Nudging Against RCE Filings

200910211319.jpgFollowing the Sunstein-Thayler nudge theory, the new PTO administration is taking small non-rule-based steps to discourage the filing of Requests for Continued Examination (RCEs). RCE’s are already fairly expensive – $810. That outlay is relatively low compared with the cost of preparing and filing an appeal – especially when it appears that an applicant’s arguments have not been fully considered or when the applicant perceives the opportunity for an amendment that would lead to allowance.   

Timing: In the past, one benefit of RCEs was that they were quickly examined as part of the theory of compact-prosecution – in essence, RCE filings were treated almost just like an office action response. Under a new procedure, the PTO will now be placing RCE applications in the same queue as divisional and continuation applications. Although that category is identified as “special new,” cases are typically taken-up more slowly than ones already on the docket and in-prosecution. According to a memo from Director Kappos, “The change to the docketing of requests for continued examination means that examiners are no longer required to act on a request for continued examination within two months of the entry of the request for continued examination on their docket. This change to the docketing of requests for continued examination is being made to allow examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications.” [Note – I’ll see if I can pull-up data on the typical delay from filing a continuation until a First Action on the Merits (FAOM)]. [Kappos Memo – rce_docket.pdf]

Examiner Incentives: One of my students – Jaron Brunner – recently wrote an excellent paper applying negotiations theory to the patent prosecution process. Jaron is certainly correct that many aspects of patent prosecution can be thought of as a negotiation process. With that mindframe, it is easier to recognize that – although applicants are the parties that actually file the RCE’s – examiners do play a role in taking prosecution to the point of RCE filing. The new examiner count-system addresses this problem by reducing the credit (counts) that examiners receive for examining RCE filings and increasing the credit for initial office actions. As part of the nudge toward focusing on the important issues early-on in prosecution, the PTO is also providing more incentives to examiners to have discussions (interviews) with applicants rather than rely solely on formal paper filings that are often misunderstood and left unread.

Allowing Allowable Claims: Perhaps the biggest nudge is a change in philosophy – dropping the notion that “a lower allowance rate equals higher quality.” At least in their speeches, PTO management is encouraging examiners to work more directly with applicants to “find the patentable subject matter and get it clearly expressed in claims that can be allowed.”

In both FY2008 and FY2009, applicants filed over 100,000 requests for continued examination.

263 thoughts on “Nudging Against RCE Filings

  1. …but-t-t-t, I’m the famoose 6. I-I-I know more lawl than you (just don’t have me give an example).

    6, I found the above response in the trash can (must be the one you grab all your responses from).

    Since I know that you have taken my advice and are busy actually trying to do your job and rpovide service to your customers, I thought I would post it for you.

  2. *******4-5 years from now I can simply offer to perform your job many times better than you (since I’m not incompetent) at less than they pay you. *******

    FYI, 6, most patent attorneys were not formerly Examiners. Most patent attorneys, especially Top Firm partners, and hiring partners in particular, think that those who were formerly Examiners think too much like an Examiner, especially when drafting claims. You might want to evaluate how you are going to approach that issue in interviews. You might get lucky and find a small firm made up of former Examiners. But, more typically, it’s not the selling point you might expect.

  3. “I’m not going to get pulled into a discussion…”

    From the briar patch kid – nice track shoes 6. They match your skirt vey nicely.

    You have met my low expectations on substantive discussion about all those lawl’s that you can read and know better. It must be nice there in your fantasy land.

  4. Lost and Confused: great comment. Sorry I led you to think that I’m curious. Not intended. You wouldn’t by any chance be “confused SCOTUS”, would you? No, I thought not.

  5. “you have no clue what 37 CFR 1.2 stands for”

    It doesn’t “stand for” anything you jackas.

    I’m not going to get pulled into a discussion about any more of your reta rded “beliefs” about the lawl today.

    “But you should consider that most examiners consider this kind of construction to be “proper” due to court decisions commanding BRI.”

    That has nothing to do with BRI. That term has an established meaning which should take you no more than an hour of searching to find a reference (evidence) showing. Oh wait, what’s that? Art is hard to find? Excuse me while I LOL MY ROFL CAKES.

    ” If the claim can be misconstrued, they reason, it should be, as the applicant can clarify with amendments.

    But the problem is, there are dire consequences during reexamination.”

    They’re probably right, and if you’re too lazy to find evidence of that term’s usage then you can feel free to accept whatever consequences befall you and I will shed nary a tear.

  6. MaxDrei wrote, “Another, I’m curious.”

    Now I’m really confused. Your writing style is nothing like that of curious. How do you keep them separate?

  7. “And court decisions will never stop “going my way” re discussions with NAL because I can read and know tha lawl better than NAL does. Don’t think I’m bragging because that isn’t saying much.”

    “never stop” 6 – name one true court decision to even start (Not a BPAI crap).

    Can you say Alappat? Can you Cacheris? Know the Law? – you believe the crap your SPE tells you about what part of an application you are required to examine – by the Law. You think 151 gives you the right to make up your own understanding “under the Law”, you have no clue what 37 CFR 1.2 stands for. Ever actually finish (much less start) the sentence diagramming of 112 Paragraph 1 (even with your own wiki reference blatantly showing you to be in error)?

    grab your track shoes 6, the race is about to start. The only “never stop” you know is the “never stop” to your running away.

    It aint bragging 6 – it just aint true. You have a hard time with simple reading comprehension, let alone legal reading.

    Let’s hear one of your famoose juvenile responses while you get me a sandwich, boy. It’ll give you some time to come up with a substantive reply (but I won’t hold my breadth for that).

  8. “But the problem is, there are dire consequences during reexamination.”

    Ned, are you saying that the consequences of amending a claim are more “dire” during reexamination than during the initial prosecution? If so, why?

  9. 6 no doubt the argument can be made that the claim construction was improper. But you should consider that most examiners consider this kind of construction to be “proper” due to court decisions commanding BRI. If the claim can be misconstrued, they reason, it should be, as the applicant can clarify with amendments.

    But the problem is, there are dire consequences during reexamination.

  10. “when it looked looks things were going his way (rules packages, court decisions, etc.), but he seems bitter and small now.”

    It still looks that way. Kappos simply decided to shoot himself in the foot before getting down to business.

    And court decisions will never stop “going my way” re discussions with NAL because I can read and know tha lawl better than NAL does. Don’t think I’m bragging because that isn’t saying much.

    “Yet despite this, I understand from you that these “inventors” rarely if ever file anything that is remotely patentable?”

    Nothing could be further from the truth. I have already told you guys that we have an eventual allowance rate of approximately 80%+. There is a whole lot that is patentable. However, accepting that the scope of your patent is going to be limited to one very narrow embodiment you have shown rather than the entire “concept” of “changing” (i.e. setting to some specific value or relation to a different value etc) the properties of one small part of an entire class of devices (or etc. etc.) is a rather bitter pill to swallow.

    Let’s be clear, I take no issue with the “innovation” on display before me day in and day out. What is embarrassing is how it is being claimed. It is just technically irresponsible and is very likely the result of many people with only a minor background (at best) in my art prosecuting/drafting.

    I also note that if you were to ask me at the beginning of prosecution to point out the allowable subject matter that will eventually usually be found I could not do it. Even if I were omniscient concerning the prior art I probably still could not do it. I could probably point out some allowable subject matter, but a healthy portion of the time I would not think to go in the direction that the applicant eventually goes in.

    It is for that reason that I take less issue with the technical incompetence of the original drafting. Rounds of prosecution are pretty much expected.

    “the “inventors” are all geniuses and professors, ”

    Most are probably grad students or professors yes, but as to them being “geniuses”, meh, that’s going a bit far. I’m sure there is a fair number of them that just have their bachelors.

    “And to reject their simple non-patentable developments you do not need to read scientific journals, you just do a 5-minute Google search?”

    What, prey tell, do you think I’m finding with those Google searches? Hint: “scientific” or “industry” journal articles.

    In any event, we’re probably not the most technically demanding art out there. I could see some of the bio/chem fields being more so.

    “Taco, happens all the time in reexaminations where the consequences of this idiocy is the forced introduction of claim limitations that can have serious consequences on past damages.”

    If your attorney isn’t a mor on technically then he should be able to argue that interpretation of “parallel” so long as you used it appropriately in the app.

  11. These posts bring about a question I have to ask myself. Why do applicants pay extra for extra claims? Sure if it is only a few than it will probably not impact the search. But each claim divides the search time. Do they expect miracle examiners, who do the same job regardless of the number of claims?
    Don’t they realize they would get more value by filing a copending application with the same specification?

    To use the “menu analogy”, don’t applicants realize that some items on the menu are a bad buy?

  12. Taco Bell said: “Amen! to #4. I recently had an examiner interpret the word “parallel” in the phrase “parallel interconnection bus,” in an electrical application, to mean physically parallel so that he could make a rejection. Dear god.”

    Taco, happens all the time in reexaminations where the consequences of this idiocy is the forced introduction of claim limitations that can have serious consequences on past damages.

    Not only do the examiners do not care, but the infringer bar sees this as the real boon of reexaminations.

  13. 6, relating to your 10:18 PM, a serious question.

    You write: “We deal routinely in applications that involve…complicated physics concepts (optics, physical phenomena, etc., even thermo occasionally), higher level math, chemistry (basic all the way up to … advanced), materials science and some of the most advanced manufacturing processes and process concepts on the face of the planet.”

    That is probably the most advanced and difficult art group, where the “inventors” are all geniuses and professors, working at the cutting edge of science and technology.

    Yet despite this, I understand from you that these “inventors” rarely if ever file anything that is remotely patentable? And to reject their simple non-patentable developments you do not need to read scientific journals, you just do a 5-minute Google search?

    To be honest, I am surprised because I would have thought that you would be exposed to serious innovation.

    Doesn’t that surprise you?

  14. 6 always seemed small, but you are right – he is more bitter now. It must suck to be him.

    However, his laughs then were empty and meaningless, much like his posts and his understanding of law.

    He does have his persistent shield of ignorance, though. I heard it as been adorned to match his skirt and track shoes.

  15. Noise, then he ties the knot, slips it over his neck, and jumps from the branch . . .

    6 can dish it out (lamely), but sure can’t take it. He was all laughs when it looked looks things were going his way (rules packages, court decisions, etc.), but he seems bitter and small now.

  16. No matter how hard I try, I cannot come up with a post that displays the inanity of 6 better than his own post immediately above.

    Not only does 6 bring the rope, he brings the tree as well.

  17. “Compare Lord Kappos and your former man-crush Dudas – who has a bigger set and actually has made substantive changes (changes, that is in a positive direction)?”

    Dudas wins hands down. Not only does Dudas win hands down, Kappos gets “negative” substantive changes because of his undoing that which Dudas did.

    In figurative terms, Kappos might have some, but they receeded back up into his body so far that you’d never know it.

  18. 6, first malpractice and now boss – you don’t have a clue do you? Compare Lord Kappos and your former man-crush Dudas – who has a bigger set and actually has made substantive changes (changes, that is in a positive direction)?

    Jame, thanks for the witless and gratuitous comment. Nice to see you join your skirt and track shoe teammate.

  19. My dox have practically been put up in their entirety already. But if you need more information ok np. We deal routinely in applications that involve, inter alia, complicated physics concepts (optics, physical phenomena, etc., even thermo occasionally), higher level math, chemistry (basic all the way up to dam advanced), materials science and some of the most advanced manufacturing processes and process concepts on the face of the planet. Temporal issues, issues of scale, issues of inherency (due in large part to the mat. sci), issues of implicit disclosure (due mostly to disclosures being written to those of ordinary skill) are all among routine issues we face, if we choose to not be lazy and face them. Occasionally we’ll do just a simplistic device structure.

  20. 6,

    You tell me about your art & I’ll tell you as much about my art. And, no, mine is definitely not one of those rinky-dink mechanical arts who get all of about 4 hours, maybe 6 now, per count as a primary.

    MVS

  21. ” Obviously not, because you would know that I don’t fear malpractice – my practice is well, thank you. ”

    That’s not what I heard.

  22. “Get to it before Kappos takes that away.”

    If Kappos thinks he has the balls to do that then let him try.

    Here’s a clue since you don’t have one: he doesn’t.

  23. “The cashier does not get to decide to give me an empty bag when I have ordered and paid for something else.”

    You never get an empty bag. At the worst you get a happy meal with chicken nuggets rather than a hamburger. And even that is rare.

    “Obviously not, because you would know that I don’t fear malpractice – my practice is well, thank you. ”

    Obviously you didn’t understand the comment. Nothing new.

    “I realize that you got fired from your last job for trying exactly that, and in your mind you think that you taught that customer a lesson, but you really didn’t.”

    Fired from my last job? LOLOLOLOLOLOLOLOLOLOL, but beware for your own job. 4-5 years from now I can simply offer to perform your job many times better than you (since I’m not incompetent) at less than they pay you.

    The one thing that I will never understand is how you can fool your boss into thinking that you have something of value to say to contribute to patent prosecution of any kind. Do you just blow him every night before you leave? Make him sandwiches?

  24. Your place is to examine applications to the requirements of the Law. Get to it before Kappos takes that away.

  25. 6,

    The “menu” is another of the arguments I own you on – do you really want to try that losing battle? It’s like you are a trash talking Titan, and I’m a Patriot, pointing up at the scoreboard.

    Give me what the Law says for you to give me, okay little boy?

    The cashier does not get to decide to give me an empty bag when I have ordered and paid for something else. I realize that you got fired from your last job for trying exactly that, and in your mind you think that you taught that customer a lesson, but you really didn’t.

    You did cause me to chuckle at the hint of malpractice – I thought you thought you knew who I was. Obviously not, because you would know that I don’t fear malpractice – my practice is well, thank you. You on the other hand clearly do not understand the practice of law, and continue to happily spout nonsense.

    Most people, 6, really care to speak only on those things they know. You are happy to speak away on anything, proving that you know nothing on everything. I guess that’s part of why its such a pleasure ripping you apart.

  26. “I would be being paid more for that activity.”

    All you’d do is do it for a year or so and then get hit with malpractice suits out your arsehole because of your “incompetence”. Then you’d be back here saying : “But if my clients had given me more time and not limited me to 8 (18, 28, 280, 2000000000000 hrs, etc. take your pick for a given case) FU CKING HOURS FOR 200 REFERENCES then there wouldn’t be an issue. THEY GOT WHAT THEY PAID FOR!!!!!!!!!1111!!!!!!!!” Or at least you would in a sufficiently advanced art. Perhaps your particular brand of toilet paper art isn’t that bad and you might skimp by.

  27. MVS it would be very helpful for you to just go ahead and let us know what sort of art you examine. Technically complex? Toilet paper holders? Golf clubs? Composite materials? Basic low level nonsense? Come on, just generally describe it.

  28. “(and paid the menu price – we don’t need to go there 6, unless you want me to slam you yet again).”

    Noise you know what? I agree with you. You paid the “menu” price that was set by corporate headquarters who apparently have no idea how much a filet costs.

    So, my recommendation to you when you get a happy meal after believing you were supposed to get a filet is to sue the Federal Government for false advertising.

    Unless you already posted all over the interwebs that you know very well that you’ll only get a happy meal and everyone else knows it too, even if the sign does say “filet”.

    But whatever you do, don’t bit ch to the cashier about getting a happy meal that someone somewhere thought it would be cute to rename “filet meal”. And don’t “blame” the cashier. He’s only giving you exactly what corporate headquarters and management allows him to give you.

    What do you expect the cashier to do? Go out back, magic you up a cow, kill it and bring you the filet?

  29. One last issue. I generally agree that the applicant should not be forced to do a preliminary search. Ultimately, it is the examiner’s responsibility to do the search & they know (or should) know the art better than a searcher.

    Where I do disagree is whether an applicant should willingly do a preliminary (not a comprehensive) search.

    If the applicant, or the attorney, do a short preliminary search (and I am talking about a 15-30 minute Google search, maybe just in the patents database – nothing comprehensive and probably using the terms in the claims) they would get a better idea of what the general state of the art is and how reasonable the breadth of the claims really are.

    This could save a LOT of effort, as well as money for the applicant, in the long run by starting with claims that might not be so unreasonably broad as to read on whole subclasses or on unrelated things. This may help to prevent a lot of the problems we see with prosecution these days.
    Of course, this does raise the issue of having to then cite anything you find & maybe defend the search or what was looked at if it ever goes to litigation, which is a problem with the legal system. It encourages the applicant to NOT know about anything. That gives them deniability. If they do a search they may uncover something, or someone may allege that they did or should have uncovered something, and can lead to invalidation. Something that needs to be changed in the legal system if we are to improve things.

    MVS

  30. Noise, as well as others,

    Your post @ 6:12 above is something I generally agree with. It IS the examiner’s responsibility to read & understand the disclosed invention, as well as what is actually being claimed (not always the same – quite often NOT the same thing), and to find the best art for the claims as well as for the disclosed invention and make it of record.

    Where I, and probably a lot of examiners, run into problems with what you & a lot of attorney preach is what you leave out.

    Firstly, often what may reasonably read on the actual claim language is somewhat different form what is disclosed as the invention. This can often result in rather different searches. Simply searching for what is disclosed may often miss prior art that reasonably reads on the claims due to their breadth. For example, just because an invention is disclosed as a “cell phone”, if the claims instead recite a “transceiver” and doesn’t get into claiming items like CDMA, if the examiner limits the search to class 455 (where the cell phones are classed) they will probably miss many other types of communications devices that are classified elsewhere & that would read on the claims. This is one point that attorneys seem to not understand (or not want to?). I am NOT complaining about having to do the wider searches, as this is what we are supposed to do. I am just explaining something that you all seem to not “get”.

    A second issue is that we see a LOT of responses where it seems that the attorney is not doing their job. Maybe you just have to do what your applicant tells you. But whatever the reasons, we often see things like:

    1) claims amended to read directly on other relevant art we cite in the 1st action;
    2) not responding to rejections;
    3) not changing dependencies when cancelling claims;
    4) arguing that a TD is not required to overcome an ODP because the reference & application would expire on the same day anyhow;
    5) amending claims to create clear-cut antecedent basis issues;
    6) remarks arguing issues that are technologically incorrect;
    7) etc…

    And this doesn’t even get into things like attorneys coming into interviews & not knowing or understanding the invention or what in the claims correspond to what parts of the disclosure (had this happen way too many times).

    WHY?? This just wastes our time & the applicant’s money. And helps “force” RCEs.

    And these are just a few things off the top of my head on a Saturday night. I could come up with lots more of common time/money-wasting errors that we see all too often. YOU may not do them, but a lot of your brethren out there do. So, just like you rightfully get POed with examiners that crank out bad actions, we get POed at attorneys that send in garbage responses. Many attorney friends out there have told me that they & other attorneys at their firms often get the cases that need amendments the day that they are due (particularly with foreign appls.) & are told that they need to respond. How much time & effort really goes into those last minute responses?

    See, both sides have a lot of problems & problem people. Yes, examiners need to clean up their act. But it is about time that the attorneys& forms realize that they need to clean up theirs as well.

    MVS

  31. “I for one, disagree with your premise sharply.”

    it was meant to be harsh and provoke thought and response. i, like you, don’t think any unethical activities are occuring. but I think the affect of mandatory searching on the business of patent law is worth discussion. I appreciate your view that it will be good for law firm profits. I think it will be bad for law firm profits, but good for the patent system.

    I think clients will file fewer cases when they see what the prior art shows, realize what narrow scope remains, and don’t think the rest of the process is worth it.

    I don’t believe law firms will recoup the lost drafting costs and lost office action responses by preparing an ESD-type analysis for the remaining cases that clear the professional search. also, there’s no guarantee that such a detailed, “expensive to prepare” patentability analysis will be required by rule or, if one is required, that clients will have their law firms perform the first draft of such analysis (as opposed to the professional searcher that performed the search)

    And if firms’ clients are already giving the firms their most promising cases, I’m not sure the firms can expect (1) their clients will send the law firms the less promising cases they haven’t been sending or (2) the less promising cases, even if sent, would be likely to clear the professional search in sufficient numbers to recoup the lost drafting costs and lost office action responses.

    I respect your opinion that your practice will thrive under mandated search and analysis. I’m interested if anyone else take noise’s view that requiring a search and analysis would increase law firms’ profits? I think the business of patent law would result in a substantial thinning of the herd.

  32. “If Tafas holds on and prevents vacatur from taking place, would the Office be foreclosed from ever actually making such a rule?”

    until Congress mandates a search and/or analysis and provides the USPTO with the ability to implement related rules (some patent reform bills had such)

  33. “Why can’t examiners realize that the “search” aspect belongs to them?”

    actually, i’m a patent attorney who can’t understand why applicants believe they are entitled to waste examining resources. why waste the first and/or second office action to get the claims where they could have been with a cursory glance at the prior art?

    I counsel clients to have a professional search and explain how it can save costs in drafting and in later prosecution. when they choose to have a professional search done, it finds 102 art on some idea that the inventor thought was novel. that saves at least one office action because the independent claims are targeted and force the examiner to look at more relevant art

  34. Obviously, the above rant is not directed to you shaggy.

    To answer your question, generally speaking both the applicant and the Office benefit from compact, focused prosecution. However, such prosecution demands more up front time, and demands a reading and understanding of the entire application, not just a key-word search of the claims. For the applicant, the upfront time is not visible to the Office. For the Office, truly applying a compact, focused prosecution means that the level of effort at the front end needs to be much more and much better.

    There are relatively few cases where a non-compact prosecution does benefit the applicant. I’m not sure how that is a concern for the examiner though.

  35. See bread – that’s the answer you will always get – examiners blame the applicant.

    C – your job is quite clear – examine the application as it is given to you. If you have trouble doing your job because the time is not enough (which may be a fair gripe), don’t blame the applicant.

    If you find that all your applications are higher than the average, then speak up to the right people and have them change the average, or change your mix. Get vocal with POPA – they are the ones that run your contract are they not?

    You signed up for the average and you need to take those below average as well as those above average and NOT short change the applicant in order to meet your clock. That’s stealing from the applicant. As “Advice for the future” points out – the applicant has paid for the extras (and paid the menu price – we don’t need to go there 6, unless you want me to slam you yet again).

    C – In all practical considerations, you are making your own personal value statement of “wasting time and resources” – that’s an empty and out of line argument. The applicant has paid for an examination – not an examiner to make a value judgment along the lines of what should or should not even be examined. That’s not your place. Every applicant has a right to have their application examined to the merits of the law – not shortchanged by an examiner too worried about time and counts to do the job that the Law requires.

    The quality job is NOT a function of the time that the administration gives to you. The quality job is dictated by the Law, not the administration of the law. That’s why Quality = reject, reject, reject is dying the messy death that it is. Why do you think the patent bar fights the Office so much? Know the Law. Apply the Law.

    Complaigning about “practical considerations” and using that as an excuse not to do your job is pure crap. Even your example is crap – if the fifty claims are so well known, it should be easy to dispose of them – yet you whine and say that you will have to go the RCE route even before you get through a first response. This is your art field right? You should be able to answer the broad claims quite easily. And yes there will likely be a response wiith amended claims. Guess what – read and understand the application in its entirety rather than the key word search and you will be prepared to point out to the applicant why nothing is patentable or just what may be patentable ON THE FIRST GO AROUND. But yes, – that takes work. Get busy.

  36. I think there’s some miscommunication here. As an examiner, I’m not “complaining” or “crying” about overly broad claims, because it’s not personal to me. I do think that it causes prosecution to be less focused and more drawn-out, but I do the best I can and that’s that. I posted about how it removes the focus from the inventive concept because I assumed there was someone here who cared about such things.

    Who has the greater interest in compact, focused prosecution – examiners or practitioners?

  37. “Also, examiners are given the same amount of time to examine an application that has 20 claims as an application that has 100 claims.”

    Blame USPTO management on this one. Applicants pay more for 100 claims. 80 extra claims, with none being independent, cost an extra $4000K for Applicants — not an insignificant amount of money. The USPTO charges Applicants for the extra work resulting from extra claims, but the USPTO management doesn’t give the Examiner the extra time to examine them — and then you cry about it to Applicants????

    You aren’t going to get any sympathy for doing a shi tty job on 100 claims when Applicants had to pay an extra $4000 for them.

    You are focusing your complaints on the wrong people.

  38. breadcrumbs,

    I guess what I’m trying to say is why waste the examiner’s time and PTO resources by requiring the examiner to search for 49 of the 50 (or even 50 of the 50) claims that both applicants and the examiner clearly know is well known? I take issue with applicants who try to throw in everything, including the kitchen sink, and wait to see what sticks. This type of practice places an unnecessary burden on an already burdened system.

    Also, examiners are given the same amount of time to examine an application that has 20 claims as an application that has 100 claims. So in light of these practical considerations, which application do you think is likely to have a higher quality examination?

    appealho,

    Yes, I always read the specification as well. However, from my experience, I find it difficult to dispose of a case before an RCE when the original claims are so broad that signficant amendments have to be made before allowance (I’m assuming that the case will not go abandoned). From my experience, these amendments usually take several rounds of prosecution.

  39. C: If an RCE needs to be filed, is it because an Examiner failed to focus on the important issues early-on? I doubt it.

    Most likely. Do you read the specification? I did, every time. I knew what to search and found the best art up front. Claims get amended, application allowed, or abandonment. It works. I know because that is how I examined for many years.

  40. Can the Office unilaterally attempt to create Law that materially affects how “an application is drafted”? Wasn’t that the crux of the now defeated Rules?

    C – perhaps the reason why the focus is on the examiner is because that is the part of the equation that the Office completely controls. It appears to most of the patent bar that is also the part where the blame also actually belongs, regarless of the drafting of the application.

    One should remember that the mandate to promote is aimed at the general populace and application submissions will encompass those by pro se applicants who do not know law – the welcome gate is a very wide gate for a reason. This necessitates that the Office processes be robust.

    Are you confusing Restriction practice with RCE? – You give no reason in your example of one broad claim and 50 broad dependent claims as to why it could not be examined without the need of RCE. Are you artifically constraining your examination to fit within the “square peg” alloted time without regard to the actual aspects of the individual application? If so, that’s a management induced problem – not an applicant’s problem. It is the Office that has decided to grade you on “average” application. There is no law (nor should there be) mandating that inventions fit into pre-ordained “average” size packages – that would be making law to serve those who are supposed to be serving the public. As to “easy”, the law does not mandate that the examiner’s job must be easy. I don’t want to read more into your post than I should, but that’s the message that is coming through.

  41. Why does the blame for the failure of “focusing on the important issues early-on in the prosecution” fall squarely on the examiners? The last time I checked, patent prosecution involves actions taken by both the examiners AND the applicants.

    So doesn’t it make sense that there needs to be a change in the behavior of examiners, as well as applicants? What good is it to provide more counts for a first action and less counts for a RCE when an application is drafted in a way that makes it almost impossible to focus on the important issues early-on in the examination process.

    For instance, how is an examiner supposed to focus on the important issues when an application includes an extremely broad independent claim with 2 lines, and 50 broad dependent claims also with 2 lines, all depending on claim 1? Do you realisticially think that this type of application can be diposed of quickly and without the filing of an RCE? If an RCE needs to be filed, is it because an Examiner failed to focus on the important issues early-on? I doubt it.

    I don’t have a problem with attorneys complaining about the poor quality of work done by examiners. As in all professions, you’re going to have people who do good work, and people who do not-so-good work. The same applies to attorneys. (Believe me, most of the work that I see done by attorneys are pretty crappy.) I do have a problem however, with attorneys complaining about the back-log and how long it takes for a patent to issue, but yet file applications such as the one described above. You can’t have your cake and eat it too.

  42. NAL, it amazes me too. When I was there, when Bruce Lehman ruled, proposed legislation on the hill sought to allow the same thing. We attacked it, took vacation time to lobby aids of congressmen/women on the hill, and put together a grass roots opposition to defeat that part of the bill(s). We even brought in Ross Perot, Dana Roherbacher, Steny Hoyer and others to rally the PTO troops. These examiners posting here like 6 and Mooney are clueless about what can and will happen to their profession if they continue to blame us for their shortcomings!

  43. “but it probably doesn’t offend any patent attorneys here because more searching means less money. because applicants would either see the prior art and decide not to file or, if they do file, their claims would be allowed faster with fewer office action responses” – anonymous at 06:16 PM

    anonymous, it appears that you are attempting to paint the patent bar as advancing their arguments out of their concern for their pocket books, rather than adherence to the Law.

    I for one, disagree with your premise sharply.

    Most of us recognize and care deeply for the ethical rules we follow and while being paid well for our hard work, it is the client that comes first. Pure and simple – this type of mindset is the best business practice. Good work for the client is the best way of guarenteeing future work. Work done firstly for oneself only guarentees a race to the bottom and a disdain for the profession. Your mindset, I would dare venture, coincides with the general view (I know personally of several exceptions) that examiners are incapable of professional conduct. It doesn’t help that you have the likes of 6 and Malcolm painting such a horrible picture of examiners on this well-read blog.

    If a client sees pertinent prior art, they need to file it. If I see it, I MUST file it. This in no way correlates with the responsibility to search. As noted abundantly – you need to recognize whose job that is. Don’t be in such a hurry to give your job away.

    As for actually searching and making money – I have posted that had the IDS rule been upheld, I would stand to make tremendously MORE money. A certain level of my clients would still want patents even at the greater expense, and since I would be providing the examination per se with the search and analysis (to the Office standards as per the rules), I would be being paid more for that activity. If this, as you propose, actually yielded more and quicker patents, I would make even more money, as my clients would want more patents, even at the greater cost. I would not be limited in my earning capability – that capability would have been expanded.

    Your usefulness and viability on the other hand would seriously have been diminished. Kappos is alreadly trying to be able to outsource your job. How much less is needed to review a search and analysis already performed to the government standard, then to do that search and analysis from scratch?

    It amazes me that more examiners (at least those vocal enough to post) cannot see this.

  44. “my suggestion is to have applicants search so that they are no longer ignorant.”

    And who will do the search? Some searcher that may have searched this particular piece of art once in the last 5 years?

    Also, let me cite a little piece of case law for you: In making a patentability determination, analysis must begin with the question, “what is the invention claimed?” since “[c]laim interpretation, … will normally control the remainder of the decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).

    Until applicants know how the Examiner is interpreting the claim language, how can we properly do a search?

    Why can’t examiners realize that the “search” aspect belongs to them?

    Us attorneys would also like to know what is new verus what is old. It is a big waste of time to spend 15 pages describing what is new and only 2 pages on the “new” aspect because the inventor didn’t realize the difference between the two. However, that is just part of the job. We describe what the inventor believes to be the inventor. Then, WITH THE HELP of the USPTO (i.e., the Examiner) we then try to determine what is patentable and what is not.

    There are exceptions, but on the whole, there is nobody more qualified to perform the search than the Examiner.

  45. “I said that it would be a good idea to make applicants perform a prior art search by rule.”

    If Tafas holds on and prevents vacatur from taking place, would the Office be foreclosed from ever actually making such a rule?

    The Office attempt was ruled illegal by Judge Cacheris. If there is no vacatur, the Office as the losing party is held to that rule, regardless of jurisdiciton, no?

  46. Hmmm…I don’t see my last post here so maybe I hit preview instead of post or whatever. The gist of it was, a search for the inventive concept is not enough when the claims go way beyond that. For example, I might have a 103 rejection directed at the inventive concept, but a search of the full scope of the broad claims will likely reveal a 102 for the broad claims which is not directed to the inventive concept. Because 103 rejections can be argued in a number of ways that a 102 cannot, I will search for and apply both. This means that the search and examination is necessarily distracted from the inventive concept to some extent. I’m not crying about the presence of the broad claim, just saying that broad claims are a distraction from examination of the inventive concept.

    Practitioners, if you feel you’re getting crappy rejections, appeal. Please. Or at least request the pre-appeal conference so it will get looked at by a few other folks. Keeps examiners honest and gets the stuff off our dockets when we just can’t come to agreement.

  47. Hey fish bones, I was an examiner for a long time before leaving the PTO as a primary. These kinds of complaints coming from examiners make no sense at all, for reasons already given, i.e., they should be the expert searchers in the particular art of the application (if classified correctly). This is all smoke being blown up your behind. Believe me, it is pure B-S-.

  48. Mr./Ms. anonymous — Applicants typically make the business decision whether they (and/or their patent practitioners) will or will not go to the time and expense of conducting a patent search before preparing and filing their applications. If they do not conduct such a search, they will rely on the closest prior art then known to the inventors when preparing the application. Generally, patent examiners will do a better search than even professional patent searchers. Maybe patent application filing fees need to be raised, but if fees are going to be raised I would personally would rather see a small across-the-board hike (e.g., filing fees, extension fees, issue fees, maintenance fees).

  49. Can’t you understand that if you do a good search apply the most relevant art, the claim scope must lie outside what is disclosed in that art for the application to be allowable? This is your frekin job man!

  50. “if applicants lack the skills and databases (as curious suggests) to search, they can hire someone to search for them who does. they hire someone to write the patents for them, right?”

    Ha ha, been there, done that, and never will again. Do your job or we’ll have all of you fired and have it done ourselves, but you will be working for us searching – ha ha ha ha

  51. I said that it would be a good idea to make applicants perform a prior art search by rule.

    noting what I said, curious wrote, “But that is what examiners are paid to do and they are far more competent at searching in their subject areas than are applicants and they have access to more prior art.”

    I believe the comments of advice for the future help demonstrate why I made my comment. advice wrote: “The determination of an ‘overly broad claim’ can only be made with knowledge of the pror art. However, applicants and their attorneys do not have the best knowledge of the prior art at the time of drafting. … Overbroad claims are a result of imperfect information. … ”

    advice essentially says: don’t blame ignorant applicants for overbroad claims. my suggestion is to have applicants search so that they are no longer ignorant. currently, applicants consciously ignore the prior art because there is no rule requiring them to have some notion about the prior art before filing.

    if applicants lack the skills and databases (as curious suggests) to search, they can hire someone to search for them who does. they hire someone to write the patents for them, right?

    overbroad claims (in some cases, ridiculously overbroad claims) can and should be avoided by requiring an initial search and analysis before filing.

    the notion that examiner’s are “paid to do” searching of unnecessarily overbroad claims should infuriate people as taxpayers

    but it probably doesn’t offend any patent attorneys here because more searching means less money. because applicants would either see the prior art and decide not to file or, if they do file, their claims would be allowed faster with fewer office action responses

  52. “Even Molly can’t help you under your bed.”

    Actually Molly could help me under, over or in the viscinity of a bed. And a lot of other places too.

    Why don’t you be a doll and make me a sandwich or two? If you be sweet enough and get enough of my favorite wine, who knows, maybe you can help me out near a bed tonight.

  53. At 05:16 PM 6 attempts to apply an argument that I have BURIED him on once before, using the Law of 35 U.S.C. 151 Issue of patent, which in pertinent part reads:

    If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter.

    6 – we’ve been over 151 before – you were wrong then – you are still wrong. That little phrase UNDER THE LAW rules. You are not free to make up the law as you see fit. Even Molly can’t help you under your bed.

  54. For what it’s worth, I know a noob examiner in the academy who’s allowing a case. He says his trainers didn’t give him a hard time about it.

  55. “”Malcolm”,

    _I_ am NOT talking about AU 3639. I am talking about arts in various electrical areas like 2100, 2600, 2400 & 2800 (after all this time, I know a lot of people). Not business methods & such.

    And you still didn’t answer – Do you actually think that there are no SPEs that rarely allow there examiners to allow cases?

    If you honestly can say “yes” then you better check with other examiners, SPEs & directors that know the truth. Again, like I said before, why do you think they went to admin SPEs? The bad ones, in general, became admins so as not to infect the newer examiners.

    MVS

  56. “There is not law that says, a patent might issue if the Examiner feels like it, or if the political atmosphere is convenient, or if the tea leaves fall a certain way.”

    151

  57. “Unless somebody blows the whistle.”

    So Mooney, you’re gonna be a PTO whistle blower?

    BWWWWWAAAAAAAHHHHHHHHHAAAAAAAAAAHHHHHHHHAAAAAAAA

  58. That sounds like torture. If the most relevant art directed to the inventive concept is applied, an amendment, if necessary, would need to overcome that art to the point that the application it is either allowable or going to the board (or abandoned instead of appeal). Nothing is more relevant than the most relevant reference. That may sound sill-y, but so does piecemeal searching.

  59. MVS: ” In case you missed the memo, examiners are supposed to allow case UNLESS they can make a reasonable grounds of rejection.”

    Are you saying that The SPE In The 3691 Art Unit Who Shall Not Be Named rejected every application (except for the 35 generously allowed cases) based on unreasonable grounds?

    Here’s my take: just about every application filed in that art unit is pure crap. For a while, crappy patents were issued because hardly anyone paid attention. Then people started to pay attention. By that time, the applicants had come to feel that they had a “right” to a patent every time they filed an application. So when their claims get rejected they whine and cry as if it was the most unfair thing ever for their incredibly dubious paper “property” to be spat upon by the US government.

    But it’s not unfair at all.

    In any event, you’ve got Kappos now in the PTO who was head of IBM when IBM filed reams of its own crapola. So everything will be back to “normal” very shortly.

    Unless somebody blows the whistle.

  60. “The issue is whether SPEs were illegally rejecting cases without any credible reason…”

    While this may be the question, your 90% challenge seems imprudent because it doesn’t address the question. Why not just admit that and move on?

  61. A – because Examiner’s are now concerned with word searches. Examining is like MadLibs – fill in the blank, and if all the words are there, they are done.

    Why do you think Examiner’s are no longer capable of agreeing to anything during the interview, including proposed amendments on the fly? Answer – because they no longer seek to understand and search the inventive concept. Word search for claim terms is all that is done, and as a result all they can tell you during the interview is “if you file that I’ll search it.”

  62. “Lord Kappos has decreed: Reject-reject-reject does not equal quality. You are going to actually have to work and actually examine the material (all of it – not just the claim sets)”

    Depending on what you mean by “examine the material,” you might be disappointed there. I’m assuming you’re referring to prior art here and not enablement, etc. There’s no way I’m going to start making prior art rejections for subject matter that’s not claimed. I will assume that if it’s not in at least one of the claims, it’s not a vital part of the invention.

    Seems to me there should be at least one dependent claim that sort of resembles the invention. If your claims don’t resemble your invention you shouldn’t be entirely surprised to get prior art that doesn’t resemble your invention either.

    One of my first cases ever to be appealed, I had a 103 directed to the inventive concept, but the claim was broad. I had to reopen prosecution to make a 102 rejection which read on the broad claim but not the inventive concept. Important lesson learned. That’s the problem with broad claims, we have to reject based on the broadest reasonable interpretation. Often, that means that the search cannot be simply focused toward the inventive concept, but has to go off in a bunch of different directions to capture the breadth.

  63. “Two ‘examiners’ set the attitude that we are here to reject everything?”

    What’s with the quotation marks around “examiners”?

    You and Mooney are examiners.

  64. “If you REALLY believe that no SPE has ever regularly made their examiners reject cases that the examiner, and others in the art, thought was allowable than you really are a st00ge for the Dudas/Doll/Love?Rolla administration.”

    Could not have said it better myself.

  65. “Not reject because they don’t want to allow a case for fear or think something is “too broad””

    For the record I reject because I think an app is not entitled to a patent.

  66. “Thankfully THEY are gone. Now just need you & 6 out of the office to get rid of those attitudes that we are here to reject everything.”

    Two “examiners” set the attitude that we are here to reject everything?

    I know I’m powerful, but I didn’t realize I was that powerful.

    Maybe if you weren’t such a pus sy you wouldn’t need to get rid of me.

  67. “If you REALLY believe that no SPE has ever regularly made their examiners reject cases that the examiner, and others in the art, thought was allowable”

    Strawman.

  68. “Malcolm”,

    Do you ACTUALLY expect me to remember SNs of cases that people talked to me about from 1 or 2 years ago?? Are you really as 1d1otic as you like to appear or is it just an extremely good act?

    If you REALLY believe that no SPE has ever regularly made their examiners reject cases that the examiner, and others in the art, thought was allowable than you really are a st00ge for the Dudas/Doll/Love?Rolla administration. Thankfully THEY are gone. Now just need you & 6 out of the office to get rid of those attitudes that we are here to reject everything. In case you missed the memo, examiners are supposed to allow case UNLESS they can make a reasonable grounds of rejection. Not reject because they don’t want to allow a case for fear or think something is “too broad”.

    MVS

  69. “I know of a few cases where multiple primaries, including myself, who actually work in the particular art told a PTA examiner that a case was allowable & the trainer STILL would not let the examiner allow the case. Completely wrong.”

    Which cases?

  70. “So which is it?”

    Who cares? Really?

    You work at the PTO. I know that. You know that. Everybody knows that.

    You might actually have a shred of credibility if you just acknowledged it. MVS’s posts are infinitely more credible than anything you’ve posted about the PTO.

    You and 6 are the court jesters of this site. We’re all laughing. At you. Not with you.

  71. “Malcolm” is COMPLETELY wrong about some SPEs not wanting to allow cases.”

    Nice strawman, MVS. The issue is whether SPEs were illegally rejecting cases without any credible reason purely because they were told to do so (or because it was the “culture”). You have no evidence of this happening.

    A more likely explanation is that the “culture” of patent *applicants* in that art unit we were discussing is a broken culture because it was born out of the cesspool of speculators and investment bankers who are adept at ruining pretty much everything they get their hands on in the process of lining their own pockets.

    And this culture continues unabated to this day, as just about anyone who is not personally benefitting from the game will readily recognize.

    Grow up, children. It’s been years now and your pathetic whining has only grown more pathetic as the sand dramatically shifted under your dishonest money-grubbing feet.

  72. db: “Which is not nearly as odd as an anonymous commenter like Mooney doing everything possible to maintain that he’s not an examiner.”

    That’s funny because just a few comments upthread some troll (probably you) was whining about how I wasn’t doing enough in that regard. So which is it?

  73. Troll: “Last I checked, a rate and the subject of that rate are rather closely related.”

    Yes, troll, just about everything about patents is “closely related” if we permit ourselves to play the silly word games that you seem to enjoy.

    A graph of patent issuances from 2003 to present would not at all resemble what “curious” claimed to have seen. I knew that, which is why I asked for the graph. Now please crawl back under your rock.

  74. MVS about useless SPEs: If they don’t reject, the case won’t get counted & the examiner will be on the way out.

    These lamebrain SPEs all should be fired! No amnesty! Shirkers of responsibility and professionalism. Destroyers. I want to curse, but the filter would reject.

  75. “Malcolm” & the rest of you,

    When I said not allowed to allow “anything” it may have been a VERY slight hyperbole. Yes, a very, very few cases were allowed. It partly depended on the “trainer”. I know of one very good trainer that didn’t want to toe the line & was willing to let cases be allowed when they should be. He was the exception, however.

    However, the vast majority of trainers were not letting their examiners indicate anything allowable. This is based on having trained some PTA examiners back in the TC & talking with many others, as well as working with some when they were still in the PTA & came over for help. None of those that I worked with had been permitted to allow even some dependent claims never mind a whole case, even on amendment.
    It is also based on discussions with various trainers. The trainers often told me that they were being told not to allow anything except in exceptional cases (e.g, they know the art & get the OK from the TC). Of course, I know of a few cases where multiple primaries, including myself, who actually work in the particular art told a PTA examiner that a case was allowable & the trainer STILL would not let the examiner allow the case. Completely wrong.

    And “Malcolm” is COMPLETELY wrong about some SPEs not wanting to allow cases. I had one before. Thankfully I was a primary at the time & didn’t have to worry about allowing cases. I won’t give his name as I don’t want to ID myself. He was extremely reluctant to allow anything for fear of it coming back to haunt him. He was very insecure. He would regularly drop off allowances for primaries to sign so his name wouldn’t go on the patent, even though the examiner of the case reported to him. For one 18 month period he signed off on about 45 patents with about 8-10 examiners reporting to him. There are way to many insecure & fearful SPEs like that & it makes the examiner reject the case even if they don’t want to do it. If they don’t reject, the case won’t get counted & the examiner will be on the way out.

    Most any good, or even average, examiner can tell you similar things. So can a lot of SPEs & directors.
    Why do you think some TCs tried the idea of “administrator” SPEs? It was to get some of these SPEs who were bad trainers & wouldn’t allow anything to get away from the newer examiners. And, yes, the SPE references above WAS an admin. SPE.

    So, “Malcolm”, you are wrong again.

    MVS

  76. “Not nearly as an odd as an anonymous commenter like ‘don’t bother’ or his sockpuppet ‘wonders never cease’ doing everything possible (allegedly) to identify a person and yet refusing to actually say the person’s name.”

    Which is not nearly as odd as an anonymous commenter like Mooney doing everything possible to maintain that he’s not an examiner.

    What’s up with that?

  77. “the troll” – Jame’s back.

    Malcolm, you said “doesn’s sound anything like”.

    Last I checked, a rate and the subject of that rate are rather closely related. Funny too – how you got my hint, yet STILL evade the topic. Care to make an actual comment of substance?

    …thought not.

  78. NAL: “Secondly, regarding your comment “Actually, “patents issuing” doesn’t sound anything like “allowance rate” to anyone who takes a moment to think about it.”, – how does a patent come to issue without being allowed?”

    Three more times for the troll: allowance *rate*, allowance *rate*, allowance *rate*.

    “Odd that an anonymous examiner like MM demands naming names!”

    Not nearly as an odd as an anonymous commenter like “don’t bother” or his sockpuppet “wonders never cease” doing everything possible (allegedly) to identify a person and yet refusing to actually say the person’s name.

    What’s up with that?

  79. “But I’m having a hard time believing that only 35 applications being handled by the junior examiners of AU 3691 over a three year period were found to have allowable subject matter. ”
    That number is wrong because that SPE has had primaries sign allowances.

    See cases signed by just one primary here:
    link to tinyurl.com

    Most recent is “Method and system for patent valuation” invented by one Alexander Poltorak who I believe owns a patent enforcement company.

  80. “”Rejecting everything is the culture there — it isn’t a secret.”

    Except that not everything is rejected so “rejecting everything” is not the culture there, it’s a lie.

    “According to Malcolm …There’s not even a single rogue SPE, or newbie GS-5 examiner, that operates according to such a policy.”

    Please give me the name of one such Examiner or SPE who rejects everything. I must say there are some very strange games being played here by the peanut gallery. It’s almost as if they refuse to name these people. But why? After all, if you are so certain that what you say is true (arbitrary rejection of 90% or more applications driven by a “culture” or some other vague force), then you have nothing at all to fear. Then we can all look at the claims and decide for ourselves how unfair the Examiner was to the applicant when the claims were rejected.

    So let’s just have the name (or names, as the case seems to warrant). Why not put these people’s feet to the fire? Real people, real examples. Let’s have them. Let’s see the overwhelming evidence of PTO malpractice once and for all.

    “the evidence overwhelmingly proves that you are not a practitioner.”

    Right. And the evidence overwhelmingly proves that you are a lowlife filer of “portfolio management” patent applications.

  81. Malcolm,

    Being obtuse and coy does not pass for being witty or intellignet.

    Your coyness in simply not affirmatively stating that you don’t work for the USPTO fools no one in any manner of “tin-foil hats” or “repeating yourself”. Lord knows – you repeat yourself often enough in your other claptrap positions, that repeating an affirmative declaration shouldn’t be an issue – unless there is a specific reason why you do not make the affirmative statement (either in the first instance or as a repeated statement).

    Secondly, regarding your comment “Actually, “patents issuing” doesn’t sound anything like “allowance rate” to anyone who takes a moment to think about it.”, – how does a patent come to issue without being allowed? If you obtusely bank on the words having different pronunciations in the English language, then you are correct that they don’t “sound” anything alike.

    But why do you go to such trouble to avoid the obvious point of why curious brought up that specific Office-produced graphic? Curious didn’t even get to the point that that particular graphic was used by the Office in discussing its meeting its Quality objectives. You indeed have tried to refute your new Lord and Master Kappos’ pronouncement that Quality does not equal reject-reject-reject. It must gall you to no end to see such change in the Office.

  82. “Rejecting everything is the culture there — it isn’t a secret.”

    Well, where’s the memo? According to Malcolm, without the smoking gun ofa memo signed by the Supreme Chairman of the Tri-Lateral Commission, you’re nothing but a liar.

    According to Malcolm, there’s no such policy at the PTO. There’s not even a single rogue SPE, or newbie GS-5 examiner, that operates according to such a policy.

    Let’s all wait for the inevitable post from Malcolm demanding the serial number of the case you described. Because as we all know, no application ever required more than one appeal brief to get allowed.

    LOL

  83. “MVS: “For starters, they (PTA) were never allowed to allow anything”

    That’s a lie, obviously.”

    I wouldn’t call it a lie, but it’s a misinformed statement. I certainly won’t argue that there isn’t tons of room for improvement in the PTA, but allowance is not prohibited. In my PTA class, there were at least 3 people I know of who did first action allowances. Although I still think I had a good final rejection for my first case, I was told by my higher ups to allow it (and I did).

    The PTA may be lacking in a lot of things, but they don’t strictly prevent allowance as suggested.

    From my (limited) experience, what someguy had to say resonates as the most accurate assessment I’ve seen.

  84. Shouldn’t this change be officially noticed in the federal register?

    Seems to me this change in policy materially affects the rights of applicants.

  85. “Still waiting for the name of this notorious SPE. What’s the reasons for the hold-up?”

    Not terribly intelligent, is he?

    All one needs to do is go to here:

    link to portal.uspto.gov

    Type in 3691 under “Organization” and find the person with “(SPE)” listed next to his name (look, I gave you a hint, he is male).

    Mooney — a quintessential luddite. It is a wonder that he has learned how to use the internet.

  86. “…there’s no point in repeating myself…”

    As you’ve never stated you are, you wouldn’t be repeating yourself.

    I believe what the evidence proves. In your case, the evidence overwhelmingly proves that you are not a practitioner.

    I’ll leave it to MVS to decide whether being called a liar by one of his fellow PTO employees warrants a reply.

  87. “But I’m having a hard time believing that only 35 applications being handled by the junior examiners of AU 3691 over a three year period were found to have allowable subject matter.”

    I had one application with the 3691 art unit, and it eventually got allowed. The claims weren’t amended (except to get around that pesky 101, but the Examiner suggested the amendment). However, it did take a couple appeal briefs — neither of which made it to the Board. The good thing was that the Patent Term Adjustment was massive.

    Still, whenever I see a case handled by the 3600 group, I counsel the client to be prepared to appeal.

    I once interviewed an examiner coming out of the 3600 group. He mentioned that he allowed 3 cases in 2 years and he had to fight to get those allowed.

    Rejecting everything is the culture there — it isn’t a secret.

  88. “Tell that to your boy, MVS.”

    Uh … I just did.

    “You’ve been asked more than once to state unequivocally that you are a practitioner registered to practice before the PTO. You have not done so.”

    That’s because (1) I don’t play grant requests to tinfoil-hatted doofuses and (2) there’s no point in repeating myself when the peanut brains here are going to believe whatever they want to believe.

  89. “That’s a lie, obviously.”

    Tell that to your boy, MVS.

    “Still waiting for the name of this notorious SPE. What’s the reasons for the hold-up?”

    Your office is probably right around the corner from his. Why not just stop by and have a chat with him?

    You’ve been asked more than once to state unequivocally that you are a practitioner registered to practice before the PTO. You have not done so. That’s all I, or anybody else, needs to know.

  90. Everyone realizes that this is the so-called “portfolio management/trading” art unit, right? And the whiners are complaining that more patents weren’t issued?

    I’m trying not to laugh, I really am.

  91. don’t bother: “according to you, there’s not a single examiner, SPE, or other employee of the PTO who is operating under a reject, reject, reject, policy.”

    The issue is: what is this “reject reject reject policy” exactly. Show me the memo that says that the patentable claims should be rejected, just for the sake of rejecting them.

    The PTO *should* be rejecting claims, and lots of them, all the time, every day, particularly in the software and computer-implemented art units which are swollen with crap. We all know that they are swollen with crap, but not everyone is able to admit it, for one reason or another. Why are they swollen with crap? Lots of reasons. I’ve listed them before and don’t feel like doing it now. Suffice it to say that in the amount of time I spent writing this comment, I could have drafted a set of “non-obvious” Beauregard claims that is no less patent-worthy than most of the garbage being filed (and sadly, issued) at the USPTO on a regular basis.

  92. don’t bother: “How is it that you, a PTO employee,”

    How is that you can be so stoopit? That’s the real question, li’l sockie. Take your tinfoil hat off and grow up.

    “I’m having a hard time believing that only 35 applications being handled by the junior examiners of AU 3691 over a three year period were found to have allowable subject matter.”

    Why?

  93. BTW, Malcolm, here’s a quote from MVS’s post of October 22, 2009 at 11:11 AM, in this thread:

    “SPEs generally don’t have the needed time to properly train the large number of new hires. The PTA was a failure. Just ask any SPE that got someone from there. Most needed to be retrained and many SPEs didn’t or were not able to because they themselves didn’t know how to do the job right. For starters, they (PTA) were never allowed to allow anything & didn’t know how to identify allowable material or even how to search properly. Once back in the TC they were often not given the training needed & were thrown in to sink or swim. So they did what they had to to survive. The whole set up what wrong & not defending it, just explaining what was.”

    According to MVS, who has stated in previous posts that he works at the PTO, the examiners in the PTA (Patent Training Academy) were not allowed to allow any claims.

    I have heard this same allegation from others inside the PTO, including examiners actually in the PTA, numerous times.

    But according to you, there’s not a single examiner, SPE, or other employee of the PTO who is operating under a reject, reject, reject, policy.

    How is it that you, a PTO employee, and MVS, another PTO employee, can have such wildly divergent opinions of what is going on over there?

  94. “Do you care? If so, why?”

    No, I don’t care, if the applications are being rejected properly.

    But I’m having a hard time believing that only 35 applications being handled by the junior examiners of AU 3691 over a three year period were found to have allowable subject matter.

    But why don’t you check? You said you would. Why don’t you review some of the applications pending, or even issued, by AU 3691 and tell us all how perfectly legally proper every single rejection signed by the SPE really is/was?

    “Ah, it’s just one of the usual ‘if you whine constantly about the PTO, you must be an examiner’ trolls.”

    Huh? Not everybody who whines constantly about the PTO is assumed to be an examiner. Actually, most of the constant whining about the PTO done on this site is from practitioners, including me.

    But it’s pretty clear you’re not a practitioner. You’re not fooling me. Or anybody.

  95. don’t bother: “As an examiner, you’re perfectly capable of finding out the name of the SPE of AU 3691.”

    Ah, it’s just one of the usual “if you whine constantly about the PTO, you must be an examiner” trolls.

    6, can you help out here? Who is the person being referred to?

    “You asked for an SPE who has a 90% rejection rate for 2006-2008. ”

    Yes, that is correct. But I asked for the name of that SPE, obviously, so we could look and see whether this person was engaging in an unfair or possibly illegal practice of “reject reject rejecting” applications without properly examining them. Otherwise, who cares? Right? Who cares how many applications are being rejected by any SPE if they are being properly rejected? Do you care? If so, why?

  96. NAL: “Because “patents issuing” doesn’t sound anything like “allowance rate” to anyone choosing to be obtuse. ”

    Actually, “patents issuing” doesn’t sound anything like “allowance rate” to anyone who takes a moment to think about it.

  97. “I just want to be perfectly clear about your position before I spend any time looking at the applications rejected by this notorious Examiner.”

    Because Mooney has nothing better to do than research applications for free (and bother real patent attorneys at Patently”Oh”). After all, quite understandably, no one will pay him to do anything…

  98. “You mean one application per month has claims that the PTO deemed allowable, correct? And the rest were incorrectly rejected, correct? That’s your position?

    “So if I randomly look at the applications rejected by this Examiner (who apparently has no name) I’ll discover that there was some shocking miscarriage of justice, right? Isn’t that the argument? That someone is being denied something unfairly and possibly illegally, as a result of incompetence at best or malevolence at worst? Do I understand you correctly?

    “I just want to be perfectly clear about your position before I spend any time looking at the applications rejected by this notorious Examiner.”

    Well, let me be perfectly clear about my position. Not that it’s going to matter, because you’re not going to “check” anything. You’re doing your typical nonsense here.

    Here’s exactly what you asked for:

    “Still waiting for one name. What’s the problem? Just state the name. Then we can do some checking to see if the assertion is accurate. And I tell you what: I’ll be generous and instead of 100% rejection, I’ll let you get away with naming an SPE who has a 90% rejection rate of all cases over the course of, say 2006-2008.

    “Just name the person. Nobody will ever know who it is that is doing the naming, and when I prove that you are full of crap, it will be a simple matter of no harm, no foul.”

    You didn’t ask for the name of an SPE whose rejections were a shocking miscarriage of justice, or unfair, or illegal. You asked for an SPE who has a 90% rejection rate for 2006-2008.

    So are you going to check? I bet not.

    As an examiner, you’re perfectly capable of finding out the name of the SPE of AU 3691. But as you’re not going to check anyway, why bother?

  99. The definition of insanity is doing the same thing over and over again and expecting a different result. If you don’t think the examiner did his job the first time around, why would you buy an RCE ticket for a second trip on that worthless ride? Appeal everything, let the Board sort it out. Unless, of course, the new boss sets things straight and examiners burn their rubber “rejection” stamps.

  100. “But that doesn’t sound anything like what curious was talking about (“graphs showing the number of patents issuing each year…”

    Because “patents issuing” doesn’t sound anything like “allowance rate” to anyone choosing to be obtuse. I can see why Malcolm was so confused.

    Now that Malcolm is set straight, curious, you may want to make your point again (or you may not).

  101. Hagbard, take your pick:

    1 – It is an MC Escher painting.
    2 – Medusa is about to eat a baby.
    3 – Shiva is about to go all Kama Sutra on the other woman.

  102. “When I checked the history for the case I saw that somehow prosecution went on merrily for close to two years when it was evident from the office actions that the examiner never understood a thing about the case being prosecuted.”

    And why do you think this is? Perhaps because many of us were hired to examine in an art we know practically nothing about, get instructed in the academy by someone not in our art, get assigned a primary/SPE who has no time to truly help us and have about 20 seconds to understand everything about the case before we have to get the count done. It’s ridiculous. Did you try to help the examiner understand the case? Did anyone? Or was s/he expected to just go to Google and look it up as I have often done. And trying to transfer a case that isn’t in your art — ha ha, forget it!

  103. Someguy (Examiner) makes good points, about the Exrs and Attys being victims of an ill-thought-through set of Rules (the present ones, I mean). People are much the same everywhere. If the rules at the EPO were like those at the USPTO, well relationships here would spiral down too

    But EPO rules are different. How about Rule 137(3)? Applicant gets just one shot at amendment. After that, no amendment gets admitted unless the Examining Division gives its consent. No continuations, no RCE. Result: Exrs do a good search, then attorneys urge their clients to work intensively on the response to the FAOM. Better get it right, or face the prospect of filing a divisional (and we all know how horrible expensive that is, at the outrageous EPO).

    There’s another thing. With 40 countries belonging to the EPO, language skills are needed. Competent Examiners are in short supply, attorneys too. With everybody having more than enough to do, a gravy train is not needed. Notice of Allowance as the second communication from the Examining Division is the goal. Oral proceedings are a big deal, for both sides.

    You think European prosecution is expensive. Wait till the day when prosecuting attorneys have a smaller pile of files in their in-trays. Might they not then need more time on each file. What will the bill look like then?

    To keep cost down, you could choose a prosecution firm resident in one of those of the 36 EPO Member States that isn’t a “traditional” choice for work from the USA. That’s practically all of the 36 States. They’ll do it cheap for you. But they might need many hours on each file, and just remember that hard cases get decided at oral proceedings (think “high noon”), where experience counts, as well as strong nerves.

    Isn’t there some slogan about getting it right first time, that has some relevance here? Isn’t this the attitude that PTO management should be trying to inculcate? And, if so, is it handicapped, in that objective, by the system as it is today?

    Or is “right first time” an outmoded concept, and these days just too expensive to contemplate?

  104. Anonymous said “Make applicants perform a prior art search and analysis.:

    But that is what examiners are paid to do and they are far more competent at searching in their subject areas than are applicants and they have access to more prior art.

  105. “I’ve seen that one. But that doesn’t sound anything like what curious was talking about (“graphs showing the number of patents issuing each year and how that number dropped precipitously about six years ago”).”

    Slide 11 is the one I meant, Malcolm.

  106. “…the examiners have EVERYTHING they need at the onset to do the complete search..”

    Bullocks. The first thing that comes to my mind that USPTO examiners do not have to do a complete search at the onset is time. The last time I talked with an EPO examiner and compared production requirements, we were all surprised that even though we were examining the same art, the EPO examiners had over twice the amount of time given to them to do the initial search than what the USPTO gives. Not applicant’s fault, but that’s how it is, so to say that USPTO examiners have everything needed to do a complete search at the onset is simply untrue.

    The EPO doesn’t have RCEs, so RCEs at the USPTO balances things a bit since it allows for subsequent searches for subject matter amended on later that may not have been searched for initially. Yeah, yeah, the MPEP says a complete should be done at the onset. I’ve used this analogy before, but the MPEP could also require examiners to serve a five star meal at every interview for attorneys, but if the USPTO don’t give examiners the money to pay for the meal, most of the time it’s not going to get served. Again, not applicant’s fault, but it is how it is. Speaking from personal experience, the “meal” is often paid for by the examiner via voluntary overtime and burning vacation and sick leave but still working. I did this to get promotions on time because as bad as production is at higher GS levels, it’s even worse to try to make production while depending on someone else to sign off on your work where because of various fears and their own time constraints, you can’t get proper assistance from folks with sig authority.

    The EPO are also much more restrictive in what can be added to the claims via amendments and the examiner can terminate prosecution by via oral proceedings, so it encourages good prosecution by attorneys as early as possible. The USPTO lack any such rules and mechanism.

    In fact, comparing the rules that attorneys must work under at the EPO vs the USPTO, I frequently come to the conclusion that the rules and laws in the US allows and even encourages attorneys to prosecute much more sloppily than at the EPO and sloppy prosecution in the US is the result both by attorneys and by examiners. I’ll say it again so attorneys don’t blow a gasket and say I’m trying to just blame attorneys: BOTH attorneys and EXAMINERS prosecute often prosecute in a sloppy manner at the USPTO.

    I’ve had attorneys come for an interview where they clearly did not even know the content of the specification of the application they’re prosecuting or they come for an interview wanting me to write the claims for them–how often does this happen with attorneys in the rest of the world? Just today I had an examiner come to me wanting to get permission to allow a case that had gone through several office actions and RCEs already. Unfortunately, he was unable to explain to me what the invention was, where support for the newly claimed subject matter was in the originally filed application, what it was they were claiming in plain English, or why he thought the claims were allowable. When pressed, he stopped just short of admitting that he wanted to allow it because it has a long prosecution history–how’s that for a reason for allowance? “It’s allowable because I’m tired of working on it.” When I checked the history for the case I saw that somehow prosecution went on merrily for close to two years when it was evident from the office actions that the examiner never understood a thing about the case being prosecuted. That’s just sad and typical enough where I’ve long decided I don’t want to be SPE because I’d want to fire too many people for incompetence and would probably end up with just three people working for me or end up in trouble with POPA.

    /Been a long day and there are probably typos in the above, but hopefully my point comes across clearly enough.

  107. EatsYoung: “it may be moot if I keep falling short of production goals as I am. I can’t be the 60-hour/week machine that’s required at this point.”

    That’s because you’re human. The question is would you take less pay for less hours? Many an associate has or will be contemplating this question in the months to come. Oh wait, but the stock market is doing so well we must be turning a corner. Never mind.

  108. “See Slide 11 of the PowerPoint “PPAC Patents Update” on link to uspto.gov – As of June 2009, the allowance rate was down to 41% (from around 65% for the preceding 30 years). I believe attrition rate is in this presentation, too.”

    I’ve seen that one. But that doesn’t sound anything like what curious was talking about (“graphs showing the number of patents issuing each year and how that number dropped precipitously about six years ago”).

  109. “I could right so much more”….uh, yeah, that should be, “I could write so much more.” This is how tired I am. Going to bed…

  110. “The attrition rate. Peple generally say that about 50% of Examiners leave within 2 years of being hired. I don’t know if that’s true, but I certainly hear it a lot. I’ve seen figures that suggest that the overall attrition rate is around 35%.”

    Speaking as an examiner with less than two years in the PTO…I was on the edge of quitting until the new count system was approved. The 9-month to 2-year period is the worst (or so I keep getting told). You essentially only get counts for new cases (FAOMs) because it’s a herculean task for a new examiner to “prove” that a case is allowable. I can’t do the kind of job I’d like to do and make production. I’m hanging on to see how the new system shakes out, but it may be moot if I keep falling short of production goals as I am. I can’t be the 60-hour/week machine that’s required at this point.

    I could right so much more, but I’m too tired and frustrated. I really like the job, but the PTO eats its young. What someone said about the academy sucking and junior examiners being on their own afterwords (I’m paraphrasing) has a lot of truth to it.

    I’m glad to see change. More radical change is needed (as evidenced by the comments on this board), but I have hope.

  111. “Instead, I may take note of your name and, every time I see it in one of my patent applications, inject some misery into your life (and your client’s life) via the level of detail in my explanations concerning how your ‘too broad’ claims read on the cited prior art.

    For all of you who regularly prosecute applications having ‘too broad’ claims, do not be surprised when you receive ‘lacking’ Office Actions.”

    And you wonder why attorneys berate examiners for being unprofessional. Congratulations, you just made the bulletin board.

    You think attorneys don’t have clients they dislik as well? However, any attorney worth his or her registration number wouldn’t let personal feelings get in the way of doing their job.

  112. “What you identify as ‘overly broad claims’ is the equivalent of: 1) an examiner interpreting the claims too broadly and thereby citing nonrelevant art; or 2) an examiner finding “dead-on” art and, for each limitation of the rejected claims, citing every column and line number (i.e., citing the entire reference, not just that portion teaching the particular claim limitation).”

    Wrong. The determination of an “overly broad claim” can only be made with knowledge of the pror art. However, applicants and their attorneys do not have the best knowledge of the prior art at the time of drafting.

    On the contrary, the Examiner is not hamstrung by this lack of knowledge when construing a claim term. It is a whole heck of a lot easier to perform a search on a claim term (to determine its meaning to one skilled in the art) than it is to find art on a particular invention. Google searches are a lot easier with 2 or 3 words (i.e., the claim term) as opposed to 50-100 words (i.e., the claimed invention).

    If the Examiner finds dead on art … not just art that the claims tend to read upon based upon a strained construction of the claims … then I usually don’t need perfect citations. However, I almost never see that kind of art, so I would like pinpoint cites. Regardless, the difference between overbroad claims and your second example is that the Examiner has already done the work in identifying wherein, within the reference, all the limitations are found. As such, putting those citations in an Office Action should require little effort.

    Overbroad claims are a result of imperfect information.

    Build or remodel your home and you’ll have the builing inspector come out several times to inspect your work. The inspector’s job is to know the code like the back of their hand. Although your builder/remodeler may also know the building code, their job isn’t to know it and apply it every day. As such, there are many instances when a building inspector will tell the builder to redo something because it is not up to code.

    Everybody (inventors, attorneys, examiners) bring a certain expertise to the table in determining where to draw the line. Be proud that you know the art better than most — that is your job. However, don’t get offended when other people don’t know your expertise as well as you.

  113. “I’ve noticed some examiners actually wanting to work with me to get the case allowed, as opposed to simply wanting me to go away as in the past.”

    No surprise there. Allowances now are worth 1 count, allowances after December 20 are worth 0.5 counts.

  114. Want to make a big difference? Make applicants perform a prior art search and analysis, but with clearer standards than the ESD standards. Without claims reasonably tailored in view of a prior art search, giving examiners extra time up front won’t make a huge difference.

  115. See Slide 11 of the PowerPoint “PPAC Patents Update” on link to uspto.gov – As of June 2009, the allowance rate was down to 41% (from around 65% for the preceding 30 years). I believe attrition rate is in this presentation, too.

  116. Malcolm writes: “you haven’t seen graphs showing the number of patents issuing each year and how that number dropped precipitously about six years ago?” No, I haven’t. Show me the graph.”

    I remember see the graph a year or two ago, but can’t find it now. I think that it was both on Patentlyo and on the PTO website. I would appreciate if anyone can post a link to it.

  117. “I just want to be perfectly clear about your position before I spend any time looking at the applications rejected by this notorious Examiner.”

    How are you going to find those applications? Does the senior examiner’s name show up publicly other than on the face of an issued patent?

  118. “The SPE of Art Unit 3691 is the primary examiner of record on 35 patents issued between October 2006 and October 2009. That’s about 12 patents issued from that art unit per year. About one a month. So no, not every application is rejected. One application per month hits the lottery.”

    You mean one application per month has claims that the PTO deemed allowable, correct? And the rest were incorrectly rejected, correct? That’s your position?

    So if I randomly look at the applications rejected by this Examiner (who apparently has no name) I’ll discover that there was some shocking miscarriage of justice, right? Isn’t that the argument? That someone is being denied something unfairly and possibly illegally, as a result of incompetence at best or malevolence at worst? Do I understand you correctly?

    I just want to be perfectly clear about your position before I spend any time looking at the applications rejected by this notorious Examiner.

  119. “At least in their speeches, PTO management is encouraging examiners to work more directly with applicants to “find the patentable subject matter and get it clearly expressed in claims that can be allowed…””

    “Let me clue you in with two quotes from Lord Kappos…”

    I’m glad to hear management talk the talk on increasing allowances, but as long as the old second pair of eyes policy is in effect, examiners are still going to err on the side of rejectrejectreject. Policy changes need to go along with the speechifying.

  120. “Still waiting for one name. What’s the problem? Just state the name. Then we can do some checking to see if the assertion is accurate. And I tell you what: I’ll be generous and instead of 100% rejection, I’ll let you get away with naming an SPE who has a 90% rejection rate of all cases over the course of, say 2006-2008.”

    The SPE of Art Unit 3691 is the primary examiner of record on 35 patents issued between October 2006 and October 2009. That’s about 12 patents issued from that art unit per year. About one a month.

    So no, not every application is rejected. One application per month hits the lottery.

    And for all of the examiners who keep telling us we’re missing the joke, maybe if they were funny we wouldn’t miss them.

    BTW Malcolm, don’t bother telling me that all of the 35 patents are facially invalid just because you read their titles. I’m aware that will be your conclusion before your even attempt to provide your “proof.”

  121. Malcolm,

    Just so you know, I worked with a SPE that did not like to allow. In fact, it was a circular problem. The less he allowed, the less he wanted to allow. Each allowance could introduce an error. The number of allowances was low and therefore the allowance error percentage could be high.

  122. Noise, you must be a good attorney. You know how to selectively quote from a passage to impart your views.

    I don’t agree that we should allow everything. You obviously missed my joke. But the problem you will see is that we, as an examining corps, will react to the managements’ new punishment rules. Not everyone will react the same. Some will provide the hoped response. However, we are thousands of people managed by hundreds. Implementation will not be even.

    So, as I keep my work flowing, keep in mind that the old line about the best intentions.

  123. “you haven’t seen graphs showing the number of patents issuing each year and how that number dropped precipitously about six years ago?”

    No, I haven’t. Show me the graph.

    “There are SPE’s who literally will not allow anything, ever.”

    Still waiting for one name. What’s the problem? Just state the name. Then we can do some checking to see if the assertion is accurate. And I tell you what: I’ll be generous and instead of 100% rejection, I’ll let you get away with naming an SPE who has a 90% rejection rate of all cases over the course of, say 2006-2008.

    Just name the person. Nobody will ever know who it is that is doing the naming, and when I prove that you are full of crap, it will be a simple matter of no harm, no foul.

    Just name one.

  124. Examanona states at 03:57 PM:
    “The pendulum swings back. I will allow everything that comes across my desk.
    Who won’t be happy?”

    I won’t be. Know your job. Do your job.

    Allow Allow Allow is just as bad as Reject Reject Reject. Your job is to examine. Not rubber stamp. That means not rubber stamp with EITHER stamp of “Allow” or “Reject”.

    It means examine the complete application according to the Law.

    “I will do as told by my management.”

    Let me clue you in with two quotes from Lord Kappos:

    “Let’s be clear: patent quality does not equal rejection.” (Ouch, that had to hurt Malcolm).

    and

    “When a claimed invention meets all patentability requirements, the application should be allowed expeditiously.”

    Note that the second quote implicitly includes knowing and applying the patentability requirements (not putting them on a shelf with an “Allow” stamp).

    Get busy – you have some serious catching up to do.

  125. ap. I understand and agree. I am not trying to get into a discussion concerning upon whose opinion the most relevant art contains. I don’t think that it is currently a productive conversation as it seems to lead to insults and over simplifications.

    I will do as told by my management.

    My jokes are there in order to try and lead to discussion. Some may laugh me off, but there is reasoning within the joke.

  126. Examanona — I concur. I am not faulting the examiners as they were just playing by the PTO management’s new “rules.”

  127. Curious we went to far one way. The problem was that with second pair of eyes, people avoid the punishment of an error.

    People will again avoid punishments.

  128. Boss12, I understand your pain. I see broad things that I apply broad art to. I even go into detail about how the broad dependent claims’ limitations are also obvious.

    However, the pendulum has shifted. We are not supposed to reject anymore as we were obviously previously confused or mistaken. We are supposed to increase our allowance rates.

  129. Malcolm — you haven’t seen graphs showing the number of patents issuing each year and how that number dropped precipitously about six years ago?

  130. Common sense isn’t common, said:

    “A suggestion to your and all examiners — get over overly broad claims. Don’t take them personally. Overly broad claims will ALWAYS be filed for multitudes of reasons.”

    What you identify as “overly broad claims” is the equivalent of: 1) an examiner interpreting the claims too broadly and thereby citing nonrelevant art; or 2) an examiner finding “dead-on” art and, for each limitation of the rejected claims, citing every column and line number (i.e., citing the entire reference, not just that portion teaching the particular claim limitation).

    I would assume that 1) and 2) would frustrate you. I would also assume that, if I told you to simply “get over it,” then you wouldn’t like it.

    Thus, don’t expect me to “get over” your crappily-written claims.

    Instead, I may take note of your name and, every time I see it in one of my patent applications, inject some misery into your life (and your client’s life) via the level of detail in my explanations concerning how your “too broad” claims read on the cited prior art.

    For all of you who regularly prosecute applications having “too broad” claims, do not be surprised when you receive “lacking” Office Actions.

  131. That former SPE would say things like “it’s just a rhombus shape!” (when the prior art did not teach or suggest the shape. “Go look in the frying pan classes!” (for a disc drive element).

  132. Malcolm, just because the other Examiners in your art unit give interviews, doesn’t mean we practitioners see this as the norm throughout the office.

    And, as I stated before, my techology area is mechanical and electrical.

  133. Broje, besides a job that you had in HS or during college, how many previous jobs did you take where you planned on only working there a short time?

    I think that people left because they were not allowing enough. Allow, allow, allow. Don’t stop now, just allow.

  134. “Where do you find the basis for ‘Most Examiners are in it for the short term?'”

    The attrition rate. Peple generally say that about 50% of Examiners leave within 2 years of being hired. I don’t know if that’s true, but I certainly hear it a lot. I’ve seen figures that suggest that the overall attrition rate is around 35%. So, of those that aren’t planning to leave, I think that there is a high lilihood that those Examiners either already have the seniority to assign work or are jockeying for that seniority.

  135. curious: “I fully agree and that is the way it was until about six years ago, when the reject-reject-reject policy was enacted and the examiners had less incentive to work with applicants to get a case allowed.”

    I never noticed this change. Examiner were always willing to schedule an Interview and discuss the case.

    Must be something to do with certain art units. And I’m sure it has nothing at all to do with the sort of claims being pursued in those art units.

  136. The pendulum swings back. I will allow everything that comes across my desk.

    Who won’t be happy?

    Attorneys would never file a patent application that was without merit.

    I am all for this. My production will be 200%. I will receive awards.

  137. Examanona, ha ha ha is correct, but I think payment by all appeal conferees should be made when reopening happens AFTER THEY DECIDED THE CASE SHOULD PROCEED TO APPEAL AND AFTER YOU FILE A BRIEF. This has happened to me three times, and in each case, no new arguments were presented in the brief, which were not presented in the request for the pre-appeal brief conference.

    Frankly, I think each of these three individuals (which includes the examiner) should be fined about $1000.00 for incompetence, for carelessly extending prosecution, and for being a major jerk.

  138. Thanks for the thumbs up Windy City

    Forthe record someone is posting as FED UP…not be be confused with me

  139. Right – no matter what the taught you in Hamburger U, I mean Patent Academy, applicants need not convince you claims are patentable.

  140. “A patent shall issue unless…”

    Pretty much says it all and should guide how the office works. Most idi0ts and those new to the profession just can’t grasp the simple concept.

    But there it is in all its simple splendor

    A – patent – SHALL – issue – unless – it is anticipated or obvious. Period.

    There is not law that says, a patent might issue if the Examiner feels like it, or if the political atmosphere is convenient, or if the tea leaves fall a certain way.

    Repeat after me: “A – patent – ***SHALL ISSUE*** – unless – it is anticipated or obvious.

    Period.

  141. Curious got it right. Examananoa, you want to know what happened to my spirit of cooperation? The last five years prosecuting before the group of buffoons known as Examiners crushed it into the ground. Reap what you sow, and all that.

    I’ll be generous – I’ll be twice as cooperative as the PTO was during the last five years. Which means, now that the pendulum has swung the other way, and the golden age of prosecution has begun, don’t expect us to cut any slack.

    Attorney kings begin their rule over the Examiner serfs.

  142. “Instead of being an us vs them attitude, I believe working together is better.”

    I fully agree and that is the way it was until about six years ago, when the reject-reject-reject policy was enacted and the examiners had less incentive to work with applicants to get a case allowed. They were punished for erroneously allowing a case but suffered little punishment for erroneously rejecting a case.

  143. Ha Ha Ha,

    I am sure that you never write claims that are so overly broad that a table would be 102(b) over it. I am sure that when an Examiner rejects those broad claims using a table, it is that the Examiner was making a bad rejection. The Examiner should have known that the Applicant really meant that the invention was directed toward the electro-hydraulic lifting device in the fourth embodiment.

    Therefore, the Examiner should have paid your fees also in drafting claims to the true invention.

    Not every attorney is as perfect as you.

    Not every examiner is as bad as you think either. Instead of being an us vs them attitude, I believe working together is better. You like Kappos because he wants he is more attorney friendly. Great and fine. Just don’t be surprised that the gift you keep asking for stinks.

  144. Incidentally, Sunstein can “nudge” his elitist theories right up his a$$ – most people don’t need to be nudged, particularly not from some liberal academic from an elitist grade inflation factory like Harvard.

    Just let people be free to be as smart (or as stoopid) as they want to be and then enforce consequences.

  145. “And the presumption of validity will become increasingly meaningless…”

    The presumption that Mooney has anything meaningful to say is about zero, but that doesn’t stop him from droning on and on and on…

    The presumption “valid until proven otherwise” will stand, “innocent until proven guilty” will stand; “Mooney is angry little idi0t until he proves otherwise” will stand

  146. We have a new policy 6, do your freakin job or you are going to get a “nudge” out into the street.

  147. The idea that there has to be some kind of touchy-feely “nudge” involving interviews before the first action and the like is just a bunch of gobbledy-gook.

    Why not just make Examiners do their freakin job and do a good initial search and first action, instead of doing like 6 does, and copy and paste the claims into the search engine (raw hindsight reconstruction) and take the top 3 references even if they are in a completely unrelated area (bearing “collar” from a mechanical claim brings up a reference in the shirt arts and the examiner uses it).

    Although, aside from 6, I think even the dumbest examiners out there knows that atoms don’t fall out of wires.

    6 – constantly setting new lows.

  148. Examona:

    There are Examiners we’re talking about!

    If they do their job correctly, they should be punished a little (decreased punishment is their reward!).

    If they do their job incorrectly, they should be punished a lot (perhaps have to pay the notice of appeal fee from their pay check in the event the pre-appeal brief conference reopens prosecution, for example).

    Don’t like that? Well, that should make you think the clients don’t like it either. Funny how Examiners would be much more careful if it was their money on the line, instead of the applicant’s!

  149. “Actually, I have been having more productive discussions with Examiners already in the last couple of months. Maybe it is just coincidence. Are other people noticing this?”

    I’ve noticed some examiners actually wanting to work with me to get the case allowed, as opposed to simply wanting me to go away as in the past.

    I’ve also had quite a few first action allowances of late. Eight applications I wrote last year have come back allowed on the first action. I can’t decide if that means I did something right or something wrong…

  150. “…many of them age gambling addicts…”

    Like Mooney is a patent blog junkie gambling with other people’s time and patience

  151. If I was 6, I would at some point realize how freakin stoopid I was and STFU and try to actually learn something.

    But I’m not, thank god.

  152. We’ll see how it develops, but what I am hearing from Kappos et al. appears to be very good news for me and my clients. I am more optimistic than I have been for a very long time. Better upfront examination is what I would wish for the most. And I really like the encouragement for the Examiners to work with the attorneys to identify allowable claims. As Common says above, the Examiners usually know the prior art best, and the attorney knows the invention best. Bringing this knowledge together seems like a quick and effective way to do a good examination.

    Actually, I have been having more productive discussions with Examiners already in the last couple of months. Maybe it is just coincidence. Are other people noticing this?

  153. sarah mcpherson I think you are basically right. The way to increase quality is to learn to assist the examiners better. It is not reasonable to expect the examiners to know and become experts in so many areas.

  154. “As MM could have guessed, the increased pressure to allow has already begun to decrease quality. Decreasing quality decreases patent value and increases litigation. Costs are therefore shifted from the PTO to the courts.”

    And the presumption of validity will become increasingly meaningless as the public (e.g., judges) are confronted with more and more garbage.

    The trolls should be careful about what they wish for. Then again, many of them are just gambling addicts playing with other people’s money.

  155. Thanks Mark,

    Be sure to ask 6 what that law means. You’ll love his answer (if he ever grows a pair and mans up to one).

  156. “…the examiners have EVERYTHING they need at the onset to do the complete search..”

    I’d definately disagree with this. Prior to becoming an examiner I worked in industry for about 4 years in my specific field.

    There is much more knowledge availible then what is reflected in the patent art (foreign and domestic). First with NPL being from industry I know a lot of locations to look beyond google, plus I have a large library of my own books which is indespensible. To keep current on NPL and have access to the best NPL, quickly, I pay about $180 a year for my professional membership (otherwise I have to wait till the patent office gets it for me), plus I spend another ~150 a year of my own money expanding my personal library. I could spend 1000’s a year and still not have everything that is theoretically availble to the PHOSITA.

    Beyond NPL there are times where equipment features are claimed that I’ve dealt with before in industry but were never something made explictely public (detailed equip drawings, rules of thumb, industry best practices).

    Finally as an examiner you’re restricted from talking to the top experts both in industry and the universities because of confidentiality rules.

  157. “The new rules should simply outlaw that nonsense and we’d probably do away with 90% of the ills of the patent system.”

    So let me get this straight. Examiners, who examine a very specific area of applications, aren’t expected to know the art. But attorneys, who deal with many many technology areas, are expected to know all the art in each area?

    As you would say… LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

  158. Broje, I am not sure I understand your need to punish people. What ever happened to incentives? I assume that you receive a reward for quality work and are in some way punished by poor work.

    Punishment leads to avoidance of punishment. You agree with this by stating, “You’re right. I meant “more likely.””

    Where do you find the basis for “Most Examiners are in it for the short term?”

  159. “Permitting Examiners to put off cleaning up their own RCE messes only increases the frequency of the behavior.”

    Of the PTO delays long enough the Applicant may lose interest for business or financial reasons, the case goes abandoned and the PTO is happy

  160. “As part of the nudge toward focusing on the important issues early-on in prosecution, the PTO is also providing more incentives to examiners to have discussions (interviews) with applicants rather than rely solely on formal paper filings that are often misunderstood and left unread.”

    Although examiner interviews may have some value in figuring out an examiners point of view on an issue and using it to craft an appropriate written response, applicants and their legal representatives should take care to note that any oral promises from an examiner are not to be relied upon (i.e. not to be trusted):

    37 CFR § 1.2 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.

  161. answer to posted by 6 at 11:40.
    As I am sure you all believe I don’t know anything.. But I do know a system of Art in catagories and sub catagories and sub sub catagories.. similar to ebay can be with a little work posted on each computer. The work the PTO needs to invest in. And then you will have most of the art neccessary to validate/invalidate most claims right in front of you… 6. If the PTO can hire Examiners by the 100’s They can hire techies too write the programs to do this. And keep the programmers. and pay them well to constantly add what is new and useful to the Art people claim. And then the only thing missing will be an Examiner that can do his job “correctly” with his SPE there to make sure.
    Sarah McPherson

  162. ***********broje: “The Continuation application is much less likely than the RCE to be picked up for Examination because of the decreased counts.”

    Your logic appears backwards.**********

    You’re right. I meant “more likely.”

    ***********”This move removes pressure on Examiners to identify allowable subject matter in applications”

    On the contrary, it adds pressure on the examiner to identify allowable subject matter in order to dispose of a case instead of steadily earning fewer counts for each RCE. It also adds pressure on the applicant to claim allowable subject matter in order for the examiner to have any interesting in picking up and disposing of the case.**************

    I disagree. Most Exmainers are in it for the short term. Those will have to Examine the RCEs created by their predecessors. If they are going to get their counts up, they will need to pick up and give short shrift to as many new apps and Continuations as possible, while pooping out RCEs to be cleaned up by their successors. The lifers will still have a tendency to procrastinate, and use the same or similar strategy in hopes of getting promoted to the point where those lower on the totem pole will be cleaning up their RCE messes.

    Psychological tests have repeatedly demonstrated that only fear of immediate consequences is effective in deterring behavior. Permitting Examiners to put off cleaning up their own RCE messes only increases the frequency of the behavior. What we really need is a decrease in counts for any Final if an RCE is filed. That would get Examiners off their bums.

  163. 6 FTL writes:

    “In the EPO, at oral proceedings, if you win, your claims are issued. Simple as that.”

    which is nice, but does s/he know why? It is because the EPO will only examine that which it has already searched, and will only search that which is in the app as filed. So, searching is over and done with, very early. Historical accident, separation of search and examination but, boy, is it a help, in these days of trying to master the workload. Three cheers for The Law of Unintended Consequences.

  164. “Please point me to my art specific library equipped with the books that actually cover my art. There are ~1000 volumes that I require to ‘do a complete search’ over all the cases I’ve ever done”

    Don’t you ever tire of making stuff up?

    Do you think EPO and JPO examiners have, or need, such books? They do a much better search than the USPTO examiners. And they don’t incessantly whine like USPTO examiners.

    Hopefully Mr. Kappos will start the outsourcing of patent examination sooner rather than later.

  165. Fed Up Old Guy – I, for one, like your idea. It merits mention that China is very restrictive on post-Office Action amendments; a strict examiner there may only allow independent claims to be amended to incorporate features from dependent claims. I wouldn’t mind a similar process in the USPTO – establish the allegedly novel features in the claims, argue them or combine them if you must, but don’t incrementally narrow them over time to overcome Office Action after Office Action.

  166. “Unfortunately under our ridiculous system it is merely to have “a say”. Then the courts have “the last word”.”

    You really think the USPTO, or even worse, an individual examiner, should have the final say? Ridiculous.

    I also think it’s a travesty that the BAPI can’t allow claims. In the EPO, at oral proceedings, if you win, your claims are issued. Simple as that.

  167. “The patent attorney may know some of the art, but in many instances they don’t.”

    The new rules should simply outlaw that nonsense and we’d probably do away with 90% of the ills of the patent system.

  168. Common, I think you make my Presumption of Validity point. We expect from the PTO a good quality search. But do we expect an Examiner to know what is or is not obvious to the PHOSITA? I don’t.

    Is it really true, that those doing searches at the USPTO have been searching that same little corner of the prior art universe, for years and years? These days? Permit me to express my scepticism.

    And if that is what they have been doing, exclusively, for years and years, in their little corner, is it that which equips them to pronounce whether something’s obvious or not? Seriously?

  169. broje: “The Continuation application is much less likely than the RCE to be picked up for Examination because of the decreased counts.”

    Your logic appears backwards.

    “This move removes pressure on Examiners to identify allowable subject matter in applications”

    On the contrary, it adds pressure on the examiner to identify allowable subject matter in order to dispose of a case instead of steadily earning fewer counts for each RCE. It also adds pressure on the applicant to claim allowable subject matter in order for the examiner to have any interesting in picking up and disposing of the case.

  170. “Contemplate what that means.”

    It means the next rules package will be slightly less ornerous but get the same effect.

    Word on a different street than my usual street is that drafting has begun.

    ARTI FTW!!!!!!!!!!!!!!!!!!!!!!!!!!

  171. Another lesson learned. I sloppily write how the concept of a “Presumption of Validity” infects every “patent law issue” and am immediately and vigorously assailed with complaints about EPO fees for claim 51 and beyond. It hadn’t occurred to me that the EPO fee payable on claim 51 was a “patent law issue”. Should I perhaps have written “issues of substantive patent law” or would that not have made any difference?

  172. “For these claims NO person who has the slightest knowledge of the art would actually believe that the claims would be allowable. These are the claims that PO examiners the most.”

    Why? These are the claims that are most easily disposed of. Searching for art that doesn’t exist (i.e., patentable subject matter) must be much more frustrating than searching for art you know exists.

    If I was an examiner, what would get me PO is if all the claims were overly broad. Remember, the goal is to be able to draw the line properly. As such, if some of the claims are overly broad, then go over it.

    Some applicants know the art like the back of their hand — because they spent years in the art. However, many applicants are not aware of the great reaches of the prior art because they solved a problem with something they’ve never seen before and they want to get a patent on it. At this point, they hand it to the patent attorney. The patent attorney may know some of the art, but in many instances they don’t.

    Your job, as an examiner, is to know your art — your very narrow slice of it. There should be nobody else that knows your art as well as you and your fellow examiners in your art unit. The average examiner has spent years and years after years searching their particular art on a daily basis. Nobody outside the USPTO does that — not attorneys, not professional searchers, not inventors. As such, you have a very skewed belief as to what is known or not known.

    The fact that something is on the market does not necessarily make it known to most people in the art. Also, the iventor may be ignorant of the state of the art.

    A suggestion to your and all examiners — get over overly broad claims. Don’t take them personally. Overly broad claims will ALWAYS be filed for multitudes of reasons.

    BTW — what I have also seen is that many examiners treat claims as “giggle” claims because they’ve ignored critical limitations. I’ve seen it several times where the Examiner has cited art, that generally describes the state of the art for what we’ve claimed, but is completely silent as to the improvements that we’ve claimed.

    I don’t expect Examiners to be even reasonably competent at inventing or drafting claims, and I have no grand illusions about my ability to invennt. Similarly, don’t expect applicants and attorneys to know the prior art even a tenth as well as you do. Some may, but most won’t. As such, you and other examiners gnashing your teeth over it is just a big waste of your time.

  173. “Nonetheless, what exactly do you think the job of the examiner is, if not having the last word on what’s old or obvious? ”

    Unfortunately under our ridiculous system it is merely to have “a say”. Then the courts have “the last word”.

    “Can anyone actually get a patent unless the examiner’s last word is “OK” (even if that “ok” must be forced by a higher power like the Appeals Board or the courts)”

    Yes.

    A sig examiner can refuse till his dying breath and you could still have Kappos give you a patent.

    “…the examiners have EVERYTHING they need at the onset to do the complete search..”

    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
    HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA

    Please point me to my art specific library equipped with the books that actually cover my art. There are ~1000 volumes that I require to “do a complete search” over all the cases I’ve ever done, yet I have around 10 at my immediate disposal and maybe 40 in the downstairs library where they want me to keep the copy in the room.

    You want to spring for the other 950+ sometime? They cost about 200-400$ each.

  174. As MM could have guessed, the increased pressure to allow has already begun to decrease quality. Decreasing quality decreases patent value and increases litigation. Costs are therefore shifted from the PTO to the courts.

    Here is to higher allowance rates.

    Curious will probably return with some examiner bash. So be it. I will have even less work to do.

  175. Seems to me that this move, combined with the change to the Examiner count system, may be designed to give applicants, in a round about way, a choice of deferred Examination.

    Basically, after the Final Office action, the applicant can either file a Continuation application or an RCE. The Continuation application is much less likely than the RCE to be picked up for Examination because of the decreased counts.

    So Applicants who just want to keep a patent pending, without having to pay for Office action responses every few months, can file an RCE. Others can file a Continuation application. This decision can be made on a case by case basis by Applicants with the full benefit of having been informed by completion of an entire round of Examination.

    This move removes pressure on Examiners to identify allowable subject matter in applications, while saving money for companies at the expense of patent attorneys who would otherwise receive regular fees for preparing and filing Office action responses. Me no like.

  176. “Common sense”, while I disagree with some of what you said earlier, I completely agree with your post @ 10:06. That is basically what examiners are supposed to do. Unfortunately, way too many were never taught at the beginning how to do it or even that they should. Particularly those hired over the last 5-6 years. And after they are working for 2-3 years it is too late for them to learn to do it right & still meet production. The herd needs to be culled out (e.g., “6”).

    SPEs generally don’t have the needed time to properly train the large number of new hires. The PTA was a failure. Just ask any SPE that got someone from there. Most needed to be retrained and many SPEs didn’t or were not able to because they themselves didn’t know how to do the job right. For starters, they (PTA) were never allowed to allow anything & didn’t know how to identify allowable material or even how to search properly. Once back in the TC they were often not given the training needed & were thrown in to sink or swim. So they did what they had to to survive. The whole set up what wrong & not defending it, just explaining what was.

    One thing I DO disagree with is the quality of the claims originally filed. While there are exceptions, for many cases the broadest claims do not pass the “giggle test”. For these claims NO person who has the slightest knowledge of the art would actually believe that the claims would be allowable. These are the claims that PO examiners the most. From our POV they seem to be simply there to waste time & are not really what was invented.
    Now, I realize that you may have your reasons for filing such ob$cene claims (maybe simply because you have no choice but to obey orders?) but they do nothing to get the case closer to allowance & cause some of the problems with examination & rejections. If the claims were closer to what was invented there would be a better chance of quicker prosecution. Yes, you can not anticipate all the prior art, but being readable on things that have been on the market for decades (no exaggeration) and the common person would know about does not aid prosecution but inhibits it.

    MVS

  177. “Too right I am. It underlies US thinking about every patent law issue, and so is responsible for the yawning gulf of mutual incomprehension, between the USA and the ROW.”

    This is an interesting comment that bears some thinking.

    How, for example, does the issue of presumption of validity in the US underlie the EPO decision to charge approx. $ 350 per additional claim, even for additional dependent claims? Isn’t that, really, an issue of a narrow-minded, democratically unaccountable bureaucracy behaving badly?

    How, for example, does it underlie the jaw-dropping difference in cost per potential consumer between obtaining patents in Europe and in the US? (To be fair, Japan and a few others are, notoriously, even worse. India and, to a lesser extent, China are still relative bargains). Surely that issue is primarily one of national sovereignty and language?

    Aren’t most of the problems at the EPO (which is not ROW), driven by de facto democratic unaccountability?

    In any case, it was an interesting comment.

  178. It seems likely that this new RCE handling procedure is going to result in another patent term adjustment bonanza. Although the clock on 3-year delay stops with the filing of an RCE, PTA will still accumulate under 35 USC 154(b)(1)(A)(ii), which requires the PTO to respond to Applicant’s reply under 35 USC 132 within 4 months. An amendment in response to a final rejection that accompanies an RCE would be considered a reply under 35 USC 132, so a 4-month clock will start ticking. Cases often sit on the “special new” docket for years, so there is an enormous opportunity for PTA. It’s an even bigger opportunity than when filing a continuation, where the PTO at least gets 14 months from the filing date to issue a first action. A solution might be to docket RCE’s as soon as they are filed and then require Examiners to act on RCE amendments within 4 months.

  179. Max,

    If you can get the EPO as a search authority during PCT you can usually figure out some of the claims you might get. I think the reason few people use PACE is the cost of validation and then the annuities.

    Many Applicants would choose expedited examination in the US if they did not fear the type of office actions that Yo Quiero, Common Sense and Lionel describe.

  180. Reply to Max:

    The Canadian Patent Office permits a request for examination to be filed by any person, not merely the applicant.

    Similarly, once examination has been requested, the CPO permits any person, not merely the applicant, to request that the application be advanced out of order, on payment of a fee of $ 500.

    A third party is also entitled, without fee, to submit prior art and to explain the relevance thereof to the Commissioner.

  181. I assume that the PTO will be taking the complementary steps required under current law, to implement supervision of examiners to ensure complete examination early in the process, and to prevent premature final rejections. See my comment letter at

    /media/docs/2007/11/boundy.pdf Attachments E and F, PDF pages 67-80.

    I have real confidence in the new Kappos administration, that the PTO’s past double standard (rules that benefit the agency can be made up an enforced willy-nilly, but laws that benefit applicants can be ignored) is over.

    Right?

  182. Common Sense,

    Amen! to #4. I recently had an examiner interpret the word “parallel” in the phrase “parallel interconnection bus,” in an electrical application, to mean physically parallel so that he could make a rejection. Dear god.

    E6k, a tidbit for you. Know how you think you can just cite a general purpose processor then say it’s “capable of” performing any software function? I recently won an appeal against an examiner who tried just that. The board slapped him down and said that he must show that the processor of the reference is programmed to do X in order for it to be capable of performing X.

  183. NAL writes:

    “I see you are trying to drag the Presumption of Validity into yet another topic”

    Too right I am. It underlies US thinking about every patent law issue, and so is responsible for the yawning gulf of mutual incomprehension, between the USA and the ROW.

    Endless pursuit of the canard, that the claims that emerge from ex parte examination of an app at a PTO are valid unless there is clear and convincing evidence of their invalidity (obviousness) imposes a ridiculous handicap (unique to the USA) on hard-working industry.

    But take no notice of me. I know, I might be wrong.

  184. “But if they did the examiner could search it all and draw that line in the sand.”

    I agree that dependent claims are important in quickly drawing the line. However, I cannot even begin to tell you how many times I’ve seen dependent claims given short shrift by an Examiner. When I have 20 claims, and I see a single reference 102 rejection or a two reference 103 rejection for all twenty of those claims, I am almost positive that the Examiner has ignored a good portion of the dependent claims.

    Some recommendations for Good and QUICK examination:

    1) A robust claim set to work with
    2) Time for the Examiner to properly consider the specification prior to searching (i.e., don’t just keyword search the claims)
    3) An EXHAUSTIVE search — find the best prior art after the 1st OA and Applicant will narrow the claims prior to filing the RCE
    4) Giving claims their broadest REASONABLE claim construction — too many battles are fought over claim interpretation because an examiner has ignored claim limitations under the rubric of giving claims their broadest interpretation
    5) An examiner properly trained and supervised — too many new examiners are left to wallow in the wilderness

  185. Maxdrei, “amusement” is only one of many words that the patent bar feels towards examiners re: your comment of “I’m amused by the idea that the Examiner has the last word, on what’s old or obvious. It’s that old Presumption of Validity again.”

    Nonetheless, what exactly do you think the job of the examiner is, if not having the last word on what’s old or obvious? Can anyone actually get a patent unless the examiner’s last word is “OK” (even if that “ok” must be forced by a higher power like the Appeals Board or the courts). Do you find it amusing that examiners must actually examine? Or that part of examining is either allowing or rejecting based on what the last word on what’s old or obvious is? I see you are trying to drag the Presumption of Validity into yet another topic – try to remember why that presumption is there. The Office is actually presumed to be doing their job (I know – egads!)

    You are correct in noticing the conflict – Fed Up is clearly conflicted about what his job entails, perhaps he didn’t quite hear what Lord Kappos has been saying of late. That’s OK, all Fed Up has to do is read my posts.

  186. Another, I’m curious. Which is the “other Patent Office”. In the EPO, anybody can ask for expedited examination. It’s called “PACE”. No fee, no reason needed. But hardly anybody ever does. You know, I think it suits most Applicants to sit for years, with their app published but not yet examined, frightening their competitors with an app that could jump in any one of countless amendment directions.

  187. “Without perfect knowledge of the art (and how it will be applied) and how the claims are to be construed, one cannot draft perfect claims.”

    Gosh. There is an heroic assumption here, for sure.

  188. This exact point was raised in the Patent Office Liaison committee meeting. In reply, the USPTO representative suggested that among the possible new steps being considered was the opportunity for the Applicant to pay a fee to have the Application, i.e., the RCE, advanced out of order if the applicant wishes. This can be done simply on the payment of a fee without any other additional requirement,(e.g., of filing a search result with commentary on the prior art, and so on).

    This does not seem like a bad or unreasonable idea. At least one other patent office already does this, and the fee is not particularly large.

  189. Ken Brooks,

    (1) You can search for the purposes of novelty, but not nonobviousness. I have had to endure multiple office actions of the Examiner insisting on some tortured logic. A lot of times, it’s based upon the use of a particular word or phrase that clearly means something different, but read to encompass all possible meanings is used to reject the claims.

    (2) Examiners make crazy rejections.

  190. curious: “I would like to see a year-by-year graph over the past 20 or so years of the number of first Office Action allowances.”

    Why, so you can verify your false assumptions? How about this – more filings = more art = less allowance.

    the original appealho: “HA! More bribery! Great.”

    You know, I was just discussing things honestly, but I thought about it again this morning. It does kind of sound like bribery, but that was not my intent. Now that the issue has been brought out, I would not be suprised if continuation and RCE fees are made equal or otherwise adjusted.

  191. These last two contributions contain statements that (to my mind) conflict.

    Fed Up writes:

    “Lawyers don’t claim the invention, they wait until they see the art and then try and claim just a wee bit over it. They don’t claim it because they don’t know what it is.”

    whereas NAL writes:

    “…the examiners have EVERYTHING they need at the onset to do the complete search..”

    I’m amused by the idea that the Examiner has the last word, on what’s old or obvious. It’s that old Presumption of Validity again. For me, what matters is what the Supreme Court will think of my claim, in litigation, long after issue, when the fate of the claim depends on the preponderance of evidence. It’s my job to get the claim right. That’s what my client pays me for. I expect from the Examiner a competent search, but I don’t defer to his/her opinion on what is old or obvious. He or she lacks my access to the skilled addressee. How can an Examiner have a better idea than me, what’s old or obvious? The Exr ought to be merely a first stage coarse filter, that refuses clear cases and lets 50/50 cases through.

    But, in that case, courts should be finding invalid many of the claims that are litigated, and those who willfully assert 50/50 cases should expect to have to pay dearly, if they lose.

  192. “With that sort of written description up front, a USPTO Examiner can search the inventive concept properly, once and for all.”

    But MaxDrei, have you missed the thread(s) wherein 6 maintains that he only has to look at the claim set?

    Further, I recognize the difference in diligence between the euro- and US view on amendments, but it is NOT accurate for you to paint that difference as the US allowing “new matter” introduction with amendments. That’s simply not correct and reflects more your lack of understanding the US way than it is with such a gross rule violation. Also, you would seem to indicate that new material is routinely added after the initial search which necessitates the secondary or tertiary searches. This just isn’t so. RIGHT NOW – the examiners have EVERYTHING they need at the onset to do the complete search – your once and for all IS at hand. New Matter additions are against the Law.

    Additionally, at least in my firm, the drafting of claims for fall back position is just as arduously contemplated for US apps as it is for EP apps.

    But even before we get to the claims, you seem to miss the point that common sense isn’t common is making – the line that accurately divides what is patentable from what is unpatentable is NOT the applicant’s job to draw. Applicant’s are NOT required to do (and yes I too recommend that they actually do) a pre-filing prior art search. It seems that many want to switch the onus from the examiner to the applicant – people wake up – the Rules package which included such tactics has been rescinded. Contemplate what that means.

    One of its meanings aside from the point above, is noted by Dennis above under Allowing Allowable Claims. Especially you examiners like 6 and Malcolm – Lord Kappos has decreed: Reject-reject-reject does not equal quality. You are going to actually have to work and actually examine the material (all of it – not just the claim sets).

    Finally, I do believe that “…examiners to work more directly with applicants to “find the patentable subject matter and get it clearly expressed in claims that can be allowed.”” – Dennis quoting Lord Kappos) means that examiners, yes examiners, should be helping applicants pull the material that IS an invention from the application and express that material in the claims, as I wrote on a previous thread and was quickly derided by the skirt and track shoe crowd. (before your undies bunch, this does not mean that the applicant is scot-free and doesn’t have to present workable claims – let’s not misconstrue my position)

    Wow – some novel concepts – Examiners examining and working with applicants. Can you be more 180 from reject-reject-reject?

    This sea-change will do more to nudge the applicants away from over-broad claims than anything else, but this will not happen quickly. Applicants will have to be convinced that examiners WILL BE helpful before broad over-claiming as a first defense to client rights will abate. AS the vociferous skirt and track shoe examiners posting here evidence, this change in examiner behavior may be awhile in the making.

  193. Curious – No they don’t have to go to appeal they can discuss both of their interpretations of the art and claims and how the art applies thereto. As far as being “stuck”…well they are what applicant claims as his invention right?

    Common Sense is not common – Thank you for pointing my point. Lawyers don’t claim the invention, they wait until they see the art and then try and claim just a wee bit over it. They don’t claim it because they don’t know what it is.
    This causes many RCEs and long pendency, the examiner is not going to search every possible thing in the spec that could be in the invention and just in the same way that applicant doesn’t put everything in the claim that he could. But if they did the examiner could search it all and draw that line in the sand. I also agree that just because a combination could be made that does not make it obvious…but that does not require amendment to the claims just and argument in response.

  194. Jules: “why would a client want to refile as a continuation if no claims are allowed in the parent case?” To give the examiner more time to work on your case? Presumably that extra time might allow the examiner to do a better job, and it might be a gesture of good will.”

    HA! More bribery! Great. You and Boss hog are on the same wavelength.

  195. Well, having scrolled down that 35 comment thread (all written in just a few hours) I’m left thinking that the key to managing the USPTO workload lies in the 35 USC 112 “written description” requirement. As Common writes, immediately above:

    “The goal is to draw the line that accurately divides what is patentable from what is unpatentable”

    Agreed. But there’s another “game” that comes before that. It is the game 6 mentioned above. When Applicant files, there has to be a “written description” adequate to identify the inventive concept that Applicant thinks he has contributed to the art. With that sort of written description up front, a USPTO Examiner can search the inventive concept properly, once and for all. Once that search report is communicated to Applicant, she can write claims that are good over 102 and 103. Issue should follow, in short order (unless of course the USPTO lacks a means of denying admission to the proceedings of all the “new matter” which US-style claim amendments typically contain).

    I should add that a “written description and no new matter” system drives Applicants into writing a decent set of dependent claims, at the outset, by which I mean real fall back positions if claim 1 turns out to be untenable. That set of dependent claims allows Examiners to deliver an even more incisive initial search report. In fact, Mr Kappos, a virtuous circle, if you will.

  196. “The examiner’s get a bad rap on this site and yes without doubt there is some crappy examining going around but as the saying goes, it takes two to tango….there are a lot of crappy filed claims out there that cause a lot of these RCEs. It takes all these go amendments to get applicant to finally get down to specifically claiming what they think is the invention…all I am saying it do it up front.”

    Identifying patentable subject matter involves four things:
    1) taking a first stab at the claims
    2) construing the language of the claims
    3) identifying possible prior art
    4) applying the construed claims against the prior art using 102/103

    Obtaining perfect claims up front — which you want requires a claim construction and perfect knowledge of both the prior art and how that prior art will be used — not the job of the application or the patent attorney.

    Applicants are fairly good in identifying 102 art. However, identifying 103 art is another story altogether.

    For most claims, there are probably dozens, if not hundreds, of possible combinations that could be made. However, the fact that a combination could be made does not make it obvious.

    Without perfect knowledge of the art (and how it will be applied) and how the claims are to be construed, one cannot draft perfect claims.

    The goal isn’t to draw the line the quickest. The goal is to draw the line that accurately divides what is patentable from what is unpatentable.

  197. Zak writess; “The delay resulting from placing RCE applications in the same queue as divisional and continuation applications, however, will nudge use away from filing RCEs when dealing with cooperative Examiners and towards the appeal process.”

    I will also be filing many more appeals (despite the expense to the Applicants (the public)).

    Referring to the posting above, “The BPAI received 15349 ex parte appeals in FY2009. They disposed of 6757 and the number of pending cases increased from 3897 to 12489.”

    The BPAI will become totally submerged.

  198. This change is definitely a nudge in the wrong direction.

    Considering the long wait to get an application examined, we strive for efficient prosecution at my company. This means that we try very hard to get patents issued in just two office actions. So as Mr. Brooks and others in the past have suggested, it is the general practice at my company to do a prior art search and draft the claims accordingly, focusing on the invention and the market to be protected. Despite our diligence, the FOAMs we receive almost always cite irrelevant art that has been misapplied and ignore the art cited in the IDS.

    If possible, we try to work with the Examiner by helping the Examiner understand the invention and its related art with interviews after each office action. For reasons ranging from refusing to return phone calls to just being stubborn, we are not always successful. When we are successful, it is not uncommon for the Examiner to ask us to make an amendment to the claims to address something they are uncomfortable about. In the spirit of cooperation we do this with an RCE. A two month delay is not a big price to pay to stay in the Examiner’s good graces by letting them get an extra count for doing a trivial search that should turn up nothing.

    When we are unsuccessful with interviews we appeal. If applicable we start with a Request for a Pre-Appeal Brief Conference and are generally successful in overcoming the rejection. If we do not prevail at the Pre-Appeal Brief Conference or it is inapplicable we proceed with an appeal brief.

    Basically, we only file RCEs when the Examiner is being cooperative. The delay resulting from placing RCE applications in the same queue as divisional and continuation applications, however, will nudge use away from filing RCEs when dealing with cooperative Examiners and towards the appeal process. After all, my CEO wants his patents and the sales guys want a protected market; neither wants delays.

  199. Fed Up Old Guy — so the examiner issues an Office Action on the merits.

    The only amendments which the applicant can make are to cancel claims and to rewrite dependent claims in independent format.

    And the applicant after filing that Amendment goes directly to appeal, and the PTO can no where during the prosecution change the rejections from what was set forth in the first OA.

    The applicant is stuck with his original claims and the PTO is stuck with the rejections in its first OA?

  200. Curious
    Since the examiner has the invention defined in front of him instead of constantly being redefined by amendment just to over come applied art and he has done the search for the invention….yes, no more searching should be required. But I don’t see why interpretations should necessarily be stuck.
    The examiner’s get a bad rap on this site and yes without doubt there is some crappy examining going around but as the saying goes, it takes two to tango….there are a lot of crappy filed claims out there that cause a lot of these RCEs. It takes all these go amendments to get applicant to finally get down to specifically claiming what they think is the invention…all I am saying it do it up front.

  201. Fed Up Old Guy writes “Dennis, you like graphs and charts, ever do one on how many claims get allowed without an amendment?”

    I would like to see a year-by-year graph over the past 20 or so years of the number of first Office Action allowances.

  202. Fed Up Old Guy — and the examiner is forever stuck with the art he applies and his interpretation of that art in his first Office Action?

  203. Want to stop too many RCEs, increase allowances and reduce pendency? Do this: get the applicant to claim his invention when he files it (no they don’t do it now). Let them file as many claims as it takes broadest to most specific. Then, and here is the kicker, no amendments to the claims. Let the examiner apply art to the point he can and allow the rest. Responses are limited only to claim/art interpretation.
    Any takers? Probably not…but I think it would work.
    Dennis, you like graphs and charts, ever do one on how many claims get allowed without an amendment?

  204. Federally Circuitous, you are missing the big picture. Had the practitioner been diligent and done a good job searching the prior art, there would be no need to even worry about an examiner’s examination. The claims would be drafted to be in condition for allowance when the application was filed, excepting, of course the 18 months of prior art that no one is aware of but the examiners.

    The more interesting point, here, however, is that the Duty of Disclosure is starting to operate as a taking for purposes of the Fifth Amendment. Specifically, the Duty to Disclose ends only upon issuance of the patent. However, often times prior art arises after a Notice of Allowance, .e.g., in foreign counter-part applications. By being forced to file and RCE in order to have the new art considered consumes term. It should be that the Duty of Disclosure ends upon receipt of a Notice of Allowance or we return to 17 years from issuance for a term of a patent. Here, we have the Director allowing the USPTO to take term from an applicant for the benefit of the examining corps. I can think of no clearer example of a taking, espeically when you consider the language of Tafas v. Dudas. Hey wait a minute that case is being pulled. Perhaps you now understand why that ccase was to be pulled. Ever since the term of the patent was changed to priority instead of from issuance, every single dilatory act of the USPTO that slows the issuance of a patent is a taking of a property right for which compensation must be paid. I have long believed this and Tafas v. Dudas supported that belief. Thus, it is no wonder that this directive came out once a deal was reached to withdraw Tafas v. Dudas. There are the backlog of appeals, as well.

  205. Dennis,

    Any comments on “The BPAI is a cess pit’s” posting above.

    It seems more realistic in my experience.

    Can you check with the PTO for us?

  206. “Although the backlog is growing, in the most recent quarter, the BPAI took less than 8 months (on average) to decide appeals.”

    The FY09 numbers are in.

    The BPAI received 15349 ex parte appeals in FY2009. They disposed of 6757 and the number of pending cases increased from 3897 to 12489.

    Given the pace of disposals and the amount of the backlog, that 8 month number should be easily well over 16 months.

    FYI – working with a sample size of over 50 appeals, the BPAI has been taking, on average, about 6 months in 2009 from when the Reply Brief is noted (i.e., when the Appeal is ready to docket) to when the Appeal is actually docketed. As such, the numbers are actually much worse than stated.

    The BPAI stating that it takes 8 months to decide an appeal is an absolute f’ing joke.

  207. Thank you for your response, Dennis. You wrote: “Thus, if you count the delay as beginning at the filing of the NOA you will typically be pushing 20 months for the “appeal process.” That does seem long.”

    But this 20 months is after the Applicant has already waited for the FOAM and then prosecuted the case for a couple of years maybe. So four or five years from the filing date to receive the Board’s decision may not seem long compared to federal litigation. But it is an eternity for individuals or small businesses who are waiting for patent protection before getting financing or proceeding with commercialization. It is detrimental to our economy, and discourages innovation IMHO. And now we are going to add another year to get an examiner’s response to the filing of an RCE?

  208. MM: “Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again.”

    At RCE, we probably haven’t really dug into the case for 3 to 6 months already (since the final rejection – except for advisory actions that require more than checking some boxes), so the damage is already done.

  209. Curious asked: is the 8 months measured from the time I file my Appeal Brief?

    Answer: No, the 8 months is from the time that the BPAI assigns an appeal number. The appeal number is typically assigned after briefing is complete. Thus, if you count the delay as beginning at the filing of the NOA you will typically be pushing 20 months for the “appeal process.” That does seem long.

  210. “The only measure of a patent’s quality is: how easy is it to show that the claims were improperly issued?”

    We have returned Mooney.

  211. Curious asked: What is the PTO doing to reduce the horrendously long delay in the appeal process?

    Although the backlog is growing, in the most recent quarter, the BPAI took less than 8 months (on average) to decide appeals. Although this could be reduced, it is not “horrendously long.” See link to uspto.gov

  212. I agree with Malcolm when he says “Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again.”

    In fact, given the turnover at the PTO it is not unlikely that a different examiner will pick up the RCE and have to start from scratch.

    One step forward and two steps backward, Mr. Kappos?

  213. “At least in their speeches, PTO management is encouraging examiners to work more directly with applicants to “find the patentable subject matter and get it clearly expressed in claims that can be allowed.”

    How does the new count system reward examiners when they do this???

  214. “why would a client want to refile as a continuation if no claims are allowed in the parent case?”

    To give the examiner more time to work on your case? Presumably that extra time might allow the examiner to do a better job, and it might be a gesture of good will.

  215. Boss12: thank you kindly for the information.

    still lurking: it’s often better to keep negotiating with the examiner than rushing to an appeal. i also am waiting for the other shoe to drop – appeal fees going up at a noticeably higher rate than other user fees.

  216. does this mean that RCE’s we have recently filed will now take 2 years to get acted on? This sounds like something John Doll would have pulled.

  217. Response to fisher ames: why would a client want to refile as a continuation if no claims are allowed in the parent case? There’s no benefit in it for the client, either on cost or on time.

  218. “Question: If an applicant refiles as a continuation application, instead of going the RCE route, and pays the extra $280, will the Examiner get a full count for a FOAM in the continuation unlike a chopped down RCE count if an RCE had been requested?”

    Answer: yes.

  219. Question: If an applicant refiles as a continuation application, instead of going the RCE route, and pays the extra $280, will the Examiner get a full count for a FOAM in the continuation unlike a chopped down RCE count if an RCE had been requested?

  220. DC: “Perhaps the biggest nudge is a change in philosophy – dropping the notion that “a lower allowance rate equals higher quality.”

    This isn’t a “notion” or a “philosophy,” but a straightforward axiom. The only measure of a patent’s quality is: how easy is it to show that the claims were improperly issued? If the PTO issues 100% of all claims presented to it without examining them, the quality of patents will go DOWN. If the PTO examines 50% of all claims presented to it, issuing the remaining 50% without examination, and issuing 25% of the examined claims and rejecting the rest, the quality necessarily goes UP (assuming, of course, that the PTO does a competent examination).

    Thus more patents the PTO properly examines and rejects (again, assuming consistent and competent examination), the higher in quality the issued patents become, by necessity.

    An increase in the allowance rate at the same time that the filing rate is increasing means that PTO is effing up bigtime. There is no other outcome, absent a massive increase in the quality and quantity of Examiners (including supervisors).

  221. “Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again.”

    We will return irrational Mooney shortly.

    Any word on how this will affect patent term adjustment?

    It isn’t uncommon for me to get 3-4 extra years of patent term when getting an allowance. There is a benefit to stalled patent prosecution.

  222. Ho: “Without a (written only?) commitment from the examiner that proposed claim amendments are/will be accepted, why does anyone even bother with an RCE in the first place, even given the higher cost of an appeal? ”

    According to that logic, why do anything that doesn’t have a guaranteed positive result?

  223. Kappos: “This change to the docketing of requests for continued examination is being made to allow examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications.”

    Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again.

  224. the new docketing status for RCEs may also nudge applicants to contest the finality of office actions more often

  225. Without a (written only?) commitment from the examiner that proposed claim amendments are/will be accepted, why does anyone even bother with an RCE in the first place; even given the higher cost of an appeal?

  226. Applicants might start putting allowable stuff in their *claims* (emphasis added) sooner rather than later, otherwise their RCE’s might take a while to get acted on. That time period may not be as predictable as it used to be (although you could roughly base it on whether the examiner is junior vs. experienced, junior will get to it quicker).

    There seems to be a positive benefit to applicants who present well thought out amendments during an interview, and solicit advice from the examiner, especially if you’re already at the stage of having to file an RCE. Otherwise, again, your RCE might take a while to get acted on.

  227. I had some of those sour skittles today and got a freakin sore on the inside of one of my cheeks!

    “As part of the nudge toward focusing on the important issues early-on in prosecution, the PTO is also providing more incentives to examiners to have discussions (interviews) with applicants rather than rely solely on formal paper filings that are often misunderstood and left unread.”

    There really isn’t much of a way to “focus on the important issues” in most cases any earlier than they are currently. Why? You might ask. I’ll tell you why:

    BECAUSE NOBODY HAS INVENTED THE ISSUE YET!

  228. Given that in most cases, RCE’s are filed b/c the examiner did a poor job of examination, putting the RCE in the same queue with everything else in effect penalizes many applicants for having been assigned a less-than-diligent examiner. I suppose if a patent term adjustment under 154 is forthcoming as a result, then it may not matter, but an applicant won’t always be due a PTA…

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