What Happens After the BPAI Reverses an Examiner Rejection

Even after the Board of Patent Appeals and Interferences (BPAI) reverses an examiner’s rejection, the case is returned to the same examiner to ensure that the application is in condition for allowance. 37 CFR 41.54. At that point, the examiner is not allowed to make another search for prior art. However, the examiner may reopen prosecution and enter a new grounds for rejection “[i]f the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims.” MPEP §1214.04. According to the MPEP, reopening prosecution requires written approval of the Technology Center Director.

To get a sense of how this post-reversal process operates in practice, I looked at a set of 149 decisions from 2006 where the BPAI had reversed examiner rejections. In 80% of cases, the examiner accepted the BPAI decision and did not re-open prosecution. In these cases, a patent generally issued within nine-months of the BPAI decision (median of six months) unless the applicant caused some delay. A typical delay is seen in IBM’s Application No. 10/047,116. After winning an appeal on nonobviousness grounds and receiving a notice of allowance, IBM failed to pay the issue fee in a timely fashion. The patent finally issued after the PTO granted a petition to revive.

In the remaining 20% of the reversals, the PTO re-opened prosecution by offering new grounds for rejection. Occasionally the new grounds are suggested by the BPAI but more often they come from the examiner and fall under §101, §103, or §112. The current status of those re-opened cases from my 2006 sample can roughly be broken into thirds: a third of the cases were eventually patented despite the new rejection; a third of the cases are still pending; and a third of the cases were abandoned after the PTO continued to press its case. A handful of the pending cases are on their way to the BPAI for a second go-round.

Notes:

  • One PTO insider takes issue with my statement that after being reversed “the examiner is not allowed to make another search for prior art.” The MPEP §1214.04 states that “[t]he examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.” According to the insider, that statement is not a prohibition on making a new search, but only a “discouragement.” In practice, new searches are conducted and, if new art is found the PTO will reopen prosecution.

182 thoughts on “What Happens After the BPAI Reverses an Examiner Rejection

  1. 182

    Lowly, clearly you are atypical, but the typical US attorney is different from colleagues in the rest of the world, in my experience, when he wishes and instructs me to get “aggressive” with the Examiner, in respect of a claim that is futile. In Europe, trying to bamboozle an Examiner doesn’t do you any good. First, the Exr will spot it and the resultant file wrapper will hurt you. Second, even if Exr doesn’t rumble you, the Opponent, or petitioner for revocation, will, and post-issue, when your scope for amending out of the hole you have actively dug yourself into is much reduced. Whence come these self-destructive behavioural tendencies, if not from the distortions of the US domestic patent environment?

  2. 181

    “Your question is rhetorical, right? I think we have already identified why. Most fundamentally, the environment at the EPO is not so overtly adversarial. It’s civil law, not common law. Representatives are patent attorneys, proud of their qualification, as opposed to attorneys-at-law, paid to fight. No court can tell the EPO it’s wrong. Myself, I have no idea how the USPTO can get to where the EPO is. Maybe other readers do.”

    My question was rhetorical ;) I would be very scared if the PTO had the power the EPO does and would NOT want the USPTO to work that way.

    By the way, I don’t know why you think american patent attorneys are so different from european patent attorneys. I’m proud of my education, qualifications, and career. I prefer to work with the Examiner to identify the patentable subject matter in the application and have a set of claims directed thereto allowed, although I of course fight when I have to (which is most of the time at the USPTO).

    “On another thread, there is a debate about the extent to which a PTO Exr should write claims for a pro se Applicant. Did your EPO Exr re-write your claim, or just nod towards technical features he/she saw in your app but not in the art?”

    The examiner pointed out technical features he considers to be inventive over the prior art; he didn’t actually re-draft the claim.

  3. 180

    ….and it’s not so adversarial because Applicants at the EPO who knowingly over-reach simply set up their own post-issue funeral. So, in Europe, Applicant behaviour is self-policing.

  4. 179

    Your question is rhetorical, right? I think we have already identified why. Most fundamentally, the environment at the EPO is not so overtly adversarial. It’s civil law, not common law. Representatives are patent attorneys, proud of their qualification, as opposed to attorneys-at-law, paid to fight. No court can tell the EPO it’s wrong. Myself, I have no idea how the USPTO can get to where the EPO is. Maybe other readers do.

    On another thread, there is a debate about the extent to which a PTO Exr should write claims for a pro se Applicant. Did your EPO Exr re-write your claim, or just nod towards technical features he/she saw in your app but not in the art?

  5. 178

    Max,

    My love affair with the EPO continues. I have search report sitting on my desk right now. It contains a clarity objection together with a suggestion of how to over come it. It contains a rejection over prior art together with a suggestion of an amendment that would render the claim patentable over the prior art. (the examiner actually took the time to read the specification fully and identify the patentable subject matter). The art is good. The search report is well written.

    Why in the world can’t the USPTO operate like this?

  6. 176

    MaxDrei,

    “Require that every Applicant be represented by an attorney at law, breadcrumbs?”

    No – not my suggestion. That would be the suggestion of Bring it to the top! (aka 6/6k/6000). He of the history and grasshoppers and perpetually incorrect legal views.

    Notwithstanding the last dig, I have not entertained the proposal of requiring all applicants to have professional representation. I can imagine that there would be some “due process” and “elitism” concerns with such a switch.

  7. 175

    Require that every Applicant be represented by an attorney at law, breadcrumbs? Heaven forfend. That’s one reason for the outcry, that the US patent system is broken. In the rest of the world, Applicants are represented by a member of a real profession (patent attorney) that is (unlike lawyers) trained to exacting standards in the core skills of patent drafting, prosecution and litigation. The patent attorney profession has its own system of qualification by mega-tough examination that reflects the universal maxim of “quality” namely “fitness for purpose”. We examine those skills, to maintain those standards, because without them the integrity in our profession is at risk. In Europe, patent attorneys share with attorneys at law the right of audience in the courts, in patent cases. Since the EPO now covers 600 million Europeans, that right of audience is worth preserving. Finally, looking at the two contributions upthread, the two opposite sides of the same coin, could it be that a specialised patent attorney profession, of rank equal to the attorney at law profession, also helps the PTO to maintain high standards?

  8. 174

    “Mike, I think you’re having the wrong argument, or at least those taking issue with your comments aren’t focusing on the real issues. The bottom line is that good, honest examiners have become frustrated with baseless, serial filings by patent attorneys that make facially invalid claims. This singular issue contributes mightily to the PTO’s backlog, and it taints the PTO at large. This is not to say there are no good PTO attorneys, nor do I mean to suggest there are no games-playing patent examiners. But, after two and one half years of being in the examination trenches on a daily basis, I can tell you that the general quality of filings has deteriorated markedly, to the point where moving cases through the PTO has become more about the googling and patience, rather than the actual merits.”

    k?

  9. 173

    6, I think you’re having the wrong argument, or at least those taking issue with your comments aren’t focusing on the real issues. The bottom line is that good, honest patent attorneys have become frustrated with baseless, serial rejections by patent examiners that make facially invalid rejections. This singular issue contributes mightily to the PTO’s backlog, and it taints the PTO at large. This is not to say there are no good PTO examiners, nor do I mean to suggest there are no games-playing patent attorneys. But, after ten years of being in the prep-and-proc trenches on a daily basis, I can tell you that the general quality of examination has deteriorated markedly, to the point where moving cases through the PTO has become more about the client’s checkbook and patience, rather than the actual merits.

  10. 172

    “but there is not another ready option.”

    I should add that yes there is another ready option to implement max’s suggestion. Require that all applicants be represented by counsel, or at least an agent. Seems a little much to me though, if they want to write a crppy app then they can reap crppy rewards.

    Max waxing poetic early this morning I see.

  11. 171

    “If you are an examiner, you should know what is expected of you a little more, and preach about how things should be a little less (or at least not be so wrong so much of the time).”

    Go read your history, then get back to me with your take. Reflect a little also before you do. Hopefully you’ll have your eyes opened a bit to the what the government around you is today, and what the entire purpose of founding america was. Hopefully you won’t need to get back to me because you’ll be arguing the same side as I am. Go forth grasshopper.

  12. 170

    Bread, yes, i grant you that it’s a tricky business, this “tempering” of my suggestions. I constantly see British influence at CAFC and SCOTUS level, and harbour ambitions to do my bit of influencing too, back from the cutting edge, at Patently-O level. So, I aim to be provocative, to provoke thought. I’m not as pessimistic as you. I think the courts of the USA are well capable of shifting, to adopt the best of what the UK has to offer (just as Europe has always borrowed extensively from American legal thinking). And, since the UK also has to operate within civil law mainland Europe, I like to imagine British jurisprudence making a major contribution to world-wide harmonisation of patent law, that is capitalist red, in tooth and claw, but also fair (as between inventors and competitors) and just too.

  13. 169

    MaxDrei,

    You seem to miss the point that “the taking” has already taken place. No one has said anything but to give the little guy his just due.

    That being said, I recognize that the Office providing that help does seem a little like government over-reaching, but there is not another ready option. The supposed clarity of the Examiner (who knows the art field) seems preferable to that of an arbitray judge in construing a claim written by a pro se inventor. Please keep in mind that the different legal systems (Europe and US) cannot change overnight and try to temper your suggestions to those that might actually work in our legal system.

    Bring it to the top!,
    You my friend are in the wrong business. Once again, you seem to substitute your feelings for the law (based on your reading of history or whatever) for what the law proscribes (today, right now). If you are an examiner, you should know what is expected of you a little more, and preach about how things should be a little less (or at least not be so wrong so much of the time).

  14. 168

    Bread, I thought it was Karl Marx who advocated taking from everybody according to their ability to pay, in order to give (education, health services) to everybody according to their need. Pro se Applicants are more needy than those represented by top law firms. The way I see it, socialist is when the PTO, on receipt of 50% fees gives more help to the pro se Applicant than to big corporate Applicant that pays the PTO twice as much. Our Patent Offices don’t go in for that sort of socialist thinking. I’m (still) surprised that yours does.

  15. 167

    “The “taint” of government helping out someone still stems from the anti-patent “monopoly” burden that you are reading into the situation. You seem to indicate that patents are a necessary evil, that somehow are only begrudgingly given for the Quid Pro Quo – or perhaps I am guilty of reading too much into your argument.”

    If you ever bother yourself to read the writtings on the dicussions that took place when the patent system was born then you’d hold this view as well. Matter of fact, if you don’t already hold this view you need to take some time to yourself to reflect on what you believe are your rights are here in America to pursue life, liberty and happiness. Perhaps you feel like it is a basic human right to be able to make objects to their heart’s desire? If you do, I agree with you. If you don’t, you’re out of your mind. The government has agreed to take away that basic right in order to foster the public good of advancing the useful arts if an enabling disclosure is submitted and the relevant portions properly claimed. It is the apps responsibility to execute the application, not the gov. I bet it wasn’t until the 60’s that the pto was officially supposed to help the small guy out, since the law wasn’t so convoluted as it has become. Though, they may have helped them out before that.

  16. 166

    That said, I wish I had some small guys, simply suggest a claim. What, 99 out of 100 times they’d take it? Ez allow.

  17. 165

    “but the court ruled that the only person who did not understand the invention and the claims was the Examiner”

    Lol, and don’t forget the board. Chumps, they can’t even read claims, anticipation is anticipation. Rod /= pole. They just went easy on him because he’s a small guy trying his little heart out. If that sht came from IBM they’d laugh him right outside.

  18. 164

    Well, Breadcrumbs, I fully agree with you that a patent system is a good thing, in that it secures publication of new technology 18 months after the filing date, in easily monitorable/searchable form. The issue of a 20 year monopoly right is the necessary quid pro quo, to secure the beneficial publication. Professional patent attorneys should get no unfair (DoI) help from the courts, to get them out of the deep hole of their own (incompetent drafting) making. Pro se should get no help either, from the PTO. Instead, judges (and Exrs) should construe claims according to the English Rule, namely: What was the Writer of the Claim Using the Language of the Claim to Mean (as seen through the eyes of a PHOSITA reading the claim in the context of the specification). Then everybody ends up being treated with fairness and justice.

  19. 163

    MaxDrei,

    It would be socialistic if the government took from the inventor that which was disclosed and could be recognized as patentable and did NOT help the inventor to what could rightfully be considered theirs. In this case of the MPEP that I cited, you have a public servant supposedly knowledgable in this aspect of the law merely helping provide an inventor (who supposedly lacks knowledge of the legal arena) with that which is rightfully theirs.

    The “taint” of government helping out someone still stems from the anti-patent “monopoly” burden that you are reading into the situation. You seem to indicate that patents are a necessary evil, that somehow are only begrudgingly given for the Quid Pro Quo – or perhaps I am guilty of reading too much into your argument. I fully admit that I believe that patents are a good thing and that the government should Eagerly provide them to those so deserving.

  20. 162

    Hi Breadcrumbs, thanks for the info. Not quite convinced by the Quid pro Quo argument though. Government taking upon itself the burden of pronouncing what monopoly Jim or Jane Inventor shall receive? All seems a bit “socialist” to me. I conclude that the cherished American dream that “The Little Guy Must Win Through” washes away any taint of socialism.

  21. 161

    MaxDrei,

    The US system is replete with directives to help the pro se inventor.

    For example, MPEP 707.07(j):

    “When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.”

    So, evidently, the PTO is NOT supposed to be “neutral”, but is actually supposed to be helpful to the pro se inventor in obtaining a patent.

    The philosophy of “the public being adversely affected” is a bit anti-patent as the trade-off is between disclosure and patent right. As the MPEP section above indicates, if patentable subject matter has been disclosed, the inventor has met her portion of the quid pro quo and the Examiner is obligated to be helpful and render a claim.

  22. 160

    Mr Gur, you raise an interesting point: the degree of freedom that a PTO Exr has, to write claims for an Applicant. Let’s work backwards, from EPO disputed proceedings (opposition) where an Opponent seeks to convince an EPO tribunal that a claim is bad, and the patent owner that the claim is good. Often, a simple amendment of the claim in suit is enough to save the patent from revocation. But should the tribunal write that amendment? Now, back to the pre-issue prosecution, and a member of the public has written to the EPO to make the Exr aware of killer art. Again, is the Exr to craft the curative claim amendment? Lastly, Applicant tenders art found by the USPTO. Should the EPO Exr respond with asuggestion for a claim amendment? My point is: is not the PTO supposed to be neutral, as between Applicant, and the public adversely affected by the grant of a 20 year monopoly? Such neutrality does not sit easily with writing Applicant’s claims for him, or are you saying only in pro se cases?

  23. 159

    Frustrated on January 1 and January 3

    You seem to be frustrated because you don’t think Examiners should have to examine badly written claims and applications. I don’t agree with you.

    The US allows pro se representation. You cannot expect an application or Office Action response written by a non-professional to meet the highest standards of clarity. Also, and unlike the EPO, claim drafting is not a prerequisite for receiving patent attorney or agent registration.

    Maybe these both should be changed, but as an employee of the US government it is part of your job to examine badly written patent applications and to help the Applicant formulate clear claims defining the patented invention.

    In this context we have the illuminated fishing rod application (in re Wheeler). Perhaps the claims and application were badly written, but the court ruled that the only person who did not understand the invention and the claims was the Examiner. That the search done was insufficient was proven by e6k who found numerous killer 102 art in a 10 second informal search.

    You also write “Attorneys…would ask Examiners to tell them what is/are patentable in the spec”. This is perfectly legitimate. An Applicant knows what you are rejecting but not why you are rejecting. The Applicant is asking what you would issue to try to understand your rejection in order to expedite prosecution.

  24. 158

    “examiners at the uspto are allotted ONE HOUR for a pct search.”

    Not true.

    Examiners get the same amount of time for a Chapter 1 PCT as a US App plus one hour to fill out the PCT paperwork — EXCEPT where the examiner has both the US App and corresponding PCT where the examiner gets 1/2 count for the PCT plus the paperwork hour.

    In other words 1 count for a Ch. 1 PCT alone, 1-1/2 counts for a Ch. 1 PCT and corresponding US App. The reasoning is that at least the search and most of the reasoned statement is common to both.

    For the Chapter 2, if it is demanded, the examiner gets one count plus one hour.

    By one hour, I mean that one hour is subtracted from the examiner’s production hours for that biweek (one less hour of expected production).

  25. 157

    It is very difficult to re-open after a remand. When you go to the board, the best art should be in the case. SPE’s don’t even like to ask the director to re-open. A new rejection shows incompetence for the office and the examiner. I have never heard of anyone re-opening in my TC in about 10 years of experience.

    Also, there was some discussion about saving art in your back pocket. This is a very poor tactic. It is morally wrong and it is far better to put forth the best rejection. This can lead to an abandonment and also make the case far easier to examine. As an examiner, it makes it much easier to respond to amendments. If the best art is in the case, you don’t have to issue as many new rejections, just allow it, or copy and paste and respond to arguments. It makes the job much easier. I don’t know of anyone who uses this tactic, I only work with good examiners. If one of my examiners did this, I would refer the matter to the higher ups so they could be reprimanded.

  26. 156

    step back “Carnac on what’s happened to the level of discourse at this blog site”

    Thanks for your comment. The Patent Prospector called to let you know that your sandbox over there has been cleaned and is ready to be filled again with your reactionary poop.

  27. 155

    Curious, you ask what EPO Examiners think of cases originating in the US. Well, EPO Examiners have no knowledge or experience of the common law legal world, so they find quite baffling the behaviour of US (and most English) patent attorneys. Vice versa, US and most English patent attorneys have had no exposure to the world’s default legal system (civil law, that of mainland Europe, China, Japan etc, as opposed to English common law) so find the behaviour of the civil law EPO quite ridiculous. Mutual incomprehension. Each thinks of the other: why do they think THAT’s important???? Consider, for example, the communication chain from an American Applicant for a patent from the EPO. If it chooses EPO counsel from Germany, if there is mutual incomprehension in the communication chain, then it’s between DE and US. But if Applicant chooses English counsel (common law background), then the mutual incomprehension(if there is any)will lie between GB and the EPO. Suggest you ask your questions of big pharma in house counsel, responsible for both the USA and the ROW. What do they report? But come to think of it, they’re probably not saying, at least in public, on a blog like this.

  28. 153

    maxdrei — what do EP examiners think about U.S. origin cases especially those where the US attorney is heavy handedly controlling prosecution? Are US attorneys too inflexible? too difficult to deal with?

  29. 152

    referring to the article above: “n practice, new searches are conducted and, if new art is found the PTO will reopen prosecution.” My guess is that if this is good new art it should have be discovered during the examiner’s first or second search (unless there is some reason that it could not have been found) especially if it is better than the previous art the examiner was using to make his rejections. Applicants should not have to suffer through multiple office actions, the time, expense and delay of appealing the case, the reversal of the rejections, only for the examiner to produce better art (perhaps art that he was hiding in his back pockets in case of emergencies like this.)

  30. 151

    “they don’t want to know about the patent publications of their competitors.” If that is true, shame on them, perhaps they do not have good or forceful patent counsel.

  31. 150

    Tell me, those corporate clients who insist on designating the USPTO as ISA in their PCT applns, thereby avoiding an EPO search report, are they the same ones who want you to close one (Nelsonian) eye when you do the search for your US “clearance” opinion? Are they also the corporations who choose deliberately NOT to monitor the content of WO docs emerging 18 months after the priority date? What I am insinuating is that they don’t want to know about the patent publications of their competitors. Sometimes I think that the equitable tail is bigger than the body of law it hangs off of, and when it wags, the dog falls over.

  32. 149

    I don’t understand why more companies accused of infringing “facially invalid” patents don’t take advantage of the reexamination process to have them invalidated, especially in this post Bilski and KSR era.

  33. 148

    Lowly writes: “If I were appointed director of the USPTO, I would do every darn thing I could to get USPTO examiners the same search tools and the same training as EPO examiners. I would study the EPO and figure out why the examiner attitudes over there are so much better and figure out how to get USPTO examiners to feel the same way about their positions.”

    You make some good points, Mr. Lowly.

  34. 147

    JD “So if all of these patents are “facially invalid” and can be tanked in mere minutes, why do people want them?”

    Well, ask yourself this, Darling: if I come to you without a patent and tell you to stop selling a competing product, how much does it cost you to respond? Now ask yourself the same question if I have a crap patent that literally reads on your product and I’ve taken a bunch of mo-rons to court already, each case ending in a settlement favorable to both sides.

    The harder question for you to answer, I’m guessing, is why the latter scenario is not in anybody’s interest except for the patentee and his prosecutors. Not that you don’t *know* the answer, of course …

  35. 146

    Examiners use bad reference(s) – got it
    Examiners produce bad OA’s – got it
    Examiners only care about counts and RCEs – got it

    Attorneys/agents write bad claims – you got that?
    Attorneys/agents don’t read the spec. – you got that?
    Attorneys/agents amend claims with no support from the spec. – you got that?
    Attorneys/agents would cancel all claims, add new claims, and say the reference(s) is/are no good – you got that?
    Attorneys/agents are so disconnected with their clients that they would ask Examiners to tell them what is/are patentable in the spec. – you got that??

    “just ask the EPO to do a search for you. Isn’t that what, de facto, everybody else in the world already does”

    I don’t know anything about patent prosecution in the EU, but perhaps patent attorneys/agents here can kindly give patent attorneys/agents in the EU, not all, but some of your work and MONEY to prosecute some of your applications? Perhaps we would get better applications, right? What ya dink?

  36. 145

    “Question: Take a claim that defines, with reasonable clarity, the inventor’s specific solution to a spelled-out-in-the-appln discrete technical problem. Does the USPTO search EVER find better art than the art brought to light by the EPO? What I’m suggesting to readers (and to the USPTO) is: scrap the search function. Instead, just ask the EPO to do a search for you. Isn’t that what, de facto, everybody else in the world already does?”

    If only the EPO had the resources to do this ;) If I were appointed director of the USPTO, I would do every darn thing I could to get USPTO examiners the same search tools and the same training as EPO examiners. I would study the EPO and figure out why the examiner attitudes over there are so much better and figure out how to get USPTO examiners to feel the same way about their positions.

    btw, you’d be surprised. i have some large institutional clients who insist on designating the uspto as the searching authority for PCT applications (when they intend on pursuing protection in europe anyway). this practice boggles me. examiners at the uspto are allotted ONE HOUR for a pct search.

  37. 144

    “And yes, I could do this all day. It’s that bad.”

    That’s nice. But tell me, can you produce the evidence that would invalidate any of those patents?

    Let me guess, you’re going to tell me you don’t have to. Because all of those patents will be tanked in 10 minutes in litigation. Right?

    So if all of these patents are “facially invalid” and can be tanked in mere minutes, why do people want them? Why don’t people who are accused of infringing them simply hire you so that you can tell them, “Hey, don’t sweat it, it’s a facially invalid pile of doo doo, I’ll tank it in 10 minutes”?

    Shouldn’t the use of re-exam be booming? Shouldn’t the PTO be issuing re-exam certificates cancelling all claims at an astonishing rate?

    What’s the answer?

  38. 143

    “Where you been, bro’?”

    Malcolm, why do you behave so unprofessionally on this board?

  39. 141

    Carnac “Bilski and KSR should cut down significantly on the number of problematic patents which issue in the future.”

    But Carnac, we are told here day in and day out that those are the worst decisions in the history of patents. Where you been, bro’?

  40. 140

    Here’s a claim filed by Google way back in the dark ages of June 2006:

    34. A system comprising: means for receiving an input of one or more image search terms; means for searching a collection of keywords including keywords extracted from image text; means for retrieving an image associated with extracted image text corresponding to one or more of the image search terms; and means for presenting the image.

    I’m not a software expert. But this is crap. You know it. I know it. Google knows it. Google’s attorneys know it.

    Atypical? Nope. Very typical. Hilarious baloney in the description: “In one implementation, a store (e.g., a grocery store or hardware store) is indexed. Images of items within the store are captured, for example, using a small motorized vehicle or robot.” LOL!!!!! You can hear the prosecutor now, “But Examiner, our system uses a ROBOT!”

    Nobody in 2006 could have predicted that motorized robots could be used to collect searchable images. Right.

    And yes, I could do this all day. It’s that bad.

  41. 139

    “And let’s not forget that the PTO sent out it’s top (mis)managers on a whirlwind tour in support of its claim examination and continuation rules, after receiving hundreds of comments pointing out the illegality of those rules, and heard from many practitioners and applicants. Did they listen? ”

    Come on JD, you know the rules were specifically designed to get around and abuse the same type of holes in the law that you attorneys use regularly. The fact that a court of law would use the things that the rules are specifically drafted around to strike them down is just another indication that the courts have, in the past, been more propatent than proanalyzing the law. I’m hoping Chief J. Michael comes through for me. He did after all promise congress that if they keep their hands off of it he will take care of the issues. I don’t doubt that he could handle them. And the CAFC is off to a decent start with Bilski, though, remind me, wasn’t Michael dissenting? iirc he was dissenting that he would strike the patent down in a different way and would change the SS law considerably as well, in effect getting rid of biz methods/software. Then again, that decision is so long I can’t remember it all that well.

    Gym time, I really have to go.

  42. 138

    If the PTO needs to raise fees to provide improved service, then the fees should be raised.

    (The fees should, however, not be raised to discourage patent filings and disclosures.)

  43. 137

    Bilski and KSR should cut down significantly on the number of problematic patents which issue in the future.

  44. 136

    “Maybe put a cap on foreign filings” and then foreign countries can put a cap on filings they receive from the U.S.?

  45. 135

    “You are correct. But have they increased classification resources? Have they even returned them to pre-cut levels? I don’t think so. So even if they don’t have to take the blame for the cuts, they gotta take the blame for not restoring the resources. Either way, they’re just as complicit as their predecessors.”

    Actually yes they did, or at least Mrs. Peterlin told me they did. They actually raised it.

    Anyway, gtg, ttyl

  46. 134

    And another to ponder:

    6251017

    1. A method for encouraging an individual to visit a designated Internet site prior to visiting one or more dirt-world stores, comprising the steps of:

    a) obtaining a code from the individual at the designated Internet site, the code being printed on a supporting medium;

    b) thereafter, receiving the supporting medium having the printed code from the individual at one of the dirt-world stores; and

    c) providing a benefit to the individual if the received code matches the obtained code.

  47. 133

    “Do you blame the long lines at the DMV because too many people want to obtain driver licences or want to renew their current licence?”

    The “long lines” at the DMV are not analogous until they wrap 2x around the city and there is only one DMV for the whole country. At that point, yes, I would say that there is a definite problem that there are too many people wanting to obtain a drivers license so we should up the fee. We’re not your local come on down and get your everday needs agency PDS, you know this. If it were the case we’d have a local PTO for every little town. We exist as we do because there simply isn’t enough genuine innovation to warrant the allowance of greater demand on our services (by for example, lowering fees to 10$). The gov could fund the PTO entirely out of the general treasury you know, wouldn’t that promote disclosure better?

    “(iii)”

    Or (iv) when congress enacts AQS’s, and simultaneously creates a presumption of invalidity/burden to show validity. Following the exponential curve to its inevitable conclusion, the presumption of invalidity is the only way is it not? When the art relevant to any given topic is listed as being in the millions (or another VLN) what other choice do you have? The way I see it, and I think you will agree, the patent system as it exists today worked very well for when the arts were all very secretive and there was very little literature on any given subject. If an expert reviews that little bit of literature then it is reasonable to give a presumption of validity. If the art is humongous, and an expert looks at, meh, 5% of it, we’re getting into the realm of it being not quite as reasonable to grant a presumption of validity. What happens when the art grows again? The expert looks at .00000001% of the available literature.

    Mark my words, the effects of exponential growth in publications is just now being felt in the patent system. It will get worse before I retire, just as it did during your career. It is inevitable.

    “number of filings has just followed the growth of technology, which is exponential”

    That’s the problem, coupled with that under the law, there is no patent protection available for much of the “growth of tech”. But applicants want it anyway.

    “Instead of constraining applicants, corrective efforts should be focused on understanding why the USPTO cannot keep up.”

    Be serious man. It is obviously the size of the problem. Why can’t the EPO keep up? Iirc they’re having a backlog just like us. Here’s an idea, let’s do 50k for nonnationals. They want to control a national interest (making a product) it seems reasonable to ask for a high fee. Why they’re even permitted to file in the first place is a little beyond me. Nonnationals can’t work in my country, and can’t go to school in my country without special permission, but hey, file a patent and you can dictate what I cannot make!

    Maybe put a cap on foreign filings. Like Visa’s and green cards. Why has nobody done a paper on that idea? It is certainly decent.

  48. 132

    “Considering that there hasn’t been a single patent discussed on this site in the past 2 years or so that Malcolm hasn’t considered to be facially invalid”

    Darling, there are valid patents issued all the time, every week. Hundreds of them.

    Obtaining one is not as easy as writing a claim and saying “Give me a patent.” But it needn’t be that much more difficult.

    As you and I both know, most people aren’t interested in obtaining patents on the thing they invented. Most people are interested in obtaining patents that cover more than what they inveted because the worse thing ever would be to have a patent that just covered what you actually made. Why, someone could just “design around” your patent and compete with you!

    So people get greedy. And there are attorneys who stroke their clients and convince them that they are entitled to the world and, if they just keep ponying up and appeal, appeal, APPEAL! then they can eventually get the patent on the method of automatically storing a computer file in an alphabetized folder when you triple-click on an action-responsive pixel associated with said file.

    This crap needs to get stamped out of existence and I, along with many others, really don’t care how it happens. The PTO can drag its feet on examining that crap. The PTO can do crappy searches on these apps and then better ones later. Whatever. The bottom line is patents on such broad bogus crap have to stop issuing at a detectable rate, rather than at a rate where every week you can find a new one without even trying.

    The position of some folks here seems to be that if the PTO would simply perform examinations more efficiently and consistently, that everything would be cool. That’s incorrect. There needs to be an increase in prejudice and suspicion directed at applications in certain technology areas because, historically, the PTO has taken a bizarrely generous view towards computer-implemented and/or software crap.

    And then there’s the business method bullcrap:

    United States Patent 6896521

    1. A display for vending toilet training materials comprising: a supply of at least two different types of toilet training materials, each type of toilet training material associated with at least one of a plurality of toilet training steps; a display structure having at least two regions, each of the regions associated with one of the toilet training steps, the toilet training materials being housed within the region associated with the corresponding toilet training step; and insignia within each of the at least two regions identifying the corresponding toilet training step.

  49. 131

    “But the facts are that in the last five years the USPTO has granted more patents than in any previous five year span in history.”

    I would certainly hope so, Malcolm, given their increase in budget and the increase in the number of examiners.

  50. 130

    “Lobby congress and stop preaching to the choir.”

    Hopefully Obama will appoint competent PTO management so we do not need to lobby congress. Rather, PTO management will make these changes on its own.

  51. 129

    “Do you blame the long lines at the DMV because too many people want to obtain driver licences or want to renew their current licence?”

    In part, certainly. Then again, you probably believe that it’s your constitutional right to drive a car.

  52. 128

    pds “As I’ve noted a couple times already within the last week or so …. the purpose of the patent office is to encourage disclosure. ”

    False. It’s to encourage disclosure of patentable inventions.

  53. 127

    “The number of filings is NOT the problem.”

    I guess it depends on what you think the problem is. But the facts are that in the last five years the USPTO has granted more patents than in any previous five year span in history. And an astonishing number of the patents are crap, i.e., invalid, obvious garbage.

    The number of filings is a symptom of the problem. People see all that garbage and then they hear about some garbage patent holder hiring an Aspen attorney to help him grab some cash from a deep-pocketed corporation. And round and round we go.

    Given this indisputable reality, the motives of certain prosecutors who comment here endlessly on how the PTO is ripping them off and/or “denying their rights” are easily deduced. They believe they are entitled to a piece of the action. After all, ten years ago nobody really paid much attention. It was an open gold mine for “geniuses” like Lemelson to plunder. The idea of throwing cold water on the party just rankles these commenters, most of whom refuse to admit what everyone knows: the typical applicant for software and computer-implemented patent applications is a societal bottom feeder who hasn’t invented dick.

    “number of filings has just followed the growth of technology, which is exponential”

    That sounds nice. Too bad it’s self-serving gobbledygook which means nothing. Besides, there is nothing remotely “technical” about the crap patents that are flowing out of the most active areas, telecom and “information technology.” Or maybe you consider moving the chairs around on a ship’s deck to be “technical” as long as the final arrangement is “novel” or if you are wearing a pink wetsuit while you do the work.

  54. 126

    “I know I know, that is a huge blunder which yes, I do certainly blame them for (although, iirc the slashing started before the people you consider (mis), Dudas et al.)”

    You are correct. But have they increased classification resources? Have they even returned them to pre-cut levels? I don’t think so. So even if they don’t have to take the blame for the cuts, they gotta take the blame for not restoring the resources. Either way, they’re just as complicit as their predecessors.

    “You keep complaining about this, but all the efiled amendments I get show up the day of.”

    I keep fairly close tabs on my cases. And it takes weeks for responses to get docketed to teh examiner. There is simply no need to have responses filtered through the LIE’s (i.e. docket clerks) anymore, yet that is precisely what they are doing.

    The PTO’s docketing practices are from the stone age. There is tremendous opportunity for pendency reduction if the PTO would just listen to those from the outside who can teach them Bibles of truth on docketing.

    “How better to search than classification (besides me being mr. google?)?”

    You know that. I know that. So how come PTO (mis)management doesn’t know that?

    “Lobby congress and stop preaching to the choir.”

    Are Mr. Dudas and Mr. Doll in the choir? Didn’t the PTO commission a study of the production system a while back? What was the result of that study?

    LOL

    “Personally I believe that the problem is probably that it is a small minority of attorneys who are vocal about the poor search etc.”

    Not so. I have attened many meetings (IPO, AIPLA, BADC, etc.) where PTO (mis)managers do their little song and dance, and they receive comments at every meeting about problems at the PTO. And they nod their heads and say, “Hmm, that’s interesting. I’ve never heard that before. I’ll look into and get back to you.”

    Disingenuous at best. Bald faced lies at worst. Take your pick.

    And let’s not forget that the PTO sent out it’s top (mis)managers on a whirlwind tour in support of its claim examination and continuation rules, after receiving hundreds of comments pointing out the illegality of those rules, and heard from many practitioners and applicants. Did they listen?

  55. 124

    Question: Take a claim that defines, with reasonable clarity, the inventor’s specific solution to a spelled-out-in-the-appln discrete technical problem. Does the USPTO search EVER find better art than the art brought to light by the EPO? What I’m suggesting to readers (and to the USPTO) is: scrap the search function. Instead, just ask the EPO to do a search for you. Isn’t that what, de facto, everybody else in the world already does?

  56. 123

    ” filings have blatantly already gone through the roof of late”

    — number of filings has just followed the growth of technology, which is exponential

  57. 122

    “After having said “yes” and “yes” to the above, how can you possibly say “no, the no. of filings is not the “problem” (i.e. the root cause of the backlog) when filings have blatantly already gone through the roof of late? Ridiculous good sir, ridiculous.”

    Do you blame the long lines at the DMV because too many people want to obtain driver licences or want to renew their current licence?

    Only companies that ignore their customers blame their customers for their own problems.

    People used to say filings have gone “through the roof” 10 year ago. The simple facts are with (i) more people; (ii) greater awareness of the value of intellectual property; and (iii) the ever increasing growth in all-things technology, filinge will be going “through the roof” for now until we all retire or some world-wide catastrophic event. Personally, I would prefer that we all get to retire, so we should figure out how to deal with the new filings instead of discourage filings.

    As I’ve noted a couple times already within the last week or so …. the purpose of the patent office is to encourage disclosure. Weeding out ideas based upon the cost to file is not “encouraging” disclosure. Instead of constraining applicants, corrective efforts should be focused on understanding why the USPTO cannot keep up.

  58. 121

    “It was your beloved PTO (mis)management that decided to slash funding for classification. They thought spending hundreds of millions on a first generation EFS system that resulted in about all of 4 applications being electronically filed was a better use of the money. ”

    I know I know, that is a huge blunder which yes, I do certainly blame them for (although, iirc the slashing started before the people you consider (mis), Dudas et al.)

    “They can’t find anybody to program their system to automatically docket an amendment to the examiner the same day it’s filed by EFS? ”

    You keep complaining about this, but all the efiled amendments I get show up the day of. Seriously, I have an interview, and it shows up in my rejected tab the next day, which is usually when they filed it. Problem is, I’m guessing, that the doc isn’t showing up on my amended tab, but just because your examiner isn’t being bothered to look for your app and address it then that is hardly mgmt’s fault.

    “The differences between USPC and IPC alone cannot explain the disparity in the quality of searches either. ”

    From my own, and a whole lot of exmrs around me’s exp, yes it can. It is amazing how you can spend infinite time looking through subs in our subs and then find ONE IPC sub that has only 3 patents in the whole sub and all relate directly to what you want. AMAZING. Classifying sht where it goes in a logical manner. Heck, I could just cite the subclass and save myself the time of the rejection the art in the subs has been so good in some cases. How better to search than classification (besides me being mr. google?)? It is the ultimate in comprehensive searching. But only if performed near flawlessly, from classification of the docs all the way to the search.

    “And the “one time fits all” examiner production system is a huge problem. ”

    Lobby congress and stop preaching to the choir. You guys are pretty rich, found a lobbying PAC or something. Personally I believe that the problem is probably that it is a small minority of attorneys who are vocal about the poor search etc. And they are dismissed as malcontents that any system this large always has.

  59. 120

    “…’i.e. the root cause of the backlog”

    1) Because I know how to do a root cause analysis (Here’s a hint – If the Office followed the LAW, including pertinent presidential orders, they would also find the root cause)

    2) Because (thankfully) I have a better grasp of logic than Examiner 6000/6k/6/Bring it to the top!

    3) Because filing is the front end of the quid pro quo – the benefit in a cost/benefit analysis is already obtained

    4) because blaming the backlog on the damm customer is the easy out. Perhaps you’ll get lucky and we’ll Hundt the system and lay off the Examiners.

    Or perhaps the answers are “yes” and “no”, if the Office was smart about it. The point being that instead of blaming the input, start spending the right capital (including brain power and channeling efforts away from power grabbing) into handling the increased input. Your logic is analagous to having a millionaire say “I have too much money, I better find a way to make less.”

  60. 119

    “Filings in and of themselves are not the enemy.”

    Oh really? What makes you say that? Let’s presume they lower the filing fee to 10$ for everyone. They then conduct a massive public education campaign to tell everyone that the PTO wants ideas! ONLY 10$ TO GET IT PROTECTED! Do you not believe that filings would go through the roof? Do you not believe the number of filings would then be a problem?

    After having said “yes” and “yes” to the above, how can you possibly say “no, the no. of filings is not the “problem” (i.e. the root cause of the backlog) when filings have blatantly already gone through the roof of late? Ridiculous good sir, ridiculous.

  61. 118

    6k,

    It was your beloved PTO (mis)management that decided to slash funding for classification. They thought spending hundreds of millions on a first generation EFS system that resulted in about all of 4 applications being electronically filed was a better use of the money.

    Once they realized that the first generation EFS system was a total loser, they went out and licensed the EPO’s system.

    Now they have a pretty good EFS system. And they bog it down with 1970’s era docketing practices and clerical staffing. Utterly ridiculous. It still takes weeks for responses filed by EFS to be entered and placed on the examiners’ dockets for action. Because instead of shuffling paper documents around, they have clerks shuffling electronic documents around. They can’t find anybody to program their system to automatically docket an amendment to the examiner the same day it’s filed by EFS? They can’t get any one of the numerous commercial docketing software vendors to come in and tell them what types of docketing actions they provide for law firms and what they could do for the PTO? They can’t assembly a commission or panel of volunteers from the patent bar and large corporate filers to review their docketing procedures and suggest improvements? Of course that would require actually listening to their customers. Wouldn’t want to do that. Much easier to just blame them for all of their problems.

    Which goes back to what I’ve been asking: Why doesn’t PTO (mis)management go to the EPO and ask for help? Surely they (the EPO) know something that PTO (mis)management does not. Like I said, PTO (mis)management has been told over and over and over and over and over for years that the EPO does a better search. And they’ve covered their ears, stomped their feet, and cried, “Nuh-uh!!!! We’re not listening!!!!” If they won’t listen to us, maybe they’ll listen to one of their fellow patent offices.

    Fools.

    The issue, though, is not simply fees. The PTO has enough fee revenue to run its operations. The issue is how they choose to spend that money. The current crop of (mis)managers has shown that they have no idea what is important and should be well funded. Their expenditures on clerical staffing, for example, could be drastically reduced if they automated most of those functions. Which they could easily do.

    The differences between USPC and IPC alone cannot explain the disparity in the quality of searches either. There’s a serious training problem. And the “one time fits all” examiner production system is a huge problem. There’s no amount of classification resources/funding or training that will improve searching if examiners don’t read the application and attempt to search the claims on nothing more than key words.

    The classification mess, the out-dated, morale-sapping production sytem, etc. are well known problems. PTO (mis)management has known about them for years. Their “customers” have told them so. Complained loudly about them. And PTO (mis)management has simply ignored the problems, the complaints, the suggestions for improving their clerical processes and training programs, and decided it’s easier to blame patent applicants and attorneys for the 1.2 million case backlog, write 129 page rule packages, spend time fighting sure-fire-loser court battles, and then issue a report declaring that they’ve achieved 100% of their goals, and have performed record breaking quantity at record breaking quality.

    But hey, according to Malcolm, I don’t know anything about prosecution despite the fact that I was an examiner for 9+ years and have been a practitioner for 9+ years. Maybe he can tell you why the EPO does a better search. Then again, maybe he can’t because according to Malcolm the only problem at the USPTO is that they are issuing facially invalid patents. Considering that there hasn’t been a single patent discussed on this site in the past 2 years or so that Malcolm hasn’t considered to be facially invalid, he’ll probably tell you that the USPTO is doing a swell job of searching.

  62. 116

    While I am a patent practitioner and not an examiner, from what I read on the Internets and what I hear from others including examiners, the PTO classification system is decades behind the times and this reduces the efficiency of examiners and the examination process.

    (It is another example of how our country’s infrastructure is in need of repair and updating)

  63. 115

    “…and it barely slows down filings”

    Filings in and of themselves are not the enemy.

    let’s try to eliminate this pernicious mindset!

  64. 114

    If we do increase fees to 20k or so and it barely slows down filings then the first thing we should do is hire retiring examiners to do nothing but read through the art a few hours a day and classify sht where it actually goes. And also come up with a classification scheme that doesn’t confuse every other user thereof.

  65. 113

    “Paul, can you elaborate a little? Why do you think the difference in fees contributes to the difference in search results?”

    JD you know their classification is teh awsom compared to ours that was left without funding for many years. We need about 3x the number of subs we have, and we need everything broken down into them. Oh, and I should add, the sub’s names should fin make sense. You look at some of our subs names and they look like someone was writting greek. Look at the EU subs and they’re written in english for the most part.

    I have a small stack of refs sitting beside me that I’ve found while looking at a case that is not the case that the ref is pertaining to. That’s right, a “random” looking through the art found better refs than a focused search. Y is that?

  66. 112

    “A key reason that comparisons of EPO and U.S. prior art searches are unfair is the vastly higher fees for EPO applications, their prosecution, and their maintenance even while still pending.”

    Paul, can you elaborate a little? Why do you think the difference in fees contributes to the difference in search results?

  67. 110

    Well Paul, over this side, and in ME/EE (as opposed to pharma) it always seems like the expensive jurisdiction is the USA. How many unnecessary EPO countries are you designating, how many unnecessary claims are you filing in the EPO, how many unnecessary pages are you translating into umpteen pointless European languages, and how many unnecessary attorney hours are you paying? Consider for example what Toyota Motor does. I beg to doubt your “vastly” designation. As to prosecution “delay” how often have you requested PACE, expedited handling? Most Applicants actually do not want early issue. Given that annuities are payable in every national Patent Office, but only after the EPO issues the patent, that compensation for infringement on the other hand runs from WO publication, and that issue cuts off your chance to sculpt the claims to an infringement, why is it, pray, that you actually want early EPO issue?

  68. 109

    A key reason that comparisons of EPO and U.S. prior art searches are unfair is the vastly higher fees for EPO applications, their prosecution, and their maintenance even while still pending. Furthermore the total EPO time delay from filing date to national issuance is often even worse than that of the USPTO.

  69. 108

    “On the contrary, pds, more than most commenters here, I am willing to discuss practices that only prosecutors would know about.”

    MM — stop deluding yourself, the practices that you talk the most about (i.e., bowl movements and the results thereof) is something that everybody knows about.

    Too bad Dennis cannot rig one of his polls to ask the following question from patent prosecutors.

    Who has demonstrated more experience in patent prosecution:
    (i) Malcolm Mooney
    (ii) the lesser of David Boundy or John Darling

    As long as Dennis could ensure that only patent prosecutors could answer, I’m am 95% sure of what the answer woud be — in a landslide.

    If you are a patent prosecutor, which I highly doubt, you would be prosecuting biotech patents — which are unlike most other patents. Moreover, because biotech attorneys are rare, you’ve probably only trained with a handful (at best) biotech attorneys in your career. Anyway, being a biotech attorney typically means less training and a lower quality of training as well as dealing with technology and types of arguments that, in many instances, aren’t typically found in the mechanical/electrical arts.

    I made these same comments about you a couple years ago, and nothing I’ve read so far from you has changed my mind. As far as I’m concerned, I’ve got 1 year assocites that could prepare better arguments than you when it comes to 90% of the office actions that the USPTO puts out simply because they know how to argue an electrical/mechanical application — you do not. It appears that they only advice you would give to a client is that they “should abandon this piece of doo-doo.”

    MM — let’s be perfectly frank, you don’t show much “prosecution insight” when your response to every article that mentions a particular patent is that “this patent is obvious crap.” For all your “insight,” I could teach my 8-year old nephew, in about 5 minutes, to be a standin for you on this board if you ever want to take a vacation.

  70. 107

    “It’s worthless, non-informative, self-serving drivel. We’ve been through this before.”

    Malcolm, as has been noted on these boards, you are stale. Even the deja vu of your writing descriptions of your own postings are getting stale.

  71. 106

    Mr Tazistan, I suspect that your EPO representative (ie prosecutor) let you down. I have to tell my US clients all the time, that claim wordings that are optimal for the USA are seldom optimal for the EPO, and vice versa. Means of evidence that you need for a common law jurisdiction are useless in a civil law environment, and vice versa. What US Applicants need for the EPO is somebody who can swim (and not drown) in both those legal oceans. Do you want to tell me the EPO app number and I’ll report back on this thread? Sorry, I’m unwilling to take the risk of revealing my real identity on this open thread. Maybe we can use Dennis as a shut-out link for private correspondence. Any other ideas?

    Mr Boundy, stats exist, on the proportion of cases that go through the EPO appeal instance undisturbed, but they tell me only what I know already and I lack the time or the motivation to run around looking for them. Maybe somebody at the EPO can help you, if you ask them directly and nicely.

  72. 105

    I agree with this too, David: ” the production count system and several other compensation incentive systems are almost designed to encourage the kinds of examination that lead to problems”

  73. 104

    David Bounty says “the PTO wastes a large fraction of its time generating and defending indefensible rejections”

    I agree

  74. 103

    Just to clarify something –

    The moral/competence lapse behind bad Office Actions is not the fault of individual examiners (with a handful of exceptions – one in 2183, one in 3696).

    It’s the fault of PTO management –

    – the production count system and several other compensation incentive systems are almost designed to encourage the kinds of examination that lead to problems – any competent manager would have fixed these a decade ago

    – John Love and James Toupin are the two most staggeringly incompetent lawyers I have ever talked to (well, leaving aside a couple 1st-2nd-3rd years that washed out), have the most cavalier attitude toward investigating facts before acting, and have the least respect for the rule of law.

    For example, why has the PTO not implemented the instructions from the President to all agencies? I have discussed this memo in conversation or writing with both of them. Why, Mr. Love and Mr. Toupin, has the PTO refused to implement the President’s instructions? Why did you state, in the August 21 2007 final rule notice, that you would *not* enforce PTO procedure relating to examination, when the President instructed that you must?

    link to whitehouse.gov

    PTO management, catch a clue – this memo is not only something you are legally obligated to implement, it is as close to a “magic bullet” as there is (along with deferred examination) to fix the PTO’s practical problems. What’s your problem with seeing that the laws are faithfully executed?

    If the two legal policy heads for the PTO are as incompetent and divorced from factual reality as was on display at the Tafas oral argument, it’s no wonder that the PTO’s legal decision making is so error prone.

  75. 102

    Malcolm does have a point – bad patents are being issued.

    I’d like to suggest a major cause – the PTO wastes a large fraction of its time generating and defending indefensible rejections. If first examinations were solid, if the examiner consistently found and applied the best art, and wrote office actions that conveyed the examiner’s view on all required issues, applications that should be allowed would be allowed, applications that should be abandoned would be abandoned. Instead, because too many Actions communicate uncertainty and ambiguity instead of the examiner’s view (or perhaps communicate the examiner’s failure to have consisered an essential issue), several hundred thousand applications recycle for rework.

    Consistent well-stated Office Actions are crucial to curing the PTO’s backlog –

    – if the rejection has a solid basis, I amend, and we move on

    – if the rejection has an error, I can diagnose it, explain it to the examiner, and we can move on

    – if the art doesn’t meet the claims, then allow the application, instead of generating a baloney Action

    – if all rejections are written out carefully, the way they’re supposed to be, and were, more often than not, before 2000 or so, then the examiner will have invested sufficient thought so that we don’t get Office Actions that omit consideration of dispositive claim language, map a single claim term to several different elements of the prior art, treat the claims as disembodied bits and pieces ignoring the interconnections, etc. that we get so often these days.

    Instead, what happens all too often (since IFW in 2003-04 elimated the need for the examiner to type the claims – and therefore to think carefully about every word?) is a pattern where a solid majority (well over 2/3 in my practice) of first Actions are tragically incomplete. Once in a rare while, it turns out that the refernece really did meet the claims – but the Action was so poor that that wasn’t communicated. Far more often, the error is clear – but the examiner digs in his/her heels defending a crappy rejection, instead of moving on to either find good prior art, or allowing the application.

    The worst art units? The ones where sloppy and incomplete Actions are the solid majority of all Actions? Where examiners and SPE’s refuse to follow “must” instructions in the MPEP, and make up new requirements out of thin air against applicants? In my experience, 3690 and one particular examiner in 2183.

  76. 101

    Max, I don’t know enough EPO appeal jargon to understand your sentence.

    If you are saying that over half of rejections are vacated or reversed, it sounds like you may be able to meet the 50% prong of my challenge. Of course I’d want to see some documentation of the claim (I have seen Katznelson’s, it all comes from the PTO, and Katznelson’s analysis is as correct as the PTO’s very poor statistical reporting allows), and learn enough about the procedure to be sure we are comparing something reasonably fair, but I have no reason today to dismiss it out of hand.

    But even if so – a 50% rate is a long long way from today’s 90% reversal/vacate rate in the U.S. In the U.S., the reversal rate hung just over 50% for at least a decade before the 2005-07 abandonment of procedural regularity by U.S. PTO management – I think we’d all be glad to return to that.

  77. 100

    “To a person who has never taken a programming course, “an object with a plurality of states and routines” would be new, novel, and deserving of a US patent.”

    An object with a plurality of states and routines is new, novel and deserving of a US patent if the object is part of a database for organizing YouTube videos by virtual scent, wherein the scent is assigned according to the most common pixel color in a YouTube video.

    This invention allows you to train your dog to select YouTube videos featuring a particular color. And of course I haven’t programmed a thing yet. Someone else can do that because all this stuff is fully enabled, now and forever. All I have do is come up with the idea, write a claim, and my patent should be granted in six months. Anything less and we can draw an irrebutable inference that the PTO has issued a fatwa against my dog.

  78. 99

    I see that a lot of people are bashing examiners for using bad references in their rejections. However, the same people would not mention a word on how badly some applicants and their representatives write their claims. If you decide to write claims that are confusing, you are pretty much tempting/inviting the examiner to search/interpret your claims very broadly. Also, some attorneys are hired to work in areas that they have no formal education in. To a person who has never taken a programming course, “an object with a plurality of states and routines” would be new, novel, and deserving of a US patent. It’s not the job of an examiner to be your professor. If your qualification is in biology, should you really prosecute in software engineering?

  79. 98

    Boundy: “Show me *any* other agency that has ever had a 90% reverse/vacate rate on appeal.”

    David, we’d surely be comparing apples and oranges so what’s the point? You have to account for all sorts of factors that affect applicant behavior. How is it related to, say, appeals at Department of Motor Vehicles?

    I look at those numbers in Dennis’ post and I don’t see any reason for applicants to be complaining. If it was a 10% reversal rate, the pro patent peddler types here (the ones who think that every application has a patentable invention in it) would be whining just as much, if not more.

    Any Patent Office that continues to issue the crap that the USPTO issues is broken, regardless of the appeal rate or any other of this rinky dinky baloney that the self-identifying “professionals” whine about here day in and day out. The number one reason the crap still gets issued is because the crap still gets filed in the first place and the PTO isn’t equipped to deal with it. That inability is largely due to some terrible pro-patent court decisions (strict TSM, State Street) and some terrible administrative decisions (Beauregard claims). The mess is getting cleaned up, albeit slowly. The economy is a welcome injection of bleach.

  80. 97

    “For all his ramblings and snarkiness, he has provided little evidence that he understands the nuts and bolts of patent prosecution.”

    On the contrary, pds, more than most commenters here, I am willing to discuss practices that only prosecutors would know about.

    Of course, people like David Boundy and John Darling never discuss those things or even admit how widespread they are because they are afraid of what their clients or prospective clients might think.

    pds “Based upon my experience …”

    LOL. Nobody cares about your ALLEGED experience, pds, okay? It’s worthless, non-informative, self-serving drivel. We’ve been through this before. You can comment here until your blue in the face about how you get “dead wrong” rejections in all your cases and then win them all on appeal because the primary examiners are so evil, but they have as much to do with reality as a Looney Tunes cartoon.

    It’s laughable that someone would suggest that the burden is on me to prove that the awfulness is NOT happenning. Here’s the deal: you don’t have to pick 100 cases at random and then look at them all to make your conclusion. Just start picking. After you get through 10 cases you’ll see that John Darling & Co. is full of it and I’m not.

    Maybe Boundy and Darling think they are getting free advertising out of all this. I don’t know. Seems reasonable. But that is the price of a public identity. How can the shilling be taken at face value? It’s all client-centric huffing and puffing at the PTO.

    As for your alleged awesomeness, pds, well, all I know is your comments show that you are not demonstrably ahead of the curve.

  81. 96

    “Look, I prosecute as many applications as the next person but I don’t need to lie about basic facts. I don’t amend claims when the Examiner is “dead wrong.” I correct the Examiner or (in most cases) I let the Examiner’s wrongness just hang in the air like a stale fart because the claims my client wants are going to be allowed, in part, because the Examiner is wrong. This is normal. And if you do what I said upthread and pick 100 applications filed in 2002 at random and look at the prosecution histories, you’ll see that I’m telling the truth and the folks who claim that applicants are getting screwed over left and right are, quite simply, full of it.”

    Either someone hijacked MM’s name or MM prosecutes patents in Bhutan or Second Life.

    For all his ramblings and snarkiness, he has provided little evidence that he understands the nuts and bolts of patent prosecution.

    Clients do want a quick end to prosecution, and too many of them will give up scope to get a quick patent. Fortunately, I have clients that allow me to go after the broadest claims, which has permitted me to be quite accustomed to the appeal process. Based upon my experience, I successfully traverse (without amendment) somewhere between 60-80% of all rejections I receive. However, in many instances, these rejections do not get traversed until after I appeal.

  82. 95

    Hi Maxdrei –

    I have taken probably about 20 cases through the EP (via PCT). The searches are absolutely better. The rejections are better. I actually like the fewer claims/more flexible interpretation method there. So over all, yay you.

    But I did have one case that made me miss the USPTO. It was a really impressive invention; published in top journals, licensed by others in the field, but the examiner just decided it wasn’t inventive. And I was stuck. I got an affidavit by the inventor of the main cited reference that he was impressed by the invention and never thought of it – but EP examiners don’t have to pay any attention to affidavits. And the EP appeal process is so much more expensive than the U.S. that my client just gave up and made due with the U.S. patent. So that was one time when the autonomy and expertise of the EP examiners backfired for me.

  83. 94

    Mr Boundy, how about decisions on appeal to the Technical Boards of Appeal of the EPO? Would they meet your criterion? The proportion of cases that survive the second instance, with no change whatsoever in the claims found valid, is well under 50%. Often that’s because of the late arrival of additional facts about the relevant state of the art. Mind you, the meaning of “appeal proceedings” in any civil law jurisdiction is of course quite different from its meaning in a common law jurisdiction, so maybe the EPO doesn’t “count” for you? At least in the UK, the likelihood of the appeal instance disturbing the first instance decision is indeed remote (which is as it should be, in any common law jurisdiction).

  84. 93

    Malcolm, you must be an examiner – you argue a peripheral issue, and ignore the core issue.

    Show me *any* other agency that has ever had a 90% reverse/vacate rate on appeal. Show me any that has ever been over 50%. Show me one that’s ever been over 33% and hasn’t been adjudged to be violating constitutional due process by providing underlying proceedings with such an error rate.

  85. 92

    MM says: “Pick a 100 issued patents filed at random between 2000 and 2003 and let me know how often this appears to have happened. Then we’ll compare that with the number of issued claims that are cra p”

    Taking the time to study the claims and file histories of one hundred patents under some type of weird MM exercise would make me look pretty stu pid. It thus appears to be more up your alley MM. Please post a detailed memo of your findings on this blog for all of us to share and study and to prove that you are more honest and sober than I am . Gracias.

  86. 91

    Malcolm, what do you do if your client says to narrow the claims to obtain a patent and not fight the examiner any more even though the examiner is “dead wrong”?

  87. 89

    “if the client says to narrow the claims to obtain a patent and not fight the examiner any more even though the examiner is “dead wrong””

    Pick a 100 issued patents filed at random between 2000 and 2003 and let me know how often this appears to have happened. Then we’ll compare that with the number of issued claims that are crap.

    Who’ll come out looking more honest and sober here?

    I will.

    Guaranteed.

    “are you saying that I am lying about basic facts?”

    I’m saying your motives are damaged.

  88. 87

    So if the client says to narrow the claims to obtain a patent and not fight the examiner any more even though the examiner is “dead wrong”, you say “screw the client, I am going to continue to fight the examiner”, Malcolm?

  89. 86

    “For example, sometimes the client says “we have already been through three Office Actions, the examiner is dead wrong, but appeal will be expensive and take years, I am tired of spending money on this application.”

    Sometimes the client says that but in nearly every case when the client says that the client is lying and/or deluded.

    Look, I prosecute as many applications as the next person but I don’t need to lie about basic facts. I don’t amend claims when the Examiner is “dead wrong.” I correct the Examiner or (in most cases) I let the Examiner’s wrongness just hang in the air like a stale fart because the claims my client wants are going to be allowed, in part, because the Examiner is wrong. This is normal. And if you do what I said upthread and pick 100 applications filed in 2002 at random and look at the prosecution histories, you’ll see that I’m telling the truth and the folks who claim that applicants are getting screwed over left and right are, quite simply, full of it.

  90. 85

    2600 examiner — have you ever withdrawn a first rejection because of the applicant’s arguments and then made a different second rejection? If so, the use of the word “overbroad” with respect to your first rejection is wrong (or at least premature).

  91. 84

    2600 examiner — just because a narrowing amendment is made does not necessarily mean that your rejection was proper. Often times, amendments are made for reasons unrelated to the correctness of rejections.

    For example, sometimes the client says “we have already been through three Office Actions, the examiner is dead wrong, but appeal will be expensive and take years, I am tired of spending money on this application. Throw the examiner a bone, amend the case, so the next OA will be a NOA.”

    Or the applicant may amend the claims from A,B,C to A,B,D,E. You (the examiner) may think that the amendment was made because of the brilliance of your rejections, but actually the amendment was made because the applicant’s new product (or the competitor’s new product) does not contain element C.

  92. 83

    “My grades in advanced stat classes suggests otherwise.”

    You must be highly intelligent, Bring it to the top!

  93. 82

    “Please just say “rejecting claims.” “Overbroad” presumes that the claims should be properly rejected, when often they shouldn’t.”

    Unless you’re my SPE, and I doubt you could be since he would need to do something like give up going to the gym to free up posting time, I don’t know how you would know that claims I’m examining aren’t being properly rejected. Every single one of my allowances (30+) except one (Quayle action) had a narrowing amendment of some kind.

  94. 81

    “Yes. The number of cases that are appealed and/or pre-appealed as compared to the overall number of cases is irrelevant. ”

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    LOLOLOLOLOLOLOLOL

    L O L

    Ok, that’s seriously enough laughing for me tonight.

    “We are talking about what percentage of pre-appealed and appealed cases are re-opened. We are not talking about the percantage of cases that are pre-appealed or appealed as compared to the overall number of cases.”

    No, what we are talking about is if that percentage is indicative of “serious problems” in the PTO. That percentage is a tremendously small number of the dealings of the PTO as a whole (the thing which your assertion of “serious problems” relates) that was made to look larger by looking at a small sample size.

    “:As I’ve noted to you many times, the number of cases that are appealed is kept artificially low by PTO (mis)management and BPAI maintaining a thoroughly inefficient, expensive, time consuming, and ultimately useless appeals process. ”

    It sure as f isn’t in my art, they’re the big boys JD, they have $, and they have time, in fact, a great portion of them don’t even want an OA anytime soon.

    “Why is the relatively small sample of appealed cases invalid as a measure of the horribleness of examination quality, but the relatively small sample of allowed cases is rock solid proof of record breaking quality?”

    Because appealed cases are ones where there is usually some actual issues between the examiner and app. The majority of cases fly by with little or no actual issues that are not squashed. Accepting the appeals reopening as a general sample of overall examination would be like accepting only cases with 7 nonfinals issued into the OPQA system. You’re setting the numbers up to look bad since there is already a great indication that there is a problem in the case. You’re not taking a random sampling. Besides that, I’ve already explained that OPQA statistical nonsense is just that, nonsense. Stat is good for use with products etc where quality if objective (does the device work?) for sure, but relying on it for purposes of judging quality of an imperfect and subjective (is this 103 that good?) by nature practice? Ridiculous.

    “Do you honestly believe that if 100% of final rejections were pre-appealed that number would change significantly? You’re dreaming.”

    Alright, I’ll try to control my laughter. Ok, if we’re talking about my rejections then yes, my number would certainly not be 50% right now (as it is with preappeal/appeal remand), my number would be about 2%, a high of 5%. I guess you might argue that the corps as a whole would have a high of a 10% “bad rejection” rate if every tiny nit was picked (including ones that even your avg lawyer would miss). And maybe in some arts it is higher. Our job is not to pick nits JD, that is yours. Our job is to see if the patent appears entitled to a patent. And we do it.

    “As pds correctly noted, and you’ve just confirmed, you have absolutely no understanding of statistics.”

    My grades in advanced stat classes suggests otherwise.

    I’ll have to remember to pick up honors on my law degree since it appears that any avg joe shouldn’t have that much trouble with it.

    See you next year JD, bring your reason. And don’t forget your “seeing the big picture” at home this time ok?

    Happy New Years to you all you guys and gals.

  95. 80

    2600 examiner says “rejecting overbroad claims.” Please just say “rejecting claims.” “Overbroad” presumes that the claims should be properly rejected, when often they shouldn’t.

  96. 79

    Boundy “Over 80% of appealed rejections are so badly flawed that they can’t gain the support of two other examiners to sign on to an Examiner’s Answer.”

    Again, if this statistic was meaningful in the sense the whiners here wish it were, we would expect every rejection to be appealed. The important question is: what percent of all rejections are appealed and what percent of those rejections are proper rejections of crap claims?

    Pick 100 applications at random filed in, say, 2002. Count all the rejections and all the appeals. Then compare to the number of applications in that set with likely valid claims that issued without amendment.

    What folks like Boundy love to forget is that crappy patents are *still* being issued at rates sufficient to encourage applicants to continue filing more crap applications than ever, even in a crap economy. How is this possible if the PTO is engaged in a system-wide efforts to deny applicants patent rights?

  97. 78

    I don’t think the above “6” is the same 6k that used to post around these parts. The real 6k would know that Congress and GAO have been very critical about the impact of the production system on examination quality:

    link to mediafire.com (Rep. Berman’s 4/29/08 letter to Dudas)

    6k also would know that the reopening of prosecution has nothing to do with an examiner being right or wrong. The TC directors and other supervisors get their bonuses dinged if their AUs are reversed by the BPAI too often. If no appeals proceed to the BPAI, then no risk of losing that bonus.

    Regardless, I suspect the PTO appeal process will soon be challenged in an APA action by Mr. Boundy or the like. As noted by Mr. Boundy, the PTO by practice refuses to make “final” adjudications (decisions that are subject to judicial review outside the executive branch), which is an APA no-no.

  98. 77

    e6k “I have 3000000 peas, as a whole they appear green. I pick two. Then I notice one of them is black! Black peas are rotten! It must be an indication that there is a serious problem of rotting since 50% of my sample is rotten!”

    Actually, e6k, the whiners here remind me more of Kramer when he gets all worked up because the bank teller said, “Thank you, come again,” instead of “Have a nice day.”

  99. 76

    Once again, we find JD, pds, and e6k engaged in a fest of endless jerkle cirking. Of these three, the public can rest assured that only one is actual interested in seeing crappy applications die.

    The other two are just throwing mud around, reciting bogus statistics as if they are damning condemnations of the PTO, and trashing e6k as if e6k were running the PTO.

    Sad.

  100. 75

    “And the fact that the cases that are pre-appealed and/or appealed are a tiny fraction of the overall cases is an irrelevant factor?”

    Yes. The number of cases that are appealed and/or pre-appealed as compared to the overall number of cases is irrelevant.

    We are talking about what percentage of pre-appealed and appealed cases are re-opened. We are not talking about the percantage of cases that are pre-appealed or appealed as compared to the overall number of cases.

    We’re back to that reading comprehension problem of yours.

    As I’ve noted to you many times, the number of cases that are appealed is kept artificially low by PTO (mis)management and BPAI maintaining a thoroughly inefficient, expensive, time consuming, and ultimately useless appeals process. Thankfully David Boundy and Ron Katznelson have successfully blocked the PTO, for now, from making the process even more time consuming, expensive, and inefficient. Let’s all drink a toast to their good health tonight.

    50+% of pre-appealed cases are re-opened. That’s a fact. Acknowledged by your higher up friends in PTO (mis)management.

    Do you honestly believe that if 100% of final rejections were pre-appealed that number would change significantly? You’re dreaming.

    And please explain to me how it is that PTO (mis)management puts a sample of less than about 4% of allowed cases through OPQA, picks a number out of thin air as an acceptable error rate, magically finds a way to meet that number (by, for example, firing anybody in OPQA who doesn’t play ball), and then declares patent quality to be at record breaking levels. If PTO management can claim that an error rate of less than 3.6% for a sample of less than 4% of allowed cases means that the error rate for all allowed cases is less than 3.6%, why does it not work in reverse? Why is the relatively small sample of appealed cases invalid as a measure of the horribleness of examination quality, but the relatively small sample of allowed cases is rock solid proof of record breaking quality?

    Can you explain that?

    “I have 3000000 peas, as a whole they appear green. I pick two. Then I notice one of them is black! Black peas are rotten! It must be an indication that there is a serious problem of rotting since 50% of my sample is rotten!”

    As pds correctly noted, and you’ve just confirmed, you have absolutely no understanding of statistics.

  101. 74

    “In any event, there is no possible way that I would allow a case after a remand that did not appear to be entitled to a patent.”

    did not appear. so you form your own subjective opinion of whether a claim is allowable and don’t rely on your search to tell you whether or not its allowable?

  102. 72

    “Reopening does not occur once in a blue moon. It is a matter of course for 50+% of cases that are pre-appealed and/or appealed.’

    And the fact that the cases that are pre-appealed and/or appealed are a tiny fraction of the overall cases is an irrelevant factor? You sir, are insane, incapable of seeing the larger picture, deceptive, ignorant, or perhaps a combination of the above. There is no backpedaling in simply showing you what should have been apparent to you the first time through.

    Just like in your private practice JD, playing dmb is usually not to your advantage. You can stop now.

    I have 3000000 peas, as a whole they appear green. I pick two. Then I notice one of them is black! Black peas are rotten! It must be an indication that there is a serious problem of rotting since 50% of my sample is rotten!

    It’s those kind of statistics that ruin a perfectly good brain. Learn2see the larger picture JD. Don’t you remember the fool that was talking about omg omg omg so many percentage of appeals go against the examiner in the previous thread? He failed to consider the tiny numbers involved compared to the whole, just like you do here. At least he had the brains to see he was wrong after someone bothered to break down the whole situation for his simple mind.

    I have other attorneys to straighten out who are paying me to do so, so I must go for now.

  103. 71

    “I thought that the art rejections, 2600 examiner, were made against the pending claims and not “the spirit of the invention?””

    Obviously you have to reject whatever specific language is in the claims. The point is that if you have multiple ways of rejecting overbroad claims, you should choose the one that most closely resembles what was disclosed by applicant.

  104. 70

    I will say I haven’t run into anyone that sandbags around me, but then again, everyone around me can allow cases.

    In any event, there is no possible way that I would allow a case after a remand that did not appear to be entitled to a patent. Reopening stats, problems in the office, etc. etc. be damed. Imma followin tha la’ n you can’t stop meh. When you get right down to it, if you do bother to see the situation from PDS and JD’s point of view (any % of remands being indicative of problems in the office), it’s really the law and our adherence to it that is the problem. I suggest any that believe such simply lobby congress to amend 151.

  105. 69

    To quote you exactly: “…but basing an assertion about ‘serious problems’ occurring at the pto on the fact that reopening occurs once in a blue moon is ridiculous at best.”

    And again, “…on the fact that reopening occurs once in a blue moon…”

    Reopening does not occur once in a blue moon. It is a matter of course for 50+% of cases that are pre-appealed and/or appealed.

    Nice attempt at back pedaling. But it won’t work.

    Better redouble those LSAT studying efforts.

  106. 68

    “an art rejection close to the spirit of the invention.”

    I thought that the art rejections, 2600 examiner, were made against the pending claims and not “the spirit of the invention?”

  107. 67

    “Compact prosecution IMO isn’t so much about making 333 possible 102/103 rejections, as much as it is about addressing every claim, raising every relevant 101 and 112 issue and making an art rejection close to the spirit of the invention. ”

    That’s not just your opinion, that is what it is.

  108. 66

    “Shouldn’t those rejections have been made as alternative rejections in the original final rejection?”

    How many fin rejections do you want? Take away the req to item to item/state obviousness rigamarole and I’ll give you up to 4 completely independently based rejections per action.

    That said, I agree that if there is some decent chance that a court would overrule you, sure, throw the app a bone and give them the 2nd or 3rd basis of rejection. For ultimate lols put them in the conclusion while you go final on their unamended claims so the board can raise the rejections.

    5% of applications OR LESS are appealed. 80% of those are overturned (iirc), and then 20% of those are reopened (or 100% if your examiner is me). A grand total of less than 2% (probably more like .5% actually) of all applications will suffer this “horrendous” fate.

    I’ll say this again, really slow:

    O N C E I N A B L U E M O O N.

    funny enough, for most examiners .5% is rather close to

    “On average, there will be 41 months that have two Full Moons in every century, so you could say that once in a Blue Moon actually means once every two-and-a-half years.”

    “You got caught making a stating that just isn’t factually correct”

    Keep dreamin’. My interpretation of all tests being in fact pass/fail is perfectly reasonable.

  109. 65

    “a couple of them we’re talking” should read –a couple of them were talking–

    I’ll just stop.
    ———————-
    “So much for “compact prosecution” imo.”

    If the first art is good, making the rest of the rejections is a waste of time. Put the rest of the relevant references in the References Cited, so applicant has a better chance of coming up with something allowable (if they bother to look at the references). Compact prosecution IMO isn’t so much about making 333 possible 102/103 rejections, as much as it is about addressing every claim, raising every relevant 101 and 112 issue and making an art rejection close to the spirit of the invention.

  110. 62

    “A number of times during my career I have felt that an examiner withheld his best rejections until late in the prosecution, keeping his best prior art and rejections in his back pocket until he needed them.”

    I went out to lunch buffet with some people before Christmas and a couple of them we’re talking about that tactic like it was genius. They’re SPE is cartoonishly insane (no allowances) so I don’t blame them for approaching prosecution that way.

    I don’t choose to use that tactic (mainly because I can allow cases), but I did get an attrition case where the examiner went forward through pre-appeal with really close art that lacked a key feature (he was essentially arguing that something with one button had two buttons). I found rock solid 102(b) art in 15 minutes and will re-open once the case is processed by support staff. The kicker is later on his working folder was placed in my mailbox and lo and behold he had found the same 102(b) reference I will be re-opening with.

  111. 61

    2600examiner writes:

    “Shouldn’t those rejections have been made as alternative rejections in the original final rejection?” That’s a waste of resources. All the extra typing would take up time that an examiner could use to work on new cases. If the first rejection is good enough, applicant won’t even look at the rest.”

    So much for “compact prosecution” imo.

  112. 60

    Curious, when I was there, that practice was called “sandbagging,” which was clear reason for dismissal. Now it appears to be standard operating procedure!

  113. 59

    A number of times during my career I have felt that an examiner withheld his best rejections until late in the prosecution, keeping his best prior art and rejections in his back pocket until he needed them.

  114. 58

    “You just like the outcomes better. The EPO is less rigorous than the PTO. Plenty of times I find 102 art when the EPO search report lists only ‘A’ references.”

    You’re almost as funny as 6k.

  115. 57

    “They are simply better examiners than you and your ilk. Far better. Face it.”

    You just like the outcomes better. The EPO is less rigorous than the PTO. Plenty of times I find 102 art when the EPO search report lists only ‘A’ references.

  116. 56

    “Shouldn’t those rejections have been made as alternative rejections in the original final rejection?”

    That’s a waste of resources. All the extra typing would take up time that an examiner could use to work on new cases. If the first rejection is good enough, applicant won’t even look at the rest.

  117. 55

    JD wrote: “The LSAT is not a pass/fail test.” 6K replied “It is in terms of getting into a school fool. [blah, blah, blah, blah, blah]”

    6K – this exemplifies a couple of your problems. One, JD caught you saying something that just isn’t true. Everybody knows what a pass/fail test is, and the LSAT is not a pass/fail test. You got caught making a stating that just isn’t factually correct – deal with it. Your problem in this instance is that you aren’t “precise” in your statements. You fudge your statements too much, in when that happens, someone is going to call you out. Make the same type of mistake in an office action, and a good attorney will jump all over your statement, just like JD did here.

    Second, you don’t know when you’ve been beaten. Only a “fool” continues to pursue a line of arguments when he has already been beat. Everybody makes mistakes, but only fools compound that error by attempting to defend the indefensible.

    Third, if this is an example of the type of construction/interpretation you apply in your office actions, then this is just another straw on the already broken back of the camel that exemplifies how an examiner will attempt to twist the plain meaning of a term.
    FYI – these statements do not regard just this particular argument – they are based upon my review of your “body of work” on this board.

    “And relying on obscure, indirect, and all together not relevant support of statements is a sure fire way to make a 130.”

    I imagine you’ve never taken the LSAT since your comments aren’t relevant to what it takes to get a high score on the LSAT.

  118. 54

    “What is the point is statement?”

    Uhm, the point was that re-opening occurs, contrary to your absurd assertion, more than once in a blue moon.

    Duh.

    “Doesn’t matter, there is 0, I repeat 0 indication that it is ‘the best art’. Finding better art after a 30 sec search, that encompasses more of the stuff in the spec, proves this. And you know this.”

    No, I don’t know that. As I said, EPO examiners find D1 the first time out, and stick with it throughout prosecution.

    They are simply better examiners than you and your ilk. Far better. Face it.

    And don’t think that the blockheads running the PTO don’t know that. They’ve been told over and over and over by their “customers” that the EPO does a far better search. Unfortunately, when told that, they have a tendency to cover their ears, stomp their feet, and proclaim, “Nuh-uh, we’re not listening!!!!”

    “Let me follow that up with two other sentences if you can keep your mind from wandering too far from the topic at hand. Overcoming one (or more), perhaps really good, perhaps the best, and perhaps shty, rejections does not mean that you’ve overcome ALL rejections that could be made. Rejections can be made in many many many ways beyond ‘the best’.”

    You really should review section 707.07(g) of the MPEP. That’s M-P-E-P. Stands for Manual of Patent Examining Procedure. There might be a little icon thingy on your desktop that you can double click on to view it. Give it a whirl. May prove useful.

    You may want to review Rule 104(a)(1 and 2) also. By “Rule” I mean 37 C.F.R., which stands for Code of Federal Regulations.

    The MPEP has a handy dandy appendix that includes the Rules. Once you’re in the table of contents of the MPEP, it only requires a single click to get to the rules. It’s a real time saver. That’ll help you do a few more of those killer Google searches each day.

    “…considering essay etc is all fine as well.”

    Well, based on the crystal clarity of your postings on this site, I’m sure your essay is going to suitably impress the admissions committees.

    “I’m done talking to you”

    Oh, would that were true.

    Sigh.

  119. 53

    “Instead, new art is cited which is not that good (keyword search), and we go through several office actions (without amendment) until relevant art is cited. A few times, the art cited was actually from the Search Report.”

    I know there are bad examiners out there. I don’t trust all of the primaries in my art unit. I’m a training assistant to a lab with a couple of people that may not have any sense of logic at all (to be determined) and several people that I don’t think will ever be able to work independently. Each of them will make it back to TC.

    All that said, I don’t think what you’re describing is that extensive of a problem (at least with experienced examiners). Practically every file wrapper I see has an amendment of some kind.

  120. 52

    “When a case is returned to the examiner, with what he considered the best position overturned, then there still exists a LOT of rejections that still could be made. And just because they are perhaps not ‘as good’ as the other rejections, does not mean that they are not valid.”

    Like many arguments, the issue turns on a disagreement as to the meaning of a word. Methinks 6K has one interpretation of what a “good rejection” is, whereas DB, JD, and many other patent professionals have a different view.

    To 6K, a “good rejection” is one in which there is some infinitesimal chance that the reasoning, no matter how stretched, could be believed. This belief gets bolstered by many SPEs, who provide little substantive review of work product, and by bad patent attorneys who would rather amend (and file an RCE) than “offend” an examiner by arguing or appealing.

    The EASY way out, for an examiner with so-so references, is to ignore/misconstrue claim language and stretch the teachings of the art.
    The EASY way out, for an attorney, is to amend rather than argue. Any of my responses that include an amendment are, on average, considerably shorter than my responses that do not include amendments.

    Getting back to a “good rejection,” I cannot speak for the others, but I see a “good rejection” is one that either (i) gets me to abandon the claim or (ii) forces me to amend the claim. Although I see many of these types of “good rejections” it is solely because I do a lot of prosecution. Unfortunately, I see several times more bad rejections than I see good rejections.

    Getting back to my other point of taking the easy way out (i.e., laziness), the problem with attorney laziness is that it reinforces examiner laziness. When an examiner sends out a rejection and gets an amendment in return, the examiner believes he or she has done a good job, but that necessarily isn’t the case.

    So, here we are … 6K believes that the crap he produces smells likes roses because the attorneys he works with allows him to get away with it. When he reads what the likes of DB, JD and others are writing, he is confused because he KNOWS that isn’t how the system works – what they write just doesn’t comport to how he’s been trained or to his experiences at the USPTO.

    In the end, 6K is right until he meets a properly-trained attorney given a good set of facts (i.e., stretched rejections by 6K on bad art), at which point 6K will finally get the training he desperately needs.

  121. 51

    6 writes “When a case is returned to the examiner, with what he considered the best position overturned, then there still exists a LOT of rejections that still could be made.”

    Shouldn’t those rejections have been made as alternative rejections in the original final rejection?

  122. 50

    “on’t you routinely claim to find killer 102(b) art with 5 second Google searches?”

    Doesn’t matter, there is 0, I repeat 0 indication that it is “the best art”. Finding better art after a 30 sec search, that encompasses more of the stuff in the spec, proves this. And you know this.

    “Uhm, as has been pointed out, like about a million times, by me, David, pds, et al., including your own beloved PTO (mis)management, 50+% of pre-appeals result in re-opening. And as Dennis’s stats show, about 20% of BPAI reversals result in re-opening.”

    What is the point is statement? You’re still trying to assert that those stats back up the statement that there is serious problems occurring at the pto.

    It does not. Let me put this for you in a sentence since you can’t understand my “ramblings”.

    When a case is returned to the examiner, with what he considered the best position overturned, then there still exists a LOT of rejections that still could be made. And just because they are perhaps not “as good” as the other rejections, does not mean that they are not valid.

    Let me follow that up with two other sentences if you can keep your mind from wandering too far from the topic at hand. Overcoming one (or more), perhaps really good, perhaps the best, and perhaps shty, rejections does not mean that you’ve overcome ALL rejections that could be made. Rejections can be made in many many many ways beyond “the best”.

    Let me toil you through this sentence if you’re still on board. When a rejection is returned to the examiner for further consideration then he is not absolved of his duty to put forth whatever rejection is now best just because someone above him thinks his previous best rejection was not valid for one reason or other.

    Finally we’ll end up with this one. Since an examiner is not absolved of his duty to put forward such a rejection after a remand, then there exists no reason to say that this would indicate ANY particular problem with the pto besides there being a difference of opinion between people operating within the system.

    I’m done talking to you trolls, if this information was not indicative of anything beyond EXCELLENCE or at the very least SATISFACTORY performance of the pto then there would be a massive looking into it and people in power would take you seriously on this issue. They do not. And for good reason. Anyone with one ounce of sense understands that because one person in a position of power disagrees with someone below them on one issue does not mean that there are not a plethora of valid rejections to be made against any specific pending application.

    At this point I say: Put up or shut. Bring your concerns to congress since they’re so horrible. When they are absolutely SHOCKED by these numbers and immediately launch a full scale campaign to stop reopening, and to get “the absolute best rejections” made on first action within 24 hours then you will be justified. And I will take my hat off to your superior reasoning powers. Until then, accept that the numbers are fine, or better than fine, and everyone who has any say in the matter is completely satisfied. Then stop your btching.

    “The LSAT is not a pass/fail test.”

    It is in terms of getting into a school fool. If I have x GPA I’d better get y on the LSAT to stand a good statistical chance of passing admissions considering essay etc is all fine as well. Anything less than a 155 for me is a fail. Sure anyone can take it and make a 130, but trust me when I say that a 130 is “fail”. And relying on obscure, indirect, and all together not relevant support of statements is a sure fire way to make a 130.

  123. 49

    6,

    I am going to assume that comments above about bad references being cited do not apply to your Examinations, as I am guessing by reading your previous posts, you actually seem to take pride in your work. That is, I think that you stand behind your rejections.

    I cannot say that same type of philosophy holds for other Examiners.

    The problem I see for most Applicants is that the rejections that are being made these days by many US Examiners are made with bad references (i.e., they don’t apply). Some Examiners seem to form their rejections by taking some keyword from a claim and citing that a reference that has that keyword.

    You can say that I am crazy for thinking this, but here are some things I have noticed:

    A. Many applications that are filed by our Applicants use an EPO based search and IPER.

    B. The search itself contains some good US references (X,Y) where the search both detonates what claims are anticipated by such references, and where in the references citations can be made to anticipate the claims.

    C. The search report is filed in the USPTO at the time of the application.

    When we receive the first office action, the contents of the action cite new US art, where none of the art even comes close, except that that art and claims may share some common terms.

    At worst, I would expect that an Examiner who does not want to do that much work would at least parrot what the EPO cites, relative to the US cited art or US equivalent art. This approach rarely happens.

    Instead, new art is cited which is not that good (keyword search), and we go through several office actions (without amendment) until relevant art is cited. A few times, the art cited was actually from the Search Report.

    I really don’t get why that takes place, but it does.

    Although it is unrealistic to expect that the “best” references will be cited, I would expect that good references be cited, or at the very least, a reasonable rejection be made.

    I would want Examiners to take the approach that you take, i.e., my rejections are good reject, ions and if you appeal my rejection, you will lose Applicant.

    Instead, too many Examiners seem to apply tricks (a two restriction requirements, without Applicant amendment, or swapping secondary references on a 103) to the examination process where they do not stand behind their work product.

  124. 48

    “That’s quite a few blue moons. I prefer my Blue Moons to be the beer, not re-openings.”

    I have found another reason to like JohnDarling.

  125. 47

    Hi Max,

    Thanks for asking. My cases in Europe were mostly managed (99%) by my U.S. patent attorney, as were my cases in the USPTO. Of late, with his assistance, I went pro se with two applications.

    My applications have always been appreciated and were treated fairly and professionally in the USPTO and EPO. I ran into difficulties starting circa 2003 in District Court and the CAFC after Cisco and there ilk in the disingenuous despicable Coalition for Patent Fairness poisoned the independent, self-employed inventor’s patent well.

  126. 46

    Max,

    I can confirm. The speed with which searches are issued by the EPO is really quite amazing. You would think that instead of wasting everybody’s time writing byzantine rule packages, the dolts in PTO (mis)management would take a field trip to the EPO and humbly ask for some help.

    “U R DUM JD.”

    That quote you attribute to me was actually pds’s. It was actually quite an insightful comment on pds’s part, I must say.

    “Bottom line, it is literally impossible to find ‘the best’ art if this job is done ‘properly’ in the majority of cases”

    Don’t you routinely claim to find killer 102(b) art with 5 second Google searches?

    Your wildly inconsistent ramblings are really quite funny. I would love to read some of your OA’s. They gotta be an absolute hoot.

    “…basing an assertion about ‘serious problems’ occurring at the pto on the fact that reopening occurs once in a blue moon is ridiculous at best.”

    Uhm, as has been pointed out, like about a million times, by me, David, pds, et al., including your own beloved PTO (mis)management, 50+% of pre-appeals result in re-opening. And as Dennis’s stats show, about 20% of BPAI reversals result in re-opening.

    That’s quite a few blue moons. I prefer my Blue Moons to be the beer, not re-openings.

    “I’m VERY surprised you could even pass the LSAT JD. Much less make it through law school. But then, you do have a affinity for memorizing the party line on ‘what the law is’ so perhaps that explains it. Maybe the LSAT wasn’t even used back when you were applying. But I can promise you this, with the reasoning skills you’re displaying above, you sure as f wouldn’t pass the logic games.”

    The LSAT is not a pass/fail test. Maybe you’ll find that out if you ever bother to take your head out of you-know-where and take it for yourself.

    I did fairly well in law school. Something like “with honors.” At least that’s what it says on the diploma hanging on my wall.

    “At least I have sufficient faith in my own credibility to sign my real name.”

    In all fairness, David, would you sign your real name to the silliness Malcolm spews forth daily?

    I’m sure in real life Malcolm is a rather cautious and deliberate type. A regular Clark Kent. But, when he slips into his cute screen name, and maybe even a cape, he becomes a SuperMan of patent lawyers,dispatching “facially invalid cr#p” with glib analysis and comments. Heck, he can tell you what patents are invalid just from seeing the titles.

  127. 45

    “You and I both know that that happens about 1% of the time, if ever.”
    And there-in lies the problem. We have discoverd the enemy, and he is us.

    “so g that sht tfo.”

    Translation: I don’t want to be held accountable for not doing my job.

    6, the Law is the Law – follow it and the problems with the Office disappear to the extent that power-grabbing to change the law will not be needed. Your job IS to find the best reference. Period. The litany of why you cannot (or more likely CHOOSE not) is a smokescreen. Do your job or get out.

    “Because I’m a “better” searcher than that examiner (in this case) does that mean he failed to do his job? No, it does not.”

    …and you think JD would fail the logic games? 6, your logic is so broken and biased that a) you know this and post merely to provoke, or b) you don’t know this and are hopelessly lost.

  128. 43

    “Changing the mindset of the examining corps with respect to searching will be very difficult since poor and mediocre work is now entrenched. ”

    FYI it’s not ever going to change. The only way to change the search quality is to improve the fin classification so that we can find what we’re looking for where it is supposed to be so that we don’t have to word search the high heavens. And then teach examiner how to use the fin thing, and make us all take refresher tests/courses to make sure we keep putting things WHERE THEY GO. Oh and also, making a new google system that includes functions like EAST has would be nice. I can think of many ways to improve search engines, and they’re likely where we’re going to end up because the classification system is probably going to end up dying eventually from lack of funding and because the funding to upkeep it grows with every patent stacked on top.

    “EPO examiners routinely find D1 the first time out.”

    Sorry JD, those comments above are actually for PDS. Though you seem to concur with him, so maybe they’re for you too. As to the subject of D1 that is simple. I can find a good D1 that is | | close to the ind and most, if not all, of the deps in a minutes time in many cases but then there is a problem with the 103 to get the inventive feature in. Then I’m stuck with pulling in crpy D1’s (or the closest references) one at a time. Deps do not help this process. AT ALL. They slow it down to a fin CRAWL, and that’s one of my main beefs with them. They do this by diversifying the (many times trivial) features that must be found in each reference to truly be called “the D1”. But you <3 them, so keep using them and keeping the pace at a crawl.

  129. 42

    “Hi there Just, and HNY to you too. You have run cases through the EPO. Was it fair to you? Can it tell the difference between obvious and inventive? How many office actions did it take, how many attorney hours, how good was the EPO search, and how many continuations, sorry, I mean divisionals, has it taken to get good claims to issue?”

    I think you know what all my answers will be on this one, Max. :o I’m one of the US patent attorneys on here who is forced to agree with you a lot. There really is no comparison between the EPO and the USPTO when it comes to quality of the searches, of the actions, and of the examiners.

  130. 41

    I’m VERY surprised you could even pass the LSAT JD. Much less make it through law school. But then, you do have a affinity for memorizing the party line on “what the law is” so perhaps that explains it. Maybe the LSAT wasn’t even used back when you were applying. But I can promise you this, with the reasoning skills you’re displaying above, you sure as f wouldn’t pass the logic games.

  131. 40

    Malcolm –

    The 90% reversal rate is explained in the 7th post on this thread, where I cite Ron Katznelson’s slides, which in turn are based on PTO data obtained by FOIA and the documents produced in the Tafas case, and the PTO’s published statistics. When you put all the info together, you get a 90%+ reverse/vacate rate.

    I’m comfortable that I am “taken seriously” by the folks that matter. The White House took me pretty seriously on the Appeal Rule… I’ll also take credit (along with my team) for the current suspension of the IDS and Markush rules.

    What White House decisionmaker has found in your favor in the last few years?

    Who (at least who that matters in my world) doesn’t take me seriously? I’m happy to do what needs to be done to put things right.

    At least I have sufficient faith in my own credibility to sign my real name.

  132. 39

    6 is right. 102 is not the issue. If the only issue is novelty, then it’s p1ss imple to get round the objection. What the PTO needs is a no-nonsense raster for handling 103. Shame it’s hog-tied by the “Not Invented Here” syndrome, so can’t borrow EPO-PSA.

  133. 38

    Hi there Just, and HNY to you too. You have run cases through the EPO. Was it fair to you? Can it tell the difference between obvious and inventive? How many office actions did it take, how many attorney hours, how good was the EPO search, and how many continuations, sorry, I mean divisionals, has it taken to get good claims to issue?

  134. 37

    “When the best reference is found, prosecution proceeds much quicker, which leads to quicker disposals.”

    What you mean is: “When a dam near killer reference is found prosecution proceeds much quicker”.

    Well of course. You either have to get around it or abandon. Those two things speed prosecution up considerably. But that has dck to do with ii and iii if there is no “killer” reference and they’re all just an assortment of really close references (this category may include 102’s of claims, but 102’s that don’t get the whole spec) which is the the case in the SOLID MAJORITY of cases.

    “the fact that even when the examiner is convinced that the rejection is good enough to send to the BPAI they still reopen when they lose is an indication that their are serious problems at the USPTO.”

    U R DUM JD. Seriously. There are probably 103’s to be made in more than 20% but the examiners are soft enough to let them go anyway. Take Wheeler for example. Statistically speaking, it was likely the examiner would allow the case after the CAFC remanded. Everyone on this board knows that there is likely a 103 to be made with the prior art he used already. Everyone on this board also knows that there is a strong likelihood of a 102 awaiting the examiner’s return from xmas in his Inbox. Because I’m a “better” searcher than that examiner (in this case) does that mean he failed to do his job? No, it does not. It means that his search didn’t find “the best” or “a better” reference, just like probably nearly every single last search ever performed did. The fact that he probably gets about 1/2 a day per action doesn’t help things, as your piece about the production system relates, but basing an assertion about “serious problems” occurring at the pto on the fact that reopening occurs once in a blue moon is ridiculous at best.

  135. 36

    That 6 rant just shows what a powerful job PSA is doing for the EPO, cutting through all the cr6p that gets all the way up 6’s nose. His brothers and sisters in the EPO have a very effective way of sluicing it all away, before it even rises to the level of their ankles. Those US attorneys who regularly prosecute cases at the EPO know this, but not many other US residents do.

  136. 34

    “Examiners are supposed to find the “best” reference. ”

    You and I both know that that happens about 1% of the time, if ever. Even with a straight up 102b describing the exact same invention, there’s a good chance that there is something out there somewhere that is still better yet.

    You know good and well even assuming that we find “very good best art” that there is still likely 10 other references that are “less good” because of a limitation or two (which are usually commonly known) but that show the “inventive feature” very well, while another reference might (and often does) show all elements, but the examiner had to read out or stretch something. Which is the better reference? What if you have 5 with all similar issues? Make all 5, or maybe 20, rejections on the off chance that the Board considers one better than the one you consider best?

    Your argument about the “best art” holds 0 water JD and you know it. If you don’t know it, you weren’t doing your job very well as an examiner.

    “amendments that could have been presented much earlier are not because applicant does not know the full extent of the prior art.”

    And in all those situations where the “new art” was already in a notice of references cited but the applicant conveniently decided not to look at them (or his attorney did?)? What then? You know as well as I do that it is standard practice to not look at the cited references. Then the excuse is that the attorney believes the examiner thinks the refs used in the rejection are “better” or are “the best”. Hogwash. All of it. Ridiculousness. The art is BROAD and encompasses the same principles in VAST numbers of ways.

    For instance, let’s presume, for the sake of argument, that the reference which I googled for the Wheeler case had lacked a light bulb sufficient to illuminate the entire rod and the reference specifically wanted it that way. Let’s also presume that Wheeler had included a limitation so as to require that feature. Let’s say that the art that was used during the CAFC hearing did have that feature. Everyone who has seen the two references considers my art to be “better” than the art that was of record, but alas, in our hypothetical it lacks a strong light bulb! Now I have to use it for a 103 with a strong lightbulb and listen to Wheeler drone on about the primary teaching away OR I use the reference that the examiner did and have a blatant 102. Which reference is better JD? Huh? Let’s also presume that I have 100 references showing everything but a transparent rod (and let’s assume wheeler included a limitation to require such). To use those I have to make a 103 also, but hey, most of them might be “better” than the examiners 102 reference of record since the CAFC fails at reading claims and said that 102 wasn’t viable. WHO IS TO SAY? The bottom line is, stuff like this happens in nearly every case I prosecute if I do an exhaustive search.

    Bottom line, it is literally impossible to find “the best” art if this job is done “properly” in the majority of cases so g that sht tfo.

  137. 33

    ….and, as John Darling I hope will confirm, that best cite, D1, the EPO finds and communicates to the Applicant (at least in medical devices) just a few months after the app was filed, together with an opinion on patentability, in the so-called EESR, with obviousness addressed under PSA, starting from D1, which pretty much wipes out with one karate chop any dodgy claim, with nary a whimper from Applicant. My explanation why that happens goes like this:

    1. No court can tell the EPO the law.

    2. No attorney at law is involved, because in civil law Europe the profession of patent attorney is equal in status to that of attorney at law, but different.

    3. So, nobody’s a lawyer (and few are English native speakers), so all have no option but to focus on the technical content of the docs, eschewing lawyers’ word games.

    4. Oh, and Rule 137 EPC gives Applicant one shot at amendment. After that, you get your amendment admitted only with the consent of the Examiner.

    5. And, there’s no Binding Precedent.

    6. But (as the EPO well knows, but US attys don’t) Art 69 EPC and its Protocol on Scope of Protection gives courts all the flexibility they need, to find infringement even if the precise English words of the claim don’t quite “fit” the invention.

    So, not much of use in that list then, is there John, to help the USPTO out of its slough of despond?

  138. 32

    PDS,

    Thanks for that nice, succinct breakdown of what happens when an examiner searches poorly and strings out their locating of relevant references. Unfortunately for all of us, doing a poor to mediocre search is really easy and doing a good search is very time consuming. Changing the mindset of the examining corps with respect to searching will be very difficult since poor and mediocre work is now entrenched. (And outsourcing will definitely not solve it.)

  139. 31

    pds is correct. The real issue that needs to be addressed is why U.S. examiners can not find the best reference the first time out. Part of the reason is exactly what pds noted: U.S. examiners have ZERO incentive to find the best art in the first search. They are rewarded for doing lousy searches and issuing garbage OA’s. The reward is the RCE gravy train that applicants are extorted into running because the petitions and appeals processes at the PTO are so irreparably broken that applicants can not get any meaningful relief through those processes.

    EPO examiners routinely find D1 the first time out. In my experience, instances of EPO examiners conducting yet another search and citing yet another “new D1” are almost non-existent.

    Why is that?

    There will never be any meaningful improvement at the PTO until its (mis)management abandons the “one time fits all” examiner production scheme, and starts punishing, instead of rewarding, shoddy search and examination.

    During my time as an examiner, it was unheard of to re-open if BPAI reversed the rejections.

    20% reopening after reversal is simply disgraceful.

  140. 30

    “Far more accurately, one out of five reversed cases are re-opened by the Examiner. So what? Seems very normal to me that after the appeal and decision by the Board that some aspects of the case are revealed that merit another look. Frankly, I’m surprised that only one out of five are reopened.”

    As we’ve known all along, you don’t understand how the prosecution process is supposed to work.

    Examiners are supposed to find the “best” reference. Why is the examiner finding the “best” reference important? Because when the examiner doesn’t find the best reference the following things can occur:
    (i) an application could be allowed that should not be — I know MM, you should be taking your blood pressure medicine on this one.
    (ii) prosecution is delayed — amendments that could have been presented much earlier are not because applicant does not know the full extent of the prior art.
    (iii) abandonment can be delayed — if the “best” reference is a really good one, applicants will abandon instead of fight.

    People keep wondering about why there is such a backlog at the patent office and I can just point to (ii) and (iii). When the best reference is found, prosecution proceeds much quicker, which leads to quicker disposals.

    However, the system isn’t set up for quick disposals. Instead, the likes of 6K are addicted to their RCE-count gravy train and have little incentive to find the best references. Instead, their incentive is to make production, which includes extorting RCEs out of applicants or presenting the first set of references that the examiner found which wil allow the examiner to make a rejection (albeit not necessarily a good rejection).

    Given that a large number of appeals don’t even make it to the board (because it is agreed upon in the appeal conference that the examiner didn’t properly do their job) the fact that even when the examiner is convinced that the rejection is good enough to send to the BPAI they still reopen when they lose is an indication that their are serious problems at the USPTO.

  141. 29

    “This is why nobody — i.e., nobody in the wider population — takes you seriously, and nobody ever will until you change your tune so it becomes remotely credible.”

    Malcolm, for any variety of reasons, you must have heard this said to you so many times that typing this statement must have provided you an eerie sense of deja vu.

  142. 28

    MM, can you give us an example of a claim from an issued patent that ISN’T “crap” in your mind? I have never seen you think any claim posted is anything but crap.

  143. 27

    DB “The poster child is not single cases here and there, it’s the 90% reversal rate”

    Where do you come up with the “90% reversal rate”?

    “the fact that 20% reopening is occurring after examination where the examiner was required to “cite the best references at his command”

    Far more accurately, one out of five reversed cases are re-opened by the Examiner. So what? Seems very normal to me that after the appeal and decision by the Board that some aspects of the case are revealed that merit another look. Frankly, I’m surprised that only one out of five are reopened.

    But here you are flipping out like this is some horrible injustice. Meanwhile, you sit quietly while crap claims are issued day in and day out. This is why nobody — i.e., nobody in the wider population — takes you seriously, and nobody ever will until you change your tune so it becomes remotely credible.

  144. 26

    “If you want your agency to work, give me a call.”

    Why don’t you call and save the day? 8800

  145. 23

    ” How often is it that the SPE agrees with the examiner on those pre-appeals? Can you give a rough percentage base on your experience, and from what you know of other examiners? My perception is that the pre-appeal is more like a pier review than an appeal, and it’s likely that the SPE is your buddy and will barely spend the time on it.”

    So far I’m 2/4. One of the times my first spe was on my side, but then the new spe wasn’t. So I “should be” 3/4. Got another one coming up sometime soon. But, the SPE does review it quite thoroughly, that I can assure you, and if something is amiss then he’ll tell you. But you’re right, it’s a peer review by two senior fellas.

  146. 22

    “yet the PTO refused to enforce the requirement for a T.C. Director signature, and I had to spend over $10,000 or so of my client’s money to figth the same issue over again.”

    Who cares? He would have signed it and you’d be in the same position. Learn to be persuasive instead of forcing your app.

    “E6K’s insistence that the supervisory authority of the PTO can go do private things with the MPEP is further confirmation of the fundamental problem at the PTO: a considered disregard for procedure, and disrespect for the rule of law.

    I must have been out that day, what specifically did I insist?

    “Discipline this rogue T.C. Director, and start instilling respect for the role of procedural law, we will all start to have faith that the rule of law may be returning to the PTO.”

    LOL how? “Listen, *name of director* I hear you weren’t enforcing the rule to sign a reopen after BPAI remand, I think we should do that”. “Ok boss no problem”.

    “it is plainly evident that current USPTO management has a utter disregard for the rule of law”

    I’ll bite, what did they do now little pdsywesey?

  147. 21

    That brings up another question for you 6. How often is it that the SPE agrees with the examiner on those pre-appeals? Can you give a rough percentage base on your experience, and from what you know of other examiners? My perception is that the pre-appeal is more like a pier review than an appeal, and it’s likely that the SPE is your buddy and will barely spend the time on it.

  148. 20

    “My client received a favorable outcome on the pre-appeal brief conference. It took a pretty long time, about 5 months, before the BPAI re-opened examination and kicked it back to the same Examiner. ”

    Gues wut? If you got a preappeal that went your way the “BPAI” never saw it, and never reopened examination. The examiner, his spe, and a specialist saw it and decided to reopen. Depending on the specialist, you can pretty much get anything through preappeal if your spe is with you. Keep thinking you’re a good attorney.

  149. 19

    “So let me get this correct Mr. 6:”

    No, No, Yes. I lost 2 cases preappeal (had 2 affirmed too) because I rejected one over a combination of their own AAPA (appeals specialist and my NEW spe thought that unsportsmanlike, that’s the technicality) and because I gave a 112 after withdrawing all claims in a subcombo/combo restriction after nonf amend (the people in charge of restriction practice feel as if this type of restriction infringes the applicants basic right to add limitations from the same embodiment even though it is technically correct as a restriction, I kind of agree, but the restriction was proper so I made it). I didn’t actually lose the 2nd one, we just told the appeals specialist we’d reopen and withdraw the restriction. They should have had to challenge the restriction instead of the rejection and that of course is not a grounds for appeal/preappeal. And yes they’ll both get new rejections because they do not appear to be entitled to a patent.

    And then what lowly said. What examiners should do though is things like 2:25, 3:08, instead of barely pulling off a 2:40 after appeal.

    link to youtube.com

  150. 18

    “David, in order for the them to do that, they would have to have respect for the law. They don’t.”

    John & David:

    For those of us who have been practicing for awhile and keep our ear to the ground (or at least contemplate the type of environment that spawned the likes of 6K), it is plainly evident that current USPTO management has a utter disregard for the rule of law.

    They seem to have forgotten that they are an agency of the federal governmental and bound by USC, CFR and case law. It is one thing not to know the law (i.e., ignorance). However, it is another thing altogeher to know the law and wantonly disregard the law.

    Frankly, the USPTO is an embarrassment. I’ll defend our patent system against the likes of MadMax anyday. However, I cannot defend the institution ostensibly in charge of that system.

  151. 16

    “…and start instilling respect for the role of procedural law, we will all start to have faith that the rule of law may be returning to the PTO.”

    David, in order for the them to do that, they would have to have respect for the law. They don’t.

  152. 15

    Malcolm, I’m puzzled at your statement. The poster child is not single cases here and there, it’s the 90% reversal rate, and the fact that 20% reopening is occurring after examination where the examiner was required to “cite the best references at his command.”

    That isn’t the way *any* system is supposed to work. Courts have found that when an agency has a 1/3 reversal rate, the underlying procedures that led to the reversed decisions are so flawed that they violate constitutional due process.

    The PTO put the MPEP requirement for T.C. Director signature in the MPEP to avoid abuse – yet the PTO refuses to enforce its own rules. I had one case where the examiner reopened on an identical-sepcification divisional of the prior art on which he was reversed – yet the PTO refused to enforce the requirement for a T.C. Director signature, and I had to spend over $10,000 or so of my client’s money to figth the same issue over again.

    If a 90% reversal rate, and a very high disregard-of-agency-rule rate isn’t demonstrative of “systematic abuse,” what is?

    Well, here are two candidates.

    1. Some T.C. Directors have *told* me flat out that they will not enforce PTO written rules, both on the telephone and in written petition decisions. Yet the PTO not only tolerates such, it promotes them. The day we see T.C. Directors held accountable to look up and follow the law, and punished for making it up, or using “it cannot be seen” as the only excuse for not following clear written PTO and Federal Circuit precedent, is the day we begin to hope that systematic abuse subsides.

    2. E6K’s insistence that the supervisory authority of the PTO can go do private things with the MPEP is further confirmation of the fundamental problem at the PTO: a considered disregard for procedure, and disrespect for the rule of law.

    Jim Toupin and John Doll, you know where to find me. If you want your agency to work, give me a call. I’ll give you several clear instances of flagrant disregard of the law by senior PTO employees. I’ll give you signed papers from a T.C. Director in which he states his refusal to even consider PTO precedent (leave aside Federal Circuit precedent – this T.C. Director told you, Mr. Doll, to take a hike). Discipline this rogue T.C. Director, and start instilling respect for the role of procedural law, we will all start to have faith that the rule of law may be returning to the PTO.

  153. 14

    My client received a favorable outcome on the pre-appeal brief conference. It took a pretty long time, about 5 months, before the BPAI re-opened examination and kicked it back to the same Examiner. Belive it or not 6, Examiners, like everyone else, makes mistakes and doesn’t like to admit it. In my client’s case, the Examiner rejected the claims by citing one component in the prior art for two separate elements in the claim. It was allowed thereafter, and some pride was swallowed. But everyonce and while we’ve got to. I think the program is a great idea.

  154. 12

    Take home from Dennis’ description: the system works more or less as anyone would expect. No cause for alarm. No sign of systematic abuse.

    Tough luck for some of the commenters here. I guess they’ll continue to rely on their poster children, like one of those fly-by-night charity scams.

  155. 11

    “So, are my clients wasting t heir money when we file an Appeal Brief because we should expect that an Examiner will either reopen up prosecution with the same type of rejection as before, or ignore the decision of the BPAI if the Examiner loses.”

    The stats in this article show that appealing is not a waste of time. MOST of the time, if you win, you will get your notice of allowance.

  156. 10

    So let me get this correct Mr. 6:

    #1. You lost several cases in front of the BPAI (not many, if your affirmative rate is 98%+).

    I am going to assume the following….

    #2. The board did not give you any input in remanding the applications where they neither suggested new rejections nor prior art that you should consider.

    #3. You are admitting that you are going to reject these cases with new rejections because you lost on technicality.

    Why?

    Unless you know of relevant 102 type of art (without performing a search) doesn’t this approach conflict with the MPEP §1214.04?

    Also, this approach makes it seem like the Applicant is wasting their money?

    Aren’t you admitting, indirectly, that regardless of what the BPAI decides, an Applicant who appeals a rejection that you wrote will receive a new rejection if the BPAI finds against you, regardless of the circumstances.

    My concern is for mostly for the Applicant, and for me understand what the Applicant should expect from appealing a final rejection if my hypo above is true.

    The problem is that many Applicants are seeing (too many?) Examiners reopen up prosecution after an Appeal Brief is filed. Most times, this occurs by the Examiner making a new rejection by swapping out of the secondary 103 reference with a new one.

    So, are my clients wasting t heir money when we file an Appeal Brief because we should expect that an Examiner will either reopen up prosecution with the same type of rejection as before, or ignore the decision of the BPAI if the Examiner loses.

  157. 9

    “Well, not really, we did conclude the matter, we sent a final. The applicant failed to conclude the matter by appealing. And they kept on. We just kept on trying to conclude the matter. The applicants stopped us.”

    Unfortunately, I have to agree with Douche_Canoe_6K on this one. If they sent you a final, they concluded the matter. These lines of cases would only seem applicable to a case where the PTO refuses to examine your application.

  158. 8

    “There’s a strong line of decisions on situations like chronic reopening – where an agency bounces things up and down without reaching a final decision, the agency is in breach of the Administrative Procedure Act, 5 U.S.C. § 555(b) (“…within a reasonable time, each agency shall proceed to conclude a matter presented to it.”).”

    Well, not really, we did conclude the matter, we sent a final. The applicant failed to conclude the matter by appealing. And they kept on. We just kept on trying to conclude the matter. The applicants stopped us.

  159. 7

    To answer Loki –

    Yes, there are statistics on pre-appeal procedure. See slide 15 here:

    link to works.bepress.com

    Over 80% of appealed rejections are so badly flawed that they can’t gain the support of two other examiners to sign on to an Examiner’s Answer.

    Then of the <20% remaining that go to the Board, there's about a 50-50 split.

    There's a strong line of decisions on situations like chronic reopening - where an agency bounces things up and down without reaching a final decision, the agency is in breach of the Administrative Procedure Act, 5 U.S.C. § 555(b) ("...within a reasonable time, each agency shall proceed to conclude a matter presented to it.").

  160. 6

    “A *LOT*.”

    Well, if we’re talking about me, if 2 out of ~150 is A *LOT* then I suppose you’re right. Both of those were wins on technicalities alone, and shortly both will have met rightous fire of prior art. As to the rest of the corps, meh, who cares? My point is, we should be smacking down apps every time after remand so as to prevent trips to the board. If D’s numbers above were 100% reopened and 100% abandoned then people would think 2x about appealing and would always want to make a deal. You should be behind this, it’ll lower the amount of cases at the board, lowering the backlog there :)

    “pre-appeal board”

    LOL, you mean the examiner, his spe, and a preappeal “specialist” (who knows less about the art usually than the examiner/SPE). Yes, “the board”, aka examiner really came through for you there.

    P.S. My rejections are always good. Weak sometimes sure, but they’re still good. I’m well aware it is weak when it is weak. Good, solid rejections aren’t hard to spot. Anything but those are the weak ones.

  161. 5

    Are there similar stats for the pre-appeal conference procedure? My qualitative experience is that a successful pre-appeal conference would result in re-opened prosecution more often than 20% of the time and allowance less than 80% of the time.

  162. 4

    Nice to see that you’re flawless, 6k, and never ever make a mistake.

    Apparently you haven’t seen the statistics on how many cases are re-opened after pre-appeals and after appeal briefs are filed. A *LOT*.

    Further, I’ve had two cases that were allowed after the pre-appeal. Yes, I pre-appealed a case, and the pre-appeal board decided to allow the case. Why? Because the examiner’s rejection was piss poor and should never have been made.

    I also recently had a case reopened after I filed an appeal. The examiner called me and suggested a minor amendment, which got the case allowed.

    I have no idea what art unit you work in, but it must be one of the horrible “allow nothing” art units and most be populated with examiners who actually do their work.

    p.s. just because YOU think your rejection is good doesn’t mean that it actually is.

  163. 3

    Smacks down? More like slaps in the face IF this ever happens to me. Telling me my rejection wasn’t good. Ridiculous. If my rejection wasn’t good I wouldn’t have made it (except back in the academy days admittedly, you have to there). After everyone having made it through preappeal and presendituptoappeal conferences I’m surprised that the board can even hardly find any cases to remand.

    I should also add, if the examining corps as a whole had started responding by rejecting each application ever remanded 3x as hard a long time ago then less appeals would be filed in first place. Lots less. It is our being soft that encourages that ridiculousness.

    “Oh, I’ll just appeal and show the examiner what for!” HAHAHAHAHAHAHAHAHAAHAHAHA. Throw your case right down into the pits o heck, go right ahead :)

  164. 2

    6k, why is it that I see you as the type of examiner who will not allow a case even after the board smacks you down?

  165. 1

    “At that point, the examiner is not allowed to make another search for prior art.”

    L O L. Big brother’s a watchin’ meh.

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