USPTO’s Six New Patent Quality Studies

1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their reasoning.

2) Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101.

3) The practice of compact prosecution when 35 U.S.C. §101 rejections are made.  This study will determine whether all appropriate rejections are being made in a first Office action when a subject matter eligibility issue is also identified.

4) Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections. This study will evaluate whether reasons for combining references set forth in rejections under 35 U.S.C. §103 are being set forth clearly and with correct motivation to combine statements.

5) Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description.

6) Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and treated.

http://www.uspto.gov/blog/director/entry/topics_announced_for_case_studies

 

192 thoughts on “USPTO’s Six New Patent Quality Studies

  1. 6 –

    Your post at 8.0 and pasted herein below for convenience raises a related question (or issue) in my mind.

    “Guys, I have a question re prior art status. I have a ref with a date that is a month after my applicants filing date. However, the reference itself explicitly states that x feature I need was made at size z as of 2012 (that’s all I need from the ref). Question is, I can haz reference legit used in rejection?”

    The issue, is a fact patter which I have seen many times.

    A single reference is cited, we’ll call it “The Reference.” The Reference is a patent or patent application, which, as you know, has a background section, summary and detailed description section. The Background section discusses the prior art. The Summary and detailed description address something allegedly new and different from the prior art.

    The rejection cites portions of the background in combination with portions of the summary or detailed description.

    Yet the rejection is under 102.

    Even if the citations are correct and relevant, it is improper to say that The Reference anticipates the claims because the same invention is not disclosed. The cited alleged invention does not include the elements the Examiner found in the Background and the prior art does not include the elements from the alleged invention of The Reference. It is only the claimed invention includes both.

    The proper rejection here (I say) is a 103 based on a combination of the prior art (Background section) and the newer detailed description.

    It matters because a 103 rejection affords access to the related arguments: teaching away, long felt need, even the inventor of the reference didn’t think to combine…. so not obvious.

    So, how should I react to such a 102 rejection?

    1. The scenario seems extremely analogous to a 102 referencing multiple embodiments. Sometimes proper, sometimes improper.

      You note that the invention must necessarily be ‘different’ from the prior art/background. But the publication’s invention can incorporate elements from the prior art. Further, the background might disclose those elements most clearly because they are not a point of novelty for the publication’s invention. In such a case it would be reasonable to reference the background in a 102 rejection.

      Best thing to do is get an interview…

      1. “The scenario seems extremely analogous to a 102 referencing multiple embodiments. Sometimes proper, sometimes improper.”

        Never proper. But good luck with that argument.

        1. I see a lot of references that start nearly every descriptive paragraph with “In one embodiment … “, with nothing actually suggesting those embodiments are separate. Such embodiments do not actually define distinct embodiments and may read on the claims in combination for the purposes of 102.

          1. Bob – NO disclosure that the embodiments are NOT combined or combinable is NOT disclosure that the embodiments are combined or combinable.

            1. I disagree. I think it depends on the particular disclosure.

              Are you hoping to be appointed to the CAFC? I only ask because you seem to like hard and fast rules which just make your job easier.

          2. Yeah AAA JJ is mistaken on this one, like he usually is, likely because he’s not familiar with the situation you’re talking about. There are plenty of references nowadays that like to label things different embodiments when they’re just steps def that come after steps abc. And maybe the reference also had alternative steps def that might be an alternate embodiment to the original steps def. Happens all the time lately, it’s poor drafting is what it is.

            1. No, I’m not mistaken. If the reference doesn’t describe the invention identically as claimed, the reference doesn’t anticipate. If the examiner has to combine embodiments, or whatever it is the reference is calling them, then it’s an obviousness rejection, not anticipation. I get these sh!tty rejections all the time. And I get them withdrawn all the time.

              1. “And I get them withdrawn all the time.”

                Never have withdrawn one, never will.

                “If the examiner has to combine embodiments, or whatever it is the reference is calling them, then it’s an obviousness rejection, not antici”

                That’s a big ol if.

                “If the reference doesn’t describe the invention identically as claimed, the reference doesn’t anticipate”

                Correct, but many “embodiments” nowadays aren’t actually separate embodiment “or whatever the reference calls them”. They’re all just parts of the whole. And whether it is a fair reading of the ref that they are together or separate is a factual question.

                1. Right. And your post at 8 demonstrates the command you have of evidence and facts. Which is to say, not much.

                2. Facts are a lot easier than evidence, as I have been trained vastly moreso on the former than the later.

                3. “Facts” are a lot easier if – as you do – you simply make them up to suit your fancy.

                  (Reminiscent of your old “law is entirely subjective and in the mind” spiel).

                  Down below, you STILL have not accepted the plain facts as I have so selflessly laid them out for you.

                4. Law – especially statutory law – is objective rather than subjective.

                  It does not bend as you would have it bend.

    2. Also:

      >>even the inventor of the reference didn’t think to combine…. so not obvious.

      LOL. Good luck with that argument.

      1. AAAJJ’s comment made me regret the empty snark of this comment. Sorry.

        An omission of a combination does not look like evidence of anything but that omission. And taken to its logical extension, your argument would rule out any omitted combinations involving combinations with the prior art that the inventor would be familiar with… and suddenly everything is non-obvious.

        1. Wow. That is some serious BS. Omission of a combination does not look like evidence of anything but that omission? Unless you have some evidence and articulated reasoning that it would have been obvious to combine embodiments then you got nothing.

          1. I never suggested that the omission of the combination itself would be enough for a rejection. You’re attacking a strawman.

            Les is suggesting that the omission of a combination should constitute some sort of secondary consideration serving as evidence of non-obviousness. That is plainly not the current law.

    3. “The issue, is a fact patter which I have seen many times.”

      That’s interesting to hear, but your proposed situation is a tad different than the one I was really getting at in my post. The one you’re talking about is very similar though.
      End part 1.

    4. “The rejection cites … Yet the rejection is under 102.”

      That happens sometimes where the background’s disclosure is implicitly carrying over into the detailed description because of laz iness on the part of the drafter.

      End part 2

    5. “Even if the citations are correct and relevant … [the] invention is not disclosed. ”

      Some people find the same, some courts disagree and find facts the other way. It’s a factual question.
      End part 3

    6. “The cited alleged invention does not include the elements ….”

      It is a highly fact dependent situation, obviously there are situations where there certainly is no implied carry over disclosure. And in those situations obviously it is inappropriate to find such as a fact.

      “The proper rejection here … is a 103 ”

      Yes, in some situations that is certainly so.

      But, what you’re talking about is a purely fact finding issue, my issue was more about the sufficiency of the evidence to establish a date for x being disclosed.

      End part 4

    7. “So, how should I react to such a 102 rejection?”

      If you truly think that the background’s disclosure is not implied to carry over to the “invention” portion of the spec, when the paper is read in context, then explain that and explain that it is inappropriate to find such as a fact. Further, you can go ahead and note why you would take issue with any such 103 combo being made. Or, if you (your client rather) notes that a 103 likely would issue anyway, then you just amend. And yes, an interview can help see why it is they think the disclosure carries over implicitly.

    8. Rescued from being placed in the moderation zone:

      Point out as you have done here that the 102 rejection is

      f
      a
      t
      a
      l
      l
      y

      flawed.**

      I would then put forth a response to the rather obvious (but unmade) 103 rejection, although I do know some “cohorts” that would not do even that and force the examiner to put that on the record.

      **see my comment below on the “veracity” – or lack thereof – of an admission of what would be prior art and the fact that such an admission ONLY can be held by the reference applicant (and is held against that reference applicant even if the admission turns out to have been made in error).

      1. “force the examiner to put that on the record.”

        Does that work? If all I did was say this is a flawed rejection and explain why I thought so, I would fully expect to receive a Final OA with the same rejection.

        I’m I wrong? Do your cohorts get new non-finals with a 103 in scenarios like this?

        1. Often enough that I was able to convince my “cohorts” to actually engage in a preventive manner (overcoming the resistance to anything “extra” on the written record – which is no small feat, given how “patent profanity” can be so problematic years down the road).

          Granted, we were talking about cases where the 102 was so obviously “bad,” and that the (missing) 103 was so obviously what was what should have been made.

          I see the parallel to your hypo – and the “pre-emptive” reply has typically yielded faster overall processing (all the examples that fit this scenario had favorable final results of grants). I do realize that each individual situation may be fact-dependent, but as a typical approach, when the 103 was the obvious rejection that should have been made, I have found that pre-emptively overcoming that rejection has worked well.

          1. …and this is contrasted to my cohort’s lack of success – so to answer your post, yes, my “cohorts” DID see the 103’s that should have been made being made on the next round with the accompanying impacts on production time and sequencing.

  2. “anon” The travesty of course is that things do not become 101 rejectable because of prior art.

    I assume that’s not what you’re telling your clients unless you’re wishing for them to sue you for malpractice.

    1. LOL – quite the opposite Malcolm – unless you want to volunteer an actual piece of law to support your “view” (and no, I do not mean you v0m1ting your typical feelings on the topic, but actual law dealing with actual prior art making something that prior to the prior art was patent eligible *** into something NOT patent eligible AFTER the prior art.

      ***and explicitly distinguishing elegibility from patentability.

      Feel free to showcase your “legal prowess and acumen.”

      I won’t be holding my breath.

      1. feelings

        LOL

        It’s called “common sense” and “logic.” It’s actually a huge aspect of “the law”. No doubt that will come as a terrific shock to you, assuming you can pull your head out of the sand long enough to let the simple facts speak for themselves.

        Your “argument” (such as it is) doesn’t get off the ground because the patent eligibility analysis doesn’t focus “things” but with claims that describe those things. That’s why a new fangled computing machine claimed in objective structural terms is patent eligible but a later claim to that same machine “modified” by the recitation of some ineligible functionality (“wherein said new fangled comp00ter is configured to manage bingo games”) is ineligible.

        This isn’t too difficult for most people to understand. Of course, you’ve got to get all that toxic k00l-aid out of your system before you have a chance.

        1. It’s called “common sense” and “logic.”

          No. It is nothing more than your “feelings”

          (“Logic”…? I thought you reserved that for software – are you software…?)

          I do not see in any other part of your ramlbings any sense of you showcasign your “legal prowess and acumen” by giving me what I explicitly asked for.

          What’s wrong Malcolm – did I use words too big for you?

          Let’s see you do more than your usual short script mumbling. Let’s see you use with actual law dealing with actual prior art that making something that prior to the prior art was patent eligible *** but because of that prior art is somehow not made into something NOT patent eligible AFTER the prior art..

          ***and explicitly distinguishing eligibility from patentability.

          Use those short declarative sentences you are always on about.

          Point out the item that would be eligible but for a specific piece of prior art.

          Point out the prior art.

          Point out why the prior art makes the item which if it had come first would have been patent eligible, not is somehow not patent eligible.

          And do you best to point out exactly how – under the law this is a 101 and not a 102/103 matter (try NOT to kick up dust and conflate things).

          Your shot at “showing off” – Let’s see you even try.

  3. Guys, I have a question re prior art status. I have a ref with a date that is a month after my applicants filing date. However, the reference itself explicitly states that x feature I need was made at size z as of 2012 (that’s all I need from the ref). Question is, I can haz reference legit used in rejection?

    1. Does the reference say that size z was disclosed/used publicly/sold/offered for sale/otherwise available to the public in 2012? If not, what’s your evidence that size z was in the prior art?

      1. Yeah that’s what I was thinking about. Though it definitely is implying that it was used throughout the whole industry in 2012, and I only need a 14′ date. Still, it doesn’t matter as there was a hundred other refs to use so I just used one with a 1999 date or something.

    2. 6 quips:

      However, the reference itself explicitly states that x feature I need was made at size z as of 2012 (that’s all I need from the ref). Question is, I can haz reference legit used in rejection?

      The short and direct answer is: No.

      An admission (without more) of what is prior art in an item that you want to use as a itself a prior art reference for another application is not acceptable.

      Such an admission (true OR not) IS permissible to serve as prior art in an application that directly makes such an admission.

      Otherwise 6, we can have some schmucks filing willy nilly (after the fact) claiming all kinds of things have much early priority dates than reality.

      How long have you been an examiner? Or are you just Tr011ing with this question?

      1. “Otherwise 6, we can have some schmucks filing willy nilly (after the fact) claiming all kinds of things have much early priority dates than reality.”

        Nah we couldn’t have that, because then we’d have to turn them over to justice if they lied to the office. It’s agin the law, and they would have even sworn to the truth of their disclosure. But the instant ref wasn’t a patent or app, it was just NPL.

        1. Schmucks be believing what they want to believe and the oath be only that they believe what they be writing.

          Further / the critical point remains: the answer remains No.

          1. we can have some schmucks filing willy nilly (after the fact) claiming all kinds of things have much early priority dates than reality.

            Which is t0tally different than some schmucky lawyer broadly claiming some logical “functionality” on a 30 year old programmable computer designed for the sole purpose of carrying out logical operations.

            Oh but wait! This computer stored data remotely! And the content of the emails is about new DVD releases, which is t0tally different from baseball rankings.

            But he’s a serious person. Super seriously concerned about “schmucks” in the patent biz. Sure he is.

        2. They wouldn’t have to lie to the Office. They would just have to publish an article in The Journal of Copying Coders including the lie. You would then dutifully find it in your thorough search.

            1. The “nature of the publication” in and of itself does not help you 6.

              This is really not that difficult 6 – you need a bona fide properly dated reference.

                1. His question is clear enough and pertinent.

                  He is asking what your position would be were the shoe on the other foot.

                  If you needed evidence of the prior art in 2012 to defend against an infringement suit and all you had was a 2014 article alleging the needed prior art as of 2012, would your position change.

                  I think 6 suspects that it would and that you would find precedent to support that position.

                2. His question is not clear – am I the examiner? The one accused of infringement?

                  It is also not pertinent: the issue here is explicitly what can serve properly for a reference establishing timing and he wants to use a later timed reference for what that later timed reference merely claims as the the timing of prior art (rather than any actual timing of any actual prior art).

                  He simply cannot do that.

                3. His question IS clear:

                  If YOU needed evidence of the prior art in 2012 to defend against an infringement suit and all YOU had was a 2014 article alleging the needed prior art as of 2012, would YOUR position change?

                4. “The one accused of infringement?”

                  You’re the hypothetical attorney for the accused infringer ta rd. Your client stands to lose a million dollars. Does your position change or do you just pay up? Make it 10 million your client stands to lose since the cost of trial is a million anyway.

                  “I think 6 suspects that it would and that you would find precedent to support that position.”

                  Obviously so Les.

                5. I find an actual properly dated reference.

                  And yes, it is that simple.

                  (Hint: if the improper dated reference cannot be backed up with a proper dated reference, then how good was the wrong dated reference to begin with?

                  All this is is 6 tr011ing for a L A Z Y “gee, I better choose poorly with his bad reference example” Br’er Rabbit invitation.

                  Silly rabbit – those tricks don’t f00l anyone.

                6. “I find an actual properly dated reference.

                  And yes, it is that simple.”

                  You spend 500k trying to find that properly dated reference and fail. Do you pay up your 10 mil?

                7. All this is is 6 tr011ing for a L A Z Y “gee, I better choose poorly with his bad reference example” Br’er Rabbit invitation.

                  Silly rabbit – those tricks don’t f00l anyone.

                  You don’t get to even try to use such a bad reference.

                8. “You don’t get to even try to use such a bad reference.”

                  And what about you anon? Do you break all bad and save 10 mil or do you pay up?

                9. 6,

                  You already have my answer: I find an actual properly dated reference.

                  And yes, it is that simple.

                  What part of my response are you having trouble with?

                  Do you not understand the part of the reply as to the veracity of your post-dated reference? Do you feel that a large amount of money should permit you to believe in what amounts to fairy tales?

                  You are pursuing a painfully obvious loaded scenario.

                  Stop while you are behind – Silly rabbit – those tricks don’t f00l anyone.

                10. Let me reiterate:

                  It is also not pertinent: the issue here is explicitly what can serve properly for a reference establishing timing

                  No amount of gamy “bribery” changes the basic question – and the answer.

                  All 6 is doing with his “would you take a BILLION dollars to try” is kicking up dust.

                  NO amount of money – no amount of “try” changes the correct answer.

                11. As the reference isn’t even enough to meet the preponderance standard during examination, it’s not going to meet the clear and convincing standard in litigation. I would tell the client to get a reference with a date clearly in the prior art.

                12. Thank you for a sage response. Tell me though, would it also be possible in a trial to have the author of the ref testify as to when x feature was publicly known in the art?

                13. I assume it would. The author would have to present something more than his say-so or opinion as to when the feature was in the prior art, or I would expect an objection from the other side. If I was representing the patentee I certainly would object if the author was being submitted as a witness and all the accused infringer could provide was, “The author will testify as to when the feature was in the prior art.”

                14. Yes I would presume so as well. And yes obviously it would have to be something very particularized most likely.

                  Still, it does somewhat bother me that a whole universe of prior art thus pretty much has to wait till trial or at least IPR nowadays (I don’t know how much you can testify to/swear to in an IPR).

                15. You are busted yet again 6 – IF you have that “a whole universe of prior art thus” that is ITSELF properly dated, then that is what you use.

                  Or are you trying to backpeddle away from your attempt to use post dated material…?

  4. I can say this, no. 5 will reveal a whole lot of ignorance. Nobody pays any attention to 112 1st hardly because the vast majority of people don’t even know what it is about.

      1. Even there I’m sure there is plenty to be seen. Though you’re probably right that more 112 1st wd issues happen in careless amendments. Still, plenty of carelessness happens in cons.

        1. Yes to all three comments above. May I also suggest that part of the problem is the paucity of D.C. decisions appealed to the Fed. Cir. for their decisions on 112(a)-enablement-adequacy disputes. Especially for inventions claiming unobviousness in something that inherently requires software (or at least a detailed flowchart) enablement?
          Even for “means function” claim elements, where the Fed. Cir. does consider zero spec enablements, they seem to only apply claim ambiguity and not 112(a)? Why?

          1. As to the dearth of appeals on the 112(a) issue, that’s because the issue is one of fact, and once you done been found to have fed up, there usually isn’t much to appeal. Usually they happen because someone made a mistake in prosecution, and once you get called out on it, and it’s pretty clear it was a mistake, there isn’t much point in appealing it. Also, I kind of doubt 112(a) is used to invalidate many claims in the DC. That simply being because once someone calls you out on it, and it appears to be so, you’re not likely to take the case to trial.

            As to why the fed circ. applies 112(b) “ambiguity”???? and not 112(a) that would likely be because it isn’t usually an issue.

  5. I cringe at the thought of “studies” that we all pay for. Be nice if they had someone in running the place that could browse through file wrappers and figure these things out.

    If I had to bet, I’d say a good study would show that Alice/101 has decreased the patent quality by taking more time from the examiners on 101 and away from 102/103/112.

    1. Define “quality.”

      One aspect here is that the Office has an “affliction” of expediency – that throughput – no matter what else – is some overriding “definition” of quality because throughput can be measured – and is a primary measure.

      But the adage remains: you get what you measure.

      And let me remind you of what a certain former leader of the Office had to remind those in the Office: “reject does not equal quality.”

      I think that your point may be better phrased not as taking time away from 102/103/112, but instead attempting to take a shortcut because the “cut and paste” of 101 is easier than the path of 102/103/112, and the full necessary time to do a complete and thorough examination of ALL of 101/102/103/112 still NEEDS to be done – but the “reward system” just does not measure that.

      1. Definitely true anon that some examiners are going the route of using 101 rather than doing real work and figuring out if there is art out there. Nothing brings that home more than all rejections are gone, but the 101.

        One must wonder how something can be abstract if an examiner cannot reject it under 103. I think it is impossible in reality–not the alternative universe of the SCOTUS and Fed. Cir.

        1. I think that making examiners do a full and complete examination would only highlight the travesty that is going on with 101.

          You would have the “cut and paste” 101 of course, but then you would have attempts by the examiner to ALSO say that the claimed invention is not allowed because patent grants were already made – that do NOT invoke 101 – on “x” art for perhaps 102, or “x” art and “y”art for 103.

          The travesty of course is that things do not become 101 rejectable because of prior art. Unless of course, you are making things up from the bench and trying to arrive at a certain ends without the proper means.

          The Court “gets away” with it – examiners will not.

      2. “and the full necessary time to do a complete and thorough examination of ALL of 101/102/103/112 still NEEDS to be done”

        Idk I may used to have concurred, but upon noting how much abject waste this creates, I’m not that convinced. Compact prosecution is just an abstract “goal” the office tries to implement, it doesn’t reward it at all, and lays all the waste that it creates at the feet of the examiners. And I say that after trying for years to accomplish extreme compact prosecution. Basically all I discovered is that it creates a gigantic sht ton of waste, unless certain administrative features are implemented. And pretty much all of those features have to be in place from the get go or the whole thing comes crashing down. Further, those administrative features are put on the back burner by the office’s higher up folks.

        What’s funny is that I just got through watching a 2 hr long presentation on the collapse of sophisticated societies by a guy who stated he took an earlier than necessary retirement from the gov because he noted that this exact thing was going on more and more and more. Specifically it is the handing off of complexity, and the costs associated therewith, to the “grunts” while the “upper people” collect all the rewards for handing that complexity down. It’s actually very similar to what had been observed in ancient rome as it was on the decline, and other advanced sophisticated societies as they decline as well. I wouldn’t doubt it if that guy was himself from the PTO.

        1. it is the handing off of complexity, and the costs associated therewith, to the “grunts” while the “upper people” collect all the rewards for handing that complexity down.

          Thank goodness this never happens in the private sector!

          Seriously, though, I’m curious about the income disparity at the PTO between the “grunts” and the “upper people” (and where you draw the lines between those groups). What magnitude of differences in “rewards” are we talking about?

          1. “Thank goodness this never happens in the private sector!”

            Nah, it definitely does, they addressed that also in the presentation on the youtubes. Indeed, back in roman times the taxes were so high on produced foodstuffs that less productive fields oftentimes wouldn’t even be planted because the taxes would literally take more than the field could realistically produce (leading ultimately to less production because the field never even got planted). However, the gov. tried to force people into planting those fields, but they ended up getting around that all too often (by getting powerful patrons to protect them etc.). That was one of many of the examples that they gave for why the romans started to decline. And the same thing is largely happening in our society today. Merican’ worker production always on the rise, yet somehow that pay be languishing.

            “Seriously, though, I’m curious about the income disparity at the PTO between the “grunts” and the “upper people” (and where you draw the lines between those groups). What magnitude of differences in “rewards” are we talking about?”

            I’m not even talking about disparities in $$$ so much, (though those exist also). The salaries are available online but if memory serves spes are around 120k+ depending on years. And Directors etc. are around 150k+.

            Though the disparities in $$$ aren’t really issue I’m bringing up. The issue is simply that they implement “compact prosecution” as the goal, then promptly do not ensure the necessary administrative support (in terms of internal procedures and time to sort through all the myriad issues and proposals etc.) is there to achieve it, then sit back and “get credit” for the grunts who actually do try to do even relatively compact prosecution. This being in terms of reduced pendency, less RCEs, relatively good quality compared to the other way around, relatively good customer satisfaction and lack of complaints, lesser numbers of clear errors to review, lesser numbers of appeals to review, and generally gets seen as a good leader (which technically they are) and just on and on. The only possible negative for them is if that examiner screws up and doesn’t quite eek out their production.

            The “difference” in the magnitude of these non-monetary rewards (which somewhat spill into monetary rewards) is ginormous, as the grunt’s rewards are negative generally and the management’s rewards are all positive generally. The grunt examiner gets lesser production numbers, marginally the same or barely higher quality numbers (hard to get above 100% which we all default to now, via agreement), huge headaches and piles of work to accomplish, challenges in claim drafting/decision making regarding patentable as yet unclaimed subject matter, waste that practically doubles the amount of work that would be required to do a de minimus job, lesser standing, just all in all lesser FORMAL recognition though eventually they will sometimes get INFORMAL recognition (don’t bet your life on it) etc. The supervisor/director gets practically all the goodies (see above) in this scenario, and gets none of the negatives.

              1. Yeah but it is difficult if not impossible to actually measure that except by looking at absolute numbers of rejections, which largely depend on things like a. whether the signatory examiner insists on somewhat illegal claim constructions being routinely adopted (waste that first action weeee, have a claim construction fight on final) b. whether or not the applicant happens to understand what is going on, and/or decides of their own volition to amend. Which is why they “measure what is more easily measured”.

                1. You do understand that the very concept of “measure what is more easily measured” is part and parcel of the problem, right?

                2. You’re presuming that the costs associated with measuring “the right things” wouldn’t vastly outweigh the benefits of alleviating “the problem”. As in, the costs to solve the problem might be greater (or much greater) than the costs that are being imposed by the problem. As in, you presume that magically measuring the right things would be a benefit worthy of the costs of doing that measuring. But that is not necessarily the case.

                  Indeed, that very thing was the topic of the youtube vid. He was talking about the costs of solving problems becoming so large that they outweigh/match the benefit of having the problem solved and how eventually that oftentimes throws a huge monkey wrench in sophisticated societies and causes their collapse because either the problem goes unsolved, or people overspend on the solution.

                3. You are squarely in the fantasy land of “6-is-making-things-up-and-pulling-things-out-of-his-@$$”

                  Maybe you want to just answer my question to you…

                4. I’m not making anything up. I’m informing you of what I found during actual in real life empirical experimentation and noting its impact on your proposed course of action.

                  When deciding whether or not they should measure supar duper compact prosecution being done, they have to consider the costs associated with that measuring. And the costs associated with the change in examining behavior. If those costs far outweigh the savings then it shouldn’t be done.

                  Be clear anon, I already discussed this supar dupar complete/compact prosecution with some of the higher ups in the organization. They’re all for it if it can be done in reasonable amount of time, but they also know from their own experience and from that which they witness of their employees that such would be quite a feat. And it is quite a feat to accomplish it in the time provided at present. Forcing everyone into doing it by “measuring” that isn’t going to change that doing so would be a herculean task for the vast vast majority of folks.

                5. informing you of what I found during actual in real life empirical experimentation and noting its impact on your proposed course of action.

                  You keep on returning to this notion that “costs” somehow justify doing the wrong thing.

                  It just is not so.

                  That you “observe” this changes nothing.

                  When deciding whether or not they should measure supar duper compact prosecution being done… Be clear anon, I already discussed this supar dupar complete/compact prosecution with some of the higher ups in the organization.

                  Who said anything about “supar duper compact prosecution”…?

                  Forcing everyone into doing it by “measuring” that isn’t going to change that doing

                  You don’t get process management, do you? I keep on forgetting that you have no real world experience.

                6. “You keep on returning to this notion that “costs” somehow justify doing the wrong thing.”

                  How much something costs determines whether or not it is the “wrong” thing, or the “right” thing. Idi ot. What are you, some kind of liberal? We could spend 1M dollars examining every application, but we don’t. Because examination is not deemed to be important enough to put that much money into each examination. There is a balance they try to reach.

                  “Who said anything about “supar duper compact prosecution”…?”

                  That’s what I call your “version” of compact prosecution. As opposed to the “race to final” compact prosecution that is the norm, and which you and others supposedly despise.

                  So the answer is, “you did, that’s who did”.

                  “You don’t get process management, do you?”

                  I most certainly do. You cannot “process manage” people into taking on herculean tasks without actual consequences like burning them out or worse. Idi ot. As a strictly factual matter I probably have more “real life” experience managing processes than you do lol. By a long shot. And the current process management is producing exactly what they designed it to produce. A race to final disposition.

                7. What you are calling “my” version is simply not correct, as I have laid out NOTHING of the sort that you are rambling on about.

                8. “Cost is no such identifier of right and wrong.”

                  You and the PTO management/bean counters differ in opinion, and they have responsibility for that by law, as opposed to you. Your philosophical disagreements with them don’t change day to day reality.

                  “What you are calling “my” version is simply not correct, as I have laid out NOTHING of the sort that you are rambling on about.”

                  Lol, you’ve been prattling on for years and years (a decade?) about how examiners don’t search enough, don’t read the spec/search the spec enough, do bad rejections, race to final, improperly go final, and generally don’t “do the job” (as laid out by you as opposed to management). But go ahead and pretend that you haven’t, you’re hilarious.

                9. I have complained about the substantive effects of bad examination.

                  There is a very real difference.

                  I have also been VERY clear that your dealings with your management should NOT be allowed to affect my client’s substantive rights.

                  Try less dust kicking please.

          1. “It takes inspired management to come up with an innovation challenge like the PTO has!”

            I think it was done back in the 60’s or 70’s. So today’s management was still in short pants.

        2. You do NOT get to “chose” 6.

          The reason of course is that if you only take one shot – one section – at a time (and for argument’s sake) are wrong on each section, there is zero chance of you (the Royal You) meeting the guaranteed prosecution timings (related to PTA).

          1. “You do NOT get to “chose” 6.”

            Sure I do anon. We all get to chose. Masking non-compact prosecution is simple as pie. All it involves is not going balls out. That’s literally all it requires. Non-compact prosecution is, quite literally, the default.

            1. And in fact, I should add, not only do we get to choose, we are encouraged, and indeed obliged by law in a manner of speaking, to cut down waste, which is what compact prosecution turns out to be without adequate support in place. Thus, in a round about way, we’re literally obliged to not compactly prosecute. Though, to what degree, differs case by case, and I don’t think people taking it “one statute at a time” so to speak would be all that justified. There is an excellent argument to be made for finding the claims not patentable (on 101 or 112), and barely doing more than “phoning it in” on the others however may well be indirectly required by law, specifically the laws related to waste.

                1. Not for the office, under Official manners of measurement.

                  Oy vey – NO, 6, you got that part wrong too.

                  (hint: the great “Reject Reject Reject” era only inflated the backlog, as those who knew better – and could afford it – rebuffed the shenanigans of the Office.)

                2. Right, but that’s increasing waste “outside the official measures”. Remember, the official measures are nearly all of what is causing the issue in the first place. The “every case that is an RCE is an abandonment” official line.

                3. And, even setting that aside, compact prosecution itself actually rivals even the “greater” waste that happens to the applicant as a result of piece-meal. Except the applicant never sees that waste, because it is internal to the office. Never the less, it is waste.

                4. “…except not 6 – has that is what the applicant PAID FOR.”

                  Not really, they paid for an examination. How that examination is carried out is a function of official direction, and law (including those dealing with waste).

                5. “We’ve been over this before.”

                  Yes, and you’re still wrong, as a matter of lawl, as you always will be. We went over whom has the responsibility for examination just the other day as well, it was written into the law.

                6. Where exactly am I wrong 6?

                  Are you saying that applicants have somehow not paid for a full examination?

                  Which part have they not paid for? How are applicants informed of which parts they have not paid for? Please point out – in the law (or even the lawl) – the words that you are relying on for your version of reality here.

                7. “Are you saying that applicants have somehow not paid for a full examination?”

                  Nope. I’m saying that a “full examination” is what management decides it is (or if management goes along with their grunts then what the grunt decides it is), and not what you decide that it is.

                  “Which part have they not paid for?”

                  Anything that generates abject waste.

                  “How are applicants informed of which parts they have not paid for? ”

                  Generally by getting a long drawn out prosecution lol, I think you’re familiar with that. But if you want you can probably obtain internal procedure somewhere around the way. Though it is internal procedure, and thus of little concern to folks on the outside, who, formally need only be concerned about what management presents them with.

                  It’s right at the beginning of 35 USC, we just went over this the other day. And there are ample places to report internal waste, GAO etc. though I have yet to find too many actual statutes besides the one that was in 5 USC talking about waste that we talked about the other day. I will be looking around though as the year goes by, to see what all I find.

                8. Nope. I’m saying that a “full examination” is what management decides it is (or if management goes along with their grunts then what the grunt decides it is), and not what you decide that it is.

                  Decides it is…?

                  No 6 – go back to your grade school civics – the executive branch does NOT get to decide – they have to execute what has already been decided.

                  There just is NO leeway for a “well, we are only going to pick and choose how we feel like it” You simply do NOT have any authority to decide for yourself what is (or what is not) “waste.” Note that you use that word WAY too flippantly. Applying the full weight of law is something you must do – and you cannot call that “waste” and treat it as if it were actual waste.

                  You are not – and cannot be – correct.

                9. Once you grasp that, then return and answer my questions:

                  Where exactly am I wrong 6?

                  Are you saying that applicants have somehow not paid for a full examination?

                  Which part have they not paid for? How are applicants informed of which parts they have not paid for? Please point out – in the law (or even the lawl) – the words [and do not hand wave a “somewhere in there” type of CR@P] that you are relying on for your version of reality here.

                10. “Decides it is…?”

                  Yes, management decides literally on what examination PROCEDURE takes place.

                  “No 6 – go back to your grade school civics – the executive branch does NOT get to decide – they have to execute what has already been decided.”

                  They decide everything about the PROCEDURE.

                  “There just is NO leeway for a “well, we are only going to pick and choose how we feel like it””

                  Sure there is, administrations in the past have acknowledged that the PTO could, theoretically, differ 102/103 until after 101/112 have been taken care of, as a matter of procedure, but they opt not to in favor of the current “race to final” model.

                  “You simply do NOT have any authority to decide for yourself what is (or what is not) “waste.””

                  I not only have that “authority”, I literally have that duty. By law. Otherwise I’d have to report myself, which would be bad.

                  “Note that you use that word WAY too flippantly.”

                  You wouldn’t think that if you’d come and examine for a couple of years “doing things your way” and comparing it with “doing it the normal way”. I already tried it bro, I’m telling you, factually, the PTO is not set up to handle “your way” of examining, all manner of waste ends up occurring that is impossible to avoid.

                  “Applying the full weight of law is something you must do – and you cannot call that “waste” and treat it as if it were actual waste.””

                  I didn’t say that I don’t “apply the ‘full weight o da lawl'” or whatever idio cy you’ve talked yourself into thinking I’ve said. Though the office isn’t obliged to make examiners do all grounds of rejection in one OA. It could very well be split up, as a matter of procedure, just like David K mentioned many a times. The only reason we don’t do that is because management decided otherwise. Plus, the “different sections” being applied barely even has pertinence to most arts. 101 is usually not an issue in like 95%+ of AU’s. 112’s take barely any time at all to make usually. And 102/103 is generally where most examining takes place. So I’m not sure what your hang up is on this “applying the full weight of da lawl” is.

                  You are not – and cannot be – correct.”

                11. “Once you grasp that, then return and answer my questions:”

                  I already answered your questions, and you stated nothing new, you just spouted off about “lack of authority” where authority, and outright duty, most certainly does exist. Nothing about my answers changes from the answers above.

                  Where you are “going wrong” is that you think that no authority to fiddle with the examination procedure exists for management (it does, they have absolute authority over it, see beginning of 35 USC). And you also think that the rank and file have “no authority” to determine what waste is, and assert that I’m too flippant with the term. We do have that authority, and that duty, explicitly set forth by lawl, and acknowledged throughout the office informally. I’m most certainly not flippant with the term. Probably a quarter of my job is currently composed of waste, in that a quarter of the actions that I’m taking do practically nothing to further the goal of coming to final resolution on the case FORMALLY speaking. Cutting out that waste is a good thing for my applicants, and for the office, and society.

                12. Wrong – and wrong again, 6.

                  You are so very very deep into the weeds here.

                  Let me know when you understand what each branch of the government (including your role in the executive branch) is supposed to do.

                13. You err on the emphasis of “procedure” for which, I am not talking about)

                  It is not a matter of “this” before “that” – which is not something I altogether care too deeply about – it is a “I think that is waste, so I won’t do it at all” mindset. You just do NOT get to determine which parts of the law you are going to enforce through examination and which parts you are not going to – for any reason (such as making up the CR@P that that is “waste”).

                  I am clearly not talking about other forms of waste – which you can control or chart or report or whatever to your heart’s content. I am clearly only talking about matters of substantive law.

                  This is very reminiscent of how you got the Tafas matter so very badly wrong.

                14. “It is not a matter of “this” before “that” – which is not something I altogether care too deeply about”

                  Sure it is, you want “this” and “that” to be done UP FRONT in the FIRST ACTION. You’ve cried for it for literally years. It literally does not have to be so.

                  “I think that is waste, so I won’t do it at all”

                  It isn’t a matter of “thinking x is waste”, it is a matter of having observed it to lead to huge amounts of waste in the past. There’s a difference anon. Actual experimentation took place.

                  “You just do NOT get to determine which parts of the law you are going to enforce through examination and which parts you are not going to”

                  I always enforce all parts of the law. However, the “how” I go about doing that is entirely up to the office, and it is an office setup with an emphasis on avoiding waste.

                  “I am clearly not talking about other forms of waste – which you can control or chart or report or whatever to your heart’s content. I am clearly only talking about matters of substantive law.”

                  Right, but what you’re not getting is that your proposed examination model leads to those “other forms of waste”.

                  “I am clearly only talking about matters of substantive law.”

                  Lol, well then I shouldn’t hear you ever btching about how much someone searched, or how improper finality was, or x, y, or z again. Only substantive matters of lawl. But I nearly certainly will.

                15. I always enforce all parts of the law

                  LOL – then you agree with me.

                  OR is your statement not true and that you only want to enforce those parts of the law that you deem “not wasteful”….?

                  Lol, well then I shouldn’t hear you ever btching about how much someone searched, or how improper finality was, or x, y, or z again. Only substantive matters of lawl. But I nearly certainly will.

                  As I said – when these things affect my client’s substantive rights – THEN you will here me btch about them.

                  Have you revisited your errant thinking from the Tafas days?

            2. Masking non-compact prosecution is simple as pie. All it involves is not going balls out. That’s literally all it requires. Non-compact prosecution is, quite literally, the default.

              So basically you are saying that NOT doing your Fn job (and actively concealing this by masking) is the default?

              Any person believing or promoting that should be fired immediately.

              1. “So basically you are saying that NOT doing your Fn job (and actively concealing this by masking) is the default?”

                You can call it what you like, but yes, based on my analysis, and observation of those around me that are rewarded for x behavior, and attempts to actually compactly prosecute cases to ultimate completion (not mere abandonment/RCE) that appears to be the very much the default.

                “Any person believing or promoting that should be fired immediately.”

                It has nothing to do with “belief” or “promoting that belief”. It has to do with literally knowing what is waste and what isn’t. And you’d have to fire like 99% of people, and all of the “successful” ones would be the first to go. They’ll outright tell you that a key to being a primary is eliminating waste, that’s no secrit. I didn’t really understand what they meant by that at the time, but they were quite right. And doing a bunch of extra work to up the chance of the case being ultimately granted (like 4% or less of my cases go abandoned for good, all the rest eventually issue) in 1 to 2 actions aka “super compact prosecution” shall we call it rather than mere “compact prosecution” where it is just a race to final, is Waste with a capital W in most instances, generally because of other administrative issues.

                1. You can call it what you like, but yes,

                  a better idea: call it what it is and then grow a pair to do the right thing.

                2. LOL – it is “likely agin the lawl” for you to do your Fn job…?

                  …and be held accountable for doing your Fn job…?

                  …and you call this notion of accountability a horrible idea?

                  You, sir are very much a part of the problem.

                3. Doing the job according to you, which is different than what it is according to management, is what is likely agin the lawl idio t.

                4. Name calling while you are the one who does not want to do their Fn job is beyond banality.

                  You are just being an obstinate arse.

                  (Their is NO “according to me” versus “according to the Office” in this discussion, as I have advanced NO “according to me” views – eppur si muove.

                5. So because you didn’t advance it today doesn’t mean you haven’t been advancing it for the last decade? Wamp waaaaah.

                6. Your “Wamp waaaaah. misses – and misses badly.

                  Above you state that you “I always enforce all parts of the law

                  Stick to that.

                  Even if you have to grow a pair to do the right thing.

  6. “Fairness requires candor.”

    The above quote was spoken by a Mr. Sunnstein yesterday in defense of a pile of indefensible junk that would — in a sane world — make every decent patent attorney v0mit violently into his or her own mouth. But not Mr. Sunnstein! Nope. He’s lovin’ his client’s junk claims. A true believer, if there ever was one.

    The “inventor” represented by Mr. Sunnstein (a Mr. Hedloy) “innovated” the idea of “using a button” to dig up “contact info” and save it into a file (totally different from identifying and saving other kinds of info into a file!). “Really smart stuff”, says Mr. Sunnstein.

    Of course there’s nothing “smart” at all about what Mr. Hedloy (the alleged “inventor”) dreamed up. Hedloy is just another w@nker in a nearly endless chain of functionally claimed “do it on a computer” w@nkers who couldn’t innovate themselves out of a cardboard box. But they knows how to kick up a bunch of dust and they know how to play pattycake games at the PTO! And they’ll take the games right up to the CAFC because, apparently, the CAFC has infinite time on its hands to listen to the b0ttomest b0tt0m feeders beg for the worst patent claims ever examined by any patent system in the history of the planet.

    Listen to the farce here as Federal appellate judges (well, just one judge — most of the panel seems to have fallen asleep) argue about what magical (and totally new!) actions that a “small box” in a flowchart is “doing” to “data”. Oops, I almost forgot: one button! So awesome. So shiny.

    link to courtlistener.com

    When is the Supreme Court going to pull the plug on this nonsense? How much worse does it have to get?

      1. 12/963,744
        13/041,210 (board decision here: link to google.com)

        As I noted already, the PTO’s 101 investigations referred to in the post have nothing to do with “patent quality” because the PTO is still a decade (at least) behind the curve. There is nothing “technological” and nothing “non-abstract” about claims that attempt to distinguish their teaching from the prior art on the basis of the “types of information” being processed/identified or where that location is information (“remotely” or non-remotely).

        Computers can be connected to each other, and they can be connected to data storage/transmittal/receiving devices. And these same computers process information. That is the prior art and that is where vast multitudes of PTO Office Actions should begin and it’s where 99% of those same Office Actions should end. But the PTO (with the help of a few dedicated know-nothings at the CAFC who trumpet their ignorance of computer “technology” and its history on a monthly basis) insists on playing pattycake with prior art references that, in many cases, were written with baked-in opacity and wishywashiness.

        1. Typo correction: where that location is information (“remotely” or non-remotely).

          should be: “where that information is located (“remotely” or “non-remotely”).

    1. The turning point comes when the world finally grasps that, at CAFC level, the unassailable collective mindset is that (irrespective how any particular panel dresses up its reasoning, I mean, “abstract” or whatevs) it’s going down the WC if the subject matter of the claim is not “a technical solution to a technical problem”.

      That’s how it always was, and that’s what it will return to, after the present hiatus has worked its way through the system. Judging by experience in Europe, the process takes about 30 years.

      1. At the CAFC level…?

        The world finally grasps…?

        Judging by the experience in Europe…?

        What the F are you talking about?

        Please stop your propaganda that the US sovereign has your desired EP law of “technological.”

        Your “That’s how it always was” is NOT how it has ever been.

  7. This is important: “Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections.” Since Festo, the Examiners don’t appear to have to say anything with regard to this, or make only a very minor allegation that two references could be combined.

    And I think all of these are good ideas.

    1. Without trying to start an argument here, the TSM framework was a good guidepost for requiring examiners to support their obviousness rejections. I think a better application of KSR would be to require highly articulated discussion of combining references absent TSM.

      1. I believe our collective goal here should be to improve the quality of the written prosecution record – both for the patented and the public.

  8. I would like to suggest a seventh study:

    Are Final Rejections going out only AFTER a clear issue has been developed between the Examiner and the Applicant?

    706.07 Final Rejection [R-11.2013]

    Indicates that “Before final rejection is in order a clear issue should be developed between the examiner and applicant.”

    Yet Final second actions are extremely common and I submit that when a first party makes an assertion ( First Office Action) and a second party takes issue with that assertion (Response to First Office Action), only if the first party is persuaded by the second party can a clear issue have been developed. If the first party was not persuaded, the second party cannot yet know why and so a clear issue has not yet been developed….so, second Office Actions rejecting claims, by the Office’s own rules, should not be made final.

    1. Les – I’m not sure I follow your logic. A second final action is appropriate any time the examiner maintains the rejection of all previously presented claims. If the applicant causes the examiner to present a new rejection of a previously presented claim, then a final rejection is not appropriate. Is this correct in your view?

      1. From MPEP 706.07 Final Rejection

        Before final rejection is in order a clear issue should be developed between the examiner and applicant. To bring the prosecution to as speedy conclusion as possible and at the same time to deal justly by both the applicant and the public, the invention as disclosed and claimed should be thoroughly searched in the first action and the references fully applied; and in reply to this action the applicant should amend with a view to avoiding all the grounds of rejection and objection. Switching from one subject matter to another in the claims presented by applicant in successive amendments, or from one set of references to another by the examiner in rejecting in successive actions claims of substantially the same subject matter, will alike tend to defeat attaining the goal of reaching a clearly defined issue for an early termination, i.e., either an allowance of the application or a final rejection. ”

        So, no, it is not necessarily correct, in my view.

        If I argue that contrary to the assertions of the First Office Action element X is not disclosed in paragraph 47, according to MPEP 706.07, I am owed an explanation as to why the Examiner insists element X is in paragraph 47 AND she and I should understand the issue between us BEFORE a Final Office Action is issued.

        1. What in 706 indicates that the applicant should understand the clearly developed issue before final? That appears to be the crux of your arguement. It seems to simply suggest the issue be developed between the parties at that point, not necessarily understood by both parties.

            1. And as I said at 3.1.1.1, that indicates that the issue be developed between the parties, not that both parties fully understand the extent of the issue at the point prior to final action. Your reply to the FAOM makes your position clear to the examiner, and if they disagree you two have a clear issue.

              1. NO.

                I’m sure element X in not in paragraph 47 and I know the examiner said is was, by her copying and pasting my claim into her first office action and inserting (P.47) after it.

                I have no idea why she thinks its there and I have explained why I believe she is wrong. She has not explained why she thinks she is right and she has not explained why she thinks the assertions of my response are wrong. I know there is an issue. But the issue is NOT CLEAR.

                1. Let me follow that up with this, also from 706.07:

                  “While applicant does not have the right to amend as often as the examiner presents new references or reasons for rejection, examiners should not make hasty and ill-considered final rejections. The applicant who is seeking to define his or her invention in claims that will give him or her the patent protection to which he or she is justly entitled should receive the cooperation of the examiner to that end, and not be prematurely cut off in the prosecution of his or her application.

                2. Les, I think Bob is correct here. The issue is created when (1) the examiner rejects, (2) the applicant argues, and (3) the argument is not persuasive with the examiner. What am I missing here?

                3. Not to put words into the mouth of Les, but I think that Les is trying to stress something a little different:

                  is in order a clear issue should be developed between the examiner and applicant

                  This is NOT how it appears that Bob is putting it: a unilateral view by the examiner. Instead the clarity at point is necessary to be had by BOTH applicant and examiner. This clarity is NOT a matter of persuasion. So many “jump to final” is predicated on the examiner response of “applicant is not persuasive,” when the issue (as I think that Les is striving for) is that there is no “meeting of the minds” because (so often) the examiner’s first (key word of claim search based) “examination” is merely rubber stamped by the second office action.

                  This (of course) leads to another occasional “ecosystem participant” – AAJJJ to proclaim his “Appeal Everything” mantra – of which that mantra is based (in no small part) that such is what is necessary to get the examiner “off his duff” and provide a first substantive examination.

                  Just my (highly observant) guess, mind you – 😉

                4. I do not yet know why it was not persuasive to the examiner. The issue is not yet clear to the applicant.

                  Look how many rounds Bob and I and you and I have gone on this simple point and the issue is not yet clear.

                  All the first action includes is an implied assertion that element X is in paragraph 47. Typically, there is no explanation as to why the examiner sees element X. All we get is:

                  Element X (P. 47)

                  Imagine you read paragraph 47 and don’t see element X there. You write a letter saying so.

                  Is there a clear issue there in your mind?

                  No. Of course not.

                  The Examiner has to write back and say, oh sorry, I meant P. 74, or say, I think element R is like your element X, because paragraph 22 says something more about element R, Or because I happen to know element R has these properties.

                  Maybe then there is a clear issue Or, maybe the examiner is wrong about element R.

                  But when then only communication I have from the Office is a First Office Action, quite often a clear issue has not yet been developed, and I dare say no one practicing on this side of the process would tell you otherwise.

                5. >>Look how many rounds Bob and I and you and I have gone on this simple point and the issue is not yet clear.

                  It’s crystal clear to me. You’re reading material into the MPEP which simply isn’t there.

                6. What is “crystal clear,” “Bob,” is that there is NO shared clarity of an issue between BOTH you and Les.

                  That you think that you “know” what the issue is and stammer forth time and again (being wrong) is actually a great microcosm of the CR@P from examiners that really does makes Les’s point far better than any statement from Les.

                7. “This is NOT how it appears that Bob is putting it: a unilateral view by the examiner. Instead the clarity at point is necessary to be had by BOTH applicant and examiner.”

                  That is indeed what Les thinks, but that isn’t what the MPEP is talking about. Standard practice is standard practice, and Les thinks standard practice is tots against the MPEP. Nah bro les, you’re just wanting a free non-f when your argument failed to persuade, and you’re still in the dark because you also failed to present your argument such that it would necessarily get a proper reply. And yes, there are ways of phrasing things that help that happen. And yes, I’m nearly sure you didn’t use any of them, because people rarely do.

                8. “quite often a clear issue has not yet been developed, and I dare say no one practicing on this side of the process would tell you otherwise.”

                  Again, like I told les, the clear issue is that you don’t think x is there, and they think it is. The details of the issue, that underlie this clear issue between you, are a separate matter.

                9. Her failure to respond to your arguement is a separate error. Before you were suggesting that even if she had explained herself on final it would be improper. And 706 does not support that.

                10. I’m still saying that. The issue has to be clear BEFORE final. Making it clear IN the FINAL does me no good because I have no right to amend AFTER final.

                11. I understand that it doesn’t do you good. And I think that in severe situations the examiner probably made an error in the rejection itself. But the MPEP doesn’t say what you want it to say just because it benefits you and your client.

                12. “I’m still saying that. The issue has to be clear BEFORE final. Making it clear IN the FINAL does me no good because I have no right to amend AFTER final.”

                  Which is why you pick up your phone if you don’t want to roll that dice. Or else you put in another set of claims already amended that will clearly distinguish over whatever is in the reference by a mile. Or do both. Did you just fall off the turnip truck?

                13. “She has not explained why she thinks she is right and she has not explained why she thinks the assertions of my response are wrong. I know there is an issue. But the issue is NOT CLEAR.”

                  A. Talk to the spe and have the finality withdrawn if she didn’t answer your arguments with somewhat of an intelligible explanation.

                  B. Great, you know there is an issue, she knows there is an issue, good times, the issue between you is clear in a generic sense anyway. Everyone can tell you two disagree on the presence of X. That’s the clear issue. As to the details, those are a separate matter.

                14. Yeah, I know that what you think.

                  But that’s not the policy. The policy is “Before final rejection is in order a clear issue should be developed between the examiner and applicant.”

                  Yeah, I see “should” and not must or shall. But, “should” doesn’t mean ignore this paragraph. It means should. It means to do it properly and fairly, do it this way. You know, like you should chew with your mouth closed, you should look both ways before crossing the street… etc.

                  Explaining the reason for the rejection for the first time in a final Office Action is not proper…. Hence me suggestion for the study.

                15. “Before final rejection is in order a clear issue should be developed between the examiner and applicant”

                  Yes, and you, by making your argument, developed it. Just because it hasn’t reached the fully explained development doesn’t mean the final should not be made.

                  Why does this not make sense to you les?

                16. Asked an answered. Fairness required that the issues are CLEAR BEFORE a final action is in order, so that on the rare occasion that the Examiner is arguably correct that the claim language could be interpreted in some way the applicant never intended (once the position of the Examiner is made clear) the Applicant is entitled to amend. The Applicant is not entitled to amend after final. Therefore, making the position of the Examiner clear IN the Final is not fair, not appropriate and is too late.

                17. “Fairness required that the issues are CLEAR BEFORE”

                  You’re the one that brought up the issue in your hypo. The issue in 100% clear, as you brought it up. What you’re talking about is whether or not the explanation is clear. Those are two distinct things (as someone tried to explain to you above), yet you keep conflating the two. They’re not the same brosefus.

                18. “Examiner is arguably correct that the claim language could be interpreted in some way the applicant never intended (once the position of the Examiner is made clear) the Applicant is entitled to amend.”

                  You need to sort that out before you submit your first wild ar se assertion that the examiner was wrong in the first instance. Not wait till after he asplains it to you.

                19. “You need to sort that out before you submit your first wild ar se assertion that the examiner was wrong in the first instance. Not wait till after he asplains it to you.”

                  Need to? I would like to. But the requirement is that Office Actions be COMPLETE as to ALL matters. If the First Action does not articulate a clear reason for the rejection, if the First Office Action makes assertions that are incorrect or are not clear, if there is no clear issue developed BETWEEN that Applicant and the Examiner, another NON Final rejection, or Notice of Allowance is in order.

                20. “ut the requirement is that Office Actions be COMPLETE as to ALL matters.”

                  It was complete as to all matters. He says x is in the ref. You’ve been notified of his finding of fact.

                  “If the First Action does not articulate a clear reason for the rejection, if the First Office Action makes assertions that are incorrect or are not clear, if there is no clear issue developed BETWEEN that Applicant and the Examiner, another NON Final rejection, or Notice of Allowance is in order.”

                  A. you already said the the reasons for rejection were clear, he finds x to be present. The office doesn’t have to asplain to you in the first action 10001 reasons why they find every one of a hundred facts they find for your 40 claims that have 1000 limitations. B. Assertions that are incorrect or are not clear are not automatic killers of a final, so long as the thrust is the same it’s all good brosef, you know this. The only requirement is notice, not crystal clarity and completely being correct, like you’re wanting.

                  Bottom line Les, you’re advocating for an unrealistic administrative standard when no such standard exists in admin lawl. If you think the PTO’s fact finding and explaining is pss poor, try dealing with over gov. agencies. You’ll be crawling back to the “expert” PTO immediately. Remember Les, all gubmit is legal tombullying (for the greatar good!), never forget that.

        2. The “clear issue” that is usually found is that the claims are too broad Lester.

          “I am owed an explanation as to why the Examiner insists element X is in paragraph 47 AND she and I should understand the issue between us BEFORE a Final Office Action is issued.”

          Nah explanation can happen WITH the final. Doesn’t need to be “before”.

          In the instance of you taking issue with element x not being in para 47, then that is the clear issue that has been developed. You yourself developed it, though you probably didn’t bother to develop it very far. If you want to utilize the de minus argument “x just isn’t thare!” then that is your right, but if you want to discuss whether the issue is the construction of x, or the findings of fact that x is in the reference, then you need to address both of those paths in your original argument. There’s usually only those two arguments to be made, though sometimes a third argument, whether x can be fairly designated in the reference (due usually to interlocking limitations), so it isn’t that hard. If you think it’s a supar hugely complex situation that you’re not capable of handling in writing then you better get on the phone and develop it out.

    2. Nothing about your comment makes sense. If the examiner was persuaded, there is no issue. If the examiner was not persuaded, the examiner says why in the final action and there is a clear issue.

      Also that paragraph is couched a lot with ‘as/if possible’.

      Also, the senior management will do nothing that endangers the count system. Counts are the root of evil the Office. It harms applicants, attorneys, examiners, and the public to the sole benefit of the management. Applicants getting several chances to develop and argue a clear issue would make the workload untenable and would call the count system into question.

    3. I always thought that “shall” trumps “should”. MPEP 706.07(a), first sentence: “Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).”

      1. Indeed.

        In contrast to:

        >>Before final rejection is in order a clear issue should be developed between the examiner and applicant.

        it also says:
        >>a clear issue between applicant and examiner should be developed, if possible, before appeal.

        706 also has some “as possible” and “if possible”s tossed in there for good measure.

      2. Good point Apotu,

        I think though that there is some attempt here at distinguishing “on the merits” as being the shared and “clear “merits.

        If you do not even have a meeting of the minds as to “merits,” then you have not yet really had a full first action on those shared “merits.”

        I think too that this is somewhat recognized in the Office with their push for more (and earlier) phone interviews.

  9. #3 is a good one to get to the bottom of. Unfortunately when examiners are tossing the 101 rejection into the mix with their form letter, they basically give up on searching the prior art. They typically cobble together a poor 103 rejection from art sitting on their desk. The issue here is that if the applicant overcomes the 101 rejection, the examiner will rarely attempt to improve the search at that later time. The result is poorly searched patents – more “junk” as some would say.

    1. >> when examiners are tossing the 101 rejection into the mix with their form letter, they basically give up on searching the prior art.

      Ah, you seem to be in possession of an early copy of the study results. Care to share that with the rest of the class?

        1. Snarky and a bit pointless. “Bob” apparently jumped to the assumption that you had some study results when your post actually sounds more like a personal experience that would drive the reason to undertake the study in the first place.

          Then again, “Bob” is the same guy that constantly ‘upvoted’ Malcolm in the DISQUS days, so we can just consider the source.

        2. To be fair, you initiated the snark with your anecdotal comment.

          I’m very much looking forward to this study (#3) in particular because while in my limited experience 101 is not used to bypass compact prosecution, I’m a critical enough thinker to realize I shouldn’t draw conclusions from my experience.

          1. The anecdotal comment is NOT snark – as I indicated, it appears to serve the as an example of the basis for the investigation and upcoming report.

            Methinks you are overly sensitive “Bob.”

          2. Bob – are we really arguing on this blog that examiners use pre-canned boilerplate in 101 rejections? I’m not placing blame on the examiners for 101, which is a travesty created by the Supremes. I’m speaking to the 103 rejections, which (in my view, although this will undoubtedly be demonstrated soon enough) have fallen considerably in quality when coupled with a 101 rejection.

            1. Personally, I think it is more likely that 103 standards are dropping across the office in general, which is at least somewhat supported by practitioner complaints and the existence of study #4.

    2. iit The result is poorly searched patents – more “junk” as some would say.

      As anyone who has been attention to the PTO’s operating procedures for the past decade knows, whether or not there is “more junk” is a secondary consideration.

      The most important consideration — bar none — is pleasing The Most Important People Ever, i.e., the perpetually whining class of “shareholders” who insist that they are entitled to patents that protect logic and information in any computer-related context.

      1. MM – note that I’m concerned here about “junk” getting through the office due to the low quality substantive rejections being raised in parallel with 101 rejections. For the record, I’m not blindly pro-patent in every scenario. I think we all want a decent examination on the merits.

        1. Absolutely Iit (this mirrors my own statements that ANY rubber stamping is bad, be that rubber stamping be “Reject Reject Reject” OR (blindly) “Accept Accept Accept”) but that does not fit Malcolm’s very tiny script (nor his self-appointed mission to guard the fields of rye)

  10. Remember when the USPTO was super concerned about applying 103 consistently across art units?

    Me neither.

    1. You appear to (purposefully) confuse consistency across art units with the requirement to apply Person Having Ordinary Skill In The Art which dictates that the Arts are different, one from another.

      It is NOT as you attempt to spin a matter of inconsistent application of 103, it is a matter that you have this pre-determined mantra that certain arts simply should not be afforded patent protection.

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