Understanding the Role of the Board of Patent Appeals: Ex Parte Rejection Rates on Appeal

6a00d8341c588553ef0115704a8ff5970c-pi[1] By Dennis Crouch     PDF Version of the Article

Abstract:

This study provides an issue-by-issue analysis of decisions on ex parte appeals by the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO). All the cases in this study were appealed to the BPAI after one or more of the pending claims were rejected by a patent examiner. 

In the study, I report that most BPAI appeals focus on two or more issues. Of those, the majority of issues (61%) are affirmed and the remainder reversed. When more issues are presented, the case as a whole becomes more likely to be affirmed-in-part. In addition, I find that the likelihood that a case is affirmed has increased over time (Jan 2008 – May 2009).

By far, the most common issue on appeal is obviousness. I find that 87% – 90% of ex parte BPAI decisions decide an issue of obviousness. Only 4% of appeals consider neither obviousness nor novelty. The major aberration of this trend is for cases involving biotechnology and organic chemistry (TC 1600). 18% of BPAI decisions arising from TC 1600 focus on issues other than obviousness and novelty.

In comparing results by issue, I find that obviousness rejections are more likely to be affirmed than are other types of rejections. Most cases (74%) that discuss neither obviousness nor novelty are reversed.

The BPAI is becoming increasingly important. Over the past several years, the BPAI has seen a dramatic rise in the number of appeals being filed. In addition every recent patent reform legislative proposal has included an increased role for the Board.

    132 thoughts on “Understanding the Role of the Board of Patent Appeals: Ex Parte Rejection Rates on Appeal

    1. 132

      “While puffing on a cigar clenched between his fat, stubby fingers and and blowing smoke in my face while laughing and goading me to appeal it.”

      Legitimate.

    2. 131

      “how would the examiner reject such a claim?”

      While puffing on a cigar clenched between his fat, stubby fingers and and blowing smoke in my face while laughing and goading me to appeal it.

      Granted, a lot of Exmainers take their jobs seriously, but there have been some real stinkers over the years.

    3. 130

      broje,

      That is tragic. I am curious – how would the examiner reject such a claim?

      Would it help to remind the examiner that independent claims cover the scope of dependent claims, so their “single point of patentability” covered in the independent necessarily already covers the dependents?

    4. 129

      I’ve also had more than one Examiner tell me over the phone that he would not search the subject matter in one or more of the dependent claims unless I amended the claims to move those limitation(s) into the independent claim(s). I have been told point blank that they will only consider one point of patentability per Office action. And everything I have seen in prosecution supports the presumption that most, perhaps all, Examiners are enforcing this rule.

    5. 128

      6,

      “Also, how do you guys know that examiners aren’t already searching the unclaimed subject matter?”

      reading comprehension – to wit:

      “Examiners search and examine what is *claimed*, NOT what is *disclosed*.” – Posted by: whatsupbitches? | Jun 25, 2009 at 08:54 PM

    6. 127

      “And remember, the Exmainer is supposed to read the specification and interpret the claims reasonably in light of the specification. But that’s not happening.”

      Start drafting apps with one claim then. Problem solved.

      “The first search should cover the invention as described and claimed, including the inventive concepts toward which the claims appear to be directed. It should not be extended merely to add immaterial variants.”

      Anything not in the claim is an immaterial variant though isn’t it? What happens when the claims appear to not be directed towards any inventive concepts? Are only the claims searched then?

      NEED MORE GUIDANCE!!!!!!!!!!!!!!!!!!!

      Also, how do you guys know that examiners aren’t already searching the unclaimed subject matter?

    7. 126

      Thanks “don’t bother”,

      What are the odds that “whatsupbitches?” won’t bother with MPEP 904?

      “Guidance, we don’t need no stinking guidance.”

    8. 125

      MPEP 904:

      The first search should be such that the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in the first reply, except to check to determine whether any reference which would appear to be substantially more pertinent than the prior art cited in the first Office action has become available subsequent to the initial prior art search. The first search should cover the invention as described and claimed, including the inventive concepts toward which the claims appear to be directed. It should not be extended merely to add immaterial variants.

      The second sentence says it all.

    9. 124

      But, more to the point, the Examiner is supposed to diligently search all of the claimed subject matter. Even if it is relatively easy to reject the independent claim, all too often I see the dependent claims simply disregarded. They are usually interpreted in some unreasonable way that makes it possible for the Examiner to ignore those limitations. And remember, the Exmainer is supposed to read the specification and interpret the claims reasonably in light of the specification. But that’s not happening.

    10. 123

      If an examiner is giving repeated restriction requirements, they aren’t getting any counts out of it, so they’re essentially dinging themselves (I’m not defending it, just saying that they aren’t doing it to get counts).

      NAL- you’re wrong. Your quotes say nothing about examiners having to search for unclaimed subject matter.

    11. 121

      Jules,

      I suggest that you consider what the word “principles” means.

      As far as what should be and what reality is, the moment the members of the bar stop fighting, “what should be” and “what would be” according to the Office’s agenda would simply be too painfully far apart. I would further put it that the Office “reality” that you live in is NOT reality. I don’t begrudge you your views, but when those views cannot be defended without making a mockery of Law, I will make my noise.

      6 likes to joust – I have no problems with that. Like with MaxDrei, I engage in such interactions when a point can be made. It is not always to “fix 6” – I recognize that is beyond my skill set. I’ve mentioned before when someone persists in ignorance…

      However, the 6 over-exuberance and lack of respect for the Law will be played out on occasion to reinforce the fact that 6 parrots what he has been taught (he is not clever enough to create the mindset he puts forth). Don’t think that the war is over and that the Office still doesn’t want to make up its own Law just because the Office is seeing financial difficulties.

      As for your joke, I have seen ghastly serial restrictions and even restrictions after several Office Actions out of the blue. I have even seen a new restriciton after an Appeal Decision. It is hardly a joke when the Office cannot do its job, makes power grabs and is held in such low regard.

      Mind you, I do know examiners that I respect. In fact, it is especially galling to read the crip put forth when most examiners I actually deal with are truly professional.

      You unfortunately joke about serious matters and display tendencies that mirror 6. I hope you change. And I hope you change what you consider “Success” and remember what ‘principles” mean – while rigid, the good ones are NEVER outdated.

      /off soapbox.

    12. 120

      “Remember the mid-90’s – it’s not the rejection office, it’s the patent office.” or the early 90’s or the 80’s.

    13. 119

      Noise, I believe you are too caught up in what should be, as opposed to reality. Your crusades will ultimately be unsuccessful, especially your crusade to fix 6. I just hope you learn to drop such obsessions before its too late. Successful people adapt to the reality of a situation, they don’t cling to outdated and rigid notions of idealism.

      As for your argument, maybe you’re right. I don’t care either way. My statement was meant as a joke.

    14. 118

      Jules, wrong once again.

      “That’s the examiner’s way of telling you to go away.”

      Telling the applicant to go away would be a full and accurate Office Action clearly and convincingly pointing out non-patentability.

      (repeated) Restrictions are telling the applicant to feed the examiner’s easy count addiction. In other words, keep coming back and let me get counts in an easy way.

      Mind you, examiners do make good and well-reasoned restriction requirements – I don’t mind them. However, there is absolutely NO excuse for serial restriction requirements without claim amendments that may bring such a requirement on. That just shows that the first examination was woefully insufficient, and teh examiner should get dinged in such cases.

    15. 117

      “Examiners search and examine what is *claimed*, NOT what is *disclosed*.”

      WRONG – Examiners should do their job as guided:

      MPEP 704.01 Search
      After reading the specification and claims, the examiner searches the prior art.

      Perhaps with an attitude adjustment as guided by:

      MPEP 707.07(d)Language To Be Used in Rejecting
      Claims
      “…The examiner should, as a part of the first Office action on the merits, identify any claims which he or she judges, as presently recited, to be allowable and/or should suggest any way in which he or she considers that rejected claims may be amended to make them allowable.”

    16. 116

      “one restriction/election requirement after another”

      That’s the examiner’s way of telling you to go away.

    17. 115

      JD, your proposed new “count” system in comment # 97 deserves serious consideration by the Patent Office.

      Dennis, do you have any thoughts on it?

      Examiners, what do you think?

      (I am prosecuting a very long application, a lot of cited prior art and many claims. All I get is one restriction/election requirement after another. And the case has been pending for years.)

    18. 113

      “e lower-ranked associates being a little too “efficient” in getting to allowance when the prosecution”

      probably because they narrowed the claims unnecessarily.

    19. 112

      “Of course it makes sense. Experienced Examiners who have taken 5 seconds to think about the count system realize that they can do one search, and get 4-6 counts easily. All they have to do is put the best art on the shelf, construe the claims in a ridiculous way, and reject the claims over the less relevant in the first OA. Then, when the Applicant responds, they force an RCE and pull out the better art.”

      One of the reasons Applicants are “forced” into RCEs is because they fail to claim the true inventive aspect of their invention until AFTER final rejection. Examiners search and examine what is *claimed*, NOT what is *disclosed*. Not long ago, I had an app where the independent literally read something along the lines of “A process for removing a contaminant using an adsorbent, the process comprising contacting a feedstream having the contaminant with the adsorbent”. You think it’s going to be hard to reject a claim like that? Give me a fcking break! Then you look at the spec and they disclose 10 different “contaminants” that can be removed using 20 different embodiments of the “adsorbent”. Another peave that “forces” Applicants into RCEs is overuse of Markush groups. Recently had an app where EVERY claim had Markush groups, some even three or four in the same claim. You don’t think that app is going through at least 2 or 3 RCEs? But it’s all the examiner’s fault for gaming the system right?? No, it’s the dmbass attorney’s fault for not knowing how to draft an allowable claim. It’s really not that hard ya know, as much as you’d like your client’s to believe it is. Read back a few weeks worth of comments on this board and you’ll find an attorney on here pretty much admitting that higher ups in his firm frown upon the lower-ranked associates being a little too “efficient” in getting to allowance when the prosecution could have been milked for a little more $$$ from the Applicant by filing a couple of RCEs. So who is really gaming the system?

    20. 110

      “If you’re a rejected applicant appealing to the board, guess how much your mainenance fees are? Zero.”

      So, the PTO uses the maintenance fees to “maintain” the patents it has issued?

      Or does it use them to help pay for the examination process?

    21. 109

      “Not exactly. As I said, when you get around D1 in the EPO, the case is allowed. There is no response from the EP examiner to the tune of, “Oh wait, I have these other references here that I could combine…””

      That sounds like a mighty big anecdote to me. Why worry about a tiny search? Half the cases he gets I could probably google the ind of with my eyes closed and one hand behind my back.

      In any event, hanging your hat on “the best” reference and then simply calling it a day could of course be done here as well, but we care a tiny bit about issuing valid patents. If they don’t, that’s their business. The reasoning behind our caring is of little concern so long as we care it would seem to me.

      And I’ll be sure to pick a case where I either 1. Find a better reference than the EPO’s D1 (happens all the time despite the respect you lavish upon them) or 2. there is no corresponding app.

      “Are you including maintenance fee payments?”

      If you’re a rejected applicant appealing to the board, guess how much your mainenance fees are?

      Zero.

      Appealho, nearly everyone wants to work from home. Personally I’d only do it if I wanted to move to Richmond, but, on the whole, I prefer DC now. I do miss some friends from there though.

    22. 107

      ” the Patents Business area, in conjunction with NTEU 243 and POPA, is pleased to announce a change in the requirement for Patent hoteling participants to return to the regular worksite “once a week.”

      “Hoteling” often makes it difficult for out-of-town applicants to schedule personal interviews.

      (One examiner even told me that since he works from home he is no longer available for personal interviews.)

      I would also guess that the junior examiners do not get the quality face-to-face mentoring and question answering which they used to get before hoteling.

    23. 106

      “they don’t pay but like 1/4 of the examination costs.”

      Are you including maintenance fee payments?

    24. 105

      “I think firing is a little too over the top, because the appeals guys were given too much power over the appeal as it is. They’re there to give their say in the matter, not block the matter in total.”

      They shouldn’t have any say.

      And you’re right. Firing is a little too over the top. Send them all back to examining. That’s a much worse punishment.

      LOL

      “Oh, and Jd, I’ll tell you what, one of these days I’ll find a buddy of mine’s cases and search it and report back to you with some references. I’ll show you the claim, the case, and the references. Then I’ll let you tell me which one is ‘plainly’ D1 which is, perhaps let’s say a 102 or really solid primary for a 103. Then you can let me know if I don’t have at least one or more less solid 103’s. It doesn’t always happen, but chances are if I pick a random case it’ll be one where it happens.”

      Wouldn’t it be much easier to simply look at the corresponding EP and JP cases and find D1 that way?

      “Their determination of D1 is the same as my determination of which reference I think is best…”

      Not exactly. As I said, when you get around D1 in the EPO, the case is allowed. There is no response from the EP examiner to the tune of, “Oh wait, I have these other references here that I could combine…”

      Complying with Rule 104 and MPEP 707.07(g) should not be, and is not, that difficult. As Broje correctly noted, the reason examiners don’t comply is because they have an incentive not to. The only way to fix that is to change the rules to prevent re-opening and new grounds in an answer. I would also take away the Board’s ability to remand and issue new grounds. They should do what the law says they are to do: review the decision of examiners. Not examine the application themselves. Not tell the examiner to examine the case all over again from scratch.

    25. 104

      “If the “appeals specialist” is ordering you to re-open on an issue that is not in dispute, that person is grossly incompetent and should be fired.”

      That sht keeps on happening! And it really pisses me off. But what am I going to do about it? I think firing is a little too over the top, because the appeals guys were given too much power over the appeal as it is. They’re there to give their say in the matter, not block the matter in total.

      “The entire pre-appeal and appeal conference system should be scrapped. The rules should be changed to require the examiner to either 1) issue an examiner’s answer (with no new grounds); or 2) allow the application. That’s it.”

      I agree only in part ivo the complicated issues which arise.

      “European examiners do it on a daily basis.”

      I see their D1’s, and then I see second references being mentioned in the action as showing other parts of the claimed invention in a different way (and I’m not talking about them being combined in to “103” the claim). I do the same exact thing, in different form. Their determination of D1 is the same as my determination of which reference I think is best, but we nearly always have extras that show things slightly differntly. Our art dictates this is the way of things, perhaps it is different in other arts. I could see how it might be. But I still feel like it probably isn’t.

      “Here’s my prediction: when you get reversed, and you will, the moment the decision hits your inbox you’ll go running into your SPE’s office ranting, “Okay, I got these references that I want to reject with, and, and…” and your SPE will hold up his/her hand and gently tell you, “Just prepare the Notice of Allowance.” ”

      Well of course, we need the $$$. He’s the one with the signature, we can do whatever he wants to. I’ve already washed my hands of any errors we’re charged with, and feel free to leave the place anytime the office should feel itself obligated to charge me with such an error based on a decision against which I had dissented in the first instance.

      Besides, none of the cases that are on appeal before me would be the worst things in the world to issue. Except maybe one. If we had a good classification system he would be claiming a whole well developed subclass.

      In any event, we’ll never find out about your prediction since I won’t be reversed :)

      BTW D,

      USPTO Weekly:

      In accordance with Office of Personnel Management (OPM) regulatory changes, the Patents Business area, in conjunction with NTEU 243 and POPA, is pleased to announce a change in the requirement for Patent hoteling participants to return to the regular worksite “once a week.” The new requirement is that participants return to the regular worksite “twice a pay period.” This modification is effective immediately.

      This regulatory change permits the USPTO to treat the regular worksite (Carlyle Campus) as the employee’s official worksite if the employee works at the regular worksite at least twice each biweekly period on a regular and recurring basis. Leave of any sort may not be used on a regular basis to avoid this requirement.

      This increased flexibility does not alter any other program requirements, including attendance at training, attendance at meetings, and as otherwise required by the rules of your specific hoteling program. Your program coordinator will provide additional information on the new requirement to make sure that everyone understands their responsibilities.

      Patent Business managers, in coordination with Technology Center Directors, may make exceptions to the twice a pay period requirement in appropriate situations of a temporary nature, including:

      An extended approved absence from work (i.e. paid leave);
      A period in which the employee is in temporary duty travel status away from the official worksite;
      The employee is incapacitated and recovering from an injury or medical condition (i.e. extended sick leave);
      The employee is impacted by an emergency situation, which temporarily prevents the employee from commuting to the regular official worksite.

      Please note: The twice a biweekly period requirement cannot be completed in one day. Also, the PHP requirement to work at the official worksite cannot be met by working on Sundays; only one Saturday of each biweekly period may be used to fill this requirement.

      The “twice a pay period” requirement is not more restrictive than the current “once a week” standard: employees on leave for a full week will only be required to work at the regular official worksite once during the second week.

      Along with NTEU Chapter 243 and POPA, we hope that you enjoy the added flexibility created by this change.

      Oh, and Jd, I’ll tell you what, one of these days I’ll find a buddy of mine’s cases and search it and report back to you with some references. I’ll show you the claim, the case, and the references. Then I’ll let you tell me which one is “plainly” D1 which is, perhaps let’s say a 102 or really solid primary for a 103. Then you can let me know if I don’t have at least one or more less solid 103’s. It doesn’t always happen, but chances are if I pick a random case it’ll be one where it happens.

    26. 103

      “The evidence existed, and he reviewed it, and still didn’t think that way, the point being that he took a different stance than myself, my spe, and the attorney on A SEPARATE ISSUE.”

      If the “appeals specialist” is ordering you to re-open on an issue that is not in dispute, that person is grossly incompetent and should be fired.

      I read a lot of BPAI decisions and the Board does not sua sponte review examiner findings of fact that are not traversed by appellant. If the examiner alleges a feature is inherent, and the applicant acquiesces by not challenging that finding, to allow some knownothingdonothinguselessdeadweight to pull the case back from appeal is absolutely ludicrous.

      The entire pre-appeal and appeal conference system should be scrapped. The rules should be changed to require the examiner to either 1) issue an examiner’s answer (with no new grounds); or 2) allow the application. That’s it.

      “The most telling thing about this conversation is that situations like this didn’t happen to you routinely in the past.”

      Not really.

      “You must have been one of those guys who finds enough references to cover the claims and then calls it a day, doesn’t finish the subclass, or finish the search in total. If you bother to, you’ll find a whole arse ton of art for many cases. And all of them can be applied in different ways, lacking certain features, and having certain features, susceptible to combinations, and not susceptible to other combinations.”

      Again, not really. I examined according to the MPEP, for example 707.07(g) that somebody upstream was nice enough to quote.

      It doesn’t require all that much analysis to determine the best prior art. European examiners do it on a daily basis. They find D1 and they stick with it. If you overcome it, the application issues. Pretty simple.

      Not sure what it is about U.S. examiners that they can’t do something that their counterparts in Europe do with ease. Then again, there’s no Rule 56 in Europe either, yet somehow they still manage to find the best art. I guess they’re just better. PTO (mis)management has been told that for years, but they just cover their ears and cry, “Nuh uh!!!” It’s sad.

      Your argument that there are somehow an almost unlimited or infinite number of references and/or rejections you could apply is just silly. If you can’t figure out what your strongest case is, you’re doing something wrong.

      Here’s my prediction: when you get reversed, and you will, the moment the decision hits your inbox you’ll go running into your SPE’s office ranting, “Okay, I got these references that I want to reject with, and, and…” and your SPE will hold up his/her hand and gently tell you, “Just prepare the Notice of Allowance.”

    27. 102

      “Of course, that’s not true. Examiners spend an inordinate amount of time cherry picking their dockets and avoiding the “dog” (i.e. long) applications until the bitter end.”

      It only took me like 5 minutes to cherry pick me a case the other day :) It was the end of the quarter and I had the reference right beside me, I mean come on, you can’t blame me for that one.

      “Why are you waiting until the appeals conference to bring in evidence that a feature is inherent?”

      Because me, the attorney and my spe aren’t rtards that’s why. You notice that the attorney didn’t argue that particular feature. That was for a reason. In any event, that was just an example, that particular instance hasn’t happened.

      “Seems to me you should have brought that evidence in the first office action.

      Call me crazy but I think the example that you yourself just provided tends to prove exactly what I said.”

      What you just said? Are you out of your mind? Whether I brought the evidence at time of appeal or later is irrelevant to this example. The evidence existed, and he reviewed it, and still didn’t think that way, the point being that he took a different stance than myself, my spe, and the attorney on A SEPARATE ISSUE. If you’d rather me have simply used 103 combinations in the example then I could have. The inherency nonsense isn’t what is at issue and your making it an issue is telling that you just can’t handle the truth that there are plenty of valid rejections which aren’t considered “the best” but might be better for a certain human being (the appeals guy). Y

      The most telling thing about this conversation is that situations like this didn’t happen to you routinely in the past. You must have been one of those guys who finds enough references to cover the claims and then calls it a day, doesn’t finish the subclass, or finish the search in total. If you bother to, you’ll find a whole arse ton of art for many cases. And all of them can be applied in different ways, lacking certain features, and having certain features, susceptible to combinations, and not susceptible to other combinations.

      “Maybe they can take the time they otherwise spend fishing.”

      That would be up to them now wouldn’t it?

      “The point about the unitary executive is that, to an Applicant or their Attorney, it’s not about any one Examiner,”

      When you grow up and realize that it better start being about “one examiner” if you want a “perfect office” then we can talk. Don’t blame management for troubles you yourself are taking no action to fix. If enough people called the directors tomorrow about this subject then you can bet that something would change. The problem is, nobody is calling.

      I had a problem with my water utility company, so I went down to see about getting our whole building switched to another company. Lo and behold, I was not alone, and they had just changed water companies because of bs like what was happening to me.

      You’re an attorney. Complain. It’s what you do. But instead of complaining to me, and complaining by yourself, complain to people in charge, and complain with more people.

      “Applicants pay for examination, ”

      For the 100000000000th time, they don’t pay but like 1/4 of the examination costs. At those cut rate prices you should consider yourself lucky. If you don’t believe me, keep your eyes posted for the next article that mention “avg examination costs are 4.4k”. By the time they file their appeal costs, they’ve paid about 1/2 of the examination costs. Good for them.

      “This forces the applicant to invest more money to take appeal, ”

      HEAVENS NO!!!! Say it ain’t so!!!!

    28. 101

      Anon E. Moose

      707.07(g) States:
      “Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references.”

      Notice that each substantive clause is modified by the word “should” not the words “most” or “is required to.” This means that it is best if the examiner would, but does not have to, avoid piecemeal examination and that it is best if the examiner would, but does not have to, reject each claim on all valid grounds available. Is it not funny that the MPEP gives Examiners suggestion and attorneys / agents requirements regarding quality.

    29. 100

      “I have never heard of anyone doing this … presenting their best argument earlier does not make sense.”

      Of course it makes sense. Experienced Examiners who have taken 5 seconds to think about the count system realize that they can do one search, and get 4-6 counts easily. All they have to do is put the best art on the shelf, construe the claims in a ridiculous way, and reject the claims over the less relevant in the first OA. Then, when the Applicant responds, they force an RCE and pull out the better art. Then they get at least two more counts without having to do any more searching. And if they have what they think is “good, better, best” art, they can get 6 counts. Maybe that’s where “6” gets his name?

      Granted, the rules say that the Examiner must present the closest art found right away, but is it realistic to think that Examiner’s don’t cheat when: (a) they have a financial motivation to do it; and (b) can get away with it every single time?

    30. 99

      I used ‘your boss is mean to you’ as a metaphor for discord between management and the corps – which is the ultimate effect of prosecuting an appeal being professionally unrewarding to the Examiner. I really do not want to make this discussion personal, because its unfair to both of us, and unproductive.

      The point about the unitary executive is that, to an Applicant or their Attorney, it’s not about any one Examiner, or how their work compares their peers, or how work is divided among Examiners by management. That is all ‘inside baseball’, and if those are the root causes of the dysfunction in the Office, then it is ultimately a poor management issue. It may be opportunity cost to one Examiner to handle appeals, but that is a result of how management deploys its resources — the applicant paid for the Appeal, just like they paid for Examination.

      From a systemic and stategic vantage point, the issue is what Applicants are getting for their time and money invested to engage the patent process. Applicants pay for examination, and get ill-thought rejections (and in my mind, an ill-thought allowance is worth little more). This forces the applicant to invest more money to take appeal, and prepare a brief in support, at which point the Office apparently first pays attention to the quality of their work product. It does not ‘fix’ the problem of a bad rejection if a rejection that should never have been made, or at least should never have been made final, is withdrawn after appeal brief. You’ve at least doubled the prosecution cost to the Applicant, and only put them where they should have been after response to first Office Action.

      To then re-open prosecution – often with an inferior rejection to the one just withdrawn – adds insult to injury, because the time and cost are needlessly inflated, and it only protends further costs to respont to another poor rejection, again to fall on deaf ears, and preparation of yet another appeal brief, and still more expense. This also flies in the face of the directive to make the best rejections the first time (MPEP 707.07g). I see a reopening after appeal brief as an admission that the office has no confidence in the quality of the examination – wasn’t the final rejection the best at hand? If not, why make it final?

      Too bad there’s so little institutional memory at the top. Remember the mid-90’s – it’s not the rejection office, it’s the patent office.

    31. 98

      6,

      “NAL, as always that’s a good idea, but we kind of need those awesome examiners to, you know, examine…”

      Maybe they can take the time they otherwise spend fishing.

    32. 97

      “When I get to appeal conference, the appeals guy says, before even getting to the 103, hmmm, no I don’t think A was inherent in reference one. Whether or not it actually is inherent will be irrelevant if that’s what he says he thinks. Should I bring in evidence of it being inherent, he still might not think it is.”

      Why are you waiting until the appeals conference to bring in evidence that a feature is inherent?

      Seems to me you should have brought that evidence in the first office action.

      Call me crazy but I think the example that you yourself just provided tends to prove exactly what I said.

      I’ll await your overlong, rambling, back-tracking response.

    33. 96

      “Just out of curiosity what is that ‘something else’ you propose?”

      Briefly, I think each application should have a unique disposal time (i.e. the time the examiner is given to examine and dispose of the application). The time would be determined based on the number of pages in the spec and the number of drawing figures (the PTO keeps track of all of this data and charges for extra pages), the number of claims (again, something the PTO tracks), the number of references submitted in an IDS (something the PTO could easily track, if they don’t already), the number of references required in the mandatory search, or in whatever search templates they are now using or proposing to use, etc.

      Applicants pay to submit extra pages, extra claims, and IDS material at certain points in the prosecution, on the theory that “extra pages/claims/references/etc. require extra examining resources.” That’s true, of course. But PTO (mis)management has been charging those fees, collecting them, and spending them, and has never provided the examiners with what the applicants were charged and paid for: extra “resources” (i.e. time).

      I’ll now wait for the usual stooge response that such a system wouldn’t work. The usual stooge will tell you it won’t work, but won’t be able to tell you why. The only thing the usual stooge will tell you is that such a system would result in more time for some cases and less time for others, and the examiners would therefore not benefit.

      Of course, that’s not true. Examiners spend an inordinate amount of time cherry picking their dockets and avoiding the “dog” (i.e. long) applications until the bitter end. If they knew they would get an appropriate amount of time for each case, the time they spent trying to figure out how to “get their counts” could be spent actually examining.

      I also favor giving examiners less counts for continuations and RCE’s and some of the other proposals that have been floated around.

      John G. (a former examiner now a practitioner) has proposed adding an “actions per disposal” factor into the examiner’s rating. I think that’s a good idea.

      The “one time fits all” examiner production system is the major cause of the problems at the PTO. Nothing is going to be solved until it is scrapped.

    34. 95

      It seems like the appeal problem could be solved if the PTO would implement a policy where reopening prosecution a second time required director approval. I don’t know if it’s PTO-wide, but at least some of the TCs require director approval to reopen after losing an appeal. Why not do the same pre-appeal?

    35. 94

      It does if it would create PHE and you might could get the examiner to withdraw the rejection based on a weaker nonPHE creating argument.

    36. 93

      “On the other hand, I have heard of examiner’s keeping their best argument and/or their best rejection in their back pocket, only pulling it out late in the prosecution if and when they need it.”

      I have never heard of anyone doing this. Maybe they did not appreciate or recognize the best argument until they (or one of their colleagues) prepared the brief, but not presenting their best argument earlier does not make sense.

    37. 92

      On the other hand, I have heard of examiner’s keeping their best argument and/or their best rejection in their back pocket, only pulling it out late in the prosecution if and when they need it.

    38. 91

      “some attorneys saving their best arguments for the Appeal Brief” — I have never heard of anyone doing this. Maybe they did not appreciate or recognize the best argument until they (or one of their colleagues) prepared the brief, but not presenting their best argument earlier does not make sense.

    39. 90

      “It lays waste to the time and effort ($$$) spent preparing the Appeal Brief, and makes a mockery of the examination process that was supposed to have happened before the case got to that posture.”

      I’ve seen this go both ways actually, with some attorneys saving their best arguments for the Appeal Brief (don’t know why, maybe concern for PHE?) – arguments that were found persuasive by the examiner and the case allowed before their even writing the Examiner’s Answer. Thus, had such arguments been made by the attorney earlier in prosecution (which they weren’t), then all likelihood is that the case would have been allowed without need for the big $$$ Appeal Brief.

    40. 89

      “The other patent attorney at my company proposes limiting the number of office actions an examiner can make in a case that are credited to his/her productivity counnt.”

      Newsflash: That’s already how it works – examiners do NOT get any productivity counts for ANY second, third, nth, etc. non-final Office Actions. They don’t even get any counts for second-action final rejections. Thus, any “bad” rejection that has to later be “re-worked” by the examiner (e.g., by entering NEW grounds for rejection that were NOT necessitated by amendment) comes out of their own time, incidentally time that could have been put toward examining a NEW (unexamined) application and getting productivity count for an FAOM. Thus, “bad” rejections, however annoying they might be, ends up screwing the examiner in return because they’ll have to eat examining time to re-do it.

    41. 88

      Just out of curiosity what is that “something else” you propose? I personally would like to see examiners receive more training and mentoring and be held accountable in a meaningful way for bad rejections and not presenting all the rejections they could bring at once.

      The other patent attorney at my company proposes limiting the number of office actions an examiner can make in a case that are credited to his/her productivity counnt. When that magic limit is reached the examiner would be free to continue examining the case but would have to do so on his/her own time.

      Here is hoping that quality begins to improve with the changing of the guard.

    42. 87

      “Anon E. Moose said in reply to 6…
      In Re Wheeler?

      I know, I know, he only won because Newman was smuggling for him, but still, he filled out the appeal pretty well. And the appeal to the CAFC.

      You mean non-precedtial Appeal No. 2008-1215? That In re Wheeler? You’re inferring that he was pro se, and therefore didn’t have attorney costs?

      “Brent A. Capehart, Bowers Law firm, of Harrison, Arkansas, for the appellant Gary Edward Wheeler.”

      I don’t claim to be privy to the payment arrangements of between Messrs. Wheeler and Capehart – for all I know it was pro bono. Just because the applicant didn’t pay (this time) don’t mean that no one paid. Perhaps Mr. Capehart did, for his own reasons.

      And how did that case get to the CAFC before one person is a position of influence at the PTO said ‘Umm, has anyone read this claim? I do not think that word means what we think it means.’

      I did not say to the office, I said to the examiner. Put your thinking cap on padre.

      Oh, so your boss is mean to you. That’s a really poor excuse for systematically turning out crap work product to the detriment of those who pay your salary for the privilege. In discussing systemic policy matters, you should bone up on the concept of the unitary executive. Hint – you are BORG.
      Reply Jun 24, 2009 at 06:58 PM

      86Noise above Law said in reply to JohnDarling…
      I am in favor of more time – with a provision that the one-size-fits-all time allotment is eliminated. I would like to see the most knowledgeable (subject matter-wise) of the examiners form a screening and evaluation group and rank applications. Time, and perhaps cost, could then be scaled to the ranking.”

      That is my bad, I had thought I remembered Wheeler as being pro se. Either way, pro se’s do fill out the forms adequately to get the appeal docketed and buy their 2nd pair of eyes. The appeals process should be limited to the issues on appeal, then you’d see the reopening go down, right now issues just pop up out out of the conferees heads.

      As to how the Wheeler case got to the CAFC, the answer is easy. The claims were rejected in a valid manner. Newman pulled in some limitations from the spec and made a term mean something that it plainly did not mean. Good job Newman. Regardless, watch the prosecution of that case for a new rejection using the art I goggled in 10 seconds. It was remanded 4 mo ago.

      I don’t know where you got the idea I felt like my boss was mean to me. I never said that. I said that I had opportunity costs lost in appeals. And I do. Simple as that. It has nothing to do with him being mean or not.

      My work product is generally regarded as being “good” even when there might be a problem with the action. I knew about the whole “we all work on behalf of the pres” for awhile now, perhaps you’d like to fill me in on how it is relevant here.

      NAL, as always that’s a good idea, but we kind of need those awesome examiners to, you know, examine… Plus you never know, even the most complicated looking claim might just have great terms used in the claims and a simple google 102’s the whole thing in a minute. Even 60, 100, or a thousand claims can fall to one reference.

    43. 86

      “why would you re-open and reject with rejections you think are not your best?”

      We have been over this and over this. If you are currently prosecuting any cases in complex fields you already know why. If you’re not, then you should take a look at some cases from those fields, and see how all the references, might, or might not, teach a specific thing, and all of them might be teaching it in a seperate way. It’s a complicated web of limitations to be met and teachings made.

      “there’s probably “some huge problem”, or problems, with the rejections you feel are less best.”

      It depends, let’s take a device made of parts A B and C. Perhaps I feel like one reference teaches feature A inherently, and teaches B explicitly, but needs another ref to have C 103’d in. Perhaps reference two needs a 103 for feature A but teaches B inherently, but also teaches C explicitly. And finally, reference three teaches features A and C explicitly but needs a 103 to get B in, and there isn’t a great motivation, perhaps I’d have to “make up” a motiation by drawing on knowledge in the art, rather than finding an explicit motivation in the references. I like reference one because I feel like A is old in the art no matter what, I’ve seen it a million times, and it appears to be inherent in this reference, and there is a great motivation to sub C into ref one, while B is probably plainly the foundation of the inventiveness of this application. Maybe reference two has anot so great motivation to bring in A and thus is inferior to reference one, but still might make a good rejection. And then reference 3 has issues because the motivation isn’t explicit and might turn out to not be such a great motivation.

      So we go to appeal. The attorney argues that in the combination for reference one THERE IS NO MOTIVATION TO SUB IN C! (emphasis his) Plainly, my motivation to sub in C was explicit in the references and it is a very old concept, nobody in their right mind contests this. When I get to appeal conference, the appeals guy says, before even getting to the 103, hmmm, no I don’t think A was inherent in reference one. Whether or not it actually is inherent will be irrelevant if that’s what he says he thinks. Should I bring in evidence of it being inherent, he still might not think it is. Fine, rejection “reversed”.

      Does that mean the other two references/combinations two and three should not be applied to the claims? We still have all elements shown, we still have motivations to combine. Just because I was “wrong” about which reference/combo was best, or “deemed wrong by an appeals guy” about which reference is best doesn’t mean there aren’t other prima facie cases to be made.

      What if there are 6 combinations that might work? What if they all have different issues that vary in degree depending on who is looking at the references? What then?

      “I agree that not every one of the 20,000+ re-openings can be attributed to the reason I gave, but from my experience, that is the reason in the vast majority of the applications that I have appealed.”

      Well it could be, but who is telling you these reasons? The examiners themselves? Or is it just the impression that you get?

      “It’s highly unlikely that the examiners are going to be given more time. We can debate who is to blame for that some other time.”

      I know who is responsible for that. In fact, they told me just the other day during the town hall. Congress wants them to hire an independent corporation to come in and review the production requirements before congress will make them increase them. So, we’re waiting on the management to pick a company from about 7 different competing companies so that they can waste 7 or 8 million on this study being performed. I might be wrong on the 7 or 8, but it was in the millions. But, even though we’re waiting on mgmt, congress itself is to blame for dragging its feet so far as I’m concerned.

      They could just hire me for 1 million and I’d do a totally independent evaluation.

      As a final word on this topic I would like to add that I see the rise in appeal numbers as reflecting the rise in complexity of cases, and numbers of claims. My cases that have like 5 claims never go to appeal. My cases where the issues are simple and cut and dry never go to appeal. It’s the cases where the definitions of words and phrases aren’t all that clear cut, or where what the reference says isn’t well put in the reference and requires some real thought to see the limitation in the reference. 9 times out of 10 I can end the dispute with a call, but, I don’t always have time/motivation to call before needing a final to go out.

    44. 85

      I am in favor of more time – with a provision that the one-size-fits-all time allotment is eliminated. I would like to see the most knowledgeable (subject matter-wise) of the examiners form a screening and evaluation group and rank applications. Time, and perhaps cost, could then be scaled to the ranking.

    45. 84

      In Re Wheeler?

      I know, I know, he only won because Newman was smuggling for him, but still, he filled out the appeal pretty well. And the appeal to the CAFC.

      You mean non-precedtial Appeal No. 2008-1215? That In re Wheeler? You’re inferring that he was pro se, and therefore didn’t have attorney costs?

      “Brent A. Capehart, Bowers Law firm, of Harrison, Arkansas, for the appellant Gary Edward Wheeler.”

      I don’t claim to be privy to the payment arrangements of between Messrs. Wheeler and Capehart – for all I know it was pro bono. Just because the applicant didn’t pay (this time) don’t mean that no one paid. Perhaps Mr. Capehart did, for his own reasons.

      And how did that case get to the CAFC before one person is a position of influence at the PTO said ‘Umm, has anyone read this claim? I do not think that word means what we think it means.’

      I did not say to the office, I said to the examiner. Put your thinking cap on padre.

      Oh, so your boss is mean to you. That’s a really poor excuse for systematically turning out crap work product to the detriment of those who pay your salary for the privilege. In discussing systemic policy matters, you should bone up on the concept of the unitary executive. Hint – you are BORG.

    46. 83

      “What I am saying is, there are differing reasons for the reopenings that K’s evidence shows. What evidence do you have that yours is, at a minimum, a common reason? All I’ve seen is anecdots. And I don’t believe them based on my own anecdots.”

      I have 9+ years of anecdotes from my days as an examiner and 10+ years as a practitioner. No offense, I’ll take my anecdotes over yours any day.

      “I would personally be the worst person about reopening on new grounds that I know of, and my spe’s certainly are cautious about wanting me to do it at all. I try to make it very clear to the applicant that there are numerous rejections to be made against claims going into final, and that I’m only including the ones I feel are best. If there is some huge problem with those rejections, and they won’t fly, that doesn’t mean that the ind’s (especially) survive all the rest of the art I have compiled.”

      So if there was “some huge problem” with those rejections you “feel are best,” why would you re-open and reject with rejections you think are not your best? Seems to me if there is “some huge problem” with your “best” rejections, there’s probably “some huge problem”, or problems, with the rejections you feel are less best.

      Mr. Katznelson’s data indicates that something is wrong at the PTO. Something very, very wrong. (I’m channeling Bill Murray here.) I agree that not every one of the 20,000+ re-openings can be attributed to the reason I gave, but from my experience, that is the reason in the vast majority of the applications that I have appealed.

      “You guys have the power to change the PTO through courts and through lobbying.”

      The patent bar is but one voice amongst many. And we are generally viewed by Congress as a rather self interested bunch. There’s an element of truth in that view. (Understatement, anyone?)

      And as you saw in the GSK case, the courts generally view the PTO as it views any other agency, despite the fact that the gross mismanagement of the PTO for the past 5+ years is well documented, despite the PTO’s issuing of reports touting “record breaking quality.” Nobody who’s paying attention is buying any of that nonsense.

      My guess is that if you surveyed the members of the patent bar, a majority would be in favor of more time for the examiners. That’s just my guess based on what I’ve heard at various bar association meetings, etc. I personally don’t favor more time. I’ve proposed something else that I think is quite fair and workable.

      It’s highly unlikely that the examiners are going to be given more time. We can debate who is to blame for that some other time.

    47. 82

      My dear misguided Malcolm (misguided in oh so many ways),

      You state “Or, alternatively, I can just begin referring to you in every other comment, regardless of who I’m responding to.”

      So the “I don’t do that” is somehow transformed into a “but it (the thing you don’t do) was DIRECTLY…in another thread”. You are still a hypocrite! And a bad liar.

      And by the way, why single out only Bilski? Our most famous disagreement isn’t even on Bilski per se, it’s on the Written Matter Doctrine – and yes, I believe that you have run away at least ten times from that discussion.

      Lovely how you bandy about the term Troll, yet live to that term yourself. There is no need for anyone to mount a smear campaign against you – you do a fine job all by yourself.

      Let’s make a deal – you stop your gratuitous posting and I’ll stop my gratuitous comments about your gratuitous posting. I think everyone but the train wreck watchers wins!

    48. 81

      By the way, NAL (and other wankers out there), if I am “habitually wrong” how is it that the Board, District Courts and the CAFC seem to agree with me so often, while you end up with short, whiny part of the stick?

      link to 1201tuesday.com

      ——————————–

      “Bilski held that there is no danger of pre-emption of fundamental principles “[s]o long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents physical objects or substances.” Bilski, 545 F.3d at 963.

      Applying this “exception” to the rule requiring transformation of an article to Appellant’s claim 1, we find that claim 1 does specify synthesizing digital speech samples from speech model parameters. Claim 1 does not, however, specify how those parameters were obtained, nor recite transformation of raw data into a visual depiction, or any other analogous depiction (e.g., audio output) that would be cognizable by a human operator. Therefore, the weight of the evidence indicates that Appellant’s claim 1 is substantially more similar to the nonstatutory independent claim in Abele than to the statutory dependent claim.”

      ———————

      Gosh, that “cognizable by a human operator” biz sure sounds a lot like what I’ve been saying about 101 requirements in, e.g., methods for determining the presence of a disease and the like.

      And yet people cry and complain that all this is so unfair when, in fact, it’s reasonable and predictable.

    49. 80

      “Mr. Katznelson’s evidence is not anecdotal.”

      What you are inferring, specifically that the examiner just says “oh you got me, I’ll reopen and reject with this” does not follow from his evidence. All that follows from his evidence is that for some reasons, cases are reopened. You seem to think that the SPE and the appeals guy have little to no effect on this, and it is just the examiner executing his master plan that he had since the beg. I’m sorry, but that’s just not the case amongst the people I know. Perhaps it is the practice of some few examiners somewhere, but not the majority, or surely I’d know some people like that.

      What I am saying is, there are differing reasons for the reopenings that K’s evidence shows. What evidence do you have that yours is, at a minimum, a common reason? All I’ve seen is anecdots. And I don’t believe them based on my own anecdots.

      I would personally be the worst person about reopening on new grounds that I know of, and my spe’s certainly are cautious about wanting me to do it at all. I try to make it very clear to the applicant that there are numerous rejections to be made against claims going into final, and that I’m only including the ones I feel are best. If there is some huge problem with those rejections, and they won’t fly, that doesn’t mean that the ind’s (especially) survive all the rest of the art I have compiled. If they feel like there is some issue with the rejection at hand, and want to inquire about the rest of the rejections then their phone is 2 feet away.

      “It costs a vast sum more than the USPTO fees levied to competently prosecute an appeal.”

      In Re Wheeler?

      I know, I know, he only won because Newman was smuggling for him, but still, he filled out the appeal pretty well. And the appeal to the CAFC.

      As to the competency level, well, don’t get me started. The main reason I have cases being reopened is because the appeals guy makes a better argument against sending the case up than the attorney does. As long as the app could fill out the boxes completely (buy patents for dummies if you need boxes to fill out) he’d at least have bought his second pair of eyes review.

      “There is no such thing as a lost opportunity cost to the office. ”

      I did not say to the office, I said to the examiner. Put your thinking cap on padre.

      “If you couldn’t examine someone else’s application because you were handling an appeal, that’s an internal management issue, and beyond the control of any applicant. ”

      Well that’s funny, you guys can sue the PTO to enjoin a legitimate rules package, but you won’t sue the PTO to get them to provide credit for handling your case at the different stages. Submit your arguments about similarly situated applicants being treated differently and all that, surely that would stop finals from going unrewarded in a court of law. Should be a piece of cake. You guys have the power to change the PTO through courts and through lobbying. I suggest you do it. I still don’t understand why all patent attorneys all over the country haven’t banded together as one big lobbying force.

    50. 79

      NAL “You habitually get legal doctrine wrong, conflate i$$ues and post disparaging remarks without due cause.”

      So lame. You’ve made similar comments about me at least ten times already, NAL. You and I disagree on Bilski. We get it. If you want to argue about Bilski or my interpretation of how to apply Bilski, then engage, head to head, in context. Otherwise, you’re just a troll on a deeply misguided smear campaign.

    51. 78

      ” SAME thread from Malcolm”

      Yes, NAL, and that was DIRECTLY in response to a earlier comment of yours in another thread wherein you engaged in the gratuitous crap I referred to upthread. Act like a real woman and cut it out already. Or, alternatively, I can just begin referring to you in every other comment, regardless of who I’m responding to.

    52. 77

      “Your anecdotal evidence, that probably has little basis in reality from what I have personally seen, about a supposed “strategy” being employed is simply not supported by any evidence that I’ve seen presented and goes against what can be recorded in appeal conference after appeal conference.”

      Mr. Katznelson’s evidence is not anecdotal.

      And you’re apparently not looking hard enough for the evidence. By PTO (mis)management’s own admission, in about 45-50% of the pre-appealed cases, prosecution is reopened. (It was about 55% re-opening when the pre-appeal program started, so I guess there’s been some progress.)

      “Personally I think the attorney should be in the appeals conference anyway, as a mandatory req.”

      We agree on something.

    53. 76

      A few choice Malcolm quotes:

      “We’re talking about greedy people who scratch bullcrap on paper, spend a couple thousand bucks to flie it at the PTO, and then want a broad patent, tomorrow. You can imagine how frustrated those people must be. In fact, you don’t have to imagine. They are over all the Internet, ranting on patent blogs about unfair everything is.”
      Jun 24, 2009 at 12:34 PM

      “I don’t invoke the names of commenters I’m not responding to simply to trash them.* That’s what I’m talking about regarding gratuitous.”
      Jun 24, 2009 at 01:57 PM

      Malcolm says he doesn’t invoke the name of commentors he’s not responding to to simply trash them. Let’s prove Malcolm wrong shall we?

      Well let’s see: hmm didn’t have to go far – SAME thread from Malcolm:

      “Here we go again with the personal trolls. Hey, “Don’t Bother,” “Noise Above Law” called and he wants you to meet him at Patent Hawk for a CJ with “Just Sayin” and the other sockpuppets. There’s some new “evidence” going around the block that Dennis Crouch and Kappos are the same person.”
      Jun 23, 2009 at 04:13 PM

      Malcolm, you invoked my moniker in a disparaging manner without provocation. I hadn’t even posted in the thread to that point. Did I whine? No. Did I cry out, “Hey that’s not nice?” No. I simply slammed you back. Funny how the babies and bullies of the world like to dish it out, but can’t take it.

      Let’s face it, the name Malcolm is simply becoming synonymous with trainwreck, cra$$, over-stated and simply wrong invective.

      Hey, let’s go Malcolming tonight, 6. No let’s go 6’ing instead Malcolm.

      At least 6 tries to joust back – Malcolm, you just whine about gratuitous commentors, you hypocrite.

      Malcolm, let’s face it. Most if not all of your posts are gratuitous. You rarely have anything on point to add or any valid legal point to make. You habitually get legal doctrine wrong, conflate i$$ues and post disparaging remarks without due cause. When called on it, you typically run away. Am I spitting on you? Do you spit on others?

    54. 75

      “Examples, please.”

      09/193,787 and 09/077,337.

      And Ron Katznelson has provided the evidence of about 20,000+ other such cases.

      Let me guess, you’re gonna tell me my examples don’t count, right?

      As I’ve said many times before, you’re funny. Not serious. But funny.

    55. 74

      Curious,

      I have also come across the reneging examiner. When questioned about what happen to the agreement we reached, they blamed it on their supervisor. So you are probably right to blame the system.

      I have also found it difficult to get the examiner to be willing to work with me. My phone calls to them go unanswered and messages left go unreturned. When I do get through or a phone call returned, I more often than not get arguments and explanations defending their position that are not tenable under the law.

      On those increasing rare instances where I have gotten through to an examiner willing to work with me, the overall prosecution experience was positive and timely resulted in a quality patent.

      I just keep hoping that the trend established over the last few years will reverse with the upcoming changing of the guard.

    56. 73

      Oh, we were talking about all the way to the board, I thought you just meant, “in general”, as in you can file RCE’s forever just like I can reopen “forever”.

      Every time the Applicant files another RCE, they pay ‘you’ for the privilege. You’re apparently so embedded in the Government worker mindset as to not see the obvious pocket your paycheck is coming from. If I were in your position, I would want all the continuations, divisionals, and RCEs I could get (which made the Tafas rule package so maddening). That also means taking into account the possibility that your meal ticket might choose to take his marbles and go home; so REJECT/REJECT/REJECT is not a viable long term strategy. QED.

      Total appeal cost 1,001.05 dollars.

      It costs a vast sum more than the USPTO fees levied to competently prosecute an appeal. To assert otherwise is so naive as to be obtuse. This is to say nothing of the attempts to amend part 41 to pile on those who deign to question the Corps by taking appeal.

      There is no such thing as a lost opportunity cost to the office. Every step of the way, and action taken by the office was paid for by the Applicant. Examine a new application? Applicant paid. Prosecute an appeal? Applicant paid. Examine again on RCE? Applicant paid. If you couldn’t examine someone else’s application because you were handling an appeal, that’s an internal management issue, and beyond the control of any applicant. There’s a filing fee that the other guy paid too, and it could pay for some other examiner (6.1?) to examine it in his place. None of us are indispensable.

      The truly objectionable circumstance is when, as others already noted, the Examiner takes the Applicant’s Appeal Brief as their first opportunity to truly consider the merits of the rejection they’ve blithely maintained; only to think better of it and then craft a still worse rejection. It lays waste to the time and effort ($$$) spent preparing the Appeal Brief, and makes a mockery of the examination process that was supposed to have happened before the case got to that posture.

    57. 72

      “On the whole, I have found that when an attorney / agent and examiner are willing to work together, and the attorney has a client with reasonable expectations, examination can produce quality patents.”

      I have found that in the past six or so years that examiners are less willing to work together with patent practitioners and when agreement is reached, they often renege on it (based on art of record). I really don’t blame the examiners as they are just following the system. In other words, I blame the system.

    58. 71

      “When the applicant pays $1,100 or so in fees and the time, effort and money to file an appeal brief, and the examiner pulls the old, “Okay, you got me on this one, I’ll re-open with an even sillier rejection” routine, what does the applicant get? Does the applicant get his fees refunded? Does the PTO reimburse the applicant for the cost to prepare the brief? No.”

      Examples, please.

    59. 70

      “And until that fact is acknowledged, no progress will be made towards “fixing” the problems.”

      And it won’t be acknowledged, because the most vocal voices for wanting the system reformed make up the people prosecuting the “bad” patents to issue.

      1201 tuesday should keep a running tally as he goes along of the attorneys associated with his laughed out of town apps.

      Purely for lols of course, not for calling those people’s current clients and pointing out the ridiculousness of what they’re trying to get issued. Of course, then again, perhaps their clients are even more people wanting ridiculousness to issue, or wouldn’t know the difference between a reasonable claim and something that’s just hard to scrap off your shoe.

    60. 69

      “”Okay, you got me on this one, I’ll re-open with an even sillier rejection” routine, what does the applicant get? Does the applicant get his fees refunded? Does the PTO reimburse the applicant for the cost to prepare the brief?”

      The applicant gets to not have his application abandoned, and potentially allowed. That’s his goal right? To obtain the claims on the record. Right? That’s a substantial benefit considering how long they’re going to wait to respond to the outstanding OA isn’t it? Right? Mhmmm it is.

      Bottom line, the applicant gets what they want. The rejection withdrawn. Right? Right? And many times they get an allowance.

      In all seriousness, is that not right?

      And in even more seriousness, couldn’t an interview resolve over 50% of the issues which make up an appeal? I’ve been through a lot of interviews, and so have my buds. The results overwhelmingly suggest that interviews lower the need for an appeal to be filed.

      Be honest, is that not correct as well?

      I’ve been through a few reopenings, and I’ve taken a few cases up to the board. And what I’ve found is that, overwhelmingly, I don’t say “oh well you got me on that one” and reopen. My spe, or the appeals guy says, “no, the rejection just isn’t good enough because xyz (usually none of which the attorney actually brought up at any point in time) so let’s let them have their chance, allow it or reopen and reject”

      Your anecdotal evidence, that probably has little basis in reality from what I have personally seen, about a supposed “strategy” being employed is simply not supported by any evidence that I’ve seen presented and goes against what can be recorded in appeal conference after appeal conference. In fact, you know what? If you’re interested in hearing a conference, you could probably get one of the examiners handling one of your appeals to conference you in on the appeal conference if you just want to listen. I would be willing to do it myself. Personally I think the attorney should be in the appeals conference anyway, as a mandatory req. But when you get conferenced in, listen to what happens, it isn’t going to be the examiner saying “oh, well, the attorney really got me I’ll just reopen and reject based on this other reference”, if anything you’ll find the appeals guy or spe saying, “no this rejection just doesn’t have a good chance of making it through appeal”.

      “BTW, your “understanding” of what is involved in preparing an appeal brief is rather typical of somebody from the PTO who’s never actually done it.”

      I know it’s a bigger deal than I’ve made it out to be. But pro se’s do accomplish it, and it can’t be that complicated if those fellas can manage.

    61. 68

      “And this includes the many which you make, Malcolm.”

      Horsehockey. I don’t invoke the names of commenters I’m not responding to simply to trash them.* That’s what I’m talking about regarding gratuitous.

    62. 67

      It’s quite amusing to hear this blog’s biggest troll whining about ad hominem attacks and personal insults.

      You’re anonymous. There’s nothing personal.

      In short: don’t obsess.

    63. 66

      “But the gratuitous insulting references are uncalled for.”

      And this includes the many which you make, Malcolm.

    64. 65

      Hey, Noise, you should have been posting comments here three or four years ago (or maybe you were under a different nym) when anyone who dared suggest that patent applicants weren’t holy angels fighting the PTO demon was declared mentally ill. You would have loved it, I think, since you have the same tendency to sit in the peanut gallery and half of your comments are nothing but ad hominem “holier-than-thou” personal attacks on myself, 6, or whoever it else it gives you pleasure to spit on. On the other hand, when there’s an actual issue of patent law to discuss, your insights are either mundane or wrong. Feel free to respond to my comments and whine and cry like a baby about them. But the gratuitous insulting references are uncalled for. In short: don’t obsess. Others before you have gone down that path. It didn’t turn out well.

    65. 64

      “On the whole, I have found that when an attorney / agent and examiner are willing to work together, and the attorney has a client with reasonable expectations, examination can produce quality patents.”

      Of course this is true. But we’re not talking about reasonable people here. We’re talking about greedy people who scratch bullcrap on paper, spend a couple thousand bucks to flie it at the PTO, and then want a broad patent, tomorrow. You can imagine how frustrated those people must be. In fact, you don’t have to imagine. They are over all the Internet, ranting on patent blogs about unfair everything is.

    66. 63

      “It is more of the same nonsense and lies from PTO (mis)management about “record breaking quality”

      Both sides lie all the time, to the exent they pretend that the never-ending flood of crap patents doesn’t exists.

      And until that fact is acknowledged, no progress will be made towards “fixing” the problems.

      It’s too cheap to file a patent. There aren’t enough qualified Examiners and they overworked so they can’t do a decent job. Too much crap gets issued.

      All this whining about “the process” is just a pathetic sideshow.

    67. 61

      “Now now JD, don’t forget the flip side. The PTO also believes (until the new rules go into effect) that the applicant should be provided with an unlimited number of opportunities to get it wrong.”

      Anon E. Moose already addressed your lack of understanding on this issue. But it bears repeating. When the applicant gets it wrong, the PTO gets the RCE fee and the examiner gets 2 rather easy counts. Well, easier than actually picking up a new case and getting a count the hard way. When the applicant pays $1,100 or so in fees and the time, effort and money to file an appeal brief, and the examiner pulls the old, “Okay, you got me on this one, I’ll re-open with an even sillier rejection” routine, what does the applicant get? Does the applicant get his fees refunded? Does the PTO reimburse the applicant for the cost to prepare the brief?

      No.

      BTW, your “understanding” of what is involved in preparing an appeal brief is rather typical of somebody from the PTO who’s never actually done it.

      “And even you should be willing to admit that what I’ve written above is absolutely correct.”

      I’m not willing.

      “The only person who matters in the process is the appeals specialist. The whole process is ridiculous.”

      This I do agree with. The “appeals specialists” over there are the typical knownothingdonothinguselessdeadweightGS-15’s who should all be sent back to examining. You’re absolutely correct, 6, that none of these people has bothered to read the app, the OA’s, the prior art, the responses, etc. It’s all garbage. Giving these useless, overpaid, extremely underworked people any say whatsoever in the appeals process is beyond ludicrous. Get rid of them. Put them back to work examining. Problems solved.

      Mr. Katznelson’s numbers speak for themselves. I thank him for his efforts at exposing the outright lies spread by PTO (mis)management on a daily basis. The “affirmance rate” is a complete and total sham. It has no basis in reality. It is more of the same nonsense and lies from PTO (mis)management about “record breaking quality” and other such Orwellian Newspeak from the incompetent and corrupt PTO (mis)management.

    68. 60

      LE,

      Rest assured that I do not think every examiner is like 6, if indeed he really is an examiner. I have had many positive experiences with examiners. On the whole, I have found that when an attorney / agent and examiner are willing to work together, and the attorney has a client with reasonable expectations, examination can produce quality patents.

    69. 59

      The mere fact that Lurker thinks 6 comes off as a tard means that he (or she) is miles ahead of 6. Such a baseline of good judgement may only mean that the actual “typical examiner attitude” is a bit different than the vocal “typical examiner attitude” as dutifully portrayed by 6 and Malcolm.

    70. 58

      “An abandonment is not an achievement.”

      Not anymore :( that’s for sure. Companies just give up most of their poor apps now. Even some decent ones.

      And yes NAL, lurking examiners are much more grounded in reality because they haven’t actually taken a position on anything of note just yet. We’re sure to hear your squeals and shrieks of anger at his “ignorance of tha lawlz” and “typical examiner attitude” as soon as he does.

    71. 57

      Thank you Lurker,

      I’d like to hear more opinions from Examiners like you – people actually grounded in reality.

      Of course, the train wreck express feeds off of the more outlandish comments of 6 and Malcolm and we all need our daily fix.

    72. 56

      I always thought MM was a litigator, but maybe he is only a paralegal? Interesting. So he doesn’t have a reg. no. for sure.

      Are you an attorney, MM? Dare to answer that one.

      I freely admit that I’m an agent, not that I could pretend otherwise as I’m using my real name. At least I have a reg. no., though.

    73. 55

      “he is the archetypical bad patent examiner that attorneys complain about daily”

      Hey, we’re not all like that. I’m an examiner, and even I think 6 comes off like a tard.

      Believe it or not, there really are examiners at the USPTO whose goal is to determine objectively what is or is not patentable in an application, rather than looking at each application as a game to be won, or whatever it is that motivates 6. An abandonment is not an achievement.

    74. 54

      “Gender is simply not relevant to a legal discussion”

      Only when it perfectly explains the inexplicable stubbornness of some select posters :)

      And NAL, where did I say she was my gf? I don’t recall mentioning that. There’s an opening if you know someone interested.

      Btw, jealousy doesn’t become you, you know? She’s behind me right now, and I would tell her about you implying she was a whore, but I don’t think you really meant it so I’ll not say anything.

      “If the Applicant gets it wrong all the way to the board, it costs the Applicant tens of thousands per appeal in USPTO Appeal fees, Attorney fees to prosecute the appeal, and an RCE if there is anything to be had after the Board gets done.

      If the Examiner gets it wrong… see above.

      Can you not see the difference?”

      Oh, we were talking about all the way to the board, I thought you just meant, “in general”, as in you can file RCE’s forever just like I can reopen “forever”.

      Ok, all the way through the board.

      Let me get this straight, it costs the applicant 1,001.05 dollars and an hour of his time.

      That is, if the applicant gets it wrong, he has to file an appeal and brief (cost 1k dollars), fill out about 10 paragraphs worth of information, write one paragraph explaining what his issue is with the rejection in clear concise terms and pay 45 cents for a stamp. 30 cents might be required for an envelope as well, and perhaps 30 cents in paper/ink costs. Total appeal cost 1,001.05 dollars. There might be some other fee which I’m not aware of, so fill me in if I’m missing anything. Then there will be no RCE fee after he loses, because he included claims to everything which he regarded as his invention in the first instance and thus the case is destined for abandonment.

      If the applicant gets it wrong, and he is a wussy little cry baby who can’t stop qqing, or is a major corporation, it might cost him over 10k dollars for him to bribe an attorney to write him a brief. Then, it’ll cost him 1000 for an RCE because he did not claim everything which he regarded as his invention in the first instance. 0 sympathy from me, should have been a man and gone the cheaper route if that’s what he wanted.

      Now, whether or not the examiner gets it wrong or right, he has to spend a few hours reviewing the case, and an hour explaining it to a spe, then a specialist. Then he has to spend a few hours addressing all the bs that the attorney put in the brief to “fill it out a bit around the edges”. Time which is the equivalent to having done another action. So the examiner loses a count, just to get a count (the whole process of “final” actions not giving counts is such a sham). Counts are worth, iirc, somewhere around 500$, or a little more or less depending on your level (higher the level the less they’re worth).

      So the examiner loses 500$ in opportunity cost.

      So in the end it is 500 vs. 1000. Ok, ok, I get it, you have to pay double to be wrong.

      But, on the other hand, the office as a whole loses out on that extra app being picked up and has to actually process your appeal. May as well call the total costs 1000 to 1000 (appeal specialist/spe time costs, LIE time costs etc etc).

      So, in the end it’s the office vs applicant at 1000 vs 1000 give or take. Seems legit to me.

      After this exhaustive analysis, no, I don’t see the difference. Perhaps you could further elaborate.

      Your move.

      Poor Zak, he feels bad that he’s not as good as the slightly more established names on the board. Don’t worry though Zak, they’re noobs too.

      That said, you’re right, I can’t be real, I’m a figment of your examination.

    75. 53

      NAL,

      I generally deplore personal attacks on blogs. In the case of 6, however, I am willing to make an exception and say good job. If he really is as his posts portray him to be and believes what his posts suggest he believes then he is the archetypical bad patent examiner that attorneys complain about daily. Based on his complete lack of professionalism, arrogance, sarcasm, ignorance of the law, disrespect for others, and unwillingness to admit his errors I actually believe that 6 is a persona adopted by a patent attorney to poke fun at posters. After all, the boogey man and monster under the bed are not real, so how can 6 be real.

    76. 51

      Back at Comment 39 “don’t bother” said “BTW, Noise Above Law is a she. 6’s been trying to score a date with her for weeks now. His rap is weak.”

      From a Patent Prospector thread that aligns with one of the concepts mentioned here (comment 43), at link to patenthawk.com , a suggestion of gender was placed in front of 6 – “Would it help 6, if I were to not only throw Chisum at you but disabuse you of your pre-concieved notion that I am a male?” – which made 6 go all gushy. I’ll bet that 6 pushed his chest out, rolled his head, placed his fat stubby fingers on the greasy keyboard and thought to himself, “here’s another internet chick I can sway with my suave typing”.

      But let’s have some food for thought with some of my words from a follow-up post:

      “Professionalism:
      Not that its really expected, but the lack of professionalism and the complete change in tone in responses from 6 based on 6’s perception of my gender only reinforce the lack of credibility that can be attributed to whatever message 6 is trying to put forth on the blogs. Way to bite on the gender card. Do’h!”

      It’s interesting to see that some read my comments without regard to gender and some self delude on the gender perception. Gender is simply not relevant to a legal discussion and those who cannot make that distinction should reflect on what else they may be missing from their legal points.

      Much like whether Malcolm is a homosexual or not has no bearing on his posts – they are worthless either way. And I can say that honestly.

      BTW 6, the reason why your girlfriend was being hit on was that she was working – did you forget that she told you it was $50 for the half hour?

    77. 50

      [John Darling said] “No. The PTO believes every examiner should be provided with an unlimited number of opportunities to get it wrong.”

      [To which 6 replied] Now now JD, don’t forget the flip side. The PTO also believes (until the new rules go into effect) that the applicant should be provided with an unlimited number of opportunities to get it wrong. And also, do remember that there is hyperbole in both of those statements.

      6;

      If the Applicant gets it wrong all the way to the board, it costs the Applicant tens of thousands per appeal in USPTO Appeal fees, Attorney fees to prosecute the appeal, and an RCE if there is anything to be had after the Board gets done.

      If the Examiner gets it wrong… see above.

      Can you not see the difference?

    78. 49

      And let me add

      6. The MPEP is spouting pure bs here:

      “1207.01 [R-3] **> Appeal Conference< An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § *>
      1205< ) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. >In this case, the examiner may reopen prosecution and issue another Office
      action. See MPEP § 1207.04.< The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value. The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer. On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. >If the examiner’s answer contains a new ground of rejection, it must give
      appellant a two-month time period to reply to the new ground of rejection. The answer
      must also include the signature of a Technology Center (TC) Director or designee to
      indicate that he or she approves the new ground of rejection. See MPEP § 1207.03 and
      form paragraph 12.179.01.< Upon receipt of the appeal case by the Board of Patent Appeals and Interferences (Board), the Board should review the application prior to assigning an appeal number to determine whether an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Board should return the application directly to the appropriate **>TC< Director for corrective action. This return procedure by the Board should not be considered as a remand of the application. This procedure applies to all examiner’s answers received by the Board on or after November 1, 2000. Before preparing the answer, the examiner should make certain that all amendments approved for entry have in fact been * entered >in the file<. The ** Board will return to the TC any application in which approved amendments have not been entered." The only person who matters in the process is the appeals specialist. The whole process is ridiculous.

    79. 48

      I meant to add, under what authority does the appeals specialist get to address issues which AREN”T EVEN ON APPEAL? Or does the applicant appealing a 103 rejection open it up to his just simply not liking the designation of a part as such and such in the claims and reversing based on that, even when the applicant has stated no such issue is on appeal because the question of obviousness would encompass that side issue as well?

    80. 47

      “No. The PTO believes every examiner should be provided with an unlimited number of opportunities to get it wrong.”

      Now now JD, don’t forget the flip side. The PTO also believes (until the new rules go into effect) that the applicant should be provided with an unlimited number of opportunities to get it wrong. And also, do remember that there is hyperbole in both of those statements.

      “No. If it was just academic you would think many (most? some? a few?) in the examining corps would view getting reversed as a learning experience. Instead what you see, from at least one of the dopes from the PTO who (used to) post here, is to the tune of, “Well, the Board doesn’t know anything. They don’t understand the technology.””

      I can safely say that I’ve regarded being “reversed” by appeals guys as a learning experience. One which was predicted by a primary of mine many years ago. The liklihood of losing on an appeal doesn’t hinge on the attorneys arguments, those are mere minutia most of the time. The liklihood of losing on appeal is whether or not you’ve put down your position so well that even someone from a different art will see your point of view and that it will lead precisely and inarguably to your conclusion.

      And in so far as the stooge regards the Board as not knowning anything, he is in large part right since they just don’t understand some of the arts that well. There’s simply too few judges for them to have good panels for each AU’s subject matter.

      And even you should be willing to admit that what I’ve written above is absolutely correct.

      My appeal I sent up like a year ago got returned when the app submitted an IDS. I have one appeal pending. And I have two that just got signed here lately going up right now. Considering the required level of being convincing which it takes to get past the appeals guy, it’s pretty hard to see how I could be reversed from the actual board.

      Overall, the lessons I’ve learned from the appeals process is that:

      1. If there is something which is being stretched that the attorney hasn’t argued yet then go final, they will likely amend and file an RCE. This holds true whether the attorney filed some arguments regarding something other than the stretched portion in the rejection, or whether he’d just amended with no arguments.

      2. If, in situation 1, they file an AF repeating their bs arguments that have nothing to do with the stretching taking place in another part of the claim (for instance) then reopen because the appeals guy will reject the stretching performed and not even care about the ridiculous arguments made by the attorney when an appeal comes. The exception is when you can either call the attorney and call out their bs argument in person, or hands down convincingly get them to drop their argument by writting a response.

      3. If there are no stretched terms (the designations in the rejections are straightforward and easily seen by anyone having little to no knowledge in the field), but there is an argument made by the attorney where the argument could go either way, 50/50, then reopen because the appeals guy will give it to the runner (applicant).

      4. Bottom line, make sure you “got em'” (my primaries words years ago) in the final or expect a drawn out appeals process.

      5. The appeals process is pure bullsht because the appeals guys can take issue with things totally outside of what the attorney is arguing and reverse me based on that rather than what the attorney says is wrong with the application. Bullsht. Especially bullsht when a spe will take my position. May as well call it the “buy a second pair of eyes program”. And you could call it the “buy a second pair of eyes that knows nothing about the spec, knows nothing about standards in the relevant art, and many times knows little about the relevant art program”.

      The reopening will often involve allowances in my instances, so it isn’t even like I’m all that terribly opposed to them, but it is my opinion that it should be the job of the applicant to point out the “supposed errors in the rejection” rather than the appeals specialist’s job.

      Ridiculous.

    81. 46

      “The joke on all of us is that our PTO has been invaded by the 4chan crowd. I bet if you showed 6 the Teddy Ruxpin patent, he’d say, “Wow … I can’t believe somebody patented a Pedobear doll.””

      Indeed, that joke is on you. I know a few btards who work here, but they’re not always easy to spot. There’s probably a lot more amongst the people who I know. That said, I got bored with ol 4chan a long time ago and haven’t really kept up. Maybe I should stop by tonight.

      That’s got to be a funny patent lulz.

    82. 44

      “Or maybe 6’s sarcastic lines are not terribly appealing to a woman who is old enough to be his mother. I’m not sure about NAL, but I CAN speak for myself.”

      Funny enough, the columbian girl is *almost* old enough to be my mother and she finds my sarcastic lines very funny, and is laughing for the better part of our time together.

      I did figure tho that you girls were probably quite a few years older than me.

    83. 41

      “6, you just have no perspective on things. Some of my clients are smaller corporations that live or die by their patents. ”

      Then it is in their best interests to present good claims, up front, and take what they can get. Then file a con. Wheel n deal man, it’s the way of life. Show me a company with a genuinely novel, nonobvious product they NEED to have decent protection for, and show me a very well drafted app to support some wiggle and I’ll show you an issued claim that will rise to the occasion a few months after.

      Your lack of skill at getting claims issued is not the examiner’s fault. Neither is maintaining a “bad” rejection which you didn’t convincingly argue against.

      I get 100+ arguments a month, give or take. 90 of them will be bad. ~10 of them will be convincing. ~5 of them will lead to an allowance. It’s pretty fin hard to sift through them you know? Technical, legal issues and the such abound. Make your arguments so clear and convincing that I have no choice but to put in you in the 10 that are convincing and wallah, the “bad” rejection goes no further. This is the same with every examiner I’ve ever talked to. And that’s quite a few. There may be 2 or 3 guys that simply will not budge, ever, but I’ve never met them.

      I should note that the 90 number is nothing for me to feel bad about, when I talk to the attorneys on the phone about most of their arguments they’ll straight up admit that many are total bs, are off base, or just aren’t all that convincing, but they figured throw it in anyway. And if you don’t make a convincing argument, I don’t feel bad about you having to file an appeal, and then you reiterrating your bs arguments, and then the appeals guy “reversing” me because he doesn’t like how I stretched a claim term, or some other issue, WHICH YOU DIDN”T EVEN ARGUE.

      I notice that one of my posts that I was going to post doesn’t seem to have posted.

      MM, NAL is a girl btw. I note that my rap wasn’t so weak as to have this columbian girl all over me this weekend :) We went to the mall today and I swear to god, she got hit on no less than 5 times in one trip. Now, I want you to understand, I’ve been with some fraggin good lookin gals in my life, but I have never had my chic get hit on 5 times in one outting while I was right there beside her.

    84. 40

      “6’s been trying to score a date with her for weeks now. His rap is weak.”

      Or maybe 6’s sarcastic lines are not terribly appealing to a woman who is old enough to be his mother. I’m not sure about NAL, but I CAN speak for myself.

      I predict that 6 will now follow up with a “MILF” joke. The joke on all of us is that our PTO has been invaded by the 4chan crowd. I bet if you showed 6 the Teddy Ruxpin patent, he’d say, “Wow … I can’t believe somebody patented a Pedobear doll.”

    85. 39

      “Here we go again with the personal trolls.”

      Here we go again with the refusal (inability?) to simply state that you are a registered practitioner.

      BTW, Noise Above Law is a she. 6’s been trying to score a date with her for weeks now. His rap is weak.

    86. 38

      “Another metric is the number of meritorious applications not issued as patents.”

      That number is so small it can be safely ignored. How do we know it’s small? Because we know that crap patents are issued every week in numbers that are large enough to make it trivial to find examples without doing much work.

      I’d be willing to wager $1000, without hesitation, that greater than 90% of the bogus comments posted here along the lines of “my application is being unfairly denied blah blah whine blah” relate to claims that are pure crap.

      Don’t Bother: “The notion that Mooney is a registered practitioner has been debunked”

      Here we go again with the personal trolls. Hey, “Don’t Bother,” “Noise Above Law” called and he wants you to meet him at Patent Hawk for a CJ with “Just Sayin” and the other sockpuppets. There’s some new “evidence” going around the block that Dennis Crouch and Kappos are the same person.

    87. 37

      “This is why I just don’t believe MM is a patent lawyer, when all he cares about are ‘crap’ claims not being issued. He sounds more like an examiner, imo.”

      The notion that Mooney is a registered practitioner has been debunked on this site before. Numerous times. In fact, when asked directly if he was a registered practitioner, instead of simply answering “Yes” he spouted some nonsense about “dealing with these issues frequently” or some other such BS.

      One poster surmised, correctly IMO, that he is some “docket portfolio manager” (i.e. glorified paralegal).

    88. 36

      Frequent Runner: Thanks for the question.
      The SCRIPT simply counts the number of occurrences of various terms such as “obvious” and “35 U.S.C. § 103(a).” So, your example would be identified as discussing obviousness if the opinion contained any of those terms.

      I would again challenge your notion of the law. The fact that a particular limitation is not disclosed in the cited art does not conclusively prove that the claim is nonobvious. That said, the Board will ordinarily reverse in such a situation.

    89. 35

      Dennis,

      You stated “Rather, many claims are considered novel but obvious.”

      Didn’t you have a post a while back featuring a Venn diagram and just how small the sliver of possible overlap was between novelty and obviousness?

      I am not sure “many” is quite the appropriate word.

    90. 34

      Keep on drinking the Kool-Aid, 6. You wouldn’t want to ever come out of your fog and actually have to understand how things work in the real world.

      The PTO has the best of both worlds. They can get applications published so that the disclosure and teaching gets out to the public, and then give nothing in return, all while soaking applicants for more and more fees.

      Welcome to PTO 2.0. Where quid pro quo is just some funny sounding Latin words.

    91. 33

      Sorry I wasn’t clear in my question. Suppose application has independent claim 1 and dependent claims 2-5. Independent claim 1 is finally rejected under 102(b) by reference X. Dependent claims 2-5 finally rejected under 103 by references X and Y. Applicant appeals. Board decides that reference X does not disclose limitations of independent claim 1 per 102. Thus, no need to discuss the 103 rejection of dependent claims 2-5.

      Would your SCRIPT count this as a 103 rejection which was reversed by the Board?

      Thanks

    92. 32

      6, you just have no perspective on things. Some of my clients are smaller corporations that live or die by their patents. If they can’t get their new widget patented, BigCorp will simply steal it and put them out of business. I’m talking about ‘real’ inventions, and not methods of reserving airplane lavatories.

      A corp of examiners making bad rejections could severely harm some of my clients.

      I am *not* for the pto just rubber stamping everything. I am all for anticipated and/or obvious claims never being issued. But I see the negative effects of the ‘reject reject reject’ mentality — real clients with novel and nonobvious inventions have their applications repeatedly denied.

    93. 31

      “This is why I just don’t believe MM is a patent lawyer, ”

      Or someone who hasn’t let his gig addle his brain of all reason.

      What is, by far, the biggest impact patents have on the world as a whole?

      They advance the useful arts.

      What trails just behind that impact?

      The dollars spent by producers to license from, or fight the owners of patents.

      What trails so far beyond the pack that one can barely see it?

      The impact of “bad” rejections on the promotion of the useful arts through disclosure.

      Even a small portion of the second impact (.01% for instance) outweighs the negative of the third in total.

    94. 30

      This is why I just don’t believe MM is a patent lawyer, when all he cares about are “crap” claims not being issued. He sounds more like an examiner, imo.

    95. 29

      “Another metric is the number of meritorious applications not issued as patents.””I agree.

      and a further metric is the number of bad rejections an applicant must spend the time and resources to respond to to get his patent

    96. 28

      ” Malcolm Mooney said…

      The only metric for Examinination Quality that matters is the number of crappy patents that are issued.

      Everything is else is just noise.”

      No. Another metric is the number of meritorious applications not issued as patents.

    97. 27

      Frequent Runner: You said: “I have noticed that many Board decisions which include 103 rejections were
      ultimately reversed based upon a 102 rejection, thus eliminating any need for the Board to discuss the 103 rejection.”

      Good question. Of course, the fact that a set of claims are not anticipated does not “eliminate any need” to discuss obviousness. Rather, many claims are considered novel but obvious.

      What I have seen is cases where an examiner misinterprets prior art that is asserted in both 102(b) and 103(a) rejections. In that case, the decision will be reversed on both counts. My script (and hand-scoring) will count this as two issues because of the legal distinction between 102 and 103 – even though the ultimate underlying issue (misinterpretation of prior art) is the same.

    98. 26

      “are there any consequences to the Examiner if his/her rejections are overturned by the board…”

      No. The PTO believes every examiner should be provided with an unlimited number of opportunities to get it wrong.

      “… or is it just academic to him/her?”

      No. If it was just academic you would think many (most? some? a few?) in the examining corps would view getting reversed as a learning experience. Instead what you see, from at least one of the dopes from the PTO who (used to) post here, is to the tune of, “Well, the Board doesn’t know anything. They don’t understand the technology.”

      LOL

      Keep those appeals flowing.

    99. 25

      are there any consequences to the Examiner if his/her rejections are overturned by the board or is it just academic to him/her?

    100. 24

      TJ said in reply to Malcolm Mooney…

      Malcolm, that cannot be right, for two reasons.

      1. Surely both Type I and Type II errors count. In other words, it is also a measure of Examination Quality whether meritorious patents are rejected.

      TJ: while yours is obviously a very valid point, the disconnect is that the USPTO does not give a crap about the meritorious patents that are rejected. That pretty much never shows up in the WSJ, so PTO couldn’t care less.

      The irony of the situation is that whereas when a crap patent issues it is either so irrelevant to anything that no one even notices other than to chuckle, or it gets litigated and (ideally) invalidated.

      But what happens in the case of the patent that should have issued? Is there any mechanism out there for the market to correct the PTO’s error? Nope.

      They sure are happy to take your money, but when it comes to getting some value for it, you’re basically out of luck.

      And don’t tell me the CAFC catches those errors. If Kubin taught us anything, it’s that the “Patent Court” needs to go back and take Bio 101 again (or, more likely, for the first time).

    101. 23

      “2) the Applicant argues that the examiner’s rejection relies on non-analogous art;

      This never works. KSR is often cited as making this factor even less important than before and it seldom worked before KSR.”

      Not true.

    102. 22

      I agree that a Notice of Appeal is not an appeal. According to USPTO data, there were 27,630 such notices in FY 2007. I also do not count the number of Pre-Appeal Briefs that were filed (3,200 estimated in FY 2007). Rather, the number of appeals is only the number of Appeal Briefs that were actually filed – 23,145 in FY 2007, according to USPTO data.

      Because appeal pendency was short (about 6 months), a reasonable approximation can be based on the number of cases affirmed by the BPAI in FY 2007. At that time, 1928 cases were affirmed and 469 were affirmed in part. Combining those as “Affirmed”, the affirmance rate is estimated as (1928+469)/23,145 = 10.4%. In other words, it is estimated that in FY 2007, the BPAI affirmed only one tenth of the appeals filed. This ratio was probably lower in FY 2008 and this year. So there you have it. An appeal is affirmed by BPAI only 10% of the time. The majority of appeals are merely gold-plated examinations.

    103. 20

      My personal experience is that the most common reason for reversing an obviousness rejection is that the examiner misinterpreted the prior art.

    104. 19

      nice work, katznelson.

      thanks for linking to your letter/paper. that should be a patently o post, all by itself.

    105. 17

      Malcolm, that cannot be right, for two reasons.

      1. Surely both Type I and Type II errors count. In other words, it is also a measure of Examination Quality whether meritorious patents are rejected.

      2. Other factors beside error rates matter. The most obvious is time. Say that we have perfect examination–with no invalid patents ever issued and no valid patents ever rejected–but it takes 20 years for the first office action. Not a worthwhile tradeoff. Another obvious factor is money. We can have much better examination if we increased the PTO budget, but that comes with a cost of additional fees or taxpayer subsidies.

    106. 16

      Just Visiting,

      Do not discount the value of evidence demonstrating secondary considerations. I have successfully used evidence of superior performance to overcome 103 rejections. (However, I never had to do this before the BPAI.)

      I have found the key to be making sure the evidence compares the claimed invention to cited prior art paying particular attention to the features of the prior art relied upon by the Examiner to reject the claimed inveniton. Basically, the required “nexus” has to be established by showing that the combination is more than the sum of its individual parts.

    107. 15

      Dear Dennis:
      I believe it would be beneficial to analyze the affirmations of the rejections and determine how may were based upon the practitioner not recognizing the change in the obviousness analysis in view of KSR as opposed to the practitioner arguing non-obviousness based upon analysis espoused by KSR. Are you able to do this?
      Ken Brooks

    108. 14

      Thanks for your and the other clairifications. I would doubt if that many applications are allowed just by filing a notice of appeal without also filing a brief [and in some cases a NOA was filed just to buy more time for a continuation], but if one or both are considered an appeal already then I see you point that they need to be considered in an overall anaylsis of appeals even though never even making to the Board.

    109. 13

      “Malcolm, how would you make Examiners more accountable for their actions, that include:

      i) issuing a baseless rejection, and

      ii) allowing a baseless claim to issue?”

      Termination of employment for continued mistakes, just like in any other job. There is a lonnnng line of highly educated, unemployed people who would like to work at the USPTO. Get rid of the dead wood and ignorami.

    110. 12

      Paul,
      You correctly say:
      “A [costly] appeal brief is unfortunately the first time some examiners are finally forced to have to actually pay full attention to, and respond to, the applicants distinguishing arguments.” That is my point. But the Appeal Brief is still an appeal.

      Applicants who ultimately file an appeal, feel they have exhausted all other administrative examination avenues and are prepared to go beyond just filing an Appeal Notice. Appeals are Appeal Briefs – not just what the USPTO decides to forward to the BPAI.

      You say that you “have to respectfully question [my] conclusion”. The USPTO compiles the number of appeal briefs filed every year but does not publish it regularly. My sources for Figure 2 are identified in my Comments and they include USPTO disclosures in the Appeal Rules notices, responses to FOIA requests and its own filing in low-key submissions to OMB under the Paperwork Reduction Act (PRA). Under the PRA the USPTO is required to account for all appeals filed – not just the appeals reaching the BPAI. The number of appeals reaching the BPAI is rather arbitrary, as it depends on the specific internal balance the USPTO strikes between its desire to reduce the workloads on the BPAI and on the examination corps. Appeals are Appeal Briefs. Does it matter WHY the appeal is taken? Would you suggest that a rejection by an examiner who failed to “actually pay full attention to, and respond to, the applicants distinguishing arguments” should be discounted somehow as unappealable? Your distinction may provide an explanation for some bad rejections but not a basis to discount an appeal when an Appeal Brief is subsequently filed. That said, we all agree that the cause you cite has been more prevalent in recent years for the growth in appeals.

    111. 11

      I have also been researching Board Decisions to study how they are using the 7 rationales.

      I have a question about your SCRIPT. I have noticed that many Board decisions which include 103 rejections were
      ultimately reversed based upon a 102 rejection, thus eliminating any need for the Board to discuss the 103 rejection.

      So the term “obviousness” is mentioned in the Board decision and would be picked up by your script. You may count this as a reversal of a 103 rejection when it really shouldn’t be counted.

      I wonder if your SCRIPT took this into account. If not, the actual REVERSAL rate may be even higher than you determined.

    112. 10

      “2) the Applicant argues that the examiner’s rejection relies on non-analogous art;”

      This never works. KSR is often cited as making this factor even less important than before and it seldom worked before KSR.

      “4) the Applicant presents evidence of secondary considerations (unpredictable results, superior performance, failure of others to address a long felt and unanswered need, or market performance)”

      This never works when BPAI doesn’t simply refuse to consider the secondary considerations. I don’t believe I’ve seen “superior performance” argued as a secondary consideration.

    113. 9

      Malcolm, how would you make Examiners more accountable for their actions, that include:

      i) issuing a baseless rejection, and

      ii) allowing a baseless claim to issue?

      Is there any link between “accountability” and “Esprit de Corps” or “morale”? How healthy is morale, under Kappos at IBM?

    114. 8

      The only metric for Examinination Quality that matters is the number of crappy patents that are issued.

      Everything is else is just noise.

    115. 7

      Appeal conferences are held by the TCs after any notice of appeal is filed, not just for pre-appeal conference requests (see MPEP 1207.01). The unilateral examiner behavior you are describing is often the result of appeal conferences (or at least SPE conferences) occurring outside the pre-appeal conference procedure.

      Because the PTO treats examination data as a state secret, we’ll never have any real statistical information regarding the appeal process. Unless, of course, Dennis can somehow overcome the selection bias in his data set.

    116. 6

      Ron, I have to respectfully question your conclusion in your study that: “The number of appeal briefs has grown sharply, while the number reaching the BPAI has been roughly flat. This means that an Appeal Conference with other examiners finds that the examiner’s rejection lack any merit in nearly four out of every five appeals.”

      First, no one I know reports anything like a 4 out of 5 examiner reversal rate in pre-appeal conferences, or believes it. Secondly, there are many other more common reasons why the number of appeals has not increased with the number of appeal briefs filed. E.g., examiners now quite often withdraw cases on their own for further prosecution or allowance after getting an appeal brief [not due to any pre-appeal conference request]. It avoids their having to prepare an examiners answer, which is time consuming. A [costly] appeal brief is unfortunately the first time some examiners are finally forced to have to actually pay full attention to, and respond to, the applicants distinguishing arguments.

    117. 4

      Dennis,
      Great article, and an important dissection of BPAI decision issues.

      One comment though. You say “the majority of issues (61%) are affirmed and the remainder reversed…. I find that the likelihood that a case is affirmed has increased over time (Jan 2008 – May 2009).”

      This statement can be misleading because the actual percentage of appeals filed that are affirmed by the BPAI has declined in the last five years down to less than 15%. This is because the number of appeal briefs filed ballooned by a factor of four in that period and now, examiner’s rejections under appeal are found by the Appeal Conference to lack even the minimum merit for BPAI consideration in nearly four out of every five appeals filed. See the data in Figure 2 in my Appeal Rules PRA comments at
      link to works.bepress.com

      The growing workload demands on examiners, in part, results in increased final rejection rate. Because the USPTO selects the filed appeals that reach the BPAI, a progressively shrinking fraction of appeals have been cherry-picked over time for submission to BPAI. It should come as no surprise to see that, of the appeals REACHING THE BPAI, increasing fraction is affirmed. If one can analyze only 6,400 appeals out of 30,000 appeals filed per year, I would refrain from using phrases such as “most appeals from examiner rejections”, “the most common issue on appeal”, “the record-filing of 6,400 appeals in FY2008”, “appeal filed with BPAI”, etc. Unfortunately, applicant’s are denied an administrative independent right of appeal in a majority of filed appeals.

      Finally, I anticipate erroneous use of your results. Pronouncements citing your results, such as “an increase in affirmance rate at the BPAI indicates that USPTO examination quality has improved”, must be thoroughly questioned.

    118. 3

      Yes, how much KSR has increased 103 rejection Board affirmance rate seems to be the burning issue?

    119. 2

      Zak – Thanks for the post. Clearly one next step with this data is to look under the hood of the obviousness decisions to what particular issues are being affirmed and what issues are being reversed.

      Although I do not have numbers yet, I believe that the two most common reasons for reversing an obviousness rejection were (1) that the examiner misinterpreted the prior art; and (2) that the examiner did not explain why “a person of ordinary skill in the relevant field [would] combine the elements in the way the claimed new invention does.”

    120. 1

      Dennis,

      I liked your article. I did leave me wondering a few things, however. First I was wondering if any of the seven obviousness rejections rationale enumerated by the SCOTUS in KSR and reiterated in MPEP 2143 are more prevalent in cases appealed to the BPAI. Along those lines, I was if the BPAI treats all seven rationales equally or is the rejection more likely to be reversed if the examiner uses a particular rationale.

      Considering that 65% of obviousness rejections are affirmed, is the Application more likely to succeed if: 1) the Applicants argues that the examiner has failed to show all the elements of the claimed invention in his combination of prior art references; 2) the Applicant argues that the examiner’s rejection relies on non-analogous art; 3) the Applicants argues that the examiner’s rejection is taught away from or would result in an inoperable device; or 4) the Applicant presents evidence of secondary considerations (unpredictable results, superior performance, failure of others to address a long felt and unanswered need, or market performance).

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