Responding to Examiner’s Charge of Burying Reference

In another recent first office action, the Examiner complained of the “voluminous references” submitted by the applicant. In this case just over 75 references were submitted.

[T]he cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with the Applicant’s duty of disclosure. Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948 (S.D. Fla. 1972). . . . accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), stating that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.” Id. [The Molins] case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references.

Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statements is known to be material for patentability as defined by 37 C.F.R. § 1.56, applicant should present a concise statement as to the relevance of that/those particular documents therein cited.

The Examiner here appears to only recommend more detailed statements about the submissions. Under 37 C.F.R. § 1.105 and Star Fruits, the Examiner could have instead officially requested such information.

Earlier in the year Shell Oil proposed an alternative rule that would allow an Examiner to “decline consideration of [a] reference” when the reference’s relevance could not be determined. In response, the “attorney could concisely point out the section or portion of the reference believed to be relevant or submit a concise statement of the relevance of the reference as a whole.” [Link]

82 thoughts on “Responding to Examiner’s Charge of Burying Reference

  1. 82

    “You should mention that when we go to see the judges at Tafas. When they lol @ u, I’ll try not to laugh too hard k?”

    And when they bury the claim examination and continuation rules, I’ll try not to laugh at you.

  2. 81

    “A method or process, as indicated above, is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus [or product] must distinguish in terms of structure.”

    OK. I don’t think there’s any dispute that an apparatus claim must be drawn to an apparatus and a method claim must be drawn to a method. But that’s a little different from what you said:

    “Distinguishing in functional terms of a structure that is in the preamble and isn’t even the structure the claim is covering doesn’t seem to me like an appropriate way to distinguish since you are not actually distinguishing in terms of the functionality of the claimed structure, you are distinguishing in terms of the functionality of a structure on the claimed item, specifically the “information”. That is of course if you wrongly consider “information” to even be a structure. And that is of course if you take the position that the only thing which distinguishes the claimed invention from the prior art is not just a method step which is caused by a structural feature. And of course if you take that position, as I do, then the claim falls under the basics of how a claim must distinguish over the prior art.”

    Where’s the case that says that?

  3. 80

    “It’s time to abolish Rule 56.”

    You should mention that when we go to see the judges at Tafas. When they lol @ u, I’ll try not to laugh too hard k?

  4. 79

    Ex Parte Forsyth, 151 USPQ 55, 56 (Bd. of Appeals 1965) discusses the difference between apparatus and method claims. The same is presumed to be true about product and method claims in Lyell where they discuss the difference in product and method claims.

    link to ipmall.info

    In relevant part:

    “A method or process, as indicated above, is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus [or product] must distinguish in terms of structure. This is so elemental as not to require citation of authorities. The Patent Act of 1952 did not abolish the then existing different classes of invention. ”

    And I might add, even if the case did not say that, I’ve yet to hear any lawyer actually argue that a product claim may distinguish itself from the prior art in terms of method steps barring a product by process, something which Beauregard claims clearly are not.

  5. 77

    “Your paranoia of the QR boogey man is not sufficient grounds for refusing to consider the references. ”

    I didn’t say that it was. What I did say was that it was a problem that is out of hand. Doubling the search time (A classification search SHOULD be less than 1000 in the majority of cases if our classification were worth a dam) is unreasonable. And I then gave an application that I am working on as an example that we have, or at least are approaching, times when unreasonable amounts of refs are being cited. Further, an IDS was never meant to be nothing more than an excuse to waste the examiners time.

    Applicants are to be presumed to be acting in good faith, and submitting 500 references is, unfortunately not acting in good faith. Argue about whatever else you like, but there is little to be said about that.

  6. 76

    “Some applications have more than average number of claims and some have less. Some applications have more than an average of cited references and some have less. Doesn’t it all even out, from one examiner to another?”

    That’s the theory behind PTO (mis)management’s “one time fits all” examiner production scheme.

    How’s that working out for us?

  7. 75

    Mike, how long does it take you to review 300 references and “whittle” them down to a “useful” number?

  8. 74

    “500 refs on an IDS on the other hand make me responsible for having searched through those with a fine toothed comb. Being responsible for having to search through with a fine toothed comb means the comb just had its bristles multiplied. In other words, IDS ref’s have to be cleared a better than any extra subs I might choose to search.”

    Wrong. I’ve already told you, many times, that the references submitted in an IDS do not require any more consideration than the references reviewed during your search. Read MPEP 609.

    Your paranoia of the QR boogey man is not sufficient grounds for refusing to consider the references. It is most certainly not grounds for making improper requirements of the applicant or attorney.

    “Take QA out of the picture. Fine. Maybe you’re right.”

    Take “maybe” out of that, and you’re right, I am right.

  9. 73

    Some applications have more than average number of claims and some have less. Some applications have more than an average of cited references and some have less. Doesn’t it all even out, from one examiner to another?

  10. 72

    “Which Examiner do you trust to do “the right thing”? The one that wrote this the below?”

    I would prefer something a tad more formal.

  11. 71

    Luckily, I am not an Examiner but a patent agent. Just moved from a law firm to an in-house position.

    I review several hundred (200-300) patents and applications per search report/patent application to identify the most relevant references. As outside counsel it was very difficult to meet time expectations for searches/patents and do a good review of the art. Now that I’m in house, some of that pressure is relieved.

    I don’t think I need to cite all 300 patents just because they came up on a search. And if I did cite all 300 patents, the search report would be worthless to anyone reviewing it (unless they invested 20+ hrs in the process). The patent drafters need to whittle down the number of references and reduce IDSs to make them useful.

    The CAFC supports this (see Star Scientific Inc. v. R.J. Reynolds Tobacco Co. [PRECEDENTIAL] ; Eisai Co. Ltd. v. Dr. Reddy’s Laboratories, Inc. [PRECEDENTIAL] ). “it affirmed that the prior art patent was immaterial by definition because it was cumulative with the disclosed references, but even if the patent had been material, the lack of clear and convincing evidence of intent to deceive would have imposed an insurmountable bar to finding inequitable conduct.”

    You remove the “intent to deceive” by saying here’s the most recent art, it is cumulative to all prior art. Saves you $$$ not having to generate massive IDSs and does not create the appearance of burying a reference.

    If you really want to be detailed, identify the reference #1 as cumulative to references #2-200 so the Examiner won’t have to waste time on references 2-200. To further simplify, justify your cumulative statement by saying, “reference 1 is cumulative to references 2-200 because it is the most recent.” That way if a reference (#5) is found to be more relevant, you still have a “reasonable statement” that is not deceptive.

    I think the CYA has gotten too thick, especially when people are citing references over 10 yrs old. Some even cite references from the 1800 just so they don’t have to make a decision.

  12. 70

    “… then why can’t an Examiner simply do the right thing and fire the diamond bullet?”

    Which Examiner do you trust to do “the right thing”? The one that wrote this the below?

    “Then I would merely argue that you cannot distinguish the functionality of the structure in terms of the functionality of the information stored thereon, because you are not distinguishing the structure in terms of its functionality, you are DISTINGUISHING it from all other art, by the functionality of something other than the structure, the functionality of the information thereon. The keyword here is DISTINGUISHING. How does this claim DISTINGUISH? The only way it distinguishes is by the functionality of the information, not by the functionality of the storage medium, because any prior art storage medium will function to store any information, the distinguishing part is the specific information.”

  13. 69

    “And this whining about the number of references has to stop. How much time does an examiner give to the hundreds, if not thousands, of references reviewed during a classified search? There’s no requirement that the examiner give the references submitted in an IDS any more “consideration” than the references in the examiner’s search.”

    Indirectly there is. What goes on my search report is my business. What goes on your IDS is out of my hands. What QA reviews thus is made of two parts, what is controllable by me, and what is not. The mere fact that I searched 5 additional subs (and maybe missed 40 102b’s) doesn’t mean that QA needs to know that 5 subs were combed through with a fine tooth comb. QA needs to see a classification search end of story. 500 refs on an IDS on the other hand make me responsible for having searched through those with a fine toothed comb. Being responsible for having to search through with a fine toothed comb means the comb just had its bristles multiplied. In other words, IDS ref’s have to be cleared a better than any extra subs I might choose to search.

    Take QA out of the picture. Fine. Maybe you’re right. However, at the current rate of growth, eventually we’ll be getting 1000’s of refs as an IDS. If we assume 1000 refs in a sub search (if the subs were taken care of properly it would always be way less) then it would be improper to double the required search for an app without additional time/fees. Sorry, it just is. And we’re already halfway to 1000 at the least, my 500 ref case keeps gaining more and more refs as the actions go out. Any DIV filed from it will be hitting 600 no problem.

    Anyway, time for me to head outta here for a bit.

  14. 68

    “But it’s way above e6.000’s pay grade to eliminate them.”

    I know, I have some convincing to do. Luckily, I know just the people to talk to. They recently got promoted to being quite high up. I could just talk to Dudas one morning during between his pushups/lifting. Give a man a spot, they’ll listen to you for a bit.

  15. 67

    I’m with Leo, I’d like to see those cases too. Just once, I’d like to see you cite an actual case. Still waiting.

    I’ve already cited them on PO many times and I’m quite sure that you have read it already. PDS as well, how do I know? Because you joined in conversation involving them last time and you wouldn’t have taken caselaw like that from me, you would only believe caselaw that you’ve read, amirite?

    All jesting aside, I’ve cited many cases on these boards, don’t act like I don’t.

    “Malcolm, Malcolm, Malcolm. No, the point is that the PTO is supposed to execute the law as it is, not as it would like to be. It’s not “analysis” if you’re just making up your premises.”

    Also, MM is right, the PTO should have stuck with the analogous paper rejection and had the courts rule on, and affirm on those grounds instead of withdrawing the case from appeal. Sure, it’s not technically the same as printed matter, but they are so analogous as to provide support for a court to rule that way. The PTO just wanted to bid its time and see how things played out without forcing the issue so early in the game. Now, they’ve fallen into the “accepted” category because nobody at the pto cares enough to deal with them.

    “No, the point is that the PTO is supposed to execute the law as it is, not as it would like to be. It’s not “analysis” if you’re just making up your premises.”

    Guess what? The PTO can reject your application, and take your application all the way to the CAFC on any grounds it feels like. Anytime, anywhere. The only question is, will they affirm? Thus, the pto rarely goes for a rejection they aren’t fully behind. It takes a litigation to bring up substantial questions on ridiculous matters like these all too often.

  16. 66

    “The current iteration of the ESD rules will fail in the courts. The next iteration won’t.”

    Why?

    Why should applicants, who are charged and pay for more examining resources, have to file an ESD simply because PTO (mis)management refuses to abandon it’s “one time fits all” production scheme?

    Why should an application that has a filing fee of, for example, $5,000 (because of extra claim and/or page fees) get the same amount of the examiner’s time as an application that has a filing fee of $1,000 (i.e. no extra claim and/or page fees)?

    Even assuming the ESD is not found to be a substantive rule, or contrary to law, the ESD requirements will be easily circumvented if the remainder of the claim examination and continuation rules are not implemented.

    If I have to file an ESD for any application with more than 5/25, but I’m not prohibited from filing any number of applications that I choose, and I want 10/50, then all I have to do is file 2 applications, each of which would not require an ESD.

    Until the PTO starts assigning each application its own unique disposal (i.e. examining) time based, in part, on its length, number of claims, number of references needed to be searched, there will not be any improvement in “examination quality” and there is no rule change, or new rule, that’s going to help.

    Another thing being ignored in the ESD debate is that an ESD will, in fact, make examination under the current “one time fits all” scheme more time consuming, not less. Currently, examiners don’t have to wade through pages of attorney spin on the references prior to issuing their Office Action, they only have to consider the references. And like I said, that consideration is no more than the considertion they give to the references in their search.

    There is no proposal from PTO (mis)management to give the examiners more time to consider ESD’s.

    Besides, attorneys will game the ESD requirements in the same way the examiners game the production system.

  17. 65

    Mike: How many references do you “consider” before deciding on which three or four are “most relevant” to cite in a rejection? I look at the Examiner’s search strings and results. The search strings typically provide 30-40 results. Do you not consider these when making your determination of which three or four references are most relevant? If not, please enlighten me as to how your are able to find the three or four “most relevent” references from the thousands of pieces of prior art in the first search!!??

  18. 64

    “You’re still sticking to your position that a CD encoded with Microsoft Word ™ is structurally identical to one encoded with PowerPoint ™? Why can’t you just do your job according to the existing rules, instead of making up your own? ”

    I never said that. For sure they are different. But, I say 1. it is improper to distinguish a structure in terms of method steps and 2. Even if it were proper because you made the method steps functional language, you did not make the method steps functional language of the medium itself. You made them functional language describing the function of the “information”. Then, I say, obviously point 1 is correct, and if we have to go to point 2 then the “information” in the claim is not the physical dips on a cd for example, it is the actual information encoded by the dips. I.e. 1’s and 0’s. In other words, the information is not a structural limitation so point 2 is correct because you have distinguished a claim in terms of the functionality of an abstract concept i.e. the functionality of 1’s and 0’s rather than the functionality of dips on a cd for example. Finally, I say that even if, if you go down the path of route 2, AND we consider “information” to be a structural limitation AND we consider the method steps to be functional limitations describing the “information” structure, perhaps dips on a cd, then you still have not properly distinguished the claim. This being because there is no cd in existence which CAUSES a computer to do something after being read. That is the abstract “information’s” job. I.e. the 1’s and 0’s. And we’ve already determined that the “information” is being taken as a structure rather than the abstract 1’s and 0’s, so it cannot be that information which is causing the computer to do anything. The CD’s functionality is merely 1. to store the 1’s and 0’s and maybe, maybe, you could go so far as to impart the information to a computer. In either event, no claims that I see claim such a functionality, so you cannot go down route 2 from way above anyway. And even if you did change the format slightly to include different “magic words” to spell it all out and make a claim like:

    1. A computer storage medium product which functions to store information (here we KNOW you mean abstract information, not dips on a cd) which functions, when read by a computer, to cause the computer to perform method steps comprising: find x, find y, compare x to y.

    Then I would merely argue that you cannot distinguish the functionality of the structure in terms of the functionality of the information stored thereon, because you are not distinguishing the structure in terms of its functionality, you are DISTINGUISHING it from all other art, by the functionality of something other than the structure, the functionality of the information thereon. The keyword here is DISTINGUISHING. How does this claim DISTINGUISH? The only way it distinguishes is by the functionality of the information, not by the functionality of the storage medium, because any prior art storage medium will function to store any information, the distinguishing part is the specific information.

    All bases being thoroughly covered, what do you take issue with?

    I’ll cite you the cases when I’m on the comp with them saved.

  19. 63

    “It’s been going on for 20+ years. What makes you think it’s going to change?”

    In the absence of new management with private practice experience, it won’t change. What will change is the applicant’s duty to do their homework, i.e., the Examination Support Document. The current iteration of the ESD rules will fail in the courts. The next iteration won’t.

  20. 62

    “I can cite those cases if you like.”

    I’m with Leo, I’d like to see those cases too. Just once, I’d like to see you cite an actual case. Still waiting.

    “This is another case, like excessive claims, where the Examiner should be given more time to work on a case. The USPTO should develop a pay-as-you-go system for examination of excessive IDS references (and claims).”

    Mike, did you miss my post too? The PTO has been collecting extra claim fees, spending those fees on things other than examination, and never given the applicants, or the examiners, the time that was paid for.

    It’s been going on for 20+ years. What makes you think it’s going to change?

    And this whining about the number of references has to stop. How much time does an examiner give to the hundreds, if not thousands, of references reviewed during a classified search? There’s no requirement that the examiner give the references submitted in an IDS any more “consideration” than the references in the examiner’s search.

  21. 61

    I guess what I don’t understand is that if some ancient case says “Beauregard claims are okay” but in the meantime the law has evolved to the point where it’s quite clear that they are not okay and the exception for software claims is grounded in non-statutory gobbledygook, then why can’t an Examiner simply do the right thing and fire the diamond bullet?

  22. 60

    “No, the point is that the PTO is supposed to execute the law as it is, not as it would like to be.”

    I mean, “No, the point is that the PTO is supposed to execute the law as it (the law) is, not as it (the PTO) would like it (the law) to be.”

    For what it’s worth, I would never advise a client to hang his hat solely on a Beauregard claim. But it’s way above e6.000’s pay grade to eliminate them.

  23. 59

    “Leo, Leo, Leo. The point is that the dots are no different than writing on an old piece of paper. You can’t patent an old piece of paper with new writing on it just because “a computer can read it and do something different”. End of analysis.”

    Malcolm, Malcolm, Malcolm. No, the point is that the PTO is supposed to execute the law as it is, not as it would like to be. It’s not “analysis” if you’re just making up your premises.

  24. 58

    “You’re still sticking to your position that a CD encoded with Microsoft Word ™ is structurally identical to one encoded with PowerPoint ™?”

    Leo, Leo, Leo. The point is that the dots are no different than writing on an old piece of paper. You can’t patent an old piece of paper with new writing on it just because “a computer can read it and do something different”. End of analysis.

  25. 57

    “Calculations can be done to determine an exact rate per hour for Examiner, but applicants would submit less references if they had to pay $25 for every reference over 50.”

    Fewer references.

  26. 56

    Beauregard claims are dead as a doornail.

    All it takes is an accused infringer willing to take the patentee all the way, or the PTO needs to grow some nads and wake up and do its job. Then we kiss Beauregard claims goodbye and good riddance.

  27. 55

    To “err on the side of disclosure” and hiding a reference are closely related. When applicants are submitting >100 references, with 20 hrs per application, Examiners must review greater than 5 references per hour, or 1 reference every 10-15 minutes. Not counting time to actually examine the application.

    What is reasonable for examination? 4 hrs reviwing the application and claims, 4 hrs searching, 4 hrs reviewing references, and 4 hrs drafting a response? That’s 16 hrs +/- 4 hrs.

    An Examiner could reasonably be expected to review 24-48 references (1 every 10 min) and still do a decent examination and office action.

    This is another case, like excessive claims, where the Examiner should be given more time to work on a case. The USPTO should develop a pay-as-you-go system for examination of excessive IDS references (and claims).

    Assuming the the Examiner can thoroughly review one reference every 10 minutes, applicants should have to pay when submitting over 50 references. They should purchase “hours” for review and the USPTO should give the Examiners credits for those hours. Calculations can be done to determine an exact rate per hour for Examiner, but applicants would submit less references if they had to pay $25 for every reference over 50.

    If you want quality examination, you are either going to have to reduce the number of references or understand that an Examiner cannot legitimately review >50 references per application.

    Something must be done to either reduce the number of IDS documents, or identify the most relevant references for the Examiner.

    Mike

  28. 54

    “To be clear I mean that the claim falls under
    ‘the basics’ which the courts have held are so elemental as not to require a citation of authority. I can cite those cases if you like. For a refresher, here are the elemental principles, or ‘basic’ principles that guide claim drafting. Product/apparatus claims must distinguish in terms of structure. Method claims must distinguish in terms of steps.”

    Yes, I would like you to cite those cases.

    You’re still sticking to your position that a CD encoded with Microsoft Word ™ is structurally identical to one encoded with PowerPoint ™? Why can’t you just do your job according to the existing rules, instead of making up your own?

  29. 53

    Mike: As long as you can assure me that you (the Examiner), any potential infringer, and the courts agree that whatever I submit is the “most relevant” and the references I identified as merely “cumulative” are cumululative, then we are o.k. Its been my experience,however, that even reasonable minds can disagree. Therefore applicants will continue to err on the side of disclosure.

  30. 52

    “To be clear, you mean that the claim falls under “the basics” that you’ve arbitrarily made up. It must be nice to have a job where you’re permitted to engage in legal analysis without being fettered by the actual law…”

    Um, no. To be clear I mean that the claim falls under “the basics” which the courts have held are so elemental as not to require a citation of authority. I can cite those cases if you like. For a refresher, here are the elemental principles, or “basic” principles that guide claim drafting. Product/apparatus claims must distinguish in terms of structure. Method claims must distinguish in terms of steps.

    If you take the position to which your comment is directed you will be hard pressed to state that a Bearegard claim satisfies those fundamental principles. So hard pressed in fact, nobody on this board will argue it, and nobody irl that I’ve spoken to will either. I suggest you not take that position if you find a rejection such as I will be issuing shortly, but it is totally up to you. Your only hope, it would seem, is to argue that the method steps are merely functional language describing the function of the structure. Good thing I already have that position covered too 🙂

  31. 51

    Can’t people just cite the cumulative references and quit going back iteratively to the earliest publication?

    Simply organizing cited references by subject and date allows you to identify the most recent reference in each subject (with >1yr priority).

    Cite only the most recent references for each subject on an IDS.

    Cite the closest reference as well.

    State in the IDS statement that REF X is cumulative to references 1-X, to the best of my knowledge. Detailed persons can list ref 1-X.

    Do not use a “most recent” reference that is within 1 year of your priority date. Use the first reference >1 yr prior so you can “swear behind” any close references < 1yr old. The CAFC has said that a reasonable statement is all thats required to rebut inequitable conduct. Finally, cite all foreign searches and examinations with the USPTO and other foreign patent offices. There is no limit to the number of foreign search reports that you can submit to the USPTO.

  32. 50

    “And of course if you take that position, as I do, then the claim falls under the basics of how a claim must distinguish over the prior art.”

    To be clear, you mean that the claim falls under “the basics” that you’ve arbitrarily made up. It must be nice to have a job where you’re permitted to engage in legal analysis without being fettered by the actual law…

  33. 49

    “PDS and JD, what are the “magic words” that you have so much confidence in? If you have a process that doesn’t transform a substance, what are you relying on — a programmed general-purpose digital computer? What will you do when that turns out not to be a “particular machine”?”

    They don’t know yet. Nobody does. But, they’re probably right, there will be some magic words. They will likely be very adverse to software patentee “rights” but there will be some. And if there is no really feasible magic words (i.e. they’re so particular there will never be meaningful reason to draft and obtain a claim) then they will suck it up and avoid making those types of claims. Well, not JD, since he doesn’t do those claims anyway.

    The real prize is Beauregard claims. They’re the big game I’m after 🙂 Distinguishing in functional terms of a structure that is in the preamble and isn’t even the structure the claim is covering doesn’t seem to me like an appropriate way to distinguish since you are not actually distinguishing in terms of the functionality of the claimed structure, you are distinguishing in terms of the functionality of a structure on the claimed item, specifically the “information”. That is of course if you wrongly consider “information” to even be a structure. And that is of course if you take the position that the only thing which distinguishes the claimed invention from the prior art is not just a method step which is caused by a structural feature. And of course if you take that position, as I do, then the claim falls under the basics of how a claim must distinguish over the prior art.

    Lockin’ em up, throwin’ away tha key.

  34. 48

    PDS and JD, what are the “magic words” that you have so much confidence in? If you have a process that doesn’t transform a substance, what are you relying on — a programmed general-purpose digital computer? What will you do when that turns out not to be a “particular machine”?

  35. 47

    “Actually, to the question that was actually asked, the answer is yes. The examiner can impose any requirement that they want to. That does NOT mean that the requirement is correct or lawful. THAT is a different question (and it _may_ be what was intended, but it is NOT what was asked).”

    I’m pretty sure it was the intent of the poster who asked the question to inquire as to whether the examiner could properly, or legally, make such a requirement. And the answer to that question is exactly what I posted: No.

    Of course, that begs the question: how do such improper and illegal “requirements” make it into Office Actions that actually get mailed out?

    The answers to that question are numerous, maybe too numerous to include in a single post, but include: incompetence, laziness, and/or disregard/disrepect/comtempt/ignorance of the law.

    In other words, the typical things that go into all Office Actions.

  36. 46

    “Which, by the by, I don’t think we’ve heard much from you about JD. Or PDS.”

    I don’t actually prosecute cases that would be affected by Bilski, so I really don’t have anything to say.

    But that’s never stopped me before.

    I think pds has it right though. All Bilski has done is change the required “magic words” that get the claims into the realm of patentable subject matter.

    But I do think there are tens of thousands of applications that will get 101’d using the Bilski decision and will go abandoned because they don’t have the magic words, and can’t support amendments inserting the magic words. Once that’s done, the PTO will be left with the truly tough cases that they’ll have to use 102 and 103 to reject.

    Going forward, applications will be drafted to disclose/include/claim the “magic words” required by Bilski.

    As Linda Richman used to say, “No big whoop.”

  37. 45

    Max and in-house,

    MVS explained it very well. The examiner can put any silly nonsense in the Office Action that they want to. And they do. Trust me. When the examiner’s requirement, or course of action (e.g. refusal to consider a properly submitted reference) is contrary to the law, all you have to do is point that out.

    I cannot understand why the examiners bother to put in stuff like what Dennis has posted. I guess it’s in the hope that some hapless, incompetent practitioner, or pro se applicant, will actually do what is requested.

    When I get improper requests, demands, and otherwise improper/illegal actions, I just explain the law and request that the examiner do their job correctly.

  38. 43

    “What is funny is that when I talk to examiners about 101, we treat 101 as a big joke perpetrated by the USPTO. The USPTO’s application of 101 isn’t about seriously limiting the scope of patentable subject matter. Instead, it is just about making sure that the “magic words” are included in the claims.”

    I could imagine that would be true in the day to day. The examiner’s I’ve discussed Bilski with are 99% uninterested except for a very few who have any interest in the law aspect of what we do. And yes, I figured there weren’t too many people that deal with computer process claims as a large part of their work.

    Max, he’s not saying examiners do anything of the sort often. However, that said, I have been known to request information at gun point. That’s right, it’s 6000 in “Claims that Die Hard 3” coming to a theatre near you! The Attorneys thought they had it all figured out. But they forgot one thing. They put their address on all their communications and 6000 was on the job that dreary night.

    Did you catch me in “6000”? In that one I slew wave after wave of approaching Ancient Attorneys in an attempt to drive back the Backlog. Back then, we settled claim construction with a sword. Here’s a clip, you should definitely rent it.

    link to youtube.com

  39. 42

    Well, after that little contribution from MVS I’m scratching my head in bewilderment. Do Examiners at the USPTO routinely and deliberately demand stuff from Applicants, knowing that they have no basis in the law to make those demands (sorry, “requirements”). I associate that sort of thing with primitive countries. You know, the ones that don’t understand the “Rule of Law”. But in the USA? I must have misunderstood. So, can somebody please clarify?

  40. 41

    To the question:
    “can an examiner impose a requirement that he won’t consider a reference unless the applicant submits a concise statement as to its relevance?”

    “somebody” answered “No”.

    Actually, to the question that was actually asked, the answer is yes. The examiner can impose any requirement that they want to. That does NOT mean that the requirement is correct or lawful. THAT is a different question (and it _may_ be what was intended, but it is NOT what was asked).

    Now, if the original question was “can an examiner _properly_ or _legally_ impose a requirement that he won’t consider a reference unless the applicant submits a concise statement as to its relevance?”, then the answer would be “No”.

    You attorneys really do need to learn how to read what is actually there & not what you think or want to be there.

    Remember: never assume! You make an A$$ out of U… 🙂

    MVS

  41. 40

    “Which, by the by, I don’t think we’ve heard much from you about JD. Or PDS. Where are the two ‘it’s the law’ fellas when the biggest blow to patentability in many fields delivered in a decade was dealt?”

    Biggest blow????? Notwithstanding that the majority decision introduces far more uncertainty than it resolved, Bilski may impact perhaps 2% of the applications I deal with, and I deal with far more “101 vulnerable” applications than most.

    What is funny is that when I talk to examiners about 101, we treat 101 as a big joke perpetrated by the USPTO. The USPTO’s application of 101 isn’t about seriously limiting the scope of patentable subject matter. Instead, it is just about making sure that the “magic words” are included in the claims. From my perspective, these “magic words” have a nominal effect on the scope of the claims, so I really don’t care. In the end, the claims eventually get allowed, which is what the client wants.

    Now that Bilski is over with, the next step will be to see how things change with the new administration.

  42. 39

    That’s interesting to read about the judges.

    link to cafc.uscourts.gov

    Newman has had this gig since I was 1. She could almost say to me: “I’ve been doing this since before you were born”.

    I hope Mayer, Newman and Moore are the judges. If they get introduced I’ll clap and whistle for all of their work on Bilski. Which, by the by, I don’t think we’ve heard much from you about JD. Or PDS. Where are the two “it’s the law” fellas when the biggest blow to patentability in many fields delivered in a decade was dealt?

  43. 36

    “Anyone remember when the Tafas oral hearing was going to be? Or did they announce it yet?”

    6k, it’s December 5 at 10:00 AM. Court room 203. It’s on the court’s website.

    See you there.

    “Every once in a while you write an office action…”

    Malcolm, examiners write office actions. Attorneys write responses.

    Just more evidence that you don’t actually prosecute.

  44. 34

    “If all you have is a large IDS as evidence of bad faith, my reply is that the IDS needs to be large because I don’t want to leave anything out. ”

    Then my reply is that inclusion of a whole pile of things which bear no relevance to the case is not merely “a large IDS” and is indicative of bad faith. I might round this out by stating that you are not a complete mo ron and are probably competent in your field and thus are capable of distinguishing what is relevant and what is completely irrelevant. Thus, there is no other explanation for submission of a multitude of references which are completely irrelevant other than some mischievious intent.

    “There are a lot more invalidations based on leaving references out than there are based on putting too many in, so it is easily inferred that my large IDS is based on my desire to be candid with the PTO.”

    Hardly. Being candid means submitting relevant referenes. Here’s a definition for you in case you’re stumbling on it.

    “Characterized by openness and sincerity of expression”

    Notice the sincerity part? Don’t leave that out. Openness isn’t the only part of being candid.

    I know you attorneys don’t like to read the refs submitted because it takes time and it takes away from your ability to say you didn’t know about it later. That sht needs to end, it’s been going on for way too long.

    IMO the way it should be solved is simpler though. Simply make reviewing an IDS not mandatory for the examiner. If they want to review it then good. I find ref’s buried in there all the time. The more the better. I would probably still look over all IDS’s just for ez refs. But that way, the applicant has to request it if the examiner declines up front a whole stack of 500 NPL etc. And when they request, then the examiner knows which ones they seriously want considered. Simple solution, everyone’s happy, no need to go to the board/CAFC. If the examiner refuses, so what? The search was performed, if he allowed the app then he allowed the app. If you’re that concerned about a certain ref then request it be looked over. If you’re not, then let it go to trial.

    “Unless you have other circumstantial evidence of bad behavior, no C&C evidence of bad faith.”

    It boils down to this. What we’re having is a disagreement about whether or not submitting many irrelevant refs and few good ones along with them is evidence of bad faith. And that goes double for especially wildly irrelevant refs.

    “As I said before, if you filed your IDS on time, and didn’t characterize your references, Molins and Penn Yan are inapposite and you should be in the clear. It will still cost you extra money to litigate, but if you address the issue head on during prosecution, the defense is unlikely to get very far if there’s no additional evidence besides a large IDS.”

    I agree with you somewhat, but it’s an issue that has gone on long enough and “should be” nipped in the bud already. Not only for the examiner’s sake, or the office’s sake. For the public’s sake. When they look at a patent, it would be helpful if they don’t have to spend a few weeks looking through irrelevant junk to see what the applicant considers the closest prior art. Or even what the applicant “inventor” considers relevant art. Remember, we issue these things for the public’s benefit, not just your app’s. Bottom line is, your grandma’s pie recipe doesn’t belong on the patent cited as a ref, and neither does a patent about bicycles in a rubber manufacturing process patent app that doesn’t even mention bicycles or tires and such a submission is indicative that you are being something other than candid with the office. See the part about sincere above.

    Anyone remember when the Tafas oral hearing was going to be? Or did they announce it yet?

  45. 33

    “Roughtly translated as ‘its rejected because I said so and only the Board can overrule me; it’s going to cost your client $15,000 and 2 years to get that far, after which I’ll have no shame in reopeneing prosecution and rejecting it again on remand, again because I said so.’ It just rings with intellectual rigor, personal pride and integrity in the quality one’s work, doesn’t it? Where else could you find that but in the public sector?”

    You can’t just distinguish the case based on the facts. You have to make sure that the facts that you are distinguishing on are pertinent to the issue at hand. Je sus people. Is that the best you can do? Did you graduate law school or what? At least Esq tried to explain why his facts he’s distinguishing upon are pertinent in his next post. And hey, it at least gives him a leg to stand on now. A flimsy one, but one none the less.

    “You’re right, large IDS submissions “can be probative of bad faith,” but then it follows that such a submission also may not be probative. I’m not aware of any case where the size of the IDS alone was dispositive, which is the fact pattern before us here. In fact, Star Scientific undercuts that possibility further: bad faith must be the single most reasonable inference that can be drawn. ”

    I’ll agree with you there, though that might be little strict from Star. In any event, I know of no other way to explain submission of some of the stacks of references I recieve. Some times they’re so far afield from the topic at hand I wonder if I’m looking at the right case’s references and make sure I pulled up the right IDS. And most cases have at least a few of those bad refs chucked in. That might be fine. The dispotive issue here is going to likely be: did the app submit a whole pile of references that bear no relevance to examination while submitting a rather large one that has something buried in it that is relevant?

  46. 32

    “A question I have is: does being an attorney get a lot easier after like 5 years or so?”

    Indeed, it’s total cake after the first couple of years. You can just sit around and blog all day and nobody cares. Every once in a while you write an office action but mostly it’s all about checking out the cute first years. You’re cute, right?

  47. 31

    “I’m sure a case will turn up. Probably right about the time you recover from the beat down I gave you on “adequate traversal of Official Notice.””

    You mean the time you admitted defeat? Oh yes, that one.

    “Please do post one serial number of a case you rejected “based on caselaw” and BPAI affirmed. I’m sure it will make fascinating reading.”

    I can’t because nobody will ever challenge them to the Board. Sad really. Lots of arguments in the responses, none go to the board 🙁 I’m a big fan of the board because they’ll be there to say I’m right 🙂 I have two new cases that just went past pre appeal but no caselaw arguments. And of course there’s the appeal that’s pending. No caselaw argued there either. Argues everything but the kitchen sink, but not the caselaw used in that one. Most of them are just the ranges of values crp but there’s a few others. All of the ones that I have had to depart from the normal MPEP stuff are amended around post haste 🙂 I don’t think I’ve even had an argument on those.

    On a side note, Imma be honest, this job is tha E Z once you’re through your first year or so. That is, until you get your next promo I suppose. I think I’ll go ahead and get 11 here soon just so JD will have to say “So says the GS 11”. I don’t really need the money, or the extra counts done though… it’s a tough call.

    A question I have is: does being an attorney get a lot easier after like 5 years or so?

  48. 30

    “…the Board knows LAZY when they read it.”

    Not anymore. They’re lazier than the examiners. Hard to believe, but true.

    It’s a race to the bottom over there.

  49. 29

    “Examination of forty claims in a single application may be tedious work, but this is no reason for saying that the invention is obscured by the large number of claims.” In re Wakefield, 422 F.2d 897, 902, 164 USPQ 636, 639 (CCPA 1970)

    40 claims, 50 references; the Board knows LAZY when they read it. It comes off the page like the stench of a dimly lit office with shoe cases and construction paper blocking all light from the windows that POPA fought to make sure were provided. That is, at least they used to know it when they read the appeals. Wakefield was neigh 40 years ago, when the board was populated by Examiners-In-Chief v. APJs.

  50. 28

    “Distinguishing a case based on its facts doesn’t do anything but earn you a trip to the board…”

    Roughtly translated as ‘its rejected because I said so and only the Board can overrule me; it’s going to cost your client $15,000 and 2 years to get that far, after which I’ll have no shame in reopeneing prosecution and rejecting it again on remand, again because I said so.’ It just rings with intellectual rigor, personal pride and integrity in the quality one’s work, doesn’t it? Where else could you find that but in the public sector? [/sarcasm]

    “One mention of taking the issue to the board…”

    Again; ‘only the board can overrule me; and even if I’m wrong there’s no box for it on my PAP, anyway.’

    “…along with even a half a attempt to shut down their argument shuts them up right fast most of the time and lands an RCE on my docket in less than a week.”

    Oh, you’re one of those girls – got wined and dined (and lots of RCEs) with talk of a good game – but at the end of the night, not even a peck on the cheek.

  51. 27

    6000 – You’re right, large IDS submissions “can be probative of bad faith,” but then it follows that such a submission also may not be probative. I’m not aware of any case where the size of the IDS alone was dispositive, which is the fact pattern before us here. In fact, Star Scientific undercuts that possibility further: bad faith must be the single most reasonable inference that can be drawn. If all you have is a large IDS as evidence of bad faith, my reply is that the IDS needs to be large because I don’t want to leave anything out. There are a lot more invalidations based on leaving references out than there are based on putting too many in, so it is easily inferred that my large IDS is based on my desire to be candid with the PTO. Unless you have other circumstantial evidence of bad behavior, no C&C evidence of bad faith.

    In fact, both cited cases make clear that the size of the submission is only one piece of circumstantial evidence required to show IC. It might be probative of bad faith, it might not. Combine a large submission with the fact that the submission is late and the examiner will likely never consider the references (as in Molins), or with a misrepresentation that all the references came up in a preexam search when the most relevant reference was newly discovered (as in Penn Yan), and that adds up to hiding the needle in the haystack and bad faith. No evidence of that here, though.

    As I said before, if you filed your IDS on time, and didn’t characterize your references, Molins and Penn Yan are inapposite and you should be in the clear. It will still cost you extra money to litigate, but if you address the issue head on during prosecution, the defense is unlikely to get very far if there’s no additional evidence besides a large IDS.

  52. 25

    “can an examiner impose a requirement that he won’t consider a reference unless the applicant submits a concise statement as to its relevance?”

    No.

  53. 24

    can an examiner impose a requirement that he won’t consider a reference unless the applicant submits a concise statement as to its relevance?

  54. 23

    If we can step aside from the macho verbal jousting, let’s note that this subject has been seen on other Patently-O threads. I do not believe that agreement was reached there either.

    I believe key issues raised were

    1)Rule 105 request may be made for “Factual” information. Asking for any type of judgement on patentability is NOT allowed – an Examiner may ask for factual informtion concerning accuracy of the Examiner’s interpretations or may ask stipulations as to facts with which the applicant MAY agree or disagree. Asking for the applicant to make interpretations is not appropriate.

    2)Appropriate (and complete) responses to a Rule 105 request include “The information required to be submitted is unknown” as well as “The information required to be submitted is not readily available.”

  55. 22

    I’m sure a case will turn up. Probably right about the time you recover from the beat down I gave you on “adequate traversal of Official Notice.”

    “Actually I was thinking of the many many rejections that I have based on caselaw when I wrote that.”

    Please do post one serial number of a case you rejected “based on caselaw” and BPAI affirmed. I’m sure it will make fascinating reading.

    “But yes, I’m aware that a petition does not go to the board.”

    Sure you are.

    LOL

  56. 21

    “BTW, a petition to withdraw a request for information is not decided by the Board.

    But you knew that, amirite? I mean, you know our system so well.”

    Actually I was thinking of the many many rejections that I have based on caselaw when I wrote that. But yes, I’m aware that a petition does not go to the board.

    Really gtg before these guys leave though ttyl.

  57. 20

    “Answer: None.

    Unless you can point to one.

    LOL”

    Of course the answer is none are cited unless I cite one. Observation skills like those must have gotten you top of the class amirite?

    Never fear, just like nearly all of our discussions end up with me being right in a case down the road, one will turn up here shortly. Even though I wouldn’t doubt if the court decided to results orient the decision to let the attorney off the hook since it will be easy to let the attorney off with a little “Oh, well, it wasn’t his intent to mislead the office by telling them to go pound sand instead of handing over the reference”. Technically that’s correct, it’s not an intent to “decieve” it is an intent to “block examination” or some such. However, I have a feeling that a reasonable court will take into consideration that by telling the office to go away the applicant was not fulfilling his duty to disclose which often leads to IC anyway iirc. In any event, it will lead to the patent being invalidated if the reference is material.

    Anyway, to my abandonments.

  58. 19

    “Distinguishing a case based on its facts doesn’t do anything but earn you a trip to the board to decide the present case”

    BTW, a petition to withdraw a request for information is not decided by the Board.

    But you knew that, amirite? I mean, you know our system so well.

  59. 18

    “I love tough guy attorneys like JD.”

    And I love tough guy examiners like you, 6k. Once my pre-appeal lands you in a little conference room with your SPE and whomever else has to suffer reviewing your work, you’re sent scurrying off with your tail between your legs to do some further searching and issue me a new Office Action for zero counts.

    If you’ll excuse me, I have some case law to distinguish.

    LOL

  60. 17

    “So says the GS-9 who claims to understand our common law system very well.”

    Distinguishing a case based on its facts doesn’t do anything but earn you a trip to the board to decide the present case, where the same fact pattern (submitting long lists of irrelevant references around a few relevant ones) will lead to bringing up the same principle (submitting such lists may be probative of “bad faith”) which will lead to the conclusion that any reasonable person would have drawn from the prior cases anyway.

    Why do you need a court/law professor to tell you the basics JD? Can you not pick them up for yourself? The facts hardly distinguish this case significantly based on the prior attorney’s reasoning. The only part of his reasoning which comes close to being relevant is that the examiner had no duty to consider the reference. That fails to be relevant because it is presumed in the case at hand that we are discussing the situation where the examiner DID consider the references. In the situation where the examiner does not consider the references then what does it matter if he submits references in “bad faith”, “good faith” or any faith? The answer is that it doesn’t matter so the question of “bad faith” would never be brought up.

    I love tough guy attorneys like JD. One mention of taking the issue to the board, along with even a half a attempt to shut down their argument shuts them up right fast most of the time and lands an RCE on my docket in less than a week. Here though, JD just tries to make fun instead of paying up. Makes you feel good to get in a last word that you so rarely get in during your day to day doesn’t it JD?

    I’ve got to call up some abandonments if you’ll excuse me.

  61. 16

    “What would really be nice is to know how many cases of IC have been resolved thanks to a court finding attorneys telling the examiner to go pound sand when they were in possession of material information which was specifically being requested.”

    Answer: None.

    Unless you can point to one.

    LOL

  62. 15

    “Of course the great unknowable factor in all of this is how many Rule 105 requests are made and how many are withdrawn after the attorney or applicant tells the examiner to go pound sand. ”

    What would really be nice is to know how many cases of IC have been resolved thanks to a court finding attorneys telling the examiner to go pound sand when they were in possession of material information which was specifically being requested. Interesting indeed.

    I know your go pound sand statement and it’s pathetic. Anyone not willing to uphold the request was simply not willing to bother and had better things to do than fight with someone over a patent that will either 1. be invalid or 2. bite them in the behind later or 3. Both.

  63. 14

    “What does your argument achieve? Nothing. But thanks for playing this round of Distinguish the Case Law.”

    So says the GS-9 who claims to understand our common law system very well.

    ROFLMAO

  64. 13

    “The Molins case didn’t resolve that issue, whether attorney-client privilege trumps duty of disclosure, or vice versa.”

    Just perusing the subsections of Rule 105 makes me conclude that most of what would be asked for is not reasonably necessary, so it’s doubtful that the issue of whether client confidences and/or attorney work product trumps the rule will be decided anytime soon.

    That the information is not reasonably necessary is the stronger argument.

    I love the requirement for a particularly relevant database.

    Uhm, how ’bout Google.

    LOL

  65. 12

    Esq. very nice job at distinguishing Molins, but what relevance does the IDS being filed *after* allowance have to do with “stating that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.””? Nothing. What does your argument achieve? Nothing. But thanks for playing this round of Distinguish the Case Law.

  66. 11

    Of course the great unknowable factor in all of this is how many Rule 105 requests are made and how many are withdrawn after the attorney or applicant tells the examiner to go pound sand. I’ve had three such requests made and I’ve never submitted anything. That’s probably what happens in about 95+% of the cases in which a request is made.

    It would be nice if Dennis would post the serial number of the application, or if unable/unwilling to do that, provide us an update when the applicant responds.

  67. 10

    “Shouldn’t the Examiner be delighted that he is being handed a list of the 75 or 200 that the applicant thinks are the closest art?”

    Should be, funny that we’re not. Could it be because, as in that case, the applicant appears to be wasting our time and more importantly, hoping that we’ll miss one important reference as long as they submit enough inane ones to make the look through the IDS require such speed that we nearly have to miss it, or take a couple of days pouring over the refs.

    “The office told us examiners in no uncertain terms to stop that BS right away. ”

    Oh did they? Funny I didn’t get a call from Dudas about that. The charity campaign on the other hand…

    “As an examiner it is totally frustrating to get a 75-ish reference IDS, citing everything back to Watson and Crick on how DNA works. ”

    If only most references maintained that degree of relevance I would be ecstatic.

    “Isn’t the Examiner asking for something contrary to Rule 1.97.

    37 CFR 1.97 states: “(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).””

    A reference being relevant to the subject at hand now makes a reference material to patentability? Good luck with that argument.

  68. 9

    It appears that this Examiner is a litigation attorney’s best friend. What a set up for inequitable conduct. The applicant is in a bind if he complies with the Examiner’s “soft” request, and is also in a bind during litigation if he does not!

  69. 8

    “Much of the “information” allegedly required by Rule 105 should be protectable by the attorney’s duty to maintain client confidences.”

    The Molins case didn’t resolve that issue, whether attorney-client privilege trumps duty of disclosure, or vice versa. So what “should be protectable” may not actually be protectable.

  70. 7

    Restate the MPEP standard, and pick apart the case law. Here it’s easy. Cite the applicable MPEP sections on applicants’ duty to disclose and the duty of the examiner to consider every cited reference, and distinguish Molins and Penn Yan.

    In Molins, the prior art list containing the suspect reference was filed *after* the patent issued. The examiner in Molins therefore had no duty to consider any reference, regardless of the number of references cited, and the Attorney knew that his reference would likely never be looked at. Completely different from a timely filed IDS made during prosecution, where you expect the Examiner to consider each cited reference.

    Contrary to the Examiner’s implication, Molins specificially *distinguished* Penn Yan:
    “The court [in Penn Yang] held that inequitable conduct had occurred because the thirteenth reference listed, a patent, was not in fact discovered as a result of a pre-examination search, but had issued more than one year after the filing date of the patent application at issue. Id. at 271-72. The court found that the purpose of the misrepresentation was to “bury the [thirteenth reference] in a long list of allegedly old prior art patents in the hope that the Patent Examiner, having already allowed the [claims at issue], would ignore the list and permit the [patent] to issue.” Id. at 272. Thus, in Penn Yan, the reference was characterized in such a way as to mislead the PTO. Here, the reference was not mischaracterized, but it was submitted along with a multitude of other references.” Molins at 1184.

    So in Penn Yan, it wasn’t that the reference was just submitted in a long list, it’s that it was intentionally mischaracterized.

    If you filed your IDS on time, and didn’t characterize your references, Molins and Penn Yan are inapposite and you should be in the clear.

  71. 6

    Star Fruits is one case. Limited to its facts. Much of the “information” allegedly required by Rule 105 should be protectable by the attorney’s duty to maintain client confidences. And if it’s not reasonably necessary to the examination of the application, it can not be required.

  72. 5

    There were some cases of examiners refusing to consider large (50ish? 75? don’t recall) IDSs about a year ago. Basically they were saying “I’ll consider the first 50 refs. b/c i feel like stopping then.” The office told us examiners in no uncertain terms to stop that BS right away. If applicant files an IDS and provides the reference (assuming it’s not a patent or patent publication), we must consider it.

    As an examiner it is totally frustrating to get a 75-ish reference IDS, citing everything back to Watson and Crick on how DNA works. Of course we understand the duty to disclose/inequitable conduct issues require attys. to file the reference rather than sit on it. But oftentimes it looks like there is an attempt to hide something.

    As for rule 105, we have wide latitude in requesting info. But we have been told not to use it as a fishing expedition, but rather a request for specific info. it is reasonable to think the applicant has access to (but we do not). I have used 105 requests to get copies of scientific meeting posters (when i had access to the abstract only — summarizing contents but of course not providing all detail), to request copies of articles the inventor had previously posted on a website but since taken down (i found the website on the Wayback Machine).

  73. 4

    Isn’t the haystack that the examiner supposed to the needle in the one that includes every document on the planet?

    Shouldn’t the Examiner be delighted that he is being handed a list of the 75 or 200 that the applicant thinks are the closest art?

    Rule 56 directly addresses what is required regarding disclosure. The Office cant use rule 105 to require more than is required in the rule that directly addresses the issue.

  74. 3

    Isn’t the Examiner asking for something contrary to Rule 1.97.

    37 CFR 1.97 states: “(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”

  75. 2

    I’d like to see a “shell oil” on that 500 ref one. I wouldn’t get a response within 6 mo. because it would take him a year just to write a consise statement for each one.

  76. 1

    75 refs? Jes us, hand him one of mine with 200, or the monster 500. That’s 500 with 200 (some very long) NPL.

    700 pages? Sht son, I have 500 REFERENCES, each probably ~20 pages long. 10000 pages?

    Again, the worst part of the whole thing is having to check them off on the IDS. I look through at least ~1000 refs for most cases anyway (often to flavor the search report after googling the inventionlol). But having to cross reference them with willy nilly lists takes some serious time.

    If the examiner didn’t have to go to the director, or at least spe, to use .105 then he would have I’m quite sure.

    I should do a “Shell Oil” for 95% of all refs recieved.

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