Why do Applicants File So Many Requests for Continued Examination?

Of the patents issued thus far in 2010, more than 25% carry the baggage of a file history with at least one request for continued examination (RCE) and that rate is expected to rise. RCEs are also filed in a significant number of patent applications that are eventually abandoned. 

Patent Office management sees the high RCE rate as a symptom of a breakdown in the prosecution system. In their view, after two rounds of negotiation, the parties should have arrived at final positions — either by identifying appropriate patent-worthy claims or else by determining that no-such patentable subject matter exists. At that point, further negotiation with the same examiner makes little sense in the ordinary case. If the applicant and examiner come to an agreement then the case is concluded, otherwise the applicant appeals to a higher authority.

The Problem of RCEs: Although RCEs do generate USPTO revenue, they are troublesome because they frustrate the USPTO's goal of reducing the large backlog of 730,000+ unexamined patent applications. Furthermore, the current RCE fee of $810 ($405 for small entities) do not cover PTO expenses associated with the ongoing examination. The cost differential is made-up with maintenance and extension fees. In most of the RCE'd cases, the applicant and examiner eventually do reach an agreement without an appeal to the Board — but only after more rounds of discussion. This re-working of applications raises costs for patent applicants, delays patent issuance, prevents work on the backlog of cases, and generally makes all the parties look silly.

PatentlyO063No Solution Yet: Historically, the patent examiners count system provided some incentive for examiners to induce the filing of RCEs. The count system has been modified to reduce that incentive. Despite this disincentive, RCE filings do not appear to have dropped in any significant way.  Another growing RCE disincentive involves patent term adjustment (PTA). The long examination backlog is leading to unprecedented PTAs that can add additional months and years to the term of a patent. Although the filing of an RCE cuts-off the ongoing accumulation of (type-B) PTA, folks are continuing to file RCEs.

Explaining why RCEs are Filed: Although not universal, the broadest independent claims of a patent application are often narrowed during prosecution. It is important to recognize, however, that the narrowing amendments typically involve the inclusion of limitations already found in dependant claims. In the negotiation context, the dependent claims begin to look like pre-set negotiable points. It obviously takes time to reach some mutual agreement between the applicant and the PTO. Perhaps the usual case does need more than two rounds. However, my sense is that the high RCE numbers persist because initial office action rejections regularly fail to directly address the claimed invention and (consequently?) necessary claim amendments are not proffered by the applicant until after the final rejection. At that point, an RCE may be required. Of course, even in the best of times RCEs are sometimes unavoidable — such when prompted by the late discovery of important prior art. The additional time delay of RCEs may be helpful in other cases such as when limitations that distinguish the invention from the prior art are buried in the specification.

The PTO is looking for ways to reduce RCEs and more generally reduce the re-working of applications. To that end, I would like to ask two general questions that will help me create a follow-on survey:

  1. What is your explanation for the large number of RCE filings?
  2. What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)
  3. Do some patent attorneys disagree with my notion that the amendment process is a negotiation?

240 thoughts on “Why do Applicants File So Many Requests for Continued Examination?

  1. 240

    David, you complain that the examiners apparently have not read the specification prior to conducting a first search and issuing a first office action on the merits. Personally, I think it is a better practice for the examiner is not to read the specification before they conduct a search so they can read the claims the way they are written. Often the claims have ambiguities that can only be ascertained by not reading into them implicit structure for the specification.

    In analyzing claims in issued patents, I simply draw them out on a blackboard the way they’re written before I read the specification. Others who have read the specification first tend to draw them out entirely differently. Obviously, the claims in the circumstances are subject to more than one interpretation and the problem of the ambiguity of the claims should have been addressed during prosecution.

    Obviously, you may not understand this problem the way I do because I tend to deal with enforcement of patents rather than prosecution to a great degree. But what I’m telling you is very very important and I hope you listen and understand what I’m saying.

  2. 239

    I’d like to add from reading some of the comments that are targeted towards examiner’s not doing their job or not rejecting the claims properly. People, there is an obvious way to tackle this without filing RCE. MPEP 707.07 is a tool to use and should be used prudently when examiner’s do not do they job. Also note the time period for requests in MPEP 710.06. Obviously, when an examiner does not tackle the dependent claims, one cannot understand the completeness of the rejection, which is a crucial matter to be addressed for a proper response by the applicant.

  3. 238

    I tend to file RCEs for the pupose of having prior art considered that was not cited during the prosecution. I also file RCEs more often when the applicant wants to micro manage the prosecution – it can be hard to explain to the client the negotiating ptifalls of RCEs and the negotiation advantages of filing an amendment/response that the Examiner is unlikely to enter or for which in return all we get is an advisory that says almost nothing.

    Although I tend not to file RCEs and although I tend not to go to appeal, I do tend to have an active after final “prosecution” (you need to do your negotiations at some point).

    On the one hand, probably the number of RCEs could be reduced if the Examiner’s were to read the applications and references being cited. On the other hand my impression is there are a fair number of attorneys that also appear not to have read the references being argued. When reviewing cases prosecuted by others, it often looks to me like a conversation between two deaf people, neither the Examiner nor the attorney directly address the concerns of the other.

    Although I would like to see both attorneys and Examienrs spend more time reading understanding the references the are citing, and talking to each other rather than at each other, eliminating that would mean applicants would need to spend more money on paying the attorneys to spend more time on responses to Office Actions, and the PTO would need to spend more money (I would estimate 2 or 3 times more money) on the examination to give Examiners more time to spend on each Office Action.

    The number fo RCEs could also likely be reduced if the Attorneys made every argument for patentability and arguend every dependent claim for which a good argument exists. However, the Applicants would likely pay significnatly more for that, and that would of course increase the amount of prosecution history.

    Finally, it seems to me the effort to reduce the number of RCEs is just silly. Just change the accounting method and count RCEs as new applications when calculating the lenght of the pendencies of applications. It takes time to reach agreements in negotiations, and I am not sure that it is wise to limit the negotiating styles of the Examiners or attorneys. Effective negotiations requires each side to be fully engaged and to directly address the other’s concerns, which takes time that I am not sure that the PTO or the applicant really want to spend. Although it is not my style, if some people prefer to file an RCE rather than spend the extra time in the original application, is it really so terrible if that is what works for them?

  4. 237

    For Bierbelly: ( If you should ever return to this thread) Try using the term “bite” or “bite end” of the rope. In the knottical world, that is unambiguous.
    This does not solve the overall problem, but it should rope in your examiner.

  5. 236

    I’m reading an Office Action right now, specifically a nonenablement rejection, in which it is excruciatingly clear that the Examiner has utterly failed to understand the claimed invention and the relevant science behind it. That is, I am certain, why a significant number of RCEs are filed.

  6. 235

    We file RCE’s because we are trying to obtain relevant and useful patent protection without unnecessarily sacrificing scope of coverage, and examiners are too quick to issue office actions made final. Most examiners merely reiterate first action rejections in the second action regardless of claim amendments made by the applicant. The regulations should be changed so that a final cannot issue until after filing of a second response rather than after a first response. The regulations should also require examiners to conduct at least one telephone interview (to discuss the merits of any rejections) with applicants prior to issuance of a final. Simply put, giving applicants a single bite at the apple merely stifles prosecution and is not conducive to furthering it. Also, many examiners could learn a lot from a few of their own peers who actually propose claim amendments to applicants and/or proactively contact applicants via telephone in an effort to advance prosecution. I believe these simple changes would help both the USPTO and applicants to accelerate examination and reduce the substantial backlog of applications.

  7. 234

    1.What is your explanation for the large number of RCE filings?
    The reason is that the prosecution to a final rejection is not a negotiation, and it usually does not get us closer to recognizing what is allowable. For example, if in response to a first OA you make even a minor change to any claim you will get a final on the basis that your amendment necessitated it. Getting a final means the discussion is over. What was the “negotiation”- the examiner sent an OA and you responded. Now to respond after final you have to file an RCE. And, even interviews are pretty useless because the examiner won’t give any kind of qualitative response to your proposals-she just says “send it in and I’ll look at it”. It basically derives from the conversion of the PTO into a NoPTO. I think now under Kappos we may be returning to the idea that the examiner should help find allowable claim structure.
    In short, when we get a final we haven’t yet developed the negotiation to a point of agreement or even to know what the examiner might be willing to allow
    2.What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)
    Allow us to have an interview before the examiner sends a first OA, and give more flexibility after final and get rid of that “amendment necessitates the final” trick.
    3.Do some patent attorneys disagree with my notion that the amendment process is a negotiation?
    My comment above answers that-it isn’t really a negotiation, and it shouldn’t be seen that way anyway. It should be a discussion of how to express in the claim what the examiner will allow and of course a discussion of whether the examiner’s rejection follows the legal criteria (if we could only find out what that is after KSR).

  8. 233

    Sorry Ned I had my head in thin wide and elongated. Was speaking of the strength of that claim, and how it reads.

  9. 232

    Sarah, you befuddle me with an intelligent post.

    I don’t think the issue you ask about was before the court. The claim construction regarding “uniform” was not in dispute and the issue before the court was patentability, not infringement.

    You might want to refer to earlier the case where the issue of claim construction of “uniform” was in dispute and report back.

  10. 231

    So is the Court saying any thickness is still Infringement on the Suitco case, because, thickness is never clearly defined in the Patent?

  11. 228

    Can Ned and pingerdoodle stop this rtardedness? Ned, ffs, it’s always a good idea to read the spec before doing the first search. Trust me. Ping, stop fing with him. It’s also always good to read the claims first so as to get a feeling for what the claims by themselves present, and then temper that with understanding from the spec if it appears as though it is warranted. Je sus you two children.

    In the mean time check out this article:

    link to allthingspros.blogspot.com

    Good article. NWPA will want to see it as well no doubt.

  12. 227

    Ping,

    Where did you find this section of text?

    “Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to claim 4’s use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising . . . means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).
    The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).”

  13. 226

    Also, i d i o t, please reread Morris for the above “back and forth.” It is actually there in the case.

  14. 225

    Slowly, now ping, just for you. I said “initially.” I then said the applicant should respond with evidence. I then said, and you failed to quote my posts entirely, the examiner should conduct a second search with the claims now limited to the invention the applicant intended to claim in the first place.

    What you leap to is the unwarranted assertion that the “final” claim construction be the initial claim construction. You totally ignored the back and forth of actual practice — a point I made long ago. What this seems to suggest is that you skipped Evidence in law school.

    You are a true loon, ping. You are intentionally misconstruing things just to be an a s s.

  15. 224

    you seem to have purposefully misunderstood my point

    Like five times Ned?????

    More like you were spouting off and got nailed (again).

    Once, maybe, Twice, doubtful. Five times – O the gall. Hope those words are tasty!

  16. 223

    I agree with fish sticks, except maybe there is often not even one round of “negotiation”. The Examiners I deal (TC 1600) with tend to ignore declarations, attorney argument, the law, logic and the MPEP. Once they decide, they decide and that’s pretty much it. Getting two rounds of true negotiation in a case is a minor miracle.

  17. 222

    ping, you seem to have purposefully misunderstood my point about and examiner initially reading, and examining the claims without reference to the spec so that he is not biased toward a narrow construction but reads the claims exactly the way they are written. I do not suggest that his initial construction of the claims is the final construction. What I suggest is that the applicant can rebut the examiner’s claim construction by evidence. This evidence can include definitions from the specification, usage in the specification which is unambiguous, and extrinsic evidence of how the examiner’s construction is plainly inconsistent with what one of ordinary skill in the art would understand the term to mean.

    Were we seem to have the most difficulty here, ping, is “usage in the specification which is unambiguous.” In the Morris case, the phrase “integrally formed as a portion of” was not actually used in the specification. It was used only in the background section. Thus it was not defined; and it was not used in an unambiguous way in connection with the drawings or other description.

    Now if Suitco stands for no more this: if a claim term is used in the specification and its meaning is clear from the specification, and a claim construction that is inconsistent with this is unreasonable, then I have no beef with that case. I am not convinced that Suitco so limited.

    However, if a claim term is not used in the specification as in the Morris case, or if the claim term is used inconsistently so that it does not have a single, unambiguous meaning, as in the Chef America case, the law commands that the examiner choose the broadest available meaning to those of ordinary skill in the art, and this specifically means that in the patent office that the examiner choose the meaning that reads on the prior art. In court, to the contrary, where there are two possible meanings to a claim term, one which preserves the validity the claim and one which leads to its invalidity, the claim construction that preserves the validity of the claim is the one chosen. Phillips

    I hope this discussion somewhat clarifies the issues.

  18. 221

    No Maxie, – that’s a case where applicants poorly wrote the claim and the court went by the claim language – try to follow – we are talking about claim language. You, a Blimy should be cognizant of claim language.

  19. 220

    ping asks Ned for just one case. Personally, I think of the Chef America case, in which the specification describes how to make loaves with a surface temperature of >400°F, but the CAFC decrees that but claim defines a method of making charcoal. Ned, ping, I see this as just one case in which:

    “….the courts have directed claim construction to be done in purposeful ignorance of the specification.”

  20. 219

    Ned,

    Do you try to be this delusional?

    How is anything that you have recently posted been anything but confirmation of my position and condemnation of yours?

    To wit:

    BRI — what I think this means in practice is that the examiners search and reject the first time without reading the specification… But this, IMHO, is exactly what they SHOULD do.
    Posted by: Ned Heller | Jun 30, 2010 at 11:42 AM

    I think it is vitally important that the examiner search and reject in the first action without having read the specification.
    Posted by: Ned Heller | Jun 30, 2010 at 02:02 PM

    the examiner needs to read the claims the way they are written without limiting them in any way to the specification.
    Posted by: Ned Heller | Jun 30, 2010 at 02:39 PM

    But during original ex parte, we really need the examiner to read the claims they way they are written without regard to the spec
    Posted by: Ned Heller | Jul 01, 2010 at 11:40 AM

    In order for it to work properly, the examiners really need to read the claims before they read the spec because BRI commands this.
    Posted by: Ned Heller | Jul 01, 2010 at 11:51 AM

    None of the above is congruent with your post of Jul 01, 2010 at 03:15 PM, where you finally make some sense:

    There the PTO was able to maintain a broad construction of a claim term based on dictionaries and prior cases that were very much inconsistent with the structure being claimed in specification and demonstratively so. The problem was, the claim term being used was not DEFINED in the specification to have the particular limited meaning intended by the drafter and consistent with the structure he intended to claim. Such it is with words, and terms. They can cover the corresponding structure. But they can cover more as well. Unless the meaning is expressly clear, meaning that there is only one possible meaning of a term where more than one is possible, the PTO is commanded by law to take the broader meaning.

    Finally you start making some sense – however, your diatribe about reading the claims sans spec is plainly not supported by Morris or any case law. Morris’ holding is not ignoring the specification. It just so happened that the words in question had a broader established meaning outside the spec – like I said about obviously well known terms of that art.

    However, you then retreat to not understanding that BRI has to conform to Supreme Court direction and think that just because BRI came later, it don’t need to cotton to the direction given by the Supremes. Worse, you think Rader conflicts with Morris. It don’t. And the Fed’s don’t hold opposite what I say – they hold to what I say.

    I said: “you cannot have a justifiable prior art construction (in the art) and the same word used by the inventor that an examiner uses flatly inconsistent with the intent and purpose of the described invention.
    The court found the prior art construction by the examiner justified – not unjustified. You did not read my answer carefully enough.
    The reason for the justifiable holding comes later and I comment “For less than obviously well known terms of that art, the inventors’ creative use of that word prevails if and only if the inventor’s intent can so be deemed from the specification.

    This is exactly what the courts held: “Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants.

    Getting back to your nutcase view of it being proper for examiners to not read and ignore the spec, the Court in Morris agrees with me (and not you) by noting “it would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant’s written description

    Ned – find me one single case where the courts have directed claim construction to be done in purposeful ignorance of the specification. One. Perhaps the nuance of “in light of the specification” is just too much for you to handle. Go back and take your reds, blues and greens and then carefully re-read my posts. Only because you are so insistently wrong (five explicit times listed) do I take this much trouble typing all this out. That and I enjoy watching you eat all those words. Are they yummy?

  21. 218

    edit: “meaning that reads” instead of “meeting read”

    Thank you Dragon.

  22. 217

    Actually, ping, the detailed example is from Morris. The FEDs held the opposite of what you suggested.

    On the second, simpler example, you hit on a good point. If the claim term has two meanings, it does not mean that one of the two meetings is broader than the other of the two meanings. They are just different– which was the point being made in at least one of the two recently published AIPLA law review articles criticizing BRI. “Different” does not mean “broader.” Further, the Director has a duty to examine the “invention,” implying that he as a statutory duty to choose the meaning “consistent” with the specification. However, the contrary view is that the requirements for clear claims set forth in section 112, paragraph 2, requires the “different” meaning in order that any ambiguity be eliminated from the claim by a clarifying amendment.

    Obviously in court, a claim term that has two acceptable meetings to those of ordinary skill in the art, the construction chosen is the one consistent with the specification. But in the patent office, in contrast, the broadest reasonable interpretation standard would require that the patent office choose the meaning that reads on the prior art in order that a clarifying amendment pick the one actually intended by the scrivener. In practice, I think examiners actually choose the meaning that reads on the prior art over a meeting read on the specification, and will stick to their guns regardless of one’s arguments to the contrary that the examiner’s construction is inconsistent with the specification.

    However, circling back to the Morris case and In re Suitco, it seems that Suitco, in contrast Morris, required that the construction that reads on the specification be the one chosen. Now this seems flatly inconsistent with the prior authority, which leads me to believe that Rader’s new view of what is “reasonable” has to be somewhat attributed to the change in the law represented by the “Phillips” case. That case seem to overrule any prior theory that a claim term could be read more broadly than the specification, which was the fear I believe of the courts prior to Phillips.

    Regardless, Rader’s opinion seems flatly inconsistent with all prior precedent on this topic in that if a claim term has two acceptable interpretations to those skilled in the art, one that reads on the prior art, and one that reads on the specification, the prior case law seemed to require that the “broader” construction be the one chosen. Suitco seems require the narrower construction.

  23. 216

    Ned,

    Your hypos (both the convoluted one and the simple one) are defective. You have not put enough branches over your snare. What’s worse, is hat your convolutions make me type more, and since Ima lazy, if I have to type more I am far less likely to be nice about your waning faculties.

    In the convoluted one, you cannot have both situations you describe – you cannot have a justifiable prior art construction (in the art) and the same word used by the inventor that an examiner usesflatly inconsistent with the intent and purpose of the described invention. While an inventor may be his own lexiconagrapher, black cannot be white when dealing with obviously well known terms of that art. For less than obviously well known terms of that art, the inventors’ creative use of that word prevails if and only if the inventor’s intent can so be deemed from the specification. By positing that it would be flatly inconsistent, you have answered your own question.

    The critical link is the specification, which you have contradicted yourself in your ever-brilliant citations. This fact betrays your prior mistaken post (dealing with examiners ignoring the specification prior to searching) and is fully aligned with my observations and any case law you want to present. Ya see Ne, the Law and I are buds, and we have yet another instance where you have to eat your words about me.

    As to the second hypo, you do not indicate the breadth of the two meanings and one cannot tell which is the broader one. Either or both can be relatively narrow and highly dependent on context, which of course, leads one right back to my observations and your cited (but do you understand your own cites?) references. Claims must (hint: nuances with “always“), be read in light of the specification.

    6 answers the Crouchsters question – examiners are being trained to do a p_ss-poor job in order to meet time goals. They simply are not examining the application to the degree and rigor the applicants feel that they deserve and applicants file RCE’s to get what should have been done in the first place. The Courts (not the MPEP, 6) have dictated what is reasonable. It is simply unreasonable to examine an application by examining claims alone.

    Reminds me of an adage – If you don’t have time to do it right the first time, when will you find time to do it right later?

  24. 215

    ping, lets keep it simple:

    Term has two meanings to those skilled in the art.

    Meaning 1 reads on the prior art but does not cover any embodiment.

    Meaning 2 reads on the embodiments but does not read on the prior art.

    Which is the “broadest” “reasonable” construction?

  25. 213

    You tell me, Ned – what does this mean:

    Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to claim 4’s use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising . . . means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).
    The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).

    Feel free to expound on the citations called forth. Try to especially delve into the nuance of “claims should always be read in light of the specification and teachings in the underlying patent.” I know “always” is such a nuanced word and all.

  26. 212

    All right ping.

    Assume a claim term, “integrally formed as a portion of.” It is part of a claim to a structure that is described in the specification as a structure that is as part of, but not bolted to, a larger structure. The prior art shows a structure that performs the same function as the described structure, but which is bolted to the larger structure. The examiner construes the claim term to cover the prior art. He justifies his construction based upon prior usages of the term “integral” to describe “bolted on” structures in prior interpretations of that term by the Board of patent appeals.

    Clearly, the construction given the term by the examiner does not read on any of the preferred embodiments, and is flatly inconsistent with the intent and purpose of the described invention.

    Given what you know of the In re Morris case and the In re Suitco case, what is the proper construction, and why under “broadest reasonable interpretation,” of the disputed claim term.

  27. 211

    Radar’s Supreme Court authority, however, did not hold that BRI was done in light of the specification as it was an older case decided long before there was BRI.

    As I said, Rader’s opinion seems to be in conflict with Morris.

  28. 210

    Let’s compare

    prior Supreme Court authority, which he in fact cited in this case to support his opinion.

    with

    Ned’s “Later, if the examiner’s construction is inconsistent with the specification, the applicant can make that argument.” misses the legal point (no surprise) that the BRI is done in light of the specification – c’mon Ned – I know you can find me a cite saying exactly that. Why don’t ya look for that after taking the right number of reds, blue and greens?

    Posted by: ping | Jul 01, 2010 at 01:33 PM

    See Ned, that wasn’t so hard when you have the reds, blues and greens matched up properly. A little more tabasco sauce for your words?

    And oohhhh, I get to feel all scholarly quoting meself.

  29. 209

    Actually I think the Federal Circuit has two lines of authority “broadest reasonable interpretation.” In the “Morris” case, the Federal Circuit expressly held that if a claim term had two meetings, one which covered the disclosed invention and a broader one which those of ordinary skill in the art had previously recognized as a proper construction, the examiner had to choose the broader construction and was restrained and this only if the claim term was defined in the specification.

    However in the recent case of “In re Suitco,” the Federal Circuit seem to hold that a construction that did not cover the preferred embodiments was “unreasonable.” That opinion was authored by Judge Rader, who we all know has little respect for prior panel decisions inconsistent with his views, especially when they conflict with prior Supreme Court authority, which he in fact cited in this case to support his opinion.

    Patently-O do not post In re Suitco for discussion; but I believe it should have because it was an important decision. A very important decision.

  30. 208

    Max, I think you’ve got something there — the EPO examiners search the invention disclosed in the specification, and require claims to be expressly (amended) limited to the claim term definitions described in the specification.

    This is a dramatically different approach from what happens in United States, but it does explain why European searches are so good and do not have to be repeated.

  31. 207

    Yet another clever contribution wiped out by the ha_te filter.

    Man I… o never mind.

    Enjoy the fireworks “peeps”.

  32. 206

    Ned, I don’t understand. EPO Examiners operate a BRI standard too, you know. If you claim to be your own lexicographer, that impresses the EPO not at all. The EPO would invite you to write your special definition into your claim, verbatim. Until then your claim remains, hopelessly broad, under BRI.

    But EPO Examiners often write that they have already performed their novelty and obviousness analysis(as then set forth)as if the claim had already been so amended. Thinking about it from their point of view, whatever is the point of searching more widely than strictly necessary. It’s a better use of precious time to drill down further into what the inventor is describing as the contribution to the art, rather than in fruitless contemplation of the hopeless text of claim 1 as filed.

    After all, an EPO Examiner only gets one go at it, so it had better be done right.

    Perhaps that’s the practice point of difference?

  33. 205

    “peeps”?!

    Mooney, you’re waaaay too cool for patent law. Consider getting out now.

  34. 204

    Alun, the Morris case is republished here: link to openjurist.org

    You should know the whole concept of BRI has been heavily criticized in two recent AIPLA law review articles precisely for the reasons you state. The invention examined and allowed is by definition not the same as the invention disclosed and claimed. In theory, the BRI invention is mearly “broader” than the claimed invention. But in practice, BRI more often than not leads to the examination of quite different inventions. The reason for this is when a particular term is given is “broadest” possible meaning, it often is a different meaning than intended by the applicant, not a broader version of the intended meaning.

    Anywhere but in the US, it seems, claim construction seeks to determine the “proper” construction of the claims. This actually requires the claims to be read “narrowly” to some degree to cover the disclosed embodiments. This is why initial searches elsewhere are “better.”

    As I have said before, BRI and compact prosecution are inconsistent with each other. Something has to give as the initial action and response help clarify the claims so that the second search and action is directed to the invention the applicant intended to claim in the first place.

  35. 203

    Firstly, I don’t see RCEs as a problem per se. I don’t believe that compact prosecution works, or will ever work, and paying the fee is how we get around that.

    For once, I think Max is right. Separating the search from the examination altogether in the EPO produces the best searches available from any patent office in the world. The US piecemeal approach to official searches wastes time in the long run, as you get a narrow search that has to be re-done every time you amend. Maybe the USPTO could learn from the EPO, although I suspect that the NIH (Not Invented Here) principle might scupper this idea. One thing is for sure, right now the PTO is doing very poor searches.

    Broadest Ridiculous Interpretation often leads to bizarre ways of reading the claims that completely floor the Applicant, especially when the Applicant is not in the US. Thus, the most common type of amendment is to change the wording so that it can’t be wilfully misinterpreted.

    BRI is completely unnecessary, as no court will ever interpret the claims in this way, but sadly at least one court did authorise the PTO to interpret claims differently than the courts. I believe the precedent is Morris, but someone with a bevy of paralegals at their disposal can have them look it up for us. If we could get congress to eliminate BRI, this just might shorten prosecution. I’m sure that the average Examiner’s approach to BRI is far broader than Morris (or whatever it’s called) intended, but then I’m sure they’ve never read it, and they couldn’t cite it to save their lives (yes, I can’t either).

  36. 201

    Thanks for playing, 6.

    I cannot fix the closest art till I know what the inventor is announcing in his/her app as the technical field and the technical problem solved by the invention.

    I guess you are looking at EPO file wrappers on the case parallel to the one you are examining in the USPTO. Choice of the closest art in the EPO might appear to you to be arbitrary but it isn’t. If, for example, Applicant amends claim 1 from “A piston…” to “A piston of an ic engine…” and D1 was a piston for a hydraulic pump, then the amendment would oblige the EPO Exr to develop a new approach to obviousness, starting from a prior art disclosure (D3) of an ic engine piston.

    OK?

    And Cy, you have a point. EPO Examiners must be able to operate in all of English, French and German, actively and passively, even when (as isusual) their own language is not English, French or German. I fear 6 might not qualify, right 6?

  37. 200

    “I am fascinated that you find such difficulty determining which is the “closest” prior art. ”

    I’m fascinated that you didn’t answer the supposedly simple question max.

    And btw, the designation of D1 is all too often arbitrary in your precious EPO in the files I read. They simply go on to use D3 etc. as new D1’s throughout their analysis just as my primary reference switches in and out occasionally.

    And also, F logic games.

  38. 199

    NWPA: “We need to get your aunt to schedule our bathroom visits.”

    Does MM’s aunt have a POWERFUL COMPUTER BRAIN?

  39. 198

    MM: >>Using this program in a floating system, you >>can determine your place in the airplane >>bathroom queue with less than a 2% decrease
    >>(average) in .mpg download time.

    We need to get your aunt to schedule our bathroom visits.

  40. 197

    I urge you seriously to consider joining the EPO.

    Don’t you have to pass a test? 6 is still trying to figure out those logic puzzles on the LSAT.

  41. 196

    6: I am fascinated that you find such difficulty determining which is the “closest” prior art. Perhaps what you need is a structured approach, a sequence of enquiries that is always exactly the same sequence of questions (such as the one used by Examiners in the EPO under the appellation “Problem and Solution Approach”)) that begins from what the inventor wrote about her own invention in her own specification, in her own words, giving those words full credit, reading them through the eyes of the PHOSITA, as he was, at the filing date of the app, without knowledge of the claimed invention, and looking for the prior art document that is the best springboard to completion of your obviousness attack, at the end of the invariant strict sequence of enquiry steps.

    For then, the question what is the “closest” prior art is not difficult to answer.

    And because the sequence of enquiry steps is always the same, any half-competent prosecution attorney will immediately eat you for breakfast, if the logic of any single step in the sequence is even marginally weak.

    You would enjoy the challenge, I am sure. I urge you seriously to consider joining the EPO. It would be fun to have you against me.

  42. 195

    In a world in which examiners go trawling to find selected key words form a claim that happen to be close enough together, it is natural to start using obscure language like “fireplacing a terminal library system”. This is just Darwinian evolution applied to the patent ecosystem.

    Besides, if something really is new, then there can’t be a word for it yet can there? Otherwise it couldn’t be new.

    Besides, most terms sound pretty ridiculous when they’re brand new. How about “mouse”?

  43. 194

    IANAE It’s very hard to respond to a rejection when you’re not sure what the examiner thinks the claims mean.

    Of course, every Tuesday you can find issued patents in the softy wofty art unit that attempt to describe “inventions” using completely ridiculous made-up or borrowed terminology, e.g., “A process for fireplacing a terminal library system, comprising archiving a log retrieval number, wherein said log retrieval number is selected from a pre-determined council circle autograph; and sorting said retrieval number according to a binomial popcorn algorithm.”

    Total breakthrough technology, peeps. Using this program in a floating system, you can determine your place in the airplane bathroom queue with less than a 2% decrease
    (average) in .mpg download time.

  44. 193

    In my practice we actually file very few RCEs, less than 5%. We adopt the approach or ideals of the patent office. If you cannot convince the examiner with two attempts that claims of interest are novel, inventive and enabled, move on to appeal. My response to final rejection is essentially an informal draft of an Appeal Brief. To date, in 50% of the Appealed cases the examiner rejections were reversed. In 50% of the other cases prosecution was reopened. The cost of filing the Appeal is similar to the RCE, but there is one advantage. In each case, we are issued a non-Final OA after the case is reopened. In contrast, the filing of an RCE is often followed with a second final rejection.

    Translation: “Some clients will let you keep milking them pretty much endlessly as long as you keep telling them that the broad claims they want are valid.”

  45. 192

    DC On the topic of the number of RCE’s, I filed a typical RCE yesterday that was necessitated by the Examiner’s apparent gamesmanship. It seems to be a new fad amongst newer examiners to generate creative ambiguities around claim language, and assert rejections without informing the applicant that they are applying the broadest dopiest definition they can think of even though they probably know that no one in the art would adopt such a definition.

    Translation: “I can’t write a decent claim to save my life. Prosecushun is hard.”

  46. 191

    By the way, examiner 6, if you need to cite another reference to address the new limitation I added to overcome your previous rejection, I don’t think it would be fair for you to go final since I have not had an opportunity to respond to your new rejection.

    Furthermore, you should have clearly anticipated how I would have amended the claim and went ahead and rejected the claim as I would have amended using the best art possible. If you still choose to issue a Final Rejection, I may take the matter up with your SPE and Director.

    You are further reminded that the examiner is obligated to point out allowable subject matter to applicant as soon as possible, so after searching and writing the Office action, you should search through all 200 pages of the specification and 40 pages of drawings and perform an additional search of the subject matter contained therein to find some way of writing me a set of allowable claims that I can then present to the client.

    Customer service. End the RCE gravy train. I use to be an examiner in the paper roll art. Etc.

  47. 190

    “…Go ahead tards, which is the best reference? Pick your D1 and state why. ”

    Clearly reference E, which you should have found had you done your job properly is the best reference since it shows not only steps a-h, but also steps j-z which are discussed in the specification on pages 80-150 but have not yet been claimed and which you should have anticipated might be added onto the claims at a later date in prosecution if you were any sort of competent examiner. So since you did not cite or use reference E, either you’re incompetent at your job or you’re clearly gaming the system to get more RCE’s.

    Further, references A-D are clearly not good references because steps f-h are claimed while none of the reference A-D shows steps f-h and there is no good motivation to combine any of references A-D to arrive at the claimed invention having steps f-h. Any attempt to do so would not achieve the sort of synergy allowed for by applicant’s invention and absent use of hindsight reasoning, one could not have possibly arrived at steps f-h using any of the combination of references A-D. Further, any attempts to modify A-D in any manner would change them from their intended purpose. Further, A-D by taken individually or as a whole teaches away from an invention having steps f-h since none of the references discloses steps f-h.

    However, since reference E has not been cited by you and I’m unaware of reference E and it’s not part of record, without conceding that your Office action is in any shape or form correct, the following amendment is made solely for purpose of advancing prosecution:

    A method comprising steps f-h, wherein step h is performed using a computer having a wireless card or RAM.

    None of references A-D shows “[a] method comprising steps f-h, wherein step h is performed using a computer having a wireless card or RAM” (emphasis added) nor would any of references A-D make the invention now claimed obvious.

    The application is in condition for allowance and a notice of allowance is earnestly solicited. If, however, any issues remain which could be resolved by telephone interview, the examiner is requested to contact the attorney who despite having practiced as an engineer for 20 years prior to becoming a patent attorney honestly believes he is complying with the ethical requirements that he not set forth any claims that he does not believe is patentable and truly believes he has not set forth any arguments he does not think is valid and therefore truly believes that the addition of the limitation of a computer having a wireless card or RAM performing step h makes the claimed method patentable over the prior art.

  48. 189

    Ok, I finally found a great exemplary case and remembered to tell you guys about it.

    My spec goes into detail about a process that comprises steps a-h (along with minor steps in there as well). My claims claim only the last 3 steps f-h and specify a bunch of the characteristics of the product under manufacture.

    Which reference is the best reference?

    Reference A: shows clearly steps a-e and none of the product specifics.

    Reference B: shows clearly steps c-g and some product specifics.

    Reference C: Shows steps g and h and some others of the product specifics.

    Reference D: shows all product specifics and no method steps, save perhaps for “form this particular product” implicitly.

    Keep in mind this is a real life example. Go ahead tards, which is the best reference? Pick your D1 and state why.

  49. 188

    In my practice we actually file very few RCEs, less than 5%. We adopt the approach or ideals of the patent office. If you cannot convince the examiner with two attempts that claims of interest are novel, inventive and enabled, move on to appeal. My response to final rejection is essentially an informal draft of an Appeal Brief. To date, in 50% of the Appealed cases the examiner rejections were reversed. In 50% of the other cases prosecution was reopened. The cost of filing the Appeal is similar to the RCE, but there is one advantage. In each case, we are issued a non-Final OA after the case is reopened. In contrast, the filing of an RCE is often followed with a second final rejection.

    I spend a lot of time reading Board Decisions of appealed cases. I am amazed by some of the arguments being made by applicants that the claims are non-obviousness. Applicants are not willing to come to some sense of reality that their claims are indeed obvious under the appropriate standards of 103 and Graham. For some reason, Applicants fail to recognize when they lave a losing case, and that they need to find support in the application and amend claims to avoid the cited art.

  50. 187

    “You shouldn’t need an RCE in that case. The examiner should enter your amendment and allow your claims in any event.”

    Idk about that IANAE, sometimes I enter and sometimes not. Sometimes those suggestions are made merely to get around the current prior art. That is ez to do, and all too often that is all a practicioner wants. Specifically, I’m saying to you, that is all they want, and indeed all they explicitly say they want, with particular emphasis on the important parts of that statement. Additionally it’s a mite more difficult to pontificate from on high that x is patentable over all prior art, especially if you’re a junior examiner and you’re discussing the case AF with only one reference in front of you.

    But wait, I forgot, the “best” reference is always the “best” reference, no matter how you characterize the subject matter. Right? LOLOLOLOLOLOLOLOLOLOLOLOL.

    Take home: Even though we be omnipotent, examiners can amend straight into the prior art just as easily as you can.

  51. 185

    IANAE:

    You are right, but many times suggestions are given for claims (over the phone, in the text of an office action) which if used without an RCE, will win you an advisory action.

  52. 184

    The claim includes A, B, C and D where D really is the only point of novelty.

    Frequently, I receive rejections where the examiner argues in some detail where A, B and C are shown in the reference(s) but conveniently fails to point out where D is shown.

    Or he says simply that “D is shown in the drawings.”

  53. 183

    “I am amending my claims in accordance with the suggestions of the Examiner”.

    You shouldn’t need an RCE in that case. The examiner should enter your amendment and allow your claims in any event.

  54. 182

    An RCE should only be filed under the following conditions:

    “I need to amend to overcome prior art”

    “I need to amend the claims to put my application in better form for appeal”

    or

    “I am amending my claims in accordance with the suggestions of the Examiner”.

    Otherwise, Appeal.

    Even if new art is cited in view of a Final Rejection, Appeal if you have a position. Or, better yet, call the Examiner for an interview and discuss the case.

  55. 181

    “>80% of examiners currently have a tenure at the PTO shorter than the backlog of cases at the Board.”

    this

  56. 180

    2. Institute penalties for Examiners who are reversed on appeal to the Board.

    >80% of examiners currently have a tenure at the PTO shorter than the backlog of cases at the Board.

  57. 179

    1. Examiner unwillingness to withdraw rejections; based on failure to consider the totality of the record after issuing the first Office action.
    2. Institute penalties for Examiners who are reversed on appeal to the Board.
    3. Yes, I disagree. See (1) above.

  58. 178

    I would rather have the issues joined by a back and forth, where the examiner states his original interpretation in his rejection.

    Yes, it would be nice for examiners to be explicit about their interpretations, especially when it’s clear that the BRI isn’t what the applicant meant. I’ve had some rejections that were pretty good in that respect, but too many others where I had to infer the examiner’s interpretation from the cited art. It’s very hard to respond to a rejection when you’re not sure what the examiner thinks the claims mean.

  59. 177

    Hed, I re-read your post. What you seem to suggest is that the examiner conduct two searches initially, one based on BRI and the other based on a “proper” construction. This would it is suggested obviate a second search after the claims are “clarified” in some manner, such as by adding clarifying limitations.

    This might work to some degree, but the examiner would still be guessing to some extent what the applicant really wanted to claim.

    I would rather have the issues joined by a back and forth, where the examiner states his original interpretation in his rejection. The applicant would then respond, clarifying his claim in some fashion. The examiner would then conduct a second search.

    This should be enough. But it has to be built into the system. RCEs and its predecessor regimes , i.e., file-wrapper continuations, actually did this. But if RCEs are dislocated from the original prosecution, we really have created a dysfunctional system that will eventually backfire big time in Kappos face. I wonder what planet Kappos came from? It is as if he did not understand the system; but he was patent counsel at IBM. Maybe rising to the top a big corporation has nothing to do with competence.

  60. 176

    You see IANAE, there is a section of the population who believes that when one searches the prior art one does so without regard (for the most part) to what is claimed. One simply takes the subject matter of the application and get a general feel for every last nuance (in demi-god like fashion) and then commence a general search on the whole concept, merrily finding prior art that either discloses part of the general concept+all nuances which you are magically remembering or not. Then one takes the results you found and sort through them to find “the best reference(s)” dun duhduhduh! This reference is magically the best in all circumstances no matter how one could possibly characterize the subject matter in the application. One then turns to the claims and observes if the best reference magically reads thereupon. One then turns to the claims and observes if the best references magically create a prima facie case of obviousness. Finally, after all this, one figures out what the claim truly means, because if an interpretation reads upon the prior art then it is obviously unreasonable in view of the specification and the claim could not have meant that. If, on the other hand, no interpretation reads on the prior art or obvious combinations thereof then all interpretations are valid without regard to the specific embodiments in the specification. You then may make a [rejection or an] allowance based upon this determination. This all works out perfectly within the alotted time in fairy tail land, and you also get a pony or unicorn (your choice!!!!111!!!!) to ride whilst performing the above procedure.

    And to be sure, except for the part about the pony and unicorn, and perhaps a few others, I can see it happening just so in some arts which these individuals no doubt practice.

  61. 175

    I’m saying B”R”I should be used only when there’s no better art.

    How can there be any better art than the art that invalidates the properly-construed claim?

    How can you even search for art before you know what the claim means?

    Here’s a quick primer for you:
    Step 1: figure out what the claim means.
    Step 2: compare the claim to the prior art.
    Step 3: is claim valid? Y/N
    Step 4: discuss

  62. 174

    Ned – you completely missed my procedural point. I’m saying B”R”I should be used only when there’s no better art. This still satisfies your (one-track-minded) policy concerns of testing claim breadth. I urge you, or anyone else who doesn’t take the time to understand what other commenters are saying, to take the time to do so.

  63. 173

    IANAE and 6, I see we largely agree here.

    ping, you statement of the law may be “correct.”
    But, as always, you seem to be unfamiliar with its nuances.

    Now, you asked for a case. See, In re Morris, cited above in the post to Hed, and the discussion of that case in my post. You can see that claim terms have to be defined in the specification in order to be given a specific meaning. Otherwise the terms has to be given the broadest meaning that one of ordinary skill in the art would give them.

    Now there are recent cases, even from the district courts, that if claim construction results in an absurdity — so be it. The courts are not free to rewrite the claim to conform to the disclosed embodiments or to make the claim definite.

  64. 172

    Now, if a claim term is actually used in the specification and used consistently to mean one thing only, that IMO, is all but a definition.

    It would be, except that so many of us are in the habit of using inclusive language like “may” or “for example”, even when providing only a single consistent example for what the word represents. Leaving your options open is great, but it precludes you making the argument that you didn’t leave your options open.

    Maybe we need to be more like Europe, where the applicant has to decide what he has invented before filing the application.

  65. 171

    Hed Neller wrote: Ned-

    I don’t mind BRI, but it is wasteful in many circumstances.

    FAOM: rejection using art based on broad (usually unreasonable) claim construction.

    Response: amend claim to define term exactly as in spec

    Final: rejection using all new art based on reasonable claim construction.

    There’s often no reason that the (best) art from the Final couldn’t have just been applied in the FAOM – the Examiner knew exactly what the claim term reasonably meant without amendment. Of course, if the art from the Final didn’t exist, the very broad interpreation and art in the FAOM would be fair (and the Final should be an allowance after my amendment). That’s how BRI should work.

    Hed, I urge you or anyone who doesn’t understand BRI to read In re Morris, 44 USPQ2d 1023 (Fed. Cir. 1997). There the PTO was able to maintain a broad construction of a claim term based on dictionaries and prior cases that were very much inconsistent with the structure being claimed in specification and demonstratively so. The problem was, the claim term being used was not DEFINED in the specification to have the particular limited meaning intended by the drafter and consistent with the structure he intended to claim. Such it is with words, and terms. They can cover the corresponding structure. But they can cover more as well. Unless the meaning is expressly clear, meaning that there is only one possible meaning of a term where more than one is possible, the PTO is commanded by law to take the broader meaning.

    As a practical matter therefor, if a claim term is not defined and it has a broader meaning to those skilled in the art than the particular embodiments disclosed, the PTO must use the broader meaning.

    To many applicants intending their words to claim certain structures, it may appear that the PTOs art is far afield. It is not, so long as the term is not defined in the specification and it has the meaning given it by the examiner to one of ordinary skill in the art generally.

    Now, if a claim term is actually used in the specification and used consistently to mean one thing only, that IMO, is all but a definition. I think that might be a good argument back to the examiner that his construction is unreasonable in light of the specification.

  66. 170

    Anonymous Patent Examiner–that’s a very interesting observation. I was unaware of that. It is very enlightening.

    I think much of the recent frustration is because the political masters to whose whims we are all subject just decided to stop allowing patents so they could argue to Congress that the drop in allowances proved an increase in quality. (Remember, they’re politicians and so reality is so important as it is to the rest of us.) So there was a lot of top down pressure on the Examining Corps to just reject claims on whatever ground comes to mind.

    Couple that with the requirement that an allowance must be “approved” by two other Examiners and you have a disaster. It is very, very easy for those other two Examiners to veto the allowance because they don’t have to sign their name to the crap that, through no fault of the Examiner or the practitioner, then comes out in the next Office Action.

    One of the take aways, then, is that much of this is all inflicted on us by the politicians. Go figure…

  67. 169

    It’s apparent that this discussion includes people from both sides of the Examiner/Applicant divide. Some restraint on both sides might benefit this discussion. There are good Examiner, and there are bad Examiners. There are good practitioners, and there are bad practitioners. Anybody who is actually participating in this discussion obviously cares more than the average person, and so are more likely to be on the good side than the bad side.

    I’m starting to believe that RCEs frequently result from poor decisions on the part of either the Examiner or the practitioner. So, I think that parties on each side of the divide need to appreciate that both sides’ views are legitimate to at least some degree.

    But the question was “What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings?” That is going to drive the focus more strongly onto the Examiners’ actions, conditions, etc., to a much greater degree than those of the practitioners.

    I think, too, that there is a strong lesson here between the Office’s expectations regarding the rules it puts in place versus the reality of their implementation. I think the Office believed RCEs would be relatively rare, used only to get that last amendment in before appeal or from that interview after final. Instead, it’s become the crutch I described earlier, for all the reasons both sides have put forth.

  68. 168

    Obviously, the whole concept of burdens of production of evidence

    Ned, should we add these to the long list of words that you’ve had to eat when making comments back to me?

    There’s a little something about properly establishing a prima facie case (and the fact that mere conclusionary statements don’t cut it) that was covered in evidence.

    Now granted that you have a number in the twenties and have forgotten much more than I have learned – the problem Ned, is that you have forgotten much more than what a practicioner should know.

    It be time to hang it up.

  69. 166

    the LAW (ping, your favorite enemy)

    I lol you Ned – Only the IMHO-Ned-Law is my enemy with the miscites and oops-let’s-leave-out-that-section types of analysis. The LAW and I are buds. We understand each other.

    6,

    Godhood? – So that’s where NAL went? Such the chick – just because you have a kid you think you created life. Still, if she agrees with me, then she can’t be all that bad, can she? (Don’t worry – I aint gonna go into your odd phantasy life about her and your Mommy)

    Maxi,

    Added Matter means what it means in US law – ya know – the gold standard one. Put simply – day one of your app is (by and large – prelim amends might be grey) also day last of changing your app. I’m pretty sure that if an examiner did their job correctly, any new matter added in by amendment is grounds for rejection – and no search needed for that grounds. And I’m pretty sure you don’t realize that I aint talking about Euro law in my comments – but you not be that quick that way, just like a Blimey.

    It all still comes down to doing the job right the first time around. Examiners are supposed to understand what they are examining. When they don’t – thats when you have problems. That includes searching before they understand what they be searching for. 6 – don’t boo-hoo to me about the lack of time for doing your job – talk to POPA and get them to get ya a better deal. Oh wait – POPA aint worth anything.

    Ned’s “Later, if the examiner’s construction is inconsistent with the specification, the applicant can make that argument.” misses the legal point (no surprise) that the BRI is done in light of the specification – c’mon Ned – I know you can find me a cite saying exactly that. Why don’t ya look for that after taking the right number of reds, blue and greens?

  70. 165

    Ned-

    I don’t mind BRI, but it is wasteful in many circumstances.

    FAOM: rejection using art based on broad (usually unreasonable) claim construction.

    Response: amend claim to define term exactly as in spec

    Final: rejection using all new art based on reasonable claim construction.

    There’s often no reason that the (best) art from the Final couldn’t have just been applied in the FAOM – the Examiner knew exactly what the claim term reasonably meant without amendment. Of course, if the art from the Final didn’t exist, the very broad interpreation and art in the FAOM would be fair (and the Final should be an allowance after my amendment). That’s how BRI should work.

  71. 164

    “To far too many examiners, the fact that “Coke adds Life” renders Coke prior art against a “means for resurrecting a corpse.””

    Wait just a second here, are you suggesting that Coke is not a “means for resurrecting a corpse”? I know some Coke executives who might disagree with you.

  72. 163

    “They wouldn’t have to reach that far for art if only the New Testament had provided an enabling disclosure.”

    Hmmm..maybe Coke is a lot older than we thought…

  73. 162

    Prof. Crouch’s original post mentions that 25% of granted patents have at least one RCE in their prosecution history and asks why so many applicants file so many RCEs.

    Perhaps the question should be rephrased: Why do so many cases with RCEs result in granted patents? After all, these are cases where the examiner issued a final rejection.

    The lesson to practioners is that RCEs are successful and “final” isn’t really that final after all.

  74. 161

    However, that is not the law.

    The law is that you have to distinctly claim your invention, and you get a patent unless your invention is anticipated or obvious.

    If you get an art rejection based on the proper BRI of your claim, either your claim isn’t distinct enough or your invention isn’t patentable over that art.

  75. 160

    “But during original ex parte, we really need the examiner to read the claims they way they are written without regard to the spec and given them a broad, but reasonable construction. The applicant can then amend to clarify, or argue unreasonableness based on definitions from or conflicts with the specification.”
    ————————-
    However, that is not the law. And they wonder why there are so many RCEs…

  76. 159

    Examiners seem to forget that BRI applies to the claim as a whole, not to individual words in the claim.

    Great, then you can explain to the examiner why his interpretation that ice is an NSAID is inconsistent with the later limitation that the NSAID is administered intravenously, or something. You should get a second nonfinal.

    To far too many examiners, the fact that “Coke adds Life” renders Coke prior art against a “means for resurrecting a corpse.”

    They wouldn’t have to reach that far for art if only the New Testament had provided an enabling disclosure.

  77. 158

    Examiners seem to forget that BRI applies to the claim as a whole, not to individual words in the claim. The Office should do more to educate the examining corps on this point.

    To far too many examiners, the fact that “Coke adds Life” renders Coke prior art against a “means for resurrecting a corpse.”

  78. 155

    ping, the reason there is only one search in Europe primarily relates to the fact that there is no BRI there, only a proper construction and that construction must be consistent with the specification from the get go.

    Our BRI and the way it works is entirely different. In order for it to work properly, the examiners really need to read the claims before they read the spec because BRI commands this. The terms in the claim need to be given their ordinary meaning to one of ordinary skill during the first pass. If there are two or more meanings possible, the LAW (ping, your favorite enemy) requires the examiner to choose the broader construction.

    Later, if the examiner’s construction is inconsistent with the specification, the applicant can make that argument.

    Obviously, the whole concept of burdens of production of evidence was a class you missed in law school. I assume you graduated, but you seem to have been sick the day the topic was discussed.

  79. 154

    For example, asserting that ice is a NSAID is the broadest dopy interpretation, given that pharmaceutical artisans have a certain definition of NSAIDs, and the fact that ice is non-steroidal and useful to reduce inflammation of sprained ankles does not make it an NSAID, unless you are an examiner having sport with an applicant.

    ROFLMAO! That’s rich!

  80. 153

    The amendment process *is* a negotiation and the primary reason for lots of RCEs is this usually can’t be resolved in a single substantive exchange.

    I file RCEs because I have to. Examination is often poor, after final the Examiners have little incentive to consider anything carefully, a tendency to treat dependent claims as an all or nothing proposition rather than an attempt to identify limitations that would lead to allowability, etc.

    I’d suggest that a fundamental change needs to be made to the two office action and then RCE model. Why not eliminate the RCE and have unlimited office actions? Then create a fee structure and a point structure that makes sense. Eventually an applicant is going to either abandon or appeal, but they need way more than a single back and forth to reach that point. A more realistic number is 4-6 exchanges.

  81. 152

    I haven’t had time to read all of the detailed comments above, but here is my 2 cents worth only since Dennis was seeking our opinions.

    1.What is your explanation for the large number of RCE filings?

    The many responses above, both from attorneys and examiners, have address many of the two sides of this, however, I have never heard of a patent attorney preparing a response that was anything other than an advocacy for his client’s rights in view of the office action objections and rejections. Examiner’s have a tainted notion that patent firms are trying to run up the billable hours in breach of their professional responsibility. The fact is that we are attorneys who have an obligation to be an advocate for our clients regardless of the representation matter. In patent law, we have a professional duty to seek to obtain our clients the broadest claim coverage under the law unless instructed by the client otherwise. We also have to do so in view of the legal implications. If we and our client’s disagree with the interpretation of a reference, we have to consider Festo/PHE before we make amendments to the claims. We cannot merely respond in many cases with amendments to the claims where we and our client disagree with the basis of the rejection and such amendments would unnecessarily limit the client’s rights under the law.

    I have also found the FOAMs went through a significant reduction in quality in the mid-2000’s as examiners merely performed key word searches and then cut and paste our claim language in support of a rejection. As I practice in the computer and electrical arts, these rejections often reflected very little effort by the examiner to understanding the prior art teachings other than they were able to find each of the key words of the claims in one or more references. As such, the first response to an office action is spent trying to educate the examiner on what the cited references teach and how it is different than what is recited by the claims. As a side note, I do not experience this same FOAM quality issue in most foreign countries, albeit, in some countries like Japan, a similar issue arises but often it is due to translation or linguistic issue.

    I will also chime in that the examiner’s ability to search and raise new previously un-cited prior art in support of a final rejection often necessitates the filing of an RCE. This is especially applicable where you have had to educate the examiner in the first office action and the newly cited art is finally on point and amendments to the claims appear to be a solution to obtaining allowance. If, as in the old days, we had at least one more opportunity to enter amendments to the claims based on the newly cited prior art, then it would eliminate the need for an RCE. Of course, this would reduce the additional PTO funding and examiner counts, but those issues have been addressed above.

    More often I am finding that clients are accepting of some narrowing amendments to obtain allowance of a set of claims after a first RCE. However, many of these clients then file continuations going back to seek the claim coverage that they truly believe that they should have been able to obtain. This strategy has reduced the number of RCEs, but has resulted in an increase in continuations.

    2.What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)

    a. better quality of FOAMs that do more than restate the claims and simply apply key word searches from the cited prior art
    b. address all 101 and 112 issues in the FOAM unless necessitated by an amendment
    c. eliminate the ability of the examiners to make an action final until after the applicant has had the ability to respond to all of the cited references at least once
    d. pass legislation to overturn the ruling in Festo

    3.Do some patent attorneys disagree with my notion that the amendment process is a negotiation?

    No. I agree it is a negotiation process and it is well accepted as such. However, patent attorneys are advocates for their client. We advise clients, but they also want as broad of rights as they can get for their money unless they are convinced otherwise. Often if an attorney obtains allowance too early, the first question you ask yourself, is whether you screwed up and did not seek broad enough claim coverage for your client. Yes, it is a negotiation process, but we are still advocates for our client’s rights and have to consider any amendment or argument in view of the rights we are trying to protect.

  82. 151

    “The question has been raised as to ways the behavior of Applicants and supervisors can influence RCE filings, and I think that’s a very good area toward which action ought to be directed. Another example: in order to allow a case, I have to present convincing arguments for allowance to two primary examiners, and then to my SPE, who *might* then allow it. That comes to three people who have to OK an allowance before I get to allow anything. I’ve been working at the USPTO for about 1.5 years, and I’ve allowed 0 patents. You read that correctly: *0*. While my case is almost certainly not typical, I think that the rigmarole associated with allowing a case is ludicrous, bordering unethical. ”

    Anon Pat Ex–
    Exactly why I’m not still a PTO employee. You don’t belong there. Do your time and get out!

  83. 150

    DC, I hear you on “absurd” claim constructions from the examiners. I get them all the time in reexaminatons, where, IMHO, BRI has no place whatsoever as amending the claims causes the patent owner real damage and should not be forced on the patent owner without very good reason.

    But during original ex parte, we really need the examiner to read the claims they way they are written without regard to the spec and given them a broad, but reasonable construction. The applicant can then amend to clarify, or argue unreasonableness based on definitions from or conflicts with the specification.

    As I said before, the problem with this approach, and it is inherent in BRI, is that it only works if there are two actions on the merits and two searches.

    So, either we get rid of BRI or we add a second action on the merits.

  84. 149

    6: I should explain what makes life easier inside the EPO.

    First, its caselaw is written by its own Boards of Appeal. No court sits atop those Boards.

    Second, those 24 Boards are not burdened by any Binding Precedent. They are free to continue to argue amongst themselves, and then fine tune the law as they move forward (from year zero in 1978). That’s how current EPO law on patent-eligibility emerged, slowly and gradually, over 30 years.

    Third, what the claim covers in Europe is much more fluid than in the USA, so Examiners can in good faith hold Applicants to what they wrote in the app as filed, knowing that the national patents courts, downstream, have enough wiggle room to do justice between a patent owner and an infringer.

    That might seem strange to readers. But think a moment how the EPC was born. Before then, England had its “peripheral” claiming philosophy, with the claim as the fence around the boundary of the protected area. By contrast, mainland Europe had “central” claiming. Think of a claim directed to the best mode, or a “Keep off the Grass” sign in the middle of a golf green. The infringement court would decide (in its infinite wisdom) whether the infringer’s act is on the green, or not. Under the EPC, it’s a compromise between central and peripheral claiming. No wonder the EPO thinks in good faith that it is fair to hold an Applicant to what it wrote in its app as filed.

    But, ping, none of that is any help in the USA, where “added matter” means something quite different than in Europe. I do understand that. I’m not sure that you do though.

  85. 148

    “Anonymous Patent Examiner – By the way, ignore 6, we do.”

    Because they are as incompetent as you likely are APE 🙁

  86. 147

    Bob Hodges, “Most of the RCEs I file result form an off-target first office action on the merits. The cited art does not match the claimed invention very well. When I point this out in the first response, the examiner typically holds the line (retaining a weak rejection) and makes a final rejection.”

    Bob, please read my post on this from the first page. The problem is caused by your claims and BRI. You do not seem to realize what is going on because you think it is the examiner’s fault, when the fault is the claims themselves.

  87. 146

    Les you have to be careful though, if you combine a dep into the ind and the examiner makes a new ground of rejection and goes final you have to be careful about one thing. The examiner could still be willing to make the same old rejection for that one claim that was there previously, but is having to make the new rejection for the new combinations created in your new dependent claims that all include an extra limitation now. If he is only changing his rejection to catch the new claims then the finality will be upheld, because it is proper. That finality is not necessarily improper because he didn’t make the old rejection as well. Just because he didn’t repeat his old rejection for you doesn’t always mean that you will win.

    Watch your back, you can be wasting petitions. I would recommend calling and asking the examiner if he was stating that he would uphold the old rejection of the new ind (the old dep) in your newest action in order to go final before filing a petition, and have him on record.

  88. 145

    “Examiners are directed (and 6 can back me up on this), to read the entire spec and claims prior to any search. If the examiner don’t understand what they be reading – they should be contacting the applicant.”

    Actually Ping, at our last meeting on how to search there was a strong implication by the teacher that you usually didn’t need to bother with searching the spec, especially if you were currently under production duress. Just to be honest with you. We’re “directed to do that” only in so far as it is gravy and if such searching will not hamper our ability to meet production. And even then it’s more like its “suggested to do that”, not “directed to do that”. And the MPEP does not have the force of lawl or rule in our TC in so far as it might hamper the TC’s ability to meet production.

    Sorry I couldn’t back you up on that one.

    While I agree with you that re-searching should be relatively rare, I can’t share your vision of having a completely searched spec. And I also do not see ample evidence of the EPO doing such in my art either. In fact, of late, they appear to claim search even more narrowly than I probably do. There are literally thousands upon thousands of ways of looking at, and as a consequence claiming, your avg medium length spec. Each of those is practically an independent and distinct invention all its own (as a matter of fact, the docs report the office is thinking about implementing new restriction rules along those lines). We do not usually deal in simplistic hammers, or lengths of rope or whatever other simplistic sht is probably popping into your mind that can easily be fully searched in a day or so. We deal with complex sht. Sometimes it’s possible to more or less search for “everything” in the spec, but all too often that is nowhere near realistic. If you, like Noise, don’t particularly like this, you can feel free to ascend to godhood and change reality anytime you think you’re able.

  89. 144

    “Also, someone mentioned the “your claims are too broad” rejection. Three times in the last year I have had Examiners call me to tell me that. And when I tell them that’s not a proper ground of rejection, the Office Action invariably is based on references that are completely unrelated to the invention. If the claims are “too broad”, the Examiner should be able to find 3 or 4 anticipating references.”

    Somebody in this thread doesn’t understand what “too broad” means. 🙁

  90. 143

    “Everything the examiner needs is present on day one.”

    It’s easy to say that, but I’ve had an applicant or two get away with amending in some things that I would have never supposed the application to be disclosing the first time through. WD isn’t as strong as it probably should be simply because there are too many “border” cases.

    It’s all too easy to go back a few years after filing and read something into the application.

    Max is right, we give the applicants a lot more than the EPO does. And then some.

  91. 142

    “His job is to determine not whether you’ve invented something new, but whether you’ve claimed something old.”

    True enough. And the best way to do that is to invent new words. After all, if an invention is new, there certainly can’t really be a word around to name it.

  92. 141

    Most of the RCEs I file result form an off-target first office action on the merits. The cited art does not match the claimed invention very well. When I point this out in the first response, the examiner typically holds the line (retaining a weak rejection) and makes a final rejection. My sense is that the examiner does not want to do a second nonfinal office action (which would be a ding on the examiner), but probably feels (or knows) that there is better art out there they the examiner failed to cite. I do not want to appeal the case because of the potential delay and because in most cases an eventual agreement with the examiner seems possible.

    An important but secondary factor is the failure of many first office actions on the merits to address limitations in dependent claims. These limitations are often not fully addressed until I put them into an independent claim.

    A third factor, on the applicant side, is the time it takes to develop evidence to rebut some rejections. If the evidence is not marshaled until after a final rejection is received, an RCE will be necessary.

    Regarding the first factor, I believe that a form of the first office action interview program could help. I get the sense that many of the off-point first office actions result from the examiner not really understanding the invention.

  93. 140

    1. My experience has been that in cases where RCEs wind up being filed the rejections are usually unfounded. Sometimes, I can’t believe the Examiner is serious. This is typically because Examiners don’t understand the art, don’t understand the law, can’t communicate well in English, or are just incapable of understanding the references. Because of the negative consequences in enforcement arising from amendment, I try to avoid amendment. I usually try to explain their mistakes. But then the eagerness for the count delivers a “final” rejection, and I can no longer amend my claims without Examiner approval. And they almost never allow amendments after final. So, my only option is to file an RCE or a continuation and filing an RCE is vastly preferable. (This assumes that the client isn’t ready to appeal. Appeals usually wind up reopening prosecution anyway.)

    2. My take is that the USPTO has itself created the problem. Some suggestions: educate Examiners on the law, pair them with technologies they know something about, make sure they are technically competent, make sure they can read and write English well, and tell them to be more accepting of interviews and amendments after final. I know the USPTO will say they do this, but that’s wrong or, at best, what they are doing is not working.

    Most importantly, give applicants a better recourse when they have an Examiner that is clearly screwing up. One huge thing I have noticed lately is Examiner’s construing language so abstractly and so broadly that the claim construction and references bear no relationship to the invention. It’s not a freaking game of semantical gymnastics…what does the claim language mean in light of the specification to those ordinarily skilled in the art? It’s not what the fourth dictionary definition might imply if the invention were used on Jupiter (assuming, of course, its not for use in extraterrestrial environments).

    3. The amendment process should be a negotiation, but in the cases in which RCEs are used it’s usually a last resort because of the problems listed above. A negotiation means that there is some bargaining power on both sides. But that’s not the reality of patent prosecution. The USPTO is the gate keeper and they know it. Twenty years ago, if you had a bad Examiner, you could expect the problems to be fixed on appeal or with a call to the supervisor. No longer…the senior member of the Examining Corps and the members of the Board are no better than the first line of the Examining corps. I have had appeals on rejections that were so ridiculous that I could not believe the Examiner did not resign in shame. And then had those rejections affirmed on appeal using the most specious reasoning imaginable. There is very little true negotiation in these particular cases.

    Please keep in mind that these are the cases in which RCEs are filed. Many cases are not subject to these observations–particularly where I get good Examiners that are technically and legally competent, and so I get good rejections on good references. It happens sometimes.

    Also, someone mentioned the “your claims are too broad” rejection. Three times in the last year I have had Examiners call me to tell me that. And when I tell them that’s not a proper ground of rejection, the Office Action invariably is based on references that are completely unrelated to the invention. If the claims are “too broad”, the Examiner should be able to find 3 or 4 anticipating references.

  94. 139

    Max: But is that really possible, given the hugely greater latitude which USPTO Applicants enjoy, to re-cast the claims during prosecution, to direct them to subject matter not readily apparent from the document as originally filed.

    Didn’t I just say that yesterday?

  95. 138

    to re-cast the claims during prosecution, to direct them to subject matter not readily apparent from the document as originally filed.

    Sorry Maxie – that don’t fly. You be forgetting already what I just got done reminding you – weza have a rule outlawing new material. Everything the examiner needs is present on day one.

  96. 137

    ping urges USPTO Examiners to do on a first search the same thorough job that EPO Examiners do.

    But is that really possible, given the hugely greater latitude which USPTO Applicants enjoy, to re-cast the claims during prosecution, to direct them to subject matter not readily apparent from the document as originally filed.

    I gather that EPO Examiners get more time to do their search. While that can be put right inside the PTO, I do not see how the PTO can stop Applicants from coming back, in response to the FAOM, with claims directed to unsearched matter, and legitimately demanding that they be duly issued.

    Even in the EPO, such claims can proceed only after a full further search fee has been paid (in a divisional application). It might be interesting for Dennis to find out, and tell us, how many more divisionals are filed at the EPO these days, than were filed say 20 years ago.

  97. 136

    RCEs are filed because the Patent Office typically does not even read the first response and just sends the same rejections and comments in the Final Office Action as were recited in the first Office Action. … Hence, applicants have no choice but to file an RCE.

    You could pick up the phone. It’s harder for an examiner to ignore you on the phone.

  98. 135

    I have to file RCEs because my clients tie my hands behind my back and won’t appeal. I’ve yet to convince my clients that the appeal brief is a necessary tool when prosecuting applications in 2010. Too many old curmudgeons still see the appeal as a risky, serious ordeal. It is a serious ordeal in that it finally gets the examiner’s attention – plus supervisory review. If I had it my way, I’d only consider filing an RCE after the examiner’s answer. Too many allowances occur after the appeal brief is filed.

  99. 134

    RCEs are filed because the Patent Office typically does not even read the first response and just sends the same rejections and comments in the Final Office Action as were recited in the first Office Action. Upon receiving a response to the Final Office Action the Patent Office simply states that the amendments require more searching (even if the amendment involved only incorporation of dependent claim language into the independent claim(s)). Hence, applicants have no choice but to file an RCE.

  100. 133

    Hobbes,

    Sunshine – the rights you speak of may be Consitutional or not – it dont matta. Those rights can be bought and sold. Follow the money. We be talking the same rights – Iza just be talking about them more correctly.

    Les (who is not misguided) and others who are painfully misguided (gee – no surprise that good ‘ol Ned and Office-lovers leads this pack) as to requirements for new searches:

    Any new search should be excessively rare. Period. Are people nuts, or have you all forgotten a little rule about “no added material” that means that once an application has been submitted, the sum total of the invention is in the examiner’s hands.

    Examiners are directed (and 6 can back me up on this), to read the entire spec and claims prior to any search. If the examiner don’t understand what they be reading – they should be contacting the applicant.

    Someone mentioned how (eww) Europeans only perform a single search. I will begrudgingly tip my hat to Maxie in that the Euros are professional in that regard.

    The fact that no new matter is allowed to be entered and the availability of BRI should mean that the first search should be the only search (here’s a hint: applicants pay only one search fee). Any additional search is an admission that the examiner did not do his job right the first time.

    Do the job right the first time.

  101. 132

    Hobbes: RCE’s are the INVENTOR’s legal right. And a constitutional right, at that.

    I’d like to see the authority for that one. And why am I always the one who has to ask?

    You can use this slightly-improved version of Section 8 as a starting point:

    “The Congress shall have Power … To promote the Examination of Science and useful Arts, by securing for unlimited Times to Authors and Inventors the Pendency of their respective Writings and Discoveries;”

    Anonymous Patent Examiner: In training, my trainer did say, “You should never allow…a good examiner never allow anything, because anything that could invented is already done…

    People have been thinking that way for over a century. They’re just as right today as they were back then.

    Incidentally, what does your trainer suggest if you’re “supposed” to reject the claims (e.g. because they were filed), but you can’t find art? What if he can’t find art?

    I understand that examiners have to pick up a case believing they might find a rejection, otherwise they’ll stop searching too soon and miss things. But there has to be a time when you are willing to concede the point. Other art units are finding things to allow.

    DC: I have often encountered, as have others, interpretations that are so bizarre that they seem deceptive or mean spirited.

    I used to think I encountered those “often”, but now I realize a lot of them only seemed perverse because they were so far off from what the claim intended. Now I focus more on what the claim says, and I realize it’s usually the “broad” – not the “reasonable” – that really bothers me. That’s something I can fix. What’s the point of getting angry with the examiner? Unless you have a definition in your spec or an affidavit from a person skilled in the art, you probably won’t win on a semantic point. The good news is that well-established procedure allows you to choose new words that better express what you meant to say the first time.

    DC: asserting that ice is a NSAID

    Yeah, that one’s clearly ridiculous. The examiner must have stopped reading before he got to the “D”, which ice is clearly not. But at least you can fix it with (at worst) a one-page affidavit signed by the inventor, or by anybody with a functioning right hand. But you must admit that, if you hadn’t implicitly claimed a “drug”, that would be a bloody clever interpretation, and not technically unreasonable.

    Red Monkey: Examiners do not really search for “the invention”. They just search for words used to claim the invention.

    If you don’t properly use the words at your disposal to claim the invention, that’s not the examiner’s fault. His job is to determine not whether you’ve invented something new, but whether you’ve claimed something old.

  102. 131

    Too often, examination is like playing “where’s waldo” with words. The examiner takes keywords and hunts them down with a computer. This being an ecosystem, practitioners will either invent new words, use obscure words, or use common words in really unusual ways.

    Examiners do not really search for “the invention”. They just search for words used to claim the invention.

    In effect, inventors invent novel and non-obvious patentable subject matter; practitioners invent novel and non-obvious ways to claim it.

  103. 130

    Taunt –
    You should be traversing finality. Combining claims does not require a new search, as you point out, the claim was there already. If the examiner doesn’t withdraw finality, file petition under 37 cfr 1.181.

  104. 129

    First OA fails to adequately reject dependent claims. Response adds limitation from dependent claim into independent claim and says no prima facie case all elements not present. Examiner now “finds” missing element that was present in dependent claim(s) all along and makes final rejection with new art. AF amendment to add another limitation from another dependent claim to overcome new art refused entry since “requires new search/raises new issues” even though it was there all along too. Forced to file RCE – no other alternative.

  105. 128

    I note three reasons for many RCE’s.
    1. Examiner’s do an inadequate search first time. Often I overcome rejection with a minor claim amendment, and then get a final rejection on better art. So have to file an RCE to amend the claims.
    2. Examiner’s will unreasonably not accept amendments after final.
    3. I do not like to take cases on appeal without an expert declaration. It is foolish to use declarations early on, such as in response to a first office action. Examiners sometimes will not enter declarations in response to a final rejection.

    So in my view, the problem is with the PTO and lazy examiners who will consider nothing in response to a final rejection other than capitulation.

    Negotiation – not really. More like litigation – a battle, although sometimes it is possible to work with some examiners. What complicates matters is the many examiners who are not fluent in spoken English (an understatement).

  106. 127

    The applicant is the correct term, because the applicant always has the rights – whether or not the applicant is the inventor or not.

    ping, Homey only discusses CONSTITUTIONAL rights. And those belong to the inventor. Any other approach leads to nihilism. You don’t want to go there.

  107. 126

    RCEs are filed frequently because clients either don’t understand or are too afraid to engage in vigorous after final practice to pin examiners to the wall.

  108. 125

    Anonymous Patent Examiner

    I too would like to thank you. That behind the scenes activity meshes perfectly with what I see from the outside.

    Dennis – I think you have your answer.

    Anonymous Patent Examiner – By the way, ignore 6, we do.

  109. 124

    there are probably lots of reasons why rce’s get filed. all i know is my scenario – and i have filed a lot of rce’s. here’s what happens:

    i get a faom rejecting all claims. i make an amendment to overcome the rejections. i get a final action because my amendment necessitated the new grounds of rejection. i have to file an rce.

    in other words, i’m trying to work here, but the examiner bails out on me.

    i could scream (and often do).

  110. 123

    In responding to a first action, the Applicant explains why he believes the art doesn’t disclose or suggest the invention. In the final, the Examiner explains why he thinks the Applicant is wrong. At that point, the Applicant says “OK, you win, I’ll amend”. But that means an RCE is necessary.

    Briefly put, a single action before final is not really enough to conclude a negotiation.

    It would also be useful if everyone took the dependent claims more seriously. Applicants should include meaningful limitations, and Examiners should make a meaningful to examine them. This would greatly speed things up.

  111. 122

    often they are filed becuase the Examiner issues an advisory action with the bogus “would require new search” etc.

  112. 121

    Anon Pat Examiner–thanks for your posts. I think it is always interesting to hear about what might be happening behind the curtain at the PTO. It’s pretty frustrating, though, because it sounds like things at the management level probably aren’t going to be improving much despite anything Kappos tries to do about it.

  113. 120

    Biotech Guy–how long does this petition process (to withdraw finality) take? I had the impression it took a very long time, although now with RCEs getting docketed as new cases maybe the time difference has changed. However, I’ve had Examiners tell me in so many words that they need the RCE counts so they would appreciate it if I filed an RCE because if I didn’t file the RCE they wouldn’t be able to spend as much time on it (due to the pressures of the count system). I appreciated their honesty and filed the RCEs, hoping that would help with getting the case considered more fully. Really, compared to attorney hourly rates to deal with the petition (unless you’re doing it in-house), isn’t it more cost-effective to just file the RCE?

  114. 119

    DC,

    Worse than looking at them as symptoms (of the problems with applicants), some look at them as a disease.

    The symptom/disease is known by another name: “Patents-are-evil”.

    I have to LOL at the initials of the frustrated examiner (but offer condolences to his plight)- APE.

    oook.

  115. 118

    Part of the problem is created by the PTO academy which promotes claim rejection. In my experience 99% of applications receive first office action rejections while 30% are eventually allowed without claim amendments or only trivial amendments. The Office should promote first action allowances when appropriate. Negotiations with newbie examiners are generally a waste of time until an SPE gets involved late in prosecution.

  116. 117

    For Ned Heller:
    Have you observed what many that I have spoken to have observed: Examiners adopting bizarre definitions, to the point where they evidence antipathy towards applicants. I agree with you that the examiner should read the limitations fairly, even if that means coming to the conclusion that they might cover something not contemplated by the applicant (but I might not go so far as to agree that the term definitions should be completely divorced from the specification of field of art, which is at odds with case law). But patent attorneys and examiners disagreeing on the term definitions is not a bad thing, it is life, and neither expects the other to be perfect all the time. However, dopiness or sloppiness on either side is bad, and it can be trained out of both. WHen operating in my litigator mode, I depend on Examiners to apply reasonable broad claim interpretations, and I am often disappointed to face claims that obviously read on the prior art the Examiner had in front of him. When operating in my patent prosecutor mode, I depend on Examiner to apply the BRI, but am often frustrated by the BDI (the broadest dopey interpretation).
    For IANAE:
    I though the PTO policy was to apply the broadest reasonable interpretation. I have often encountered, as have others, interpretations that are so bizarre that they seem deceptive or mean spirited. Also, sometimes it seems that an Examiner is seeing an element that is not in the reference, which should be easy to deal with, and you get him on the phone, or in an advisory, he tells you something like “Yeah, a hammer is the same thing as a table saw in my BRI.” I propose that in such an instance, the Examiner knows he is playing games and should be trained to stop that behavior, or he should know that even if this BRI is honestly held it cannot reasonably be expected that the applicant understands it from a cryptic statement that the reference shows a table saw, and he should be trained to identify those situations and give bigger hints.
    I agree with you that many patent drafters focus so much on non-limiting illustrative lists that they forget to flush out critical claim terms in a manner that eliminates foreseeable ambiguity, but many time the dopey BRI (a BDI) I speak of occurs vis-a-vis terms that the art has imbued with extremely certain meaning and it would be odd to provide a definition. For example, asserting that ice is a NSAID is the broadest dopy interpretation, given that pharmaceutical artisans have a certain definition of NSAIDs, and the fact that ice is non-steroidal and useful to reduce inflammation of sprained ankles does not make it an NSAID, unless you are an examiner having sport with an applicant.

    By the way, are RCE’s seen as a bad thing? It seems like they are provided to address those situations when one round of prosecution is not enough. Is it a bad thing when patent attorneys use them that way? Rather than a symptom, are they not a cure?

  117. 116

    6 –

    “Symptom number 1: SPE is reluctant to allow anything that the junior brings to him (because he knows, or can feel in his bones, the examination was done horribly)”

    That was also my initial thought…until my SPE explicitly mentioned that I always do a very good/thorough job on the search and subsequent write-up. That *is* what we get paid to do, and I’m really not that bad at it. My ability to articulate my arguments is pretty good, too, as I’ve been told a number of times by my primaries. I think a good bit of the problem here is a lack of experience: I agree with your point that most of the time the work of a junior examiner ought to be taken with a shaker full of salt, but I feel obligated to point out that one never grows in experience as far as allowance if one never allows…

    “Symptom number 2: SPE will tell a different junior examiner that comes in for an interview to go ahead and allow the case. Likely leading the first mentioned junior examiner to believe that favoritism is afoot. ”

    Nope, I’m not the only junior in my AU with this dilemma. I have noticed a very wide spectrum regarding allowance when one compares SPEs: I’ve got to go through two primaries + my SPE; one of my training labmates has to go through one primary + his SPE; and another of my training labmates just has to go to his SPE. I’ve taken a look at that examiner’s search history in the file wrapper, thinking that I could learn a thing or two, but there are often gaping holes; I’m glad my SPE doesn’t just rubber-stamp things, but it’d be nice to get *something* though.

    It was not my intention to sound whiny (apologies if it came across as such); rather, I just feel like the problem lies at least partially at the feet of supervisors. To be honest, I know I don’t always do a perfect job, but I’d like to think I do a pretty good one. I have to admit that I’m really looking forward to seeing my name on the face of a patent at some point, though 🙂

  118. 115

    “In training, my trainer did say, “You should never allow…a good examiner never allow anything, because anything that could invented is already done…” [sic] (reject, reject, reject). My supervisor seems to be of the same mode of thinking, and I think that it will take time ”

    Somebody postin’ on this board is not a good examiner and doesn’t know the symptoms of this predicament.

    Symptom number 1: SPE is reluctant to allow anything that the junior brings to him (because he knows, or can feel in his bones, the examination was done horribly)

    Symptom number 2: SPE will tell a different junior examiner that comes in for an interview to go ahead and allow the case. Likely leading the first mentioned junior examiner to believe that favoritism is afoot.

    Check for these symptoms and if they are present report back to the doctor immediately for further treatment.

    “It’s unfortunate, but I’d be willing to bet a pretty good number of junior examiners are at least similarly handcuffed. ”

    And for good reason 🙁

  119. 114

    “Has no one at the PTO ever heard that haste makes waste?”
    Haste does indeed make waste…but at the PTO, “production is job 1, and quality is job 2.” I remember being told that in training. If it’s a choice between haste and losing the job, I’ll take haste (especially in this economy).

    Haste is indeed part of the reason that the FAOMs about which I’ve read so many complaints sometimes contain poor rejections; the additional time we’ve been given that’s so often trumpeted by management as a victory for quality is little more than a drop in the bucket. Example: the additional 2 hours/PU gives me ~18.5 hours to devote to a case. Frankly, that’s not nearly enough (~2.3 days). Comparatively speaking, though, that’s eons; a friend of mine in a different tech area at the same GS level gets about 13 hours/case (that’s hearsay from him, as I’ve not actually crunched the numbers).

    The question has been raised as to ways the behavior of Applicants and supervisors can influence RCE filings, and I think that’s a very good area toward which action ought to be directed. Another example: in order to allow a case, I have to present convincing arguments for allowance to two primary examiners, and then to my SPE, who *might* then allow it. That comes to three people who have to OK an allowance before I get to allow anything. I’ve been working at the USPTO for about 1.5 years, and I’ve allowed 0 patents. You read that correctly: *0*. While my case is almost certainly not typical, I think that the rigmarole associated with allowing a case is ludicrous, bordering unethical. I have a case on my docket now that has filed an RCE; I think it’s now allowable as it is (Applicant amended/rolled up claims well enough to recite what’s intended), but one of the two primary examiners to whom I have to present arguments for allowability told me, “…oh, that out there…you just search at [stuff]…” [sic] and said I should just use art that’s totally unrelated to the concept at hand. I know that BRI is a big deal, but the “R” stands for “reasonable” when I last checked.

    In training, my trainer did say, “You should never allow…a good examiner never allow anything, because anything that could invented is already done…” [sic] (reject, reject, reject). My supervisor seems to be of the same mode of thinking, and I think that it will take time (and retirements?) for people to get out of that mindset. Despite the fact that the PTO has allowed a historic number of patents in the past few weeks/months, I can honestly say that I’ve not contributed to the flood. Put simply, it’s easier for me to write a POS rejection and go for the RCE or an appeal that will (eventually) go to the BPAI than it is for me to allow a case.

    It’s unfortunate, but I’d be willing to bet a pretty good number of junior examiners are at least similarly handcuffed. To make a long answer short, I’d say that RCEs are sometimes caused by mismanagement on the part of supervisors. Not all junior examiners are afraid to allow; many just aren’t allowed to do so.

  120. 113

    Hobbes,

    Don’t be a Dufas – in the US (which I am talking about – just to be clear if you are a Blimey), the initial applicant is the inventor (by law). After filing, (by law) the inventor can assign (sell) his rights and the one buying the rights becomes the applicant. The applicant is the correct term, because the applicant always has the rights – whether or not the applicant is the inventor or not.

  121. 112

    RCE’s are an applicant’s legal right. The fact that they are viewed as “bad” indicate a latent anti-applicant stance.

    Correction, RCE’s are the INVENTOR’s legal right. And a constitutional right, at that.

  122. 111

    Kevin, you been reading my posts?

    Regardless, I agree with you that the answer is one more action on the merits because it takes a first action and a response to define what the invention is and the examiner must be allowed to conduct a search at that time.

    The compact prosecution system as it stands is totally FUBAR. At least RCEs allowed one more action on the merits and one more search. But if they are delayed for years, OMFG!!!!

    Kappos has come, he has seen and he has destroyed patent quality.

  123. 110

    “reasonable” examiner

    Obviously, some sort of mythical thing given that the examiner who postulates this also postulates:

    I don’t understand the reference.” in relation to “A quarter? I don’t think a million bucks will help out Boss12.”

  124. 109

    ping: “Great – idiocy to new depths – blame the attorney for not being able to figure out in advance just how clueless the random examiner is going to be.”

    You have that backwards.

    If a patent attorney cannot read a claim that she has written and determine whether a “reasonable” examiner would find the claim confusing, indefinite, etc., then the patent attorney is the clueless.

    FYI, based on my experience, there are plenty of clueless patent attorneys out there. I once had an interview with a patent attorney, who was prosecuting a case in the computer software art, that did not know what “parsing an electronic document” is.

    “A quarter? I don’t think a million bucks will help out Boss12.”

    I don’t understand the reference.

  125. 108

    Shouldn’t the patent attorney be able to read the claims and determine whether a patent examiner… If the answer to my question is “no,” then the patent attorney isn’t a very good attorney.

    Great – idiocy to new depths – blame the attorney for not being able to figure out in advance just how clueless the random examiner is going to be.

    A quarter? I don’t think a million bucks will help out Boss12.

  126. 107

    The Examiner ignoring the specification when interpreting the claims…which BTW includes the Figures…none of which disclose a loop as an “end”;

    Everyone knows that claims are not necessarily limited to the embodiments disclosed in the specification.

  127. 106

    “It should not take a lot of time for an Examiner to scan through the spec, drawing, and claims, and say “I don’t know what the h* you are talking about, this makes no sense – please give me a listing of claims with cited support for each element.” I would hope that most of us would not find it overly burdensome to meet such a requirement, on an application we have filed.

    Handling 112 as a preliminary matter would probably provide for better quality of 1st OAs.”

    I’ll tell you what else would work: patent attorneys who write better Specifications and better original claims.

    Shouldn’t the patent attorney be able to read the claims and determine whether a patent examiner would look at the claims and say, “I don’t know what the h* you are talking about, this makes no sense?”

    If the answer to my question is “no,” then the patent attorney isn’t a very good attorney.

  128. 105

    Kevin –
    Don’t get your hopes up. My dependent claims are almost always addressed. However, they are addressed in even a more slipshod manner thab the independents are addressed. That is, the text of the claim is pasted into the office action and an almost randomly selected paragraph number is included with the text as an assertion that that claim or claim element is taught by the reference.

  129. 104

    RCEs would plummet if the Office gave one additional Office Action for each case. The first action typically clears up misunderstandings, and a second action would often be the first action “on the merits” where the invention was understood by the examiner and the most pertinent art understood by the applicant.

    Having one more bite at the apple would put the parties in a position just as the Office says it wants, and would lead to allowance because it would be clear what the applicant was going to get. Continuation applications would take care of the rest, insofar as they were filed.

    Also, if the Office instituted a policy where the examiner enuniciated a reason why each dependent claim was unpatentable, then it would be more likely that patentable dependent claims would be identified more promptly. Again, this would lead to applicants taking narrower claims and filing additional applications to cover subject matter that they want but cannot get in the first application, perhaps amended to facilitate examination.

    Hope you are well.

  130. 103

    NOTE: I did not read any of the other comments.

    I use RCEs because the turnaround time is much better than the alternative of appealing. The Examiner gives a response to the RCE in a couple of months, but a decision by the Board takes years after the last Office Action.

    The law is changing as the appeal sits with the Board. For example, you file an appeal in 2005 that argues a lack of motivation to combine, then BOOM the Board uses KSR to moot everything summarily. You file an appeal in 2006 that argues a useful, concrete, tangible result, then BOOM the Board uses Bilski to moot everything summarily. What a waste of client money.

  131. 102

    In addition to my own observations, I would like to associate myself with the recent remarks of patently superior prosecutor.

  132. 101

    Bierbelly, I can’t comment on the reasonableness of the rejection against you but I will propose a solution to your problem. Simply tell the examiner to 112 you under Miyazaki as having the claim be amenable to two distinct interpretations, yours and his. Alternatively, have him 112 you as having not claimed what applicant regards as his invention and have him cite your argument as evidence. You amend or you fight the unreasonable interpretation itself at the board or in front of the spe. End of claim construction problem and end of story.

    Why doesn’t everyone know about how easy this claim construction bs is now with Miyazaki and the newly taken stance on arguments as they relate to 112? I mean seriously? It is soooooooooooooooooo much easier to fight claim construction as simple claim construction rather than whether or not the BRI was applied in an art rejection.

  133. 100

    100 plus posts on this topic show it to be a contentious one.

    A few observations:

    RCE’s are an applicant’s legal right. The fact that they are viewed as “bad” indicate a latent anti-applicant stance.

    The primary reason why an applicant chooses to use the RCE tool is that the applicant feels that she has not received an adequate examination on the merits. Period. There can be (and evidently has been – see above) lots of hurling vectives from both sides of the process. It Dont Matta. As long as the customer is not happy, the service provider will be on the hook.

    In order to try to be constructive, the service provider needs to ask better questions and be willing to listen. I don’t see that – I see defensive posturing and “it’s-actually-your-fault” rhetoric.

    Here’s a quarter. Buy a clue.

  134. 98

    IANAE, the ridiculous rejection has two-fold basis:

    The Examiner ignoring the specification when interpreting the claims…which BTW includes the Figures…none of which disclose a loop as an “end”; and

    The Examiner interpreting the prior art references under BRI, rather than within the four corners of the documents themselves.

    Until this crap stops, there will be multiple RCEs for every case that reaches such an examiner.

  135. 97

    Examiner has returned with another ridiculous prior art interpretation. So it goes…

    Surprise, surprise. The seemingly ridiculous rejection is the symptom, and you haven’t fixed the actual problem.

    I’m not part of the problem, because I’m not the one who drafted your claim.

  136. 96

    “I wouldn’t go as far as to say it’s unreasonable for the word “end” to mean a greatest lateral extent in some direction, whether or not it would be an actual extremity of the rope if the rope were laid flat and straight.”
    ———————-
    Then you’re part of the problem, not part of the solution. BTW, after multiple back and forth, and at least one RCE, an interview with the Examiner and an SPE resulted in the Examiner having to withdraw the reference. I didn’t even get time to argue at the interview.

    Examiner has returned with another ridiculous prior art interpretation. So it goes…

  137. 95

    I don’t know why you guys aren’t filing petitions to withdraw finality, if you’re really getting a rejection after amending an independent claim to incorporate a dependent claim limitation.

    My experience has been that a well-written petition to withdraw finality works, and that the reviewers of the petitions are doing their job correctly.

    If you succeed, you get your final action converted to a nonfinal, and a second chance to amend your claims w/o going through the RCE process.

  138. 93

    IANAE, your advice is well taken to avoid RCEs.

    Just a thought: In order to avoid really bad misconstructions, it might be advisable to file a preliminary paper where the claims are annotated to cross reference to definitions and/or to references numerals in figures.

    But other than this, the examiner needs to read the claims the way they are written without limiting them in any way to the specification. The first response can then argue that the construction was clearly erroneous given the specification. Else, the applicant has to clarify the claims by amendment. But, in either case, the examiner really needs to conduct another search.

    What Kappos is doing wrong. He is ignoring the reality that compact prosecution does not work effectively when QUALITY is at issue.

  139. 92

    ignoring the fact that the interpreation has to be the broadest reasonable interpretation in view of the specification.

    So many drafters are so careful about making the specification a series of non-limiting examples only, with no explicit definitions or boundaries on what a term might mean. I’ve had the same conversation with examiners before, and sometimes they’re right – there’s a difference between giving examples of a term and giving a closed-form definition.

    If we’re so careful to leave what we say open-ended, we shouldn’t be too surprised to get a rejection based on an open-ended construction of the same terms.

  140. 91

    In addition to my earlier post, I wanted to add that I agree with earlier posters with regard to examiners’ giving claims absurdly unreasonable interpretations. Too many examiners state that they are giving claims their ‘broadest possible interpretation’ and ignoring the fact that the interpreation has to be the broadest reasonable interpretation in view of the specification.

  141. 90

    the examiner interpreted the loop of rope to be an “end”, under BRI.

    How did you deal with that?

    I wouldn’t go as far as to say it’s unreasonable for the word “end” to mean a greatest lateral extent in some direction, whether or not it would be an actual extremity of the rope if the rope were laid flat and straight.

    Sounds like one of those cases where you never even realized the word could mean that until the examiner brought it to your attention. Oh well, he got you. Time to define an “end”.

    assert rejections without informing the applicant that they are applying the broadest dopiest definition they can think of even though they probably know that no one in the art would adopt such a definition.

    That’s more or less PTO policy. They shouldn’t have to tell you every time that they’re doing it.

    If you really don’t understand how the examiner arrived at an interpretation of the claim that could be found in the prior art, phone him up and ask him. Sometimes it’s helpful for both you and the examiner to talk it through.

  142. 89

    For WindyCity:
    Try submitting only your picture claims, and holding your broader claims for a continuation. This will focus the examiner on the picture claim with no opportunity for a loss of focus. Also, it will give you some insights as to the art that is pertinent to the examiner, which might be better than the art you review while drafting the spec and claims.
    For Dennis Crouch, the original poster:
    Prosecution is not a negotiation, it is an education. For every invention, there is a line separating the patentable from the prior art, and the applicant has a right to claim up to that line. Negotiation makes it sound like it is appropriate to burden the applicant until he takes less than he is entitled to, or burden the examiner until he allows more than he should. Education makes it sound like a back and forth discussion intended to determine with some confidence where the line is and whether the claims fall on the right side of the line.

    On the topic of the number of RCE’s, I filed a typical RCE yesterday that was necessitated by the Examiner’s apparent gamesmanship. It seems to be a new fad amongst newer examiners to generate creative ambiguities around claim language, and assert rejections without informing the applicant that they are applying the broadest dopiest definition they can think of even though they probably know that no one in the art would adopt such a definition.
    In my experience, many RCE’s are necessitated by rejections that are poorly expressed, based on shielded ambiguities presented in a cat-and-mouse game, many of which could be addressed in a first response if only they were more fairly presented in the first office action. Occasionally I see that my claim language admitted some ambiguity, but more typically the ambiguity is manufactured by the examiner.
    SO, the PTO could reduce many of my RCE’s by training the examiners to (1) stop applying dopy definitions to claim terms or (2) tell the Applicant that they are applying dopy definitions so that they can be addressed in a response. I do my part by drafting claims as clearly as I can, accounting for the prior art I know of, and when this problem arises I do what I can to accommodate the Examiner, but a bit of training would reduce the number or RCE’s needed to get to the meat of the prosecution.

  143. 88

    You’d be amazed at what can be accomplished when everybody realizes they should be pulling in the same direction.

    No, I mean the story about when we claimed a device with a cord passing through it, wherein the first and second ends were engaged in a manner. The first and second ends of the cord exited corresponding (and opposite) first and second ends of the device.

    The Examiner found unrelated art wherein a loop of rope exited one end of a device and one end of the rope was fixed within the device, while the other exited/entered to form the loop. In order to meet the first/second end limitations, the examiner interpreted the loop of rope to be an “end”, under BRI.

  144. 87

    Ned,

    I completely agree with you on BRI, except that I would like the examiner to at least check the spec for definitions of claim terms before applying BRI.

    However, I don’t think this necessarily requires that there be two non-finals before a final. We’ve known for a long time now that the examiner uses BRI to understand the claims, and we should be drafting claims that are precise enough to mean what we intend them to mean.

  145. 86

    What is your explanation for the large number of RCE filings?

    RCEs need to be filed because examiners are learning on-the-job. An examiner’s inexperience should be factored into the number of office actions an applicant is entitled to before the examiner is allowed to issue a final office action. Too many new examiners are terrified of allowing a patent. You get bad rejections, bad art and bad supervision of the examiner.

    What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)

    Having SPEs do more than a mere perfunctory review of the office actions sent out from their art unit.

    Do some patent attorneys disagree with my notion that the amendment process is a negotiation?

    It depends on how rational or motivated the examiner you’re dealing with happens to be at that moment in time. If the examiner desparately needs a few counts, the examiner’s reasonability is way up. If the examiner is not reasonable, then it’s war…all out complete war.

  146. 85

    IANAE, the problem is not just the prior art. The problem is claim drafting. I think it is vitally important that the examiner search and reject in the first action without having read the specification. This way, he will flesh out claim language that is imprecise and that can be interpreted in more than one way.

    The whole point of BRI is to accomplish this. But, because there is no separate claim construction proceeding during ex parte prosecution, the only way the applicant can learn of the examiner’s read on the claims is through the first action rejections.

    We need to thoroughly understand this and to support it. BRI is vitally important and requires that the first action by the examiner be issued without reference to the specification. This requires, as a result, at least two actions and responses before a final.

    Kappos is moving in the wrong direction. His actions are only going to lessen the quality of patents by putting teeth into compact prosecution by deferring RCEs.

    Kappos, get a clue.

  147. 84

    6, I’m aware of that. You are the perfect examiner! Everybody else is crazy. LOL

    Some solutions to getting a meaningful FOAM:

    1. As an examiner, on more than one occasion, I called the attorney of record and asked “Just what is the invention here?” Most often, that helped a lot.

    2. On more than one occasion as an in-house attorney, I’ve called the Examiner and said “you know, your rejection isn’t exactly on the mark, but if you look at this portion of the reference, there’s a better rejection…which I’d rather have an opportunity to respond to, rather than wasting time and paper on your existing rejection”. However, now in private practice, I don’t believe I have that luxury.

  148. 83

    Yeah, let’s have a beer sometime and I’ll tell you the story of the three-ended rope.

    You’d be amazed at what can be accomplished when everybody realizes they should be pulling in the same direction.

  149. 82

    “6 PLEASE! Give me the better rejection on the FOAM, and not after the RCE, then we’ve got something to “negotiate”.”

    I’m talking about cases where I wasn’t the examiner who did the FOAM, I don’t have any control over the FOAM someone else sends you.

  150. 81

    “A final rejection is the examiner’s way of saying “give me the better claims in the original filing, and not after the RCE”.”
    _________________

    Yeah, let’s have a beer sometime and I’ll tell you the story of the three-ended rope.

  151. 80

    Most examiners are pretty good people from my experience. The biggest problems I have is when they don’t have the time and give me a sloppy ill-thought out rejection. I see this as an opportunity though to educate them and get an allowance.

  152. 78

    Give me the better rejection on the FOAM, and not after the RCE, then we’ve got something to “negotiate”.

    A final rejection is the examiner’s way of saying “give me the better claims in the original filing, and not after the RCE”.

  153. 77

    “Even when that happens I’m not sure that’s your best hope. What that has led applicants that I know of that this has happened to only got a better rejection. Of course, in the end it might turn out to not be so bad as they might eventually get a patent with me whereas they might not have with the other examiner. ”

    6 PLEASE! Give me the better rejection on the FOAM, and not after the RCE, then we’ve got something to “negotiate”.

  154. 76

    Sara Palin’s goofy antics when the news is slow.

    To be fair, now that she works for a “news” channel, they probably have to slow the news down quite a bit for her benefit.

  155. 75

    Sometimes I think these topics (RCE’s) are brought back just to raise the banter level in the midsummer quiet, not unlike the papers reporting on Sara Palin’s goofy antics when the news is slow.

  156. 74

    Often it seems that Examiners become defensive when you point out their mistakes, evoking images of them stomping their collective feet into the ground and refusing to budge.

    Applicants often exhibit the same behavior. It’s because they’re human.

    How you deliver the news is an important part of managing the other party’s reaction. Treat the examiner like someone who is obstructing your noble effort and is incapable of understanding the art, and you shouldn’t be surprised if he’s reluctant to come over to your side of the issue.

  157. 73

    The ill prepared examiner and the even more ill prepared “supervisor”, during the interview, agree to allow the application if some amendment is made. In the interest of compact prosecution, the applicant agrees to make the amendment.

    However, instead of the promised notice of allowance, the applicant receives an advisory action indicating that the amendment requires a new search.

    Does this actually happen? I’ve never had an examiner agree to allow a claim if an amendment is made other than rewriting a previously allowed claim in independent form. If I’m adding something new, they will scrupulously promise only that the amendment overcomes the outstanding rejection, and the new claim may require a further search.

    An examiner is within his right to change his mind about the allowability of a claim, but he should not promise allowability (nor should you rely on such a promise) for a claim limitation that has not yet been searched.

  158. 72

    “Often it seems that Examiners become defensive when you point out their mistakes, evoking images of them stomping their collective feet into the ground and refusing to budge.”

    That I can actually see happening with quite a few folks around hea, I see it in my day to day discussions about things with them.

    “Additionally, it seems that BRI is being applied not only to applicants’ claims, but to the prior art. You wouldn’t believe some of the nuggets that examiners seem to pull out of nowhere in the art by misinterpreting it, or even actually ignoring the teachings of the art. Point out these mistakes to them, and they not only stomp their feet, but hold their breath.”

    Be careful not to confuse incompetence and the power of suggestion with them being stubborn. I’m sure some of all of that happens, but either way, some is bound to.

    “Our best hope is often that one examiner will leave the office and another will pick up the prosecution during the interim.”

    Even when that happens I’m not sure that’s your best hope. What that has led applicants that I know of that this has happened to only got a better rejection. Of course, in the end it might turn out to not be so bad as they might eventually get a patent with me whereas they might not have with the other examiner.

  159. 71

    One reason practitioners would rather file an RCE than appeal is the increased burden and costs associated with preparing an appeal brief that complies with the regulation, not even to mention the time delay in getting a judgment from the board.

    Agreed, Mark, but you’re missing part of the point. They don’t get to the board. After a notice-of-appeal, more than a third of my cases are re-opened after the pre-appeal conference. Almost all of the rest are re-opened after I file an appeal brief.

    File an appeal brief every two or three weeks and you’ll get pretty good at the formalities. Besides, Kappos’ directive to stop the nit-picking over the formalities seems to be working…

  160. 70

    Ned: BRI — what I think this means in practice is that the examiners search and reject the first time without reading the specification. They take the words in the claim out of context of the specification and give them their ordinary meaning, which at times can be quite unexpected to the claim drafter. But this, IMHO, is exactly what they SHOULD do.

    But it’s not what the law says they should do. The “R” stands for “reasonable,” which the law limits to interpretation in the context of the specification. Not “ridiculous.” Certainly, if I use an ordinary word that has an alternate meaning that I didn’t consider, then I’ll amend. But if I’m using a term of art correctly, and the examiner willfully misinterprets it in a way that would never be done by the person of ordinary skill, I’m not likely to amend, precisely because it begs for a “this action was necessitated by your amendments and is thus made final” on the next response. Make it clear that you’re not going to play their game (they keep track of who is a sucker for RCEs), and make them find the relevant art first. Then I’ll amend, if necessary. Somewhat disturbingly, it’s not necessary very often. I’m neither that good nor particularly lucky, so that makes me think the best art is never being found.

  161. 69

    With further regard to the rush to finality and with regard to productivity quotas

    — Has no one at the PTO ever heard that haste makes waste?

  162. 68

    First point, prosecution, while arguably a “negotiation” is more often than not an argument between right or wrong–no inbetween. Often it seems that Examiners become defensive when you point out their mistakes, evoking images of them stomping their collective feet into the ground and refusing to budge.

    OK Examiners, how many of you, in truth, have stepped back from your rejections based on your new-found hammer, the BRI of the claims, and admitted that the BRI isn’t R?

    Additionally, it seems that BRI is being applied not only to applicants’ claims, but to the prior art. You wouldn’t believe some of the nuggets that examiners seem to pull out of nowhere in the art by misinterpreting it, or even actually ignoring the teachings of the art. Point out these mistakes to them, and they not only stomp their feet, but hold their breath.

    And you wonder why there are RCE’s. Our best hope is often that one examiner will leave the office and another will pick up the prosecution during the interim.

  163. 67

    Look at that, an almost thoughtful post by Les. Will wonders never cease?

    “It should be. But the rush to finality ties the applicants hands. What other negotiation is over in only 1 round? ”

    You can get more by talking on the phone…

  164. 66

    One reason practitioners would rather file an RCE than appeal is the increased burden and costs associated with preparing an appeal brief that complies with the regulation, not even to mention the time delay in getting a judgment from the board. Preparing a proper brief used to be comparitively easy, and simply a matter of presenting the applicant’s best case without all of the formalities introduced in recent years. The cost to the client was only slightly more than a response to an Office action and a judgment could be obtained in under two years. As things stand now, an RCE is easier, cheaper and in the end usually faster than an appeal.

  165. 65

    1. What is your explanation for the large number of RCE filings?

    The large number of RCE filings is due to the fact that initial searches are poor and the point system discourages correction and the following game is played.

    The initial search appears to be a mindless search for paragraphs that include the same words included in elements of claims. When such paragraphs are found, the examiner pastes the text of the claim into an office action form and parenthetically adds the paragraph number for the located paragraph, seemingly without reading the application or the cited document. Assertions are made that the cited paragraph teaches the claim or claim element or fraction of a claim element event though the paragraph teaches away from the claim element or is completely unrelated to the claim element.

    The applicant reads the cited document and cited paragraph and sees that the document is unrelated. Therefore the applicant makes no amendment and argues that the reference is unrelated.

    The examiner, if he or she reads the reply at all, is nevertheless reluctant to redo the search because there is no point rewarded for doing so. Therefore, the examiner writes a few pages of gibberish incoherently allegedly responding to a few of the arguments made in the applicants response and puts the gibberish under the heading Response to Arguments in a paper that repeats the previous rejections in a set of pages called a Final Office Action.

    The applicant is of course outraged and frustrated by the dealings with the mad hatter and calls and requests an interview. The ill prepared examiner and the even more ill prepared “supervisor”, during the interview, agree to allow the application if some amendment is made. In the interest of compact prosecution, the applicant agrees to make the amendment.

    However, instead of the promised notice of allowance, the applicant receives an advisory action indicating that the amendment requires a new search.

    After ranting about the injustice for an hour or so, the applicant considers the situation and since he has a verbal indication that the amendment removes the cited documents as an obstacle to patentability files an RCE to get the amendment entered instead of filing the appeal.

    The office then issues an new office action citing the same documents perhaps in combination with a new one.

    2. What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)

    Hire intelligent, professional examiners, allow them the time it takes to do a thoughtful job and fire those that are only producing paper that looks from a distance like an office action in order to game the system.

    3.Do some patent attorneys disagree with my notion that the amendment process is a negotiation?

    It should be. But the rush to finality ties the applicants hands. What other negotiation is over in only 1 round?

  166. 63

    – the notion of compact prosecution that created Rule 62s, CPAs, and now RCEs is based on dogma rooted in poor assumptions, fallacies, and incentives that don’t work.

    – it should just be replaced with pay-to-play prosecution, since that is what it has become.

    – I use RCEs precisely as CPAs and Rule 62s were used:

    1) to fill the understanding gap (technology is complex, Examiners are not skilled in the art by definition, sometimes have English as a second language, and are under very challenging time constraints). At least a third of initial rejections are irrelevant to the claimed invention; another third misinterpret the art or claim language.

    2) to work the applicant side of the ecosystem. Examiners have sufficient discretion to relatively arbitrarily use procedural chaff to reroute and reform their docket. Some do it often, others do it rarely. Either way, Applicants have to deal with the fact that using petitions and appeals to deal with procedural chaff thrown up by the Office is time consuming, expensive, risky, and can transform a matter into the adversarial. Take away RCEs, and it will just be full continuations.

  167. 62

    *** Primer on when an office action can be Final for those complaining about the initially cited art being inadequate for the original dependent claims ***

    After the 1st Office Action, subsequent Office Actions are final **unless** those actions contain a new ground of rejection that is neither necessitated by the applicant’s claim amendment, nor a late-filed IDS. See MPEP § 706.07(a).

    If all you do is incorporate a dependent claim verbatim into an independent claim and the examiner cites new art that wasn’t used to reject the dependent claim (and the new art isn’t from a late-filed IDS), they can’t go final and you don’t need an RCE.

  168. 61

    Anonymous at 11.54am makes a good point, 102(e) art explains why there are so many continuing apps. In the EPO, post-published stuff can’t be used in obviousness objections, so is relatively harmless when an Examiner cites it. But at the USPTO, an Examiner can build an obviousness attack on stuff that, at the time of filing, was a secret as between the earlier Applicant and the PTO. Ms/Mr Drafter, how can you reasonably be expected to cope with that?

    I just think it brings the patent system into disrepute, to throw out perfectly inventive claims on the basis of “prior art” that could not possibly have formed part of the stock of knowledge of a PHOSITA outside the USPTO.

    The novelty attack in Europe, by the way, ensures that, in a priority contest between parties who all invent and all file, the one who is first to the PTO with an enabling disclosure is the one who gets the patent, period.

  169. 60

    I can think of at least one situation RCE’s are required when prosecution could easily be completed without them. After a Final rejection, an agreement is reached on the allowance of at least one dependent claim (either through interview or in the OA). Applicant wants to take that allowed dependent claim by incorporating it into the independent claim, but does not want to cancel all of the other dependent claims (which, presumably do not conflict with the allowed claim). While the Examiner has indicated this new independent claim is allowable, the Examiner requires an RCE just to examine the potentially altered (narrowed) scope of dependent claims that have already been examined (they usually suggest it raises new issues). Most of the time an allowance results anyways. Maybe it’s just me, but it seems like a perfect example of USPTO waste/stupidity.

  170. 59

    It is a complete myth and, might I add, flatly wrong, that all issues can be adequately addressed and handled in the first action and response.

    I think anonymous is on the right track. You’d have a fighting chance of resolving those issues without an RCE if you were aware of the closest prior art before filing and you drafted the original claims with BRI in mind.

    If the client isn’t willing to pay for a good search before filing, he should be told that his decision may result in extra reject/respond cycles and RCE fees.

  171. 58

    I join the opinion of Marc. We need more than just one substantive response before a final. It is a complete myth and, might I add, flatly wrong, that all issues can be adequately addressed and handled in the first action and response. Management cannot and never will be able to change the realities of this simple fact.

  172. 57

    But, I submit that compact prosecution and the RCE create inefficiencies. Once you file it, both the applicant and examiner know that there are two more actions (in most cases) available. There is not as much incentive to reach agreement on the first action after the RCE — thus, the irony of compact prosecution leading to more resource utilization than perhaps would otherwise be necessary.

    I don’t think that’s what’s causing it.

    Applicants always know they can buy two more kicks at the can at any time, so they never feel the pressure to reach a quick agreement. Their incentives wouldn’t change if every first action after RCE was final.

    Examiners only have to reject the claims currently before them. That’s what the law says. You get a patent unless there’s a reason to reject the claims. If you didn’t put your backup plan in claim 2, the examiner can’t read your mind and opine on your amendment before it’s filed. He has no choice but to wait for your amendment, search the new claims if needed, and either reject them or not.

  173. 56

    1. Too often, Applicants don’t perform thorough prior art searches because there is no affirmative duty to do so, and by not incurring prior art searching expenses, they can afford to file additional applications for other inventions that they might not have otherwise been able to afford.

    2. Even if a search is performed, 102e art may not be found.

    3. Because prior art searches are often not performed or (if performed) miss 102e art that wasn’t published at the time, claims often fail to recite any feature that distinguishes over the prior art.

    4. Because of 3, claims are readily rejected with an initial reference that is inadequate with respect to all the claimable features in the patent application’s disclosure, but that is more than adequate for 102 purposes for the claims that were filed without a good knowledge of the prior art.

    5. When the applicant amends the claims to add additional claimable features, the examiner provides a new rejection (by finding a better reference and/or adding a secondary reference). The amendments necessitated the new rejection, so the action is final. The applicant must react to the new rejection and the only way to do so is via an RCE.

  174. 55

    do you not think that the erstwhile horribly inefficient EPO system of separating search and examination has turned out (thanks to the EPO’s BEST programme) to be a nice example of the working of the Law of Unintended Consequences?

    One other consequence of separating search from examination is that you need to make sure the search is complete the first time. That could be bad news for Americans who like to go rooting through the spec for barely-supported amendments that were not previously in the claims and have not been searched.

    I do, however, like to see ISRs, IPRPs, and EESRs before the actual “examination” starts. They contain no end of useful information.

  175. 54

    I like the idea of a preliminary non-art round at the examiner’s option to get the 101, 112, and procedural problems, if any, out of the way.

    You might want to send a note to the director. It has been discussed in the past.

  176. 52

    First, I agree with you: it is a negotiation process. WIth a really good examiner and well-crafted application, an applicant will, more often than not, end up with a great patent. With a difficult or bad examiner, who knows what you will end up with. Sometimes negotiations go quickly; sometimes they don’t. It’s not necessary someone’s fault when they don’t, and there is not anything you can do about it.

    To answer the other questions…

    The reason why we have so many RCEs is the “compact prosecution” system. OK, that might be an overstatement. But I think that it is fair to say that compact prosecution is an artificial construct that does not reflect the realities prosecution. Compact prosecution simply does not allow enough time for meaningful prosecution in many cases. The compact prosecution system effectively gives the applicant only one shot at addressing the issues raised by the examiner, and, for many cases, that’s simply not enough.

    The only meaningful statistic is the number of actions per disposal. That is what counts in terms of resource demands. Thus, I submit that the issues are, how many actions should we allow to do a good job, and how can we make the process efficient?

    There are a whole host of issues that affect efficiency: poorly drafted applications, bad searching, incompetent examiners (or poorly trained examiners); sometimes ludicrous claim interpretations given by examiners; not enough time given to examiners to do a decent job; spooked examiners; poor management practices at the PTO; the mentality of, when in doubt, reject; etc. Of course, these problems lead to more RCEs.

    But, I submit that compact prosecution and the RCE create inefficiencies. Once you file it, both the applicant and examiner know that there are two more actions (in most cases) available. There is not as much incentive to reach agreement on the first action after the RCE — thus, the irony of compact prosecution leading to more resource utilization than perhaps would otherwise be necessary.

    What is the right number of actions per disposal? It’s hard to say. It’s very common in other systems, most of which have no artificial limit on the number of actions, for there to be more than 2 or 3 office actions on substantive issues. Of course, this may be comparing pineapples to grapes, but I think it raises the issue of whether we are being realistic in expecting that every case should be disposed of in two office actions, with the applicant effectively having only one opportunity to raise the issues presented by the examiner.

    I am surprised that there are not a lot more RCEs. I believe that the only reason that there isn’t is because applicants in many of the cases — I’d call them “portfolio case” since they are filed primarily only to provide bulk to the portfolio — are willing to accept unduly limiting claims in exchange for limiting costs. Looking at it another way, what this statistic says to me is that a majority of patent applications are probably not valued highly.

    I understand that we have limited resources, but if you believe that patents are important, then we need to expend those resources. The number of actions that are necessary to arrive at an application of reasonable quality is what it is. (I don’t know what it is, but I am pretty sure that it is, on average, more than 2.) The issue is efficiency and whether the procedures and policies in the PTO are promoting efficiency.

    So, ultimately, I think that you should be asking about how to make examination more efficient. Of course, applicants need to prepare better applications, and clients may need to give them more time to do that. Examiners need to do better job at searching. The PTO needs to train examiners on how to interpret claims, etc. But, I also think that we should consider retooling current compact prosecution procedure.

  177. 51

    The examiner has certain obligations as spelled out in the MPEP, one is to restrict her rejections to the best art. The other is to insure that any reference cited in a 102 rejection discloses all of the claimed elements arranged as claimed.

    This has already been discussed in another thread. If you think you’re claiming a new and improved bicycle, but the BRI of your claim covers a prior art bicycle, any of a few thousand references are equally “best” for rejecting your claim, and any of them will disclose all of the claimed elements.

    In that situation, you can consider yourself lucky to have only gotten four of the ten-thousand possible rejections, because the examiner has been given limited time.

    The applicant should not have to pay the lawyer to wade through 4 or 5 or 6 102 references and explain to the examiner how she failed to make prima facie case because she neglected to allege for each reference that it discloses element A, B, or C — and then wade through the refernces and explain to the examiner which claimed elements each reference, in fact, does not disclose.

    That’s right, the applicant should not have to pay for that. Because that’s a waste of your time and the client’s money. You should not be fixating on technicalities of each individual rejection when the four rejections are screaming at you in unison (who says barbershop is dead?) that claim 1 is what requires your attention.

    The phrase “clearly anticipated” is also a clue, and tends to appear under similar circumstances.

    Finding the best art and applying it properly is the job of the examiner; not the applicant.

    Drafting an allowable claim is the job of the applicant. The examiner’s job is simply to point out to you when your job has not been done to his satisfaction.

    The second and subsequent 102 rejections are admissions that the others are inadequate.

    That attitude is the cause of so many of those RCEs. The examiner can’t possibly be right, right? More rejections means the rejections are less good, and it’s all the examiner’s fault. It’s just a flesh wound. File an RCE, and you can keep fighting.

    Your client may pay you to keep fighting, but what he really wants is for you to win.

  178. 50

    Babel, do you not think that the erstwhile horribly inefficient EPO system of separating search and examination has turned out (thanks to the EPO’s BEST programme) to be a nice example of the working of the Law of Unintended Consequences?

    You file at the EPO, with a search fee. For that, you get an “extended” search report that includes an “opinion” on patentability.

    You mull it over. You decide to pay for examination. You pay the EPO its fee for examination. Immediately, as the FAOM, you get a two-liner from the EPO computer which says “Go and look at the EESR and then reply within 4 months to all the points you find there”.

    Out of what was a grotesquely inefficient system comes one that beats the pants off any other, and quite by accident, not intention.

  179. 49

    If the issue is obviousness, I appeal. Further argument with the examiner is a waste of time.

    However I do have to file RCEs for the following reason: BRI — what I think this means in practice is that the examiners search and reject the first time without reading the specification. They take the words in the claim out of context of the specification and give them their ordinary meaning, which at times can be quite unexpected to the claim drafter. But this, IMHO, is exactly what they SHOULD do.

    The first reply, under these circumstances, clarifies the claims in some manner. But this then may require a second search to search the “real” invention. However, compact prosecution does not allow this. So either there is an RCE, or the claims are allowed without an adequate search.

    The above sequence of events is typical. What it suggests to me is that we need to allow two amendments by right before a final can be given.

  180. 47

    “If you get more than one 102 rejection on the same claim, chances are your claim is worthless (the BRI is well within the prior art) and needs to be amended. If you don’t actually fix the claim, you can and will get a final next time, with 102 or 103 as the examiner prefers.” IANAE

    You’re either missing or ignoring the point. The examiner has certain obligations as spelled out in the MPEP, one is to restrict her rejections to the best art. The other is to insure that any reference cited in a 102 rejection discloses all of the claimed elements arranged as claimed.

    The applicant should not have to pay the lawyer to wade through 4 or 5 or 6 102 references and explain to the examiner how she failed to make prima facie case because she neglected to allege for each reference that it discloses element A, B, or C — and then wade through the refernces and explain to the examiner which claimed elements each reference, in fact, does not disclose.

    Finding the best art and applying it properly is the job of the examiner; not the applicant. This is just lazy examination trying to put the burden on the applicant. Piling on with multiple 102 rejections is a way to game the system. The second and subsequent 102 rejections are admissions that the others are inadequate.

  181. 46

    “When an examiner reject claims based on new prior art, the office action should not be marked “final” because an applicant was not provided with an opportunity to consider the newly found prior art. Unfortunately, filing a RCE remains the only solution in such cases.”

    If the new art was necessitated by amendments to the claims not found in the dependents, then it is properly a final. Otherwise, it is improper and an examiner interview after final should clear it up, though results vary.

  182. 45

    When an examiner reject claims based on new prior art, the office action should not be marked “final” because an applicant was not provided with an opportunity to consider the newly found prior art.

    It’s the applicant’s second failed attempt to file a new allowable claim. That’s why it’s final.

    You’re lucky to get two searches before a final action. Did you know that poor, starving European patent agents have to make do with only one search and one amendment, and they can’t even ask for seconds? Now, eat your fees.

  183. 44

    When an examiner reject claims based on new prior art, the office action should not be marked “final” because an applicant was not provided with an opportunity to consider the newly found prior art. Unfortunately, filing a RCE remains the only solution in such cases.

  184. 43

    Boils down to :

    1. poor quality of examination
    2. poor quality of claim drafting
    3. incentive for forcing applicants to file RCEs.

  185. 42

    I like the idea of a preliminary non-art round at the examiner’s option to get the 101, 112, and procedural problems, if any, out of the way. If he/she thinks these problems are fatal and insurmountable, why do the search? This approach would have saved everybody a lot of time in the Bilski examination. Compact prosecution was some bureaucrat’s Bilski claim 1.

    I also like the EPO prelim search where they send you some references and politely invite you to comment. No rejections, no analysis of the references, just a shot over the bow. Ignore it at your own risk.

  186. 41

    The 1st OA lets me know right away how prosecution of a specific case will proceed. If the Examiner ignores the dependent claims, we’re probably in for a long ride. Ignoring the dependent claims undermines the “negotiation” of the process because the Examiner isn’t considering the proposed compromises of narrower subject matter.

    An approach which I use is to make one of the independent claims a picture claim right from the start. Examination of the picture claim may enable the Examiner to understand the claim limitations in the broader independent claims without delving into the specification in detail, which I fully understand the Examiner does not have time to do under the PTO’s quota rules. The approach works sometimes; the approach doesn’t work other times when the Examiner just copies and pastes his analysis for the broader claims into his rejection of the picture claim. I would be curious to hear other people’s thoughts on this approach if any are so kind.

  187. 40

    I am dealing with an exemplary case today where half the claims have been smacked with at least 4 102 rejections each. If one reference discloses each and every element arranged as claimed, there is no excuse or reason for a second 102 rejection.

    If you get more than one 102 rejection on the same claim, chances are your claim is worthless (the BRI is well within the prior art) and needs to be amended. If you don’t actually fix the claim, you can and will get a final next time, with 102 or 103 as the examiner prefers.

    Your response can be nice and cheap. Find the claim limitation that the examiner either ignored or interpreted more broadly than you expected, fix it, point out that the newly amended limitation is not in any of the references, and you’re done.

    The first 102 rejection only tells you that you’re not getting your patent yet. The second 102 rejection tells you that your claims need serious work. 20 pages of argument won’t fix the problem.

  188. 39

    Handling objections and 112 rejections in some sort of preliminary office action which doesn’t count against the “second time’s final” rule would also help a lot, too. That way, both the Applicant and the Examiner are sure the claims are clear and correct before the Examiner does his first art-based office action.

    Properly final rejections aren’t the examiner’s fault at all. If your claims were rejected for any reason and you had to amend them to add previously un-searched subject matter, the second rejection is your fault. You should have filed better claims the first time.

    If you overcome the examiner’s rejection of a previously-presented claim by argument alone, and he’s forced to present new art, that means the second rejection is the examiner’s fault, and it is not properly final.

    Almost like Europe, isn’t it? Except that in typically American fashion you can buy another go round.

  189. 38

    One problem that seems to be getting more severe is the examiner piling on with 102 rejections.

    There are multiple sections of the MPEP that require the examiner to use the best art,705, 706 etc., I am dealing with an exemplary case today where half the claims have been smacked with at least 4 102 rejections each. If one reference discloses each and every element arranged as claimed, there is no excuse or reason for a second 102 rejection. So my response is 20 pages long and my bill looks inflated to my client. Then the examiner will enter a final rejection in which she combines the 102 references into 103 rejections. Very common BS tactic.

    I virtually never file RCE. If I want examination re-opened, I file an appeal brief. In the long run it’s much cheaper and in every case the examiner withdraws all of the rejections and starts over rather than explain his/her position to the Board.

    Burkha is right. There is no system for complaining about examiner misconduct. There is only a system for complaining about practitioner misconduct. Remedy this asymmetry and the backlog will disappear overnight, a long with a bunch of douche examiners.

  190. 37

    The problem in my view is that Examiners make some pretty ridiculous interpretations of claims. I have clients who are amazed at the apparent stupidity of the rejections. I had a case recently that I wish I could tell you the details of, where the interpretation of the amendment language was so far removed from a reasonable interpretation that I and the other attorneys and the client were completely increduouls over it. But when I interviewed the Exmainer with the SPE present, they still did not back off of the rejection. I had to come up with another way of saying the same thing, and file an RCE. Maybe you think I should have appealed it, but the client wants to get some claims allowed and then file a Continuation to fight for the claim scope that is actually deserved. That seems to be the norm these days.

    Examiners benefit so much from the count system by forcing RCEs, so they can get more counts for examining the same case again and again, and then get even more easy examination counts on Continuation applications for claims they are already familiar with. I just think the count system should be done away with entirely, and applications should get assigned to a different Examiner once an RCE is filed. I know that’s less efficient, but the drop in the amount of churning ought to more than justify it.

  191. 36

    The best thing the USPTO can do to reduce the number of RCEs is not to declare a rejection “final” until the Examiner has settled on the art he’s citing, and the Applicant has had an opportunity to respond to that art.

    Ideally, the USPTO would establish a policy that it would not declare a rejection “final” until the Examiner can cite no new art which is better than the art already cited. Another way to put that would be to say that the “final” office action would be one in which the Examiner cites exactly the same art as he cited in the last office action, and the Applicant’s amendments and arguments in his response to the previous office action failed to overcome the art in the Examiner’s estimation. If the Applicant thinks that he can further narrow the claims beyond what he did the last time, and overcome the rejection that way, it’s fair to expect him to pay the RCE fee to get another chance to amend.

    Handling objections and 112 rejections in some sort of preliminary office action which doesn’t count against the “second time’s final” rule would also help a lot, too. That way, both the Applicant and the Examiner are sure the claims are clear and correct before the Examiner does his first art-based office action.

  192. 35

    IANAE,

    I have received plenty of rejections where the Examiner only gave cursory rejections to the dependent claims and have clearly ignored some limitations altogether.

  193. 34

    Funny, isn’t it. The EPO doesn’t do continuations. Worse, what the EPO does do is ration you to one shot at amendment after the FAOM. After that you can get your amendment in only if the Examining Division gives its “consent”.

    Nevertheless, the way I see it, my best chance of getting optimal claims to issue from the EPO is when I reply to the first Action on the merits. And the best chance I have of keeping the loyalty of my US corporate direct clients is to make my first response to the EPO Examiner so effective that the next communication from the Examining Division is a Notice of Allowance. First responses are expensive for my clients, but they are worth it, and the clients know it.

    Of course, all of this works because the EPO must do all its searching BEFORE it issues the FAOM.

    Of course, that only works because of the EPO’s strict regime on prosecution amendments.

    Of course, that in turn only works if the one who drafted for the Applicant did a competent job.

    Of course, that only works if the Applicant knows the art.

    But corporate Applicants generally do know the art very well indeed. They just need to brief their drafters properly.

  194. 32

    As far as as drafting dependent claims, I have to say that I have crafted some dependent claims without fully considering that they may be incorporated into the independent claims. When I rewrite the independent claim so that it reads as smoothly as possible the dependent limitation is not worded exactly as it was originally and I have ended up getting the Final. It does pay to draft dependent claims such that they can be dropped in “as is” with little to no modification.

  195. 31

    When I amend the claims I get a final office action that shouldn’t be final. The examiner should have searched not just the main claims, but for the dependent claims and what could reasonably be claimed from the specification.

    Are you saying that you get rejections that don’t give reasons for rejecting the dependent claims?

    Or are you saying you incorporate dependent claims into independent claims and then get a final action in response? If this is what’s happening, I agree with you that the finality is improper. I would hope that sort of thing could be resolved in a phone call that costs your client less money than an RCE. Plus, that money goes into your pocket instead of the PTO’s.

    But also, you could add some stock text in your responses when you make such amendments, to the effect that if the amendment overcomes the examiner’s rejection any new rejection should not be final because the examiner has already searched the new limitation in claim 1. Why not plan ahead and save your client those RCE fees?

  196. 30

    6>> It takes x amount of hours to even do the bare minimum that it would require to take care of ANY PORTION (maybe the claimed portion) of a case, currently y hours are given for the WHOLE case and in many instances x is greater than y. That is the biggest basis for your RCE “problem”.

    Exactly. The examiners don’t do the job they are supposed to do and as 6 points out this is probably due to not being given enough time to do their job. It is the aseembly line where the worker is supposed to put in two bolts, but only has time to put in one bolt. The American way.

    Fix all your problems: (1) Move to Richmond. (2) Provide twice the time for examiners for first action. (3) get the search much better so examiners can focus on becoming experts in smaller fields.

    Focus on those issues, Mr. Kappos and all the other problems will melt away. It would take a lot of guts to do this, but since Obamo is likely going to be re-elected you have now 6 years to show results. That is enuogh time to make this work. You would go down in history as a great director and would improve the quality of life for 10’s of thousands of people.

  197. 29

    >>1. Examiners ignoring dependent claims.

    I agree. When I amend the claims I get a final office action that shouldn’t be final. The examiner should have searched not just the main claims, but for the dependent claims and what could reasonably be claimed from the specification. The examiners do not do their job and when we make minor amendments we can either petition/call and complain to a SPE/ or take the easy way out and file an RCE (which is usually cheaper for the client anyway than fighting a bad final.)

  198. 28

    ” 1.
    What is your explanation for the large number of RCE filings?
    2.
    What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)
    3.
    Do some patent attorneys disagree with my notion that the amendment process is a negotiation? ”

    In addition to what boss12 said:

    1. There are many reasons for an RCE. First and foremost amongst them is that there simply isn’t enough time allotted up front to “examine” the whole specification as if it were all one big claim. Therefore, the claims are what are focused on in the examination and search. Then, later applicant comes in and says “o, lol, what my invention really is is something that was in the spec”. Then the examiner is like “o rly? Why didn’t you say so before?”. Then applicant says “cause I’m du mb lol”. Then the examiner says “lol” “file an RCE lol”. And then the applicant files an RCE then the new subject matter is searched, and the case progresses. Bottom line is, many cases today require about 2x the allotted time (or more) to actually “examine” the whole specification and so that is how long it eventually takes when the applicant doesn’t get lucky up front. It’s just reality coming back to bite you in the behind.

    But like I said, there are many reasons. I won’t go into detail about them all now.

    2. Simple, to address the biggest issues causing RCE’s they can increase the initial time alotted per case, or they can make the time “extendable” based on the specifics of the case.

    They can also do things to encourage finding some subject matter that is allowable and provide for an interview. They did this recently with providing an hour for an examiner initiated interview. If they provided even 1 hour strictly for trying to find allowable subject matter in the spec then they might see a decline. But that is a big “might” because as I’ve already told you, the applicant dictates when RCE’s come in. The only thing we can do at the office is try to implement things that might persuade the applicant to not dictate such shall happen.

    Additionally, they could just implement a rule that states that RCE’s will only be entered based upon sufficient showing that there was a good reason that the newly amended claims were not prevented before. But then, that would just make applicants file reams more claims up front. So maybe they could make a rule that an applicant could only have so many claims in it initially… I think you see where this is going lol.

    There’s more but I don’t have time for more free consulting.

    3. I’m sure there is at least one.

    I don’t understand what people don’t understand about the situation. It takes x amount of hours to even do the bare minimum that it would require to take care of ANY PORTION (maybe the claimed portion) of a case, currently y hours are given for the WHOLE case and in many instances x is greater than y. That is the biggest basis for your RCE “problem”.

  199. 27

    That is because, as I’ve told you guys many many many many many many many many times, the examiner can never ‘force’ an RCE, it is up the applicant and the applicant alone.

    For once, 6 is right. If the examiner doesn’t get it right, don’t amend, appeal. I’ve filed three RCE’s in the last two years, and one of them was simply to get late-arriving art considered in a case that was already allowed. I’ve also filed more than 20 notices of appeal in that time frame – exactly one of these cases has been docketed to the board. The rest yielded notices of allowance or new non-final actions.

    This strategy doesn’t cost the client that much more (if any) than the repeated RCE approach in the long run, and doesn’t result in unnecessary amendments to the claims.

  200. 26

    1. Examiners ignoring dependent claims.
    Examiners failing to understand when a final office action is proper (when an amendment makes it necessary)
    Bad dependent claim drafting by the patent attorney, which leads to amendments to the claims that were not originally present as dependents, which triggers final office actions.

    2. Not sure.

    3. Absolutely NOT a negotiation. It is advocacy before an impartial judge. At least in theory.

  201. 25

    I was a bit surprised to hear what you had to say about deps usually being what is amended into the ind. That isn’t true in my cases, quite the opposite actually. The vast majority of cases amend into stuff found in the spec. Then again, in a great many cases I reject all claims over art.

    Oh right, that’s another thing. A lot of dependent claims are not the type that meaningfully further define the invention over the prior art (e.g. “the device of claim 1, wherein said fastener is a screw”), or they’re narrow claims (e.g. picture claims) the applicant is not willing to settle for. More importantly, if the claims have already been presented and rejected, they may be no easier to get allowed than claim 1.

  202. 24

    I think one reason for some of my RCEs is that the client believes getting something narrow allowed sooner (i.e. through the examiner) is better than getting something broad allowed later (i.e. through the BPAI). Considering the backlog at the BPAI, this is not unreasonable.

  203. 23

    “While I agree that we should be able to correctly file an IDS.”

    Exactly. Don’t blame others for YOUR mistake.

  204. 22

    “In my experience, most of the RCEs I get are because the attorney fails to understand (or read) the references I’m using as well as the true breadth of the BRI of their claims, and then makes minimal or no amendments after the FAOM. In other words, the attorney pretty much wastes their first response because they don’t take my rejections seriously.”

    Bingo!

    “It takes two to cause these endless RCE’s. . . . the way I see it, unless there’s also some real mechanism in place to discourage applicant from filing RCE’s like forcing them to file appeals after 2 RCE’s or making subsequent RCE’s more and more expensive, not much is getting accomplished except encouragement of examiners to allow claims which could have easily been rejected over 35 USC 103.

    Bingo! In order to reduce RCEs, the USPTO must do something to discourage (force?!) applicants from filing them.

  205. 21

    In my experience, most of the RCEs I get are because the attorney fails to understand (or read) the references I’m using as well as the true breadth of the BRI of their claims, and then makes minimal or no amendments after the FAOM. In other words, the attorney pretty much wastes their first response because they don’t take my rejections seriously.

    There’s a lot of truth in that. Applicants are focused on doing the bare minimum to address the rejection, in no small part due to the fear of file wrapper estoppel. A lot of times, especially when a rejection is not well-articulated (whether due to being not well-founded or the examiner not having the time to do better), the bare minimum is close to nothing, and the negotiation is not advanced.

    There’s no compelling reason for a patent agent to do more than the minimum to advance the case toward allowance. He has no product to commercialize. He has no licensees or investors waiting to pay him money. He has no infringers stealing his customers. He doesn’t pay for RCEs. He books revenue for every office action response he files.

    On top of that, when he’s arguing at cross purposes with the examiner, and therefore not being persuasive, he can happily tell himself the examiner is a dullard for not being persuaded by his sound reasoning. Meanwhile, the examiner stands by his BRI and interpretation of the art that the applicant has not rebutted or amended around, and sooner or later a final action results in an RCE.

    A lot of it could be resolved with better communication, which mostly means more interviews, but also each side needs to understand the language the other is speaking. The real reason for the rejection quite often makes it into the office action, but sometimes it’s written between the lines.

    But in the end, there’s still no pressure on the applicant to make his claims allowable in two steps, because he can always buy two more steps with his client’s money.

  206. 20

    I was a bit surprised to hear what you had to say about deps usually being what is amended into the ind. That isn’t true in my cases, quite the opposite actually. The vast majority of cases amend into stuff found in the spec. Then again, in a great many cases I reject all claims over art.

    “The additional time delay of RCEs may be helpful in other cases such as when limitations that distinguish the invention from the prior art are buried in the specification. ”

    That would be the situation in my cases usually. Only, let’s say, 30-40% do you see them coming in with a dep moved up, and that’s including the cases where they’ll move a dep up and put something in from the spec as well.

    Indeed boss12, if billing were changed at law firms such that the up front costs were higher and then the firm had to foot the bill for RCE’s filed and take that the time to work on the case on themselves then you’d see RCE’s drop like a stone. Fact of the matter is, if these kind of concerns were first and foremost on the applicant’s mind then the market would sort it out. But, the market doesn’t because “right now” costs are what are on the applicant’s mind first and foremost.

  207. 19

    I generally agree with the comments above (the ones made from the practitioner’s perspective) and am happy to see that thus far the replies are generally thoughtful and not too inflammatory. I would add to the comments above that several times recently we have had to file RCEs just to have the Examiner consider references cited in another copending case or, much more annoyingly, to have the Examiner consider references that were already cited in an IDS but were crossed off for some reason, including not providing an “author” for an Office Action in a related case (which was identified by date of mailing and application serial number) and inadvertently omitting the year of publication of scientific papers. While I agree that we should be able to correctly file an IDS, these silly refusals to consider references for technical infractions are contributing significantly to our need to file RCEs. This, at least, should stop immediately, and Kappos could do it today with a wave of his magic wand if he so chose–so why doesn’t he? It would be very much appreciated.

  208. 18

    “What is your explanation for the large number of RCE filings?”

    My theory: A patent law firm is a “for-profit” business, and the longer a patent law firm can extend prosecution of a patent application, the more profit the patent law firm can generate.

  209. 16

    By the way, I don’t know that I agree that it is more difficult now than it has been in the past to reach agreement on allowable subject matter. For applications filed between 1978 and 1998, it took an average of 2 rejections per application before agreement was reached and a notice of allowance was issued. This is counting the rejections in any file wrapper continuations. For applications filed between 1998 and 2008 it has only taken an average of 1.5 rejections before agreement was reached. This is counting the rejections after any RCEs. (The data is based on a random sample of about 500 serial numbers.)

  210. 15

    “Despite this disincentive, RCE filings do not appear to have dropped in any significant way.”

    That is because, as I’ve told you guys many many many many many many many many times, the examiner can never “force” an RCE, it is up the applicant and the applicant alone. Every. Single. Time. And the modification to the count system doesn’t affect the applicant.

    What various people do not understand about this I cannot fathom. They seem to have constructed a religion around examiners somehow making an applicant file an RCE. It is an irrational faith, but nonetheless they cling to it. I suppose they cling to it as a justification for their own failings.

  211. 14

    I’m sure this thread will fill up with the usual bashing on examiners, but let’s not forget that applicants have a hand in this as well. Applicants who file broad claims over numerous disparate aspects of their invention make it difficult to focus examination on what will ultimately be the allowable feature. In other words, if claim 1 is broad aspect A, and claims 2-10 are broad A+B, A+C, …, A+J, where B-J are different and not necessarily related aspects of the invention, this is a fishing expedition, not a focused claim set. The examiner has to split his/her time across all of the aspects, not able to concentrate on what is ultimately going to be the allowable aspect. Typically what happens is the examiner finds art that blows most of the claims out of the water, and does 103s on the remaining claims. The applicant rolls up one of the 103’d claims and amends slightly to get around the rejection, the examiner searches again this time concentrating entirely on that particular aspect and finds additional art and makes a new 103. The attorney then whinges, “why wasn’t the best art found the first time?” The answer is of course because he was making the examiner chase a bunch of dead ends the first time. If you want focused examination, file focused claims.

    Also, there are very large corporations out there that file a lot of applications whose prosecution strategy is “file a bunch of broad claims, if anything gets objected to, take it, otherwise add a new limitation and repeat”. They don’t appear to care whether they burn through 3 RCEs, and with each amendment, the subject matter being examined is likely to take a different direction. Then there are companies that are aggressively pursuing the broadest possible claims they can get. They like to argue without amending, which a portion of the time does not advance prosecution (i.e. if its unpersuasive and they aren’t sure enough of their arguments to appeal).

    Sorry, it ain’t just examiners causing RCEs folks.

  212. 13

    The amendment process is a negotiation, but it is an inefficient form of negotiation. Typically a first office action simply says “no”, citing 102 and/or 103, and sometimes 112. It is inordinately rare that an examiner indicates, with any clarity, what s/he thinks is patentable. Frequently allowable subject matter (dependent claims, etc.) is simply glossed over, and it takes at least one subsequent round to come to agreement that there even is allowable subject matter, and then another round (by which time you are in RCE territory) to actually come to agreement on the specifics of the allowable claims.
    Thus the form of negotiation is for the applicant to say “I want this claim”, for the examiner to respond in the first office action “No, because of 102”, for the application to then respond with either argument or amendment, and to proceed as before until a definitive resolution is reached. It would be far more efficient in terms of the negotiation process if an examiner were required, in the first office action, to unambiguously identify what s/he perceives to be patentable subject matter. There are any number of reasons why this approach might be a bad idea, but it would certainly inform and expedite the negotiation process. As it is now, too often an applicant is responding to a rather Delphic oracle, an inherently inefficient process.

  213. 12

    1. What is your explanation for the large number of RCE filings?

    In my experience, the examiner is too quick to dispose of the application with a second OA being the Final OA. Perhaps the point count induces such quick disposal.

    2. What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)

    Change the point count that doesn’t benefit the examiner for disposing of the application with only two OAs.

    3. Do some patent attorneys disagree with my notion that the amendment process is a negotiation?

    No and yes. It is a negotiation process, but in many times, it is also a teaching process in which the applicant is placed into the position of teaching the examiner the field of the art.

  214. 11

    1.
    a. Empirically, about two thirds of the RCEs I have filed were driven by FAOMs that
    (1) failed to read the claims in light of the specification, but instead read the claims in light of the Examiner’s latest crossword puzzle;
    (2) failed to read the claims in light of the specification, but instead read the claims in light of the Examiner’s skill in the art; and/or
    (3) relied on the Examiner’s understanding of cited references, and the applicant’s description of advantages of preferred embodiments, in order to arrive at a slapped-together obviousness rejection.

    b. Unsurprisingly, I have noticed that I need to file far fewer RCEs when dealing with Primary Examiners, or with examiners who have a little seasoning. It’s the younger ones who want to prove how smart they aren’t, who generate almost all of the two-thirds RCEs mentioned above.

    c. Almost all the other one third of RCEs arise from applicants who are not persuaded, within two Office Actions, that the prior art does in fact teach all recitations of the independent claim.

    d. Admittedly, a small fraction of RCEs stem from my own efforts to obtain the broadest conceivable scope in view of how I understand the known art – and the Examiner’s insistence on moderately narrower scope, and a more generous reading of the art. Sometimes my efforts succeed, so it is a bit of lottery for the clients.

    2 (and 3). PTO already encourages e-mail. Many of us practitioners are uncomfortable with putting a lot of negotiation in writing. Concessions and hypotheticals just feel better viva voce. However, there would be much merit to putting 112 _objections_ as well as 112 rejections in a preliminary Requirement, similar to Requirements for Restriction / Election.

    It should not take a lot of time for an Examiner to scan through the spec, drawing, and claims, and say “I don’t know what the h* you are talking about, this makes no sense – please give me a listing of claims with cited support for each element.” I would hope that most of us would not find it overly burdensome to meet such a requirement, on an application we have filed.

    Handling 112 as a preliminary matter would probably provide for better quality of 1st OAs.

  215. 10

    I’m with shingle. The FAOM doesn’t present the best art. I argue the broad claims and get a final with new art. Sometimes better art sometimes not. Voila an RCE. A second thing I see a fair amount of is a non statutory and unspoken “the claims are too broad/short, not in light of the art but on general principles (ie in their brief review the Primary says “reject”). Also during interviews and with proposed examiners amendments I see suggestions that don’t in my view distinguish the art, but instead just add vebiage to the claims sometimes harmless enough sometimes not.

    With the advent of KSR obviousness is even more squishy so I find it important to interview the examiner early and find out if there’s an unstated “these claims are awful broad” that I can address with relatively harmless amendments and not get into an argue/reject do-loop.

    I share some blame probably for presenting aggressively broad claims and failing to see the nuances of Examiners’ BRI.

    The bottom line, imo, is inexperienced examiners and poor searching combined with the QC system that penalizes allowance but not silly rejection.

  216. 9

    1. What is your explanation for the large number of RCE filings?

    The current RCE rate is a function of how effective communication is between applicants and examiners. The dominant form of communication between applicants and examiners is written office actions and responses exchanged on a 3 to 6 month basis. These are well considered, but are too infrequent to be effective interchanges.

    A secondary form of communication is the interview, where communication is on a real time basis. This is fast enough for effective interchanges, but does not allow enough time for well considered opinions to be formed.

    The net effect is difficulty in reaching agreement on allowable subject matter and hence a high RCE rate.

    2. What can the PTO do to help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)

    Encourage the use of electronic written communication, such as email, wikis, etc. so that applicants and examiners can communicate quickly enough to have interchanges, but slowly enough so that well considered opinions can be formed.

    Also allow incremental, or “petit” office actions that consider rejections incrementally.

    For example, there is no point in an examiner doing a novelty or obviousness analysis if a claim isn’t clear. Half of all first office actions, however, present both a 112 2nd paragraph rejection AND a 102/103 rejection.

    It would be much more efficient if the 112 2nd paragraph issues could be resolved prior to a 102/103 analysis. This could be done using email or wiki exchanges. Once the issues were resolved, the applicant would then formally submit a preliminary amendment, and the examiner’s subsequent 102/103 analysis would be directed to the invention the applicant intended to claim.

    3. Do some patent attorneys disagree with my notion that the amendment process is a negotiation?

    I agree it is a negotiation.

  217. 8

    A key problem is the continuing nebulous application of the obviousness standard. As a prosecuting attorney, the majority of rejections I receive are based on sometime strained combinations of elements found in different references, while the inventor (the true person skilled in the art) believes that such combination makes no sense and the only explanation to combine from the examiner is “to make a better product” (who wants to make a worse product? Can you spell hindsight?).

    I have a lot of international clients who seem be able to get patents elsewhere in the world while the USPTO finds that they are all obvious … so the clients say, try explaining our reasons to the examiner again because this rejection makes no sense. I often provide copy of the allowances from the EPO and the JPO as persuasive documents, but they are regularly shrugged off by our examiners who still insist everything is obvious.

  218. 7

    I could avoid at least 1 RCE in every case if the FAOM presented the best prior art. That is, art that matches both the claims and the specification. Instead, art in the FAOM is typically used to demonstrate how broadly the Examiner can interpret the claims (and ignore dependent claims). A clarifying amendment to limit a claim term to how it is used in the specification (often from a dependent claim) results in a Final OA with all new and much better art that should have been presented the first time. RCE.

  219. 6

    Posted by: someguy | Jun 30, 2010 at 08:25 AM

    “[M]any of these RCE’s are filed because many examiners are incompetent and…applicant should be more vocal about getting them removed.”

    Exactly how does an applicant “[get] them removed?” To the best of my knowledge, the USPTO has no formal grievance mechanism.

  220. 5

    It takes two to cause these endless RCE’s. The count system has been modified to discourage examiners from working on RCE–theoretically by encouraging examiners to find allowable subject matter to suggest to applicant. However, the way I see it, unless there’s also some real mechanism in place to discourage applicant from filing RCE’s like forcing them to file appeals after 2 RCE’s or making subsequent RCE’s more and more expensive, not much is getting accomplished except encouragement of examiners to allow claims which could have easily been rejected over 35 USC 103.

    I’ve had several cases where the attorney failed to overcome the art already of record round after round and in some of these cases I tell them straight out during the interviews that they should go to appeal if they think they have allowable subject matter and very few attorneys ever appeal after I tell them this. There is nothing allowable that I can find in these cases or else I would have suggested it, so there’s nothing can do except work on them as long as applicant decides to continue prosecution. It’s extremely frustrating to be working on a case I honestly believe should be abandoned and rejecting using the same art I used last time over and over and over again.

    That said, many of these RCE’s are filed because many examiners are incompetent and should be fired and applicant should be more vocal about getting them removed.

  221. 4

    In my experience, most of the RCEs I get are because the attorney fails to understand (or read) the references I’m using as well as the true breadth of the BRI of their claims, and then makes minimal or no amendments after the FAOM. In other words, the attorney pretty much wastes their first response because they don’t take my rejections seriously.

    An interview after FAOM in a lot of these cases would help, especially where I’m relying on BRI to make the rejection, because we could discuss what parts of the invention need to be further defined in the claims to distinguish over the prior art. Unfortunately, the vast majority of my interviews are after-final, which means that they’ve already resigned themselves to filing an RCE before they even pick up the phone.

  222. 3

    Do the job right the first time.

    However, my sense is that the high RCE numbers persist because initial office action rejections regularly fail to directly address the claimed invention

    Even the good professor is bagging on the examiners now – Can the problem be more obvious?

    A paradoxal observation: Giving the examiners more time up front (but holding them more accountable up front) will resolve the RCE aspect, but will not resolve the backlog aspect.

    The backlog exists because people want to use the system.

    The US is the Gold Standard of the World and even with all the balley-hoo and criticism, people want patents. Instead of focusing on ways to say “No” and trying to find more ways to turn away customers, the Office needs to expand its capabilities of service to its growing customer base.

  223. 2

    If the point system were such that examiner would get two extra points if the application is issued or abandoned before an RCE is filed, the examiner would now have the incentive to suggest claims that s/he would allow. This also would isolate greedy/delusional(thinking s/he may get even broader claims) or calculating (trying to prolong prosecution) applicants.

  224. 1

    My view as a patent lawyer is colored by case law and the CAFC. That being said I would say there is an (certainly imperfect) analogy between the way I respond to Examiners and the way a defense attorney defends his client.

    It is up to the State to prove a defendant is guilty. The prosecutor presents his case and the defense attorney primarily pokes holes in that case when defending his client.

    In my view, it is up to the Examiner to find and assert the best art against the claims in the application. My job is to do the minimum possible through amendment and/or argument to overcome those rejections. Therefore, it is up to the Examiner to establish the best rejection he can up front.

    One place where I believe the USPTO fails is in asserting adequate rejections against the dependent claims. If I can simply amend the independent claims to incorporate material from one or more dependent claims to create claims that overcome all the rejections, then the Examiner did not do his/her job.

    In the situation where I add material from the application to the claims that is not already in other claims, then I believe it is likely that an RCE will need to be filed as the Examiner would not have addressed that yet.

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