BPAI Appeal Statistics: The Plummeting Reversal Rate

In an earlier post, I examined what happens to patent applications after the BPAI reverses an examiner rejection. [LINK] This next post looks at the BPAI reversal rate itself. Here, I define the reversal rate as the percentage of cases where the Examiner rejections are completely reversed (as opposed to partial reversals).

Over the past several years, the BPAI reversal rate has dropped dramatically. From FY1999-FY2005, the reversal rate remained relatively steady between 35% and 40%. Then, in FY2006 we began to see a smaller proportion of reversals. By the first two months of FY2009, the reversal rate had dropped to 20%. Part of the drop is likely attributable to new filtering mechanisms that keep low-quality rejections from reaching the Board. The pre-appeal brief conference program started in 2005 and allows a patent applicant to request an internal review of the examiner’s final rejection at the Tech Center (TC) level before an appeal brief is filed. Even if no pre-appeal brief conference request is made, the examiner’s case for a rejection is usually reviewed at the TC level before the examiner is allowed to file a responsive brief.

In recent years, these filters have operated to weed-out 80% of the cases where an appeal brief or pre-appeal brief conference request had been filed. Prior to implementation of these filters, the majority of appeal briefs led to BPAI decisions. [See Katznelson, Slide 15]

When the low quality rejections are eliminated from consideration, we should expect that the BPAI reversal rate would drop – as it has. The BPAI is no longer seeing many of the easy reversal cases where the examiner made a clear legal error. Rather, today’s cases before the board tend to be more focused on arguable issues involving obviousness, enablement, and patentable subject matter.

The filters only tell part of the story, and the reversal rate masks the fact that – in absolute numbers – the Board is reversing more cases than ever. Over this same period, the number of appeals filed has increased dramatically. And, although the BPAI has increased its throughput, the backlog has grown five-fold since 2005. These pendency pressures give the Board an incentive to make appeals less hospitable – as we saw with the new (not-yet-final) BPAI appeal rules.

Notes:

113 thoughts on “BPAI Appeal Statistics: The Plummeting Reversal Rate

  1. 113

    “The interesting/annoying thing about the Examiner’s characterization of the prior art is that he’s asking us to prove a negative…to discuss and dismiss what the prior art DOESN’T address.”

    I think the Examiner is merely asking you to explain why using an angle is a non-obvious improvement over the prior art. Merely saying that “nobody used an angle before in this technique” is a response to an anticipation rejection, not an obviousness rejection.

    Consider: a method of making a peanut butter sandwich, comprising making a peanut butter sandwich while listening to the 2009 iPod model.

    The Examiner takes an old peanut butter sandwich recipe and says it would be obvious for someone to combine the method with listening to the new iPod, because the new iPod will make the old method more enjoyable to the sandwich maker.

    You can’t get anywhere by responding that “nobody discussed making a peanut butter sandwich while listening to **any** iPod, much less a 2009 iPod.” It misses the point.

    This is KSR. This is the correct application of the law. This is the way obviousness should work.

    Deal with it.

  2. 112

    “Wait … the invention is about the optimization of an angle and the applicant refuses to limit the claim to a range of optimized angles?”

    No, the case involves using an angle as opposed to not using an angle. The interesting/annoying thing about the Examiner’s characterization of the prior art is that he’s asking us to prove a negative…to discuss and dismiss what the prior art DOESN’T address.

    I’ve seen more and more of this kinda crap from the PTO recently. Like I’ve said before, while the PTO may be obligated to read the claims as broadly as reasonable during prosecution, I don’t think the same standard should be applied to the prior art. The examiners are now reading things into the prior art that aren’t there.

  3. 111

    I’m curious about the reversal rate. The post said defined reversal as cases where the examiner was completely reversed. I’m curious about what the numbers would look like if the examiner was reversed as to the allowability of at least on claim.

    NOTE: I am aware that the post said that a later article would look at the reversals, but I still haven’t seen it.

  4. 110

    in addition to ksr and bilski, there have been some crazy ass 112 rejections the past ten years or so which are driving up the rejection rates

  5. 109

    Thank you MM. But is it enablement and nothing else. From an English point of view, Defendant puts patent owner in a “squeeze” as follows: Your claim is capable of being interpreted to have two meanings, one broader than the other. If we take the broader one, your claim is old or obvious. But if we take the narrower, we don’t infringe, so it doesn’t matter if it’s valid. So, go away.

    What I’m on about is the mischievous use the patent owner’s lawyers will make of the file wrapper, to finesse out of the squeeze, into a claim interpretation that’s both valid and infringed. I’m with you, in visualising it happening, all the time, but again I defer to readers at home in US patent litigation

  6. 108

    Hutz “I also am unaware of any times a patentee has been able to rely on statements made during prosecution to turn an invalid claim into a valid one.”

    Happens every time a statement in the prosecution history is successfully invoked to support a narrower claim construction than that requested by the defendant (who is trying to tank the claim on enablement grounds). You think this hasn’t ever happened?

  7. 107

    “6 — I seriously doubt if even most of the applicants wait six months to file rce’s.

    Also, after a few years you get into a system where you are getting credit for old cases — everything is just shifted three or so months.”

    Doesn’t change the fact that at any given time apps are fin me through the office’s system. Tell you what, let’s call it 5 mo. avg. response Then it only takes it one month to be moved to my docket. I get credit in 6 mo. Just because the app screwed me for 5 and the office for 1 hardly matters to me.

  8. 106

    From this morn:

    “Note the language “consistent with the specification.” Like all bad examiners, 6K ignores language (in the claims or the law) that cut against his argument. Their credo — “why respond to language when you can ignore it?”

    I’m pretty fin sure that in my arguments above I specifically stated I would make a determination consistent with the spec.

    I also stated that the mess from Phillips should be overturned on the grounds that it does not support the issuance of claims that by themselves accomplish the public notice function OF CLAIMS (as opposed to claims+spec). Somehow I get the feeling that the SC would see through that bs immediately. You just like it because it lets you make overbroad claims and then limit them in a way that does not put the public on notice except after significant trouble.

    “Examiner’s are experts at reading meanings out of terms and/or interpreting phrases in the ways that would never be interpreted by a PHOSITA”

    This is true, but we have to take the contingency position as you well know.

    “One last point, turning to the hypothetical at hand (i.e., the non-zero angle), odds are great that the examiner never even provided an explicit claim construction. Instead, the examiner probably pointed to a feature in the prior art and it was up to the attorney to divine that is how the examiner was interpreting the claim.”

    Of course. If you still have trouble “divining” such easy things, practice just might not be for you darlin.

    “The worse part about dealing with stu pid examiner claim constructions is that you don’t even realize how they were interpreting the claims until after final or during an examiner’s answer.”

    This is because you choose not to display your ignor ance by making a 5 minute phone call. Other attorneys do not suffer such a disability. That said, sometimes I’ll throw in a construction tidbit if I feel like they might contest the term.

    Remind me, was gram v deer en banc? I bet it was, but I’m too lazy to look atm. From all indications I’ve seen, the fed circ has a propensity towards making ridiculous decisions en banc that usually require the SC to step in to fix. But then, I suppose they do the best they can, it is usually a tricky subject they are ruling on en banc.

    “Speaking of examiner incompetence — recently I had a case where the examiner, in a 102 rejection, cited to column 1, line 6 through column 23, line 54 (basically, the entire document with the exception of the field of the invention and the claims)”

    I’m about to start doing that myself, this other mess of line to lining every st upid limitation (even blatant ones) is dmb and wastes way too much time. If you can’t tell what an fin bicycle seat is when you’re looking at one then we have worse problems in the patent system than “examiner laziness”, specifically, attorney incompetence. I actually had an attorney come back and argue specifically that a certain piece in the prior art must be what is designated as one of the claim terms and that such a designation would make the claim not anticipated. Well, he was right about one thing, the certain piece had been designated as that claim term, but he was mistaken about the claim not being anticipated as a result. His subsequent amendment was rather funny.

  9. 105

    Max,

    I am sorry. I see you whole focus was on validity. Yes, to determine validity, you do need to look at the file wrapper as a claim that may appear anticipated on its face, may be narrower based on FWE.

    However, I also am unaware of any times a patentee has been able to rely on statements made during prosecution to turn an invalid claim into a valid one.

  10. 104

    Max,

    Your hypothetical of 11:11 am on July 7 does not make sense. Your widget would only infringe if it infringed the claim. If you mistakenly thought the claim was anticipated by your previous widget, then you would have made an error. To the extent that the terms in the claim are read in view of the written description, and the applicant is allowed to be his own lexicographer, you should review the written description before arriving at a decision of whether you infringe. However, the file history will NEVER turn a claim you do not infringe into one you do. Prosecution history estoppel would NEVER play a part in your hypothetical.

  11. 103

    I do not believe you would receive an antecedent basis rejection for amending the claim to recite a non-zero angle as long as that was implicit in your description and drawings and especially if you had a dependent claim reciting a particular angle or angle range.

    I have had to make similar ludicrously unnecessary amendments in the past and not received an antecedent basis rejection (or at least not one I did not overcome in one action)

  12. 102

    6 — I seriously doubt if even most of the applicants wait six months to file rce’s.

    Also, after a few years you get into a system where you are getting credit for old cases — everything is just shifted three or so months.

  13. 101

    “Wait … the invention is about the optimization of an angle and the applicant refuses to limit the claim to a range of optimized angles?”

    I have three letters that I’m thinking about right now. One is a vowel. Can you guess what those three letters are?

    That said, I really don’t understand why people use that inferior optimization of ranges crp. Woodruff ftw. I have used that case in no fewer than 20 actions (probably more like 50, or 100 inc finals), and I have never had even one attorney, amongst some of the better attorneys probably in existence, come back with the ridiculousness that pds says about that caselaw being used the way I do. They either try to establish criticality, or the subject doesn’t come up. They fail at establishing it quite often, I will say that. And even if pds is right (slim chance), that sht is effective as he ll.

    Woodruff: Ranges?!?! Where?!?! Take 5, 6, I’ve got this one.

    6: Thx man.

    “(1) When an examiner gets a deficient response from an applicant, his job is easy — he files a quick final rejection. The applicant responds with an RCE and an Amendment and the examiner gets a bunch of counts. In other words, the examiner wins.”

    1. when an examiner gets a deficient response from an applicant, his job is (sometimes) easy — he files a (sometimes) quick final rejection. The applicant responds with an RCE SIX MOTHER FIN MONTHS LATER and another deficient Amendment then the examiner gets 1 count. In other words, the examiner gets FED OVER for SIX MONTHS. Thereafter, the examiner addresses the next deficient response and recieves another count which in some cases makes the whole thing tolerable. Be clear here, the “abandonment” count should be given to me the second I sign the death sentence for your deficient response, not 6 mo. later. That’s why the ooo, he just got 2 counts is merely an artificial appearance. The examiner got 2 counts for your RCE because you withheld the first of those 2 counts for SIX MONTHS. I should add, that even when you don’t wait 6 mo. (rare) it is still ridiculous. Frankly, RCE’s are just an id iot tax. If you don’t like it then lobby congress to stop taxing you for being st upid (/unwilling to look at art yourself).

    Let me ask you something mr. the examiner wins. If you did some work for someone, and they wouldn’t pay you for 6 months, would you consider yourself having “won”, or would you consider yourself “fed over”?

    Yet again with the incredible. Every day I come here I’m amazed at the misperceptions of wtf is going on over here. Then again, I suppose we do have that mystique about us. Go to a bar, drop “patent examiner” and watch the girls flock. ;)

    lolol.

  14. 100

    6k,

    That is good news.

    Let me know when they’re all gone. We’ll go out and have a beer and celebrate.

  15. 99

    “trying to remember to change the date on the previous Office Action”

    I will not lie, that is one of the hardest things to do at my job :( If you could please stop filing responses then my job wouldn’t be so hard in this respect.

    JD, you’ll be pleased to hear that they’re no longer hiring as many LIE’s as are leaving the office. They’re trying to phase them out as we go to IFW or something like that, phase them down at least.

  16. 98

    Wait … the invention is about the optimization of an angle and the applicant refuses to limit the claim to a range of optimized angles?

  17. 97

    Here’s another portion of the office action, referring to why it would have been obvious to optimize that which the prior art fails to even recognize.

    “As ‘345 does not state that the angle…is important, it is reasonable that the transfer could be conducted anywhere between 0 and 90 degrees. It would be obvious to optimize this angle…”

    Again, ‘345 makes no mention whatsoever of an “angle”.

  18. 96

    (1) When an examiner gets a deficient response from an applicant, his job is easy — he files a quick final rejection. The applicant responds with an RCE and an Amendment and the examiner gets a bunch of counts. In other words, the examiner wins.

    (2) When an applicant gets a deficient final rejection, he must go to the time, expense and delay of filing an RCE, an appeal, a petition or whatever. In other words, the Applicant loses.

  19. 95

    “One last pet peeve from this week that I’m seeing a LOT. People arguing this: The situation has a limitation that requires, for instance, drying a ball, or “drying the ball”. I say in my action that the reference discloses the ball being at least partially dried. The attorney comes back and states that since I say the ball is only at least partially dried then the term “drying the ball” is not anticipated. Then we have an interview because obviously I send him a final saying the ball is dried if it is partially dried. I ask him, “Do you mean for the limitation to mean the ball is all the way dried?” “No, no, I don’t mean that, and my spec wouldn’t support that” “Yes, I’m aware, so why are you taking issue with my anticipation of this limitation?” “Because I didn’t say: at least partially dried, I said drying the ball.” “So how do you reckon this ball that is at least partially dried that I have alleged got that way?” “I guess it was dried.” “Ok, so the reference’s method involved the ball being dried?” “Oh no no no!””

    I have to agree with our esteemed colleague, E6K on that one :(

  20. 94

    curious,

    Don’t expect too much “gravy” with all that “meat” you’re getting. Punching up form paragraphs, inserting cites to inapposite boilerplate case law that you’ve never bothered to read, let alone analyze, and trying to remember to change the date on the previous Office Action before hitting the print icon are all extremely hard work.

  21. 93

    You spend time and submit three pages of arguments, clearly pointing out the deficiencies and problems with the examiner’s rejections. And the examiner’s next action is a final where he simply says that he does not find Applicant’s arguments persuasive.

    PTO management, please let me know how I should respond. (And don’t tell me to call the SPE; 90% of the time, their response (because they are busy I guess) is a knee-jerk “I agree with the examiner” even though they do not both to read the file wrapper. Or they say, file an Appeal Brief and your arguments will be fully considered.)

    I have only filed two Pre-Appeal Briefs, and both have been “successful”. By “successful” I mean that the examiner withdrew his rejections but then issued new rejections. (And then I have to explain this to my clients.)

  22. 92

    “After pointing out that the neither cited portions, nor the reference as a whole, includes the claimed features, they go final making an absurd spin on a previously undiscussed passage in the reference.”

    “After pointing out that neither … the reference as a whole, includes the claimed features, they go final … on a previously undiscussed passage in the reference”

    “After pointing out … the reference as a whole … they go final … on a previously undiscussed passage”

    “reference as a whole … previously undiscussed passage”

    How do you manage to wake up in the morning much less discuss patent issues?

    FYI, discussing the reference as a whole includes discussing all passages in the reference. Also, that’s the whole point of finals. Telling you we’re through discussing the issue with your dmbas, the claims are rejected. Your explanations you get are gravy, not the meat. And those explanations don’t always help matters. Just yesterday I had an interview with a guy arguing that a blatantly anticipated limitation was not anticipated because my explanation (an explanation intended to help break the matter down to kindergarten level for him) made him more confused than he already likely was. That’s funny, it takes me all of about 10 seconds to explain the situation to my SPE. He ll, I can just quote portions of the reference and have the situation explained, there is no special interpretation required.

    In any case, I see my other posting didn’t make it through spam filter or some such, maybe it is still needing to have the code put in.

    One last pet peeve from this week that I’m seeing a LOT. People arguing this: The situation has a limitation that requires, for instance, drying a ball, or “drying the ball”. I say in my action that the reference discloses the ball being at least partially dried. The attorney comes back and states that since I say the ball is only at least partially dried then the term “drying the ball” is not anticipated. Then we have an interview because obviously I send him a final saying the ball is dried if it is partially dried. I ask him, “Do you mean for the limitation to mean the ball is all the way dried?” “No, no, I don’t mean that, and my spec wouldn’t support that” “Yes, I’m aware, so why are you taking issue with my anticipation of this limitation?” “Because I didn’t say: at least partially dried, I said drying the ball.” “So how do you reckon this ball that is at least partially dried that I have alleged got that way?” “I guess it was dried.” “Ok, so the reference’s method involved the ball being dried?” “Oh no no no!”

    W T F, I N C R E D I B L E! I can barely keep a straight face when talking to these guys. I’m not 100% sure but I might have lost it a few times in that last interview, and he probably heard my muffled laughter.

  23. 91

    Well great. Thanks Mr Bloom, and thanks in advance any expert readers that are tuned in. Because for me it isn’t as “hypothetical” as one might suppose. From time to time, I see USPTO-issued claims (presumed valid, clear and convincing needed, all that stuff) that (facially) read on to my client’s product but which I naively think is broad enough to include stuff that’s old or obvious. Then along comes US counsel and reports “I’ve looked at the file wrapper. The claim is narrower than you might suppose” Yes, I cry, but how much narrower? “Difficult question” comes the answer.

  24. 90

    Max, that’s a great hypothetical, but I was talking about claim scope, not validity. Notwithstanding the invalidity opinions that Malcolm frequently offers us, I would generally advise a client against relying on an invalidity analysis performed without the aid of the file wrapper.

    I’d have to do a little research to determine whether FWE could be used as you suggest. To the extent that the courts have treated the doctrine as true “estoppel,” then it should only be allowed as a defense, not as a weapon. But I’m not sure that the case law on FWE is fully consistent with equitable estoppel principles. Perhaps a more learned commentator could help us with this?

  25. 89

    Mr Bloom, an afterthought on File Wrapper Estoppal and whether it really does “protect the public”. Suppose I study an issued claim and can immediately see that it has no merit because it reads on to an existing product of mine. So I don’t worry about it any more. Then, much later, along comes the patent owner…and sues me..saying “that widget in my claim. Look at the file wrapper. There you’ll see that it is a *special* widget, described in great detail in my specification, discussed in the prosecution history and not at all the same thing as in your old product. But it’s a straight *equivalent* to the one in your new product so, there you go, valid and infringed.” That could never happen, right?

  26. 88

    “Instead, the examiner probably pointed to a feature in the prior art and it was up to the attorney to divine that is how the examiner was interpreting the claim.”

    I’ve seen too many of those read-it-and-figure-it-out-for-yourself rejections. After pointing out that the neither cited portions, nor the reference as a whole, includes the claimed features, they go final making an absurd spin on a previously undiscussed passage in the reference.

  27. 87

    Judges not using the tools they have? I agree. But we need to know WHY that is? Is it that they can’t be bothered? Too tired? Or are they ignorant, or timid, or corrupt? Or is it something else?

  28. 86

    “When you litigate your EP case it will likely be before a non-English speaking court on mainland Europe.”

    Max, I think your point is well taken. I learned a long time ago, in a non-patent context, that English here at home is a different language than English used to communicate with my European colleagues.

  29. 85

    Mr. Drei,

    Yes, skilled judges would be nice to have. But I don’t think FWE is a particularly abused issue in US patent litigation. And discovery abuse is not particular to patent litigation. I’m generally of the opinion that many of the current abuses in patent litigation can be curtailed under existing procedural rules and law. In other words, I don’t think judges are effectively using the tools they already have.

  30. 84

    A question from multi-lingual Europe if I may, pds. When you litigate your EP case it will likely be before a non-English speaking court on mainland Europe. So, in that case, is it an advantage, or a disadvantage, that the substantive issue “what does the claim mean” has already been rehearsed, prior to issue, in the EPO, before an Examining Division of three multi-lingual Examiners, all using English as a foreign language? Another question: who do you want as your attorney representative, in your tent, on your side, watching out for your interests after issue, when prosecuting your EPO stuff? Would that be an English native speaker, or somebody from mainland Europe?

  31. 83

    “(to the extent that its non-English Examiners can get to that point).”

    The problem with the EPO is exactly that — words have different meanings and no translation is ever perfect because a word in one language might not have an exact analogue in another language.

    Look up any word in the dictionary, and odds are great that you’ll have many DIFFERENT meanings. Claim construction is one of the trickiest issues that anybody — examiner, attorney, judge, public, etc. — has to deal with.

    Getting back to the EPO, anytime you have someone examine something written in his or her second language you are running the great risk that they will not be able to fully appreciate the language of the claims. I’ve seen some situtations where two words have very similar meanings but differ in some nuanced way and that difference is what separates the prior art from the claimed invention. However, if the examiner does not understand this nuance, because of language issues, then you have a serious problem.

    The same problem also exists at the USPTO where an astonishly large number of examiners have incredibly poor grammar, poor spelling, and poor communication skills.

    The process of patent prosecution is all about communication — the examiner communicating, not just the rejection, but the rationale(s) for the rejection, and the applicant communicating why they believe the claims are distinguishable over the prior art.

    When the examiner is unable to communicate the rationale and/or the examiner is unable to understand the distinctions being made by the attorney, then we have problems we see today.

  32. 82

    I bow to your good arguments Mr Bloom. Maybe FWE is good in theory. Just like discovery is good in theory. The practice is tricky though. The lawyers I had in mind as benefitting are those that identify and pursue, to the limit of what’s runnable, each “issue” in litigation. If every “issue” is thereafter explored exhaustively, where’s the “proportionality”? If it’s common law you want, then you need judges at first instance who are not just impervious to intimidation, experienced, brave and with sharp eyes over which the wool won’t pull but also experts in patent law, so they can stand up to the nonsense of truckloads of discovery etc etc. Is that achievable, I wonder?

  33. 81

    Although I ha-te supporting MM — he is being reasonable, and I’ll support any reasonable person.

    From MPEP 2111 — FIRST sentence:

    During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005).

    Note the language “consistent with the specification.” Like all bad examiners, 6K ignores language (in the claims or the law) that cut against his argument. Their credo — “why respond to language when you can ignore it?”

    Here is another tidbit: The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).

    Despite 6K’s rantings, the bad claim interpretations I see out of the USPTO would never be interpreted by a PHOSITA in the manner suggested by the examiner. Examiner’s are experts at reading meanings out of terms and/or interpreting phrases in the ways that would never be interpreted by a PHOSITA (btw, the BPAI isn’t immune to that as I’ve seen).

    One last point, turning to the hypothetical at hand (i.e., the non-zero angle), odds are great that the examiner never even provided an explicit claim construction. Instead, the examiner probably pointed to a feature in the prior art and it was up to the attorney to divine that is how the examiner was interpreting the claim.

    The worse part about dealing with stu pid examiner claim constructions is that you don’t even realize how they were interpreting the claims until after final or during an examiner’s answer.

    Speaking of examiner incompetence — recently I had a case where the examiner, in a 102 rejection, cited to column 1, line 6 through column 23, line 54 (basically, the entire document with the exception of the field of the invention and the claims). Laziness is the norm at the USPTO.

  34. 80

    “If the Examiner’s reading is unreasonable in light of the spec and the other claims, then the fact that the Applicant is expressly disclaiming the additional scope in his response should be enough to move the hell on.”

    Further evidence that you have never prosecuted even a single application outside your cozy micro-niche-sized realm of protein fragments.

    Let me guess, you’ve dealt with 4, maybe 5 tops, examiners in your whole career.

    Cozy indeed.

  35. 79

    “In Europe, there’s no File Wrapper Estoppal, and the claims mean what they mean to a PHOSITA, immediately after s/he has read the spec. with the consequence that the EPO (to the extent that its non-English Examiners can get to that point) requires of Applicants that their claims be facially (that seems to be the word of choice, on this blog) clear.”

    Max, I’m not sure which lawyers you believe are the beneficiaries of the “overly generous” file wrapper estoppel doctrine.

    Just as in Europe, 35 USC 112 also requires that the claims be facially clear, when read by a PHOSITA in view of the specification. File wrapper estoppel is not an extra procedural mechanism available to patent prosecutors to add hidden limitations and hoodwink the public. To the contrary, the doctrine of file wrapper estoppel is to protect the public from applicants who wish to change their arguments when it suits them.

    Because file wrapper estoppel is a one-way street, serving only to possibly narrow a claim interpretation, it’s not fair to say that “no patent means anything till you have read through the multitudinous chain of wrappers…” A PHOSITA should be able to read a patent and understand the maximum possible scope of a particular claim, without reference to the file wrapper. With file wrapper estoppel, an applicant MIGHT have given up some of that maximum possible scope, which case could only be to the benefit of the non-patentee reader. Sure, it can be complicated. But I kind of like the notion that the public is still protected even if an applicant fools an Examiner into believing that a particular claim is narrower than it really is.

  36. 78

    I suspect that the USPTO has been infected by the European attitude, that it’s not fair to the public, and overly generous to lawyers, to stipulate that no patent means anything till you have read through the multitudinous chain of wrappers of USPTO prosecution files first. Is there some coaching/mentoring going on in DC, within the “trilateral rubric? In Europe, there’s no File Wrapper Estoppal, and the claims mean what they mean to a PHOSITA, immediately after s/he has read the spec. with the consequence that the EPO (to the extent that its non-English Examiners can get to that point) requires of Applicants that their claims be facially (that seems to be the word of choice, on this blog) clear.

  37. 77

    bravo – some of the best postings by MM and 6 in their face-off.

    Since an inventor can be their own lexicongrapher, I’m not sure exactly why claims should exist in a vacuum pre-issue or at any time. This attribute creates additional flexibility and is at least 1 “reason for a person reading an issued patent to have to cipher through a detailed claim construction ivo the spec to tell wtf is claimed.”

    The specification cannot import terms into the claims, but the terms are already in the claims and the meaning of those terms do not exist in a vacuum. Malcolm is correct that “The emphasis must be placed on *reasonable*, and *reasonable* isn’t *reasonable* in a vacuum, it’s *reasonable* in light of the specification.”

    …and I would add “and in light of the art field”.

  38. 76

    Well that was fun. Many thanks to Bierbelly for setting the “broadest *reasonable* interpretation of *angle*” hare running. Looking in from outside, SF and MM are the voices of reason. I particularly liked MM’s “table with a *number* of legs” suggestion. The PHOSITA for a patent about tables ain’t a mathematician. Lord Hoffmann from the English Supreme Court recently quoted some deconstructionalist intellectual (Derrida?)burbling something about “without *context*, every word is meaningless”. Another fun patent word is “fluid”. What that “means” also depends on context, as Barking Brassware well knows. Thanks all, for giving me another window into the strange world of prosecution at the USPTO. As MM observes, you are well out of the former PTO regime, in which Applicant would get through to issue with, say, “a cutter” by arguing successfully that the prior art cutter is not a cutter as contemplated by the claim. But PTO please, long time consistency, rather than a big amplitude pendulum.

  39. 75

    “Just to clarify, there is no basis for a zero degree angle in the spec.”

    Then I wouldn’t make the 102 rejection (but might make a 103) unless your spec makes it clear that it could be ANY angle (as opposed to specifically 0). Also except as provided above. If your claim does not specify what the angle is in relation to then it is in relation to any plane I choose to define. I’ve had cases where that was the issue before.

    MM, I’m tired of sifting through your nonsense, your reading things into the hypo that were up until his last posting not part of the hypo is ridiculous at best. The rest of your house of cards falls with it. Now you may make your arguments and be justified and my response is the same as above.

    “No, there is no contradiction between a lack of EXPLICIT written description support that might preclude the use of a particular phrase in a claim, and the existence of repeated statements and expressions from which the correct meaning of a term for which there is written description support can be reasonably deduced. U just got pwned K?”

    I’m going to quote:

    “The hypothetical assumes otherwise and also assumes there is no written description support for the term “non-zero angle.”

    That does not read: there is no EXPLICIT written desc support for the term “non0 angle”.

    K?

    Bottom line is, the hypo DOES assume there IS written desc for the term “non-zero angle” and that is precisely what you are trying to argue by saying “an angle” means “a non-0 angle”.

    The day you pwn me on anything relating to this type of matter is the day pigs fly.

    ” because in my experience no claim interpretation is too broad for them…I mean, a locomotive *could* be a necktie, for some period of time on certain kinds of necks.”

    From what I’ve heard that is true as well.

    “Claims don’t exist in a vacuum.”

    No, but they probably should pre-issue. There is 0 reason for a person reading an issued patent to have to cipher through a detailed claim construction ivo the spec to tell wtf is claimed when all that need be required is for the applicant to clearly claim his invention in the first place. If claims get a little longer who cares? If there is no clear explicit support in the spec for a more clear term that needs to be read/inserted into the claim and after discussing it the examiner agrees that the term is supported by something implicit, then the applicant should be able to use the more clear term. But they should not be able to simply assert that a term is more clear without changing it in the claims. The “building a record” doctrine is ridiculous, which is better? A clear claim that stands on its own (where the applicant was allowed to use the more narrow language in the claim, although the support for the more narrow language is only implicit in the spec), or a claim that is still overbroadly worded with some mess in the record that might set it straight? Personally I say a clear claim that stands on its own is preferable for public notice, POSHITAs (or less) reading claims have a hard enough time without bs claim construction getting in the way. And that’s one of the last rather large issues for the CAFC to fix up in the coming years.

  40. 74

    If you successfully convince the examiner that their interpretation is unreasonable, you had better hope that quality review doesn’t get their hands on that case, because in my experience no claim interpretation is too broad for them…I mean, a locomotive *could* be a necktie, for some period of time on certain kinds of necks.

  41. 73

    I know you can do it, SF! ;)

    The emphasis must be placed on *reasonable*, and *reasonable* isn’t *reasonable* in a vacuum, it’s *reasonable* in light of the specification. Again, this isn’t the same as saying that broad claim terms should be read to encompass only the enabled embodiments described in the spec. It just means that a term shouldn’t be read as broad as HUMANLY possible merely because the Examiner is a human. Claims don’t exist in a vacuum.

    If the Examiner’s reading is unreasonable in light of the spec and the other claims, then the fact that the Applicant is expressly disclaiming the additional scope in his response should be enough to move the hell on. There is, after all, a point to the reading of claims as broadly as reason allows and that is to prevent applicants from behaving during prosecution as if their claims are narrow (without ever putting a definitive statement on the record) and later asserting the claims as if they encompass much more.

    Frankly, I’d rather see Examiners err on the side of being dorks as long as they admit the error. Far worse is the situation that used to predominate where Examiners would read a term broadly, make an obviousness rejection, then after Applicants amended the claim in some other way to avoid the rejection, Applicants would pretend that the term was narrower or broader as necessary to avoid the art. At the end of prosecution, it’s impossible to determine the meaning of the term (unless you’re a CAFC judge in which case hardly anything is indefinite).

  42. 72

    “Too bad because I do it routinely. You just need to patiently explain, with a lot of sugar, as if you are explaining to a 6 year old, why the Examiner’s interpretation is *unreasonable* in light of the specification and claims,”

    lol … it takes patience indeed. I have a case pending where I think we have a better than average chance of getting the examiner to abandon his unreasonably broad interpretation of a claim term. I used as much sugar as possible and am awaiting the results.

  43. 71

    “Patent attorney clerks doing the work? God … that explains some of the crap I’ve seen.”

    Yes, because patent attorneys are known to routinely churn crap – – ha ha “crap churners” – – that’s hawwwt!

  44. 70

    “If that were true about the spec then your argument might have a leg to stand on, but since the rejection was made, I doubt the situation in the spec is as you dream it.”

    Dude, the HYPOTHETICAL assumes that the rejection is bullshxt. The question is how to deal with it.

    “As to your plate example, if your spec shows an ordinary plate anywhere in the spec then I will win thx.”

    No, that’s a dork argument. You will win only if the ordinary plate is presented as an example of an embodiment of the invention. Otherwise you will be laughed at by all.

    My god, to think that pds and Darling really waste time arguing with you every DAY?! The mind reels.

    “And if your only embodiments as to a plate had one or more legs then I probably wouldn’t make the rejection.”

    Probably wouldn’t? LOL. Take a deep breath, freek. If you are such a dork to make the rejection based on a picture of a plate without legs in my spec that is obviously not the invention (because I’m putting it on the record that it’s not and every darn sentence in the spec makes clear that it’s not) then why stop there? Simply find a picture of a plate in the art and say “there is a plate with zero legs, therefore ‘a number’ can be zero”. If you want to take that argument up to the CAFC then let’s go, looser. I’ll be glad to put your name in lights as Dork Examiner of All Time.

    “U just contradicted yourself k?”

    No, there is no contradiction between a lack of EXPLICIT written description support that might preclude the use of a particular phrase in a claim, and the existence of repeated statements and expressions from which the correct meaning of a term for which there is written description support can be reasonably deduced. U just got pwned K?

  45. 69

    Just to clarify, there is no basis for a zero degree angle in the spec.

    But my point was, how can this possibly be anticipation? What a joke. This is the kind of stuff that’s coming out of the examining groups and being affirmed by the BPAI!

  46. 68

    ” have yet to see an examiner rely on an implied limitation from the spec to narrow their interpretation from what they perceive to be the broadest reasonable interpretation. ”

    Too bad because I do it routinely. You just need to patiently explain, with a lot of sugar, as if you are explaining to a 6 year old, why the Examiner’s interpretation is *unreasonable* in light of the specification and claims, taken as a whole (like that phrase, Darling?). Ask the Examiner to explain their *reasoning* for interpreting the claim so broadly when the specification and claim itself make it clear that the term is not to be interpreted so broadly. *If* you have the facts on your side, it’s not so hard to do. If you don’t, then you’re screwed and you are probably just seeking claim breadth that you aren’t entitled to.

    That’s not at all what’s happening in this “an angle” scenario. This isn’t like arguing about whether “a system” should be read as limited to “a computer system” or whether “a sphere” should be limited to “hollow spheres”. That’s puffery. This is semantics.

  47. 66

    “The hypothetical assumes otherwise and also assumes there is no written description support for the term “non-zero angle.”

    Hmm, those are some assumptions I was not given, please share with me where you gleaned them from in the discussion above. I merely assume that his app is like the but load that have this exact problem, and those are the reasons they are commonly shot down. As to support for the non-0 angle, if the claim that claims 3 degrees was original then it does have support, just as I said, if it is not, then ok, maybe he doesn’t have support, too bad, so sad.

    “I’m clarifying the issue on the record so there is no longer any misunderstanding, and demonstrating that the term “an angle” is used in every instance throughout the spec to refer a non-zero angle.”

    If that were true about the spec then your argument might have a leg to stand on, but since the rejection was made, I doubt the situation in the spec is as you dream it.

    As to your plate example, if your spec shows an ordinary plate anywhere in the spec then I will win thx. There is no reason to believe the hypo above fits your expectations that you created from thin air. And if your only embodiments as to a plate had one or more legs then I probably wouldn’t make the rejection.

    Learn to read the hypo, and not read things into it that aren’t there.

    In any event, even if his spec is not enabled, and does not contain written desc for 0 as an angle, and you are successful as to getting your “an angle” must mean “non-0” limitation read into the claim, then he’ll still be rejected under the rational I just put forward as to the 3 degrees most likely.

    Also, how do you square your two arguments with one another? You simultaneously argue that the spec is not enabled/has no written desc for a claim to a non-0 angle, and then argue that the term “an angle” means precisely “a non-0 angle” an interpretation that would mean that a claim to “a non-0 angle” would be enabled. Not only that it is enabled, but that it is already on the record as claim 1.

    Read these two sentences in order:

    “The hypothetical assumes otherwise and also assumes there is no written description support for the term “non-zero angle.”

    “I’m clarifying the issue on the record so there is no longer any misunderstanding, and demonstrating that the term “an angle” is used in every instance throughout the spec to refer a non-zero angle.”

    U just contradicted yourself k?

    MM we deal with this stuff on a day to day, trust us. Some attorneys even grow a backbone like you’re trying to display here. It is readily broken.

  48. 65

    “1. Because his spec is likely enabled for 0 degrees”

    LOL. The hypothetical assumes otherwise and also assumes there is no written description support for the term “non-zero angle.” Please don’t disturb the hypothetical.

    Also, there is no “importation of limitations” into the claim. There is a misunderstanding about the definition of “an angle.” I’m clarifying the issue on the record so there is no longer any misunderstanding, and demonstrating that the term “an angle” is used in every instance throughout the spec to refer a non-zero angle.

    And trust me: if this was the only issue in the Office Action, I’d be on the phone working it out with the Examiner. If the Examiner said he/she was going to give me final OA, I’d figure out another solution. Duh.

    You are free to operate in the manner of your choosing, 6, but the fact is not every Examiner is an uptight freak on stuff like this. There is no trickery, no fooling the public, no taking what is not mine, just putting clear disclaimers on the public record that in no way contradict a very reasonable interpretations of the claim. I’m not defining “an angle” as “an angle greater then 5 degrees”. I’m defining it as a “non-zero angle”.

    Imagine I claim “a paper plate with a number of supporting plastic legs.” The Examiner says that a typical paper plate reads on the claim because “zero is a number.” My response? Zero might be “a number” to a mathematician but in my claim and based on every fricking sentence in my spec, one of ordinary skill would understand that “a number” is a non-zero number. You want to take this all the way to the CAFC? Then you will lose and history will show that [insert your name here] is the Dork Examiner of All Time.

  49. 64

    “”I do not suggest doing this.”

    Tell me why.”

    because the examiner will say that he/she is entitled to take the broadest reasonable interpretation of the claim term “angle,” that 0 is an angle under a reasonable (mathematical) interpretation — your express disavowal and arguments notwithstanding) — and thus the claim remains rejected

    I think that, while it may be easily implied from the spec what the term means, I have yet to see an examiner rely on an implied limitation from the spec to narrow their interpretation from what they perceive to be the broadest reasonable interpretation.

    perhaps “angled” or “offset” would be a better term, since I think you could more easily argue that reading 0 on “angled” or “offset” would be much less reasonable

  50. 63

    “Tell me why.”

    1. Because his spec is likely enabled for 0 degrees (and may even describe 0 degrees explicitly) and thus it is reasonable for the examiner to say that one of ordinary skill would not necessarily understand what you assert from the claim because it could be interpreted both ways (and we presume it is an originally filed claim, so the claim itself can be considered the written desc) and there will be no importation of limitations from the spec into claims in that examiner’s office. And 2. Because you will recieve a final (or advisory in this case) and then you will either a. appeal (which you and I both do not suggest) or b. file an RCE. And 3. Because making the amendment is so easy and you stand a snowball’s chance in heck of getting an allowance if you make it, though a 103 (or another 102 based on the reasoning I’ve already put forth in the previous post) is likely inc.

  51. 61

    “Just make a reasonable argument based on the overall disclosure in the spec and a concise statement on the record that ‘an angle’ refers to a non-zero angle.”

    That’s your advice??

    Too funny.

  52. 59

    “Just make a reasonable argument based on the overall disclosure in the spec and a concise statement on the record that “an an angle” refers to a non-zero angle.”

    I do not suggest doing this.

  53. 58

    Also, by “antecedent basis” I’m supposing you mean “written description” because you can easily create antecedent basis for anything you have written desc for.

    If you have a claim to 3 degrees already then you may claim a non-0 angle as long as the 3 degrees was an originally filed claim.

  54. 57

    “”So amend the claim to recite a “non-zero angle”.

    No antecedent basis.”

    Seriously, under the circumstances, it should be sufficient for the patentee to effect some prosecution history disclaimer here. Just make a reasonable argument based on the overall disclosure in the spec and a concise statement on the record that “an an angle” refers to a non-zero angle.

    Or you can waste time and money by filing an appeal. I suppose that’s what pds and friends would recommend.

  55. 56

    “Ex 6, defend that nonsense.”

    I’ve seen similar. The first claim is anticipated as 0 is technically an angle, and the amendment to get around it is not unreasonable for the examiner to “demand” by making that rejection. As to the second claim, I can’t see your whole situation, however, the angle at which you are performing the operation could be considered from an arbitrary reference angle. Which means, instead of saying that the angle is in reference to a fixed line which you have defined in the claim, you merely claimed an angle of 3 etc. from any reference line. The examiner simply designated the reference line as being 3 degrees from the line in the reference.

    In essence, he is saying that 0 degrees anticipates 3 degrees because what it is being measured from is arbitarily defined.

    That said, I don’t know all the facts, but that could be what is going on.

    If you want to post a no…

  56. 54

    “So amend the claim to recite a “non-zero angle”.

    No antecedent basis.”

    Is the specification written on soft, two-ply, pleated paper?

  57. 53

    Max,

    Point being “why in the world should I have to appeal the novelty rejection?” Obviousness I can understand, but novelty? This is how our patent office has been told to operate. Geez, I wonder if the Examiner would be affirmed on novelty?

    Black = White
    Day = Night

  58. 52

    Well, that’s novelty done. But what about 103 and a claim that recites “not zero”. That’s an “n-1” claim, quite hard to represent as separated from the prior art “1” by something that rises to the level of an inventive step. Which brings us back to function, I would think.

  59. 50

    Max,

    Uh, if I remember my geometry correctly (it HAS been a looooong time, now), zero degrees is “perfectly straight”. There is a function involved, but in the interest of anonymity, I won’t go into it.

  60. 49

    “As I write this, I am contemplating a final rejection under 102, wherein the examiner has indicated that “at an angle” includes an angle of zero degrees”

    So amend the claim to recite a “non-zero angle”.

    Easy.

  61. 48

    Good on you Bierbelly. I must join you, in begging to deplore the designation “outhouse counsel”.

  62. 47

    Bierbelly, I rise to the challenge of defending (although I do appreciate your frustration). So, somewhat tongue in cheek, here goes: When the claim requires an “angle” the only thing it excludes is “perfectly straight”. But nothing is absolutely straight, so every embodiment exhibits “an angle”. It would help to know what “function” your claimed angle performs. “Bent enough to achieve….what?” Then we would know how near zero we have to go, before that function is lost. Even a diamond is “resilient” to some extent.

  63. 46

    Rumpole,

    Having been both, I reject the appellation “out-house counsel”. Please use “outside counsel”.

    As outside counsel, I can’t write an Appeal Brief without inside counsel’s approval. Likewise, I’m in no position to determine what the importance of any particular application is to their business model.

    I’ve run into applications where I’ve said “what’s the point of this?” and then found out that the client considers it imperative to Appeal. Go figure.

  64. 45

    What is to be concluded from this data?
    While the number of Appeal Brief filings per year has almost doubled since 2005, the % reversal of Examiners by the Board has dropped by 50% over the same time frame.
    Are practitioners overestimating the strength of their arguments for patentability in their Appeals,thus costing clients valuable time and money(while incidentally increasing their billables)?
    As in-house counsel, I advise the business to file an Appeal Brief only where I believe that the rejection is clearly in error. I have nothing to gain by filing an Appeal Brief for every finally-rejected application, particularly where the basis is weak at best.
    It would be interesting to see the % of Appeal Briefs filed by in-house vs. out-house counsel since 2005,since there is a monetary incentive for out-house to file Appeal Briefs.

  65. 44

    As I write this, I am contemplating a final rejection under 102, wherein the examiner has indicated that “at an angle” includes an angle of zero degrees, and that “at an angle between about 3 and 10 degrees” is also anticipated by zero degrees.

    Ex 6, defend that nonsense.

  66. 43

    GP writes “I agree that the majority of applications filed are junk.”

    What do you mean by “junk”, GP? Do you mean that they are not patentable? If so, why? Do you mean that they are not commercially valuable? If so, so what?

  67. 42

    JD says “I do think the Board could benefit from some “outside” experience, if only to improve its management of its caseload and procedures. Attorneys from private practice and in-house positions who did significant prep and pros can really add some valuable insight into those areas.”

    I agree.

  68. 41

    “I do not think any attorney on here would want to have to make that argument in reference to why they did not disclose a particular reference.”

    If I were to find a reference that was nearly, or entirely what was under examination I thought you guys wanted the examiner to look it over? Right? RIGHT? You want the best art in front of the examiner because it speeds up prosecution. Right? RIGHT?

    Right, lol, sure you do.

    And in any case, your patent app may very well be valid even if it is blatantly anticipated. You can now import limitations from the spec, see Wheeler. It is for reasons such as that that I may not ever opine on validity. That is a question for the courts. So I would never allege that an app was invalid, thus you wouldn’t have to worry about it.

  69. 40

    “You’re not taking into account the patent attorney law clerks that the BPAI is now hiring to help with the Board’s backlog – – every APJ has two full-time patent attorney clerks writing opinions so that they’re supposedly getting triple the work done.”

    Patent attorney clerks doing the work? God … that explains some of the crap I’ve seen. Regardless, the APJ is responsible for the work (or at least I hope so) – and my original comments were directed to APJs, not nameless clerks.

    “In any event, what’s your point??? That an “outsider” APJ will be more “patent friendly” because of some perceived pro-patent agenda picked up in private practice???? Did you ever consider that the reason more cases are going to the BPAI and the reason more of those are getting affirmed is because of KSR????”

    What’s my point? Anybody who has practiced on the outside and has had a new former USPTO examiner as a patent agent/attorney knows that you need to deprogram him/her. As 6K is ample evidence, working at the USPTO generates a lot of bad habits including (i) taking shortcuts; (ii) being sloppy with the law; (iii) being sloppy with the facts; and (iv) being unclear with the stated analysis. We’ve had several discussions on this board as to the very point of “retraining” former examiners. Where were you?

    Personally, I don’t mind if the APJ has examiner experience, but I would prefer that the APJ have outside-world experience as well. For most clients, going to the Federal Circuit just isn’t an option (for cost reasons). As such, the BPAI is usually the end of the line, and I would appreciate having my arguments looked at with somebody who isn’t necessarily going to toe the party line (i.e., reject, reject, reject) and who got the “promotion” because they were perceived as somebody who would toe that line.

    As far as KSR … none of the bad work I’ve seen involves KSR. Although I remember one instance where the APJ cited all this KSR language and simply conclude … thus, the claim is obvious – classic examiner no-analysis, no finding-of-fact BS that I see time and time again from the Corp of examiner.

  70. 39

    eerily similar to patent issuance rate/pendency backlog/number of apps filed correlation.

    what has the % of all final rejections appealed number done over this time?

  71. 38

    “…every APJ has two full-time patent attorney clerks writing opinions so that they’re supposedly getting triple the work done.”

    The chart that pds linked to clearly shows that is not the case. The number of patent attorneys (PA) working for the APJ’s is nowhere near the 2 to 1 you claim. In fact, I only count 16 PA’s to about 60+ APJ’s.

    Two of my former colleagues from the first firm I worked at are now APJ’s. One had PTO experience, one did not. The one with PTO experience had law firm and in-house experience. The one who did not have PTO experience was originally hired as a PA by the Board, and was eventually made an APJ.

    Two of my former colleagues from my PTO days are also APJ’s. They did not spend any time in private practice.

    About once a month I pull up their final decisions and read them. In all honesty, I cannot say that I can detect a noticeable difference in the quality of their decisions. Nor can I detect any “bias” one way or the other.

    Having said that, I do think the Board could benefit from some “outside” experience, if only to improve its management of its caseload and procedures. Attorneys from private practice and in-house positions who did significant prep and pros can really add some valuable insight into those areas.

  72. 37

    Um, is there a fast way to search Public Pair for applications currently on appeal? If so, I am certainly willing to donate time to find applications on appeal with laughable rejections which do not belong to any of my clients.

  73. 35

    Dennis wrote: “The math looks okay but I must disagree strongly with the take-home. Your “overall chances” of obtaining a patent remain nearly 100% correlated with the novelty and non-triviality of what you’ve claimed in light of the support you provided in your specification.”

    Ok Dennis – 1st, triviality is not the law, and let’s hope it never is. Obviousness, novelty, and the other basics are plenty – we don’t need to add momentousness to the puddle of mud.

    I agree that the majority of applications filed are junk.

    I agree that the standards for obtaining a patent have been too low for too long.

    I disagree with the absurd thought that there is a 100% correlation between what is allowed and what is filed – I’d expect more from a professor than such Sithian absolutes.

    But think about that classic line.

    Obi Wan Kenobi says to Darth – “Only the Sith speak in absolutes.”

    Um. Isn’t Obi Wan’s statement an absolute? Is Obi really a Sith.

    By the way – I despise Star Wars – I’m just throwing that out there as a comparison.

  74. 34

    Dennis wrote: “The math looks okay but I must disagree strongly with the take-home. Your “overall chances” of obtaining a patent remain nearly 100% correlated with the novelty and non-triviality of what you’ve claimed in light of the support you provided in your specification.”

    Ok Dennis – 1st, triviality is not the law, and let’s hope it never is. Obviousness, novelty, and the other basics are plenty – we don’t need to add momentousness to the puddle of mud.

    I agree that the majority of applications filed are junk.

    I agree that the standards for obtaining a patent have been too low for too long.

    I disagree with the absurd thought that there is a 100% correlation between what is allowed and what is filed – I’d expect more from a professor than such Sithian absolutes.

    But think about that classic line.

    Obi Wan Kenobi says to Darth – “Only the Sith speak in absolutes.”

    Um. Isn’t Obi Wan’s statement an absolute? Is Obi really a Sith.

    By the way – I despise Star Wars – I’m just throwing that out there as a comparison.

  75. 33

    I have to think that no attorney in their right mind would post an identification of an application they are prosecuting / have prosecuted in a comment on this blog. To do so would almost invariably subject the application / patent to scrutiny. Setting aside (numerous) other issues, having an actual Examiner start posting alleged prior art on this board would be a disclosure nightmare. Although many on this board opine daily that the Examiner most likely to do so is not reasonable, I do not think any attorney on here would want to have to make that argument in reference to why they did not disclose a particular reference.

  76. 32

    “During the past several years, I filed several appeal briefs. On each occasion, the Examiner reopened prosecution and allowed the case.”

    Were you making new arguments in your appeal brief for the first time? I have done just what you said myself (reopen after appeal and allow), but only once, when the attorney made arguments in the brief that I found to be persuasive and which he had not previously made in his earlier responses.

    “On the other hand, the PTO could help this problem by encouraging Examiners not to issue final rejections as long as the applicant is making a good-faith effort to respond to the pending rejections.”

    Don’t you think this would lead to endless back-and-forth prosecution without any real progress being made?

  77. 31

    I wonder whether the TC is more selective about which cases go to appeal. During the past several years, I filed several appeal briefs. On each occasion, the Examiner reopened prosecution and allowed the case.

    On the other hand, the PTO could help this problem by encouraging Examiners not to issue final rejections as long as the applicant is making a good-faith effort to respond to the pending rejections.

  78. 30

    “Really … not too good with research I see?”

    You’re not taking into account the patent attorney law clerks that the BPAI is now hiring to help with the Board’s backlog – – every APJ has two full-time patent attorney clerks writing opinions so that they’re supposedly getting triple the work done.

    In any event, what’s your point??? That an “outsider” APJ will be more “patent friendly” because of some perceived pro-patent agenda picked up in private practice???? Did you ever consider that the reason more cases are going to the BPAI and the reason more of those are getting affirmed is because of KSR????

  79. 29

    “As you may appreciate, Malcolm, we do not want our clients’ applications picked apart and criticized on this board.”

    HAHAHAHAHAHHAHAHAHAHAHAHAHAHAHHAHAHAHAHHAHAHAHAHAHA

    Because they are the sux? If only I had reason to believe outting myself would be as ramificationless as it is for JD. You guys have nothing to worry about unless your apps are “do do lol”. And tbh, even if they are, JD shows us that there are no ramifications to having even some real ridiculousness held up for review.

  80. 27

    Malcolm, why don’t you volunteer a few of the applications which you or your partners/colleagues have prosecuted for analysis on this website?

  81. 26

    “Actually, the vast majority of APJs and patent attorney law clerks hired over the past 2-3 years have come directly from OUTSIDE the PTO with no previous experience as an Examiner.”

    Really … not too good with research I see?

    Fortunately, somebody posted a list of all the APJs appointed from 3/29/00 to 5/10/08 a little while ago — 47 in total. Interestingly, 16 were appointed in 2000-2001, 2 were appointed between 2002-2005, and 29 were appointed between 2006-2008.

    Looking at the 2006-2008 appointees, of the 29, only 9 didn’t have former USPTO experience (based upon me not finding their full name as either an examiner or primary examiner on an issued patent).

    Of the 9, 1 is the head of Mechanical/Business method section, 1 is part of the trial division.

    I also found this interesting org chart for the BPAI.

    link to uspto.gov

    Anybody know what “Chamber” stands for?

  82. 25

    Question: Has anyone considered/have experience with pre-brief appeal conferences of applications being handled by a Jr. examiner vs those being handled by a Primary?

    The reason for my question is:

    For Jr. examiners the SPE is already familiar with the case, art, rejections and arguments since the Jr. has been writing the actions and the SPE’s been signing them (at least in my Tech Center, where they like to have SPEs reviewing Jr.’s cases). It should be no problem to convince the appeals specialist that the examiner is correct.

    With a Primary the actions haven’t been reviewed by the SPE during prosecution, so it would seem to me that they would be more of a true second/third set of eyes (again, at least in my Tech Center and/or with my SPE, who isn’t afraid to allow something).

    Thoughts?

  83. 24

    Malcolm,

    As Frustrated wrote

    “If their rejections are valid, they should write [an examiner’s answer], not withdraw and re-reject. If their rejections are invalid, they should not make the inventors and attorneys waste time and money writing and filing an appeal brief.”

    The Examiner should realize that his rejection is incorrect before the Applicant is forced to file an appeal brief.

  84. 23

    Dennis: “The filters only tell part of the story, and the reversal rate masks the fact that – in absolute numbers – the Board is reversing more cases than ever.”

    Isn’t it also true that — in absolute numbers –the Board is affirming more cases than ever?

  85. 22

    “As you may appreciate, Malcolm, we do not want our clients’ applications picked apart and criticized on this board.”

    I see. I assumed that any imperfections in the applications would be rendered imperceptible by the laughability of the Examiner’s buffoonish rejections.

    Maybe Dennis could randomly pick an application that has been rejected, gone to pre-appeal, come back down, then been rejected again. Then we could all laugh our axxes off without worrying that we were “exposing” our clients’ public information to an unwanted spotlight.

    Doesn’t anyone remember laughter?

  86. 21

    “One of the BPAI’s many problems is that they hired former examiners as APJs who haven’t been outside the USPTO culture.”

    Actually, the vast majority of APJs and patent attorney law clerks hired over the past 2-3 years have come directly from OUTSIDE the PTO with no previous experience as an Examiner.

  87. 19

    Well Mr. Mooney, it seems to me that what it would be useful for is identifying the anonymous commenter. If an anonymous commenter wanted to be identified, he would not be posing anonymously. Hence the term “anonymous”.

    So either you didn’t think it through, didn’t think I would think it through, or you are trying to score cheap debating points without addressing the issue. The issue being the Examiners’ current trend toward blocking patents not by coming up with valid rejections, but rather coming up with repeated invalid rejections based on the same arguments that made the previous rejections invalid. Oh, and their running from any objective outside scrutiny of their work.

    If their rejections are valid, they should write a reply brief, not withdraw and re-reject. If their rejections are invalid, they should not make the inventors and attorneys waste time and money writing and filing an appeal brief.

  88. 18

    As you may appreciate, Malcolm, we do not want our clients’ applications picked apart and criticized on this board.

  89. 17

    It would be useful for an anonymous commenter to provide some examples of these laughable rejections before and after the pre-appeal brief. You know, just pull some randomly and let us see them (assuming their on Public PAIR).

    I don’t see what possible harm there could be in that if, in fact, they are genuinely laughable. Let’s all laugh together. Laughter is healthy.

  90. 16

    anon writes “Reexamination isn’t widely used because the PTO can’t be expected to competently review prior art and apply the governing law.”

    At least in reexamination, the PTO does just as good of a job as the district courts, and quicker and cheaper.

  91. 15

    “I think the drop in percentage of reversals is at least partly because the Examiners have started withdrawing their rejections after an appeal brief is filed. In some cases, the examiners maintain their rejection through pre-appeal, withdraw after a brief is filed, then give another rejection on what amounts to the same argument but different art. Sometimes multiple times in the same case.”

    I have had the very same experience, Mr./Ms. Frustrated.

  92. 14

    I think the drop in percentage of reversals is at least partly because the Examiners have started withdrawing their rejections after an appeal brief is filed. In some cases, the examiners maintain their rejection through pre-appeal, withdraw after a brief is filed, then give another rejection on what amounts to the same argument but different art. Sometimes multiple times in the same case.

    IOW its not the pre-appeal conference weeding out the bad rejections, those have actually gotten much worse in the last year. Laughable rejections are presented to the pre-appeal conference, we are told to go to appeal, then the Examiner withdraws the rejection after the appeal brief is filed. I wouldn’t mind except that they then give another laughable rejection.

  93. 13

    Average pendency of a reexam is six years? I thought it was closer to 2 years for ex parte and 3 for inter partes. Does anyone out there know?

  94. 12

    Reexamination isn’t widely used because the PTO can’t be expected to competently review prior art and apply the governing law. Add on top of this the average pendency (6 years?) and reexamination is rarely an option.

  95. 11

    SF says: ” we absolutely have taken the path of least resistance/cost, (the RCE route) in the past. now, however, one can easily burn through multiple RCEs without allowance, making the appeal route more cost effective.”

    I have come to that conclusion too and have been trying to convince my clients that we need to spend the time and money to appeal nonsensical rejections. A larger Appeals Board is needed, as I posted above.

  96. 10

    I don’t understand why more companies don’t take advantage of the relatively quick and relatively inexpensive reexamination route when confronted with a “pure junk patent,” especially now that we are in the Bilski and KSR era and especially since there is no presumption of validity.

  97. 9

    GP “Overall chances of obtaining a patent, if you’re willing to foot the bill for an appeal, 1.4 out of 3, or a little bit less than 50%. Still not horrible, but the number is going lower.”

    The math looks okay but I must disagree strongly with the take-home. Your “overall chances” of obtaining a patent remain nearly 100% correlated with the novelty and non-triviality of what you’ve claimed in light of the support you provided in your specification.

    If a client comes to me with a new pharmaceutical or diagnostic method supported by several examples of robust, in vivo data, he/she is still very likely to secure a patent. Will the claims “dominate the field” for the next twenty years? Probably not, but that shouldn’t offend anyone except the lottery players.

    Given the trash currently being shoveled at the USPTO, 1.4 patents granted out of 3 filed still seems to me to be an absurdly high rate of grant. I think a fair estimate is that for every specification filed that describes a patentable invention, two applications are filed that are pure junk. For those applications, the odds of securing a patent are falling. When the odds of getting a patentable claim out of the junk fall to 1 in 50, then we’ll be getting somewhhere.

  98. 8

    So they’re really moving now toward limiting filings.

    Tell the client – your chance of winning during prosecution is down to 1 in 3.

    If you want to appeal the 2 in 3, you’re going to win 1 in 5.

    Overall chances of obtaining a patent, if you’re willing to foot the bill for an appeal, 1.4 out of 3, or a little bit less than 50%.

    Still not horrible, but the number is going lower.

  99. 7

    curious: we absolutely have taken the path of least resistance/cost, (the RCE route) in the past. now, however, one can easily burn through multiple RCEs without allowance, making the appeal route more cost effective.

  100. 6

    I have found that interviews with SPE’s are usually unproductive. They just back up whatever the examiner said, and wait for an appeal to be filed to seriously consider the rejections.

  101. 5

    Looking at these graphs, it appears that a serious problem at the PTO is that the Board is understaffed and thus the backlog at the Board is increasing at an alarming rate. Another lesson from the article is that the PTO often does not take the rejection issues seriously until the Applicant has gone to the time and large expense of preparing and filing its Appeal brief and other papers. Because of the very long delays in receiving a decision from the Board and the large expenses of preparing the lengthy Appeal Brief, more often than not Applicants elect to file an RCE and make minor changes to the claims and/or represent their arguments. This is a MAJOR case of the increase in the number of RCE’s filed, which the Office has been complaining about. What the PTO needs to do is perhaps triple the size of the Board and thereby reduce the pendency time of appeals. It will also encourage Applicants to file appeals, which is often the only time the Office takes a serious look at the propriety of the rejections the examiners issue. I am sure that there are plenty of qualified people who would accept positions as administrative law judges on the Board.

    Any comments fellow posters?

  102. 4

    If you think you can be persuasive to the SPE or an appeals specialist where you couldn’t be with the examiner then it is not a waste of time. If you don’t think so, then yes, it is a waste of time. Of course, if you could be persuasive to the SPE then you may as well just do an interview.

  103. 3

    “so the pre-appeal brief conference procedure is just a wast of time and the clients money?”

    I’ve always thought so … but it really depends. It can be a lot cheaper to prepare a Request for a Pre-Appeal Brief Conference than an Appeal Brief. Also, although you have to pay the fee for the Notice of Appeal, you don’t have to pay the fee for filing the Appeal Brief.

    The downside is that they decide to maintain the rejection, you still are forced to prepare the Appeal Brief.

    As for the BPAI statistics, I’m not terribly surprised — the BPAI is part of the USPTO and have received the same mandate over the past few years that the normal examiners have — which is to reject, reject, reject (or in this case, affirm, affirm, affirm).

    One of the BPAI’s many problems is that they hired former examiners as APJs who haven’t been outside the USPTO culture. Although I’ve had my fair share of victories, I’ve also had a fair share of affirmations, which really didn’t affirm the examiner’s rejection, but instead, presented new grounds of rejections — basically, the APJ reverts back to examiner mode and tries to examine the case himself/herself. The problem that APJ faces is that their knowledge of the art and/or technology can be woefully inadequate.

    In some instances, I’ve gotten (obscure) case law cited that was so badly applied that if it were cited before a judge in a litigation, the judge would call out the attorney as being an imbecile.

    As for a Request for Rehearing — don’t bother. Some of the worst case law gets cited after you’ve done this. If it wasn’t to keep my clients’ names off this board, I would be willing to out myself to identify some of the truly horrendous decisions coming out of the BPAI.

    Still, to paraphrase a well-known bumper sticker … “a bad day at the BPAI still beats a good day with an examiner.”

  104. 2

    hp684 said: “so the pre-appeal brief conference procedure is just a wast of time and the clients money?”

    No, it might not be a waste of time or money. One benefit of the pre-appeal brief conference procedure is that – if successful – the patentee avoids the expense of writing an appeal brief. Also, the pre-appeal brief conference procedure is generally much quicker.

  105. 1

    “…Even if no pre-appeal brief conference request is made, the examiner’s case for a rejection is usually reviewed at the TC level before the examiner is allowed to file a responsive brief. ”

    so the pre-appeal brief conference procedure is just a wast of time and the clients money?

    thanks for that nugget.

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