76 thoughts on “Patent Quality Summit

  1. The sockpuppet calling itself “No!!!” (a sorry name for a sockpuppet) says that “patent validity” is a “private right”, in spite of the fact that the public’s ability to act freely is bounded by the millions of patent claims issued by the PTO.

    What’s the best support for the sockpuppet’s proposition (legally and as a matter of common sense, to the extent the latter concept can ever be applied to US patent law)?

  2. Kennemetal v. Ingersoll (Fed Cir 2015)
    Decided March 25, 2015
    Prost, Newman, Linn
    Precedential

    Dissection of claims in th context of an obviousness determination:

    Accordingly, “the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, [so] there is no nexus to the merits of the claimed invention.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).

    Emphasis in original

    So-called “claim dissection” was always with us and it always will be. Jurists and fact-finders are allowedto use their brains to determine whether a claim is garbage.

    Deal with it.

    1. More dissembling from Malcolm, as his spin as to “dissection” does not follow from the snippet of the quote he presented.

      In fact, that snippet is from another case, which quotes yet another case and the topic of that quote is quite apart and inapposite from the typical discussion here of claim dissection in the 101 sense.

      To wit: But there is a more fundamental requirement that must be met before secondary considerations can carry the day. “For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed.Cir.2011) (“If commercial success is due to an element in the prior art, no nexus exists.”);Ormco Corp., 463 F.3d at 1312 (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed.Cir.1990) (“The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . [and] in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” (citations omitted)).
      IN RE HUAI-HUNG KAO,
      639 F.3d 1057 at 1068.

      Deal with it, indeed (just without the dissembling spin).

      1. “If commercial success is due to an element in the prior art, no nexus exists.”

        Thank you for highlighting the CAFC approval of claim dissection in the 103 context with this quote.

        To be clear, I already knew about this and I have been stating so for many, many years. Of course claim dissection is an accepted practice — it happens all the time, as it must! I only wanted to provide a reminder because many people are confused about that fact (willfully or otherwise).

        Thank you again.

  3. The issue isn’t whether or not functional claiming is “allowed” but how to construe the claimed functionality when that functionality is the key to patentability (i.e., when the functinoality is the point of novelty of the claim).

    In that instance, the functionality must be construed to cover only the disclosed objective physical structures achieving that functionality. If construed otherwise, the claim would protect the “new functionality” itself, regardless of how that functionality is achieved, which raises immediate subject matter eligibility issues.

    In addition, failure to tie the functionality to disclosed structure will have the inevitable result of creating a class of grifters and speculators who file on endless desired functionalities and then wait for a deep pocketed target to market an actual embodiment (one that the grifter/speculator need not even have the knowledge or skill to create). In fact, this is exactly what has happened in the information-processing “arts” where functional claiming at the point of novelty, wiithout any disclosure of objective physical structure capable of achieving the stated functionality, is the accepted norm.

    1. MM, I disagree. If the claim is functional at the point of novelty, it is invalid under 112(b).

      There should be no rescue.

      1. Someone once wrote:

        Combination claims with elements described in terms of what they do have long been recognized as apt. Such claims provide an inventor with flexibility to claim what she regards as the invention. Terms that define what the element does may provide a way to claim the invention in cases where structural terms are unnecessarily cumbersome or inadequate

        Sadly, the author of that little ditty incorrectly thought that 112(f) was the ONLY place that descriptions in terms of function was allowed by the 1952 Act, and neglected – and continues to neglect – that actual words of the Act, and the meaning of those words as exemplified by Federico.

        There is a Vast Middle Ground of entirely valid combination claims that use some description of structure and some description of function – that do not have to rely on 112(f) – that Ned never seems able to discuss in a straight forward and honest manner.

        Why is that?

        1. Anon, why don’t you post a link to Rosetta Stone since it might now again be relevant.

          However, read what I wrote there. Combination claims with elements defined functionally. I have been saying that this is okay where the novelty is in the combination. Particularly see Faulkner v. Gibbs.

          This can be extended to every old element in a claim can be claimed functionally. I have been arguing this here for a very long time.

          The problem is when a claim is functional at the point of novelty and the combination being claimed is really an old combination so there is no invention in the combination. My “better mousetrap” claim is an example.

          1. The problem Ned is that you continue to NOT grasp the full extent of the change in law made by the Act of 1952.

            You continue to ig nore what I put on the table from Congress as discussed by Federico – the opening of the use of functional language occurred throughout 112, and your beloved “Point of Novelty” – in the manner here that you attempt to cling to – no longer exists in the law.

            This change was done BY Congress. You really do need to accept this fact.

            1. As I indicated, the proper way to defeat what you want to defeat is through the inherency doctrine, as it is that IF the invention as claimed is to fail, then the description of the combination (in the Vast Middle Ground in which is a fully allowed option under the law) will fall short in that area.

              The Act of 1952 must be accepted in its full scope, no matter how inconvenient that is for your desired ends.

  4. 1. If you want to improve patent quality get rid of the shackles that prevent the inventor (or attorney) from clearly claiming the invention.

    Modern inventions (like those in electronics) tend to be more complicated than U.S. 879,532 Space Telegraphy issued Feb. 18 1906 to De Forest. (The invention was the triode vacuum tube.)

    How about:

    I claim a widget comprising:

    A. Several elements:


    B. This is how the elements are connected:


    C. This is how it works:


    And then bring back the Doctrine of Equivalents.

    The use of “wherein” (or “whereas”) is dicey because frequently everything after the first “wherein” (or “whereas”) is ignored, either by the Examiner or by some Court later on.

    2. If you use functional claiming you have to give at least one concrete example in the Specification of how to do it. Otherwise, it is not an invention, it is only a wish.

  5. “(4) Repeal 112(6) and 112(f) and require applicants to claim what they actually invented. This is expected to improve quality by clarifying to the examiner and eventually the public what is really within the scope of the claims.”

    Great.

    This by itself would so improve patent quality as to be a godsend. This has been my proposal since I was chair of the AIPLA patent law committee.

    The folks behind 112(f), the Milwaukee Patent Law Association, really didn’t have a clue and really didn’t understand what they were doing. But you read testimony in Congress at the time about functional claiming and they all thought the functional claiming was the best thing ever. While that is true when claiming old elements, it is not true when claiming the invention.

    If a claim is functional at the point of novelty, it must be invalid because it is inherently indefinite, and the apparent breath of the claim itself is the problem regardless of the rule of construction.

    We have relearned a hard lesson that was taught to us once upon a time by the Supreme Court the famous case of O’Reilly v. Morse that functional claims are inherently indefinite, non-enabled, and essentially claim results. They necessarily encompass not only what the inventor invented but all the other inventions by others that achieve the same result. While such a patent might be valuable, it truly is a trade monopoly in the worst kind of sense. Functional patents claiming results are what the English tried to outlaw with the Statute of Monopolies.

    But section 112(f) seems to authorize functional claiming, with the rule of construction that at times reads on corresponding structure that is very little more than functions as well. Thus clever patent attorneys have been able to use functional claiming since 1952 and get away with.

    1. “While that is true when claiming old elements, it is not true when claiming the invention.”

      OMG Ned – 99.47 % of all inventions are comprised entirely of old elements. It is the combination that is new.

      Even the apparatus for cold fusion is built from a fish tank and wire.

      The Wright flier was made of old wood, cloth, rope and nails.

      1. Les, as I said before, there is no problem with functional claiming of old elements, and the claim scope should be anything Literally covered by the claim.

        Perhaps you have not actually been listening to me.

        1. Perhaps you have not actually been listening to me.

          Ned,

          With all due respect, I find such posts of yours to be duplicitous.

          It is you that needs to listen, as your statement above of “But section 112(f) seems to authorize functional claiming” clearly misses the mark that Congress opened up wide the use of language sounding in functional description throughout 35 USC 112. See Federico and the examples of case law and the congressional record that I have shared in our previous conversations.

          This attempt here by you to spin it as someone else is not listening and that somehow the use of functional language is ONLY allowed in section (f) is simply NOT an honest discussion of the law.

        2. Ned, I quoted you.

          You said:”While that is true when claiming old elements, it is not true when claiming the invention.”

          Does this not mean that the invention is not in the combination of old elements?

          How does one claim a combination of old elements functionally and not claim “the invention” functionally.

          A cold Fuser comprising:

          an old means for containing fluid;
          an old fluid containing atoms of a particularly fusable isotope held withing the old means for containing fluid;
          first old means for conducting electricity made of a particular old element mounted on the container to carry electrons into the fluid;
          second old means for conducting electricity made of a particular old element mounted on the container to carry electrons out of the fluid; and
          an old means for providing a flow of electrons through the wires.

          1. Les, if all elements are old, the invention in the combination, then there is no point of novelty and the invention is NOT claimed functionally. Faulkner v. Gibbs.

            1. Ned,

              You do realize that the case you attempt to cite to was pre-1952 when there was no 112 as written by Congress in the 1952 Act, right?

              Again, see Federico and the opening up of use of language of functional description throughout all of 112.

          2. It means that there is no inherent problem with describing old structures by the known function they achieve, but that describing a new structure by the function it performs is always overbroad.

            If the art knows that structure S performs function F, then claiming a structure performing F is akin to claiming S itself. No problem (in Ned’s view, I have a problem with that).

            But if my invention contains new structure N, I cannot describe N by talking about its new functional result X. That is inherently overbroad, because N is likely not the only way of achieving X. Moreover, it’s virtually impossible to come up with a situation where we know with even a probability that N is the only way of making X happen.

            I don’t think Ned is talking about what you have here, where you’re either admitting everything is old or using 112f to call the structure of the spec.

            Ned would be talking about something like: A machine comprising a processor and a storage media wherein the storage media stores code which, when run through the processor causes the machine to do X, Y, Z.

            This is maybe 90% of computer software claims. Either X Y Z are all old, in which case the combination is inherently obvious because its a predictable computer, or one of X Y and Z is a “new” algorithm. That new algorithm is not the only way of achieving the functionality of X Y or Z and thus the claim to “code doing X, Y and Z” is overbroad.

      2. The Wright flier was made of old wood, cloth, rope and nails.

        A flying machine comprising: old wood, cloth, rope and nails would not be patentable by the Wrights. Nor would A machine comprising: old wood, cloth, rope and nails, wherein the combination performs the function of flying.

        There is a difference between using known structures and functional language to describe the interplay or relationship between them (allowable and necessary) versus trying to claim an unknown structure by simply stating the functional result you want (has always been improper).

        A flying machine comprising: old wood, cloth, rope and nails, wherein the wood is fashioned into a wing structure comprising….the cloth covers the horizontal plane of the wood structure and is held in place by nailing the cloth to the wood, and wherein the rope…

        Look, now you’ve got a valid claim that doesn’t read on every airplane ever in existence. (I suppose current planes may in fact have zero wood in them but it wouldn’t shock me if there was some used for shelving or the seats or something.)

        1. The Wright flyer was functionally claimed at “the point of novelty”….

          something like wherein a portion of the wing can be moved out of the plane of the wing….

          1. Well I’d have to see the claim to determine whether you’re correct about whether it was functionally claimed at the point of novelty. BUT assuming it was functionally claimed at the point of novelty, there’s ample caselaw stating that is an invalid claim.

            That shouldn’t be shocking to you either, because Morse had an invalid claim too. You can invent a really great machine and have a so/so lawyer and end up with no/diminished patent protection. Point is – its not as simple as saying “many new machines are combinations of old things” and jumping to the conclusion that therefore all functional usage is the same and it’s all valid.

            1. 1. 11m a flying-machine,v

              lateral margins at a normally flat aerop) ane “having lateral marginal portions capa le of movement to different positions above or blow the normal plane of the body of the-aeroplane , such movement being about an axis transverse to, the line of flight, whereby said lateral marginal portions may be moved to different angles relatively to the normal plane of’the body of the aero lane, so as to resent to the atmosphere di erent angles ofhncidence, and means for so movin said ,lateral marginal portions, substan tifily’as described. 3

              link to google.com

              1. It’s means-plus claiming! He describes functionality (capable of movement to different positions…) and then at the end he claims “means for achieving the functionality I just said” –

                means for so moving said lateral marginal portions, substantially as described

                You can’t just read the one statement out of context…

                So he never claimed functionally at the point of novelty, he described the novelty and then claimed in means-plus which calls the structure from the spec. That’s textbook proper claiming.

                It’s as if he said “a bicycle capable of illuminating the road, including means for illumination of the road” (where the spec states that one can illuminate the road with a flashlight affixed to the handlebars). You don’t have a claim to a bike with an unknown structure to achieve a result, you have a claim to a bike with a flashlight on it, which will achieve the result.

      1. Example?

        Invention, new mousetrap closing mechanism that incorporates a magnetic field detector and a magnetic cheese holding device.

        1. The better mousetrap, comprising:

        a cage having a trap mechanism;

        a cheese holding device; and

        a magnetic device operative to activate the trap mechanism when the cheese holding device is moved.

        The only thing new in the claim is “magnetic.” It tells no one about the device disclosed, but covers all magnetic devices for sensing cheese holding device movements.

        1. I see the concern about these types of claims. On the other hand, I see the concern about limiting them. Modern technology has surpassed the reasoning behind limiting these claims.

          For instance, I wrote a case for a memory controller. The only way I could draft the case was to have the memory controller “configured” to perform some functions. One could include diagrams to the hundreds or thousands of gates, memories, etc., it would take to describe the circuitry of the memory controller to perform the functions, but it wouldn’t be possible to draft a claim to cover the circuitry. If your circuit has thousands of gates, how could you draft a claim to that?

          Moreover, as you know, there may be software involved in performing these functions. You could describe algorithms for that software, but even then you’d have to claim the functionality, particularly because with devices such as memory controllers, what is implemented as software and what is implemented as hardware will change over time. You may do everything initially in hardware, but then change functionality to software as the actual memory controller changes. Further, everyone these days wants their functionality to be software and not hardware. Want new functionality for your phone? Do you want to take it somewhere to have a chip replaced or do you want to upgrade it using software?

          1. PatentBob,

            The point of the matter is that you could indeed draft a claim spanning many tens of pages with such an “objective physical structure” description.

            Such a claim would be entirely incomprehensible to the human reader.

            Such a claim would also be entirely equivalent to a claim in the Vast Middle Ground of the legally allowed alternative of using language of functional description with some structure, as allowed by Congress in the Act of 1952.

            As with any and all claims, these various optional formats are to be read and understood by a Person Having Ordinary Skill In The Art (not the typical “sniff” treatment we often see), after being informed by the specification.

            This is black letter law.

            All that you see here by the anti-patent forces is obfuscation of this clear point of law.

            Nothing else.

          2. The only way I could draft the case was to have the memory controller “configured” to perform some functions.

            Sounds like you can’t have a patent then. If the structure was within the skill of someone to make and all you did was provide the idea to direct someone to achieve a functional result, you haven’t gotten patentable subject matter anyway. If the structure was outside of the skill and they had to engage in experimentation anyway, then you aren’t enabled.

            Your document can’t provide a goal of what to achieve and then claim the goal. That’s not what patents are for. You need to provide at least some teaching to get to the goal that wasn’t there before.

            Moreover, as you know, there may be software involved in performing these functions. You could describe algorithms for that software, but even then you’d have to claim the functionality, particularly because with devices such as memory controllers, what is implemented as software and what is implemented as hardware will change over time.

            All you can do is describe and claim algorithms. You’re specifically prevented from “claim[ing] functionality…because…what is implemented will change over time” that was the point of Morse.

            Do you want to take it somewhere to have a chip replaced or do you want to upgrade it using software?

            Did you write all of the software that creates the functionality, or did you just write one embodiment of it? What makes you think you should have “all software implementations” when at most you have a handful?

            1. RG: What makes you think you should have “all software implementations” when at most you have a handful?

              Investors! The most important people on earth. We must listen to them! After all, they are rich and powerful.

        2. How are magnets not old?

          Why do you view the magnet as the new element?

          Why isn’t it the cheese holding device? Magnets didn’t have those before. Is it because of the preamble?

          What if the preamble were: A device comprising:?

          Now which is the new element?

          1. ^ Exactly. The first two limitations have been seen together before, and none of the limitations have any detail. That’s why the way this case SHOULD be disposed of, absent having to do ridiculous compact prosecution, is to simply say:

            Either your invention is to put a magnet and a mousetrap in the same system, and that combination is obvious because of motivation X or the claim is directed toward an indefinite article because there is a more reasonable description of whatever limitation you’re trying to improve upon.

            That paragraph should actually be the entirety of the first action. Garbage in, garbage out. When they come back with a real recitation and give a reason as to what their improvement is then you get to actual work.

        3. Ned,

          I appreciate your comments here and and elsewhere regarding functional language in claims. I would caution that 1) the metes and bounds of a claim are subject to what a person of ordinary skill in the art would understand, and this may be different between the disciplines, and …2) 112(b) should be a hammer for those 0.5% of applications that should be embarrassing for the USPTO to issue, but you have a practitioner arguing that a cited reference does not explicitly disclose the functionality…….in other words, as you said, the point of novelty…..this, however, would not be in line with compact prosecution, but, an applicant making these arguments is not necessarily interested in compact prosecution.

          1. Mzi, I hope you also consider my argument that compact prosecution is just an ideal. Prosecution is an iterative exchange between the examiner and the applicant by which the claims are clarified, confined to the scope of the disclosure, and made to define over the prior art.

            Artificial restraints that throw monkey wrenches into such a process only cause problems.

            Historically, one could not distinguish a machine, manufacture or composition by the way it operates — that was confined to process claims or quasi process claims known as system claims or product by process.

            Thus, claiming a configured machine that does x, y, and z where something is new in the functions claimed would definitely have a problem under the law as it was prior to at least Donaldson.

              1. Also of interest might be this page (noting the tie into the Benson decision and the fact that the Supreme Court decided NOT to over rule the Tarczy Hornoch holding per your attempted reinvigoration of the “function of the machine” line of thought):

                link to itlaw.wikia.com

            1. True…….but u can’t talk about compact prosecution and 112 (and $$$ billable) w/out including the folks in the 20,000 club…..likely some bad memories there

                1. Registration #’s below 30,000…..People who experienced prosecution before “compact prosecution” and the modern PTO count/production system.

  6. Quality examination takes time, and if the PTO wants to improve the quality of its office actions, it will need to find a way of providing its examiners with more time to consider each claim. And here’s one way – don’t examine dependent claims until the independent claims have been allowed, while keeping the hours per unit work the same. That immediately frees up lots of time for the Examiners to focus on what is important – the independent claims – and provides patent lawyers with ample incentive to focus the independent claims more narrowly on the invention at hand. What is not going to be of help is more post-grant review procedures, whatever they are called. We already have too many flavors of those. Just keep the focus on the independent claims, where it should be. Let that be the new “Compact Prosecution.”

    1. Also, if there is a solid “no way is this claim patent eligible” rejection to be made under Alice, then spending further time on examining the claim under 102/103 is a total waste of time. So don’t.

      Again, the PTO needs to rethink what is meant by “compact prosecution” so that it means, more or less, moving things along and focusing on any dispositive issues at hand that save time.

  7. Many of these cannot be done and meet professional responsibility.

    For instance, for #2, I would be performing a disservice to my clients if I did not draft the broadest claims I thought were possible.

    As for this: “One might even get the impression that some drafters intentionally sabotage original claims just to guarantee a rejection and secure an additional billing opportunity”, I have never done this, never will do this, and have never met anyone who has done this. Personally, I’m an advocate of shortened prosecution, when that meets the client’s goals.

    Also, this ignores reality. There are many reasons claims are drafted the way they are. If you file National Stage cases written overseas, those claims and cases are written to different standards (eg, EPO, Chinese, Japanese). Those standards often don’t mesh well with US law (or with each other). You can get incredibly broad claims (tend to be European) or incredibly narrow claims (such as Japanese). But we can’t go back and correct something written 2.5 years ago. And it’s difficult to tell the foreign agents to draft their claims/cases differently, as they have to meet the rules where the cases are filed.

    1. Many of these cannot be done and meet professional responsibility.

      That’s tail wagging the dog. If there’s a rule not to make ridiculous claimsets, and there is, you do the best for your client while staying within the rules.

      I have never done this, never will do this, and have never met anyone who has done this.

      You don’t know anyone who does foreign work? I’m like 90% sure the only thing the american attorney is doing is using his name/rewriting a filing originally penned by a foreign counsel (at least some of the time), because there’s no way a practicioner here would think that some of the arguments made are going to lead to an allowance.

      If you file National Stage cases written overseas, those claims and cases are written to different standards (eg, EPO, Chinese, Japanese).

      Oh, so you do know. There’s such a thing as a preliminary amendment.

  8. [continued]

    (7) Require applicants to map the limitations of every independent claim to the corresponding portions of the specification and/or drawings. This is expected to improve quality by ensuring that the claimed subject matter is adequately supported by the disclosure, and by promoting examiner assimilation in giant applications if proposal (1) is not adopted.

    (8) Require every response to an anticipation rejection to include either an amendment or a declaration signed by the applicants which affirms that they agree with the rebuttal. This is expected to improve quality by reducing the frequency of desperate / misdirecting / unpersuasive arguments, and by keeping applicants in the loop (in fact they may be able to offer more accurate explanations of distinctions over the applied reference than an isolated attorney would).

    (9) Decouple signatory authority from the production quota, or at least shift it down a grade. As an example, GS-12s should be able to have permanent partial signatory authority and GS-13s should be able to have permanent full signatory authority. This is expected to improve quality by giving otherwise competent examiners more autonomy over their work. It has been said that rejection does not equal quality. Neither does production.

    (10) Expedite completion of the CPC definitions. This is expected to improve quality by giving examiners a better idea of where to search and classify in this new system. The definitions were supposed to be done prior to going live on 1/1/2015. As an example of a grossly underdefined area, G02F1/13 has approximately 200 subclasses but only 7 of those have definitions.

    (11) Speaking of 2015, reconsider the requirement that drawings must be filed in black and white. Allowing color drawings is expected to improve quality by making detailed figures easier to understand. Even if printing in color remains cost prohibitive, at least the electronic versions of patents and pgpubs should be able to accommodate colors. This should include images visible in EAST and eDAN (without having to go through SCORE).

    (12) Implement a voluntary art unit level “second pair of eyes” review. It could be in the form of an electronic forum or bulletin board where examiners could post independent claims with “bad optics” prior to allowing the application, to make sure no one in the art unit knows of a blatant 102. It is understood that many examiners will not want to wait a few days before turning in their allowances, but the point is: why consult only one primary when you can datamine the whole art unit? This is expected to improve quality by providing an additional safety check before issuance.

    1. “(8) Require every response to an anticipation rejection to include either an amendment or a declaration signed by the applicants which affirms that they agree with the rebuttal. This is expected to improve quality by reducing the frequency of desperate / misdirecting / unpersuasive arguments, and by keeping applicants in the loop (in fact they may be able to offer more accurate explanations of distinctions over the applied reference than an isolated attorney would).”

      Applicants are now corporations. Who signs for the corporation? How does this achieve the goal?

      Did you mean inventors? What if they no longer work for the applicant? How is that dealt with?

      1. This opens up a whole host of issues. Many inventors will compare “the invention” (and not the claims) with the references being cited. Many of their comments are therefore useless.

        Many of the legal arguments we make are not easy to translate into something someone outside the patent field can understand. I personally find it difficult to articulate the rules for 103 or means plus function (and the courts don’t help this), so the inventors are not going to be able to provide input. And don’t get me started on the current 101 fiasco — how will an inventor understand these arguments, when I don’t?

        1. I personally find it difficult to articulate the rules for 103 or means plus function (and the courts don’t help this), so the inventors are not going to be able to provide input. And don’t get me started on the current 101 fiasco — how will an inventor understand these arguments, when I don’t?

          Totally sincere advice to you, PB: find a new job if you can’t handle being a patent attorney or a patent agent.

          There’s always a need for a decent legal secretary. Look into it.

        2. Many of the legal arguments we make are not easy to translate into something someone outside the patent field can understand.

          Are you saying that if you point to words and ask your client to compare the reference to words they are unintelligent enough to do it? Or are you saying that your claim words aren’t understandable by people of the art?

          You don’t need to teach them law, you only need to ask the questions of obviousness – Examiner asserts that this shows that preexisted, is he correct? Is this the expected result one would get from putting these two things together? etc

      2. It’s duplicative anyway. The attorney is charged with the knowledge of his client, which is the assignee anyway – he can’t go making ridiculous arguments that IBM is shocked SHOCKED that a computer display preexisted its 2013 application. I agree that the office should take a difference stance on us reporting them though.

        1. Trust me, as I’m sure you’re well aware, the Office does not want to get into the practice of publicly shaming attorneys and attorneys publicly shaming Examiners. The shoddy examination (not to mention Office Actions) that I see in the majority of – yes majority of – applications is downright embarrassing.

          1. “attorneys publicly shaming Examiners”

            attorneys already publicly shame examiners. sometimes on here, sometimes on that anonymous rate your examiners website, sometimes on other websites.

            “practice of publicly shaming attorneys”

            this is actually the job of OED. its called a reprimand. and if OED did its job, you would be aware of it.

            however, OED does not do its job, so we get to enjoy reading comments like yours.

            1. If I am to understand your logic, a poster pointing out the fact that most Examiners do shoddy jobs equates to that poster requiring reprimand? BRILLIANT!

                1. Tell you what, ill just slow step you through it, instead of waiting for your next sock puppet.

                  Part of what OED does is reprimand attorneys, but they do not do their job, so you don’t know that “shaming attorneys” (otherwise known as a reprimand) is actually their job. So we are subjected to reading your comments about how it isnt their job.

                  There it is. And it wasnt that hard to “connect the dots” as some posters put it.

              1. I did not come to that conclusion either, ORLY.

                Public shame can be a t001, but is problematic for those “other” SAWS-like internal “quality” programs.

                That being said, the shaming of attorneys by OED tends to be a line from tsr that leaves him dissatisfied with the actual extent of the power of OED (as well as that actual state of ethical requirements for attorneys).

                …and before you get all riled up at me, tsr, realize that I am merely reflecting the actuality of the situation and not saying that you are wrong as to any particular desired different state of things.

    2. “(10) Expedite completion of the CPC definitions. This is expected to improve quality by giving examiners a better idea of where to search and classify in this new system. The definitions were supposed to be done prior to going live on 1/1/2015. As an example of a grossly underdefined area, G02F1/13 has approximately 200 subclasses but only 7 of those have definitions.”

      In a world of computerized searches, is there really any point to the classification system? There may be occasional instances where it helps avoid non-analogous art…. but its hardly a pillar of quality

      1. Absolutely! There are a lot of concepts that can be searched for using lots of different search terms all or’ed together. Instead of trying to think of all of those search terms – and dealing with all the false positives that you get because of the same words being used to describe unrelated concepts – you can instead put in a USPC or CPC symbol. It’s good stuff, and I think a lot of examiners could up their game by using it more.

        1. But the patents/applications are assigned classes based on what is CLAIMED are they not? An examiner is looking for documents for what they “teach”, which is often more than what they claim. I have Examiners sight background sections all the time. They even do it in a 102 rejection, where they are really attempting to COMBINE aspects of the prior art with an aspect from the claimed invention.

          So, limiting your search to documents that claim something similar would appear to me to be too limiting.

          1. But the patents/applications are assigned classes based on what is CLAIMED are they not?

            Not CPC. CPC is assigned classes (multiple classes) based upon the content of the document.

            CPC is a TON better than the US system was. That being said I personally fall closer to your opinion Les. Others in the office will swear by CPC though.

          2. The USPC was based on claimed technology. It was a great system for performing clearance and FTO work.

            The CPC and IPC are based on disclosure. For novelty and validity work, this works great.

            Classification is on par with text based searching. For certain techs, one is usually better than the other. But neither is enough by itself and both must be kept in tip top shape. Neither works for gene sequences or chemical structures and for those we have other, specialized tools.

            Re: “too limiting” – You always want to start with the “best stuff” and then expand search effort outwards. Starting with art claiming your precise tech space is a great place to start. No one should end there though…

            1. Great explanation! Especially your last paragraph. They unfortunately teach examiners in the training academy to search broadly and only narrow it down if you have too many hits to look through, which is a recipe for wasting time and not finding art.

  9. Here are some suggestions for PTO actions to improve “quality”.

    (1) Establish hard limits on the size of applications, including the number of claims and the number of drawing sheets and/or pages of specification. This is expected to improve quality by getting applicants to focus on explaining their invention, and by enabling examiners and the public to determine the relevance of a patent / pgpub more quickly. For those who insist that disclosure sizes should not be limited, I submit that if you can’t describe and claim your invention within a fixed space then you probably have more than one invention which would support more than one application. The PTO’s quo for this quid can be a reduction in filing fees.

    (1A) If (1) is not adopted, at least end the practice of diverting the extra claims fees and “jumbo size” fees to unrelated programs. Such fees should be used to pay for “other time” for the affected examiner. This is expected to improve quality by providing an examiner with time which is somewhat proportional to the actual amount of work to be done. Under current practice an examiner gets the same amount of time to do a reasonable application as a giant one. Guess which one gets less scrutiny before allowance.

    (2) Encourage applicants to present the “real claims” the first time around. This is expected to improve quality by reducing the amount of PTO resources which are wasted on defective claims. Currently in many applications the first action is essentially a throwaway action to beat back claims which are obviously unreasonably broad. One might even get the impression that some drafters intentionally sabotage original claims just to guarantee a rejection and secure an additional billing opportunity.

    (3) Revise the duty of candor standards to cut down on IDS spamming. This is expected to improve quality by reducing waste of examination time. Examiners do not have time to properly consider hundreds of unsolicited random and predominantly irrelevant references that are filed due to a paranoid (but admittedly possibly prudent under current nebulous guidance) reaction to Dayco or McKesson or who knows what. A proposed revision is to limit the duty of candor to providing copies of non-patent or foreign references mentioned in the specification, any information specifically required by an examiner (Rule 105), and possibly search reports / opinions generated in counterpart foreign applications. If an applicant knows of art that beats the claims, the applicant should take initiative to fix the claims rather than cite the reference and wait for an inevitable rejection.

    (3A) If (3) is not adopted, assess a fee and/or require an explanation of (ir)relevance for every citation in excess of a certain number (e.g. $25 for the 21st and each subsequent reference). This is expected to improve quality by discouraging spamming and either paying for consideration time or directing the examiner’s resources appropriately toward or away from the cited references.

    (4) Repeal 112(6) and 112(f), and require applicants to claim what they actually invented. This is expected to improve quality by clarifying to the examiner and eventually the public what is really within the scope of the claims.

    (5) Restore RCEs to the regular amendment docket (56 day baseline due date). This is expected to improve quality by ensuring that examiners work on RCEs while the subject matter is somewhat fresh in mind. Under current practice some examiners are putting off RCEs for over a year, which seems to be truly unjustifiable.

    (6) Restore full production credit (1.25 counts) to first actions on RCEs. This is expected to improve quality by appropriately compensating examiners for legitimate work. The so-called “RCE gravy train” should be derailed on an individual basis instead of punishing the entire corps.

    1. The way I deal with (3) is by simply saying: The rules say the examiner SHALL consider, therefore I have considered, but due to the volume I have done so in only the most perfunctory manner. The examiner is aware of the legal significance of signing that a document has been considered, and would suggest any court view with skepticism an argument that the contents of any of the listed documents were given a true consideration. – You meet the rule and then tell the court to ignore what you just did.

      1. The way I deal with (3) is by simply saying…

        And to whom do you say this? Are you telling us that you put this disclaimer in office actions?

        1. I’ve had one examiner on two occasions cite me the case that allegedly stands for the proposition that “burying a reference in a huge IDS is inequitable conduct.” Of course, the facts of that case are totally inapposite to about 99.99999999% of the IDS’s that are filed, but that doesn’t matter to this examiner. My responses were polite, but clear: the examiner is an idi0t.

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