Patent Law School Exam: Essay No. 3

3. (15 POINTS) Under 35 U.S.C. ยง 112 patent claims may be invalidated as indefinite. The Federal Circuit has interpreted the law to invalidate patented claims only when those claims are “insolubly ambiguous.” The insolubly ambiguous standard is a high standard, and patent claims are quite unlikely to be found invalid under that standard. More recently, policymakers have considered lowering the standard, but only for pre-issuance patent applications undergoing patent prosecution. Is this proposal a good idea? Why?

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

133 thoughts on “Patent Law School Exam: Essay No. 3

  1. Folks, please don’t denigrate the word “ambiguous”

    According to the Collins English Dictionary the word “ambiguous” has two distinct definitions:

    1. having more than one possible interpretation or meaning.
    2. difficult to understand or classify; obscure.

    There is ABSOLUTELY nothing wrong with a patent term having more than one possible meaning – in fact it’s a good thing, in that it allows one write a claim of appropriate scope without being prolix.

    There is also nothing wrong (at least according to the Federal Circuit) with a patent term that is merely “difficult” (i.e. challenging or demanding) to understand.

  2. “The answer is that, except for certain crybaby gadflies – like Mooney, nobody cares because Mooney is crap. If somebody actually cared Mooney would be careful and focused, from beginning to end, and beginning with the decision to not bother getting involved in patents in the first place.”

    Referring to the original post, what utterly worthless garbage. The above edits are provided to offer a more realistic interpretation of the original crap post.

  3. The standard IS already lower during prosecution. The policy makers and patent law school professors should find something else to do than gratuitous intermeddling.

  4. On a related note, has anyone here been an applicant, an examiner, and a practitioner as well?

    I have met many people who are 2 out of 3, but very rarely did I meet someone who was 3 out of 3.

  5. “As I said to MM, when you out yourself, I’ll consider outing myself. Actually, that question is rhetorical since I would never do it.”

    That’s fair. How about picking out a random published app and give your take on Office abuse?

  6. “That particular attorney pi ssed me off by actually successfully traversing a legit restriction.”

    Follow up question. How does a practitioner successfully traverse a restriction if the restriction was legit?

    Granted that not many people understand MPEP 800, which is rumoured to be currently undergoing major reconstruction, if you correctly assessed the inventions and/or species, followed by estalishing the burdensomeness of searching, how then can the requirements be successfully traversed?

    I feel that if the groupings you make up are not subject to statutory double patenting rejections when filed in divisionals, the burdensome search is pretty much a freebie test.

    If he/she/it traversed your burdensome search criterion correctly, you did a pretty bad job of establishing the burden.

    Any comments on what happened in the case?

  7. “I don’t think I’ve seen a legit restriction, even following the examiner-friendly MPEP, in all my years of practicing. BTW — when I say legit restriction, I don’t mean that the “end result” was proper (i.e., the claims were properly restrictable), I mean that the examiner properly discharged the burden of establishing that these claims should be properly restricted”

    Right. Never seen one in all your years.

    I’m not unfamiliar with restriction practice. I don’t need to seek others help with it, although there are those who feel some types of restrictions which are completely legit should be against an unwritten policy. Ridiculous. You attorneys take the system being so biased towards you in many areas for granted and don’t realize that anytime you actually win “on the merits” there’s a 50/50 that you only won “on a dumas policy” that was put into place so that you don’t btch too much about the parts of the law that aren’t blatantly biased for you. The only areas of the law that I can think of off the top of my head that aren’t subject to some dumas policy or other are 102 and 103. They’re the most solid of our grounds of rejection because they’re basically the only portions of the law that haven’t been gutted by the courts.

    One on one, to the death.

    Actually the “job search” (which was just me responding to people seeking me out mostly) isn’t going anywhere atm, unless you consider people still seeking me out it going somewhere. I’ve been busy with working out and a few vid games and going out. I’m thinking maybe take the agents exam right fast, a bud of mine just did it and passed with only a few days o studying. Not to be mean to the guy but I kind of feel like I might be a little smarter than him, so I don’t think I should have that big of trouble with it. Thing is, 550$ for something I’m not completely sure I’m going to use? Jebus, what a ripoff.

  8. “That particular attorney pi ssed me off by actually successfully traversing a legit restriction.”

    Legit restriction —- hahahahahahahahaha

    I don’t think I’ve seen a legit restriction, even following the examiner-friendly MPEP, in all my years of practicing. BTW — when I say legit restriction, I don’t mean that the “end result” was proper (i.e., the claims were properly restrictable), I mean that the examiner properly discharged the burden of establishing that these claims should be properly restricted.

    If the attorney successfully traversed, then your restriction wasn’t legit.

    6K — you problem (among many) is you think that everything you’ve been taught at the USPTO is correct. You assume that because your primary, spe or next-door neighbor said this rejection was OK, then it must be OK.

    A good attorney (remember — you once aspired to join our ranks; btw — how’s that job searching going?) doesn’t rely on other people’s opinions. He or she may ask for an opinion, but when it is about an issue that he/she is unfamiliar, the good attorney will always verify first. Look at the MPEP for guidance, then look at the code, look at the rules, and look at the case law (and when I mean case law, I don’t mean the little one sentence snippets from the MPEP). Only after you review of those sources should you proceed.

    Granted, most examiners (you included) are not particularly familiar with the MPEP, most of the case law, the rules, and the code, so you have to rely on your compadres at the USPTO. However, as anybody who has played the “telephone game” can vouch for, as the message gets transmited from one person to the next, that message becomes garbled.

    Eventually, what I’ve seen from the examiner I deal with (and from you) is an incomplete (at best) and/or incorrect knowledge of the law.

  9. “If any of your 20 cases are available for public inspection, please post the serial number(s) as well as your take on the abuse.”

    As I said to MM, when you out yourself, I’ll consider outing myself. Actually, that question is rhetorical since I would never do it.

    Why do people ask such silly questions?

    Besides, any intelligent attorney isn’t going to want to comment on any of their pending applications. Anybody on this board ever hear of estoppel? As if I’m going to ramble on about one of my cases, opining about stu-pid references that 6K finds, but never gets cited by the USPTO.

    Like my clients (or anybody else’s clients) are going to appreciate that.

    Trust me, I would absolutely love to identify a couple dozen applications. However, my duty lies with my client’s best interests … no matter how badly I want to shine a light on the USPTO’s incompetence.

  10. “Our job is not to ‘follow the law’ our job is issue applications that appear on examination to be entitled to a patent. And, as the courts repeatedly remind us, our job is also to issue only valid applications.”

    Only 6K would write this. Your job !!!IS!!! to follow the law … period. The law states what you are to examine, how you are to examine, and what standards you are going to apply. Everything you do is based upon U.S. Code, U.S. case law, and the rules (properly) promulgated by the USPTO (the USPTO has seem to forgotten how to properly promulgate rules these days).

    I don’t like getting political on these boards, but has 8 years of Bush degraded the ethics of the executive branch this much that even the peons like 6K feel that they are above the law?

    FYI 6K … if you ever get one of my cases … please, I beg of you, write “my job is not to follow the law” anywhere within any of the office actions you prepare. I will make that the centerpiece of any appeal I file.

  11. “Why would I feel sorry for these people? Who cares if the PTO ‘screws up’ these applications? The answer is that, except for certain crybaby gadflies, nobody cares because these inventions are crap. If somebody actually cared the prosecution of the applications would be careful and focused, from beginning to end, and beginning with the decision to not bother filing a patent application in the first place.”

    Your ability to consistently not get it is indeed remarkable.

    Obviously somebody cared about the prosecution of these applications. The applicants in particular. That’s why they appealed them to the Fed. Cir.

    The fact that the PTO has been unable, despite numerous opportunities, to present prima facie cases against either application, demonstrates that, despite your personal feelings regarding the merits of the inventions, the applications are not crap.

    Granted, the applications don’t disclose anything as ground breaking as the protein fragments and molecules that you apparently deal with, but as pds noted, the PTO’s handling of these cases is indicative of the lousy state of examination at the PTO. That lousy state is only getting worse.

  12. I’m not above the law

    link to youtube.com

    “Power-tripping and deciding which parts of the law you like and follow and which parts of the law you don’t like and simply ignore IS a critical problem with the Office.”

    Says who? You?!? Face me in one on one combat to the death. Maybe your fellows will learn something when I’m through with you. Send Donaldson if you like.

  13. 6 says

    “Our job is not to “follow the law” our job is issue applications that appear on examination to be entitled to a patent.”

    Um, Are you saying that you are to issue applications that appear on examination to be entitled to a patent by NOT following the Law’s rules on just what “entitled to a patent” means or how you are to perform the examination? No matter how much you like to think otherwise, you are NOT above Law.

    “The parts about “law” come into play only in the context of a court room and in situations where there is a supposition that a court room might someday be visited.”

    “Only” you are wrong. I’m pretty sure that the law should be applied during prosecution and that you do have to follow the law. Someone quoted Donaldson recently to that effect — something that the courts also repeatedly remind you.

    Further, it is NOT your job to decide what is law and what is lawlol. Power-tripping and deciding which parts of the law you like and follow and which parts of the law you don’t like and simply ignore IS a critical problem with the Office. If the offensive guard simply decides that he will be a receiver and runs a post pattern, guess what – the play doesn’t count and your team is penalized.

    pds, excellent reminder to Malcom.
    Malcom, you are still stale.

  14. For the case you guys cited above, I’ve looked over the art and I have a hard time seeing why the previous rejections didn’t go to appeal on perusal. I haven’t looked at the smith reference yet, but the Julius ref is da rn near exactly what is needed and it clearly shows getting stuff out through the ho le in the top.

  15. “I don’t think you’re as bad as you make yourself out to be ;p”

    I’m not really, except in this case with the bgard claim they want rejoined. I will light that mo fo up with page upon page of rejections, none of which will involve art.

  16. “Let me ask you an honest question though. Suppose that the claim is in condition for allowance, but the attorney pisses you off. Would you pass the case to allowance or would you bury the case in appeal?”

    It depends. So far I haven’t buried any apps in appeal that I truly believe are in condition for allowance. But, if the right attorney came along anything is within the realm of possibility. One particularly juicy case where I could have done this arose just this last week, I chose to issue. The case was not in condition for allowance because the first ind blatantly covered things inherent to nearly all embodiments of 1000’s of references of prior art but the evidence just wasn’t there. The art was too unspecific to base a rejection on. But, that’s fine, some litigator can tank claim 1, the rest of the inds are probably legit.

    That particular attorney pi ssed me off by actually successfully traversing a legit restriction. The case should not have involved all that it ended up involving. Took probably 4 days to search that sht the first time, and 2 or 3 after their amendments.

  17. “Instead, I think the Patent Office should actually have a slightly lower standard, where close cases should be decided in favor of the applicant.”

    Thereotically, there would be 2 camps in USPTO management.

    Camp 1 would want to grant maximum authority to examiners. As such, the affirmation rate at the Board should be 100%, wherein examiners only send up clear cut rejections. The rest should be negotiated with the applicant and allowed.

    Camp 2 would want to grant minmum authority to examiners. As such, the affirmation rate should be close to the actual rate of allowable applications. Perhaps 50%? Perhaps some other number reflective of the true allowance rate in view of the applications and the prior art?

    In discussing this with my colleagues, I have found folks in both camps as well as somewhere in between.

    Any comments on the USPTO’s official goal for appeal affirmation?

    I personally believe that the USPTO is only a first filter. Some examiners go too far and reject all close calls. If examiners were to allow all close calls and let the courts sort out the mess, the backlog would be greatly reduced, but the problem would then be directed to the courts. Not necessarily a bad thing depending whom you ask.

    One of my colleagues commented that patent reform is like playing chess in many different dimensions. You change one variable and the system reacts by changing many related variables.

  18. “I promise you pds, you have never had to deal with the likes of me. If you had, you probably wouldn’t want to talk about it. We’d have to call you PTS from now on, for post traumatic stress.”

    I may have dealt with a few of your incarnations. I don’t think you’re as bad as you make yourself out to be ;p

    “If an applicant wants a patent that’s somewhat questionable, the Patent Office should err in favor of the applicant and allow it. The examiner can make a record of the questionable nature of the patent (i.e., the claims may potentially be found obvious over…, etc.) in the file wrapper. Let the patent holder beware; enforce with caution.”

    While I agree with most of your comments, how do you feel about examiners creating file wrapper estoppels?

    “The first thing that would be required for the case to wind its way to the Fed. Cir. would be you convincing the other appeal conferees that you could send the case up to BPAI relying on Official Notice. Very unlikely to happen. Not impossible, but highly unlikely. Most likely (99.9+%) you’ll be told to re-open and cite a reference.”

    Some of my own cases went to appeal with ON. How many would you require to overcome “highly unlikely”?

    “See MPEP 707.07(d): Nor should he or she (i.e. the examiner) express doubts as to the allowability of allowed claims or state that every doubt has been resolved in favor of the applicant in granting him or her the claims allowed.”

    Can you clarify? link to uspto.gov

    I am interested in comments about this issue as discussed above.

  19. “If you knew anything about In re Bogese and the law, you would now that it dealt with an EXTREME example of applicant abuse that isn’t even possible for any applications filed after June 8, 1995, after which the patent term changed from 17 years from issue to 20 years from filing. This case was about dealing with “submarine” patents.

    Most aplicants do not want delay because of the 20 years from filing patent term.

    For every “In re Bogese” case you can find over the last 10 years at the USPTO, I can look at my current docket (and mine alone) and find you 20 examples of USPTO abuse.”

    I said directly that this is one, albeit extreme, case. I never said that it was representative of all cases.

    If any of your 20 cases are available for public inspection, please post the serial number(s) as well as your take on the abuse.

    “Stop sticking your head in the sand … the USPTO is anti-patents.”

    This is one of many instances where you attack me in some form.

    I simply asked for clarifications. If you don’t want to acquiesce, then you don’t have to reply.

    “Your statement is just as much evidence as the examiner’s is right?”

    When both sides lack any real evidence, I suppose allegation from one is as good as allegation from the other.

    Let me ask you an honest question though. Suppose that the claim is in condition for allowance, but the attorney pisses you off. Would you pass the case to allowance or would you bury the case in appeal?

    You don’t have to answer if you don’t want to. I was just curious.

  20. “So, this admission that the Office screwed up its job in not applying the Law and allowing bad patents is a rationale for changing the rules of the game? This is the rationale for STILL not doing your job and following the Law?”

    Yes and yes. Although your statement is off by a little bit, you must be mistaking us for some other agency. Our job is not to “follow the law” our job is issue applications that appear on examination to be entitled to a patent. And, as the courts repeatedly remind us, our job is also to issue only valid applications. That is the part that is difficult. The parts about “law” come into play only in the context of a court room and in situations where there is a supposition that a court room might someday be visited. If your app is so bad there is no chance, then don’t look forward to having the law looked at all that closely in regards to your application.

    ” The job’s too tough so let’s change the Law? Man up, fix the critical problem. The critical problem is NOT the Law”

    No, you’re right, the Law is not the problem. It is actually the “lawlol” that is the problem. The lawlol has arisen from the courts. Like in KSR, those are mainly the things that need changing. As soon as those get put back into good order, I predict that filing will go down to a reasonable level once attorneys get a firm grasp of what they have a prayer at getting a patent on under the more restrictive lawlol to come. Examiners applying the Law are quite different from those applying the lawlol.

    Just today I had my spe recommend a 112 1st on a claim that was an originally filed claim to make app put support in the spec :( So bad. I tried to explain to him about how that’s not how 112 1st is current interpreted, but I don’t think he wanted to be wrong so I let it go.

    And, we have the personal assurances from Chief Judge M that things are a changin’ so that congress doesn’t have to lay the smack down.

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
    A person shall be entitled to a patent unless โ€”…””

    Funny how your bicycle application appears to be anticipated by this reference clearly showing a steel beam. ๐Ÿ˜‰ Lost your “rightlol” right there. Sorry.

    “When you out yourself, I’ll consider outing myself. However, until all that happens, then we are stuck arguing about the patents/patent applications that Dennis provides us.”

    OH COME ON, borrow a juicy one from your buddy at the office, I’m sure at least one wouldn’t mind showing off a quality piece of work that is supposedly being stonewalled. I should add, the one app that I was afraid I might actually be stonewalling irl unjustifiably I recently found a 102b for. I consider myself vindicated.

    “10/190,039”

    Mah trigger finger is itchy.

  21. “As I said before, you don’t practice before the USPTO. I don’t care how many applications you have reviewed. Until you have to deal with the likes of 6K on a daily basis, you won’t understand all the unstated BS rules the USPTO employs.”

    Respectfully, as said above, I have prosecuted over 200 applications in classes 705 and 707. I was prosecuting before business method became its own TC.

    I deal with many examiners on a daily basis.

    “See the BPAI decision in 09/077,337 (pages 8-9, iirc). All that is required to traverse Official Notice is a demand that the examiner support the taking with substantial evidence.”

    Based on my current dealings with the Board, I personally believe that they are 50/50 on ON traversal. I know some examiners that do not use ON at all. If the Applicant does not traverse, the Board pretty much lets anything stick as admitted art. If the Applicant traverses in some form, then I think the Board is 50/50 depending on what documentary evidence the examiner furnishes.

    “Yes. My experience is that every time an examiner takes Official Notice, I simply respond by requesting that the examiner provide documentary evidence in support of the taking. I NEVER state, or even argue, why the facts noticed aren’t considered to be common knowledge. Why? Because I’m not required to. That’s why.”

    Even if the MPEP had the effects of law, anything is appealable I suppose.

    I never said that the MPEP is 100% correct. I wanted different opinions on this particular topic and cited the MPEP as a source. If one assumed that I believe that the MPEP is 100% correct all the time, one would err.

    “My bad, I meant to cite:
    link to patentlyo.com

    and

    /media/docs/2008/12/fd073300.pdf”

    I thought a little bit more about the original point a claim with multiple interpretations being indefinite or definite.

    As said above, natural language will always have some form of ambiguity.

    I also thought about the “broadest reasonable” standard. This implies that there may be more than one reasonable interpretations, and the examiner should adopt the broadest one for examination.

    Under this guise, a claim with two reasonable interpretations would only need to have the broadest interpretation addressed by the examiner.

    What happens if the two interpretations are equally broad? Any comment?

    I’m just thinking aloud. I neither agree nor disagree with any particular person. If you disagree with me please just ignore.

  22. “Since process clams are now required to be tied to a particular machine or transform a physical article to a different state or thing, are process claims indefinite if they can be performed in different physical locations and on different models of a particular machine? Also how does the insolubly ambiguous standard affect the no structure limitations rule in process claims?”

    No, and there is no rule against structural limitations in a method claim so long as they are incorporated into the method step instead of recited by themselves, so not at all.

  23. “As I said before, you don’t know the difference between holding and a dicta ”

    Actually I do, and I’m using the dicta.

    “If the claimed invention ecompasses obvious subject matter (i.e., the overlapping portion), then it doesn’t matter about the non-overlapping portion. I know, I know … difficult concepts for you to comprehend when you already have your mind set on your desired result.”

    I already comprehend this, and I go further. I’m probably going to have to investigate the cases that the court cites in their dicta and use one of those, but I bet this works out in my favor as I doubt the judge simply wrote his dicta without thinking what so ever.

  24. “The reason why (even MM) should care whether or not the PTO “screws up” is that if the USPTO screws up an (allegedly) crap application, then it is indicative that the USPTO will also screw up an important/valuable “flowery” application.”

    LOL. Yes, the USPTO screws up. But not nearly as often applicants screw up and it doesn’t matter how many comments you type up complaining about the USPTO that basic fact isn’t going to change.

    The behavior of applicants towards the PTO is about as senselessly greedy as Charles Manson trying every day and twice on Sunday to get McDonald’s to deliver a custom-made Big Mac to San Quentin.

    “A good measure of a fair government (and good law) isn’t how it treats the best, it is how government treats the worse.”

    The “worst” end up with thousands of issued patents every year that they don’t deserve so the government is working quite well for “the worst.”

    If the USPTO were Homeland Security, half the janitors in the Pentagon would be working for al Qaeda. The fact that some Afghani guy who can’t produce a birth certificate or provide any proof of citizenship finds that his job application at Area 51 was “delayed” for an inexplicable reason is not a sign that the “system” is working against the public interest.

  25. “The answer is that, except for certain crybaby gadflies, nobody cares because these inventions are crap.”

    JD … I was going to write that MM would say this, but it would have been only stating the “obvious.”

    The reason why (even MM) should care whether or not the PTO “screws up” is that if the USPTO screws up an (allegedly) crap application, then it is indicative that the USPTO will also screw up an important/valuable “flowery” application.

    The “perceived value” should not be the basis for how the government evaluates a patent application. God knows, if MM ever gets arrested for …. well, let’s not go there — this is a family message board …. we would hope that the government treats MM the same no matter his disagreeable nature and questionable character.

    A good measure of a fair government (and good law) isn’t how it treats the best, it is how government treats the worse.

    Either MM doesn’t care how the USPTO treats applicants or MM is advocating that someone from government can arbitrarily decide what applicants deserve better treatment and what applicants do not.

  26. “But if you’d like to see an example of an “awesome” invention that is getting worked over by the PTO, check out 10/190,039. It’s a “simple” mechanical case. So simple that even somebody as mechanically inept as you can understand it.”

    Uh, that’s an obvious piece of crap if I ever saw one. And the fishing pole case is just another example of an inept clueless patent drafter wanking off trying to get some o dat ol timey patent action.

    Why would I feel sorry for these people? Who cares if the PTO “screws up” these applications? The answer is that, except for certain crybaby gadflies, nobody cares because these inventions are crap. If somebody actually cared the prosecution of the applications would be careful and focused, from beginning to end, and beginning with the decision to not bother filing a patent application in the first place.

  27. JD:

    Interesting case you cited. Classic USPTO. The BPAI affirms the examiner’s 102 rejection. However, once appealed, the solicitor realizes that they are stuck with a bad decision and want to remand it.

    To be honest, once the USPTO asked for the remand, I knew they were going to get it. The FC isn’t going to opine on something they don’t have to.

    I see that a final rejection has been issued after remand. Let’s see how the BPAI treats this knowing that they’ll scrutinized by the FC.

  28. “The last time I asked Teh Big Whiners here to provide some examples of their awesome inventions getting screwed over, we were presented with incredibly smelly and impossibly lame great great great great great grandchild of a continuation. I’m still waiting to see the good stuff.”

    The examples I provided met the exact criteria you specified. An objectively baseless rejection. Of course, faced with that proof, you changed the criteria. And then claimed that because the two examples had a large number of continuations pending, they were somehow disqaulified as meeting your request. Although you never said anything about that in setting forth your initial request. Nor did you explain why the number of pending continuations had any bearing on why the particular rejections were not objectively baseless.

    Typical for you.

    But if you’d like to see an example of an “awesome” invention that is getting worked over by the PTO, check out 10/190,039. It’s a “simple” mechanical case. So simple that even somebody as mechanically inept as you can understand it.

    The rejections are appealed to BPAI. BPAI affirms. Case is appealed to Fed. Cir. Appellant files brief. PTO requests a remand. Acknowledges rejections that were affirmed by BPAI are POS.

    Typical PTO. Wait until the applicant/appellant has gone through the time and expense of briefing the case, and then admit all the work done by the PTO up until that point is worthless garbage, and request an opportunity for a do over. Like I always say, the PTO considers it their right to have an unlimited number of opportunities to get it wrong.

    Check out page 12 of the (associate) solicitor’s 9/7/06 brief. Particularly the part where she claims that if the Fed. Cir. will remand she’ll personally monitor the application to make sure the case is expeditiously handled.

    The remand is granted. 8+ months later another lame OA is issued. That’s certainly expeditious handling.

    Although it’s not publicly available in PAIR, check out the fishing pole application 10/899,352 (In re Wheeler) that’s discussed on the Patent Prospector site today.

    Anticipation rejection. Affirmed by BPAI. Reversed by Fed. Cir.

    We’re now at the point where the PTO, and BPAI, can’t even establish a prima facie case of anticipation against a fishing pole. Or recognize when the examiner’s case is a complete POS.

    But there are no problems with objectively baseless rejections being issued by the PTO.

    Right?

    Let me guess, these examples don’t qualify either.

  29. “I’m still waiting to see the good stuff.”

    When you out yourself, I’ll consider outing myself. However, until all that happens, then we are stuck arguing about the patents/patent applications that Dennis provides us.

  30. “So, this admission that the Office screwed up its job in not applying the Law and allowing bad patents is a rationale for changing the rules of the game? This is the rationale for STILL not doing your job and following the Law? Blame the applicants when the Office doesn’t know and properly apply the Law?”

    Wow, that’s some serious crybaby right there.

    News flash: e6k is a patent examiner, or at least he plays one here. Unless you get off satisfying e6k’s sadistic tendencies, why get bent out of shape arguing with the guy? He can’t do dick to change the PTO.

    The last time I asked Teh Big Whiners here to provide some examples of their awesome inventions getting screwed over, we were presented with incredibly smelly and impossibly lame great great great great great grandchild of a continuation. I’m still waiting to see the good stuff.

  31. Execution, Execution, Execution,

    “PDS, remember, the reason we’re “anti-patent” aka would like fewer allowed patents, is because of the whole public getting pissed about too many blatantly obvious patents slipping through. Never forget that.”

    So, this admission that the Office screwed up its job in not applying the Law and allowing bad patents is a rationale for changing the rules of the game? This is the rationale for STILL not doing your job and following the Law? Blame the applicants when the Office doesn’t know and properly apply the Law? The job’s too tough so let’s change the Law? Man up, fix the critical problem. The critical problem is NOT the Law.

    “It’s not like all examiners follow the rules anyway.”

    HELLO – we have identified the problem. Know the law – do your job, stop the Power-grabbing, anti-patent campaigns. Ethical abandonment to force applicants to dance just because the Examiner can and try to meet the Examiner’s expressed opinions that run counter to the Law:
    “35 U.S.C. 101 Inventions patentable.
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
    A person shall be entitled to a patent unless โ€”…”

    We need a new Head Coach for this team…

  32. Since process clams are now required to be tied to a particular machine or transform a physical article to a different state or thing, are process claims indefinite if they can be performed in different physical locations and on different models of a particular machine? Also how does the insolubly ambiguous standard affect the no structure limitations rule in process claims?

  33. “And your point is? If the art is good, no amount of MPEP is going to help you. It’s not like all examiners follow the rules anyway.”

    Herein lies the problem. The art is rarely good. If the art is good, I usually don’t need an examiner to explain why it is good. Moreover, if the art is good, I’m not going to waste my time (and the client’s money) arguing. Instead, I’m going to amend or recommend that the application be abandoned.

    However, I rarely have to amend, and my recommendations for abandonment are few and far between. Instead, I’m stuck with examiners trying to put lipstick on a sty full of pigs. This is where the MPEP and plain, old case law help me to show the examiners the errors of their ways.

    If the examiners ignore the rules, then they will get appealed, and since (from my experience) a very large percentage of applications I appeal never get an examiner’s answer, I would say that at least someone at the USPTO knows a solid argument when they see it.

  34. “Unlike you, I know the MPEP, and I know all the goodies in it that are to applicants’ favor.”

    And your point is? If the art is good, no amount of MPEP is going to help you. It’s not like all examiners follow the rules anyway.

  35. “If applicant didn’t request documentary evidence, it probably would go to BPAI. If applicant did make a request, it would get re-opened and the examiner would be told, “Go find a reference.””

    Well it didn’t in my preappeal I just got through having the other day. Appeal might follow so we’ll see. Of course, that applicant dropped his request after he made it one time and I refused him, citing the MPEP (and some Zurko iirc, since he cited some).

    “I would imagine that 95% of the public thinks that patents are a good idea …”

    All of the “public” that I know of that aren’t serious applicants already who have done some homework think the patent system is a get rich quick lottery, or a way to make themselves feel “accomplished”. That is if we’re not counting the ones that know they don’t know wtf it is and admit it.

  36. “In any event, I do hope that you can at least see that I am not relying on the judgement of obviousness for the overlapping portions of the ranges, but rather the judgement of obviousness of the not overlapping portions, i.e. the actual different portions.”

    As I said before, you don’t know the difference between holding and a dicta … in fact, you probably think holding is something what occurs during a football game which causes a flag to be thrown.

    From Woodruff:
    “We agree, however, with the Board that the disclosure in the McGill patent of a carbon monoxide concentration of “about 1-5%” does allow for concentrations slightly above 5%.”

    Thus, Woodruff found that there was overlapping ranges.

    As for your distinction between overlapping/nonoverlapping portions, as I told you a couple of days ago, obviousness is based upon the claimed invention, as a whole. If the claimed invention ecompasses obvious subject matter (i.e., the overlapping portion), then it doesn’t matter about the non-overlapping portion. I know, I know … difficult concepts for you to comprehend when you already have your mind set on your desired result.

    Regardless …. you lose, yet again.

  37. “I promise you pds, you have never had to deal with the likes of me.”

    I’ve had to deal with far worse. Although you are somewhat lazy, you aren’t entirely lazy. Some of the worst examinations are examiners who won’t explain anything.

    As for you, you would be EASY to take care of. You try to be a lawyer … and guess what? you aren’t, which means that you don’t understand case law, the difference between dicta and a holding, and your reading comprehension is awful.

    Factual errors are harder to argue, but because you make so many legal errors, it would be easy to cut your arguments to shreds.

    Heck, I would prosecute some of your cases for free … just for the fun of it … and I’m serious. Unlike you, I don’t shirk my responsibilities and take the easy way out. You would be bit-ching and moaning about me for weeks after you got my first response.

    Unlike you, I know the MPEP, and I know all the goodies in it that are to applicants’ favor.

  38. “PDS, remember, the reason we’re “anti-patent” aka would like fewer allowed patents, is because of the whole public getting pissed about too many blatantly obvious patents slipping through. Never forget that.”

    Remember the old expression about “throwing the baby out with the bath water.” BTW — I doubt that even the most ardent of patent critics can name no more than a dozen of these “blatantly obvious patents.” Moreover, if they are blatantly obvious, my response is the following: (i) the examiner did a shi tty job and (ii) request a reexamination of the patent.

    With over 7,000,000 issued patents, you are going to find some stinkers. Heck, with only a few thousand US patent examiners, we get the stinkers to show up on this board.

    As for the “whole public,” I guess most of those are (i) people who were afraid their Blackberries would stop working and (ii) the open source crowd.

    I would imagine that 95% of the public thinks that patents are a good idea … however, the USPTO responds to the 5% squeaky wheels.

  39. “Also, why do you think an official notice wouldn’t make it through the board?”

    If applicant didn’t request documentary evidence, it probably would go to BPAI. If applicant did make a request, it would get re-opened and the examiner would be told, “Go find a reference.”

  40. “…just like you don’t say ‘a prima facie case of anticipation’. You could … but you just don’t.”

    I almost always note the examiner’s failure to establish a prima facie case of anticipation. It’s no different than obviousness.

    Same with enablement, or written description.

    It’s good practice to cite the requirements for establishing a prima facie case, of whatever the issue is (e.g. obviousness, anticipation, etc.), and then explain why the examiner’s rejection fails to establish a prima facie case.

  41. “clear prima facie case of nonpatentability”

    Is a rejection under 112 even said to be prima facie under any circumstances? That seems out of place. The only reason we use those words is for 103 iirc. You don’t say “a prima facie case of indefiniteness” just like you don’t say “a prima facie case of anticipation”. You could … but you just don’t.

    “Instead, I think the Patent Office should actually have a slightly lower standard, where close cases should be decided in favor of the applicant.”

    You should have made your name: Anonprosecutor2008

    “Let the patent holder beware; enforce with caution.”

    I would agree with you that the system should be changed to work thus, but the current system of forcing them into having a patent that deserves a presumption of validity would require a complete overhaul by congress to accomodate such a change.

  42. “Bogese didn’t involve RCE’s. RCE’s weren’t available yet in Mr. Bogese’s time.”

    I didn’t say they were. I said the only reason you have them is because the pto used its inherent authority to give you a gift.

    “RCE’s are the evolution of CPA’s, which were the evolution of FWC’s”

    Thanks for confirming my point.

    Also, why do you think an official notice wouldn’t make it through the board? An Official notice made it through the board in your vaunted Zirko without so much as a second glance. And then it made it through the SCOTUS. I’ve also seen the scattered willy nilly around decisions, they’re not easy to spot though, the court just skips over them and barely mentions it unless the applicant raises it as an issue. You could be right, some people might be told to reopen. It’ll depend on the simplicity of the notice taken most likely.

  43. “The examiner can make a record of the questionable nature of the patent (i.e., the claims may potentially be found obvious over…, etc.) in the file wrapper.”

    Can’t do that. See MPEP 707.07(d): Nor should he or she (i.e. the examiner) express doubts as to the allowability of allowed claims or state that every doubt has been resolved in favor of the applicant in granting him or her the claims allowed.

  44. “Don’t forget that first step, it’s the part that counts. It’s also the part JD will likely leave out, and be SOL because of.”

    I’ve never argued that an examiner’s statement is not substantial evidence. All I’ve ever done to traverse the taking of Official Notice is request the required documentary evidence. Works every time.

    “This is true that the examiner rarely requires him to. Because we’re an amicable lot. Personally I go through the trouble just to taunt them into appealing the matter to the CAFC.”

    Let’s see about that. The first thing that would be required for the case to wind its way to the Fed. Cir. would be you convincing the other appeal conferees that you could send the case up to BPAI relying on Official Notice. Very unlikely to happen. Not impossible, but highly unlikely. Most likely (99.9+%) you’ll be told to re-open and cite a reference.

    The next thing that would have to happen is you’d have to be affirmed by BPAI.

    Okay, we can all stop laughing now.

    “You know what is funny JD? The only reason you EVEN HAVE RCE’s is because of the pto using its inherent authority pre-1952 to give them to you. Ungrateful self-entitled upstarts these old timers are.”

    Bogese didn’t involve RCE’s. RCE’s weren’t available yet in Mr. Bogese’s time.

    RCE’s are the evolution of CPA’s, which were the evolution of FWC’s.

    The good thing about being an old-timer is you have some understanding of history. Mostly because you witnessed it first hand. :-)

  45. I’m just responding to the original post, since I haven’t had time to read all of the comments yet.

    In short, I don’t agree with having a higher standard for 112 at the USPTO than the courts would use.

    The Patent Office is supposed to allow a patent application to issue as a patent unless the resulting patent would fail to be enforceable. The Patent Office is therefore supposed to examine applications and should only reject those applications where there is a clear prima facie case of nonpatentability.

    So, the Patent Office is supposed to act as a filter that prevents patents from issuing that would otherwise be easily invalidated by the courts.

    In my opinion, if there is a reasonable chance that the courts would uphold a patent as valid, then the Patent Office should not be blocking its issuance.

    Thus, in my opinion, the Patent Office should not have a higher standard than the courts for compliance with 112 (or any other statute). Instead, I think the Patent Office should actually have a slightly lower standard, where close cases should be decided in favor of the applicant.

    Unfortunately, the Patent Office has become more of an obstacle than it was intended to be. Examiners seem content to block a patent even where it’s a close call. Where applicants feel they can reasonably rebut such a borderline rejection, they refuse to give up and continue to pursue a patent. As a result, examination of each application takes longer than it should and we are left with the current backlog.

    If an applicant wants a patent that’s somewhat questionable, the Patent Office should err in favor of the applicant and allow it. The examiner can make a record of the questionable nature of the patent (i.e., the claims may potentially be found obvious over…, etc.) in the file wrapper. Let the patent holder beware; enforce with caution.

  46. “That MPEP section you cite is the PTO’s made up nonsense. It has no force of law.”

    It does however have the force of 6k behind it. That force requires many $, and many months to even attempt to overcome. And don’t worry JD, as soon as you challenge it as not having the force of law to the CAFC, it will have the force of law :)

    ‘See the BPAI decision in 09/077,337 (pages 8-9, iirc). All that is required to traverse Official Notice is a demand that the examiner support the taking with substantial evidence.”

    Thanks for the citation JD, I figured you had that one on hand. JD knows this is the case where the attorney specifically stated that the examiners statement WAS NOT substantial evidence, and then incidentally demanded that he produce it. Don’t forget that first step, it’s the part that counts. It’s also the part JD will likely leave out, and be SOL because of.

    “Why? Because I’m not required to. That’s why”

    This is true that the examiner rarely requires him to. Because we’re an amicable lot. Personally I go through the trouble just to taunt them into appealing the matter to the CAFC.

    PDS, remember, the reason we’re “anti-patent” aka would like fewer allowed patents, is because of the whole public getting pissed about too many blatantly obvious patents slipping through. Never forget that.

    “Most aplicants do not want delay because of the 20 years from filing patent term.”

    Keyword: Most.

    She’s right about the “abuse” though. But by “abuse” cases she means “cases where I didn’t present an application that appeared to be entitled to a patent”. It is really her fault and she doesn’t want to take responsibility for it.

    BTW, my first Miyazaki rejection passed my spe a few hours ago :) Amazingly I was not able to raise the issue in two other cases, at least without really digging. Just goes to show, that case will not be the end o the world even if it does cause some minor problems here and there.

    “Yes. Bogese is the ONE case the PTO can cite. From that, they have attempted to latch on to the “inherent authority” discussed by the court in the ridiculous power grab that was the claim examination and continuation rules. ”

    You know what is funny JD? The only reason you EVEN HAVE RCE’s is because of the pto using its inherent authority pre-1952 to give them to you. Ungrateful self-entitled upstarts these old timers are.

    “Regardless, how does one present evidence that the “noticed fact is not considered to be common knowledge or well-known in the art.” ”

    You might start by citing an obscure reference showing the noticed fact and stating you searched the relevant sub-classes and could not find a thing about it. Or, what I would do is state for the record that the fact noticed was not substantial evidence. Your statement is just as much evidence as the examiner’s is right? Though it’s probably not as substantial as the examiner’s ๐Ÿ˜‰

    “Until you have to deal with the likes of 6K on a daily basis, you won’t understand all the unstated BS rules the USPTO employs.”

    I promise you pds, you have never had to deal with the likes of me. If you had, you probably wouldn’t want to talk about it. We’d have to call you PTS from now on, for post traumatic stress.

    I showed you guys that movie clip where me and a handful of examiners fought off wave after wave of invading attorneys back in the day right?

    To Woodruff

    I’m going to put this simply so that you might stand a chance of comprehending it the second time I run it by you.

    Read this:
    link to altlaw.org

    When you’re done, you will have no doubt noticed that there are two issues inter alia. First there is the issue of whether or not the ranges do indeed overlap. The court agrees with the board that they do because the prior art teaches about 5% and the claim says more than 5% which encompasses 5.00000001% which is in the prior art. Then, moving to the next issue, there is the issue of whether or not patentability could be found in the difference of the claimed ranges compared to the ranges in the prior art. The court then states:

    “Nor can patentability be found in the difference in carbon monoxide ranges recited in the claims. The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. See, e.g., Gardner v. TEC Sys., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed.Cir.), cert. denied, 469 U.S. 830, 105 S.Ct. 116, 83 L.Ed.2d 60 (1984); In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re Ornitz, 351 F.2d 1013, 53 CCPA 716, 147 USPQ 283 (1965); In re Aller, 220 F.2d 454, 42 CCPA 824, 105 USPQ 233 (1955). These cases have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. Gardner, 725 F.2d at 1349, 220 USPQ at 786 (obviousness determination affirmed because dimensional limitations in claims did not specify a device which performed and operated differently from the prior art); Boesch, 617 F.2d at 276, 205 USPQ at 219; Ornitz, 351 F.2d at 1016-17, 147 USPQ at 286; Aller, 220 F.2d at 456, 105 USPQ at 235. Woodruff has made no such showing in the present case. The only test results presented by Woodruff are the results reported by Mr. Bell, comparing Woodruff’s claimed invention to the commercial embodiment of McGill’s method. While Woodruff’s invention certainly showed superior fungi-inhibiting effect in these tests, the critical comparison is not with the commercial embodiment of McGill’s invention, but with the method taught in his patent. According to Mr. Bell’s declaration, the carbon monoxide concentration in the test group representing the commercial embodiment of McGill’s invention was allowed to drop to 0% after 4 days. The McGill patent does not teach allowing the concentrations of any of the gases to fall out of the suggested ranges.”

    I give applicants the presumption that they are relying on the difference between their claimed range and the inherent range of the reference even though it is not concretely known if there is a difference or not. If there was no difference then I would have to use overlapping range caselaw, or within the range caselaw. As is, it seems to me the court is speaking to the difference between ranges.

    Considering that, is it improper to use Woodruff for a case that does not involve an overlap, and is it improper to thus use the courts statements as above to say that the applicant must show criticality, rather than myself?

    In any event, I do hope that you can at least see that I am not relying on the judgement of obviousness for the overlapping portions of the ranges, but rather the judgement of obviousness of the not overlapping portions, i.e. the actual different portions.

  47. pds observed, “Until you have to deal with the likes of 6K on a daily basis, you won’t understand all the unstated BS rules the USPTO employs.”

    I could not agree more. The USPTO has no apparent desire to allow claims that are remotely close to the boundaries of patentable subject matter to which applicants are entitled. They too often reject based on gut feelings about what may or should be prior art and, as a result, rely on mediocre references and less than mediocre rationales, if any. Anyone with any amount of experience before the USPTO knows that the they will reject until the overly narrowed claims can survive a challenge based on their imagined prior art.

  48. Nobody123:

    link to findarticles.com

    The U.S. Patent and Trademark Office has decided to stop releasing its annual list of the top 10 organizations receiving the most U.S. patents. “In ceasing publication of the top 10 list, the USPTO is emphasizing quality over quantity by discouraging any perception that we believe more is better,” says Patent Office deputy director of public affairs Brigid Quinn. “For the past four years, USPTO has focused on the quality of the patents it issues. We are now seeing the results of those efforts. Last year, patent quality was the best in over 20 years, and the agency also had the lowest rate of patents approved in more than 30 years. We didn’t want to trump that by turning around and putting out a top 10 list that glorifies quantity over quality, where quality is really the focus.”

    ***********

    In a world were R&D is ever-expanding; where new forms of technology are being discovered literally every day; and where there is natually more discovery than there ever was before (based simply on a greater population), the USPTO has decided that less patents is better.

    Stop sticking your head in the sand … the USPTO is anti-patents.

  49. “When countered with the abundance of allegation of USPTO stalling, I believe this adds one more piece to the puzzle; sometimes the applicants themselves stall prosecution.”

    If you knew anything about In re Bogese and the law, you would now that it dealt with an EXTREME example of applicant abuse that isn’t even possible for any applications filed after June 8, 1995, after which the patent term changed from 17 years from issue to 20 years from filing. This case was about dealing with “submarine” patents.

    Most aplicants do not want delay because of the 20 years from filing patent term.

    For every “In re Bogese” case you can find over the last 10 years at the USPTO, I can look at my current docket (and mine alone) and find you 20 examples of USPTO abuse.

  50. “In my experience, I have never seen an practitioner try to ‘specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.’http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2144_03.htm”

    Nobody123, the reason you’ve never seen any practitioner state why the noticed fact is not considered to be common knowledge is because that is not a requirement to traverse the taking of Official Notice.

    That MPEP section you cite is the PTO’s made up nonsense. It has no force of law.

    See the BPAI decision in 09/077,337 (pages 8-9, iirc). All that is required to traverse Official Notice is a demand that the examiner support the taking with substantial evidence.

    “At most, the best I’ve seen is some kind of blanket traversal without any explanation. Can anybody chime in with their experience?”

    Yes. My experience is that every time an examiner takes Official Notice, I simply respond by requesting that the examiner provide documentary evidence in support of the taking. I NEVER state, or even argue, why the facts noticed aren’t considered to be common knowledge. Why? Because I’m not required to. That’s why.

    “While we may consider the MPEP, being drafted by the USPTO, to be self-serving and of course would not address torts committed by the USPTO, I believe that at least one instance of applicant/practitioner stalling exists.”

    Yes. Bogese is the ONE case the PTO can cite. From that, they have attempted to latch on to the “inherent authority” discussed by the court in the ridiculous power grab that was the claim examination and continuation rules.

    Mr. Toupin was actually bold enough to cite Bogese to the Fed. Cir. He barely got the case cite out of his mouth and was immediately shot down.

  51. “the USPTO requires an EXTREMELY narrow and lengthy claims”

    “Can you cite any specific guidelines for this? Is this conclusion gleaned from experience or did you actually get this from a USPTO representative?”

    As I said before, you don’t practice before the USPTO. I don’t care how many applications you have reviewed. Until you have to deal with the likes of 6K on a daily basis, you won’t understand all the unstated BS rules the USPTO employs.

  52. In my experience, I have never seen an practitioner try to “specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.”

    Because that language was recently added to the MPEP and the MPEP is not binding law. The reference to 37 CFR 1.111(b) is prefaced by “see” which means there is no literal support for their requirement, they are just hoping that their requirement can been “seen” from this rule. Regardless, how does one present evidence that the “noticed fact is not considered to be common knowledge or well-known in the art.” You are trying to prove the non-existence of something.

  53. “Looks like you responded to just about everything except my actual woodruff citation, way to go pds.”

    Uhhhh …. no.

    What I wrote is that “Proving the criticality of a range is only necessary AFTER the examiner has established a prima facie case of obviousness based on overlapping ranges (see MPEP 2144.05(B)(III)).”

    From the MPEP:

    In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.)

    As such, I addressed Woodruff (i.e., overlapping ranges for establishing a prima facie case). 6K — you really need to work on your reading comprehension.

  54. David wrote:: “The heart of patent examination is in sections 102 and 103. Other sections – 101, 112, etc. – are SUPPOSED to be fairly low thresholds of formality and competence.”

    Agreed.

    But have you *seen* some of the … that gets filed these days?

    Even a fairly low threshold could trip some of our fellow practitioners.

  55. “Ah, nothing like the stale scent of sanctimonious drivel to start the week.”

    Dear Malcom,
    Lovely to see that you noticed the slight sent your way. Instead of, once again, adding a meaningless comment that in no way advances the conversation, why don’t you think about why the scent is so stale? Perhaps you’d realize that the staleness is because your comments by and large have been so meaningless for so long that in the event that you actually have something worthwhile to add, bored (sic) readers simply see that the post belongs to you and either
    a) ignore out of hand
    b) get a whiff and then ignore the contents as more of the same useless pontificating
    c) attack you

    or

    d) with seeming futily, try to give you candid advice that you yourself are too sanctimonius to consider let alone act upon.

  56. “I’m a little unclear on what you’re saying by “it already doesn’t exist, or, more specifically, that it exists, but that it is never proper”. What is “it”? ON?

    In my experience, I have never seen an practitioner try to “specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.”
    link to uspto.gov

    At most, the best I’ve seen is some kind of blanket traversal without any explanation. Can anybody chime in with their experience?”

    ON=official notice. That’s the topic of the conversation dude. Yes I could show you a case where they did properly traverse, JD knows which one it is but I don’t remember the app no. Anyway, pds already stated her position for you. She’d get rid of it and she doesn’t like it because she’s grumpy, or probably just igno rant. She claims it is misused, but it is probably properly used but she just doesn’t have knowledge akin to common knowledge in her arts. If I say usuing LED’s in flashlights is old and well known as of 2005, they’d traverse the fact.

  57. “Robert Kim ”

    I know that guy lol. See him all the time still but don’t talk to him often. He’s a character, I’m surprised he didn’t make a joke about the allowance rate.

    “I have never seen any representative from the USPTO state that their goal is zero allowance.”

    There are a few examiners who will admit this to you though. It is usually only in specific AU’s, not for the office as a whole. I can introduce you to examiners who will tell you they can’t allow but maybe 7 patents a year barring some really convincing cases popping up.

    “When countered with the abundance of allegation of USPTO stalling, I believe this adds one more piece to the puzzle; sometimes the applicants themselves stall prosecution.”

    I know of a case on my docket where that is happening. I keep daring them to appeal, practically begging. But they just will not do it. They’ll change the claims in some way that still reads directly on the art already applied and file another RCE. We’re coming up on no. 3 iirc. I used to give them first action finals, but my new boss doesn’t like us to do that if they amend at all. Ridiculous policies. First action finals are there to reduce applicant heeing and hawing. So far as I can see there is no other reason for them to exist.

  58. “A refreshing read of exchanges here on the board without the usual useless noise of personal attacks, excrement and other fluff.”

    Ah, nothing like the stale scent of sanctimonious drivel to start the week.

  59. I just want to throw in one last thing tonight.

    The MPEP talks about prosecution laches: “The Federal Circuit affirmed a rejection of claims in a patent application on the ground that applicant had forfeited his right to a patent under the doctrine of prosecution history laches for unreasonable and undue delay in prosecution. In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002) (Applicant “filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity to do so by the PTO.”).”
    link to uspto.gov

    While we may consider the MPEP, being drafted by the USPTO, to be self-serving and of course would not address torts committed by the USPTO, I believe that at least one instance of applicant/practitioner stalling exists.

    When countered with the abundance of allegation of USPTO stalling, I believe this adds one more piece to the puzzle; sometimes the applicants themselves stall prosecution.

  60. “Ahh … gee whiz … how about this
    link to patentlyo.com
    and this
    /media/docs/2008/12/koobilski.pdf

    You are asking these questions and you don’t know what the USPTO’s “take” is??????”

    These links you posted fall under 101. To the best of my understanding, the USPTO is applying this decision by requiring method claims to pass the “machine or transformation” test. All other facets of 101 prior to this decision remain intact.

    Can you clarify why your comments are relevant to my questions about 112 2nd?

  61. “And as most applicants will tell you, I’ve rejected it as a terrible idea. In exchange for a faster allowance, the USPTO requires an OVERWHELMING level of applicant-led examination and EXTREMELY narrow and lengthy claims. As any litigator will tell you, this type of claim is utterly useless for enforcement. And it’s not even a guarantee! The applicant’s request for accelerated examination may well be rejected by the USPTO, leaving the applicant with very expensive preparation costs for a narrow application that STILL isn’t examined for six years.”

    Can you address specifically to which part of the required documentation you object?

    While I agree this is more work for the practitioner, the USPTO recommends mapping claim limitations to the best art with a table checking which art teaches which limitation.

    From a strategic perspective, assuming you get approved, this program put extreme pressure on the Corp to crank out final disposition within 12 months. While I acknowledge that pre-exam for program qualification is rigorous, once you get approved, the examiner is required to search the disclosed invention, as opposed to a mere suggestion by the MPEP: “Both claimed and unclaimed aspects of the invention described in the specification should be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed”
    link to uspto.gov

    The accelerated exam program requires examiners to identify allowable subject matter in the specification, if any, as opposed to leaving the examiner to determine “if there is a reasonable expectation that the unclaimed aspects may be later claimed”.

    Additionally, since the examiner is under pressure to move the case, and because the applicant bears additional burden search requirements on top of the duty to disclose known art, can the examiner be less accountable for identifying allowable subject matter?

    I mean that the examiner could be less gun-shy because the applicant bears more of a burden for a bad allowance. The examiner also has less time for searching.

    Would these be good reasons for an examiner to allow a case?

    “the USPTO requires an EXTREMELY narrow and lengthy claims”

    Can you cite any specific guidelines for this? Is this conclusion gleaned from experience or did you actually get this from a USPTO representative?

    Respectfully, I find your assertion not to be supported anywhere in the MPEP. In fact, the MPEP says to reject unduly long claims as prolix: “Claims are rejected as prolix when they contain long recitations that the metes and bounds of the claimed subject matter cannot be determined.”
    link to uspto.gov

    Could you clarify?

    “The applicant’s request for accelerated examination may well be rejected by the USPTO”

    I agree that acc. exam. requests are processed by special examiners, but in my review of these cases, the special examiner clearly sets forth the errors for denying acc. exam. status so that the practitioner can correct the deficiencies. In 100% of these cases, I have found that the request is later approved when the deficiencies are corrected.

    What has been your personal experience?

    “leaving the applicant with very expensive preparation costs for a narrow application that STILL isn’t examined for six years.”

    I think this is highly dependent on the art. While it is true that pendency for first action is 6 years in some areas, I know several areas where the backlog is practically gone.

    As said above, it seems like we’re using the worst of the bunch to represent the group.

    Can you comment?

    “It’s a terrible idea. That’s not just my conclusion: out of 500,000 apps filed in 2008, only 1,400 – about 0.3% – were petitioned for accelerated examination.”

    I neither agree nor disagree with your conclusion. Based on my experience, some of the practitioners I spoke with do not know that the accelerated program even exists.

    We would need more evidence why 99.7% do not file. Without more evidence, I am not comfortable saying that failure to enter the program amounts to a conscious value judgement on the program by the applicant/practitioner.

  62. “The Office needs to stop power grabbing and thinking about changing the playing rules and start focusing on playing as the rules are. If you are bad at American Football, don’t try to change the game to what the world calls football (and what we in the States call soccer), get a new coach and practice, practice, practice. If the General Manager/Owner does not want to hire a stellar coach, or obtain talented players, insisting on drafting raw talent that will take years to develop, then there can be no surprise that the team will suck in the short to mid term.”

    I think the biggest problem is the pay scale. A lot of examiners, especially attorneys, leave because of low pay.

    Unfortunately the pay scale cannot be raised until the examiner’s union is disbanded. Like the auto industry, they live and die by the union.

    I personally believe that the best way would to give the examiners pay raises. That way, the good ones won’t leave.

    Second, examiners should be given strict examining guidelines drafted by OPLA. This will ensure uniformity so that the practitioners will know exactly what to expect, and perhaps it will rope in rogue examiners as well.

    “Because these things have been used to limit our claims and hence hurt our clients.”

    How would you balance getting an allowance in the first place with unduly limiting the claim scope? It seems that trying to do one affects the other.

    “Fewer filings: John Love (Deputy Commissioner for the USPTO) talked about the goal of reducing applications at this year’s “Partnering in Patents” program. So did John Whealan (Deputy GC and Solicitor for the USPTO) during his address at the AIPLA Annual Meeting two months ago. And “fewer filings” is the stated intent of the hard-pushed-for continuation rules. Etc.”

    Respectfully, this is not the impression I got from John Love or any of his representatives.

    I was there for the 10/22/2008 Partnering in Patents presentation. I listened very intently during John Love’s speech. I do not recall him saying that his goal is to reduce filings.

    Would you happen to have a transcript or something like that? Perhaps I was tuning out for a moment and did not fully comprehend his comments.

    “Fewer allowances: Did you see this chart from my post?
    link to uspto.gov

    That chart shows plummeting allowance rates – historically low, in fact. And that slide came from this report –
    link to uspto.gov
    – in which the USPTO slaps itself on the back for having met its primary goals for 2006… which centrally includes reducing the allowance rate.

    That trend (and that goal) continued in 2007 and 2008. Here is this year’s report –
    link to patentdocs.org
    – in which the USPTO again applauds itself on achieving a historically low 47.3% allowance rate.”

    I am not sure I would characterise the USPTO in the manner you did. If you recall, during the Pet Peeves portion of the 10/22 meeting, the Bar’s chief complaint was the allowance rate.

    Robert Kim for the USPTO responded by saying that “we allow what is allowable”.

    I personally would characterise the USPTO as citing the reason for low allowance rates to be: a) the subject matter in view of the prior art, and b) the quality of the applications.

    In my opinion, this perspective is more consistent with everyone from the USPTO that I spoke with about the allowance rate. They seem to blame the applicant for the allowance rate. Although it may be true of some individual examiners, I have never seen any representative from the USPTO state that their goal is zero allowance.

    Specifically, I would like to respond to this comment: “http://www.uspto.gov/web/offices/com/speeches/06-73.htm
    – in which the USPTO slaps itself on the back for having met its primary goals for 2006… which centrally includes reducing the allowance rate.”

    In that report, the USPTO acknowledges the low allowance rate: “At 54%, the patent allowance rate was also the lowest on record.”

    I did not see any direct patting on the back. Could you please clarify on what leads you to conclude this?

    “it is exactly counter to the stated desires of the current USPTO administration”

    Can you cite explicitly where your assertion comes from?

    “So why does the USPTO want to squelch patent filings? Great question. I have some answers for you, if you want them.”

    Please share. I am very curious.

    “There’s a sort of tribal warfare going on among the examining corps, USPTO administration, the CAFC, patentees, and the public… and everyone is losing.”

    I will agree with you there. I noticed that the push for business method quality in the early 2000s was met with lower allowance rates. Now it seems like the pendulum wants to swing the other way.

    Perhaps we want less quality and more allowances, and let the courts sort out the claims? Is this what you want?

  63. “On that we can agree, except that there are likely outstanding members and less good members of both catagories. Sometimes I get the feeling that many of us on this board are perhaps some of the more outstanding ones and we’re always btching that the suc ky members, that presumably make up the majority, of the opposite catagory suc k. And we’re probably right.”

    I agree. We shouldn’t judge a group based on the worst member.

    “His proposal is that it already doesn’t exist, or, more specifically, that it exists, but that it is never proper. Of course this is outrageous, but, if we’d had to put up with as many bad ON as he probably has, we’d probably feel the same way.”

    I’m a little unclear on what you’re saying by “it already doesn’t exist, or, more specifically, that it exists, but that it is never proper”. What is “it”? ON?

    In my experience, I have never seen an practitioner try to “specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.”
    link to uspto.gov

    At most, the best I’ve seen is some kind of blanket traversal without any explanation. Can anybody chime in with their experience?

    “I think if you have test data to prove unexpected results it is patentable.
    for the limited ranges bookended by the prior art, that is.”

    I believe you are 50% correct. According to the MPEP, criticality, including unexpected results, may be used to rebut the prima facie case of obviousness: link to uspto.gov

    I would be hesitant to say that the claim would be patentable because assuming the best reference is applied: a) the rebuttal may not be germane if the art is anticipatory, b) the rebuttal is not sufficient to under MPEP 716.02 and subsections thereunder: link to uspto.gov

    and/or c) the claim is not statutory.

    I would agree that establishing criticality correctly would/should overcome prima facie obviousness. Whether the claim is allowable depends on other factors. Fair?

    “Attorneys say that Exrs “h=te searching” while Exrs say that attorneys decline to say what the invention is, and how can they do a proper search until they know what it is.”

    I have a feeling that practitioners are reluctant to create file wrapper estoppels by unduly limiting the claim scope during prosecution. Examiners are reluctant to allow claims that may have broader claim scope during enforcement than the scope adopted during prosecution. Is this true?

    “I have never known an examiner to evince consternation that the MPEP or unwritten patent office policy prevented them from rejection a claim they felt was unclear for failing to meet the requirement of 112 2nd paragraph.”

    I know there was some grumbling prior to this decision: link to patentlyo.com

    Some examiners were of the opinions that 112 sixth limitations directed towards computer related inventions should be rejected under 112 second if the specification does not clearly set forth the special purpose computer with special algorithms embedded therein. Other examiners believed that the limitations should be interpreted broadly to encompass pure function, and could be addressed by functional art.

    The first group believed that the claim is indefinite while the second believed that absent any assertion from the practitioners, any 112 sixth limitation should be interpreted to envelop any structure capable of performing the recited functionality.

    I’ve seen actions go both ways and it appears that there were some internal struggles between these two groups.

    “the depth and breadth of ignorance and – even more clearly – inexperience clearly evident in many of the comments on this point does not bode well for the future of the patent system, and likely indicates the reason there are so many bad ideas being given undue credance in the largely misguided debating going on regarding the USPTO and patent reform”

    In general, or are you referring to any specific points raised on this blog, or this thread in particular?

    “A refreshing read of exchanges here on the board without the usual useless noise of personal attacks, excrement and other fluff. Thank you especially to Nobody123 – your input smacks of reason, applied intellect and a certain openness to a healthy exchange of views.”

    Thank you. Because I am fairly inexperienced compare to some, I am rather unbiased towards either side.

  64. I should add, the only app that I have had go to preappeal with a off notice used in the case so far ended up amending around the off notice and getting slapped with a reference for his more narrow claim anyway. Btw, that preappeal is going to appeal. Or, more likely, RCE.

  65. “(after your SPE beats you down, yet again, for your abuse of taking official notice) ”

    I have never had such a thing happen. I’ve made an “improperlol” combination of two pieces of AAPA. And I’ve also made a “proper” but “against policy” restriction. The only two fish to get away from me yet. I probably could have still gotten the restriction one but I decided to be generous, i.e. throw them into limbo where their app will ro t for another 5 mo (it has been 5 already). They had to pay the appeal fee already. Even if they did file an appeal, it would probably be improper because the whole problem with the app is an improper restriction, which is only petitionable. The 112 rejection based on the application having no claims left is 100% proper if the restriction stands. I haven’t decided yet if I should drag my feet until they have to file an actual appeal, and then watch as it is deemed improper. Do you have a position on this?

    Like I would ever suggest an amendment “to save face”. Keep dreaming. Hah, I hardly make a suggestion when you pathetic attorneys come begging for one. The only thing I’d do “to save face” is another couple of google searches and write you up a 102b. Which is what I did in the app with the “improper” AAPA combination. I should also add, the reason I made that AAPA combination was because my old boss gave me the ok. If I didn’t have a new boss the case would probably have gone to appeal. I really ha te changing bosses. Always a new policy. And they ALWAYS start out wanting me to get with them for interviews. Slowly they realize that I have a lot of interviews and it is to their benefit to let me handle the small fish.

  66. curious wrote:

    “due to managerial incompetence they cannot keep up with the filing increase which makes them look bad — so the alternative is to squelch patent filings”

    Yep, that’s one of the clear-cut answers. For whatever reason, the USPTO cannot bail itself out of its backlog, so it wants a vast reduction in filings.

    (I think this is criminally irresponsible for three reasons:

    1) Issuing patents is, um, the primary function of the USPTO. Any procedural change that involves “arbitrarily reducing patent issuances” is a flagrant violation of the USPTO’s CENTRAL PURPOSE. It’s like asking a doctor to save fewer of the patients that he treats, or asking a policeman to arrest fewer criminals.

    2) We have a MASSIVE and growing unemployment problem in the U.S. – particularly in high-tech areas! The USPTO can *definitely* hire its way out of this problem, particularly now! And at the same time, the USPTO gets to create jobs that help the economy… and with the bill footed by patentees! Why the hell the USPTO doesn’t see this is beyond me.

    3) Regardless of how many of its self-serving “goals” it meets every year, the fact remains that USPTO management has *abysmally* failed to fix the central problems with the institution. It is attempting to shift the attention – and blame – to greedy patentees and unethical practitioners in an attempt to shield itself from hard-hitting questions that it can’t answer.)

    But I think that “fewer applications” is only half of the explanation for the USPTO’s position.

    Does anyone else wonder about the USPTO’s obsessive interest in “patent quality” (despite the complete nebulosity of that term?)

    From 1996 to about 2005, the USPTO gained a certain level of public visibility as patenting came into vogue. Unfortunately, a lot of that PR was negative. Amazon’s “OneClick” patent and the RIM vs. NTP cases generated a ton of bad political press. The open-source software community decided to use its “kum-ba-yah” mojo to demonize the patent system – largely as a foil against sworn enemies like Microsoft. And everyone loved weighing in with half-baked opinions on how to “fix” the patent system, citing lame patents like “method of training a cat with a laser pointer” and “method of swinging a golf club.”

    At that juncture, the USPTO had some options. It could have stood up for itself and its examiners. It could have educated the public about the practicalities of the patent system (particularly for software), and explained why “OneClick” wasn’t the debacle it seemed. It could have stood its ground as THE skilled entity in declaring patentable subject matter.

    Instead, the USPTO suffered a catastrophic spine failure. It caved to public pressure. The USPTO chose to respond, “you’re right, we suck… and it’s ALL THEIR FAULT!” – pointing at applicants and the patent bar. Thus began the current era of warfare between patentees and – well, everyone else… with the opposing charge centrally led by the USPTO!

    Why did it choose this route? Frankly, I don’t know. But I view it as a first-order betrayal of the interests of its customers, and of the central mission of the patent office: to ISSUE PATENTS.

    – David Stein

  67. “Can you comment more on what this “take” is? Please feel free to post links and provide citations for further research. Thanks.”

    Ahh … gee whiz … how about this
    link to patentlyo.com
    and this
    /media/docs/2008/12/koobilski.pdf

    You are asking these questions and you don’t know what the USPTO’s “take” is??????

    “Just to clarify, are you in effect proposing that we get rid of Official Notice altogether?”
    I don’t mind the proper use of it, but it is the improper use of it that is the problem. Still I would get rid of it. If an examiner wants to take Official Notice of something, just find a reference. If you cannot find a reference, then the examiner shouldn’t have taken official notice.

    As for the rest of your comments … honestly, they are minor issues. If the examiner has personal knowledge, then force the examiner to prepare an affidavit executed under the penalty of law. I’ll agree to that because the examiner is less likely to fudge the facts. As for citing references after the filing date for a “universal fact,” then again, I don’t care. If it is a “univeral fact,” then it would be inherent in the prior art, so again, it really doesn’t matter.

  68. “It goes something like “The applicant has not established the critical nature of *range x* and since “It is common for the difference between the prior art and the claimed invention to be some range or other variable, in such circumstances the applicant must establish the criticality of the claimed range”.”

    Thanks for proving that you don’t know how to properly apply the case law. Proving the criticality of a range is only necessary AFTER the examiner has established a prima facie case of obviousness based on overlapping ranges (see MPEP 2144.05(B)(III)). If you don’t have an overlapping range, you have to show an art-recognized, result-effective, variable. So many examiners cite that “criticality” bs language without realizing that the BURDEN is on THEM. Lazy, incompetent; lazy, incompetent; lazy, incompetent โ€“ two ways of describing an examiner.

    “Furthermore, what would stop me from taking official notice of the claimed parameter being known to be result effective”
    Nothing. You have already long-established that you don’t care about following the law. However, if you take official notice, I’ll traverse, and then I’ll take it to appeal. However, it won’t ever make it to the BPAI, because you’ll be reopening after the appeal conference (after your SPE beats you down, yet again, for your abuse of taking official notice) or calling me in an attempt to offer up some amendment that will allow you to save face.

    “or simply alleging implicitness to the reference maybe backed with some rational sciencespeak”
    Good luck with that. I absolute LOVE when an examiner tries that BS. Make sh it up โ€ฆ the classic examiner’s response to not finding good art โ€“ instead of allowing the application.

  69. the proposal is good or bad….err…it depends on when “insolubly ambiguous” is considered to be reached.

    So uncertain …just as the “insolubly ambiguous” itself.

    …by now folks are experienced enough to hit the note RIGHT…everytime …:)

    by the way…the proposal would, for sure, lower the standard…

  70. “So why does the USPTO want to squelch patent filings? Great question. I have some answers for you, if you want them.”

    due to managerial incompetence they cannot keep up with the filing increase which makes them look bad — so the alternative is to squelch patent filings

  71. Nobody123 wrote:

    “”The USPTO wants exactly two things at this point:
    (1) Applicants to file fewer applications, and
    (2) Examiners to allow a very small percentage of filed applications.”

    Do you have any evidence of this?”

    Nobody123, the USPTO openly admits both of these goals. So, yes, I have heaps of evidence.

    Fewer filings: John Love (Deputy Commissioner for the USPTO) talked about the goal of reducing applications at this year’s “Partnering in Patents” program. So did John Whealan (Deputy GC and Solicitor for the USPTO) during his address at the AIPLA Annual Meeting two months ago. And “fewer filings” is the stated intent of the hard-pushed-for continuation rules. Etc.

    Fewer allowances: Did you see this chart from my post?
    link to uspto.gov

    That chart shows plummeting allowance rates – historically low, in fact. And that slide came from this report –
    link to uspto.gov
    – in which the USPTO slaps itself on the back for having met its primary goals for 2006… which centrally includes reducing the allowance rate.

    That trend (and that goal) continued in 2007 and 2008. Here is this year’s report –
    link to patentdocs.org
    – in which the USPTO again applauds itself on achieving a historically low 47.3% allowance rate.

    ===

    “From a management objective, if I were a manager for the USPTO, I would want:

    (a) Applicants to file as many applications as possible, and
    (b) Examiners to allow as many filed applications as possible (with adequate quality of course).”

    That’s a very logical and straightforward thought. Unfortunately, it is exactly counter to the stated desires of the current USPTO administration.

    Yes, I agree with you that this is nonsensical. Economists look at high rates of patent filings and issuances as an indicator of economic health. And of course, the rise in patent filings over the last 30 years closely matches the increasing rate of corporate R&D investment, which is sort of logical.

    So why does the USPTO want to squelch patent filings? Great question. I have some answers for you, if you want them.

    ===

    “Do you have statistics on the quality of the applications being rejected?”

    Of course not – and neither does anyone else.

    The “quality” of any particular patent is impossible to quantify. It requires a detailed assessment of the state of the art (including technology, law, and business), the magnitude of the problem solved, the ingenuity of the solution, the completeness of the description, the clearness and breadth of the claims, the commercial value and uses of the patent, etc.

    “Patent quality” is an entirely subjective term. If you ask an examiner, a USPTO official, a patentee, a technologist, and a CAFC judge what “quality” means, you’re likely to get five (or more!) different answers – all legitimate, but all incomplete, and often contradictory (breadth vs. narrowness; assertive and creative claiming vs. clear allowability.)

    The bottom line is that “patent quality” is a red herring. Everyone who uses the term simply does so to push an agenda that suits his or her particular interests. That’s why we’ve had so many “patent reform” initiatives – and no consensus.

    Of course, this lack of consensus has caused the misery and chaos apparent in the patent system today. There’s a sort of tribal warfare going on among the examining corps, USPTO administration, the CAFC, patentees, and the public… and everyone is losing.

    ===

    “Have you considered the accelerated examination program?”

    Of course. And as most applicants will tell you, I’ve rejected it as a terrible idea. In exchange for a faster allowance, the USPTO requires an OVERWHELMING level of applicant-led examination and EXTREMELY narrow and lengthy claims. As any litigator will tell you, this type of claim is utterly useless for enforcement. And it’s not even a guarantee! The applicant’s request for accelerated examination may well be rejected by the USPTO, leaving the applicant with very expensive preparation costs for a narrow application that STILL isn’t examined for six years.

    It’s a terrible idea. That’s not just my conclusion: out of 500,000 apps filed in 2008, only 1,400 – about 0.3% – were petitioned for accelerated examination.

    – David Stein

  72. MaxDrei, I always enjoy your comments. I too have been impressed with Obama’s choices so far and have great hopes for the PTO.

    Regarding incentives: it is true that U.S. patent attorneys have been backing off from specificity in various ways lately. Each time we get slammed for a practice, we try not to do that anymore. So now we can’t say “what the invention is”, we can’t discuss prior art in detail, we can’t have objects of the invention (except perhaps one very broad one). Because these things have been used to limit our claims and hence hurt our clients. I don’t know the answer, but I do recognize that it’s a problem.

  73. Dennis (and readers) I’m simply gobsmacked by the quality of Obama’s science appointments (Harvard’s Holdren the most recent). Seen from Europe, the contrast with the last 8 years could not be starker. But can he match that quality, in his patent appointments? I bet he can.

  74. Well, Noise, I should think that the imperative is to write simple, robust, logical, fair Rules of Play that command respect, so that all players who don’t respect the spirit of the Rules know that they are going to get short shrift. I’m not at all sure that the Rules of Patent Play, in the USA, meet that criterion. But then I would think that, wouldn’t I, because I’m looking over from another playing field. I find that Americans think the Rules of Cricket are crazy, whereas the cricket-playing nations of the world, in Europe, Africa, Asia and The Americas, worship them.

  75. Wow,

    A refreshing read of exchanges here on the board without the usual useless noise of personal attacks, excrement and other fluff. Thank you especially to Nobody123 – your input smacks of reason, applied intellect and a certain openness to a healthy exchange of views.

    MaxDrei,
    I do not think that you are misreading the tendency here in the States for a “vague as possible” initial filing, but I do believe that your mission to make the US adopt Europe practice is still misguided. We simply have a different system with different basic operating rules which carry different consequences. For example, our system is set up for a give and take during prosecution. Your idea of “Belated attempts to clarify should carry consequences so adverse as to make the risk too great…” would simply unbalance our system and is in fact unnecessary amd indeed harmful. Our law already has provisions to accomplish the intent of what I believe you seek (e.g., no new matter can be introduced, Section 112 in each of its paragraphs). I recognize that you believe that you are trying to make our system better, but I believe that you are contributing to the noise which makes it actually difficult for people here to focus on what needs to be focused on.

    The Law is good. The Law does not need to be changed (at least to solve the most critical problem). We need to execute to the Law and perform. The Office needs to stop power grabbing and thinking about changing the playing rules and start focusing on playing as the rules are. If you are bad at American Football, don’t try to change the game to what the world calls football (and what we in the States call soccer), get a new coach and practice, practice, practice. If the General Manager/Owner does not want to hire a stellar coach, or obtain talented players, insisting on drafting raw talent that will take years to develop, then there can be no surprise that the team will suck in the short to mid term.

  76. Three comments:
    (1) One anon commentator above had it right – Examiner’s do NOT use this standard. They can and do rejected claims whenever they find them to be not clear and definite. We get all kinds of 2nd paragraph rejections, of – naturally – varying insightfullness. The bar to second paragraph rejections during prosecution is not high at all. Indeed, I have never known an examiner to evince consternation that the MPEP or unwritten patent office policy prevented them from rejection a claim they felt was unclear for failing to meet the requirement of 112 2nd paragraph. Usually rejections of this type are resolve by rewording the claim, or explaining them on the record in writing in way that creates an estoppel to arguing differently should litigation arise and the claims have to be constued.
    (2) The standard referred to derives in part from the presumption of validity, and it is only one piece of judicial doctrine relating to the interpretation of ambiguous claims. Another aspect is that – where there are several ways to resolve a clear ambiguity and one or more permit it – courts should construe claims to preserve validity.
    (3) Anyone who spends much time communicating – whether in the manner of claims drafting, other types of writing, speaking or in any other way, knows that it is impossible to remove all ambiguity from a communication. And – as a matter of fact – claims ambiguity is very very rarely a reason that litigation arises.
    (4) Frankly, the depth and breadth of ignorance and – even more clearly – inexperience clearly evident in many of the comments on this point does not bode well for the future of the patent system, and likely indicates the reason there are so many bad ideas being given undue credance in the largely misguided debating going on regarding the USPTO and patent reform.

  77. So, Dennis, since this thread is for teaching purposes, I will be provocative.

    Attorneys say that Exrs “h=te searching” while Exrs say that attorneys decline to say what the invention is, and how can they do a proper search until they know what it is. To get out of this bind doesn’t need rocket science. Attorneys are pragmatic, and put the interests of their clients, the inventors, top. What if it is in the interests of inventors to get clear the definition of their invention, no later than when filing the app. Belated attempts to clarify should carry consequences so adverse as to make the risk too great, of filing with a diffuse (at best) statement of what is the contribution to the art. Except in the USA, attorneys strive (in the interests of their clients) to get as correct as possible, already in the WO document, the definition of what the invention is. One has the feeling that, in the USA, the opposite perception is prevalent, that it is in the interests of client to be as vague as possible, when writing the app, about everything except the illustrated embodiment.

    Those who must rely on clearance opinions based on WO publications. Governments have a duty to find ways to force filers to be clear, to promote the progress of industry, and its capacity to offer gainful employment to those who want to work, also in the USA, the land of the patent lottery.

  78. “In my limited experience, I believe that examiners and practitioners commit substantially similar amounts of these errors.”

    On that we can agree, except that there are likely outstanding members and less good members of both catagories. Sometimes I get the feeling that many of us on this board are perhaps some of the more outstanding ones and we’re always btching that the suc ky members, that presumably make up the majority, of the opposite catagory suc k. And we’re probably right.

    “Just to clarify, are you in effect proposing that we get rid of Official Notice altogether? ”

    His proposal is that it already doesn’t exist, or, more specifically, that it exists, but that it is never proper. Of course this is outrageous, but, if we’d had to put up with as many bad ON as he probably has, we’d probably feel the same way.

    “How do you feel about KSR rationale E, “obvious to try”, in terms of limited ranges bookended by the prior art?”

    That is one that would seem to be valid, but then there’s also the rational about prompting variations.

    This is my FP that me or a primary made.

    “the applicant has not established the critical nature of ” ” and since “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims … In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990). Therefor it would have been obvious to …”

    It is actually from Woodruff and that doesn’t seem to be talking about optimization of ranges. It is talking about when there is a difference between the ranges shown in the ref and in the claim. I merely presume that there is implicitly a range in the reference if there is no explicit one, and give the app the benefit of the doubt that theres is different from the implicit one in the ref.

    This portion from Aller seems to set out the difference between optimization of ranges, and the mere non-criticality of ranges.

    “Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 73 F.2d 931, 22 C.C.P.A., Patents, 830; In re Waite, 168 F.2d 104, 35 C.C.P.A., Patents, 1117. Such ranges are termed “critical” ranges, and the applicant has the burden of proving such criticality. In re Swenson, 132 F.2d 1020, 30 C.C.P.A., Patents, 809; In re Scherl, 156 F.2d 72, 33 C.C. P.A., Patents, 1193. However, even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 77 F.2d 627, 22 C.C.P.A., Patents, 1313; In re Normann, 150 F.2d 708, 32 C.C.P.A., Patents, 1248; In re Irmscher, 150 F.2d 705, 32 C.C.P.A., Patents, 1259. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Swain, 156 F.2d 239, 33 C.C.P.A., Patents, 1250; Minnesota Mining & Mfg. Co. v. Coe, 69 App.D.C. 217, 99 F.2d 986; Allen v. Coe, 77 U.S.App.D. C. 324, 135 F.2d 11.”

    All in all, I believe Woodruff is correctly applied in such a situation.

  79. “Furthermore, what would stop me from taking official notice of the claimed parameter being known to be result effective, or simply alleging implicitness to the reference maybe backed with some rational sciencespeak.”

    How do you feel about KSR rationale E, “obvious to try”, in terms of limited ranges bookended by the prior art?

  80. “If a claim term could be interpreted two different ways, and one skilled in the art would recognize the metes and bounds of those two different ways, then it is OK. If an examiner thinks it is too broad, the examiner interprets the claim both ways and finds art that reads on one of those ways … this will force applicant to narrow the claims.”

    I think this is a very good point. I spent the last several days thinking about your comments.

    In one case, the claim recites “dated information”. Neither the specification nor the arguments asserts a controlling definition.

    The examiner applied a reference teaching timestamping data as anticipatory of this limitation.

    The attorney argued that the reference does not teach checking the timestamp because “dated” means that the information is old, i.e. outdated.

    It took me several times, but I found that “dated information” could mean both: a) information with a datestamp, and b) information that is old and currently invalid.

    With your comments in mind, I wasn’t sure what would be the correct remedy for this case.

    Should this claim be rejected under 112 2nd?

  81. pds, first I would like to thank you for responding directly to my comments.

    “your reliance on the MPEP is nice, but please realize that although it is supposedly a manual for examiners to use. Most have not picked one up or read it. Most attorneys (should) know the MPEP far better than an examiner.”

    I know that it would be very difficult to quantify, but in your personal opinion, on a scale of 1-10 (1 being not at all, 10 being everything) how well do you think most examiners understand chapters 700 and 2100?

    “Your Euro spelling indicates to me that you aren’t familar with the nitty-gritty that has gone on with the USPTO the current decade.”

    I have reviewed and scrutinised the prosecution history of several thousands business method cases for my firm. I was involved in prosecuting several hundred of these applications. As you know, these cases were only in existence for the past decade. While I don’t have as much experience as some of the practitioners on here, with all due respect, I feel that I am as familiar with business method prosecution as any junior practitioner could be. Fair?

    “Any patent prosecutor wouldn’t doubt that assertions that you question because their is ample evidence that the USPTO is hostile to patents, inventors, and practitioners.”

    Respectfully, while I have seen my fair share of mistakes committed by the Corp, because I review prosecution histories, I oftentimes also spot attorney practises that I view as “errors”. In my limited experience, I believe that examiners and practitioners commit substantially similar amounts of these errors.

    I believe that this perspective depends on whom you ask. Practitioners blame examiners. Vice versa. See above for evidence of this.

    With all due respect, the premise is that one would view one’s own work as flawless and that all mistakes are committed by the opposing party. This self-serving perspective is natural and understandable. With this premise, what would we find if we hypothetically reviewed some cases and try to determine practitioner and examiner errors?

    “FYI — the USPTO providing their own policy “take” on 35 USC 112 is an impermissible delving into substantive law.”

    Can you comment more on what this “take” is? Please feel free to post links and provide citations for further research. Thanks.

    “How could that examiner have a reasonable basis without evidence? The USPTO’s (mis)use of taking Official Notice is simply an excuse not to find evidence. Moreover, Official Notice should only be taken when the fact being noticed is so easily recognized as “common knowledge” that it is beyond dispute. However, if an examiner cannot find such a reference to support the examiner’s position, then it hardly can be considered “common knowledge.””

    Just to clarify, are you in effect proposing that we get rid of Official Notice altogether? If you require that all notice facts be supported by evidence, then why institute this practise at all? Is this what you want?

    “30-40 years ago, when it was much harder to find references, some of this BS may have been OK. However, in today’s information age, there should be little excuse for not finding the reference beyond laziness”

    I tend to agree; however, how do you feel about the quality of the search when you make the haystack bigger? What would you consider to be a reasonable search?

    “BTW — I don’t care whether an examiner “knows” he or she saw the teaching somewhere else but cannot find it again. People keep forgetting that the prior art is limited by applicants’ priority date. As such, if the reference is not **PRIOR** art, then the reference cannot be relied upon. Just because the examiner saw it before doesn’t mean it is PRIOR art.”

    Respectfully, I see the comingling of two separate issues in your comments:

    1) the examiner’s personal knowledge should not qualify as prior art, and
    2) reference must predate the priority date to be considered prior art.

    To the first point, how do you feel about 37 CFR 1.104(d)(2)?
    link to uspto.gov
    “When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”

    As to the second point, how do you feel about MPEP 2124?
    link to uspto.gov
    “In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date.”

  82. “So — how do you handle a Markush claim?”

    Markush’s are fine. The claim cannot necessarily be “interpreted” two different ways it just is two+ different ways. The claim itself is still the same thing, just because it branches doesn’t mean the claim is able to be interpreted multiple different ways. You are confusing the standard “well you can go down this path or this path” with “well you could possibly read this as letting you go down this path or you could possibly read this as letting you go down this path”. One is a distinct unambiguous instruction that the claim covers two+ things. The other is an ambiguous openendedness that might, or might not allow for the claim to cover two different areas of subject matter.

    This isn’t hard, you’re smart enough to understand this. The decision is a horrible thing for prosecutors having to wrestle with it, and bad applications of it. Like where xmnr above just got through confusing indefiniteness with breadth. (Just as JD predicted some examiners would I might add) But, on the whole, it is a wonderful thing for the patent system if we can get the difference between the two worked out well amongst the folks applying it.

    “How could that examiner have a reasonable basis without evidence?”

    This is known as “reality” pds, you should totally check it out sometime.

    “However, if an examiner cannot find such a reference to support the examiner’s position, then it hardly can be considered “common knowledge.””

    In all honesty I might would agree with you there, but a learned man by the name of Alex Greenspun has looked into the matter. In his inquiry he found that indeed, the more simple a subject is, and the more common sensical the subject is, the harder it is to find in the academic literature. While this is not true in every case of every simplistic thing, he does have a point. You can look up his page easily. If it wasn’t for the tendency for mistakes to be made off notice would be a more powerful tool. Imo, it should be made statutory, like judicial notice. Funny that you would accept a random judge’s notice but not an expert in the given field’s off notice, which a good number of primaries/Spe’s are.

    “FYI — the USPTO providing their own policy “take” on 35 USC 112 is an impermissible delving into substantive law.”

    FYI — the USPTO just following suggestions from the Fed Circ isn’t.

    “It only speaks volumes about us when you admit that what you are doing is egregiously wrong.”

    I will make that trade :)

    Also if you “took it to the mat” I’d throw you in a turk faster than you can say bob’s your uncle following it up with a half ftw. Presuming you’re not too fat to perform those teqs on. Also presuming you’re not a girl.

    To something important:

    “”I use range caselaw against claims that say …”

    I know range caselaw quite well … I have a lot of pre-written arguments for use against poorly reason arguments. In fact, I cannot recall one time when an examiner properly establish that a particular variable was an art-recognized, result-effective, variable per the case law cited in 2144.05(II)(B) (a prerequisite for applying In re Aller).

    Ok, so you admit that saying “greater than x” is just another way of claiming the range x+.00000000001` through infinite? Where did you see something that makes a result effective variable etc be a prerequisite to Aller in total? Looking to your section it seems it is the section on “optimization of ranges” citing “”[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ” as the In re Aller citation. I usually do not use that particular citation, but I think my citation is from In Re Aller. It goes something like “The applicant has not established the critical nature of *range x* and since “It is common for the difference between the prior art and the claimed invention to be some range or other variable, in such circumstances the applicant must establish the criticality of the claimed range”. I think that was from Aller but I’ll have to check at the office. This particular citation of Aller is not in the “optimization of ranges” portion of the MPEP and does not seem to speak to the optimization of ranges. So do you think those prereq’s apply to this as well? If so, why? My citation is not discussing the optimization of ranges, but rather the opposite. The citation I am using is alleging that the applicant has done nothing more than change the ranges, and has failed to show an optimization, or criticality of the ranges, at all. Furthermore, what would stop me from taking official notice of the claimed parameter being known to be result effective, or simply alleging implicitness to the reference maybe backed with some rational sciencespeak.

  83. makes sense to me:

    pds writes: “xmnr got it perfectly. The way to handle broad claims is with the “broadest reasonable interpretation” standard. If a claim term could be interpreted two different ways, and one skilled in the art would recognize the metes and bounds of those two different ways, then it is OK. If an examiner thinks it is too broad, the examiner interprets the claim both ways and finds art that reads on one of those ways … this will force applicant to narrow the claims.

    The tool is already in place to go after “overly broad” claims. 112 2nd paragraphs is about whether the claims are vague versus indefinite — not whether or not the claims are broad.”

  84. As to PTO policymakers, the PTO does not consist of only examiners and the BPAI. There is an Office of Intellectual Property Policy and Enforcement (OIPPE) that works with Congress and USTR on policy issues. (link to uspto.gov)

  85. OT, not sure if this was posted, but Dennis, thought this was interesting…some good proposals in the Chamber of Commerce recommendations to incoming administration re USPTO
    (tried to link to the pdf but didn’t show up in preview):

    link to theglobalipcenter.com

  86. No. The entire suite of recent rule changes and internal “quality” initiatives by the USPTO are self-serving and detrimental to future US competitiveness in the global marketplace.

  87. Anonymous wrote:
    “Dennis should give out grades if people answer the question. I suggest 0 points for anon. 1 for grasping that the PTO has real-world incentives that have little to do with substantive patent law; -1 for arguing without explanation that LOWERING a hurdle to patentability will be used as “a weapon to reduce the number of applications.”

    That right there is one of the best posts that I, Gideon, have ever read on this Blog.

    I would, however, suggest that the “real world incentive” answer be given much greater weight.

    The RWI answer is like the Rosetta Stone. Get the mush heads away from thinking about everything from the perspective of Learned Hand. Instead, have them assume the perspective of Joe6PackExaminer.

  88. Anonymous wrote:
    “Dennis should give out grades if people answer the question. I suggest 0 points for anon. 1 for grasping that the PTO has real-world incentives that have little to do with substantive patent law; -1 for arguing without explanation that LOWERING a hurdle to patentability will be used as “a weapon to reduce the number of applications.”

    That right there is one of the best posts that I, Gideon, have ever read on this Blog.

    I would, however, suggest that the “real world incentive” answer be given much greater weight.

    The RWI answer is like the Rosetta Stone. Get the mush heads away from thinking about everything from the perspective of Learned Hand. Instead, have them assume the perspective of Joe6PackExaminer.

  89. Anonymous wrote:
    “Dennis should give out grades if people answer the question. I suggest 0 points for anon. 1 for grasping that the PTO has real-world incentives that have little to do with substantive patent law; -1 for arguing without explanation that LOWERING a hurdle to patentability will be used as “a weapon to reduce the number of applications.”

    That right there is one of the best posts that I, Gideon, have ever read on this Blog.

    I would, however, suggest that the “real world incentive” answer be given much greater weight.

    The RWI answer is like the Rosetta Stone. Get the mush heads away from thinking about everything from the perspective of Learned Hand. Instead, have them assume the perspective of Joe6PackExaminer.

  90. Anonymous wrote:
    “Dennis should give out grades if people answer the question. I suggest 0 points for anon. 1 for grasping that the PTO has real-world incentives that have little to do with substantive patent law; -1 for arguing without explanation that LOWERING a hurdle to patentability will be used as “a weapon to reduce the number of applications.”

    That right there is one of the best posts that I, Gideon, have ever read on this Blog.

    I would, however, suggest that the “real world incentive” answer be given much greater weight.

    The RWI answer is like the Rosetta Stone. Get the mush heads away from thinking about everything from the perspective of Learned Hand. Instead, have them assume the perspective of Joe6PackExaminer.

  91. No offense to the drafter of this exam question, but what does it do to obectively test or challenge the student’s ability to apply existing law to real problems that real clients would have? Not much, in my humble opinion. Unfortunately, far too many law school exams are like this.

  92. Nobody123

    First of all, your reliance on the MPEP is nice, but please realize that although it is supposedly a manual for examiners to use. Most have not picked one up or read it. Most attorneys (should) know the MPEP far better than an examiner.

    Your Euro spelling indicates to me that you aren’t familar with the nitty-gritty that has gone on with the USPTO the current decade. Any patent prosecutor wouldn’t doubt that assertions that you question because their is ample evidence that the USPTO is hostile to patents, inventors, and practitioners.

    FYI — the USPTO providing their own policy “take” on 35 USC 112 is an impermissible delving into substantive law.

    “Nonetheless, if the Examiner has a reasonable basis that some art exists and such existence amounts to ‘common knowledge’, how do you feel about responding to the Official Notice?”

    How could that examiner have a reasonable basis without evidence? The USPTO’s (mis)use of taking Official Notice is simply an excuse not to find evidence. Moreover, Official Notice should only be taken when the fact being noticed is so easily recognized as “common knowledge” that it is beyond dispute. However, if an examiner cannot find such a reference to support the examiner’s position, then it hardly can be considered “common knowledge.”

    30-40 years ago, when it was much harder to find references, some of this BS may have been OK. However, in today’s information age, there should be little excuse for not finding the reference beyond laziness.

    BTW — I don’t care whether an examiner “knows” he or she saw the teaching somewhere else but cannot find it again. People keep forgetting that the prior art is limited by applicants’ priority date. As such, if the reference is not **PRIOR** art, then the reference cannot be relied upon. Just because the examiner saw it before doesn’t mean it is PRIOR art.

  93. “So what? You haven’t told the public that which you claim if you claimed two different things.”

    So — how do you handle a Markush claim?

    Ooooo … that puts the kibosh on your rationale, amiright?

    “Speaks volumes about you doesn’t it?”
    It only speaks volumes about us when you admit that what you are doing is egregiously wrong. Plus, I’ve already stated why we don’t take you to the mat when the (ample) opportunities present themselves.

    “I use range caselaw against claims that say …”

    I know range caselaw quite well … I have a lot of pre-written arguments for use against poorly reason arguments. In fact, I cannot recall one time when an examiner properly establish that a particular variable was an art-recognized, result-effective, variable per the case law cited in 2144.05(II)(B) (a prerequisite for applying In re Aller).

  94. “Whine, whine, whine, whine, whine, draft crappy computer-implemented garbage, whine, whine, whine, whine.”

    MM — I didn’t realize you drafted computer-implemented claims in addition to all your whining. Unlike you, I get claims allowed all the time. Moreover, I get computer-implemented claims allowed ALL the time.

    BTW: the biggest whiner on this board is you. You whine about everything. You aren’t interested in engaging in any kind of real legal discourse. Every time I’ve tried to do that with you, you’ve backed away. Understandably, it is easy to post your BS arguments when you don’t have to support them with the law, common sense, logic, or a good policy rationale.

    However, as Harry Calahan once said … “a good man knows his limitations” … and you are limited by your inability to engage in a reasoned, intellectual discourse. Any, so stick with your trolling … it is what you do best.

  95. “(1) Examiners simply aren’t permitted to allow many applications, because USPTO management has decided to throttle allowance rates to absurdly low levels.”

    What’s the reason behind that? Because we’re stuck in the stone age of examine>reject>examine>reject. It should be examine>consult applicant>allow. Why do I say this? A friend of mine has around a 90% allowance rate. How does he do this? LET”S MAKE A DEAL MO FO! I however am constrained by the more traditional approach that many advocate, the ol’ reject>response>reject>etc. That said, “Let’s make a deal” looks more attractive every day. The general rule, as I understand it, to “lets make a deal” is to try to make a deal to get some subject matter in the claims that at least stands a snowballs chance in heck at being valid, and voila, you have yourself a first action allowance.

    I should add that his production is through the roof. Of course, doing three/4 actions per bi week and barely ever dealing with a final/af is hardly a chore.

    Either way, there is a lesson to be learned from his examining style. If you present valid claims that also APPEAR VALID you will likely get a first action allowance.

    “If you cannot find the art, then you cannot reject the claim.”

    Double dog dare me? Show me an app of yours, I’ll see if I can get it xfered to me.

    “The way to handle broad claims is with the “broadest reasonable interpretation” standard”

    What does that have to do with a claim that has two equally broad interpretations that contradict one another? Nothing. uR DuM 3 k?

    ” If a claim term could be interpreted two different ways, and one skilled in the art would recognize the metes and bounds of those two different ways”

    So what? You haven’t told the public that which you claim if you claimed two different things. Don’t try to fight this pds, you know as well as anyone that claims regularly cause no end of trouble because what they claim can’t be concretely determined. Don’t pretend a poshita always knows that both ways of interpreting the claim are equally valid either, they may very well not be. Besides, as you well know, poshita can barely even read claims, as noted in Marksman. They need you lawyers to do that for them.

    “It doesn’t seem to matter that this is unlawful”

    I have been presented with no such law that it would violate. I have seen several laws that support it though. Perhaps you could share with me which are against such a practice?

    “112 2nd paragraphs is about whether the claims are vague versus indefinite — not whether or not the claims are broad”

    We’re not rejecting them for being broad. We’re rejecting them for not clearly and distinctly telling the public what you claim.

    “Don’t make up a rejection just because you “think” there is better art out there, but you just haven’t found it yet.”

    You mean a reason for a rejection? Ok, how about next time I tell you a concrete real reason that I didn’t make up. My stomach hurt that day, and it made your application appear to not be entitled to a patent. Good enough for you?

    “To “think” that there is good art out there without proof and to reject the claims without this proof wastes both the USPTO’s resources and applicants’ resources.”

    What’s your point? Mine is that your application does not appear to be entitled to a patent. My point is supported by statute, but whatever it is that is your point seems to go unmentioned in the statute.

    “Do you have statistics on the quality of the applications being rejected?”

    Funny you should ask! I have them right here! 100% appeared to not be entitled to a patent on examination!

    “Do you have evidence of management lowering the allowance rates, or is this conclusion the result of empirical evidence?”

    Try anecdotal. Although there is evidence of lowered allowance rates, the pto presented it.

    “Unfortunately, us patent attorneys (and clients) acquiesce to this bu11sh it far too often”

    Speaks volumes about you doesn’t it?

    As to your comment about my not knowing the quality of the work being produced, au contraire, I’ve been checking out some other people’s work, and it does leave much to be desired. I personally have a few vices myself, I use range caselaw against claims that say “greater than” or “less than” occasionally when they don’t appear to be entitled to a patent. I base this vice on the theory that by stating “greater than x” all you are really doing is putting the range of values that is greater than x into words. Would that not be the case? Well, it is the case, but applicants take issue with it occasionally. I’ve found that they only take issue with it when I reject all dep claims. If I indicate one as allowable whooop right up into the ind it goes.

    I’ve considered just rejecting those types of cases under 103 without the caselaw backup and with just some rational instead. What do you think about that approach?

    “For well-written applications, examiners can’t seem to find sufficient basis for rejection.”

    I find them all the time and nearly all of my apps are “well written”. Just this week I had 2 apps go abandoned! Wootz! Both of them came back with some lame addition to the claims. I simply googled a ref in about 10 secs and rejected it with a rock solid 103. Literally, the device in the new ref specifically was to modify the device in the previous refs in the specific way claimed. Rarely are rejections that clean and quick, but they do happen. I considered Off notice on that one, but figured I’d give him a little googlin since it was an RCE :)

    ” The case law on 112, second paragraph has been pretty well settled.”

    The Cafc said in a recent opinion that this decision was the correct one for the pto to implement so the BPAI did. Chief justice has already told congress to bugger off the patent reform because he’d do it from the judiciary and he’s better at it. Fine with me as long as it gets done.

  96. I think it is a great idea. Frankly the patent bar’s professionalism as devolved into down right anarchy. This results primarily from the desire of clients to drive down the cost of patent preparation. I think that patent claims should be exacting. The namby pamby BS language that is so often espoused serves only to obfuscate what is truly the invention and line the pockets of that unsavory class of attorney-the patent litigator.

  97. “If you cannot find the art, then you cannot reject the claim.”

    But I thought KSR made “everything” obvious?

    Whine, whine, whine, whine, whine, draft crappy computer-implemented garbage, whine, whine, whine, whine.

    Get a life.

  98. “As David Stein aptly put it, this is just another way for examiners to reject claims on BS instead of finding good art.”

    Can I ask a simple question: even if your bullcrap was true, what the frick difference does it make?

    Seriously.

    CAFC, are you listening? Please get rid of Beauregard claims asap so we can all get rid of these whiners once and for all. They ruined everything and the greedy babies won’t quit complaining.

  99. “If you cannot find the art, then you cannot reject the claim. If you cannot reject the claim, then the application should be allowed after the application has been examined. Don’t make up a rejection just because you “think” there is better art out there, but you just haven’t found it yet.”

    How do you feel about rejections under Official Notice, and public policy/morality (which doesn’t currently exist)?

    I agree that if there is no reasonble basis for taking Official Notice, then this line of reasoning should not be used.
    link to uspto.gov

    Nonetheless, if the Examiner has a reasonable basis that some art exists and such existence amounts to “common knowledge”, how do you feel about responding to the Official Notice?

    If you properly overcome the Official Notice, then the case should be allowable over art even if the art teaching the noticed facts surface later on during prosecution.

    To me, this seems like a quick way to overcome even the Examiner’s ideal art, if such an art existed.

    If I can overcome the Examiner’s noticed facts (which amounts to the Examiner’s theoretical best art), would that result in more compact of a prosecution, i.e. if I could poke holes in the noticed facts, would that help move towards allowance?

  100. “As far as policy goes, the USPTO isn’t a policy making body โ€“ what business do they have trying to make policy? The USPTO couldn’t say they will consider, as prior art, references that antedated the filing date of the application by up to a year based upon “policy” reasons.”

    The USPTO has specific powers to “establish regulations, not inconsistent with law”:
    link to uspto.gov

    In the example you gave of qualifying references that would otherwise not be prior art under 35 USC 102, this rule would clearly be inconsistent with 102 as required by “A person shall be entitled to a patent UNLESS”.
    link to uspto.gov

    Clearly, using references newer than the priority date would violate existing law. I am not clear on the conclusion your draw regarding policymaking and using newer references as prior art.

    Can you clarify a little more on what you would and would not consider to be substantive rulemaking?

  101. “Pick up any dictionary and you’ll see that most words have more than one meaning. Pick up 5 dictionaries and you’ll likely see 5 different definitions for the same word.”

    Can you shoot down this type of erroneous interpretation by presenting your own interpretation with support from the specification as originally filed?

    link to uspto.gov
    “If extrinsic reference sources, such as dictionaries, evidence more than one definition for the term, the intrinsic record must be consulted to identify which of the different possible definitions is most consistent with applicant’s use of the terms”

  102. “The USPTO wants exactly two things at this point:
    (1) Applicants to file fewer applications, and
    (2) Examiners to allow a very small percentage of filed applications.”

    Do you have any evidence of this?

    From a management objective, if I were a manager for the USPTO, I would want:

    (a) Applicants to file as many applications as possible, and
    (b) Examiners to allow as many filed applications as possible (with adequate quality of course).

    The USPTO has consistently been a profit-centre for the federal government. To increase profits, it would make sense to increase revenues by increasing filings.

    Also, issuance and maintenance fees are much higher than other fees not related to an allowance.

    Similarly, would allowances reduce the backlog as well, as compared to pending prosecution to infinity?

    “I don’t know how the USPTO got so off-track as to see itself as the “patent rejection office,” but it is so.

    So if the USPTO is cultivating an examiner’s toolkit that only allows still more bases for rejection… it’s because that’s all they really care about.”

    Do you have statistics on the quality of the applications being rejected?

    “Examiners simply aren’t permitted to allow many applications, because USPTO management has decided to throttle allowance rates to absurdly low levels.”

    Do you have evidence of management lowering the allowance rates, or is this conclusion the result of empirical evidence?

    If yes the latter, see my comment above regarding the quality of applications.

    “For well-written applications, examiners can’t seem to find sufficient basis for rejection… and so they are taking a third option: delay and churn. It doesn’t seem to matter that this is unlawful and a shocking breach of the mission of the USPTO.”

    Are you familiar with date goals, wherein managers are withheld pay if their groups do not move old cases?

    link to uspto.gov
    “SPE Award Components
    Movement of New Applications (New Date Case Goals)”

    “These days, I have to advise my clients that they might not see FAOM (or FOAM… the acronym changes daily ๐Ÿ˜‰ ) for ***SIX YEARS*** from filing”

    Have you considered the accelerated examination program?

    I would like to critique the various inefficiencies of the government as much as the next person, but I feel that it would be fair to view all the evidence.

    Please respond to the raised points.

  103. “Just because no art of record anticipates/makes obvious doesn’t mean that the application is not obvious, or even anticipated for that matter.”

    If you cannot find the art, then you cannot reject the claim. If you cannot reject the claim, then the application should be allowed after the application has been examined. Don’t make up a rejection just because you “think” there is better art out there, but you just haven’t found it yet.

    **IF** the patent has value and **IF** the patent will be asserted (which probably knocks out 90%+ of all issued patents), and **IF** good prior art exists, then an infringer/potential infringer will find that art and invalidate the patent. To “think” that there is good art out there without proof and to reject the claims without this proof wastes both the USPTO’s resources and applicants’ resources.

    The problem with the USPTO is that there aren’t enough administrative law hawks practicing patent law to be the biggest PITA to the USPTO. If the FCC, FDA, EPA tried to pull the sh 1t the USPTO does, the administrative lawyers that practice before these agencies would make life a living he11 for those agencies.

    Unfortunately, us patent attorneys (and clients) acquiesce to this bu11sh it far too often. The reason is pretty simple, the stakes are typically too low to really put the USPTO’s feet to the fire over any single application. Contrary to what some commentors think, the value of most patent applications are extremely difficult to determine accurately at an early stage. As such, most clients are even reluctant to file an appeal, which is far easier than putting the USPTO in its place for its slipshod operation and blatant disregard of the law and its own rules.

    The USPTO has gotten away with substandard office actions for so long that dimwits such as 6K don’t even realize how poor the work product they are actually producing is.

  104. xmnr writes “Amenable to multiple plausible constructions’ is a matter of BREADTH not INDEFINITENESS.”

    6K responds: “uR DuM 2 k?”

    xmnr got it perfectly. The way to handle broad claims is with the “broadest reasonable interpretation” standard. If a claim term could be interpreted two different ways, and one skilled in the art would recognize the metes and bounds of those two different ways, then it is OK. If an examiner thinks it is too broad, the examiner interprets the claim both ways and finds art that reads on one of those ways … this will force applicant to narrow the claims.

    The tool is already in place to go after “overly broad” claims. 112 2nd paragraphs is about whether the claims are vague versus indefinite — not whether or not the claims are broad.

    Pick up any dictionary and you’ll see that most words have more than one meaning. Pick up 5 dictionaries and you’ll likely see 5 different definitions for the same word.

    The problem with the USPTO new (yet short-lived) tool is that one the examiner comes up with one cockamamie interpretation that doesn’t jive with the normal interpretation, the examiner will jump around after like 6k does after he completes his latest quest in WoW exclaiming “I did it!! I did it!!”

    As David Stein aptly put it, this is just another way for examiners to reject claims on BS instead of finding good art.

    BTW โ€“ what gives the USPTO the right to make make/interpret the law? They aren’t Congress or the judiciary. The case law on 112, second paragraph has been pretty well settled. As far as policy goes, the USPTO isn’t a policy making body โ€“ what business do they have trying to make policy? The USPTO couldn’t say they will consider, as prior art, references that antedated the filing date of the application by up to a year based upon “policy” reasons.

    If placed in the hands of a reasonable Corp of examiners, I could hold my nose and buy into this power grab by the USPTO. However, when the Corp has shown, time and time again, a complete disdain for patent law, their own rules, the APA, common sense, and in certain instances, the laws of physics, then the only thing I would trust the USPTO to do would be to abuse this expanded power to reject claims.

  105. “It is a bad idea in that it gives the PTO only more powers in a certain direction.”

    But it’s the only direction in which they want to move.

    The USPTO wants exactly two things at this point:
    (1) Applicants to file fewer applications, and
    (2) Examiners to allow a very small percentage of filed applications.

    The latter is astonishing in itself, and even more so because the USPTO openly and brazenly admits this aspiration. Check out this graph… from the USPTO’s own presentation!!

    link to uspto.gov

    I don’t know how the USPTO got so off-track as to see itself as the “patent rejection office,” but it is so.

    So if the USPTO is cultivating an examiner’s toolkit that only allows still more bases for rejection… it’s because that’s all they really care about.

    “I like to think the PTO should be run like a prosecutor’s office. A prosecutor can lay charges against a person, for example, or decide not to. They have a lot of leeway to the point of being unaccountable.”

    Well, the USPTO would LOVE unaccountability – no BPAI, CAFC, or SCOTUS repeatedly telling it that it’s violating many laws and the Constitution with its self-legislating, and that its decisions are hopelessly inconsistent.

    But I think your analogy is apropos. Prosecutors are neither judge nor jury. Their valid options are to withhold prosecution (i.e., to allow a patent application without challenge) or present the best case for conviction (or rejection.)

    Yet, examiners break from this model in two ways –

    (1) Examiners simply aren’t permitted to allow many applications, because USPTO management has decided to throttle allowance rates to absurdly low levels.

    (2) For well-written applications, examiners can’t seem to find sufficient basis for rejection… and so they are taking a third option: delay and churn. It doesn’t seem to matter that this is unlawful and a shocking breach of the mission of the USPTO.

    These days, I have to advise my clients that they might not see FAOM (or FOAM… the acronym changes daily ๐Ÿ˜‰ ) for ***SIX YEARS*** from filing. Can you imagine if the U.S. criminal justice system were run that way? (Well, notwithstanding that sordid little affair in Cuba?)

    – David Stein

  106. My problem is that section 101 seems to fail section 112. Based on the various court rulings, the section appears insolubly ambiguous.

  107. “Other sections – 101, 112, etc. – are SUPPOSED to be fairly low thresholds of formality and competence. ”

    I agree, how do you keep failing to meet even the lowest of the low thresholds put before you?

    “The bottom line is simple: the USPTO hates searching.”

    Could be true, but if it was then they could simply narrow all searches to be one subclass search and that’s it.

    “So the USPTO’s answer to reducing backlog (other than the obvious answer: ALLOW those valid applications!”

    Problem is they’re not really valid. Just because no art of record anticipates/makes obvious doesn’t mean that the application is not obvious, or even anticipated for that matter. What’s more, the problem is also that they failed to meet the lowest bar of patentability, 101.

    “I like to think the PTO should be run like a prosecutor’s office. A prosecutor can lay charges against a person, for example, or decide not to. They have a lot of leeway to the point of being unaccountable.”

    This man is truly a visionary. My hat is off to you sir. When I got here I was genuinely surprised that the PTO was not more like this than it is. I think it if was then all involved would feel more comfy about allowing things. Imo, you lawyers should lobby for this type of PO.

  108. At the outset, it should be noted that this question assumes that the “insolubly ambiguous” standard is currently in play at the PTO. I would respectfully assert that this is not the cae, and that patent office policy, currently, is to reject a claim under 112(2) when the metes and bounds of that claim are not clear. In other words, the PTO standard is already quite a bit lower than insolubly ambiguous.

    Is this a good thing? Yes, it is. Patents are legal monopoly on the subject matter that is hte subject of the claim. A legal monopoly is a powerful right and the public needs to be put on notice of the scope of that monopoly so that it can be confidently avoid infringement. To confidently avoid patent infringement, one must be able to reasonably predict what activities will fall within the scope of the claim and what activities will fall outside the scope of the claim. Thus, a higher standard for 112(2) at the PTO is a good thing, in that indefinite claims are less likely to issue and the public will be able to navigate around the scope with reasonable confidence.

    The question is how high should the standard be? The metes and bounds of the claim must be clear but breadth is not indefiteness. The nature of language makes claims amenable to more than one reasonable construction and so clearly that shoudl not be the standard. I believe this is an area where the term “metes and bounds” is actually quite sufficient and that examiners can apply that term without great difficulty. There is always an element of subjectivity in rejections; some examiners may be more stringent in applying 112(2) standards than others. At the very least, however, the examiner should require that the metes and bounds of the claims be clear enough so that the examiner can figure out what she is supposed to be searching for. If the examiner can’t figure out how the claims works, and therefore cannot do a proper prior art search for that claim, then the claim should be rejected under 112(2).

  109. It is both a good idea and a bad idea.

    It is a good idea in the sense that it gives the PTO more powers.

    It is a bad idea in that it gives the PTO only more powers in a certain direction.

    I like to think the PTO should be run like a prosecutor’s office. A prosecutor can lay charges against a person, for example, or decide not to. They have a lot of leeway to the point of being unaccountable.

    The PTO should be the same: there is close to no sense in defining in general what makes an invention novel or useful. Experts at the PTO should be able to decide. For the inventor there is a price for weak PTO patents — if a patent can be challenged later it is not that valuable.

    Obviously I hardly know anything about the details of the laws involved. :-)

    Stephan

  110. stein “But the USPTO is breaking free of these moorings. Increasingly, examination is focusing on nitpicky rules of formality, academic arguments of interpretation, and wholly arbitrary procedural rules.”

    But applicants never engage in that behavior. And if they did it was only because the PTO engaged in it first!

    If I may quote a regular commenter here (due to arrive any moment): “eeeyeahright”

  111. I think I can now set forth my core problem with this (and KSR, and Bilski.)

    The heart of patent examination is in sections 102 and 103. Other sections – 101, 112, etc. – are SUPPOSED to be fairly low thresholds of formality and competence. As long as the specification is written with a minimum standard of workmanship, and as long as the invention passes some minimal burdens of utility… then the formalities have been met, and examination should begin.

    But the USPTO is breaking free of these moorings. Increasingly, examination is focusing on nitpicky rules of formality, academic arguments of interpretation, and wholly arbitrary procedural rules.

    The bottom line is simple: the USPTO hates searching. Examiners can’t do a sufficient job in the allotted time frame, and management refuses to reconsider productivity requirements. It’s hard and time-consuming to dig up, understand, and apply references. It’s much easier to fall back on “smell tests.”

    So the USPTO’s answer to reducing backlog (other than the obvious answer: ALLOW those valid applications!) is more smell tests, more tools for “easy” rejections, and more arbitrary procedural cutoffs.

    Of course, the hardship falls squarely on the shoulders of applicants. But in the USPTO’s warped view of reality, this is poetic justice – because we’re the cause of the problem with our increased filings.

    – David Stein

  112. “Of course the threshold should be reduced. Clearly, examiners need more weapons for rejecting claims in lieu of doing an actual search or finding prior art.”

    I concur. They should have put in the opinion that if the claims are suitably amendable then no analysis of the claims under 102/103 is possible since there is at least 2 different interpretations which are completely independent and distinct from one another. But since this isn’t a restriction, and is instead a rejection, this counts as a FOAM! WOOOOOOOTZ! :)

    The courts/bpai: taking the “hard” out of being an examiner one step at a time.

  113. Holy sht, 15 points for a sentence:

    Because it will allow the pto to “encourage” applicants to remedy potential disputes while the claims may be amended.

    I could add:
    And because examiners will be able to ride the RCE gravy train, in some cases where no claim could be written that doesn’t have more than one meaning, forever, or until the app gives up.

    :)

    Public notice F T W.

    “No, as it will be used by the PTO as a weapon to reduce the number of applications instead of tool to further prosecution.”

    But those are one and the same right?

    “-1 for arguing without explanation that LOWERING a hurdle to patentability will be used as “a weapon to reduce the number of applications.””

    Ur dum k?

    “I think it’s funny you call “insolubly ambiguous” a “high standard.” It is a low standard, as in low quality claims satisfy it.”

    Ur looking @ it arsebackwards from how D is i?

    “examiners don’t use the “insolubly ambiguous” standard and have probably never heard of it.”

    Some of us used to, in fact my SPE would make me. And all my previous SPE’s would make me. They usually wouldn’t bring up “insolubly ambiguous” instead, the threshold is “whether you can really tell what they mean to claim”.

    “Second, who are the policymakers and how could they possibly lower the standard only during examination?”

    The BPAI, didn’t you read the previous post on this?

    ” 2 points out of 15 for anon, 0 for me”

    lol, more like it.

    “Yes, because the current standard allows patentees to obtain patents whose scope is not clear until a district court judge decides which of two plainly evident but distinct (and often contradicting) constructions is the “correct” one. ”

    MM with 15 pts!

  114. Are we talking Ex Parte Miyazaki?

    ‘Amenable to multiple plausible constructions’ is a matter of BREADTH not INDEFINITENESS.

    Furthermore, any issues of ‘indefiniteness’ are covered by interpreting the claim under the doctrine of broadest reasonable interpretation. That is, if a claim reads under two possible interpretations, that’s not indefinite, it’s BROAD and can be interpreted in a multitude of ways that expands its scope.

  115. Mooney:

    I would agree that it is a good idea if the USPTO were reasonable in addressing alleged ambiguities.

    My experience, however, is that (for novelty/obviousness) the USPTO unreasonably takes the broadest possible interpretation — as opposed to the broadest reasonable interpretation in view of the specification — as if the specification had not been written. Consequently, applicants must unnecessarily address (and sometimes amend in view of) prior art that would never have been implicated under a reasonable interpretation of the claim terms.

    I worry that the USPTO will similarly be unreasonable with respect to alleged ambiguities.

    That said, assuming that the USPTO does a reasonable job (I doubt they would), the costs of having to write two claims to replace an allegedly ambiguous claim is a small price to pay for the notice benefit to the public.

    Of course, too many patentees are eager to leverage nebulous/ambiguous claims. This new rule from the Board of Appeals is a call to arms for them.

  116. Of course the threshold should be reduced. Clearly, examiners need more weapons for rejecting claims in lieu of doing an actual search or finding prior art.

    – David Stein

  117. Adding: the part of the proposal re “going forward” is a closer call. I would err on the side of punishing existing patentees as well as current applicants. A better standard would be “reasonably definite” to the skilled artisan. Also, I would require that any statements or actions (i.e., notice of infringement letters, requests for licenses) that relate to claim construction be submittable to the PTO by third parties for filing with the application so that the public could be aware of what the patentee believes to be the proper construction of his/her claim, and the public could more readily assess issues of patent abuse and inequitable conduct.

  118. Yes, because the current standard allows patentees to obtain patents whose scope is not clear until a district court judge decides which of two plainly evident but distinct (and often contradicting) constructions is the “correct” one. Thus, the current standard fails to force applicants to comply with the requirement of putting the public on notice as to the reasonable scope of the claimed property right.

  119. I take back my comment, to the extent I can. I think all the negatives swirling around confused me… Insolubly ambiguous = high bar to INvalidate a patent, and PTO is considering lowering the bar to invalidating a patent… which is actually raising the bar to patentability. 2 points out of 15 for anon, 0 for me.

  120. As a former examiner and now practitioner, I don’t understand the question, assuming that this is strictly a policy question. The standard is already low for pending applications — examiners don’t use the “insolubly ambiguous” standard and have probably never heard of it. It is an invalidation rule, which differs from examination rules, and inherently takes into account the fact that the claims have presumably passed examiner scrutiny. This contributes to why it is a high standard in consideration of the presumption of validity.

    Second, who are the policymakers and how could they possibly lower the standard only during examination? The PTO can’t overrule statute as interpreted by the Fed. Cir., as far as I know, or make substantive patent laws. Perhaps congress can do this, but the language of 112 already seems to be a lower standard than used in the Fed Cir and in practice is already applied as such.

    [Response by DDC: Anon, you should remember that law professors not allow practical issues or reality to complicate our exams.]

  121. In Europe, Article 84 requires the claims to be “clear, concise and supported”. After issue, the claims as granted is immune to Art 84-based attacks, until the patent owner seeks to amend. Then, the content of the amendment is fair game for Art 84-based attacks. I think this scheme keeps the show on the road, by encouraging Applicants to go to issue with impact-resistant claims. The USA can scrutinise the last 30 years of operation of the EPC, take what makes sense and disregard the rest, and I think Dennis, the USPTO and the CAFC sometimes look wistfully at Europe, but can’t bring US opinion round to an open mind on borrowing good stuff from Europe.

    Or is that just me being child-like, innocent and naive, pds?

  122. I think it’s funny you call “insolubly ambiguous” a “high standard.” It is a low standard, as in low quality claims satisfy it. Particularly for pending applications the standard should be raised significantly to improve the clarity of patent rights. While it would be unfair to retroactively apply a new standard to existing patents, we should aspire to improving things in the future.

  123. No – it is not. 112 requires that the scope of the claims be ascertainable. A prudential rule allowing the PTO to lower the 112 threshold by adjusting/expanding claim scope results in an uncontrolled inquiry. That is, the PTO analysis of a claim’s scope would involve modifying the claim’s scope itself. I can make anyone fail a breathalyzer if I can add alcohol to their blood during the test.

  124. Dennis should give out grades if people answer the question. I suggest 0 points for anon. 1 for grasping that the PTO has real-world incentives that have little to do with substantive patent law; -1 for arguing without explanation that LOWERING a hurdle to patentability will be used as “a weapon to reduce the number of applications.”

  125. Calling the PTO policymakers is being polite at best. A good idea? No, as it will be used by the PTO as a weapon to reduce the number of applications instead of tool to further prosecution.

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