Patently-O Bits and Bytes

  • Bilski is coming (OCTOBER LIKELY)
    • Chief Judge Michel is quoted: “One of the most important cases pending with the [Federal Circuit] today is In re Bilski…. ‘It’s a very interesting case and I thought all the judges worked very hard on it,’ says [Chief Judge] Michel. He adds: ‘I think it will be a very significant decision. It probably will have broader scope than either In re Comiskey or In re Nuijten”
  • FEES: I’m looking for the PTO fee schedule (filing fees, exra claim fees, extension fees, appeal fees, etc.) for the past decade.
  • PTO Allowance Rate – depends on whether the PTO counts an RCE as an abandoned application. (which it should not…). The chart below is from a presentation by the PTO’s General Counsel James Toupin. Greg A posted a link to the whole file: www.bustpatents.com/toupin.pdf.

175 thoughts on “Patently-O Bits and Bytes

  1. 175

    Mooney, if you actually knew what you were talking about, I would ask you to explain why you think my assertion is “meaningless and indefensible.” Teaching away is quite common, if you know what it looks like and how look for it. But that’s OK. I know you have a hard time seeing things that are right in front of you.

    I know I could plop you down on a pile of money and you would still feel impoverished and be looking around with bitterness at everyone that drives a nice cars or has a house in Aspen.

  2. 174

    “Incidentally, “teaching away” is quite common…”

    Another meaningless, indefensible statement.

  3. 172

    JAOI says – “Not really so; as I pointed out above: As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time TEACH AWAY from a particular invention – which of course is rare – THAT CAN BE USED TO DETERMINE NON-OBVIOUSNESS.”

    Non-obviousness is never “proved;” obviousness is proved. Novelty is never “proved;” anticipation is proved. Only determinations of novelty and non-obviousness are made.

    TSM is for supporting combinations of references. The contents of the references vis a vis the elements of the claim are what obviousness is based on. TSM has nothing directly to do with whether a combination actually teaches or suggests the features of the claim; only whether the combination is properly supported, e.g. whether there is a TSM to combine the references.

    By the way, some people pay big money for the above knowledge. This one’s on me.

  4. 170

    “You’re gonna have to do a little better than that before I’m going to agree it’s an overclaim.”

    What do you want? An item to item? You promise yielding the overclaim and then ask for me to hold your hand. I can assure you I’m not into older men. Show me the limitation you think even might not be shown. Remember I’m going only for anticipation, no case o the obvious for me.

  5. 169

    JAOI(TM), I’m not only insufferable to you but also now absolutely wrong. On checking in the sources, it’s NOT the nitrogen freeze branding that is cited by the EPO as a “Problem Invention” (in which, the moment the objective technical problem is formulated, the claimed solution is obvious but, nevertheless, that claim to that solution is legally NOT obvious because the problem itself was not obvious). Rather, both the Guidelines and the Caselaw Digest cite T2 of 1983 as the original case. The Digest also offers T225 from 1984, T135 from 1994 and (the “pet door” case) T540 of 1993.

  6. 168

    Shakespeare, eh?

    “The first thing we do, let’s kill all the lawyers”

    Once that job’s done we can get started on the examiners. And then the ones pretending and/or aspiring to be lawyers.

  7. 167

    Sour kraut Max,

    Re: “Or have I got it all wrong, as usual??”

    You got me all wrong. I don’t recall ever saying that about you.
    What I think, and what I believe I’ve said before in so many ways, is that you are insufferable.

  8. 166

    Why, yes I can little buddy (©¿®):

    An obvious problem:
    For example, people die every day in auto accidents.
    It is obvious there is a need to invent solutions, i.e., ways to avoid auto accidents.

    A non-obvious problem:
    For example, the set of common punctuation marks for writing is incomplete because you cannot correctly punctuate a compound question, or a compound exclamatory remark, grammatically speaking that is (pun intended).
    When speaking, however, compound questions are clear because of inflection in the speaker’s voice, and compound exclamatory remarks are clear because of tone and stress.

    So, why don’t we have a question comma?, and exclamation comma!, in our fonts?, so we could write sentences like, oh, off the top of my head, like these:

    Clever!, why wasn’t I taught to use them in grade school?, just as I was taught to use the question mark and exclamation point.

    Psalm 8: “What is man that you are mindful of him?, and the son of man, that you visitest him?

    Why should a dog, a horse, a rat, have life?, and thou no breath at all?

    How do I love thee?, let me count the ways…

    Why have the question comma and the exclamation comma been obscured from view for so long?, centuries in fact!, even though they have been right under untold numbers of literate peoples’ noses all along.

  9. 165

    ………..as it is, Inventor, in the EPO, where it is known as the rare but well-understood “Problem Invention” covered in the EPO Caselaw Digest and indeed the Manual of Examining Practice. Trite law, in fact, over here in Europe, since at least the old liquid nitrogen hide freeze-branding case cited in the first edition (1978) of the EPO Guidelines. Ask your wonderful prosecutors at M&C to tell you about it sometime. Old hat, old son.

    Or have I got it all wrong, as usual??

  10. 164

    Dear Jaoi,

    Can you think of an example of a non-obvious problem that has an obvious solution?

  11. 163

    From above:
    link to patentlyo.com

    Title: The Confounding Questions About Obviousness, TCQAO.

    There is a whole other side (perhaps and equal or even more interesting/greater side, but perhaps not in all or even most cases) about obviousness that the PHOSITA of patents (comprised of inventors, examiners, attorneys, IP professors, judges, jurors, IP bullshitters) have not addressed here (Patently-O) or elsewhere over the past years.

    Amazing, most remarkable, that this “TCQAO” has been so overlooked for so long yet it has been in plain sight all along.

    Anybody?, anybody?, Bueller?, have a clue?, now that TCQAO has been formally introduced in an eye-opening challenge? (i.e., the bag the cat has been in is now open, but the cat has not yet left).

    * * * * *

    I didn’t think America hating sour kraut Max would have any ideas, but I thought at least some others, such as, oh, off the top of my head,
    Andrew Dhuey
    Arti Rai,
    ASEye,
    Babel Boy,
    BHRat,
    bierbelly,
    CaveMan,
    David T.,
    Dennis,
    Donald Zuhn,
    Erez,
    gauntlet,
    Greg Aharonian,
    iwasthere,
    Jill Browning,
    Jim H.,
    Just Visiting,
    Kevin E. Noonan,
    Leo,
    Lionel,
    Malcolm,
    Oliver Wendell Holmes,
    Patrick L. Reilly,
    and
    Ronald J Riley,
    could figure out what I’m referring to – it’s old school.

    Some inventive solutions (i.e., “inventions”) may indeed be obvious to a Problem In Need Of A Solution, PINOAS, but, here’s the point: not all PINOAS are obvious!

    Some PINOAS are NON-OBVIOUS!, and some PINOAS may even have been overlooked by myriad people for an aeon, yet the PINOAS may have been in plain sight for all PHOSITA to see all along!

    “You take the blue pill, the story ends…you wake up in your bed and believe whatever you want to believe. You take the red pill, you stay in wonderland and I’ll show you how deep the rabbit hole goes.” –Morpheus (Thanks Patrick L. Reilly)

    The moral of this story is: If a problem is non-obvious but its solution is obvious, then that obvious solution should be patentable!

  12. 162

    Dear Just Visiting,

    Re: “Actually, at best that argument shows non-obviousness over a specific combination of references.”

    Sure, I agree in essence, but why do you say “at best”?, because it is rather substantial!, isn’t it?

  13. 161

    “As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time TEACH AWAY from a particular invention – which of course is rare – THAT CAN BE USED TO DETERMINE NON-OBVIOUSNESS.”

    Actually, at best that argument shows non-obviousness over a specific combination of references.

  14. 160

    I told you if you could make a prima facie case, I would agree it’s an overclaim.

    Here’s your “case”:

    ” Alright, here’s the ref: 5802526. I keep in mind that claim one is not limited to anything other than an automated banking machine (as opposed to the perhaps more strict “ATM”) according to the applicant’s own disclosure/claims. Other than that, it doesn’t appear much technical reasoning/inherency is required, simply search for HTML and look at Fig. 1 and accompanying text. Output, input, transaction function device (lets make that the memory for giggles shall we?), computer (fig. 1), software with browser looking at HTML docs with instructions to retrieve information from a remote server when the user requests. The memory operates to carry out the transaction function responsive to the user having used the HTML form that included the instruction adapted to cause the computer to cause operation of the memory. Seems to me like you could use the CPU as the transaction function device alternatively and have the computer be the CPU/memory combination. The possibilities abound.”

    You’re gonna have to do a little better than that before I’m going to agree it’s an overclaim.

    And keep in mind that you beat it by about 2-3 months, and your reference could still be antedated by the applicant.

    No need for an apology. Watching you crawl back to the PTO with your tail between your legs after your disastrous foray into the world of monstrous law firm practice will be sweet enough.

    “I find it interesting that nobody here, especially Malcolm if he read it, has commented on the broadness of the first claim. He should be able to tank this one with one hand behind his back. Maybe both.”

    I’m not aware of any claims that Malcolm has actually tanked. I’m not counting any claim that he read once and declared “That’s obviously facially invalid” as tanking the claim. I’m talking about a claim where he actually produced evidence, and a prima facie case.

    Maybe he can provide us all with an example.

    LOL

  15. 159

    “modus operandi (either ignore and/or misstate other people’s positions), ”

    Learned a new phrase this week did you pds?

    “This is common knowledge amongst everyone that bothered to ever think about it”

    True pds, it is. I suspect MM is on to it!

  16. 158

    “No, you owe him an apology for being openly insulting while vainly declaring victory in your argument, when you hadn’t even bothered to read the substantially fewer than 80+ pages in the decision.”

    I didn’t get my declaration of it being an overclaim at filing yet. My 10 min ref beat all but the swear behind with a date of 1996, a 20 minute would probably go back to 1980. Should I get the declaration I may apologize.

    I find it interesting that nobody here, especially Malcolm if he read it, has commented on the broadness of the first claim. He should be able to tank this one with one hand behind his back. Maybe both.

  17. 157

    “Evidence? Evidence that you and ‘everybody you know’ is receiving Office Actions of which 90% comprise facially bogus rejections?”

    Are you really an attorney? Because your reading comprehension is just awful. I wrote “70-90% of the rejections we get are facially bogus in one respect or another.”

    Note that I said 70-90 instead of 90. Also, I wrote “in one respect or another.” This means I don’t need the entire rejection to be bogus, I just need one portion of it.

    However, given your modus operandi (either ignore and/or misstate other people’s positions), I can easily see how you were confused.

    “That’s funny because just few days ago you were ranting about how enablement isn’t an issue for sweepingly broad computer-implemented claims because the artisans in the field are so freaking skilled. Now you are telling us that chemical/biotech inventions are relatively simple and straightforward.”

    Wow … your simplistic mind at work again. Again, if you knew anything about claim drafting or patent prosecution, you would realize that simple inventions in crowded arts are hard to claim whereas sophisticated inventions in uncrowded arts are easy to claim. This is common knowledge amongst many patent prosecutors. However, this knowledge, yet again, has seemed to eluded you.

  18. 156

    I’d say the thing most closely capable of being proved is novelty. Non-obviousness and obviousness are subjective judgments. TSM and the level of ordinary skill in the art are tools to determine non-obviousness/obviousness.

    Of course from where I am it’s easiest to say everything that doesn’t have one absolutely novel element is obvious.

  19. 155

    Dear ASE,

    Re: “
    Incidentally, you can never prove non-anything. You can only *prove* a positive.”

    Not really so; as I pointed out above:
    As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time TEACH AWAY from a particular invention – which of course is rare – THAT CAN BE USED TO DETERMINE NON-OBVIOUSNESS.

  20. 154

    “I did, but they didn’t issue an injunction, which is what I’m saying the court cannot do so far as I know. They only have the power (at least under 35 USC) to LET the director issue a patent. LET being different from MAKE. Also, I think in that case the applicant was ruled against anyway. I do wish I could pull up the case though.”

    You’re regressing. You understand even less now than you did when you started posting.

    Before you head out to your monstrous firm, be sure to tell your SPE not to reassign your office right away. You’ll be returning rather quickly I predict.

    When the poor soul who gets assigned to mentor you bleeds red ink all over your incoherent writing, and then you persist in spending hours, days, weeks, arguing with him/her that you really are correct, and that it is he/she who doesn’t understand, you’ll be told quickly that your career opportunities may be better somewhere else.

    Hopefully when you return to the PTO, you won’t have to start over as a GS-5. Maybe they’ll give you a break and let you start as a GS-7, given your private practice experience.

    ROFLMAO.

    Malcolm, glad to be aboard. Given your ability to tank claims in one, maybe two, minutes, what are your thoughts on the peer to peer pilot program? You must have torpedoed quite a few applications all by yourelf.

  21. 153

    “I didn’t finish reading all 80+ pages of the appeal and I owe him an apology for reading what the board wrote as it was written rather than the way you and him would like to dream it was written? Meh, maybe. I’ll think about it. ”

    No, you owe him an apology for being openly insulting while vainly declaring victory in your argument, when you hadn’t even bothered to read the substantially fewer than 80+ pages in the decision.

  22. 152

    “Malcolm Bloom says ‘However, under KSR, the lack of TSM can’t be used to prove non-obviousness.'”

    “Incidentally, you can never prove non-anything. You can only *prove* a positive.”

    ASE, your excessive bile is affecting your reading ability. If you had actually read what I said instead of what you wish I had said then you would realize that we’re in agreement on this point, as you unwittingly proved in the second comment quoted above. I have responded several times to posters who credit KSR with “abolishing” TSM. It did no such thing.

  23. 151

    Financial melt down.
    This is not off topic.
    This is the Hu element, human ingenuity and innovation at its very best.
    Now we’re feeling very smug and clever.
    A few magic words lifted from a legal text should be all that’s needed to save us.
    How about “Gobbledeegook”? It seems to work for people in high places.
    I bet Harry Potter would use it in a situation such as this.
    Or at least Tom the Turkey on the day he gives thanks.

  24. 150

    What about the vituperative, virulent, intemperate attacks by Mooney on just about everything including Federal Court judges and things that he knows nothing about, which is just about everything?

  25. 149

    I just conducted a separate poll and its pretty much unanimous, multiple posts as a result of typepad errors are also annoying…sorry

  26. 148

    We conducted a poll Max, its pretty much unanimous, Mooney and now, possibly you, is/are simply annoying. I doubt anyone here, except possibly you and Mooney, have their self confidence on the line.

  27. 147

    We conducted a poll Max, its pretty much unanimous, Mooney and now, possibly you, is/are simply annoying. I doubt anyone here, except possibly you and Mooney, have their self confidence on the line.

  28. 146

    Look, if we are in to Shakespeare, I will quote “Methinks the lady doth protest too much” as a suggestion that those posters who mount the most vituperative, virulent, intemperate attacks on Mooney serve only to reveal something unpleasant about themselves, and that Mooney’s touching a sore nerve, and a real issue. Readers, do note how quickly such contributers bolster their self-confidence by speaking as “we”. But who “we” are remains unclear. Dismiss me as a “one issue wacko” if it makes you feel better, but other readers will make their minds up about the relative merits of contributions from Mooney, from me and from you. Dennis asserts that there are thousands who read this blog. Self-evidently, all but a very few are silent readers. But they all have an opinion. BTW, what’s this “poll” that “we” conducted, to find out whether readers should declare Mooney persona non grata. I don’t recall voting in that one.

  29. 145

    “I dare say that I’m hardly the only one to agree with MM…”

    Dare if you will, but you are just about the only one. We took a poll, it was pretty much unanimous. For all the sound and fury, Mooney’s posts usually signify nothing.

  30. 144

    “Notwithstanding your transparent attempts to change your position after you lost your argument, you still owe Mr. Darling an apology”

    I didn’t finish reading all 80+ pages of the appeal and I owe him an apology for reading what the board wrote as it was written rather than the way you and him would like to dream it was written? Meh, maybe. I’ll think about it.

    Hardly transparent in any case, you can read the relevant portions and see times when they at least come close to saying what they needed to in the initial “challenge” before they get in depth in later pages. I would have given them credit for the first things they said, I’ve yet to find anyone to come close to even that in response to me.

    “I thought you heard about the case just the other day”

    I did, but they didn’t issue an injunction, which is what I’m saying the court cannot do so far as I know. They only have the power (at least under 35 USC) to LET the director issue a patent. LET being different from MAKE. Also, I think in that case the applicant was ruled against anyway. I do wish I could pull up the case though.

  31. 143

    “our database of knowledge is woefully put together and lack easily found citations to basic concepts as would be found in college course notes and etc.”

    the pto needs better databases and classification systems for the examiners

  32. 142

    “Instead, you (along with 6K) are they most despised poster on this board.”

    I dare say that I’m hardly the only one to agree with MM on certain issues.

    “Perhaps you can understand why attorneys get frustrated. We see absolutely bogus rejections, and we are being forced to waste both our time and the client’s money in responding to them”

    Perhaps you can understand why examiners get frustrated. We see absolutely bogus claims and we are being forced to waste both our time and the client’s money in responding to them. To top that off, our database of knowledge is woefully put together and lack easily found citations to basic concepts as would be found in college course notes and etc. with motivations spread to the high yonder.

  33. 140

    The financial services sector is so intelligent and successful that we are supposed to trust anything they have to say these days on any topic?

  34. 139

    now that we have a real financial crisis, i wonder what some folks think of all the lobbying on patent reform by the financial services sector as well as the any fall-out by a wacky decision in Bilski – seriously – of course, this is way off topic … but what the hey … so much money spent on lobbying & very little innovation in financial services that the american taxpayer now owns – patents or not, we own the choices we make in how our government deals with innovation …

  35. 136

    Malcolm Bloom says “However, under KSR, the lack of TSM can’t be used to prove non-obviousness.”

    This is simply not true. KSR will eventually go down as a tempest in a teapot and will be known as the case having the most overrated impact on patent practice. Judicial “gobbledygook” notwithstanding, all KSR did was remind the patent bar that the TSM test actually has always said “…a TSM contained in the references themselves **or in the knowledge generally available in the art**” TSM was never a stand alone test based only on the teachings in the references only, even though some argued it that way.

    Therefore, while a TSM in the references will support a combination (does not *prove* obviousness), a lack of a TSM in the references themselves then requires external support from the knowledge in the art, or some other factor such as forseeability or the like. And TSM is only to support the combination, if the references dont teach the features, p.f. obviousness is not established.

  36. 133

    “From what I can tell, the inventions in the chemical/biotech arts tend to be far less complex than those in the other art units.”

    That’s funny because just few days ago you were ranting about how enablement isn’t an issue for sweepingly broad computer-implemented claims because the artisans in the field are so freaking skilled. Now you are telling us that chemical/biotech inventions are relatively simple and straightforward.

    “One would think that if your opinions really resonated, there would be many more posters coming to your aid.”

    I would expect posters to come to my aid only if they perceived that I needed their assistance. But I recall someone playing this strange “popularity contest” card a couple years ago. To the best of my recollection, Caveman ended up voting himself off the island.

  37. 132

    “Got any evidence?”

    Evidence? Evidence that you and “everybody you know” is receiving Office Actions of which 90% comprise facially bogus rejections?

    It’d be pretty hard for me to come up with that evidence, pds, for obvious reasons. Then again, I wasn’t the one asserting that laughably extreme statistic. It was you.

  38. 131

    “One answer I’ve stumbled upon is that the Examiners in the software and business method arts tend to be less literate, less intelligent, and less clever than the Examiners in the chemical and biotech arts.”

    From what I can tell, the inventions in the chemical/biotech arts tend to be far less complex than those in the other art units. Also, I haven’t been entirely impressed with the level of claim drafting out of biotech attorneys. Then again, the inventions are so straight-forward that the need for sophisticated claim drafting really isn’t necessary … you don’t develop a skill set when the skill set isn’t needed.

  39. 130

    “Liars, including you.”

    Got any evidence? Or are you just expelling gas like you normally do. You always want to force the party with whom you are arguing to provide evidence, but you are awfully weak at producing evidence yourself.

    BTW: You must have missed the post where an examiner pretty much agreed with my numbers while at the same time trying to justify why the rejections are still made.
    It must get to you that the only person that regularly defends you is 6K, somebody that you despise. There is also Mad Max that comes to you side, on occasion, but most people dismiss him as a 1 issue wacko.

    One would think that if your opinions really resonated, there would be many more posters coming to your aid. Instead, you (along with 6K) are they most despised poster on this board. BTW, for the most part, you aren’t despised for your opinions. Instead, you are despised because you aren’t interested in real debate about the law. Instead, you mostly just want to yank people’s chains.

  40. 129

    “That’s a slightly unfair statement. While 70-90% of rejections are deficient in some manner, the claims in many of those cases are so blatantly obvious that the examiner had to reject the claims.”

    Hmmm, although anecdotal … considering I get most of those applications allowed without amendment tends to disprove that concept.

    “The examiner lacked the time or the skill to do a proper search, and so we end up with a facially bogus rejection. In many cases, the claims could have been properly rejected if the examiner had the time and the skill to do a proper search.”

    You should really stand in our shoes and reread what you just wrote. The Examiner doesn’t have the time or skill to find the art, but he/she KNOWS that the claims should be rejected. I cannot think of a better example of the abuse of impermissible hindsight reconstruction that has run rampant through the halls of the USPTO for years and years and years.

    Obviousness is based upon factual findings of the prior art, as viewed by one having ordinary skill in the art, AT THE TIME OF THE INVENTION. This is one of the reasons I am always hesitant to give an opinion on obviousness. It takes a lot of effort to set aside whatever else I may know and make a judgment based solely on what was available to POSITA at the time of the invention.

    Can an examiner, who perhaps looks at dozens, maybe a hundred references on any given day, be expected to know which one of those references showed something really similar to applicant’s claimed invention? and more importantly, can the examiner remember whether or not these references pre-dated or post-dated the effective filing date of the applicant’s claimed invention? The answer to those questions is almost always “no.”

    Perhaps you can understand why attorneys get frustrated. We see absolutely bogus rejections, and we are being forced to waste both our time and the client’s money in responding to them. Honestly, I don’t care if an examiner finds good art. Amending the claims to get around good art is easier than explaining why the examiner’s analysis is a big pile of doodoo.

  41. 128

    “It does not say ‘the appellants having challenged the official notice indicates x’ which would be what is required to have had them mean what you believe them to mean. They say that ‘the appellant’s challenge indicates x’. This is english. Welcome to it.”

    My guess is that the irony here is completely invisible to e6k.

    “My bad, that was LB I was responding to, I figured it must have been JD.”

    Incoherently, at that. Notwithstanding your transparent attempts to change your position after you lost your argument, you still owe Mr. Darling an apology.

  42. 127

    Title: The Confounding Questions About Obviousness, TCQAO.

    There is a whole other side (perhaps and equal or even more interesting/greater side, but perhaps not in all or even most cases) about obviousness that the PHOSITA of patents (comprised of inventors, examiners, attorneys, IP professors, judges, jurors, IP bullshitters) have not addressed here (Patently-O) or elsewhere over the past years.

    Amazing, most remarkable, that this “TCQAO” has been so overlooked for so long yet it has been in plain sight all along.

    Anybody?, anybody?, Bueller?, have a clue?, now that TCQAO has been formally introduced in an eye-opening challenge? (i.e., the bag the cat has been in is now open, but the cat has not yet left).

  43. 126

    In related news about the consequences of allowing government-stamped gifts to be handed out with minimal attention to quality and consequences just because industries (and its member citizens and enablers) whine and cry a lot about what they are “entitled” to:

    link to angrybear.blogspot.com

    “This is indeed the most severe financial crisis since the Great Depression and occurring at a time when the US is falling in a now severe consumer led recession. The vicious interaction between a systemic financial and banking crisis and a severe economic contraction will get much worse before there is any bottom to it. We are only in the third inning of a nine innings economic and financial crisis. And the only light at the end of the tunnel is the one of the incoming train wreck.”

    But of course a lot of people already made their hundreds of millions from the unregulated crap, didn’t they? I don’t suppose they’ll be giving any of it back. And god forbid their taxes are raised. John and Sarah to the rescue!!!

  44. 125

    JD “So how is it that one of ordinary skill in the art, or less, can tank the claim in a minute or two, but the PTO can’t establish a prima facie case after 5 years?”

    Maybe it is because they get workflow points for pushing paper out the door, but they do not get points for finding prior art.

    Alternatively, it could be because they are not people of skill in the art for the claimed invention.

  45. 124

    JD “So how is it that one of ordinary skill in the art, or less, can tank the claim in a minute or two, but the PTO can’t establish a prima facie case after 5 years?”

    I’ve been asking that question for years, JD. Welcome aboard.

    One answer I’ve stumbled upon is that the Examiners in the software and business method arts tend to be less literate, less intelligent, and less clever than the Examiners in the chemical and biotech arts.

  46. 123

    “I have yet to see an examiner who gets KSR. Most cite KSR, but are really applying the old motivation test of TSM.”

    *sigh*

    The “old motivation test” (i.e., using an express statement in the art to support a finding that one of skill would be motivated to combine old elements that are also expressly disclosed in the art) is still valid under KSR. The point of KSR is that a failure to find a suitably precise motivating statement in the art is not necessarily indicative of non-obviousness.

    Or to put it another way, if the Examiner is applying the “old motivation test” and he/she is applying it correctly, you are more screwed than ever because your claims aren’t even passing muster under the strict TSM test that is more favorable to the patentee.

  47. 122

    E6K,

    As I have said before, please continue to post if you leave the PTO and move to a firm. I would love to see how your views change as you experience things from the other side.

    Love,

    A Lowly Prosecutor

  48. 121

    “Careful. At the very least, the issuance of a claim that one of ordinary skill (or less) can tank in a minute or two means that the PTO has issued at least one patent too many.”

    So how is it that one of ordinary skill in the art, or less, can tank the claim in a minute or two, but the PTO can’t establish a prima facie case after 5 years?

    “The board specifically indicates that the challenge, not the act of challenging, indicates that the facts notices were not capable of such instant and unquestionable demonstration.”

    “It does not say ‘the appellants having challenged the official notice indicates x’ which would be what is required to have had them mean what you believe them to mean. They say that ‘the appellant’s challenge indicates x’. This is english. Welcome to it.”

    You’re beyond ridiculous. The two quotes above are ample evidence that your command of the English language is very weak. But I’m sure it makes perfect sense in e6kland.

    “So far as I know, they can’t do that.”

    I thought you heard about a case just the other day? Don’t the first few patent laws allow such a suit? Shouldn’t you be able to cite me dozens, if not hundreds, of cases?

    LOL

    “Now why on earth would they remove the dates from evidence, or, if they didn’t know it was going to be evidence, from a random corporate slideshow?”

    Well, as I explained to you, the law does not require you to provide the dates of your evidence as long as it is before the prior art’s effective date.

    There’s no need to put your competitors on notice of your earliest date if you don’t have to.

    Your new masters at your monstrous firm will explain it all in more detail.

  49. 120

    One reason for this unchanged TSM behaviour in the PTO is that PTO Examiners are not st_p_d; they read EPO prosecution files online and get trilaterally coached too. They discover that the EPO’s version of TSM works very well, sifting in double-quick time the gold nuggets from the dross claims, and they want it too. Shame that nobody outside EPO circles has yet grasped the core “specific technical purpose” of EPO-PSA, absent from CAFC-TSM, and key to making PSA effective. Of course, there’s also the dichotomy between the PTO’s “structure” focussed search database and the EPO’s “industry” arranged search database, which handicaps the PTO Examiner’s ability to find the close art that the EPO Exr typically finds. But that’s another story.

  50. 119

    “Under a strict TSM or Europe’s PSA, you have a reasonably objective manner of determining what is not-obvious when you have the relevant art before you. These methods ensure that when the problem solved is new, the claims can’t be rejected using hindsight. Both of these methods prevent citation of irrelevant art.”

    Regardless of whether you think TSM is better than KSR, these are the same examiners we used to have, citing the same references they used to cite. I’ve looked at hundreds of post-KSR office actions, and I have yet to see an examiner who gets KSR. Most cite KSR, but are really applying the old motivation test of TSM.

  51. 118

    Was anybody present at AIPPI Boston, to observe the workshop discussion about the non-obviousness of the hypothetical claim: “A squash racquets ball, coloured blue”? Patentable in Europe under PSA but probably not in the USA, even under superseded TSM. Is the blue colour a solution to an objective technical problem? Interesting subject for debate on 101, as well as 103.

  52. 117

    JAOI 12 sep 11:40

    There are very few dramatic and unexpected “out of the blue” inventions. Most inventions are clever new combinations of old elements used to solve new problems.

    Under a strict TSM or Europe’s PSA, you have a reasonably objective manner of determining what is not-obvious when you have the relevant art before you. These methods ensure that when the problem solved is new, the claims can’t be rejected using hindsight. Both of these methods prevent citation of irrelevant art.

    Under the current implementation of KSR you can’t know what your chances are for getting a patent on a novel idea, so you can’t rationally decide whether to publish an enabling description or keep your inventions secret until marketing.

    Under the current implementation of KSR, once you get a silly Office Action, you can’t judge what your chance is for overcoming the rejection with a reasonable budget within a reasonable time. It is true that large companies can put the USPTO on the “appeal/withdraw” merry-go-round, but for small companies it is rarely worth it.

  53. 116

    “Yes, “bad” patents occasionally make it through the system. However, the issuance of these patents does not necessarily mean it is easy to obtain a patent, or that too many patents are being granted.”

    Careful. At the very least, the issuance of a claim that one of ordinary skill (or less) can tank in a minute or two means that the PTO has issued at least one patent too many. And it’s more than “occasionally”. It is a regular occurance and has been for nearly a quarter of a century now. KSR is an extremely powerful tool for crushing the worst crud. There really isn’t any excuse anymore. Hopefully the CAFC will deliver the goods with Bilski so the clear-cutting can begin in earnest.

  54. 115

    “I do note is that it’s hard to take people too seriously who don’t post under their real name (Mooney, E6k)”

    Isn’t it past your bedtime, Ray?

  55. 114

    “Cite me one case where a patent applicant got a USDC judge to issue an injunction against the PTO to prevent the PTO from re-opening prosecution. Just one. And make sure you Sheperdize it.”

    So far as I know, they can’t do that. But they might could. Either way, you know what your remedies are. If they are insufficient, lobby congress.

  56. 112

    “The Action’s mere assertions do not constitute the required prior art evidence of record and thus lack substantial evidence support.”

    That is part of the appellant’s challenge. That’s the key sentence JD. Without that sentence they fail. Luckily for them, they put it in.

    The board specifically indicates that the challenge, not the act of challenging, indicates that the facts notices were not capable of such instant and unquestionable demonstration.

    Read it again:

    “the appellants’ challenge to the official notice indicates that the facts officially noticed are not capable of such instant and unquestionable demonstration as to defy dispute.”

    It does not say “the appellants having challenged the official notice indicates x” which would be what is required to have had them mean what you believe them to mean. They say that “the appellant’s challenge indicates x”. This is english. Welcome to it.

    It is quite clear that the appellants included the portions about substantial evidence on purpose.

  57. 111

    “They have ZERO evidence that the examiner was justified in refusing to accept the 131 Dec”

    I cite the emails and the slideshow not having a date. Keep in mind the paper accompanying them claimed they had the dates “removed”. Now why on earth would they remove the dates from evidence, or, if they didn’t know it was going to be evidence, from a random corporate slideshow? Where’s the inventor’s notebooks? I know I had to keep one in the corporate world even though I wrote very little in it and neglected it horribly.

  58. 110

    Dennis, quick post another article. Your blogger children can no longer play well with each other.

  59. 109

    This conversation has become rather silly. OA quality is incredibly poor; every prosecutor that comments seems to concur. Why people that do not prosecute seem to want to argue this point is beyond me.

    Yes, “bad” patents occasionally make it through the system. However, the issuance of these patents does not necessarily mean it is easy to obtain a patent, or that too many patents are being granted. Poor examination can cause both bad rejections and bad allowances.

  60. 108

    I don’t have the time to read through this whole exchange (although it looks interesting), but one point I do note is that it’s hard to take people too seriously who don’t post under their real name (Mooney, E6k). Obviously I am being hypocritical right now, but I don’t want all you bozos googling me today. But if you really stand by your point, post under your name and show everyone who you really are.

  61. 107

    “As I asked 6k, cite me one case.”

    Let me get this straight. This alleged application is the “poster boy” for PTO malfeasance but you believe that there is nothing you can do about it without a favorable “case” directly on point?

    How about you cite me a case with the *identical* facts where a District Court held that the case was not ripe for adjudication? I might feel some pity for this client then. But probably not.

    As I and other commenters above have noted, this “poster boy” of yours has been behaving strangely. Are you sure you can’t find a better one?

    “what you would do in the face of the old appeal-reopen-appeal-reopen-appeal-reopen game that is being played all over the PTO”

    It would depend on the specific facts of the case, JD. For the billionth time: that’s my point. You assert that this “triple appeal-reopen game” is being played all over the PTO and that it’s really a terrible thing. But then you can only provide one example of “the game” being played and the example frankly sxcks for proving that anyone should be bothered at all by what’s happening.

    “12. An Automated Teller Machine (ATM) that operates to conduct at least one financial transaction responsive to at least one mark-up language document.”

    This claim speaks for itself. It says: “Kill me now and mock the dumbxss applicant for wasting everyone’s time.”

  62. 106

    “for the purpose of precluding intervention by a court”

    How would you prove that, Malcolm?”

    With circumstantial evidence, unless you find something better during discovery. How does one ever “prove” intent?

  63. 105

    “I am an attorney, JD, so you can stop with the lame personal attacks.”

    Your phony indignation is as amusing as most of your other posts. As you’re posting anonymously, your calls for civility are rather silly to those of us who don’t feel the need to hide behind a screen name. And you didn’t seem to hesitant to pile on 6k’s jibes at me, and my colleagues at my firm, who have never posted anything here. So you can spare me the pity pleas. The only reason you’re not the number one gutless, anonymous wonder on this site is the presence of 6k. When he gets to his monstrous firm, and his true identity is revealed by those who have to suffer his nonsense while trying to teach him something, you’ll assume the top spot. Congratulations.

    “Now if you actually produced for us all (1) a decent relatively narrow claim (2) a ridiculous, breathtakingly silly rejection of that claim, you might have an interesting story to tell.”

    That’s not what you asked for. I quoted your request verbatim. Having given you what you asked for, you do what you usually do, move the goal posts.

    Your predictability is one of your most endearing characteristics.

    “And yet, in spite of this, you are trying to tell us that the PTO needs to make it **easier** for patents to be granted?”

    No. That’s not what I’m telling you. That’s what your poor reading comprehension is telling you I’m saying.

    If you bothered to read any of my posts, or anything for that matter before spouting off, you would understand that what I’m asking the PTO to do is to follow the law. Read the application. Search the prior art. Reach an objective, legally sound conclusion based on the evidence. If that conclusion is that the claims are not patentable, establish a prima facie case, consider the applicant’s response, and if unpersuaded then allow the Board to review the decision, and if the Board reverses, issue the patent.

    Pretty simple. Maybe too simple for a legal mastermind like you.

    “But the suit in this case would be premised on the abuse of your client’s rights by an administrative agency that is intentionally denying you a final action for the purpose of precluding intervention by a court. You’ve got to be more creative, JD. Think like … an attorney. Don’t let ‘the law’ prevent you from fixing something that is ‘wrong.'”

    As I asked 6k, cite me one case.

    So why don’t you give all of the rest of us the benefit of your tremendous wisdom and tell us what you would do in the face of the old appeal-reopen-appeal-reopen-appeal-reopen game that is being played all over the PTO. But not in your super narrow little technical niche of protein fragments or whatever molecules you supposedly prosecute.

    Oh, that’s right, I keep forgetting. You’re the only attorney in the whole patent bar that represents clients that have actually invented anything. All of your applications, with their relatively narrow claims, sail right through to first action allowance.

    amirite?

  64. 103

    plaintiff’s (i.e. applicant’s) suit would be dismissed because they had not exhausted their administrative remedies.

    But the suit in this case would be premised on the abuse of your client’s rights by an administrative agency that is intentionally denying you a final action for the purpose of precluding intervention by a court. You’ve got to be more creative, JD. Think like … an attorney. Don’t let “the law” prevent you from fixing something that is “wrong.”

    Of course, it helps a lot if the “wrong” being remedied is palpable to ordinary people like judges.

  65. 102

    “You’re not even an attorney, are you?”

    I am an attorney, JD, so you can stop with the lame personal attacks. I suppose you are one too and that might explain the inability to “let go” in the face of a loss. I have been earnestly trying to help you by advising that you find another “poster boy” and explaining my reasons for that advisement. But you seem to be very much attached to this bad example of a “bad rejection.”

    Spouting worthless anecdotes about how your pending claims are being treated so unfairly by allegedly arbitrary and/or capricious Examiners who are rejecting your perfect and inarguably valid claims seems beyond childish to me.

    Now if you actually produced for us all (1) a decent relatively narrow claim (2) a ridiculous, breathtakingly silly rejection of that claim, you might have an interesting story to tell.

    Until then, you got squat. Literally: nothing.

    Meanwhile, as I’ve noted before, I need only sit here and wait for the laughably invalid ISSUED claims to fall into my lap.

    Don’t you see the problem, John? Let me lay it out for you again: my complaints about the PTO issuing bad patents are backed up by a fat stack of crappy claims that grows all the time. We laugh at new ones here weekly. In fact, should that claim 12 discussed above get allowed we’ll be laughing at that one as well. And yet, in spite of this, you are trying to tell us that the PTO needs to make it **easier** for patents to be granted? It’s not going to happen. Those days are over. Thank goodness.

    Find a new poster boy.

  66. 101

    “anybody who prosecutes with any amount of frequency can tell you that 70-90% of the rejections we get are facially bogus in one respect or another.”

    Liars, including you.

  67. 100

    With the CAFC waiting till Oct to release their Bilski decision, SCOTUS will be back in session and they will be able to decide if and when they’ll take up the fray as the losing side will, for sure, petition for cert.

  68. 99

    “JD- was one of (B)-(D) applicable in this case or is the MPEP wrong here”

    The MPEP’s not wrong.

    Inventorship is determined on a claim by claim basis. So just because a case contains claims 1-20 and lists inventors A, B, C, D doesn’t mean A, B, C, and D invented all of claims 1-20.

    So if the examiner rejects claim 10 under 35 USC 102(a) or (e) over Ref. X and a Rule 131 Dec is filed, and signed by inventors A and C, to swear behind Ref. X, the conclusion is that inventors A and C are the inventors of claim 10.

    If the examiner has no reasonable basis to doubt the sworn statement from inventors A and C that they are the inventors of claim 10, and if the evidence they submit establishes a date of conception and diligent reduction to practice of the invention of claim 10 that is prior to Ref. X’s effective prior art date, the examiner must withdraw the rejection.

    Mooney and 6k’s lame attempts at ex post facto reasoning that the examiner doubted the veracity of the applicant’s 131 Dec are exactly that – lame. They have ZERO evidence that the examiner was justified in refusing to accept the 131 Dec. And the Board said exactly that.

  69. 98

    “In other words, after all of our discussions, the board affirms that the applicant’s challenge must indicate that the facts officially noticed are not capable of such instant and unquestionable demonstration as to defy dispute aka not be substantial evidence.”

    Keep spinning, 6k. You may actually whirl your way right out of that fantasy land you inhabit.

    “Apparently someone hasn’t read the first few patent laws in awhile. You’re not going to have your suit thrown out, people do use this option. I heard about a case the other day.”

    Cite me one case where a patent applicant got a USDC judge to issue an injunction against the PTO to prevent the PTO from re-opening prosecution. Just one. And make sure you Sheperdize it.

    “I wonder if I can cite that case in my OA’s even though I don’t think it’s precedential and wasn’t written to be published.”

    Why don’t you ask Mooney?

    ROFLMAO

    “They were a bit lax on the requirement for showing dates in the evidence back a few years back I hear though.”

    Uhm, applicants are entitled to redact the dates from their evidence that is prior to the date they are trying to swear behind.

    Again, ask Mooney. He’s an expert on Rule 131.

    “Maybe the examiner did leave something off the record. Maybe not, who’s to say?”

    You’re hilarious. Keep up the outstanding work.

    “The one thing I would like to know from the inventors of this case is why, since the whole company seemed all interested about this way cool new tech they were developing, didn’t they file a bit earlier and not have to fool with all this?”

    Maybe you’ll figure it out once you get to that monstrosity of a law firm you’re going to. Then again, maybe you won’t.

    “WHY is the single means claim rejection ‘laughably absurd’?”

    I’ll let the Board answer that one for me. Assuming the PTO ever lets this case go back to the Board. Here’s my prediction. The Board will spend about about a page summarizing the examiner’s position. About a page summarizing the applicant’s position. And then do one, maybe two, sentences of “analysis” in which they conclude that claim 12 is not a single means claim.

    “Secondly, you did not address the propriety of the art rejection for this claim, either.”

    If the art rejection makes a prima facie case, why did the examiner re-open instead of sending it up to the Board?

    I don’t think I need to address any art rejection that the PTO is afraid to subject to scrutiny by the Board.

    “While the applicant is well within their rights to appeal after 2 actions, the manner which they have prosecuted the whole application, as well as their responses that at times border on being completely disrespectful, to their actions to create PR to “shame” the office into giving them a patent (which they may or may not deserve) is very reminiscent of the various submariners and charlatans from the past.”

    Let’s see, they’ve gotten the run around from the PTO, and appealed three times. The examiner’s been reversed twice, but still refuses to allow the application. And the applicant is completely disrespectful. I must say, your logic escapes me.

    How is this reminiscent of submariners and charlatans? The application is published. Anybody who wants to know the application’s status can look it up.

    Your analogy to Joseph Neuman (or Newman, however it was spelled) is weak. There were utility and enablement issues with his “invention.” There are none here. Are you saying that applicant has to demonstrate to NIST that their ATM works? I guess it’s a good thing you’re not examining the application.

    “I would really like to get a FULL explanation for this rational as I do not understand it.”

    You got that right. You don’t understand it.

    Let’s see, claim 12 is actually being “examined” (horribly, but at least it’s getting treated).

    So let’s say they cancel claim 12, secure allowance of 09/193787 and then file a continuation to pursue claim 12.

    So the continuation sits on the examiner’s docket for 2-3 years before it gets picked up (because we all know all those negative work flow points are gonna be excused by a wave of the old SPE magic wand) and when it is finally picked up, the same BS rejections are applied against it and the whole merry-go-round starts up again.

    So the applicants choice is to deal with claim 12 now, a claim to which they are entitled absent a prima facie case of unpatentability, or wait a few more years to deal with it.

    That’s why.

    Get it?

  70. 97

    As a pro se applicant I get bogus rejections all the time (all of them so far).

    Nothing could have prepared me for my first OA. A single 102 rejection. U.S. 6,299,921

    What appeared to be a “cooling step” in the flow chart caused me grief, this goes to the heart of my invention. How to get around this art?

    Answer: by reading the patent, which it seems no uh “professional” bothered to do, including my examiner, the examiner that rubberstamped the case and the prosecutor who never read the case. And if the prosecutor billed his client for reading the application before or during prosecution, I’d call that fraud.

    Even with my limited brain power I read the patent which I call a Tutonic monument to prolix obfucation. The drawing has 4 parts. The flow chart is either a) sabotage, b) a practical joke, or just plain, though relentless typos.

    Look at the flow chart it has 6 corpses rotting in the noon day sun, “cooling” being one of them. Also this device “looks” for nothing though the flow chart looks like hell to anyone that actually bothered to read the patent.

    Earl Gray, pro se

  71. 96

    “The examiner refused to withdraw the 102(e) rejection over Zeanah because the 131 Dec did not include all of the inventors’ signatures. That is not a requirement of a 131 Dec. Yet the examiner refused, improperly, to withdraw the rejection and forced the applicant to appeal, just to have the Board say exactly what they (the applicants) had been telling the examiner all along: a 131 Dec does not require the signature of all of the inventors”

    However, MPEP 715.04 says:

    I. WHO MAY MAKE AFFIDAVIT OR DECLARATION
    The following parties may make an affidavit or declaration under 37 CFR 1.131:

    (A) All the inventors of the subject matter claimed.

    (B) An affidavit or declaration by less than all named inventors of an application is accepted where it is shown that less than all named inventors of an application invented the subject matter of the claim or claims under rejection. For example, one of two joint inventors is accepted where it is shown that one of the joint inventors is the sole inventor of the claim or claims under rejection.

    (C) If a petition under 37 CFR 1.47 was granted or the application was accepted under 37 CFR 1.42 or 1.43, the affidavit or declaration may be signed by the 37 CFR 1.47 applicant or the legal representative, where appropriate.

    (D) The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm’r Pat. 1903).

    JD- was one of (B)-(D) applicable in this case or is the MPEP wrong here (certainly not unheard of but this has been in the MPEP for the entire time I’ve been an examiner which is more than 15 yrs). While the MPEP could be wrong and I understand it does not have the force of law, unless one of (B)-(D) was applicable in this case I certainly think calling this a good example of a case in which a “bad” (i.e. objectively, unambiguously incorrect) rejection was made is incorrect as it would appear the examiner was merely following what is in the MPEP

  72. 95

    JD: And his “adequate” traversal was nothing more than a demand for evidence of the facts that were Officially noticed.

    e6k: Unfortunately not, learn to read old man.

    e6k, you are not only a disrespectful young pup, you are apparently also lazy and not very bright. They’re going to love you in law school.

    Appellants brief, 9/19/03, p. 21: “… the Appellants continue to challenge the assertions of ‘Official Notice.’ Where is the prior art teaching of the alleged ‘fact’? … Where is the evidence of record of a prior art teaching of HTML documents … After five non-final rejections the Office still hasn’t produced any prior art evidence that supports this assertion. How many more non-final rejections does the Office intend to give before it ceases searching for the ever elusive alleged prior art teaching? The present evidence of record does not teach teach or suggest the recited features… The rejection relies on conclusory statements, not evidence of record. The Action’s mere assertions do not constitute the required prior art evidence of record and thus lack substantial evidence support. …patentability must be based on evidence of record, not on unsubstantiated assertions under the guise of an Official notice (which is the present situation). As the evidence of record does not support the rejection, the claims should be allowed.

    Examiner’s Answer, 12/11/03, pp. 3-4: In response to Applicant’s argument against Official Notice being taken, to adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include the [sic] stating why the noticed fact is not considered to be common knowledge or well-known in the art. A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice is inadequate. The knowledge or well-known in the art statement [sic] is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that [sic] the traverse was inadequate. The traversal was inadequate because the applicant’ [sic] failed to specifically point out the supposed errors in the examiner’s action including why the noticed fact is not considered to be well-known in the art.

    BPAI Decision, 11-29-05, pp. 7-8: Official notice is limited to ‘notice of facts beyond the record which, while not generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute.’ Although, as pointed out by the examiner (answer, pages 3-4), the appellants responded to the examiner’s official notice argument by stating that the examiner has not supported the official notice with prior art rather than by stating that the noticed facts are not well known (brief, page 21), the appellants’ challenge to the official notice indicates that the facts officially noticed are not capable of such instant and unquestionable demonstration as to defy dispute. Consequently, the examiner’s official notice is improper. The examiner argues that ATMs inherently dispense statements (answer, page 3). The examiner must show that the prior art discloses … dispensing a shetet … and the examiner has not done so.

    See, e6k, it’s apparently you who cannot read, or chooses to do so. The examiner trotted out the exact nonsense that you’ve been spouting on this board, to the effect of “Applicant didn’t say the magic words, so his traversal is inadequate.” The Board said (clearly, to those of us who can read), effectively, “Fine, they didn’t use the magic words. But their response INDICATES (not says) that the facts officially noted are not proper for Office Action. So, the examiner MUST produce those facts.” That sounds remarkably like what JD has been saying.

    You owe JD an apology.

  73. 94

    “”12. An Automated Teller Machine (ATM) that operates to conduct at least one financial transaction responsive to at least one mark-up language document.”

    For 09/193787, 30 second search.

    “The SSL protocol was originally developed by Netscape. Version 1.0 was never publicly released; version 2.0 was released in 1994.”

    Why do you suppose the Netscape web browser supported SSL? For financial transactions?

  74. 93

    PDS wrote: “70-90% of the rejections we get are facially bogus in one respect or another.”

    That’s a slightly unfair statement. While 70-90% of rejections are deficient in some manner, the claims in many of those cases are so blatantly obvious that the examiner had to reject the claims.

    The examiner lacked the time or the skill to do a proper search, and so we end up with a facially bogus rejection. In many cases, the claims could have been properly rejected if the examiner had the time and the skill to do a proper search.

  75. 92

    “Is the Board of Appeals currently overturning rejections at some amazing rate? That might be useful info for the “bad rejection” whiners. In the absence of that, let’s see an example of Board decisions where the denial of a patent is unambiguously incorrect. There should be hundreds if not thousands of these to choose from if this “bad rejection” problem is as awful as it’s made out to be here by certain commenters.”

    It is quite simple. It takes you about 90 seconds (depending upon your typing skills) to say “somebody has shown me an example of a bad rejection.” On the other hand, it could take about 90 minutes to first start searching the list of cases indicated by the PBIA … find one or two cases … look at both the cases and the prior art and then decide whether or not the original was “awful as it’s made out to be here by certain commenters.”

    Sorry MM …. you can yank somebody else’s chains. I went through the process once to see how bad it actually was. I put forth the evidence, which you so conveniently ignored a couple months ago. Nobody else is going to bother because anybody who prosecutes with any amount of frequency can tell you that 70-90% of the rejections we get are facially bogus in one respect or another. We don’t need to prove what is common knowledge to even a first year attorny.

    The fact that you pretend that it couldn’t be true just shows how ignorant you are as to prosecution and why NOBODY, and I repeat … NOBODY!!!!, on this board believes you prosecute applications. If you did, you wouldn’t be spouting the doodoo that you are. Regardless, when you start prosecuting applications, i’ll give you some credence, but until then, you’ve got even less credibility on these issues than 6K.

  76. 91

    JD,

    You are both wrong AND you avoided answering the question in a way very worthy of any of these career politicians.

    WHY is the single means claim rejection “laughably absurd”? What legal grounds do you have to support that position based on claim 12? Since you are not the attorney of record in this case you can answer that. In re Hyatt, while being directed to 112, 6th, is not limited to only mean+function claims. The decision uses the words “means” and “element” interchangeably and, at times, as alternatives. I believe that there are subsequent cases that support this position but I do not remember the cite off hand (I think that at least some were chem/bio cases where the decisions said that even though the claims did not recite “means” they had the same type of undue breadth issues as a single means claim & cited in re Hyatt). I am sure you all can find such very easily since you are well versed in finding & citing supporting case law for your positions. Or, on the contrary, if you know of case law that specifically states that s single means rejection MUST recite the words “means”, please cite it as well.

    Secondly, you did not address the propriety of the art rejection for this claim, either. Another failing in your response.

    Thirdly, I said that BOTH the office & applicant share the blame for the situation. But the applicant is as much trying to create publicity for this application as anything else. And they do share the blame for the extended prosecution. Saying that they don’t is purely a lie or being purposefully ignorant. They do NOT have “clean hands” either.

    While the applicant is well within their rights to appeal after 2 actions, the manner which they have prosecuted the whole application, as well as their responses that at times border on being completely disrespectful, to their actions to create PR to “shame” the office into giving them a patent (which they may or may not deserve) is very reminiscent of the various submariners and charlatans from the past.
    Do you remember the inventor (name escapes me at the moment) that went on the Tonight Show (with Carson; that far back) claiming that his “invention” was creating more energy than was put into it? He claimed that the office was keeping him from getting his patent for all kinds of nefarious reasons. But he kept refusing to allow NIST to test it. Once it was finally tested it turned out to be a fraud (this is a very brief summary leaving out details for breadth). This applicant is appearing to do the same thing. Hyatt & Lemelson, among others, have used these same tactics. Why??

    And your points about the case being searched by whomever is another red herring & has no bearing on the discussion. Again, ONLY ONE CLAIM IS REJECTED ON ART! The rest are just prov. ODPs. In other words, those claims are ALLOWABLE with a TD or the removal of claim 12 that is being rejected on art & 112, 1. So, your statement that “Yet the PTO refuses to allow the case.” is lacking some truth as well (not a lie, just not 100% truth. Good politician.)

    Now, as for your “answer”, simply saying “In the absence of a prima facie case of unpatentability, the applicant is entitled to the claim.” is a non-answer.

    Are you SERIOUSLY saying that it would be (or would have been) better for the applicant, either monetarily or legally (strength of the patent, time of enforceability, etc.) to continue the prosecution rather than to take the allowance of 29 or 30 claims and to continue the prosecution of that last claim in a separate application? If so, I would really like to get a FULL explanation for this rational as I do not understand it. Seriously, please explain it so we can all benefit from your legal wisdom. I am looking forward to hearing it.

    Well, ‘nite all.

    MVS

  77. 90

    I wonder if I can cite that case in my OA’s even though I don’t think it’s precedential and wasn’t written to be published.

    Oh, and sorry, my filing date of my ref is Apr 18, 1996. That’s under ten minutes beating all but the swear behind. IMO, deny 131 for insuficient evidence and call it a day. Now, if that email had a date on it, or the slides had some dates on them or we had some outside corroboration then meh, you know. They were a bit lax on the requirement for showing dates in the evidence back a few years back I hear though.

    The one thing I would like to know from the inventors of this case is why, since the whole company seemed all interested about this way cool new tech they were developing, didn’t they file a bit earlier and not have to fool with all this?

  78. 89

    “Uhm, because plaintiff’s (i.e. applicant’s) suit would be dismissed because they had not exhausted their administrative remedies.”

    Apparently someone hasn’t read the first few patent laws in awhile. You’re not going to have your suit thrown out, people do use this option. I heard about a case the other day.

    Also, I believe MM’s statement about the 131 shows why he believes that the refusal to take the 131 might not have been improper thus not making the case “bad”. Maybe the examiner did leave something off the record. Maybe not, who’s to say?

  79. 88

    “The examiner refused to withdraw the 102(e) rejection over Zeanah because the 131 Dec did not include all of the inventors’ signatures. That is not a requirement of a 131 Dec”

    Ok, so he made a mistake? A simple call to the spe/director can take care of that quite easily. What’re you moaning about?

    “That is a “bad” (i.e. objectively, unambiguously incorrect) rejection. Exactly like Mooney asked for. And exactly what I provided.”

    Here I was thinking you meant a “bad” rejection over art/101/something meaningful not a technicality he may or may not know about.

    I agree about the single means thing, but that’s irrelevant. Either work it out with him, cancel the claim take your patent/file con, or file an appeal and wait. They chose the hardest route. Don’t btch for them.

    “And his “adequate” traversal was nothing more than a demand for evidence of the facts that were Officially noticed””

    Unfortunately not, learn to read old man. It appears from the brief that I was wrong, applicants did know how to traverse properly. The board specifically states “the appellant’s challenge to the official notice indicates that the facts officially notices are not capable of such instant and unquestionable demonstration as to defy dispute.” In other words, here they look to see if applicant’s challenge has indicated that they argue the facts officially noticed are not capable of such instant and unquestionable demonstration as to defy dispute. Did you bother to read the applicant’s challenge? See page 21 “The Action’s mere assertions DO NOT CONSTITUTE THE REQUIRED PRIOR ART EVIDENCE of record and thus lack substantial evidence support”. I missed it the first time through myself, so don’t feel too bad. They include “prior art” before evidence but that is irrelevant as all evidence must be from prior art even if it was taken notice of.

    In other words, after all of our discussions, the board affirms that the applicant’s challenge must indicate that the facts officially noticed are not capable of such instant and unquestionable demonstration as to defy dispute aka not be substantial evidence.

    But thanks for playing, and thanks for the citation to the case to end our dispute, perhaps we will stumble upon a better one soon. Funny enough, we came to the same conclusion awhile back if you recall. Though I had to drag you kicking and screaming the whole way.

  80. 87

    “Hypothetically, assuming the applicant is correct on every issue in this chain of events, what is keeping the applicant from filing a district court suit to enjoin the PTO’s abuse and obtain finality (invalidity or not) once and for all so he/she can file at the CAFC?”

    Uhm, because plaintiff’s (i.e. applicant’s) suit would be dismissed because they had not exhausted their administrative remedies.

    You’re not even an attorney, are you?

    “Maybe the Examiner is aware or has reason to believe that one of the inventors won’t sign because the inventor disagrees with one of the assertions in the 131 declaration. Wouldn’t the Examiner be entitled to request a signature under those circumstances (unless of course the inventor was physically unable to sign)?”

    That’s a nice explanation. But there’s nothing in the record to indicate that was the reason why the examiner refused to accept the 131 Dec.

    BTW, I’m still waiting for your explanation as to why these two examples don’t meet your request for “bad” (i.e. objectively, unambiguously correct) rejection.

    I’ll take your inability/refusal/failure to provide an explanation as your concession that you don’t have one.

  81. 86

    “The examiner refused to withdraw the 102(e) rejection over Zeanah because the 131 Dec did not include all of the inventors’ signatures. That is not a requirement of a 131 Dec. Yet the examiner refused, improperly, to withdraw the rejection and forced the applicant to appeal, just to have the Board say exactly what they (the applicants) had been telling the examiner all along: a 131 Dec does not require the signature of all of the inventors.”

    Ever? As a matter of law?

    Maybe the Examiner is aware or has reason to believe that one of the inventors won’t sign because the inventor disagrees with one of the assertions in the 131 declaration. Wouldn’t the Examiner be entitled to request a signature under those circumstances (unless of course the inventor was physically unable to sign)?

  82. 85

    “What the PTO fails to understand is that all of this final rejection, appeal, re-open, appeal, re-open, appeal, re-open, etc. game that they are playing confirms what applicants already know: they are entitled to the claim(s). If they were not, why would the PTO not establish a prima facie case of unpatentability and then defend that case?”

    Hypothetically, assuming the applicant is correct on every issue in this chain of events, what is keeping the applicant from filing a district court suit to enjoin the PTO’s abuse and obtain finality (invalidity or not) once and for all so he/she can file at the CAFC? It could be money. But other than money, in my hypothetical, what is stopping the applicant from forcing the issue?

  83. 84

    “The reason why we don’t want to give you examples of our own cases, Mr. Mooney, is one that should be familiar to you. Anything we say about them in writing and in public can potentially create estoppel”

    You don’t have to say one word about the awesome claims and the bad rejections. The point is that they should both speak for themselves. If they don’t, then you ain’t got nothin’.

  84. 83

    “Also, take note JD, the board did not reverse the official notice based on the “challenge”, they reversed based on his adequately traversing.”

    Exactly. And his “adequate” traversal was nothing more than a demand for evidence of the facts that were Officially noticed. They did not provide any explanation, or even argument, why the facts were not considered to be well known.

    Because they were not required to. Which is what I’ve been telling you for about a year now.

    Your attempts at spin are beyond lame.

    “Actually, a review of this case makes it clear that the situation is not quite as clear as dear jd would like it to be.”

    “…and it appears that they did make legitimate rejections but then they were blocked with the dec. so you might even say this example fails to be a good example of what you set out to make it an example of.”

    Wrong. The case is exactly as I said. The examiner refused to withdraw the 102(e) rejection over Zeanah because the 131 Dec did not include all of the inventors’ signatures. That is not a requirement of a 131 Dec. Yet the examiner refused, improperly, to withdraw the rejection and forced the applicant to appeal, just to have the Board say exactly what they (the applicants) had been telling the examiner all along: a 131 Dec does not require the signature of all of the inventors.

    That is a “bad” (i.e. objectively, unambiguously incorrect) rejection. Exactly like Mooney asked for. And exactly what I provided.

    MVS, I would get my client what they are entitled to. In the absence of a prima facie case of unpatentability, the applicant is entitled to the claim.

    There’s your straight answer.

    Both of your “there’s more going on here” attempts to smear this applicant are pathetic. You both know full well that this case has been searched by the examiner. And searched. And searched. And searched. And searched. etc. And searched by others, e.g. SPE, QAS, etc. And searched. And searched. And searched. And searched.

    Yet the PTO refuses to allow the case.

    And they insist on maintaining this “single means claim” rejection that is laughably absurd.

    “Particularly if you REALLY wanted to get a patent.”

    What you fail to understand is that the object of the exercise is not simply “to get a patent.”

    What the PTO fails to understand is that all of this final rejection, appeal, re-open, appeal, re-open, appeal, re-open, etc. game that they are playing confirms what applicants already know: they are entitled to the claim(s). If they were not, why would the PTO not establish a prima facie case of unpatentability and then defend that case?

    “If the applicant REALLY wanted to prove what you & they assert, they should cancel claim 12 (& file a CON with it).”

    There’s a reason you’re not making a living giving legal advice.

    They have proved it. Over. And over. And over again.

  85. 82

    “”12. An Automated Teller Machine (ATM) that operates to conduct at least one financial transaction responsive to at least one mark-up language document.”

    BWAHAHAHAHAHAHAHAHAHAHAHHAH!!!!!!!!!

    Pure genius. Here’s my invention: “A transaction machine that operates to conduct one financial transaction responsive to a first personal device-generated signal wherein said device comprises a database wherein said database comprises device-generated files corresponding to information gathered from one or more distinct personal devices within one to 100 feet of the transaction machine at the time of the transaction.”

    Anybody want a license? I’ve got about 1000 more of those in my head. Just another American inventor, baby. Enablement? Not an issue. Obvious? If it’s so obvious, why didn’t anybody think of it before in those exact words? I guarantee you someone will be wishing they had taken a license to this one. To my friends residing in the absolute novelty countries: this now belongs to you. Enjoy!

  86. 81

    The reason why we don’t want to give you examples of our own cases, Mr. Mooney, is one that should be familiar to you. Anything we say about them in writing and in public can potentially create estoppel, even though the whole file may be in public PAIR and so nothing in the file is confidential. The only way around this is to talk about cases in such a way that they can’t be positively identified, or at least if you do figure out which ones you think they are we still have plausible deniability.

    I am currently prosecuting an application where the examiner has repeatedly reneged on agreements reached at interview (nothing new there), and also suggested adding subject matter that does not distinguish (something that I could not safely discuss if I had given you the serial number). He has also admitted that he is running scared of quality review, and he is not the first examiner to admit that to me.

    I may be wrong, but I think his reasoning is that if the claim is made longer he can ‘get away’ with allowing it without getting in trouble with quality review, even if I merely add things that are shown in the prior art. However, I believe that it would be unethical for me to narrow the claim in a way that I know doesn’t further distinguish. It wouldn’t be representing the client zealously, for one thing. It would allow potential infringers who employ the point of novelty of the claim to escape, by adding known elements that they may not use.

    We have to deal with this kind of thing all the time, or similar shenanigans that are equally egregious. What’s more, it’s getting worse.

    This client will appeal, but many won’t. It is not only money that prevents them. For some foreign clients the success rates at appeal are so much lower in their own countries that their conditioning tells them that it is a waste of time to do so.

    IMHO, this is the kind of thing that is driving the allowance rate down.

  87. 80

    As to the 1996 claim to priority I don’t have a copy of that app. But yes, it might take more than 10 min to art this one up. But then, the field of search is broader than what I figured it should be when I first searched. Either way, the case is sufficiently complicated for the office to spend more than a passing allowance on it, and it appears that they did make legitimate rejections but then they were blocked with the dec. so you might even say this example fails to be a good example of what you set out to make it an example of.

    And yes, what MVS said also. This case is nowhere near simple and all in all it doesn’t look to be anywhere near being evidence of some huge conspiracy to prevent allowance. Also like MVS said, allowance was at hand from an early action.

  88. 79

    RE 09/193787, only ONE claim (claim 12) is rejected on art or 112. All of the rest are simply provisional ODPs.

    Now, I am NOT defending reopening over & over again. It is a waste for both sides. Particularly since the rejections are almost always just s slight variation over the preceding one, but there are some “issues” with this case for both sides of the prosecution. While I do not know what the examiner/SPEs are doing on their side of the case, what the applicant has been doing does not totally smell clean, either (in my personal opinion – For example, they repeatedly argued that the claims have not changed. However, as can be clearly seen, claims have been amended and new claims added as only claims 1-7 were originally filed. Claims 8-30 were all filed at later stages. Many other “relatively” small things that add up to raise some questions in my mind.).

    If the applicant REALLY wanted to prove what you & they assert, they should cancel claim 12 (& file a CON with it). At that point, the prov ODPs become moot (this is the earlier case & would other wise be allowable except for the ODPs; MPEP (basically) says in that situation you maintain the ODPs in the other cases & allow the older case).

    Actually, a review of this case makes it clear that the situation is not quite as clear as dear jd would like it to be.

    So far, there has not been ANY art rejections (other than claim 12) in the case since the action mailed in July 2004. Only prov ODPs and 112, 1st (single means) for claim 12 (an occasional 112, 2nd that were dropped). If the applicant’s wanted to, they could have forced the issue long ago (& probably a lot cheaper) than the course they took.

    So, my question to all you attorneys out there is:

    If the only rejections you were facing (for some FOUR YEARS!) is ONE claim rejected over 112, 1st & art & all other ONLY rejected over ODPs that would be moot is the case was in condition for allowance otherwise, What would YOU advise your applicant to do? Particularly if you REALLY wanted to get a patent.

    No B$, please. Just a straight answer. I’ve said what I would do.

    Oh, and just for reference, claim 12 (the one rejected on art & 112, 1, as a single means claim) states (straight from public PAIR so anyone can see it)

    “12. An Automated Teller Machine (ATM) that operates to conduct at least one financial transaction responsive to at least one mark-up language document.”

    MVS

  89. 78

    “This is a case of the examiner being explicitly ordered by his superiors to never allow the application. Plain and simple. Same goes for 09/077,337.”

    I doubt that. If it weren’t for the fact that it is on its face an overclaim (if we don’t count the swearing behind) I would severly doubt that.

    Alright, here’s the ref: 5802526. I keep in mind that claim one is not limited to anything other than an automated banking machine (as opposed to the perhaps more strict “ATM”) according to the applicant’s own disclosure/claims. Other than that, it doesn’t appear much technical reasoning/inherency is required, simply search for HTML and look at Fig. 1 and accompanying text. Output, input, transaction function device (lets make that the memory for giggles shall we?), computer (fig. 1), software with browser looking at HTML docs with instructions to retrieve information from a remote server when the user requests. The memory operates to carry out the transaction function responsive to the user having used the HTML form that included the instruction adapted to cause the computer to cause operation of the memory. Seems to me like you could use the CPU as the transaction function device alternatively and have the computer be the CPU/memory combination. The possibilities abound.

    The real problem with this case appears to be that the ind. is so broad that it reads on anyone using a home PC system to bank online with HTML (or, since “banking” is in the preamble then it reads on anyone doing anything where their PC requests information from a server using an HTML page, which I’m pretty sure predates 1995). And that just happens to be something that is regarded as well known prior art (read more than a year old) in the ref I just supplied, perhaps without using HTML, but that’s just a 103 away. Those could be issues with getting it past SPE’s. Backwards citationing that ref may yeild some gold. You notice the article by Dobbs about HTML, but I can’t find it online.

    “BTW, e6k, you may want to read the sentence bridging pages 7-8 of the November 29, 2005 Board decision in 09/077,337. Might teach you a little something about traversing the taking of Official Notice.”

    To be fair to this app he came as close as anyone I’ve seen to date to actually traversing. You notice the lack of any “please give us an affidavit” etc. nonsense in his response. He at least claims to traverse, even though he fails to, or perhaps I should say that his traversal consists entirely of nonsense “In the absence of an express showing of the asserted teachings in the prior art, the rejections is improper and should be withdrawn”. Lol, great traversal there champ. He at least tried to traverse, even though he apparently was at a loss to know how, he almost says that the fact isn’t capable of instant recognition, but just will not say it. If it were me then I might call him and get him to say it for the record, or record his lack of response. But even so, I’d give him an A for effort like the board did. Also, take note JD, the board did not reverse the official notice based on the “challenge”, they reversed based on his adequately traversing. At least it was adequate to them. Frankly, the feature taken notice of doesn’t seem to be proper subject matter for notice taking to me and that is probably also why they felt his traversal was adequate.

    As to the other case, in light of the affidavit then I suppose as long as the exhibits are taken to actually be dated properly (which I can find no evidence of and might be fatal) then it appears that I do not have art on hand for it. And frankly, if he’s got an affidavit back to 1996 then the application may very well be legit.

  90. 77

    “Filing date = 1997”

    Keep in mind that 09/193,787 claims priority to a provisional filed November, 1996. And their 131 Declaration establishes invention prior to July 7, 1996.

    Need more than 10 minutes?

  91. 76

    “Well, it does. It’s like holding up Britney Spears as an example of how the media invades people’s privacy.”

    At least this straw man is funny.

    Why does the number of continuations filed from 09/193,787 or 09/077,337 disqualify them as examples?

    Here was your request: “But I’ll ask again: show me an example on PAIR of a claim that should have issued but didn’t because of a “bad” (i.e., objectively, unambiguously incorrect) anticipation or obviousness argument. Just one.”

    In 09/193,787, the examiner made a rejection under 102(e). The applicant ante-dated the reference with a 131 affidavit, but the examiner refused to withdraw the rejection because, he claimed, not all of the inventors signed the affidavit. That is not required. The Board reversed.

    There’s your “bad” (i.e. objectively, unambiguously incorrect) anticipation rejection.

    In 09/077,337, the examiner took Official Notice. Applicants challenged the taking of Official Notice. No evidence supplied by the examiner. Reversed.

    There’s your “bad” (i.e. objectively, unambiguously incorrect) obviousness rejection.

    Now explain why these TWO examples I’ve provided don’t qualify.

    BTW, e6k, you may want to read the sentence bridging pages 7-8 of the November 29, 2005 Board decision in 09/077,337. Might teach you a little something about traversing the taking of Official Notice.

    Don’t say I didn’t tell you so.

  92. 75

    “JD if someone even presented an examiner with an appeal brief that was as long as those presented above I’m afraid it’s my opinion that they just invited the examiner to reopen ivo new art for about 5 more years spending about 30 minutes on each nonfinal that goes out.”

    Thank you for your honesty. It is refreshing. You admit that examiners are simply making up BS rejections (spending about 30 minutes) rather than defending all of these totally rock solid final rejections they are issuing. Gee, I wonder why they would do that?

    Of course, everybody already knew that. Except Mooney.

    “In any case, if I have a piece of 102 art for claim 1 of 09/193787 are you interested in knowing what it is? If I found it in under 10 minutes with a word search that is 2 words long with @pd<=19990101 will you admit that the claim was an overclaim to begin with? Is this your case?" Not my case. But yes, I'm interested in your prior art. Let us know what it is and then make a prima facie case of anticipation with it. Don't just simply say, "Oh well, this prior art here clearly anticipates it." Make your case. If you do, then I'll agree it's an overclaim. Oh, and keep the reliance on inherency to a minimum. Meaning, if you can't back up any inherency argument you need to make the case with some other extrinsic evidence, or some darn good technical reasoning, don't even bother. "I didn't spend too much time on it, but it appears to me that it is a 102." Congratulations. You have just accurately described the current state of examination at the PTO. "So, let's assume for a minute that this case is indicative of the examiner getting it wrong for awhile." This is not a case of the examiner getting it wrong for awhile. I know that. You know that. Heck, even Mooney knows that. This is a case of the examiner being explicitly ordered by his superiors to never allow the application. Plain and simple. Same goes for 09/077,337. Let's dispense with the phony naivety, shall we?

  93. 74

    “As for my example of corresponding US and EP cases, contact me offline and if you agree not to post the serial or patent number on this or any other site, I’ll give you a clear cut example.”

    Huh? This is crazy talk.

    “I already gave you two examples: 09/193,787 and 09/077,337. But you seem to think that because a lot of continuations have been filed from those cases, that that somehow disqualifies them from serving as examples of atrocious, unlawful behavior by the PTO.”

    Well, it does. It’s like holding up Britney Spears as an example of how the media invades people’s privacy. But go ahead and keep pushing those examples. See how far you get it.

  94. 72

    “You’ll recognize of course that, in spite of KSR, patents are still being issued all the time. Lots of them. Less than before? We can only hope. Is it more difficult to overcome an obviousness rejection. Probably. It’s probably especially difficult for prosecutors who relied on their entire careers on strict-TSM style bullcrxp arguments to get around the art. But then, we can’t choose our clients. Or can we?”

    Hey, I think KSR was the right decision. What I find amazing is that the examiners in my art are still mostly incapable of articulating a decent 103 case. In fact, in most cases they appear to be dead set on making up weak 102s instead. (I don’t blame the examiners on either of these points; I don’t think they’ve been properly trained on life after KSR.)

    I simply can’t advise a client to walk away from a case when the office action on the table relies on an invalid 102, if the client is anxious to pursue the claims. I have to tell the client that we will almost certainly get past that. (I won’t put it quite that strong to the client, of course.) On the other hand, if the examiner puts together a true prima facie case on 103, then I get to tell the client “Hey, we can argue, but at some point this is a judgment call on the obviousness point.” My clients will walk away from a losing battle, and I’ve got more than enough work. But the PTO won’t even use this gift from the Supreme Court correctly. Instead, they’re distracted with nonsense like trying to squeeze an applicant’s duty to search out of the existing rules and case law. It’s a darn shame, because they’re wasting everyone’s time and money.

  95. 71

    JD if someone even presented an examiner with an appeal brief that was as long as those presented above I’m afraid it’s my opinion that they just invited the examiner to reopen ivo new art for about 5 more years spending about 30 minutes on each nonfinal that goes out.

    In any case, if I have a piece of 102 art for claim 1 of 09/193787 are you interested in knowing what it is? If I found it in under 10 minutes with a word search that is 2 words long with @pd<=19990101 will you admit that the claim was an overclaim to begin with? Is this your case? I didn't spend too much time on it, but it appears to me that it is a 102. Filing date = 1997, I presume 102e was in some kind of similar effect as it is today at that the dates that this was filed and examined? You want it? Or should I let the overclaim go all the way to issue so someone can be sued and then have the claim invalidated on the first day of litigation? So, let's assume for a minute that this case is indicative of the examiner getting it wrong for awhile. We have some bad examiners, what's your point? There are plenty, I assure you, plenty, of bad practicioners.

  96. 70

    MM,

    You don’t seem to realize that most applications filed are filed by companies seeking to legitimately protect their products. A good portion of my clients are mid-sized companies. They’re not filing patent applications with the hope of getting claims to sue someone with. They’re filling applications to protect their products and the innovations of their engineers. Sure, if a competitor infringes, they’ll sue, but you act as though most patents are filed solely to generate money via lawsuits. That’s simply not true.

    Without patent protection, how can the small or mid-sized business ever stand up to the big guys? The big guys could just reverse engineer their products then force them out of the market.

    I’m quite sure that some applications are filed by trolls with the intentions of suing, but you can’t put a stop to that without harming the legitimate business of many, many companies. That would be like eliminating tort claims because some people file frivolous claims. It’s just a necessary evil.

  97. 69

    “A bunch of data about people having to wait in line a long time at the DMV doesn’t prove that good drivers are being systematically denied licenses for arbitrary or capricious reasons.”

    Nice straw man.

    Having your application for a patent rejected on baseless, arbitrary, capricious, and unlawful grounds, and then when you appeal, having those baseless grounds withdrawn and substituted with new, equally baseless grounds, and again, and again, and again, ad infinitum, is not the same as simply waiting in line for a driver’s license.

    Do you make the same silly analogies in front of judges and juries?

    I already gave you two examples: 09/193,787 and 09/077,337. But you seem to think that because a lot of continuations have been filed from those cases, that that somehow disqualifies them from serving as examples of atrocious, unlawful behavior by the PTO. Let’s just ignore the illegal suspension of action and improper request for information issued by the PTO. You don’t like the claims, so whatever illegalities the PTO chooses to commit is fine with you.

    And I’m sure you’re going to do your usual, “Those claims are clearly unpatentable under 101 and are so obvious that nobody ever bothered to disclose them” BS that you always do, all the while ignoring the fact that 1) no 101 issue has ever been raised by the PTO in either case, and 2) the examiners have never been able to present a prima facie case under 103, despite having been reversed by BPAI no less than THREE times.

    And I also recall that I asked you to explain why the PTO can’t make a prima facie case against either of those applications that is affirmable by the Board and your answer was what? That’s right, your answer was complete silence. The same answer you give every time somebody asks you to provide some prior art, or any evidence, that establishes a prima facie case.

    My guess is that if you did bother to respond, all we would get from you is the same old, “It’s so obvious nobody bothered to disclose it.” Great.

    But no, there are no examples of the PTO arbitrarily and capriciously refusing to allow a claim.

    As for my example of corresponding US and EP cases, contact me offline and if you agree not to post the serial or patent number on this or any other site, I’ll give you a clear cut example.

    My prediction is that all I’m going to get from you is more straw men and bad analogies.

  98. 68

    “The Board’s role is not to examine the application. Applicants should not have to appeal to get an examination. What are you not getting about that?”

    The relevance of that situation to the unproven assertion that worthy, plainly patentable patents aren’t being issued because of “bad rejections.”

    A bunch of data about people having to wait in line a long time at the DMV doesn’t prove that good drivers are being systematically denied licenses for arbitrary or capricious reasons.

  99. 67

    “That’s right, which is why Mooney’s challenge to produce an “objectively valid claim” that was improperly rejected is so absurd. This is also why nobody in our system ever has the burden of proving that a claim is not obvious – it can’t be done.”

    Maybe this is true, Leopold. It’s related to the issue at hand here but it’s not the same. If what you say is true, then KSR is slowly but surely accomplishing what it was intended to accomplish: prevent the issuance of patents to trivial “inventions”.

    You’ll recognize of course that, in spite of KSR, patents are still being issued all the time. Lots of them. Less than before? We can only hope. Is it more difficult to overcome an obviousness rejection. Probably. It’s probably especially difficult for prosecutors who relied on their entire careers on strict-TSM style bullcrxp arguments to get around the art. But then, we can’t choose our clients. Or can we?

    The main issue again for the “bad rejection” whiners is that the fundamental assertion just doesn’t hold water without concrete, unambiguous examples of what is being complained out. I’m referring to rejected claims that any reasonable practitioner would agree should be patentable.

    Now, let’s see them. As I indicated, we start with one. But you’ll need a hell of a lot more to make your case.

  100. 66

    “The corresponding US case is rejected with inane references found as the result of some poorly conceived word search, or the examiner cobbles together a couple/three of the “A” references from the ESR and makes a nonsensical rejection.”

    Link us to the application on PAIR so we can see what you are talking about.

    “You said: show me just one.
    You admit that you’ve been shown just one.”

    Uh, no. I said that “we were getting somewhere.” Some (most? all?) of the appeals at the Board are close cases. That’s not what we’re talking about. We’re talking about plainly incorrect art-based rejections that are as laughable as the invalid junk that the PTO issues and which applicants (contrary to the bizarre claims of some commenters) routinely seek.

    “You well know that in the reality-based world many inventors can’t afford an appeal. Their patents die on the vine due to bad rejections ”

    Oh, so there must be tons of those. Show me one. Show me a really sick one that we can all agree was a really “bad” rejection.

  101. 65

    “Now we’re getting somewhere. Except … Is the Board of Appeals currently overturning rejections at some amazing rate?”

    MM:

    No.
    Now we’re switching our circus pony midstream for a horse of a different color.
    You said: show me just one.
    You admit that you’ve been shown just one.
    So suddenly it’s a new game for you about the “amazing rate” of reversals at the BPAI.

    You well know that in the reality-based world many inventors can’t afford an appeal. Their patents die on the vine due to bad rejections and never get a chance of revival at the BPAI. Besides, even if you win before the BPAI, the examiner can turn around and issue new grounds. The examiner can keep you spinning in rejection limbo forever. Bad examiners do. Bad SPE’s do.

  102. 64

    “Is the Board of Appeals currently overturning rejections at some amazing rate?”

    Are you unaware that, by PTO (mis)management’s own admission (e.g. Mr. Love’s presentation to the AIPLA in May, 2007), 50+% of all cases in which an appeal brief is filed never make it to the Board because the examiner withdraws the rejection and re-opens prosecution?

    You might want to review David Boundy’s recent comments on the proposed BPAI rules (which the PTO has hidden under the “Paper Work Reduction Act” page of its website, instead of the usual “Public Comments” page) where he establishes (with actual data obtained through FOIA requests) that 80-90% of rejections that are appealed are effectively reversed by either the examiner withdrawing/re-opening or the BPAI reversing the rejections.

    The Board’s role is not to examine the application. Applicants should not have to appeal to get an examination.

    What are you not getting about that?

  103. 63

    “I realize that the alternative — that many people are just whiners who think the world revolves around their patent applications or those of their clients — is difficult for some to accept. Try harder.”

    § 10.84 Representing a client zealously.
    (a) A practitioner shall not intentionally:
    (1) Fail to seek the lawful objectives of a client through reasonable available means permitted by law and the Disciplinary Rules, except as provided by paragraph (b) of this section. …

  104. 61

    Dear Erez & Leopold,

    I haven’t been following the cases being discussed, but I don’t see how your comment to Leopold, i.e.,

    “determining what is obvious is easy but not what is not-obvious”

    can be true. TSM is the ONLY objective means to determine obviousness OR non-obviousness. As Dennis pointed out last year (as memory serves), TSM can determine obviousness, and, if PHOSITA of-that-time teach away from a particular invention – which of course is rare – that can be used to determine non-obviousness.

    Everything else to determine obviousness/non-obviousness is illusive, because everything else devised as a test is subjective and can vary widely, for example, depending on which “lawyer’s argument” in an infringement battle you (or an examiner or a judge) personally like better, the inventor’s or the infringer’s, whereas TSM, and only TSM, is evidence-based.

  105. 60

    “we have a problem: determining what is obvious is easy but not what is not-obvious.”

    That’s right, which is why Mooney’s challenge to produce an “objectively valid claim” that was improperly rejected is so absurd. This is also why nobody in our system ever has the burden of proving that a claim is not obvious – it can’t be done.

    KSR has given examiners 7 or 8 different ways, or “rationales,” including TSM, for determining that a claim is obvious. But most of the examiners I’m working with seem incapable (or unwilling) to put together a decent obviousness argument.

  106. 59

    “As for applicants ‘invest more time and money overcoming bad rejections’ I have no idea what you are talking about. What makes you think that ‘bad rejections’ are necessary to lower the allowance rate? Can you show me an example of a ‘bad rejection’ that prevented an objectively valid claim from issuing? Just one would be nice. But I’m guessing your whine is like many of the others that have been heard around here: baseless and without unambiguous, objective facts to justify it. You are just moaning because you can’t get your client the broad claims they want. Boo hoo hoo hoo hoo!! And it’s all the PTO’s fault. Right. Got it.”

    I have had several cases that sailed through the EPO. No “X” or “Y” references on the ESR. Novelty and inventive step acknowledged for all claims from the very first communication from the examiner.

    The corresponding US case is rejected with inane references found as the result of some poorly conceived word search, or the examiner cobbles together a couple/three of the “A” references from the ESR and makes a nonsensical rejection.

    It requires an appeal to get the rejections withdrawn.

    It is very clear, as others have noted, that you have never prosecuted an application in your life.

  107. 58

    pds and AllSeeingEye appear to be back in their hysterical ad hominem mode again. Funny how that happens about once a month.

    “Good claims get bad rejections all the time… many clients, especially institutional ones, will simply abandon the application – no crying involved.”

    Like I said, cavey: show me an example.

    step back “Do not; repeat, do not go to the Board of Appeals pages and find a decision where a 102 rejection is “reversed”.”

    Now we’re getting somewhere. Except that’s just the Board of Appeals doing it’s job. I’ve already admitted (because I’m a reasonable person) that mistakes are made. But these are examples of mistakes being corrected by the PTO itself.

    Is the Board of Appeals currently overturning rejections at some amazing rate? That might be useful info for the “bad rejection” whiners. In the absence of that, let’s see an example of Board decisions where the denial of a patent is unambiguously incorrect. There should be hundreds if not thousands of these to choose from if this “bad rejection” problem is as awful as it’s made out to be here by certain commenters.

    I realize that the alternative — that many people are just whiners who think the world revolves around their patent applications or those of their clients — is difficult for some to accept. Try harder.

  108. 57

    “Good claims get bad rejections all the time… many clients, especially institutional ones, will simply abandon the application – no crying involved.”

    Most of the abandonments I have seen are when:
    1) There was a comparable case pending or already allowed (or they filed a continuation/divisional/etc)

    2) Cost/benefit analisys was a serious issue. i.e. the benefits of obtaining the patent didn’t merit the costs.

  109. 56

    “Maybe they are getting ready to overturn, or limit, the crazy holding from State Street bank that led to biz methods patents.”

    Although I hope you are right, I just can’t see it happening.

    The CAFC is not going to eliminate subject matter from 101 without the Supremes cramming it down their throat. It’s just not in their DNA (which “discovery of” they believe is patentable, too!).

  110. 55

    Leopold: You are right about TSM/KSR, but we have a problem: determining what is obvious is easy but not what is not-obvious. Even if you have all relevant prior art before you, you can’t evaluate whether a given claim is patentable for not and whether it is outrageously broad or reasonably expresses your contribution. In Europe you can make a pretty good guess, but in the US?

  111. 54

    Re looking for fees over the last 10 years – find historical versions of 37CFR. Fee changes get posted in rule 17 and thereabouts. My law school had them on fiche, as might your local national archives outlet if UM has better things to do with their space.

  112. 53

    “Examine only a few claims
    I agree that only a limited number of claims should be examined with each Office Action. Let the Applicant file as many claims as they want, but they must select only a few, say ten, for examination in each round. This will reduce costs for the Applicants, reduce file wrapper estoppel and allow Examiners to do a better job.”

    I fully agree. Also, deferred examination would be beneficial to both parties imho.

  113. 51

    Interesting. Maybe they are getting ready to overturn, or limit, the crazy holding from State Street bank that led to biz methods patents.

    Long overdue!

  114. 50

    “Under TSM (until Examiners started ignoring it) there was an objective, though faulty, way to discuss whether or not an invention was obvious in the legal sense.”

    The only thing “faulty” about TSM is that it was misused as the sine qua non for obviousness. TSM is still completely valid as a means for demonstrating obviousness. However, under KSR, the lack of TSM can’t be used to prove non-obviousness.

  115. 49

    MVS, I would like to add some suggestions to your list:

    Provide some tool to determine what is not-obvious
    Under TSM (until Examiners started ignoring it) there was an objective, though faulty, way to discuss whether or not an invention was obvious in the legal sense. Now with KSR and Apotex it is easy to prove that something obvious is obvious, but when something is not-obvious an Examiner can simply do a Mooney-style something is “obvious because I say so”.

    The Examiners’ motivation to reject should be eliminated
    Too often an Examiner rejects claims on irrelevant art found in a superficial search until the Final. If the Applicant appeals, the Examiner can simply issue a new rejection with no penalty. If the Applicant files an RCE, the Examiner gets a point for no work.

    Examine only a few claims
    I agree that only a limited number of claims should be examined with each Office Action. Let the Applicant file as many claims as they want, but they must select only a few, say ten, for examination in each round. This will reduce costs for the Applicants, reduce file wrapper estoppel and allow Examiners to do a better job.

  116. 48

    MM challenge: Show me just one “bad” rejection.

    Tempered response: If we did, it would upset the space time continuum in your fantasy universe and it would cause instant collapse of your artificial world. So please heed this warning: Do not; repeat, do not go to the Board of Appeals pages and find a decision where a 102 rejection is “reversed”. The consequences to your space time, fiction versus reality continuum could be disastrous.

  117. 46

    This strategy is absolutely killing small business! 5 – 10 years from now, inventions which should rightfully been allowed will be replaced by products from foreign suppliers. Out of curiosity, was there ever a notice and comment period on the USPTO’s quality initiative?

    In my opinion, an “error rate” of 5 – 10% is reasonable as no person or agency is omnipotent.

  118. 45

    they can probably get royalties from some small (or not so small) companies by asserting the broad claims as many companies will rather pay a relatively small royalty
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  119. 44

    “As for applicants “invest more time and money overcoming bad rejections” I have no idea what you are talking about. What makes you think that “bad rejections” are necessary to lower the allowance rate? Can you show me an example of a “bad rejection” that prevented an objectively valid claim from issuing? Just one would be nice. But I’m guessing your whine is like many of the others that have been heard around here: baseless and without unambiguous, objective facts to justify it. You are just moaning because you can’t get your client the broad claims they want. Boo hoo hoo hoo hoo!! And it’s all the PTO’s fault. Right. Got it.”

    Good claims get bad rejections all the time… many clients, especially institutional ones, will simply abandon the application – no crying involved. And your armchair obviousness determinations hardly carry the “smell” of unambiguous objective facts. I thought you were supposed to take a vacation? Guess Nurse Ratched wouldn’t let you out of the hospital.

  120. 43

    Michael Valentine Smith | Sep 11, 2008 at 08:53 PM

    Thank you for your post, MVS. You put a lot of thought and time into it. I don’t have the time to comment in detail on it. Yes, patent practice has changed considerably. I have been in private practice since the early 80’s. Back then, most clients would just say “get us a patent”. They didn’t care much about the scope because the courts really didn’t respect patents. So our job as patent attorneys was easy — a short spec, and a couple of drawings. And the claims would be few in number and relatively narrow. The examiners who I think knew the art better than today’s examiners, would work with us to get allowable claims and one or two actions later we would have our patent. (Don’t get mad at me, examiners, but the focus now is on word searches and not in learning the pertinent art in the shoes.) Those patents are not of much value today as the claims can be easily designed around and the specs might even not satisfy today’s 112 requirements. Then the courts at long last (ccpa and fedcir) started according value and respect to patents. So applicants and attorneys started being more aggressive (and maybe less lazy). Additionally, word processors allowed us to prepare longer applications. (My first secretary who used an electric typewriter with no memory, told me that I got one draft and one final, that is it.) The Congress then started stealing PTO funds and thereby prevented the PTO from expanding, hiring the new examiners needed to keep up with the ever increasing number, length and complexity of applications, and also with the development of new technologies, biotech, computer, nano, etc. etc. With all of these developments, the PTO did not adjust the count system, thereby exacerbating the retention problem. It also failed to keep up with development and acquisition of new search tools for the examiners, and with modernizing the classification system. Patent attorneys and patent examiners just tried to work within the system to do their jobs. PTO management then responded by attacking Iraq

  121. 42

    “That is the game in a nutshell. Everything else is noise. When filing rates went up in the 80s and the PTO began routinely issuing broad, invalid garbage of the sort practitioners look back on now with amazement or nostalgia, more and more people decided to buy their own tickets to play the PTO lottery. And then things got very silly.”

    Spoken like a tiresome arrogant pr1ck, and like a true stranger to how things really work. I have always been fairly confident that you didn’t practice. If you are even involved in patent law, you probably think you are too smart to actually practice or something. Let me spell it out for you and anyone else who might be inclined to listen to your glib garbage.

    Assuming an application filed in the 80s was examined based on art that issued in the 80s (or to a very limited extent co-pending applications) the prior art was developed at least a couple years earlier. That means that an application filed in 1980 could have as some most recent art against it technology that was filed in 1978 or so. In 1978, they were still using vacuum tubes my friend. Its easy to look back at stuff that was invented 20 or 30 years ago with amazement. That’s why there is a rule against hindsight, because – as m0r0ns like you demonstrate every day – its so easy to fall into the trap of hindsight and see everything as obscenely broad look back from 10 or 20 years out.

  122. 41

    Arbitrarily saying that “too many patents are issuing” is just the kind of glib ignorance that is characteristic of Mooney. What do you expect from someone posting from a computer in the public library across from bus stop next to the methadone clinic where he is recovering from his preoccupation with crack. Mooney can also smell files to determine obviousness.

    Mooney’s aversion to patents soley on number, is identical to saying that “everything that can be invented has been invented.” And anyone in the biz should know where that kind of flat-earth society thinking leads. To files in the ceiling tiles, white wine, satin underpants, file jacket sniffing and excessive blogging from the public library to name just a few.

  123. 40

    “Filing a reexam is pretty simple and fairly inexpensive … try again. If the claim is that unpatentable as you make it out, it should be easily invalidated with a reexam.”

    Good point, pds

  124. 39

    @Leopold Bloom

    potentially as a “benefit” to the applicant, if an examiner receives an error on allowance the easiest way to “fix the glitch” for the examiner is to merely allow a corresponding number of applications to drop their error rate below the threshold required. In short, incompetence breeds incompetence (and the issuance of a plurality of applications based merely on not being able to correctly make a patentability determination).

  125. 37

    “That can’t be right. The Patent Office’s quality control team says that the rate of defective office actions is approaching zero.”

    And they say Timothy Leary is dead.

  126. 35

    “And some applicant’s (not all or even most, but some, which adds to the total problem) are out there trying to get obscenely broad claims just because they know that they can probably get royalties from some small (or not so small) companies by asserting the broad claims as many companies will rather pay a relatively small royalty than chance a court fight (or not be able to afford one).”

    Not even most, you say? So, uh, which applicants aren’t trying to get obscenely broad claims? I mean, which applicant, knowing that he/she can file a continuation to get a narrower claim, would not accept the grant of an obscenely broad claim if they were given the opportunity?

    Because the fact is (as you admit): they can probably get royalties from some small (or not so small) companies by asserting the broad claims as many companies will rather pay a relatively small royalty than chance a court fight (or not be able to afford one.

    That is the game in a nutshell. Everything else is noise. When filing rates went up in the 80s and the PTO began routinely issuing broad, invalid garbage of the sort practitioners look back on now with amazement or nostalgia, more and more people decided to buy their own tickets to play the PTO lottery. And then things got very silly.

    “the IP media (that LOVE to point out those “bad” or “$tup1d” patents that get issued that we all laugh at or to say “This was well known & should not have issued.” but can never supply to art to SHOW it was well known”

    That’s false. People routinely explain why issued claims are invalid in view of well-known art, and courts (and the PTO, during re-exam) routinely find issued claims anticipated in view of that art.

    But I’ll ask again: show me an example on PAIR of a claim that should have issued but didn’t because of a “bad” (i.e., objectively, unambiguously incorrect) anticipation or obviousness argument. Just one.

    I mean, there must be thousands of separately filed instances of that happening out there given the relentless moaning of certain practitioners. Let’s talk about just one. Any one.

  127. 34

    I don’t buy those numbers of only 10% of initial rejections being wrong. In my experience, that number is MUCH higher.

  128. 33

    Thanks MVS, for some good observations.

    Re one suggestion you made: “..a process (i.e., on the PTO web site) where anyone can propose prior art that should have been considered/used in the examination of an issued patent (sort of like post-grant examination). While the office would not have to do anything with this art (though it could institute a re-exam on its own), it makes it available for others to review & use against a patent that is improperly issued.”
    Such a system has actually existed since 1980, but almost no one ever uses it, or even knows about it, and in my one experience with using it the PTO did not even know how or where to file the submitted paper. It is 35 USC 301.

  129. 32

    Why has the allowance rate fallen so much over recent years?

    The answer is multi-fold & some of you will not like all of the answers. Short answer is there is a LOT of blame to go around & EVERYONE has a share in it.

    And I mean EVERYONE!! From PTO management (present & past for a least the last 15-20 years – decisions made and policies that were short-sighted), examiners, applicants, attorneys, Congress, bloggers (particularly those like Greg A) and the IP media (that LOVE to point out those “bad” or “$tup1d” patents that get issued that we all laugh at or to say “This was well known & should not have issued.” but can never supply to art to SHOW it was well known), and the Courts (e.g., Festo). You can even throw in things like GATT, the various presidents, and attempts to “harmonize” patents. We all have a share of the blame for getting us where we are.

    So, enough blame assigning. How about getting to some actual issues and fixes for the system?

    The chart (no matter where is came from), while interesting, is, like too many “stats” Dennis gives here (sorry), only a part of the picture and is out of context.

    For example, for pre-GATT & “transitional” cases why not include FWCs & CPAs (the precursors of an RCE) in the chart? Without this, the inclusion of RCE is meaningless. It is out of context. How many actions did it take for each disposal? Many other items are needed to fully put the chart in context.

    One of the large factors for allowances have dropped is the push to lower the allowed error rates. While, in reality, this was probably not too big of a problem (actually bordering on a non-issue, I think) it became an issue thanks to the likes of Greg A, the blogs & IP media. In reality, if it was a “significant” patent, the patent would probably be litigated (or at least extensively back-searched by outside firms) no matter how good the examination was. And re-exam & reissue are available to correct any “too broad” allowances if they were issued.
    But the bad PR (basically the outside holding up the “stick” patent or the “swing” patent, etc. & laughing at the office & indicating that this was an example of ALL patents & examinations) led to those in charge (in my opinion) to get prickly & decide that that was going to stop no matter the cost. They decided to “prove” that we issue valid patents & not junk. And they set up allowance error rates for us to meet (in “any manner needed”) to “prove” this & to get people to stop laughing. So, the baby got thrown out with the bath water & ALL allowances are subject to extra scrutiny. And this led to the mind-set of some SPEs (and directors & even some examiners) that “If nothing is allowed, there will not be any errors & I will make my goal.” $TUP1D!!! Ultimately, we all have to pay for the “sins” of a few rather than just taking action on the few.
    One reform I would suggest is getting rid of the 2nd pair of eyes programs and putting more emphasis on the IPR error rates instead of the allowance error rates. I would also change how error rates are determined (a case with 1 claim, out of 40 claims total, which is improperly allowed (or rejected) should not have as much weight as the improper allowance (rejection) of a case with only 1 claim in it. I would also suggest having a process (i.e., on the PTO web site) where anyone can propose prior art that should have been considered/used in the examination of an issued patent (sort of like post-grant examination). While the office would not have to do anything with this art (though it could institute a re-exam on its own), it makes it available for others to review & use against a patent that is improperly issued. If it is something that is laughable, don’t worry about it & just laugh with everyone else. Like they say “S… happens.” ;)

    Another big factor is the increase in the filing of more claims and excessively broad initial claims (I do not have empirical evidence, but I think most people in the profession will agree with this & defineately most long term examiners will). Some of this is due to various court decisions (many of them questionable, at best) that cause amendments and file wrapper estoppel to be usable in extreme ways against the patent holder. Having to deal with this is not the fault of the applicant or attorney, but just the rules they/you have to deal with until decisions get overturned.
    However, some of this is also coming from the attorneys to try to get the applicant to claim ever broader claims (claims that they probably “should” know that there is art that reads on the claims). Whether this is just good advise (based on the preceding), an attempt to collect extra billable hours because they can foresee that this will extend prosecution, or an attempt to get extremely broad claims so that they can handle the inevitable litigation & get even more $$$ for the firm, I do not know for sure. I am sure that it would vary attorney to attorney & firm to firm. And I do suspect that each of these is true in some instances as there are unscrupulous people in all fields.

    And some applicant’s (not all or even most, but some, which adds to the total problem) are out there trying to get obscenely broad claims just because they know that they can probably get royalties from some small (or not so small) companies by asserting the broad claims as many companies will rather pay a relatively small royalty than chance a court fight (or not be able to afford one).

    Whatever the reason, exceedingly broad claims usually result in a prolonged prosecution and one or more RCEs. Too often, the actual inventive concept is not claimed in even dependent claims until the 1st RCE.
    One reform I would suggest is that the most narrow claim that you are willing to accept be filed prior to the 1st action (you can always claim broader than original, just not more narrow than the most narrow to start with). Ideally this would be part of a chain of dependencies, but not necessary. It would help to permit examiners to indicate what would be allowable much sooner and to actually know how narrow of a search is needed. When claims start out very broad, it is not unusual for an examiner to (understandably based on the production system) to search for what is claimed & just find & apply art that shows what is broadly claimed. I know that is not “by the book”, but it is reality. When a new limitation is added, the examiner finds that & adds it to the old art. Again, not optimal & often not even correct, but how it is. If there were at least some claims that were specific as to what the actual contribution to the art was, this would help ensure that the complete scope was examined up front & should help to speed prosecution.

    Most people that have been in the IP business for 15+ years (I’m around 25 years) will know that prosecution has changed drastically over the years and not for the better. There is more scrutiny on issued patents. All current & recent file histories are available on line for anyone to see. Some people are taking advantage (abusing) patents (i.e., “trolls”) in ways that only a few like Lemelson & Hyatt were years ago. Courts are all over the map in many of their decisions. Subject matter (computer programs & business methods) that didn’t exist/weren’t allowable years ago are now generally allowable & being filed for in droves. The examining job is harder by a large amount than it was years ago (actions need much more detail & explanation that was necessary 15-20 years ago. You attorneys have a lot more issues to deal with as well. On & on ….

    I could go on, but I think these are the main points & it is getting way too long :)

    Returning to the beginning, we are all to blame & we need to totally revamp the system (& NO, not the various rules packages) & anything short of that is just rearranging the deck chairs again. These are the reasons for the drop in allowances and until things drastically change (& a simple change of administration, be it McCain or Obama will not change this) the trend will, unfortunately, continue.

    MVS

  130. 31

    Before RCE’s there were CPA’s and before then, applicants would abandon the application and file a continuation to continue prosecution.

    Does your graph take this into account, Dennis?

  131. 30

    MVS, your comments are appreciated. However, take a look at Toupin’s presentation (link is in Dennis’ post above), at slide 6. It’s pretty obvious that the easiest way to avoid an “allowance error” is to never allow a claim. It’s also pretty obvious that if this the metric that management makes the most noise about, then the troops (especially the middle managers) are going to find a way to make it appear to get better.

    Noticeably absent from Toupin’s presentation, or any other presentation I’ve seen from the PTO, is this 9-10% IPR error rate that you mention. If top management isn’t pushing it, then it’s not going to get fixed. If top management never even mentions it, aren’t they tacitly endorsing the notion that “bad” rejections are OK?

  132. 29

    Leopold Bloom, you said:

    “The Patent Office’s quality control team says that the rate of defective office actions is approaching zero. Of course, they’re apparently defining ‘defective office actions’ as ‘office actions allowing a claim’.”

    However, you, like too many out there, are mixing up a few different things.

    1) “quality control” (assuming you mean OPQA – 2nd pair of eyes is addressed below) reviews both allowances AND IPRs (non-finals & finals) and provide errors for them separately. These are two different and distinct measures.

    2) The error rates are based on what OPQA kicks back, which is then modified based on TC response, and maybe some more “negotiating, and then an error is assigned or not.

    3) The allowance error rate has been hanging around 3.5-4% the last few years _based on the above #2_. ASAIK, OPQA reviewers are NOT told to find or not find more/less errors. What happens at the director level when negotiations can occur & errors assigned or not, I do not know.

    4) The IPR error rate, which is the “bad rejections” you all complain about (often rightfully), has been around 9-10% & this year may well be somewhat higher based on what I have been hearing. However, this stat does not get much pub. It SHOULD be the main stat to show how good/bad actions are in my opinion.

    5) If OPQA kicks back an allowed case, they have to provide specific rejections (not just “it’s not allowable”). And this still needs to be rebutted by or agreed to by the TC. And the TC is loathe to agree with proposed errors because that hurts their error rates & bonuses. So, actual reopenings from OPQA do not come easily.

    6) OPQA only reviews about 1 allowance & 1 OPR case, on average, from any given examiner in a given year. Out of the maybe hundreds of cases acted on, that is a very small sample for an examiner to worry about.

    7) The BIG problem with allowances not being permitted is the 2nd pair of eyes programs in many/most/all? of the TCs. Started in the business methods & has spread out. In this program, cases are often reviewed by SPEs that do not know the art & are kicked back because the reviewer “thinks” the claim(s) should be rejected. All too often this is done without any actual proposed rejection or even suggested prior art. And the examiner does not have much recourse except to reopen (somehow) because too often the person reviewing the case is their SPE. These are the situations that are the biggest problem for examiners & you all. Personally, I have heard some examiners compare the process to the secret police of Russia or Germany of years past.

    If we & you can get #7 taken care of, I think that many of the other issues raised with regard to the allowances will take care of themselves. As for some comments WHY allowances have dropped, I will add that shortly.

    MVS

  133. 28

    And let’s be clear: I’m not defending the PTO as the world’s greatest administrative agency, not by a long shot. The PTO stinks badly in many important ways.

    But allowing fewer patents is not one of them.

  134. 27

    The other reason patent prosecutors complain about lower allowance rates is obvious. Lower allowance rates -> less filing by clients who tire of throwing money away -> less work -> no vacation home in Aspen.

    And of course those prosecutors who are merely agents might have to go to law school to find a steady job. Oh, the horror.

  135. 26

    “My tech transfer office files a number of provisional applications all with separate express mail folders and fees ($17 per).”

    Your tech transfer office should seriously consider electronic filing. Maybe the tech transfer office should talk to the IT office?

  136. 25

    “It is at least equally likely (and probably more likely) that “bad” patents will continue to be issued while many applicants will have to invest more time and money overcoming bad rejections.”

    Wow, keep smoking that patent crack. Next thing you know you’ll be joining the commenters here who think that non-virtual compositions and methods should be unavailable as prior art against virtual compositions and methods. That would be sad.

    In fact, it is NOT at all “equally likely” that a lower allowance rate will result in the same number of bad patents being issued. And that is the issue here: the number of bad (read: ridiculously broad, laughably invalid, poorly examined) patents being issued.

    As for applicants “invest more time and money overcoming bad rejections” I have no idea what you are talking about. What makes you think that “bad rejections” are necessary to lower the allowance rate? Can you show me an example of a “bad rejection” that prevented an objectively valid claim from issuing? Just one would be nice. But I’m guessing your whine is like many of the others that have been heard around here: baseless and without unambiguous, objective facts to justify it. You are just moaning because you can’t get your client the broad claims they want. Boo hoo hoo hoo hoo!! And it’s all the PTO’s fault. Right. Got it.

  137. 24

    “It is at least equally likely (and probably more likely) that “bad” patents will continue to be issued while many applicants will have to invest more time and money overcoming bad rejections.”

    That can’t be right. The Patent Office’s quality control team says that the rate of defective office actions is approaching zero. Of course, they’re apparently defining “defective office actions” as “office actions allowing a claim”…

  138. 22

    Unrelated question:

    My tech transfer office files a number of provisional applications all with separate express mail folders and fees ($17 per).

    Has anyone just included multiple provisionals in a single express mail folder?

    Wondering if the PTO, in cahoots with the US Post Office, de facto required separate envelopes. Thinking of just trying this one day to see what happens. Any input would be appreciated.

    Thanks,

  139. 21

    money – 30% – based on what?

    the only equitable allowance rate is to objectively look at the greatest period[s] of job growth or similar measure of equitable industrial success (not patent pirates & robber barons but real periods of increased productivity attributed to new business formation & related growth – namely jobs) – for America.

    if it meets those objective standards that is the correct average … since 1995 & AIPA publications the rates have dipped – defensive patents? partisan policy? increased cost of prosecution? lack of real sanctions in litigation? failure to provide consistent interpretations (law, statute, mpep) that an INVENTOR can understand? government being the largest growth business? …

    what kinda silly arbitrary abstraction do you come up with when the applicant is paying for the prosecution & the government diverts the fees for other purposes …

    no client = no lawyer … billable hours are getting quite conceptual today my guess is that you’ll see increased pressure on the notion of time versus scope of work & more in-house opportunities – then we’ll surely see applications down by 10-30% and harmonize to the delight of large corporate filers …

    hooray for markets without government interference – except patents are not a market they are our industrial policy

  140. 20

    JCD:

    Malcolm Mooney is not a patent prosecutor, especially not one in the non-biotech arts.
    Accordingly, I treat his comments like they are coming from a lay person, an obnoxious one at that.

  141. 19

    Malcolm, I am really curious as to what factors and calculations allowed you to arrive at 30% as the “correct” number. I think it would be much safer to say that none of us have any idea what a “correct” number is, but that right now examination, at least from a practioner’s viewpoint, appears to be unusually poor. You clearly feel that too many broad patents are being issued in certain subject areas, but simply lowering the allowance rate will not necessarily mean that these types of patents will no longer be issued. It is at least equally likely (and probably more likely) that “bad” patents will continue to be issued while many applicants will have to invest more time and money overcoming bad rejections.

  142. 18

    The allowance rate is still too high but heading in the right direction. Given the garbage being shoveled at the PTO these days, I’d say a 30% allowance rate is the maximum “correct” number until the rate of filing drops to roughly 10-30% of what it is presently.

  143. 17

    No. I prefer competence combined with a respect for the law. What we have now is arrogant and willful ignorance coupled with a complete disregard for the law.

  144. 15

    “As to the presentation I have to say that it seems to me like with the lowering allowance rate the balance of what makes sense in terms of $ for applicants may well be shifting quite a bit. If you can avoid the cost of filing an RCE and the final that led to it then the 1000$ search fee is a drop in the bucket. Of course, the people that really wouldn’t like this would be the one’s that just want a broad claim regardless of whether or not they invented it or it was non-obvious.”

    Your crystal clear logic and writing have been sorely missed, e6k. Welcome back.

    LOL

  145. 14

    “1) count the number of substantive office actions that are required before a patent is issued.”

    A fascinating study would be to graph the number of OA required to get a notice of allowance vs time, particularly if you could break it down by art unit.

  146. 13

    Serious nose dive.

    That In re Bogese case is an interesting case.

    As to the presentation I have to say that it seems to me like with the lowering allowance rate the balance of what makes sense in terms of $ for applicants may well be shifting quite a bit. If you can avoid the cost of filing an RCE and the final that led to it then the 1000$ search fee is a drop in the bucket. Of course, the people that really wouldn’t like this would be the one’s that just want a broad claim regardless of whether or not they invented it or it was non-obvious.

    Where’s our bilski? If it’s written hand that sucker down!

  147. 11

    “Don’t assume malignant intent when mere incompetence fully explains the actions of a branch of the government.”

    However, malignant intent coupled with incompetence is a lethal combination, as we are currently experiencing.

  148. 10

    Tazistan Jen:

    Note that the effect is unfairly enhanced by the use of a y-axis that doesn’t go to zero. It has dropped by less than half. Why did they exaggerate that so? I dunno.

    Don’t assume malignant intent when mere incompetence fully explains the actions of a branch of the government.

    Sloppy, just like the logic in the presentation.

  149. 8

    The way the USPTO is counting RCEs is absurd. It would be much more effective for their point to:

    1) count the number of substantive office actions that are required before a patent is issued.

    2) count the number of applications for which a first substantive Office Action rejects all the claims and no patent ever issues in the family.

  150. 7

    What Toupin fails to mention is that the allowance rate has dropped so much because otherwise allowable applications are kicked back to their examiners with instructions to “reject it.” I called the examiners on numerous final rejections to ask WTF and they explain that they “wanted to allow it to get my count but was told not to.” So now due to the USPTO’s new “quality control” I have a stack of bad final rejections. And they blame the pendency problem on the attorneys?

    As the above poster stated, time to clean house. It will happen early next year.

  151. 6

    “I can see MM now … screaming at his secretary “clear my docket for October!!!!! I need to be able to blog all month.”

    As Mooney doesn’t, and has never, actually prosecute cases, that shouldn’t be too hard.

  152. 4

    “Bilski is coming”

    I can see MM now … screaming at his secretary “clear my docket for October!!!!! I need to be able to blog all month.”

  153. 3

    “It probably will have broader scope than either In re Comiskey or In re Nuijten”…

    Any body know what he means? Upheld of remove business method patents?

  154. 2

    I love the cite to In re Bogese on slide 16 of Toupin’s presentation. Has anybody over there in PTO (mis)management fantasy land ever bothered to read the case?

    The time to clean house is long past due.

  155. 1

    I can’t believe people can make the arguments in Toupin’s slides with a straight face.

    After all that sloppy logic, an agency is trying to re-define the ROP (reasonable objective person) from first year law school by fiat.

    ugh.

    I can’t believe they do this in the face of 400,000+ applicants each day doing what they do. Each one of the 400,000 has decided what is the best bang for the buck when doing searches.

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