during the move to the new HQ. That would be also why you’re getting more objections like LL mentioned there are people that look over the apps before the examiner gets them and they object to the drawings if they’re really bad. Come to think of it that does happen quite often but I didn’t have anything to do with it, it’s already in the record when I get the case.

  13. 25

    As to e6k’s comment on the pending Markush rules, I have to link this back to election of a species. The Examiner states that he will examine a species to which the applicant will be bound if no generic claim is found allowable. The remaining species are withdrawn until the elected species is found allowable. Then additional species can be rejoined and examined as well. If the elected species is not found allowable, then a continuation application has to be filed anyways and the USPTO gets its fees.
    Why doesn’t this solve the problem which the pending Markush rules are claimed to be needed for?

  14. 24

    11 Angry etc
    Ok when I asked at the PTO about why the drawings this time where rejected out of hand when they where just like all the other drawings submitted this is the answer I got. The person taking my call wanted me to complain to the examiner (and put it in writing when I resubmitted) about the ‘drafting dept’ having been closed to cut costs at the PTO (he himself was a refugee from that department)and that in the past the small irregularities could be screened and adjusted in downloading or uploading,and that no longer was the case since the closure of the drafting dept. This of course incurs delays and expenditure of more money. His training was in drawings/drafting NOT in answering questions from applicants. He looked at the drawings in question and said that there was a shadow from the way the the electronic scanning was done. In the past the drafting dept would have reviewed the drawings and removed the smudge/shadow but that we needed to redo them and resubmit. I have had examiners recently say ‘There is a smudge on drawing such and such. Redo and resubmit’. Can anyone verify that what I heard is in fact true? Did the PTO shut down what is considered the ‘drafting dept’? I do know that drawings are being rejected at an alarming rate now.

  15. 23

    Hahahahahah oh and JD, take a look at Patent Baristas peice on the commenting of the new markush rules. It seems that they understand quite well where the office might be going with using the definition of “invention” like they have. The layers of the onion start to come right smack dab off as we delve into the mysteries of the definition of the word “invention”. Invention = claim LOL.

    I just happened to notice it tonight, but it appears that some other astute folks notice exactly the same things that I have noticed. Though they may not have gone quite as far down the rabit hole as me with what the implications will be they’ve gone far enough to see that it’s a one-way ticket to one ind. claim and one dep claim or else re-evaluating the whole meaning of 112 2nd.

  16. 22

    Hey, JD, BTW, the 1st mention of appeal briefs getting non-compliance is YOUR post on 5/6 # 3:57 (“What’s being discussed in this thread are instances of appeal briefs being sent back as non-compliant”), which was AFTER my post. So, there was NO previous discussion of such. The posts prior to mine were about non-complience & a lot of technical objections. Keep it straight.

    As for the idea that there is some grand conspiracy throughout the whole PTO, that is just a crazy idea. The office is not THAT organized. You, of all people, should know that. I know a LOT of SPEs, as well as some directors, very well. Never heard anything like you propose. At least not in the electrical areas. Can something like you suggest happen in a few art units, or, maybe even a TC. Yes, it might be able to happen. The WHOLE office. No!

    And the way these things would happen (much like the reduction in allowances) is some directors or SPEs hear one thing being said at a meeting (e.g., “We must meet out quality goal.”) and then do some fanciful extrapolation and interpret as meaning “Do not allow anything unless it is so detailed and complex that no one can complain about it. That way we won’t get an error.” ($TUP1D idea, but it that is the may some of their “minds” work). So, these directors/SPEs take what they think is being said & pass it down to their examiners in some convoluted way. The examiners then take what they hear and interpret it their own way. So, things like your conspiracy ideas might work on a small scale, but not through out the whole office.

    My guess is that those actions you all are complaining about come from a relatively small area & not the whole office (business methods, anyone??).

    Well time for bed.

    thanks,

    LL

  17. 21

    For all the crying in this thread you’d think that patent attorney’s were horribly busy.

    Protip: If you’re that busy stop writing more than one ind and a slew of deps. Just tell the client you’re too busy. Strange that you have time to write loads and loads of bs to beleaguer examination but you don’t have the time to draft a complete document for me to look over. Strange indeed.

    As an aside I’m reading one of my many poorly translated foreign filings right now. Guess how quickly that goes? I should have made them get rid of the idiomatic english in the parent. The an part is go afix the filling. << the proper way to describe putting a part in a hole apparently. "Sometimes?" Anytime it's actually debatable, mainly because I don't have time nor the will to debate it. If it's a cut and dry bricks and morter structural feature that's in the claims it's going in the drawings or it's cancelled from the claims, no if ands nor buts. Let me ask you Malcolm, is plasma a structure? For that matter is a liquid a structure? A gas? That's but a few of of the things that come to mind that I get to deal with. Structures of atoms etc. are always wonderful topics. Some apps are kind enough to put them in the drawings from the beg. others like to argue they're not structure. Tell me, if I put one atom on top of another is that a structure? What about a special arrangement of atoms? These types of things I usually object to and let go if they argue. In many cases it is those structures that are key to the invention, it would be very helpful to POSHITA and certainly to myself to see wtf the applicant is doing, I might just happen to not be an expert in your niche of nanotech etc.

  18. 20

    “Sometimes I let them off easy anyway if it’s debatable.”

    Sometimes? Do you decide by coin flip, prior interactions with the applicant, “overall feel”, whether your girlfriend is digging you, or what?

  19. 19

    “The method of claim 1, further comprising D”

    Step D or just D? If you’re talking about D being “adding a bicyle wheel” and D being the wheel then you’ve gotta show the wheel. Method steps, so far as I know, are not required to be shown. Any structure involved in them… well now, that’s another story. There is a section that requires every structural feature in the claims to be shown, the applicants cite that section for me if I ever make a requirement for something they don’t feel is a structural element. I’ve made a few bad calls on what should be included and they just argue and things go on just fine, then again I’ve made a lot of good calls too, have to learn somehow. Sometimes I let them off easy anyway if it’s debatable. Oh, and another thing, if you’re claiming things then there needs to be a clear view of what you’re claiming, it’s not a waste of anyone’s time for you to portray your invention in drawings, that’s why they’re required in some instances.

  20. 18

    I have heard of attorneys getting amendments returned to them as non-compliant for (try to believe this) putting in an allegedly “new” non-breaking *space* in a claim amendment.

    That’s right: a space. One. Flipping. Space.

  21. 17

    I have been in private patent practice nearly 30 years and I agree with BentwaterBlitzers.

    (PTO management is doing a great job pitting applicants and examiners against one another. Those examiners who have been practicing less than five years probably think that this is the way it has always been and the way it must be.)

  22. 16

    LL,

    And you clearly didn’t read mine. Go review 1296 OG 27 and you will see an example of when PTO (mis)management acknowledges that slavish devotion to form is not necessary. It is one of the truly rare proclamations of common sense from the otherwise witless PTO (mis)management.

    Your example is a good one. I would never waste time worrying about transposed reference numbers. Though I have received several OA’s in which the applied art is not of record on either an 892 or 1449. In that case, I just respond to the OA and ask the examiner to cite it. In the all-too-typical case of “claims 1-10 are rejected under 35 USC 102(e) over Japanese Patent…” I have to make a choice. If it qualifies under another section of 102, I’ll address it. If it doesn’t, I have no choice but to ask for another OA. (If I had a nickel for every one of those, I’d be retired, and then you wouldn’t have to use me as an excuse for the inexcusable nonsense pouring forth from the PTO.)

    However, if I spent my time kicking back OA’s that contain clear errors (e.g. failure to consider a timely filed IDS, failure to address a claim(s), failure to address evidence/arguments), then I would spend my entire day kicking back OA’s. Unfortunately, I’m not at liberty to waste the applicant’s time the way the PTO is. As I’ve said before, it’s a clear example of PTO (mis)management’s attitude that applicants should be required to get it right the first time while examiners will be given an unlimited number of opportunities to get it wrong.

    LL, you’re kidding yourself if you think there’s no decision at the top levels of PTO (mis)management to pump out this BS. All of the evidence we have clearly indicates that the word has come down for the TC’s to do anything and everything to reduce the number of cases going to BPAI. Considering the ever increasing re-opening rate and the flood of nonsensical non-compliant notices, and the creation of the ever more useless GS-15 “appeals conference specialist” position, there is simply no other explanation. Your denials are just silly.

  23. 15

    JD,

    Clearly, you did not read my response very carefully (again). The 1st half was clearly intended tongue-in-cheek. I was not “trying to defend such nonsense.”, as you erroneously assert. And, I was clearly referencing the posts about “technical” objections and non-compliance from “11 Angry PAs”.

    For “11 Angry PAs”, personally, I do agree that reasonableness on BOTH (I wish I could easily bold & underscore, as well) sides is the best way to go during prosecution. However, there are many examiners that do get fed up with layers pulling the “gotcha” on them for things like clear and obvious typos.
    As a real example, I have seen things like the examiner transposing the #s for the patent action (but having it right in the 892) and including the name in both (e.g., the action incorrectly saying it is a 102 over “Smith, #7654312”, but it being correct in the 892 as “Smith, #7654321”). Then the lawyer coming back with B$ like saying “Since there was no ‘Smith 7654312’ cited in the 892 and no such reference could be found, the action is defective and a new action with a proper rejection should be sent out.” Just like in your examples, a simple phone call (or even common sense assumptions) would have been the better way to go. The examiner had to send out a new action correcting the clear typo (the SPE & director would not (afraid??) the examiner up. It is things like this that help to foster anger and resentment on the inside.

    So, while it is not good customer relations, when lawyers start complaining about getting “technical” objections (e.g., dependent claim 79 feature not clearly shown in the drawings) and all we have been hearing from lawyers like JD is to “Follow the laws.” and “Follow the rules.”, it is fun to tweak him about it. He gets real sensitive some times 🙂 Either ALL rules need to be followed like good little Nasis (intentional) or some (102, 103, 112, 101) are more important than others. Which is it? You can not have it both ways.

    thanks,

    LL

  24. 14

    I’ve been trying to reply, but Dennis’s spam filter is completely out of control, so I’ll keep it brief.

    LL,

    What’s being discussed in this thread are instances of appeal briefs being sent back as non-compliant because the evidence appendix says “There is no evidence relied on by the examiner” instead of “None.” (True case.)

    Stop trying to defend such nonsense. Or blame it on me. It’s beneath even you.

    And go review 1296 OG 27. It may enlighten you.

    6k,

    I was referring to your tortured syntax. It hasn’t improved lo these many months. But I “know what you meant.” Though what you meant is still nonsense.

  25. 13

    Interesting responses … I guess I don’t post here enough to have a known persona or views, but, LL, I’ve never argued (or believed) that “by-the-book” is a cure-all to what’s wrong with the patent system. I think people (and, yes, attorneys and examiners are both species of the genre “people”) should be reasonable and not constantly playing “gotcha”. I can’t speak for others, but that’s how I write and prosecute cases, and that’s what I expect of the patent office.

    Now, some details about my point ….

    On the drawing issue I mentioned: Let’s suppose you have a flowchart that shows steps A, B, and C, with their descriptions dutifully circumscribed in the standard rectangular boxes (as if the method were somehow clearer when words are inside a rectangular box on a drawing sheet than it would be if those same words were written in a paragraph in the spec). The independent claim says “Method comprising A, B, and C.” In the paragraph of the spec that follows the flowchart description, it also says, “In addition, you could add step D to the foregoing process. Or you could add step E. Or you could add step F.” So, a dependent claim says, “The method of claim 1, further comprising D.” Now, you can argue that a more thorough drafter would have worked D, E, and F into the flowchart. (By the way, this isn’t a case that I drafted.) You can also cite the rule about showing every feature of the claims in the drawings (although I’m not sure how that rule is consistent with sec. 113, which requires drawings “where necessary for the understanding of the subject matter to be patented”). But you can’t seriously argue that you didn’t understand the method because dependent step D wasn’t in the drawings – and that if I took the same words from the spec and put them in rectangular boxes on a drawing sheet, then magically you would understand it. When this sort of thing happens, the PTO may technically be in the right under the rules. But actions like this take the momentum out of the PTO’s (and the “reform” proponents’) arguments that patent attorneys are the ones who use the system to waste everyone’s time.

    Reasonableness on all sides … it goes a long way.

  26. 12

    You guys should get a word>pdf converter software they’re available, we even have them at the office.

    JD, I can show you more than a few cases I have where omitted drawings contribute quite a bit to misunderstanding of what the applicant is referring to. More than a few. Heck, I can name two by serial no. right off the top of my head. They leave the wording broad on purpose then want to make it specific later.

    “The PTO has had a BIG SWING in attitude over the last decade. From clearly trying to “respond to customer needs” to “kick all of them in the teeth, and draw as much blood as possible – i.e. increase the difficulty and expense of getting a patent all you can”. They can’t seriously wonder what’s not to like about such agency attitudes… …many inventors and businesses are clearly “getting it” and are significantly reducing the number of patent applications they file…… It will be interesting to see how it plays out over a 5 year term if things don’t drastically change during the next 12 months……”

    Idk about all that. Like we said, they’re just teaching them to do it by the book, if you want the book changed then talk to the people that write it.

  27. 11

    It sounds like to me that those examiners that you all are complaining about, above (e.g., “11 Angry PA’s”, “BentwaterBlitzers”) are just getting what JD always asks (demands) the office do. Follow the laws & rules. If the by-the-book way to deal with an incorrect amendment is non-compliance (which, BTW, is quite possibly sent out by the tech support & not the examiner) then the PTO is just doing what they are supposed to do “by-the-book”. 🙂

    It seems that a lot of you want it one way (“by-the-book”) when it is in your favor and another (informally or NOT “by-the-book”) when it is in your favor to do it that way (i.e., when you screw something up).

    So which is it?? If you do not like a “by-the-book” processing, blame JD, not us. 😉

    Now, seriously, my guess it that most of what you are getting in these technicalities-type of objections and non-compliances are from newbies fresh from the PTA. They are usually instructed to do EVERYTHING “by-the-book” (except for allowing stuff – different argument there for another time). Most examiners do not have the time to nitpick on all the minor B$ unless it becomes something of consequence or at the time of allowance (or, in a few cases I am sure, when the lawyer has been a real jerkk (misspelled on purpose) & the examiner wants to waster there time to stick-it-to-them/show-them-up. Personally, I think that is a waste of time, but if it is “by-the-book”, then they can do it.)

    As for the remarks about there being some great conspiracy by the PTO to enforce the minor rules? You must be kidding. Or you are Oliver Stone. No such edict has come down. Explicitly or implicitly.

    thanks,

    LL

  28. 10

    11 Angry PA’s: To paraphrase what I said many years ago on Saturday Night Live, “We don’t care. We don’t have to. We’re the patent office.”

  29. 9

    “Sometimes the detail that to you is everyday I might not can make out precisely what you’re talking about due to your ommiting that part in the drawings.”

    And we should get our acts together?

    LOL.

    Is English your first language? I certainly hope not.

  30. 8

    OK, the gnomes in Alexandria can deny being extremely and absurdly picky all they want, but an ever increasing number of examples seem to arise daily in practice. Many simple and easily corrected items, once common fodder for an Examiner’s amendment at time of allowance, are now the subject of a Notice of Non-Compliant amendment. In a recent example, the SOLE complaint in such a NOTICE was that a claim was numbered xx0 instead of xx. Clearly the 0 was a typo, as a Zero instead of a period had been inserted. Clear applicant error, no doubt, somehow either I or my paralegal fat fingered that one.

    Instead of a simple correction in an Examiner’s Amendment, or a request that it be corrected in the next response, or the matter being handled by a clarifying phone call, now there is a WRITTEN NOTICE (requiring clerical time, paper, mailing, transport to my office, and computer storage of the correspondence) and a WRITTEN RESPONSE required, which will at least require printing in my office, even if we SCAN and PDF the response via EFS. Quite a waste of time and resources all around. FOR WHAT ? So that an examiner doesn’t have to act on the case for another month or two, as best I can tell. There does not seem to be any other logical reason. Such things have been handled for many years without the need for formal repeat presentation of ALL CLAIMS, as is now required.

    The PTO has had a BIG SWING in attitude over the last decade. From clearly trying to “respond to customer needs” to “kick all of them in the teeth, and draw as much blood as possible – i.e. increase the difficulty and expense of getting a patent all you can”. They can’t seriously wonder what’s not to like about such agency attitudes… …many inventors and businesses are clearly “getting it” and are significantly reducing the number of patent applications they file…… It will be interesting to see how it plays out over a 5 year term if things don’t drastically change during the next 12 months……

  31. 7

    Interesting choice of words you used there 11 angry. Strangely enough, those picayune objections are towards picayune claims. Perhaps stop including picayune claims and you’ll stop seeing picayune objections?

    But no, so far as I know we haven’t been told to up objections or any such sort of nonsense. What you’re seeing is probably a product of PTA, they teach by the book. That means that when you forget to address the deps in your reply you get a non-compliant. Though, we don’t really call you on all that all the time.

    I myself am rather picky about drawings though. Sometimes the detail that to you is everyday I might not can make out precisely what you’re talking about due to your ommiting that part in the drawings. The more JD et al. thumps his “do it by the book” bible the more of these obnoxious things that we usually gloss over for you will be popping up. If I’ve told you guys once I’ve told you 100000 times, either get your collective acts together or the gov. WILL do it for you, just like in every other aspect of your (and my own) life that involves the gov.

    I have a case on my docket right now that the applicants are trying to use a layer that they didn’t even depict in the drawings as their point of novelty. That’s right, they drew out an entire process flow and left out the “important” part. So now I’ve made them draw the part, but they can’t rely on where that part is in the drawings because it wasn’t even there. I forsee some 112’s in their not so distant future.

    And yes, I’m having a very bad evening fin OACS crashed and I was just getting done with an Action so now I get to type it all again. They seriously need to ditch OACS etc. as software suites.

  32. 5

    11 Angry PAs

    …oh right. Like we are so organized as a group that when the Dud says get revenge in secret email communications we jump and nit-pick applications. That is not even a good TV plot. More than likely you got a bunch of examiner nubes. They seem to be the ones that like to nit-pick. Check the employee numbers. Me, I like to spend my precious time looking for art. IMHO as long as I understand the app a poor drawings and a bad spec don’t reflect on me it reflects on the lame PA who wrote it. Sometimes the inventors get what they pay for and sometimes they get a PA who got “C”s in all his classes. Ok now time for all the lame PAs to tell me what an ass I am. Come on….I’m waiting.

  33. 4

    6k (or some other examiner): Before I register for Doll’s webinar to ask him about this, could you comment on the following: Is Dudas is having some sort of tantrum over losing the Tafas case? I’m just asking because me and my patent attorney friends have been seeing an increase in picayune objections this month — e.g., drawings inadequate because some minor dependent feature doesn’t exactly track the flowchart word-for-word, entire IDS objected to because one piece of data about one reference is unknown, and the like. Did someone over there decide to crank up regulatory objections a few notches as payback over the CC rules? Is there some overall strategy to show the world that even without the new rules, the PTO can find plenty of ways to be obnoxious with the existing rules? I sense a bit of muscle flexing at PTO central.

  34. 3

    Jon-

    You tought the allowance rate as a reason examination is better, when in fact all you have done is force Examiners to reject over art they know does not destroy novelty. These patents still get issued, and you know it, it just takes longer and increase costs – AND increases the backlog you complain about. You can’t have your cake and eat it to…

  35. 2

    Jon Dudas, for showing us the importance of an individual being qualified for his job, and teaching us that we should have complained before he was chosen instead of afterwards?

  36. 1

    “Jon W. Dudas, the under secretary of commerce for intellectual property, said: “We are getting more and more unpatentable ideas, worse and worse quality applications. Historically, in the last 40 years, the allowance rate — the percentage of applications ultimately approved — hovered around 62 percent to 72 percent. It went up to 72 percent in 2000, but dropped to 43 percent in the first quarter of this year.””

    Is it possible that other variables are at play behind the lower allowance rate, Mr. Under-Secretary?

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