Director Lee: Next Step is to Focus on Patent Quality Initiatives

by Dennis Crouch

In her confirmation hearings on January 21, Michelle Lee reported to the Senate that both the USPTO and the Courts have taken significant steps in addressing problems in the patent system following enactment of the AIA. However, Lee supports further “balanced” statutory reform to particularly address patent litigation abuses.  However, Lee was unwilling to take a stance on any particular reform, such as the automatic-fee-shifting  that was a central aspect of the Goodlatte patent reform bill in 2014.  Republicans now control the Senate, and thus Republican support is a necessary element of the confirmation hearings.  However, it appears that Lee will garner full support from the committee. A letter sent the same-day to senate leaders signed by 200+ entities also calls for balance and moderation in any patent reforms. [Inventing America Patent Letter]

Lee did take more of a stand in her speech at the Brookings Institute on the 22nd in explaining her major top priority of enhancing the quality of patents issued by the USPTO to reduce the cost associated with issuing patents that should not have issued.  As part of that goal, the agency will soon announce a set of proposed quality initiatives and look for input from stakeholders.  In addition, Director Lee has appointed Valencia Martin Wallace as the first Deputy Commissioner for Patent Quality. Martin Wallace was already an Assistant Deputy Commissioner focused on Electrical Disciplines after rising through the ranks of the PTO.

409 thoughts on “Director Lee: Next Step is to Focus on Patent Quality Initiatives

  1. 17

    At 7312111 in this very thread, your comment is most welcome, Sticks.

    I suspect that it is “new” for everybody here, and not just you, that, in prosecuting a patent application at the EPO:

    “….the primary task of their EPO counsel is to help the Examiner to see how to draft the Votum.”

    So in reply, as a free-standing new post, I run it up the flagpole to see what reaction it gets (esp. from the posters 6 and Random Guy).

    Frankly, Readers, when it comes to “Quality”, I see it as a key difference between the USPTO and the EPO, that applicants at the EPO don’t get to issue until they have brought the 3-member EPO team that constitutes the “Examining Division” around to entering a so-called “Votum” in the EPO file, that is to say, solid reasons why the claimed subject matter does indeed exhibit an inventive step over the art. For some of the stuff allowed by the USPTO, writing such a Votum would be quite challenging.

    Another key difference is the EPO c-i-t form of claim. Sorting the elements into those found in the prior art starting document, with the invention “characterized in that” the other features are present, will very often brutally expose that there is no inventive step at all.

    So, Lee minions, what do you say about that?

    1. 17.1

      I don’t ever have trouble writing a reasons for allowance (votum?). But I don’t have to futz around with an “inventive step”. I suppose I could come up with one but generally I don’t see why we would in Merica the Great.

      1. 17.1.1

        Thank you 6. Do I see it right, that the file requires your written reasons, why the patentability of the claimed subject matter is not prejudiced by any of the obviousness objections you wrote earlier into that same file. That would be interesting for me to know.

        As you say, why should you have to “come up with” an inventive step. I agree entirely. That job, to the extent that it exists, is one for the prosecuting attorney. the ED just adopts it for the EPO file.

        BTW, in the EPC, Art 56, “obvious” and “inventive” are no more than antonyms, one of the other.

        1. 17.1.1.1

          You would be well advised to study US law, particularly the 1952 Act, wherein our Congress made an explicit choice NOT to view, as you offer the EPO to do, invention as the antonym of obvious.

          An article by the architect of the 1952 Act, explicated this in great detail. That article was written by Judge Rich (and I would posit that it is such explications that draw the fury of Ned Heller and the denigrations of Judgr Rich and the learned judge’s intimate views on the law).

          As for Miss Lee to make any such thing compulsory, since the executive agency does NOT have the power to make law (see Tafas), she would only be able to make such a compulsory burden to be placed on the examiners.

          That being said, I would very much applaud such use – and have even advocated such directly in the past.

          This then, a rare common point we share (at least until we get to the ability to make it a burden for the selected “doer” of the action).

          1. 17.1.1.1.1

            You don’t provide a clue, but I suppose you allude to the pre-1952 “flash of genius” and 35 USC 103’s “shall not be negatived” language. That is all irrelevant and beside the point, because under the EPC it’s no different. Do not make the mistake of supposing that the EPC’s “inventive step” connotes a flash of anything at all, still less “genius”.

            Recourse to any dictionary of the English language will reveal to you that obvious and inventive are antonyms. Of course, each jurisdiction is free to write the caselaw that tells us how to judge what subject matter is “obvious” and what is not.

            1. 17.1.1.1.1.1

              I have provided plenty of clues (having even posted links in the past – sorry I don’t have the links handy at the moment) and your desire to consult a standard dictionary for terms of art – especially these terms of art can only be classified as asinine.

            2. 17.1.1.1.1.2

              Not my original link, but it took all of ten seconds to re-find a link to the same information:

              law.case.edu/lawofpatents/docs/Chapter_5.Kettering_Speech.pdf

              Enjoy with a mind eager to learn.

              1. 17.1.1.1.1.2.2

                Thanks for that Paper. Of course, European patent statutes also studiously refrain from defining “invention” too. Instead, they set up a requirement for objective non-obviousness. In particular, in the EPC, Article 52(1) provides:

                “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. ”

                but then Art 56 defines Art 52’s “inventive step” as “not obvious”.

                See the parallel with Rich? Rich demands just 4 objective conditions for patentability: eligible, useful, novel, not obvious. The EPC requires the same 4 objective conditions, no more, no less.

                “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”

                So I think the framers of the EPC were of the same mind as Judge Rich. an objective standard for patentability is needed, and that standard is “not obvious”. Going by this Paper, Rich would bless the EPC scheme of patentability.

                If you disagree, tell us where you see the difference, between the Rich vision of patentability and the EPC implementation (Art 52-56, eligibility, utility, novelty, non-obviousness) of conditions for patentability.

                1. Move the goalposts back and note the parts of the paper wherein Judge Rich rejected your position on trying to equate the two words.

                2. The Rich-authored Kettering Award Address (drawn to my attention by anon) reveals Rich’s distaste for the enquiry how much inventive activity does it take to qualify for a patent. I share that distaste. So does the Supreme Court of Germany, which has scrapped as unworkable the difference between “inventive activity” and “inventive step” in its respective 10 and 20 year patent categories. These days, obviousness in Germany is a binary Y/N enquiry, for all utility patents.

                  The Rich Address vindicates the EPO’s TSM approach to obviousness, sweeping away all subjective assessments about whether the claimed subject matter is “inventive” enough to qualify for issue, and replacing it with a brutally objective, transparent and predictable binary Y/N obviousness enquiry.

                  I see that Giles Rich was the son of an eminent patent attorney. So, he was steeped in patent law all his long life. If he were alive today, he would I am sure be enthused by the EPO’s approach to obviousness.

                3. While I am appreciative of your reading the references I provided, and of the laudatory things that you have to say about Judge Rich, I cannot help but notice that you have not yet addressed the point that precipitated this discussion.

                  I cannot tell if you have learned that lesson.

                  Pray tell, do.

        2. 17.1.1.2

          “Do I see it right, that the file requires your written reasons,”

          Nah, it isn’t “required” but most spes make us do it anyway to appease the qases and to make it easier for them or the public to review.

          And no, usually I don’t drone on about how there is something now making the claim not obvious ivo the art of record. Instead I just write down what the features are that I see as distinguishing patentably. Usually that’s how it happens. Of late I have a spe whose hand I have to hold so much I just go ahead and put down why it isn’t obvious or whatever little blurb. This spe is particularly afeared of the boogeymen qases.

          1. 17.1.1.2.1

            Well thanks again 6. For me, novelty is relatively boring because it is piss simple to plug into a claim a feature that renders the claim novel over the art. If what you write down is a note of what features deliver novelty, that’s not in itself very interesting.

            More challenging is to think through, and then express in words, what it is about the claim that saves it from being obvious. Examining Divisions at the EPO have to do this, every time they feel inclined to allow an application.

            From your contributions here, I get the impression it would be no trouble for you. But from my overall “take” on what gets issued routinely by the USPTO, I have the feeling though, that it would be considerably more challenging for many of your brother and sister Examiners. Still, practice would make perfect, wouldn’t it.

            1. 17.1.1.2.1.1

              ” If what you write down is a note of what features deliver novelty,”

              Usually what I write down is what makes it both novel and non-obvious. I try to be comprehensive like that if possible all at once.

              “More challenging is to think through, and then express in words, what it is about the claim that saves it from being obvious. Examining Divisions at the EPO have to do this, every time they feel inclined to allow an application.”

              Sux for them.

              “From your contributions here, I get the impression it would be no trouble for you. ”

              Nah, not really.

              “Still, practice would make perfect, wouldn’t it.”

              Yeah probably.

              1. 17.1.1.2.1.1.1

                I enjoy reading your stuff, 6. It often brings a smile.

                I see that obviousness reasoning is all so easy for you. You know, you would enjoy serving on an EPO Board of Appeal. No further right of appeal for the patent owner, and that for the entirety of a market of 600 million consumers. When you pronounce it obvious, the claim is dead and gone, for the whole of Europe. It is pretty scary, appearing for the patent owner before an EPO Board of Appeal. I daresay you would enjoy that tension in the room.

                1. Smiling at the thought of anti-patent 6 with such beaurocratic power…

                  If that’s not twisted, I’m not sure what is.

                  Yet another “with a friend of patents like this, who needs enemies?”

                2. Yeah I might max, but idk man, I’m more of a “work out the issue between individuals” sort of person. It’s so much easier that way and works for like nearly ever case. It would likely work for every case where someone wasn’t acting an ar se if I were a bit better, but I have a ways to improve yet on my abilities of persuasion.

          2. 17.1.1.2.2

            Well thanks again 6. For me, novelty is relatively boring because it is relatively simple to plug into a claim a feature that renders the claim novel over the art. If what you write down is a note of what features deliver novelty, that’s not in itself very interesting.

            More challenging is to think through, and then express in words, what it is about the claim that saves it from being obvious. Examining Divisions at the EPO have to do this, every time they feel inclined to allow an application.

            From your contributions here, I get the impression it would be no trouble for you. But from my overall “take” on what gets issued routinely by the USPTO, I have the feeling though, that it would be considerably more challenging for many of your brother and sister Examiners. Still, practice would make perfect, wouldn’t it.

          3. 17.1.1.2.3

            Well thanks again 6. For me, novelty is not so interesting, because it is relatively simple to plug into a claim a feature that renders the claim novel over the art. If what you write down is a note of what features deliver novelty, that’s not in itself very interesting.

            More challenging is to think through, and then express in words, what it is about the claim that saves it from being obvious. Examining Divisions at the EPO have to do this, every time they feel inclined to allow an application.

            From your contributions here, I get the impression it would be no trouble for you. But from my overall “take” on what gets issued routinely by the USPTO, I have the feeling though, that it would be considerably more challenging for many of your brother and sister Examiners. Still, practice would make perfect, wouldn’t it.

            1. 17.1.1.2.3.1

              Why the repeat of the post above? Because two words snagged the filter and attracted an “in moderation” flag. They do not appear in the second posting.

              I see the flag has gone. Thank you Moderator.

    2. 17.2

      I believe that with the USPTO that it is completely optional for the examiner to explicate in any meaningful detail the reasons for allowance (the equivalent to the EPO ‘Votum’).

      The difference perhaps being in that the US, such is not strictly a legal requirement (that damm sovereignty thing rearing its head again, perhaps).

      1. 17.2.1

        Again, thanks. Optional then.

        Just an idea of mine, (and no encroach on the USA’s sovereignity) but would quality rise if Ms Lee were to delicately flex her fragrant muscles and order it henceforth to be compulsory? After all, you yourself told us it would be no trouble for you personally. But your colleagues? For them, might it be a tad more troublesome, at least every now and then?

        1. 17.2.1.1

          Oops, sorry folks. I thought there I was in dialogue with 6. Never mind. Makes no difference to the question.

          1. 17.2.1.1.1

            Not strictly a legal requirement at the EPO either, strict or otherwise. Just Routine mundane Office procedures, imposed by EPO in house management, presumably to maintain “Quality” and consistency and a good reputation.

  2. 16

    Regarding these meetings with stakeholders, are they at least on the record, open to the public?

    1. 16.1

      Less than a year ago, the answer to both questions was a resounding “NO.”

      Maybe it was one of those “quality” thingies…

    2. 16.2

      I fear that the influential “stakeholders in” a specific part of the Executive, namely the USPTO, have desired mandates and aims for the USPTO which are arguably broader than that strictly within the delegated authority of the USPTO, and moreover, that “the USPTO” may be sympathetic with those particular “influential” stakeholders and their mandate.

      I fear this because “the dialogue” of those “stakeholders” might be used by “the USPTO”, to try to lead or influence the Legislative or Judicial branches, the way a tail might wag a dog.. so that in the capacity of following the law within the mandate given it the tail follows, but in that the goal of the tail becomes to influence the authority that makes the laws i.e. that wags it, if successful, it in fact becomes the “wagger”.

      Query whether any attempt by “the USPTO” to “lead the dialogue”, to exert influence on the other branches which make the laws it is to follow, is ultra vires the official responsibilities and duties of the USPTO… or is it simply good politics of modern “democracy”?

      1. 16.2.1

        anon2, I recall when Hillary consulted with stakeholders behind closed doors to craft a medical care bill in ’93 or so, the resulting uproar brought the GOP to power in the House for the first time in 45 Years. Even if it is legal, and there was substantial question of whether it was legal, it did not have the appearance of impartiality or of fair and open debate.

        Here is a link to the decision: link to aapsonline.org

        It quotes the relevant act as follows:

        “FACA places a number of restrictions on the advisory committees
        themselves. Before it can meet or take any action, a committee
        first must file a detailed charter, see i~ § 9(c). The committee
        must give advance notice in the Federal Register of any meetings,
        see id. § 10(a)(2); and it must hold all meetings in public, see
        id. § iO(a)(1). Under section 10, the committee must keep
        detailed minutes of each meeting, see id. § 10(c), and make the
        records available– along with any reports, records, or other
        documents used by the committee–to the public…:

    3. 16.3

      Dennis, please disregard my posts awaiting moderation in thread 15, and let me know what part of your site posting rules, my post in this thread 16 (currently awaiting moderation) has run afoul of should you decide not to allow it.

  3. 15

    Anyone care to speculate why the Ms. Lee has chosen to describe one of her focuses as the “quality” of granted patents rather than “validity” of granted patents or “quality of examination” (which seem more straightforward conceptually)?

    Is it because of the “dialogue” of the “stakeholders”? (notice the “air quotes”)

    Anyone care to speculate on the metes and bounds of the her concept “patent quality”?

    1. 15.1

      Remember the Execute branch (as opposed to the Legislative or Judicial) does not actually make law… patent or otherwise… but is required to follow the law.

      1. 15.1.1

        the Execute branch (as opposed to the Legislative or Judicial) does not actually make law… patent or otherwise… but is required to follow the law.

        I don’t see any indication or suggestion from Ms. Lee that the PTO isn’t going to “follow the law.”

        Question: if a client comes to you with an extremely valuable non-obvious correlation and asks you to obtain claims which would prevent others from applying that correlation in their otherwise unpatentable business endeavors, are you “following the law” if you cleverly draft a claim that fulfill’s the client’s dreams?

        Question: if a client comes to you with an idea for a “new display” that is structurally indistinguishable from prior art displays but instead distinguishable only on the basis of the information communicated by the display, are you “following the law” if you submit claims to the PTO designed to protect this “new display”?

        Question: if a client comes to you with a data structure encoded on tangible media, where the data structure encodes information for 3-D printing an incredibly useful jet engine component, are you “following the law” if you submit claims to the PTO designed to protect that data structure?

        I’ve no doubt that the PTO doesn’t always “follow the law” but in nearly every case it’s because it’s bending over backwards to help the applicant avoid “following the law”. That’s the real problem.

        Nobody is surprised that the usual patent maximalists are attacking the PTO like there’s no tomorrow. It’s what they always do. And of course they are going to turn up the volume when they don’t get what they want, regardless of whether their wishes involve “following the law” or not. Take it to the bank.

        1. 15.1.1.1

          >Nobody is surprised that the usual patent maximalists are attacking >the PTO like there’s no tomorrow.

          Nobody is surprised that the judicial activist are actively paying bloggers to blast the most popular blogs with sound bites.

          1. 15.1.1.1.1

            Nobody is surprised that the judicial activist are actively paying bloggers to blast the most popular blogs with sound bites.

            Who’s “getting paid” to “blast the most popular blogs with sound bites”, NWPA?

            I’m not.

            Or are you just channeling that little spaceman who lives in your tinfoil hat again?

            1. 15.1.1.1.1.1

              Don’t forget: the patent system is not under attack…

              Um sure… (those little spacemen tell you that…?)

              1. 15.1.1.1.1.1.1

                Don’t forget: the patent system is not under attack…

                There’s a big difference between observing that a system is being criticized, on one hand, and accusing people of being paid to write “soundbites” in the comments section of a blog.

                No surprise that you are having difficulty with that.

        2. 15.1.1.2

          If the correlation is “Integrated” in a business method, ( which is definitely patentable) yes you are following the law. See ( Diehr, Bilski, and Prometheus).
          Any questions regarding Integration?
          ::Silence::

    2. 15.2

      Anyone care to speculate on the metes and bounds of the her concept “patent quality”?

      Sounds like you do. Is there a reason you can’t?

        1. 15.2.1.1

          not bother to give answers, just wanting that from others.

          LOL.

          Pretty sure it’s your bff “Anon2” who’s “wanting answers from others”.

          Nice try, though.

          1. 15.2.1.1.1

            Pretty sure you kind of missed the point there Malcolm.

            Yes, Anon2 wanted answers – yet answers is not what you supplied.

            Again.

            (Obtuse. Is it deliberate? – said in the best Andy Dusfresne tones)

              1. 15.2.1.1.1.1.1

                Keep on [shrugging] and keep on missing the point.

                Here’s a hint: it matters not to chime in with a “I want too” as the impetus from Anon2 is to derive answers from you.

                You don’t ever seem all that big on giving answers to the questions of others. Especially when those questions prompt answers that don’t fit your memes.

                1. the impetus from Anon2 is to derive answers from you.

                  Really? I think he was trying to “derive answers” from you.

                  In any case, my “impetus” is for Anon2 to derive answers for himself, assuming he’s capable of doing that. But go ahead and pretend that Anon2’s “impetus” matters more than mine. Whatever floats your tiny, tiny boat.

                  You don’t ever seem all that big on giving answers to the questions of others.

                  Riiiiiiight. When you come down from whatever drugs you’re on, try again.

    3. 15.3

      Anyone care to speculate why the Ms. Lee has chosen to describe one of her focuses as the “quality” of granted patents rather than “validity” of granted patents or “quality of examination” (which seem more straightforward conceptually)?

      All patents have a presumption of validity until proven otherwise. But the law says nothing about a presumption of quality….

      1. 15.3.1

        What does the law even say about this notion of “quality”…?

        Anything at all?

        If not, can the executive branch even take the lead? Would that not be tantamount to the wrong branch of the government creating law?

    4. 15.4

      anon2,

      Is it because of the “dialogue” of the “stakeholders”? (notice the “air quotes”)

      Anyone care to speculate on the metes and bounds of the her concept “patent quality”?

      What she does and says about stakeholders raises all sorts of questions about political corruption. If the people at the stakeholder table are limited to major campaign contributors, this whole patent quality initiative is a political shakedown.

      The appearance of corruption is as bad as real corruption.

      1. 15.4.1

        B-b-but we don’t really know about “the appearance” because it was behind closed doors and it was not recorded.

        Trust us

        Hmmm, I wonder if the head of the EPO can borrow that “trust us” line…

  4. 14

    Here’s yet another example of a d.0.a. claim pressed by a desperate applicant all the way up to the Federal Circuit (which wisely affirmed the Board per curium under Rule 36; In re Traffic Information LLC).

    This is a perfect example of the very lowest form of functionally-claimed, information-processing “innovations” that needs to be permanently (and quickly) expunged from the patent system if the system is expected to return to anything resembling “normal.”

    There is no reason on the planet for the PTO or Federal judges to be wasting more than five minutes time with this nonsense.

    90/011,600

    A system for providing traffic information to a plurality of mobile users connected to a network, comprising

    (a) a plurality of mobile user stations, each mobile user station being associated with a display, a global posititioning system receiever and a communicating device to allow each of said mobile user stations to send and receive signals;

    (b) a computer system interconnected with another communicating device and a network, said network being capable of sending and receiving signals to and from said mobile user stations;

    (c) said computer system including a map database and a traffic information database containing data representative of traffic at a plurality of locations;

    (d) at least one of said mobile user stations providing a request to said computer system for information together with a respective geographic location of said mobile user stations information representative of selected portions of said map database and selected portions of said traffic information database based on said respective geographic location of said mobile user stations;

    (e) said one of said mobile user stations displaing graphically on said display information representative of said selective portions of said map database and said selected pritions of said traffic information database.

    I’ve highlighted in bold the only “new” features of this “innovation.” Does everybody see the problem? That’s right: the only allegedly “new” subject matter in this claim is the allegedly “new” information stored in the database that is (omigod!) “displayed” upon request (who could have predicted?). In other words, the applicant here is trying to protect the information that can be stored and transmitted by pre-existing computer technology.

    That’s a 101 problem. It doesn’t matter how much nonsense you load into the information content and it doesn’t matter where the information comes from. It’s still just information. It might be valuable as all heck but you can’t protect that information with a patent.

    The issue in this case wasn’t subject matter eligibility but rather the prior art which taught (surprise!) that computers could be used to transmit information upon request, including information about traffic (there’s nothing at all special about traffic information, just like there’s nothing special about brown dwarf information and there’s nothing special about stock market information or bingo card information — computers really could care less).

    Go ahead and read the applicant’s arguments trying to distinguish these claims from the prior art. And then tell everyone with a straight face that the “real problem” facing the PTO is “poor quality examination.”

      1. 14.1.1

        link to plainsite.org

        It’s going to take you to Pacer. I couldn’t find a free source for the briefs. You can get a good sense of the “merits” from the oral arguments. The judges’ minds are made up (as any reasonable person’s mind would be) and they can barely stay awake.

        link to cafc.uscourts.gov

        Listen to the applicant’s attorney vainly try to make hay out of the “request” limitation. Even if there was a colorable argument (and there isn’t), is this “request” baloney really the “innovation” over the prior art that the applicant deems patent-worthy? Seriously? The applicant’s computer system responds to a “request” but the prior art system, which sends the same information to the same mobile users, somehow doesn’t? This merits the waste of PTO resources, not to mention that of three Federal judges??

        But that’s how the game is played by the lowest form of innovators. Hey, why not put some dependent claims in there about “the request” being made from a car wherein the car comprises some french fries? Or wherein the user has a beard? Or wherein the car is driving between 43.22 and 53.23 miles per hour? Or wherein the car is green? That’s the typical level of “innovation” cheered for by the micromental “innovators” who dominate the software patent industry, which is to say: there is no innovation whatsoever. Instead it’s just a transparent, desperate and endless game of whack-a-mole, completely divorced from any progress in any technology.

        And if you’re really up for having your brain scrambled, check out the oral arguments in Virginia Innovation v. Samsung. The patentee’s “innovation” there is putting a signal converter (e.g., digital to analog — and functionally claimed, of course) on a mobile device. WOW. Because, you know, “mobile.” Super techno stuff, man. Keep a damp cloth nearby. There was so much dust kicked up in the courtroom it’ll come out of your computer’s speakers.

        1. 14.1.1.1

          It is just amazing that after someone explains an invention to you it all seems so obvious.

          I wonder if there is a name for that? I don’t think MM has ever heard of it. I think it is called hindsight and, of course, we can expect our Google judges to have no idea what that is.

    1. 14.2

      All inventions are made up of known components.

      The claim you posted does not seek to claim the information. The claims cover a system for displaying the information.

      You didn’t mention the filing date. So, I don’t know if the system in my car is prior art or not. But the system is heaven sent. Whenever I’m stuck in traffic…. 30 seconds later a lady turns down my radio and says: “Your route is being recalculated due to traffic information”. Then she steers me around the problem. That on top of a map display showing the problem areas in yellow or red depending on the severity of the problem…

      So, If this is the guy that invented that, he should get a patent, a pat on the back and a whole lotta spendin money.

        1. 14.2.1.1

          Say, I have an idea that you can mine valuable minerals from asteroids using a plurality of spacecraft, one spacecraft comprising mining tools and another spacecraft transporting said minerals to Earth.

          Down to the PTO I should go, and untold wealth will my reward as soon as someone infringes on my invention!

          1. 14.2.1.1.1

            If there is an invention there Martin, which there would not be in what you have said.

            You know Martin, you should spend some time actually learning patent law before spending hours spouting off on a blog.

          2. 14.2.1.1.2

            Say, I have an idea that make valuable chemical for curing diabetes from atomic elements using a plurality of reaction vessels, one vessel comprising mixing tools and another vessel applying heat to said element, thereby encouraging a chemical reaction.

            Down to the PTO I should go, and untold wealth will my reward as soon as someone infringes on my invention!

            What is your point?

        2. 14.2.1.2

          Les: the Patent in question has a 1999 priority date…

          So what? Computers were old in 1999. Sending signals to mobile devices upon request was old in 1999. The prior art describes it all, quite plainly.

          The utility of traffic information is even older, of course.

          The claim you posted does not seek to claim the information. The claims cover a system for displaying the information.

          Again: the technology is old. The only “new” aspect of this information sharing system is the information content being shared.

          “Claims” don’t “seek” to do things. Applicants do. The applicant here is trying to exclude people from using old technology to communicate certain types of information. That raises the eligibility issue. The claim is, in fact, ineligible.

          If this is the guy that invented that, he should get a patent, a pat on the back and a whole lotta spendin money.

          Nobody’s preventing you from giving the guy some money, Les. I’m pretty sure he’d take it. Send him some flowers, too, while you’re at it.

          1. 14.2.1.2.1

            Computers were old in 1999

            The canard of Malcolm’s “logic” (read those as air quotes) is trotted out (yet again).

            According to that same “logic,” look at my big box of electrons, protons, and neutrons.

            Couple that with the thin veneer of the debunked “House” arguement and of course Malcolm’s refusal to explain how “old box” without change – (hint: use the inherency doctrine of patent law) can come to have new capabilities that “old box” did not have prior to the addition of the component – and manufacture in its own right – of software, and we have (yet again) the exact same C R P – run away and C R P merry go round that we have every time Malcolm uses the canards from the short script of anti-patent mantra.

            1. 14.2.1.2.1.1

              According to that same “logic,” look at my big box of electrons, protons, and neutrons.

              The fact that computers are old is not “the logic”. It’s just a basic uncontroversial fact that I’m relying on when explaining why the claim at issue — and so many claims like it — are unpatentable. It’s also a fact that the PTO needs to remember to rely on (they did a good job in this case and the CAFC had no problem tanking the claim per curium without further comment).

              If you want to argue that “because electrons, protons and neutrons are old, every new structurally defined composition of matter and article of manufacture is unpatentable” go right ahead. But try to remember: that’s your argument, not mine.

              I know that it’s hard for you, “anon.”. So does Dennis. So does Jason. So does everybody else. That’s why your “electrons are old” baloney is just a big joke.

              Go ahead and try to float the argument in court and see what happens. Even the desperate attorney representing Traffic Information LLC didn’t stoop that low. Nobody does. Except you.

              1. 14.2.1.2.1.1.1

                structurally defined

                I almost did not notice your attempt (again) to make an issue out of using one optional claim format as if it were the only allowed claim format under the law.

                Why do you persist in this material misrepresentation of the law in your advocacy on this social media?

                It is not as if you are unaware of either your mistake nor the ethical implications of such dissembling. But the constant choice to ig nore what the law is in this matter only makes you look f001ish, manipulative, and desperate – that your “world view” crashes if you were to actually admit what the law – per the words of Congress – allows.

          2. 14.2.1.2.2

            Traffic information may have been old in 1999. But delivery of timely traffic information to an ordinary motorist was not. The best one could hope to receive is a thrice hourly traffic update on some FM or AM radio station. That information being old and more than likely in regard to a rode that the motorist was not on.

            This is the information age. Many inventions will be related to improvements is the processing and delivery of information.

            Get over it.

        1. 14.2.2.1

          Classic cheap rhetorical ploy of flashing a “shiny” object in order to distract you from a conversation not going in Malcolm’s favor.

          Really, how (very) often does the railroading trick have to be played out?

    2. 14.3

      MM, according to the oral argument, what is new is that the request include the user’s location, and that the traffic information then be gathered from other users at the location and transmitted back.

      The PTO effectively argued that the prior art did the same thing. But I am not sure that it the PTO argued that it did so in the way claimed.

      1. 14.3.1

        Ned: MM, according to the oral argument, what is new is that the request include the user’s location, and that the traffic information then be gathered from other users at the location and transmitted back.

        First, there’s nothing “new” about a request for information that includes information about the requester’s location, nor is there anything “new” about gathering relevant information and sending it back to a person upon request.

        Second, identifying the “source” of data being sent or identifying what the information is “based on” is meaningless from a technological perspective. The computer doesn’t care. The transmitter doesn’t care. The receiver doesn’t care.

        Imagine if the prior art described the claim in the exact words used by the applicant here. Can the applicant get a patent over that claim by specifying that the information transmitted on request is “based on” information communicated by people whose last name includes a “J”? If not, why not? “Show me the relevant art.”

        This claim is quintessential “do it on a computer” junk, from top to bottom. The fact that anybody could be confused by the silly references to “traffic” and “geographic location” and “mobile user stations” just shows that some people are easily confused, which we knew already.

        1. 14.3.1.1

          You keep on clenching tight your eyes to the notion that patent coverage rightfully exists for certain Sets of printed matter.

          I have provided a very simple and easy to grasp explanation of this, inviting you (and Ned) to comment directly (and in an intellectually honest manner) on the points of my explanation, and to date, you have steadfast fully refused to do so, insisting instead on repeating flawed “arguments” whose flaws have been documented time and again.

          Isn’t it about time that you stopped the drive-by monologuing style of advocacy?

        2. 14.3.1.2

          MM, there might be a distinction to be made between a database query that responded with the current contents of the database corresponding to the query criteria, and actively constructing new information to be put into the database from active real-time requests to other users. While the former is commonplace, the latter I have never heard of before.

          The least according to the oral argument, the patent office attorney was trying to convince the Federal Circuit that all that the claims required was submitting a query and getting a response from the database. But that was not what was claimed — at least according to the oral argument.

          I see however from the claim that you posted above that there is no such limitation about gathering new information from users in response to the query. Perhaps the claim you posted was not the claim on appeal.

          But it that is the claim on appeal, the PTO clearly was right.

  5. 13

    For an amusing story about a “little guy” doing battle with one of those bad ol’ “Big Corp” (you know, those companies who “don’t innovate” but who thrive by “stealing” sooper dooper extraordinarly valuable ideas of the awesomely creative “little guy” do-gooders), be sure to check out Xpertuniverse v. Cisco Systems. (CAFC Jan 21 2015). Some choice quotes:

    To support its claim for lost-value damages, Xpert-
    Universe relied upon the testimony of its expert, Bratic. According to Bratic, XpertUniverse was worth “at least
    $70 million” …. Significantly, however, Bratic failed to make any valuation comparisons between XpertUniverse and other
    similar ventures. Instead, he based his valuation of XpertUniverse on the revenue projections furnished by
    XpertUniverse’s own officers. … These unsupported
    projections forecasted that XpertUniverse would
    experience revenue growth of more than 30,000% [LOL!!] in the period between 2006 and 2010, notwithstanding the fact that it had not yet sold a product and had no contracts for future sales …

    XpertUniverse asserts that it presented evidence sufficient to create a genuine issue of material fact as to whether Cisco misappropriated trade secrets 18
    and 33, which include an “architecture diagram” of Xpert-
    Universe’s system “for connecting a customer to the best
    available expert in an organization without negatively
    affecting operations.” In support, XpertUniverse relies on color-coded flowcharts to compare its architecture diagram to Cisco’s Expert Advisor and Remote Expert products. We decline to discuss these flowcharts in detail ….The features depicted in the flowcharts are described in such general terms that they fail to show that Cisco misappropriated any specific technology

    Got that, folks? Someone allegedly “stole” a “secret method” for “connecting a customer to the best available expert in an organization without negatively affecting operations”. These are super serious problems with super dooper “technical” solutions (“my flow chart uses two colors of crayon!”).

    Get this junk out of the patent system now.

    1. 13.1

      Let the MM blasting begin……

      Insults, sound bites, random claims, all for your reading enjoyment.

  6. 12

    Honest question: Which group do you think is larger:

    1. The group of patents that should have been allowed but were not allowed.

    2. The group of patents that should not have been allowed but were allowed.

    My opinion is that 1>>2. Maybe I’m the minority here, curious.

      1. 12.1.1

        I would agree with that. Of course, that’s what makes it so frustrating when you do have legitimately allowable claims and are getting the old “the examiner takes official notice that it’s an inherently obvious design choice to optimize the prior art through routine experimentation” rejection.

        1. 12.1.2.1

          Still out there go?

          Or is this (yet another) instance where your attempt to “cheerlead” Malcolm fizzles when scrutinized?

    1. 12.2

      There is no genuine debate whatsoever about the answer to this question. In part, that’s due to the PTO’s miserable failure to properly examine information-processing methods in all fields.

      We’ll see if the PTO can finally figure this out or if it continues to allow itself to be abused by a certain class of wealthy, egomaniac “stakeholders” who like to imagine that their “innovations” in the application of logic are responsible for the earth spinning around the sun.

      1. 12.2.1

        Miserable failure as in failing to properly identify prior art for 102/103 rejections or miserable failure as in complying with 101 law at the time?

        1. 12.2.1.1

          Miserable failure as in failing to properly identify prior art for 102/103 rejections or miserable failure as in complying with 101 law at the time?

          Both. In re Grams (Fed Cir 1988) came one year after State Street (Fed Cir 1989) and actually affirmed the Board’s rejections under 101 in that case.

          Query how many patents have been improvidently allowed in spite of In re Grams — a precedential decision with great similarities to Mayo and other “determine and infer” “innovations” — in the intervening years between 1990 and 2014. As a friendly reminder, see: link to patentlyo.com

          Bilski is almost five years old. Mayo was a predictable and necessary slam-dunk and it’s almost 3 years old. But by and large the PTO continues to operate as if these cases were mysterious aberrations whose underlying logic is obscured. To those of us who have understood the issues and pressed for these decisions and predicted them for years, the PTO’s “confusion” is a joke (to say nothing of the “confusion” expressed by their “expert” stakeholders who proudly proclaim themselves to be completely clueless about what’s eligible and what isn’t).

  7. 11

    In re Orbital Technologies 14-1298
    CAFC Jan 20, 2015

    Here’s you typical “zealous” patent attorney wasting everybody’s time:

    Orbital contends that substituting LEDs into
    the system taught by Tomofuji would not result in the
    claimed inventions, which require the lights to be
    “mounted to” or “disposed on” the inner side of the housing,
    because Tomofuji’s Figures 1 through 3 show the
    fluorescent lamps 4 mounted to a light reflector 7 that is
    itself attached to the housing. This argument reads the claims too narrowly. Nothing in their language requires the lamps to be attached directly to the housing without intervening

    This is first grade stuff. It’d be funny if it weren’t so sad.

    Orbital argues that a person of ordinary skill
    in the art could not have adapted Tomofuji’s system to
    cool LEDs, which its expert testifies generate heat not in
    their bulbs but in their electronics. Tomofuji, like the
    claimed inventions, teaches a system for dissipating heat
    generated inside the housing generally. Further, Ignatius teaches the use of a fanbased system to cool LEDs.

    Oops?

    Orbital contends that the prior art does not
    suggest the use of LED bulbs in Tomofuji’s invention
    because LED bulbs generate less heat than fluorescent
    bulbs.

    Try to believe it, folks.

    Mind you, this is technology that the Federal Circuit recognized is “simple.” That makes it difficult for applicants to play games. But it doesn’t stop them. Nothing will stop them except sanctions but we’ll never see those.

    But the “real problem” is that the PTO is rejecting too many applications. 300,000 patents a year (and rising) isn’t enough.

    Riiiiight.

    1. 11.1

      Nice strawman Malcolm, as I do not know of anyone that objects to valid rejections.

      One of your problems is that you are on record as considering ALL software as being “validly” reject able – on a per se basis.

      That belieb system simply does not accord with reality, nor does it accord with your ability to put your money where your mouth is and abstain from any innovation that you would deny patent protection to.

      Sure, you will sit and spin and pout, but you will not get down to brass tacks and actually acknowledge the reality that today’s world is driven (to a very prominent degree) by software-driven innovation.

      Why is that?

      1. 11.1.1

        MM One of your problems is that you are on record as considering ALL software as being “validly” reject able – on a per se basis.

        That’s not a problem at all for me. It’s a view shared by many, it’s a reasonable and defensible view, and it’s a view that more and more people are going to share in the future. Watch and see.

        That belieb system simply does not accord with reality

        You are the last person on earth to be discussing “reality” with anybody.

        nor does it accord with your ability to put your money where your mouth is and abstain from any innovation that you would deny patent protection to.

        If you are trying to make yourself sound like a truly silly person who is perpetually drunk on patent kool-aid, you are succeeding marvelously here. Congratulations.

        Now, if you don’t mind, I’m going to innovate a “new” method for determining which of the previously undescribed socks in my collection of socks needs to be discarded. Oh, the hypocricy!

        1. 11.1.1.1

          Brush away the Red Queen snide comments, and you have said, well, nothing.

          Would you like to try again to actually address the points of my post without the snark?

          If you can…

  8. 10

    I’m sure “increasing patent quality” is the usual double speak for rejecting as many patents as possible. The beat goes on…

    1. 10.1

      double speak for rejecting as many patents as possible

      More accurately, it’s rejecting the patents that should be rejected, which is a lot more than are being rejected now.

      1. 10.1.1

        …and the patents rejected during the infamous Reject-Reject-Reject era (down to what was it, 30% iirc), was that too an example of “lot more should be rejected”…?

        Is that why the first order of business for Kappos was to come in and enforce the notion that “Quality does not equal Reject”…?

        Or is this just one of those “inconvenient” facts?

        1. 10.1.1.1

          …and the patents rejected during the infamous Reject-Reject-Reject era (down to what was it, 30% iirc), was that too an example of “lot more should be rejected

          Were there any claims rejected during that era which were worthy of patents? If so, let’s see them.

          Is that why the first order of business for Kappos was to come in and enforce the notion that “Quality does not equal Reject”…?

          News flash: Kappos was a water-carrier for patent maximalists and, as far as I can tell, he still is. The fact that Kappos threw bones to folks like you and continues to do so is hardly an “inconvenient” fact for me or anybody else disgusted with the PTO’s relentless coddling appraoch to the lowest forms of innovation.

          1. 10.1.1.1.1

            You do realize (and should because you have been previously informed) that the Reject-Reject-Reject era affected all art units, right?

            Not just your favorite pet peeve and even the one where you were still squeaking out nigh worthless picture claims.

            Try to not let your head explode digesting the facts.

        2. 10.1.1.2

          “Is that why the first order of business for Kappos was to come in and enforce the notion that “Quality does not equal Reject”…?”

          Kappos “enforced” that? You’ve got to be dreaming. He made statement a couple times. There was no “enforcement”.

          1. 10.1.1.2.1

            Not dreaming at all 6 – my statement merely reflects objective factual historical data.

            (besides which, is not your position elsewhere that of the “good soldier,” ever ready to follow his superior’s orders? Would not then it be logical for other like minded “good soldiers” to follow the orders of Director Kappos? It is funny how inconsistent your thinking gets at times, my friend.)

            1. 10.1.1.2.1.1

              “my statement merely reflects objective factual historical data.”

              In other words, yous dmb.

              “Would not then it be logical for other like minded “good soldiers” to follow the orders of Director Kappos? ”

              Sure thing, but very very few “soldiers” even heard him make the statement. Just to make sure you understand, 99% of what a director says is never heard by much of anyone in the corps. Either way, there was no “enforcement”.

              1. 10.1.1.2.1.1.1

                In other words…

                Quite to the contrary from your v@pid insults 6, the fact that my statement merely reflects objective factual historical data removes the “personalization” that you attempt to use by trying to say that ONLY anon says such.

                You need to understand the Galileo “and yet it moves” adage.

                very very few ‘soldiers’ even heard him make the statement

                I can guarantee that your “no one ‘heard‘ ” is absolutely false.

                You must really like being shown to have no merit in what you say to write so often in such a poor manner. You pick some of the weirdest points upon which to ‘make your stand’ and challenge the points that I add to the dialogues here. It’s as if you have a compulsion to merely disagree with whatever I post…

                1. “I can guarantee that your “no one ‘heard‘ ” is absolutely false.”

                  I didn’t say no one heard. I said very very few heard. Obviously I heard.

                  Look re re, you may think you know what’s going on in the office because you’re dmb as a box of rocks, but I’m in the office. I can literally walk down the hallway and verify the veracity of those statements. Nobody that I know of all of a sudden up and was like “WHEW let’s start allowing some shizzle because director k said we gotta call balls n strikes!” including me. And I know of a lot of people and talk to them re examination quite often. There are zero reports of people allowing things because of that. Not one dam report. And I can walk down the hall and ask people if they did and they’ll be all like “Kappos said what?” Most of them will first ask “Who is Kappos again?”

                2. Again with the one way streets, Professor?

                  As if you cannot figure out what “re re” means or choose not to find that offensive and yet somehow my reply is deemed “offensive?”

  9. 9

    Lee’s speech at the Brookings Institute (on “Tr011s”):

    I don’t find the term helpful. It means different things to different people. We need to focus on behavior.

    Our system should be agnostic about whether an applicant intends to manufacture a product based on a patent or opts for another business strategy such as licensing the invention.

    per The National Law Journal

    1. 9.1

      Let’s fact it. The reason this woman is so dangerous is that she has the backing of Google. I mean I don’t get it. Everyone help prosecution. But, to my mind examiners try and work pretty hard with what they have. What we need is someone that really understand prosecution to bring in modern tools and to understand how case law can affect prosecution. We don’t need a butcher. I’d place bets right now that we all will look back 2 years from now and be in shock.

    2. 9.2

      You really have to wonder about the arrogance of Lee. She has pretty much ZERO experience prosecuting patent applications. And she stands up and tells us that she is the one that is going to fix the “problem” of too broad claims issuing.

      Just be afraid of “reforms” that fall under the rubric of fixing the system to avoid patents with too broad claim scope issuing.

      1. 9.2.1

        Just be afraid of “reforms” that fall under the rubric of fixing the system to avoid patents with too broad claim scope issuing.

        Because why?

  10. 8

    “Quality” is a good idea, but it goes both ways: not only to catch “bad” patents, but to be prompt in issuing “good” patents. I regularly see patents with PTA of over 1000 days. Yesterday I had one with over 2500 days. PTA represents not just “delay” but a lot of costs for applicants, and also costs for the public who now have a patent with years of extra term.

    1. 8.1

      Yeah, but notice this part: “Lee did take more of a stand in her speech at the Brookings Institute on the 22nd in explaining her major top priority of enhancing the quality of patents issued by the USPTO to reduce the cost associated with issuing patents that should not have issued.

      That’s a stark contrast to Kappos’s opening remark of his directorship: “We can’t just be the patent rejection office – we need to reject the patents that should be rejected, and allow the patents that should be granted. Rather than striving to maintain a low allowance rate, we should be focused on reaching the right conclusion.”

      I’m concerned that, in the views of this new directorate, this coin may only have one side.

      1. 8.1.1

        I absolutely agree with this. Her statements are a great cover for a tyrant. My guess: we are about to see the great blood letting ever seen at the PTO.

        1. 8.1.1.1

          great cover for a tyrant

          Wow – you should check out IPKat for how close your sentiment matches that of our esteemed friend MaxDrei.

        1. 8.1.2.1

          Might be a good idea to appeal and park applications until she is gone.

          Remember: these are the same folks who pretend to care about delays caused by “the backlog.”

  11. 7

    I agree that Examination could be much better, meaning better references could be found and better explanations given to Applicants. But at what cost? The PTO faces the same problems that any employer does. There are only so many people willing and qualified to do the work, and it costs money to train more to become qualified, and it takes money to keep them willing to do the work. So, out of say 8,000 examiners, there are probably at least 4,000 who are doing good work, and the other 4,000 have . . . incomplete skill sets. Is the solution more money? More time for the examiners? A better compensation system that takes results into account? What results? It’s not the Examiner’s fault if an application is obvious or allowable (depending on which you want to measure).

    I feel like the PTO’s efforts over the last few years have just added to Examiner’s workloads without giving anything to the examiners.

    Maybe the PTO should have an “up or out” system, like many larger firms. If you don’t make primary after a certain number of years, you’re let go.

    1. 7.1

      Maybe the PTO should have an “up or out” system, like many larger firms. If you don’t make primary after a certain number of years, you’re let go.

      I’m not convinced that being a primary examiner is correlated with examination quality. In fact, I know several examiners who have declined promotions because they would simply rather work at a slower pace. I suspect that experience on the job is a better indicator of quality than whether of not the examiner has been through the signatory program.

      If this sort of rule were implemented, I think it would have the effect of rewarding (via retention) people who were willing to make production without regard to their work quality while penalizing (by letting go) people who were interested in working more slowly and carefully.

      1. 7.1.1

        Sorry for the serial replies here. Just one more thought.

        Examiners require several years of training and experience to become reasonably independent (most often they become primaries, though as I mentioned others choose not to take on the extra workload). Because of the great amount of training and supervision required to get a new examiner up to speed, it is awfully expensive for the PTO to hire a new examiner. Implementing an “up or out” system would thus itself be very expensive, as it would require replacing employees.

      2. 7.1.2

        Its known that most of the poor quality comes from primaries. Management likes primaries because they (managers) dont have to do any managing. Also count system.

    2. 7.2

      I feel like the PTO’s efforts over the last few years have just added to Examiner’s workloads without giving anything to the examiners.

      Kappos gave examiners an extra hour per case (IIRC). That was only a small step, but it was a nice gesture and it was nice to have an acknowledgement that examiners could use more time.

    3. 7.3

      I don’t think I’d model anything after law firms. In my opinion, most law firms value billing over quality. You make partner if you bill a lot. The quality aspect usually is very secondary or even tertiary or non-existent.

      I prefer quality over billing. I think the same is true for examination.

      By the way, why do European Examiners typically do a much better job than US Examiners? Or at least that is what I’ve seen. Perhaps we see what the Europeans are doing and emulate that.

      1. 7.3.1

        why do European Examiners typically do a much better job than US Examiners?

        I’d like to hear more comments about this. My own experience is that the work at the EPO is similar in quality to work at the USPTO. Often the work is good, but sometimes I wonder how an action could possibly be considered a proper rejection or (conversely) how those claims could possibly be allowed. Just like at the PTO.

        1. 7.3.1.1

          I can only speak to the search side of the equation, since that is what I know best.

          EPO examiners are taught to search narrow to broad. This is what we teach folks on the outside as well. USPTO examiners are taught to search broad to narrow.

          USPTO examiners have a very poor understanding of the patent databases they search. This is not their fault, because they are never taught properly. This is extremely evident in the search strategies I review in file histories with their heavy emphasis on only US art. And the SPE’s or Primaries that review an examiner are more focused on the results than on the journey to reach them.

          Speaking of USPTO patent databases, the EPO has a far superior search engine with far superior data coverage. They can search the full text of over a dozen patenting authorities. The US examiners can search full text of only one patenting authority. We keep getting told to hold our breath for PE2E, but we’ve been using a busted system for twenty years and the damage is already done. Heck, US examiners do not even have up to date PCT applications in their computer system.

          As I said, I can only speak to searching. However, everyone always says a good prior art search by the examiner in the early stages of prosecution is the fastest path to a high quality examination and high quality patent. Instead, we’ve created an incentive system that rewards a quick and dirty search to find art “good enough” for a quick rejection.

          1. 7.3.1.1.1

            Good post, PS DIP. A good prior art search by the examiner in the early stages of prosecution is the key. And the examiner must have access to excellent prior art data bases and classification systems.

          2. 7.3.1.1.2

            USPTO examiners have a very poor understanding of the patent databases they search.

            What advice would you give to the examiners about the databases?

            1. 7.3.1.1.2.1

              Re: Databases – Learn to treat a full text collection and a bibliographic (front page data) collection differently. They must be searched in a different fashion since one includes documents with 10,000 words and the other has documents with 100 words. When they are lumped together, the field is heavily weighted towards the full text (US) documents. This is the main reason US examiners only find US documents.

              Re: Databases –The USPTO finally uploaded the bulk of the EPO bibliographic data a year ago (50 million new records), but did so in an incredibly ham handed fashion. If a commercial provider had waited this long or done it like this, they would have lost every customer they ever had. One full year later, they finally added family functionality, but again, did so very poorly. It is obvious that whoever is in charge of implementing the data uploads has extremely limited experience searching this data or just doesn’t care.

              Re: Databases – I worry about the new search engine within the Patents End 2 End (PE2E). It is being built by contractors with no patent experience. Yes, they are getting input from examiners, but that is not the same as using experienced database builders. Where are the folks from Lexis, Thomson, Questel, Minesoft, or CAS/STN? There are dozens of experienced patent database companies that have spent a long time learning how to present the data and none are involved in the new system. For example, all of these commercial providers have been battling the full text versus machine translation battle for a decade, but the USPTO will have to learn all the lessons from scratch when the search functionality of PE2E is finally rolled out in late 2016.

              Re: Databases – The lack of full text PCT documents on the examiners computer terminals is a big red flag to me. There are a healthy percentage of applicants for whom the PCT is the first publication of their disclosure. US examiners cannot find these state-of-the-art disclosures and instead must rely upon publication of a delayed US application. (Folks on the outside doing clearance work are slowly learning to search these documents which serve as first notice of potential infringement in the US, so it’s not just a PTO issue.)

              Re: Training – I’d say it’s too late for most examiners. They have enough experience doing things one way so as to be set in their ways. However, I could be wrong. The USPTO has gone to great lengths to retrain everyone to use the CPC (the new Classification system) and has applied resources far beyond what I expected. I give them full credit for this and it does show a willingness to change and improve.

              1. 7.3.1.1.2.1.1

                Thank you for your informative post, PS DIP. (Would be nice if PTO management would read it and solve the problems you have outlined.)

          3. 7.3.1.1.3

            yes, this was a good post.

            my personal feeling is that the EPO got it right by separating searching and examination (as i understand it). it makes so much sense to have dedicated and specialized searchers and dedicated and specialized examiners that apply the art found in the search. these are distinct skill sets.

            i would go even one step further and begin the process with 101 and 112 panels that conduct the initial review of the application after pre-exam is done, but before a searcher touches it.

            so the process flow would look like:

            101/112 panel -> searcher -> examiner

            1. 7.3.1.1.3.2

              “my personal feeling is that the EPO got it right by separating searching and examination (as i understand it).”

              The EPO no longer separates search and examination. There is an examination division for each application that includes 3 examiners. However, only one examiner is actually involved in searching and examining the application. After the applicant has had an opportunity to respond, if the examiner handling the application still thinks that it is not allowable, he can, after consulting the other two examiners, issue a summons to oral proceedings. The applicant is not required to actually appear and argue in person, written comments with “auxiliary requests” (i.e. additional amendments for the examiner to consider) may be submitted. The decision after that on whether to allow the application or to maintain the rejections is by the examining division (i.e. the 3 examiners).

              I echo PS DIP’s comments on searching: the European examiners do a much better job and find more relevant art. They are not interested in doing the old, “Well, I found this reference, and when giving your claims the BUI treatment, it ‘reads on’ the claims and is good enough.”

              1. 7.3.1.1.3.2.1

                and is good enough.

                For a perfect example of this truly pitiful example of beaurocratic mind rot, see RandomExaminer’s “woe is me” rants.

                When even 6 lowers the boom and takes you to the woodshed, it’s time to take note and reevaluate your worldview.

              2. 7.3.1.1.3.2.2

                Hmm… Thats fascinating. Thanks for the info.

                Regardless, I am still in favor of separating examination from searching. There is one benefit to it that isnt often talked about, its avoidance of the CYA spin your wheels “go search this again because I think its out there” nonsense that happens from time to time at the office with juniors. once you have an objective search report in front of you, your focus changes to merely using the art on the report – you already have your CYA as some other guy/gal did the search and its their fault if something got missed.

                1. “you already have your CYA as some other guy/gal did the search and its their fault if something got missed.”

                  A common misconception about searching at the PTO is that if “something got missed” it is the examiner’s “fault”. That is not actually true. Stuff is missed all the time yet it is not even an error, much less a clear error. The only time “something being missed” is an error is if a. the search objectively should have been conducted differently than it was AND art was found that leads to a legit rejection in that other search (AND, arguably, that the search in and of itself was objectively badly carried out) or b. a reference was found within the field of search already conducted that leads to a legit rejection.

                  Clearing that up for people helps cases move much faster.

        2. 7.3.1.2

          I think EPO examiners get paid more (and EPO fees are higher than at the USPTO), but I don’t know if that factors into the generally higher quality of examination at the EPO (an observation in which I concur with RH).

          1. 7.3.1.2.1

            i would guess that if the pto divided up the work in an EPO style, that the pto would need to substantially increase its fees as well.

            1. 7.3.1.2.1.1

              EPO style? Squeezing out aberrant and maverick Examiners? Forcing consensus? The wisdom of crowds?

              At the EPO, no application gets allowed till there are signatures of all three Examiners of the Examining Division on the Notice of Allowance. No Examiner brings the case to the two colleagues for signature without first writing a so-called “Votum”, a short Statement of reasons for recognising that the claimed subject matter corresponds to an inventive step. As the other two members will usually be from two different other EPC Member States, with two different langages, the reasons have to be good.

              I wonder how easy would USPTO Examiners find it, to write such Statements?

              I wonder, how aware readers are, that the primary task of their EPO counsel is to help the Examiner to see how to draft the Votum.

              I wonder how expensive it would be, for the USPTO to introduce EPO-style 3-member Examining Divisions, for every single case that goes to examination on the merits.

              1. 7.3.1.2.1.1.1

                “I wonder, how aware readers are, that the primary task of their EPO counsel is to help the Examiner to see how to draft the Votum.”

                I learned something new. Thank you.

        3. 7.3.1.3

          My experience, based on hundreds of EPO written opinions and thousands of PTO office actions, has been that the EPO actions are much, much, better on average than those in the USPTO. At least on the independent claims, the EPO examiners rarely just make stuff up. That’s all too common in USPTO office actions. The EPO actions are much easier to read as well, on average. An awful lot of stuff coming out of the PTO is just embarrassing, in my humble opinion.

      2. 7.3.2

        >why do European Examiners typically do a much better job than US >Examiners

        I’ve done a fair bit of prosecution before both. I think a good US examiner does a much better job than a European examiner. The familiarity with the art in the art unit is invaluable for the examiner to determine whether to allow the application. Moreover, the examiners in the US are very good at doing new searches when the applicant shifts gears.

        Typically, the way to game the EPO is to go in one direction and the searchers/examiners miss aspects of the invention. You then use those aspects to get it allowed as the EPO examiners are too lazy to look for new art themselves and too arrogant to believe that their search is wrong.

        So, at the EPO what you do is play off their initial evaluation of the invention which is often wrong and their arrogance that they know what they are doing.

        Good US examiners know their art unit and know what deserves to be allowed and what doesn’t. And are savvy in figuring out if you switch direction on them and just pull out new art effortless.

        Fact it. There is no free lunch. You need examiners that understand their art units.

        And I’d put the really good US examiners head and tails above the EPO examiners—the US examiners are much, much better.

        1. 7.3.2.1

          Night that’s really interesting, how to “game” DG1 at the EPO. As at the USPTO, over the last 30 years the EPO has gone though periods of allowing dodgy stuff and rejecting much of merit.

          It seems though that your recent experience of how EPO Examiners invoke Rule 137(3) and (5) is very different from mine.

          link to epo.org

          Always valuable to me is to hear how Americans view patents in Europe. Do please comment further.

        2. 7.3.2.2

          Thank you for the comments. My experience has been the opposite. I can’t tell you how many cases I’ve seen that fly through the USPTO, only to have killer art cited by the EPO later.

          Now, I have seen US Examiners that find art that’s better than what the EPO Examiners find. But to me, that seems to be the exception rather than the rule.

          It could be that we’re prosecuting in different areas and therefore have two different views.

    4. 7.4

      “But at what cost?”

      That’s the real issue. I can find great references for just about any case (even if the case isn’t ultimately going for a rejection) in say, 20 hours of searching. 40, surely so. But the budget is 8, 12 max.

          1. 7.4.1.1.1

            Didn’t you boast (about three to four years ago) that you were the king of the five minute search?

            1. 7.4.1.1.1.1

              Finding a 102 for independent claims is a lot easier than finding a 102 for the entire application anon.

              1. 7.4.1.1.1.1.1

                You know this – because I have told it to you – you have to examine the entire application and not just key words from the independent claim.

                So….

                Either your earlier boasts were egregiously wrong (which you have never admitted), or you are full of it (or both).

                1. “because I have told it to you – you have to examine the entire application and not just key words from the independent claim.”

                  Oh yes, I forgot! I take my orders from you and not the search experts.

                  Oh wait! Nope! It’s the other way around!

                  “Either your earlier boasts were egregiously wrong (which you have never admitted), or you are full of it (or both).”

                  Or I was completely correct in what I said, and you’re a ta rd. Oh, wait, yep, that’s it.

                2. How soon you forget 6, it may have been me telling you, but what I telling you was not made up by me. I was merely sharing with you the proper authority that binds you.

                  And no, clearly you cannot be “completely correct” for the very fact that you have presented mutually exclusive polar opposite conditions – you have to be wrong.

                  That’s just the way that type of thing works (and again, it works not because I am the one telling you, so put aside your odd obsessions)

                3. “I was merely sharing with you the proper authority that binds you.”

                  Yeah, it “binds me” about as much my loose leg jeans are tight.

                  “And no, clearly you cannot be “completely correct” for the very fact that you have presented mutually exclusive polar opposite conditions”

                  Or not and you’re a tar d.

          2. 7.4.1.1.2

            Exactly. 6-7 years ago we had GS-5 Examiner 6 on this site boasting, repeatedly, about finding “knock-out, killer 102(b) prior art” with 10 second Google searches. Now he’s telling us he needs 20-40 hours to search a case.

            Right.

            1. 7.4.1.1.2.1

              “Now he’s telling us he needs 20-40 hours to search a case.”

              Searching “a case” is a lot different than searching to find a reference to reject an independent claim of a newly filed app, or to put it another way “searching an independent claim”. You’ll recall that even then I complained about the dependent claim wild goose chase.

              Plus, now of course like half my docket is continuations of my old cases. So of course they take all my good art I already applied in the last prosecution, and all the art EU etc. found and draft around it. If you want to do a “search-to-find” so to speak on those kinds of applications it’ll take quite a bit more time to even find the ind. But the budget remains quite steadfast so we must make do with just a plain ol search.

              1. 7.4.1.1.2.1.1

                Plus, now of course like half my docket is continuations of my old cases.

                A maxim comes to mind: “If you don’t have time to do it right the first time, when will you find time to do it right?”

                And thanks 6 for adding the confirmation to what I have said all along about how the piles of deck chairs in the other queues are directly related to poor examination and the attempt of the Office to Reject-Reject-Reject its way out of doing the necessary work.

                1. I didn’t say RCE’s ta rd, I said continuations, Mr. I’m not a lawlyer.

                  These are continuations generally of cases long since allowed.

    5. 7.5

      “I feel like the PTO’s efforts over the last few years have just added to Examiner’s workloads without giving anything to the examiners.”

      That’s definitely true, especially for spes that are new, or are trying to take things to the Nth degree without understanding what they’re doing. It’s very easy for a spe to get the wrong impression about what they’re to be asking from employees. Very. Very. Easy. And when that happens whew boy, all those added extras become a huge drain on production.

  12. 6

    My question: how is someone that has pretty much zero experience prosecuting patents going to be the person to lead the way?

    My answer: Not possible.

    1. 6.1

      The nature of democratic government means that most often executive power vests with people who don’t have expertise in every area they are directing. The President has never processed tax forms, driven a tank, or prosecuted a patent, but he or she is still ultimately responsible that it gets done properly.

      The whole concept/philosophy of examination is one reason software should not be patentable; its why copyright automatically inures to the creator of a work. Can you imagine if a copyright examiner had to search the entire body of world literature to decide of some work had enough in common with some other work to be indistinguishable?

      Software is expression of ideas in language; there are myriad possible variations of various themes.

      Hypothetically, if software patents had been banned in 1980, the patent system would still enjoy the high-reputation that it did for most of US History, and virtually none of the stressors of the system apparent today would have occurred…. and the outcomes of the software business would not have changed a whit- or more likely, for the better….

      Really sad we had to go down this path……

      1. 6.1.1

        >>The nature of democratic government means

        What condescending nonsense. The fact is that the director of the PTO is directing 8,000 examiners. That is the primary job of the director. Your examples involves a position where there are multiple responsibilities.

        Why do you anti-patent people post this kind of stuff? It offends basic logic and decency.

        >Software is expression of ideas in language; there are myriad possible v>ariations of various themes.

        That is psychotic nonsense. Software + GPS is a special purpose machine. An information processing machine like your brain.

        1. 6.1.1.1

          ” Software + GPS is a special purpose machine. ”

          Yeah yeah, my brittany CD is a “special purpose machine” for producing audible waves.

          #lulz

          1. 6.1.1.1.1

            Like a court jester, out flops 6 with his canard of attempting to use an example clearly outside the domain of patent law and the useful arts.

            /face palm

        2. 6.1.1.2

          The director of the PTO runs an agency- and the agency does a lot more than just examine patents. Should the director of the FAA also know how to manage air traffic control, or repair landing gear as a base job requirement?

          New machine.. and who is the jester?

  13. 5

    OT,
    But of possible interest on the copyright front, the Ninth Circuit ‘reboot’ of the Costco-Omega battle after a splt at the USSC is in:

    pdfserver.amlaw.com/nlj/omega.pdf

    Costco wins (as a function of Kirtsaeng).

    And yet another one I nailed.

      1. 3.2.1

        He’s insulting you, of course. More particularly, he’s accusing you of stealing your material from his hero’s website.

        1. 3.2.1.2

          i think anon was a little frustrated that his posts were being deleted.

          its been a rough day for anon.

          1. 3.2.1.2.1

            I think that it is more than that – much more.

            And it was not that rough of a day for me, but thanks for your concern.

  14. 2

    I hope they do something to fix the rules surrounding applicants talking out of both sides of their mouths. Here’s largely how it goes:

    1. Applicant submits a spec where lets say function X is not taught within the spec.
    2. Applicant claims doing function X.
    3. Examiner maps a 102/103 rejection to function X.
    4. Applicant takes issue with the rejection over the teaching of function X.

    There’s only two logical results here: Either the prior art knew how to do X (in which case the 103 should stand because it is either admittedly or de facto obvious), or the prior art never knew how to do X and applicant didn’t teach X (in which case a 112 should be issued). Either way applicant’s argument in (4) should result in a rejection.

    Now most times it doesn’t matter, because applicant’s argument is either wrong or can be remapped due to amendment, etc. But other times it cannot, and because the compact prosecution rules don’t allow for the 112 to be added based on applicant’s argument (rather than amendment, a bad rule) the examiner is faced with an uncompensated second non-final, which is the number one cause of bad allowances. The situation occurs fairly often, for example, if an argument that something shouldn’t be taken in 112, 6th is persuasive, the expanded scope would likely lead to a 112, 1st issue, but again there is no basis to make the rejection (prior to deciding the argument is persuasive) unless you assume your argument is wrong to begin with and do double the work by rejecting in the alternative.

    Frankly, compact prosecution rules are the biggest problem with the whole system. Given that you can file an after final and now file an appeal brief for reduced (or no?) cost, the rationale underpinning strict compact prosecution (that a second non-final was to make sure the applicant has a chance to be heard) has disappeared. The biggest clog in the system is that the examiner is personally punished when it is determined that the applicant is correct – thus the examiner sits as his own judge, which leads to stubbornness and externalizing the mistake (simply allowing rather than continually prosecuting) in response.

    The analogy would be to make the states attorney not only the prosecutor but the judge, and then not pay him for every defendant not found guilty. It would go without saying that nobody reviewing that system would find it impartial or even rational.

    If you wanted the most cooperation out of examiners, you’d have to remove the threat of punitive uncompensated work altogether – i.e. If there is a bona fide or substantial rejection, then the remedy for a particular faulty mapping is to simply cure the faulty part, without further starting over at the non-final stage. These would mirror the rules applicants get when they submit an amendment that is a bona fide attempt at a response to every argument. An examiner would be much more likely to say “I see you have an issue with my citation on X, I think I teach it with my reference but here’s three other arts that also teach it” in response to an after final if the result didn’t mean he had to do it in a second non-final and thereby cost themselves 20-40hrs of uncompensated work time.

    Cue the practitioners telling me to do my job rather than actually agree with a change that still gives them all they want and would ultimately also benefit them.

    1. 2.1

      randomguy,

      your mistake is thinking that the law firms (“stakeholders”) that have firmly captured the pto are looking for a logical examination process.

      that is simply not the case.

      it is in these “stakeholder”s best interest for examiners to be placed in illogical no win situations, as examiners in illogical no win situations overwhelmingly allow. in fact, these “stakeholders” would prefer for there to be MORE no win situations for examiners.

      it is a travesty that the pto has interpreted its “stakeholders” to be law firms. the only “stakeholder” that the pto has is the public. the rest is just capture.

      1. 2.1.1

        if we want corruption out of the pto, we need to start shining a light on these “stakeholder” interactions.

        lets start with the pto revolving door with large law firms for SES and above employees. directors and such leaving for law firms directly after employment looks and smells bad.

        unfortunately congress would need to step in, as the pto would need a time bar on SES and above employees from moving to law firm positions after pto employment. a three year bar would be more than sufficient to curb this behavior.

        the public interest is not served by providing these employees with the ability to “cash in” on their connections (or as im sure its termed – “experience”), nor is it served by allowing law firms the potential to have “soft channel” influence on pto policy and operations.

        1. 2.1.1.1

          How can you worry about agency capture at a time like this when 0.05% of patent applications are being identified as “sensitive” by a mysterious Star Chamber??????????

          1. 2.1.1.1.1

            it has always amazed me that people do not question why these ex high level government employees are paid their truly awesome starting salaries at law firms – when they do not have a book of business.

            something smells really bad.

            1. 2.1.1.1.1.1

              t has always amazed me that people do not question why these ex high level government employees are paid their truly awesome starting salaries at law firms – when they do not have a book of business.

              something smells really bad.

              I’ve seen it in action: partner at law firm who used to work at USPTO is personal friends with so-and-so examiner/supervisor. Although this partner has nothing to do with the case in question and has no expertise relevant to the case in question, partner gets roped in.

              Of course this is utterly routine and it’s the way that business has always been conducted and always will be. What’s funny is when these attorneys jump on their white horses and point their crooked fingers at the PTO for some bogus “scandal” that doesn’t even come close to the day-to-day corruption and conflict lurking in every corner of every major patent law firm.

              1. 2.1.1.1.1.1.1

                “What’s funny is when these attorneys jump on their white horses and point their crooked fingers at the PTO for some bogus “scandal” that doesn’t even come close to the day-to-day corruption and conflict lurking in every corner of every major patent law firm.”

                Lol is it that bad?

                1. anon: “we do abide by our our ethical duties – you don’t like how thin that duty is, though” 1/20/2015

                  yeah, lots the interesting “sources” in this conversation.

                2. My amorphous lower cas friend,

                  Not liking something just does not suffice for that something not to be the way that it is.

                  Don Quixote called – appears that he is looking for someone to groom to be his replacement and he likes what he sees in your posts.

      2. 2.1.2

        I’ve worked for three different law firms and worked in-house and supervised several other law firms and can say each of those wanted a logical examination process. It’s a waste of time and money otherwise.

        Personally, I’d much rather have a good set of rejections, with references that are on-point, and an argument that makes sense, than the typical horrible rejections we get, where obvious key word searches have been done and references have been cobbled together.

        As for making this process more fair, I’m for anything that makes this more logical. If the Examiners need more time or to be compensated for every Response, then do that.

        1. 2.1.2.1

          If the Examiners need more time or to be compensated for every Response, then do that.

          That sounds like a reasonable way to get examiners to be impartial as possible, but it’s not compact prosecution. The Office (for reasons that escape me) wants every case to follow the non-final / final / disposal pathway.

          I agree with RandomGuy that ultimately the problem comes down to the production system – if the examiner wants to “correct,” “change,” or just further elucidate his position, he is often greatly penalized to the tune of several days worth of work. That’s a huge disincentive to admit that your position could be improved.

          1. 2.1.2.1.1

            “…if the examiner wants to ‘correct,’ ‘change,’ or just further elucidate his position, he is often greatly penalized to the tune of several days worth of work. That’s a huge disincentive to admit that your position could be improved.”

            It takes you “several days worth of work” to “correct” or “change” or “further elucidate” or “improve” your position?!?!?!

            I can’t even imagine what your FAOM’s look like. They must be the worst of the worst if it’s taking you “several days worth of work” to “correct” or “change” or “further elucidate” or “improve” on them.

            Lordy.

              1. 2.1.2.1.1.1.1

                “You’ve obviously never done searching for a living.”

                I was an examiner for many years. Including during the years we searched for references in the shoe cases. And I never, ever, spent “several days worth of work” to “correct” or “change” or “further elucidate” or “improve” any of my rejections.

                So f#ck you.

                1. Of course, there were only about 70,000 patents back then.

                  You know, when the Conestoga wagons crossed the windy prairies.

                2. And they weren’t even Amish to not want to partake in the advanced efficiency capabilities now available

                3. So f#ck you.

                  Think you’re anonymous on the internet, do you? We’ll see what happens now, tough guy.

                4. RH: in the context of an anonymous blog post do you really think he/she did anything wrong?

                  And seriously threaten to get him off the blog? Seriously?

                  Play nice.

            1. 2.1.2.1.1.2

              And FWIW, AAA JJ, how unprofessional of you to talk like that. How would your clients react if I told them that’s how you talk to examiners? For that matter, how about I call up the Office of Enrollment and Discipline. How how about your bar association?

              1. 2.1.2.1.1.2.1

                “How would your clients react if I told them that’s how you talk to examiners?”

                Here’s a newsflash for you re re, my clients read every response I file at the PTO, so they know exactly how I “talk to examiners.” And they’re pleased as punch.

                So again, f#ck you.

              2. 2.1.2.1.1.2.2

                Here’s another newsflash for you, my clients have an even lower opinion of examiners than I do, so please do tell them how I “talk to examiners.” I’ll probably get a bonus.

              3. 2.1.2.1.1.2.3

                So that’s the line, Dennis? Examinertards who have their fee fees hurt get to make silly threats to report anonymous blog posters to OED, and that’s okay, but when they’re told to go right ahead, and to f#ck off in the process, that gets moderated?

                What a f#cking sad joke this site is.

                1. AAA JJ:

                  Bluto: [thrusting six-pack into [[AAA JJ’s]] hands] My advice to you is to start drinking heavily.

                  Otter: Better listen to him, [[AAA JJ]], he’s in pre-med.

            2. 2.1.2.1.1.3

              It takes you “several days worth of work” to “correct” or “change” or “further elucidate” or “improve” your position?!?!?!

              Sure it does, when improving your position necessarily gives you another bite at the apple. If I could file something that says “I rejected you with ABC but now I’m also rejecting you with DEF” it would only take the time to search and create a new rejection, but I can’t. I can file a second non-final, which means the improvement takes the time of two searches, two rewrites and a response to arguments.

              1. 2.1.2.1.1.3.1

                “If I could file something that says ‘I rejected you with ABC but now I’m also rejecting you with DEF’ it would only take the time to search and create a new rejection, but I can’t. I can file a second non-final, which means the improvement takes the time of two searches, two rewrites and a response to arguments.”

                It takes two searches? Maybe you did an update search to find DEF, and after you send out your new non-final with DEF and applicant responds you’ll do another update search, but you’re not researching the entire application from scratch either time. As for the “two rewrites” and “response to arguments” in the vast majority of new non-finals I receive the “rewrite” is essentially the same old rejection with a new reference tacked on to the same old rejection or maybe one or two new rejections. The “response to arguments” is form paragraph drivel (e.g. “arguments are moot”).

                You keep trying to sell this malarkey that that’s “20-40 hours” of “uncompensated work time” but nobody’s buying it. It simply doesn’t take that long.

                1. When you file a RCE what do you think they do with the money? Pay examiners. If you get the same amount of examination without paying the RCE fee, guess what happens? The examiner doesn’t get paid. This isn’t a difficult concept. If we’re in after final and I convince you to RCE, I am given 30 hours of credit. If we’re in after final and I find your argument persuasive, I’m still doing the same amount of work as a RCE and I get no credit. The difference between 30 and 0 is 30 hours of work. This is not a difficult concept. You’re being intentionally obtuse.

                2. When you pay those extra claim fees what do you think they do with the money? Pay examiners.

                  Um, no wait….

                  Random – your view of how the “pay examiner” thing works is woefully out of touch with reality.

                  You might want to talk with Congress about the 10 Billions dollars paid by applicants that have NOT gone to what the applicants have paid for – but siphoned off into the gen eral ledger over the years (yes, that was billion with a “B.”

                3. If I file an RCE it’s either because 1) the rejection is arguably proper and my chances of success on appeal are not favorable or 2) I want to change the scope of the claims for some reason (e.g. introduce new claims to cover a new competitor product) and I’m at a point in prosecution where I’m not entitled to entry of an amendment as a matter of right.

                  If the rejections are improper I’m entitled to a notice of allowance or a do-over from the examiner.

                  Who’s being deliberately obtuse?

                4. “I’m entitled ”

                  By nothing but TRADITION. And that is the entitlement that needs to change.

                  All this nonsense boils down to is entitlement program on top of entitlement program on top of traditional entitlement on top of entitlement on top of entitlement. Made up entitlements ad infinitum.

        2. 2.1.2.2

          PatentBob,

          Your view here has been expressed by many others, including me.

          But this won’t stop certain individuals from trying to denigrate that view as somehow “false.”

          Another poster mentions the fact that the client has final say. This factor too speaks to the desire to have solid examination. As I have stated in the past, when I brief the client and inform them of a C R P rejection based on apparent key word search and string 103’s out the wazzo with cursory “because I say so” backing, the desire to fight that C R P is emboldened. A solid rejection with dead on art breeds a reasonable response from the client.

          I have also pointed out the correlation between the non-explainable “quality” drop in the Reject-Reject-Reject era with the mirror rises in backlogs for RCEs and appeals.

          The mechanism is clear – the Office tried to reject its way out of work with C R P rejections and that tactic failed miserably.

    2. 2.2

      “There’s only two logical results here: Either the prior art knew how to do X (in which case the 103 should stand because it is either admittedly or de facto obvious)”

      All inventions are made of known components. The issue isn’t whether X is known. The issue is whether it was known or obvious to combine X with A, B and C.

      The problem is that you think the mere pre-existence of X makes the combination obvious.

      That said, I for one agree that more turns of the crank are required to do this job right.

      Though fewer would be needed if first office actions included a few coherent sentences of explanation as to why the office thinks paragraph 27 is relevant, rather than just a pasting of four words out of context from claim 1 followed by (pp. 27)

      1. 2.2.1

        Though fewer would be needed if first office actions included a few coherent sentences of explanation as to why the office thinks paragraph 27 is relevant, rather than just a pasting of four words out of context from claim 1 followed by (pp. 27)

        Sadly, the PTO does not teach writing skills. SPEs and examiners should be given training time specifically for review and constructive criticism of their writing style – not just the bare legal or technical analysis that might amount to a prima facie case.

        This, IMO, ought to be quality initiative #1 for the PTO. If examiners were better at explaining their positions, cases would probably be disposed of more quickly – whether it leads to a more effective amendment or argument, or even if it just leads the applicant to realize more quickly that they just disagree with the examiner’s position and need to appeal.

        1. 2.2.1.1

          SPEs and examiners should be given training time specifically for review and constructive criticism of their writing style – not just the bare legal or technical analysis that might amount to a prima facie case.

          Or the PTO needs to do more background checking before hiring to ensure that the people being hired are excellent writers skilled in making clear, logical arguments. Or both.

          Regardless of which option is chosen, it’s going to require serious money. Even mediocre patent law firms spend ridiculous amounts of money hiring, retaining, and training (and re-training) their employees. If “stakeholders” expect the Examiner to “play the game” at the level of a $350+/hr patent attorney backed by an “appeal everything” client, then “stakeholders” should expect to pay for that kind of service.

          1. 2.2.1.1.1

            “Or the PTO needs to do more background checking before hiring to ensure that the people being hired are excellent writers skilled in making clear, logical arguments.”

            Because those kinds of people (who also have technical degrees) are just dropping from the skies!

            1. 2.2.1.1.1.1

              Because those kinds of people (who also have technical degrees) are just dropping from the skies!

              The requirement for a “technical degree” is part of the problem.

              Zero “technical” background is needed to understand or examine huge numbers of patents, particularly when the “innovations” contemplated by those applications are not directed to “technology” (in any meaningful sense of the word) but rather at sociology, psychology, philosophy/logic/rhetoric, business/banking/finance, math, entertainment, insurance and/or law.

              1. 2.2.1.1.1.1.1

                Yes but M M, we have to at least pre ten d we’re still a lw ay s de al ing with the u sef ul arts. Ot he rwise c on gres s would get sus pici ous and start des troy ing ent itlem ents.

          2. 2.2.1.1.2

            “Regardless of which option is chosen, it’s going to require serious money. Even mediocre patent law firms spend ridiculous amounts of money hiring, retaining, and training (and re-training) their employees. If “stakeholders” expect the Examiner to “play the game” at the level of a $350+/hr patent attorney backed by an “appeal everything” client, then “stakeholders” should expect to pay for that kind of service.”

            Very true that.

          3. 2.2.1.1.3

            Or the PTO needs to do more background checking before hiring to ensure that the people being hired are excellent writers skilled in making clear, logical arguments. Or both.

            The problem is that there are many fields in which many workers (or students) do not have excellent writing skills – that is, there just isn’t a large applicant pool of people with both technical expertise and excellent writing skills. I don’t think the PTO can hire its way toward better writing skills throughout the corps – I think training will have to play a big role.

          4. 2.2.1.1.4

            Or the PTO needs to do more background checking before hiring to ensure that the people being hired are excellent writers skilled in making clear, logical arguments. Or both.

            The pool of people who are both good writers and good engineers is largely subsumed by the other side.

        2. 2.2.1.2

          “This, IMO, ought to be quality initiative #1 for the PTO. If examiners were better at explaining their positions, cases would probably be disposed of more quickly – whether it leads to a more effective amendment or argument, or even if it just leads the applicant to realize more quickly that they just disagree with the examiner’s position and need to appeal.”

          I find that nearly all examiners I know can tell you what their position is, but that their position might not bear even a slight resemblance to what is supposed to be going on in prosecution is where the problem arises.

          1. 2.2.1.2.1

            I find that nearly all examiners I know can tell you what their position is, but that their position might not bear even a slight resemblance to what is supposed to be going on in prosecution is where the problem arises.

            I’m not following you there about “what is supposed to be going on” – are you saying that examiners’ positions are sometimes just inappropriate legal positions?

            1. 2.2.1.2.1.1

              “I’m not following you there about “what is supposed to be going on” – are you saying that examiners’ positions are sometimes just inappropriate legal positions?”

              Half the time they’re stretching the claim construction but aren’t telling anyone about it. The other half for the most part is them not understanding either one facet of fact-finding or some straight forward aspect of the law. Maybe a smidgen involves some esoteric legal issue or something regarding objections. And maybe a smidgen is just legit disagreement about something. And maybe a different half of the time, that overlaps the above categories, is a combo of two or more of the preceding.

              Once you have them walk you through the finding of facts (bonus if you get them to do so divorced from the consideration of the claim or application), and then their legal conclusions they’re making, a good solid majority of the time they’ll end up forcing themselves to agree with you without any further assistance I find. Then you don’t even need to argue, they did it for you.

      2. 2.2.2

        Notice that the most logical result is not even provided: the examiner simply did not get the references right.

        Sort of like “merely layered” just is not reasonable for laminate.

        1. 2.2.2.1

          “merely layered” just is not reasonable for laminate.

          Sure it is. By definition, lamination is the process of manufacturing by layering.

          What’s unreasonable is for a patent applicant to fail to define a term that, at best, does not describe the definite and distinct improvement contemplated by the applicant and, at worst, covers “a vast middle ground” of improvement that weren’t contemplated.

          Just to learn to write English and describe your invention in clear, unambiguous terms and everything becomes so much easier. Or continue to obfuscate and kick up dust and watch those prosecution bills soar. Of course, if you’re collecting those bills then endless heel-digging and sideshows are just fun and games. Who cares if the client ends up with massive prosecution history and an unenforceable patent. The attorney walks away with a nice sports car and a case of fine wine. Yummy.

          1. 2.2.2.1.2

            Who cares… The attorney walks away…

            Prof. Crouch – must we put up with near constant denigration of attorneys?

            I realize that much like a 1iar always thinks others are 1ieing, Malcolm’s obsession with “evi1” attorneys lacking in the most basic of ethics of service to clients reflects on his own “ethics,” but really – how often do we have to be exposed to this nonsense?

            The signs of Malcolm’s ethical issues have been a blight eight years and running – you know, or should know this.

            It is one thing to delete posts referring to award winning patent history journalists and another to foster Malcolm’s antics – but by doing both, you necessarily create certain perceptions.

            And yes – erasing this post does NOTHING to dispel those perceptions.

            1. 2.2.2.1.2.1

              have you ever thought of starting your own blog, given how unhappy you are with the moderation of patently-o?

              you could call it “the i h@te malcolm blog” or “no malcolm’s allowed here blog” or maybe “the no malcolms club”.

              yeesh. give it a rest.

              and before you start… no i am not MM, nor am i affiliated with MM, nor am i dennis or have any connection to dennis beyond enjoying his blog, nor am i a paid poster, nor am I an employee of google, nor am i one of “the royal nine” or one of their agents, also not amish/luddite and have no relations that are to my knowledge (and nothing against the fine amish/luddite folk of this world). i hope i got it all there.

              1. 2.2.2.1.2.1.1

                Funny, I thought this blog was for – you know, having dialogues on patent law and all.

                If you are offended by the Malcolm C R P, then you are here for the wrong reason – it is his C R P that is a blight against dialogues here – eight years and running, long before I started posting.

                You did miss something – it’s called a clue.

                1. “it is his C R P that is a blight against dialogues here”

                  so says the guy who is throwing temper tantrums about a bunch of his posts being deleted by the moderators.

                  and btw, a big thank you to the moderators of this excellent blog for giving anon’s leash a yank.

                  you are a funny guy anon.

        2. 2.2.2.2

          Notice that the most logical result is not even provided: the examiner simply did not get the references right.

          That’s irrelevant to the overall determination though isn’t it? The question is whether the claim should be allowed. When you argue that a limitation not taught by your spec is not taught by the prior art, you’re admitting the claim should not be allowed, as it’s rejectable under one or the other statute.

          The Examiner could cite no art, and if the applicant admits that the claim shouldn’t be allowed it won’t be.

          1. 2.2.2.2.1

            That’s irrelevant to the overall determination though isn’t it?

            Absolutely not and it is ludicrous for you to even suggest so.

            Listen Random, you are digging fast and furious all over the place, but you should stop for a moment, catch your breath, and realize that when even 6 can come out and punk you so badly, that you might want to stop digging.

            1. 2.2.2.2.1.1

              Absolutely not and it is ludicrous for you to even suggest so.

              Yawn. Look there’s a MPEP section that says that you don’t have to cite art when applicant admits something is known by the art, and as I said (and you notably don’t counter) the only conclusion one can come to when the spec does not teach how to do something is that it was enabled by the art previously or that it was never enabled at all. It is what any logical person (and here’s where I know I know the supreme court better than you, with due respect) would call an admission by action. The failure of the specification to even attempt to teach something means he knew the art knew how to do it. Further, the most beneficial reading of the specification to the applicant is to find the limitation admittedly known, because applicant can at least find non-obviousness elsewhere while a failure of enablement is generally unfixable. Are you in favor of giving the benefit to the applicant, anon? Would you prefer that in response to the argument that a reference didn’t teach something the examiner withdrew the 103 and rejected under 112, forcing the applicant to submit information which proves the art knew how to do it (i.e. force the applicant’s attorney to reject himself?)? I doubt it, right?

              You can correctly point out the examiner has failed (current) office procedure by failing to map a particular document to the limitation. That does not mean that substantively the argument by the applicant isn’t moot. The correct thing to do is the correct thing to happen anywhere there is a procedural/substantive disagreement: The procedures should be changed to conform with the substantive law. Are you not in favor of procedure conforming to substantive result?

              catch your breath, and realize that when even 6 can come out and punk you so badly, that you might want to stop digging.

              Just as you don’t speak for all practicioners, I don’t speak of all examiners. I understand what 6 is saying, and I think his argument have merit, but this is not the place for them. He’s talking about maximizing “shareholder interaction” under the current system. I am talking about maximizing “quality” under changes that could be made. Changes that are beneficial both to me and to you, as they remove inherent biases that lead to stubborn examiners. You should be on my side on this. It is unfortunate you can’t see past your dislike of me, but then again, you were never my target audience when I posted at 2. 6’s posting or opinion of what I am saying is largely irrelevant to me.

      3. 2.2.3

        All inventions are made of known components. The issue isn’t whether X is known. The issue is whether it was known or obvious to combine X with A, B and C.

        Arguing a motivation to combine is a separate issue. That’s completely different from saying “this was never done before, it’s a non-obvious departure from the state of the art, and I’m the first to do it” while simultaneously implicitly arguing it required no teaching to enable.

        The problem is that you think the mere pre-existence of X makes the combination obvious.

        Depending on your art, it is. Software, for example, is perfectly predictable. There is always a motivation to combine software, because software doesn’t get written for no reason – if it preexisted, it preexisted for exactly the reason it is being used for in the invention.

        1. 2.2.3.2

          “Software, for example, is perfectly predictable. There is always a motivation to combine software, because software doesn’t get written for no reason – if it preexisted, it preexisted for exactly the reason it is being used for in the invention.”

          Nothing gets made for no reason and you could say that about any component of any invention.

          The invention is in using the components for a new reason.

          Glass jar existed. But it was new to use them to hold a filament and a vacuum. Hence the Patent for the Light Bulb.

          Springs existed, but it was new to combine them with an unstable clip and a piece of wood. Hence the patent for the mouse trap.

          Filtering software may exist, but it might be new to apply it to EEG signals to generate computer mouse control signals.

          1. 2.2.3.2.1

            Nothing gets made for no reason and you could say that about any component of any invention.

            You can say that about nearly any component of any invention, which is why motivation to combine is rarely an issue.

            There is a huge distinction between chem or bio inventions where thing a in one context functions completely differently (an unexpectedly, to the art) than thing a in another context. There you might have a motivation to combine issue, because something may have an unknown property when used in the new area.

            In software that is never the case. If I write a function to return the highest value of the inputs it will always return the highest value of the inputs, and it will do that function whether I call the function inside a program to return car prices or whether I call the function to return examined flight times of birds. The function, by definition, is totally predictable. There is never a motivation to combine issue.

            Filtering software may exist, but it might be new to apply it to EEG signals to generate computer mouse control signals.

            Sure, any combination might be “new” but newness is not the standard of patentability. The question is obviousness. It’s always obvious to use the thing that does something to do what it is known to do. Prior to the lightbulb, it wasn’t known you could put the filament/vacuum inside. You can’t say that with a particular piece of software, like filtering software – which functions the exact same way (it performs the same filtering algorithm) regardless of what human beings interpret the signal to mean.

            1. 2.2.3.2.1.1

              “Sure, any combination might be “new” but newness is not the standard of patentability. The question is obviousness. It’s always obvious to use the thing that does something to do what it is known to do. Prior to the lightbulb, it wasn’t known you could put the filament/vacuum inside. You can’t say that with a particular piece of software, like filtering software – which functions the exact same way (it performs the same filtering algorithm) regardless of what human beings interpret the signal to mean.”

              The software may function the same way, but it was not known that it could transform an EEG signal into a computer mouse signal.

              Every component of the Wright Flyer performed its known function. The wood provided framing. The cloth harnessed the wind. The rope applied tension.

              Which is it? Is all software obvious or is it that software has to be disclosed down to the detail of each MOV A,B because without that, one of ordinary skill in the art would not know how to make and use the invention and it is not shown that the inventors had the invention?

              1. 2.2.3.2.1.1.1

                The software may function the same way, but it was not known that it could transform an EEG signal into a computer mouse signal.

                We’re getting a little off base without talking about particular limitations. If the limitation is “transforming an EEG signal into a computer mouse signal” and I find a reference that transforms an EEG signal into a computer mouse signal, I can always add the reference to my other pool of references, because the motivation your applicant has for creating software to transform an EEG into a mouse signal is the reason my prior art had: He had an EEG signal, and he wanted a mouse signal.

                If the limitation is “using a filter” than a prior art citation of any filter will do, and it would be obvious to use it there for the same reason you would use any filtering software – you have too unecessary information and want to separate out only the useful data.

                This is the problem with objective-based functional software claiming. Unless you’re going to come up with an entirely new concept that nobody has ever thought of before, you’re performing the function for exactly the same reason someone else was, and in software your means of doing so are perfectly predictable, because code that takes input A and creates output B will always do that.

                Every component of the Wright Flyer performed its known function. The wood provided framing. The cloth harnessed the wind. The rope applied tension.

                But your very argument is defeating the similarity. If the Wright Flyer was claimed as “something to hold a person’s weight; and something that harnesses the wind” that scope would be obvious (as well as a judicial exception, since Lift was a well known concept before the Wrights came along). The thing that makes the Flyer non-obvious is the particular structure you’re alluding to: This particular cut of cloth to harness the wind in this manner to provide this specific lift to get this frame off of the ground. But in objective software you explicitly are not limiting by structure and are intentionally standing only on function. You want to take away the very thing that makes it patentable, and then you wonder why its not.

                There’s a difference between claiming a particular combination of structures doing a “surprising” new function (something that happens often in bio/chem) versus claiming a function doing its function within a combination (something that happens often in software). A function does its function by definition for the reason the function was done. A structure can be found to be useful for something new. The latter is invention. This is part of the reason why pure functional claiming was never allowed.

                You disclose and claim your algorithm for doing something, we can talk. You talk about function rather than algorithm then you better be the first person to create that functionality, because any prior art functionality will always fit for obviousness, at least in the predictable arts. And, might I add, that if you are the first person to perform the function, you run the risk of an 101 abstract idea rejection. (i.e. Suppose the Wrights claimed it a “a machine for flying people” – they would have a Morse-style problem) But that’s beyond the subject of our current convo I guess.

                1. The invention/algorithm is the combination of functions, one of which is filtering that arrive at the new overall function (in my example, EEG to mouse control transformation).

                  The old way of doing that (using EEG signals to contract muscles to grip and move a mouse) is still available for free.

                  My invention does it a different way…. with electrodes and the filter, etc…

                2. “The invention … is the combination of functions,”

                  I quite agree that this is often the case, however, combinations of functions are not a statutorily blessed category brosef. Check ur 101.

                3. Processes are statutorily blessed brosef. …. They’re like the first category listed:

                  A process for generating a mouse signal, the process comprising:

                  receiving eeg signals from points A, B, C and D on the scull of an associated thinker, thereby forming A, B, C and D eeg channels;

                  6ification filtering each of eeg channels A, B and C with a 6ifier parameter set in a rang of pi to 2.7 pi thereby generating a 6ified A, B and C channel outputs;

                  6ification filtering the eeg channel D with a 6ifier parameter set to at least 36, thereby generating a 6ified D channel output;

                  combining the 6ified A and C channel outputs through signed addition, thereby generating an X direction mouse signal; and
                  combining the 6ified B and D channel outputs through a signed subtraction of the D channel output from the B channel output, thereby generating a Y direction mouse signal.

                  a combination of functions, a combination of steps…. patent eligible processes..

                4. Les,

                  Please be aware that all that 6 is doing is playing pedantic semantics, laying out a Brier Rabbit trap for you to stumble into.

                  Software is NOT a method.

                  A method may involve “software in action.”

                  Do not let the ease of describing software in action terms trip you up into thinking that the defined item of manufacture is anything else than that.

                5. “Processes are statutorily blessed brosef. ”

                  You didn’t say it was a process. You just now admitted that “the invention” was a combo of functions. No take backs bro.

                  Your attempt to shoehorn that which is not a statutory invention into the statutory categories should be rejected at every turn. Not only that, but attempts to conceal this from the office should be met under that law re concealing facts from the federal government and this practice stamped out.

                6. You are making a silly semantic argument.

                  Embodiments take several forms. As a process, the invention is a set of activities. As an apparatus, embodiments are comprised of inter connected functional blocks that perform the activities.

                  I didn’t realized you had gone over to the pedantic dark side.

                7. “You are making a silly semantic argument.”

                  Well I will disagree with you as the “semantics” go to the heart of the substance at issue in all too many cases. Fundamentally the case involves, at its heart, the combination of two or more (usually abstract) functionalities of x y or z known article. Combos of functions are not patent eligible, especially if they’re abstract functions. Shoehorning them in via tricks of language should be frowned upon. The art of the draftsman should not be elevated such.

                  “Embodiments take several forms.”

                  You just said that the invention was a combo of functions. You blatantly subjectively believe that subjectively to be the case. That means you fundamentally believe the invention is a combo of functions. Failure to claim such violates 112 2nd.

                  “claiming the subject matter which the inventor or a joint inventor regards as the invention.”

                  “functional blocks”

                  Functional blocks. Lol. Black boxes?

                8. “Functional blocks. Lol. Black boxes?”

                  No. Functional blocks. For example, if the functional block is the 6ification filter mentioned earlier, some embodiments are implemented with passive components (resistors, capacitors and inductors). If a smaller design is desired and power is available, there are embodiments that are a bit more active, involving operational amplifiers. Those designs usually involve fewer or smaller inductors, but continue to include resistors and capacitors in particular arrangements, of course.

                  Digital embodiments are also possible involving, for example, chains of Fast Fourier and Fast Malcom transforms (with interleaving). These have the benefit of being more easily tuned and can be tuned on the fly, so that one set of hardware can process all the channels.

                  The exact implementation is not particularly important to the invention and can be selected on external factors (cost, size, power consumptions, manufacture-ability etc.). At the level of the claims, all that is important is that 6ification filtering occur as outlined.

                9. “For example, if the functional block is the 6ification filter mentioned earlier, some embodiments are implemented with passive components (resistors, capacitors and inductors). If a smaller design is desired and power is available, there are embodiments that are a bit more active, involving operational amplifiers. Those designs usually involve fewer or smaller inductors, but continue to include resistors and capacitors in particular arrangements, of course.

                  Digital embodiments are also possible involving, for example, chains of Fast Fourier and Fast Malcom transforms (with interleaving). These have the benefit of being more easily tuned and can be tuned on the fly, so that one set of hardware can process all the channels.”

                  I’m sure you draw those out for us in the drawings correct?

                  “The exact implementation is not particularly important to the invention and can be selected on external factors (cost, size, power consumptions, manufacture-ability etc.)”

                  So then you use … what in the drawings?

                10. “I’m sure you draw those out for us in the drawings correct?

                  “The exact implementation is not particularly important to the invention and can be selected on external factors (cost, size, power consumptions, manufacture-ability etc.)”

                  So then you use … what in the drawings?”

                  Maybe. It depends on whats needed to disclose the invention. Sometimes those details are left out so as not to obscure the invention. Other times there is a general block diagram and a few more detailed diagrams with illustrative examples of the passive, active and digital embodiments. Or in the case of the digital embodiments, more detailed block diagrams showing, for example, the chain of FFTs and FMTs and the interleavers.

                  Did Orville and Wilbur show the weave of the cloth or the metallurgical microscopy of the fasteners, or specify a precise thread count for the cloth, rope or the screws? Did they specify a tree for the lumbar or the time of year and place it should be harvested? Did they specify the moisture content of the wood?

                  I think not. I think they recited the important bit, the part that identified the invention in the broadest terms they could come up with: part of the wing can be moved out of the plane of the wing.

                11. Les,

                  Please be aware that I have previously schooled 6 on what drawings need to cover (and what they do not need to cover).

                  He’s just trying to goad you into a brier thicket.

                  The drawings -like the claims- are taken to be understood by the person having ordinary skill in the art to which the invention pertains.

                  This too relates to the defeat of Malcolm’s canard of “objective physical structure.”

                  When you realize that the anti’s are just using their old ploys and canards you just know that they have already run away from the valid counterpoints put on the table for discussion.

                12. “so as not to obscure the invention.”

                  Yep, wouldn’t want to “obscure” the “combo of functions”.

                  “Other times there is a general block diagram and a few more detailed diagrams with illustrative examples of the passive, active and digital embodiments. Or in the case of the digital embodiments, more detailed block diagrams showing, for example, the chain of FFTs and FMTs and the interleavers.”

                  Sounds like a lot of black (or white!) boxes in there.

                  “I think they recited the important bit, the part that identified the invention in the broadest terms they could come up with: part of the wing can be moved out of the plane of the wing.”

                  They made an ok drawing if I recall, it didn’t have even one black box.

                13. Did the drawings show ailerons? ….’cause they filed enforcement actions against ailerons….’cause they are part of a wing that can be moved out of the plane of the wing…

            2. 2.2.3.2.1.2

              Random,

              Try your “logic” again with my little box full of electrons, protons, and neutrons.

              (May I suggest again that you put your shovel down)

            3. 2.2.3.2.1.3

              “You can say that about nearly any component of any invention, which is why motivation to combine is rarely an issue.”

              Wow. Simply wow. Amazing you could be that far out there.

      4. 2.2.4

        Maybe if Applicants wrote the specification and claims in such a way that they could be understood. Probably half of the applications I see are such poor translations or so vague or whatnot that I’m not sure I could restate the claim in layman’s English. But, I have to get an action “on the merits” out, so I cut and paste and cite to equally vague paragraphs in a reference. Seems legit, right? Garbage in, garbage out.

        To be honest, a well-written specification helps everyone. If I understand what you are saying and where you believe the invention is, and why, then even if I end up rejecting the claims, I can often suggest minor amendments to place the case in condition for allowance, because I actually understand what is going on.

    3. 2.3

      The process right now is pretty blatantly stacked against applicants; examiners can make *no* good faith effort to advance prosecution even when there is likely *some* allowable matter, and there is no accountability whatsoever. They also get to make the second action “final” by pretending that the applicant’s completely unrelated amendments somehow necessitated a “new” rejection (with essentially no practical recourse if it’s not true).

      I’m dealing with an appeal right now where the examiner literally gave a one sentence conclusory rejection with no explanation ever even attempted until the Answer brief – and even then, it was only a couple more sentences that did not address any of my arguments (even to simply disagree!). I’m told he will suffer *zero* consequence if he loses the appeal, despite the time and expense he’ll have cost me. Any efforts for “quality” need to give equal weight to unjust rejections as unjust allowances.

      1. 2.3.1

        Sounds like according to the principles of justice what should be sought is not “higher quality” for issued patents, but “higher quality” examination so that those patents which are issued are valid and so that rejections of applications are proper.

      2. 2.3.2

        I’m dealing with an appeal right now where the examiner literally gave a one sentence conclusory rejection with no explanation ever even attempted until the Answer brief – and even then, it was only a couple more sentences that did not address any of my arguments (even to simply disagree!).

        Let’s see the claims and the arguments. Otherwise it’s impossible to determine the accuracy of your allegations.

        Some claims don’t deserve more than a conclusory rejection. Some arguments don’t deserve more than a couple sentences. Judges regularly wave away or ignore spurious arguments that have no merit by stating that the arguments are unpersuasive (they should probably be sanctioning in many of those cases but that might cause a “zealous” $1000/hr attorney to have a sad which is, apparently, the worst thing ever).

        If you submit a claim to the PTO that a tenth grader could figure out is unpatentable in ten seconds, should the PTO waste its time holding your hand and telling you how you should have drafted your specification and claims if you were, in fact, serious about obtaining a patent? Seems like a waste of time to me.

        1. 2.3.2.1

          Some claims don’t deserve more than a conclusory rejection. Some arguments don’t deserve more than a couple sentences.

          Even as an examiner, I disagree with the first statement there. Any rejection needs to be explained, both in terms of the evidence (references) being relied upon, and the rationale for making the rejection (these are basically the same for a 102 rejection, but the additional rationale for a finding of obviousness is critical for a 103).

          That said, I agree with the second statement, at least depending on the worthiness of the arguments presented by the attorney. Some arguments misstate the references, misstate the explanation previously provided by the examiner, and sometimes even misstate the law. These arguments could usually be done away with in a couple of sentences (although I’m usually annoyed enough by such arguments to provide a lot more).

          1. 2.3.2.1.1

            Any rejection needs to be explained, both in terms of the evidence (references) being relied upon, and the rationale for making the rejection (these are basically the same for a 102 rejection, but the additional rationale for a finding of obviousness is critical for a 103).

            I don’t disagree with this. My point is that some claims are written with so little thought and skill that rejecting them doesn’t require any more “explanation” than, e.g., the statement that “as drafted, the claim covers non-action in response to a determination that no action is required. The claim is therefore anticipated by reference X, dated 1392 AD, which teaches a person waiting. Period.”

            I can easily see a struggling patent attorney troubled by that rejection and embarassed about forwarding it to the client. But there’s nothing wrong with it. It’s short and to the point. If the patent attorney is confused, the patent attorney should find a more skilled patent attorney to help him understand the problem.

            My point is that it’s not the PTO’s job — at least it shouldn’t be the PTO’s job — to personally train patent attorneys and agents and/or rewrite their claims for them and/or come up with a legal strategy for obtaining enforceable patent claims. To the extent the PTO expends its limited resources doing that, it’s only encouraging lower and lower competence and more and more dust-kicking and table pounding over procedural issues that ignore the lack of anything patent-worthy in the applicant’s brain.

            1. 2.3.2.1.1.1

              “to personally train patent attorneys and agents and/or rewrite their claims for them and/or come up with a legal strategy for obtaining enforceable patent claims.”

              Maybe it “shouldn’t” be their job but often it’s just the easiest way.

          2. 2.3.2.1.2

            Yeah, but Milly Math is def. an “ends justifies the means” kind of person. As if you couldn’t tell from what Mills posts… To Mills, its junk, so its okay to reject under 101 if it should be rejected under 102, 103, or 112, because hey, its junk. Similiarly, if its a ten paragraph claim, and its junk, it just deserves a “its somewhere in chapter ten of the enclosed textbook” rejection, because, its unpatentable (as proved by the general reference to chapter ten of the textbook and the Examiner’s unsupported assertion that its in the book). Lol

            1. 2.3.2.1.2.1

              its a ten paragraph claim

              Ooh, lookie! Lots of words! It must be a really “technical” and complicated claim, then.

              Such a long claim must surely require a long rejection.

              Meanwhile, everybody knows that certain attorneys love to load their claims with excess verbiage because if they described their “improvement” using normal English like reasonable people the unpatentability of the “innovation” would be immediately transparent to everyone.

              its okay to reject under 101 if it should be rejected under 102, 103, or 112

              I never said any such thing nor is it my belief. It certainly is the case that many ineligible claims are also anticipated, obvious and/or unenabled, and vice versa.

              You should try getting used to 101 rejections. They aren’t going away. On the contrary, there’s much more to come.

        2. 2.3.2.2

          Why all the anger? Anyone who has before the USPTO for any length of time has dealt with rejections like that. My last two appeal briefs directly resulted in allowances that just as easily could have been made instead of the final rejection or after the pre-appeal brief conference. Another case was recently allowed after THREE non-final rejections. I never amended the claims. The examiner just kept citing references with figures that sort of looked like the invention, but which were easily explained as different if one actually read the specification. Recently in a telephone interview, after essentially admitting he didn’t have good art, the examiner said he couldn’t allow a claim like that because of quality review – the problem? It was too short.
          There are a lot of great examiners. But like just about anything else, only the horror stories stick with us.

      3. 2.3.3

        K: The process right now is pretty blatantly stacked against applicants;

        Both the number of patents being granted every week and the allowance rate suggest that most applicants are doing just fine.

        They also get to make the second action “final” by pretending that the applicant’s completely unrelated amendments somehow necessitated a “new” rejection (with essentially no practical recourse if it’s not true).

        Filing a continuation is a practical recourse and a very popular option.

      4. 2.3.4

        I’m told he will suffer *zero* consequence if he loses the appeal, despite the time and expense he’ll have cost me.

        It would not be just to penalize examiners for the outcome of an appeal any more than it would be just to penalize applicants for the outcome of an appeal.

        The majority of appeals turn on subtleties, whether legal or technical, that do not justify sanctions against a party. Even if one party’s arguments seem terrible to the other party, a skilled judge can read between the lines to see the underlying point being made. Also, many appeals are “close calls” that might have had a different outcome with a different panel. Again, this is not a situation where the outcome merits penalizing one of the parties.

        In a particularly egregious case, the proper remedy would be to complain to a supervisor or TC director.

      5. 2.3.5

        They also get to make the second action “final” by pretending that the applicant’s completely unrelated amendments somehow necessitated a “new” rejection (with essentially no practical recourse if it’s not true).

        There’s no pretending, if you amend the scope of your claim (other than by moving up a dependent) you give up the right to not have new art cited against you. A scope is either covered by the cited art or it isn’t, and if it isn’t the citation of different art was necessitated by the scope change. There’s simply no requirement that the new art be linked to the new matter.

        I’m dealing with an appeal right now where the examiner literally gave a one sentence conclusory rejection with no explanation ever even attempted until the Answer brief – and even then, it was only a couple more sentences that did not address any of my arguments (even to simply disagree!). I’m told he will suffer *zero* consequence if he loses the appeal, despite the time and expense he’ll have cost me.

        I can’t debate what I haven’t seen, but if it was appealed the examiner and two others signed off on it. The amount of typing that need be done is not necessarily relevant.

        Any efforts for “quality” need to give equal weight to unjust rejections as unjust allowances.

        Almost all of the quality is done by unjust rejections. A reviewer only gets a few minutes to review the file. Except for something blatantly obvious like missing an antecedent basis, most of the time you’re graded on what you did rather than what you didn’t. A reviewer can’t figure out in a few minutes whether there is art out there that teaches something, or whether the spec fails to support a change and thus it’s new matter. A reviewer CAN read two or three paragraphs on the 101 you wrote and pronounce it wrong.

    4. 2.4

      I can’t speak for all practitioners, but I can tell you, I’d rather have all of your best rejections up front, meaning of course offer rejections in the alternative. You already do that 102 + inherent features vs. 103. Everyone is better served when the best rejections are on the record immediately. Of course, that means we practitioners have to do a better job of anticipating simply-corrected issues, such as indefiniteness, before the case even gets docketed (and preferably before it even gets filed). One thing Examiners may not understand is that practitioners often need well-written and reasoned office actions to have any chance of convincing our clients to narrow the claims. You hit us with a 30+ page, detailed first office action, and we are usually going to find a way to amend the claims. You give us a “claim XX is clearly anticipated by reference 1,” and nothing else, I’ll almost guarantee that a long, costly prosecution is about to happen.

      Respectfully, I also disagree with your characterization of a second Non-Final as “uncompensated.” As I understand it, you get a salary that would not be directly affected by a second Non-Final, but your bonus is negatively impacted. Please correct me if I’m wrong. Doesn’t that mean that you are compensated for a second Non-Final, albeit at a lower rate than if it were a Final? In a perfect world, you would be completely compensated based on quality, rather than quantity, but that’s a topic for a different day.

      I honestly believe that the true problem is, where Examiners see an application, practitioners see a person, either the inventor or the business owner, who have poured immense financial resources into developing the technology, only to have to turn around and (not always, but often) spend immense financial resources to pay a practitioner to do the Examiner’s job for him or her. Often, the only explanation we can give to the client is because of the “count.” The system shouldn’t be this way.

      1. 2.4.1

        not sensationalist: I honestly believe that the true problem is, where Examiners see an application, practitioners see a person, either the inventor or the business owner, who have poured immense financial resources into developing the technology

        If you’ve poured “immense financial resources” into a “technology”, the cost of hiring a decent patent attorney to write a coherent set of claims that can be properly examined is a drop in the bucket.

        What happened to our patent system, unfortunately, is that for a huge swath of applicants there are no “immense financial resources” sunk into the “technology” because the “technology” is a dream about a new information-processing functionality for an old computer or an old newtork. The “resources” required to dream up those functions are minimal, to say the least. All you need is a small room, a comfy chair and a word processor.

        The only “immense” resources are those spent on the hiring of thousands of lawyers (assuming the lawyer isn’t the “innovator” which is a poor assumption these days) to prepare of hundreds of thousands of applications that are, by design, nearly impossible to examine because of the lack of any meaningful consistent terminology (a direct result of the fact that information processing is divorced from the physical structures and transformations our patent system was designed to examine).

        Until these “innovations” in logic and data manipulation are expunged from the system or the system is completely redesigned from scratch, the PTO is going to continue to be overwhelmed and applicants in all fields are going to be enormously disatisfied as a result. As a reminder of where we are at, see: link to patentlyo.com

        1. 2.4.1.1

          I’m not a software practitioner, and I don’t play one on t.v. My clients don’t typically face 101 rejections, and so I can actually comment on how much they spend getting clearly patent-eligible subject matter through the system. I don’t have enough information about software apps to comment, and so I won’t.

          1. 2.4.1.1.1

            The vast majority of the applications I write or prosecute have some relationship with software. If you have anything electronic these days, you have software. However, I don’t consider any of these to be “software” patents, as they operate on real machines that perform real work and create real outputs. Take a base station, for instance, which allows mobile stations to access a wireless network. The base station has a lot of software in it. Is a claim directed to a base station that performs operations under control of a software program a “software” patent? If it is, why should not be able to get a patent directed to a base station, even if it’s operating under the control of “software”?

            1. 2.4.1.1.1.1

              I neither agree nor disagree because I am not informed enough to have an opinion. My apologies if anything I wrote made you think I was denigrating “software” patents. I think eligibility is highly claim-specific, and plenty of new and innovative inventions take place in electronic devices these days.

      2. 2.4.2

        As I understand it, you get a salary that would not be directly affected by a second Non-Final, but your bonus is negatively impacted.

        No, an examiner’s salary and production are independent from one another.

        It’s the production quota at issue here when a second non-final comes into play. If an examiner spends a day preparing a second non-final action, he gets no production credit for it – meaning he will have to spend a day of his own time to work on another case for which he will get credit in order to make the production quota.

        1. 2.4.2.1

          I think this is a possible analogy that might hit home to attorneys:

          Examiner makes a rejection. Applicant responds with arguments. Examiner finds the arguments unpersuasive. Applicant wants to continue prosecution, so the attorney needs to prepare a different response. Client refuses to pay attorney for the second response on the ground that it must not have been done properly if it had to be redone.

          1. 2.4.2.1.1

            Like I said, pay based on quality instead. But then, I guess, the problem becomes defining quality and keeping the (I’m sure) very few lazy Examiners motivated. Patent law is a tough gig. I just wish Examiners and practitioners had a better understanding of each other’s motivations and issues.

          2. 2.4.2.1.2

            “Examiner makes a rejection. Applicant responds with arguments. Examiner finds the arguments unpersuasive. Applicant wants to continue prosecution, so the attorney needs to prepare a different response. Client refuses to pay attorney for the second response on the ground that it must not have been done properly if it had to be redone.”

            That’s exactly what its like. But hey, it was done traditionally, in a much looser atmosphere, so that makes it ok? Right? Right?

        2. 2.4.2.2

          meaning he will have to spend a day of his own time to work on another case for which he will get credit in order to make the production quota.

          Baloney. You’ve got a union-negotiated deal, and that deal includes some work that doesn’t count towards your production quota. Focusing on that supposedly uncompensated work ignores the other half of the deal, where you don’t have to give back money when you complete a project in less time than that allocated by the quota.

          Many attorneys have flat fee or capped fees for office action responses and encounter the same thing – on some cases you “win,” relative to your hourly rate, and on some cases you “lose.” On the losers, you grumble about it a little bit, and then move on.

      3. 2.4.3

        “One thing Examiners may not understand is that practitioners often need well-written and reasoned office actions to have any chance of convincing our clients to narrow the claims.”

        Maybe you shouldn’t start the claims out at “ar sehole” level. Or maybe you just need to learn to be persuasive.

        “You hit us with a 30+ page, … we’ll amend”

        I have infinitely better luck with a 7 page OA. Infinitely. If I could use the short form I’d probably have even better luck at drawing the amendment. For one simple reason: facts.

        1. 2.4.3.1

          You do realize that claims are outcome-based, which is client-controlled, right? I can’t just unilaterally narrow a claim without consulting the client, who may or may not already have an expectation of the breadth of his or her invention. In a perfect world, I would have a pre-draft search report and tailor the claims around that so that there is little or no prosecution history. But the reality is that clients often will not allow a pre-draft search. Thus, the next best option is to do as much of my own background keyword searching as I can do, and then draft a relatively broad set of claims that I believe stays outside what I know is out there, fully expecting the Examiner to find better art to prompt a narrowing amendment. If the Examiner does not explain the rejection relatively fully, I’m not likely to get buy in from the client for the narrowing amendment. Instead, the client will want me to argue, which under the current Office practice, is unlikely to persuade the Examiner.

          “I have infinitely better luck with a 7 page OA. Infinitely. If I could use the short form I’d probably have even better luck at drawing the amendment. For one simple reason: facts.”

          That hasn’t been my experience. The short office action may keep the record clean in case of litigation, but it does nothing to help convince inventors that their claims are too broadly drawn at present. Additionally, short office actions often cause me as the practitioner to have to attempt to read the mind of the Examiner or charge my client for interviewing said Examiner. Either way, clients are out real money and very little is being done to advance prosecution.

          1. 2.4.3.1.1

            who may or may not already have an expectation of the breadth of his or her invention.

            I think this is what the Supreme Court has been trying to disabuse them of for such a long time.

          2. 2.4.3.1.2

            37 CFR 10.85 (and related) still controls. if you file claims in the office that are so broad as to cover things that exist within your own understanding of the universe and would be effective prior art, you are in breach of your ethical obligations.

            really there is no aspect of prosecution that is truly “client-controlled” as you are expected to, independently, use your professional judgment in every correspondence/action with the office.

            its well past time to disabuse the patent bar of this “client-controlled” nonsense. it is thinly guised abrogation of professional duties and needs to be stamped out. what other area of law has people, with a straight face, say “client controlled”? terrible. just terrible.

            i have asked this already… is it possible to ethically file claims in the office that are known by the attorney/agent to be taught by prior art? the answer is no.

            unquestionably no.

            your next point might be… what am i supposed to do about this – fire my clients? the answer is found in the following, which is usually taught in law school ethics courses: in a completely corrupt and unethical world you are expected to maintain your ethical professionalism even if it renders you penniless.

            unfortunately ethical breaches have become so numerous and prolific in the patent ecosphere as to now represent systemic corruption, and the ethical attorney may, as a result, be the penniless attorney.

            the rot has consumed the apple.

              1. 2.4.3.1.2.1.1

                you mean those “thin” ethical requirements on practitioners – as you put it.

                if that is what you consider understanding ethics, im glad you think that I don’t get it.

                “thin” ethical requirements. client controlled prosecution. total systemic corruption.

                Anon: “we do abide by our our ethical duties – you don’t like how thin that duty is, though” 1/20/2015

            1. 2.4.3.1.2.2

              A fundamental tenant of legal ethics is that the client controls outcomes and the attorney controls strategy. As I said before, if I know of art, I’m not purposely going to draft a claim that reads on that art. But, ultimately, I have to rely on the Examiner to do his or her job and give me the best art and an explanation of how it reads on my claims, for the reasons presented in my original post. Then, I can explain it to the client and either get more technical information about how the Examiner is in error or propose a narrowing amendment that gets around the art.

              That the claims are client controlled is not nonsense; it’s the way the real world works, despite how much easier our job would be without it.

            2. 2.4.3.1.2.3

              “what other area of law has people, with a straight face, say “client controlled”? terrible. just terrible.”

              Uhh, as far as I know, every area. Real estate attorneys can’t redraw boundaries unilaterally. Criminal defense attorneys can’t enter a guilty plea for their clients. Corporate M&A attorneys can’t amend the key terms of a contract. Shall I continue?

              1. 2.4.3.1.2.3.1

                nope, thats an inversion of how it works. As an example, a client cannot ask you to do something unethical or illegal. why is that? because YOU are the professional and YOU have the final say in the work that you do. does that mean you have to fire clients when they ask you to do unethical or immoral acts? Yes. does that not always happen because people get confused by the “client-driven” rhetoric? of course. this is why OED being asleep at the wheel is a bad thing.

                ever seen an appeal brief written without a basis in law or fact, but was “forced” by a client? i have. “Client-driven” practices create those sorts of situations.

                no different than a doctor stating that he is handing out pain prescriptions because his clients wanted him to… as a professional the bottom line is you. you are always expected to use your professional judgment, which is why “client made me do it” is never an excuse.

                lets keep stamping this nonsense out.

                now, is there wide berth in “strategy”? Of course. But that berth ends at the unethical or illegal. regardless of client demand.

                YOU are the ultimate control on your professional behavior. not the client.

                1. ok, as long as we are on the subject… how do you feel about “fire and forget” style of filing foreign originated applications at the pto without formal review of the appropriatness of claim scope? this is a prevalent example of “client-driven” practice. here the professional just puts his name on dozens/hundreds/thousands of applications and files them virtually blindly. definitely “client-driven.” no question there i hope.

                  ok or not ok?

                  or, if you prefer, you can take the other side of the appeal example above… i would be interested in how to analyze that and not determine ethical breach.

                2. Are you not an attorney or are we not talking about the same thing? It is not unethical to draft a relatively broad claim when you don’t know what art is out there. It is unethical to mischaracterize references. It is unethical to flat out lie. But it is not unethical to draft a broad claim when none of the art is known or to argue the merits of a broad claim if the Examiner failed to show that it’s not patentable. It is my job to get the broadest protection I can for my client, within the bounds of the prior art, and it is the Examiner’s job to set forth the best reasons why a patent should not be granted.

                  By the way, 37 CFR 10 was removed in 2013. The sections you are looking for are 37 CFR 11.101 et seq. Interestingly, 37 CFR 11.102 states that “subject to paragraphs (c) and (d) of this section, a practitioner shall abide by a client’s decisions concerning the objectives of representation and, as required by 11.104, shall consult with the client as to the means by which they are to be pursued. A practitioner may take such action on behalf of the client as is impliedly authorized to carry out the representation. A practitioner shall abide by a client’s decision whether to settle a matter.”

                  (c) says the attorney can limit the scope of representation, and (d) says the attorney can’t help the client commit crimes or fraud.

                  (1) the scope of the claims is undeniably an objective of representation; (2) As long as it is not fraud on the Office, I am ethically obligated to defer to my client’s wishes about the scope of said claims.

                  This is almost verbatim Model Rule of Professional Conduct 102. The examples I provided in my previous post are controlled by that Rule, as would be the scope of the claims.

                3. We’re out of layers of comments. This responds to “fire and forget scenario.” Unless the practitioner knows of art reading on those claims, then the Rules of Professional Conduct would seem to say fire away. Ideally, the practitioner would then have a conversation with the client about the breadth of the claim and attempt to counsel, but the claim is ultimately controlled by the client.

                4. I didn’t say draft. I said no review before filing. Did you miss that part?

                  Can a professional ethically do that?

                  Stop moving the goal posts.

                5. I’m not moving the goal post, at least not intentionally. I can’t speak for all practitioners, but there is no way I’m filing anything with the USPTO without having read it first. I’m less concerned about the ethics there than the potential malpractice liability. As far as formal review of the claim scope, if I don’t know of any art out there yet, who am I to judge the claim scope? If it’s foreign and there is an associated search report, of course I would take at look at those references and try to counsel the client to get around those. But that’s not an ethics issue, that’s a client-relations issue. I want to save them as much money and time as I can, and that often means narrowing claims up front.

                  Too many times in practice I’ve been convinced that a reference is a serious impediment to patentability and brought it to the attention of a client only to have that client give a reasonable explanation of the teachings of that reference that does not include what is being claimed. They are closer to the technology and thus are better situated to opine on the breadth and scope of the claims, at least initially.

                6. Btw, good catch on the old CFR section. Time to throw out that old book.

                  37 CFR 11.301 would be the most analogous.

                  can a practitioner live up to “shall not bring or defend a proceeding… unless there is a basis in law and fact for doing so” if it is blindly performing “fire and forget”? no review. so… how would that work?

                  i dont think you can.

                7. I thought I said “no review” is a bad thing. In case I didn’t, “no review” is a bad thing. But that doesn’t change my point from above that the client controls the claim within the bounds of not committing a crime or fraud. It’s not fraud to draft a claim for which one could make a good faith argument that there is no known prior art interfering with it. Even if an Examiner just has a feeling that it’s too broad but can’t find any art to support that position.

                  I know I haven’t addressed your appeal brief scenario. I suspect you and I are on the same page there. I can make a good faith argument that the brief is a piece of the strategy, and I also have a duty to not argue something that I know is without merit. Glad I haven’t faced that scenario yet in real life, to be honest.

                8. Art isn’t the only problem with fire and forget. How about not tending to blatant 112s in even the independents because you simply never read the thing?

                  at least we are in agreement that this is not good behavior. unfortunately, it is not uncommon (remember people boasting on this site about how it made no sense to even proof read claims given by a client as the PTO is cheaper than they can do it?) because it saves money.

                  meh ive said my peace.

                9. What are the ethical obligations of the examiner who also happens to be an attorney? Applicant submits claims which are clearly anticipated by reference filed concurrently.
                  Or the attorney who misquotes the reference, leaving out a key word in a sentence?
                  Is the examiner under any duty to report? Not would anyone actually report, what would the barbri guy say?

                10. “What are the ethical obligations of the examiner who also happens to be an attorney?”

                  There is no easy answer to this question.

                  The PTO (at least used to) strongly frowned upon its examiners reporting offending attorneys “mistakes” as these were seen as merely “part of the game” and that there was an “expectation” that examiners “played the game.”

                  As I have already mentioned, as well as others, the PTO is a captured agency. So this shouldn’t be much of a surprise.

                  Ultimately, I would say that there is a reporting requirement involved. Now how you handle that is on you.

                11. Also, do keep in mind that OED has been kept quite underfunded for its mission.

                  If examiners started reporting these “mistakes” to OED, it is unlikely that OED has the staff nor the resources to keep up. Really, they seem to just focus on the super big time stuff and also on giving people who passed the exam a hard time for speeding tickets and such to remind them that they are still there.

                  This is the problem with working inside a captured agency, reality seems to bend and twist once you enter the front doors.

      4. 2.4.4

        Respectfully, I also disagree with your characterization of a second Non-Final as “uncompensated.” As I understand it, you get a salary that would not be directly affected by a second Non-Final, but your bonus is negatively impacted. Please correct me if I’m wrong.

        You are wrong :) Examiners are required to do a certain number of counts per hour. So for example in the art I examine in a full round of examination (first, final, disposal either thru abandon or RCE) is worth 31 hours for most examiners. So if my quarter comprises 500 hours, I have to complete 16 rounds of examination during it or I’ll be fired.

        If I get credit for doing the first action and then the final (which would be, say 24ish hours of the 31) I have earned that credit already, and if I’m forced to do a second non-final and second final, I’m not getting credit again. Consequently, every time an examiner situated like me finds an after final argument persuasive, they have just added 24 hours to the amount of work they have to do that quarter because they still did a round of examination, and they still have 15 rounds of examination to do, but now they will also have a round of examination they just gave themselves (it won’t all be realized during that quarter, of course, because of response times between actions, but on average I’m talking). 24 hours of work is 5% of their entire quarterly work. So if you find two or three arguments (in response to the hundreds of mappings you do in those 16 cases) persuasive, you’re doing 10-15% more work than someone who finds no arguments persuasive, and if you’re incapable of absorbing that extra work you’ll be fired. Keep in mind that if you find two arguments persuasive, you have essentially cancelled out a week’s vacation.

        Now it is true that if you were producing 115% of what you were required, then doing 15% uncompensated work just wipes out your bonus and you’re still retained (i.e. you lose thousands of dollars by agreeing with the applicant, not your job). But I fail to see how this negates my argument – I’m not more likely to give your argument a fair shake when the cost to me is a mere couple of thousand dollars as opposed to my job. Do you think any rational actor would say “I choose no dollars instead of thousands of dollars?”

        practitioners see a person, either the inventor or the business owner, who have poured immense financial resources into developing the technology,

        I will never tell a person they cannot use the thing they made, as that is not my function. There is a large difference between doing something and preventing others from doing something. I have no doubt that a large percentage of applicants “make” something, but this is not a registration system, and just because you create something that wasn’t there before doesn’t mean you have advanced the art. I don’t ever tell someone what they did was worthless, I simply tell people that it’s not worthy of a patent.

        1. 2.4.4.1

          (i.e. you lose thousands of dollars by agreeing with the applicant, not your job).

          News for you sparky – your job is to examine – NOT to JUST reject.

          If in the course of examining, the applicant prevails, then it is very much your job.

          Regardless of counts and regardless of the measurement system you operate under.

          Yes, I am aware of the adage “you get what you measure” – but that does NOT actually define your job.

          If you are unhappy with the disconnect, then talk to your union. The applicants are NOT your doormats, not are they your “job security.”

        2. 2.4.4.2

          “If I get credit for doing the first action and then the final (which would be, say 24ish hours of the 31) I have earned that credit already, and if I’m forced to do a second non-final and second final, I’m not getting credit again. Consequently, every time an examiner situated like me finds an after final argument persuasive, they have just added 24 hours to the amount of work they have to do that quarter…”

          This is utter nonsense. If you’ve examined a case to final rejection with a 103 A in view of B and applicant comes in and persuades you that the rejection is improper, but you still feel that the claims should not be allowed, and you want to do a non-final, you don’t “have to” do 24 hours of work to issue the new non-final and then get to a second final. You’ve already read the application. You’ve already done the search for the FAOM (assuming you did it correctly), you’ve already done the updated search for the first final. If you need to find a third reference C to fix your A in view of B and pull up your previous OA and insert, “C shows…. It would have been obvious…” there’s no way that takes you another 24 hours. If it does, you’re doing something very seriously wrong. And you should consider another line of work.

          1. 2.4.4.2.1

            If you’ve examined a case to final rejection with a 103 A in view of B and applicant comes in and persuades you that the rejection is improper, but you still feel that the claims should not be allowed, and you want to do a non-final, you don’t “have to” do 24 hours of work to issue the new non-final and then get to a second final.

            Put yourself in the examiners shoes. I’m in after final, and applicant makes an argument, my options are:

            1) Find argument not persuasive, see if he RCEs. If he does I do a round of examining and get 30 hours of credit for it.
            2) Find argument persuasive. Do a round of examining, get no credit for it.
            3) Find argument not persuasive, have applicant appeal. Then convince people similarly situated to me that I shouldn’t have to do 2. Write appeal brief.

            You’re looking at this in terms of the applicant and his single application. The examiner doesn’t look at it that way, as my stack of upcoming cases is infinitely large. I must do X number of unique rounds of examination each quarter, and I must do those X number regardless of how many times I decide I must do them over. You’re looking at the time it takes. I’m looking at the credit I receive. Not for nothing, but those aren’t unrelated.

            And again you’re pushing this BS that there won’t be substantial amendments made during the second amendment. If you were banking on an argument and I conclusively defeat that argument, there are going to be scope amendments, and that’s significant work. Is one piece of the work (where I do a quick search and add the C reference) pretty quick? Sure. But that’s not all it entails.

            In fact, that’s just the distinction I argue for – You should give me the option to just add the C reference without the second final round. If it’s so trivial (as you claim) then you won’t miss it.

            1. 2.4.4.2.1.1

              “Is one piece of the work (where I do a quick search and add the C reference) pretty quick? Sure. But that’s not all it entails.”

              It doesn’t entail you “having to do” another 24 hours of work. That’s simply nonsense. And you know it.

              “In fact, that’s just the distinction I argue for – You should give me the option to just add the C reference without the second final round. If it’s so trivial (as you claim) then you won’t miss it.”

              I’m not saying it’s trivial. I’m saying that the examiner’s treat it as trivial.

              In my 15+ years of practice, it’s been very clear to me that less than about 5% of the new non-finals I’ve received were the product of the examiner actually re-examining the application. The rest were clearly the product of a quick word search, a slap dash coat of “new paint” on the old sh!tty OA, and the typical form paragraph response to arguments.

              Examiners never put in as much work getting to final rejection after a new non-final than they put into getting to the first final rejection. Your continued insistence that they do is preposterous and laughable.

        3. 2.4.4.3

          “… if I’m forced to do a second non-final and second final, I’m not getting credit again.”

          You shouldn’t. Why should you get “credit” for fixing your mistake? Do you think there’s any job in the world where you get “credit” for fixing your own mistakes?

          What is the color of the sky in your world?

          And by the way, you are not “forced” to do a second non-final. If you’ve done the job correctly and applicants overcome your rejection through evidence, argument, and/or amendment, allow the application. That’s how the process works.

          1. 2.4.4.3.1

            “Do you think there’s any job in the world where you get “credit” for fixing your own mistakes?”

            Attorneys sure as sht do. And I know, I know, you say that you tots don’t. And tots catch super big heat for scr ew ups. Maybe you do. But it certainly doesn’t appear most of my attorneys do. But then, that’s probably because they’re in the useful arts and the people who are hiring them on are getting absurd value for their dollar already, regardless of whatever little fau x pas happens. Occasionally I can tell they’re catching heat for fi n up, but it usually isn’t all that big of a deal and I can just fix it and send it out.

            “And by the way, you are not “forced” to do a second non-final”

            You are if your b oss says you are. Or, if you’re the bo ss and your mi ndset tells you that you are.

            “That’s how the process works.”

            Yes, but some people take issue with that process working that way. They don’t know it, but they’re actually just pis sed that the whole program is an e nti tleme nt program.

            1. 2.4.4.3.1.1

              “You are if your b oss says you are”

              Convince your boss you’re correct in allowing it. Can’t you persuade your boss that you’re right?

              I love how you continue to bash us that we can’t persuade examiners that our claims are allowable and yet you freely admit you and the rest of the examining corps can’t convince your boss that the claims are allowable.

              Though I’m sure the irony of it all is completely lost on you.

              1. 2.4.4.3.1.1.1

                “Can’t you persuade your boss that you’re right?”

                We’re not talking about me. Yes. I can. Remember, I do max one-two non-fs a year. People who are at my level of expertise aren’t having these sorts of issues. But that doesn’t mean a huge portion of the corps doesn’t have that issue.

                “I love how you continue to bash us that we can’t persuade examiners that our claims are allowable and yet you freely admit you and the rest of the examining corps can’t convince your boss that the claims are allowable.”

                Mmmm, not me. But yes, a sizable portion of the corps “cannot”. Or rather, usually it is just that they “do not” for various numerous reasons.

          2. 2.4.4.3.4

            You shouldn’t. Why should you get “credit” for fixing your mistake? Do you think there’s any job in the world where you get “credit” for fixing your own mistakes?

            I don’t want credit for fixing my mistake, I want credit for the free round of examination you’re getting. Assuming I made a mistake, I would be more likely to fix if it the rules said I could just fix it and not also trigger a new round of examination for you. Why should you get “credit” for a whole new round when the vast majority of the work was done correctly?

            1. 2.4.4.3.4.1

              “I don’t want credit for fixing my mistake,…”

              Sure you do. That’s what you’ve been arguing ad nauseum for.

              “…I want credit for the free round of examination you’re getting.”

              How am I getting a “free round of examination”? I paid for a proper examination. If I don’t get it the first time around, aren’t I entitled to it the second time around? I mean, after all, I did pay for it. If you bought a car and the day after you bought it stopped running due to a defect, and you brought it back to the dealer, would you expect to have to buy another one, or would you expect to get what you paid for in the first place, i.e. a car that actually works?

              “Assuming I made a mistake, I would be more likely to fix if it the rules said I could just fix it and not also trigger a new round of examination for you.”

              This quote establishes conclusively, beyond any shadow of a doubt, that you have zero professionalism.

              “Why should you get ‘credit’ for a whole new round when the vast majority of the work was done correctly?”

              How am I getting “credit” for a whole new round? Again, I paid for a proper examination under the law. If I didn’t get it because you made a mistake, why should I have to pay for it again? I NEVER GOT WHAT I PAID FOR. WHEN DO I GET IT?

              1. 2.4.4.3.4.1.1

                “Again, I paid for a proper examination under the law. ”

                So lolable. Applications today are so monstrously large that the above statement is all but meaningless.

                “If I didn’t get it because you made a mistake, why should I have to pay for it again? ”

                Because one mistake in a ginormous modern day mess is an absurd reason to have the office start all over. Especially in one of the arts where they have 30 hrs. Those things are gigantic nonsensical messes.

                Were we still dealing with something that approaches a “patent application” (as in, of old) then fine, one mistake amongst the dozen or two issues present in the whole case, fine, we start again and do it over, it just takes a minute. One mistake in 300 issues is a bit of a different story.

                It’s easy to see where this nonsensical system we have today originated historically and why it made sense then. Nowadays it is just absurd and if someone tried to create it from scratch without the tyranny of legacy history to back them they’d never get a union or group of workers to be like “yea I’m on board with that lol”.

                1. “So lolable. Applications today are so monstrously large that the above statement is all but meaningless.”

                  Ridiculous.

                  “Because one mistake in a ginormous modern day mess is an absurd reason to have the office start all over.”

                  You’re not “starting all over.” In the words of Random Examiner, you keep pushing that BS, but it ain’t flying.

                2. “You’re not “starting all over.” In the words of Random Examiner, you keep pushing that BS, but it ain’t flying.”

                  That’s what a 2nd action non-f is for too many examiners brosef. I’m sorry, it just is. Yes, for people like myself who are on point and who have (or will have by the time I’m done shaping them) good leadership behind them then sure we just gloss right over the whole incident np, maybe even write our first 2nd action non-f that year. But that isn’t how it works out for too much of the office. You should know this if you worked here for a decade.

              2. 2.4.4.3.4.1.2

                I paid for a proper examination. If I don’t get it the first time around, aren’t I entitled to it the second time around?

                You got it with respect to every limitation you aren’t complaining about, didn’t you? Absolute correctness isn’t non-compliance. Imagine if you applied that standard to everything in law – every reversal by an appellate court resulting in a new trial, whether the mistake was in fact or law, material or not, or every argument by an attorney that didn’t prevail resulting in a loss of fees.

                If you bought a car and the day after you bought it stopped running due to a defect, and you brought it back to the dealer, would you expect to have to buy another one, or would you expect to get what you paid for in the first place, i.e. a car that actually works?

                But it’s not similar to a car entirely not working, because you take no issue with my 101 or 112 rejections or non rejections (in fact, if you argued 103 and I reopened with a 103 and 101 you’d be pretty upset) or even most of my 103 rejection. You’re fine with, or at least not actively arguing, dozens of limitations. You even already had a chance to amend following my opinion. It’s called substantial compliance, something the MPEP offers to applicants when their response is not complete, but you would suggest shouldn’t work the other way. It’s more similar to a car working but for a faulty seatbelt. You (presumably) know contract law – is the remedy to cure the seatbelt defect or void the entire transaction? When there’s a seatbelt recall do you think they take your car and give you a brand new one?

                I bet you’re the kind of person who dines and ditches because you didn’t like how quickly your drink was refilled – that’s what you’re arguing for.

                This quote establishes conclusively, beyond any shadow of a doubt, that you have zero professionalism.

                Zero professionalism would be allowing something I don’t believe to be allowable. That option is always open to me. I’m talking about what the office procedure should be when I choose not to avail myself of it.

            2. 2.4.4.3.4.2

              “Why should you get ‘credit’ for a whole new round when the vast majority of the work was done correctly?”

              If the “VAST MAJORITY” of the work was done correctly, why do you need to do 20-40 hours or several days worth of work to correct it?

              That’s about the 5th time I’ve pointed out the inconsistency of your and RH’s arguments and yet you continue to insist that there’s some “great personal punishment” for you to correct a mistake.

              Are you really not seeing how utterly ridiculous your argument is?

              1. 2.4.4.3.4.2.2

                “If the “VAST MAJORITY” of the work was done correctly, why do you need to do 20-40 hours or several days worth of work to correct it?”

                Because by “correct it” he means do a whole other round of prosecution on your now conveniently amended claims. If it were just a simple matter of “correcting it” and then going final without anything else changing then he wouldn’t hardly give two shts. That is in fact what he’s asking for.

                1. Even if the first round of examination took 20-40 hours, that time included reading the application and conducting the search. There is no way that conducting “a whole other round of prosecution” on amended claims takes the same amount of time. It certainly doesn’t take “several days” worth of work.

                  Stop it. You’re being ridiculous.

                2. Generally I’d agree with you but this is the jumbo softiewafie arts, anything is possible in that nonsensical realm. And you have to remember, you’ll face closer scrutiny than the avg examiner bear.

        4. 2.4.4.4

          Thanks for the explanation. So what I’m hearing is that the whole quota thing reeks. I can agree with that and would like pay and job security to more closely align with quality, over quantity, even if that means giving Examiners some credit for fixing their mistakes.

          Serious question here: how do you feel about the After-Final pilot then? I try to use it when I get a sense the Examiner is waffling about patentability or has one or more relatively weak arguments. Does it give you enough time that you don’t feel like you are working for free?

          1. 2.4.4.4.1

            Serious question here: how do you feel about the After-Final pilot then?

            I feel that the normal after final (where you can argue) is not an issue as it probably heads off some appeals, which nobody likes. As to the 2.0 after final where you can amend – one time early on a friend of mine entered the amendment, did it wrong, and a second after final argument led to her having to do a second non-final.

            You get three hours of “other” (non-examining time) time for doing an after final 2.0. One of those hours is the standard hour you get for having an interview, so two hours to do the search/work. Its entirely optional by the examiner to take it. After that happened to my friend I decided on principle not to take any more 2.0s. There is no reason to risk the 30 hours you did for the risk/cost ratio of 2hrs other time versus a short search, especially in light of the fact that a 2.0 filing is signalling that a RCE will follow.

            Many examiners look at it like this: If I search it now I’ll get 2 hours other time, if I don’t search it now this is likely my RCE first action, and I get 19 hours examining time.

            It’s a poor program.

            1. 2.4.4.4.1.1

              It’s possible to have “tiers” of examining I think, i.e. a full blown RCE versus maybe a half-RCE that involves only one search and costs half as much, but the ratio of credit for the examiner would have to be equal and the ratio of cost for the applicant would have to be equal or it wouldn’t be used. 2.0 is so far from the ratio that it makes little sense from the examiner’s side.

              1. 2.4.4.4.1.1.1

                Thanks. I had much better luck with it when it was new. Now, I pretty much only do it when I’m importing an already-examined dependent claim into the independent claim, and even then, only a few Examiners enter it. I think I understand why now.

                It would be great to have a series of presentations co-planned by practitioners and examiners, to exchange this type of information. I think we all share a lot of common goals, but the path to get there is a little tricky.

                It’s funny, when I first started out, I had a partner tell me to never return Examiner phone calls. I’m glad I haven’t listened to that advice over the years, because I’ve been able to build a rapport with many Examiners by just being courteous and professional. We all want final disposition of the case. There is no good reason to be antagonistic. I hope we can come together to fix the system in a way that works for society, which is exactly the purpose behind the constitutional provision for patents in the first place.

                With that, much like “the sad reality,” I’ve said my peace.

                1. “there is a little tricky.”

                  That’s code for: it’ll cost you a couple thousand dollars worth of production time.

              2. 2.4.4.4.1.1.2

                it makes little sense from the examiner’s side.

                Once again you make the mistake of confusing the metrics involved with what your job is.

                And once again let me offer you some advice: if you are unhappy with the disconnect, talk to your union.

                The moment you try to settle for what you ‘feel’ works because of the metrics you work under at the expense of my client, I will rip you the figurative new one.

                My client is not here as your “doormat” or “job security.” Your mindset is EXACTLY what caused the RCE Gravy Train syndrome – and is a very real part of the problem.

                (and yes, I do “get” the human nature aspect that “you get what you measure,” but that is YOUR direct problem, and you have NO right to make it my client’s problem)

                1. “The moment you try to settle for what you ‘feel’ works because of the metrics you work under at the expense of my client, I will rip you the figurative new one.”

                  Right. Your imaginary “clients” get supar poed I’m sure. And then anon will go all interbuts tough guy!

                2. “(and yes, I do “get” the human nature aspect that “you get what you measure,” but that is YOUR direct problem, and you have NO right to make it my client’s problem)”

                  Quick question anon, let’s just say that you’re right that he has “no right” to do what you’re saying. Why would you not btch just as much as the people implementing the system as the people forever pushing things onto your “client”?

                3. Once again you make the mistake of confusing the metrics involved with what your job is.

                  You mistake a program which is ON ITS FACE optional for the examiner to take with my mandatory job. You paid for and got your examination, you have no right to further examination. When I send my final you may ask politely for a 2.0, or take your rightful options to appeal or rce.

                  As you so often do, you open your mouth to tell other people their jobs and point out just how little you know.

                4. Collect yourself Random – my comment was not constrained to your views here on that one little optional program.

                  You have been so deep into the weeds in so many places, that the only way to bring you back out of the weeds involves a gargantuan amount of napalm.

        5. 2.4.4.5

          “I will never tell a person they cannot use the thing they made, as that is not my function. There is a large difference between doing something and preventing others from doing something.”

          I know the difference. I went to school to learn it. But the reality often is that trade secrets are not an option, and without the patent, so many competitors will enter the market that there cannot be enough sales to justify the costs of development, production, and fighting the bureaucracy. So, even if they can use it, if they run out of money fighting with the Office for something that is rightfully theirs, that will be little comfort to them. I guess my point is that these are real people and our system should treat them as such. That’s why I like the idea of an in-person interview with the client in tow.

    5. 2.5

      “The situation occurs fairly often, for example, if an argument that something shouldn’t be taken in 112, 6th is persuasive, the expanded scope would likely lead to a 112, 1st issue, but again there is no basis to make the rejection (prior to deciding the argument is persuasive) unless you assume your argument is wrong to begin with and do double the work by rejecting in the alternative.”

      How much work is that? Seriously. All (i.e. 100%) of the 112, 6th paragraph determinations I get are nothing more than the form paragraph with the particular “nonce” word that is being interpreted as mpf inserted in the blank. Most (i.e. 95+%) of the 112, 1st WD rejections I get are nothing but the form paragraph with “…it’s unclear where [insert feature x] is supported.” How much work does that require? You have to add like, what, one sentence: If applicant disagrees that the feature should be interpreted as a means plus function limitation, then a rejection under 112, 1st is applicable as it is unclear where [insert feature x] is supported.

      Seriously, how much work is that?

      “The biggest clog in the system is that the examiner is personally punished when it is determined that the applicant is correct…”

      Huh? What? WTF are you talking about? The examiner is “personally punished” when it is determined that applicant is correct (i.e. when the examiner is proved incorrect)? If the applicant’s evidence and/or argument establishes that the rejections are improper, the examiner can allow the application (or whatever claims are improperly rejected) or apply a new rejection.

      What you want is an unlimited number of opportunities to get it wrong (which you already have) PLUS the “credit” for “work” that you have to do to fix your mistakes. Guess what? You ain’t ever getting that. Nobody gets that.

      “… thus the examiner sits as his own judge, which leads to stubbornness and externalizing the mistake (simply allowing rather than continually prosecuting) in response.”

      The examiner is not sitting “as his own judge.” The examiner is the “judge” of the patentability of the claims based on the entire record.

      Why does being required to reconsider the patentability after applicant’s response lead to “stubborness” and “externalizing the mistake”? It shouldn’t. If it does, for any examiner, then they need some remedial classes on professionalism. Regardless, that’s not applicant’s fault or problem.

      “The analogy would be to make the states attorney not only the prosecutor but the judge, and then not pay him for every defendant not found guilty. It would go without saying that nobody reviewing that system would find it impartial or even rational.”

      That’s not the analogy. Examiners get paid whether they reject or allow. In other words, they get paid for examination. The outcome (i.e. rejection or allowance) has absolutely no impact on the examiner’s pay. Did they change the compensation system over there so that examiners now only get paid for every case they allow, or for every case they reject? If so, nobody told me.

      “An examiner would be much more likely to say ‘I see you have an issue with my citation on X, I think I teach it with my reference but here’s three other arts that also teach it’ in response to an after final if the result didn’t mean he had to do it in a second non-final and thereby cost themselves 20-40hrs of uncompensated work time.”

      It takes you 20-40 hours (!) of “uncompensated work time” to find “three other” references that teach X, pull up your previous final OA and insert, “I see you have an issue with my citation on X, I think I teach it with my reference but here’s three other arts that also teach it” and send out that new non-final OA, and then respond to applicant’s response to that, which less face it many times is just pulling up the new non-final, inserting “arguments not persuasive” form paragraph and then insert the “this action is final” form paragraph?

      It takes you 20-40 hours to do that? If so, you’re doing something wrong. Very wrong. And there’s nothing anybody in the PTO, the patent bar, or pretty much anywhere that can help you.

      “Cue the practitioners telling me to do my job rather than actually agree with a change that still gives them all they want and would ultimately also benefit them.”

      Grow up. Stop taking it so personally. If your rejection is wrong, and you can’t make a correct one, allow the case. If you can make a correct one, admit your mistake, suck it up and, yeah, do your job correctly.

      Sheesh.

      1. 2.5.1

        Did they change the compensation system over there so that examiners now only get paid for every case they allow, or for every case they reject? If so, nobody told me.

        Might be one of those “other” secret “Quality” programs…

      2. 2.5.2

        “Huh? What? WTF are you talking about?”

        You don’t get it. He’s speaking to you from the standpoint of “reject dat application”. It’s a different mindset.

        “What you want is an unlimited number of opportunities to get it wrong (which you already have) PLUS the “credit” for “work” that you have to do to fix your mistakes. Guess what? You ain’t ever getting that. Nobody gets that.”

        That is what he’d like, and it’s likewise what I’d like. And I wouldn’t be so certain that we’ll never get it. Case complexity keeps on rising, eventually things will come to a head. Even now my apps are getting absurd, species after species after species in case after case. The dependent claim wild goose chase still in full swing. Nevermind how much crp they just chock in the spec. But, as I recently found out, the time per app likely cannot rise to keep pace even if the office admin wanted it to. It would create a politically untenable situation. Eventually, maybe 10, 20 years in the future things will come to a head and the examination procedure itself will be revised. That’s my prediction anyway based on current trends.

      3. 2.5.3

        “It takes you 20-40 hours (!) of “uncompensated work time” ”

        Some people like to write verbose OAs bro. My new spe is like this somewhat, though I think her experience as a spe is curing her from this disease.

        1. 2.5.3.1

          I’m not impressed with the 7 page two way restriction requirements I get that are 99.99% form paragraphs.

          Here’s what I think would be a good system/program/whatever you want to call it: have practitioners identify to PTO management good examiners who write good OA’s. Nothing too sparse, nothing too verbose. Let the practitioners nominate these examiners anonymously. But when there’s a consensus that there’s an examiner who’s got it down just right, have that examiner’s work shared with those examiners who just don’t get it so that they can see what a good OA looks like. Show it to these newly minted SPE’s (who become SPE’s about 2 weeks after they pass the full sig program) too. And tell the other examiners to follow suit. And “personally punish” any who don’t by making them do “several days worth” or “uncompensated work time” to do it over correctly. Until they get it right.

          1. 2.5.3.1.1

            I was under the impression that Examiners only got a hour to write a restriction action. Am I wrong? If it is true, then 99.99% form paragraphs make sense.

            1. 2.5.3.1.1.1

              You get an hour to write, find another AU to take the claims if applicants elect something that you don’t examine, and to figure out the cpc classification, and if 371 to find a unity reference.
              Worst part? Finding the other AU and CPC class

              1. 2.5.3.1.1.1.1

                I’ll give you a cheat for the CPC class bro. Just make a NOA and put the issue classification sheet in. Auto-pop it and bam, you get the classification the office already paid to have done. It might not be right, but usually its at least in the ballpark.

                1. Use CAT and you get that info without having to build out an allowance. Look on the classification page under CPC tools. Saves you time and the palm databases from garbage entries due to the allowance build.

                2. “Use CAT”

                  I thank you much good sir. Why they didn’t cover this, possibly the most important thing about CPC in the training I don’t know.

                3. Yeah CAT tool is the best. FYI if you update the cat cpc classification it auto updates east. The issue is that some times cpc is just wrong, which is why we have the y10t area now for all the orffined US class with no cpc corresponding class

      4. 2.5.4

        “Most (i.e. 95+%) of the 112, 1st WD rejections I get are nothing but the form paragraph with “…it’s unclear where [insert feature x] is supported.” How much work does that require?”

        do you feel that there should be more meat to a 112, 1st, rejection?

        1. 2.5.4.1

          MPEP 2163.04: The examiner has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. Wertheim, 541 F.2d at 263, 191 USPQ at 97.

          1. 2.5.4.1.1

            MPEP 2163.04(I)(B):

            “(B) … A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.
            See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that “[MPEP] § 2163.04 [subsection] (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.”).”

            1. 2.5.4.1.1.1

              I’m not talking about new or amended claims. I’m talking about originally presented claims. But even with new or amended claims, the burden of establishing, by a preponderance of the evidence, that the claim lacks written description support is on the examiner, and remains on the examiner throughout prosecution. So while simple allegations that “it’s unclear where…” may satisfy the examiner’s burden of production, and shift the burden to applicant to respond where it is supported, which BTW may be met by “The feature is supported in paragraph X”, the ultimate burden of persuasion is on the examiner.

              1. 2.5.4.1.1.1.1

                “I’m not talking about new or amended claims. I’m talking about originally presented claims.”

                You get a lot of these? A WD rejection on original claims?

                Really?

                Even the MPEP in 2163 says: “Consequently, rejection of an original claim for lack of written description should be rare.”

                1. WD rejections of original claims are not rare.

                  If you’ve been in practice long enough, you’ll find that most of what the MPEP says should be rare (e.g. re-opening after a Board reversal) is not rare. It’s business as usual for the PTO.

    6. 2.6

      “There’s only two logical results here: Either the prior art knew how to do X (in which case the 103 should stand because it is either admittedly or de facto obvious), or the prior art never knew how to do X and applicant didn’t teach X (in which case a 112 should be issued).”

      You seem a little over-harsh on 103.

      “But other times it cannot, and because the compact prosecution rules don’t allow for the 112 to be added based on applicant’s argument (rather than amendment, a bad rule) the examiner is faced with an uncompensated second non-final, ”

      I’ll let you in on a secrit. You may not be able to officially send the “rejection” but you can always threaten it in the response to arguments. It works just as well in my experience if there really is a 112 problem. Merely notifying the attorney of a legit 112 2nd issue is usually enough to draw the amendment because they do not want their claim going up in 112 2nd smoke.

      “The situation occurs fairly often, for example, if an argument that something shouldn’t be taken in 112, 6th is persuasive, the expanded scope would likely lead to a 112, 1st issue, but again there is no basis to make the rejection (prior to deciding the argument is persuasive) unless you assume your argument is wrong to begin with and do double the work by rejecting in the alternative.”

      I don’t know if I agree that it occurs all that often and I usually spot myself 1 2nd action non-final a year for these sorts of things should I need to use it, or should I want to graciously bestow it. Fact is, if you concentrate on getting the application to allowance rather than to rejection, prosecution will generally be over by 2nd response anyway and if that be the case then you don’t even need to bother with finality.

      “Frankly, compact prosecution rules are the biggest problem with the whole system. ”

      I have to disagree with you there. Those rules are only a problem if you do not let them guide your prosecution to be what the office wants it to be, a prosecution to issue, not a prosecution to rejection. Realizing this and letting it become the way you prosecute is quite essential if you mean to obey compact prosecution.

      “the rationale underpinning strict compact prosecution (that a second non-final was to make sure the applicant has a chance to be heard) has disappeared.”

      That is a good point you’re making right there, but that’s more of an argument to simply get rid of the nonsensical pre-appeal “program”.

      “The biggest clog in the system is that the examiner is personally punished when it is determined that the applicant is correct”

      That is a bit of a problem. Unless you focus on facts. And law. And get the whole search done up front.

      ” thus the examiner sits as his own judge, which leads to stubbornness and externalizing the mistake (simply allowing rather than continually prosecuting) in response.”

      You are right that such a thing does happen, and it takes enormous self-knowledge to know when you’re doing it yourself.

      “If you wanted the most cooperation out of examiners, you’d have to remove the threat of punitive uncompensated work altogether”

      Examiners can remove it from themselves by focusing on facts and law, completing the search entirely, and having good leadership behind them the whole way.

      “particular faulty mapping”

      When you say the word “mapping” I understand that you’re not focused on facts and law. And it is this “mapping” that is a huge part of the problem. Focus on the facts. Facts divorced from the application when we’re talking facts in a reference. Facts in the spec or whatever when we’re talking about 112. Then focus on the law. Let the “mappings” fall where they may, they are a nuisance, nothing more. Remember, they were prosecuting just fine sans “mappings” for decades if not a century or more. Nothing changed save a bunch of bureaucrats thinking, in their minds, that “mappings” were supar cool and cajoling others into making them on occasion.

      In short, my suggestion is that you map less, find facts more, apply law more. You will like the results.

      “I think I teach it with my reference ”

      If examiners will stop thinking that “they” or “their reference” teaches “it” and instead find that in the reference fact x exists and they’ve found that fact, and state that their claim construction is z such that the claim limitation is met by that factual finding from the reference then they will do better.

      “Cue the practitioners telling me to do my job rather than actually agree with a change that still gives them all they want and would ultimately also benefit them.”

      The difference between you and these “practicioners” isn’t that you aren’t doing your job, it’s that you fundamentally see your job as different than they see your job as being. If you do the job as they see it as needing to be, facts and law to the exclusion of all else, you will find that both of you are quickly satisfied.

      1. 2.6.1

        You may not be able to officially send the “rejection”
        Fact is, if you concentrate on getting the application to allowance rather than to rejection,
        Those rules are only a problem if you do not let them guide your prosecution to be what the office wants it to be, a prosecution to issue, not a prosecution to rejection.

        Haha, well yeah I agree, one way to solve the issues with rejections rules is to simply not reject, or to bias yourself in favor of allowance. That doesn’t raise patent quality. Look I could allow 5 cases in about 10 hours and go home 9 days out of the biweek and not a peep would be heard about it, but some of us have scruples.

        The difference between you and these “practicioners” isn’t that you aren’t doing your job, it’s that you fundamentally see your job as different than they see your job as being. If you do the job as they see it as needing to be, facts and law to the exclusion of all else, you will find that both of you are quickly satisfied.

        Your somewhat strange recitation on facts and law above this notwithstanding, I doubt we fundamentally see my job differently because both of us understand my job is to examine and pass judgment on the claims put before me. They seem to believe that my job is to provide them with a particular outcome if they ask or try hard enough, and even the office pushes the viewpoint that my job is to help them achieve a particular outcome. That is not the role of an impartial jurist. Nor is it proper for the single advocate of the public commons to pull double duty moonlighting for the applicant by going out of their way to try and cobble together allowable subject matter from disparate pieces of the spec. When a claim issues that the examiner put together but doesn’t list him as an inventor, a failure of patent quality has occurred, as any r-tard can put words on a paper and ask someone with authority to put them in the order that suits them. The fact that the office pushes that line, and that you buy it, is why there isn’t patent quality.

        If you go out looking for something to hammer, you’ll eventually convince yourself you’ve found a nail.

        We agree on this: If I ignore the statutory requirements and follow the rules, procedures and aims of the office, my job will be easier. That is not what this posting, or my comment, is about. I’m not attempting to divine how to be a better office examiner, as that is fairly obvious, I’m attempting to point out how the office could achieve higher quality of issued patents.

        1. 2.6.1.2

          “Haha, well yeah I agree, one way to solve the issues with rejections rules is to simply not reject, or to bias yourself in favor of allowance. That doesn’t raise patent quality”

          I have to disagree. It is the ultimate in quality to either a. reject a claim that legit needs rejecting and b. allow a claim that is ready to be allowed. I think you will agree as those statements are not all that controversial. The biasing yourself in favor of allowance is not simply saying “o well I’ll allow whatever crosses my desk” or similar. It’s about finding facts, observing the record as a whole after a responsible search, and then finding something pretty close to what the applicant has indicated interest in and which will be worthwhile subject matter for him to have to then ultimately get him to take and be happy with.

          There is 100% quality in that later action being taken. <That is a fact, not an opinion. If patent quality is right now below 100% on avg, then you raised the avg.

          "I doubt we fundamentally see my job differently"

          I know you doubt it, and that's why you're (or those around you more likely) having difficulties and telling us all about them.

          "They seem to believe that my job is to provide them with a particular outcome if they ask or try hard enough"

          No brosef. No. No. No. Not most of em anyway.

          "Nor is it proper for the single advocate of the public commons to pull double duty moonlighting for the applicant by going out of their way to try and cobble together allowable subject matter from disparate pieces of the spec."

          Run that by your qas and director (you know, the people pushing compact pros on you). That statement right there may be the single largest thing that is hampering you or those around you.

          "When a claim issues that the examiner put together but doesn’t list him as an inventor, a failure of patent quality has occurred,"

          Lol wuuuuuut? Bro, you're off in left field. Claiming of a thing that was invented, or changing a claiming of a thing that was invented, is not the same thing as doing the inventing yourself. Come to my office sometime and me and you are going to invent something together so that you begin to understand what inventing is as distinct from claiming an invention already described/made.

          "as any r-tard can put words on a paper and ask someone with authority to put them in the order that suits them."

          Now we're really getting to the meat of the dysfunction you are experiencing. See, here's the thing, they already put the "words on paper" or "parts irl" together. That's them doing the "inventing". At the point where prosecution begins it's just stringing together a legal claim to that which was already put together in the application.

          You're quite right though that any t ard could "just put the words together" in an application, and sometimes (very rarely in the useful arts not so rarely in the not-so-useful arts) people do that. But that's on congress to stamp out, not us, because right now congress is giddy for that to occur and for them to issue an entitlement therefor.

          "The fact that the office pushes that line, and that you buy it, is why there isn’t patent quality."

          OM G! So you do know the office "pushes" that line. They push it for a reason. If you leave that part out, because you personally disagree with it, you will cause dysfunction in the system bro. And this is you btching on PO because of that dysfunction which your disagreement with the system (coupled perhaps with some of your arbitrary determination of what "quality" means) is causing.

          "If I ignore the statutory requirements "

          Brosef, there ain't no ignoring of statutory reqs required. The statutory reqs are in fact your tools to achieve success in the office's system of procedures, rules etc.

          "better office examiner, as that is fairly obvious"

          In other words this entire post is based on you not wanting to be a better "office examiner".

          "I’m attempting to point out how the office could achieve higher quality of issued patents."

          According to your bizarro world "quality" definition that has nothing to do with the quality definition the office is attempting to achieve.

          1. 2.6.1.2.1

            “Now we’re really getting to the meat of the dysfunction you are experiencing.”

            Holy mackerel. We haven’t even scratched the surface of Random Examiner’s dysfunction.

          2. 2.6.1.2.2

            It’s about finding facts, observing the record as a whole after a responsible search, and then finding something pretty close to what the applicant has indicated interest in and which will be worthwhile subject matter for him to have to then ultimately get him to take and be happy with.

            You cannot come to the conclusion in your head “I probably will not find X”, inform the client that he should spend money to claim X, and then dispassionately search X, as that biases you toward the outcome that you originally predicted (that X won’t be found); that is the very definition of confirmation bias. Nor can you avoid that by noticing that while searching for Y you did not find X, as that’s not even searching the issue. The only way to avoid the bias is by being absent from the selection of subject matter to present. This is pretty simple theory and is why, for example, our police and our prosecutors are two different sets of people.

            No brosef. No. No. No. Not most of em anyway.

            Have you read comments on this blog at all?

            Run that by your qas and director (you know, the people pushing compact pros on you). That statement right there may be the single largest thing that is hampering you or those around you.

            Me: The director is correct, the system is flawed and could benefit from being changed to increase quality.
            You: Ask your boss if your job as currently constituted would be easier by following the current system.

            You’re not countering my point. I agree with you it would be easier for me to follow the system as it currently stands.

            Claiming of a thing that was invented, or changing a claiming of a thing that was invented, is not the same thing as doing the inventing yourself.

            If novel and non-obvious subject matter existed in a particular limitation in the claim, I would have issued the claim and we wouldn’t get to the question of what to do next. If someone invents the first lightsaber we don’t get to them asking me to search their spec for something I find allowable. When we’re just talking about non-obvious combinations of old things (i.e. all of the limitations themselves are known, it is putting them in the same claim that makes it allowable), and *I* am the one who puts together the combinations of old things, then junior, I am the inventor. He’s just a guy that wrote down/described things that already existed. A child could do that. You could give me access to wikipedia and I could list all sorts of combinations that the office would find non-obvious, that doesn’t make Wales and Sanger the inventors simply because they compiled known information in a single place.

            See, here’s the thing, they already put the “words on paper” or “parts irl” together. That’s them doing the “inventing”.

            First of all, words on paper doesn’t mean they put anything together in real life, nor does the law require that. Second, things are not linked together by virtue of being in the same document, the document itself must link them together. If the document doesn’t link them together, then they haven’t invented the combination, and it’s wrong for you to supply it. Someone already tried to submit a version of an encyclopedia and claim any combination of the things within and the office is STILL dealing with that fallout, ask around.

            You’re quite right though that any t ard could “just put the words together” in an application, and sometimes (very rarely in the useful arts not so rarely in the not-so-useful arts) people do that. But that’s on congress to stamp out, not us, because right now congress is giddy for that to occur and for them to issue an entitlement therefor.

            Clearly you’re not in software, where applicants can and do simply list modules in a spec. Here’s a module for encryption, for compression, for piplining, for billing, for A through J. Which of these modules would make you happy, Mr. Examiner, for a patent?

            They push it for a reason. If you leave that part out, because you personally disagree with it, you will cause dysfunction in the system bro.

            Yes, the “reason” is satisfaction by the people who we personally deal with – applicants seeking a patent, who pay us. Ignored are the other people (commonly referred to as the public) who lose out in this merry band of “you pay me so I can find some way to give you a monopoly.” The “system” is perfectly fine for those objectives in mind. That is not what Lee or I am talking about.

            See we just have different objectives, your objective is to go along and get along to make your life easier by making the people who pay our organization happy. And that’s a fine objective, I’m a big believer in just doing the job laid out for you. But that is not what this post is about.

            Brosef, there ain’t no ignoring of statutory reqs required. The statutory reqs are in fact your tools to achieve success in the office’s system of procedures, rules etc.

            The offices procedures reward certain things and not others. For example, office procedures will definitely penalize you for doing a 103 poorly, but office procedures won’t penalize you at all for missing a 112, 1st because office procedures don’t currently allow for enough time to for a reviewer to determine if the spec allows for a 112, 1st. They will, however, penalize you if you doing a 112, 1st that the reviewer doesn’t agree with. Conseuqently nobody makes 112, 1sts. Consequently the office routinely issues overbroad patents, the negative effects of which are felt by the judiciary and the public.

            Does this upset either your spe, or the qas or the applicant (the people you care about)? Nope. Does it make your job easier? Yes. So I get why you’re behind it. The people Lee is expressing concern about when she talks about quality are the two groups who ARE offended.

            It’s really not even up for debate. The main thrust of the rejections we make are always 103 heavy. But the statutory scheme doesn’t prefer one type of rejection over other. So why are our quality mechanics (mostly) all tuned to 103? When you allow enough time for a qas to review a 103 but not a 112, are you following the statutory scheme or not, brosef?

            According to your bizarro world “quality” definition that has nothing to do with the quality definition the office is attempting to achieve.

            I, and Lee, are defining quality as issuing claims that should issue and not issuing claims that shouldn’t issue. I think you’re confusing your “quality” score with “shareholder interaction” score, as the latter is all you have been arguing and which finds no support in the statutory scheme.

            1. 2.6.1.2.2.1

              “When we’re just talking about non-obvious combinations of old things (i.e. all of the limitations themselves are known, it is putting them in the same claim that makes it allowable), and *I* am the one who puts together the combinations of old things, then junior, I am the inventor. He’s just a guy that wrote down/described things that already existed.”

              You are so far off the deep end there’s no hope for you.

            2. 2.6.1.2.2.2

              “You cannot come to the conclusion in your head “I probably will not find X”, inform the client that he should spend money to claim X, and then dispassionately search X, as that biases you toward the outcome that you originally predicted (that X won’t be found)”

              You don’t “come to the conclusion in your head” that you “probably” will not find x dood. That’s some sht that a ta rd would do. You search for the INVENTION and not the “claimed invention”, and then you just dump all refs you find pertinent to the subject on the record. Then, you look over the record, after the search is DONE (completely done, you’re not doing anymore) and state that you DID NOT find x in the search, which is now complete. Then, you allow the app by calling them or tell them to insert x into the claim and allow it when it gets back.

              What you’re thinking is “but but but, what if I then when on another search expedition to try to find x?!?!?!?!”. No. Just no. The search is done. No more search expeditions. The search is over. Caput. Fini. If yo search wasn’t done, then you need to go finish your search. Then proceed to make the determination.

            3. 2.6.1.2.2.3

              “The director is correct, the system is flawed and could benefit from being changed to increase quality.”

              What director said that and when? And specifically how did they phrase that?

            4. 2.6.1.2.2.4

              “When we’re just talking about non-obvious combinations of old things (i.e. all of the limitations themselves are known, it is putting them in the same claim that makes it allowable), and *I* am the one who puts together the combinations of old things, then junior, I am the inventor. He’s just a guy that wrote down/described things that already existed. A child could do that.”

              And yet that is specifically what your congress regards as “invention”. And yes, children can do it on occasion, most don’t though. It really isn’t that hard imo. It is hard to invent super valuable things though. Likewise, you could be out there doing it right now but instead you’re in the office examining applications.

              And no brosef, when you fiddle with the claim it isn’t you inventing. The person signed on as the inventor is the one that put that combination of things down to paper first. He beat you to the punch. That you’re asserting otherwise is laughably absurd.

              “that doesn’t make Wales and Sanger the inventors simply because they compiled known information in a single place.”

              It does if they send it in to the office (and assuming the crowd didn’t write that wiki). It really is that easy bro. The entitlement program is that broken and nonsensical. Sorry that you’re just now coming to that knowledge but that’s how it is bro.

              1. 2.6.1.2.2.4.1

                It does if they send it in to the office (and assuming the crowd didn’t write that wiki). It really is that easy bro. The entitlement program is that broken and nonsensical.

                See, we were having a simple disagreement about what the point of my post was and now I have to tell you you’re too d-umb to work at the office. You’re the problem. Congress did not intend, nor could they even if they wanted to, allow you to submit an encyclopedia to hold a filing date and then just rejigger the claims whenever you actually came up with something. You can’t submit a list of known things and think Congress has the right to grant you a patent on whatever combination the examiner dreams up. It’s not what Congress said, it’s not what our procedures say, and it’s not right. This is why there’s bad patent quality.

                I don’t know why you don’t quit the office, file a jumbo application and continue it until the next iphone-like advancement comes out and combine the words in your claim to reach it and sue for millions. I’m serious, ask around, because we have this exact issue (except replace the millions with billions), we’ve had it for a while, we have TEAMS of examiners who do nothing else but work on it, and you clearly don’t know what you’re talking about as there’s a Director-level task force in direct contradiction to you. Time to turn private sector, bro.

                1. I didn’t say they’re necessarily going to get a patent for it re re. I said that he can submit it, and he will thus be “the inventor”.

                  Remember, here at the office we take them at their word because they swore on the oath/dec.

                  “This is why there’s bad patent quality.”

                  Lulz. In your magic quality land.

                  “I’m serious, ask around, because we have this exact issue (except replace the millions with billions), we’ve had it for a while, we have TEAMS of examiners who do nothing else but work on it, and you clearly don’t know what you’re talking about as there’s a Director-level task force in direct contradiction to you.”

                  Yes, I know we have things going on to deal with so called omnibus apps. I’m well aware. But that doesn’t mean that the person who signed his name at the bottom of the oath isn’t “the inventor” and it doesn’t mean you magically become the inventor when you help him draft a claim.

            5. 2.6.1.2.2.5

              “the document itself must link them together.”

              Yes, we’re talking about combos that the “document itself” linked together in the first place. Just ones they hadn’t claimed yet. That’s what you’re looking for.

              “Clearly you’re not in software,”

              I had a feeling you were suffering over in that nonsense. Yes, I hear you, you have special troubles over there due to the nonsense of having to deal with that stup id sht under a system meant for real inventions.

            6. 2.6.1.2.2.6

              “See we just have different objectives, your objective is to go along and get along to make your life easier by making the people who pay our organization happy.”

              Actually my goal (regarding arts like software) is to make the system so absurdly administered that congress pulls its head from its ar se and ends the entitlement program for all but the old school useful arts. But for now, all we need do is follow congresses lead and let them run into a brick wall at a hundred miles an hour.

            7. 2.6.1.2.2.7

              “Conseuqently nobody makes 112, 1sts. ”

              Horsehockey. Most people don’t make 112 1sts because they don’t even understand how to or when to. I can walk down any given hallway and empirically prove that in about 20 minutes.

              1. 2.6.1.2.2.7.1

                Horsehockey. Most people don’t make 112 1sts because they don’t even understand how to or when to. I can walk down any given hallway and empirically prove that in about 20 minutes.

                Way to prove my point, brosef. Why is it that everyone knows how and when to make a 103 and not a 112? Because if you did 112s like the law required we’d be unable to allow as many applications as we do. If you didn’t allow applications Applicants would appeal more, there’d be more delays, less maintenence money coming in and lots more complaints to Congress. 103s can be fixed, 112, 1sts generally can’t. We wouldn’t want to annoy our “shareholders” by telling them they screwed up years ago and can never have a patent. Don’t we dare say their lawyer’s malpracticed. That will upset law firms. Enforcing 112, 1st is hard, so we wiirry wiirry don’t want to, so we don’t. So again, does office procedure follow the law?

                1. “Why is it that everyone knows how and when to make a 103 and not a 112?”

                  Certainly not because the qases don’t have time to review for 112 1sts.

                  If I had to guess it’s because a. they didn’t pay attention during training b. it’s hard to understand the first few times you hear about it from blowhards that don’t explain it worth a dam and c. their spes/primaries don’t go back and double check for it on every application like they do 102/103 quite often (note that isn’t the qases).

                  “Because if you did 112s like the law required we’d be unable to allow as many applications as we do.”

                  Lulz.

                  “and can never have a patent.”

                  Usually a 112 1st isn’t that hard to fix bro.

                  “Don’t we dare say their lawyer’s malpracticed.”

                  Oh right, they “malpracticed” because they made a routine screw up re 112 1st. Riiiiight.

                  “Enforcing 112, 1st is hard, ”

                  It ain’t that hard in most arts bro. It is in yours because you’re dealing with huge apps filled with weasel language and a bunch of functional nonsense.

                  “So again, does office procedure follow the law?”

                  Officially it does, if people are ignoring 112 1st they need to start doing paying attention to it. Usually, in most arts, that isn’t any harder than simply explaining what 112 1st is about. In your art, with your jumbo specs filled with sht that isn’t related to the useful arts, it becomes much more difficult. I totally know bro, I had to deal with that sht a bit.

                2. Certainly not because the qases don’t have time to review for 112 1sts.

                  You know as well as I how much time QASes get, you think they have time to search the spec to see which limitations are taught therein?

                  You also know that while 103 is a requirement from the get-go, initially 112s are put upon the SPEs, who by definition cannot search them for the same reasons the QASes can’t. Because they can’t search them nobody ever tells an examiner they’re wrong to not do something, and thus an examiner never learns to make the rejection.

                  The reason isn’t because someone doesn’t pay attention during the PTA, it’s because the system is set up to avoid reinforcing that a rejection should be made or punishing or even catching when it isn’t.

                  Usually a 112 1st isn’t that hard to fix bro.

                  I’m not talking about them attempting to claim new matter. I’m talking about a failure to teach what they claim to be new rather than simply recite what they want (you know, enabling things). Something you probably never make because the office tells you to just accept enablement unless it’s ridiculous on its face. That, along with WD, is the statutory means for properly shrinking the scope, not citation of prior art in 103. You take the 103 route and the claim will only be limited to what wasn’t obvious before, not to what the inventor invented.

                  Officially it does,

                  You’re right, officially it does.

                3. Sounds like You (the Royal you, the examination branch you) have a process problem.

                  You do not get to attempt to shift that burden and that problem onto the applicant because your metric system makes it inconvenient for you. See Tafas.

                4. “You know as well as I how much time QASes get, you think they have time to search the spec to see which limitations are taught therein?”

                  Bro they don’t have time for anything but a cursory examination of anything in the whole case, 112 1st included right alongside of 101, 103 etc. We all know that. I would presume that in egregious cases where they smell a 112 1st issue they’d take 5 mins to look into it briefly. If they don’t then that’s up to them as QASes. And if they’re not, then they need to set aside some reviews specifically for 112 1st.

                5. “initially 112s are put upon the SPEs, who by definition cannot search them for the same reasons the QASes can’t.”

                  My new spe sure as sht “can”. Some spes kill themselves trying to review everything with a fine tooth comb.

                  “Because they can’t search them nobody ever tells an examiner they’re wrong to not do something, and thus an examiner never learns to make the rejection.”

                  That is likely true to a large extent, I agree entirely. However, another big aspect of it is because of what I’d noted beforehand. And, as anon stated, just because we have a problem internally doesn’t mean all that much in the grand scheme of things. Cops prioritize enforcement of the law all the time, just as everyone in the executive branch federally and locally do.

                  “I’m talking about a failure to teach what they claim to be new rather than simply recite what they want (you know, enabling things)”

                  Oh, enablement then is it? Meh, I’ve run into like 2 enablement problems in 8 years. Plus, remember, in softiewaftieland everything r enabled just by taking a pis s!

                  “Something you probably never make because the office tells you to just accept enablement unless it’s ridiculous on its face. ”

                  It is somewhat that, but also somewhat because the stuff really is enabled. And, plus, the federal circuit/ccpa is the one that really is calling the shots on enablement, ultimately backed by history and the congress.

                  ” That, along with WD, is the statutory means for properly shrinking the scope, not citation of prior art in 103. ”

                  Meh, perhaps, but you’ll have to take that up with the entire patent law “establishment” bro. I don’t think that’s really what congress wants or wanted tho.

                  “not to what the inventor invented.”

                  You’re just taking issue with the “peripheral claiming system” that we have let run rampant in our modern IP, granting windfalls hither and thither. I quite agree, and I take issue with it as well. However, the courts have blessed it for nigh on a century and congress has yet to snap them back. I think it’s because they want to richly reward people for sending in their apps, when it comes to simply giving them an imaginary something (like the right to exclude) in exchange.

            8. 2.6.1.2.2.8

              “When you allow enough time for a qas to review a 103 but not a 112, are you following the statutory scheme or not, brosef?”

              If qases can’t review for 112 1sts then they should pull some cases specifically for review on 112 1st and spend all their time reviewing for 112 1st. Generally it doesn’t take thaaaaat long to review for 112 1st in my art. But in softi ewaft ie land I can understand how it can take forever.

            9. 2.6.1.2.2.9

              “I, and Lee, are defining quality as issuing claims that should issue and not issuing claims that shouldn’t issue.”

              That’s a lot of shoulds (obligations?) tossed in to your sentence, and I doubt seriously you understand but a tiny minority of them.

              Look, I get you’re in softiewaftie ta rda tion land. I feel bad for you that you got conned into that job or that you would continue to do it. But this is your congresses entitlement program and until they remove they heads from their ar se it isn’t really up to us to make up for their lack of ability to legislate worth a dam.

    7. 2.7

      “Given that you can file an after final and now file an appeal brief for reduced (or no?) cost…”

      A notice of appeal is $800. Not exactly “no cost.” As for “reduced cost, ” you are somewhat correct in that applicants don’t have to pay the $2000 appeal brief forwarding fee until the examiner’s answer is actually entered. Of course that is because about 75% of cases in which a pre-appeal request or an appeal brief are filed result in re-opening. So for years, yes years, applicants were paying fees to file appeal briefs and not getting their appeals heard by the Board. What they were getting was sh!tty new non-finals, that probably 20-40 hours of, oh the horror, uncompensated work time went into, and is usually even worse than the rejection that was appealed.

      1. 2.7.1

        Of course that is because about 75% of cases in which a pre-appeal request or an appeal brief are filed result in re-opening.

        While I know for a fact the 75% is way off, I get where you’re coming from. But this occurs precisely because of why I say – There’s a personal punishment to admit that an applicant’s argument is persuasive. Because that punishment exists, an examiner won’t find an argument persuasive until he cannot avoid it anymore. The pre-appeal forces that issue. I’m telling you that if the rule changed you wouldn’t be making $800 filings as often anymore. Similarly, the reason why a second non-final is of worse quality is because that work is being done in addition to their other work. I don’t see why you wouldn’t be in favor of this change given what you just said.

        1. 2.7.1.1

          “While I know for a fact the 75% is way off…”

          It’s not way off. It’s actually dead on b#lls accurate. But keep telling yourself, “I know that’s way off.” If you repeat it enough you may even convince yourself. Of course you’ll be the only one who thinks it’s way off.

          “There’s a personal punishment to admit that an applicant’s argument is persuasive.”

          That’s simply ridiculous thinking.

          “Because that punishment exists, an examiner won’t find an argument persuasive until he cannot avoid it anymore.”

          This statement here establishes beyond any shadow of a doubt that you have no understanding of your job. It’s not your job to find arguments unpersuasive until you can’t avoid them anymore. Your job is to determine the patentability of the claims based on the entire record. If the evidence and/or arguments that applicant presents for patentability are more persuasive, even by the tiniest bit, than the evidence and/or arguments you have for unpatentability, the claims are allowable. There’s no “punsihment” for you to acknowledge that, and there’s no justification for your refusal to acknowledge that “until you can’t avoid it anymore.”

          You got serious problems understanding what your job is. Not the least of which is noted below by 6 where he addresses that ridiculous notion you have that because you may write a claim for the applicant that is allowable that you are then an “inventor.” I can’t think of a more misguided statement that I’ve read on this site in the last 8 years or so. Writing claims doesn’t make you an inventor. If it did, I would be an inventor on thousands of patents. But I’m not.

          1. 2.7.1.1.1

            “That’s simply ridiculous thinking.”

            You say that, but that’s how it subjectively comes across. No matter who is on the receiving end.

            “It’s not your job to find arguments unpersuasive until you can’t avoid them anymore. Your job is to determine the patentability of the claims based on the entire record.”

            He’s saying that there are incentives (or disincentives) in place to ensure that examiners do not want to do “their job” as you just explained it. And there are.

            It is illogical to construct a system where you make your workers “disincentivized” to do the job you want them to do. Or to continue to use such a system. Just from a basic management 101 standpoint.

            “the claims are allowable. ”

            You say allowable, but that is not technically always true. Just because you defeated what previously appeared to be the best rejection does not mean there are not 4 other rejections that could be validly made in the alternative. That’s when the “punishment” kicks in.

            1. 2.7.1.1.1.1

              “You say that, but that’s how it subjectively comes across. No matter who is on the receiving end.”

              Wrong. If you have no professionalism whatsoever that’s maybe how “it subjectively comes across.” Nobody, not even the most virulent examiner bashers, expect the examiners to be perfect. But if you do the job correctly, and your rejection is objectively improper after applicant has their opportunity to respond, allow the case.

              Stop taking this so personally. You make a rejection without perfect knowledge of how the applicant is going to respond. After you send out your FAOM, you don’t have all the evidence and/or arguments relevant to patentability in front of you because applicant hasn’t responded yet.

              If after applicant responds, the scales tip in favor of patentability, allow the case. It’s not an indictment of your work, it’s not a determination that you didn’t do the job properly, it’s not an invitation to get stubborn and dig in your heels, it’s not an insult to your ability. In fact, the approach of “I’m going to refuse to allow until I can’t avoid the arguments anymore” is the epitome of incompetence. And unprofessionalism.

              Get over yourselves. Once you have all the evidence and arguments on the record, make the best objective call you can.

              Sheesh.

              “You say allowable, but that is not technically always true. Just because you defeated what previously appeared to be the best rejection does not mean there are not 4 other rejections that could be validly made in the alternative. ”

              I’ve been at this 15+ years on this side. And I was on your side for almost 10 years. The number of timers there were “4 other rejections that could be validly made in the alternative” I could count on one hand.

              Stop it. You’re embarrassing yourself.

              1. 2.7.1.1.1.1.1

                “If you have no professionalism whatsoever that’s maybe how “it subjectively comes across.””

                Always falling back on “but but but professionalism”. Lulz. Professionalism is not a cure all for a mountain of workplace slights bro.

                “Nobody, not even the most virulent examiner bashers, expect the examiners to be perfect. ”

                But they’re more than happy to have people spend more time, that goes without any credit, working if that person wasn’t perfect. #thedefinitionoftardation

                “But if you do the job correctly, and your rejection is objectively improper after applicant has their opportunity to respond, allow the case.”

                That’s typically what I do so you can stop telling me about it. Thing is, that sht requires more than just one person to allow it if that person doesn’t have sig authority. And if that other person isn’t down, then it’s a no go.

                “Stop taking this so personally.”

                This ain’t about personally taking anything. This is about extra work needing to be done for no credit. For the gazillionth and oneth time. Jebus how dmb are you that you keep coming back to that bro?

                “It’s not an indictment of your work, it’s not a determination that you didn’t do the job properly, it’s not an invitation to get stubborn and dig in your heels, it’s not an insult to your ability.”

                I totally agree, the problem, as has been told to you a gazillion times already, is that there very well may be more rejections that need to be cycled through, for which the person gets no credit to cycle through. You keep avoiding this point for some reason like “weeeeeeeeee that issue don’t exist even though it’s the whole topic of conversation this entire time! Because because because professionalism! Professionalism makes not being at home eating with your fam so much better! Professionalism makes not being home on a saturday sooooo much better!”

                “In fact, the approach of “I’m going to refuse to allow until I can’t avoid the arguments anymore” is the epitome of incompetence. ”

                I happen to agree, but it doesn’t change the incentives, or how they are subjectively perceived, one bit.

                “I’ve been at this 15+ years on this side. And I was on your side for almost 10 years. The number of timers there were “4 other rejections that could be validly made in the alternative” I could count on one hand.”

                I happen to agree, at least once you’re seasoned (it happens more when you’re a fresh newbie) but there are some people over here, in AUTHORITY, who disagree. Constantly. And there’s nothing all their little juniors can do about that. Except play hardball with their dumas and threaten to quit if they don’t get their sht together, that actually worked out fairly well the other day. But that takes enormous 6 sized balls and the ability to quit your job like it ain’t no thang.

                1. “Thing is, that sht requires more than just one person to allow it if that person doesn’t have sig authority. And if that other person isn’t down, then it’s a no go.”

                  Then persuade them. You keep telling me how easy it is to persuade them and that I must be doing something wrong if I can’t persuade them. But you can’t do it either?

                2. “I totally agree, the problem, as has been told to you a gazillion times already, is that there very well may be more rejections that need to be cycled through, for which the person gets no credit to cycle through. You keep avoiding this point for some reason like ‘weeeeeeeeee that issue don’t exist even though it’s the whole topic of conversation this entire time! Because because because professionalism! Professionalism makes not being at home eating with your fam so much better! Professionalism makes not being home on a saturday sooooo much better!'”

                  You’re supposed to make your best rejection. Even you can figure out which is the best rejection. If the applicant overcomes that, all of the other lesser ones are overcome also.

                  You keep avoiding this point for some reason.

                3. “Then persuade them.”

                  That’s what I do, but I’m a master. Most people here don’t have no balls when it comes to talking to their supervisor or primary, remember they could get you firezored and a lot of people depend on this money for fams etc or this is the best they could do. And, more importantly than balls perhaps, they don’t have the knowledge that is literally required to be able to persuade.

                4. “all of the other lesser ones are overcome also.”

                  Wt f ja ckas s? How do you get that? That’s only the case in SOME, rather rare instances, or in SOME arts. I make “the best rejection” relying on art A and B. You file evidence tending to show that art A did not in fact disclose x as I’d said it did in my action. I believe your evidence. That doesn’t mean, even a little bit, that reference C that’s sitting right over here on the record doesn’t show x that I needed and that I can’t use that instead. It also doesn’t mean that I don’t then maybe have to chase down all new references for all your deps because I’m now using ref C instead of A.

                  Same thing for antedated references. Same thing for arguments.

                  This is the last time I tell your dmbass about that AAA.

                5. As I’ve noted to you many times, European examiners manage to find the closest prior art reference (i.e. D1) in every case and stick with it throughout the entire prosecution. Why you can’t do that is a function of the “training” you’ve received.

                6. “As I’ve noted to you many times, European examiners manage to find the closest prior art reference (i.e. D1) in every case and stick with it throughout the entire prosecution.”

                  Yeah, you’ve noted that for no apparent reason. Anyone can pick what they like as the best ref and artificially stick to that throughout prosecution. Especially if that approach is supported by the setup of their substantive patent law.

                  “Why you can’t do that is a function of the “training” you’ve received.”

                  It isn’t a matter of “can’t” re re. Anyone can pick out what they think the best ref is and artificially “stick” to that throughout prosecution. I can, and quite often do just that as many others do. It’s a matter of we’re trained/told specifically not to do SOLELY that, and to be flexible. It’s like the EU’s 112 standard. They’re super strict, and not flexible. We’re supposed to be flexible.

                  Also them doing that is a straight function of their substantive law, specifically their version of restrictions and 103 where they look for special tech features and problems and solutions.

          2. 2.7.1.1.2

            It’s not way off. It’s actually dead on b#lls accurate.

            You know we have an internal website where we post these statistics, right? This is not up for debate. I am correct, you are wrong.

            If the evidence and/or arguments that applicant presents for patentability are more persuasive, even by the tiniest bit, than the evidence and/or arguments you have for unpatentability, the claims are allowable.

            I’m going to set aside the fact that you’re not understanding that the point I am making is the reason you get so few holdings of “persuasive argument” is because the system is set up to bias the examiner against coming to the conclusion. That is the point I am making and you appear unable to grasp it.

            The claims are allowable based upon what is known in the art. The argument is premised upon the work submitted by the examiner and the particular reference cited. There is not and cannot be, either before the office or post-issuance, a valid argument that says “I am right about this reference and therefore you must issue me an allowance/the claims are valid” there is an argument that says “I am right about this reference and therefore your rejection is improper/the claims are not invalid.” In most cases, the person determining whether something is allowable or not is not the person doing the searching or writing the rejection. The only question is whether the rule should be does the person doing the searching have to fix his mistake, or does the person have to fix his mistake and then do more.

            1. 2.7.1.1.2.1

              “You know we have an internal website where we post these statistics, right? This is not up for debate. I am correct, you are wrong.”

              No. You are wrong. Ron Katznelson used FOIA requests to debunk the nonsense of your “internal website” and it turns out that in about 75% of the cases in which a pre-appeal or an appeal brief are filed, the examiner re-opens.

            2. 2.7.1.1.2.2

              “I’m going to set aside the fact that you’re not understanding that the point I am making is the reason you get so few holdings of ‘persuasive argument’ is because the system is set up to bias the examiner against coming to the conclusion.”

              I get lots and lots of “holdings of persuasive argument.” Out here we call them Notices of Allowance.

              There is no bias in the system against the examiner coming to the conclusion that applicant’s evidenc and arguments in favor of patentability outweigh the examiner’s evidence and arguments in favor of unpatentability. That “bias” only exists in your head. And only because you have zero professionalism.

        2. 2.7.1.2

          “Similarly, the reason why a second non-final is of worse quality is because that work is being done in addition to their other work.”

          Wrong. The reason it’s of worse quality is because the claims are allowable, but the examiner is told, “That’s too broad, go out and find something and reject it.” So they do. That’s why it’s worse.

          1. 2.7.1.2.1

            “Wrong. The reason it’s of worse quality is because the claims are allowable, but the examiner is told, “That’s too broad, go out and find something and reject it.” So they do. That’s why it’s worse.”

            That is usually the case.

            Though he’s right that sometimes it is worse because they’re just rushing. And of course they didn’t complete the search in the first instance because they thought the art was good enough to reject the claims and thus cut the search short (that’s approved procedure now btw).

            1. 2.7.1.2.1.1

              “That is usually the case.”

              Thanks for confirming.

              “Though he’s right that sometimes it is worse because they’re just rushing.”

              But according to Random Examiner and RH they are not rushing. They are taking “20-40 hours” and/or “several days worth” of “uncompensated work time” to send out these new non-finals, just to “correct” or “change” or “further elucidate” or “improve” their position.

              1. 2.7.1.2.1.1.1

                “But according to Random Examiner and RH they are not rushing. They are taking “20-40 hours” and/or “several days worth” of “uncompensated work time” to send out these new non-finals, just to “correct” or “change” or “further elucidate” or “improve” their position.”

                I think he was saying that these are the numbers of how long it “should” take, but that some people cut that short and just send you some crp so as to not have to spend that long.

                1. “I think he was saying that these are the numbers of how long it ‘should’ take…”

                  If that’s his argument, then it’s wrong too. When the examiner issues a non-final, the examiner doesn’t have to re-read the application and doesn’t have to entirely re-search the application. If they do, it’s because they did such a sh!tty job the first time. That is what we need to disincentive.

                2. “If that’s his argument, then it’s wrong too. When the examiner issues a non-final, the examiner doesn’t have to re-read the application and doesn’t have to entirely re-search the application. If they do, it’s because they did such a sh!tty job the first time. That is what we need to disincentive.”

                  I typically agree with you for most apps it is that way. But I know for a fact that a lot of gigantic softiewaftie applications do have this issue. I’ve waded through that nonsense before, and that appears to be his art.

                  “That is what we need to disincentive.”

                  I don’t think I can agree with you there. The whole ‘stick’ approach obviously doesn’t work here. You want to incentivize good examination instead bro. Trust me on that part. The stick is waaaaay too far down the road to act as meaningful prevention.

    8. 2.8

      Random, from a prosecutor point of view, I have long advocated at least two non finals and at least two searches be a right accorded the applicant when he or she pays their examination and search fees. If this were formalized in the rules, the examiner should be compensated accordingly.

      As you well note, compact prosecution does not truly exist in reality, and the examiner is does seem to be “punished.” But I also think that the first action is necessary simply get the examiner’s construction of the claims, after which the claims are clarified in some manner by the applicant. Then the examiner should be allowed a second search with the clarified claims in mind. If after this second action the issues are not resolved, then the only recourse for the applicant should be to file an RCE or an appeal. The way it is done today is a bit chaotic.

      1. 2.8.1

        “As you well note, compact prosecution does not truly exist in reality,”

        It exists in my prosecution unless administratively forgone. I think my prosecution is real, and in this reality.

      2. 2.8.2

        “But I also think that the first action is necessary simply get the examiner’s construction of the claims, after which the claims are clarified in some manner by the applicant”

        I can agree with you there, it would make sense to have a markman like hearing for cases. Heck, if we could do that I could probably practically resolve a good portion of my cases from the outset. Still, nobody hardly uses the first action interview program.

        1. 2.8.2.1

          6, “Still, nobody hardly uses the first action interview program.”

          There is a good reason for that, and it has to do with disclaimers. Whoever came up with this program never spent time in the litigation trenches.

          We need that first action 6 to understand how the examiner is construing the claims. The way we respond depends on the situation — but the less said, the better.

          1. 2.8.2.1.1

            I don’t see what is so hard about utilizing the first action interview program and having the entirety of what you say during the interview be “plz to be telling me how you construe the claim, k thx bai”. There is no litigation problem with that.

            1. 2.8.2.1.1.1

              6, if only you were right.

              Mostly applicant speak in the negative in order that the damage be minimized. Thus one says X reference does not disclose Y feature.

              But when one positively gives a definition, that is it and this regardless of the prior art and regardless of whether a broader claim is possible.

              1. 2.8.2.1.1.1.1

                “But when one positively gives a definition,”

                Here let me make this simpler for you, saying “mr examiner won’t you plz tell me your proposed claim construction?” is not “giving a definition”. Note the question mark at the end.

      3. 2.8.3

        Random, from a prosecutor point of view, I have long advocated at least two non finals and at least two searches be a right accorded the applicant when he or she pays their examination and search fees. If this were formalized in the rules, the examiner should be compensated accordingly.

        The “length” of the prosecution is irrelevant to my argument. The only question is whether the penalty for making a mistake is greater than “fixing the mistake.” If it is, then the examiner is unlikely to accept it, because they will bank on getting a RCE when they can fix the mistake with no penalty. In fact, increasing the duration between “break points” would only encourage more stalling by the examiner.

        1. 2.8.3.1

          Random, the mistake you identified in the OP is the failure to include a 112(a) rejection in the first action – “claimed function Y is not disclosed.” (I presume this has something to do with the failure to disclose an algorithm for some software functionality.)

          Why doesn’t having two non finals as a matter of ordinary procedure help avoid these “mistakes,” if the second non final includes the right of the examiner to enter a new grounds of rejection?

          1. 2.8.3.1.1

            if the second non final includes the right of the examiner to enter a new grounds of rejection?

            Ah I misunderstood. The thing I am arguing against is the compact prosecution rule that a second non-final must come following a different citation regardless of what the citation is or when in prosecution we are. If you’re going to give the examiner a right to enter a new ground of rejection I have no issue.

            All I am saying is if you say C isn’t taught, I’m unbiased in evaluating that argument when the only thing I have to do is reteach C. If what I have to do is reteach C and then engage in another round of examining then I’m biased against evaluating in favor of the argument.

            1. 2.8.3.1.1.1

              If you reject the claim as obvious over reference A in view of reference B and the applicant correctly and persuasively argues that it doesn’t teach feature C of the claim, you need to find a reference that does. If you can’t, or won’t, understand why there is a “bias” in the system to prevent you from finding that new reference, making a new rejection, and then making it final to foreclose the right of applicant to argue and/or amend around something they’ve never seen before, then there really is no hope to have a rational conversation with you.

              1. 2.8.3.1.1.1.1

                “If you can’t, or won’t, understand why there is a “bias” in the system ”

                Helpful hint: What he is referring to has to do with the system being an entitlement program.

                1. You’re very hung up on that word. The “bias” isn’t there because 35 USC says applicants are entitled to a patent unless… It’s there, to the extent it’s there at all, to prevent arbitary and capricious action on the part of government employees. If the law sets for the requirements, and the applicant (be it for a patent, a license, etc.) satisfies the requirement, then government is required to provide what is specified, regardless of whether it’s considered an “entitlement” or not.

                  As for the system of compact prosecution at the PTO, it exists to prevent examiners from playing the “hide the ball” type shenanigans they would invariably engage in if given the chance, and to prevent applicants from dragging out prosecution with an endless series of amendments and/or arguments. Applicants have been operating under the system, which allows for “final rejection” on new grounds for any amendment not within the scope of the original claims, for years. Just because some unprofessional examiners want unlimited credit for “do overs” of their shoddy work doesn’t mean the system is biased against them.

                2. AAA JJ,

                  Please remember that 6 was indoctrinated, er um, trained in the Dudas era – he can’t stop saying “Bro,” bro.

                3. “It’s there, to the extent it’s there at all, to prevent arbitary and capricious action on the part of government employees”

                  In the administration of … dum dun da dun … an entitlement program.

                  “If the law sets for the requirements, and the applicant (be it for a patent, a license, etc.) satisfies the requirement, then government is required to provide what is specified,”

                  In an … dum dun da dun … entitlement program.

                  Look, I agree with you totally re the arbitrary/cap and reqs and all that. But it is fundamental for the everyday idiot to understand that this is an entitlement program at heart. Without that fundamental understanding the rest of it arb/cap/reqs etc. means jack squat because there was no reason for them to care if you got your patent or not in the first place.

                  ” it exists to prevent ”

                  Hardly. They’re quite up front about why it exists. They put it on slides all the time. To move cases quickly/efficiently and in an orderly fashion to issue/abandon.

                  “Just because some unprofessional examiners want unlimited credit for “do overs” of their shoddy work doesn’t mean the system is biased against them.”

                  Frankly I don’t blame incompetent people here at the PTO for being incompetent. At least not most of them anyway. Most of them, when shown the path, in a way that makes any gd sense, go right down it from that point onward np. Sometimes they may resist a bit, but usually not so much, especially if you’re “in charge”. The issue is getting everyone to that point of realization. And for those left behind the system is quite “biased” against them. Though technically it is “biased” against the rest of us in other ways, you’re dammed if you do, dammed if you don’t, depending almost invariably on the leadership skills of your boss (I only recently recognized that tidbit). Sure, I can go around practically never making a second action non-f, but I’ll pay for that in other ways. The severity of which will depend in large part on the leadership skills of your boss.

                4. “It’s there, to the extent it’s there at all, to prevent arbitary and capricious action on the part of government employees”

                  In the administration of … dum dun da dun … an entitlement program.

                  “If the law sets for the requirements, and the applicant (be it for a patent, a license, etc.) satisfies the requirement, then government is required to provide what is specified,”

                  In an … dum dun da dun … entitlement program.

                5. Look, I agree with you totally re the arbitrary/cap and reqs and all that. But it is fundamental for the everyday id iot to understand that this is an entitlement program at heart. Without that fundamental understanding the rest of it arb/cap/reqs etc. means ja ck sq uat because there was no reason for them to care if you got your patent or not in the first place.

                  ” it exists to prevent ”

                  Hardly. They’re quite up front about why it exists. They put it on slides all the time. To move cases quickly/efficiently and in an orderly fashion to issue/abandon.

                  “Just because some unprofessional examiners want unlimited credit for “do overs” of their shoddy work doesn’t mean the system is biased against them.”

                  Frankly I don’t blame incompetent people here at the PTO for being incompetent. At least not most of them anyway. Most of them, when shown the path, in a way that makes any gd sense, go right down it from that point onward np. Sometimes they may resist a bit, but usually not so much, especially if you’re “in charge”. The issue is getting everyone to that point of realization. And for those left behind the system is quite “biased” against them. Though technically it is “biased” against the rest of us in other ways, you’re dammed if you do, dammed if you don’t, depending almost invariably on the leadership skills of your boss (I only recently recognized that tidbit). Sure, I can go around practically never making a second action non-f, but I’ll pay for that in other ways. The severity of which will depend in large part on the leadership skills of your boss.

                6. because there was no reason for them to care if you got your patent or not in the first place.

                  Actually 6, there is such reason – and it is a foundational piece of the entire patent regime.

                  It is called: Quid Pro Quo.

                  Please try to remember that.

                  As to your boss and their “leadership skills” or lack thereof, your “inner” struggles don’t concern much – just remember that your metrics are your problem and not my client’s and follow the law and we will get along just fine.

                7. “It is called: Quid Pro Quo.”

                  But how is that “built into” the statutory tomschemery anon? I don’t see those words anywhere. Perhaps … dum dun dun … an entitlement?

    9. 2.9

      This is a great comment. Although i usually respond to the 103 v 112 situation by pointing out the dilemma and asserting that the spec was presumed to be enabling, inferring some amount of admitted prior art, and sustaining the rejection. Havent been appealed for that yet.

      1. 2.9.1

        I would simply always allow two non finals where the second can enter a new grounds of rejection.

  15. 1

    “In a letter send the same-day to senate leaders signed by 200+ entities.”

    Hi Dennis, did you want to finish this thought?

    1. 1.1

      Mellow, Dennis’s edit does not seem to capture the thrust of the letter by 200+ small technology developers, a majority of whom seem to be in bio. Let me quote:

      “As we have demonstrated in the past, we are willing to work with you and other stakeholders to develop targeted and measured reforms that address harmful patent enforcement practices. However, we will continue to strongly oppose legislation that would weaken the overall patent system and thereby diminish innovation and job creation in the United States.”

      As Congress considers potential changes to the patent system that threaten the constitutionally-guaranteed property rights of innovators…”

      The overall tone of the letter is that the proposals to date are harmful to the patent system and not focused on abusive practices.

      I agree.

      1. 1.1.1

        Weaking the patent procurement and enforcement industry is not the same as “weakening the patent system.”

        Far from it.

        1. 1.1.1.1

          MM, sure it is. If a small firm cannot engage/sell to a licensing firm or engage a contingent fee firm, then their patents are worthless. This does not help startups get financing. In fact, it hurts.

          The point of patents is not only to protect big companies from competition from small fry innovators that take their markets through innovation. But it is there to protect the small innovator from piracy by the big company.

          Litigation abuse that we hear about has a lot to do with accusations of infringement without a clear read, relying on the cost of litigation to force settlements. The recent supreme court decisions about exceptional cases should by itself solve this problem.

          But what is going on in congress is seems more directed to coddling big firms than anything else.

      2. 1.1.2

        Hi Ned,

        I have no real argument with DC’s summary of the letter even if it is a somewhat milquetoast version; hey, I’m just glad he noticed it needed completion (whether or not he saw my comment).

        That said, I also don’t think it’s inaccurate to have said they are calling for balance, and moderation in any future reforms.

        1. 1.1.2.1

          Mellow, I think rather they are calling for reform laser focused on litigation abuses because some of the so-called reforms proposed heretofore affect substantive patent law adversely, so much so, that the entire patent system seems threatened.

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