Notes from the Patent Public Advisory Committee Meeting

by Dennis Crouch

  1. Notice has been prepared for Subject-Matter-Eligibility Guidance, but the USPTO and White House is reviewing that notice based upon Ultramercial and will be released “as soon as we can.”  Will provide an avenue for written and verbal comments from the public.
  2. RCEs Backlog is again under control.
  3. Average pendency (filing-to-issuance) is 38 months for FY2014.  Only about 11 months of that represents time where the PTO is waiting on applicant responses.  Track-One (the fast-track) applications are averaging 16-months to issuance/abandonment.
  4. 1.1 million utility applications are in the pipeline (not counting provisional or PCT applications) has remained relatively steady.  The number of applications awaiting a first action on on the merits has dropped to about 600,000. These figures are major accomplishments considering that more applications are being filed than ever before.
  5. Patent examiner attrition rate is low <5%.  This means that the USPTO needs to take steps to make sure that more experienced examiners continue to do an excellent job.
  6. Interviews continue to rise – about 30% of applications involve an interview prior to the initial disposal (marked by an allowance, abandonment, RCE).
  7. USPTO along with the IP5 is rolling out a “Global Dossier” for patent applications filed in the various countries with the hope of facilitating the sharing of information between offices. Expected in FY2015.
  8. PTAB now has over 200 judges – up from 80 in 2010 with a goal of hiring 60 more judges in FY2015.  About half of judge time is spent on ex parte appeals.
  9. Of the 161 IPRs with final written decisions, in 63% all challenged and instituted claims were found unpatentable while in only 16% of cases were all claims found patentable.
  10. The backlog of ex parte appeals remains over 25,000 pending cases. Most of these have been waiting 18-months or more.
  11. In FY2014, the USPTO collected $3.17 billion in user fees.  The USPTO’s IT Department (OCIO) has a budget of $670 million.
  12. USPTO Expects that Congress will address patent reform as well as trade secret reform.

219 thoughts on “Notes from the Patent Public Advisory Committee Meeting

  1. 14

    “Notice has been prepared for Subject-Matter-Eligibility Guidance, but the USPTO and White House is reviewing that notice based upon Ultramercial and will be released “as soon as we can.”

    I would like the White House and USPTO to address the five gross legal errors committed by the Ultramercial Panel.

    1. Failure to consider the claims as an “Integrated Whole” in the concluding analysis.

    2. Failure to determine if the alleged abstract idea was preempted by the claims, in step two of the Alice two step test.

    3. The creation of a new concept of the invention without the inventors permission, and based on no statutory, or constitutional authority to do so.

    4. Failure to identify the initial problem and solution of the invention before declaring elements of the claim as “extra” solution activity, and in effect ignoring those elements in the concluding analysis.

    5. The attempt to erect an unconstitutional “entrepreneurial” concept exception to the 101 section of the statute.

    It’s disheartening that so many members of the patent bar have remained silent in pointing out these blatant errors simply because they have either an economic interest or ideological bent against software and so called business method patents.

    It may very well be a fact that some business methods and software claims will fail to be eligible subject matter when put through a complete and legal Integration Analysis for example, the way it was established in Diehr and demonstrated in Prometheus v Mayo. But to sit by while the whole of patent law is being swallowed and Constitional authority of congress to write those laws is shredded helps no one.

    1. 14.1

      all it takes…
      triumph…
      the silence of good men…

      The words of Edmund Burke come to mind (and no, not the history repeats words).

      1. 14.1.1

        The words of Edmund Burke come to mind (and no, not the history repeats words).

        Deep stuff!

        all it takes…
        triumph…
        the silence of good men…

        Thank goodness we have “anon” and a self-described “expert” who is wrong about everything and never saw a claim he couldn’t fluff. Where would we be without these heroes guarding our precious patent rights?

        I salute you.

        And laugh.

        1. 14.1.1.1

          “…never saw a claim he couldn’t fluff.”

          Back to denigrating anybody who disagrees with him as a “patent fluffer.” And back to Dennis tolerating it.

          So glad to see that the debate here has been elevated.

          1. 14.1.1.1.1

            Hello AAA JJ

            Well, I have attempted to elevate the discussion here by pointing out the legal errors in the Ultramercial III case. Surely, if a commentator disagrees they can present a counterpoint to my 5 arguments grounded in the statute, Constitution and/or case law. And more often than not we do get genuine questions and legal arguments. Unfortunately we also have to deal with the juvenile antics of this one MM commentator. I find it best to ignore his/her taunts and to stay focused on the law and the issue at hand, then he/she will usually go away.

        2. 14.1.1.2

          Well, MM are we not all self described on this blog? And since you are a self described patent attorney, how about presenting a cogent counter argument to the 5 legal errors I identified in the Ultramercial III case?

          Or, if that is just a little too challenging for you perhaps you would like to explain how….. the Ultramercial panel in this case distinguished the method from patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, thereby “transform[ing]” them into a patent-eligible invention?

          As the Supreme Court said “MUST” be done.

          See…”…in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), thereby “transform[ing]” them into a patent-eligible invention, id., at ___ (slip op., at 3).” [Emphasis Added]

  2. 13

    Wealthy proponent of a nuttier patent system Ashley Keller: “The notion that bingo is abstract makes no sense to me”

    Because a game where you “win” when some random information matches “your” random information is, like, totally tangible!

    Because you can put a bingo card on your desk. Or something.

    1. 13.1

      Yeah right. And thinking occurs in the ether right? In the spirit world.

      Information processing is a physical process.

          1. 13.1.1.1.1

            Whenever I see a patent/application claim which I think is a “junk” claim and should never be allowed or if issued should be invalidated, I say it is no good because it includes an “abstract idea”– because to invalidate/reject it under 102/103/112 can be a lot of hard work.

          2. 13.1.1.1.2

            NWPA,

            “Abstract” means existing in thought, but not having a physical existence.

            As any dictionary (and a rather large number of recent Patently O responses) will tell you.

            1. 13.1.1.1.2.1

              Any meaning assigned to computer memory contents is arbitrary and abstract.”

              Except when it is not.

              You engage in a fallacy here, Dobu, attempting to ignore the fact that “data” -just like written matter – comes in more than one variety, and that not all data “in a computer” is the same. It very much depends on the configuration and the functionality involved.

              Exactly like the difference between Set B printed matter and Set C printed matter.

            2. 13.1.1.1.2.2

              Except when it [meaning assigned to computer memory contents] is not [abstract].

              How can meaning possibly be non-abstract? Example, please?

              You engage in a fallacy here,[printed matter doctrine argument].

              No, Anon, I don’t. I do engage in your proposed fallacy elsewhere, but not in this discussion. Here, I am only referring to data in whichever set it is that you deem non-functional.

            3. 13.1.1.1.2.3

              Example? Easy – Arrhenius.

              Other examples? anywhere there is a functional relationship.

              So yes, you are engaging in a fallacy.

              That you can have data that is analogous to Set B printed matter fails to account for Set C printed matter. Your position here boils down to you pointing at Set B printed matter and nothing more.

            4. 13.1.1.1.2.4

              Anon,

              The Arrhenius equation, relating rubber curing times and temperatures, is math (and therefore abstract) by virtually anyone’s definition. I sincerely hope you are not contesting that.

              If you’re trying to say that temperature (e.g.) is non-abstract, fine, we agree. The assigning of meaning to the spoken or written word “temperature”, or to a written or machine-stored record of “temperatures”, is entirely in the mind, and abstract.

              Can you hang your hat on a “meaning”? Can you hit a “meaning” with a hammer? Can you look at a “meaning” with a microscope or a telescope?

              That you can have data that is analogous to Set B printed matter fails to account for Set C printed matter. Your position here boils down to you pointing at Set B printed matter and nothing more.

              You’re still not getting it, Anon. This is NOT the “software is abstract” argument that you keep trying to force it to be. This is the “information is abstract” argument (which, frankly, I’m surprised to find open for debate).

              I deliberately limited my discussion to non-functional computer-stored information because you and like-minded contributors refuse to wrap your minds around the fact that computer software is also data. (THERE is the “software is abstract” argument, where you like to play your “printed matter set theory” card.)

            5. 13.1.1.1.2.5

              Math and applied math – two different things and once you grasp the difference you may be ready to discuss patent law.

              As to the difference between “software is abstract” and “information is abstract” discussions, I never said the toe were the same – I did say that they were analogous.

              And they are.

              I do know what you are attempting to limit yourself too and that is why I posted my message telling you that your own limitation is a fallacy. The analogy from printed matter and software has a corresponding place with information, and you are attempting the ‘logic’ of just treating a subset, when you need to treat all types.

              The “drop it on your toe” logic is defective.

            6. 13.1.1.1.2.6

              Math and applied math – two different things ….

              No argument from me.

              I do know what you are attempting to limit yourself too and that is why I posted my message ….

              Yet you keep going back to discussing expression. I gladly concede that expression of information is necessarily non-abstract, regardless of how you wish to divide and label your sets. (If there is an exception, I can not think of one at the moment.) The information that might be contained in a work of expression is abstract.

              The “drop it on your toe” logic is defective.

              No, it only seems that way because you insist on playing games with the meaning of “abstract”.

            7. 13.1.1.1.2.7

              The ‘logic’ IS defective and it only seems like ‘games’ to you because you fail to see that the ‘logic’ is defective.

              The analogy fits even when you want to scrunch tight your eyes and pretent that it does not.

              “And yet it still moves” information is real and exists apart from the human experience of that information. You claim that I am the one playing games with “expression” when it is you that is playing games with the semantics of human labels. You need to look at the total picture and not your artificially (gamed) partial view and selective apportioning.

            8. 13.1.1.1.2.8

              Dobu: you seem to want to say, gee all information is the same and all information is the same. Nutty. So, why do you go to a medical doctor rather than a mechanic (or clerk at an ice cream store)? It’s all the same, right?

              You nutty arguments all completely ignore that information processing is tough and some of it takes a long time and some of it doesn’t. How to process that information makes all the difference.

              Fruitcake statements on your part. I can just say well all atoms are the same basically and molecules too. Doesn’t make any different what you make in that test tube. It’s all the same. Any meaning you give to it is arbitrary.

              My arguments that you are right out of medieval Europe I am afraid are accurate. The computer is processing information like your brain. Think about that. So, you think that all brains are the same. That your brain is like a rat’s brain. That all information is the same. Doesn’t matter if you pick up a book on how to program in C++ or a book on how to shovel snow.

              I don’t believe that you actual believe what you say you believe.

            9. 13.1.1.1.2.9

              dobu The machine has physical existence. The information does not.

              This is way too subtle for these sooper dooper geniuses.

              They are busy trying to prevent Stalin from invading the US and turning us all into Amish people and you are trying to discuss basic logic with them. Prepare to be “devastated”!

              LOL

            10. 13.1.1.1.2.10

              And Dobu, what? Actually your views are deeply offensive. It illustrates to me that you do not respect science. And want to play to the mob with bizzarro nonsensical statements.

              Now, boy, if you want to continue to argue then tell me if there is a difference between your brain and a rat’s brain. And tell me why you go to a medical doctor rather than the clerk at the ice cream store for medical advice.

            11. 13.1.1.1.2.11

              MM chimes in with nonsense. MM you have no clue. You deny the equivalence of hardware/software/firmware.

            12. 13.1.1.1.2.12

              Also please try to resolve the fact that conservation of information is the most important law of physics with your, gee it is all information and all in that there computer thing so it is all the same.

              Man you really are filth.

            13. 13.1.1.1.2.13

              Also, isn’t all that is in your medieval mind just all atoms? Doesn’t have any meaning does it? So you are nothing but a bag of atoms with no meaning all abstract.

              Too bad you don’t respect science.

            14. 13.1.1.1.2.14

              Anon,

              And yet it still moves …

              Okay, Galileo, it appears we’re done here.

              NWPA,

              you seem to want to say, [Warning! Straw man approaching!] gee all information is the same and all information is the same. Nutty. So, why do you go to a medical doctor rather than a mechanic (or clerk at an ice cream store)? It’s all the same, right?

              Obviously, I go to the MD because he has specialized information that would better address my medical needs.

              You nutty arguments all completely ignore that information processing is tough and some of it takes a long time and some of it doesn’t. How to process that information makes all the difference.

              Irrelevant to the discussion of abstractness. Spreadsheets existed before computing machines did, and the information being processed by those human computers was also abstract. On sensitive projects, they would not even know the meaning behind the numbers they were processing. They didn’t need to. The information and the reality are not the same thing.

              Fruitcake statements on your part. I can just say well all atoms are the same basically and molecules too.

              Yeah, that would be a fruitcake statement, all right. Good thing the medical industry knows the difference between abstract and non-abstract.

              So, you think that [Warning! Straw man approaching!] all brains are the same. That your brain is like a rat’s brain.

              What an odd conclusion. I’ve seen you post this before, but I missed the first one, and frankly, I do not follow your logic here.

              That all information is the same. Doesn’t matter if you pick up a book on how to program in C++ or a book on how to shovel snow.”

              I do not believe all information is the same.

              I don’t believe that you actual believe what you say you believe.

              I absolutely believe what I say I believe. I do not believe what you say I say I believe.

              Actually your views are deeply offensive. It illustrates to me that you do not respect science. And want to play to the mob with bizzarro nonsensical statements.

              I can’t really tell if it’s my views or your straw man’s views that are offending you, but you should learn not to take everything so personally if you want to engage in public discourse.

              Now, boy, if you want to continue to argue then tell me if there is a difference between your brain and a rat’s brain. And tell me why you go to a medical doctor rather than the clerk at the ice cream store for medical advice.

              Heh. “Boy”. Make me feel young again. Anatomy is not my forte, but I would expect my brain to be larger than most rat’s, composed of cells containing different DNA, forming a different electro-chemical network of neurons. I like to think I’m smarter than most rats, too. I addressed “MD vs. clerk” above, in this post.

              Also please try to resolve the fact that conservation of information is the most important law of physics with your, gee it is all information and all in that there computer thing so it is all the same.

              Easy. You are obviously conflating quantum information theory with classical information theory.

              Man you really are filth.

              Ouch. I guess I’ll just have to comfort myself with knowing I have better manners than an attorney from a prestigious university.

              Also, isn’t all that is in your medieval mind just all atoms? Doesn’t have any meaning does it? So you are nothing but a bag of atoms with no meaning all abstract.

              No. There are atoms in my brain, but the mind (where meaning resides) is abstract.

              “[Warning! Straw man approaching!]Too bad you don’t respect science.

              It’s just your views that I do not respect. But, you’re entitled to them.

            15. 13.1.1.1.2.15

              Dobu: you didn’t answer any of the questions –really.

              I am not mixing up anything with the conservation of information.

              Your arguments are just absurd on their face. Information is input into a computer (say an x-ray), the information is processed (say identify a fracture), and a diagnoses is output. What is abstract about that?

              The conservation of information applies in this case. A physical process that is bound by the laws of physics just occurred that took energy, time, and space. There are bounds on how much information can be processed for a given amount of energy.

              Where is the “abstract” or should I say “witch”?

            16. 13.1.1.1.2.16

              dobu, so please reconsider your nonsense and stop going on witch hunts. “Abstract” makes no sense for an invention that is automating information processing. Your use of abstract has no meaning.

              Do you know what the ladders of abstraction are?

            17. 13.1.1.1.2.17

              NWPA,

              Once again Dobu fails miserably, in part (whether he recognizes this or not) based on an over-reliance of the mental steps doctrine. To him, this notion of “abstract” is a human cognition thing; but he simply cannot grasp the fact that a machine cannot think (yes, my favorite word once again fits: anthropomorphication), and thus the human cognitive aspect of “abstract” simply is not what theses claims are about.

              And before Ned gets all hot and bothered with his “nominalist” CRP, let me remind him that he cannot be a little bit pregnant and his gamesmanship of using a shortened “statutory” instead of “statutory category” has been called out for the B$ that it is.

            18. 13.1.1.1.2.18

              Yeah anon, they just don’t have an argument. They deny the basic science of information processing. Only in a world where we have a Fed. Cir. stacked with judges that have never shown any interest in science can this happen.

              A machine that is automating information processing is claimed by the mob to really be thinking and as such is a witch.

            19. 13.1.1.1.2.19

              NWPA,

              Your arguments are just absurd on their face. Information is input into a computer (say an x-ray), the information is processed (say identify a fracture), and a diagnoses is output. What is abstract about that?

              Computer, x-ray image digitizer, fractured bone, output display: concrete.

              Assigning symbols to charge levels on collections of micro-capacitors: abstract. Nothing in the physical world mandates that a high charge should be a “one” or a “zero”, or that a low charge should be a zero or a one. Those numerical assignments are abstract. Same applies to assigning symbols (e.g., integers) to combinations of charges in a collection of capacitors. Do all the capacitors in a group having a high charge indicate maxium luminosity in the x-ray? Or maximum occlusion? Totally arbitrary choice, and abstract. Want to store a pattern in memory for use in identifying fractures in the x-ray image? The memory is still concrete, but interpreting the contents to mean they are a fracture-matching pattern? Abstract.

              The conservation of information applies in this case. A physical process that is bound by the laws of physics just occurred that took energy, time, and space. There are bounds on how much information can be processed for a given amount of energy.

              The quantum no-deleting theorem (a.k.a., “conservation of information”) specifically applies to quantum states. The charge on a micro-capacitor, or the alignment of a magnetic domain on a hard disk platter, or the structure of a microscopic crystal in a flash drive are not quantum states.

              There is no “conservation of information” in classical information theory (which is what applies to modern models of information processing machines). That’s why we make back-up copies of our information. Were you aware that the “conservation of information” theorem is closely related to the “no-cloning theorem” of quantum information theory, which tells us that it is IMPOSSIBLE to copy arbitrary quantum states? Yet, the cautious among us copy classical information all the time.

              Where is the “abstract” or should I say “witch”?

              Anywhere you arbitrarily assign symbolic meaning to a physical state, you will find “abstract”.

              “Abstract” makes no sense for an invention that is automating information processing. Your use of abstract has no meaning.

              And, we’re back to where we started. To repeat myself:”Signal/state processing is a physical process. Information is abstract.”
              And I’m using the dictionary meaning of “abstract”.

              Do you know what the ladders of abstraction are?

              Yes. It is a study in scope that you and Anon like to bring up in order to try and bend the meaning of the word “abstract”. Anon’s favorite example is kitchen tables. If we wish to traverse the “ladder” for that “abstraction”, we can discuss wooden kitchen tables. Three-foot-tall wooden kitchen tables. 3′-tall wooden kitchen tables with removable leaves. 3′-tall kitchen tables with removable leaves and round legs. […] A specific 3′-tall wooden kitchen table with removable leaves and round legs and radiused corners and on sale in the downtown Springfield “Tables-R-Us”. Trying to claim that none of those tables exist except the last one does NOT make “kitchen table” into an abstract noun.

              They deny the basic science of information processing.

              This would carry more weight from someone who could tell the difference between quantum information and classical information theory.

              A machine that is automating information processing is claimed by the mob to really be thinking and as such is a witch.

              I agree, that mob of yours could not be more wrong, claiming that computers “think”. As if a computer would “know” the difference between “42” as a shadow account balance or “42” as a bingo card number. Yeah, that mob is full of absurd, nutty fruitcakes assigning abstract meaning to computer memory contents and claiming that makes the information concrete.

            20. 13.1.1.1.2.20

              Anon,

              Once again Dobu fails miserably …

              If you say so, Galileo.

              To him, this notion of “abstract” is a human cognition thing;

              Pick up a dictionary already. “Abstract” is a human cognition thing for English-speaking peoples.

              … but he simply cannot grasp the fact that a machine cannot think (yes, my favorite word once again fits: anthropomorphication)

              Utter nonsense. I am quite knowledgeable about the functioning of computers at the hardware level. You want an actual example of “anthropomorphization”? How about holding that computers somehow “know” the difference between a shadow account balance and a bingo card number?

              … and thus the human cognitive aspect of “abstract” simply is not what theses claims are about.

              Since you have decided to reject the dictionary definition of “abstract” that the rest of the English-speaking world is using, and Black’s law dictionary has no term-of-art entry for “abstract”, would you mind supplying your definition of “abstract” that includes aspects beyond human cognition?

            21. 13.1.1.1.2.21

              There you go again Dobu, parsing what I say and confusing yourself (I have changed no dictionary definitions).

              Let’s cut to the chase and water down your dust kicking:

              Do machines think? Yes or no.

              It’s a simple question.

            22. 13.1.1.1.2.22

              Let’s cut to the chase and water down your dust kicking:

              My dust-kicking? I’m providing straight-forward answers to each question asked. You are the one kicking up dust, dancing around alleged non-cognitive aspects of the word “abstract”. Accuse others of that which Anon does, much?

              Do machines think? Yes or no.
              It’s a simple question.

              Here’s a simple answer: NO, of course they don’t.

              (I think you might get some argument on that topic from NWPA, since he likes to discuss machine cognition, neural networks, neuron simulation, etc., when addressing “medieval” thinkers such as myself.)

            23. 13.1.1.1.2.24

              Already addressed, much earlier in this conversation. Computers process signals and states.

              The abstract ideas come into play when we assign symbols to collections of those signals and states (e.g., “42”, “shadow account balance”, “bingo card number”, “x-ray luminosity/occlusion amount”, etc.).

            24. 13.1.1.1.2.25

              Also already addressed much earlier in the conversation – you forgot (even after I reminded you) about the functional relationship and the analogy to the printed matter doctrine that fits here.

              Open your eyes and stop trying to parse this to a Set B state of being.

            25. 13.1.1.1.2.26

              The physical state of a memory cell affects how a computer functions, but the meaning we assign to that state does not. If you want to change what a memory location represents, you will (in most cases) also have to change the how the computer functions, to support that new definition. The meaning itself does NOT have a functional relationship with the computer, and your printed-matter sets have no bearing.

            26. 13.1.1.1.2.27

              Dead wrong yet again Dobu.

              Exactly like the analogy, when the assigned meanings have functional relationships – and they do especially when configured so, the sets have immediate bearing.

              And yes, it does in fact still move.

            27. 13.1.1.1.2.28

              A resistor can have an “assigned state.”

              Two groups of three identical resistors each can have identical “assigned states.”

              The differently configured set in parallel will be different than the configured set in series.

              Information does in fact exist outside the human mind.

              It still moves.

            28. 13.1.1.1.2.29

              Your steadfast determination in maintaining your willful blindness does not change reality, Anon/”Galileo”.

              “Assigned state”? Where did that come from? We were talking about assigned meaning, or configured state.

              You can configure the “state” for the resistors to be parallel or serial. (Concrete.) You can’t “assign” parallel or serial alignment for this circuitry hardware. It’s “state” is entirely how you configured it.

              You could assign a “one” to the resistance for the parallel “state”, and “zero” to the serial “state”. Or vice versa, since it’s entirely arbitrary, and only in the mind. (Abstract.)

              With that understanding, you can even store a “one” in your resistor network by configuring them in the state to which you assigned the “one” symbol. But that “one” (and whatever it is you’re counting with that “one”) is information, and as such, abstract.

            29. 13.1.1.1.2.30

              Sorry Dobu, but you are the one being willfully blind and ignoring reality.

              The reality is that information is in fact real and exists outside of the human mind.

              The reality is that claims that use functional relationships of information also exist outside of the human mind.

              The reality is that you are merely playing a pedantic “labeling” game, attempting to parse the conversation down to a Set B version when you need to recognize that there is more than Set B.

              Yiu can claim that I am being willfully blind all tha you want (without really saying anything about what I am being blind about), all the while it remains you with eyes closed, attempting to parse down to an incomplete picture, but the stark evidence is that it is you with the eyes closed here.

            30. 13.1.1.1.2.31

              Anon,

              You are refusing to see that information and expressions/recordings of information are not the same thing.

            31. 13.1.1.1.2.32

              I am not refusing that at all.

              You are refusing to see the analogy of Set B and Set C information.

              You are refusing to see that information does exist outside of the human mind.

              You are refusing to see that a machine cannot be “abstract” because a machine cannot think, and in the patent context, it is the human cognition of abstract that is deemed off limits from patent protection – and not the machine.

              Simple point really – the mental steps doctrine (tied to abstract) fails because that doctrine is geared to safeguard human cognition, and just does not apply to machines.

              I am not sure why you cannot see what my position is on this matter, and can only conclude that you don’t want to see it.

            32. 13.1.1.1.2.33

              “they do especially when configured so”

              What anon means here is “formed so”. He’s really just importing in “programmed to” in other language. It’s all a round about attempt to import product by process limitations indirectly. As many other attorneys have since admitted to me.

            33. 13.1.1.1.2.34

              dobu: your arguments are –simply–ridiculous. You’ve generated this word “abstract” like “witch” and then have this definition that suits you that has no correspondence to reality. Under your definition anything can be abstract if you like it so.

              And, it is a machine performing useful work. It sits there and does useful things, takes space, needs time and energy. There is nothing abstract about the machine anymore than a molecule is abstract. Information is being transformed.

              And it is nice that you want to claim there is no conservation of information for macro events, but there is. I’ve posted links on here explaining it. You can find it on the Internet.

              Again, big picture–what is your brain for? Why is it there? What is the computer doing? Just psycho arguments you present—terrifying that modern humans could hold such thoughts. Devoid of any perspective of what is going on and clinging to a spirit world. Your “thoughts” by the way are for what? Those things that you seem to think exist in an abstract spirit world are there why? Do you think they could actually be part of the information processing of your brain? What century are you from? My guess is you are trained in technology and not the humanities. No understanding of cognitive psychology.

            34. 13.1.1.1.2.35

              Do you understand that if I write a claim down that it conveys meaning to one skilled in the art that can then go and build a machine to do the information processing?

              So, abstract means what?

              It is truly terrifying that humans like you exist. And, I am afraid, a sign of the times. You are part of the 99 percent. The ruled. The ones with slave minds.

            35. 13.1.1.1.2.36

              At 9:14 PM, 6 states “attempt to import product by process limitations indirectly

              and

              since admitted to me

              While 6’s veracity is highly questionable (myself catching him in outright making things up several times), there is an interesting – albeit incorrect – view in his comment here.

              That view is that software is an action.

              It is not.

              Executing software is an action.

              This distinction is clear, but can become muddled because of the limitations of language. This is also reflected in the inordinate attempts to (incorrectly) portray the use of functional language as somehow not being allowed under the law (or artificially constrained to 112(f)).

              The “vast middle ground” and the fact that a claim NOT TOTALLY using functional language is permissible under the law -outside of 112(f) (that OPTIONAL section allows purely – note and hold onto that word – functional claims.

              As I have posted previously, this “hybrid” occurs in many art fields (so the “software is bad” scare tactic does not work), and further, Frederico himself has discussed the permissible wider use of functional descriptions within claims, as a direct object of the Patent Act of 1952.

              Yes, it can be (and should be) noted that the anti-patent forces have first attacked this change in law in the software arts; due no doubt at least in part to the ease of using language of action as a description for the manufactured item that is software (hence the warning to 6), but any level of critical thinking shows that this line if thought is not and cannot be constrained just against software.

              This line of attack is not just anti-software patent. It is anti-patent, period.

  3. 12

    Of the 161 IPRs with final written decisions, in 63% all challenged and instituted claims were found unpatentable while in only 16% of cases were all claims found patentable. <— That is a pretty shocking statistic.

  4. 11

    On 101, I wonder if they are going to separately address Beauregard claims?

    Someone, sometime has to take this claim format to the courts for a decision. The PTO cannot and should not simply issue patents in this claim format that has never been approved by any court.

    1. 11.1

      Fantastic point. It’s amazing to me how these claims have been around for so long, yet no court has reviewed the patentability of these claims. Of course, one reason this is likely so is that everyone (every business) wants them to be patentable. What business is going to sue on the basis of the unpatentability of Beauregard claims, when that business likely has patents with these claims?

      Any guesses on their patentability under 101? I’d hazard a guess they are not patentable, particularly if the case gets to the Supreme Court.

      1. 11.1.1

        PatentBob, and it is not as if the claim format has not been the subject of serious debate. The validity of the format has long been debated here.

      2. 11.1.2

        “Of course, one reason this is likely so is that everyone (every business) wants them to be patentable. What business is going to sue on the basis of the unpatentability of Beauregard claims, when that business likely has patents with these claims?”

        That’s exactly right, but you’d think that some upstart would have challenged them already. One wonders how many people were challenged before litigation and they just never brought suit.

        “Any guesses on their patentability under 101? I’d hazard a guess they are not patentable, particularly if the case gets to the Supreme Court.”

        Blatantly not. Claiming a bunch of 1’s and 0’s functionally. That’s about as likely to pass muster under USSC review as I am able to jump 30 ft laterally.

        1. 11.1.2.1

          Aren’t there usually claims like,

          Independent claim #1: A computer readable medium that {abstract}.

          and

          Independent claim #2: A system that {abstract}.

          and

          Independent claim #3: A computer configured to {abstract}.

          You won’t get anywhere just blocking #1 when the other two are there. And the CAFC all agrees that such claims fall or survive together in Alice.

          And since nobody distributes computer readable media anymore, you’ve got a small chance to win on noninfringement if somebody brings a case with such claims.

            1. 11.1.2.1.1.1

              The really odd thing about these abstract arguments is that these posters supposedly have brains. Exactly what do they think the computer is doing? It is processing information like their brain does.

              Bizarre nasty people.

          1. 11.1.2.1.2

            I think you’ll find there are plenty of patents with just Beauregard claims. For instance, somewhere here used to believe one of our clients placed an emphasis on Beauregard claims, so they wrote entire applications solely with Beauregard claims. There may be a second case with apparatus/method claims, though.

            Personally, I reached the conclusion a long time ago these claims were on shaky legal footing, so I do not place emphasis on using these claims. I also believe they’re invalid, particularly under the current Supreme Court “guidance”. Regardless, clients still request them.

          1. 11.2.1.1.1

            anon, Your discussion point here is 101. Mine is a broader canvas.

            271(c) is why IBM proposed B-claims — to get around proving knowledge of infringement and All That Jazz. We should bring up and quote Vic Siber’s original publications on that topic.

    2. 11.3

      On the recent copyright thread you went on and on about the functionality involved.

      Are you going to now pretent that that has no impact in patent law, where functionality is the precise aspect meant to be protected by patent law?

      1. 11.3.1

        functionality is the precise aspect meant to be protected by patent law

        Is that the argument? Or your conclusion?

            1. 11.3.1.1.1.1

              Given that the context here is the distinction between patent law and copyright law, what exactly is the point of your question?

  5. 10

    Patent examiner attrition rate is low <5%. This means that the USPTO needs to take steps to make sure that more experienced examiners continue to do an excellent job.

    How long an examiner is working at the office does not necessarily correllate to 1) how much authority they have or 2) how much work or quality is required of them.

    Authority, production level, and which areas of the patent they personally are responsible for are solely a function of GS level. Moving up in GS is time-limited (i.e. you can only be promoted once a year, generally) and that provides correllation, but it is entirely common for examiners who are here 10 years to be at the same GS level as examiners who are here two years.

    Retention affects promotability which affects GS level, but not all who are here a long time are primaries.

    Notice has been prepared for Subject-Matter-Eligibility Guidance, but the USPTO and White House is reviewing that notice based upon Ultramercial and will be released “as soon as we can.” Will provide an avenue for written and verbal comments from the public.

    I was away for the Ultramercial discussion, but having read it now they basically need to just rewrite the last paragraph on page 9 through second IV. I don’t believe its necessarily a good idea to have a technical arts test, but the statement about what is required (claims require a precise set of instructions for achievement) is correct, as I’ve been saying on this board for quite a while. You can claim your way, and then use DoE to reach similar infringers, you cannot claim the end result of your method and summarily state that every other method that achieves the same result is similar enough to you to warrant infringement. The former is a claim on an invention, the latter is functional claiming which has always been improper. Good to see its working out.

    1. 10.1

      RandomGuy: I don’t believe its necessarily a good idea to have a technical arts test,

      If you find the time to explain further, RG, I’d love to hear your reasons.

      1. 10.1.1

        If you find the time to explain further, RG, I’d love to hear your reasons.

        I don’t like it for the same reason I don’t like the TSM test – you’re attempting to shorthand the ultimate conclusion with a test that doesn’t fit perfectly well.

        Business methods routinely suffer from the same infirmity that software claims do – they are functionally claimed. The abstract idea test, in my mind, is about overbroad functional claiming a la Morse and its progeny. This is why I cite to page 9 till section 4 of the concurrence – it deals with the test that should be applied to abstract ideas and how to solve it.

        The question of whether non-technical claims, as a class, are also unconstitutional is simply a separate question that Mayer shouldn’t mix in. While Mayer makes a decent argument for it, it’s his argument, not the Supreme Court’s, and he shouldn’t attempt to steal the SC’s heft by trying to call his theory “for all intents and purposes” the court’s rule. There was a concurrence in Alice I believe that brought up technical arts, but that was not the main theory adopted in that case. What they wanted to keep separate Mayer tries to intertwine. It may very well be that most business method claims are doubly ineligible under 101, for abstract idea and for non-technicality, but this is not the case that turns on that distinction.

        If you make a rule that technical arts = abstract integration you’re just going to have people trying to put in buzzwords and technically (as in “nominally”) claim themselves into the “technical” rather than “entrepreneurial” arts and saying that they have avoided 101 issues altogether. As little as 9? months ago half the court was confused about whether putting something on a computer inherently makes it a statutory machine – we should let the children get comfortable crawling a bit before we try and make them walk.

        But the same reason it shouldn’t be brought up here is the saving grace of the issue – the worst business methods will be knocked out over abstract ideas anyway. There’s no pressing need to consider the technical nature test until someone can demonstrate a business method that passes the abstract idea test.

        1. 10.1.1.1

          …and never mind the fact that inserting the explicit words necessary for any such technological arts test is clearly violating the separation of powers doctrine, writing the map as opposed to reading the map.

          (Yes, that is still a pretty important legal concept and while I will grant you that it is no justice of the peace commission, it certainly is not something that we should just [shrug] and move on about).

          1. 10.1.1.1.1

            Fairly incredible just how far this has gone already. But, I am afraid it is not over. Google bucks are flowing in still and there is a presidential election coming up.

          2. 10.1.1.1.2

            …and never mind the fact that inserting the explicit words necessary for any such technological arts test is clearly violating the separation of powers doctrine, writing the map as opposed to reading the map.

            Except, as was pointed out, there is textual support and this is the only clause that comes with strings. The constitution charges that the patent grant must be for the purpose of “promoting the progress of science and useful Arts.” This isn’t a situation where the Constitution has committed the power to the legislature, it has clearly withheld power outside of science and useful arts from the legislature. The contours of that dividing line fall within the judicial branch’s power to interpret.

            As I’ve said before, Congress is bumping up against, and in fact stepping over, the powers granted it by the Constitution. It is not only not separation of powers but entirely unsurprising that the court do so.

            1. 10.1.1.1.2.1

              You missed the actual case or controversy / no future speculative-conjecture requirement for the Court to have any authority whatsoever point.

              Your premise here is just not supported, and all that you are doing is uncritically parroting the rhetorical hand waving of the Court.

              As to the dividing line on Useful Arts, that has already been put forth by the Court – more than once, with the last time actually reducing from 4 to 3.

              Pay attention.

              1. 10.1.1.1.2.1.1

                You missed the actual case or controversy / no future speculative-conjecture requirement for the Court to have any authority whatsoever point.

                Every patent case is a case and controversy. Are you arguing that it is sua sponte for the court to investigate if the “shall grant” language of 101 is constitutional based upon a claim by the defendant that the patent is not valid? That’s at least a valid argument, but its somewhat flimsy given the history of the law and, you know, logic.

                Your premise here is just not supported, and all that you are doing is uncritically parroting the rhetorical hand waving of the Court.

                I’m not hearing a response to the textual argument. If I’m being uncritical why don’t you explain why the difference in text should not matter. Is it like the second amendment, where there’s simple surplusage of language? The court has taken 101 cases four years in a row, at some point doesn’t Congress have to speak up and tell them they’re overreaching? Or could it be that Congress is fine with it?

                As to the dividing line on Useful Arts, that has already been put forth by the Court – more than once, with the last time actually reducing from 4 to 3.

                That is precisely the point I made to MM – that you shouldn’t conflate the abstract idea question, which commands an undivided court, with the technical arts question, which only clearly commands at least 3. Of course, I’ll say the same thing to you I said to him – they haven’t had a case that turns on that issue yet. You seem to think that because the court wanted to make a point on abstract idea that it wouldn’t also endorse technical arts. That’s a suspect position. It’s entirely possible that they believe in both, but are waiting for the federal circuit to “get it” on abstract idea before further introducing technical arts, as they have not taken a case that passed abstract idea and thus turned on the technical arts question.

                Let’s put it like this – 3 or 4 may not be 5, but right now I count zero on the other side. All we have is a few who are for it, and 6 unknown votes. Those six votes may all be against, but they might also all be for, and I should point out the unanimity on 101 on the Court so far.

                1. Your replies here miss the mark and miss badly.

                  The conjecture is noted by the words of the Court: “MAY” (not, “HAVE” and not even “WILL”).

                  And you need to count better, as your “zero” in response misses that fact that “six” did NOT agree. Not signing onto a thought expressed IS the same as disagreeing with that thought. If a Justice wants to agree with a written opinion, he or she goes on the record as doing so.

                2. Your “textual basis” has not been established to mean what you think it means (and I have explained the constitutional grant of authority previously, in an in depth explanation to Ned and 6).

                3. I have explained the constitutional grant of authority previously, in an in depth explanation to Ned and 6)

                  Nobody cares what you think, “anon,” and nobody remembers your silly “devastating” lectures.

                  When are you going to figure that out?

                4. Malcolm,

                  It is abundantly clear that you do not care about anything other than your own monologue.

                  Eight years and running – do you still need a clue as to why you are a blight on this blog? Maybe you should figure out that the points I offer are the things that you should care about. You know, as part of the effort to have a dialogue.

        2. 10.1.1.2

          There’s no pressing need to consider the technical nature test until someone can demonstrate a business method that passes the abstract idea test.

          There are three key terms in your statement with definitions that are disputed.

          I think Mayer’s point is that these definitions converge where eligibility ends.

          1. 10.1.1.2.1

            Sounds like your desired end (a finding of non-eligibility) is made up of three “disputed” means…

            …almost like now it takes three wrongs to make a ‘right.’

          2. 10.1.1.2.2

            I think Mayer’s point is that these definitions converge where eligibility ends.

            Well the point of my prior post is that the Supreme Court clearly didn’t converge AI and TN in Alice, which lacked eligibility. That’s the conclusion I think can’t be drawn and the one that I think is dangerous, because it will lead to narrowing the AI test, which applies to both technical and non-technical claims, into only a TN test, and may let AIs in the technical sphere off the hook.

        3. 10.1.1.3

          “I don’t like it for the same reason I don’t like the TSM test – you’re attempting to shorthand the ultimate conclusion with a test that doesn’t fit perfectly well.”

          I will have to respectfully disagree.

          Imo you’re trying to set forth the entire point of the patent system in the first place. And that’s the fundamental issue. What the entire point of the patent system is.

          1. 10.1.1.3.1

            A TA test may be part of 101, but a TA test is not an AI test. They should not be conflated.

    2. 10.2

      You use the term “functional claiming,” but I do not think that you understand what that term means.

      1. 10.2.1

        I was going to go back on previous posts to point out how wrong you have been, to again point out that one of us knows the law while the other knows how to spout hot air (scoreboard!). But I started with the June 30th post on Ultramercial and I would have had to literally cut and paste every single one of your comments there here.

        I do particularly like your post at 12.1, berating MM for a position which is EXACTLY THE POSITION THAT THIS COURT NOW TAKES in both the main and concurrent opinion. You’re a great weathervane for the law – We see where you point, turn 180 degrees, and we know exactly where the law will stand.

        In the meantime, for those who want to write valid claims, you might want to claim your means, not the functional end.

        1. 10.2.1.1

          How about the functional means instead?

          Again – you use the term and you do not understand the term you are using.

          1. 10.2.1.1.1

            How about the functional means instead?

            That’s entirely dependent upon whether it uses the proper 112, 6th language, doesn’t it? Try and keep up.

                1. Yes…there is a plethora of Federal Circuit and CCPA cases that bless functional claiming (even claims that claim a result, see In re Swinehart). The PTO, on the other hand, believes that Halliburton is still good law except for 112(f) style claims, see Ex Parte Miyazaki.

                2. You missed the part Jonathan where the words of Congress permit functional claiming.

                  That’s a critical part to be aware of.

                3. Yes…there is a plethora of Federal Circuit and CCPA cases that bless functional claiming (even claims that claim a result, see In re Swinehart). The PTO, on the other hand, believes that Halliburton is still good law except for 112(f) style claims, see Ex Parte Miyazaki.

                  Oh dear…

                  The Fed Cir lacks the ability to overrule the Supreme Court.

                  Halliburton, but for the claim construction parts, is still good law. The court construed “means for” as claiming “all means”. Congress fixed the issue by mandating that “means for” will now mean a particular definite structure. Congress did not touch the holding that when a claim scope is drawn to “all means” of achieving something (i.e. functionally claiming a result outside of 6th today) it is still invalid. That holding still stands. This is basic precedent interpretation here – not only is Halliburton’s holding not overruled, it is now considered blessed by Congress.

                  The Fed Cir is wrong, constantly, and has been for a long time. That they fail to understand basic precedent rules only speaks to how little they know their jobs. Do not make their mistake.

                  You missed the part Jonathan where the words of Congress permit functional claiming.

                  The words of Congress require possession and enablement of the full scope claimed. It is scientifically impossible to come to the conclusion that one knows “all means” of achieving functional results (as they are commonly used today). Is it possible to validly functionally claim? Sure, you could very tightly do so, but that is not what is done here. Functional langauge is specifically being used to avoid tight claiming and reach every means of achievement.

                4. RandomGuy,

                  You are simply quite wrong on your view of functional claiming as witness the fact that the vast middle ground is indeed sanctioned by the words of Congress.

                  You really do have to accept this reality.

                5. Malcolm,

                  You are doing that mindless AAOTWMD thing again (in particular here, do you really think that Prof Crouch is also wrong, given I am using his term?)

                  Please stop.

                6. You are simply quite wrong on your view of functional claiming as witness the fact that the vast middle ground is indeed sanctioned by the words of Congress.

                  I don’t need to discuss or even consider if this “vast middle ground” exists, as the claim scopes we’re always talking about today are huddled into one extreme corner. And unfortunately for patentees, that corner is on the wrong side of the validity line.

                  You really do have to accept this reality.

                  Ever since you and I have been arguing “realities”, the courts have been constantly stepping toward mine. The Supremes are likely already there, just lacking enough cases to express it, as you can only plug so many holes at once. The federal circuit is not there, as they are not very good at their job. Some counsel too, are clearly lacking. Fortunately, I am here to teach, and knowledge is free to all. One can only hope that they will come around.

                7. Fortunatrly, I am here to teach

                  You misspelled “unfortunately” as you clearly do not yet grasp what you do not understand (the vast middle ground does indeed need to be addressed as that goes against your ‘teachings’)

                  You are nothing but a false prophet, relying on your belief system.

                8. “anon” : You are nothing but a false prophet, relying on your belief system.

                  ROTFLMAO

                  Try to believe it, folks.

              1. 10.2.1.1.1.1.2

                The functional claiming thing is another front of the activism the other one is the removal of the a POSITA (or any person) from the jurisprudence of claim construction.

                We have criminals as judges.

    3. 10.3

      — Patent examiner attrition rate is low <5%. —

      This must mean that all-in-all being a patent examiner is a pretty good job.

      1. 10.3.1

        “This must mean that all-in-all being a patent examiner is a pretty good job.”

        Or that “all-in-all” it was a pretty good job and now the OIG will shut er on down. lol. Just saying, it could be.

        1. 10.3.1.1

          I am not understanding what you appear to be celebrating – the thing that you fear that the OIG is going to shut down.

          Are you saying that you think the scandalous stuff was what made the job good?

          1. 10.3.1.1.1

            “Are you saying that you think the scandalous stuff was what made the job good?”

            I’m saying that it may have been for some folks. We did jump to #1 place to work in the fed government mostly because of the shutdown that didn’t furlough us (but did nearly everyone else) but there may be even more factors at play.

            1. 10.3.1.1.1.1

              You did not quite answer the question there 6 – are you one of those “some folks” that found the job “good” because of the scandalous stuff that will be eliminated by an OGI action?

              And while I certainly do hope that there are other non-scandalous “other factors,” such “other factors” fall outside the scope of your comment that caught my attention.

              1. 10.3.1.1.1.1.1

                “You did not quite answer the question there 6 – are you one of those “some folks” that found the job “good” because of the scandalous stuff that will be eliminated by an OGI action?”

                You didn’t ask that question. But no, I’m not, that’s maybe why I don’t see the job as being “all-in-all” all that great and why I’m someone pressing for reform of the system while others are all like “lol it’s fine”.

                And again, I don’t particularly think that the “scandalous” stuff is “scandalous” at all. The only scandal at the PTO is the count system. Literally, it’s the only scandal.

                1. What a bizarre post 6.

                  But if you really think that there are no scandals, then your own admitted “I’m someone pressing for reform” comes across as extremely dubious.

                2. At the hearing they said a grand total of 5 individuals had been disciplined iirc. 2 firezored, 2 that got official reprimands etc and 1 that basically just got a warning and some additional tranining.

                  Out of 8.5k etc examiners. That’s not exactly a scandal.

                  Now I’ll tell you what, if the OIG comes back and says hey we’ve got great evidence of systemic abuses then maybe I’ll believe that there’s a scandal.

  6. 9

    “Patent examiner attrition rate is low <5%. "

    Based on some of the dealings I've had with examiners in recent years, some of this is because the sort of people hired as examiners have few-to-no better options and they know it. The job now pays pretty well and offers solid benefits of the sort increasingly hard to come by in the private sector. And the English language skills required are now fairly minimal. For the immigrants who now make up a huge percentage of the PTO's workforce, this may be as good as it gets. So they don't leave, they stay and their production requirements go up, and in three or four years, there will be far too many examiners for the Alice-reduced workload.

    1. 9.1

      I don’t know whether Alice will make a big difference in the backlog, but the rumor now is that we overhired in FY 2014, at least in certain art areas, and the numbers are being cut somewhat for FY 2015 to get things back on balance.

    2. 9.2

      It’s really nuts that there’s no test for new hires’ English writing skills. A primary component of the job is communication, generally in writing.

      1. 9.2.1

        It is nuts. Are there that few native born Americans studying science and engineering these days?

    3. 9.3

      Management has already started transferring examiners around to new art units.

      Word on the street is that there is an expectation that transfers and other “measures” will become more commonplace across the PTO in the near future.

      And this is before Alice has really been enforced by the PTO.

      I agree with you Egon, the writing is on the wall.

      1. 9.3.1

        Given that the PTO is already cutting back hiring, I would shorten your timeframe to 2-3 years before layoffs, at the outside.

        The usual order of pullbacks is as follows:

        1) reduce/eliminate hiring
        2) eliminate manager overtime
        3) cut management bonus pool
        4) reduce examiner overtime
        5) eliminate examiner overtime
        6) cut ALL extraneous expenses (offsite management “training”, AC on weekends, condense office managers, etc…)
        7) eliminate examiner bonuses
        8) furloughs/layoffs

        The PTO is pretty poor at forward projecting its hiring needs, as it partially relies on some pretty skewed historical data. When they start (1) it usually means that filings/income generating activity are already starting to get a little strange. Which is why (2) – (4) usually follow soon after, to correct for their delay.

        (7) is when **** is hitting the fan and its time to start looking for another employer.

        The biggest problem is that by the time things hit (8) the private side will be in deep contraction as well. So its an open question as to where laid off examiners can go.

          1. 9.3.1.1.1

            …with a serious set of strings attached – remember those fees must balance in the aggregate, which I am sure that you recognize that if you upped the fees at one place, you need to balance to that same level by lowering fees somewhere else.

            (Congress did not hand over to the Office keys to the Mint)

  7. 8

    See? All’s clear on the Western Front while the congress critters have their pants filled to the brim because of time-card allegations.

  8. 7

    OT, but Elon Musk must be having “Cyberdyne and Hal” conniptions:

    finance.yahoo.com/photos/deregulation-at-heart-of-japan-s-new-robotics-revolution-1416434421-slideshow/

  9. 6

    5.Patent examiner attrition rate is low <5%. This means that the USPTO needs to take steps to make sure that more experienced examiners continue to do an excellent job.

    I understand the first sentence. But what does the second sentence mean, and how does it follow from the first?

    1. 6.2

      My guess is that the combination of very low turnover and the gen er al consensus of poor quality examination indicates that the ability to demand more from the examiners is available. Those examiners not able to perform can be “fired” without much adverse effect.

      But that’s just a guess.

      1. 6.2.1

        I sure hope that’s what it means. When it comes to the quality of examination, though, Night’s cynicism might be more appropriate than hope.

    2. 6.3

      For a decade beginning in the late 1990’s the USPTO had a much higher turn-over rate. This was partially due to the job of examining and the USPTO culture, but it was also due to the high private demand for patent experts. The life of an examiner is now much better, and the demand for patent attorneys/agents has also dropped.

      Most current examiners have been doing the job for <7 years and the focus has rightly been on new examiner training/oversight. Assuming that the current trend continues, this bolus of 'new' examiners will be transforming into mid-level and experienced examiners.

      Historically, these more experienced examiners have received much less oversight, management, and training. That makes sense because of the experience and skill that these folks have. However, one result of the reduced oversight is that it is significantly easier to get a patent issued from a primary.

      The USPTO needs to strategically consider how it is going to work with these experienced folks to make sure that they continue to be excellent examiners going forward.

  10. 5

    The backlog of ex parte appeals remains over 25,000 pending cases. Most of these have been waiting 18-months or more.

    As before, it’d be great to see a random sampling of 20 or so of these long pending cases to see what sort of subject matter is “lying in the wings.” It might be straightforward at this point to tank half of those cases with a half hour of analysis and writing.

    1. 5.1

      Yes let’s just gist everything away. A molecule is a molecule after all. Adding a few extra atoms is hardly patentable.

      1. 5.1.1

        Let’s just dismiss all the smelly arts if your new molecule, which is composed of old atoms and with the same old bindings that we have seen time and time again, doesn’t have at least a new atom we have never heard of or a bond that we have never seen before. Otherwise it is just ridiculous to keep giving these patents for the same old atoms.

      2. 5.1.2

        Heck, you don’t even have to climb the ladder to talk about molecules, as the three primary aspects of matter (electrons, protons, and neutrons) are ancient and the natural law of putting those things together is also ancient, and the only differences are in the configurations which can be Gisted away (and yes, this gross thinking is using the exact same logic as we have seen from the courts).

        Silly? You bet.
        But there was no limit provided to the use of the “Gist/Abstract” sword…

      3. 5.1.3

        Yes let’s just gist everything away.

        Yes let’s just attack a strawman and recite Big Q’s silly script like a braindead zombie.

          1. 5.1.3.1.1

            Same old same old

            It’s unclear why you’d expect that worthless script to be treated differently in 2014. Was there some patent case that validated the empty, mindless “argument” that objective physical structure is somehow indistinguishable from “copyright” or “Billy’s account status” or “configured to manage a bingo game”? If so, I missed it.

            Everyone is aware of quite a few other important cases which indicated that the opposite is true, however.

            But you know all this already. Keep digging.

            1. 5.1.3.1.1.1

              You use the phrase “keep digging,” but I do not think that you understand what that phrase means (seeing how a shovel seems glued to your own hand).

      4. 5.1.4

        Not only is it a strawman, it also fails to realize that it necessarily must be a standard rather than a rule. The courts have recognized you can swallow everything up in the “abstract idea,” but that doesn’t excuse the necessity of not patenting everything.

        Anon, its a shame you didn’t reply to my post back in the other thread. It took forever to get it posted.

        1. 5.1.4.2

          J, answer me this: the constitution gives which branch (and there is only one branch) the authority to write patent law?

          1. 5.1.4.2.1

            Check 1.2.1 on “Moving Forward on Unified . . . .” It is a continuation of our history discussion.

            Congress.

            Of course, when they are not clear, then the judiciary must do its best to interpret the law. The judiciary felt that Congress did not mean to patent basic building blocks of science.

            When Congress doesn’t do anything about it for fifty years, that’s on Congress, not the judiciary.

            1. 5.1.4.2.1.1

              You assume that you can just say “not clear” whenever you want to write the map, when the writing is clear (but not effective for reaching a particular desired end).

              That is part of the problem here.

              Define “basic building block”

              Does that include electrons, protons, and neutrons? Configurations of these items?

              Where do you stop at “basic?” You do see that this is a completely different line of thought than “abstract” (also undefined), right?

            2. 5.1.4.2.1.2

              Answer me this, anon: Did Congress intend for everything to be patentable?

              I agree that “basic” is not easily defined, and I see the slippery slope you are offering. But there is a slippery slope the other way. We cannot patent things that are too close to natural science or that will be a hinder innovation rather than promote it. (I see the difference between “abstract ideas” and “basic”, but they are the same in the sense that they belong in the pulbic domain.)

              1. 5.1.4.2.1.2.1

                J,

                I have spoken at great length and in great detail on my views of 101 and what Congress intended, and will not enumerate all of those thoughts yet again here.

                I will tell you though that Congress did intend 101 to be a wide open gate.

                What gets in that gate?

                ANYTHING that meets a very few criteria:

                1) Useful arts. Note deliberately that this is broader than the technological arts (however that term is defined)

                2) utility (this is where the Useful Arts limitation is vetted)

                3) one of the enumerated categories, each of which holds equal standing (the process or method category is NOT a subset of the hard goods categories).

                Further, terming my offering “slippery slope” is a bit of rhetorical wordplay. I would return that and point out that our judicial branch – including (especially) the Supreme Court cannot engage in speculative, future conjectural “MAY” impede or hinder innovation type of logic.

                Let me know when you have a present case or controversy instead of this hand-wavy “MAY” rhetorical ploy.

                (I have no issue with not allowing patents on items actually IN the public domain – see my past writings on the Myriad case)

            3. 5.1.4.2.1.3

              Because you disagree with Congress for a while, the judiciary can rewrite patent law? That makes no sense.

              1. 5.1.4.2.1.3.1

                I looked at my post a second time and, you know what, I didn’t say that the judiciary can rewrite patent law because I disagreed with patent law.

                It is so frustrating to read post after post stating how clear the statutory language is and how the judicially created exceptions ignore the plain meaning of the statute.

                The language of section 101 is almost as old as the Constitution itself. And like the Constitution, the language may seem plain but there is a lot to it and is subject to much debate. This language has been debated for at least since the mid-19th century. Congress has failed to make a bright line despite this debate, which means that Congress doesn’t want to make a bright line. Which means its up for interpretation, which means that you have to look behind the plain meaning of the statute.

                1. It is so frustrating to read post after post stating…

                  Cry me a river, then think about how frustrating it is for those of us that know the law and its history to see the ignorance portrayed in regards to what Congress did in 1952.

                  You do know the difference between writing a map and reading a map, right?

                  What you keep on wanting to point to as “interpretation” simply is NOT interpretation.

                  The latest case is actually adding an explicit term that is not there.. There simply is NO WAY to get to “interpretation” by adding words that negate the clear meaning of the statute (adding “technological” to remove business method patents)

                  Wake up J. Please do not be so Pollyanna as to close your eyes to the philosophical (and pure policy) battle that is simply out of place for what the judiciary is doing.

    2. 5.2

      RCEs Backlog is again under control — very good news.

      Backlog of ex parte appeals remains over 25,000 pending cases. Most of these have been waiting 18-months or more. — bad news

  11. 4

    Because it apparently can’t be repeated often enough: this company called “Google” could vanish tomorrow (along with every other deep-pocketed company that attracts hordes of blood-s uckers) and the broken patent system is still going to be repaired … because it’s broken.

    Blaming Google and trying to is not only a complete waste of your time but it demonstrates a great misunderstanding of how the patent system was broken in the first place. It might be the case that you had luck in the past “buying” the patent system that you wanted (e.g., the patent system that doesn’t examine your patents but just rubber stamps them and makes them incredibly expensive to invalidate) with money or gifts to your favorite judge or Congress person. That’s going to be a lot more difficult going forward because of the Internet and the great many people who are watching what you do and say very closely.

    Or haven’t you noticed?

    1. 4.1

      Right. That is why Google is giving the most of any other company and getting their executives to run the PTO and judges appointed that have no science background.

      I’ve noticed the opposite. They don’t care if you are watching.

      1. 4.1.1

        Your regurgitation of this silliness just proves my point.

        Let’s say that your have 1 billion dollars to spend. You think you can “buy” the validity of claims like the claims that Prometheus tried to assert against Mayo?

        That seems to be a fantasy of yours.

        The key word is “fantasy.”

        1. 4.1.1.1

          No that is not what I think nor is that a fantasy of mine.

          So now you are claiming that political money doesn’t buy anything?

          1. 4.1.1.1.1

            So now you are claiming that political money doesn’t buy anything?

            LOL.

            Put the goalpost back. I’m going to make myself a nice sandwich and forget you even asked that silly question.

              1. 4.1.1.1.1.1.1

                I’m afraid I don’t understand the Google point. Could you explain it? Looking at the bios of Taranto, Renya, and Hughes, they seem qualified to be appellate level judges. Surely any supposed lack of a “technical” background can’t be sufficient to disqualify them, given the large number of judges on the Fed. Cir. throughout its history that don’t have technical backgrounds. Nor do we restrict judges at the Fed. Cir. from hearing cases only in their field (e.g. only those with a chemistry background can hear pharma cases, and they can’t hear software cases). Furthermore, we don’t restrict district courts from hearing patent cases for an alleged inability to understand the tech (although that is likely a difficulty for many judges), but I would assume a judge accepting a post on the fed. cir. would understand the position and would not shy away from technology. Finally, it is clear that some of the best legal minds in patent law do not have the “technical” background you feel is necessary. Just take a look at the leading Fed. Cir. advocates to see how many of them qualify to have a USPTO reg number.

                But more broadly, what makes you believe they are “Google judges”? (and what does that even mean?) For example, Judge Hughes worked at the DOJ for practically his entire career. I am confused as to how that shows he is a “Google judge”?

                Is the idea that because they were appointed by Barack Obama, and Obama may have gotten a lot of money from Google, therefore the judges must be tainted by that money? If so, I hope you question the qualifications of any judge.

                If you point is there is too much money in politics and that causes our democracy to suffer, I agree. Corporate interests, including those of the patent bar, should not be able to capture public interests. Perhaps the best result is just to abolish the Federal Circuit and we would solve both of our perceived problems (yours being alleged “google” judges, mine being a court allegedly captured by the patent bar).

                1. First I do not agree that some of the great legal minds in modern patent law were not trained in science and patent law. Please name them. In fact the opposite is true. The legal minds that have consistently shown an ability to understand patent law and science are Newman and Rich both of whom had a science background and patent law background. Rader may be an exception, but to my mind the he was suckered into the abstract exception by Lemley which lead to the down fall. I know another exception is Chisum who rightly sees Benson as the source of all evil.

                  Second, part of the qualifications for being on the Fed. Cir. were supposed to be a science/patent law background. That was part of the formation of the court.

                  Third, the unholy trinity of Taranto, Renya, and Hughes have consistently evinced ignorance of patent law and ignorance of science. The DOJ, by the way, has been anti-patent since Benson.

                  The big picture is simple to understand. Obama picked the three to “get the patent problem” under control. All three are ignorant of patent law and science. They are the barbarians that can brutalize the system without a conscience because science and patent law mean nothing to them.

                  They are Google judges because yes Obama has funneled massive amounts of money from Google to Democratic candidates. These three judges fit the criteria that Google wants. Judges that will severely restrict patent law outside of Congress. So, Obama needs activist judges that want to severely restrict patent law. Legislate from the bench. You have to be ignorant of science and patent law to do that.

                  It is much harder for an educated person to do this because they realize the harm they are doing to something they care about.

                  I don’t believe they are controlled by Google or Obama now. I believe that they were picked because of their ignorance and willingness to legislate to severely restrict patent law.

                  And, please, Obama has said he intends to get things done on his own and Obama believes there is a problem. And, yes, I know that Google probably got the hear of Obama and convinced him with lots of face time and that all of this is all so subtle. I know how inside the beltway works. I grew-up with some of these people.

                  And, I do think there were some problems. A person like Rich could have come up with a set of solutions that would have had the patent system humming along again. What has happened is a mere pretext to burn the system down or morph it into something that is not a danger to Google.

                  And it is pretty clear why Google is attacking IP rights on all fronts. It is in their interests.

                  I believe Chen was to be a Google judge. I have heard virulent anti-information processing statements from him, but I think the fact that he is trained in science and patent law prevents him from the activism we see in the unholy trinity.

                  And, for another time there is massive harm being done now to our innovation engine by all this “reform.”

                  A Google judge: ignorant of science and patent law. Believes that patents are not really good for promoting innovation. Is an activist judge that has no problem not applying the law, but making laws. Is half psychotic in that they have their opinions of how the patent system works without ever being part of it. They believe what they read by people like Lemley.

                  That’s the quick of it.

                2. I will quickly say that as a matter of fact the three say things that are grossly wrong about science and patent law.

                3. Also, any talk of the “patent bar” having any power after the AIA is offensive and ludicrous. The AIA weakened the value of any given patent by at least 30% and probably closer to 50%.

                  So, please.

                4. One of the comments from Obama about the AIA was that its passage would create more jobs NOW.

                  Has any study confirmed this?

                  I think that rather the opposite is more likely, given that the AIA has made patent rights more uncertain, more costly to obtain, and (still) longer to get (and when combined with judicial activism, if possible to get or hold at all).

                5. NWPA,

                  Would you consider adding one more attribute?

                  The cheering on of the philosophical nonsense of Stern, coupled with the willful violation of the separation of powers doctrine by attempting to re-write patent law through the judicial branch as opposed to properly vetting any such “policy-driven” changes in patent law through the constitutionally appointed legislative branch.

                6. anon, I think that activist judge encompasses what you wrote.

                  Lemley is an activist. I don’t think he believes what he writes. I think he wants to end patents and believes the end justifies the means.

      1. 4.2.1

        Your “anti” tendencies are showing again

        And your [deleted] tendencies are showing again.

        (hint: patents are a good thing)

        hint: oxygen is a good thing. Try to breathe some occasionally instead of huffing your patent kool aid all the time.

        1. 4.2.1.1

          My o my – there is only negativity and insults from the Malcolm one.

          You need to be in a different line of work.

          1. 4.2.1.1.1

            there is only negativity and insults

            Of course it seems that way to you. See comment 3.

            Now read your own comments. Or maybe have someone read them to you.

            1. 4.2.1.1.1.1

              Obviously I saw comment 3 and you know this because you responded to my comment to that comment.

              I was not impressed with your error there.

  12. 3

    Notice has been prepared for Subject-Matter-Eligibility Guidance, but the USPTO and White House is reviewing that notice based upon Ultramercial and will be released “as soon as we can.”

    What the USPTO needs to implement is a system-wide requirement for evaluating eligibility continuously. That requirement is necessary because eligibility problems might not present themselves clearly until the 102/103 analysis is completed and the relationship of the claims to the prior art is established.

    The Ultramercial case emphasized the “threshold inquiry” aspect of 101 and that’s important. But 101 doesn’t cease to apply to claims just because someone has performed “an inquiry” at “the threshold.”

    1. 3.1

      Yes that is what the PTO needs to do in complete contravention of the 1952 Patent Act and at an enormous and ridiculous waste of personnel time.

      What the White House needs to do is cross out 101.

        1. 3.1.1.1

          How about we just hew to the actual words used by Congress?

          That’s never, ever going to happen unless we have a completely new rewritten set of “actual words.” And trust me: you won’t like those new “actual words.”

          There is no question that the “actual words” chosen by the drafters of 101 in 1952 were chosen with the understanding that the “actual words” didn’t mean what they appear to mean.

          Nobody in Congress thought that mental processes were eligible for patenting and nobody in Congress thinks that now (at least I haven’t seen any Congress people admit that). Even confused people like Judge Rich never stated that they were attempting to make mental processes eligibile for patenting.

          And yet they used the word “process,” unadorned. Plainly there are limits to eligibility that aren’t readily discernable to a naive reader from the face of the statute. But those limits are there.

          Of course, none of this is news to you.

          1. 3.1.1.1.1

            Rich wrote the 1952 Act he intended 101 to be a broad door and for 102, 103, and 112 issues to be handled after 101. Alice is not that.

            1. 3.1.1.1.1.1

              I agree. IMO 101 has gotten out of control because it is an easy subjective “I know it when I see it” test, and because the PTO and courts were not doing a good job weeding out patents/applications which fail 102/103/112.

              1. 3.1.1.1.1.1.1

                the PTO and courts were not doing a good job weeding out patents/applications which fail 102/103/112

                Those statutes don’t work very well or they don’t work at all to “weed out” the types of patent claims that some people mistakenly believe they are entitled to.

                I’ve explained why ten thousand times but I’m happy to explain it again if you still don’t understand this fundemental point. The Supreme Court certainly gets it and now there’s no question that most, if not all, of the Federal Circuit judges get it, too. In fact, your proposition was expressly mocked by the CAFC as recently as last week.

                1. Because “statutes not working well” is a valid reason to ignore the constitutional separation of powers and have the judiciary write patent law…

                  Oh wait, no it is not.

          2. 3.1.1.1.2

            And trust me: you won’t like those new “actual words.”

            You are indeed a legend in your own mind.

            And please move the goalposts back from the completely in the mind reflex of yours.

  13. 2

    >but the USPTO and White House is reviewing that notice based upon >Ultramercial

    Great the White House is determining patent eligibility. I wonder if they will have a group of business leaders come in and write something up for the president.

      1. 2.1.1

        It is a good article. Google’s influence has been enormous on the patent system and doesn’t seem to be stopping. Remember Google is number one.

        What is particularly vexing about Citizen’s United is that the founders thought that trusts (corporations) were inherently dangerous and should be limited in size. There is no historical basis for making corporations people.

        1. 2.1.1.1

          What is particularly vexing about Citizen’s United is that the founders thought that trusts (corporations) were inherently dangerous and should be limited in size.

          If you’re suggesting legislation (or Constitutional amendments) that would function to generally diminish the ability of the ultra wealthy to manipulate our political system, I’m all for that. The details are sort of important, though.

          1. 2.1.1.1.1

            You mean like the details of the closed door, non reported meeting between Lee and Google and other “industry leaders” that occurred this past February?

            Details like that (that scream for transparency)?

            1. 2.1.1.1.1.1

              the closed door, non reported meeting between Lee and Google and other “industry leaders” that occurred this past February

              In case you forgot, hundreds of patent applicants meet behind “closed doors” with government employees every week and have off-the-record conversations with them about “what’s patentable”.

              I seem to recall that you very desperately wish to keep those conversations off-the-record.

              But I want to put those conversations on-the-record, verbatim, so the public can see what “arguments” are being made by both parties during the prosecution of a patent. That’s relatively easy to achieve.

              Let’s address that easy-to-address transparency issue first and then we can figure out how to prevent agency officials from talking with the public (e.g., individuals and corporations likely to be affected by agency decisions) about general matters “off the record”. Baby steps. Since you care about transparency.

              1. 2.1.1.1.1.1.1

                That is some incredibly deep (and wrong) spin there Malcolm – on both the initial item under discussion and your new item that you bring up.

                1. Ah, so “transparency” only really matters when you can make some conspiratorial argument that someone’s views are limiting your patent rights in some manner.

                  Fascinating.

                  And you believe that should be the case during a time when the number of granted patents is waaaaaay higher than during any other time in the history of the world.

                  Super fascinating stuff.

                2. Let me know when you want to stop spinning.

                  (hint: you are not characterizing my position on the interviews correctly)

      2. 2.1.2

        Google is the dismal tide. I notice, by the way, that many Google in-house attorneys read these posts and not one comes to the defense of Google. Google’s MO is to just not respond to their mischief. That is their corporate MO in all sorts of stuff they have been involved in. Silence.

  14. 1

    about 30% of applications involve an interview prior to the initial disposal

    Anecdotally, most of my applicant-initiated interviews occur after final rejection. Why don’t more of you try doing an interview after first action instead?

    1. 1.1

      Interviews can be helpful. But there not a magic bullet. The door is always open on our side too. I have less examiners call me to propose interviews than examiners I call to schedule interviews.

      If examiners have some proposed language that they are willing to allow, by all means give us a call. But don’t take it personally if we don’t accept.

      1. 1.1.1

        I agree, they’re not a magic bullet. It depends in large part on the examiner as well as the willingness of the applicant to negotiate. But what I don’t really understand is why all of these things (substantive amendments, good arguments, or even just a phone call) frequently come after a final rejection and only rarely before.

        As for calling you guys – I do that, often. Probably for most of my allowances. Unfortunately, it’s also pretty frequent that when I’m ready to write my first action, I can’t really tell where you plan to go with the case – or even what the applicant thinks they really invented – so calling the attorney seems like a waste of time.

        1. 1.1.1.1

          “…so calling the attorney seems like a waste of time.”

          Plenty of OA’s give attorneys and applicants the impression that calling the examiner would be a waste of time. Some of the OA’s I receive are so silly that the only question I would have for the examiner is, “Are you serious with this?”

          In a lot of the interviews I conduct I will take the opportunity to let the examiner know that for dependent claims, and features of indepedent claims, that the examiner has hand waved at, I will be calling BS on that in my written response and expect some actual new evidence and arguments from the examiner, or a withdrawal of the rejection. Otherwise those arguments tend to get ignored in the next OA.

          Interviews cost applicants money beyond the cost of preparing the response, and not all applicants are willing to bear that cost. Especially when they’ve paid the cost in the past, and gotten just a new non-final OA that they have to pay again to respond to, or a final OA where everything they paid to have argued during the interview and the written response is ignored.

          1. 1.1.1.1.1

            “Interviews cost applicants money beyond the cost of preparing the response, and not all applicants are willing to bear that cost.”

            If you don’t mind telling us, how much would you guesstimate a 5 minute interview costs? How about a 30 minute interview? An hour interview? And also an in-person interview.

            Just on avg, and at your place of work.

            1. 1.1.1.1.1.1

              And also an in-person interview.

              Does that include the ticket to fly the senior attorney or partner across the country, as some firms do on a regular (monthly, at least), basis, not to mention the hotel, meals and lodging expenses for those attorneys?

              Some clients (guess which ones) can afford to pay that cost without blinking. For other clients it’s out of the question … unless payment is required only in the case of success.

              1. 1.1.1.1.1.1.1

                If you would like to provide a breakdown along those lines it would be fine. Or just state how much the actual interview costs and then say “plus travelling costs”.

              2. 1.1.1.1.1.1.2

                I wouldn’t even hazard a guess, but if you would like to name some clients, even one, that fly senior attorneys and/or partners on a monthly basis, put them up in hotels and pay for their meals, to conduct examiner interviews, I’m certainly interested in hearing about them.

            2. 1.1.1.1.1.2

              My time here is paid for, so it doesn’t cost my clients anything extra for me to conduct an interview.

              A five minute interview? If you mean how much does it cost the client for the attorney to pick up the phone and ask the examiner a quick question (e.g. “How are you interpreting the polycrystalline diamond of the reference to correspond to the claimed metal foam?”), usually an attorney would bill a tenth to a quarter hour for that. You have to memorialize any such conversations so that accounts for some time too. Some attorneys bill a quarter hour as their lowest increment, some a tenth of an hour. It depends.

              A 30 minute interview is probably billed anywhere from an hour to 2 hours if done on the phone. If the examiner requires proposed amendments those have to be prepared, as well as an agenda if the examiner insists. Most interviews are reported to the client, so there’s time for doing that. Depends on the client. Some want a report, some don’t. Some want a very detailed report, some are fine with a quick summary. I can’t recall ever billing more than about 3 hours for a half hour phone interview.

              An hour interview would probably be similar. Anywhere from 2-5 hours of billable time.

              When I conducted in person interviews I would typically bill 2-3 hours of time. I was in the DC area so my travel expenses were neglible, but some attorneys travel and have other expenses (e.g. hotels, meals) that get billed to the client.

              Some interviews are attended by more than one attorney, e.g. a partner or senior associate with a junior associate or patent agent or anybody without a registration number. So clients have to pay for time for both.

              Billing rates vary widely. I haven’t had one in a long time, so my estimates may be off, but in DC I would say first to third year associates are billing in the $250-$400/hr range, 4-6 year associates in the $400-$600/hr range and partners $600+/hr range. NY, SF, SV, Boston, Chicago, maybe areas like Dallas, Houston, and Philly being comparable (DC, SF, SV, and NY having the highest average rates).

              I guess my point was: interviews cost clients money. And if all they get from it is, “Well, I’ll need to do a new search” or “Applicants arguments are not persuasive, see In re Boilerplate” they don’t feel they are worth the expense.

              Believe it or not clients have budgets for patent applications.

              1. 1.1.1.1.1.2.2

                “I guess my point was: interviews cost clients money. And if all they get from it is, “Well, I’ll need to do a new search” or “Applicants arguments are not persuasive, see In re Boilerplate” they don’t feel they are worth the expense.”

                I hear you on that. That’s a great selling point on why they should hire a good attorney who knows how to get more than that.

                1. You’ve been boasting on this site for about 7+ years that you could do it so much better than those of us that are actually doing it, yet you’ve declined every invitation to come on out and show us how it’s done.

                  I wonder why that is.

                  Lulz

                2. AAA you act like you think it’s just me that notes that some people can get more out of others. It isn’t. I can assure you that some of the partners I’ve dealt with are like bazillion times better at getting results than their minion attorneys. It’s almost hilarious to see the difference actually.

                3. I don’t act like it’s just you. I don’t think it’s just you either. These patent blog type interwebz sites are chock full of examiners all professing to know how to practice better than actual practitioners. I am personally extending a warm and welcome invitation to each and every one of them to join us and show us how it’s done.

                  I wonder how many will accept.

                4. BTW,

                  I’m well aware of the rather broad spectrum of ability in the patent bar. Some of the stuff I see makes me wanna holler.

                  But I don’t care if it’s the reincarnation of Clarence Darrow calling the examiner, if the examiner is one of those juniors who simply rejects everything because they know that the OA will get signed, or who responds to every proposed amendment and/or argument with, “Well, I’d have to do another search” or one of those primaries who feels entitled to first class passage on the RCE gravy train (I’m thinking of you, Clark) before they’ll indicate anything allowable, they’re not going to “get more than that” no way, no how. Those examiners exist. And there are a lot of them. You may not be one of them, but trust me, they’re there. You probably know quite a few of them yourself. I’m sure you’ve spoken to them too and been absolutely amazed at the breadth and depth of their ignorance. Are you able to educate every single one of them? I truly doubt it.

                5. “if the examiner is one of those juniors who simply rejects everything because they know that the OA will get signed”

                  You gotta get the primary on the horn as well. Or just call the primary in the first instance. Surely you know this.

                  ““Well, I’d have to do another search””

                  Just ask if they didn’t do the search already. And if so, ask for the reason for the new search (if you’re trying to amend substantially then there may not be a way around that). Perhaps it’s a new claim construction they’re adopting? (good info to know). Perhaps inquire if it is at all possible for you to obtain a complete search at any given point in time and when that point in time might exist if so.

                  Bottom line is, while you may not get allowable subject matter out of an interview every time there is always always always good stuff to be plucked!

                  “before they’ll indicate anything allowable, they’re not going to “get more than that” no way, no how. ”

                  See, this is your problem, well one of your main problems. You’re after the prize of allowability, and not the building blocks of allowability from whence allowability floweth. Acquire those first. The prize will fall into your lap shortly.

                  If you need exposition on what building blocks you’re trying to acquire do inquire.

                  “Those examiners exist. And there are a lot of them. ”

                  Yeah so what? You can get plenty even out of those examiners.

                  “You probably know quite a few of them yourself. I’m sure you’ve spoken to them too and been absolutely amazed at the breadth and depth of their ignorance. Are you able to educate every single one of them? ”

                  It’s a slow process I will admit. But, since the PTO isn’t going to do it someone’s gotta. And that someone is you or me among others.

                6. I almost never ask, ” Will this amendment make it allowable?” because I pretty much know that no examiner will answer that. I do ask if an amendment will overcome a rejection, with the understanding that a new interpretation and/or new search might be in the offing. There are plenty of examiners who won’t even answer that question.

                  I conduct interviews to try to understand the rejection. But sometimes there is no explanation of the rejection other than, “The claims are being rejected because the examiner doesn’t think they’re long enough to allow” which is fine. When I learn that I know the action to take.

                7. That’s all nice to hear AAA. I will additionally venture to say that there is still more that can be done. All that can be done in a case changes case to case of course. But there is nearly always a way to lay the ground work for an allowance (unless the art is just great or the app is truly fed somehow ahem 101). If not on the immediate next action then on the next. And that’s no matter the examiner. At least I find that there is. Usually a combination of establishing what each side would like for the claim to actually be covering, establishing words acceptable to each side to have the claim so cover exactly that in the BRI, establishing what sort of art that it would take to address such limitations as agreed upon, establishing what sort of art is currently on record (that may involve teaching the examiner how to find facts, as “in a vacuum” away from the case) generally works out pretty well for me. Many examiners will agree to do those things mentioned above if for no other reason than they’re unfamiliar with how any of them could affect their decision. Especially if you couch them in everyday not highfalutin’ language. And once you illuminate the way to examine for them in terms of basic building blocks, they’ll feel as if they’ve arrived at the conclusion you want on their own. Of course then things go pretty smoothly, generally.

                  But in any case, I’ll just throw that out there for ya, gl.

              2. 1.1.1.1.1.2.3

                So you’re saying, basically somewhere in the range of 30-60 dollars for a 5 minute phone convo to around 500-900 dollars for a couple of hours for a 30 minute convo.

                At those kind of rates I think I’d just pick up the phone myself and ask the examiner how he was interpreting x. Or present him an amendment. But, if they think it’s worthwhile I guess that’s their money.

                1. 6, the problem with that is that the patent system requires us to translate real inventor thinking to patent law speak. Few inventors can communicate with an examiner and most have no interest in learning what all this patent law nonsense is.

                2. “6, the problem with that is that the patent system requires us to translate real inventor thinking to patent law speak.”

                  Yeah I know what the justifications are NWPA.

    2. 1.3

      I find interviews very helpful, as most examiners are just trying to come to some common ground. But
      1. They are an added cost, especially if people fly in.
      2. Foreign clients do not always feel comfortable with the oral negotiations. It may be that their management want to know exactly what is being said, and that can only come from a written, and translated, document.
      3. An interview is a waste of time if the Examiner has not read the documents, which rarely (but sometimes) happens.
      4. The courts and PTAB only review the paper record. But if the Examiner interview contradicts what is written down, you have to finesse arguments evidence and arguments that address what was said v. what was written, which sometimes comes off badly or leaves you in a bad position.

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