In its most recent annual report, the USPTO indicated that 560,000 non-provisional utility patent applications were filed during the fiscal year. (FY2013). The report fails to mention that 30% of those “new” filings were not actually new, but rather were merely Requests for Continued Examination (RCEs) filed by applicants in already pending cases. For many patent applicants, RCEs have become an expected element of the prosecution process in order to provide for a third-round of communication with the examiner.
Over the years, the USPTO has vacillated on its view of applicant Requests for Continued Examination (RCEs). In 2009, the office began a program to delay further consideration of RCE’d applications. That action resulted the rapid growth of a backlog of RCE filings awaiting examination. The USPTO is now addressing that backlog and appears to have it largely under control.
As part of its program to reduce RCE filing, the USPTO is pushing several of its initiatives including Quick Path Information Disclosure Statement (QPIDS) and After Final Consideration Pilot (AFCP 2.0).
From: link to popa.org :
“The Task Force has been working hard for several months trying to hammer out an agreement on changes and we are continuing to work towards that end to insure that the Pendency Award will continue to be available to the Corps. The Task Force has, unfortunately, encountered several difficult issues that have not as yet leant themselves to readily apparent and reasonable solutions.”
What are these “several difficult issues?”
I’m pretty sure that is old news and the issue has been resolved but iirc it was the procedures for handling specific types of cases (printer rushes, stuff that’s been reviewed but not yet sent out etc. etc.). Most at issue was how long we’d have to get those things done and the impacts on workflow iirc.
Basically mgmt was just pissed that there were so many of these kinds of cases laying around not finished when they’re supposed to be of the utmost priority to finish and send out.
Thanks 6 – the lack of “readily apparent and reasonable solutions” sounds to be much more serious than the minor issues you responded with.
Either the POPA like the sky-is-falling approach, or there are even more serious issues lurking.
It’s all just drama for someone outside like you. Though yes, the number of unfinished cases of those sorts somehow blew the frak up under the new workflow procedure. I don’t have any issues myself, but I guess others are being more laid back about getting them out.
“It’s all just drama for someone outside like you.”
(sigh)
You are doing that charging at the red cape of “anon said” thing again.
See link to en.wikipedia.org
Anon says:
“Either the POPA like the sky-is-falling approach”
I confirm that he’s right by noting:
“It’s all just drama for someone outside like you. ”
Anon responds with a psy chopathism that loosely translated means that I was attacking him for no reason other than whatever was said was said by him.
True to psy chopathic form there anon. No empathy, followed by a psy chopathism.
LOL – there you go again, projecting your own actions…
(note, the manner of your “confirming” was less than forthright)
Further, it is you lack of empathy that is on display here.
Your gamesmanship is,um, well, obvious.
There is literally nothing that can be done at the PTO to make the People Who Never Stop Complaining About the PTO happy. That’s because the point of the complaining is not to encourage the PTO to more rigorously examine patents — that’s the last thing these people want! — but to encourage the PTO to grant more patents more quickly, period — especially if those patents are computer-implemented j nk because, hey, those are the most important patents that ever existed. If the People Who Never Stop Complaining About the PTO can find a way to make the PTO squirm and lose focus on what it’s supposed to be doing (rigorously examining patents on behalf of the public it exists to serve), rest assured that the PWNSCATP will pour their energy into that endeavor.
All that matters to these people is More Patents, All the Time, Easier to Enforce. Once you accept this, then their strange and often contradictory statements are readily explainable.
“That’s because the point of the complaining is not to encourage the PTO to more rigorously examine patents — that’s the last thing these people want! ”
Pure horsehockey.
That’s because the point of the complaining is not to encourage the PTO to more rigorously examine patents — that’s the last thing these people want!
You’ve been told time and time again by “pro patent” people that they want BETTER examination. However, you still throw out this BS. It is bad enough that you are a troll, but being a blatant liar puts you even a step lower than a troll.
Just because we abhor USPTO’s deck chair shifting maneuvers regarding the backlog does not mean we want less rigorous examinations. On the contrary, we want the BEST prior art cited as soon as possible during examination. It makes more quicker (and cheaper) examination for our clients and results in better patents that can greater withstand validity attacks down the road.
BTW — the person on this blog that criticizes the USPTO the most is YOU. Perhaps you need to look into the mirror — a scary thought, I know.
He does not care about those facts – they just get in the way of his rants.
they just get in the way of his rants.
So true … Malcolm Mooney has a mission and the facts be damned.
we want the BEST prior art cited as soon as possible during examination.
Then tell everyone what the BEST prior art is and explain in plain English
(i) if your invention is a machine, what were the failings of the prior art and what objective structural changes have you made to your machine which improves upon the prior art;
(ii) if your invention is a process, what are the new steps which effect physical changes to the material being acted upon.
Otherwise it can be nearly impossible to be sure whether the “best” prior art that the Examiner picks is the “best” prior art that you (or anyone else) would have picked.
Tell everyone: what’s the “best” prior art for a claim to a computer implemented method for determining available space for 1/8th diameter cans of peas on shelves wherein said shelves are 12.5 x 12.9 inches long, and wherein said shelves are capable of holding no more than 40,000 of said cans and wherein the shelves also hold 5000 public domain movies on compact disc in standard jewel cases arranged as efficiently as possible.
Tell us what the “best” prior art is for that claim.
Such pretty straw.
Then tell everyone what the BEST prior art is and explain in plain English
“Best” is entirely subjective. Is the best a 103 reference that teaches all the limitations except for key limitations (to the extent that they can be identified)? Is the best a reference that discloses those key limitations but are missing teachings in other respects? What about a reference that is kind of close but it nonanalogous prior art?
Regardless, we have a burden under Rule 56 to disclose material prior art. What is “best” is up to the Examiner.
if your invention is a machine, what were the failings of the prior art and what objective structural changes have you made to your machine which improves upon the prior art
Sometimes known — and this information may be worth putting in. However, many inventions are made with little knowledge of the prior art and their failings.
if your invention is a process, what are the new steps which effect physical changes to the material being acted upon
Since I don’t deal in mental processes — not needed.
Otherwise it can be nearly impossible to be sure whether the “best” prior art that the Examiner picks is the “best” prior art that you (or anyone else) would have picked.
The Examiner makes the rejections — not the inventor. As such, the Examiner gets to choose what is the “best” prior art. Moreover, the Examiner’s job is finding the “best” prior art (in the relevant field) and making rejections — as such, the Examiner should be much better at it than applicant.
Tell everyone: what’s the “best” prior art for a claim to a computer implemented method for … .
Couldn’t resist throwing a straw man in there? You know I’m not going to answer that question, so why ask it?
Well… first you get a 112 rejection because 1/8 diameter is indefinate.
But, doing my best to give you a first action on the merits:
System and method for selecting and arranging products on a shelf
US 20030171979 A1
Abstract
An interface that integrates electronic item assortment information and electronic shelf management information allows for easy analysis of changes to shelf sets for products. Financial information is updated based upon changes to a schematic representation of products to be displayed on the shelf. A comparison by category may be performed and a baseline used for comparison of proposed modifications.
link to google.com
Except, Milly, represented information is something to act on.
Milly, Milly, Milly, ….
we want the BEST prior art cited as soon as possible during examination
You would agree that if you had narrowly tailored claims you would necessarily have to receive prior art that read on them or the claim would be allowed, right?
And MM’s statement not withstanding, you would agree that if there was disclosure as to which limitations you believed were different from the prior art, it would result in better art being cited, right?
I’m not suggesting you are required to do it, I’m just saying there are things you could do.
Can I ask you, in all honesty, why you don’t include one, as anon puts it, picture claim out of all your claims? How could one not cite art that reads on your invention if you’re claiming exactly that?
?? – how is my derision of picture claims even remotely related to the topic here?
Picture claims would reduce the need for RCEs
Jepson style, even more so, eh?
(and take a guess as to how often that style is used – and why that number has become de minimus)
You would agree that if you had narrowly tailored claims you would necessarily have to receive prior art that read on them or the claim would be allowed, right?
Ha … ha ha … giggle … snort … oops, I think I just spewed some coffee. That’s a good one.
You are assuming that the examiner was done properly in the first place … even as to those narrowly tailored claims. Hold on … I’m about to spew some coffee again.
You should quit your day job and become a comedian.
you would agree that if there was disclosure as to which limitations you believed were different from the prior art, it would result in better art being cited
Keep forgetting the statement from the Federal Statement that recognizes “virtually all [inventions] are combinations of old elements”?
I’m not suggesting you are required to do it, I’m just saying there are things you could do.
Put yourself in my shoes. Let’s say I think (or my inventor thinks) that a particular limitation (A connected to B) is within the prior art. However, as it turns out we were wrong. Do you think I want to put a statement on the record that A connected to B is old when it might not be true? Making a mistake that costs your client patent scope or even a patent itself is something no patent attorney wants to do.
Can I ask you, in all honesty, why you don’t include one, as anon puts it, picture claim out of all your claims? How could one not cite art that reads on your invention if you’re claiming exactly that?
There was a time when I might do that. However, most clients don’t have an unlimited budget, and such, they aren’t go to be paying a lot of money for additional claims. Frankly, I am loathe to include limitations comparable to “wherein the operating system is Windows.” I find those types of limitations (i.e., limitations that are easily deemed obvious) to be far from helpful during prosecution. However, I see that type of stuff all the time. I prefer meaningful dependent claims, but some attorneys are just lazy and/or there isn’t much to the invention beyond what is found in the independent claims. Writing good claims, however, isn’t something the USPTO can require.
While picture claims might get you all the prior art, you can accomplish the same thing by including meaningful limitations in a multitude of different dependent claims.
“While picture claims might get you all the prior art, you can accomplish the same thing by including meaningful limitations in a multitude of different dependent claims.”
In other words you already know how to get the “best prior art” that you supposedly want.
While on the other hand MM wants more rigorous examination.
LOL – you really don’t get the conversation, do you?
In other words you already know how to get the “best prior art” that you supposedly want.
The fact that I know how to get the best prior art doesn’t mean that the Examiner will deliver it. Instead, what I frequently get is the reference(s) used to reject the independent claim that are (even more) misconstrued to arrive at the narrower limitations.
Dependent claims are easily where the worst examination is found.
“The fact that I know how to get the best prior art doesn’t mean that the Examiner will deliver it”
Doesn’t sound like you know how to truly get it then if the examiner may not deliver it.
“Instead, what I frequently get is the reference(s) used to reject the independent claim that are (even more) misconstrued to arrive at the narrower limitations.”
Yes I’m familiar with that. That doesn’t seem to have anything to do with the best references having been delivered though.
“Dependent claims are easily where the worst examination is found.”
Of course! And for good reason!
“Let’s say I think (or my inventor thinks) that a particular limitation (A connected to B) is within the prior art. However, as it turns out we were wrong. ”
Oh no, I admire your persistence in trying to educate examiners 6, Mooney, and Random, but trust me, you’re wasting your time. All examiners believe, sincerely, that all applicants are aware of “knock out, killer, 102 prior art” and are desperately trying to conceal it from the examiner. They have been brainwashed at the PTO into believing that. No matter how many times you explain that applicants’ knowledge of the prior art is imperfect and incomplete they are not going to believe it. They think that because they do nothing but read patents all day, that’s what applicants do. They remain willfully and triumphantly ignorant on this issue.
And they actually believe that because they’ve read lots of applications, that they know how to write one. You’re never going to cure them of that self-delusion.
Yes and you see the examiners and the anti’s trying to shift the burden of knowing the prior art from the examiner (PTO) to the applicant.
Basically, it is the federal government that tries to do as little as possible and charge as much as possible. And the antis realizing that shifting the burden makes patent more expensive.
“They have been brainwashed at the PTO into believing that.”
Actually that’s just what explanation naturally presents itself as the first logical explanation for what occurs here upon being dumped into this nonsensical protectionist environment from our otherwise strictly capitalistic society.
No “brainwashing” is required.
“No matter how many times you explain that applicants’ knowledge of the prior art is imperfect and incomplete they are not going to believe it. ”
I actually do. For at least the last 5 years I’ve been consistently surprised that the applicants were smart enough, or knew enough, to come up with the invention at all.
“They remain willfully and triumphantly ignorant on this issue.”
O give it a rest.
“nonsensical protectionist environment”
You really do not get why you have your job, do you?
“Actually that’s just what explanation naturally presents itself as the first logical explanation for what occurs here upon being dumped into this nonsensical protectionist environment from our otherwise strictly capitalistic society.”
Lordy but your writing is f#cking awful.
“You really do not get why you have your job, do you?”
Sure I do. As I’ve told you many times, I’m a homeless man on the side of I-95 because of the entitlement program established under 35 U.S.C 102.
You must have missed the day they discussed Quid Pro Quo (which shoots your “entitlement program” thingie down.
I see that you are confused because of the presence of a single word. You might want to note context.
“However, most clients don’t have an unlimited budget,…”
Another thing which examiners will never understand.
“… and such, they aren’t go to be paying a lot of money for additional claims.”
Presenting more than 20 claims is a waste of the client’s money. The PTO has been charging extra claim fees on the claim that “extra claims require extra resources” but has never provided applicants, or examiners, the “extra resources” (i.e. more time) to examine those extra claims. Extra claim fees are a complete and total rip off.
If you are filing more than 20 claims in an application. Stop it. Right now. I mean immediately. You are doing your client(s), and the examiner(s), a disservice. If you really need more than 20 claims, file a second application.
Definitely. Shadow director Lee is busy explaining about first mover and why we don’t need patents. She doesn’t have time for these sorts of things.
Put yourself in my shoes. Let’s say I think (or my inventor thinks) that a particular limitation (A connected to B) is within the prior art. However, as it turns out we were wrong. Do you think I want to put a statement on the record that A connected to B is old when it might not be true? Making a mistake that costs your client patent scope or even a patent itself is something no patent attorney wants to do.
I certainly understand why you don’t do it. I’m just saying, that’s something you choose to do which results in you not getting as good of an examination. That’s fine by me.
I should point out though that you’d be upset if we essentially did the converse of that. If I went through your spec and wrote an enablement rejection on everything that wasn’t enabled by the spec itself (which it probably isn’t if your inventor thought it was well known), you’d have to come back with an affidavit or prior art showing that limitation was enabled by the state of the art prior to filing, since arguments of counsel cannot replace evidence where evidence is necessary (which would be this case, as the only evidence of record would be the spec). In other words, I could compel you to essentially make the admission in a lot of the cases anyway. But that also would not help examination.
I have had attorneys call me up and say they need to be shown an example of limitation X (which is never the standard I am held to, I only need show it would be obvious, not that it preexisted). That’s exceedingly helpful, because at least now I know what they think is important. Then I can at least say to them “I know you think X is important, I searched for X and I found this, if you think it’s worth appealing, appeal, otherwise abandon.” He doesn’t do that interview (where he makes it clear the case turns on being shown X) and my natural response is to simply argue back saying that I’m not required to show X pre-exists for it to be obvious.
“I should point out though that you’d be upset if we essentially did the converse of that. If I went through your spec and wrote an enablement rejection on everything that wasn’t enabled by the spec itself (which it probably isn’t if your inventor thought it was well known), you’d have to come back with an affidavit or prior art showing that limitation was enabled by the state of the art prior to filing, since arguments of counsel cannot replace evidence where evidence is necessary (which would be this case, as the only evidence of record would be the spec). In other words, I could compel you to essentially make the admission in a lot of the cases anyway.”
Lulz. You’re one of those examiners who thinks that writing “Claim 1 is rejected as non-enabled because it is unclear how A is connected to B” can meet your burden to establish by a preponderance the fact that the invention is not enabled. And that you’ve shifted the burden to applicant. Lordy if I had a nickel for every one of those non-enablement rejections I’ve shot down with a simple one sentence reply I’d be living on a beach in the Caribbean right now.
“I have had attorneys call me up and say they need to be shown an example of limitation X (which is never the standard I am held to, I only need show it would be obvious, not that it preexisted).”
Lulz and lulz upon more lulz. Oh no, is right, you should be a comedian.
It’s impossible to overstate how wrong this idea of yours is. Again, if I had a nickel for every rejection to the tune of, “Well, neither reference X nor reference Y shows A connected to B, but it would have been obvious…” that I’ve shot down with one sentence I would be flying my private jet straight off my Caribbean beach to my chalet in St. Moritz.
Keep the laughs coming, please.
sad thing is, random examiner keeps on thinking that he is absolutely right “on the law,” and keeps on pointing to some imaginary scoreboard that he thinks backs up his fantasies
He has the usual nonsensical examiner notion that simply typing it up in an OA makes it so, e.g. simply stating “it’s unclear how A is connected to B” makes a prima facie case of non-enablement. 6tard suffers most from this delusion of the examiners (6tard, Random and Mooney) who regularly post here. Random appears to be more intelligent than 6tard, but it’s clear he’s been spending too much time at the PTO’s Kool-Aid Cantina.
AAA JJ if you can’t manage to get paid a nickel for overcoming a rejection you’re woefully underpaid bro, you should go work at a burger stand.
My lord you are dumm.
Yes but he doesn’t know it so it fun interacting with him.
OK.
Show everyone an example of a patent that was granted this morning that you think shouldn’t have been granted and explain why you believe that.
That should be pretty easy for you if want more rigorous examination of patents. If you can’t do that, then why should we expect you to know the difference between what you are (supposedly) wishing for and what is happening right now?
It’s easy to pile on some j nk that’s already been piled on by a judge or nine. Maybe you could show everybody a computer-implemented patent that you think is ineligible under “current law” that has been granted and which hasn’t been declared ineligible yet by a court. Or some similarly pending claims at the PTO. Or are there none? A positive answer to the last question would represent a bold and impressive prediction which you should feel perfectly free to make, and make expressly.
zzzzzzzzzzzz
You missed the point below about the absurdity of focusing so closely on individual claims.
Oh wait, you did not miss that – you embrace that absurdity at every chance you get (but run at every chance when substantive law discussions break out).
Go figure.
“You missed the point below about the absurdity of focusing so closely on individual claims.”
Wait wait wait, it’s absurd to focus on individual claims? Jes us H chr ist! Why didn’t anyone tell me that when I started work?
I would very much like to hear, in your, or anyone else’s opinion, why this is absurd. All tomfoolery aside. For srs.
No M0R0N, in our discussions here – you, at the Office focusing on claims – that’s a different story (and one you should know well: Do your Fn job)
Sure, even “in our discussions here” how it is “absurd”? The validity of individual claims is quite important imo. Doubly so if you take a good healthy sampling of individual claims. Focusing on individual claims seems to me to be of the utmost importance in determining the quality of patents issuing forth.
So how is it “absurd to focus so closely on individual claims”? I’m genuinely interested to know. Again, for srs. And I’m willing to be persuaded on that subject.
Sure, even “in our discussions here” how it is “absurd”? The validity of individual claims is quite important imo. Doubly so if you take a good healthy sampling of individual claims. Focusing on individual claims seems to me to be of the utmost importance in determining the quality of patents issuing forth.
The platform is yours — go at it to your heart’s content.
(somehow Malcolm wants me to play the role of Examiner – as if that shows anything even remotely on point)
…and apparently 6 cannot tell the difference between a discussion of law and an examination.
(where do these people come from?)
Show everyone an example of a patent that was granted this morning that you think shouldn’t have been granted and explain why you believe that.
Here is a better one, why don’t you show us an example of a patent granted this morning that you believe should have been granted.
BTW — I won’t answer your question, because you are asking me to basically review the file history, review the prior art, and then identify how the USPTO got it wrong. Depending upon the claims/technology, I need about $5-10K to do that (but that is not going to get you much of a write-up). However, if you want to deposit that money in my Paypal account, I’ll consider it.
Come on. I was hoping to see some money in my Paypal account. At the very least, I was hoping to see what MM considered to be a worthwhile patent.
How long does a guy have to wait before MM finds a good patent?
“More Patents, All the Time, Easier to Enforce”
Cynical, but accurate.
But, what they do not realize that there really is a payoff when prosecution results in clear and clearly valid claims. The patent is respected, etc.
But if the patent examiner does not do his or her job, the enforceability of a patent is doubtful. All it does is buy the patent owner a lawsuit and/or an IPR.
Of course, there are some companies who could care less about whether a patent they receive is valid. All they want is a patent to add to the tremendous heap they already have for bragging rights and to make the pile more intimidating by increasing its size. Here the slogan should be
More Patents, All the Time.
there are some companies who could care less about whether a patent they receive is valid. All they want is a patent to add to the tremendous heap they already have for bragging rights and to make the pile more intimidating by increasing its size. Here the slogan should be
More Patents, All the Time.
Right.
There’s a really easy way to dredge the swamp, by the way.
“The patent is respected, etc”
How Fn naive.
“But if”
You kind of missed the point there Ned.
>All that matters to these people is More Patents, All the Time, Easier to >Enforce. Once you accept this, then their strange and often contradictory >statements are readily explainable.
Mor0n Milly (MM) you see here is a case where you acting like the religious zealots.
POPA’s leader speaketh:
As this news broke last week, POPA and management met daily to discuss the situation and the growing concerns over the continued misrepresentation of our employees and programs at the USPTO. I held interviews, or attempted to hold interviews with various media outlets including the Washington Post, GovExec.com and Fox Business News. During these interviews, I made clear that the anecdotal problems set forth in the leaked 32-page document, itself an internal, factually inaccurate, draft document not intended for public availability, were management issues, not telework issues. If you are interested in my comments, you can read last Wednesday’s Federal Diary at:
blah blah
Finally, I am scheduled to discuss this topic on Federal News Radio today at 5:08 PM.
POPA will try and keep you informed as these stories continue to develop.
POPA’s leader speaketh:
As this news broke last week, POPA and management met daily to discuss the situation and the growing concerns over the continued misrepresentation of our employees and programs at the USPTO. I held interviews, or attempted to hold interviews with various media outlets including the Washington Post, GovExec.com and Fox Business News. During these interviews, I made clear that the anecdotal problems set forth in the leaked 32-page document, itself an internal, factually inaccurate, draft document not intended for public availability, were management issues, not telework issues. If you are interested in my comments, you can read last Wednesday’s Federal Diary at:
link to washingtonpost.com
You can also read the GovExec.com interview at:
link to govexec.com.
Finally, I am scheduled to discuss this topic on Federal News Radio today at 5:08 PM.
POPA will try and keep you informed as these stories continue to develop.
First, it has been a farce long perpetrated by the US PTO when they first and continued to identify an RCE filed in a pending patent application following a final rejection as a filed new application. Only a government entity could do this with a straight face. New applications are only those for which a new number is assigned and is straight forward black and white standard.
Second, the above comments reflect both sides and in my opinion are not the norm. Generally, today for the patent application filing fee, you get 1) a restriction/species election requirement (not always, but very often); 2) a search of the elected claims and a first office action review, usually based on a compilation of a key word search and cut and paste to match the claim language and the use of standard cut and paste justification language; and 3) a final office action. Unless the final identified allowable claims if rewritten in independent form or only 112 rejections, any amendments to the claims are likely not be entered, and to get them entered, you must file and pay for an RCE. It is about 50/50 as to whether the examiner will actually review the Applicant’s response and analysis of the prior art especially when the key word search compilation looks sufficient. With the filing of the RCE, the examiner will enter the more substantive amendments and you get, in most cases, a first and second office action review with the second also being made final. Then a second RCE petition and fee or a petition for appeal.
From the applicant’s perspective, you pay so much and you only get so much examiner time. Far less than what they are having to pay their patent attorney.
From the PTO’s perspective, the amount of revenue for the search and examination only covers so much examiner time and expense (salary). The applicant wants more examiner time, they should have to pay additional, e.g., the RCE fee.
From the examiners perspective, with a final and then an RCE, they get extra clicks. Some obviously take advantage of this and just cut and past their last office action, and get the extra clicks without doing any additional work. The Applicant gets lucky when they have an examiner assigned that takes the RCE filing seriously and considers the RCE submitted claims in a new light. However, some only do this if significant amendments to the claims have been made to differentiate over that which the examiner cited in the prior office action. The examiners rarely admit or fully consider that their prior rejection was inaccurate or that their prior interpretation of the prior art reference was incorrect/wrong. Applicant’s arguments are helpful, but if they highlight the poor interpretation of the examiner of the prior art or the compilation of key words with generic “justification for combination” language, the examiner will rarely fully consider them, unless the Applicant files a petition for appeal and an appeal brief.
Applicants need a way to pay for and have a second examiner or supervisory review what the examiner has rejected when filing a special RCE that is short of having to file an appeal to the PTAB.
Applicants need a way to pay for and have a second examiner or supervisory review what the examiner has rejected when filing a special RCE that is short of having to file an appeal to the PTAB.
They have that already.
PABRFR only goes as deep as glaringly clear errors that a supervisor can see in a few minutes.
When the gibberish is hip deep and a you have to review the application and the cited documents to understand that what the examiner is asserting, they just ship you off to appeal and the associated expenses.
Additionally, you have to pay a notice of appeal fee to get PABRFR. That is unfair.
I probably don’t have any satisfactory solutions for you then. Reviewing examiner actions is pretty much what appeals are for.
Still, one other suggestion is to contact the examiner for an interview after first action instead of waiting until after final. At the very least, it shows that you’re taking the case seriously right out of the gate. In a lot of cases, the phone calls only start coming in after final, when the attorney is trying to avoid incurring an RCE fee, even though it would have been a lot more productive to have the same conversation a few months earlier.
You don’t know that the examiner is unreasonable or confused until you get a response (or lack thereof) to your counter argument. That “response” comes in a “Final Office Action”. That’s why the calls start then.
You don’t know that the examiner is unreasonable or confused until you get a response (or lack thereof) to your counter argument.
LOL. You can usually tell that the examiner is unreasonable or confused from the first action. Perhaps you don’t fully appreciate the extent of that unreasonableness/confusion until the Final…
Well, I like to give the benefit of the doubt. I assume the first action is based on the results of a computer word search and is merely a mechanical translation of the words search results into the format of an office action.
That is, I assume the first action is ridiculous because little or no thought went into it. The computer said paragraph 32 had a number of words in common with claim 4 so, here is claim 4 with a parenthetical reference to paragraph 32.
So, I explain, in my response that paragraph 32 is about someone that saw a race horses and claim 4 mentions a saw horse.
I assume that the rejection will be dropped when the examiner reads my remarks and understands his/the computers error.
When the rejection is maintained in a Final Office Action. That’s when I want to talk to an Ombusman that can smack the examiner and his supervisor.
I can tell from the first OA on the merits what type of examiner I’m dealing with. Some are lazy primaries churning out garbage and hoping for a ticket on the RCE gravy train from the get go. Usually I won’t even bother to interview those primaries. Some are timid newbie juniors who learn quickly that any OA that rejects all of the claims will get signed no matter how silly the rejections are. From those types of examiners I get lousy final rejections that include nothing but form paragraphs. From me they get pre-appeal brief requests for review.
From the good primaries, and from the juniors that are trying to do a good job, I’ll get OA’s that at least make sense, and include art that isn’t just plain ridiculous. I’ll interview those examiners and get a better understanding of their position by asking some questions and listening to their answers. If their position has merit, i.e. is one I wouldn’t be comfortable appealing, I’ll suggest some amendments and explain why I think they overcome the position/interpretation of the examiner. I’ll ask the examiner if they proposed change(s) would overcome the rejection, but don’t insist on an answer. I don’t ask if the proposed change would make the claim allowable. Only if it would overcome the current rejection.
Some examiners are helpful. Some are not. The ones who are helpful are even more helpful if they see that you are at least trying to understand their interpretation and propose a way over/around it. The ones who are not helpful will forever sit back and refuse to answer you in an interview and send you OA after OA of, “Nice try. But nope. Try again.” and will gladly let you file RCE after RCE ad infinitum while you try “to work with the examiner” or tell your client that “we don’t want to get on the examiner’s bad side.”
I don’t wast time, my client’s time, my time, or the examiner’s time, with that. I make a good faith effort to understand and address the examiner’s position/interpretation, and if I see cooperation will continue to engage the examiner (e.g. through the AFCP 2.0, which despite the comments below I’ve had good success with), but won’t hesitate to appeal if the rejections are improper.
If you can’t figure out what kind of examiner you’re dealing with after a FAOM, an interview, and a subsequent action, you’re doing something wrong. If you’re amending claims that are allowable as is, but are attempting to “work with” or “appease” the examiner in hopes of getting an allowance, you’re definitely doing something wrong. Stop it.
Well said AAA JJ
AAA JJ becoming more enlightened as he spends more time here.
I’m more than just pretty sure that AAA JJ’s views have not changed due to his time on this blog.
He pretty much still rips You (both the royal you as an examiner and you personally for your inane posts) a new one on a regular basis.
“AAA JJ becoming more enlightened as he spends more time here.”
I been at this a long time, son. I wouldn’t be surprised if you were one of the young pups I sent back to his SPE with his tail between his legs.