The Soaring Rate of BPAI Appeals

In two earlier posts, I discussed the BPAI reversal rate (link) and the reopening of prosecution after a reversal (link). In the reversal rate, I also looked at the historic jump in the absolute number of BPAI appeals filed. In FY2008 (ending Sept 30, 2008), the BPAI received over 6,000 ex parte appeals– concluding two consecutive years of over 35% annual growth rate in appeal filings.

Although dramatic, the reported filing increases pale in comparison to those seen in the past four months. The BPAI reports that in the period of Sept-Dec 2008, it received an average of 954 ex parte appeal cases per month. That value is well more than double the monthly average for the same span in 2007.

At this rate, the number of BPAI appeals would easily reach 10,000 in FY2009.

The planned BPAI rule changes may explain at least part of the sudden jump. In a recent presentation, William Smith of Woodcock Washburn stated that the new rules are “onerous and will significantly increase the cost of preparing an Appeal Brief.” [Link]. I have spoken with several patent attorneys who intentionally filed appeal briefs early in order to beat the December 10 deadline. That deadline has now been postponed. If the rules truly are onerous, then we may see a drop in appeals once they become effective.

192 thoughts on “The Soaring Rate of BPAI Appeals

  1. 192

    SF,

    Your answer is precisely why it is so upseting that the Office just doesn’t “get it”.

    The answer of deter people from (appealling, filing, using the system, or any other work) by drastic change of the rules is tantamount to saying make the symptoms go away – but without addressing the cause of the symptoms. The illegal and unethical power grabs of the Office to do exactly what you say thus runs counter to the Presidential Mandate on just what any executive branch rule making body MUST do.

    The Law is good – obey the Law.

  2. 191

    “Brief filed 10/2006; Examiner’s answer 12/2007; [no reply brief filed]; and docketing notice 11/2008.”

    The answer should be required to be filed within three months.

  3. 190

    “It is a no-brainer, drastically increase the size of the Board to handle the increase in new filings.”

    … or drastically change the appeal rules to deter people from appealing

  4. 189

    On PDS’s comments – further, if the Examiner makes 20 errors and the applicant exhaustively details all 20 reasons why the Office has failed to properly reject, then surely the next OA will be a final that “refutes” by mischaracterization one or two of the applicant’s arguments and completely ignores the other 18 completely independent reasons why the rejection is also improper. So you file your appeal.

    My own (limited) experiences with the pre-brief conferences are no more than wasted time. At the speediest, it was 7 months before getting a “proceed to appeal” decision, where eventually the Examiner was smacked for waving the inherency magic wand inappropriately.

    Re appeal timelines, this one is typical: Brief filed 10/2006; Examiner’s answer 12/2007; [no reply brief filed]; and docketing notice 11/2008.

  5. 188

    It is a no-brainer, drastically increase the size of the Board to handle the increase in new filings.

  6. 187

    The appeal rate is increasing because the quality of rejections is decreasing.

    I predict you will also find an increase in the number or rate of Board Decisions being appealed, as the quality of Board Decisions is also dropping.

  7. 186

    Tyrone, hadn’t realised you European. Greetings. My dream is of an obviousness approach that is used consistently, by the PTO and the courts, not only effective in the PTO to handle a throughflow of thousands of applications but also compatible with the great forensic effort typical of blockbuster litigation. When we get to that destination, the obviousness caselaw will trend towards harmony and consensus, and we will be making progress to simplicity and legal certainty, with all those “secondary factors” kept firmly in their (secondary) place. EPO-PSA has that potential, but very few yet see it.

  8. 185

    Max

    I’m not a US practitioner, but a humble European endlessly trying to fathom the ever-changing mysteries of US patent practice. I try to apply simple logic. Sometimes it even works.

    JAOI, I fear that obviousness will forever be the wildcard of patent poker, but it can be tamed to some extent if courts adopt a sensible and consistent approach.

  9. 184

    AD sorry to hear about that man, although tbh it seemed to me that your case was a bit of a long shot. You were talking about them waiving their shield by having litigated in the past iirc. That’s a long shot. If you just wanted to say that they shouldn’t even have the shield in the first place then I would agree with you all the way.

    “Let’s face it — far too many officials in all three branches of today’s U.S. government really suck. ”

    Let’s also face that they’re better than what you would be. When you find someone better, let us know, maybe they’ll get appointed.

  10. 183

    Dear Mr. Dhuey,

    Don’t let the politically oriented Supreme Court Loonies get you down.
    After all, Boston Legal’s Alan Shore Esq’s. stunning lambasting of the current Justices was right on point, “You folks aren’t as hot as all get out.”

    Let’s face it — far too many officials in all three branches of today’s U.S. government really suck.

  11. 182

    Oh, well. It was pretty fun to debate the Solicitor General and about 25 government lawyers in the SG’s office. Congrats, states, and enjoy your enviable combination of patent swords and an impenetrable immunity shield.

  12. 181

    “Occasionally I come across a mistake in a restriction requirement that merits a substantive response, but mostly its a war not worth waging.”

    yep, when I’m dreaming about being a real patent attorney… speaking of stale I guess my shtick with the crack pipe, white wine, dog crap, couch cushions, glory holes and the like is a little stale (OK a LOT stale), but unfortunately I just don’t know anything else.

  13. 180

    Noise above Law said “Dealing with “some attorneys worry about estoppel that comes with arguments” is a very real concern and an ethical duty of the advocate. Such games as 6 has portrayed as repeating nonsense and trying to get the advocates head spinning so they say something that the office can play “Gotcha” with, or deciding which law that should apply and which should be ignored as lawlol, or holding back the best reasons for denying patentability, or making applicants go to appeal “because he can” instead of doing the right job of best references in a compact prosecution are without a doubt much more prominent a reason for the backlog.”

    QFT

  14. 179

    This thread is more stale than the pretzels under the cushions of President Bush’s couch.

  15. 177

    Been in private practice 20 some years. Got a totally nonsensical election/restriction requirement from a junior examiner. Called the spe who said that it was proper. Filed my response traversing the rejection and just received a new OA where the old requirement was withdrawn and a totally new requirement issued. Why didn’t the SPE take a few minutes when I called and listen to what I was saying. Cost the client time and money and the PTO lost more respect in the client’s eyes

  16. 176

    “In the old days when you got a response, you actually had to answer it. In the current environment, issuing an OA after applicant’s response is nothing more than typing up the equivalent of “Nuh-uh” and inserting the form paragraphs about attacking the references individually and recognizing that hindsight may not be used so long as blah, blah, blah. And making sure you don’t ever dare indicate even so much as a single claim to be allowable.

    That’s not learning. That’s churning.”

    Well f JD, if you guys would send us something other than garbage then we might learn something.

    “Here, unrelated appears to have been added as a synonym for “not dependent.” ”

    Wrong again good sir. The two terms are not synonymous. That is why they wrote down both interpretations of the word “independent”.

    When your quest for truth comes to a head you will find that the interpretations of the statute used are complete bunk because of two things: 1 the interpretation is expressly bunk because the accepted interpretation is based on Pre patent act language and 2 because they setup arbitrary and altogether false conditions for deeming something “unrelated” as well as “distinct”.

    Bottom line: Congress fed it up. You’re shocked, I know.

  17. 175

    DavidE “The more I look at 802.01, the less I buy it. Is anyone with me?”

    The question is: where are you going? I don’t buy 802.01 either, but it’s really beside the point, isn’t it? Occasionally I come across a mistake in a restriction requirement that merits a substantive response, but mostly its a war not worth waging.

  18. 174

    JD “That’s not learning. That’s churning.”

    Spoken like a true poet. ;)

    Of course, churning is an art form in and of itself. Learning to churn is surely a pathway to (at least) modest success in a contemporary law firm. Why shouldn’t it be the case at the PTO?

  19. 173

    Ahh, so my mistake on misinterpreting the MPEP definition of independent. Maybe someone has an idea where the MPEP interpretation comes fro, because it simply isn’t there from a plain reading.

    The best I can find in the MPEP is this: “‘Independent’, of course, means not dependent>, or unrelated<." Here, unrelated appears to have been added as a synonym for "not dependent." Then later we are give the "design, operation and effect" test, which is based upon the term "unrelated," and which clearly cannot arise from the words "not dependent." Is there a better basis for this definition than "because I said so"? Regardless of which interpretation of independent we use, the strength of my point appears to still be intact, however. As I said before, "independent AND distinct" is the statute and the official rule. 802.01 sets forth what I consider to be a weak argument that we should read AND to mean OR. The more I look at 802.01, the less I buy it. Is anyone with me?

  20. 172

    “JD what dictionary are you using coming up with distinct meaning “related” or anything even near that?”

    I’m not using any dictionary. I’m using MPEP 802.01.

    DavidE, here’s all I can find from that MPEP section:

    Nothing in the language of the statute and nothing in the hearings of the committees indicate any intent to change the substantive law on this subject. On the contrary, joinder of the term “distinct” with the term “independent”, indicates lack of such intent. The law has long been established that dependent inventions (frequently termed related inventions) such as used for illustration above may be properly divided if they are, in fact, “distinct” inventions, even though dependent.

    Apparently the term used before “distinct” was “dependent” so maybe there was intent in drafting section 121 that there had to be both “independent” and “dependent” inventions in order for a restriction to be proper.

    I haven’t read Mr. Federico’s commentary on the 1952 Patent Act in a long time, so I can’t say with any certainty.

    “And even with your hands on teaching you know as well as I do that one of your main ways of learning was getting responses back. Every single old timer I’ve talked to irl freely admits this.”

    Yes, learning by doing is easier than learning by being lectured to.

    In the old days when you got a response, you actually had to answer it. In the current environment, issuing an OA after applicant’s response is nothing more than typing up the equivalent of “Nuh-uh” and inserting the form paragraphs about attacking the references individually and recognizing that hindsight may not be used so long as blah, blah, blah. And making sure you don’t ever dare indicate even so much as a single claim to be allowable.

    That’s not learning. That’s churning.

    Big difference.

  21. 171

    Since many of the primary examiners are working from home now, they are not as available for face-to-face mentoring of newbie examiners. My guess is that this aspect is a negative for training of new examiners. My office door is always open and new associates will frequently stop by with a patent or two in hand and bounce ideas off of me.

  22. 170

    “There are two claims, A and B. They are both written in independent form. However, they recite identical subject matter. Under current definition of independent, these pass the “independent or distinct” hurdle set forth by the MPEP because they are independent”

    No!

    “The term “independent” (i.e., **>unrelated<) means that there is no disclosed relationship between the two or more inventions claimed, that is, they are unconnected in design, operation, and effect. " (MPEP 802.01 Meaning of “Independent” and “Distinct”) Restriction practice is all about CLAIM SCOPE. If there's diverging subject matter that's not obvious, then you're forcing the examiner to search for muliple inventions. If you want that subject matter included, claim broader.

  23. 169

    “It is not up to you to decide what the law is. It is not up to you to decide which part of the law to follow and which to ignore.”

    LoL yes it. Should I be following “flash of genius”? Oh I shouldn’t? Oh, my bad, why is that? Because other “lawlol” overruled it? Still, I’ll have to decide if it has indeed been overruled or not. That’s just one reason why you’re not correct, the rest is that you’re simply not correct at all.

    JD what dictionary are you using coming up with distinct meaning “related” or anything even near that?

    Here’s one entry:

    “dis⋅tinct
       /dɪˈstɪŋkt/ Show Spelled Pronunciation [di-stingkt] Show IPA Pronunciation
    –adjective
    1. distinguished as not being the same; not identical; separate (sometimes fol. by from): His private and public lives are distinct.
    2. different in nature or quality; dissimilar (sometimes fol. by from): Gold is distinct from iron.
    3. clear to the senses or intellect; plain; unmistakable: The ship appeared as a distinct silhouette.
    4. distinguishing or perceiving clearly: distinct vision.
    5. unquestionably exceptional or notable: a distinct honor.
    6. Archaic. distinctively decorated or adorned.”

    I fail to see any of those saying that “distinct” means “related”, what it does say though is “not identical”. I’ll go with “not identical” if I may.

    “These claims are distinct from each other, given the current definition. However, they are NOT independent. Under current PTO practice, they are restrictable (distinct, even if not independent).”

    Your understanding of “independent” is flawed. I’d go into it further but I’ve done it so many times on here already I’m tired of doing it.

    And you know JD, maybe you’re right, one on one hands on training is better. But we simply do not have that luxury any longer. I still say the PTA is probably just as good simply because they do make an effort to teach the subject matter. Only problem is, learning those types of things in a classroom setting is dmn hard. And even with your hands on teaching you know as well as I do that one of your main ways of learning was getting responses back. Every single old timer I’ve talked to irl freely admits this.

  24. 168

    ” am still of the position that 802.01 is very awkward. ”

    USPTO restriction practice is a joke.

  25. 167

    Cert denied, and we don’t even get the courtesy of a dissenting comment.

    I wonder if this would have come out differently had the economy dramatically improved instead of tanked. UC will be scrounging every penny it can get for the next few years. I suspect patent application filing won’t be high on its list of priorities, however.

  26. 166

    I am still of the position that 802.01 is very awkward. Take the following example:

    There are two claims, A and B. They are both written in independent form. However, they recite identical subject matter. Under current definition of independent, these pass the “independent or distinct” hurdle set forth by the MPEP because they are independent. Using the PTO interpretation of 35 USC 121, they actually COULD be restricted.

    Now consider another set of two claims C and D:

    Assume C is patentable standing alone. Claim D depends from claim C, but assume it brings new matter that would be patentable over C if brought separately. These claims are distinct from each other, given the current definition. However, they are NOT independent. Under current PTO practice, they are restrictable (distinct, even if not independent).

    It seems to me from reading 35 USC 121 that neither of these situations should allow a restriction.

    I don’t see why must we change AND to OR in the statute if the terms themselves are plainly different and not mutually exclusive by their plain reading.

    The rationale that this change in restriction practice was not explicitly mentioned in some committee hearing and therefore isn’t a change seems like a pretty weak argument.

    Further, 802.01 states that “[i]f section 121 of the 1952 Act were intended to direct the Director never to approve division between dependent inventions, the word ‘independent’ would clearly have been used alone.” In my eyes, this is anything but clear. To me, it looks like section 121 intends for only independent claims to be restrictable, but not every independent claim will be restrictable, only the ones which are patentably distinct.

    Moreover, the exact opposite interpretation to that taken by the MPEP seems appropriate: if section 121 of the 1952 Act were intended to allow dependent claims to be restrictable, the word ‘distinct’ would clearly have been used alone!

    Any thoughts?

  27. 165

    However, if President Elect Obama screws with his appointments to the PTO, or backs weakening our patent statures I’ll be the first to call him out.

  28. 164

    Dear Mr. Dhuey

    link to supremecourtus.gov

    Don’t let the politically oriented Supreme Court Loonies get you down.
    After all, Boston Legal’s Alan Shore Esq’s. stunning lambasting of the current Justices was right on point, “You folks aren’t as hot as all get out.”

    Let’s face it — far too many officials in all three branches of today’s U.S. government tend to suck. Let’s pray President Elect Obama is up to the Democrat’s high expectations. I thought Senator McCain was the better choice, but I now support President Elect Obama in every way I can.

  29. 163

    May I ask: is Mr Slothrop qualified by examination to represent clients before the USPTO. From his posts up to now I had supposed so. But that last one gives me reason to doubt it.

  30. 162

    Dear Mr. Slothrop,

    For your possible interest, I posted a follow up yesterday on this link, second page, to our “obviousness” dialogue last week (I meant to post a follow up last week but I got caught in other matters):
    link to patentlyo.com

    Here is what I posted yesterday:

    Dear Tyrone Slothrop,

    Re: your edifying comment up-tread on Wednesday at 7:50AM.

    I believe the whole concept of PHOSITA in relation to expert testimony in for a big business litigant is at best akin to hearsay evidence from a source (an “expert”) paid to advance a particular spin to persuade the Judge and/or Jury independent reality and fact, and without any concern for fairness or justice.

    Typical big business in its operations and in its IP objectives is driven be greed without concern for We the People, not even their shareholders – they take as much as they can in mind-boggling bonuses and other perks, sock away as much as they can, and if there is anything leftover, the shareholders may get a ROI.

    In my two major patent litigations which went the distance and then some, the basis on which I chose my experts was there integrity and how their credibility would play in front of the Judge and Jury. In one case the Judge took his Oath of Office to heart, and I prevailed. In the other case, the Judge rendered a politically correct contorted result oriented decision which was upheld because of politically correct pressures created for the most part by Cisco and the other 100+ cartel members in the Coalition for Patent Fairness. C’est la vie.

    Judges who do not take their Oath to heart can mince words in file histories and ignore the sound principles laid down in Phillips v. AWH to find imaginary disclaimers of claim scope at their whim. Judges can also tank almost any patent they may want to for whatever reason after KSR. After eBay, there is little reason for big businesses to take any license until after prohibitively-expensive litigation for most self-employed independent inventors.

    Re your observation at 11:05AM:
    “AGREED, OBVIOUSNESS IS A CONCEPT WHOSE IMPORTANCE (FOR PATENTS…) IS RIVALED ONLY BY ITS SLIPPERINESS. In my view, TSM (like PSA in Europe) is a valuable tool for establishing that something IS obvious, but passing the TSM/PSA test does not itself mean that something is definitely non-obvious, which is where the expert witnesses usually come in.” (emp. added)

    I am again reminded of Professor’s Crouch’s more “timely” than ever report some time ago:
    link to patentlyo.com
    Patent Rights Circa 1895
    E. Bement & Sons v. La Dow, 66 Fed. 185 (Cir. Ct. N.Y. 1895)
    [N]o property is so uncertain as “patent rights”; no property more speculative in character or held by a more precarious tenure. An applicant who goes into the patent office with claims expanded to correspond with his unbounded faith in the invention, may emerge therefrom with a shriveled parchment which protects only that which any ingenious infringer can evade. Even this may be taken from him by the courts. Indeed, it is only after a patentee has passed successfully the ordeal of judicial interpretation that he can speak with any real certainty as to the scope and character of his invention.

    * * * * *

    What our American IP system needs is strong patents, professional PTO management and expert educated fair-minded Examiners. And Judges who earn their position because of their integrity and willingness to abide by the Constitution, lawful statutes and precedent.

    STARE DECISIS should be the rule for patents in Court, i.e., “to stand by that which is decided” by the PTO. The principle that patents issued by the PTO, unless new 102 prior art is found, should be honored by the Courts.

  31. 161

    Max

    US restriction requirements have always been a mystery to me. I cut and pasted the post above without comment on purpose…!

  32. 160

    Thanks Mr Slothrop. What you post looks like a definition. But I’m too slow to understand it yet. If that’s typical, then I’m glad I don’t have to earn my living advising clients on US law.

  33. 159

    Now that the subject of restriction practice has come up, I’m interested. The EPO also has the idea that each appln should claim not more than one inventive concept, and any others have to be discarded (made the subject of a divisional). Yet the EPO is tolerant of many independent claims remaining, each being directed to a different “aspect” of the same overarching inventive concept. I suspect that chemical applicants get frustrated when the USPTO restriction requirements are more savage than the EPO’s unity requirements. Now, is it EPO coaching within the USPTO, I wonder, that is to blame for the current heavy-handedness of restriction requirement practice? BTW, I too am interested to have working definitions of “related”, “independent” and “distinct”. I think I know the meanings of the ordinary words independent and distinct but what is “related” in the context of patent claims that are independent claims, I am curious to know.

  34. 158

    link to uspto.gov

    “I. INDEPENDENT
    The term “independent” (i.e., unrelated) means that there is no disclosed relationship between the two or more inventions claimed, that is, they are unconnected in design, operation, and effect. For example, a process and an apparatus incapable of being used in practicing the process are independent inventions. See also MPEP § 806.06 and § 808.01.

    II. RELATED – BUT DISTINCT
    Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design (e.g., structure or method of manufacture), operation (e.g., function or method of use), or effect. Examples of related inventions include combination and part (subcombination) thereof, process and apparatus for its practice, process and product made, etc. In this definition the term related is used as an alternative for dependent in referring to inventions other than independent inventions.

    Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art). See MPEP § 806.05(c) (combination and subcombination) and § 806.05(j) (related products or related processes) for examples of when a two-way test is required for distinctness.”

  35. 157

    Thanks for the explanation, John.

    One crucial element I still don’t understand, though, is where your definition of “distinct” comes from. My lay understanding of the word is that it means “not identical.” Intuitively, there is certainly no requirement that two things be related to be distinct.

    Is your definition spelled out in case law?

    Again, any insight would be appreciated.

  36. 156

    “I’d say the training is likely equivalent to what you got.”

    I disagree, respetfully. We were simply not taught “quality = reject, reject, reject” when I was at the PTO. I’ve read too many posts on this site, and others, from those actually in the PTA that admit they are simply not permitted to indicate even a single claim to be allowable to believe that the training is equivalent.

    Objectivity is a skill. It can be taught. It has to be kept sharp by practicing it.

    Objectivity is simply not being taught in the PTA.

  37. 155

    “Now that the topic has come up, can anyone give a coherent explanation of why ‘independent and distinct’ should be read ‘independent OR distinct'”

    DavidE, as I noted in my post, the terms “independent” and “distinct” have mutually exclusive (i.e. contrary) meanings. If the inventions are independent then they are unrelated. If they are distinct, they are related (e.g. method and apparatus for practicing the method). So no inventions can be both independent AND distinct, i.e. they can not be both unrelated and related.

    “…and further a good reason that the words ‘independent’ and ‘distinct’ are interpreted the way they are?”

    This interpretation is the only way that section 121 would be of any use to the PTO. If the PTO had to establish “independent AND distinct” they could never do it. How could they establish that inventions are unrelated and related at the same time? They couldn’t. They would never be able to issue a restriction. Surely that can’t be the correct interpretation of section 121.

    I think MPEP 802.01 is actually fairly accurate, but if I remember correctly back in my day when the MPEP was only 5 pages long, the PTO actually stated unequivocally that they interpreted section 121 as independent OR distinct.

  38. 154

    Now that the topic has come up, can anyone give a coherent explanation of why “independent and distinct” should be read “independent OR distinct” and further a good reason that the words “independent” and “distinct” are interpreted the way they are?

    I have read MPEP 802.01 and simply can’t buy the explanation; it is just stretching the plain language of 1.121 and 1.141 too far.

  39. 153

    “The PTA is a failure.”

    I’d say the training is likely equivalent to what you got. IMO any issue with the performance of new hires has more to do with the PTO hiring anyone with a pulse than the quality of the training.

  40. 152

    “I don’t think I nitpicked any above, that was someone else”

    I wasn’t responding to any of your posts. I was responding to someone else.

    “BTW, if you’ll recall what I said was that you started out in a little chair at a metal desk and a copy of the MPEP that was 5 pages long. I still say that the training we get now is just as good, if not better, than learning by yourself.”

    The MPEP is not that much longer now than it was then. Chapter 2100 was a nice addition. Too bad nobody over there bothers to read it. And then question it.

    And the training I received during my time at the PTO wasn’t “learning by yourself.” It was the standard phases of the patent academy spread out over the first year or so, and hands on training with my SPE and the primaries in my art unit. Better than the current PTA. No doubt. I’ve seen the results of both. The PTA is a failure. PTO (mis)management should acknowledge that.

    “Um they weren’t my poasts”

    Uhm, I didn’t say they were. Again, I was responding to someone else.

    “Well, I don’t know specifically about primaries, but I do know that many of the underlings don’t get species restrictions at all. Many people never do them because they don’t know how (not lying).”

    Well, thank you for agreeing with my original assessment of the training the current PTO (mis)management is providing. Not sure what your issue is that is requiring you to post such silliness. You agree with me. Can’t you simply acknowledge that?

    “I should add, the discussion about the terms ‘independent’ and ‘distinct’ in the MPEP is also complete hogwash.”

    Figured that out, did you? There may be hope for you yet.

    Independent means that the inventions are unrelated. Distinct means they are related, but patentable (i.e. non-obvious) over each other. So no two (or more) inventions can be independent (i.e. unrelated) AND distinct (i.e. related).

  41. 151

    6,

    The difference bewtween law and lawlol is, “how do you say? Intellectual hogwash, which, while cute to play about, is completely beating around the bush of the issue:”

    It is not up to you to decide what the law is. It is not up to you to decide which part of the law to follow and which to ignore.

    It is up to you to follow the law.

    Playing scholar and historian may be fun for you, but you do not do it well and when your brainwashed “reject-reject-reject” mindset filters what you read, you only reinforce the wrong ideals. You do a nice job of convincing yourself, but not many other people with your interpretations.

    C’mon now, time to stop playing and do your job.

  42. 150

    “Darling made his resume relevant by constantly trashig the PTO on the board while at the same time featuring his PTO work experience very prominently on his firm bio page.”

    PDS said this? WTF! Oh nm, just read the next post. I left for all of saturday and today and it looks like the spoofer is back in action. He was doing impressions of me the other day.

    “I’ll take the nitpicking over one word in my bio as confirmation that you have no substantive answers to my criticisms of PTO (mis)management.”

    I don’t think I nitpicked any above, that was someone else, and they asked for nu des it looks like. And while anonymous does always deliver, I’m lazy right now.

    BTW, if you’ll recall what I said was that you started out in a little chair at a metal desk and a copy of the MPEP that was 5 pages long. I still say that the training we get now is just as good, if not better, than learning by yourself.

    “And I’ll take your non sequitur of a post as further confirmation that you also have no substantive answers to my criticisms of PTO (mis)management.”

    Um they weren’t my poasts, but I’m pretty sure that I already said what I had to say about management. Many times actually. In this thread I don’t remember what specifically we were talking about.

    “Now maybe you can explain how it is that primary examiners at the PTO today apparently don’t understand that claims are not species. In my day, they actually taught that.”

    Well, I don’t know specifically about primaries, but I do know that many of the underlings don’t get species restrictions at all. Many people never do them because they don’t know how (not lying). I can also say though that the “restriction practice” that has evolved over the years is a bunch of bunk, some primaries see through it. The requirements for making a restriction are statutory and should have stayed that way. The bs that has been read into the statute by the courts/pto is ridiculous. Congress certainly didn’t give two flips about what “independent” and “distinct” meant. The bs analysis of the two words in the MPEP is just that, bs. Congress repeats itself all the time throughout statutes. This statute is no different. In addition, the part about claims never being species is … how do you say? Intellectual hogwash, which, while cute to play about, is completely beating around the bush of the issue: are there two independent and distinct inventions and does the examiner want to restrict them?

    I should add, the discussion about the terms “independent” and “distinct” in the MPEP is also complete hogwash.

    Here’s all the analysis that is needed: Is the invention “independent” (i.e. not dependent; not depending or contingent upon something else for existence, operation, etc.) and is it “distinct” (i.e. distinguished as not being the same; not identical; separate)?

    The question is yes as long as the one invention does not depend on another portion of the “invention” to exist and as long as that same invention is not identical to the other invention. And the “categories” made up for groupings feel awkward for everyone because they are contrived bull. I would be interested in hearing about the history of restriction practice and why it became such ridiculousness beyond the plain meaning of the statute.

  43. 149

    “But I bet you’d nitpick if you got an Action with a Notice of Allowability form but the written Action say ‘Claims 1-20 are rejected.’ rather than ‘Claims 1-20 are allowed.'”

    ?

    I receive too many OA’s with typos/inconsistencies/inaccuracies to count. I note them all, state the assumptions under which the response proceeds, and note that if my assumptions are correct and cause any necessary change in the OA then I expect the next OA to be corrected. And non-final.

    Pretty simple.

    And I’ll take your non sequitur of a post as further confirmation that you also have no substantive answers to my criticisms of PTO (mis)management.

  44. 147

    > I’ll take the nitpicking over one word

    But I bet you’d nitpick if you got an Action with a Notice of Allowability form but the written Action say “Claims 1-20 are rejected.” rather than “Claims 1-20 are allowed.”

  45. 146

    “…I would say that it is probably better training than what came before it.”

    You’d be wrong as usual.

    I actually know the inventor of the patent involved in the IPXL case. He’s a partner at one of my previous firms.

    I’ll take the nitpicking over one word in my bio as confirmation that you have no substantive answers to my criticisms of PTO (mis)management.

    But for the record, I began at the PTO in 1990, became a primary in 1995 and left in 1999.

    Now maybe you can explain how it is that primary examiners at the PTO today apparently don’t understand that claims are not species. In my day, they actually taught that.

    Sad.

  46. 145

    I changed my mind. I’m BAAAAAAAAAACK!!!!!!!!!!!!!!!!

    Posted by: pds | Jan 11, 2009 at 12:20 PM
    ======================

    6 impersonating pds

  47. 144

    “I changed my mind. I’m BAAAAAAAAAACK!!!!!!!!!!!!!!!!”

    No sht?! Figures that you wouldn’t stay away for long, being that you see your voice as the most relevant one on this board.

  48. 141

    “darling’s resume is irrelevant to the topic at hand, let’s move on”

    Darling made his resume relevant by constantly trashig the PTO on the board while at the same time featuring his PTO work experience very prominently on his firm bio page.

    Posted by: pds | Jan 11, 2009 at 12:01 AM

    ======================

    Apparently, TypePad allows one’s name to be spoofed, as I did not (and would not) write the above.

    Hmmm …. I ventured a guess the other day that some of MM’s posts were beginning to sound reasonable and that someone else was posting under his name. Perhaps this is the reason why.

    Until Dennis can ensure that TypePad has fixed this problem, this is my last post — perhaps I’ll post elsewhere, but not here.

    BTW: Unlike 6K, I’m not going to be post under a dozen different names. If it isn’t under “pds,” then I didn’t write it.

  49. 140

    Awesome. I see today in PAIR that a brief in a high-profile application of mine just got bounced, 3 months after being forwarded to the Examiner. Apparently, in the summary of the claimed subject matter section, I shouldn’t have summarized a claim element by referencing an explanation of the exact same element from a previously-summarized claim. “Summary” = “repeat redundant explanations of identical language” I guess.

    This will be great to explain to the client. I wish I could just say “the Examiner didn’t want to answer it, so she bounced it to get it off her docket for a few more months.” Instead I’ll probably just be apologizing for extending the appeal process from 2.5 years to 3.0 years. Yay

  50. 139

    “darling’s resume is irrelevant to the topic at hand, let’s move on”

    Darling made his resume relevant by constantly trashig the PTO on the board while at the same time featuring his PTO work experience very prominently on his firm bio page.

  51. 138

    AllSmellingingNose,

    The item in question was incorrectly referred to as a resume by RandomObserverofUnethicalConduct. It more correctly is a bio, and in all likelihood not under the JD’s direct control.

    Can we move on to cover things of actual importance?

  52. 136

    Wow, dog crap to horsecrap, you’re moving up in the world Mooney. Pretty soon, you might be qualified to assist the guy who shines John Darling’s shoes.

  53. 134

    If Mr. Darling works in a firm with some appreciable size (Nixon & Vanderhye has over 100 employees per its website), there is the further chance that his Bio was prepared and executed by another person or department (for example, a person in the marketing department). One can also check out John’s bio at Linked-In (which is more probable than John himself wrote) wherein merely Patent Examiner is listed.

    Would RandomObserverofUnethicalConduct dare to step into the spotlight so that others can go off topic and throw stones at him?

    Anon,
    If only the examiners from the Office could aspire to the level of care you seek to critize, blogging on this post would not be so intensely focused on poor examination quality.

  54. 133

    “Prior to entering private practice, Mr. Darling was a primary examiner at the U.S. Patent and Trademark Office from 1990-1999”

    LOL. Back in the grand old days of the Examiner Interview Gloryhole.

  55. 132

    The courts are capable of construing claims more strangely than Random construes the Darling bio. Imagine interposing between “examiner” and “at” any one of:

    a pause for breathing in;

    a comma; or

    the notional words “having been”.

    Then we see that Mr Darling needn’t necessarily have been a primary already in 1990.

    Then again, the teaching books say that lawyers ought to be able to write clearly enough to ensure that what comes across is the meaning they intend.

    Then again, perhaps Random is just jealous of Mr Darling, to the extent that he can’t help himself from taking the wrong meaning from Mr Darling’s resume text?

    One writes thousands of documents, and all but a very few get less attention than one would wish. But it was pointed out to me long ago, that one never knows which one, out of all those thousands of documents, will be the one that ends up under the unforgiving glare of the spotlight, getting more attention than one would wish.

  56. 131

    > that is a common mistake that people like JD and myself make because we have to quickly put together bios in our “spare” time for a firm’s webpage.

    That’s about the same level of care I see in a good number of attorneys’ responses to Office Actions, so I am not surprised.

  57. 130

    > that has always been (or used to be) understood that when an examiner makes a suggestion for amendment, the case would thereafter be allowed.

    Nonsense. When an attorney argues subject matter in the spec that is not in the claims I suggest that he/she add that subject matter to the claim if he/she wants to argue it. I don’t say it will make the case allowable, just that they should put it in the claim if they want to argue it.

  58. 129

    RandomObserverofUnethicalConduct, that is a common mistake that people like JD and myself make because we have to quickly put together bios in our “spare” time for a firm’s webpage.

    Also, I believe everyone would understand that it was only the last few years at the PTO that he was a primary examiner because obviously no one could have stayed at the PTO as a primary for that length of time without the PTO sucking all life and ambition out of them.

    One more thing Mr. Ethical, you should be very careful about throwing accusations like yours around.

  59. 128

    “Prior to entering private practice, Mr. Darling was a primary examiner at the U.S. Patent and Trademark Office from 1990-1999”

    According to his resume (and we know no attorney, especially such a well respected attorney like JD, would ever embellish their resume), JD started at the PTO as a primary examiner. He must have done something really special as an undergrad to be so highly sought after by the PTO to be given a primary examiner position with no legal or engineering experience.

    IMHO

  60. 127

    I couldn’t agree more with “food for thought” and max. It would be fantastic to have a competing office. I would die a happy man.

  61. 126

    “Lesson learned for me. No specific suggestions unless allowance is a slam dunk.

    Posted by: 2600examiner | Jan 09, 2009 at 06:55 PM”

    2600Examiner, that has always been (or used to be) understood that when an examiner makes a suggestion for amendment, the case would thereafter be allowed. It seems you did not understand this at the time and that the applicant was rightly pissed off. We all have to learn this sooner or later, and suggesting an amendment that would lead to allowance is the righteous and professional thing to do. In other words, never say never, my man.

  62. 125

    Now there’s a thought, Food for Thought. The EPO of course competes with the national Patent Offices of the Member States of the European Patent System, 35 of them by now, and rising. Those national Offices fight tooth and nail, through the EPO AC, to steal business away from the EPO. Maybe Team Obama will float the idea of the USA becoming the 36th EPO Member State? Even now, Applicants in the USA can choose the EPO as its PCT-ISA, rather than paying the USPTO for a PCT-ISR, and I don’t notice any complaints about EPO “quality”. The EPO gets its ISR’s out on time too.

  63. 124

    6 says “If we charged market rates our coffers would overfloweth.”

    Maybe the PTO needs competition from many PTO’s so we can better determine market rates? If one PTO will give me the same patent protection in half the time and with less mickey mouse hassle, I will pay it twice as much.

  64. 123

    ” If so, my answer is no. It’s pretty clear to all informed observers that the only thing being taught in PTA is “quality = reject, reject, reject.” I’m not impressed.”

    We’re not asking you to be impressed. But compared to you starting out in your little office with a tiny metal desk and a straight backed chair with a copy of a 5 page long MPEP I would say that it is probably better training than what came before it. At least that’s how I hear you guys used to start out. Just getting hammered by attorneys. Forged into the old time examiners we have today.

    “The fact that you’ve been there for as long as you have been and were unaware of MPEP 806.04(e) ”

    Actually I was made aware of that shortly after I joined my first TC. But a few species went out prior to that, and lo and behold, I did what came naturally and pointed out the differences in the claims rather than in the spec and then telling them which claims those differences appear to be claimed in. Pick your poison, but you’re getting the species.

    “What is the market rate for work that consists of nothing more than clacking away on a keyboard, punching up a few form paragraphs, hitting the print icon, signing whatever rolls of the printer, stuffing it in an envelope and mailing it out?”

    Idk, how much do you get paid to do that? I’ll take 3/4 of what you take k? I mean, we’re totally disregarding any analysis of the invention and prior art, and finding prior art, and making any relevant legal determinations or alternatively, verifying previous legal determinations were correct, when we’re discussing the pay right? Admittedly, you hit the print button while I do not. But I bet you have a secretary take care of putting it in an envelope. So overall I think 3/4 is fair.

    I should have gone out tonight instead of messing around with these actions to be ahead next week.

    “and have a complete lack of understanding that an applicant’s claims are never a species of their invention confirms exactly what I said.”

    A distinction without a substantive difference in restriction practice. That I’ve seen anyway. If I issue a species restriction, then there is always a species embodiment that the claims are being directed to. When you get your remodeled restriction requirement I’m sure you’re just fine and dandy with it amirite? Don’t get me started on the “claimed invention” /= “invention” debate. But hey, any word on the new species restriction rules? No update for awhile.

  65. 122

    JD, is this part new in the MPEP?

    “II. PRODUCT AND PROCESS IN THE SAME CLAIM
    A single claim which claims both an apparatus and the method steps of using the
    apparatus is indefinite under 35  U.S.C. 112, second paragraph. *> IPXL Holdings v.
    Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005);()may< also be rejected under 35  U.S.C. 101 based on the theory that the claim is directed to neither a “process” nor a “machine,” but rather embraces or overlaps two different statutory classes of invention set forth in 35  U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551." It is under 2173.05(p) [R-5] Claim Directed to Product-By- Process or Product and Process

  66. 121

    “JD, you know I feel that they do decently with what they are given at the PTA.”

    I have no idea what you are talking about. Are you saying that the PTO is doing a pretty good job training a large number of raw recruits in its brainwashing academy? If so, my answer is no. It’s pretty clear to all informed observers that the only thing being taught in PTA is “quality = reject, reject, reject.” I’m not impressed.

    Or are you saying the PTO is doing a good job training given the number of available/eligible/theoreticallylegallycompetent (mis)managers it has? If that’s what you mean, my answer remains the same.

    The fact that you’ve been there for as long as you have been and were unaware of MPEP 806.04(e) and have a complete lack of understanding that an applicant’s claims are never a species of their invention confirms exactly what I said.

    “And if the task fell to you to do the teaching I’d love to see you do better.”

    I would. Guaranteed. You think a bunch of PTO lifer (mis)managers can teach better than me? You’re deluding yourself.

    “The way out of this is for Congress to allow the US Patent Office to charge market rates for their services.”

    What is the market rate for work that consists of nothing more than clacking away on a keyboard, punching up a few form paragraphs, hitting the print icon, signing whatever rolls of the printer, stuffing it in an envelope and mailing it out?

  67. 120

    “Dear Capped Off — I believe that the fees applicants and patentees pay the PTO including maintenance fees makes the PTO self-sufficient.”

    I didn’t realize that market rates resulted in mere self sufficiency. If we charged market rates our coffers would overfloweth.

    IMO we ought to raise funds for global domination. Then after all applicants are under our thumbs we can implement the new rules :) And get congress to pass AQS legislation.

  68. 119

    “All directions will be capped.”

    Have you tried amending your claims?

    [pours self two shots of Beam on the rocks]

  69. 118

    Dear Capped Off — I believe that the fees applicants and patentees pay the PTO including maintenance fees makes the PTO self-sufficient.

  70. 117

    The poor quality office actions are a result of Congress not letting the US Patent Office charge market rates for their services. Now, the number of poor quality office actions are highlighted by the significant number of reversals on appeal. With the number of appeals exptected to drop, the number of reversals will drop as well. The problem of the poor quality office actions will then be hidden due to it not being reviewed on appal. With the fault of the US Patent Office now hidden, the US Patent Office then will say that the failings in the patent system are the patent attorneys who file for inventions without putting effort into determining whether the invention is patentable. The way out of this is for Congress to allow the US Patent Office to charge market rates for their services. Until then, the US patent system will decline and government blame for its failure will be hidden by the squeeze the system is destine to complete on its customers.

  71. 116

    The squeeze us in the present application by eliminating 103 motivation and using a second action as a final office action. The squeeze us going forward by limiting the number of continuations. The only direct left is up, which accounts for all the appeals. Now the truly onerous rules will squeeze us from above. All directions will be capped.

  72. 115

    “There is only one direction for all this to go, and it’s the same direction it’s been going for the last few years – it’s only going to get worse.”

    Yup.

  73. 114

    “”There is a difference between “allowable” and “more allowable than that blatantly overbroad claim that you are asserting is patentable over that 102b”. ”

    Very true. Just this week I’ve been dealing with this. Applicant couldn’t get far enough away from the standard they’re “improving” to avoid 102 rejections (non-final and final). In the final I point out how to get around the standard (big mistake). They amend around the standard in the manner I told them. I send out an advisory. Their in-house counsel is “shocked” to get an advisory action. He’s annoyed and goes on a rant about having to pay for an RCE and two months extension under current budget tightening at his company (european company whose stock price dropped 90% in 2008). His independent claim at least is still broader than a barn. Lesson learned for me. No specific suggestions unless allowance is a slam dunk.

  74. 113

    Anybody want to join up on the G Pope – “it’s a complete joke” bandwagon?

    You guys crack me up.

    You sound like the people who voted for George W. Obama.

    You ACTUALLY THINK that things are going to get better at the PTO.

    That all we need is a new head honcho. Or better laws. Or better cases. Or better rules.

    There is only one direction for all this to go, and it’s the same direction it’s been going for the last few years – it’s only going to get worse.

  75. 112

    “Also, if you think there’s something in there that’s allowable, how about suggesting it to the Applicant?”

    There is a difference between “allowable” and “more allowable than that blatantly overbroad claim that you are asserting is patentable over that 102b”.

    Why do I even bother explaining myself week in and week out? Seriously, I get the same posts over and over. I should make: e6k, the homepage! Complete with faq.

    “I am, but you’re again showing how you focus on exactly the wrong issues in prosecution – the merits of the claims are what’s important, not who is paying for them.”

    I’m focusing on “the wrong issues” in my PO posts, not “in prosecution”. In prosecution the claims are anticipated, and anything in the app that might be allowable is just that: maybe allowable. If something jumps out at me as being omfgwtfbbq awesome then sure, I’ll suggest it.

    Problem is, your apps are so mundane :( and generally anti-innovation in nature. Frankly, people accuse me of being “anti-innovation” and “anti-patent” when really the only people that are anti-innovation and anti-patent are people submitting apps lacking innovation (unless we’re using the term VERY LOOSELY) and patentable claims. They are the ones seeking to end innovation (maybe altogether) by clogging the office and thus reducing the incentive for good apps to file for quick and easy protection. It is easy to see that their “disclosure” is but a token effort to conceal their true agenda. And I think you’re in on it. So does Dudas. We’re coming for you.

  76. 111

    Darling, have you ever told a client that an alleged “invention” was obvious and they shouldn’t bother to patent it?

    Or do you just take the money, watch the application die at the PTO, and beitch about it here?

  77. 110

    “There are plenty of amendments that this particular app could make that would put the case “more” in condition for allowance. And I certainly might allow the case if he were to make such an amendment. The applicant is IBM, so cry me a river about them not getting their wittle patentwatant.”

    The relative size or resources of the Applicant should have no bearing on this. I’m sure you’re going to backtrack and point to something else you said to show just how wrong and “dmb” I am, but you’re again showing how you focus on exactly the wrong issues in prosecution – the merits of the claims are what’s important, not who is paying for them.

    Also, if you think there’s something in there that’s allowable, how about suggesting it to the Applicant? Seems to me that before I started having to deal with the young belligerent types like yourself, this used to happen relatively often.

    Ignoring my first statement, I recognize that offering something up as allowable will probably invite them to take the allowance and a file a continuation, so you’ll still be loling over the same stuff. But that should help your counts anyway, right?

  78. 109

    btw jd, you really should talk to Rai and Lemelson about getting nominated as Director. You are plainly the only man for the job.

  79. 108

    “It’s nice to see an examiner admitting that he will NEVER allow a case, no matter what the BAPI says, no matter what amendment the applicant submits.”

    U sir r dmb. There are plenty of amendments that this particular app could make that would put the case “more” in condition for allowance. And I certainly might allow the case if he were to make such an amendment. The applicant is IBM, so cry me a river about them not getting their wittle patentwatant.

    “But thanks for confirming what all of us already knew: PTO training is garbage.”

    JD, you know I feel that they do decently with what they are given at the PTA. And if the task fell to you to do the teaching I’d love to see you do better. Everyone take a second to applaud Armchair Director/Teacher/SPE JD who sees all problems and has them fixed in less time than it takes you to say bob’s your uncle.

  80. 107

    “That tells you all you need to know about their integrity.”

    This from the anonymous wonder who routinely boasts that he simply reads the preamble of claim 1 and tells his clients not to worry about the patent because it’s “facially invalid,” but in real life tells them, “Uhm, gee, uh, well let’s see guys, that’s gonna take me a few weeks to analyze thoroughly, so let me get back to you…”

    LOL

  81. 106

    “See, now that is something that is not well specified in all the restriction trainer courses.”

    They don’t mention MPEP 806.04(e) in the training classes?

    But thanks for confirming what all of us already knew: PTO training is garbage.

  82. 105

    6k Wrote:

    “I screwed him? LOL, considering that to me his application is DEAD, I’d say I already gave him the ultimate F U. If he keeps fighting the F U, then that’s up to him. If it weren’t for judge C I could eventually drive a nail into this case and finish it off for good, after the appeal (which is in the bag) gets done and he wastes his next RCE.”

    —-

    It’s nice to see an examiner admitting that he will NEVER allow a case, no matter what the BAPI says, no matter what amendment the applicant submits.

    You really are a complete and utter disgrace to the PTO.

  83. 104

    “The species restriction is based on the claims, not on the embodiments. Ugh. If I had a nickel for every one of those that I got. I’d be a certified gozillionaire, even in this economy.”

    See, now that is something that is not well specified in all the restriction trainer courses.

    “But according to 6k, all of the responses are docketed to the examiner the same day they are filed, iirc. amirite? omg, it’s totally fubar!!!!”

    Did he efile it? I thought you were btching all that time about the efiled ones not being entered immediately. The paper filed ones could take forever that is for dmn sure. I recommend efiling if you’re not already.

    “I bet the examiner was slapping himself on the back for finding such a knockout 102 reference.”

    Considering that he does have a knockout 102 reference he’s entitled. Sending notification to the applicant of which reference that is is another story however…

    “Those two claims that were canceled by the applicant and entered by you but that you asserted for the recorded as being rejected may be used against the application as some sort of estoppel, preclusive effect, Festo, who knows. ”

    Actually in this case no they can’t. The applicant cancelled them and I entered the amendment. I can drone on about claims 1-11111111111111111111 being rejected and make up claims to bicycles to fill in claims 2-111111111111111111 but that doesn’t mean that all of a sudden those claims can be used to some effect in court SINCE THE APPLICANT DIDN’T MAKE THEM.

    But thanks for playing.

    “Even if he prevails on the issue by showing the court you sccrewed up, he still has to pay his suits to argue it. You have sccrewed him even after he’s beyond your normal powers to sccrew him.”

    I screwed him? LOL, considering that to me his application is DEAD, I’d say I already gave him the ultimate F U. If he keeps fighting the F U, then that’s up to him. If it weren’t for judge C I could eventually drive a nail into this case and finish it off for good, after the appeal (which is in the bag) gets done and he wastes his next RCE.

    “You take a pretty mellow view of your own negligence. “Oh, durn, the docketing clerk is messing this all up. Why doesn’t he just ignore my mess and move the case along?””

    I didn’t say I thought he should ignore it, I said that nobody down the line of people that it needs to go down knows/cares. I know why he kicked it back, because of an appeal rule having to do with addressing claims. Also, he’s not “fighting for you” or anything of the sort, he’s simply making sure rules are followed. I doubt he could possibly give less of a sht about you, your app, or this app. The bottom line is, I WANT THEM TO FIX IT ON THEIR END ONCE IT IS FIXED ON MINE AND THAT IS NOT HAPPENING BECAUSE 5 PEOPLE DON’T KNOW WTF IS GOING ON, AND EVEN IF THEY DID THEY DO NOT CARE. Basically that means that most of the “clerks” that have to handle the case on its way up explicitly do not give a f about this mistake.

    “This is precisely the cavalier examiners’ attitude practitioners defend their clients against every day. It is reassuring to know that there are clerks within the PTO who are helping us. And, to be fair, I know that there are many fine examiners who would never think to ask the question: Why doesn’t the clerk just ignore my mess and move the case along?”

    And I’m one of them, you jckas. And that is precisely the cavalier attitude that attorneys have rushing into bashing people on this board that makes you look so fin dmb.

  84. 103

    “according to PAIR, the examiner got right back on track in the very next office action, so the name and shame stuff on this board seems gratuitous and counter-productive.”

    ya think?

    My friend, there are some commenters here who have done nothing but whine and complain for the past several years about how the PTO is screwing them over.

    But when an Examiner falls asleep on the job and grants an invalid pile of crap? You won’t hear a peep from them, unless its to defend the patent (“Where’s the art, Mooney?”).

    That tells you all you need to know about their integrity.

    Now watch one of these commenters tell a fat lie about how I believe that every patent is invalid as obvious or some such horsecrap.

  85. 102

    “Oh good god, the examiner who did that was a PRIMARY?”

    Iirc the application was actually being rejected over different art, but he put the wrong name in the heading and then proceeded to use the wrong name throughout the action even though the citations were to the other doc.

  86. 101

    “Thus, if that’s your one argument that you are submitting, then you shouldn’t be surprised to get a second action final rejection. In that case, any subsequent RCE/appeal that includes other/better arguments that are later found persuasive is NOT the fault of Exr “extorting” RCEs out of the Applicant. It is the Applicant failing/delaying to do what should have been done in the first place.”

    This is one reason that I personally believe no arguments that were just now presented AF should be addressed if the applicant did not amend after the Nonf.

    I might have to start saying:

    LOLOLOLOLOLOLOLOLOLOLOL applicant brings up new arguments. Why didn’t Applicant bring this up earlier? Not persuasive.

  87. 100

    according to PAIR, the examiner got right back on track in the very next office action, so the name and shame stuff on this board seems gratuitous and counter-productive. to pillory an examiner over every isolated lapse only will encourage examiners to make a zillion backup rejections and objections to make sure something sticks.

  88. 99

    You owe it to yourself to review that application, 10/982,469.

    The species restriction is based on the claims, not on the embodiments. Ugh. If I had a nickel for every one of those that I got. I’d be a certified gozillionaire, even in this economy.

    The original OA was responded to, and the error in the citation of applicant’s own published app was noted.

    A new OA was mailed 6/26/08. Applicant responded 8/18/08.

    The PAIR record still lists the status of the app as “Non-Final Rejection Mailed 6/26/08.” The 8/18/08 response has not been docketed to the examiner lo these almost 5 months later.

    But according to 6k, all of the responses are docketed to the examiner the same day they are filed, iirc. amirite? omg, it’s totally fubar!!!!

    $1B+ of applicants’ fees spent on the “paperless” patent office and they can’t even get a response entered and docketed in less than 5 months.

    Simply disgraceful.

  89. 95

    “such classics as rejecting an application based upon its PGPub”

    Priceless … absolutely priceless.

    I bet the examiner was slapping himself on the back for finding such a knockout 102 reference. However, what would have been worse is if the examiner rejected some of the claims under 103.

  90. 93

    123 writes “I’m seeing more and more OAs in which an examiner simply repeats the language of each claim element and follows it with a pincite to a reference”

    Detailed claim mapping to the references takes an inordinate amount of time and skill in the art, both of which are in short supply here (at least in my art).

    I honestly pity you fellas outside the USPTO when I see some of the junk that gets shoved out the door. I keep a stack of printed out actions in my office labeled “Gems of Ineptitude” including such classics as rejecting an application based upon its PGPub to others where the Examiner hilariously has no grasp of the English language.

  91. 92

    reason 1 for increased appeal #s: new UNTRAINED examiners again unleashed on the public; 2 no comprehension of limits on rules by examiners, wherein they arbitrarily continue exams by ‘CUT AND PASTE’ technology, not even considering proofs/arguments presented; 3 inappropriate application of prior art. i have filed almost 60 appeals in the last 5 years, vs 0 for the first 15 years of practice. to date 56 have been decided and i have won them all, in all different arts. does not say much for quality of uspto exam, if one person (not a rocket scientist by any means) can beat them consistently. the intelligence of the pto seems to be concentrated at the board…not out in the trenches.

  92. 91

    “If Applicant chooses to push ahead to issue, ignoring the Examiner’s helpful pointers to locations in the docs from which adverse parties (say big corp’s team of forensic litigators adducing punchy evidence from real technical experts) might launch obviousness attacks, well then patent owner after issue can hardly complain when some stern patents judge revokes his patent. Not so in the USA, eh?”

    Max, your advice presupposes that the “pointers” one receives in USPTO OA’s are “helpful” instead of just the usual result that a word search of some claim terms has produced a reference that happens to have some of the same words as the claims being examined.

    So no, it’s not usually the case here in the U.S.

  93. 90

    IQ = 6 said,
    “nobody but the docketing guy knows why in the he ll anyone would possibly care if I rejected 2 claims that are cancelled”

    It seems to you are missing an important aspect about the way the system works.

    Should the applicant’s patent — or a continuation that becomes a patent — eventually be litigated, the file wrapper will be dragged into court.

    Those two claims that were canceled by the applicant and entered by you but that you asserted for the recorded as being rejected may be used against the application as some sort of estoppel, preclusive effect, Festo, who knows. Even if he prevails on the issue by showing the court you sccrewed up, he still has to pay his suits to argue it. You have sccrewed him even after he’s beyond your normal powers to sccrew him.

    You take a pretty mellow view of your own negligence. “Oh, durn, the docketing clerk is messing this all up. Why doesn’t he just ignore my mess and move the case along?”

    This is precisely the cavalier examiners’ attitude practitioners defend their clients against every day. It is reassuring to know that there are clerks within the PTO who are helping us. And, to be fair, I know that there are many fine examiners who would never think to ask the question: Why doesn’t the clerk just ignore my mess and move the case along?

  94. 89

    IQ = 6 said,
    “nobody but the docketing guy knows why in the he ll anyone would possibly care if I rejected 2 claims that are cancelled”

    It seems to you are missing an important aspect about the way the system works.

    Should the applicant’s patent — or a continuation that becomes a patent — eventually be litigated, the file wrapper will be dragged into court.

    Those two claims that were canceled by the applicant and entered by you but that you asserted for the recorded as being rejected may be used against the application as some sort of estoppel, preclusive effect, Festo, who knows. Even if he prevails on the issue by showing the court you sccrewed up, he still has to pay his suits to argue it. You have sccrewed him even after he’s beyond your normal powers to sccrew him.

    You take a pretty mellow view of your own negligence. “Oh, durn, the docketing clerk is messing this all up. Why doesn’t he just ignore my mess and move the case along?”

    This is precisely the cavalier examiners’ attitude practitioners defend their clients against every day. It is reassuring to know that there are clerks within the PTO who are helping us. And, to be fair, I know that there are many fine examiners who would never think to ask the question: Why doesn’t the clerk just ignore my mess and move the case along?

  95. 88

    Just seen your second posting, 123. What that USPTO Exr is doing is replicating EPO style, which style is entirely fit and proper for Europe. Europe is a sort of “On your Own Head Be It” or “Caveat Emptor” world. If Applicant chooses to push ahead to issue, ignoring the Examiner’s helpful pointers to locations in the docs from which adverse parties (say big corp’s team of forensic litigators adducing punchy evidence from real technical experts) might launch obviousness attacks, well then patent owner after issue can hardly complain when some stern patents judge revokes his patent. Not so in the USA, eh?

  96. 87

    Good insight 123. I think this is a key difference between prosecuting before the PTO of a common law jurisdiction (US, UK) and doing it in a civil law jurisdiction (Europe, Japan, Korea, China). I think patent attorneys in civil law countries don’t understand the pressures on common law attorneys-at-law, and vice versa. EPO examiners certainly don’t have any idea how common law litigation works, and perhaps some Exrs inside the USPTO also don’t really get what life’s like, outside, in the “real” English common law world. It is all very well EPO teachers coaching USPTO people to replicate EPO success in “Mastering the Workload” except that EPO work procedures and applicant management techniques won’t always work, when transplanted into the common law landscape in which the USPTO has to function.

  97. 86

    Beenthere, I share your frustration. I’m seeing more and more OAs in which an examiner simply repeats the language of each claim element and follows it with a pincite to a reference, implicitly asserting that the element is disclosed. Of course, the same language is never actually present in the reference, and the examiner gives no explanation of how he thinks the seemingly irrelevant discussion in the reference corresponds to the claim element, so I can’t do anything but argue that the examiner failed to make a prima facie case.

  98. 85

    Anon, if the Examiner hasn’t established the prima facie case, then asserting that IS the best argument and no other arguments need be presented. No matter how much the PTO would like to shift the burden and make applicants prove patentability, practitioners have a duty to avoid unnecessarily creating PHE. The PTO is concerned only with patentability, but we have to consider enforceability as well.

  99. 84

    “Your comment is premised on the assumption that EVERY single Office Action coming out of the PTO is somehow a “bogus” rejection.”

    No, my comment stems from your example in that you are persuaded.

    All too often that persuasion is followed by new rejections equally poorly made.

    anon, the point being that in your example, even if the applicant does as you say, the delay and impact due to the applicant is minimal.

    The view expressed by beenthere:
    – “In particular, I have seen an increase in rejections on 102 or 103 that simply don’t have all of the claim elements. So, if the action does not make the prima facie case that’s all the response that is needed. No reason to spend the client’s money or create estoppel or increase risk if ineq conduct.” is dead on.

    This is what happens when you have a team of raw new-hires and you drill them in the mantra of reject-reject-reject without respect for the Law.

  100. 83

    beenthere writes: ” I don’t do it where the examiner has a reasonable position and I try to call to work out something so things don’t spiral.”

    Are you able to work things out?

    My experience is that the last five or so years it is very difficult. Before then the examiners were willing to work things out — give and take — you end up with what you are probably entitled to.

  101. 82

    “Imagine what would happen if applicants routinely appealed, say, 20 percent of their cases.” The examiners would miss their RCE gravy train.

  102. 81

    For many years I have tried to work with, rather than against, examiners as much as possible. I have had a lot of success. However, I have found that, over the last few (5 or so) years, there has been an increase in first action rejections that just don’t meet the legal or MPEP requirements. It’s still a minority of cases, but no longer a rarity.
    I do have to say that things today are a little better than the worst period of around 2005-2006.

    In particular, I have seen an increase in rejections on 102 or 103 that simply don’t have all of the claim elements. So, if the action does not make the prima facie case that’s all the response that is needed. No reason to spend the client’s money or create estoppel or increase risk if ineq conduct.
    That’s all I argue and I do it in the form of argument that pastes into an appeal.
    Amending sets you up for 2nd final and opens the door to the examiner setting up more issues for appeal.
    If the examiner tries to go final without my making any amendment, I just move the argument into an appeal. Since I haven’t let the issues grow, it’s straightforward and cheap. Pretty much 100% reopen at that point.
    To be fair, I don’t do it where the examiner has a reasonable position and I try to call to work out something so things don’t spiral.
    If everyone did this, there would either be a LOT more appeals or an improvement in 1st actions.

  103. 80

    “FYI — if I don’t amend after 1st and you go final, there is a 95%+ chance that I’ll appeal — however, I’m not the norm (fortunately for most examiners).”

    Imagine what would happen if applicants routinely appealed, say, 20 percent of their cases. Forget the backlog of the initial examination. The appeal backlog would be a sight to see!

    I wonder if that would provide the right motivation for the USPTO to rethink their reject-at-all-costs mindset.

  104. 79

    “Further, the frustration, delay and battle of copy/pasting a paragraph by the examiner does not seem to compare to the same level of frustration, delay and battle to make the examiner realize that cited references simply don’t apply, or mean what the examiner thinks they mean, or overcoming any of the other myriad bogus excuses thrown out in the reject-reject-reject philosophy.”

    Your comment is premised on the assumption that EVERY single Office Action coming out of the PTO is somehow a “bogus” rejection.

  105. 78

    “How does the PTO usually respond, pds? Withdraw rejections and issue new ones? Allow application? Or let the Board decide?”

    All of the above. My favorite is when the examiner offers up, for allowance, a dependent claim that I didn’t even argue.

  106. 77

    anon,

    To use your example, an applicant states that a prima facia case has not been made. Examiner replies to the applicant’s poor office action response to the extent that yes I have made a prima facie case and goes final. Applicant supplies other/better argument and examiner is persuaded.

    I do not think any delay is entirely the fault of the applicant. Granted the applicant responded poorly for whatever reason. However, the examiner’s argument is none-the-less bogus, else there would be no persuasion. So at most the applicant is responsible for a working delay of what – an hour of an examiner’s time to copy/paste the statement “applicant’s argument has been considered and is found to be not persuasive” into the previous Office Action, stamp it final and send it out, and a overall time delay (in which other applications are NOT affected) of up to six months? This seems hardly like extorting anything except an easy count for the examiner. Further, the frustration, delay and battle of copy/pasting a paragraph by the examiner does not seem to compare to the same level of frustration, delay and battle to make the examiner realize that cited references simply don’t apply, or mean what the examiner thinks they mean, or overcoming any of the other myriad bogus excuses thrown out in the reject-reject-reject philosophy.

    Dealing with “some attorneys worry about estoppel that comes with arguments” is a very real concern and an ethical duty of the advocate. Such games as 6 has portrayed as repeating nonsense and trying to get the advocates head spinning so they say something that the office can play “Gotcha” with, or deciding which law that should apply and which should be ignored as lawlol, or holding back the best reasons for denying patentability, or making applicants go to appeal “because he can” instead of doing the right job of best references in a compact prosecution are without a doubt much more prominent a reason for the backlog.

  107. 76

    pds says” “FYI — if I don’t amend after 1st and you go final, there is a 95%+ chance that I’ll appeal — however, I’m not the norm (fortunately for most examiners).”

    How does the PTO usually respond, pds? Withdraw rejections and issue new ones? Allow application? Or let the Board decide?

  108. 75

    “That’s not what the previous poster said. I’d agree that one argument would be sufficient IF that argument is the ‘best argument,'”

    It doesn’t have to be the best argument. It just has to be the argument that gets the job done.

    If the applicant files a RCE + amendment after you make it final, then you, as the examiner, probably did your job correctly. If the application files a notice of appeal, then perhaps you didn’t.

    FYI — if I don’t amend after 1st and you go final, there is a 95%+ chance that I’ll appeal — however, I’m not the norm (fortunately for most examiners).

  109. 74

    “Applicants are supposed to point out the errors in the examiner’s rejection. There may be 20 errors but all the applicant needs to do is establish a single error made by the examiner regarding the independent claim.

    No need to grind the examiner’s nose into it when it isn’t needed.”

    That’s not what the previous poster said. I’d agree that one argument would be sufficient IF that argument is the “best argument,” however what I see alot of times is “Exr has not made a prima facie case . . . period”. Thus, if that’s your one argument that you are submitting, then you shouldn’t be surprised to get a second action final rejection. In that case, any subsequent RCE/appeal that includes other/better arguments that are later found persuasive is NOT the fault of Exr “extorting” RCEs out of the Applicant. It is the Applicant failing/delaying to do what should have been done in the first place.

  110. 73

    “Agreed. So the Patent Examiner is supposed to make his/her “best rejection” with the first Office Action, yet the attorney may or may not provide the best arguments in response . . . but the backlog and problems at the PTO is completely the fault of the PTO . . . RIIIIIGGGGGHHHHTT.”

    Applicants are supposed to point out the errors in the examiner’s rejection. There may be 20 errors but all the applicant needs to do is establish a single error made by the examiner regarding the independent claim.

    No need to grind the examiner’s nose into it when it isn’t needed.

  111. 72

    “When would you ever *NOT* “make your best arguments in that first response”???”

    . . . because the best arguments may require a detailed analysis of the spec and the cited references, which some clients are unwilling to pay for

    . . . also, some attorneys worry about estoppel that comes with arguments — the problem is that minimal arguments too often have a minimal effect

    Agreed. So the Patent Examiner is supposed to make his/her “best rejection” with the first Office Action, yet the attorney may or may not provide the best arguments in response . . . but the backlog and problems at the PTO is completely the fault of the PTO . . . RIIIIIGGGGGHHHHTT.

  112. 71

    “When would you ever *NOT* “make your best arguments in that first response”???”

    because the best arguments may require a detailed analysis of the spec and the cited references, which some clients are unwilling to pay for

    also, some attorneys worry about estoppel that comes with arguments — the problem is that minimal arguments too often have a minimal effect

  113. 70

    123 said:

    “I draft my response to a first Office Action so that I can cut and paste it into an appeal brief, because it seems to me that if you make your best arguments in that first response, and the Examiner unreasonably finds them “unpersuasive”, then filing an RCE to continue arguing with the same Examiner is a waste of time and creates more PHE than is necessary.”

    When would you ever *NOT* “make your best arguments in that first response”???

  114. 69

    “Comparing the number of appeal briefs to total number of actions is entirely misleading. Not all actions (i.e., first actions) are even appealable. As such, those numbers are not relevant. Similar issues exist for applications in which a large number of OAs have been issued prior to appeal — these situations also skew the numbers.”

    That’s why we’re using me as an example. My being below a 12 makes the FOAMs that I do merely reflect an extra final a primary does. We negate the large numbers of OAs cases by assuming me, who has only had one case go over 3 actions, and that was because I felt generous.

  115. 68

    “That’s fascinating, but it doesn’t explain why the backlog is growing in spite of the fact that your calculations suggest a disposal rate of over 600,000 applications a year.”

    Well, we have those 60k that are being preappealed and appealed for one thing. Wasn’t it 540k disposed of cases that Dudas said we did in the last fiscal year?

  116. 67

    Re: “2) Receive Examiner’s Answer (2 month deadline — no extension)”

    [Was I practicing on a different planet?]

  117. 66

    “That’s fascinating, but it doesn’t explain why the backlog is growing in spite of the fact that your calculations suggest a disposal rate of over 600,000 applications a year.”

    6K would be better served to compare the following numbers for applications receiving a final rejection:
    1) the number of applications receiving RCEs
    2) the number of applications abandoned
    3) the number of applications with an amendment that gets entered and results in an allowance
    4) the number of applications in which a new office action was issued.

    Comparing the number of appeal briefs to total number of actions is entirely misleading. Not all actions (i.e., first actions) are even appealable. As such, those numbers are not relevant. Similar issues exist for applications in which a large number of OAs have been issued prior to appeal — these situations also skew the numbers.

  118. 65

    “Just fyi, I do around 4-5 counters and around 3-4 finals per bi week. I still don’t understand how this happens since I’ve only had to do 2 or 3 2nd action nonf’s in my entire career. I should be down to 3 counters, and 3 finals per bi week by now. And then adding in a 4th counter is easy and should make for a promo. WHERE THE F DO ALL THESE FINALS GO? It isn’t to appeal I can assure you of that.”

    That’s fascinating, but it doesn’t explain why the backlog is growing in spite of the fact that your calculations suggest a disposal rate of over 600,000 applications a year.

  119. 64

    “2) Receive Examiner’s Answer (2 month deadline — no extension)”

    The 2 months here is the time for applicant to respond to the Answer.

    ——

    I should have made it clearer … “(2 month deadline to respond – no extension)”

    On average, I’m seeing an appeal get responded to by the examiner in about 3 months.

  120. 63

    “The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. ”

    ^ See that? Rampant non-enforcement of that = backlog.

    Although, to be sure, many times their reply is a bona fide attempt to get me to issue them a final action. They want to spout nonsense, so they get a final action. We need to amend the rule so it says:

    “The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to show the application is in condition for allowance.”

  121. 62

    “We have that. It’s called Rule 111.”

    WTF, why can’t I use that on all the myriad of bs arguments they submit? Oh, that’s right, because any arguments at all are considered fulfilling your obligation no matter how ridiculous. Give 111 some teeth, and let me hold its leash.

  122. 61

    Some of the numbers Dennis didn’t give here, which are also interesting, are the differences between cases received and disposed.

    For the first 3 months of FY2009, the USPTO received 2,888 appeals but only disposed of 1,171.

    This means the backlog grew by 1,700 appeals in just 3 months (with the real backlog much greater than that).

    What I think will be the eventual (positive) result of this huge backlog at the USPTO is that the APJs at the BPAI will soon tire of doing a “second examination” for the examiner so as to affirm rejections. It is far easier for the APJ’s to reverse than it is to affirm.

    My hope is that the BPAI will start remanding analysis-deficient rejections back to the examiners and start looking for ways to agree with applicants.

    Even with all the hiring the BPAI has done, they are still getting woefully behind. With a disposal rate at about 400/month going back 15 months, the USPTO is now 14 months behind. However, when the undocketed appeals are considered, they are probably well over 24 months behind.

    I wouldn’t be surprised if a reply brief filed today doesn’t get a decision until 3 years from now.

  123. 60

    “2) Receive Examiner’s Answer (2 month deadline — no extension)”

    The 2 months here is the time for applicant to respond to the Answer. The rules do not impose any particular time for the office to provide an Examiner’s Answer.

  124. 59

    “Has productivity gone up that much in the last 4 hours?) Of course, this is based on the rate of a “lowly 9″, so the total output must be significantly higher.”

    I decided to use numbers that more closely approximate reality rather than giving you freebies.

    “raising the question of why only 8 actions per bi-week); ”

    Just fyi, I do around 4-5 counters and around 3-4 finals per bi week. I still don’t understand how this happens since I’ve only had to do 2 or 3 2nd action nonf’s in my entire career. I should be down to 3 counters, and 3 finals per bi week by now. And then adding in a 4th counter is easy and should make for a promo. WHERE THE F DO ALL THESE FINALS GO? It isn’t to appeal I can assure you of that.

    Then on to the reasons: Because even “pure crp” applications come with deps. And because “pure crp” applications still like to make me address loads of bs arguments, AND file an AF with some bs as well. And also because even the “purest crp” of an application in my art is about 50x less “pure crp” than, for instance, a fishing pole case. Finally, because even the “purest crp” of all of them still are supposed to be thoroughly searched.

    I’m going to go do another final or something so maybe I’ll be ahead next week. ttyl

  125. 58

    “Ok, I’ll trade you that for a requirement for applicants to respond with something besides nonsense to an OA.”

    We have that. It’s called Rule 111.

    “Sure, 1. OPQA is bs.”

    Thanks. Now tell me something I don’t know.

    “Why do you bother asking?”

    Honestly, I don’t know. Or in 6k-speak, aka baby talk, OMG, IDK!!!!!!

    “Fyi, Darling, here I am on October 30th attempting to calm the squawking chickens”

    Thanks, Malcolm. I actually predicted that J. Cacheris would enter the injunction. I can get you some affidavits from some of my colleagues if you need them.

    But to be honest, when he returned from chambers and took his seat and the first words out of his mouth were, “I’m going to enter the injunction” I admit I was as surprised as anybody.

    Well, maybe not as surprised as all of the PTO (mis)managers who were also in the court room, but pretty surprised.

    Thanful. But surprised.

  126. 57

    “Now, we say, a given examiner produces y actions in a given year. Using numbers from myself, a lowly 9, instead of a 12 we get 8 per biweek (avg) * 26 biweeks total = 208.”

    OK, so your 6000 examiners produce 1.248 million actions a year. (It’s interesting that your earlier example used a productivity figure of 120 actions per year per examiner. Has productivity gone up that much in the last 4 hours?) Of course, this is based on the rate of a “lowly 9”, so the total output must be significantly higher.

    Many of the applications are cr*p, and can be disposed of with a 10-second Google search (raising the question of why only 8 actions per bi-week); these applications are thus disposed of with a single action. The rest are either properly searched and allowed or abandoned, typically by the second and “Final” Office Action. (Otherwise, we wouldn’t call it “Final,” amirite?) So, the average number of actions per application should be less than 2, but we’ll say 2. Thus, you should be disposing of more than 624,000 applications per year. How come the backlog is growing?

  127. 56

    “Guess you missed the part where I explained that he got those numbers from FOIA requests.”

    We’re taking his word for them until I actually see the docs.

    “So how is it that sampling 4% of about 50% of all applications lets PTO (mis)management claim “record breaking quality”, but acknowledging that about 80% of all appealed cases, which you’ve calculated to be 2.4% of ALL applications, are so terrible that the examiner is told to start all over again doesn’t represent a very serious problem?

    Can you explain that?”

    Sure, 1. OPQA is bs. 2. OPQA is lighter on us than attorneys are, and this is for a number of reasons. The foremost reason is that OPQA gets hardly any time to review the case, and more than half of that goes into re-searching. Since most errors are not prior art that the OPQA person found within the examiner’s search scope, that means OPQA has a pathetic amount of time to review the case.

    Also, OPQA isn’t out to make techincality nit picking into a job. A good many of the arguments I get are things like, “well this tech wouldn’t work with this tech because temperatures are off etc”. And those kinds of things will get an appeal filed, (and maybe a reopen) but OPQA couldn’t give much of a rat’s arse about making them.

  128. 54

    “Also, I’ve heard 6k just fills in the Request for Reconsideration section in the Advisory Action with “LOLOLOLOLOLOLOLOLOLOLOL””

    Now THAT is an IDEA!

  129. 53

    “Now try to imagine what the backlog at BPAI would be if the examiners were required to answer every brief with an examiner’s answer.”

    Ok, I’ll trade you that for a requirement for applicants to respond with something besides nonsense to an OA. Or else they get a notice of non-compliance for not having properly addressed the merits of the rejection, then the app likely goes abandoned with no chance of revival. And to establish that they responded with nonsense (if they come back assuring us that what they said was not nonsense) then I get to take them to the board and CAFC. The overall backlog (and of course the bpai backlog also) might be cut in half within a year if we put those two requirements into effect.

  130. 52

    Lowly writes “If you make an argument for the first time in a response after final, you will have to file a RCE to get the examiner to actually read it. That’s not how it should be, but that’s how it is.”

    Agreed, quite the sham.

    Also, I’ve heard 6k just fills in the Request for Reconsideration section in the Advisory Action with “LOLOLOLOLOLOLOLOLOLOLOL”

  131. 51

    “…based on some unofficial numbers by Boundy”

    Guess you missed the part where I explained that he got those numbers from FOIA requests.

    Typical. Just ignore the parts you can’t find or rebut with actual facts or that doesn’t jibe with the answer you’ve been told to give no matter what.

    You’re Mr. Doll’s model examiner.

    “2.4% of all actions are appealed!”

    As I explained to you, PTO (mis)management samples about 4% of allowed applications (which according to them is now about 44% of all applications filed, but is really about 55-60% when you take out RCE’s as “disposals”) and claims that their 3.6% error rate, or whatever they claim it is, indicates “record breaking quality.

    So how is it that sampling 4% of about 50% of all applications lets PTO (mis)management claim “record breaking quality”, but acknowledging that about 80% of all appealed cases, which you’ve calculated to be 2.4% of ALL applications, are so terrible that the examiner is told to start all over again doesn’t represent a very serious problem?

    Can you explain that?

  132. 50

    “I’m going to tell you a little story about an appeal response I had to make.

    Well, copying and pasting in the last action, along with putting in a whole new actions worth of explanation to make sure no judge could possibly go awry, complete with detailed figures etc, I left in two lines saying that claims 19 and 20 were still rejected after app cancelled them in his AF that I accepted into the record (I had taken 19 and 20 out of the heading). OOOOO sht no I DID NOT SAY SOME CLAIMS WERE REJECTED THAT ARE CANCELLED!!11!!!!!! Replies the docketing guy. So, I fix the action, hand it to my old spe, and he’s supposed to have it scanned in to replace the old one. Long story short, last week I sent the third copy that doesn’t have claims 19 and 20 rejected to my new spe, and it just showed up in my returned tab in OACS because nobody but the docketing guy knows why in the he ll anyone would possibly care if I rejected 2 claims that are cancelled and don’t know how to fix it even if it did need to be fixed. ”

    Cliff Notes: the PTO is just as unreasonable and ridiculous to its own employees as it is to applicants. Somehow, this doesn’t shock me.

  133. 49

    “There is so much misinformation here I almost don’t even know where to begin.”

    I have this same thought when I look at most OAs these days – which is why I find myself recommending appeal at a ‘skyrocketing’ rate.

  134. 48

    I just had an examiner call me and indicate he’s allowing a case of mine. He wanted permission to enter a small examiner’s amendment (a nothing amendment, really), which I gave him.

    Nice to know things still work as they should on occasion ;)

  135. 47

    “Although I’ve had docketing notices issued within a couple months of filing the Reply Brief … on average it is taking at least 12 months, and I’m starting to get some that are 15 months and older.”

    I’m going to tell you a little story about an appeal response I had to make.

    Well, copying and pasting in the last action, along with putting in a whole new actions worth of explanation to make sure no judge could possibly go awry, complete with detailed figures etc, I left in two lines saying that claims 19 and 20 were still rejected after app cancelled them in his AF that I accepted into the record (I had taken 19 and 20 out of the heading). OOOOO sht no I DID NOT SAY SOME CLAIMS WERE REJECTED THAT ARE CANCELLED!!11!!!!!! Replies the docketing guy. So, I fix the action, hand it to my old spe, and he’s supposed to have it scanned in to replace the old one. Long story short, last week I sent the third copy that doesn’t have claims 19 and 20 rejected to my new spe, and it just showed up in my returned tab in OACS because nobody but the docketing guy knows why in the he ll anyone would possibly care if I rejected 2 claims that are cancelled and don’t know how to fix it even if it did need to be fixed.

    That appeal will have taken awhile.

  136. 45

    Dennis, do you agree with pds’ statement that “Bottom line, the numbers are far worse than Dennis’ chart makes them out to be.”?

  137. 44

    “I admit that I was partially wrong in the comment you posted.”

    Like I said, you’re funny. Not very serious, but funny.

    “That is why I, as Oct 31 approached, I did not panic. There was simply no way that anyone was going to be held accountable to them, at least as of that date.”

    What color is the sky in your world?

    But yes, the jury is still out.

    Actually, I will predict that Congress will actually pass “patent reform,” including such nonsense as AQS’s, fee setting authority for the PTO, damage apportionment, etc., before PTO (mis)management can actually write a rule package that would pass judicial scrutiny.

    pds is dead on. The delay in getting cases docketed at BPAI is horrendous. Regardless of whether it’s intentional, or the result of incompetence, it’s horrendous.

    “2) Receive Examiner’s Answer (2 month deadline — no extension)”

    While this is supposed to be true, it practice it is not. I currently have a couple (maybe more) briefs that were docketed to the examiners more than two months ago and have not been acted on yet.

  138. 43

    JD says: But blah blah blah, the percentage we’re looking at is bigger than you think! Ok JD let’s the the math for realz.

    6000 in one year

    6000=.20*x, x=30000 (total appeals filed based on some unofficial numbers by Boundy, but we’ll accept because we believe him)

    Now, we say, a given examiner produces y actions in a given year. Using numbers from myself, a lowly 9, instead of a 12 we get.

    8 per biweek (avg) * 26 biweeks total = 208.

    144 examiners out of 6000 perform 30k actions in a year. Now, you’ll take issue with my throwing in some FOAMs to get 8 avg. But, most of my FOAMS are RCE’s now so that will do, considering we’re looking at an avg that includes 12’s in with 9’s also, so the number 208 should probably be more like 250-300 for 12’s. You cut slack on FOAMs I’ll cut slack on the 12’s. Fairly even.

    144/6000=.024=2.4%. 2.4%(and maybe we say 5% with preappeals). This number is probably artificially high still by a factor of .8 or so, but we’ll let it go.

    2.4% of all actions are appealed! OMFG OMFG, up from 1.2% OMFG OMFG! War of attrition blah blah!

    Bottom line: Really small numbers of actions have this happen. It would be nice if D would post something meaningful to put this in perspective for people before they take the sensationalistic headlines to mean there is something severly amiss.

    “You are way off on the pay at least for the judges who have to have a law degree. Judges are on the AL scale – which tops out at 163K including locality adjustment. Though there is some bonus not included for performance.”

    Ok ok, I said iirc, and you can look it up. If +17k is wayyyy off so sorry. Still, you know they’re on the take ;)

  139. 42

    curious: The problem I’ve noticed (and already commented on) is that the incremental trivial amendments are becoming less and less effective, causing applicants to bleed and die patent-scope-wise by a thousand cuts. It now appears that appealing is becoming more and more appealing.

  140. 41

    “Typical patent prosecutor: when in doubt, PANIC PANIC PANIC PANIC!!!!!!!”

    From someone who obviously didn’t read the rules or doesn’t care about his client’s money. Had you read (and understood) the rules, you would have realized that the Appeal filed on December 10th was going to cost 40%+ more than an Appeal filed on December 11th.

    I guess if you don’t like you clients, you wouldn’t overreact. However, if I recall correctly, you have clients that ask you to do unethical things … so perhaps I’ll have to give you a pass.

  141. 40

    As someone with a fair bit of experience at the BPAI, the numbers being quoted by Dennis GROSSLY understate the number of appears being filed for the following reasons:

    1) The numbers are for appeals that actually reach the BPAI.
    2) MORE IMPORTANTLY, the USPTO is running about a 12 month behind in terms of getting appeals docketed.

    For those unfamiliar with the process:
    1) File Appeal Brief
    2) Receive Examiner’s Answer (2 month deadline — no extension)
    3) File Reply Brief
    4) Reply Brief noted by examiner
    5) Appeal docketed with the BPAI
    6) Decision rendered.

    Steps 5) & 6) are merely clerical. Examiners extremely rarely respond to a Reply Brief. As such, after the Reply Brief has been filed it shouldn’t take any longer than 1 or 2 months for the appeal to be docketed with the BPAI. Actually, if the USPTO was really efficient, it should take more than a few days — most of being used for the examiner to consider the Reply Brief.

    Although I’ve had docketing notices issued within a couple months of filing the Reply Brief … on average it is taking at least 12 months, and I’m starting to get some that are 15 months and older.

    Simply put, the BPAI is artificially understating the vast increase in appeals being filed by not docketing them in a timely manner.

    By comparison, a year ago it only took, on average, about 3 months to get an appeal docketed after a reply brief being filed.

    Bottom line, the numbers are far worse than Dennis’ chart makes them out to be.

  142. 39

    SF says: “Because the difference in claim scope isn’t worth the delay or expense of an appeal or because the client doesn’t want to pay for an appeal, but will pay for a response and RCE. RCE’s with incremental/trivial amendments are often taken as an alternative to appealing.”

    I agree

  143. 38

    “Let me guess, you knew all along that the rules were going to be enjoined on October 31, the day before they were supposed to go into effect.”

    I admit that I was partially wrong in the comment you posted.

    But October 31 was some ways away and well before that time I learned that the “rules” were incomprehensible and internally contradictory. That is why I, as Oct 31 approached, I did not panic. There was simply no way that anyone was going to be held accountable to them, at least as of that date.

    Likewise, I yawned my through the CAFC’s moment of truth, never worrying for a moment that the rules would somehow become retroactively enforced.

    As for my claim that “rules or rules very similar to them are going to be enacted”, well, the jury is out on that one, isn’t it JD?

  144. 36

    “What a waste. Keep your lids on, peeps. Those rules were DOA, sort of like Sarah Palin.”

    Let me guess, you knew all along that the rules were going to be enjoined on October 31, the day before they were supposed to go into effect.

    Here’s your posting from August 23, 2007 at 1:48 PM on Dr. Tafas’s suit.

    “By the way, since some folks here are prone to label certain commenters as ‘serious’ and others as ‘unserious’ let me make a prediction: this lawsuit isn’t going to get very far and, in any case, these rules or rules very similar to them are going to be enacted.

    I’ve already made enough accurate predictions about case law decisions to establish my credentials as a serious person. I don’t believe I’m going out on a limb with this prediction. Dennis is right. I’m right.

    All the rest is whining, not unlike the whining you’d hear from a junkie when you separate him from his stash.”

    You’re too funny. Not very serious. But funny.

  145. 35

    “reminds me of the big jump in continuations filed before the new claims/continuation rules were to take effect — just what the rules were designed to prevent — very ironic”

    I remember watching some attorneys running around, freaking out, and freaking out their clients about how these cons just HAD to be filed.

    What a waste. Keep your lids on, peeps. Those rules were DOA, sort of like Sarah Palin.

  146. 34

    reminds me of the big jump in continuations filed before the new claims/continuation rules were to take effect — just what the rules were designed to prevent — very ironic

  147. 33

    “So filing a brief before a rule change to save some time and expense is panic?”

    sounds like it may be good lawyering to me.

  148. 32

    the number of bpai judges needs to be increased dramatically and immediately for reasons which have been posted on this board.

  149. 31

    “Just curious – what are the typical qualifications necessary to serve on the BPAI, and what does the job typically pay?”

    “I know several spe’s recently made the move up, and I don’t think either of the two I know personally had law degrees so that should give you a decent idea. As to pay … 180k? iirc.”

    “You are way off on the pay at least for the judges who have to have a law degree. Judges are on the AL scale – which tops out at 163K including locality adjustment. Though there is some bonus not included for performance.”

    “You might be talking about the recent hires the BPAI has done at the patent attorney level for the BPAI judges – glorified clerks Most of those are hired at GS-14 and can move up to GS-15 depending on their production requirements i.e. how many opinions they draft for the judges to review – that tops out at 153K. Some of them aren’t lawyers but have spent a considerable time as Examiners.”

    There is so much misinformation here I almost don’t even know where to begin.

    1. A law degree is REQUIRED to serve on the BPAI or to become a patent attorney (clerk for the BPAI).

    2. BPAI judges do NOT get bonuses. As a result, most SPEs get paid more than BPAI judges. Most APJs make 162900. Most SPEs make high 160s. Although APJs get a larger pension because the pension benefit is based on base pay.

    3. Typical qualifications of APJs already serving on the BPAI are: (1) they were SPEs; (2) they have a law degree; and (3) they have a pulse. Typical qualifications for new APJs are: (1) have a law degree and a technical background; and (2) serve as a patent attorney (clerk) for the BPAI. The patent attorney or clerk positions are basically now used as a training ground for the BPAI to weed out the bad apples.

  150. 30

    “We went from what? .1666666% of all cases being appealed to what? .175555%?”

    “If my math is somewhere near correct…”

    Your math skills are as poor as your reading comprehension.

    As Dennis’s post reveals, “[i]n FY2008 (ending Sept 30, 2008), the BPAI received over 6,000 ex parte appeals– concluding two consecutive years of over 35% annual growth rate in appeal filings.”

    So what does it mean that the BPAI “received” an appeal? What that means is that the appeal was briefed, and the examiner answered, and the appeal was actually assigned an appeal number. If the examiner re-opens, or if BPAI remands prior to the appeal number being assigned, then the appeal was not received.

    As your beloved PTO (mis)management acknowledges, 50+% of pre-appeals result in reopening. As David Boundy’s analysis reveals, based on data obtained through FOIA requests, 80% of cases that are appealed are never “received” by BPAI because the examiner re-opens, or BPAI remands. So if the 6,000 appeals that are received represents the 20% that managed to run the gauntlet of “appeal-reopen-appeal-reopen-appeal-reopen-etc.” what is the total number of cases that are appealed (i.e. a Notice of Appeal is filed with a pre-appeal request and/or Appeal Brief)?

    Do the math. It’s about 30,000.

    Now try to imagine what the backlog at BPAI would be if the examiners were required to answer every brief with an examiner’s answer.

    The notion that the (now on hold) BPAI rules are designed to allow BPAI to more efficiently process appeals is once again nothing more than Orwellian Newspeak from the PTO. The rules are designed to discourage appeals. Plain and simple.

    “The BPAI reports that in the period of Sept-Dec 2008, it received an average of 954 ex parte appeal cases per month. That value is well more than double the monthly average for the same span in 2007.”

    I guess a doubling in the number of appeals that are received is not skyrocketing in your mind.

    Maybe it isn’t. Who knows?

    “Typical patent prosecutor: when in doubt, PANIC PANIC PANIC PANIC!!!!!!!”

    So filing a brief before a rule change to save some time and expense is panic? That’s a rather silly position. Even for you.

  151. 29

    Malcolm,

    Your logic capabilities are approaching the level of 6’s.

    “”Prosecution has become a war of attrition, and innovation will suffer for it.”

    Innovation won’t suffer. But patent prosecution law firms will suffer…”

    In a war of attrition, there is MORE prosecution, not less. The attorneys make MORE money, not less. There will NOT be a glut of unemployed attorneys.

    If you were really an attorney, you would probably not need this spoon fed to you.

  152. 28

    “Prosecution has become a war of attrition, and innovation will suffer for it.”

    Innovation won’t suffer. But patent prosecution law firms will suffer, and so will bogus technology companies who file reams of applications but never actually develop a gddamn thing yet somehow manage to attract venture capitalists.

    The public, for the most part, will notice nothing except for a glut of unemployed attorneys.

  153. 27

    “If you make an argument for the first time in a response after final, you will have to file a RCE to get the examiner to actually read it. That’s not how it should be, but that’s how it is.”

    another good point

  154. 26

    “If the Examiner is adhering to an unreasonable position, why would you file an RCE.”

    Because the difference in claim scope isn’t worth the delay or expense of an appeal or because the client doesn’t want to pay for an appeal, but will pay for a response and RCE.

    RCE’s with incremental/trivial amendments are often taken as an alternative to appealing.

  155. 25

    6,

    You are way off on the pay at least for the judges who have to have a law degree. Judges are on the AL scale – which tops out at 163K including locality adjustment. Though there is some bonus not included for performance.

    You might be talking about the recent hires the BPAI has done at the patent attorney level for the BPAI judges – glorified clerks Most of those are hired at GS-14 and can move up to GS-15 depending on their production requirements i.e. how many opinions they draft for the judges to review – that tops out at 153K. Some of them aren’t lawyers but have spent a considerable time as Examiners.

  156. 24

    The Patent Office likes draconian solutions so I propose the following.

    If my application is finally rejected and I do *not* file an RCE or appeal to BPAI:

    1. I get all my money back from the Patent Office;

    2. The Examiner gets no counts at all;

    3. I get all my money back from my patent attorney;

    4. If my application has been published I do not have the option of keeping my invention a trade secret so I get USD 1M from the Patent Office.

    { Raising shields, polarizing the deck plating}

  157. 23

    The Patent Office likes draconian solutions so I propose the following.

    If my application is finally rejected and I do *not* file an RCE or appeal to BPAI:

    1. I get all my money back from the Patent Office;

    2. The Examiner gets no counts at all;

    3. I get all my money back from my patent attorney;

    4. If my application has been published I do not have the option of keeping my invention a trade secret so I get USD 1M from the Patent Office.

    { Raising shields, polarizing the deck plating}

  158. 22

    If you make an argument for the first time in a response after final, you will have to file a RCE to get the examiner to actually read it. That’s not how it should be, but that’s how it is.

  159. 21

    SF wrote

    “I agree with 123 and I’ve seen more people doing the same thing: preparing a thorough response that can be (and has been) copied and pasted into an appeal brief. Under the older appeal rules, this is a somewhat cost-comparable alternative to filing a first amendment, a second amendment with an RCE. and then a third (and even a fourth) amendment.

    “If the new rules ever kick in (where I think you have to have pinpoint cites to prior uses of all the arguments you make on appeal), we all will have to start preparing arguments instead of merely amendments.”

    I don’t understand this. If the Examiner is adhering to an unreasonable position, why would you file an RCE. I only amend claims when I believe the claims should be amended or when I consider it trivial to do so (e.g., “non-zero” angle).

    Appeals and RCEs are not simple alternatives. In my Venn diagram there would not be a lot of overlap where I could use either.

  160. 20

    The number of appeals may seem small compared to the number of rejections, but realize that a lot of clients simply capitulate rather than shovel more money into the black hole that the PTO has created. The new appeal rules will further increase the cost and so should reduce the number of appeals, but then that’s the whole point isn’t it? Prosecution has become a war of attrition, and innovation will suffer for it.

  161. 19

    “D, PLEASE add in some numbers so that people get a feel for the number of cases out of THE WHOLE that you are talking about. Most are too focused on the “Skyrocketing” to realize wtf this stuff really means.”

    I guess the question is whether the PTO is prepared to efficiently deal with the increase in absolute numbers of appeals being filed. If the numbers keep increasing as they did towards the end of last year, I imagine some shifting of PTO resources will be required. Or maybe the PTO will just put the appeals in a big pile and sloooowwwwwwwly work their way through them without shifting any resources.

  162. 18

    “Just curious – what are the typical qualifications necessary to serve on the BPAI, and what does the job typically pay?”

    I know several spe’s recently made the move up, and I don’t think either of the two I know personally had law degrees so that should give you a decent idea. As to pay … 180k? iirc.

  163. 17

    OMG 900-1000 cases were appealed over the course of a whole month. The sky is falling!

    Oh, but wait, in 1 month, around 90 (probably around 70, but I’ll give you a few) examiners did 900 actions. Why, the equivalent of the output of 90/6000 examiners actions were appealed!

    OMFG ROFLMAO! The sky is falling! The sky is falling!

    So JD, you remember we were talking about the percentage of OA’s filed? There you have your number. Around 90 6000th’s.

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLLOLOLOL

    Maybe when that number gets up to a whole percentage point we should talk.

    If my math is somewhere near correct, we’re at almost 1/6 of 1% of actions being appealed. Factor in that we should really only consider finals, and you might get up 1/3 of 1%.

    Congrats guys, you’ve really shown a light on this horrible injustice, such that it really is.

    “I appeal in a significant number of cases and have had a lot of success; ”

    A whole 1% of your cases or what?

    We went from what? .1666666% of all cases being appealed to what? .175555%?

    SKYROCKETING NUMBERS! Lololololol.

    Dear god this sht is funny.

    D, PLEASE add in some numbers so that people get a feel for the number of cases out of THE WHOLE that you are talking about. Most are too focused on the “Skyrocketing” to realize wtf this stuff really means.

  164. 15

    “We need to get behind Wm Smith, David Boundy and others who have taken a strong position against these BPAI rules and prepare for more legal action”

    Is there a link somewhere where I can donate using my PayPal account?

  165. 14

    ” I have spoken with several patent attorneys who intentionally filed appeal briefs early in order to beat the December 10 deadline. ”

    Typical patent prosecutor: when in doubt, PANIC PANIC PANIC PANIC!!!!!!!

  166. 13

    Just curious – what are the typical qualifications necessary to serve on the BPAI, and what does the job typically pay? No, I’m not looking to make a job move. I’m just curious.

  167. 12

    are those statistics for docketed appeals or the many more notices/briefs that are not docketed when prosecution is reopened?

  168. 11

    “If the rules truly are onerous, then we may see a drop in appeals once they become effective.”

    Yes, Dennis, that’s the whole point of onerous rules.

    “If”?? Read them. The new BPAI rules are Halloween II, put in place to staunch the tide of appeals that was sure to result from Halloween I, the continuation rules.

    And did you say “once they become effective”? Let’s hope they don’t. Practitioners need to review the new proposed BPAI rules even tho’ they are on hold. There are serious personal consequences for practitioners written into the rules for those who screw up. Like a malpractice suit for getting the appeal deep-sixed.

    We need to get behind Wm Smith, David Boundy and others who have taken a strong position against these BPAI rules and prepare for more legal action, including an avalanche of amicus briefs when the case reaches Cacheris.

    These proposed rules are more disingenuous and dangerous than the continuation rules.

  169. 10

    On a related note, Obama has seemingly named Cass Sunstein as the next head of OIRA at OMB. I believe it is the current ORIA head, Susan Dudley, whom we have to thank in part for stalling the proposed BPAI. Hopefully Sunstein will be equally thoughtful.

  170. 9

    EG and JohnG are both right. Given the system as it is, the pre-appeal review is frequently the way to go. However, it shouldn’t be necessary nearly as often as it is. By preventing some of the more atrocious rejections from getting to appeal, I think it tends to mask the extent of examination problems. And I wonder whether the existence of this “safety valve” encourages examiners to defer a serious examination until after it is apparent that the applicant is ready to fight…

  171. 8

    Perhaps this jump in appeals is in response to the USPTO’s new strategy of making ridiculous rejections. I’ve never seen so much contemptuous handwaving as in the the past four or five months.

  172. 7

    I agree with what 123 and SF say about appeals. Regarding what JG says about pre-appeal review requests, I don’t agree. If you want to point out formal defects in the Examiner’s rejections (often true), this is the place to do it. And if the panel conference “whitewashes” the request, another arrow to shoot in the appeal brief.

  173. 6

    I agree with 123 and I’ve seen more people doing the same thing: preparing a thorough response that can be (and has been) copied and pasted into an appeal brief. Under the older appeal rules, this is a somewhat cost-comparable alternative to filing a first amendment, a second amendment with an RCE. and then a third (and even a fourth) amendment.

    If the new rules ever kick in (where I think you have to have pinpoint cites to prior uses of all the arguments you make on appeal), we all will have to start preparing arguments instead of merely amendments.

  174. 5

    patent drafter,

    There should be no pre-appeal brief conference request at all. The existence of this “route” is simply a sign of failure at the PTO. Remember also that this is Jon Dudas’ baby. Let’s throw it out with the putrid bath water. Make them do their job, which includes fixing the problem at the right time, that is, before finalizing the application.

  175. 4

    I appeal in a significant number of cases and have had a lot of success; I even tell clients that they should expect to have to appeal in order to get meaningful protection. I draft my response to a first Office Action so that I can cut and paste it into an appeal brief, because it seems to me that if you make your best arguments in that first response, and the Examiner unreasonably finds them “unpersuasive”, then filing an RCE to continue arguing with the same Examiner is a waste of time and creates more PHE than is necessary.

  176. 3

    I would’ve thought the spike would be greater back when the continuation rules were proposed. I personally thought it would’ve been malpractice to file an RCE at that point on an original application with its first final office action.

  177. 2

    Often, clients want to file an appeal because the process guarantees an application will be removed from an examiner who intransigently adheres to an overbroad interpretation of claims and an implausible characterization of prior art teachings.

    Unfortunately, the “substantial evidence” standard for BPAI review means that the examiner’s “factual” findings re: prior art teachings (and claim scope? – whether or not the claim scope really is a question of fact) won’t get a de novo review. Thus, the appeal process is likely to be disappointing – unless two APJs, or the SPE, can be convinced that the examiner has made a _really_ egregiously wrong finding of fact, or has screwed up the legal standard for obviousness or anticipation (since legal arguments do / should get de novo review).

    The SPE involvement is my main reason for recommending a Pre-Appeal Brief Request for Review, where the client can summarize contentions of fact for consideration by the examiner’s peer and supervisor. If the PABRR doesn’t swing the app back into prosecution, filing an Appeal Brief seems more often than not to be an obligatory due-diligence step with low chance of success.

    Just some thoughts from a n00b.

  178. 1

    An interesting study may be one asking the applicants exactly why they are making so many appeals – aside from beating the onerous change, why do applicants feel that this path is the one being chosen?

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