The USPTO issues patents each Tuesday morning at 12:01 am. In the past several weeks, I have reported on the rising number of patents being issued each week. The past seven-weeks rank as the top-seven weeks of all time in terms of the number of utility patents issued.
Policies and Procedures: Over the past year, the PTO has increased its weekly patent grant count by more than 30%. During that time, the PTO did not increase its budget or hire a significant number of patent examiners. The difference appears to come from two avenues: (1) changes in PTO policies and procedures that provide patent examiners more opportunity to find patentable claims and (2) changes in patent applicant behavior in favor of accepting narrower claims.
The Backlog: The rising number of grants is at least slowing the growth of the application backlog. However, it does not appear to be sufficient to actually shrink the backlog. About 8,750 utility applications are filed each week — a figure greater than the average weekly final disposals (issued patents + abandoned applications). Using the increased grant-count and a 60% allowance rate, I calculate about 7,600 such final disposals each week.
Maxie – think Three Stooges.
A bit more than “scratching” heads.
Cointently ping? What’s that then? Something about coins? Or about camping?
Not sure who is harder to understand, you or Sarah. But you keep posting, please. There is pleasure to be had from scratching one’s head.
Maxie,
the hysterics aint about making a better patent, and cointently aint about presumption.
“f-c- off”
?
perhaps f-k- off sarah?
There still be fiefdoms (not freedoms) even if they say otherwise.
Ping there are no freedoms to any thing,especially information. I have letter after letter from the USPTO pretty much telling me to f-c- off.
Peer-to-patent has been available at the EPO since 1978. But nobody uses the opportunity under Art 115 EPC, to tell the Examiner what is the closest art. I wonder why. Perhaps it is because Applicant can build a stronger issued patent after he has been given sight of the best art, so long as it is before moving to closure on the claims.
So why then the hysterical reaction to any suggestion that the USPTO might try even harder to find the best art, while the app is still pending, and susceptible of amendment, to help Applicant build a better patent, one more resistant to post-issue attacks on its validity?
I wonder, is it something to do with The Presumption of Validity so much cherished by Applicants for US patents?
The EPO thinks it has a public policy duty to minimise the number of invalid patent monopoly rights it imposes on the public. The USPTO too, I hope.
6,
Your “mommy fantasies are getting the best of you , aren’t they? Do you miss the bu_tt kicking that NAL used to deliver? You’ll have to take my word for it – aint no mistaking me for a female.
As if you can’t tell the difference, I don’t give a rip about NAL’s re-opening shtick (somethin bouts Appeals, wasn’t it – a topic that rankles you anyway, given your admittedly poor record with ’em). I don’t think NAL was concerned with the case that be havin prosecution closed anyways. My beef here is the “extra legal actions – tis a bit scary when the big bad guv does what it will “off the record” in the name of “quality“. Like we see the “quality” of the Office when it said it achieved record levels under Dufas. I bet that such found art during these extra-curricular should be checked for leaks.
Ya wanna talk about “Too many people here has no balls.“? Let’s talk about POPA – they don’t stick up for the crap that your typical hard-working examiner who has to put up with from the Director’s and SPE’s and their f’n little fiefdoms. You want professionalism from examiners? Start by nuking that pitiful excuse of a union.
“By the way, these searches are not made of record… applicants are not informed and prosecution will not be formally reopened.”
OK – Now I’ll play the devil’s advocate (yeah – I know a bit of redundancy, but I didn’t coin the phrase): And what of art that is found that impinges on patentability?
You cannot wish Pandora back in the box, can you? On the record, off the record, does it truly matter for the rights involved? This stuff’s gotta be kept track of, right? I wonder what freedom of information act protocols need to be invoked to divulge all this illicit training info. How many patents have been allowed to stand if proper invalidating prior art has been found in “training exercises that are not “on the record“. I wonder if any of this just happens to find its way (for the right price) to outsiders who may want to know about it for re-exam purposes?
It appears that the Quality Gestapo run even more amuck than we know.
“If only I had the strength to wade through 6’s lengthy manifestos to gather the occasional “useful” particle. I pity the practitioner that has to wade through a 6 Office Action.”
My typical OA is like 4-7 pages long (I’ve been working on shortening them up). I think you could manage and I’m sure the attorneys in my cases do. You/they are being paid thousands of dollars to do such. Compared to other examiner’s OA’s I have to say that mine do look rather nice if I do say so myself.
Ping, (likely aka NAL) is a bit confuzzled, he (she?) believes that the office needs “permission” to do a search on an allowed case (or probably on anything except cases currently in prosecution?).
He/she is a rtard, as I have explained to him/her, the office needs no permission to search for any dam thing we please anytime we please, including things which have yet to be invented.
Prosecution, as you note, Ping, is closed, you get your patent regardless of what the search turns up.
“And isn’t there a mountain of applications to be gotten to to be prosecuted and searched?”
No kidding, I find these “quality” measures to be ridiculous. Maybe if we didn’t have OPQA there wouldn’t be a backlog. Not likely, but it does seem like it would be smaller.
Responsibility should be with the spe/primary for the cases allowed. That’s what sig authority should be, the office trusting you to allow that which should be allowed, and not allow that which should not be allowed. I wonder what genius came up with the idea for OPQA in the first place and when.
“and leave it to the examiner to defend his or her reason for not having found that piece of art… ”
LOL defend a reason for not having found a piece of art? I don’t know how one defends “because I’m not omniscient” or “because the classification system is boinked” or “it didn’t turn up in the search I did” or “I didn’t notice it whilst looking through my search.
I can’t believe people would even bow to having such a ridiculous conversation. Too many people here has no balls.
“defend his or her reason for not having found that piece of art”
OMFG roflx10000000000000000000000000000000000000
Ping, the office has always conducted new searches for several other purposes… for example, the 2nd part of the program to become a primary examiner involves reviewing final actions and allowances. The reviewer is tasked with searching for prior art on allowed or finally rejected claims; in fact, many times the reviewer will map all the claims to some other art and leave it to the examiner to defend his or her reason for not having found that piece of art… whether or not this is legal is out of my league. By the way, these searches are not made of record… applicants are not informed and prosecution will not be formally reopened.
“conduct a new search for office review only, on allowed claims after issue fee payment”
Hmm, for office review only, eh? The legal grounds for doing this seems highly questionable, after all, the notice of allowance says “Prosecution is closed”, and I’m having trouble locating the section of law that allows prosecution to be re-opened for new searches based on the whims of the quality gestapo. Even signings by the TC need written supporting rationale in the file before reopening prosecution with new search activity – hard to find that when the prosecution is closed. And isn’t there a mountain of applications to be gotten to to be prosecuted and searched?
special scrutiny should be paid to those examiners with the top 10% and the bottom 10% allowance rates
Jules: from my experience during the budget crisis I did notice that some examiners relaxed their requirements for allowances… but this seems to have backfired horribly.
The directors and quality personnel in my TC have recently been reviewing allowances more thoroughly.. SPE’s are being tasked with reviewing allowances signed off by other SPE’s – specifically they are being asked to conduct a new search for office review only, on allowed claims after issue fee payment – somewhat similar to a re-exam but for quality purposes only… I think the new management is trying to discover poor allowance trends (atleast in my TC). I’m not sure how effective this will be since SPE’s generally tend to look after one another within a workgroup…
“when everyone was told”
love to see the transcript of that meeting…
“During that time, the PTO did not increase its budget or hire a significant number of patent examiners.”
This is a very quick dismissal of the effect of hiring on the total number of issued patents. Just because hiring is not presently occuring, does not mean the effect of previous hiring is not occuring.
Also, (hmm… how can I put this…) that PTO did not “increase its budget” should have no bearing on the total number of issued patents. If there were a more detailed budget analysis (i.e. examining time vs. other time), then certain conlusions regarding issued patents could be arrived upon.
Let’s also not forget about the recent budget crisis, when everyone was told – “hey, the PTO gets most of its money from maintenance fees – so issue more patents!”…
“The difference appears to come from two avenues: (1) changes in PTO policies and procedures that provide patent examiners more opportunity to find patentable claims …”
This looks like a plug and a high five.
“(2) changes in patent applicant behavior in favor of accepting narrower claims.”
Proof?
Or, perhaps applicants think they can get away with more broad claims, not narrow, because of some imagined fragile state or “changes in PTO policies” (see (1) above) where examiners will bend over and take it.
I mean no offense, and surely there is something to be gleaned from the data, but wow do I see a lot of spin here…
“I only read some every 2 days or so.”
Your reading prowess (lack thereof) has been duly noted.
Ned, can you (mis)quote me up some case law? Picking on 6 aint that much fun.
“As to realistic or not – you wouldn’t know real case law so that leaves you out of the commenting business.”
Of course not, I only read some every 2 days or so. I don’t mind your hypo, I just got a good laugh and figured it might do better to be realistic.
6,
My hypo – I get to set the terms. You don’t like it? Feel free to draft your own hypo.
As to realistic or not – you wouldn’t know real case law so that leaves you out of the commenting business.
“but convincingly uses case law to show that the examiner has misapplied the three references.”
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA. Right. You should go for a realistic hypo.
“actually useful to practitioners…”
If only I had the strength to wade through 6’s lengthy manifestos to gather the occasional “useful” particle. I pity the practitioner that has to wade through a 6 Office Action.
6, I appreciate you including the bit about the other art that appears to be anticipatory when your SPE won’t allow you to actually make the alternative rejection. That’s actually useful to practitioners.
“As a corollary, though, if the cited but not applied references are better in view of the argument, but the examiner still allows the case, can we assume he considered those issues?
How do we get that consideration on the record?”
Ned,
Wake up. The consideration is already on the record.
Since I’m in a good mood, let me explain with a hypothetical.
In a FAOM, seven references in total are cited, but only three are applied, leaving four in the category of interest.
Applicant responds, and in this hypothetical makes no amendments in her first response, but convincingly uses case law to show that the examiner has misapplied the three references.
Hypo-sub-1: The second Office action is a second rejection. This can become interesting in relation to “Finality” and “searching”. Given that in this hypothetical, no changes to the claims were made, a new search is not warranted. I have seen examiners search anyway. I just deal with the results without making a fuss. Typically, the second rejection is a Non-final (the number of such second action-non-finals has sky-rocketed in the last five years). Only twice have I had an examiner try to make such a second rejection a “Final” and both times a call to the examiner and her SPE reversed the Finality. More often than not, in a second rejection, some of the previous art cited, but not applied in the FAOM is applied. In essence, “cumulative” is just not a correct description of the non-applied references of the FAOM.
Hypo-sub-2: The second Office action is an allowance. In this situation, the fact that the art listed, but not applied indicates that that art has been recognized by the Office as not raising a question of patentability for the application. I do not recall the specific case (perhaps the Congressional response to Portola?), but any art used by the Office can be cited as a cause for re-exam, but only under the “existence of a substantial new question of patentability” standard. Here is the crux: If an examiner does not indicate a limitation of the reference (e.g. used only as a 103 support)in her examination, then that reference is deemed to have been fully vetted. Because of the requirement that the Office must only rely on the written record, it is up to the examiner to indicate, in writing, any limitation of her use of references on the record in her examination. Examiners are deemed to be qualified and to have done a full job (part of the clear and convincing presumption that attaches to a patent).
It’s rare that I would make more than one prior art rejection for a single claim. In those rare circumstances, it’s usually because I’m trying to make a point about the unreasonable breadth or sloppy drafting of the claim.
“Seriously, do you “present all possible rejections in the first OA?””
I don’t know about him, but I sure as f don’t. I used to be allowed to in the academy (of course, back then I didn’t have that many rejections usually) but now my boss doesn’t let me even when I’ve tried, he doesn’t want to overburden the applicant in their reply. Perhaps he’s been getting some btching from some apps or attorneys. We’ll usually put a little note in the conclusion about a few more refs that appear anticipatory etc. if there are a sht ton of prior art issues.
On the other hand, I usually do include all 101/112 issues, but if there were going to be like 20 pages of them I’d probably shorten that up a bit too, likely just telling them to start over and draft a new claim, giving them an old patent in that niche with well-drafted claims for them to model their new claim on. I have had to do that a few times actually even without there being a lot of 101’s or 112’s. Some of the things people submit, whew, I don’t know wt f they were smoking when they drafted that stuff.
It is generally the case that OA’s that are 25, even 20, pages long are indicative of an examiner not doing the job very well. At least in my art. If you can’t say what you need to say in ~20 pages, usually much less, and they submitted less than 60 or so very distinct claims, then there is an issue. Or it’s a new examiner writing the action.
For instance, an examiner that was “recently” fired from my AU left behind a docket full of lengthy rejections. I get to clean up some of the mess. Most of my rejections in those same cases are, at most, half the length of his if not a third, and much better presented, including the presentation of the 103 combination/rationale to combine. I also had multiple possible grounds for rejection(s), but included at most 2 and put in any other relevancy that references had in the conclusion. If you think that’s the wrong way to do it, then you can btch to the guy that wants it that way, my spe. I have no personal issue sending you more rejections, if it was needed then they could be drafted as 2 line rejections for 100 claims so long as it explains things fairly well. In any event, I can assure you that those actions I sent out in those leftover cases will come back without the applicant being even half as frustrated as those OA’s the other examiner sent him made him. Other than the fact that there is some mighty fine art on display 😉
All that said, I doubt examiner99’s boss would allow him to make all possible rejections either.
“In sum, the non cited references might be relevant to the patent as a whole. ”
Or to dependent claims, or tangentally in a way to an independent, or to just the spec by itself. There are a lot of different ways for a reference to be relevant and deemed cite worthy. Sometimes I cite references that are directly relevant to nothing in the case but contain great citations to other, sometimes directly relevant art, or to other irrelevant art that contains citations to directly relevant art. Or, sometimes, I cite “irrelevant” art (or art that doesn’t meet the filing date) that has so many possibly relevant citations that I can’t possibly look into them all. Usually this happens in NPL. Those seemingly irrelevant references could turn out to be the very most relevant references by the end of the patent’s life because they could point a searcher in the right direction during litigation, they might could point an attorney to an expert in the niche that he could hire etc. etc. Who knows? If it seems like I would really like to have the reference if I were looking to invalidate the claims then I cite the reference. That said, I rarely cite a lot of references.
You would be very surprised how much great art can turn up in the NPL under titles that would never reasonably lead you to suspect that the reference was relevant. Those are some of my greatest finds, some of the finds I’m most proud of. It’s intuition baby, yeah. You can’t teach that.
“But, if the reference is relevant to the claims, is is no better than the references actually applied — at least in the opinion of the examiner.”
Your use of the word “better” is a bit off because a given reference could be “better” in some ways, but not as good in others, in a given 102 or 103 rejection compared to how well it might work in a different 102 or 103. There are huge numbers of references available for use and infinite ways to envision references combined or interpreted in the patent system, not to mention in the NPL literature, so it does happen.
A better, and more complete, way to say it is that the examiner doesn’t consider, for given method of constructing a 103, or applying a reference in a 102 which he has deemed to be the best rationale for rejecting, those references to be “the best” references in so far as they do not lend themselves to the best rejection he feels he can present. This takes into account that should a different manner of making a rejection become the best due to amendments or subsequently found/submitted additional references showing some inherency in a previously known reference, or additional insight into the scope and content o the art, then other references that were previously considered “lesser” might then become regarded as the best.
“So, if the claim is to A + B + C, and the examiner applies two references, one showing A + B, and a second that shows C, but later allows the claim over argument, one can assume that the non cited references do not show A + B + C or A + B + C’ where C’ is a known substitute for C. Either of these references WOULD be more pertinent than the references applied.”
That is reasonably assumed, or at least it is reasonable to assume that in the opinion of the examiner it is true.
“Agreed?”
Seems true but I’m unfamiliar with reexam procedure so I won’t pretend to say for sure.
“As a corollary, though, if the cited but not applied references are better in view of the argument, but the examiner still allows the case, can we assume he considered those issues? ”
You’re probably giving the examiner too much credit there hoss. Contrary to popular belief, we’re not omniscient and we very well could have missed an issue.
Examiner99
What I mean is, after a thorough and comprehensive review of the app and the PA, and a carefully considered analysis and application of the law, any and all grounds of rejection are presented in the first OA.
Seriously, do you “present all possible rejections in the first OA?”
6, thanks, many thanks 6. I think you did help clarify the issue somewhat.
In sum, the non cited references might be relevant to the patent as a whole.
But, if the reference is relevant to the claims, is is no better than the references actually applied — at least in the opinion of the examiner.
So, if the claim is to A + B + C, and the examiner applies two references, one showing A + B, and a second that shows C, but later allows the claim over argument, one can assume that the non cited references do not show A + B + C or A + B + C’ where C’ is a known substitute for C. Either of these references WOULD be more pertinent than the references applied.
The issue may be important to the issue of “substantial new question of patentability.” If the request relies upon cited but non applied art, but simply re-argues the very same issues previously resolved in connection with the references applied, there should be no substantial new question.
Agreed?
As a corollary, though, if the cited but not applied references are better in view of the argument, but the examiner still allows the case, can we assume he considered those issues?
How do we get that consideration on the record?
I think I can answer my own question — discuss the non cited references when we make the argument, point out how they are better, but how they still do not show the limitations of the claim.
“It would seem to me that one would be justified in concluding that the examiner used the best art and that the non applied art was cummulative of the art applied.”
One is not so justified in believing that the rest of the art is cummulartive of the art applied. In fact, references 3 4 and 5 may very well not even deal with anything in the instant claims and may instead be relevant to something in the spec which the examiner believes may make it’s way into the claims down the road, or that he believes the applicant might be tempted to add if he doesn’t cite those references. In fact, they could be relevant to nothing in the application what so ever.
While you may or may not be semi-justified in assuming he put forward what he considers the best rejection using the best references to reject you are certainly not justified to assume anything about the references cited but not utilized.
With the diversity of subject matter disclosed in references and what will be found during the search it is unrealistic to envision an examiner citing, for instance, 10 references where only 2 of them are used, and the other 8 are entirely cummulative. I mean sure, it could happen and it probably does happen, but not regularly at all. I base this statement on my own cases as well as the myriad of cases done by others which I have reviewed during searches. The art cited is very rarely merely cumulative.
“Now, if applicant makes a argument and the examiner then allows the case over the applied art, isn’t he also allowing the case over the cited but unapplied art? That would suggest, I think, that the cited by unapplied art must be cummulative of the applied art.”
Yes, and not at all. It merely suggests that the cited art still wasn’t good enough to make a rejection. There is no implication as to whether or not the other references are cumulative.
Look Ned, you could have a method. Let’s say the claim recites a method comprising: providing a bike frame, wheels, and handlebars, cutting the bike frame in the middle, and inserting a plactic slab into the created aperture. Now, you could have the examiner cite a reference showing the provision of the frame wheels and handlebars, another reference describing cutting a bike frame (with no wheels or handlebars) with a drill, and a reference showing how to shore up weakpoints in a bicycle frame AFTER an aperture has already been created (formation of the aperture happens pre-events in the reference) by inserting a plastic plug. All those were cited to make a 103.
The examiner notices that in your spec you used a hacksaw to cut the frame. During his search he happens to find a reference cutting a bicycle frame with a hacksaw to, lets say, cut out a rusted portion. The examiner cites this reference but does not use it.
The examiner also notices that in your spec you disclose a bell on the front of your bike. During his search he happens to see a reference disclosing a bell for attachment onto a bike but that doesn’t show a bike. He cites the reference.
Applicant comes back and amends the claim to state that he also provided a special gear assembly. Claim is allowed. He also makes a dependent claim that states that a bell is attached to the handlebars. Does the reference cited but not used disclosing a hacksaw to cut a bike frame bear any resemblance to the other references other than that it was cumulative only in so far as the one limitation in the claim was concerned? No. And it is not completely cumulative with the other references because it shows using a hacksaw, which you might have amended in, but chose not to at that time. Still, its nice to have the reference on record. Further, was the bell reference cumulative with any of the references? Clearly not at all. It simply wasn’t enough to make a rejection.
“6, if you are trying to make a distinction be the word “relevant” and the word “cummulative,” please define the difference.”
LOL wut? Ned, come on man, if you don’t know the difference between those two words we have more serious problems in this discussion than you simply having the wrong idea about references, we need to discuss the validity of your graduation of the 2nd grade.
Cumulative reference means that the references describe only the same subject matter, or, an alternative interpretation is that they describe only the same subject matter as is relevant to the subject at hand (the claims or the spec depending on how you want to define the word).
Relevant reference means that a reference is relevant to the case, or to an issue in the case, what so ever.
6, I think you may have some typos in your response. You are normally very clear, but I had some trouble understanding what you meant.
Just to clarify, the examiner lists 5 references on form 892, but rejects using just one or two of them. It would seem to me that one would be justified in concluding that the examiner used the best art and that the non applied art was cummulative of the art applied.
Now, if applicant makes a argument and the examiner then allows the case over the applied art, isn’t he also allowing the case over the cited but unapplied art? That would suggest, I think, that the cited by unapplied art must be cummulative of the applied art.
6, if you are trying to make a distinction be the word “relevant” and the word “cummulative,” please define the difference.
“what is the proper view of art cited but not applied? Not applicable?”
Nope, the proper view of art cited but not applied is “relevant but not applied”.
“The argument, which you do not seem to be able to grasp, is that doing so does not require and examiner to make unreasonable interpretations.”
I think that his point is that in so far as there is a possibility for confusion later on down the line he supports these quote un quote “unreasonable” interpretations (allegedly, in the view of the applicant) to be taken to set the record 100% clear. Personally I just use 112 2nd for this purpose myself. Miyazaki already ended the need for art rejections made for this purpose.
IANAE,
Do you lack the capacity to actually discuss a topic that portrays the Office in negative light?
Once again you have thrown out a non sequitur as if it were gospel truth. Yes, examination time is the time to iron out details and produce a good quality patent. But no one is arguing differently. The argument, which you do not seem to be able to grasp, is that doing so does not require and examiner to make unreasonable interpretations.
“ Considering that many “unreasonable” interpretations are actually reasonable interpretations”
No.
Do not twist the meaning of “unreasonable” for your typical support of the Office stance. The discussion point here is concerning those interpretations that are unreasonable.
Try to stay on point.
Ned,
“Is it proper for an applicant to think that the art you cited but did not apply is cumulative of the art you applied?”
I think this is a good question. Instead of jumping all over the word “cumulative”, what is the proper view of art cited but not applied? Not applicable?
I’m pretty sure everyone likes to call Faux News Faux News because it is in fact faux news. They even admit as much straight up. They’re commentary posing as news. The real news content on the Faux News channel is presented at times nobody hardly watches, like 1-4pm, 3am-6am. Literally, that is how they are setup and that’s how they maintain the title of a News station.
“Is it proper for an applicant to think that the art you cited but did not apply is cumulative of the art you applied?”
HAHAHAHAHAHAHA NOT EVEN CLOSE. I doubt if I have ever, in all the hundreds of cases I’ve done where I cited but did not use some art cited only references that were merely cumulative. That would be practically impossible to achieve save on a small scale of references.
“It would seem to me that this thinking is entirely proper given the requirements of compact prosecution.”
That’s because you don’t have your morning coffee in you and/or don’t understand that diverse references are practically never entirely “cumulative”, and even if you’re talking about “cumulative with respect to the limitations in the claims” that hardly matters, because you’re about to amend usually and then we need to pay attention to what all is in the spec.
Ned, I don’t get your meaning. Are you saying that if you add a limitation to the claims that is not taught by the art applied, but that is taught by the art cited, that the art that was not applied cannot be used to reject the newly amended claim? Certainly not. What do you perceive to be the significance or practical effect of the “cumultative” status of that unapplied art?
Question to examiners: Is it proper for an applicant to think that the art you cited but did not apply is cumulative of the art you applied?
It would seem to me that this thinking is entirely proper given the requirements of compact prosecution.
The correct dysfunctional political party answer is: “It’s Bush’s fault.”
I didn’t come up with the correct dysfunctional political party answer?
Gosh. Really really sorry I couldn’t confirm your thesis there. What a lousy communist I am.
“who’s fault is that?
I don’t know,”
WRONG
The correct dysfunctional political party answer is: “It’s Bush’s fault.”
likes to call it Faux News because it succeeds to toe the Republican Party line…
Fixed that for you.
I kid, I kid. Faux News is as good as gold. Well, their content correlates with the price of gold. That’s kind of the same thing, right?
Meanwhile oil continues to gush into the Gulf of Mexico… who’s fault is that?
I don’t know, but I think we can all agree the responsible party is entitled to a compact prosecution on the merits.
INSANE/Mooney/puppet of the day
likes to call it Faux News because it fails to toe the Communist Party line…
“but look at how bad Bush screwed up.”
Meanwhile oil continues to gush into the Gulf of Mexico… who’s fault is that?
“First they ignore you, then they ridicule you, then you win.” Here’s to the conservative win.
Curious, the sort of person who declares victory in the face of ridicule.
Sure, they laughed at the Wright brothers. But they also laughed at the Marx brothers.
Sometimes, ridicule is thoroughly merited.
Ok, so cash for clunkers was a failure by every measure,
Except by the measure that it exceeded its first-quarter projections in the first two weeks, which makes it a success times six. The program’s only objective was to get people to use it, and to get that money into the economy. A product that exceeded its first-quarter sales projections in two weeks would be an unqualified success by any measure.
Characterizing any Democratic initiative as an unmitigated failure regardless of its outcome actually is a Faux News talking point.
I’m loving the progressive platitudes here.
Any reference to the enumerated powers of the federal govn’t is just a Glenn Beck talking point.
Only a republican mouth breather would say that the administration of cash for clunkers was a failure.
Ok, so cash for clunkers was a failure by every measure, but look at how bad Bush screwed up.
SO, what we’ve got here is a complete refusal to address any substantive point. Ghandi would say that it’s about over and the progressives are losing horribly. “First they ignore you, then they ridicule you, then you win.” Here’s to the conservative win.
Doing so simply does not require the examiner to make unreasonabler interpretations.
Considering that many “unreasonable” interpretations are actually reasonable interpretations the applicant either didn’t intend or would prefer not be applied, I fully support examiners making broadest reasonable interpretations that applicants consider unreasonable, if it results in clearer and less ambiguous claims.
As Max pointed out, prosecution before the PTO is the time to iron out all these details and produce a good quality patent. What’s the point of an administrative process if the court still has to resolve all the important questions?
I like my claims tight in their construction and my examiners promiscuous in their allowance rates. This way, everyone is satisfied.
“Requiring the applicant to particularly point out and distinctly claim what he regards as the invention is perfectly within the law.”
Once again IANAE responds to one of my posts with a tangential thought, missing what I have said.
The response above is a non sequitur to the unreasonable line of the discussion, which no one has suggested. Of course, if the applicant has not met this legal requirement, the examiner should make that a rejection in the office action. Doing so simply does not require the examiner to make unreasonabler interpretations.
No one except IANAE is debating this, because it’s simply not the point under discussion.
It is ironic that IANAE is being unreasonable in a discussion on unreasonable behavior.
@ Inviting Body Punches
What did I say that makes me appear as a troll?
I asked “What do you mean by ‘presenting all possible grounds for rejection in the first OA’?”
If you are referring to presenting all possible rejections in the first OA (e.g. 101, 112, 103 etc.) then I have to say that every examiner should be presenting all possible rejections in the first OA. Whether or not this actually happens is another story. It may be an error to hold off on a rejection that should have been made in the first OA in view of compact prosecution.
When I was an Examiner, my personal allowance rate was 60%, which was at a time when the rest of the Office had an allowance rate of about 70%. I guess that means I am biased on this issue, but I suspect that a 60% allowance rate is about right. I have heard some complaints about the quality of the patents currently being issued. I suspect that there are still many patents that are just now issuing that were being held up while the allowance rate was only 42% (at least that appears to be what is happening in my current docket).
I think those who are interested in quality should focus on making sure the PTO has policies that ensure/encourage Examiners to actually read the patent applications and the references cited in rejections, and are given enough time to do so. The current quota system probably does not really give the Examiner enought time to do that much reading. Especially, if the examiner needs to cite more than 2 or 3 references to write the rejections in his Office Action. Of course, giving the Examiners more time is not going to help with the backlog (or budget), but I strongly believe that the only real way to fix the backlog is by highering more Examiners (and raising fees). The strategy highering more examiners worked in the past (e.g., in the 1980’s), and there is absolutley no reason why it cannot work now.
This “pinning down”, while perhaps good in theory, runs counter to the law and to the official directions given to examiners.
Requiring the applicant to particularly point out and distinctly claim what he regards as the invention is perfectly within the law.
I agree with you, though, that there’s more to compact prosecution than claim construction.
Compact prosecution demands more than merely applying an unreasonable interpretation.
Case law demands more than merely applying an unreasonable interpretation.
This “pinning down”, while perhaps good in theory, runs counter to the law and to the official directions given to examiners.
MaxDrei, you raise a good point about unreasonable interpretations. While we need help from the courts to put some teeth into Section 112, p. 2, the best way to define what a claim means is to find out what it does not mean during examination by attorney argument or by amendment. This requires the examiner to apply as much art as the claim reasonably covers given the vagueness and broadness of many claims. In the PTO, during initial examination, the is not just “one” reasonable interpretation, but many. If a word used in the claims has a number of different meanings, and it is not defined in the specification, then the claim similarly has a number of different meanings. The examiner has to pin the applicant down to one of them.
Its funny how liberals like to play with word meanings, like what the meaning of “is” is.
And Al Gore wears earth tones!
Republican mouthbreathers never quit.
Bubba, If we are going to be liberal with our criticism, is it also the “liberals” who “play with” the dictionary meaning of the word “liberal”?
“Funny” old world, I agree with you.
if by “successful” you mean “epic failure,” then, well, yes.
Well then, mission accomplished.
Yes ping but what does it mean to do the job “right” first time? Given the predilection for litigators to cause havoc, by putting UNreasonable interpretations on issued claims, and given the importance of the PTO file wrapper to fixing what the claim means after issue, is not the PTO doing a super-good job when it formulates a bUi objection in the FAOM, so that the Applicant comes back with a written response that memorialises on the wrapper that such an interpretation of the claim is, indeed, UNreasonable?
if by “successful” you mean “epic failure,” then, well, yes. Its funny how liberals like to play with word meanings, like what the meaning of “is” is.
“just taking a step back”
Nothing like doing the job right the first time.
“The only way “finding a way to allow it” makes sense is if it means “finding an amendment that could make it allowable, and suggesting same to the applicant”.”
Or it could be just taking a step back and no longer applying the broadest unreasonable interpretation of the claim language.
IANAE–
Yes, but the chances of (3) ever happening are probably infinitesimally small, so I excluded it as de minimis.
You and I are agreed on the only reasonable interpretation of “finding a way to allow it”, meaning “suggesting a way to make it allowable”.
So grounds of rejection must either:
3) have not been presented in the first OA, but are incidentally addressed to the examiner’s satisfaction by the response to the first OA.
Still, I don’t care for language like “finding a way to allow it”. Allowing it means not finding a way to reject it, and an examiner shouldn’t be finding ways to not find a rejection. Either you have a way to reject it or you don’t.
The only way “finding a way to allow it” makes sense is if it means “finding an amendment that could make it allowable, and suggesting same to the applicant”.
Surely, SURELY, “Examiner99” is a troll.
Please, please, please tell me that you’re a troll, “Examiner99”, posting simply to inflame hostilities.
I still await a response from Pickles. If Pickles “finds a way to allow” an app on the 2nd OA, that means, among other things, (unless I’m wrong) that no new ground of rejection can be presented in that OA.
So grounds of rejection must either:
1) have ALL been presented in the first OA and either successfully-responded-to or substantially successfully-responded-to in the second OA (such that all that remains is response to examiner suggestions to put the app in a condition for allowance), or
2) be ignored and omitted from the second OA.
Pickles, please tell me if it is 1, 2, some combination of 1 and 2, or if my analysis is completely wrong for some reason. Thanks.
Lionel Hutz,
I agree, “ignore” is probably a bit harsh.
Dennis,
Just wanted to say a big “Thanks!” for all the wonderful, high quality data and analysis you are constantly developing and sharing with us.
Much appreciated,
Charles Holoubek
Examiner99,
I would not say ignore, but applicants certainly do not spend a lot of time looking at art that is not being applied. We assume the best rejection has been made the first time.
“and cracked down on the examiner’s RCE abuse.”
Cracked down on examiner’s RCE abuse?
LOL? Ur a ball of fail. I heard it’s dam near impossible to fail out of lawlschool, but I already knew that after reading lawlyers like yourself on here.
Most examiners will present prior art references not relied upon which have subject matter that can be used to make additional grounds for rejection in subsequent office actions. Unfortunately, most applicants seem to completely ignore these references.
LOL.
“The stars were aligning 6+ mo ago.”
About the time that King Kappos told his minions: “Quality does not mean Reject”, and cracked down on the examiner’s RCE abuse.
“Allowances have increased for two main reasons:
1. Those thousands of examiners who were hired between the years of 2007 and 2009 have finally matured their dockets enough to begin disposing off applications as allowances. If you look at the allowance rate of an examiner in his/her first year it will probably be less than half of his/her allowance rate in the second and third years.
2. The increase in the number of examiners since 2006 has resulted in an increase in examiner promotions which results in higher production requirements and expectations across the examining corp. This means more disposals.
pickles.. I don’t think most examiners view the new count system that way. As an examiner, when I work on a .75 disposal, I make sure I also work on at least one final action for another application for an extra .25 to arrive at one whole count. Alternatively, a first office action on a new case would result in a two whole counts (1.25+.75). In general, the new count system motivates me to clear up my amended tab quicker for the same number of counts.
”
I would say that those are two additional reasons in addition to the ones pickles and D bring up. In fact, the current situation is a perfect storm of reasons for the allowance rate to go up. Not nearly all of them have been put forth yet I can think of at least 8 right off hand, several haven’t been mentioned yet.
Besides, I called it a long time ago. The stars were aligning 6+ mo ago.
It’s a lot fairer for examiners to cite them up front rather than later, but there are good reasons not to make unnecessary responsive comments on references cited but not relied on by examiners. It could create more prosecution history estoppel and/or more bullets for an inequitable conduct attack.
@Inviting Body Punches
What do you mean by “presenting all possible grounds for rejection in the first OA”? As an examiner, I do not believe this is possible.
As an examiner I present one rejection per claim based on the best prior art that I can find. Many times I find several references which can be used to make a new ground for rejection, however, no examiner has the time to write up and map every claim more than once. I make secondary rejections extremely rarely, partly because it appears to irritate applicants since they have to do twice the work by arguing both rejections or amending the claims to overcome both rejections.
Most examiners will present prior art references not relied upon which have subject matter that can be used to make additional grounds for rejection in subsequent office actions. Unfortunately, most applicants seem to completely ignore these references.
Allowances have increased for two main reasons:
1. Those thousands of examiners who were hired between the years of 2007 and 2009 have finally matured their dockets enough to begin disposing off applications as allowances. If you look at the allowance rate of an examiner in his/her first year it will probably be less than half of his/her allowance rate in the second and third years.
2. The increase in the number of examiners since 2006 has resulted in an increase in examiner promotions which results in higher production requirements and expectations across the examining corp. This means more disposals.
pickles.. I don’t think most examiners view the new count system that way. As an examiner, when I work on a .75 disposal, I make sure I also work on at least one final action for another application for an extra .25 to arrive at one whole count. Alternatively, a first office action on a new case would result in a two whole counts (1.25+.75). In general, the new count system motivates me to clear up my amended tab quicker for the same number of counts.
“If all the toy stores run out of Tickle-Me Elmos, was it a successful product?”
Again – it depends on how you define “successful”.
Did the product make as much money as it could have?
It that sense, the answer would be “no” – Sure, it was succesful at some level, but actually running out of product was a bad thing if only due to unmet demand and lost sales (purposefully not taking into consideration the hype effect of scarcity).
The crowned jewel of Obama administration “stimulus.”
It’s “crown jewel,” doofus.
Speaking of pending cases, whatever happened to those jokers who were accusing that Nicholas Cage movie of infringing their patent?
By the by guys, word on the street is that Bilski is assured to come out this term and it will be in one of the next 3 mondays.
if by successful you mean exceeded the authority of the federal govn’t,
Gotta love that Glenn Beck grammar. The first person singular of “to disagree” is “it’s unconstitutional”.
IANAE, if by successful you mean exceeded the authority of the federal govn’t, then it was indeed.
IANAE, are you referring to the success of the govn’t servers not being prepared to handle the traffic, or the fact that they overran the budget for the quarter in the first two weeks?
Yes. Those are clear indications that the program got way more participation than they expected.
If all the toy stores run out of Tickle-Me Elmos, was it a successful product?
Or the success in putting my local auto repair shop out of business?
Surely you don’t view the national economy in such narrow terms. People who profit from fixing things that break are bound to take it in the shorts when consumers buy new things.
If Obama managed to put bankruptcy lawyers out of business, I suppose you’d be complaining about that too.