Tafas v. Dudas: PTO Announces its Intent to Appeal

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The Patent Office has filed a notice of appeal in the case of Tafas v. Dudas. This case involves the PTO’s attempt to limit the number of continuation applications and the number of claims per patent that may be filed based on an original disclosure.  In April, 2008, District Court Judge Cacheris granted plaintiffs motions for summary judgment — finding that the new rules are an improper extension of the PTO’s statutory authority.

“Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as ‘otherwise not in accordance with law’ and ‘in excess of statutory jurisdiction [and] authority.’ 5 U.S.C. § 706(2).”

The appeal will be heard by the Court of Appeals for the Federal Circuit.  The basis of the original declaratory judgment action is that the PTO’s proposed rules violate the PTO’s limited rulemaking authority granted by 35 U.S.C. § 2(b). Thus, there is no question that this case arises under the Patent Act and, consequently, that the Federal Circuit has exclusive jurisdiction on appeal.

Notes:

125 thoughts on “Tafas v. Dudas: PTO Announces its Intent to Appeal

  1. The Federal Circuit can hear appeals of cases brought in the District Courts under 28 USC 1338, which states, in relevant part:

    (a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.

    Does 35 U.S.C. § 2. give rise to a cause of action? No.

    I know patent lawyers think we should be treated differently, but the PTO’s rulemaking should be treated like every other agency’s rulemaking. The Federal Circuit can only hear cases within its narrow jurisdiction that is outlined in 28 USC 1295. I rather this apppeal go to real judges who actually understand these rulemaking issues.

  2. The Fed. Circuit does not have jurisdiction to hear this appeal. The challenge was under section 702 of the APA, not title 35. Nothing in 28 USC 1295 gives the Federal Circuit jurisdiction.

  3. The delta would stop growing if they got rid of the nonsense of the last few years:
    1. Bouncing amendments because the label on claim had a minor error.
    2. Bouncing appeal briefs for immaterial matters of form
    3. Second pair of eyes gamesmanship that overrules examiners.

  4. Well question, let me ask you something first, what do you think the pending time is going to be when the backlog reaches 40 million?

    But as to your question, no, it does not have discretion as to whether it examines properly filed applications. I have never stated such a thing. I have stated that they have discretion as to how long the examination takes, and how long it takes to commence examination. Also I have stated that applicants may have legal remedy for such a situation lasting an unusual amount of time. As to 20 years, well, I guess we’ll see if the pto can wait 20 years in about 15 years if things keep going the way they are. Anyone heard the delta on the backlog lately?

  5. Mr. e6k — So the patent office has complete discretion as to whether it examines properly filed patent applications? It can even wait 20 years to examine it?

  6. Just great, the PTO will waste more money on these rules which could be better spent on hiring new examiners and providing the current ones additional bonuses.

  7. “then a judge will eventually order the director to issue a patent on the application (or be held in contempt) because the applicant does not need to show anything and in our hypothetical the office has decided to say nothing.”

    What you are referring to good sir is a different method of having the patent issued, see the section about civil procedure. If you wish to pursue it then so be it. It still will not give you any actual, or presumed rights to the issue of a patent in the absence of the pto’s action. You will notice that in the section on the civil action procedure method of obtaining a patent that it is basically the court issuing you a patent, rather than the examiner, which is permitted, but the process still required a positive action on the part of the gov. You will also notice something strange, you are only permitted to take civil action (at least under Title 35, idk about other ones that you may know of that might allow it) after you have appealed to the board, which of course you can only do after you are twice rejected. Idk, maybe there are other civil remedies that you can tell us about, I for one am interested to hear about it.

    That said, I do not see any place in Title 35 that would allow for a judge to hold the director in contempt. What I do see is a section on civil action that allows a judge to adjudge the applicant entitled to a patent and thus authorize the director to issue a patent on compliance with the requirements of the law. Now, I’m not sure, does the part in 145 authorize the director to issue a patent as being in compliance (as judged by the judge) with the law, or does it merely authorize the Director to issue such patent on compliance with the requirements of the law (as is already the situation?!?!)?

    IRL you think the examiner would be fired. I don’t believe so. I’ll tell you why. I know of some cases that are experiencing the very thing which you are portraying as a situation that could arise (sans the judgement part, yet, because applicant’s rarely wish to forgo the option of the CAFC to instead get a civil action which they must pay for in full, See 145). And of course, all those app in the backlog? They’re just the same as any app that an examiner has done a 99.9% complete examination on but which haven’t been finished, at least in terms of being issued, or having an action rendered therefore. The only difference is workflow/docketing and let’s not even into guys letting cases sit as their oldest new by doing makeup workflow from the amended docket. That’s why they implemented the date case goals I imagine. Still, I haven’t heard about anyone getting fired for not meeting a date goal. They can just say they’re still working on that one and maybe tell the spe what the holdup with completing exam is. Maybe that hold up is that they don’t feel as if it has been searched thoroughly enough, or something else.

    Still waiting to see where or why there is such a presumption or actual right to a patent on their application. Overall, I disagree that any presumption or right exists or is implicitly present, there is merely a willingness on the part of the office to grant them, and that is all.

    I loled Bloom. That is possibly the very best snippets of a paper I’ve read in a while. I’ll read the whole thing tonight sometime. link to bartleby.com

    “It is not seldom the case that when a man is browbeaten in some unprecedented and violently unreasonable way, he begins to stagger in his own plainest faith. He begins, as it were, vaguely to surmise that, wonderful as it may be, all the justice and all the reason is on the other side. Accordingly, if any disinterested persons are present, he turns to them for some reinforcement for his own faltering mind.”

    This happens all too often on these boards amongst you law folk except it is usually happening when the browbeating is not especially violently unreasonable, but is instead more like extemely reasonable.

    “Actually, that’s Logic 101. If the Office must show why my patent application should not issue as a patent, then my patent issues, then the default position is my patent will issue.”

    First off the statement you quoted of me was perhaps my mistating what the statute requires because I was addressing an alternate point that did not require me to get very specific. But, forgetting for the moment that logic dictates that there may be innumerable things other than a rejection/object that might be the cause of your application not issuing (such as my not having the power to grant patents), the statute does not say that the office must show why your patent app should not issue. What they must do is notify you of any objections/rejections that the examiner may wish to make. These two statements are not synonymous, you merely take them to be because you wish to base a fallacious argument upon them being so. I could go on, but that should suffice.

    “The statute is worded such that the PTO has no choice but to issue my application as a patent unless it can prove it shouldn’t issue.”

    At precisely which moment must a patent be issued? Hmm? I was unaware of any statutory deadline. Maybe that’s because there isn’t one. Maybe that’s why there is even the possibility of ever having a backlog, because the apps are allowed by the statute to sit and sit and sit. Also, you should notice that there is a specific statute for situations where the pto chooses not to issue your application, therefore it must obviously be allowable for the office to take such an action. You can find this statute easily it refers to civil action, though apparently you can only even do that after you’ve been to the board. 145? iirc. I’m unaware of any other means to obtain a patent from the office. Perhaps some suit about administrative inaction or some other such thing that I’m not familiar with?

  8. The “then my patent issues” should be “or else my patent issues” in my post of 6:26 pm

  9. E#6K wrote “Just because there is no burden to show patentability and there is a burden for the office to show why, on examination, the application has not been issued does not dictate a right to have your patent issued.”

    Actually, that’s Logic 101. If the Office must show why my patent application should not issue as a patent, then my patent issues, then the default position is my patent will issue.

    It’s not a “right.” Contrary to what some posters on here think, there is no Constitutional right to a patent. But it is the law. If that’s your premise, that’s a minor semantic distinction.

    The statute is worded such that the PTO has no choice but to issue my application as a patent unless it can prove it shouldn’t issue. I would characterize this as a right.

  10. “the silent examiner” – I love it! I think Melville actually had e6k in mind when he wrote Bartleby, the Scrivener:

    “In this very attitude did I sit when I called to him, rapidly stating what it was I wanted him to do—namely, to examine a small paper with me. Imagine my surprise, nay, my consternation, when without moving from his privacy, Bartleby in a singularly mild, firm voice, replied, ‘I would prefer not to.'”

    Had Bartleby been just a bit more hip, he would have thrown in an LOL or two.

  11. e6k:
    No statutes perform positive actions on their own, so this one is hardly unique. The operations are as you describe, and yet applicants have a presumed right to a patent on their application. If the office sits silent at all levels refusing to lift a finger regarding an application, with no other reason than “we wish to remain silent and not act on this application”, then a judge will eventually order the director to issue a patent on the application (or be held in contempt) because the applicant does not need to show anything and in our hypothetical the office has decided to say nothing. There would be other intermediate procedures, but in our hypo the office does not respond to any of those because we’re testing the complete silence of the office.

    Of course, in reality, the silent examiner would be fired and the application sent to another examiner who would bother to examine it, but we’re already counting angels dancing on pinheads in this thread anyway.

  12. “I realize that none of that will make any difference to you.”

    No, actually that does, it had in fact occurred to me during my postings that it might be taken that way. And the reason that it sounds that way is because I am taking the word “right” to be used in this case as a right without a positive condition coming to pass, i.e. that regardless of whether or not on examination it appears that the applicant is entitled to a patent under the law he is entitled to the issue of a patent. That is to say that examiners are either making rejections or objections or else they let the application fly on magic wings to the printer. Remember what the nature of the argument I’m making is, it is merely the argument that the examiner/spe/director are granting patents, as well as making rejections, as opposed to merely rejecting them if the need should arise, or just allowing it to go on it’s merry little way. It in fact requires a positive confirmation activity on the part of the office to grant patents. If it were not for the self-entitled feelings of pds (and others he represents quite well) then the opposite argument, that patents are magically issued as long as the gate keeper doesn’t get in the way, would never even be made because it is so outrageous. I have right now on my docket cases that “pray for the granting of a letters patent”. Perhaps they feel like the office is not in the business of granting patents, they just felt like throwing that in.

    Let me sum this up for you in a sentence. The issuance of a patent requires a positive action on the part of the office rather than merely the absence of a negative action.

    More specifically, the statute does not perform the positive action on it’s own, or otherwise require that it be taken in the absence of a positive action (verification by an employee of the office that it appears the applicant is entitled to a patent).

  13. e6k-
    You’re usage and interpretation of “rights” doesn’t match any known legal interpretation and look on the surface like your random speculations. Rights are often subjected to procedural requirements – see my fourth amendment discussion above. I realize that none of that will make any difference to you. Probably the Supreme Court and entire history of jurisprudence is totally lost on this concept, but you are here to straighten us all out. Apologies for the interruption: as you were.

  14. e#6k,

    A habit I learned a long time ago and still practice is to always read the sections of Title 35 relied upon in an office action before addressing the merits of the action. Just now I took a quick look at 103 and 112 and noticed what I would call a “data drop”. Of course 103 speaks in terms of one having ordinary skill in the art to which the invention relates. Curiously, 112 addresses itself to any person skilled in the art. Indeed this seems a bit unusual. An person only modestly skilled in the art may be totally mystified, and yet a person who knows the art like the back of his/her hand may fully comprehend the written description and be able to practice the invention.

    I never cease to be amazed at how sections I have largely taken for granted contain subtle nuances that have previously escaped my attention.

  15. “Here we have an examiner, a federal government employee, that is stating that examiners do not have to follow the law until told to do so.”

    No. 1, as you well know, I’m a crazy guy in a mental institute. This particular institute happens to be located off the side of I-95 as you approach Alexandria Va. No. 2, I never said that we don’t have to follow the law. What I said was that there is no statutory requirement for us to be right in an action. If there were then why do you suppose there are so many 2nd nonf’s coming your way (allegedly)? All those examiners would be fired already amirite? There are plenty of examiners that horrible art looks good to, and so it does not appear that you are entitled to a patent, sub in 112’s etc. as needed. Just because some of us do good work here (we make pretty designs on paper) doesn’t mean that everyone here is required to be perfect.

    “You are drunk on the power that the USPTO ”

    No, I’m quite sober, though my belly is hurting right now, I totally need to cut back on the grande’s. I was thinking about granting a patent this week, but lo and behold I lack that power! I suppose I should inform the applicant of why the patent is not being issued, shall we call this an objection or rejection? Hmm, since it’s technically neither I don’t suppose any notification is required by 132, I’ll just set the case aside.

    “You are just the gate keeper.”

    That’s correct, I’m a gate keeper at a gate that not *required* to move until someone in a position of power inside says so or it appears the person wanting in is entitled to go inside. Funny enough, there are security guys downstairs that apparently do the exact same thing I do, I have to lol at that.

    “Once the applicant appears before the door, the applicant is entitled to go through the door unless you can show otherwise.”

    Unfortunately for you, that’s not what the statute says. If it did you would have cited it 1500 ways till sunday already.

    “The question that SHOULD be asked is whether you (as the examiner) can find something that makes the claimed invention unpatentable.”

    Says who? You?

    Alright let’s cut the crp, your cuteness and mine are old.

    Tell me pds, in re to the only thing of substance in your post, does 102 entitlment to a patent over-rule all the rest of the statutes for purposes of complying with 131? Section 131 is quite clear that you must appear to be entitled to a patent under the law. Does it mean some of the law, aka 102 or does it mean all of the law, 101, 102, 103, 112 etc? I see that 112, nor anywhere else, makes any specific mention of the availability of using 112 to reject an application. I wonder why it is so widely used? Either way your position is bonked, if you consider it to be entitled to a patent under all the laws then there is plenty of laws the application may fail, and if you consider it only 102 then apparently I’ve been making rejections all wrong (as has all of the office) and 103’s saying a patent may not be obtained is irrelevant because the applicant is still entitled amirite?

    In any case, “on such examination it appears that the applicant is entitled to a patent under the law” will always be the undoing of your position. What appears to one man to be one thing may not to another. It is of course a judgement call. A judgement call which you must convince someone up the chain of “power” to make in your favor so that you officially appear to be entitled to a patent, else, you get to appeal to the fed. circ. or undertake civil procedings if you ever want it issued. End of story. In the mean time I’ll probably grant that patent this week.

  16. “That does not mean that such communication must be correct. If you will, we have the ‘right’ to be ‘wrong’ until ordered by the court (on an appeal, or civil action) to do something other than reject.”

    Unbelievable … actually it isn’t unbelievable. Here we have an examiner, a federal government employee, that is stating that examiners do not have to follow the law until told to do so. You are an embarrassment to every examiner out there that tries to do the right thing.

    You are drunk on the power that the USPTO provides its examiners (through lack of proper oversight). Ever hear of the expression “abuse of power.” If your actions even come close to matching your attitude and your writing, you personify that expression. It is attitudes like yours that give government employees their well-deserved poor reputation.

    “No patent is issued, ever. This basically tells you something. That something is that if your application never appears to be patentable then something will never happen?”

    Yet again, you ask the wrong question. As stated in 35 U.S.C. § 102, “[a] person shall be entitled to a patent.” The question that SHOULD be asked is whether you (as the examiner) can find something that makes the claimed invention unpatentable. If not, then allow the patent application to issue as a patent.

    You are just the gate keeper. Once the applicant appears before the door, the applicant is entitled to go through the door unless you can show otherwise.

  17. “That burden of proof is always on the Examiner.”

    I believe I specifically addressed that the burden was, is, and probably always will be on the examiner and that the point is irrelevant. Go ahead, read the thread then post ok? Since you’ve been helpful in the past I’ll point out for you why what you’re saying makes no sense. Just because there is no burden to show patentability and there is a burden for the office to show why, on examination, the application has not been issued does not dictate a right to have your patent issued. Why? A simple fill in the blank should suffice to show you why, “I only have the right to have my patent issued when it appears, on examination, that I, the applicant *blank*”. If you put in *am entitled to a patent under the law” then +1 for you! Guess what happens until then? No patent is issued, ever. This basically tells you something. That something is that if your application never appears to be patentable then something will never happen? Guess what that something is? Ahh yes. Your application will never be issued. Let me tell you something else, you know those cases that have 5 nonf’s? Statutorily rejected, even if the references are rubish or the claims are not indefinite etc.. If it does not appear, on examination, that the applicant is entitled to a patent then we are to communicate that to the applicant. That does not mean that such communication must be correct. If you will, we have the “right” to be “wrong” until ordered by the court (on an appeal, or civil action) to do something other than reject, at least, by the statute that seems to be the case. Of course doing so might look bad, but that also is irrelevant to the discussion at hand.

    “(I’m putting the “can’t” back in applicant)” lulz, that’s pretty funny! Good one! As we speak I will be putting the “ion” back in examination.

  18. Lionel, puhlease! Appli-CAN’Ts are evil, wanna-be monopolists, who are just trying to steal money from our wonderful PTO underwriters like Microsoft, who can rely solely on the copyright laws for protection and to whom patents are an annoyance at best. Appli-CAN’Ts must be punished for their evil thoughts, and their applications are presumed to be unpatentable, because all inventions that could have been made were made over 100 years ago.

  19. E#6k,

    You are wrong. The PTO has to show why the applicant should not receive a patent, the applicant does not have to ahow why he should. That burden of proof is always on the Examiner. Now the burden of evidence can shift to the applicant if the Examiner makes his prima facie case of unpatentability, but ultimately it is always the PTO’s burden to prove unpatentability rather than the applicants burden to prove patentability.

    One of the many secondary reasons why the rules will be shot down without statutory amendment.

  20. Duell said it best over 100 years ago – everything that can be invented has been invented! During my tenure, I intend to kill off all patents. The USA is being plagued by entreprenuers and inventors – what we really need is an army of faceless, mindless bureaucrats, like me. If I can’t kill off these patents legitimately by complying with my duties under the patent laws, I will do it illegitimately, with secret reviews, by imposing unbearable costs on applicants (I’m putting the “can’t” back in applicant), and by passing regulations that are illegal. The future of bureaucracy is at stake – this is for the greater good of people like me.

  21. Can I invoke God win’s law and mention Hit ler, even though it has nothing to do with what’s going on here, and ki ll this thread? It’s degenerated into bashing between e6k and others and should just d i e.

    Spam filter catches funny things.

  22. “”#6K, I hope you get to law school quick, because you are really clueless about reading laws. But you’re pretty good at making up gobbledygook as you go along. Therefore you may become a great judge one day.”

    You’ve stumbled upon my secret agenda … ”

    Just don’t sue the dry cleaner for millions if he loses your laundry!

  23. pds: “Your problem 6K is your completely inability to put yourself in somebody else’s shoes and consider the totality of the situation. Instead, your opinions appear to be based upon the view that patent applications are to be written and claimed for ease of examination. Your proposals completely ignore the requirements that the Federal Circuit has placed on applicants to have an enforceable patent.”

    Exactly. The resemblence to current USPTO mgmt is uncanny isn’t it?

  24. “The patent is presumed valid unless you prove differently, and if you don’t prove differently the Director shall issue the patent. Thus, there is a default right to an issued patent.”

    All I have to say is that you don’t even have a patent to be presumed valid until the Director issues it. Try using the word application next time, though you’ll still fail horribly. The only right you have is to be qualified for a patent, this is not a right to be issued a patent. You need to learn to read. Here, I’ll let you know what you’re doing wrong, you’re inferring things that aren’t actually written. Reading between the lines of a statute that only the letters of are the law.

    “Your comments indicate that you don’t want to be bothered with that information.”

    I’d love to have that information if it is the only way you can point out the differences between the prior art and your invention. If it’s not, then kindly don’t waste my time and just tell me what the differences are. In any case I don’t have that big a problem with the attorney’s I work with including their story. It’s usually one paragraph long at most. Thankfully.

    Classic attorneying pds, taking what is written “By the early 1800s” and turn it into “the early 1800’s”, you can’t take “By” away without losing context for determining what the sentence is saying. And then you have the balls to tell me I’m the one twisting the words. If I say, by the time I reach the store (10:00) I had tied my shoes. Do I mean I tied my shoes at 10:00 10:01 or 9:59-? If you guessed 9:59- you’re correct! So, we discuss the time before 1801. By that time (1801) the action that is being related (narrowing the definition of science) has already occured. Notice the events that triggered the shift in the meaning of the term occured as the result of things that happened prior to 1700, laws of motion etc. In any event, there are entire papers written on the subject and I read one about a month back, I’ll see if I can find it later, it does much more than address a wiki word “by”. Either way, like I said, we’re not likely to “solve the mystery” when linguists are not firmly on either side.

    “I’ll give you an analogy”

    Bad analogy since the statutes specifically provide for the presumption of innocence and specifially fail to provide for the presumption of patentability or the issuance of a patent sans conditions. I.e. you are presumed innocent no matter what, end of story, you must then be proven to be guilty for any punishment to be taken against you. In the patent case we have that you are presumed to have applied and you must appear to be eligable for a patent on examination for any action to be taken in your favor (issuing of patent).

    The statute provides for the qualification for a patent only. So until you can back yourself up in the statute you have nothing to stand on but bad analogies. I understand what you’re trying to say, you don’t need analogies, I’m specifically saying that your position is less defensible than mine is and you fail in every response to provide any substantial showing of how the applicant has the right to be issued a patent. You never will find such a showing because it does not exist.

    Having a burden to present a case of unpatentability does not in any way give the applicant a right to the eventual issue of his patent from his application. Should the application appear not to be eligable for any reason under the law the patent will never be issued. This means, if I cannot discern the usefulness of your invention it will not be issued as a patent, if I cannot discern the difference between your invention and the prior art it will not be issued as a patent, if I see indefinite terms it will not be issued a patent (this is purely a judgement call in many cases), and one rather large thing, if I cannot discern what the invention IS it will not be issued and then etc. etc. My being required to write down why the application has not been issued does not magically create a right for the patent to be issued nor does it even imply such a right. The only right it implies is exactly what it says “if on examination it appears …” in other words you have a right to the issuance of a patent WHEN and only WHEN (notice the word “on”) examination causes the applicant to appear to be entitled to a patent. At any time prior you have no such right to issuance. A very good case in point is that if I issue an OA and it Sucks horribly but the applicant never replies then he is not issued a patent because it still appears that he is not eligable. But but but you say “that’s irrelevant because you just stopped the issue of a patent”

    In any event, in re to all the amends I get that say “The applicant’s request the grant of a patent” I’ll be sure to let them know that I don’t have the power to do such a thing. I guess the fact that a patent will never be granted won’t bother them a bit and they’ll abandon right?

    pds pds pds, you’re funny if not overeducated.

    “#6K, I hope you get to law school quick, because you are really clueless about reading laws. But you’re pretty good at making up gobbledygook as you go along. Therefore you may become a great judge one day.”

    You’ve stumbled upon my secret agenda …

  25. Posted by: discount | May 09, 2008 at 08:25 AM
    “We should probably remember that one aspect of the Internet is that certain opinions will be given that we don’t agree with. Some opinions will be thoughtful and some not as much, some will be polite and others not as much.

    In e6k’s case, I think we need to recognize that his/her opinion is just that, an opinion. We can be glad it’s not the opinion shared by Congress, the USPTO, the courts, and the caselaw. We can try to educate him/her on how the law works.

    In the end, though, we should just let it go. This may be a marketplace of ideas, but e6k is only a seller, not a buyer. We do (or should) have better things to do with our time. e6k is correct on that point. I will do my best to use my time productively, and responding to e6k’s posts are not a good way to do that.”

    Thank you Discount.

    This is the correct way to deal with a troll on any blog.

    Ignore them and they will go away.

    p.s. – Not all examiners (or ex-examiners) are jaded, but many of us have seen as many abuses by practicioners as practicioners have seen by examiners. The only way to a meaningful resolution is all parties in the prosecution phase working together.

  26. E6k:
    The patent is presumed valid unless you prove differently, and if you don’t prove differently the Director shall issue the patent. Thus, there is a default right to an issued patent.

    The fact that the Applicant must wait on a few steps or procedures is separate from the rights of the Applicant. For example, you have a right to be free from unreasonable search. Yet, the police may unreasonably search you and you will have little remedy (MAYBE exclusion of evidence, if any). According to your weird logic, then you really don’t have a right to be free from unreasonable search. A right is a legal concept, presumably enforceable by a judge, but it is not necessarily a physical reality.

    What were you smoking over your lunch break?

  27. e6k, your comments discourage attorneys from telling the applicant’s “story.” Oftentimes, however that story is what makes it clear that the invention was not obvious. If the problem was known and ten other ways of solving it were tried in vain before applicant’s successful invention, isn’t that an indication that the invention was not obvious? Your comments indicate that you don’t want to be bothered with that information.

    Do you simply want to make your own gut judgment on what would have been obvious? It is examiners doing that that make patent attorneys frustrated. The FedCir tried to rein that analysis in with the TSM test; lord knows we are now adrift on the sea of who knows what section 103 means after KSR.

  28. “By the early 1800s [by 1800+, i.e. as we near 1800+]”

    Classic examiner (mis)interpretation of a teaching (BTW — you are almost certainly an examiner). You take “early 1800s” to mean “as we near 1800+” or late 1700s. You crack me up. You then go on to say “would you put the specific limitation of science on it when you knew (as a gentleman) it was becoming popular to refer to science in a more narrow sense” … assuming that the prior statement was correct, a person writing in the 1780s would not know what would be going on AT LEAST 20 years later in the 1800s, 1810s, 1820s (i.e., the “early 1800s”). Too funny …. classic examiner …. find a teaching that is close, but not perfect, and then twist the language so that it fits.

    BTW … the “weak case law” you are looking for requires that the USPTO, during prosecution, be given the initial burden of providing a prima facie case for any rejection. Here is a cite for you: In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

    Since your legal training appears to be failing you in comprehending this issue, I’ll give you an analogy. In criminal law, a person is presumed innocent until proven guilty. This is very similar to the concept that a patent is presumed to be patentable until proven unpatentable. As such, you don’t grant patents, you can only prevent them from being issued.

  29. I for one have to admit that I never got through college, no less law school. I guess I’m less jaded than most LOL (that’s the first time I ever wrote “LOL”).

  30. “PDS sometimes I find it hard to believe you’re actually a graduate of a law school. Do you mind if I inquire as to where you attended? Just between nemisis and all, if I’m to continue to even talk to you I’m going to need some credentials”

    I’m sure pds will be willing to tell you where he went to law school, assuming you’re willing to tell him where you went to law school.

  31. discount–good point.

    I’m just wondering–would an examiner who spent hours blogging during the day really get paid overtime for staying late to make up those hours?

    You sure can’t do *that* at a law firm.

  32. We should probably remember that one aspect of the Internet is that certain opinions will be given that we don’t agree with. Some opinions will be thoughtful and some not as much, some will be polite and others not as much.

    In e6k’s case, I think we need to recognize that his/her opinion is just that, an opinion. We can be glad it’s not the opinion shared by Congress, the USPTO, the courts, and the caselaw. We can try to educate him/her on how the law works.

    In the end, though, we should just let it go. This may be a marketplace of ideas, but e6k is only a seller, not a buyer. We do (or should) have better things to do with our time. e6k is correct on that point. I will do my best to use my time productively, and responding to e6k’s posts are not a good way to do that.

  33. I asked this before and I’ll ask it again – where does E6K’s hostility to patents and patent applicants come from? Unless he is just a generally unhappy hostile guy (which is quite possible given his ignorant and arrogant nature) it has to come from the BS he has been fed by PTO management during his “training.” If he is an exemplary product of the PTO’s vaunted Patent Training Academy, then we are all in for years of trouble, since there are probably lots of 6Ks out there, they’re just not as bloviatory as our 6K.

  34. e6k, I’ll say it again: quit wasting the money of the people who paid for examination and get back to work. I’ll bet you wrote more on this blog yesterday than you write on OA’s in a month.

  35. #6K, I hope you get to law school quick, because you are really clueless about reading laws. But you’re pretty good at making up gobbledygook as you go along. Therefore you may become a great judge one day.

  36. As a follow up for anyone regarding PDS’s little science definition as the whole truth, we need only look to how he found the wiki on science. Google Definition of science. Your no. 1 hit will explain to you the difference between formal and informal use of the term “science”. I presume the articles of this constitution are formal rather than informal.

    link to sciencemadesimple.com

    Turning to the third hit, we find merriam webster telling us that it is:

    2 a: a department of systematized knowledge as an object of study b: something (as a sport or technique) that may be studied or learned like systematized knowledge

    a definition which, if the framers wanted to use, would have said “sciences” rather than “science”.

    then finally we arrive at what science means in formal terms that originated at the time just before the constitution was written.

    3 a: knowledge or a system of knowledge covering general truths or the operation of general laws especially as obtained and tested through scientific method b: such knowledge or such a system of knowledge concerned with the physical world and its phenomena : natural science

    I’ll take my bow as having used better references than a wiki. Science Made Simple, Inc. and merriam webster LOL.

    This debate is bigger than PO and isn’t going to be solved here by wiki’s and dictionaries I don’t think pds.

  37. “but on the other hand you say you want the story.”

    I’m assuming that by “the story of the invention” you mean I want the tale of how it came to be. How it came to be is different than what it is.

    If I say to you: Today I created a machine with wheels! That tells me the story of what you did today. If you instead say: The invention is a machine with wheels. The prior art is a machine with slats on the bottom. The difference is between having slats or, in the alternative, having wheels. You point out to me what the invention is, what the prior art is, and what the difference is (if you’re feeling generous, if you’re feeling really generous, toss in “the only difference is (are) …”). You can sub embodiment for invention if you like. In specific I don’t care about (ii) this is the deficiencies with the prior art, and (iii) this is how we saved the day with our new invention. If you want to tell me about them fine fine, go ahead, but it won’t help me one whit.

    “you’re not “here to grant an exclusive right.” That isn’t your job because it has already been done. In case you’ve forgotten, applicants are entitled to a patent … see 35 USC 102 (“A person shall be entitled to a patent …”). As such, Congress has already made that grant; your only job is to make sure that the application is not defective for some reason or another.”

    You’re either *removed* or haven’t read the whole statute in awhile. I’ll clue you in a tiny bit, you and the rest of you thinking there is some sort of right you have to be ISSUED a patent. Notice here, there is a difference between “entitled” as used in 102 and “issued” as used several other places. Entitled means, I don’t think you will dispute: qualified for by right according to law. That’s right, 102 says you are entitled to a patent unless:. So, you are qualified for by right according to law a patent unless:. Notice the only right you have here is the qualification.

    So, first off it’s not a “right to be ISSUED a patent” it is a “right to be qualified for a Patent” so far as I know, the last time I qualified for a contest I didn’t necessarily win the contest. This brings us to the second point you can’t rely only on 102 in a vacuum, you have to read the whole statute including the portion on, hmm, amongst several relavant parts “Examination of application” 131 “The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.”

    Now, it appears that what is to occur is that the Director shall cause for me to examine the application and alleged new invention, and then, if I (or the Director if he steps in and does it himself) should grant it passage through my examination under which it must appear that the applicant is entitled (notice that word again? Comes from 102.) to a patent under the law then the Director shall issue a patent. (A patent being an exclusive right correct?) Now, so far as I can tell, you can correct me if I’m misreading the sentence above or if it is deficient in any way, I’m granting the patent passage to the Director who takes my word for the examination having yielded the result that the application appears to be entitled to a patent and then issues a patent. But maybe I’m wrong, maybe all the applications that I examine and find still eligable for a patent automatically, with no effort from me, slip magically to the Director’s desk from mine. Here I’ve been filling out all these forms for NOTHING. You should demand that we examiners not have to grant patents anymore, here we’re doing all this work when the statute already did it for us! Heck, I even have people submitting amendments requesting that a patent be granted. Well, sht son, pds says it’s already been granted, so don’t ask me for it to be granted it’s already been granted!

    Now, if you’d like to argue that it’s the director who is issuing the patent, and that issuing=granting then you might have an argument. But since you didn’t, you’re not even near on base. I would still say there’s a difference between the granting of the patent which is what I seem to be filling out forms to do, and in issuing the patent itself, which is what the director seems to be doing, but I could be wrong on that one. Maybe it’s the Director alone that grants them.

    PDS sometimes I find it hard to believe you’re actually a graduate of a law school. Do you mind if I inquire as to where you attended? Just between nemisis and all, if I’m to continue to even talk to you I’m going to need some credentials, you debase yourself nigh on everytime we have a discussion. Don’t even get me started as to a full reply to your comment citing a wiki the other day. Finish reading the wiki, therein you’ll find a part about “history” that specifically addresses how the terms used in the patent clause were used in speech common to the drafters at the time of the patent clause being drafted. You’ll find specifically that it countermands your entire premise of “science” having such a broad spectrum.

    As to the rest of your comment above, I wouldn’t say that I did take all that into account. I realize you may need some amendments, no problem what so ever. As to deps you know my feelings. And I certainly have not ignored the requirements the Fed Circuit has laid forth. I did not include them all, but I don’t have all night it is, after all, bedtime. But before I go, I must point out your problem. Sense of entitlement to the issue of a patent. That is something you simply do not have a right to. Sorry. In the mean time, at least lay me out some weak case law supporting your “right to the issue (or grant) of a patent” for me to strike down as fallacious on it’s face ok? I’m sure I’ll be bored come Sat. Be sure to bring 101 et al. to the party ok? I’ve prepared them a spot.

    Oh, and hey, just for kicks, read this peice about Article 1, Section 8, Clause 8.

    link to en.wikipedia.org

    Read it all the way through. Pay special attention to the second paragraph. There is you some wiki support for your position.

    Da m it now I’m started responding to your bs wiki thing. US Constitution ratified in 1788, included the clause in question. “Well into the eighteenth century [i.e. 1700’s], science and natural philosophy were not quite synonymous, but only became so later with the direct use of what would become known formally as the scientific method, which was earlier developed during the Middle Ages and early modern period in Europe and the Middle East (see History of scientific method).” “By the early 1800s [by 1800+, i.e. as we near 1800+], natural philosophy had begun to separate from philosophy, though it often retained a very broad meaning. In many cases, science continued to stand for reliable knowledge about any topic, in the same way it is still used in the broad sense (see the introduction to this article) in modern terms such as library science, political science, and computer science.) [i.e. it’s use in designating studies]” “In the more narrow sense of science, as natural philosophy became linked to an expanding set of well-defined laws (beginning with Galileo’s laws, Kepler’s laws, and Newton’s laws for motion), it became more popular to refer to natural philosophy as natural science.” i.e. in the more narrow sense of science it became more popular to refer to natural philosophy as natural science. Now, I pose to you, if you were writing a clause and you wanted to say “congress shall have the power to grant to the discoverers of any reliable knowledge” would you put the specific limitation of science on it when you knew (as a gentleman) it was becoming popular to refer to science in a more narrow sense, a learned sense, as the study of natural things? Show up with some better material next time at the least alright? Yours says currently that the term was often used in a broad sense, but that it was becoming popular (I note here that they mean amongst learned men, i.e. the framers) to refer to science in the more narrow sense. At best your source does naught but fuel the controversy.

  38. “Drafters would seemingly have the entire process turned into just what you suggest, telling their story. We don’t want to hear a story, we’re here to grant an exclusive right on specifically that which you invented. Nothing else, nada. Telling me a story isn’t going to help me to do that. Telling me what you invented will help me immensely, and will help the public know what you invented and also what stuff you disclosed that you intend to exclude them from making.”

    Funny, on one hand you say you don’t want the story, but on the other hand you say you want the story. The story is the following: (i) this is what was happening before (i.e., the prior art), (ii) this is the deficiencies with the prior art, and (iii) this is how we saved the day with our new invention.

    Also funny is your belief that the patent application is written for you, the patent examiner. Odds are that the patent examiner is the least likely person to read the specification of all the possible audiences for the application. For really valuable patents, the examiner is the least of the patent drafter’s concerns.

    BTW: you’re not “here to grant an exclusive right.” That isn’t your job because it has already been done. In case you’ve forgotten, applicants are entitled to a patent … see 35 USC 102 (“A person shall be entitled to a patent …”). As such, Congress has already made that grant; your only job is to make sure that the application is not defective for some reason or another.

    Another BTW: much of your analysis does not appreciate the potential differences between applicant’s invention and a patentable invention. Unless applicant stole the idea from somebody else, EVERY application describes an invention. However, not all inventions are patentable. Moreover, applicant’s single invention may contain multiple aspects, all of which may be patentable.

    Thus, it is perfectly acceptable and expected that a claim to what applicant considers to be their invention, in the broadest sense, may not be patentable but other claims (i.e., dependent claims) may cover aspects of the invention that are patentable. Applicants cannot know, with any certainty, that what they claim is patentable unless (i) they know exactly how the Examiner is going to interpret the language of the claims and (ii) they have perfect knowledge of the prior art.

    Your problem 6K is your completely inability to put yourself in somebody else’s shoes and consider the totality of the situation. Instead, your opinions appear to be based upon the view that patent applications are to be written and claimed for ease of examination. Your proposals completely ignore the requirements that the Federal Circuit has placed on applicants to have an enforceable patent.

  39. “I further deeply resent when PTO management says that applicants (patent attorneys/agents) are the ones to blame because they (we) file poorly drafted applications for unpatentable ideas.”

    You know something, I have to feel for you as well. Let’s be honest, nobody gives a rat’s behind about your poor drafting/unpatentable ideas. Not even mgmt. What people DO care about is your greediness in claims.

    Aight I really have to go now lolz there’s OT to be worked amirite?

  40. The perfect patent has no background, a summary that consists of a restatement of the broadest claim, a written description of “possible” features tied together for “one embodiment,” a zillion claims to counter each possible misconstruction that could happen, and an abstract that is completely useless to anyone trying to figure what the he11 the thing is, because it is also just a restatement of one of the claims.

    I couldn’t resist, that’s just too juicy. While I sympathize with your seeming plight (though it be well paid) I have to dissent. Drafters would seemingly have the entire process turned into just what you suggest, telling their story. We don’t want to hear a story, we’re here to grant an exclusive right on specifically that which you invented. Nothing else, nada. Telling me a story isn’t going to help me to do that. Telling me what you invented will help me immensely, and will help the public know what you invented and also what stuff you disclosed that you intend to exclude them from making.

    Thus the perfect patent app involves:
    A background describing the art which the applicant knows to have been present in the art before the invention was invented (or more preferably, “filed”) and is closest to the invention.
    A summary that compares the invention with the closest known art if there is any.
    A written description describing only that which you have invented and only as much of the art that came before as is necessary to provide context.
    An abstract stating in one sentence what the inventive feature of the invention is.
    Some drawings showing anything interesting.
    A claim particularly pointing out and distinctly claiming that which you regard as your invention. Maybe some more claims if you’re incompetent at getting the one right.

    Follow these simple steps kids and you’ll be a patent holder in no time! If you actually invented and claimed something useful you’ll probably make money from your patent! If you didn’t then you just wasted 500$! Grats!

    Again, the reason they don’t want you just telling a story is because that is not conducive to granting a legal exclusive right whereas writing an application properly and having a particularly pointed out and distinctly claimed invention is conducive to the grant of, and the proper use of, a legal right to exclude.

  41. I also have to change the way I draft applications based on the most recent Federal Circuit decision. I also prefer the style of a decade or two ago where you told the story and so forth.

    I further deeply resent when PTO management says that applicants (patent attorneys/agents) are the ones to blame because they (we) file poorly drafted applications for unpatentable ideas.

  42. The second problem is the CAFC, which seems to (with the exception of J. Newman) disapprove of (with extreme prejudice) patent drafters. Patent drafting is not easy to begin with. However, meeting the unreasonable expectations of the CAFC requires luck as well as skill. It seems each new opinion piles new burdens on the shoulders of the patent drafter. The perfect patent has no background, a summary that consists of a restatement of the broadest claim, a written description of “possible” features tied together for “one embodiment,” a zillion claims to counter each possible misconstruction that could happen, and an abstract that is completely useless to anyone trying to figure what the he11 the thing is, because it is also just a restatement of one of the claims. Patent attorneys I know *strongly dislike* writing this way. They just want to tell their story and describe the idea, but the CAFC says that you can’t (or shouldn’t) for a hundred different reasons. The legislature must step in and fix this. Instead, we get a “reform package” with a bunch of questionable special-interest throw-ins that do nothing to fix the problem and in all likelihood (at least if you believe Chief J. Michel) would have made matters much worse. Thank G0D that hasn’t passed (yet).

    Sorry for the rant. My employer may or may not agree with the above statements, which reflect solely my own sentiments.

  43. Just wondering — The PTO doesn’t have the authority to change how patent infringement is litigated, but that doesn’t mean it can’t or shouldn’t be fixed.

    There are two problems that need fixing. One deals with the quota system, which needs to be scrapped. Examiners should be rewarded based on productivity. E.g., one point for a first action, 1/3 point for each subsequent action, and 1/2 point for disposal. Responses to RCEs count as a “subsequent action.”

  44. Yes, some applications are short, some are long, some are well prepared, some are poorly prepared, some have many claims, some have few claims, and if the applications are not evenly distributed to the examiners and/or if examiners are not somehow rewarded for examining the longer cases or those with more claims, problems will result. Morale will drop, some examiners will leave.

    But the distribution and the monitoring of the distribution problem should have a relatively straightforward management solution. And if Patent Office management cannot solve that problem, then maybe …

  45. I’ll go with most of what you say Defector, but I do not find it reasonable to expect, nor would it even be possible, that much of the unclaimed specification be searched in the more complex cases of today in arts such as yours should be examined whether it “should be or not. Ridiculous would be more like it. Picking and choosing subject matter from 50 pages worth of sentences what the examiner mind reads from the applicant that they might regard as the best choice to add a one word limitation in their reply (which is likely what will happen). Ludicrous. Not with 10000 men could you do this.

    Oh, and as to presenting the best art up front, what do you say about the cases where I present the best art up front, cite a simple embodiment, and then by the end of prosecution we’ve progressed from the simple embodiment merely to the more complicated embodiments of the exact same reference? I mean, surely with all that intellect over there and having read the whole ref why is it that the claims come back directed to those? I daresay that the problem of not presenting the best art up front is a large contributor. I would however say that the applicant failing to particularly point out and claim the subject matter which he regards as his invention upon submission of the app IS a large contributing factor, in fact, this is a factor that dwarfs all other factors by orders of magnitude.

    “If not in their words, then at least in their implementation”

    Irrelevant ivo the law and caselaw. Changing the caselaw to preclude such rules impacts far more than is prudent.

    “Just like if I told you that you would be made a primary if you could jump over the moon, taking off from the earth, and jumping purely with your own naturally given leg strength.”

    Can I do walljumps before I attempt?

    “IT would average out to what it is now. ”

    No, JD’s idea would help, you have to think about it for a very long time before you comprehend why, but it would. Though probably negligably unfortunately. The problem his would help solve is that of “backloading” which basically means that if you take as a given that you have to have a backlog then if you consistently add big ones to the backlog whilst taking it easy during your work hours thanks to cherry picking your backlog will be made up of “hard” cases, rather than a mix of “hard” and “easy”. Though, in order for JD’s view to be correct you have to take as given that examiners take it easy after doing an easy case rather than immediately picking up a new one. Not an easy assumption to make, nor is it necessarily correct, but he’s making it, and if you make it then his way saves a small amount of backlog (by making more work be done essentially).

    The rest of your suggestions are good LL but hey, you know you can’t change how the courts feel about PHE etc, that req’s action from them. FYI it seems like doing just no. 3 would probably end the backlog anyway.

    “we needed … claims” LOL. Your failure to be able to claim things properly hardly means you need more claims. That’s just the easy way out that you “want” not “need”.

    Time for me to settle in and finish off this app, ttyl.

  46. “e#6k your comments about some agency rules being substantive is has some validity.”

    Um hello, many USPTO rules have substantive side effects. Off the top of my head check out 1.111 (b). What happens if you don’t comply with that rule? Isn’t that rule there to substantively affect your application if you do a certain thing that is statutorily allowed in a way that makes it difficult for the office to handle your application (i.e. submitting an incomplete amendment)? Why do you think people hire attorneys to help them through the process of getting a patent? The old rules make up no small part of that decision, there is a chance they will seriously mess up your application substantively.

    ” Examiners routinely pick the shortest cases with the fewest number of claims … this leads to backlog”

    True, but as every good examiner knows, you need to try to do a hard one for every easy one else you’re stuck with a docket full of hard ones some bi weeks and that REALLY sucks (it happens to me even if I don’t cherry pick which every newbie will do at some point to try to make production). I would say that practice is contributory to the problem no doubt, but many examiners feel forced into it to not be working OT. Take an examiner like myself who doesn’t even get to cherry pick very often if I wanted to. Oh, but btw, the ones that are really cherry picked are the ones with blatantly narrow ind claims. There’s not many short cases in existence that beats a good first action allow.

    “Of course, SPE’s should be monitoring their examiners’ dockets and making sure the cases are examined in turn,”

    That could be easily automated, no need for spe’s to have to do it.

    “Your point of view suggests that the “people” should be subservient ”

    Not they “should”, replace that with “voluntarily are”. Don’t believe me? Why do we have such high taxes and a nightmare tax scheme? Why does the US send aid to foreign countries (and in many cases ones that aren’t even hurt that bad)? I’m pretty sure I myself never said hey gov. “would you please send aid to people in nearly every country across the world?” and I’m fairly sure that you didn’t either. As the public you and I feel like charities do just fine.

    “My point was … the pto doesn’t have the power and needs to cry for more”

    The pto already has procedural rule making authority. Speaking with you is tiresome at best, you keep going back to irrelevant topics to address the only issue: are the rules substantive or procedural?

    “Also, your ramble seems to indicate that you think “the people” are PTO examiners”

    Hardly. Learn to reading comprehension, then realize I said people in terms of any rational person I’ve ever talked to and the vast majority of people I’ve merely heard speak or read. For you in layman’s terms that means more people than examiners.

    “If they don’t like the conditions they are asked to work under, they can go to the private sector.”

    What, prey tell, do you think the on it’s face problem that contributes most to the backlog? DING DING DING if you said “we don’t retain enough employees” you’re absolutely correct! If you believe that production req’s or other workplace related issues are the reason we haven’t retained them then DING DING DING again.

  47. “Everybody knows … cases increase the backlog?”

    I see what you’re saying, and I believe we’ve talked about it before, you could have just said that at the outset.

    Alright the following problems exist:

    In the AU’s where big apps are a problem you then have cases that are designated only in terms of length/claims and that has the potential to lead to huge disparities in the time spent per examiner and if there is no standard then people will get jealous of one another’s cases fast. One guy working on a docket full of shorties is constantly having to digest completely new inventions while his fellow is simply searching/writing his days away because he got long ones. Let’s say he dislikes writing and would rather read new apps, sees his fellow examiner doing that all day and loving it, he gets pissed and leaves. You say “hah but that could happen now”, true the current system builds in randomness since the SPE’s are not to cherry pick for anyone.

    Further short to read cases are not always the quickest to search, and vice versa. Then, even assuming a trend in short to read yeilding short to examine leads to big problems if the random cases given to any given examiner happen to be short to read (and thus have a very very small time limit allotted) but hard to examine, what then? As it is each “invention”, a term which contrary to what “claims” are traditionally held to be, is given equal time. If anything, many here in the office view the embodiments/description as the invention, with the claims being one possible description of the invention. Thus your invention is being examined equally as much as the next person’s even though you managed to be consise rather than a longwinded arse.

    Aside: I didn’t realize you were all for searching directed only to the claims rather than the desc/embodiments, are you?

    Also, we have the problem of accounting for a case with perhaps 100 claims all claiming the same thing in different manners? I’ve had cases that managed to have “technically” distinguishable claims going on about the same subject matter for literally 30 claims at a time (for a total of ~70 iirc) that are all addressed by one piece of art, heck, one paragraph of art. Were those 30 claims indicative of the difficulty of finding that para, or even the time spent reading them? Not necessarily. I’ve seen claims 2 lines long that encompass a VERY complicated process. So, because it was actually consise in it’s presentation that means it’s easy to search or that it will be an easy case? No.

    So there you have your reasons, at least some of them.

    The most important is that more claims/length does not necessarily = more difficulty though it often does. A strong correlation does not = causation.

    Thus, your basic premise:
    “Everybody knows that examiners spend less time on “shorter” or “easier” cases and more time on “longer” or “harder” cases” is inherently flawed even though it may look great on the surface.

    Overall, I think it would be worth a pilot to try out, but you have to realize JD, there are other factors in addition to those above. The office wants steady, easily measured production rather than haphazard “well, we did 30 cases this quarter instead of 50 but got production at 100%” and “well, we did 60 cases this quarter instead of 50 but go production at 100%”. In the end I suspect that is what mgmt is most concerned about, the need for predictable meeting of production goals. Not to mention that it might lead to an increase in the want to cherry pick cases with more claims because they tend to have at least some overlapping matter in the claims but hey, you’re getting extra time for that right? Plus, it would be rather difficult to go through the arts and determine what the modifiers should be, heck, they don’t even like to adjust the standard hours system we have now. It’s easy to armchair undersecretary JD, but I suspect that your system might not work out so well as you think, though I personally would be willing to implement at least an experiment if I were in mgmt.

    I suspect it would be getting over the need for consistent, predictable production though that would kill the whole deal from a mgmt perspective.

    Oh, and fyi, I believe Peterlin would have been your woman to get something like this going, she’s all for turning the PTO into as close to a business as possible, including setting fees etc. Rewarding work in such a manner seems right up her alley.

  48. Buttercup posted: At the ABA meeting in Boston in June 2006, Solicitor Whealan made it clear that reducing patent pendency/backlog was NOT the reason behind the proposed “No continuations past one without our permission” rule. Instead, he said it is being promulgated to prevent applicants from surprising the public with new claims in a continuation several years after the filing date.

    Submarine Patenting is a good argument in favor of limiting continuations. But it requires legislation, not administrative fiat.

  49. LL — The PTO has the authority to set an arbitrary limit on the number of total claims or independent claims which it will examine in each application??? I don’t think it does.

    About six months ago I prepared and filed an application for a machine which the client and I identified as having 7 improvements (patentable in our opinion and based on our search) over the prior machine (the disclosure of which we made of record). For each improvement we needed one or more of assembly claims, subassembly claims, method of use claims, method of manufacture claims, mean-plus-function claims, non-means-plus-function claims, and so forth. I know that the examiners and PTO management would just like to see one independent and a few dependent claims in the application. But the inventor is entitled to far more. Please tell me the claiming strategy which the client and I should have used. Should we have not pursued protection to which the inventor was entitled because the PTO has a large backlog?

  50. OK now…

    6K first.
    The rules are substantive. If not in their words, then at least in their implementation. If a rule is made and the makers of the rule explicitly state (which I personally have heard them do) that they know of no circumstances where a petition for an extra RCE/CON would be granted, that IS making it a de facto bar from getting that RCE/CON. Just like if I told you that you would be made a primary if you could jump over the moon, taking off from the earth, and jumping purely with your own naturally given leg strength. Go ahead and do it & I will give you your stamp.

    Further, your ideas about changing production requirements are not realistic, nor are they grounded in fact. If the rules go thru, your hours WILL be reduced in a short amount of time. Not initially, but within a year or so. They will justify that by saying the rules didn’t reduce the backlog enough (at all?) and since examiners now only need to work on cases with less than 5/25 they need less time (the calcs are already done; I’ve seen them. See my post above.)

    JD
    Your idea would not really effect anything (assuming that the baseline that was used in determining if there is a + or – for the hours/bd). IT would average out to what it is now. No help there. There are other things that can be done with hours as discussed b4.

    As for moving oldest cases, most (not all) arts now assign a limited # of cases to an examiner (usually 10-20 depending on grade & art). They are not given more until these are gone (or basically gone). And, starting in Jan. the SPEs have been more strictly enforcing workflow for not moving oldest cases. I have heard of examiners getting 20+ neg points for not moving their oldest case. And, as 6K said, at the end of quarters SPEs make a big point to get the oldest cases moved as their rating (and bonuses) depends on it.

    Now, there are some (fairly obvious) solutions to the PTO problems. “Defector” points out some things. Others (including JD) have pointed out other ideas.

    1. Need encouragement to do better 1st actions. And penalties for repeated non-finals & re-openings. Make act/disp part of the PAP. Change count system so there is a negative for 2NF+ cases or re-openings. Maybe add a 3rd count/case for either a final or 2 for disposal as the case merits.

    1a And more emphasis on IPR errors and LESS on allowance errors (IPR errors are 10-15% with kickbacks from OPQA around 20-25% of cases reviewed).

    2 Make incentive for the applicants to get prosecution done quickly. Make RCE/CON progressively (exponentially?) more costly. Make the file wrapper history to not be admissible (or only minimally so) in litigation.

    3 Instead of 5/25 try the actual proposed rule – only a limited # of claims are examined. Other dependent claims can be added after allowance.

    4 Along with 2, more emphasis on getting the applicant to cite relevant prior art they are aware of (old rule 1.56 standards). Particularly related cases and art therein as well as articles, etc. by the inventors.

    5. Maybe instead of claim limits, limi9t the # of independent claims of each type that the applicant is entitled to claim? E.g., only 2 method; only 2 apparatus; etc. Again, thow in dep. as desired in accordance with 3, above.

    Just some ideas to go forward instead of the constant bickering.

    thanks

    LL

  51. Lets just get this straight: The increased number and complexity of filings is what causes the backlog. The continuation docket is largely caused by a lack of quality examining at the PTO. Most continuations would be unnecessary if the Examiner had presented his best art with the first office action. We all know this is not what happens, particularly in the computer arts, where the backlog is the worst.

    The reason the Examiners don’t present the best art with the first office action is that they are given insufficient time to thoroughly review the application as necessary to gain a sufficient understanding of it, and also to perform a thorough search. The system in which they currently operate rewards this behavior by granting additional disposal credits when an Applicant is forced to file a continuation after being presented with new art.

    The reason applications are longer and contain more claims is both because of CAFC rulings that encourage longer disclosures by tie claim scope to disclosure length and encourage more claims by randomly assigning meanings to words. If you want a broad claim, you are pretty much required to commensurately lengthen your specification so that all possible alternative implementations are explicitly mentioned. This in itself encourages more claims to specifically recite that which is explicitly disclosed, but applicants are also encouraged to claim an invention in as many ways as possible due to the current hostility and unpredictable nature of district courts and the CAFC.

    Artificially imposing a limit on claims and continuations therefore punishes applicants for fundamental defects in the patent system as it currently stands. A resurrection of the notion that claims stand on their own is needed, along with significant restructuring of PTO quota system, which currently dates back to days before there was such a thing as an RCE or even CPA, and FWCs were pretty rare.

  52. “One more thing, the pendency problem (not the backlog) is caused in part by examiners “cherry picking” their dockets. Examiners routinely pick the shortest cases with the fewest number of claims, regardless of the filing date.”

    And SPEs routinely hound examiners at the end of the quarter to get cases older than a certain date off their docket, or at least that’s my SPE did. It ain’t just about the counts. There are also workflow points that go into your ratings. I wasn’t allowed to let old smelly cases sit on my docket indefinitely. OTOH, if I had really hard cases, I was sometimes forced to grab time over several bi-weeks to work on them.

  53. e#6k your comments about some agency rules being substantive is has some validity. But only those agencies that were given rulemaking authority by the Congress (yes, there are plenty) have the authority to make substantive rules. Or are you saying that the Congress is fantasizing when it bothers to make the distinction betwen substantive and procedural when granting authority to agencies?

  54. One more thing, the pendency problem (not the backlog) is caused in part by examiners “cherry picking” their dockets. Examiners routinely pick the shortest cases with the fewest number of claims, regardless of the filing date. And the real count wh#res scour their new case docket every bi-week to see if any new “cherry” cases have shown up. This is contrary to the PTO’s stated policy of picking up applications “in turn” (i.e. in the order of oldest to newest).

    Giving the examiners less credit for disposing of these “cherry” cases would discourage the examiners from this practice. And giving them more credit for picking up their “dog” cases, as opposed to letting their “dog” cases sit on their dockets until they are the absolute oldest new on their dockets for two bi-weeks, would encourage them to move their oldest cases.

    Of course, SPE’s should be monitoring their examiners’ dockets and making sure the cases are examined in turn, and should control the number of cases on each examiner’s docket to ensure the oldest cases in the AU are examined first. But doing that would interfere with planning the TC holiday party, so it’s probably not getting done.

  55. The founders did realize that government office holders can get carried away with what they think is right. That is why we have checks and balances, the Bill of Rights and all of those goodies.

    Your point of view suggests that the “people” should be subservient to the government overseers, up until they get so fed up that they breakout the firearms, but that is not very constructive.

    My point was that the PTO has no more authority than what has been delegated to it. It may wish it had more and may seek to usurp more, but those checks and balances (for example, an injunction by a court) are there to stop the overreaching.

    Also, your ramble seems to indicate that you think “the people” are PTO examiners. Wrong. They are employees. They do what they are told or quit. One of the problems in society today that gets overlooked is the excess power of government employees. They are hired to do the people’s business under the terms and conditions that the people’s representatives dictate. If they don’t like the conditions they are asked to work under, they can go to the private sector. Government employee unions are disturb the proper allocation of authority in government. Smart management by the people’s representative would indicate that the employees should be well treated so that the people get the benefit of their experience and work in a positive frame of mind. But that is not the purview of the gevernment employee union. The government agency is a monopoly. If the employees act as a union, they too are a monopoly, resulting in excess monopoly.

  56. Oh, JD, I used the less than sign so it cut off part of the post, sorry.

    p.s. I ha te this commenting system.

  57. “e6K, quit wasting PTO users’ money and get back to what they paid you to do: examine patent applications.”

    How about you stfu and let me spend my breaks and a third or so of the OT I work, so I can deliver a quality product, loling it up with these ridiculous self interested jokers? How’d that work?

    “This E6K guy will be cringing thinking of all his posting here after he finishes his first year of law school. ”

    Nah, I’ll just think I wasn’t indoctrinated yet and that I am then. And strangely I’ll be right in all instances.

    Funny enough, even looking at the situation from your side, or the applicant’s side, doesn’t really change the fact that if this decision goes down the way you guys would like it to it would jepordize a huge chunk of rules federal agencies create. Where are you supposed to draw the line about what is substantive and what is procedural other than squarely at what is directed at procedure and what is directed to substance? It’s plain to see that the rules merely create a procedure for doing things, it’s on it’s face blatant from even the most brief perusal of the rules. The moment you start saying, well, if the potential side effects of the rules may substantially substantively effect me (or my client) then they’re substantive and the agency can’t make them then you basically take away all agency rule making authority except to trivial matters. That is clearly not what the law as it stands before this decision suggests, there are many many many rules made by federal agencies that have the potential to substantially substantively affect the people using that agency. Are all of those now invalid as well? No? Then quit your whining and follow the procedure. Your real qq btw is directed at PHE and IE that might result from the ESD (along with the annoyance of a presearch, something that you stand to gain from anyway by having more valid claims. Let’s be clear though, with no IE then all that is is an annoying part of prosecution of a big case, with big cases costing big $ anyway).

    I’ve got to go do what you guys are paying me for for awhile aight?

  58. The consensus at the Joint Patent Practice seminar in NYC last week was that the PTO is unlikely to succeed in an appeal. Even if it did, the case will be pending into the next Adminstration, which will likely appoint a new PTO Director who may have a different approach to fixing the patent quality and backlog problems.

    Amendment of the rules would also extend into 2009. Patent reform appears to be dead in this Congress, and authority for subtsantive rulemaking authority is not in the latest version of the bill.

    But the presenter of this topic concluded that “it is unlikely that [the PTO] will cease its efforts– through the courts or some other means– to find an expedient way (i.e. expedient to the PTO) to address/fix its current backlog and quality problems.”

  59. Wow. That was certainly a crystal clear “explanation.”

    But you didn’t explain how changing the production system from giving examiners “counts” for FAOM’s and disposals of applications to one in which examiners are given credit for examining a defined number of claims would increase backlog.

    That would still allow management to ensure that production is being done at a level management wants done, whether it be high or low (and we all know it would be high), and still allow management to weed out those producing at a low level.

    I must confess, I’m not a rocket scientist, but I still don’t see how CaveMan’s proposed change would increase backlog.

    Everybody knows that examiners spend less time on “shorter” or “easier” cases and more time on “longer” or “harder” cases. So how does changing the count system to give examiners less credit for examining/disposing of “shorter/easier” cases and more credit for “longer/harder” cases increase the backlog?

    It seems to me it would actually reflect reality. Giving an examiner the same “count” for disposing of a case with 1,000 claims as for a case with 10 claims is pretty unrealistic. And stoopid. But we are talking about PTO (mis)management.

    I’m not trolling. If you can actually explain your theory, I’d really like to hear it. I suspect you can’t, because, as usual, you don’t know what you’re talking about.

  60. “The statute does not say that the PTO may not cut off the thumbs of those who file claims with faulty antecedent basis”

    Well, to be certain, there does not appear to be any express regulation against such a procedure in title 35 but I imagine there are other laws that would prevent such from occuring. However, there are no laws that prevent the PTO from interpreting the statute of title 35 how it needs to, in their view, to properly conduct the business of the office unless of the process of properly conducting that business is per se substantive, not, if it has a possibility for substantive side effects to occur if users of the system behave in a certain way (remember, nobody is making you submit overclaims). Remember, we’re part of the executive branch, while the director can be called to account for things to congress, all examiners and dudas’s boss is none other than GWB who gets his power not from congress per se but rather from the constitution.

    “The power belongs to the people;” I wish. You must not be living in the same America as me :(. Let’s presume for a moment that you are right, how come the people’s (at least all reasonable people I’ve talked with) will to have examining hours upped has not been immediately implemented? It’s fair to say that’s the people’s will correct? Perhaps you’ll argue that it’s not? The people have the power right? How come that hasn’t happened? How come congress isn’t even talking about mandating it to happen? I suggest that it might be because while the final power might rest with the people (because they can revolt in various forms, vote out people, firearms etc.) most of, if not all of, the day to day power rests with your gov. You’ll notice that the founders were keenly aware of this. But perhaps you see things differently. Let’s be clear, even people like JD (it seems) would rather there be more time spent on cases, and to do this at the current rate of apps/year would dictate the founding of a small examination town (which pretty much exists already) dedicated solely to examination.

  61. “that’s just an interpretation that has been adopted by the courts and it is not statute, no matter how much “binding” law it is.”

    The job of the courts is to interpret the statute, which makes it binding. As you will find out in law school, interpretation isn’t as easy as looking up the terms in the dictionary.

    ” … but we already have substantial guidance on what makes rules substantive or merely procedural, and unfortunately these were drafted specifically to be procedural in nature and they darn tootin are.”

    Whether a rule is procedural or substantive is a determination of law, not your darn tootin’ opinion. You will soon see that the procedural versus substantive distinction is not black and white, its a muddy gray.

    “Just an fyi, nobody on these boards has been able to pick out anything in the 25 pages of fluff the judge wrote that definitively points to why the rules are substantive rather than procedural.”

    Presuming that you read the decision, statements like this show that you clearly did not understand what the judge wrote and the reasons as to why he found the rules to be substantive. We can disagree about the outcome, but how can you honestly expect to debate the decision if you think the decision is fluff not worth reading? Stating a conclusion, which you frequently do, is not argument.

  62. Let’s be very specific. You have x examiners required to produce y non-f’s or abandons within p period. You then change the requirement to x examiners required to produce z (z

  63. e6K, quit wasting PTO users’ money and get back to what they paid you to do: examine patent applications.

  64. This E6K guy will be cringing thinking of all his posting here after he finishes his first year of law school.

    Unlike science, where there is, arguable, some actual objective facts to be found, in law there ain’t none. Basically case law method is to follow what has been done before and what has been decided by a higher court. The previous cases are the “facts”.

    An agency is a creature created by Congress and exists to carry out the laws passed by Congress. Yes, agencies have run amuck and have too much power. And people like E6K don’t understand the proper relationship of an agency to Congress and voters.

  65. “As you, and everyone else here, well knows it is for the agency to interpret the proper way of executing their business unless the statute expressly addresses it.”

    The statute does not say that the PTO may not cut off the thumbs of those who file claims with faulty antecedent basis, so under your analysis they have the authority to do that. Obviously, your position proves too much.

    The power belongs to the people; they delegated some the the Congress, who in turn delegated some to the PTO and that delegation did not include the power to make rules affecting the substantive rights of patentees.

  66. “Because that would make more backlog, that isn’t rocket science.”

    How? I mean, other than your usual manner of declaring it to be an immutable fact in e6k-land?

    Please explain. And try to avoid using baby talk.

  67. Let’s stop with all the fiddlefaddle and go to a patent registration system.

    You file an application and it is automatically issued as a patent.

    All of the valuable patents get litigated anyway.

    If you want an honest evaluation of your invention, file with the EPO.

    Look at it as outsourcing the USPTO.

  68. “Why not change the point system to give credit to Examiners based on the number of claims examined? Set the production bar to a reasonable level, then reward exceptional performance. It isn’t rocket science.”

    Because that would make more backlog, that isn’t rocket science.

    “It does not say that the director shall prescribe regulations to decide whether or not a continued examination shall occur.”

    The new rules do not determine that, they merely delay the examination until the reason for delay of entry of the new proposed claims is explained. You had a reason right?

    ” In other words, 35 USC 132 does not make your case, and even USPTO management didn’t think it would make the case.”

    In other words, my “case” need not be made, they’re rules being implemented by a gov. organisation, the “offended” party has the burden to show that they are improper, there is no burden to show they are proper until they are shown to be improper, which you have yet to do.

    “Whether the sky is blue on a cloudy day is a fact that can be objectively proven (and cannot be patented under 101)”

    Whether rules place a hard stop on either claims or cons can be objectively proven as well. In this case it is explicit that they do not, there are merely conditions that need to be met, just like every other procedural rule. Just because the conditions are draconian does not negate that they are merely conditions.

    “Whether a rule is procedural or substantive will be a subjective judgment, and thus a legal question that can go either way”

    I concur, but we already have substantial guidance on what makes rules substantive or merely procedural, and unfortunately these were drafted specifically to be procedural in nature and they darn tootin are.

    “This is why courts look at the facts. Citing the Federal Circuit, DC Circuit, and Supreme Court can be persuasive in making your case, as the judge did.”

    Yes, except for the fact that the things he quoted lead to exactly the opposite conclusion than the one he arrived at. I’ve done a point by point analysis of them in the other thread I’m fairly sure.

    “If you don’t like our kind, why do you want to go to law school?”

    How better to reform a “kind” than to be a proper one yourself? I can’t make you change your behavior, but by performing properly myself it impacts the whole.

    “I presume the judge’s decision is correct.”

    Alright, now go read the other thread if you haven’t yet. Get back to us.

    “”So the reasons for the rule changes are irrelevant to the determination?””

    Ignore MM’s being sneaky, he already has read the discussions on here showing that Moore, if anything, is biased against the PTO’s having the power to make the change and instead showed that only congress (or perhaps the courts?) should do it.

    “I am not defending Whealan’s position. I am saying his statement is evidence that the PTO is trying to accomplish something substantive with the rules change.”

    As you, and everyone else here, well knows it is for the agency to interpret the proper way of executing their business unless the statute expressly addresses it. See that entry in the PO Law Journal from the only good looking poster in it, I don’t feel like looking it up atm, nor her citations. As she mentions, it’s hard to argue that 112 expressly says “you shall have infinite claims”, that’s just an interpretation that has been adopted by the courts and it is not statute, no matter how much “binding” law it is. It’s even harder to argue that the interpretation by the courts preempts any procedural requirements on getting infinite claims.

  69. I am not defending Whealan’s position. I am saying his statement is evidence that the PTO is trying to accomplish something substantive with the rules change.

  70. Joel:
    Fed R App Proc 4(a)(1)(B): When the US or its officer or agency is a party, the notice of appeal may be filed by any party within 60 days after the judgment or order appealed from is entered.

  71. “Any other issue is not the Patent Office’s concern.”

    Amen. If someone wants to lobby Congress for stricter written description/enablement requirements to help minimize the “surprise,” go ahead. But this idea of “surprise” is doesn’t make sense because (1) often the infringers had no clue about the pending application and thus can’t be surprised by any delay and (2) if they did know about the application, they should know that any design around attempt might be coverable with new claims. Until two-years has passed since issuance of the last continuation in a chain, there shouldn’t be any surprises.

  72. Solicitor Whealen’s comments are unfortunate. It is the Patent Office’s mission to examine patents, and issue patents, in accordance with the law. Any other issue is not the Patent Office’s concern.

  73. To Joel: See 28 USC 2107(b). If US or US agency is a party, all parties get 60 days to appeal.

  74. At the ABA meeting in Boston in June 2006, Solicitor Whealan made it clear that reducing patent pendency/backlog was NOT the reason behind the proposed “No continuations past one without our permission” rule. Instead, he said it is being promulgated to prevent applicants from surprising the public with new claims in a continuation several years after the filing date.

    What is not substantive about that?

  75. “But in the mean time here’s a clue for you since you forgot to buy one to go along with your education: Citing the Fed Circ. DC Circ. and SC doesn’t make the sky blue on a cloudy day nor does it make procedural rules into substantive ones.”

    E6k, you need to look up the phrase Stare Decisis…actually, so should the SCOTUS.

  76. Does anyone know why the PTO did not blow their due date for filing a Notice of Appeal? I thought it was 30 days from final order, which would have been May 1. Just a bit ironic if they blew the date. Thanks.

  77. Anon,

    I think the references to cutting back examiner time mean cutting back time allowed per case. (I’m sure I’ll be corrected if I’m wrong.) That would be consistent with reducing backlog with existing resources. Indeed, the 5/25 rule could only be justified if it allowed cutting the average time per case.

  78. Malcolm said: “So the reasons for the rule changes are irrelevant to the determination?”

    I can’t tell whether you’re being sneaky by responding with such a broad question. That Moore has written papers suggesting that patent filings should be limited is irrelevant to the determination of whether the PTO had legal authority to promulgate these rules.

    I’m willing to be wrong here, but I haven’t seen anything that suggests that Moore has an improper bias (or any bias at all) with respect to the legality/desirability of unilateral PTO action here. It’s one thing to say that the law should be X. It’s another to say that we should violate the existing law to get where we want to be.

  79. E6k,

    –Basic jist: See 35 132 a & especially b for rational behind allowing RCE submissions to be subject to petition at the director’s prescribing of such a regulation.–

    132(b) states that the director shall prescribe regulations to provide for continued examination. It does not say that the director shall prescribe regulations to decide whether or not a continued examination shall occur. The word “petition” is not present in 132(a) or (b). If you check the current petition sections, they rely on 35 USC 6, and I think the continuation rules package relied on 35 USC 2. In other words, 35 USC 132 does not make your case, and even USPTO management didn’t think it would make the case.

    –here’s a clue for you since you forgot to buy one to go along with your education: Citing the Fed Circ. DC Circ. and SC doesn’t make the sky blue on a cloudy day nor does it make procedural rules into substantive ones. Oh, and btw your presumption of the invalidity of the rules belies your bias.–

    A fine attempt, but a poor analogy. Whether the sky is blue on a cloudy day is a fact that can be objectively proven (and cannot be patented under 101). Whether a rule is procedural or substantive will be a subjective judgment, and thus a legal question that can go either way. This is why courts look at the facts. Citing the Federal Circuit, DC Circuit, and Supreme Court can be persuasive in making your case, as the judge did. You don’t have to agree with the decision, but this is the way our legal system works. Precedent and stare decisis matter. When we lawyers criticize the Federal Circuit for being results-oriented, that is a criticism, i.e. a bad thing.

    As for my education, I didn’t buy it. Scholarships paid for it all. I suppose you could say it bought me.

    If you don’t like our kind, why do you want to go to law school?

    I don’t presume the rules are invalid. I presume the judge’s decision is correct. Just as I presume it’s not a final decision.

  80. “The main reason why I want the PTO win is the 5/25. I’m sick of 8/80 applications.”

    This is understandable. However generally those 8/80 applications are at least subject to the examiner’s requirement for restriction.

    However the new rules were designed to prevent those 8/80 applications from being filed as 3 or more applications with reasonable number of claims.

    Applicants would be unable to predict whether the claims in those applications would be accepted by the PTO. I’m not sure why this was considered either fair or acceptable.

  81. Amazing,

    Cutting back on examiner time while justifying the current backlog on continuation practice? Too bad this wasn’t relevant to the legal issues in the district court. Seems like govt corruption to me.

  82. Why not change the point system to give credit to Examiners based on the number of claims examined? Set the production bar to a reasonable level, then reward exceptional performance. It isn’t rocket science.

  83. The 5/25 rule looked decent in theory. After all, an applicant should usually be able to get under those limits. But it isn’t in reality, since it applies retroactively (mostly) and somewhat related applications can be imputed to be the same invention, and together subject to the 5/25 rule, retrospectively.

    Thus, last year I filed some 15 utility applications off of one provisional, six months before the new rules were to go into effect. Whoops. Same or similar inventorship, common ownership, and all filed within a week (since the provisional was expiring). Voila. ESD required, despite the fact that the applications were very patentably distinct.

  84. “…and if I bother to proof read my statements they come out just fine.”

    ROFLMAO!!!!!

  85. Incidentally, having just flow a lengthy stretch recently, I think the idea of an airplane lavatory reservation system is quite revolutionary. Period.

  86. My fearless predictions on this CFAC case are as follows:

    If the PTO goes for an all or nothing strategy, they will lose, because at least for continuations/RCEs there is no way to make the procedural/substantive argument fly.

    Things get more interesting if the PTO picks and chooses its battles. The claims limit could probably be defended at the CFAC, even though it is substantive. The CAFC is unlikely to be sympathetic to arguments that providing more grist for the inequitable conduct (IC) mill is unreasonable, since they are the proprietors of the IC mill.

  87. Man JD, I get in one good jab about you getting what you wanted with the noncompliances being sent out and you’re on the warpath aren’t you? Keep your flames to a min, especially when you know LSAT’s are trix for kids, my grades are plenty decent, and if I bother to proof read my statements they come out just fine. If there’s going to be anything prohibitive about LS it’s going to be costs/hours reqed.

    I’ve got to head out and do some examinin, I’ll address you guys later tonight hopefully after you can pull yourselves together.

  88. I’ve already typed it out long enough to fill pages. Basic jist: See 35 132 a & especially b for rational behind allowing RCE submissions to be subject to petition at the director’s prescribing of such a regulation. The 5/25 rule doesn’t require a hard limit on claims so it is entirely directed to the procedure required to file more than 5/25 claims.

    I pointed my support out, though not extensively, you can go back to the other thread for that, so go ahead and give us yours. Heck, steal some from the judge if you have none, but don’t steal the ones already knocked down in the other thread ok?

    I agree, law school will teach me to deal with your kind much better. But in the mean time here’s a clue for you since you forgot to buy one to go along with your education: Citing the Fed Circ. DC Circ. and SC doesn’t make the sky blue on a cloudy day nor does it make procedural rules into substantive ones. Oh, and btw your presumption of the invalidity of the rules belies your bias.

  89. “I suspect law school will be quite a shock for you.”

    LOL! Let’s see if he can get in first. As soon as the admissions committee tries to untangle his double and triple negative laden syntax, they’ll probably just circular file his application.

  90. –Perhaps properly so, I mean, should a lower court decide something of this magnitude?–

    The answer is yes, a lower court should decide something of this magnitude because that is its job. The job of the appellate courts is to review the lower court’s decision. The job of the Supreme Court is to review the appellate court’s decision.

    –The office is now down to the meat of the arguments (that essentially don’t exist) so as soon as a correct decision is rendered on them the rules should be all good to go.–

    I suspect law school will be quite a shock for you. Reasoning should dictate the outcome. The phrase “correct decision” reveals your bias.

    –Oh, hey lowly are you up to the task of pointing out why they’re substantive?… until anyone can point out how the rules are substantive rationally and logically rather than magically. Eventually the case will get to a court that sees things in terms of logic and reason instead of magic policy making i.e. inf claims inf cons.–

    The judge was up to the task of pointing out why they’re substantive, rationally and logically. He quoted the Federal Circuit, DC Circuit, and Supreme Court to support his reasoning. What support do you have besides magic, i.e. I’m right, everyone else is wrong?

  91. “It’s pretty much a lock that the continuation/RCE limits are substantive because they drastically change the virtually unfettered right to file them under the statute.”

    I’ll agree with you if you can show me where this “right” is to be found, strangely all I see is a statute that says specifically that the Director may impose limits on cons in part b iirc. Maybe in your mind because part a comes before part b it overrules it? See 35 132 a & b. “The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant.” What does that mean to you? Seems to me like a requirement for petition would be a regulation … but you can correct me if you can point out how that would be wrong.

    And oh yea, 2600, the rules are likely to adversely affect more examiners than they benefit, if any. Then again, things could turn out swimingly and everyone might limit themselves to 25 good claims and the au’s that normally rely on RCE’s to make production might have hours adjusted, at least such was the word from the POPA fellas iirc.

    Srsly MM, if I have opinions that 112 is horrendously interpreted atm it doesn’t preempt me from doing a professional job under the current interpretation. Same thing with the judge.

    LL, drop the hours, lose the examiners.

    Oh and jk, I’ll speak right now for the ones that don’t like it “Hey, we don’t like the proposed rules”. There’s a lot of them. I don’t necessarily “like” them, but they are what they are and they’re there for a reason.

    Jaoi, jaoi, where’ve you been? I was going to respond but the post was nothing but one big flame. But seriously, how many comic books does your knowledge of the patent system fill?

  92. Clive: The prosecution history estoppel and inequitable conduct concerns will not be sympathetic to many judges. There are simple solutions: don’t say dumb things, don’t say false things. Good luck trying to convince a court that the rules should be thrown out because you can’t avoid saying dumb or false things.

  93. SF writes: “I doubt, however, that the 5/25 ESD requirements will be found to be substantive because the required analysis (while burdensome, vague and likely not an option anyone would ever want to take) is not virtually impossible to comply with (unlike the “couldn’t have submitted it before” standard for the continuation/RCE limits).”

    I’m not up on the legal standard in this appeal, but I’d imagine there’s going to be no small amount of evidence that (a) the standard for a compliant ESD is fatally vague/indefinite, and (b) the mere authoring of an ESD prior to any substantive examination is so prejudicial to the Applicant’s patent application and its fate as an issued patent (given current law regarding PHE and IE) that it is a de facto 5/25 cap on claims. Will there be any shortage of companies and patent attorneys willing to aver they would do everything possible to avoid having to submit an ESD? (And that ignores its horrific expense, grossly underestimated by the Office.)

  94. Yo Hello buttercup,

    Re: “As to your statement: ‘In one key case, members of the Court described the prior legal standard on patents as ‘gobbledygook’ and ‘worse than meaningless.’ ’ ”

    Whoa, whoa! Lest there be any misunderstanding, I, Jaoi did not say it.
    Blame the COALITION FOR PATENT FAIRNESS, they said it — the silly anti-patent, PRO-Patent Reform Coalition said it, not me. Please read my complete comment in context.

    BLAME in-contributory-part the Coalition for Patent Fairness – and BLAME CISCO Systems Inc. in particular. That’s my point.

    And I do agree with you buttercup:
    It is ironic indeed, and it would also be funny if the Supreme Court wasn’t so moronic.

    The Supremes are like a bull in a China shop – patentwise, the Supremes don’t know how to fix anything, just how to make things worse. What really irks me is the Supremes’ eBay decision which is in direct, clear, unmistakable and unambiguous violation of the U.S. Constitution big time, as I described in detail in this comment:

    link to patentlyo.com

  95. “Moore’s prior writings have absolutely nothing to do with the legal questions as to whether the rule changes are “substantive””

    So the reasons for the rule changes are irrelevant to the determination?

  96. As to your statement: “In one key case, members of the Court described the prior legal standard on patents as “gobbledygook” and “worse than meaningless.”

    That case was KSR. Isn’t it ironic that the Supreme Court’s standard set forth in KSR is “gobbledygook” and “worse than meaningless.”

  97. Who in the IP community favors the PATENT REFORM nearly shoved down our throats by PTO Management?, or similar proposals meandering through Congress? Do patent attorneys or inventors favor this Patent Reform?

    Most good IP people out there think such Patent Reform really stinks and is screwing up the system. And now we have PTO management retaliation v. the IP community at large via petty reject, correct, reject, correct, reject Office Actions.

    WHO are we good IP people to BLAME for such Patent Reforms?

    WHO caused the grossly onerous PATENT REFORM proposals by the PTO and Congress? WHO IS TO BLAME?

    Does this horrific Patent Reform run parallel to the PATENT REFORM AMBITIONS of Big Business coalitions like the “COALITION FOR PATENT FAIRNESS”

    Allow me, Jaoi, to point a “Contributory-Blame Finger” where it belongs:
    Following are excerpts from a September 5, 2007 letter to Congressional leaders from the COALITION FOR PATENT FAIRNESS (emphasis added) (this link goes to the complete letter signed by 108 Coalition members):
    link to patentfairness.org

    Excerpts from the Coalition’s letter to Congress:
    “Supporters of patent reform and the Coalition for Patent Fairness, an alliance of companies and associations in the technology, financial services, energy, chemical, manufacturing and media industries, APPLAUD YOUR LEADERSHIP AND COMMITMENT TO THE AMERICAN WORKER IN SEEKING TO STRENGTHEN THE U.S. PATENT SYSTEM.

    “THE EFFORT TO REFORM OUR PATENT LAWS AND RESTORE A SENSE OF BALANCE TO THE SYSTEM SO AMERICA CAN CONTINUE TO LEAD THE WORLD IN INNOVATION HAS BEEN A LONG ONE. …

    “For the last several years, the chorus of those calling for reform has grown louder and clearer. …

    “This Congress, Rep. Berman and Rep. Smith refined the Patent Reform Act of 2005 TO MAKE THE LEGISLATION STRONGER AND MORE AGREEABLE TO A WIDER AUDIENCE …

    “During this debate, major editorial boards from around the country have weighed in and agreed the time for patent reform is now. The Wall Street Journal, The New York Times, The Washington Post, Los Angeles Times, San Jose Mercury News and St. Louis Post-Dispatch have all called on Congress to finally pass comprehensive reform this year.

    “Concurrent with legislative efforts, the U.S. Supreme Court took a large number of patent cases in the past two terms TO CORRECT LOWER COURTS’ INTERPRETATIONS OF PATENT LAW. Each of the Supreme Court’s decisions has been consistent with proponents of patent reform who have urged the court to safeguard patent owners while ensuring patent rights are not abused. In one key case, members of the Court described the prior legal standard on patents as “gobbledygook” and “worse than meaningless.”

    “… the House of Representatives has the chance to stand up for America’s leading innovators and restore balance to our patent system, allowing innovation to flourish unfettered by the current rules that degrade patent quality and encourage gaming of the system. Now is the time for action on the Patent Reform Act of 2007.”
    * * * * *

    It is clear to me that this letter is based on presenting a bold face lie to Congress! Yet it was signed by the Coalition’s 108 members. For example, the first sentence of the Coalition’s letter to Congress says:

    “… the COALITION FOR PATENT FAIRNESS … applaud your leadership and commitment to the American worker IN SEEKING TO STRENGTHEN THE U.S. PATENT SYSTEM.” (Emphasis added to the boldface lie.)

    Here’s another real pip: “Each of the Supreme Court’s decisions has been consistent with proponents of patent reform who have urged the court to safeguard patent owners…”

    Is the Coalition referring to the Supreme Court that gave us Festo in 2002?, eBay in 2006?, KSR in 2007? Safeguard patent owners? What kind of horseshit is that? While we good IP People may know better, others DON’T KNOW SQUAT ABOUT PATENTS!, and those others include lay citizens, the Media and Government Officials INCLUDING Congressmen, PTO management and the Supremes. What they collectively know about patents wouldn’t fill a comic book.

    And speaking about Patent Reformers’ lies, anonymously running a pejorative Patent Troll Tracker blog is one thing, but doing so under a false premise while enjoying the benefit of fulfilling a “public service” need, and serving up horseshit blog content with one-sided propaganda aimed toward promoting Patent Reform is downright dirty pool. Shame, shame, shame on you Cisco Systems Inc.

  98. “Is Moore’s prior ‘research’ and conclusions heavily relied on by the PTO in its briefs?”

    I actually don’t know, as I didn’t read the briefs. But my understanding is that Moore’s prior writings have absolutely nothing to do with the legal questions as to whether the rule changes are “substantive” and whether the PTO has authority to impose them. Am I wrong?

  99. “That she may have opinions on what the law should be does not disqualify her from determining whether the PTO has authority to determine what the law is.”

    Who did the “research” and published the “facts” that showed the world that the PTO’s problems were due to excessive continuation filing? Is Moore’s prior “research” and conclusions heavily relied on by the PTO in its briefs?

  100. I can see E6K is very loyal to Dudas and may be so for 2600exam. However, I am very interested to know how many examiners in the USPTO that dislike the proposed ruling and won’t dare to say it publicly. Can you guys in the PTO use this oppportunity to express youselves.

  101. “2600examiner”, WHY would an examiner hope the PTO wins on these rules? They will make the ea miner’s job WORSE not better. The only thing that would help the examiner is some cases with less claims. True, that is nice, but it will not be anywhere enough compensation to overcome the loss of RCEs to balance your production.

    And, of course, that all assumes that the management does not go back & decide to implement their original plan to CUT your hours. Back just before the rules were published, there were meetings with all the SPEs & upper management. At these meetings the SPEs were presented the proposed hour cuts based (supposedly) on a survey of applications filed the 2 previous years and the # of claims & the # of RCEs filed. The amount of cuts varied on up to about 25%. The SPEs were given copies of the proposed cuts for each class in their TC and told to NOT let any examiner see them (I luckily know some SPEs very well & was able to see the sheets) because they were afraid of the backlash.
    Now, while it is true that management has (for now) dropped the hours reduction, with the ever increasing backlog WHY would anyone assume that they won’t go back there & reduce your hours based on whatever “analysis” they used to show that these rules are supposed to reduce the backlog. After all, that “analysis” that showed a reduced backlog was partly predicated on the reduction in hours needed by the examiners.

    Think about it & the way management has done many other things…

    Thanks,

    LL

  102. “The recusal question is interesting. I assume Moore is out.”

    C’mon, Malcolm, you’re smarter than this. Why would Moore be out? That she may have opinions on what the law should be does not disqualify her from determining whether the PTO has authority to determine what the law is.

  103. “Just an fyi, nobody on these boards has been able to pick out anything in the 25 pages of fluff the judge wrote that definitively points to why the rules are substantive rather than procedural. If you’re up to the challenge we all would love to hear it.”

    It’s pretty much a lock that the continuation/RCE limits are substantive because they drastically change the virtually unfettered right to file them under the statute.

    I doubt, however, that the 5/25 ESD requirements will be found to be substantive because the required analysis (while burdensome, vague and likely not an option anyone would ever want to take) is not virtually impossible to comply with (unlike the “couldn’t have submitted it before” standard for the continuation/RCE limits).

  104. “If it takes the supremes then it takes the supremes but Scalia will get er’ done if everyone else fails.”

    Truly hilarious, e6k.

    By the way, who pays for the costs of all those appeals? It seems like a lot of money to support Dudas’ masochist tendencies.

  105. Interesting Q about the Supremes. They seem to be unable (in recent years) to resist the urge to smack down the CAFC. They have also agreed to take FCC v. Fox Television Stations, which is another agency-overstepping-it’s-bounds? case. Should be interesting… in a couple of years.

  106. The recusal question is interesting. I assume Moore is out.

    Maybe Judge Linn will get lucky. 😉

  107. “Spending 10 mil on implementing the suckers and then not putting them in place warrants a great deal of legal battling for them.”

    If this is the rationale, then someone at the USPTO needs to go to business school, take a course in managerial accounting and learn about “sunk costs.” However, I’ll make it easy on you. When making decisions going forward, sunk costs (i.e., money already spent) should be IGNORED. In this case, given the VERY low likelihood of success, the USPTO would be better served to spent their money on something else … like hiring more examiners.

    As to your comment stating that no one has been able to point out where the judge established that the rules were procedural in the opinion, it is because you have ignored all the posts written as to that exact issue. You remind me of a child that puts his hands over his ears and yells “nyah, nyah, nyah, nyah … I can’t here you” when someone is trying to tell him something he doesn’t like.

  108. “Spending 10 mil on implementing the suckers and then not putting them in place warrants a great deal of legal battling for them.”

    You must have missed the discussion in Economics 101 about sunk costs.

  109. “Spending 10 mil on implementing the suckers and then not putting them in place warrants **spending 10 mil more in court costs defending them**.”

    Ffffixed to reflect actual mentality.

  110. lowly- higher than they were, there was of course the significant probability that the lower court would opt to simplify it’s job and responsibility in the manner by upholding the status quo by bsing it’s way through the decision. Alas, that’s what was opted for. Perhaps properly so, I mean, should a lower court decide something of this magnitude? The office is now down to the meat of the arguments (that essentially don’t exist) so as soon as a correct decision is rendered on them the rules should be all good to go. Oh, hey lowly are you up to the task of pointing out why they’re substantive? So many have failed before you. I’ll stand by kicking ass and taking names until anyone can point out how the rules are substantive rationally and logically rather than magically. Eventually the case will get to a court that sees things in terms of logic and reason instead of magic policy making i.e. inf claims inf cons. If it takes the supremes then it takes the supremes but Scalia will get er’ done if everyone else fails.

  111. Read the decision from a few threads back Moose, therein you will find that the decision to call the rules substantive was based on 35 USC. Nobody disputes that if the rules are indeed substantive then they would be improper, what is under dispute is whether or not they are indeed substantive in nature. The analysis to come to a decision on that matter will involve nothing but interpreting title 35.

    Just an fyi, nobody on these boards has been able to pick out anything in the 25 pages of fluff the judge wrote that definitively points to why the rules are substantive rather than procedural. If you’re up to the challenge we all would love to hear it.

    pds may be right about his comment, but he’s not right about the decision itself. And you have to remember pds, just like applicant’s, when you’re in neck deep one doesn’t just abandon one’s case. Spending 10 mil on implementing the suckers and then not putting them in place warrants a great deal of legal battling for them.

  112. i remember E6k talking about how the PTO was “kicking a$$ and taking names” in this case, prior to summary judgment 😉 i wonder what he thinks the PTO’s chances on appeal are.

  113. Why was the Fed Cir the foregone conclusion as the proper Court of Appeal? If the claim is that the USPTO engaged in rulemaking that violated the APA, how does that implicate 35 USC? Wouldn’t the proper appeal be to the 4th Cir?

  114. pds – exactly. This way they can leave office with the case still on appeal. Then, when the CAFC affirms, they can blame the loss on whoever is then in charge at the PTO

  115. If it’s going to the CAFC, does Kimberly “The Only Good Continuation Is A Dead Continuation” Moore recuse herself?

  116. Anyone think the CAFC will decide this en banc, believing it to be destined for the Supremes?

  117. gotta make darn sure they don’t admit total failure, on their watch.

    all bushoids are the same.

  118. USPTO = Gluttons for punishment.

    My guess is that Dudas et al. will already have new jobs lined up by the time a decision is rendered.

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