Bits and Bytes: Hot News

Today’s Posts that may have been lost in the shuffle:

Let’s meet up:

  • The MBHB law firm has been a longtime sponsor of Patently-O. (Thanks!) The firm is co-sponsoring a reception and dinner at the newly constructed wing of the Art Institute of Chicago on Monday, September 14, 2009 as part of the part of the Intellectual Property Owners Ass’n (IPO) annual meeting. I hope to see you there. [IPO]

Examining:    

31 thoughts on “Bits and Bytes: Hot News

  1. 31

    ~~Logan~~,

    I appreciate the civility of your reply. Certain other posters who purport to be examiners can learn from your example.

    I also appreciate you drawing the distinction between OPQA and second set of eyes. Thank you. In truth, my venom is more properly aimed at the second set of eyes program, and any shadow working of administrative bodies prone to covert agendas. Does the second set of eyes program have its own MPEP guidance, or does it fall under the guidance you already provided?

    Notwithstanding your aspersions and call for judicial decisions and legislative history, how would you read the plain text of the Law at 37 CFR 1.2? Do you have an issue with any part of my interpretation directly? Not pi$$ing, but trying to understand what is the legitimate contention that you may have with what I have posted. Is there clear error that you can point to?

    To the point about OPQA and the comparison to normal operations where an examiner’s argument is overcome, there are critical points overlooked.

    If for nothing, else, in the normal operation the record includes arguments overcome. And for good reason.

    Your stand of internal arguments (OPQA) that are overcome not being of record would then imply that anything an examiner had said that was overcome should also be stricken from the record. There are clearly quite a few things wrong with doing so, not the least of which is that the record serves more than just the immediate decision on granting a patent.

    Further, even if these records are internal, they have an immediate impact on the Applicant’s rights, and thus whether overcome or not, are material to the record of examination. The Office, by Law, can only make decisions on what is of record. I am sure that the Supremes, with their knowledge of administrative law, would easily recognize this tenant and its import.

    Seeing why an argument was overcome has the public benefit of dissuading that same argument from fruitlessly being used down the road in litigation. What purpose does hiding that part of the examination serve? As you have pointed out, the work by OPQA is truly an examination including detailed analysis. Why hide this?

    As to point number 3, perhaps the relative happenstance would be appreciated if such examination were made of public record. And then again, perhaps the overwhelming use on one type of error at the expense of the other type would be clearly seen. The policy of “in plain sight” would be better served if such internal arguments for and against patentability saw the light of day.

    There is a real difference between your example of a discussion between an examiner and his SPE and the continued examination by OPQA. One difference is the interposition of the applicant. In the case where an examiner has made a decision, and that decision has been made public (the applicant has received the examiner answer), and then that answer is withdrawn based on OPQA, then the situation is clearly different from the situation between and examiner and his SPE prior to the finality of the examiner’s answer being made of record. Your other examples have more to do with general training. I will posit that anything rising to the level of examination of an applicant’s work and bearing on that application must be covered in the written record by Law. General training and informal discussions may not rise to that level, but if they did, they need to comply.

    I am not picking and choosing. I trust to the word ‘exclusive”. What do you understand that portion of the Law to mean? Otherwise, you will be faced with the inevitable “mystery” actions taken by the Office. For a discussion on such a “mystery” action, see the thread at:

    link to patenthawk.com

  2. 30

    Noise,

    Can you cite any judicial decisions or legislative history for 1.2 to back up your opinions & interpretations of 1.2? Or are your opinions unsupported? Not trying to get into a
    p1$$ing contest, a legitimate inquiry.

    Further, I want to make sure that you understand a couple of facts.

    1) OPQA and second pair of eyes (2pe) are two COMPLETELY different things. I am JUST discussing OPQA. The way 2pe was implemented in many areas was a case would be kicked back by a reviewer without any reasoning & the examiner told that a case wasn’t allowable. The examiner would then be “forced” to come up with some grounds of rejection. That was a bad idea badly implemented as said before.

    2) On the other hand, OPQA must provide specific rejections, including references (for a 102 or 103) and how the claims are to be rejected in detail. The TC (and examiner) gets a chance to rebut this. If no agreement is reached this is appealed to the asst. dep. com. (I think that is the title). Ultimately, if it is concluded that an error was made & a rejection should have been made the case is withdrawn from allowance & a new action with this rejection is sent out.

    3) OPQA also reviews finals & non-finals and if errors are found in the rejections those rejections are withdrawn. No one ever seems to complain when this happens.

    So, the applicant IS made aware of what OPQA ultimately decided & what the grounds of rejection should have been, though the name of OPQA is not attached (If the rejection is reasonable, is it material WHERE it came from??). Effectively nothing is withheld from the applicant and all pertinent material IS made of record in writing. If no error is found, it does not matter to the applicant if an INTERNAL issue was raised & withdrawn (though normally any new art raised by OQPA will be cited & made of record in a supplemental notice of allowance). So, there is nothing that is, effectively, not of record that effects the applicant.

    Additionally, as pointed out a few times above, there are MANY things that are INTERNAL to the examination that are not officially made “in writing”.
    If an examiner writes up a rejection and the SPE does not agree with the grounds of rejection, that original rejection is never made of record. It is discarded. No real difference.
    Discussions between a SPE & junior examiner as to why certain references or grounds or rejection should not be made are not made of record. Again, no difference.
    Discussions between examiners about possible reactions or areas to search are not necessarily made of record (depends on if these discussions are “formal” or “informal”) There are many other instances along these lines.

    IF you can explain why it would be appropriate to not make these INTERNAL materials in the written record but it is necessary to make INTERNAL OPQA material in the written record, you may be able to make a convincing point. If you can not, I don’t think that you have a point. You can not pick & choose which INTERNAL materials must be in writing & which are not.

    Also, if you REALLY wanted to see these materials, would they be available to obtain via a FOIA request? (That may be a loaded question :)

    BTW, if you want to use the ~ you can ;)

  3. 29

    MaxDrei,

    What is the purpose of having the business of the Office transacted in writing?

  4. 28

    NAL, is this it:

    “BTW, §1.2 states:

    Business to be transacted in writing.
    All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.”

    If so, sorry but I’m still having difficulty seeing your point. But I agree that “action” could be clearer.

  5. 27

    MaxDrei,

    Star chamber may be a bit of hyperbole, but try to square the law of 37 CFR 1.2.

    Since 6 is put into a rant, we all know that my view must be correct. There is a reason why 37 CFR 1.2 is in place. Let’s try stating that reason and working back from there – ok?

  6. 26

    NAL, Wikipedia tells us that Star Chambers are:

    “administrative bodies with strict, arbitrary rulings”

    Furthermore:

    “Court sessions were held in secret, with no indictments, no right of appeal, no juries, and no witnesses.”

    So I don’t understand why you think the PTO is a Star Chamber. Any Decision issued by the PTO has to be appeal-resistant, doesn’t it?

    I don’t see things as catastrophically as you. In particular, I don’t see how off the record quality control within the PTO (a good thing) turns the USPTO into an ev|l Star Chamber.

  7. 25

    “FAOM art is placed on the record.”

    Oh, so now placing art on the record is allowed! I thought that placing art on the record was an agency action!

    Your position is outrageous, end of story. It has been since the beginning. I don’t have any more desire to discuss it with you. Just keep writing your shty articles that nobody gives 2 shts about, and everyone who is anyone disagrees with. I can’t wait for the next lolathon posing as a professional opinion.

    “Yes, it is that ludicrous that the work of the shadow second set of eyes is not placed on the record.”

    At least we can agree on that. So go fight the good fight next time you find out a case of yours got OPQA’d, if you ever do, and file a case in court about it.

    “then that material or argument should be on the record.”

    It is eventually made of record. I presume you get an OA containing it. They just don’t tell you that OPQA made it I guess.

    “That would make sense, right?”

    Home boy there is a whole lot of things that make sense, but not noise’s position on this issue.

    “I realize this is a 6 briar patch trick, but 6, you should recognize from the thumping I gave you on another thread about what “on the record” entails and why the secretive nature of second eyes violates the Law.

    Your spouting off dmbas sht doesn’t count as a thumping. You are retrded. That is all your spouting off shows. As do your other views in fairly widely circulated literature. And nobody is ever going to take it seriously. At least I have the decency to be on the winning side of big issues before courts. You might try it sometime.

    “How can an exchange of views, between two such individuals, constitute a “basis” for an objection to patentability?”

    By the same token, how can an exchange of views, between me and my spe, constitute a “basis” for an objection to patentabilty? I don’t know Max, why don’t you ask a spe?

  8. 24

    “In other words, first actions on the merits should never issue with art rejections because the art wasn’t of record at the time the office wished to make that action.”

    Um, 6, your comprehension again limits you. FAOM art is placed on the record. That’s why you have to indicate which art you are using in the FAOM. Contrast that with the point here with OPQA keeping their input off the record. The correct analogy for your little snare would be a FAOM with the art not cited. Yes, it is that ludicrous that the work of the shadow second set of eyes is not placed on the record.

    From a policy standpoint, if the second set of eyes has material or argument strong enough to overrule an examiner (who SHOULD be the deciding point on examination), then that material or argument should be on the record.

    I realize this is a 6 briar patch trick, but 6, you should recognize from the thumping I gave you on another thread about what “on the record” entails and why the secretive nature of second eyes violates the Law.

    MaxDrei,

    I have noticed more effort from you lately in attempts to make your comments at least on point. Here, the “mentoring and quality control” is less mentoring and more further examination. I do not have an issue with this type of “extra” examination per se – but to have a star chamber approach, where the extra examination by a higher power is kept off the record clearly violates the Law.

  9. 23

    Maybe, 6 , Noise and Logan, it all depends on what is meant by “based”. For example, the action of rejecting might have to be “based exclusively” on a written communication from the PTO to the Applicant (and cannot instead be a written communication that recites something like “I reject for the reasons I gave you over the phone”). That would make sense, right?

    Any memorialisation of the mentoring and quality control procedures that preceded the creation of the written “basis” isn’t a contribution to the “basis” is it?.

    For example, rejections are “based” on fact and argument, and not on differences of opinion between two individuals within the PTO. How can an exchange of views, between two such individuals, constitute a “basis” for an objection to patentability?

    I’m not a US patent lawyer either. Just writing what comes to mind (what seems to me to be common sense).

  10. 22

    “Not much room outside of “exclusive” for actions to be taken by the Office (not by the applicant)that may be based on items NOT of the written record.”

    In other words, first actions on the merits should never issue with art rejections because the art wasn’t of record at the time the office wished to make that action.

    Her point of view is absurd and she can’t tell.

  11. 21

    Nice try Logan, but no cigar.

    “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.”

    That’s pretty explicit.

    Not much room outside of “exclusive” for actions to be taken by the Office (not by the applicant)that may be based on items NOT of the written record.

    ~sorry about the “~~”, I kind of like them.

  12. 20

    Logan you hit the nail on the head with that interpretation, but noise will never ever accept it. She looks too deeply into the “the action o the pto will be based on the written record” creating out of context meanings.

    But, that’s what she loves to do. So let her do it.

  13. 19

    Noise,

    I’m not a lawyer, so I don’t know all the judicial and/or legislative history behind 1.2, so I can not comment how it has been interpreted over the years. I do know that the laws do have precedent over the MPEP. So, is there anything out there to allow the MPEP to interpret 1.2 as I quoted above?? Can you point us to anything?

    BTW, §1.2 states:

    Business to be transacted in writing.
    All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

    Looking at it, and maybe interpreting it as an examiner :), I could make an argument that 1.2 is discussing how the APPLICANT does business with the PTO and not necessarily how the PTO does their end of the business. 1.2 appears to be all directed to the applicant and their actions & how things should be interpreted. It does not (at least not explicitly) state that all of the PTO’s actions must be in writing. Just a guess at an interpretation but it would fit in with the language of 1.2

    BTW, no need to include the ~~ when addressing me :)

  14. 18

    Thank ~~Logan~~.

    Any examiner want a a shot at reconciling this MPEP directive with the Law? Specifically, 37 CFR 1.2.

  15. 17

    Interesting. Now I know where that oddly worded form paragraph “Prosecution on the merits of this application is reopened on claim [1] considered unpatentable for the reasons indicated below…” comes from. It’s not from a grammatically challenged Examiner, but from the grammatically challenged author of this section of the MPEP. So much for keeping secret the fact that OPQA forced a re-opening of prosecution.

  16. 16

    hey, “noise”,

    How about MPEP 1308.03 which states:

    “Quality Assurance forms and papers are not to be included with Office actions, nor
    should such forms or papers be retained in the file of any reviewed application whether or
    not prosecution is to be reopened. The application record should not indicate that a
    review has been conducted by Quality Assurance.
    Whenever an application has been returned to the TC under the Quality Assurance Program, the TC should promptly decide what action is to be taken in the application and inform the Office of Patent Quality Assurance of the nature of that action by use of the appropriate form. If prosecution is to be reopened or other corrective action taken, only the forms should be returned to the Office of Patent Quality Assurance initially, with the application being returned to the Office of Patent Quality Assurance when
    action is completed. In all other instances, both the application and the forms should be
    returned to the Office of Patent Quality Assurance.”

  17. 15

    “If I could write well you would probably have picked that up.”

    Fixed your sentence for you 6.

    And yes, the Law at 37 CFR 1.2 is never far from my mind – it is a sweet and powerful law which cuts out a lot of crap from wanna-be administrative demi-gods. It is awfully easy for administrative legal power to run amuck.

    Perhaps you can help ~~Logan~~ out with finding the OPQA not of record section.

  18. 14

    “but rather, Enablement is a part of the written description.”

    EXACTLY. Enablement is part of the written desc. And that means that there is more to WD than enablement. Now, the court is saying that the part of “WD as a whole” which is “left over” if you subtract the part of “WD as a whole” known as “enablement” then you will be left over with a part of WD which is a “seperate” wd which the claims must meet.

    They are, in essence saying that there is a WD genus which has an “enablement” species and a “seperate WD requirement” species contained therein.

    That is, you followed the exactly correct analysis bread, but you don’t understand what the court is saying in its previous opinion. You agree with them in essence, you just don’t like they’re wording it. And in the manner in which they are wording it, the answer is yes. But the bottom line is, you both agree even though you think you don’t.

    Anyone still not understanding, simply take a piece of paper, draw a circle. Draw a line down the middle of the circle top to bottom. Write “enablement” on the right half, and write “seperate wd requirement” on the left half. Then write “written description” above the circle.

    That is how everyone on the court, bread, and everyone who is anyone, except for judge Linn apparently, sees the matter.

    “Actually, TJ, I think everyone agrees that 35 USC 132 has a written description/new matter doctrine.”

    That is a stretch and it doesn’t always apply.

  19. 13

    ~~Logan~~’s arguments filed August 21, 2009 at 8:34 PM have been fully considered, but they are not persuasive.

    Of course I understand the concept of retaliation. My point was that it’s a pretty weak rationale for not signing your work. Examiners sign their names to office actions even though angry applicants could retaliate against them for rejecting their claims. Why is OPQA different? I’ve never heard of an applicant going postal on an examiner, but I’ve never heard of an examiner going postal on OPQA either.

    And why would a jury not be able to understand the extent of OPQA review? You just explained it pretty clearly in three sentences, they should be able to follow along. If nothing else, OPQA review should indicate that the claims pass 101. As you say, there also shouldn’t be any “low hanging” clear errors. And I mean really, if what you guys do is so irrelevant to patent validity, how do you justify the existence of the department?

    In my opinion what you guys do is relevant to validity and should be noted in the record.

  20. 12

    “yes, that seems quite logical, for we all know that people “going postal” are logical beings and they really do want to save lives.”

    Um noise, I mean for the policy maker to focus the person’s rage on one person, as opposed to the whole QA group, by telling them who it is. If you could read well you would probably have picked that up.

    In any event, the obvious solution to the situation is to do away with QA all together and let the spe’s do that job, and let the directors watch over the spe’s work.

  21. 11

    6,

    yes, that seems quite logical, for we all know that people “going postal” are logical beings and they really do want to save lives.

    /sarcasm off

    ~~Logan~~,

    Can you point out where in the MPEP that the OPQA material is stated as not to be of record?

    Thanks,

  22. 10

    “Ever hear the term “going postal”??”

    If someone went postal in the PTO, they could take out half the QA dept in my AU in a matter of minutes. That being a given, I would think it would make sense to go ahead and focus their rage on one individual rather than the whole group. Might save lives.

  23. 9

    uh, “transparency”, how could you NOT understand the possibility of physical/personal retaliation against someone that is (at least partially) responsible for you not getting a bonus or promotion, or worse, loosing your job??

    I am NOT talking about the applicant taking retaliation but the examiner that receives error(s). If you can not understand people getting POed about loosing their job, or such, and taking it out on those that they feel are responsible (rather than taking the responsibility themselves for doing a bad job) then you must not read the papers. Ever hear the term “going postal”??

    As to having the info in the record, who you want to be going against a patent that was represented as “gold-plated” because it got approved by OPQA? I doubt it.

    While people in the profession may (or SHOULD) understand that OPQA really is more about picking the “low hanging fruit” of clear errors on allowances since reviewers only get 3.5 hours per case and only about 1 (ONE) allowance and 1 (ONE) IPR (final or non-final) is reviewed per examiner per year by OPQA on average, and only 1 in 5 cases are required to be back-searched by OPQA, try to convince the jury that OPQA “approval” does NOT give the patent a higher perception of validity. You consider that? It would give an unfair representation to the patent as being “better” than any other patent not so reviewed.

    On top of all of that, a lot of cases are sent back as potential errors that the TC is able to argue & wriggle out of in various ways. Plus, probably at least twice as many cases as finally result in errors are kicked back as needing corrections of some sort. This can be anything from a missed 112, 2nd, on an allowance to a horribly written 102 or 103 that used good art. OPQA generally can not charge errors for this types of things. (Yes, I agree that the real representative error rate should be higher for allowance &, particularly IPRs than currently reported, but are not because of the preceding.)

    Additionally, what REAL relevance is there to an allowance if an error was found in a 1st action rejection of claims? Particularly if there were later rejections or amendments? None at all.

    And, considering how little real time OPQA has to review a case, what would it matter to OPQA or the “PTO brass” is an allowance reviewed by OQPA was later held to be invalid?
    From what I hear, most attorneys are complaining about bad rejections than bad allowances, anyhow.

    Oh, and it is not the “PTO brass”, current or recent, that doesn’t want OPQA info in the file. The MPEP states that OPQA material is not to be made of record. Not something that was added any time recently.

  24. 6

    Uh, what exactly is bad about someone attributing higher weight to an examination where two examiners found the claims to be allowable (even if one was only a cursory examination)? And if an error was made, regardless of whether you are a plaintiff, defendant, or judge, wouldn’t you like to know about it? You could also use the (bogus) retaliation argument to justify not having examiners or SPEs sign office actions.

    I suspect that a more likely reason that the PTO doesn’t want the reviewer’s signature in the prosecution history is that they know it will look really bad when a patent is later held invalid under 101 or 112 and one of their “patent quality experts” signed off on it. OPQA signatures would be good for every involved party except OPQA and the PTO brass.

  25. 5

    “fisher”,

    While I agree that the second pair of eyes was a bad idea badly implemented, I disagree on your point about OPQA putting in the record when a case is reviewed (whether there is an error or not).

    The reason for OPQA not being made of record is not a matter of willing to put the reviewers name on it. It is a matter of how the review (no matter the results) would be presented in litigation.

    If an allowance was reviewed by OPQA (who only gets 3.5 hours to review a case, BTW) a litigator would present that the patent was not only examined by the examiner but also by OPQA, thus giving it a higher level of validity (true or not). On the converse, if a case was reviewed by OPQA & had an error sometime during prosecution I can easily see a litigator presenting the case (on the other side) that the examination was sloppy & that the examiner’s work should not be giving deference because it was sloppy as evidenced by the error during prosecution.

    An internal reason for not putting names of the OPQA reviewer on the reviews is to prevent any retaliation from an examiner that has an error alleged against them. It is conceivable that someone that looses their job because of errors raised by OPQA would seek retaliation against the reviewer(s) who raises the errors. Clearly not a good situation.

    So, there are clearly very necessary and valid reasons for the identity of the reviewer, as well as the review itself, being kept hidden/secret.

  26. 4

    The OPQA and 2nd PAIR reviewers need to be documented in the records in which they choose to participate in the process. It may sound old fashioned, but if you are doing work that you are genuinely proud of, then why wouldn’t you want to sign your name? Own it.

  27. 3

    I just signed onto PAIR– the two security words were “fangs out”

    A coincidence? I think not!

  28. 2

    We only put the “no” in “innovation” because 2nd pair of eyes put the “ow” in “allow”.

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