The pending en banc case of Hyatt v. Kappos is more important now than ever before because the Board of Patent Appeals and Interferences (BPAI or Board) is deciding more appeals than ever before. The chart below reflects the number of applications with completed appellate briefing that are pending resolution at the BPAI. As active patent prosecutors are well aware, this chart only reveals a small portion of a complex problem. Appeal briefing has largely become an ordinary part of patent prosecution practice. Most cases where appeal briefs are filed do not actually reach a BPAI decision. Rather, in most cases the examiner withdraws the standing rejection rather than pursue the appeal. In this system, appeal briefs have largely become a priced commodity rather than an all-out factual and legal effort.
In Hyatt v. Kappos, the en banc Federal Circuit is focusing on the amount of new evidence that can be presented when challenging a BPAI decision in Federal District Court under 35 USC 145. The panel decision held that the district court properly refused to allow Hyatt to submit additional expert testimony that went beyond the arguments presented to the BPAI. Judge Moore dissented from that holding and instead argued that the right to a “civil action” under Section 145 includes a right for a de novo consideration of patentability.
The issues raised in Hyatt v. Kappos are now important for many patent applicants because of the cost-pressures of appeal briefs and the high-likelihood that rejections will be withdrawn based on the briefing. Typical Applicants do not submit substantial additional evidence of patentability during the appeal process. However, under Hyatt, the applicant would be barred from substantially adding to the record in a subsequent civil action.
“Ah yes. The usual sideshow. Dennis can enlighten you as to the truth, if he chooses.”
Malcolm, I have debunked this line of yours repeatedly. Yet “there you go again…”
Just because you use different email accounts and have a different IP address each time you use dial up to connect to Dennis’s site, does not mean that Dennis can prove anything – let alone the “truth” you are trying to misdirect with.
You need new material – these stale bits aren’t even good enough for the birds.
MVS,
I agree – there are people on both sides wanting (even demanding) change. These blogs do tend towards polarization because that’s what sizzles. I am heartened by the change in guard, but make no illusion to the fact that there still exists sharp differences in fundamental beliefs about the virtues of patents. The underlying anti-patent viewpoint should not be ignored – it should be rooted out and destroyed, lest what appears to be progress becomes merely a strategic retreat and entrenchment in the philosophical war. Thank you again for your straightfowardness and attempts at even-handedness.
For the topic of this thread, I think it telling that once again the Office is attempting to power-grab (there is a very real reason why watchdogs are needed when administrative bodies are actively trying to set or reset their boundaries of power). Even though certain aspects change, others do not. Vigilance is still the order of the day.
I reversed the name order for a few reasons. For one, I like the sound better & like the shorthand a friend once came up for this version (MoVeS). The rest is a personal twist for reasons I’d rather not get into here.
NAL, thanks.
Didn’t respond sooner as I was away. The little digs at JD are just for fun, anymore. He is strident in his opinions that everything associated with the PTO is bad, if not evil, &, at this point we just take “friendly” shots at each other. I know I’ll never convince him that a lot of people, include myself & many SPEs & directors, agree that changes need to be made to improve quality and that reject does not = quality. He thinks everyone there is part of some grand & evil conspiracy, it seems. Most of us really do want to do a good job & do the best we can with the constraints of the system while doing what we can to make things better. He doesn’t think that really happens.
MVS
Oook.
Obfuscation!
And yet “IANAE” claims to be you?
Oook.
No, wait, that’s an orangutan. What sound does a baboon make?
I will say that IANAE appears to be a dope and you appear to be a baboon with a mean streak.
Well, MM, to get it straight: IANAE and you are different people? And yet “IANAE” claims to be you?
NWPA NAL is right about you, MM, being a great generator of straw. Why have you taken on the name IANAE anyway?
Ah yes. The usual sideshow. Dennis can enlighten you as to the truth, if he chooses.
Or you can play the ignorant, paranoiac. It really does’t matter much to me, NWPA, except that I’m obliged to inform you that you are mistaken and, from where I’m sitting, you look like a real tool.
“…everything is the PTO’s fault, the PTO is a fiery pit of evil agency law, and you’re just doing your best to swim against the current of overwhelming unfairness. Oh, and anyone who dares to suggest the PTO is anything short of a giant ball of complete fail is clearly an examiner and therefore biased against poor, innocent attorneys such as yourself.”
Sounds about right – hey someone congratulate NAL – another success story for assailing.
Now you are going to your ole argument that the persno you are arguing against is an extremist.
Yeah, sorry, I have no idea where I got that idea from.
Why have you taken on the name IANAE anyway?
Because “Malcolm Mooney” has too many letters, and sometimes I don’t feel like typing it all out.
Goodness, IANAE (MM). Now you are going to your ole argument that the persno you are arguing against is an extremist. So that they better pull back and defend themselves.
Sorry not there. You won’t find that in my posts. Goodness, don’t you have any arguments that are remotely fair or reasonable? That remotely address my arguments? Sheesh.
NAL is right about you, MM, being a great generator of straw. Why have you taken on the name IANAE anyway?
“Posted by: Michael Valentine Smith | Feb 18, 2010 at 05:07 PM”
Why do you insist on reversing the name order?
But, what is nice about your example is the great attenuation that is a good analogy to what happens to a citizen’s rights when they are thrown into the pit of agency law.
I think you mean “when citizens voluntarily choose to engage the agency in an attempt to create rights under the statute because they hope to profit financially from the exercise”.
You claim to live and die by your reputation, but you meticulously cultivate an image that everything is the PTO’s fault, the PTO is a fiery pit of evil agency law, and you’re just doing your best to swim against the current of overwhelming unfairness. Oh, and anyone who dares to suggest the PTO is anything short of a giant ball of complete fail is clearly an examiner and therefore biased against poor, innocent attorneys such as yourself.
By the way, MM, I would call you a baboon, but you seem to have come back as a dope.
NWPA, do you own a plane, by any chance?
And dope, we do our work and then bill the client typically. But, I am sure that there is some small aspect of our work that you can claim is just like your work and therefore they should be characterized the same way. Such a clever argument I can barely hold back the applause.
Double dog dope.
Oh yea, IANAE (MM) is admitting finally that he is an examiner or at least was an examiner and works at the PTO.
Dope, we live or die by our reputation. Oh okay, you came up with one example where our work is not judged until years later so that the client may not have a recourse against us. Clever boy. MM type of behavior.
Of course there are so many problems with your little example including the client could sue us, and that our reputation will be harmed. Plus you are assuming that we somehow did poor work, but that the client didn’t know it until litigation.
But, what is nice about your example is the great attenuation that is a good analogy to what happens to a citizen’s rights when they are thrown into the pit of agency law.
I can see that you know very little about patent prosecution,
Really? Because you’re the one who was shouting “no fair doing that to us!” when you apparently knew the whole time that it was already being done.
any one in the private sector would know that the clients have done this since their were clients.
Really, clients have been getting automatic refunds on their prosecution costs whenever their patents get invalidated? Since their (word missing) were clients? I didn’t know that, but it’s sometimes hard to see how private industry works from the ivory tower at Patent Office University.
You are a double dope.
>>Even the free market needs one person to make >>a service available before it can catch on.
Well, MM, I mean IANAE, I can see that you know very little about patent prosecution, because one of the largest technology companies in the U.S. already has this policy. And, do you really think the giant corporations aren’t hiring and firing us based on our allowance rate when they transfer applications to us?
Dope. And, dope, any one in the private sector would know that the clients have done this since their were clients.
How bout if the PTO refunds application fees for poorly examined applications that result in a needless string of RCE’s?
You know what, I’m totally on board with this.
All you have to do is show that poor examination caused the RCEs. Only, the final rejection clearly states a prima facie case that it’s the applicant’s fault the application is finally rejected, so you’ll have to take that up with the Board.
by the way what recourse do you think a client has against me? The answer is lots. 1) file a complaint with the PTO; 2) file a complaint with my state bar; 3) sue me in federal court; 4) sue me in state court, and last but not least, 5) fire me.
Your client has lots of recourse against a bad decision by an examiner too (some of which may be facilitated by number 5 above, but YMMV), but I loved your idea of automatic financial penalties whenever a judge disagrees with you. I figured you’d be eager to lead by example. Even the free market needs one person to make a service available before it can catch on.
“know what would be funny…”
How bout if the PTO refunds application fees for poorly examined applications that result in a needless string of RCE’s?
Incidentally INANE (Mooney) you’re still an azzhole.
IANAE: by the way what recourse do you think a client has against me? The answer is lots. 1) file a complaint with the PTO; 2) file a complaint with my state bar; 3) sue me in federal court; 4) sue me in state court, and last but not least, 5) fire me.
INANE says: “guess what examiners think…”
Who cares? The examiners have a job to do and cobbing together a few references that have come up on a computer search without even reading them until after a final rejection is not it.
The applicants initial burden is to file an application. I don’t care if examiner absolutely loa the attorneys, all they have to do is examine the application. And it is their burden to do so.
I’m not saying all attorneys do a great job, but that’s not an excuse for an examiner not to do their job. In fact, poor claims and poor attorney response should make the examiner’s job easier. Unfortunately, its not the other way around.
Comparing examiners to attorneys is a stoopit comparison INANE.
>>YOU THE PERSON need to lighten up.
You see that attitude with government types. But, when you are the attorney be it in a civil case or criminal or patent application, you deal with the client and see their pain. The government person (judge for example) doesn’t care and the clerk doesn’t care and they even laugh and make jokes at serious matters.
I think this same problem is at the PTO.
And, dope, what is the standard of review of the board at the Federal Circuit?
Dope.
23 Skidoo is all I have to say.
Have a nice day everyone.
>>Know what else would be fun? If agents gave >>their clients refunds for abandoned >>applications or invalidated patents, and pro >>rata for canceled claims.
Pretty typical of you to try and mix government with private practice. Sorry dear, but it doesn’t work that way. We are controlled by a free market for what services we provide. The only reins on a government employee is if we have a recourse to a district court with jurors.
Also, you dopes, you obviously don’t understand agency law and the problems with this attenuation of rights that we are supposed to get from an agency and not a jury. And, dopes, the fact that patents are expressly provided for in the constitution is very important. The constituion didn’t say that congress could set up an agency and have them make laws (rules), and that we citizens then have to deal with government employees with no recourse to force them to behave. Yes we have recourse, but my goodness, what time and money does it take to get that recourse and now some would take that away.
NAL: easy IANAE – that quote was not from me.
Sorry. I guess I saw a capital N, and my brain didn’t process the possibility that NWPA would post a million times in a row.
“NAL: you should be thinking of the poor applicant who has to spend years and go to district court just to get an administrative agency to behave.”
easy IANAE – that quote was not from me.
Time to fly – see you all next week.
Congress should give citizens a right to challenge the government’s refusal to grant a patent – perhaps it should establish an appeals court that specializes in patents, and allow citizens to appeal PTO decisions directly to that appeals court!
Yes, this is exactly what we need!
The government should set up a board that only hears patent appeals. Maybe interferences too. To be extra safe, if that board doesn’t go the applicant’s way, he could appeal to some kind of special appeals court that’s also pretty specialized in patent cases. As a last resort he should be given one further appeal from there to the Supreme Court, because patents are really important. They’re mentioned in the constitution, you know.
The point being that depriving applicants of their rights under the law is a serious offense.
A rejection isn’t the PTO depriving you of your rights, it’s the PTO saying you don’t have the rights you think you have. Just like when a DCDC judge does the same thing, your remedy is to appeal, not to engage in personal attacks against the decision maker.
You might also note that the PTO has a right under the law to reject your application for what it deems to be a valid legal reason.
YOU THE PERSON need to lighten up.
Funny Tom boy, but I think you don’t understand the real issue. Go back back and use your blank mind and build a new structure to understand some of the problems with that model of an appeals court and how it affects an applicants rights.
An applicants rights are a serious matter that affect the ability of many people to earn a living. An applicants rights should be taken as seriously as in a criminal court and a violation of those rights should be dealt with severely.
And you at the PTO who seem to think it is funny to be lazy and steal money and time from applicants should be terminated.
“Need to keep the bigger picture in mind that the PTO is an agency and that patents are mentioned in the constitution. I think that gives rise to more rights to citizens, and more of a responsibility of congress to give citizens a right to challenge government decisions with regard to granting patents.”
NWPA has a point. Perhaps the issue is that we’re not addressing the questions at the proper level of abstraction, and not distinguishing between the patent (r)ight and the patent (R)ight! Congress should give citizens a right to challenge the government’s refusal to grant a patent – perhaps it should establish an appeals court that specializes in patents, and allow citizens to appeal PTO decisions directly to that appeals court!
NWPA: the DDC is much more likely to give an applicant a fair shake. In general, we (US citizens) should get to take administrative agencies to district court.
NAL: you should be thinking of the poor applicant who has to spend years and go to district court just to get an administrative agency to behave.
I’m all for taking administrative agencies to court if they don’t behave, but like NAL I think it’s unfortunate when it comes to that. If the decision was clearly unfair or disregarded facts on the record or something like that, by all means take the agency to court. I just don’t think it’s appropriate to give everyone a do-over. Let the agency do what it exists to do, focus our energy on making the administrative process as fair as possible, and save the DCDC for cases where the Board has overstepped.
NWPA: The government should start including pay subtractions for bad rejections and firings for forcing applicants to go to district court to over turn the board.
Know what else would be fun? If agents gave their clients refunds for abandoned applications or invalidated patents, and pro rata for canceled claims.
The point being that depriving applicants of their rights under the law is a serious offense. Government employees should understand taht and be subject to severe civil and criminal penalties.
I think the former PTO director should at least be facing disbarrment.
And when an applicant has to go to district court to get their case heard their should be consequences to the government employee if it is the case that they have not acted properly.
There should be severe consequences to government employees who are effectively abusing the law. It is a close kin to corruption. The PTO should understnad that generating rules, for example, that don’t cut mustard under the law, is a serious offensive. The former PTO director should be facing civil charges (and maybe criminal charges.)
Need to keep the bigger picture in mind that the PTO is an agency and that patents are mentioned in the constitution. I think that gives rise to more rights to citizens, and more of a responsibility of congress to give citizens a right to challenge government decisions with regard to granting patents.
There is a bigger constitutional question here whether congress can slush off their responsibility to an agnecy and put us all in a black pit with a bunch of government meanies. We should get the light of day in district court with a jury of our peers.
IANAE – agreed.
NWPA – and we thought turnover now was a problem…?
The government should start including pay subtractions for bad rejections and firings for forcing applicants to go to district court to over turn the board. The head of one administrative judge for each over turned decision.
Instead of whining, you should be thinking of the poor applicant who has to spend years and go to district court just to get an administrative agency to behave.
Yeah, yeah, IANAE, but the reality is that the DDC is much more likely to give an applicant a fair shake. In general, we (US citizens) should get to take administrative agencies to district court.
You can’t marshal all possible evidence after a first rejection when you haven’t even tried explanations or arguments first, especially if you honestly don’t think the rejection is valid.
You aren’t required to appeal immediately after the second action, and that’s probably not the best approach in most cases anyway.
Even if you file an RCE to introduce more evidence in anticipation of the appeal, it’s still better than wasting three years and one round of review on an incomplete record before the Board. On the off chance that the examiner is persuaded by the additional evidence, the economics are even more on your side.
It bears repeating that Hyatt filed probably the most incomplete evidence possible short of nothing at all. Any competent agent should do better as a matter of course. I just hope the CAFC doesn’t draw its bright line too far from the facts of this particular case.
NAL: does not mean that you should misdirect the meaning and create messages I did not say and respond to those messages that I did not provide, while ignoring the messages I did provide. Feel free to take a bit longer to digest my longer posts – I am not looking for the instant reply.
Okay, so, we’ll both agree to do that then? Because this whole exchange started by you chewing me out for half a sentence in a very short post that wasn’t particularly accusatory, when the other half of the sentence added some much-ignored balance.
“I don’t see suggesting that practitioners in any way might bear some responsibility is attacking the patent bar.”
I agree Lionel – but that is NOT my position. You are falling for the re-direction offered by IANAE. IANAE deftly misdirects my statements yet again. It is IANAE that is being overly sensitive, and quite the converse – any suggestion that the Office is in any responsible is not an “attack” on the Office that MUST be refuted. It is IANAE that is painting my advice as extreme – and thus not needed to be followed. Re-read my posts – I am attacking something worth attacking (a baseless ethical malfeasance) and I am NOT holding that the patent bar is blameless.
IANAE, yes, my posts were long, but as they say, I would have made it shorter had I the time (obvious sockpuppet Taxman – bite me). Just because the posts were not short and sound-bitable; however, does not mean that you should misdirect the meaning and create messages I did not say and respond to those messages that I did not provide, while ignoring the messages I did provide. Feel free to take a bit longer to digest my longer posts – I am not looking for the instant reply.
MVS,
I actually place you in the bucket of sincere posters and do read what you post. As I have mentioned here and at other blogs, I am capable of learning and listening when reason and legal logic are employeed. BTW, the subtle dig at JD did not go unnoticed. A certain amount of irreverence is fine. I like that. I also like your follow on posts, although I would disagree with some of your holdings, your effort at a balanced view is appreciated. I think that there are systemic problems at the Office that will manifest until the quasi-average widget production approach is abolished. Each application must be given its own measure. The quasi average widget production approach leads to gaming and that gaming affects every system down the chain.
NAL,
I believe you are being overly sensitive. I don’t see suggesting that practitioners in any way might bear some responsibility is attacking the patent bar.
It’s not scientific to rule out possibilities as a matter of course simply because they deviate from your world view.
I agree with RealWorldAttorney with regard to requests. A lot of times I have 102 or 103 rejections where an element is simply not shown and the Examiner is torturing logic to say that it is. In every one of those cases, I have had the Examiner reopen prosecution.
If an examiner reopens after the filing of an appeal brief (NOT a pre-appeal), the action MUST be signed off on by the SPE. There have a ton of cases where that has not happened.
Thanks for your comment, MVS. We’ve seen this on occasion, but most of the reopenings-after-appeal-brief that I’ve seen have been signed off by the SPE. Frankly, it appears that certain SPE’s (not all of them, mind you) are complicit in, if not totally responsible for, the “claim 1 is way too short, so it must be obvious – so let’s keep making bogus rejections and hope it goes away” line of rejections. I must say, this is one game over the last few years that has really hurt the small inventor, in my (limited) experience. The big boys can afford to stay in the game, but the little guys understandably are reluctant to keep throwing money in after the 2nd or 3rd BS office action. We’ve done several responses for free, in cases where the office’s actions are particularly unfair.
Tell me, MVS, are you guys getting more pressure to close out old cases, like those pending 5 years or longer? Those seem to be getting a lot more positive action these days.
Back to Hyatt: Holding that a district court action is limited to the record of the Board appeal means that you really have to submit all evidence during prosecution – after the first Office Action or after an RCE since you can’t present new evidence at the Board. The economics just don’t make sense. You can’t marshal all possible evidence after a first rejection when you haven’t even tried explanations or arguments first, especially if you honestly don’t think the rejection is valid. District court actions are much more expensive than appeals, and for cases that are worth taking to court it makes sense to take the time/money to create a stronger record, but the same approach would be overkill for most cases.
This would be in the computer-related arts?
I’m not sure how to interpret “computer-related arts.” I dare say that almost anything that uses electricity today is “computer-related.” So yes, many of my claims involve data processors of one sort or another, although many include analog cirucits as well. I haven’t written any claims to methods for hedging financial transactions lately, however.
Aside from a rash of spurious Bilski-motivated rejections (some of which were quite creative, mind you) that has mostly subsided, I’ve not noticed any differences in examination quality as a function of the general subject matter of the claims.
My Dearest 6,
I am so sorry that you didn’t see my next post. And thanks for sticking up for me Gentlemen.
Too many sock puppets here.
Have a nice evening everyone.
Ok, I just read crazy anti-tax guy’s manifesto. Definitely not AI. It never mentioned WE THE PEOPLE once.
Doesn’t JAOI live in Texas? Hmmm…
NAL’s LAW: “Why say what can be said in two sentences, when you can blather about it for three pages”
Anybody else wondering if that was AI in that plane?
The #2 instance (reopen after board decision) should happen rarely. Plus, it needs the group director approval & him/her to sign off on the new rejection. Most are very reluctant to sign-off on these (rightfully so).
And something I see all too often gotten wrong. If an examiner reopens after the filing of an appeal brief (NOT a pre-appeal), the action MUST be signed off on by the SPE. There have a ton of cases where that has not happened.
I would suggest to you all that if you get a reopening without a SPE signature that you at least give the examiner (or SPE) a call & get a proper action. There is a specific form paragraph for this & it includes the applicant’s options – back to appeal or just respond. I think that a lot of examiners just reopen & try to slip it by the SPE. If the SPE knows (& is reasonable – a lot are. Really!) they will at least get it corrected & maybe even get the examiner to try to get it allowed instead of keep sending out non-finals.
MVS
THobbes we’re getting a lot more phone calls, some of them with reasonable suggestions for how to get to allowance, as well as many more allowances than we saw 18 months ago.
This would be in the computer-related arts?
I can definitely see the merit of that approach in that situation, but do you phone the examiner first?
Yes.
My concern would be that (1) the examiner could reopen as easily as finding yet another reference, and (2) even a Board decision won’t sway the examiner if he finds yet another reference and issues a “new” rejection.
Valid concerns – #2 hasn’t happened to me, personally, as the vast majority of my appeals have resulted in re-opening of prosecution. (Either at pre-appeal stage or after appeal brief.) #1 has happened once or twice, but once the appeal fees have been paid once and the first brief has been written, it’s a piece of cake to throw that baby back into appeal after that new non-final after re-opening. I don’t wait three months, either – these go straight to the top of my docket and I turn them around in a matter of a day or two. I can’t claim to understand the incentives at the PTO, but it seems to put some pressure on these clowns.
That said, there is recently a general trend towards reasonableness at the office – we’re getting a lot more phone calls, some of them with reasonable suggestions for how to get to allowance, as well as many more allowances than we saw 18 months ago.
It’s not a strategy I use often, but after the third or fourth non-final action, where it’s clear we’re going nowhere (and that the examiner cannot or will not find any actually relevant art), I’ve been known to recommend an appeal without otherwise responding to the office action.
I can definitely see the merit of that approach in that situation, but do you phone the examiner first?
My concern would be that (1) the examiner could reopen as easily as finding yet another reference, and (2) even a Board decision won’t sway the examiner if he finds yet another reference and issues a “new” rejection.
From the requirement that you have to convince the examiner to allow your claims before your client gets a patent.
Oh, now I see. That perfectly explains why Mooney’s comment suggested that it was somehow relevant to the Board whether or not my arguments were presented earlier.
I have run into the examiner that can render any argument “moot” by simply substituting a new secondary reference for an earlier one, while completely ignoring the deficiencies of the primary reference that were politely pointed out in the applicant’s response. It’s not a strategy I use often, but after the third or fourth non-final action, where it’s clear we’re going nowhere (and that the examiner cannot or will not find any actually relevant art), I’ve been known to recommend an appeal without otherwise responding to the office action.
(Doll didn’t seem to care about bad rejections)
It’s been my experience that the people who run the PTO don’t care too much about saddling applicants with additional delay or expense. Doll probably noted that there’s an administrative remedy for bad rejections but none for bad allowances, and followed the logic to its conclusion.
2) Applicant’s filing and wanting broader & broader claims, whether they are entitled to them or not. Some because of court decisions (like Festo, for example).
Festo probably scares lots of agents into not putting forward their best arguments, on the basis that a strong application is worth more than a weak patent. Even so, I’m going to side with Mooney and bet on Bilski here. Bilski made it very easy to reject a very common type of claim, and one that applicants really want to have.
2) SPEs getting rated on reversals from the board but NOT on reopening after appeal or pre-appeal. So, for any case where the SPE thinks they might not at least get partially affirmed they have the examiner reopen.
It’s a good thing for examiners to reopen when it looks like the Board will go against them, as long as their new rejection addresses the flaw in the old one. I only wish they’d look as closely at their rejections before they see a notice of appeal.
4) Applicant’s presenting new, or clearer arguments on appeal that were never argued before.
I only wish they’d look as closely at their arguments before they file a notice of appeal.
I might have missed something, but where does the requirement that I present all of my arguments prior to appeal come from?
From the requirement that you have to convince the examiner to allow your claims before your client gets a patent.
I don’t know about “necessary” (someone on the Board, being human, might miss the fact that the arguments were not presented earlier, so if you don’t want to file an RCE to present the arguments to the Examiner and you have no other choice, then you might be forced to fudge it) but it certainly is the best practice.
I might have missed something, but where does the requirement that I present all of my arguments prior to appeal come from?
I have approached appeals by making sure that all my evidence and arguments were first submitted to the examiner before filing a notice of appeal. I fear having evidence ignored by the appeal board because it was not before the examiner.
Looks like as good a time as any for me to say something positive about a member of the patent bar.
If you have to file arguments in response to a rejection anyway, they might as well be your best ones. The sooner in the process you convince someone that you’re right, the better.
I have approached appeals by making sure that all my evidence and arguments were first submitted to the examiner before filing a notice of appeal. I fear having evidence ignored by the appeal board because it was not before the examiner. You guys with more experience, do think that it not necessary?
I don’t know about “necessary” (someone on the Board, being human, might miss the fact that the arguments were not presented earlier, so if you don’t want to file an RCE to present the arguments to the Examiner and you have no other choice, then you might be forced to fudge it) but it certainly is the best practice.
As to the reasons for so many appeals as well as so many (TOO many) reopenings after appeal or pre-appeal, we all know them, even if some people (on BOTH sides) don’t like to admit it.
Why so many appeals? Two reasons.
1) John Doll & his 2nd pair of eyes B$ and the attempt to “improve quality” by reducing allowance errors. This drove down allowances, as well as morale, and resulted in examiners having to reject cases they wanted to allow. Many SPEs were afraid to get allowance errors (Doll didn’t seem to care about bad rejections). So it became easier to reject than allow. Applicants felt they should be getting many of these cases allowed (rightfully) and appealed.
2) Applicant’s filing and wanting broader & broader claims, whether they are entitled to them or not. Some because of court decisions (like Festo, for example). Some just trying to “hit the lottery” (the so-called patent tr011).
These 2 lead to less compromise & agreement & more antagonism and confrontation.
Why so many reopening? Again a few reasons.
1) See 1) above.
2) SPEs getting rated on reversals from the board but NOT on reopening after appeal or pre-appeal. So, for any case where the SPE thinks they might not at least get partially affirmed they have the examiner reopen.
3) So-called “appeal specialists” that sit in on appeal conferences & pre-appeal conferences. Most know little to nothing about the art & are usually predisposed to reopen. That way they do not have to go on record as supporting an appeal that lost. (Total B$) Usually the examiner has to really fight & hope their SPE backs them or they are stuck reopening. I knew of a few examiners that would just reopen rather than go thru the process because they knew how the “specialists” were.
4) Applicant’s presenting new, or clearer arguments on appeal that were never argued before. Sometimes for dependent claims never before argued. A lot of times if the case was meaningfully interviewed, these issues could have been cleared up well before appeal & the case allowed (particularity now with a new leader in place that is not allowance-adverse).
These above issues are the “problems” (some unavoidable, like trying to work around court decisions) and others that need to be fixed. On BOTH sides.
MVS
OT, but unhinged anti-government guy Joseph Andrew Stack does not appear to have filed any patent applications before he got into his plane. According to his website:
“Embedded Art is a small independent software house, specializing in process control and automation,” a cached version of the Web site said. “In its current form it represents the culmination of 20 years of experience in the software development consulting business. Founded by Joe Stack in 1983 (under the name of Prowess Engineering) in Southern California, the company thrived for 15 years until shifting focus to the Sacramento area to take advantage of growth in the Silicon Valley.”
Nothing assigned to Embedded Art, either.
I have approached appeals by making sure that all my evidence and arguments were first submitted to the examiner before filing a notice of appeal. I fear having evidence ignored by the appeal board because it was not before the examiner. You guys with more experience, do think that it not necessary?
It tends to make my last pre-appeal response look a lot my appeal brief (they are always highly persuasive to me!), but also makes the pre-appeal prosecution more expensive, and the appeal brief less expensive.
NAL: stuff
If you don’t want me to glibly ignore your actual statement, try making it short enough to meaningfully quote. Particularly since my posts are way shorter and you only manage to read the parts you dislike. I don’t find a TL;DR wall of text “constructive”, no matter how well-intentioned the contents.
Also, if you’re going to read everything I post as “only negative statements about the patent bar”, even when my comments clearly go both ways, it’s probably going to be easier for both of us if you pretend I’m not talking to you.
NAL,
I usually like reading your posts. Sometimes I agree, other times no, but usually worth reading.
However, your long post to IANAE, as well as some subsequent post makes you sound very JD’ed (in BOTH senses) yourself.
I am not one to defend the cr@p that comes out in many office actions. However, I can not abide those that act like the applicant (&/or attorney, as the case may be – we do not know who pushes what agenda. only you all do.) is ALWAYS innocent {coughJDcough}.
There are many instances where the applicant has done things to either simply “game the system” or to send in responses that are totally meaningless (examples have been posted by myself & others here many times). The applicants/attorneys are just as guilty of F’ing up the system as are bad examiners or SPEs. And they need to take their share of the blame.
Examiners should be responsible for examining the case according to the law, finding the best art, making whatever proper rejections, and allowing the claims when in condition for allowance. I think we all agree there. Right?
On the flip side, applicants/attorneys should do what they can to also get the application to allowance (that IS the goal, right?) as soon as possible. Things like having at least a FEW claims that are directed to the inventive concepts and that avoid the admitted prior art or whole subclass definitions. Or when amending claims making sure that claims do not depend on canceled claims (is that REALLY that hard to do?) Or not burying your substantive remarks in 15 pages of case citations and repeating the office action? (most responses can, & should, be summed up in 1-3 paragraphs. Basically, they need to state claim x states y. References A and B do not show y and do not make it obvious because of C.)
Lastly, if your (applicant) remarks get to the point there is a lot better chance that the examiner will understand your point and not miss what you are trying to say. The longer the remarks are, the less likely to be understood in the manner you think they should be. Be succinct & to the point.
MVS
6,
Any sentence for you with more than 7 words is TLDR.
Your famoosity with reading is legendary – but don’t worry, the post wasn’t meant for you – you are beyond help.
IANAE,
“There you go again…”
Funny how my helping you just seems to make you act more like Malcolm. Even down to the italicized snip of quotes from my post. It is also funny that you are the one who seems very much to have an “eye of the beholder” problem. You posted previously that you wanted solutions – but you only seem to post negative statements about the patent bar. Oh sure, on occasion, when provoked, you may follow up with a non-idealistic version that does give the patent bar some credit. But by and large, any comment with your name on it is a first strike against your self-professed profession. Why again is that?
You state that I had no problem with your “implication that the examiner was being irrational throughout prosecution”. You are clearly over-reaching and over reacting to phantoms not present. I made no such implication, nor did I indicate any such holding.
In fact, I SPECIFICALLY posted that reasonable examiners and Office personal are NOT in the category of Malcolm
– yet you glibly ignore my actual statement and try to paint my view as being biased to the extreme. Why the misdirection? Why the over-reaction when the Office is even mildly implicated in having a fault – especially in an area that has been unequivocally shown to be the Office’s “fault”? Methinks thou protest too much.
Thus, it is you that is reacting to some Rorchsach test here. I was specifically talking about your behavior in regards to your unfounded and unsubstantiated negativity. I was not talking about any comments of yours towards Office personal. For you now to reach there and accord to me an implication based on a non-topic is a bit much. You are attempting to paint my advice in the most slanted manner possible.
Perhaps it is your nerves that have been singed. Perhaps I “jumped all over you comments about applicants” because, as I posted – you made an unsubstantiated ethical slander without backup, merit or anything else. For someone who loathes clutter, such does not jibe with your stated intentions. Why is that?
You also throw up in quotes something I did not say – “What you say is less important than how you say it.” Did you not understand my points? – clearly I said that I was not directing you to say any one thing or another – and it seems now that you understand my point, but merely resist its truth – my point in that how you do say something impacts the effectiveness of that something – the fact that it does register with you and makes you uncomfortable is evident in the shallow and glib retorts, which ignore my actual words and misdirect my message.
IANAE, think about what I post – you do not need to respond in a knee-jerk fashion just because you feel a twinge of smack. I am not posting this to assail you – this is intended as constructive criticism.
Why not trying to use google to decipher those “cryptic” letters?
“Next thing you know she’ll be slapping people at the International House of Pancakes.”
And Mooney will be the first one to look up from his mop bucket behind the syrup dispenser to get a good look.
I think most serious practitioners would agree that its Examiners not applicants who appear to wait for a carefully worded after final response before even really reading the references or re-reading their own rejection.
Yes, most practitioners would agree that the examiners are the problem.
Guess what most examiners think.
I’m really struggling to understand the point of 6 posting your entire soliloquy and then adding only a few cryptic letters at the end. Maybe its just his way of proving what NAL was saying.
QED
Funny, I think most serious practitioners would agree that its Examiners not applicants who appear to wait for a carefully worded after final response before even really reading the references or re-reading their own rejection.
THAT, more than anything, is why applicants approach the appeal process the way they do. Further, they are bound, to a far greater extent, by the cold facts of the file wrapper and are well advised not to stray too far from the record in an appeal. There is also nothing wrong with an attorney clarifying and distilling the arguments from the previous response, not because they were poorly worded before, but because any piece of writing can ALWAYS be improved upon and made clearer.
By the way, nice work NAL.
I find it difficult to fathom that you don’t “get” what tone your words paint
First the voices in the head, now synesthesia. Next thing you know she’ll be slapping people at the International House of Pancakes.
Is there a Cliffs Notes version?
“What you say is less important than how you say it.”
It’s what you might call a self-demonstrating post.
I find it difficult to fathom that you don’t “get” what tone your words paint
Seems like it’s very much in the eye of the beholder. You didn’t have any problem with my implication that the examiner was being irrational throughout prosecution, but you jumped all over my comments about applicants.
What was it that touched a nerve? Was it the part where I suggested the PTO has at least two reasonable examiners?
“IANAE,
Another unsolicited bit of advice – be aware of the company you keep. I want to be clear that I am not telling you “what” you should write, but there is something to be said by how people classify your position –even before a careful read – if your work makes it that far. I mention this as you do appear to want your work to be thought of as more than just a joke.
The Trainwreck has the highest reading audience of any patent blog. And for good reason. Dennis is prolific at posting interesting and often divisive subjects, and the readers are often eager to express their views. The views run the gamut from the mundane to the insane. Those wanting a diligent and thoughtful exchange can, with some difficulty, obtain that. Even though a nihilist, Ned Heller, for example, gives thoughtful consideration to his and his opponents views. Step Back, often shows considerable thought and reflection. However, as you have pointed out, the comments can be just so much clutter. Comments and thoughts, including some of the clutter can be very entertaining, while other posts are merely read with mild interest, and still others are completely skipped by various people for various reasons. Here at the Trainwreck, the entertainment falls into different categories. You have the wreck category of “what inanity will be mentioned next” – Malcolm and 6 are prime examples, and you have the category of thoughtful reflection and earnest views of practicing members of the patent community (I include thoughtful examiners and members of the Office in this category).
Many people will NOT read carefully and deduce the positions advocated unless the source has a certain cache (David Boundy is one source that immediately comes to mind with that cache), or avoids signs of duplicity. Certain sources are discounted immediately. Malcolm’s post, the example above, is indicative of the type that is discounted immediately. His inane position is simply not defensible by any rationale person. This is not a matter of “bashing the Office”, or stating that every practicioner is a golden example of virtue. His position is outright lunacy and is an example of what he accuses anyone who disagrees with him. Take for instance, “This is largely due to the lack of professionalism of the prosecuting attorneys…” Not only is there no basis in reality for this statement, but Ron Katznelson has provided empirical evidence to the contrary. I have made this point before, and Malcolm not only runs at the mention, but then skulks back and continues to post in his clearly deleterious manner – hoping that by sheer repetition he achieves some sense of veracity. “I suspect that concern about the backlog itself is responsible for this behavior, and not the quality of the pre-prosecution examination.” is yet another inanity that has no place on a blog, other than as comedic relief. Here is a case where the overwhelming majority of the patent bar SCREAMS for attention and Malcolm not only callously dismisses the issue, but proceeds to blame the patent bar for the troubles. This open attack on patent attorneys is simply baseless, but nevertheless entertaining in a trainwreck manner.
In this light I look at your comment: “and how often the applicant finally decided to get serious about arguing his case.” And note how much it reflects a subtle, but very real anti-applicant viewpoint. Do you really feel that applicants, by and large, only get serious about their applications when it reaches the appeal level? This my friend is an extremely JD’ed view that I simply find not supported by any canvas of public information, Office statistics or anecdotal tales. This is not to say that you lack reason for your belief, but your statement on its face will not accord any weight and most will simply tune you out. I think that you may have reason for such a negative view, but your post, as is, is simply negative clutter without any redeeming value. You do not identify an issue or advance a solution, and even, tragically fall close to the category of Malcolm, since you offer no substance to back up what on its face is a charge of serious ethical malfeasance.
I currently have faith that your ‘brand” does not belong in the same class as Malcolm. We will see if that faith is mistaken.
”
TLDR