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.
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.
“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.
“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
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.
It is a no-brainer, drastically increase the size of the Board to handle the increase in new filings.
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.
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.
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.
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.
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.
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.
“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.
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
This thread is more stale than the pretzels under the cushions of President Bush’s couch.
is there a patentlyo article on the fedcir 12/23/08 decision in Ricoh v. Quanta?
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
“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.
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.
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?
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?
“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.
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.
“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.
“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.
” am still of the position that 802.01 is very awkward. ”
USPTO restriction practice is a joke.
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.
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?
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.
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.
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.
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.
Max
US restriction requirements have always been a mystery to me. I cut and pasted the post above without comment on purpose…!
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.
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.
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.”
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.
“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.
“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.
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.
“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.
“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).
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.
“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.
“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.
If you want to protect your identity use a TypeKey/TypePad account.
> 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.”
“…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.
I changed my mind. I’m BAAAAAAAAAACK!!!!!!!!!!!!!!!!
Posted by: pds | Jan 11, 2009 at 12:20 PM
======================
6 impersonating pds
“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.
I changed my mind. I’m BAAAAAAAAAACK!!!!!!!!!!!!!!!!
Nudes?
“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.
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
“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.
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?
The crap seems to coming from JD. Man-up and fix your resume already!
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.
darling’s resume is irrelevant to the topic at hand, let’s move on
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.
“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.
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.
> 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.
> 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.
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.
“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
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.
“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.
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.
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.
” 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.
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
“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?
“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.
“All directions will be capped.”
Have you tried amending your claims?
[pours self two shots of Beam on the rocks]
Dear Capped Off — I believe that the fees applicants and patentees pay the PTO including maintenance fees makes the PTO self-sufficient.
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.
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.
“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.
“”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.
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.
“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.
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?