GAO: Patent Office Must Define and Improve Patent Quality

The Government Accountability Office (GAO) has published two new reports on Patent Office Activities along with the results of a major survey of 2,600 patent examiners.

Regarding patent quality, the GAO suggested that the USPTO’s standard of patent quality should focus solely on the basics: defining “a quality patent as one that would meet the statutory requirements for novelty and clarity, among others, and would be upheld if challenged in a lawsuit or other proceeding.”  However, patent clarity must be an important element of that definition.  The GAO writes:

GAO estimates that nearly 90 percent of examiners always or often encountered broadly worded patent applications, and nearly two-thirds of examiners said that this made it difficult to complete a thorough examination. Without making use of additional tools, such as a glossary of key terms, to improve the clarity of patent applications, USPTO is at risk of issuing patents that do not meet statutory requirements.

The reports were requested by Rep. Goodlatte in his role as chair of the House Judiciary Committee.  I expect that Rep. Goodlatte will hold hearings with PTO representatives in the fall to focus on ways to move forward.

 

623 thoughts on “GAO: Patent Office Must Define and Improve Patent Quality

    1. Is the fault “doing it” or “getting caught doing it”…?

      Do you really think that the republicans do not have a similar mechanism?

      1. You seem to have less concern for the letter of the law in this area than you do for discussions of obviousness.

        1. Les,

          Do not take my question as any indicator of my level of concern.

          I have been rather outspoken that BOTH parties are nothing but “politicians” (in the worst connotations of that word).

          The question here is geared to 6 (and the flip side of to whom 6 is gen erally opposed to on this political question) and the (odd) notion that “it is only the other side” that is dirty.

          As to patent law – clearly – there is NOT the same type of “both-sides-are-bad” AND there is clarity to be obtained in understanding the law as it is (shadows and all ;-) )

          1. Well anon Idk bro, as of now we only have evidence of the one side. The other side may do similar, or they may do it to a lesser extent, or nearly not at all. Republicans are well known for generally being more of a “good governance” type party. I’m not going to say they’re squeaky clean on this front, but they likely are less dirty imo.

            1. The other side may do similar, or they may do it to a lesser extent, or nearly not at all.

              It’s a total mystery!

              LOLOLOLOLOLOLOLOLOLOL

            2. 6: Republicans are well known for generally being more of a “good governance” type party.

              Also “family values”!

              So, you know, you can totally trust them. Because “well known.”

              And 6 says so.

              Keep the laughs coming! This is going to be an awesome weekend.

              1. MM, how times of changed. Once the main argument against Nelson Rockefeller being the Republican nominee was because he was divorced – that and that there was not more than a dimes with the difference between Rockefeller and any Democrat. (New York Republicans and all that.) Now the party nominates Trump, twice divorced and a notorious philanderer. So much for family values.

                Actually I think the Republican bar against somebody being divorced being one of their nominees was removed when Reagan was there nominee and eventual president. Reagan himself was divorced and apparently had an affair with Nancy Reagan while he was still married.

                Again times have changed.

                Recall that Ted Cruz made a big deal about Trump’s New York values. What he obviously meant that the New Yorker’s have a different view on family values then most in the Bible Belt. Still they nominated Trump.

                So what I would we to conclude?

                Looking back, I think that Nelson Rockefeller would have been a great president. It is too bad that he was denied the Republican nomination because he was a divorcee.

                1. Times have changed, they have always been changing, and they are going to continue to change.

                  I’m sure you saw in the news this week that back in 1995 Walmart pulled “Someday a woman will be President” off their shelves because — try to believe this — it went against “family values.” Those of us who were alive and politically aware 20 years ago will remember those days well. Fallwell, Bakker, Swaggart, Dobson, Robertson … Just a huge pack of mis0gnynist reality-denying hypocrites with micr0phones far out of proportion to the worthlessness of their b0gus message. Their train started to go off the tracks in the 80s. Good riddance.

                  30 years prior to that, of course, it was still normal and legal in many states — entire states — to discriminate against voters on the basis of race. And that’s still going on today. But for vigorous gerrymandering and transparent vote suppression by Republicans, the modern GOP would be in even worse shape than it is in 2016 (I know — hard to imagine).

                2. MM, I recently saw the movie about Jessie Owens and the ’36 Olympics. I think it portrays accurately that the US was then as racist as NAZI Germany.

                  We have come a long way.

                3. “try to believe this — it went against “family values.””

                  Sounds agin fam values.

                  “Just a huge pack of mis0gnynist reality-denying hypocrites”

                  They hate women sooooo much that they pamper their wives for their entire existence. Dagnab woman haters! Didn’t they know their wives and daughters would only be happy unmarried/divorced and slaving away for a corporation somewhere?

                4. Wow – do you realize how chauvinistic you are coming across 6?

                  This is how you sound: Because women are naturally weaker and need to be protected from what us He-men folk have to suffer through, it is only right and just that us He-men folk make the decisions for the weak women. We cannot have our property subject to such mistreatment as the equal opportunity to be out in a corporation somewhere, or deciding that they have the power to get out of being married to us He-men folk. We need to protect them.

                  THAT is how you sound.

                  You may not mean that. You may not even be aware of that. But you rather prove Malcolm’s point with your response here.

                5. “This is how you sound”

                  Yes, I know that’s “how it sounds” to a rta rded far left liberal mind. But more and more women are waking up to why that mindset and that twisting of my words to insert “need” and “weaker” is a load of horse sht and just the result of reverse “propaganda” (like you like to say). And likewise inserting the idea that mans need to decide for women. Nowhere did I say anything about that. Or inserting the idea that I’m against “equal opportunity”. Never said that either. “Equal opportunity” does not equal the current climate of trying to force/cajole/”encourage” women into the corporate rat-race so that liberals can attempt to get “equal outcomes” (which is the liberal’s true “goal”) to make themselves feel warm and fuzzy inside. Likewise, women themselves are choosing on their own more and more nowadays, with an advanced understanding of the consequences after being fairly informed, to not embrace the “liberal mindset”. Whoopsie though, now women of my generation are screwed, figuratively screwed by liberals/liberal mindset and literally too screwed in too many cases to get out of it and into what they now decide they want.

                  Let’s be clear anon, I benefit a lot from the liberal agenda. I get to happily bang young women currently suffering from it. Who suffers are men that can’t get those women, much less get them to marry before 30 so that they can responsibly start a family before the women is of “advanced maternal age” (medical term for when babies start having more birth defects around mother age 30+), the women themselves (less wealth/happiness etc. etc.), and society (underline society). Only on the tail end of who gets the sht end of the stick do I even start to appear. And yes, I still identify as a gay trans black jewish muslim agendered individual so you can’t say anything bad about me because I won 1st place in the oppression olympics last year.

                  “You may not mean that. You may not even be aware of that.”

                  No, I’m well aware of it as of a few years ago. And no, nobody that says that “secretly means” what you said. Though you are quite right that liberal brainwashing causes the issue of them not being able to comprehend plain English. It’s precisely that liberal mind-twisting of words done in minds brainwashed by liberals of yesteryear that is doing horrible damage to this country. Demonizing people (men and women) for just wanting to be left out of liberal social engineering and left to go about their business/create society.

                6. ” to a rta rded far left liberal mind.

                  By no means can I be considered such – and that is how you sounded to me.

                  Nowhere did I say anything about that

                  Wow – it’s worse than I thought: you are not even aware of why you sound like that.

                  Who suffers are men that can’t get those women” – and the comment prior which I will not deign to repeat….

                  doubling down on the misogyny is not any way to change the perception you are creating, 6.

                  And yes, I still identify as a gay trans black jewish muslim agendered individual so you can’t say anything bad about me because I won 1st place in the oppression olympics last year.

                  Great – but you have mistaken me for someon who buys into the whole “political correctness” thing.

                  I don’t.

                  But that is still not the same as what you are painting yourself as, as not buying into the whole “oppression” thing is just not the same as treating everyone on equal standing.

                  I would be one of those that rejects the liberal agenda and political correctness.

                  You do not stand where I stand though.

                7. “By no means can I be considered such – and that is how you sounded to me.”

                  Anon we both know you’re from “liberal central” bro. You’ve been indoctrinated since birth or at least a young age. Just as we all have.

                  “Great – but you have mistaken me for someon who buys into the whole “political correctness” thing.”

                  After anon makes a whole post about his politically correct “interpretation” of how I “sounded” he purports to not “buy into” the whole politically correct thing.

                  Lulz.

                  “I would be one of those that rejects the liberal agenda and political correctness.”

                  Mhmm. I see, and that’s why your mind immediately concocts a PC “interpretation” of “how I sound”.

                  Bro, you’re at best “recovering” from PCness after having “rejected” it. At best. You have many miles yet to come to normalcy.

                  “But that is still not the same as what you are painting yourself as, as not buying into the whole “oppression” thing is just not the same as treating everyone on equal standing.”

                  Painting myself as? Lulz wut? I’m a homeless guy on the side of I95 as I’ve always said.

                8. Just as we all have

                  O Rly…?

                  Even “homeless guy[s] on the side of I95” or “ gay trans black jewish muslim agendered individual[s]”…?

                  So how does this seemingly universal “indoctrinated since birth” conspiracy work?

                  And why is it that (despite your flimsy protests), I have in fact ALWAYS rejected political correctness, and have been consistent in that view on these boards?

                  Maybe you want to look at the archives for the Washington Redskins articles…

                  After anon makes a whole post about his politically correct “interpretation” of how I “sounded” he purports to not “buy into” the whole politically correct thing. Lulz.

                  and

                  Mhmm. I see, and that’s why your mind immediately concocts a PC “interpretation” of “how I sound”.

                  Not sure why you are “lulzing.” One does not have to be politically correct to be able to independently think and see that you fit the caricature that the politically correct would use. You seem to want to do the Malcolm thing and paint anyone not agreeing with you as being in the opposite camp. Life is just not “polar” like that my friend. Critical evaluation does NOT mean that I belong or espouse the opposite side – and clearly, – so very clearly – I am NOT on the “PC correct side” nor on your side.

                  Bro, you’re at best “recovering” from PCness after having “rejected” it. At best. You have many miles yet to come to normalcy.

                  Now THAT deserves a “lulz.” You attempting to use “normalcy.”

              2. Come on man, they’re as goody two shoes as they come for the most part. That’s precisely why you lurve the democrats, they’re so edgy and “cool” and “hip” and “full of lurve for mah fellow man, man”.

            3. Stuck in filter and in pieces trying to get it out of the filter….

              July 29, 2016 at 6:21 am
              “Well anon Idk bro, as of now we only have evidence of the one side.”

              And that’s exactly why I phrased the question as I did.

  1. Dennis, my reply to #35 just now has attracted the “awaiting moderation” flag. Being hopelessly naive, I cannot imagine why, so I’m at a loss what to amend, to get my posting through.

    If you think it nevertheless OK to reveal to readers, I wonder, can you “moderate” it please?

  2. Under public choice theory we have created a PTO structure that provides an incentive to reduce patent quality and increase the size of the agency. On the one hand, PTO folds to pressure from the inventor/start-up class to issue patents but on the other hand the PTO folds to pressure from the infringer class to invalid patents under the AIA. At both ends, the PTO can make claim to the need for more resources (agency growth and expansion) which of course is the natural position of an agency under public choice theory.

    Thinking outside the box here but … imagine a structure to create incentives for efficiency and quality:

    First, make PTO an independent agency – as recommended by the TAFT commission – to get the executive tampering (favor factory) out of the system.

    Second, divide the rolls of investigator, advocate and judge:
    Task examiners as the investigator for rejection –

    Task inventors (and counsel) as advocate for allowance –

    Task supers – as an intermediate QC on the briefings and advocate for examiner in producing the best work product. Teams within groups can work together to maximum effect for both quality and volume – teams can be objectively measured, scored and compensated.

    Task three person APJ board – to accept or reject claims based on the application/claims/briefs from the two advocates one from the group and one from the inventor.
    -Appeal under old 145 or 132? for De Novo district court of CAFC record only court. Due process satisfied.

    Give an applicant three times at bat – and then finished. That’s all the process you get.

    Repeal re-examination and IPR. Therefore, removing the incentive to issue poor quality patents and politically tamper. Satisfying 7th amendment, due process and separation of departments.

    1. Incentives to lift “quality” higher?

      Me, I would inject a bit more caveat emptor into pre-issue proceedings at the USPTO. You know, bring back on to the owner the consequences of pushing dodgy stuff through to issue. Let Applicant police itself. It’s the cheapest, most effective, way to restore civility.

      Compare, in this respect, the USPTO and the EPO.

      At the EPO, this principle reaches its apogee in the Art 123(2)/(3) EPC “fatal trap”. It goes like this.

      In prosecution, you amend claim 1, narrowing it down to something patentable. You go through to issue, but:

      Then somebody files opposition, under Art 123(2) EPC, contending that the amendment to claim 1 added matter. You find you cannot amend out of the problem, because Art 123(3) EPC forbids any amendment that widens the scope after issue. Result: patent stone dead. If that doesn’t penalise poor drafting and “aggressive” prosecution, I don’t know what would.

      Just as official fee scales can manage Applicant behaviour (think claim numbers) so can measures like Art 123 EPC control Applicant behaviour.

      Me, I think the biggest mischief F-ing up relations between the USPTO and the Applicant community is the “presumption of validity” which rewards Applicants in proportion to how “aggressive” they are, in pushing borderline stuff through to issue. BRI is the antidote but, as we all know, two wrongs don’t make a right. Instead, as under the EPC, give no deference after issue to the work of the PTO prior to issue. With that, the USPTO Examiner becomes your counsellor, no longer your adversary.

        1. The C+C presumption of validity is a feature of the patent law of the USA but nowhere else in the world. To that extent, it, not me, is “strange”.

          Further, the USA-strength presumption of validity does have consequences for the USA.

          I’m not fixated on it, but merely point out one of the consequences.

          It is the sovereign decision of the USA whether to cling to it or do away with it and harmonise with the rest of the world. But any such decision does have consequences.

          1. No, you ARE fixated on it and you attribute all sorts of parade of horribles to its existence, while fully neglecting the plain fact that it is a portion of the Strong patent right that has gone hand in hand with the US being the world’s premier location of innovation.

            The negativity of your view coupled with the “that’s not done here with what I am familiar with” exhibit a rather extremely closed mind of yours.

            1. Ah, the “Having English as one’s first language is what causes heart disease” riposte again, Dogberry. Very poor.

              1. Another grade of F.

                U really need to drop the poor logic while engaging in name-calling, MaxDrei.

                There is no “English language” type of logic going on when it is clear that a strong patent is what promotes innovation.

                Your bias against patents is quite clear.

      1. There is no presumption of validity at the examination stage. There is however, a statutory right to a patent, if it meets all the standards. This comes from the structural framework of the Constitution.

        1. No presumption? Not sure about that, Iwas. What else but a “presumption” is it, that what Applicant files is deemed to be worthy of a patent unless the PTO can come up with a reason to refrain from issuing a patent?

          But that is not my point. As far as I know, every Patent Office in the world operates under that presumption.

          No, what I mean is the unique USA approach, of setting up, after issue, an asymmetric presumption of validity. Every other jurisdiction weighs patent validity under the ordinary civil disputes “more likely than not” standard, symmetrical as between the parties to the dispute about validity.

          Dogberry accuses me of being an anti. That’s not right. I spend much time working with clients with good patents of their own, that they want to enforce, but these clients are often frustrated by bad patents issued to their competitors, that deserve nothing more than a quick extinction. What I want is a patent system that swiftly enforces good patents, with injunctive relief, while just as swiftly terminating bad patents that are an impediment to the progress of the useful arts.

          1. Dogberry accused

            Another grade of F.

            U really need to be able to recognize your own bias MaxDrei.

            The sense of “anti” here is anti-strong patent.

            Your trite reply about language and disease solidifies the fact that you are chasing one of your windmills.

            Clearly, strength of patent is directly related to this US feature (else you would not be whining about it). No matter how much you kick dust, you want a weaker patent because of what you see as “abuse” in obtaining the stronger patent.

            Your mindset is very much like “the operation is a success even though the patient expired”

            You cloak this is the sheep’s skin of “well everyone wants quality patents, right?) when THAT is really a non-sequitur to the US strength of a granted patent.

            This diverts attention from where it belongs: focusing on the examination in the FIRST instance and doing the job right the first time. You would weaken ALL patents just with a band-aid that does nothing to help correct the actual problem.

            No thanks.

            1. Your view is founded on a misapprehension: that ex parte examination of applications at the PTO can ever (regardless of expense) distinguish what is patentable from what is not. It can’t.

              My view is built on the experience, since 1978, of about a thousand inter partes post-issue oppositions per year at the EPO.

              1. Your opinion here is as incorrect as your lack of admitting your bias.

                What are you on about with this “distinguish patentable from what is not”…?

                Are you really saying that examination at the PTO is worthless? Like in totally worthless? Like in ‘we should just scrap examination and go to a registration system’ type of worthless?

                You also seem to be forgetting your respect for sovereigns making their own choices (again).

          2. If we removed the presumption after issue and we could repeal reexamination and IPR – we have a deal.

            1. It’s a good thing that you are not negotiating for the “pro-patent” side, there Iwasthere.

              You want to give away the strength of the presumption (a factor that wards off the Big Corp, Transnational serial Infringers*** and their goal of efficient infringement) for something that will likely fall anyway due to Constitutional concerns…?

              No thanks.

              ***See Microsoft v. i4i

              1. Well, you will still have presumption of administrative correctness. I wish I was as confident as you that SCOTUS follows the Constitution.

                1. ???

                  Do you read my posts concerning the Supreme Court and their judicial muckery…? their addiction to sticking their fingers into the wax nose of 101…? my chiding of Ned to not place the Supreme Court above the law with his elevation of that branch of the government above the Constitution and somehow (of course, improperly) above the separation of powers doctrine…?

                  Your reply concerning SCOTUS confidence seems as off as your now RE-asserting the presumption of administrative correctness (which, by the way, would become worth zero with your proposed “negotiations” with MaxDrei).

            2. ps. You would be better off negotiating a deal of the presumption for the elimination of the examination system.

              Since NO examination and registration only would place you in the same spot concerning the presumption, you could save the innovators several Billion (yes – that’s with a B) dollars by eliminating the Office and for probably less than a million simply have a “library” type service for registration.

    2. Good post.

      I especially appreciate the recognition that allowing “stakeholders” to lobby the PTO, where the stakeholders only incentive is to reduce costs and to expedite allowance, has to be stopped.

      Ditto the infringer lobby whose only interest are in extremely high quality regardless of cost.

      The purpose of the patent office is to assure that the patent application complies with the law. Specifications have to be adequate to support the claims, the claims have to be clear and particular, and they have to define over the prior art.

      We all know that the patent office is not been doing a great job at any of these fundamental tasks. They need to not tweak, but to consider alternatives. I think we all can agree that the EPO does a good job in examination. Perhaps we ought to study and adopt their procedures, their rules, and adopt, as best as possible, their views on inventive step, because they cannot fundamentally be any different than our requirement for nonobviousness.

      1. Ned, I give up. I just tried to post you something but it has been caught by the Awaiting Mod filter. No idea why.

    3. iwasthere,

      You started out interesting enough – the whole “public choice theory” angle and all, but then you fizzled – and fizzled badly (the first clue was the Ned-glomming-onto-you since you wanted to repeal re-examination and IPR).

      Let me point out a few things for you.

      There is no such thing as “PTO folds to pressure from the inventor/start-up class to issue patents.” I do not know what fantastical powers you think this “group” has, but whatever you are smoking, Just Say No.

      You do know that there is a mindset in the Office to GET more points by saying “no,” right***? You do know about SAWS and other SAWS-like mechanisms to enforce a Just Say No, right?

      Not sure how you think that this turns into a mechanism for “growing the Office” and I am sure that you are aware that the NET budget is zero, right?

      Setting that aside for the moment, your “thinking outside the box” is anything BUT thinking outside the box.

      What is there that is new or innovative (that is, that is not extremely “hand-waved”: like your “ teams can be objectively measured, scored and compensated“. That’s a pretty BIG Deus ex machina.

      Also, where does the “give the applicant three times at bat” CRP come from? I mean, other than the failed escapade of Tafas that is….?

      Then coming to the Ned-bait, you say that repealing re-exam and IPR removes the incentive to issue poor quality patents…..

      You do realize that the exact opposite was the rationale for putting those devices into place, right?

      ***yes, the double play of Just Say No is on purpose. ;-)

      1. Anon, can we all agree that a quality specification, a good prior art search, and clear and particular claims, will lead to a patent that is easily enforced? There should be no question regarding support, validity or infringement.

        So why is it that patents are issued in such great numbers with bad specifications that do not even tell you what the invention is, claims that cannot be parsed, and where enforcement is dicey at best because one never knows where claim construction is going to go in court?

        Is this the problem of the patent office?

        1. This is not a discussion of best practices Ned.

          This is a discussion about what the Office can control – it’s own process. And that process should be robust enough to handle all types of input.

          You have fallen for the “shiny” of “blame the applicant” when you should be focusing on the Office processes.

          (Implicit – again – is somehow the notion of “forced” to issue; which you again seek to blame the applicant. Stop placing blame for the Office process of letting that type of stuff through on the applicants)

          1. anon, the Office’s job is not to do the applicant’s job, but to simply see that the application complies with the law. But with poorly drafted applications, this is almost impossible. Somehow I think applicants expect the patent office to do their job for them by identifying and fixing every potential problem with an application. Of course the patent office will try to do that, but if the application itself does not describe the invention with any clarity, claims invention with abstractions that have no understandable meaning to one of ordinary skill in the art, and/or has no working examples or specific embodiments of how to actually build and use the invention, then the resulting patent is going to be almost unenforceable. Any litigation involving the patent is going to be enormously expensive just to figure out what is going on. Secondly, proving infringement is going to be hard. Trust me I have been the litigations with very poorly drafted applications and/or poorly prosecuted applications. They are nightmare to enforce.

            Quality is not the job number one of the patent office. Is job number one of the applicant if he wants a valuable patent.

            1. You have drunk the Kool-aid of the “shiny” – now with the inane notion that applicants expect the Office to rewrite the application, which has ZERO bearing with reality.

            2. Quality – of what the Office does is ABSOLUTELY job number one.

              Maybe Ned, you ought to read and see that THAT is precisely the issue (and NOT the “blame the applicant” game that you want to play).

      2. Well, let’s assume (1) that the regulating agency is going to get captured by the regulated that has the most hard $$ involved (the serial infringers) and (2) the regulating agency by its nature seeks to expand both in head count and subject matter. As you know, I have strong views, that the Executive department should not have reexamination (unless requested by the patent owner) or IPR powers because this power only resides in the independent judicial department and the 7th Amendment.

        So, if they Agency is going to be captured anyways, without IPR’s the only avenue for the serial infringer is to raise the bar on the front end – and issue fewer patents. I, therefore, moved the Board to the front end of the process – to afford due process to the applicant – to basically ‘sue out’ the patent right – and changed the roll of the examiner into investigator and the group to advocate for not allowing the patent to issue. In this structure, every patent is ‘sued out’ of PTO. The group can – drop the charges – and allow the patent – or the board can decide for the applicant and allow the patent – or the applicate can ‘sue out’ the patent after the Board.

        Without question, there is an institutional problem with an Agency invalidating well over 50% of its own work product, when that work product is important enough to seek enforcement. See the post re: IPR stats.

  3. What I find to be very interesting is the call to examine (ha!) the impact of Compact Prosecution on search quality.

    There are pretty glaring problems with the practice just at first look. If a claim is rejected as being indefinite in scope how can the full scope of that claim be searched? If a claim is not supported by the original filing or is not statutory subject matter then what on earth is the point in doing a prior art search and rejection before that has been cleared up, as clearing those up often requires changing claim scope?

    But beyond those sorts of issues I think there are also more subtle ways that it results in wasted time. It is often the case that a broad claim can be reasonably interpreted multiple ways: one interpretation might require a search right in line with an embodiment presented while the other would best be searched in a different section of the prior art. Where should the search be made? If the invention is intended to encompass both fields then searching both is proper, but if the second interpretation is just a case of the Examiner being unreasonably broad or Applicant using a word that had a meaning they didn’t consider during drafting then searching the second area is a massive waste of time that could have been better spent drilling down into the “actual” invention via more robust NPL or foreign patent searches.

    Searching both leads to why examiners say broad claims are difficult to properly search and reject – completely searching a narrowly defined section of technology is relatively quick and choosing between two or three references that are close to the invention is normally just a matter of picking the one which best matches the dependent claims or best lays out the case for combination with a different reference. But searching a bunch of non overlapping fields takes a long time to even do poorly, and picking between ten completely different but still applicable references is nearly as impossible as it would be for the examiner to maintain production numbers if they were to issue a rejection using each of them.

    If we were designing examination from scratch I would say there needs to be a sort of Markman stage right at the beginning where the Examiner goes down the claims limitation by limitation and states “this is what I’m interpreting this limitation as and why” or “this is indefinite because XYZ”. Then a chance for the Applicant to reply and either agree, point out where the examiner is being too broad or too narrow, or amend to get rid of an unintentional interpretation. Don’t move forward until all are in agreement and be sure to hold both the office and the applicant to the agreed upon interpretations. Then check for eligibility and support before finally moving to search and prior art. Even in applications where it doesn’t cut search time any at least then the application file has a nice clear listing of what the claims encompass.

    And while I’m dreaming I would like a pony too.

    1. Excellent post Derigib.

      I would merely point out that breadth does not mean indefiniteness. So if a word is broad, and multiple meanings may fit, then all of those multiple meanings need to be searched.

      Do NOT rip my client off based on the internal metric of you doing your job – “production numbers” at the expense of actual production is the wrong approach. This point has been emphasized several times in this thread. Any type of artificial (and thus arbitrary) limit based on some “same-widget” metric cannot supplant just what it takes to do a proper job of examining a particular application. This is the crux of the problem: the desire to put the horse before the cart and focus on “ease” of the job at the expense of actually doing the job.

      That is why I suggested an initial review to gauge each application and provide a range of expected time to properly examine based on the application itself.

      The examiner approaching claim construction like a Markman hearing is something that I too have suggested (that did not go over well with the examiners that comment here).

      1. “would merely point out that breadth does not mean indefiniteness. So if a word is broad, and multiple meanings may fit, then all of those multiple meanings need to be searched.”

        Of course and I hope my post didn’t indicate otherwise.

        A per application determination of expected time sounds better than what is in place now but it would still be an arbitrary limit and I worry that it would open up a real can of worms. If one applicant gets 45 hours of examination for their filing fee but your client gets 4 for the same price, are they getting ripped off? Should examination instead be billed by the hour past a certain limit?

        Of course the number of hours you get for the filings fee is already extremely variable depending on the (often wrong as noted by the GAO) initial classification of the application, so maybe it isn’t as bog a deal as I am making it out to be.

        1. You raise a decent point, but I would hasten to add that the “time allotted” is STILL an internal metric and at the end of the day is NOT a “gee, I’ve reached my time limit so I guess I just stop now” type of thing.

          The paid for item is NOT the time but the task.

          Still.

          The change is just a better way for the Office to measure its worker performance of the task – not to be confused with the task itself.

          But your point about “gaming” would need to be accounted for in that the “management” (and distribution of assignments) would need to be separate from the function (and people) doing the grading and time-bucketing.

    2. I think that the PCT search guidelines represent a very common-sense position

      “Full Coverage Rule 33.3(b)

      15.25 In principle, and insofar as possible and reasonable, the international search
      should cover the entire subject matter to which the claims are directed or to which they might
      reasonably be expected to be directed after they have been amended. For example, where
      an international application relating to an electric circuit contains one or more claims only
      directed to the function and manner of operation, and the description and drawings include
      an example with a detailed non-trivial transistor circuit, the search must necessarily include
      this circuit. Nevertheless, reasons of economy may make certain restrictions of the
      international search necessary, for example, when there is a broad claim and many
      examples and it is not possible to foresee which will be the subject of amended claims.

      Speculative Claims
      15.26 No special search effort need be made for searching unduly wide or speculative
      claims, beyond the extent to which they are supported by the description. For example, if in
      an international application relating to and describing in detail an automatic telephone
      exchange, the claims are directed to an automatic communication switching center, the
      international search should not be extended to automatic telegraph exchanges, data
      switching centers, etc., merely because of the broad wording of the claim, except if it is
      probable that such an extended search could produce a document on the basis of which a
      reasonable objection as regards lack of novelty or inventive step could be established.
      Likewise, if a claim is directed to a process for manufacturing an “impedance element” but
      the description and drawings, relate only to the manufacture of a resistor element, and give
      no indication as to how other types of impedance elements could be manufactured by the
      process of the claimed invention, extension of the search to embrace, say, manufacture of
      capacitors, would not normally be justified. However, if a meaningful search based on a
      claim that is not supported by the description can be carried out without much increase in
      effort, the search should be extended to cover the claimed subject matter that is not
      supported by the description if the scope of the claim is not unduly wide.”

      I have long been of the view that “broadest reasonable interpretation” often extends claim scope far beyond what is reasonably to be inferred from the actual language used, and is the result of a special mind-set within the USPTO. In accordance with the PCT Guidelines, more is to be gained by striving for and applying “correct interpretation”. In arriving at such interpretation, attention needs to be given to the specific description, and in accordance with PCT guidelines, the various disclosed embodiments.

      1. Excellent comparative post Paul – with (of course) the caveat that our sovereign has in fact chosen differently.

        As you have made clear, your citizenship prevents you from asking our sovereign to change the “rules of the game.”

        Those rules ARE different.

        To simply accept that THAT difference is somehow “bad” or “needs to be changed” however, is not proper – without more.

        I would suggest that you contact your congressmen, but as noted, this is just not within your rights.

        Short of that, and not merely presuming that what your sovereign has chosen is “better” or even “worse,” the system we have had here in the States (until somewhat recently) HAS been associated with the worlds BEST innovation results (I need not venture into any type of cause/correlation discussion).

        Changing just to match “what others are doing” is at best unthinking, at medium unwise, and at worse a game of the TRANS-national seeking to “pull the ladder up behind them.”

        No thanks

        (btw, you make an excellent point by tieing in BRI)

      2. Yes, non-U.S. PCT prior art searches are usually [not always] better than regular PTO prior art searches. They should be, since they cost a great deal more than most U.S. applicants are willing to pay the U.S. PTO for a prior art search, or, for even a modest private prior art search before filing that would lead to much better claims and specs. [Not even to mention the other foreign application fees.] You and anon are comparing the performance of a Cadillac to a Yugo without consideration of the cost differential.

        1. Not so fast there Paul – I am NOT the one confusing sovereigns here.

          I am not the one “comparing performance” in a seeming vacuum – I am the one pointing out that you DO have some very critical differences.

    3. Derigib, Whatever the tweaks on the procedure, all are beginning to recognize that compact prosecution is inconsistent with quality prosecution unless one considers the RCE to be what it purports to be, continued prosecution — and a payment for an additional search.

      If applicants do not want to get to an RCE, they need to conduct their own search and also file very clear and not overbroad claims to begin with.

    4. “If we were designing examination from scratch I would say there needs to be a sort of Markman stage right at the beginning where the Examiner goes down the claims limitation by limitation and states ‘this is what I’m interpreting this limitation as and why’ or ‘this is indefinite because XYZ’. Then a chance for the Applicant to reply and either agree, point out where the examiner is being too broad or too narrow, or amend to get rid of an unintentional interpretation. Don’t move forward until all are in agreement and be sure to hold both the office and the applicant to the agreed upon interpretations. Then check for eligibility and support before finally moving to search and prior art. Even in applications where it doesn’t cut search time any at least then the application file has a nice clear listing of what the claims encompass.”

      This is a good suggestion. The pre-first action interview program has some aspects of this, although the examiner does conduct a search before the interview.

      The problem with the current system is that it gives examiners incentives to find a reference that “reads on” the broadest UNreasonable interpretation of the claim and send out the OA chiding the applicant along the lines of, “See how broad your claims are? Even this reads on them.” And then when applicants amend the examiner changes the reference and makes the action final. That’s not in line with the letter, or the spirit, of the rules or the MPEP. But it happens all the time.

      I’m all for examiners putting their claim construction/interpretation on the record for applicant to review, discuss, and challenge. And I agree it should be done before any search is undertaken.

      Get POPA and PTO management to work out a new PAP to implement such a system and you got a deal.

      1. Put in the deal that the office has the authority to require claims to be put into formal language and then perhaps you have a deal. Otherwise you have a little less than half of people that like to draft claims in the hint hint nudge nudge “you know what I mean” kind of language that is informal to express what they are substantively trying to cover and those people have to be dealt with. Currently they get dealt with by “reading the claims broadly”, but a mere authority to require formal language be used would nip the problem in the bud immediately.

        1. You cannot require a “formal language” type of requirment for things that are on the leading edge of innovation.

          I certainly hope that I do not have to explain why – your idea is even worse than the one-widget-size-fits-all.

          1. “You cannot require a “formal language” type of requirment for things that are on the leading edge of innovation.”

            Sure I can. Indeed I already do, and its worked out just fine for everyone involved. The vast majority of folks don’t have any problem with it. Especially foreign filers who are the worst offenders in the first place. And I’ve never had anyone have a large problem with it.

            It helps quite a bit with clarity of claim scope and according to yonder USSC one of the PTO’s roles is ensuring that.

            1. At 34.1.1 you ask for the authority to do something that you then turn around and boast that you already are doing…?

              Think about what that says for just a moment.

              1. Yes but it isn’t a formal authority. How I wield powa in the office for the betterment of all is my own issue. Having it be made a formal power for the whole office is completely different. 1. It will put applicants (and moreso their attorneys) on notice that it will be done. 2. The agency then has explicit regulatory or statutory power and doesn’t have to rely on its own inherent powers being wielded by yonder minions on a case by case basis.

                1. LOL – your “wielding powa… is my own issue” is different how exactly from my comment below at 34.4.1.2.1.1, cowboy?

                  Take a step back and think about it for awhile there, fella.

        2. I honestly don’t know what you mean, or even contemplate, by “formal language.”

          Here’s an idea (not mine originally, but a good one): the Office can, and should, get rid of the “single sentence” requirement for claims. It would lead to more narrative claiming, and would make claims more readable, and understandable to everybody, including examiners, judges, and yes, those of ordinary skill in the art.

          What the system certainly doesn’t need is any more “format” and “magic word” requirements from the PTO.

          1. “What the system certainly doesn’t need is any more “format” and “magic word” requirements from the PTO.”

            Imma respectfully disagree on that one cowboy. Creating or abiding a wild wild west helps nobody in formal proceedings like patent lawl. Congress and the PTO having failed to clamp down in this area are what currently lead to probably half the rejections that the office sends out and especially the ones of those that applicants whine about.

            “I honestly don’t know what you mean, or even contemplate, by “formal language.””

            You would if you prosecuted before me a few times. Look, in at least some arts, mine included, there are different ways of saying the same thing which routinely pop up. The office routinely interprets some of these ways in broad fashion, and others of these ways in narrow fashion, it’s an informally established vocabulary/nomenclature developed over the years. I would hazard a guess that 1/4 to 1/2 of all amendments that take place in my art are nothing more than specifying that they mean x y z that they claimed in one of these alternate fashions at the outset.

            1. Congress and the PTO having failed to clamp down in this area“…

              …but the Wild West of 6 doing his own thang is “perfectly fine”….

              Uh hu.

    1. I’d say anon really outdid him/herself on this one.

      Exceeded commenting output from MM, Ned, and 6 combined.

      Kudos. Of a sort.

      1. Thanks Mellow,

        You will note though that I am NOT a drive-by monologueing one-note person.
        You will note that I have engaged each of Malcolm, Ned and 6
        You will note that I have bested each of Malcolm, Ned and 6.

        You will note that I have ALSO engaged others (others who are not drive-by monologuers and whom do not need to be bested).

        So instead of just “counting” try instead to count the items that count. Do NOT assume that the count of posts by the likes of Malcolm, Ned and 6 are anything but noise, and count the signal within my posts.

        So thank you, thank you very much (said in the best Elvis tones).

        1. “You will note… You will note… You will note… You will note…”

          Actually, I will: not. I respectfully decline.

          You can (and I am sure do, to amuse and/or gratify yourself) engage in these sorts of subjective assessments or scorekeepings on your own.

          But objectively, your comments cover ca. 34% of this thread, and no one else comes close, not by a factor of 3, even. Milksem Moonpies (blast from the past, if you recall maybe 5 or so years ago) was under 10% here.

          1. I decline

            Your loss.

            Any time you want to open your eyes, please feel free to do so.

            Again – your “just counting” just does not cut it. No kudos (not even “I guess kudos”) for you.

              1. Thank you – and if you ever seek to disabuse yourself of the fallacy that mere counting somehow sets the content of posts to be equal, and if you wish to open your eyes, you too can enjoy.

                1. Sorry, are you under some illusion that I said anything about content?

                  I thought I was pretty clear on that.

                  Anyway, I don’t have the resources (inclination) to scour ca. 550 comments.

                  I’m sure you do, though, since hanging out here seems to be your “day job” – so have at it, Skippie.

                  Like I said, (w0)man – “Enjoy”.

                2. Sorry, are you under some illusion that I said anything about content?

                  You really have trouble reading the content Mellow.

                  You did not say anything about content and I never said that you did.

                  However, you did decline to consider content and seemed quite content with your over-simplistic mere count.

                  Try reading my responses above – again I invite you to enjoy (by doing more than merely counting).

                  (You don’t have to do all 550 – you can start with this very subthread)

                  Not sure where the “skippy” comes in – are your feelings getting a little bruised and you cannot help yourself with a little name calling?

                3. Feel free to tell us which of your ~180 comments were “content” worthy of being read.

                  I’ll look forward to your analysis, and why posting more than 3X anyone else doesn’t matter, because your posts are those that “count”.

                  Please identify which of these do “count”, and which of these are merely, well, surplusage.

                4. Feel free to tell us

                  You have already declined my invitation – would actually pointing out some of the comments change anything?

                  Maybe instead of a vap1d reply, you just read some of the comments…

                  (and once again, I invite you to read not for a numbers count, but actually read for content – had you bothered to do so, you would have seen that none of my posts are “surplusage” as each are part of a conversation.

                  Maybe also spend less time attempting to disparage me – that is just not working.

                5. P.S. It bears mentioning that a certain someone else here engages in “mere counting” and argues as if mere numbers do matter, when it serves that person’s purposes to do so.

                6. And who would that be Mellow?

                  Are you trying to imply that I have done exactly what you have done and that I have asked you not to do (and told you why not to do it)…?

                  That would be most odd, and of course, simply untrue, as I have repeatedly attempted now to invite you to read for content and never have I stated or even suggested that mere count alone divorced from content is any sign of value. Quite in fact I have told you the opposite of that.

                  Your attempted implication of duplicity and self-serving is simply way off of the mark.

                  I suggest that you spend your time actually reading content instead of these rather hapless attempts at disparagement.

                7. never have I … suggested that mere count alone divorced from content is any sign of value.

                  Says the guy who habitually counts comments and recites the numbers without any attempt to provide context.

                  But he’s a super serious person! LOL

                8. That is pure B$ Malcolm – I always provide context – it is real simple to do with your counts, since they nearly ALL come off the same old tired and trite script.

                  Here for example, your poker tell of “so serious” which indicates that you just have another empty (and pure noise) post.

      2. It is known that MM, anon, and 6 are the same person – which makes this display all the more impressive.

        1. That’s clearly not true anony – I am MUCH better looking than either of the other two.

          ;-)

          1. But that’s only logical – with clinical MPD, there’s always one “prima donna” face …. :-}

  4. With reference to my last posting, under US law, under UK law, under the PCT and under the EPC an invention has both to have some positive quality of inventiveness and to be unobvious.

    Without wishing to return fully to the “synergy” arguments pre-CAFC, the need for some positive quality on the face of the document submitted to the USPTO cannot and should not be overlooked.

    The well-respected 19th century patent attorney John Ticknor Curtis published a textbook on patent law in 1848. His clients included Samuel Morse, Charles Goodyear and Cyrus McCormick, and his textbook was cited with approval by the Supreme Court in 1950 in Hotchkiss v Greenwood. In his preface he wrote:

    “It is evident, therefore, that the whole of the act of invention, in the department of useful arts, embraces more than the new arrangement of particles of matter in new relations. The purpose of such new arrangements is to produce some new effect or result, by calling into activity some latent law, or force, or property, by means of which, in a new application, the new effect or result may be accomplished. In every form in which matter is used, in every production of the ingenuity of man. He relies on the laws of nature and the properties of matter, and seeks for new effects and results through their agency and aid.”

    That a claimed combination of elements should be more than merely trivial or arbitrary appears from a host of Supreme Court opinions, of which Pickering v McCullough 194 US 310 (1881) is representative:

    “In a patentable combination of old elements, all the constituents must so enter into it so that each qualifies every other; to draw an illustration from another branch of the law, they must be joint tenants of the domain of the invention, seized of every part per my et per tout, and not mere tenants in common with separate interests and estates. It must form either a new machine of a distinct character and function or produce a result due to the joint and cooperating action of all the elements, and which is not the mere adding together of the separate contributions. Otherwise it is only a mechanical juxtaposition and not a vital union.”

    PCT Regulation 5(a)(iii) which was the outcome of extensive international negotiation and to which the US is a party requires that the description shall “disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art”, it being implicit that for patentability there should have been some technical problem which the inventor has solved and that there should be some credible advantage (broadly viewed) which is unexpected and flows from the inventor’s contribution. Under the EPC, technical problem is reconstructed from the difference between the claimed invention and the closest prior art and the new function or result that flows from such difference. In essence that approach differs little from the US authorities quoted above.

    It follows that if there is a credible new function or result over the prior art or, at the start of examination on the face of the specification as filed, then the TSM is appropriate, but if not then the claimed combination is merely arbitrary, TSM need not be reached and disclosure of the claimed features individually suffices for invalidity. Under 101 some doubt could be expressed whether the “new and useful” threshold has been reached.

    Study of the early decisions, and not merely the most contemporary ones, throws much useful light on the essentials of patent law. In the General Motors patent which we have been discussing, it is strongly arguable that the threshold is not met, and it appears that the PTAB applied TSM without first considering the threshold, which is why Malcolm was justified in bringing the patent to our attention.

    1. …Malcolm was justified in bringing the patent to our attention.

      As opposed to the complete lack of justification for anything else he v0mited after bringing the smelly example to our attention (like his maniacal applicant is bad 0bsess10n instead of focusing on the issue of the Office processing this expeditiously (and not the ten year circus or six and a half YEARS of Office-induced PTA…

        1. No.

          His post did not.

          The topic of his post – a badly handled application/patent may have, but his mewling post was not limited to that, and quite in fact (despite his abject denials) his focus was simply on the wrong thing.

          You are being FAR too charitable here Paul.

    2. The well-respected 19th century patent attorney John Ticknor Curtis published a textbook on patent law in 1848

      Which is entirely fine if the limitations of that non-legal text are kept in mind and that tome is not attempted to be applied to today’s law in a blind or slovenly manner (as certain sAmeones around here are apt to do.

      1. Legal textbooks are commonly regarded as works of authority when the author has, as be Brits say, snuffed it. John Ticknor Curtis is no longer with us, and his writings can reasonably be taken as indicative of the law as it stood in his time.

        Furthermore, earlier authors sometimes state enduring and universal truths. The Curtis quite, it has long seemed to me, is one of them.

        No responsibility can be taken for others who apply good legal principles in a blind and slovenly manner. The risk, unfortunately, is much the same with old ones as with new ones.

        1. Some – but certainly not all – of your points here are good ones.

          But my post stands: Curtis cannot be used “blindly” in discussions of law that came after him (and most important in that context is the law of 101).

          The view that “enduring and universal truths” taken at face value is expressly NOT a good point, as clearly those with a pre-conceived philosophical viewpoint will choose DIFFERENT “truths.”

          And who is to say whose “truth” is truthier?

          1. Anon, but the Supreme Court does cite Curtis in cases like Stanford v. Roche when it questions the Federal Circuit. The Federal Circuit is a modern court that seems to relish in ignoring history.

            1. Once again Ned – context of that questioning is somewhat important, eh?

              (and you should note what I am and what I am not saying – I am NOT saying throw everything in Curtis out; and I AM saying that you cannot – as you are prone to do – simply assume that everything that he has to say is still relevant. There is no substitute for critical thinking – especially for laws that came after Curtis – like the Act of 1952.

    3. You are aware Paul that the “new and useful” remark is a mistake of law, right? Recently the “new” part was shown to NOT be associated with 101.

      That’s a danger you expose yourself with trying to go back too far to references that no longer have the proper context.

        1. But you can recognize points of law that have been presented, including the notion that the “new” within 101 merely reflects that that “new” is controlled in a different section of law.

          Even (or perhaps especially) Brits can do that.

          ;-)

        2. And, Paul, new and useful were in the statute in 1793 – and put there by Congress based upon Thomas Jefferson’s draft.

          1. And thus – it is critical to NOT over-read old law when newer law (the Act of 1952) changes the old law, taking what was a single paragraph and carving that single paragraph into separate sections.

            Ned is exactly the type of person prone to the very error that I point out Paul. He allows his very own “truth” (read that as his personally desired philosophy) to get in the way of the actual changes in the law. He simply does not accord the required respect of the law in those changes because he refuses to let go of the pre-changed law.

    4. Yes, yes, yes, the claimed system is sooooo obvious.

      ‘coupla questions though.

      1) Had it been done before?

      2) If not, why not? I mean, given that it was sooooo suuuuper duuuper obvi, and soooo trivial to implement, why not build one?

      Is it just that no one wanted one? Hmmm, maybe… But if that’s the case, then whats the harm in issuing the patent? No one will want to make one anyway.

      Oh, you say people do want to make them? Well, why didn’t they make them before? I mean we already established that it is soooo sooooo suuuuper duuuper obvi, what was the hold up?

      Yeah, that’s what I thought…

      1. Les,

        While your “argument” may appeal to a rather shallow viewpoint, the legal notion of obviousness is a bit different.

        It might help to remember that obviousness can be thought of to give greater protection to prior inventions if a generous “equivalence” is used (see KSR).

        If you are visually inclined, consider the analogy of a shadow with more than one light source.

        The darkest part of the shadow is like those things covered by 102. There would be the “someone is doing exactly that” type of thing.

        The lighter shadow (but still within the shadow) covers those things that no one actually did, but that evidently could have been done. This is the part of your “no one wanted to do it – for any reason – type of thing.

        The last part – with no shadows is the part that survives the legal challenge of obviousness.

        And like the real world of shadows cast by multiple light sources, the dividing line is not always crisp.

        There may be cases clearly not in the shadow that meet your (shallow) criteria of “no one actually did that before,” but importantly here, there will be cases where your criteria simply falls into the area of the lighter shadow. Something “not done before” is not dispositive because it was not done before.

        Your view is just a varient of the incorrect black/white “103 is just like 102” view that Random suffers from.

        1. You skipped over, no harm, no foul…

          Anyway, your treaties on shadow puppets does not answer the question, why didn’t anyone do it if doing it was obvious and now the patent is detrimental because there are those that want to do it.

          1. Les,

            I did not skip over the “no harm no foul” point in so far as that point is not pertinent to the legal point under consideration.

            Further this comment from above captures that point: “This is the part of your “no one wanted to do it – for any reason – type of thing.

            The “for any reason” includes the “no harm no foul.”

            If you want an answer but do not want to pay attention to the law, do not be surprised if you cannot find your answer when we are discussing the law.

            It simply does not matter “why did no one do that?”

            As I pointed out, that question simply is not dispositive of the legal point that controls.

            Now then, did you have any questions on the legal understanding of what obviousness stands for under the law?

            1. Let me state the point I’m making another way.

              Since 103 is evaluated on the whim of the reviewer, on the basis of what ever the reviewer wants to consider, and since there is no harm in issuing patents for the novel but truly obvious, since if anyone was interested in making or using the novel but truly obvious invention they would have done so as it was obvious, then why not get rid of 103?

              1. While it may seem like “whim of the reviewer” (as might any section of law – with “reviewer” being played by a number of different characters), the law remains the law, and your comment then simply boils down to a “what if we had different laws” type of thing.

                Like angels on the head of a pin, we could entertain all kinds of that type of “what ifs.”

                But at the end of the day, we do have 103, and so we must deal with it (in the legal sense – with all of its shadows ;-) ).

    5. Paul, Curtis seems to been cited quite often by the Supreme Court. He was cited in O’Reilly v Morse, 56 U. S. 62, 130 (1853). Curtis is most recently cited in Stanford v. Roche, which is the reason the Supreme Court questioned the Federal Circuit on its upper and (implicit) holding that an equitable assignment requires no further act in order to make it a legal assignment when the invention comes into being.

      Regardless, for my view, Curtis is the single best source that I know of for understanding patent law in the United States and probably also in England. Modern decisions that vary from Curtis are probably wrong and should be re-examined just as the Supreme Court will re-examine the Federal Circuit decision about assignments.

      1. You might want to indicate that your Supreme Court reference was NOT in the majority portion of the decision there Ned.

        Your presenting Curtis as if atop some ultimate pedestal is exactly the type of non-critical thinking that is the very worst of legal “thought.”

    6. Ned: I thought there might be some novelty in the method of selection of two navigational systems. How is one to choose and why.

      As broadly put forth, there can’t possibly be patentable innovation in that kind of “innovation.” Here’s why:

      1) “How” includes logic. You can’t patent the use of logic to choose between two things. Logic isn’t eligible for patenting.

      2) It doesn’t matter “why” you choose. Assuming the “innovation” has utility, you choose because one is preferred, for some reason or the other, under some condition or the other. There is no patentable “innovation” in “making a choice.”

      As ever, if you want to innovate some novel “sensor” apparatus and describe its objective physical structure in a manner that distinguishes it from the prior art, you’re golden. But otherwise you’re in the swamp of ineligibility.

      Consider how it works otherwise: everytime anybody “innovates” something — even another decision-making process — some b0tt0m-feeding third party rushes in and claims the method of choosing between that “innovation” and something else in the prior art. Whoohooo! Nobody ever claimed it before! S00per techn0! And the system continues to swirl down the drain as everything that is useful becomes wrapped up in a cocoon of legal barbed wire.

      1. If the industry had been sitting for multiple years with multiple navigational systems and users were being put to enduring inconvenience, then a decision to go forward with automatic selection might be the start of a credible invention (though one of the UK judges once remarked that of an invention is obvious it does not matter that it has been obvious for a long time). But here the navigational systems, and especially multiple navigational systems, were apparently a fairly new development. So it does not seem that the decision to further develop existing systems was in itself a credible contribution to unobviousness.

        Your original position that there was no credible innovation here on the face of the specification as originally filed seems eminently correct. The PTAB, it seems to me, fell into error by considering only TSM without first considering whether there was any step forward that provided sufficient unexpected new utility to support a patent.

        From the patent quality standpoint the file wrapper of this patent, it seems to me, would repay detailed scrutiny. It may be that my first impression is wrong: it may equally be that it is correct and the course of argument during the examination process was too narrow and restricted. However, that would take hours of work, beyond what would be appropriate for a comment on this posting.

  5. As I have been travelling for most of today, it is only this evening (UK time) that I have been able to follow up Malcolm’s posting 25 concerning US Patent 9175997 Murlidar, assigned to General Motors. The relevant application was filed in December 2015 and matured into a patent in November 2015, so that the USPTO had some ten years to mull over the eligibility and inventive merit of the claimed subject matter.

    Study of the file history on Public Pair reveals that grant followed a successful appeal to the PTAB.

    From the distance of 4000 miles or so, and notwithstanding the opinion of the PTAB, it is astonishing that a patent should have been granted. The description is supported by two figures, one of which is a block diagram of childish superficiality and the other of which is a flowchart comprised of four process steps and a single decision step

    It is difficult to discern any new function or result on the face of what is disclosed in the specification. In particular, it is impossible to see what of a surprising or unusual character has been contributed by the inventors. In Euro-speak, what was the technical problem that they solved, was it ingenious to identify the problem, and if not was it ingenious to find a solution? Given that, as admitted in the Background section, vehicles were already being supplied with different navigation systems between which a user could make a selection, it is difficult to see how there is even an arguable case of unobviousness. Indeed, on reading column 2 lines 13-22, the broadest definition in the application as filed can be read onto the user manual selection admitted as prior art.

    Unsurprisingly there was no counterpart European application.

    The take-away point is that the USPTO should, before extensive searching and much breast-beating, simply read the specification and form a view whether on the face of the document there is anything present which is arguably of an inventive character. In this instance, in my submission, manifestly not.

    1. Others have said the same thing – see my own post on the facts of this case.

      And yet, certain sAme ones here continue to rail against “G-g-grifters” as if somehow the said “G-g-grifters” FORCED the examiner and the Office to not do their job and rubber stamp the application (after nearly ten years in the Office).

      1. as if somehow the said “G-g-grifters” FORCED the examiner and the Office to not do their job

        Correct me if I’m wrong, but rejections of this incredible pile of junk were appealed twice.

        Did the PTO appeal its own rejection? I’m not excusing the PTO’s incompetence (on the contrary). But it was the applicants who were desperate to get this junky patent. Maybe someday everyone involved will be deposed and we can find out what they thought was patentworthy about “automatically choose between two existing systems.” Or maybe there was no thinking at all, just some attorneys and a patent office sky high on those seductive global positioning fumes (location information is useful for navigation? — WOW).

        1. You STILL are missing the point Malcolm.

          That point just is not how the applicant pursued the available legal channels.

          That point is that the Office acted as the Office did.

          You claim that you are “not excusing the PTO’s incompetence (on the contrary)” but that IS exactly what you are doing by trying to place the focus somewhere else.

          It just is not the point HOW “desperate the applicant was (or even how “junky” the particular claims were.

          Your maniacal concentration is simply on the wrong item.

          1. the Office acted as the Office did.

            Wow, this is even deeper than usual. I’ll have to take a couple weeks off to ponder the layers of meaning here.

        2. Actually, MM, I thought there might be some novelty in the method of selection of two navigational systems. How is one to choose and why.

          While it turns out that the user selects based upon prompts, and his preferences are stored so that upon future activation the selection that the user has preselected or has previously selected is used to select this time.

          Now… Am I missing something? What is possibly inventive about this?

          1. Quite possibly nothing Ned.

            But do not be distracted by the “shiny” that Malcolm offers and return to the point of this thread: what was the Office doing here for nearly a full decade (with six and a half years of that now being handed out in PTA)

            Stopping (or even focusing) on the “gee this is a bad application” is NOT the proper focal point. The collective “wringing of hands” will get in the way of actually making the Office system better.

            1. Stopping (or even focusing) on the “gee this is a bad application” is NOT the proper focal point.

              It’s a perfectly valid focal point, “anon.”

              Just because you are incapable of admitting that nearly all PTO errors are in the applicants favor doesn’t mean that other people suffer from your delusion and/or lack of cand0r.

              But go ahead and pretend that you’re super serious about “patent quality.”

              1. It’s a perfectly valid focal point, “anon.”

                No.

                It is not.

                That you may feel otherwise is simply that: your feelings.

                Stay focused Malcolm – let’s not have you get stuck on your usual 0bsess10ns now.

                But go ahead and pretend that you’re super serious about “patent quality.”

                Clearly – you have not bothered to read anything that I have written – least wise anything that does not fit your preconceived little script.

                I suggest that you read what is actually written and put your script away.

  6. Probably not the first time the circle has been completed, but folks here who enjoy irony may find some pleasure in noting that at least some members of the legal team who succeeded today in defending Zillow against a “do this biz method on a computer” patent tr0ll (the CAFC finding the claims invalid under 101) previously made big patent news asserting a different (but equally junky) “do this biz method on a computer” claim against Barnes and Noble.

    Does everyone remember that patent? Of course we all do:

    link to en.wikipedia.org

    I guess it’s way too late to party like it’s 1999.

  7. A robot car, wherein said robot car comprises a computer operatively connected to the driving controls of said robot car, wherein said computer determines whether the car is about to hit something, and wherein in response to a determination that the car is about to hit something, said computer electronically directs the driving controls to avoid said collision.

    This is apparently what qualifies as “valuable innovation” among the super serious folks who want to bring back the days of “do it on a computer” eligibility.

    That’s never going to happen. The good news is that the PTO hasn’t gotten the memo yet and the junk continues to flow out of the patent office like there’s no tomorrow. Can someone remind us how much money Director Lee makes so that she can pretend that she was born yesterday?

    1. MM, the problem with the claim you do stated is that it is nothing more than taking something known and automating it. Now if, the patent describes some novel sensor technology that could accurately determine when a collision was about to be made, and that the claim included that technology, then I would think there be no problem with the claim.

      1. …sort of like how Diehr “just automated” curing rubber…

        (in fact, more than just “sort of”)….

        Oopsie

        1. …sort of like how Diehr “just automated” curing rubber…

          Please, please, please rest all your expectations on Diehr and especially that particular interpretation of Diehr. Nothing could be more productive for you and your super serious c0h0rts in the long term!

          1. …the double down poker tell of “so serious” AND the “Oh Noes” of – gasp – “cohorts”

            Where does Malcolm find such “legal prowess”….?

            /off sardonic bemusement

            1. Hey, I’m old enough to remember when you employed a legion of s0ckpuppets here to bury any discussion of the claims at issue in Prometheus v. Mayo under some nonsensical idea that subject matter eligibility had to be determined in a factless vacuum, divorced from the prior art. That was allegedly the “holding” in Dierh.

              So if you want to repeat that performance now with the twist that Diehr stands for the irreversible proposition that “automating” the curing of rubber (because … stretchy!) is eligible for patenting, then please, please, please knock yourself out, break a leg, etc.

              [grabs two ton bag of popcorn]

              1. LOL – your own “predictions” of the demise of “Diehrbots” belies your “recollections.”

                Time for you to come back to reality (as even the broken score boards do not support your twisted view of reality).

                As for “sock puppets,” you being the ultimate hypocrite whined that they were the worst thing ever – and then get busted using them YEARS after I ever did.

                Oopsie.

                1. your own “predictions” of the demise of “Diehrbots”

                  LOL

                  I never predicted the demise of the “Diehrbots”. On the contrary, I coined the term because I recognized that the “no claim dissection” script wasn’t the product of creative thought. It’s just a script recited by unthinking zombies who like easy-to-remember scripts. Hence: “Dierhbot.”

                  And I’ll remind you for the thousandth time: the mere use of pseudonyms — even pseudonyms that evolve over time — is not the s0ckpuppet behavior of yours that I (and others) found appalling and objectionable. But go ahead and play your false equivalence game if it makes you feel better.

                2. I never predicted the demise of the “Diehrbots”.

                  You predicted with “absolute certainty” that Diehr was going to be flat out overturned and that the “Diehrbots were to meet their demise.

                  Your statement here and now to the contrary only shows that you are an unmitigated L I A R.

                  And I’ll remind you for the thousandth time: the mere use of pseudonyms — even pseudonyms that evolve over time — is not the s0ckpuppet behavior of yours that I (and others) found appalling and objectionable. But go ahead and play your false equivalence game if it makes you feel better.

                  First – you never said what you are saying now for a first time, let alone a “thousandth time” and second – what you were doing at Dr. Noonan’s with your own army of sockpuppets (NOT “evolving over time – but many AT THE SAME TIME) was exactly the thing that you (and others [?]) found appalling and objectionable.

                  I have NO false equivalence game to be played – but that won’t stop you from your usual meme of AccuseOthersOfThatWhichMalcolmDoes, now will it?

                3. You predicted with “absolute certainty” that Diehr was going to be flat out overturned and that the “Diehrbots were to meet their demise.

                  Indeed, the Dierhbot’s script is crumpled up fishf00d at the bottom of the dead letter swamp.

                  But you know how it is with zombies and robots. They stumble around forever until you cut off their heads or electrocute them.

                4. “But you know how it is with zombies and robots. They stumble around forever until you cut off their heads or electrocute them.”

                  I feel like we should look into a laser beam solution to this issue. Pew pews are always cool. Or, perhaps even a rubber curing machine solution lol. Just put them in and bake them to a crisp.

                5. The “crisp” thing – wouldn’t that be a patent for a process of making biscuits….?

                  ;-)

      2. if, the patent describes some novel sensor technology

        Then all the applicant needs t do is claim the novel sensor in objective structural terms, like people have been doing since forever.

        But golly that would it make it really hard for all those poor suffering patent attorneys to team up with the law firm partner’s wife and other “small entities” and get rich off that new sensor technology. And that just didn’t sit right up with some folks. You know: the folks who think they’re practicing “disruptive innovation”, which makes them The Most Important People Ever. <— LOL!

        1. …and once again Malcolm tries to make an issue of “just” claiming an optional claim form as if that optional claim form was something more than just an option…

          Nonstop CR@P.

          1. Oh, I recognize that applicants are free to scriven their way to high heaven, using any words they want and avoiding any and all description of novel and objective structure (it’s so limiting, after all!). And you can help them out with that exercise, “anon”! Take the money and run! Congratulations. You’re a very serious person.

            1. The poker tell of “so serious” belies the admission they want you “want” is just NOT what the law provides.

              That must really hurt your feelings.

              Maybe try to post in accord with the law instead of your nigh constant dissembling and attempts to make the purely optional format into some type of “de facto” legal requirement.

      3. Scoff at the robot car, but it’s a potent symbol because lots of people of goodwill strain to find a rational connection between information inventions, “technology”, and the world of mechanical/chemical things that every reasonable person understands to be the proper ultimate domain of patents.

        I say the line should be naturally drawn when
         people consume information. I like to say it on 400+ comment threads. This controversy is live and going nowhere until a workable compromise appears.

        1. that every reasonable person understands to be the proper ultimate domain of patents.

          Too funny.

          (Not in a good way, mind you)

        2. Scoff at the robot car,

          Oh, I’m not scoffing at robot cars. I am scoffing at the reams of ineligible patents out there on methods of “driving automatically”.

          The funniest part about all those junky “make decisions about where/how to drive on a computer” patents is that they’ll all be expired long before ordinary consumers are gobbling up anything remotely resembling a self-driving car. Not that those patents are enforceable anyway, for obvious reasons.

          But they sure do waste a lot of time. Presumably the PTO has better things to do than examine endless reams of junk?

          1. Talk about your born yesterday syndrome.

            Do you really think that the examiners are fully translatable into other art units from where they are now?

            Do you really think that “waste” occurs because most innovation today is related to software?

            What an arse.

  8. How can the USPTO improve “Quality”? One way might be to read the 11 pages the Federal Circuit has just generated in its Shortridge Decision:

    link to patentdocs.org

    It doesn’t take long but it sure does give USPTO Examiners a route map for finding (with minimal expenditure of time) loads of stuff ineligible.

    Of course, it’s only a matter of time before the poachers come up with a cunning plan to thwart the PTO gamekeepers. Specifically, Shortridge failed to argue that what he was claiming was a solution to a “technical problem”. Others, drafting now, won’t make that same mistake. But USPTO Examiners need only read the Established Caselaw of the Boards of Appeal of the EPO to find out what’s “technical” and what isn’t. That doesn’t take long either.

    1. …not to even mention the continued lack of respect for treating different sovereigns according to each sovereign’s choices…

      But a sure sign of a LACK of quality is such deliberate obfuscation – and suggesting that one sovereign reach over into another sovereign for judge-made case law is simply beyond the pale.

      1. Ah, I see I forgot to mention that this Shortridge Decision, from which I took the text about Shortridge’s claimed subject matter failing to solve a “technical problem”, is a per Curiam decision of (this particular panel of) the Federal Circuit.

        I daresay anon will be taking up with Michael Borella, the writer of the Piece on PatentDocs, what he thinks he means in his sentence that begins “Under current jurisprudence…” That’s the sentence in which he contrasts the ineligibility (in the USA, of course) of non-technical solutions with the eligibility of technical solutions.

        1. Perhaps I will and perhaps I will not.

          But here – with your post – I HAVE pointed out the error.

          That a court makes the error (apparently succumbing to a drumbeat of propaganda) does not save the item from being an error.

          That you celebrate the error also does not save the item from being an error.

          1. And with that comment, Dogberry, you begin to remind me of the old guy on the Autobahn, who gets a call from his wife to be careful because of the warning just put out on the radio, of a “Geisterfahrer” (one driving the Autobahn in the wrong direction).

            “One, dear? I’m seeing hundreds of them!”

            1. Except for the fact that it is just not so, you may have had a point there.

              Or did you forget that Useful Arts just is not synonymous with “Technical Arts”…?

              1. Useful Arts just is not synonymous with “Technical Arts”…?

                Yes, the “useful arts” includes methods of doing math with a calculator and other super techn0 methods. As long as you apply those methods to a field like hedging bets or managing bingo games or calculating a discount on available real estate, you’re golden! Nobody wants to do that stuff in their head. It takes too long. That’s why calculators were invented: so s00per d00per technical all-stars like like “anon” could write junk claims describing ways to use them.

                Right, “anon”? Tell everyone all about it. You’re the expert on this stuff, in your own mind.

                1. As tightly as I squinch my eyes reading your “response,” I see no point there Malcolm.

                  Try something different.

        2. MaxDrei too quickly quips “I daresay anon will be taking up with Michael Borella” as Mr. Borella himself did not agree with how MaxDrei “presented” the situation.

          Oopsie.

    2. Max, the thing that is so odd about your statements is that the US has the biggest and best software industry by a factor of 10 than any other country.

      And we have patents for that industry. You are advocating tests that are not geared for software and tend to make software ineligible.

      =><=. It is just nxts.

      1. No Night, I’m not. I’m just waiting for SCOTUS to get there in the end, telling us what the Constitution means by “useful arts” and reminding the judges that patents are available ONLY within the ambit of the useful arts.

        On your logic, you will be demanding patents for any other arts where the US has world leader status, like entertainment, or writing water-tight contracts.

        1. Clearly there exists a distinction between the Useful Arts and the Fine Arts.

          That you bother to tread out a canard and “wonder” if there is such a difference does FAR more to impugn your posts than ANY “dogberry” could ever do.

          So thanks for sh00ting off your mouth and sh00ting off your foot and sticking said foot into said mouth.

          1. For sure, Dogberry, nobody, and least of all me, is disputing with you that there is indeed a distinction between fine arts and useful arts.

            I’m just asserting that there exist plenty of “arts” that, while being very useful, and which can be practised with the assistance of a computer or the internet, nevertheless are neither fine arts nor what the US Constitution calls “useful arts”. The art of the deal, for example.

            You and Night want patents on every art except the “fine arts” whereas I want patents confined to the useful arts.

            1. The mindless “dogberry” reference gets you a grade of F. U need to do better than merely acknowledge a difference of useful arts and fine arts when it is your own post that obfuscates the two.

              (ps, your tactic of also beseeching the judicial branch when here is THIS soveriegn our Constitution has empowered a single different branch of the government belies any mere “interest” and shows instead that you are attempting to advocate for a particular viewpoint.

              Lastly, this is NOT just a “anon/night writer” want of something different, instead this is very much me pointing out the flaw in your “observation”/desire/curse-ade and insisting that you respect the plain fact that the US sovereign has chosen differently by NOT using the term that you wish that they had used.

              You blandly try to deflect from the fact of that difference, when the fact that there IS a difference speaks against what you advocate for.

              Your final statement then (“whereas I want patents confined to the useful arts” contains a false logical inference that anyone else not agreeing with you wants something other than patents for the useful arts.

              That type of “subtle” duplicity is outright rejected.

              1. When the US Constitution was written, nobody used the word “technical”. Instead, they used the term “useful arts”. See Wikipedia. Here an extract:

                “The use of the term “technology” has changed significantly over the last 200 years. Before the 20th century, the term was uncommon in English, and usually referred to the description or study of the useful arts.[4]

                link to en.wikipedia.org

                Judges work with the text of the Statute they are required to interpret. So SCOTUS has to do the best it can with “useful arts”. By contrast, the EPC, written in 1973, makes no mention of “useful arts” instead it uses “technical”.

                1. Except not MaxDrei – as has been long been made clear on this blog (Crouch even posted on it – check the archives)

              2. “anon” this is NOT just a “anon/night writer” want of something different,

                Nope — there’s at least four other “patent everything” bl0gtr0lls floating around the Internets who agree with them.

                LOL

                1. As opposed to you and your “non-sockpuppet legion”…?

                  LOL, how IS your “battle of transperancy” going with Dr. Noonan, Mr. “Memory Motel”….?

                  What a chump.

            2. When the “art” is the use of information, there is no current way to distinguish between patent eligible information or non-patent eligible information beyond the whim of the judge or examiner.

              1. Your attempt to define art as “the use of information” is not an accurate representation.

                Your strawman is very similar to Malcolm’s strawman when he attempts to take claims that may have an element that includes a mental step and talks about claims that are “TOTALLY in the mind.”

                Try to stay away from such strawmen, Mr. Snyder.

        2. Max, if there were any ambiguity as to what the founders thought “useful arts” to mean, that ambiguity was somewhat settled by their adoption in 1790-1793 of the subject matter of patents from England, to wit, inventions with respect to manufacturers – things and processes created by man, including machines and compositions of matter.

          1. Not surprisingly, Ned neglects the entire past discussions as to why – as a category – business methods are included in the Useful Arts.

            A simple and direct question, Ned: why would Congress put in place a limited protection in regards to a subset of Business Methods, if Business Methods – as a category – already were not within the Useful Arts?

            …and please take note of my recent post explaining how your own (boastful) involvement in the initial Prior User Rights legislation is to the demise of any larger desire of yours to somehow NOT have business methods within the Useful Arts.

      2. B-b-but say the L I E often enough and you can create the perception that those recognizing the law and what the road signs of the law actually say are somehow the one that is wrong in the face of all of that propaganda…

        Don’t buck the March of the Lemmings, dabnit Gumby.

      3. Night, and you still refer to the United States offer industry as being the biggest and best, and refer to the fact that we allow patents in the United States for “software” as if there were a correlation between the two, when we all know that the biggest software companies are pirates, and operate a complete defiance of the patent system.

        That being said, I think patents are necessary for startups in the software field simply to protect them from the Pirates you love.

        1. Ned – I have already pointed out the difference and explained to you how you are not using what Night Writer is saying appropriately.

          There is a clear difference with a current industry on top of the heap trying to “pull up the ladder” and weaken the patent system now that that entity has reached a point that it wants to compete on non-patent, non-innovation grounds.

          STOP DISSEMBLING.

          1. Listen anon, I do not know what you think Night is talking about, please talking about big software that got to be big software for reasons other than its patents, and who today operate in the piracy mode.

            That said, I have always thought that patents were critically important to startups particularly in the software field because of the predatory nature of the big companies. The small company comes up with something new, it needs patents. And it is probably because of patents that some of the big companies like Facebook are acquiring innovators in its field as opposed to simply developing competing products to do the same thing.

            1. Your post above at 28.3.3 does NOT reflect what Night Writer is talking about while your different thrust in the post at 28.3.3.1.1 reflects the CURRENT dangers of those wanting to weaken or do away with software patents.

              Your problem Ned is thinking that the two posts reflect a single thought.

              They do not.

              Your abomination of trying to redefine “innovation” is the difference.

              Your criticism of Night Writer is simply (and badly) misplaced.

    3. See also today’s decision in Lending Tree v. Zillow, reversing a district court’s denial of Zillow’s summary judgment of invalidity under 101.

      Here’s the preamble of the claim:

      1. A method for coordinating an electronic credit qualification form between an Internet user and a plurality of lending institutions via the Internet

      and that’s pretty much all you need to know to establish with 99% certainty that the claim is ineligible junk.

      Yes, folks, a computer/Internets/processor will make your data processing faster! But reciting them in your claim does not make your data processing method eligible. Good riddance to this junk.

      It’s hilarious, by the way, to see the super serious “experts” at PatentCrocks struggle to understand decisions like this. It’s all s0000000 complicated and unpredictable!

    4. Max, thanks for the link. I too was thinking that the solution we are looking for when software is being claimed is whether there the software solves a technical issue or a nontechnical issue. In other words, if the improvement is to the mathematics involved in some business method calculation as we saw in the risk-balancing method of Bilski, then the claim would be ineligible. In contrast, if the improvement were to the efficiency of data processing qua data processing as we saw in EnFish, and which we should have seen in Versata, then the claims would pass 101 muster.

      1. In contrast, if the improvement were to the efficiency of data processing qua data processing as we saw in EnFish, and which we should have seen in Versata, then the claims would pass 101 muster.

        Without more, a “test” that looks at whether an “innovation” in logic or math is “technical” based on whether there is a potential “improvement” in a computer executing that logic is a d.o.a. “test” for eligibility.

        Maybe it works as a test for utility. But you’re still left holding the same bag.

        1. More of the same dissembling…

          Software is neither “math” nor “logic.”

          The CR@Pfest continues…

        2. MM, I fully agree that the proven cannot only be in the math or the logic of coming up with the improved price, the balanced risk, or whatever. It has to be genuine improvements to data processing that are more than simply mathematical or logical, and which have nothing to do with the formulas or logic for computing the improved price, the balance risk or whatever.

          1. more than simply mathematiAL or logicAL“….

            To Ned, removing the “AL” part (which is merely removing the “applied” part – and which is the basis for ALL engineered results) leaves only the magicAL.

            How is the topic of encryption coming along for you Ned? Still running from that?

    1. Not sure where you think the “irony” is. Totally sure that I don’t care.

      As I told you all many weeks ago, DWS days were numbered.

      Next you’ll tell me that Keebler cookies aren’t baked by actual elves. And I’ll be equally shocked.

      Anyways, now that DWS is gone, the DNC just needs to get rid of the caucus system and the superdelegates. The focus right now, of course, needs to be on defeating Drumpf, easily the most unqualified and ign0rant candidate ever nominated by either of the major parties in our lifetimes. I don’t think it’ll be terribly difficult but it will require focused effort.

      [shrugs]

      1. “Not sure where you think the “irony” is”

        In case you didn’t catch what is happening in that pic, that’s an email regarding morning joe reporting that the system is rigged by a DNC staff person. The Staff person was complaining that Joe was outting the system as being rigged, and then in the next breath said that they should rig the system by going over the reporter’s head to his “producer” to shut him down from reporting on that.

        They’re “going to the producer” because the producer is under their influence in a variety of ways. First, they depend on these party people for getting inside access to candidates for meetings and interviews and other news that comes out of the party. And that flow of access can be cut off or limited if the producers don’t maintain good ties. And there are many secondary ways that the producers are under their influence that often include schmoozing and other such ways of influencing them. A lot of them are a big “in group” of “elite” (came from the same big name schools and now have power and know each other) political insiders that all know each other and help each other out from their various position.

        In other words, it’s insider information confirming exactly what has been being said by a variety of sources for awhile now. The whole thing is controlled behind the scenes, the media reporting certainly isn’t unbiased and is practically under the thumb of the parties,

        And that’s just one email amongst many that are just now out.

        “DWS days were numbered.”

        It isn’t just DWS. It’s a whole legion of as shats controlling your party.

        “the DNC just needs to get rid of the caucus system and the superdelegates”

        Gl with that. If you think the “liberal elites” (which I know you don’t like the name) are just going to give up their power to wield your vote like they are right now you’ve got another thing coming. They’ve been using you guys for decades to shape their vision of Merica, and they do so such that it benefits them.

        1. If you think the “liberal elites”… are just going to give up their power to wield your vote like they are right now you’ve got another thing coming.

          Wield my vote? What?

          This is getting funnier all the time.

          I’m still waiting for you to explain “the irony”.

          1. “Wield my vote? What?”

            They decide who the nominee is, not you. Then you just vote for whomever they say.

            “I’m still waiting for you to explain “the irony”.”

            I already explained it.

            ” The Staff person was complaining that Joe was outting the system as being rigged, and then in the next breath said that they should rig the system by going over the reporter’s head to his “producer” to shut him down from reporting on that.”

            ^That is ironic. You can’t be all like “the system isn’t rigged!” and then in the latter part of the same sentence say “hey lets call our bud up to rig the system by shutting the media up on this one!”

            A bit more.

            link to yahoo.com

            1. hey just booed ol DWS out of the party!

              Or maybe it was all part of a scripted play written by George Soros.

              Try to keep up, 6! The “liberal elites” are way ahead of you.

              LOL

              1. “Or maybe it was all part of a scripted play written by George Soros.”

                I don’t know how much of a part he actually plays himself. He just funds a lot of the tomfoolery. TBH from what I’ve seen of him he seems like a rather decent fellow, just like the Kochs on the right do. They both have different outlooks, but the things they fund end up going all crazy.

        2. Malcolm tends to [shrug] when he is faced with something NOT on his little script of things that he has to watch out for in regards to his little self-anointed field of rye. Confusing him with the notion of the truly G-G-g-grifting Big Banks and captured liberal elites will only draw what you see here: denial, evasion, and attempted redirection of the topic back to an item on his (liberal elite) short script.

          The sad thing is that he does not (and may truly not be able to) recognize that HE is the liberal left version of Trump.

          1. It is true that he is showing remarkably unable to understand the “corruption” in his own party or its ramifications.

            1. he is showing remarkably unable to understand the “corruption” in his own party or its ramifications

              Oh, please enlighten me 6 and “anon”! It’s all so complicated and confusing and I don’t pay attention to politics at all.

              LOLOLOLOLOLOLOLOLOLOLOL

              Also be careful in the bathr00ms, 6! LOLOLOLOLOLOLOL

              1. Looks like anon was right, gotta stay on the liberal script eh MM? Doesn’t matter what your own party does, just so long as you can go after ye olde “bigots” that are lurking around every corner you’re all set. Right? Right?

                1. Doesn’t matter what your own party does

                  Right. That’s why I’m loving it that DWS has just been flushed down the political t0 ilet (albeit two years too late).

                  Try to keep up, 6. If Bernie Sanders can keep his eye on the ball — and he surely can — then the rest of us can, too.

                  you can go after ye olde “bigots” that are lurking around every corner

                  Because there really aren’t that many bigots in the modern Republican party. LOLOLOLOLOLOLOL Sure their aren’t.

                2. “Try to keep up, 6. If Bernie Sanders can keep his eye on the ball — and he surely can — then the rest of us can, too.”

                  Lulz. “the ball”? What is “the ball”?

                  Look, from Bernie’s perspective he himself as a candidate got a raw deal from the party, tough luck for him. Tough luck, but he could have overcome it, like Trump did. However, from the avg Bernie supporter’s perspective what happened was worse. They were politically disenfranchised by the very party now asking them to support them. And many of them aren’t die hard lefties like Bernie. They’re just in the Bernie movement for the free stuff.

                  “Because there really aren’t that many bigots in the modern Republican party. LOLOLOLOLOLOLOL Sure their aren’t.”

                  Oh yes, they’re just runnin’ around everywhere lynching just everybody all over the place. Look bro, you may not have got the memo just yet since you’re old and seemingly mostly out of touch despite no doubt keeping up with the main stream media, but you yourself are a bigot according to the modern lefties.

        3. I would like to see the Patent Office internal emails between Examiners, SPEs, and Management.

          Especially the ones concerning SAWS applications.

          BTW, what do they call the SAWS program nowadays? (It obviously hasn’t gone away.)

      2. MM, Obviously you do not see a major difference between Sanders and Clinton such that you are not upset that Sanders was not give an fair chance. If he lost and the playing field was level, his supporters would not be upset.

        I think Sanders shows great leadership when he backs Hillary regardless of the skulduggery of the Democratic Party apparatus. If you were not so elderly, that man would have a great future in politics.

        1. Sorry, MM, that should have read, “If he [meaning Sanders] were not so elderly…”

  9. SR: Would it not be helpful to the examiner and others to write in the specification:

    ‘..prior art teaches that computers may be programmed to follow rules to automate or assist users with any logical data processing task, regardless of the context.

    It’d helpful to the PTO to put that phrase in every “do it on a computer” Office Action. Maybe they are having trouble finding the “evidence”?

    Or maybe they just want to pretend they were born yesterday so they can keep granting on patents on logic. Because logic is the “essence of electronic structure,” according to some judge who pulled that phrase out of his behind. So much for “evidence”.

  10. As long as the b0ttomest b0ttom feeding patent attorney continue to file junk like the one below, and as long as the PTO continues to ignore the law and rubber stamp it, the system will remain a transparent j0ke:

    9175977

    1. An electronically-controlled method of arbitrating between separate vehicle navigation systems that are available to an occupant on board a vehicle, comprising the steps of:

    (a) determining the operational status of at least one of first and second vehicle navigation systems that are accessible to the occupant in order to determine if more than one of said separate vehicle navigation systems are currently activated, wherein said first vehicle navigation system is a telematics-based vehicle navigation system and said second vehicle navigation system is an autonomous vehicle navigation system that is separate from said first vehicle navigation system;

    (b) if more than one of said separate vehicle navigation systems are currently activated, then:

    (b1) selecting one of said separate vehicle navigation systems;

    (b2) running an active session for the selected vehicle navigation system so that the selected vehicle navigation system provides the occupant with navigation-related services; and

    (b3) preventing an active session from running on the unselected vehicle navigation system so that the unselected vehicle navigation system is prevented from providing the occupant with navigation-related services, wherein only one of said separate vehicle navigation systems is running an active session at a time.

    Got that folks? The s00per techn0 computer “automatically” selects between two systems, picks one, and turns the other one off! Wowee zowee. Presumably it uses rules to do that. Can you imagine? Deep deep thinkers at work here.

    Heckuva job, PTO.

    But, sure, the “real problem” is that Examiners are making it too hard for junk to get allowed. They aren’t citing the right art! Riiiiiiight. Thats the “real problem”. Sure it is.

    1. Here’s a curious thing: the background of the specification never mentions the fact that the prior teaches that computers may be programmed to follow rules to automate or assist users with any logical data processing task, regardless of the context.

      Maybe the applicants were unware of that prior art? Perhaps they need the PTO to provide some “evidence”?

      LOL — except that these “innovators” are The Most Important People Ever. They make the world go around. But for them we’d all be living like the Amish. They told us so! And their very serious people.

      1. Maybe you are unaware that there is NO requirement to actually talk about the prior art in a patent application….

        You seem unaware of a lot of the actual patent laws….

        Like what it means for a claim form to be optional…

        ;-)

        1. Maybe you are unaware that there is NO requirement to actually talk about the prior art in a patent application….

          But he’s all about “patent quality”, folks!

          Sure he is.

        2. Like what it means for a claim form to be optional…

          Right. You could claim “A method, wherein said method comprises using a computer programmed to decide stuff, wherein the stuff is choosing betweeen [insert choices here].”

          Or you could pretend you were born yesterday, scriven a few hundred additional words of redundant irrelevant bal0ney, and laugh all the way to the bank. But don’t forget to whine and cry on some patent blogs about how the PTO isn’t granting enough junk fast enough! That’s important, too. It makes you look super serious. Just look at “anon”! He’s super serious. And smart, too.

          1. Nice dust kicking – You STILL need to recognize the law and what it means for a form of patent claiming to be optional.

            Let me know when you are ready to not misrepresent the law and what it means for a claim form to be optional.

        3. Would it not be helpful to the examiner and others to write in the specification:

          ‘..prior art teaches that computers may be programmed to follow rules to automate or assist users with any logical data processing task, regardless of the context. What distinguishes this invention is … .’

          It would make examinations go faster I think….

          1. SR,

            There is plenty of court created patent profanity that dictates that such a path not be taken.

            Also, there is a specific optional claim form that follows your suggestion. It is called a Jepson claim form.

            This link is back from 2009 – and I would imagine that the downward trend would have continued (into oblivion). Some dinosaurs (like Ned) still get confused and think that the optional Jepson claim form is (or should be) a legally required form (don’t tell him that the Legislature just did not see things that way):

            link to patentlyo.com

            1. “anon” There is plenty of court created patent profanity that dictates that such a path not be taken.

              We musn’t let facts get in the way of junk patents!

              LOLOLOLOLOL

              1. You do realize that patent profanity affects ALL patents, right?

                But you just could not help being an arse, eh pumpkin?

                1. Let’s not talk about junk “do it on a computer patents” and silly scrivening that a five year old can see right through.

                  It’s not fair! It hurts “anon’s” super serious fee-fees. Boo hoo hoo hoo! Let’s pretend that patents on logic are just like big boxes of protons. Super techn0!

                2. Funny that – I am the one presenting facts and law and Malcolm is the one presenting feelings and he attempts he old standby meme of AccuseOthersOfThatWhichMalcolmDoes…

                  “Go figure Folks”

    2. But, sure, the “real problem” is that Examiners are making it too hard for junk to get allowed. They aren’t citing the right art! Riiiiiiight. Thats the “real problem”. Sure it is.

      Other than no one actually arguing about “making it too hard” (as opposed to – you know – actually following the law), normally I do not even bother reading Malcolm’s “sniff of the day” examples, but this one caught my eye and turns out to be a real doozy.

      As bad as the claims are – what the F was the Office doing with this?

      There are Fifteen assignments (including the government as part of the GM bailout).

      The current assignment is to General Motros LLC [sic]. Yeah, it’s tough to spell “Motors” correctly.

      The first date listed on the image file wrapper is the filing date and “scan in” date of December 20, 2005 and it was in the Office for almost a full decade with the issue notification of October 14, 2015.

      A Decade…. Reminds me of another Decade “celebration.”

      Along the way, this thing has earned 2,388 days of patent term adjustment (of which 60 days has been already been deducted for applicant delays) – Just a matter of FORTY times as much delay from the Office, and only amounts to an extra SIX and half years of patent term.

      Non-final Rejection, Final Rejection, Appeal, reopen,
      Non-final Rejection, Final Rejection, RCE,
      Non-Final Rejection, Final Rejection, Appeal, Examiner Affirmed In Part, Notice of Allowance.

      And Malcolm wants to blame someone OTHER THAN the Office…?

      You know, because, SOMEONE must have made the Office grant this.
      I just bet that the damm scriviner made the Office grant this.

      Why didn’t the Office just follow Malcolm’s stellar “legal(?) advice that flows with such great abundance through these Augean stables…?

      1. Malcolm wants to blame someone OTHER THAN the Office…?

        Sure. I want to blame the incompetents at the PTO and I want to blame the b0ttom-feeding ethically challenged attorneys responsible for this junk.

        And then there’s the cheerleaders for junk, like you. You’re also to blame.

        Now go ahead and whine and cry when more reforms come. Because they are coming.

        SOMEONE must have made the Office grant this.
        I just bet that the damm scriviner made the Office grant this.

        Why don’t you dive into the file history, Sherlock, and tell everyone about the awesome arguments made in the multiple appeals?

        1. Once gain – pointing out your fallacious “logic” is just NOT the same as “cheerleaders for junk

          Pay attention son.

  11. You guys want to hear some thing funny? Lee says they were acknowledging the employees contributions in this cited letter to the editor in the WashPo newspaper (e-newspaper?). Only thing is, the article crows and crows about her “initiative” and then tells about what the examiners “know”. I see no mention of any contributions or acknowledgement thereof. Maybe you guys with your eagle eyes can spot the “acknowledgement” of the employees contributions and tell us about this “acknowledgement”.

    Dear Colleagues,

    You may have seen the recently released Government Accountability Office (GAO) reports focused on the USPTO. These reports make recommendations that are wholly consistent with the direction and initiatives our agency has adopted in recent years. In fact, you helped us identify many of these priorities well before the publication of the reports, and we continue to make good progress.

    We recognized your efforts today in a letter to the editor in The Washington Post responding to an article on the GAO patent quality report. While some news reports have not fully captured our progress to date, we can’t control everything that is written about us. But we wanted to reach out to you to say we and our leadership colleagues recognize the hard work you do day in and day out to deliver the best quality products and services to American innovators.

    Through your hard work and talent, we continue to make good progress on the important work we started in 2014 when we launched the Enhanced Patent Quality Initiative to further our efforts to issue the highest quality patents, and double down on our legacy commitment to do so – especially in an environment of continuing changes in technology and law. We will succeed in this continual process of improvement if we keep working with each other and with our stakeholders to find sound solutions to the complex challenges we face.

    It is through your dedicated efforts that the strength of the intellectual property system is ensured. It is a privilege for us to lead such highly skilled, dedicated, and hardworking public servants committed to serving America’s innovators.

    Sincerely,

    Michelle K. Lee

    link to washingtonpost.com

    1. Maybe she is talking about her “Quality Bandwagon Tour” of earlier this year….

      The rest, meh, just political spin.

    2. Lee: We will succeed in this continual process of improvement if we keep working with each other and with our stakeholders

      Don’t forget about the public, Ms. Lee. They’re your largest group of constituents by several orders of magnitude.

        1. Similar to the iron triangle of project management, the idea here though Ned is how do we transition from one triangle (which does not appear to make anyone happy) to a better triangle?

          The constraints you speak of are always true of any given static system. However, what we want is a change to the system – a change that let’s the triple constraint play out in a different manner.

          1. anon, no doubt, but input from the people who benefit from short times and low costs should, let us say, be avoided. Quality, if desired by the applicant, is in their hands: They can conduct their own searches, provide adequate and complete specifications, and make sure the invention is well claimed.

            1. I find your “short times and low costs” to be misleading Ned.

              Perhaps not on purpose (I am willing to give you some benefit of the doubt here since this is a somewhat nuanced area of law and policy), but misleading nonetheless.

              If a different triangle is located (the non-static condition), short times and low costs may be able to be achieved without the expense of quality (that would be the impetus to change the current static condition).

              Further, there may even be (within the current triangle, or one not so far removed) a legitimate consideration for a certain level of quality that may provide “short times and low costs” that – in the aggregate – MORE benefits the small entity or those seeking disruptive innovation.

              An attempt at a “straight” “short time and low cost” VERSUS “quality” discussion may very well obfuscate a decidedly inappropriate combination.

              To wit: perfect quality at such costs as to preclude the small entity or the entity that seeks disruptive innovation plays directly into the hand of the large, Trans-national who would love nothing else but to make obtaining patents prohibitive.

              Thus, under the (false) cover of “we want quality and who does not?,” the LARGER balance in DISfavor of innovation may be struck.

              I am sure that you agree that BOTH perfect quality cannot be achieved – AND that the “answer” CANNOT be to make costs prohibitive.

              1. None of this responsive to the fact that the quality of one’s patent is almost 100% under the applicant’s control.

                It’s not a coincidence that the least intelligent and/or willfully ign0rant commenters here and elsewhere on the Internets — the folks who are perpetually “confused” about Prometheus and Alice — are the same people who want the PTO to pretend everyone was born yesterday and have their hands held through the entire process.

                If you lack the intelligence to do a competent search of the prior art and write a claim whose scope and validity is easily comprehended, then the odds are a zillion to one that you deserve a patent on anything, much less a windfall and the ability to extract royalties from vast and diverse industries.

                It’s been said before but it’s worth saying again: the people who habitually complain the loudest about the PTO’s failure to grant more of their patents faster with “better examination” are the both the most self-entitled and the least self-aware people on the entire planet. Either that or they’re just disengenuous greedy whiners. One thing is for sure, though: they’re not remotely impoverished. On the contrary …

                1. You are (or should be) aware that there is NO requirement for any search whatsoever.

                  You seem to live in a different reality with different patent laws.

                  Further, there is absolutely NOTHING wrong with more patents faster. This is of course (inconvenient for you) along the lines that I have always held:

                  NO rubber stamping – either rubber stamping Accept Accept Accept OR Reject Reject Reject.

                  I realize that just does not fit your desired meme, but hey, you do not appear to be too concerned with reality anyway.

                  (and yes, I did notice that you attempted a different path to your “1Percenters are grifters” line of CRP as you target the single most accessible form of innovation (no duplicity there, eh Malcolm? – yeah right)

                2. there is NO requirement for any search whatsoever.

                  That depends on what you’re trying to do. For example, do you want a “quality patent”? Or do you want to play word games so you can defraud the public?

                  In some cases, the USPTO does in fact require that the applicant perform a search. Can you imagine?

                  Of course you knew that already. Because you’re a super serious person!

                  the single most accessible form of innovation

                  LOLOLOLOLOL Please, please, please keep on reciting that script, “anon.” LOLOLOLOLOLOL

                3. Are your p00r widdle feelings hurt because the law is just not what you want it to be…?

                  Awwww, p00r fellow.

                  Now getting back to reality:

                  Further, there is absolutely NOTHING wrong with more patents faster. This is of course (inconvenient for you) along the lines that I have always held:

                  NO rubber stamping – either rubber stamping Accept Accept Accept OR Reject Reject Reject.

                  I realize that just does not fit your desired meme, but hey, you do not appear to be too concerned with reality anyway.

                4. LOLOLOLOLOL Please, please, please keep on reciting that script, “anon.” LOLOLOLOLOLOL

                  Why not? that “script is a perfect comeback to your very own duplicity.

                  You have something against the non-1percenters or something? (well, you are all gungho for Hilary, and we both know that the uber-rich banking clan is what is running that dog-n-pony show)

                5. “If you lack the intelligence to do a competent search of the prior art and write a claim whose scope and validity is easily comprehended, then the odds are a zillion to one that you deserve a patent on anything, much less a windfall and the ability to extract royalties from vast and diverse industries.”

                  Awww, now now MM, shall our patent system not include the lesser amongst us?

                6. 6,

                  It is not a matter of “permission” from Malcolm as to include “lesser amongst us” or not.

                  It is a matter of law.

                  Quite simply, Malcolm (and Ned) seek something that is just not there.

                  As I point out to Ned at 24.2.1.1.1.1, there is a ruse about “quality” that one simply must be aware of. It is a logical fallacy to assume that perfect quality (no matter HOW defined) at the expense of making participation prohibitive simply will not do.

                7. Let me restate that:

                  The ruse of “you must not want quality” will not do, when that very “want quality” is tied to making costs so high as to make participation prohibitive.

                  Thus, Malcolm’s smarmy replies are merely evidence that he does not understand that the patent system (ESPECIALLY in the US) was geared so that ALL may participate, even those of meager means.

                  This is yet another side of his duplicity (as mirrored in his desire to remove – as a category, in a de facto manner – the form of innovation most accessible to the non-wealthy; that category being software).

              2. “If a different triangle is located (the non-static condition), short times and low costs may be able to be achieved without the expense of quality (that would be the impetus to change the current static condition).”

                Anon believes in magic!

                “perfect quality cannot be achieved”

                That depends on how quality is defined.

                1. Anon believes in magic!

                  This is the second time in a less than a week in which you have offered up as a reply a meaningless “magic” statement.

                  Do you really need for me to explain to you the concept of the iron triangle as it applies to a static system, and that a different iron triangle will apply to a different static system?

                  And please, your non answer of “That depends on how quality is defined. is nonsense, since the discussion depends on an inte11ectually honest treatment of defined quality.

                  I am not interested in any version of your definition that simply avoids fixing anything.

                  We (and this clearly includes the GAO) have had enough of the past Office “definitions” that solve nothing and earn “great quality” ratings.

                  Aim higher than simply walking without tripping and chewing bubblegum at the same time.

    3. >>While some news reports have not fully captured our progress to date

      Has any report indicated any progress to date?

  12. I am a professional patent searcher and take my work and industry very seriously. To keep my working life enjoyable; I live, work, and attend meetings within a bubble of others having a similar attitude.

    Unfortunately, the view that searching can and should be taken seriously has never been echoed by the USPTO or seemingly by the large organizations that represent patent attorneys. We are not even citizens in the world of patents because citizens are allowed to vote and have opinions. Attorneys and Applicants are considered first class citizens, Examiners and Agents are second class citizens. In the baggage hold are professional searchers with tons of experience and knowledge, but zero claims to stakeholder status.

    The GAO report on searching is a true breath of fresh air. This is the first time I have ever seen the foundation of patent prosecution (the search for prior art) have a light shone upon it.

    I truly welcome this light and hope that the USPTO acknowledges what the independent GAO has identified as a real problem. My cynical heart with 20 years of patent experience knows the light will likely be fleeting, but it feels good to have hope for a little while.

    1. PS DIP,

      I for one have always appreciate your knowledgable views.

      Thank you for persevering even as you may feel that your views are not taken into account.

    2. Great post PS DIP. I hope that the PTO starts to take searches more seriously. I get to see that the EPO does a better job in both prosecution and litigation because I see the same application receive two searches: one from the US and one from the EPO.

      The EPO’s is almost always better. Couldn’t they just hire the EPO searchers?

      (PTO examiners are probably as a whole better than EPO examiners.)

      1. Night, part of problem might be that the PTO not taking searches seriously, but identified problem is that the claims as-filed are overbroad and indefinite, and given that the examiner is required to conduct only one search under compact prosecution, that search often is askew.

        Therefore if the patent office were to truly take searches seriously, it would do something about broad and indefinite claims– either that, or recognize that the patent bar is filing claims that cannot be searched reliably. A possible solution would be to examine claims without reading the specification or looking at the drawings, and issuing rejections based upon the search results. Obviously, this is going to be nonsense in most cases because of the way the claims are written. Thus the applicant will have to amend to clarify the claims, in which case the examiner was simply issue a final rejection and require an RCE.

        All this extra expense will be paid by the client; but if the client were savvy, he would ask that the law firm or attorney, as the case may be, absorb the extra expense because it is result of attorney malpractice.

        1. possible solution would be to examine claims without reading the specification

          Just WOW.

          You really do not get how ridiculous that is, don’t you?

          I mean, seriously Ned, there is nothing like getting stuck in your own way is there?

          You want to say attorney malpractice for the Office NOT doing their jobs…

          With friends like this, patentees need NO enemies.

        2. Ned, no. The problem is not the claims or the applications. Did you not read what I wrote? Same claims. Same application. Two searches.

          Moreover, I’ve done a number of opinions and worked in litigation. The notion that overbroad claims make search hard is absurd. The opposite is true. Giant broad claims are easy to find art for.

          Please Ned try to stay at least in the same galaxy as reality.

          1. Night, this is not as simple as a claim describing a larger circle surrounding a narrower invention, where a dependent claim may have what eventually is found to be the novel feature. It is about the used of broad, generic, and indefinite terms in claims that have no well understood meaning and which cannot be searched reliably.

            Consider the stool: a platform having three or more legs affixed to one side.

            Now consider this claim: a first member and a plurality of second members affixed thereto.

            Just how does one search the latter?

            1. Ned, simply, one doesn’t. The EPO can explain to you how to treat hopelessly wide claims, such as are tossed at them by Applicants from the USA. They developed their techniques during the period when US patent attorneys played the role of PCT prosecutor and the IPEA of choice for them was the EPO.

              As you know, EPO declines to examine any claim which, through amendment, ends up directed to subject matter not searched. It’s the cost of filing a divisional that keeps Applicants realistic, in what they claim at the EPO.

              1. I have done a lot of EPO prosecution. And what Max said is exactly right. The examiner tells you what they searched. They read the specification and take into account that you may only claimed some embodiments and they search those embodiments along with other related embodiments in the spec.

                If you change the claims off of what they searched, then you have to pay for a new search.

                Great system. Exactly the way it should be.

                1. As Night observes. But you get to pay a further search fee only if you file a divisional. And if you get nothing to issue out of your original filing, and explain to your client that a (mighty expensive) divisional is the only way to get anything, you have on your hands a client who is not best pleased with your efforts.

              2. Well, Max, as Night said, a great system. But it is the same system in the US if the claims as filed are effectively unsearchable causing the applicant to amend to clarify. The examiner must do a second search — and today they do it in an RCE.

                Thus hamstringing RCEs and forcing the application to issue with a bad search followed by a narrowing amendment that begs for a further search is a formula for disaster.

                Now, some might think that some examiners abused the RCE process. Perhaps. Perhaps not. But since it now appears that 90% of examiners experience broad and indefinite claims that cannot be effectively searched, it appears that there is a large problem caused by patent attorneys themselves. We simply cannot pretend this does not exist.

                What I would really like that examination not be disrupted by the need to file an RCE. What I would like is for the applicant to have the option to pay for a second search. Perhaps authority to do so could be made on filing so that the examiner would not even have to ask.

                1. Ned Heller on his latest runaway Windmill chase…

                  Utter CRP Ned – You keep on overlooking the very first requirement of the examiner prior to the search. You keep on wanting your bizarre “No spec look” search out of the blind when such is utter CRP.

                  You also remain c1ue1ess as to the RCEs, their history of abuse, and how they are instituted currently. “Hamstring RCEs…? Force to issue yet again?

                  I don’t know who you think you are f001ing by blandly repeating your nonsense over and over and over again, but the picture you are trying to paint is not of this world.

          2. “Moreover, I’ve done a number of opinions and worked in litigation. The notion that overbroad claims make search hard is absurd. The opposite is true. Giant broad claims are easy to find art for.”

            That’s because you have a fixed target that cannot be amended. Duhr.

            In prosecution, the target is a constantly moving target that is only “fixed” “for now”. And of course it makes it simpler to find a reference and send a shtty action divorced from the thing in the spec. But then, you have to go back and search again when they amend around that reference if you cut your search off early. If you don’t cut your search off early then the search balloons and balloons.

    3. Unfortunately, the view that searching can and should be taken seriously has never been echoed by the USPTO or seemingly by the large organizations that represent patent attorneys.

      Not true. It depends on the searching. In the grown-up arts, the PTO along with the rest of the world went to great lengths to establish a wholly separate system for both claiming and searching large biomolecules.

      But we all know that the game-players and b0tt0m-feeders who thrive in the “do it on a computer” patent world thrive in an environment where everybody — especially themselves — pretends to have been born yesterday. Let’s make up a new term to describe an old logical method and pretend that the new term has some “structural” significance! Then do everything possible to fuzz up any attempt to define the term. Salt the specification with all kinds of meaningless non-limitations that can be added to the word salad, forcing the Examiner to continually find more and more “evidence” that the “limitations” (recited in the most obtuse terms possible) are in the art. Then point at all the references you forced the Examiner to cite and whine “It’s total hindsight to use six references to make an obviousness rejection”, even when five of those references are cited only because the applicant chose to drop a three hundred word sideshow of unpatentable irrelevant bal0ney into the claim.

      1. MM, the cynicism of your post is fully justified. That is exactly how many patent attorneys and patent firms draft, file and prosecute patent applications. I have seen it a lot and I cannot believe nobody has done anything about it. It is responsibility I think of the patent office to put an end to this kind of abuse of process.

          1. what exactly could the office do without substantiative rule making authority?

            Lobby hard and relentlessly for the necessary changes instead of bending over backwards to satisfy the b0tt0mest b0ttom feeders in the history of any patent system that ever existed.

      2. According to the random examiners on this site, the number of references combined is not relevant to the issue of obviousness, so no examiners should be withdrawing rejections based on the number of references combined. Nor should the Board be reversing rejections based on that argument.

        1. AAA JJ the number of references combined is not relevant to the issue of obviousness, so no examiners should be withdrawing rejections based on the number of references combined. Nor should the Board be reversing rejections based on that argument.

          Should the Board be wasting its time hearing rejections based on that argument? Because the argument is made habitually by the usual junk peddlers, not just to the Board but all the way up to the Federal Circuit. If they could force the Supremes to hear the argument, they’d make the same arguments there. Heck, the junk peddlers will argue “if it was so obvious why it wasn’t invented before?” at every possible opportunity.

          But they’re super serious people. We have to pay attention to them. Without patents on saving information and copies of information “on a computer”, we’d just be losing data all the time. Instead, thanks to zillions of junky “do it in on a computer” patents, lost data is a thing of a past, just like crashes and security breaches. That gives us all more time to watch the ads that are shoved in our faces. So awesome.

          1. You do realize that you completely spun that point 180 from the intended perspective with your “so serious” CRP, right Malcolm?

          2. “Should the Board be wasting its time hearing rejections based on that argument?”

            How long does it take the average APJ to insert the form paragraph about the number of references into a decision?

        2. You’re correct it is not relevant. But some spes/primaries/examiners/aus don’t follow the case law. I know people who have spes who term them to allow if there are more than two refs for an independent claim.

          Some spes don’t want to see ksr rationales, ignoring the law.

      3. How weird that the anti-patent judicial activists don’t want to improve searches or are trying to shift the burden to the applicant.

        Just bizarre. I think anyone that has some objectivity can see why the anti-patent judicial activist are so toxic for patent law.

        1. How about a legally cognizant definition of “grown-up arts” – one not based strictly on Malcolm’s feelings…?

        2. Could you give us examples of the “grown-up arts”?

          Oh lookie! PatentBob wants to have a serious dialogue!

          LOLOLOLOLOLOLOL

          I’m talking about pretty much every art that amounts to more than functionally claimed vapor in magical plastic box with a viewing screen. Probably a difficult concept for know-nothings like yourself.

          1. MM’s comment is basically a jeer. I think Dennis at some point you have to take responsibility for allowing one commenter to take over your blog with jeers.

            1. Malcolm has been like this for TEN years (documented fact)

              You are not holding your breath, are you?

  13. If the USPTO improved the quality of their search to EPO quality, the quality of issued patent would soar.

    Reality: I have worked for most of the big tech companies and some of the biggest NPEs (some would call the most egregious trolls). And, they all want quality claims. They don’t want me to write claims that are allowed. They want claims that are patentable over the cited art.

    GET: that it is a 1ie of the anti-patent movement that this is not true. The real innovators don’t mind improved patent quality. What it ends up doing is putting more pressure on the engineers to come up with innovations that are patent application worthy. That is just reality from personal experience working with many large international corporations, small companies, and start-ups.

    Try reality. Much more fun than K Street nonsense.

    1. That just doesn’t fit the pre-ordained script that those who want patents are mean-spirited G-g-g-grifters.

      You are threatening the self-appointed position of certain watchers over the fields of rye with that kind of talk.

  14. AAA JJ>What would be interesting is to compare the amount of time European examiners, who find much better prior art, get for searching the exact same applications that U.S. examiners are floundering around with and crying like babies that they need more time to search. My guess is that we’d find out that European examiners probably get around the same amount of time. And like I said, find better art.

    I just wanted to highlight this in case someone who has knowledge about EPO time allocations doesn’t read deep into the sub-replies. I had earlier asked MaxDrei about this and he didn’t know either.

    1. It would also be interesting to see what percentage of the examining corps, and the percentage of the legions and legions of useless GS-15’s, got “outstanding” ratings in the quality aspect of their PAP. I bet it’s pretty high.

      So they’re all doing “record breaking outstanding quality” work, but they need more time.

      Right.

      1. The ‘useless GS-15s’ aren’t the ones complaining about how unfair the disposal hours are. They’ve been elevated beyond the petty concerns of production.

      2. That’s because the quality ratings right now are near completely divorced from “quality” because of the terms of the PAP. Which is probably for the best.

          1. I’m not sure where you think the GAO stated the opposite anon. I did not see such a thing and I skimmed both documents.

              1. The headline is not the opposite, I quite agree with them that the office needs to define and improve quality. Quality “ratings” being divorced from actual quality due to the terms in the pap is a separate matter. The pap is an ungangly beast that must account for the lowest common denominator of person they want to keep on staff anon. That is not a very good tool for improving quality, at all.

    2. An EPO Examiner has (as far as I know) better search tools. An EPO Examiner will work out what the Applicant is going to have to narrow down to, and make sure the search covers that.

      How can the EPO Examiner know in advance what Applicant is going to have to narrow down to? That’s another story, for a different posting.

      1. The EPO tools are better than the USPTO tools, but not by an insurmountable amount. Knowledge of tool strengths and weaknesses would eliminate most of the inherent advantage.

        From the report is appears that the EPO examiners receive twice the time a US examiner has on a per case basis. Interestingly, JPO examiners receive half the time a US examiner receives per case. However, they are reviewing a very different type of filing…

        My personal opinion is that the EPO searches more effectively because they search narrow to broad as compared to the USPTO taught broad to narrow methodology. It would take me too long to spell out the difference between the two techniques here.

        1. “The report”?

          I was just looking through a 2009 thread where a former USPTO examiner said that EPO examiners got double (32 vs 15 for a particular art unit) time for examination.

        2. “From the report is appears that the EPO examiners receive twice the time a US examiner has on a per case basis. ”

          Lulz no kidding?

          “Interestingly, JPO examiners receive half the time a US examiner receives per case.”

          That explains why JP art is nearly always completely worthless.

          1. You should also look at the claims that are filed in Japan. They’re incredibly narrow and often (when translated to English) incomprehensible. That’s another reason the Japanese Examiners have different art.

    3. Bob, European examiners get a LOT more time per application and work in teams to examine applications. EPO examination also costs applicants more.

  15. Let’s look at an example claim to see how an “improved” Examination system would work.

    Consider a world where (1) saving information is old; (2) saving information corresponding to or describing the saved information is old; (3) saving information instantly (at any “point in time”) is old; (4) saving copies of any of (1)-(3) is old; (5) describing and recording changes to saved information is old; and (6) keeping track of the where any of the information in (1)-(5) is stored is old.

    In light of those facts, what happens to this claim and how long should it take for that to happen?

    link to google.com

    13. A method comprising:

    creating a storage object corresponding to a storage volume, wherein said storage object comprises a point-in-time copy of said storage volume and a storage volume map;

    replicating said storage volume utilizing said storage object; and

    identifying a first set of one or more modified regions of said first storage volume using said first storage volume map, wherein

    said creating a storage object comprises creating a first storage object corresponding to a first storage volume,

    said first storage object comprises a first point-in-time copy of said first storage volume and a first storage volume map,

    said replicating said storage volume comprises copying data from said first point-in-time copy of said first storage volume to a second storage volume, and

    said identifying a first set of one or more modified regions comprises, storing an extent, wherein said extent comprises a reference to a modified region of said first set of one or more modified regions and a length.

    Answer

    a) 30 minutes
    b) 60 minutes
    c) 180 minutes
    d) Three+ years

    1. If you take the position as I do that a new function or result is essential for inventiveness and hence patentability:

      (a) not apparent on the face of the claim that sufficient elements are defined in an ordered combination to provide a useful new function or result;

      (b) prima facie objection under 101/103 that on its face the claimed subject matter even if new has no novel utility and is not even an inventive new way of accessing existing utility;

      (c) time to rejection 20 minutes.

      On briefly looking at the specification it looks as if there is a useful advance somewhere. But this is not it.

    2. MM, I agree with Paul. All this claim calls for really is to create backup from snapshots and noting modified regions (since the snapshot, I presume).

      Seems old and obvious. But if even if it were new to create backups from snapshots, the only states the result, and does actually describe anything more.

    3. If (1)-(6) are “old” as you say, it shouldn’t take too long to find evidence of that, and with OACS (or whatever the PTO calls the OA generating software these days) it shouldn’t take too long to cut and paste together an OA. So I’d say the answer is a). At the most c).

      1. If (1)-(6) are “old” as you say

        If? If the sky is blue … if the earth is round … if we need air to breathe. So many ifs! So many questions! Amazing that we need to not only ask these kinds of questions in 2016 but we have to prove the answers to some people …. weirdly enough, it’s the same super smart people around whom the world turns (in their own enormous brains).

        it shouldn’t take too long to find evidence of that,

        Because these super serious applicants — techn0 rock stars who deserve millions and millions of dollars — are totally unaware of all this! They need to see *evidence* that you can save information and copy it. They need *evidence” that describing changes to information is old. They need *evidence* that information about changes made to data can be saved for later retrieval. So sayeth AAA JJ, freshly finished from puffing himself up and delivering a stern sermon about “consequences” for “lazy know-nothings.”

        Try to believe it, folks.

        1. MM, can you describe just how to take a snapshot of a dynamically changing disk drive? It is not like taking out a camera and clicking.

              1. Actually, Bob – quite the opposite.

                I am not surprised though that your bias shows as it does.

                1. LOL – two examiners not “getting it,” and name-calling in response.

                  Yay ‘ecosystem’ !

          1. can you describe just how to take a snapshot of a dynamically changing disk drive?

            I don’t have to. First, it’s in the prior art, by the applicant’s own admission. Second, as presented in the claim (“point in time) it’s self-serving functionally claimed nonsense that should be assumed to be in the prior art for that reason alone (i.e., because it’s functionally claimed). Lastly, there is no “snapshot” of any disc drive. Nobody is taking a picture of anything. Don’t let the dust kicked up by the applicant blind you.

            1. Nice – we have moved past Malcolm’s typical asinine statements concerning making “objective physical structure” more than just an optional claim format and augmented it with his ultra vires “anything NOT objective physical structure” should be deemed to be in the prior art.

              Must be nice to live in a fantasy land, unconstrained by such inconvenient things like the law, as it is actually written.

              But lol – do watch out for that dust that others are kicking up…

              What a schmuck.

            2. MM, I am going to assume that what you say is correct that taking a snapshot of whatever data store is identified is old in the art. Then the only thing the claim actually claims is using the snapshot to create a backup and the store with it the location and length of changes.

              One does have to wonder how a claim of this breath issued because it seems quite obvious.

        2. “They need to see *evidence*”

          Yeah. I do. And your problem with that is…what exactly?

          Are you seriously suggesting that the system should allow the examiner to reject a claim by citing…nothing? Is that really what you’re suggesting? Please tell me it is. Because I can’t think of any better proof that you’re not an actual practitioner than an admission that you’d be fine with a system where the examiner was permitted to reject your claims without citing any evidence.

          So is that seriously what you’re suggesting? Yes or no?

          1. Are you seriously suggesting that the system should allow the examiner to reject a claim by citing…nothing?

            No. I’m suggesting that lazy know-nothing applicants deserve what they get.

            1. So if everything in the claim is old, why didn’t the examiner easily find it and reject the claim convincingly enough to either persuade the applicant to abandon the application, or appeal and then convince the Board to affirm the rejections?

              What’s your evidence that the claim is anticipated or obvious? Let me guess, you don’t have any.

          2. you’d be fine with a system where the examiner was permitted to reject your claims without citing any evidence

            Again: evidence of what? The sky is blue? Humans have brains and use logic to figure stuff out? Humans use computers to make logical processing faster? People save information that they might want to retrieve later?

            You need evidence of this? Why? Are you really that ign0rant?

            1. I don’t need any evidence of any of what you said (i.e. the sky is blue). I don’t see any claim to the sky is blue in the patent you posted.

              Again, are you seriously suggesting that the examiner should have been permitted to reject that claim by just stating, “The claim is not patentable because humans use computers to make logical processing faster and people save information that they might want to retrieve later.”

              Is that seriously what you’re suggesting? And if it’s not, what’s your proposal for making sure examiners can reject claims like that if the claims are truly not novel or are obvious?

              1. are you seriously suggesting that the examiner should have been permitted to reject that claim by just stating, “The claim is not patentable because humans use computers to make logical processing faster and people save information that they might want to retrieve later.”

                Try to believe it, folks.

                And AAA JJ wonders why Examiners don’t kiss his little behind.

                1. So you are suggesting that the examiner should be able to reject the claim without citing any evidence.

                  That’s what I thought.

                  Try to believe it, folks.

                2. Well, you KNEW that Malcolm was not going to give you a simple and direct answer to your simple and direct question, right?

                  (still worth a shot though – and he does make himself look like a game-playing evasive arse yet again)

              2. I don’t need any evidence of any of what you said (i.e. the sky is blue). I don’t see any claim to the sky is blue in the patent you posted.

                LOL

                Computers save information. It’s useful to save copies of information. You can copy information on one computer onto another part of that computer or onto another computer. You can keep track of where you put information or the copy of the information. You can keep track of changes to the information. You can use the location of the information to retrieve the information or a description of the information. You see any of that in the claim? You need “evidence” for all that stuff? Really?

                And let’s say that “wherein the sky is blue on the planet where the system is located” was added as a “limitation.” Do you need “evidence” in that circumstance?

                We all know what happens next. You count up all the references and you tell a little whining story about “hindsight.” Yes, it’s a super serious game.

      2. AAA JJ, what is the invention here, really? When a disk drive is being used, the only way to back without stopping all writes to the disk drive it up is to take a snapshot and note the differences. Is that the invention, really?

        Or is it the way they did it, how they took a snapshot of a rapidly changing disk drive and how they noted subsequent changes?

        But, you say, if they are limited to the way they did it, the patent would be too narrow. But so what? What gives anyone the right to patent non equivalents of what one discovers or invents?

        1. the way they did it, how they took a snapshot of a rapidly changing disk drive and how they noted subsequent changes?

          Because nobody ever made a retrievable record of changes before.

          1. Nobody ever made a configuration of protons, neutrons and electrons before…

            Yay, ride that “logic” Malcolm !

            1. Nobody ever made a configuration of protons, neutrons and electrons before…

              But “anon” isn’t defending this incredible pile of “do it on a computer” junk.

              Nope. He’s a very serious person!

              1. LOL – pay attention son – deconstructing your asinine “logic” is NOT the same as “defending a junk claim.”

                It’s a rather straight forward concept – and just means that YOU need to make a better argument for the positions that YOU want to “defend” in the legal manner that you are attempting to defend them.

                The alternative is merely you wanting a type of Ends without regard to the Means to those Ends. Any decent attorney would be apalled at the way that YOU go about things (and echo Ned is NOT a decent attorney, given his rampant “6-is-an-Einstein-because-he-agrees-with-me” affliction.

              2. It’s an “incredible pile of ‘do it on a computer’ junk”?

                It had two IPR petitions filed against it. One was denied. One was granted. The granted petition resulted in cancellation of 7 of the 17 claims.

                And hey, guess what, the IPR petitioners cited actual evidence against it. But I’m sure a really awesome practitioner like you could have gotten all 17 claims canceled simply by telling the PTO, “It’s an incredible pile of ‘do it on a computer’ junk.”

                Why don’t you try that? Against any patent you’d like. If you actually succeed with that, send me a bill for your time and troubles, and I’ll pay it.

  16. AAA JJExaminers don’t need more time….What the examiners, but more importantly the legions and legions of overpaid, underworked, know-nothing, do-nothing GS-15’s who “manage” the examiners, need is: consequences.

    The beatings will continue until the PTO is happily cranking out the junk that AAA JJ and his clients desperately crave!

    Super serious stuff.

    Does anybody believe that the defenders of computer implemented junk who comment here regularly really care about “patent quality”? If so, I’ve got a bridge to sell you.

    1. The editors should note that Malcolm’s post here is PURE ad hominem.

      His only premise not to have accountability (likening it to “beatings”) is that certain groups which he chooses to denigrate “really don’t want quality improved” – no matter the fact that members of the group that he would wantonly denigrate are saying the exact opposite.

      THIS IS NOT A NEW TACTIC BY MALCOLM.

      1. His only premise not to have accountability (likening it to “beatings”) is that certain groups which he chooses to denigrate “really don’t want quality improved”

        Remember folks: “anon” and his c0horts are on the record that if they had it their way the CAFC’s infamous State Street opinion would be the law of the land.

        Can anyone argue with a straight face that State Street improved the quality of US patents??! History shows that it was at least partly responsible for the creation of an unprecedented and massive bubble of junk that we’ll be wading through for years to come.

        1. And these same people are also fighting relentlessly to eliminate IPRs and CBM review — the most effective t0 0ls presently available for dealing with junk patents.

          Now they want everyone to believe they are serious about “patent quality.” It’s absurd.

        2. Nice double down.

          Note editors that Malcolm neither denies not apologies for his PURE ad hominem.

          Instead he seeks to “justify” his post with an accusation of “Oh Noes – State Street” which does not fit, because as I have repeatedly told Ned (who tries the same trick), that my position relies on original law and NOT State Street.

          He then triples down by obfuscating a separate issue of law following proper means with some unsubstantiated notion that we must not want “quality” because we happen not to want to engage in his own version of “the Ends justify the means.”

          This is pure CR@P, and this type of post is nothing new from Malcolm.

          So editors, are you serious about your “rules”…?

          If so, let’s see the Malcolm pure ad hominem and follow-up posts using dissembling “logic” posts be treated accordingly.

          1. PURE ad hominem

            This is probably above your pay grade (and I’m being kind here) but I’m plainly not arguing that “the need for improved patent quality is b0 gus because anon is a d00 d00 head”. That would be “pure ad hominem.”

            I’m saying something else entirely. The fact that you can’t understand this is noted. Also noted is your childish and incredibly hypocritical whining about “ad hominem arguments.” Like nobody’s noticed you (and your c0horts’) zillion inane insults about “academics” in addition to your countless other reptile brain contributions here.

            1. Yet another dip into the ad hominem bucket – above my pay grade…?

              Well editors – let’s see what you do.

              The rules are as the rules are enforced (even Malcolm’s “pointing out” of the supposed “hypocritical whining” severely misses the point).

              1. See link to patentlyo.com

                Along with the “1984” comment there, it appears that the manner of actually applying any “rules” meets the following observation:

                all animals are equal, but some animals are more equal than others

                The “rules” “ARE” as the rules are enforced.

                Good or bad, the “ecosystem” will mirror that version of “rules” moreso than any mere hyperlinked (but non-uniformly enforced) version.

    2. So, basically you’re upset because inventions get implemented on computers? Is that the problem?

      I don’t mean to upset you, but there are millions of new and useful inventions on a computer. That system that will turn on your brakes so you don’t slam into the car in front of you? What do you think makes the decision to turn on the brakes? That MRI you just got to see if you have a brain tumor, what do you think takes the data and turns it into a pretty picture? That Alexa that I use every night to turn off my lights, what do you think does that? That engine control unit in your car that allows you to get to wherever you go (or perhaps pollute more than your car should ;-), what do you think that is? That “computer” that allows you to constantly reply and reply and reply and reply and deni grate people here, what do you think runs that? That system of machines that gets my products when I order from that large online store, what do you think controls them?

      Maybe you don’t know.

  17. 1. Which words would the GAO like defined in the Glossary?

    2. Did the GAO report include a glossary?

    No? Then it is too hard to understand and should be ignored.

  18. Examiners don’t need more time. They wouldn’t use it to improve quality one bit. Kappos gave them more time and it did nothing, absolutely nothing, to improve the quality of OA’s being issued.

    What the examiners, but more importantly the legions and legions of overpaid, underworked, know-nothing, do-nothing GS-15’s who “manage” the examiners, need is: consequences.

      1. Accountability would be a start.

        There’s entirely too much “failing upward” at the PTO. The people who get promoted to the cushy GS-15 positions are the ones who gamed the system best. They in turn teach that behavior to those they “manage.” It’s a never ending cycle.

        Here’s an idea for some consequences for everybody at the PTO. Let’s make PTA really matter. If you get PTA for an issued patent, that PTA gets added to the front of the patent term, not the back. In other words, if you get a year, or two, or three of PTA, you get to delay making your first maintenance fee payment by that amount of time. So instead of having to pay your first maintenance fee at 3.5 years, you don’t have to pay it until 4.5 years, or 5.5 years, or 6.5 years. As fees, and generating them, is the only thing some folks at the PTO care about, or have any aptitude for, make them understand that their behavior could affect the revenue stream.

        It’s a simple proposal. And it would affect behavior at the PTO.

        1. I like that idea as well. Currently, extensive PTA gen erally benefits the selective Pharma world where the biggest bang for the buck comes at end of term.

          Make the consequences felt more uniformly at the beginning of the term will certainly help make the point (but I do notice that this still lacks a tie back to the originating behavior, so the idea, while definitely a good one, will not suffice in and of itself).

    1. >>Examiners don’t need more time. They wouldn’t use it to improve quality one bit.

      The survey shows that a significant fraction of examiners report greater certainty finding the most relevant art when they take more than the allotted time. That’s actual evidence, not anecdote, that giving more time would improve quality.

      1. Bob, the reporting by examiners IS anecdotal.

        Your statement does not reach the point that you think that it does.

              1. It’s a serious question. If you can’t answer it, that’s fine.

                Maybe the question is too hard for you. Or the deliberate obtuseness that naturally comes from being an examiner has set it. I’ll rephrase: Are examiners supposedly experts in the art they examine, or are they experts in searching?

                Personally, I don’t think examiners are experts in either. But I am interested in hearing your opinion.

                1. Examiners are not expert in either.

                  I seem to remember an examiner on here years ago bragging about finding “knock out killer 102(b) prior art” with 5 second Google searches. That guy was an expert. Apparently. Now everybody over there needs more time to find art.

                  What happened?

                2. “Now everybody over there needs more time to find art.”

                  You’re stuck in some sort of bizarro “find art” rut. Nobody is just looking to “find art”, or if they are then they are doing it wrong. What we are doing is conducting a search. What is needed is more time to conduct the search, as in, literally be able to find and flip through all the relevant sht. “Finding art” is secondary to conducting a responsible search and will happen on its own if the responsible search is carried out while the examiner is not asleep at the wheel.

                3. “You’re stuck in some sort of bizarro ‘find art’ rut.”

                  No. I’m not. Are you telling me that you didn’t post exactly what I said you posted?

                4. “Are you telling me that you didn’t post exactly what I said you posted?”

                  I don’t recall you saying that I posted something. What I posted was:

                  “And at office procedure in finding that art.”

                  Which is a fact. Examiners are experts at office procedure for finding art. This has squat to do with what I or anyone else in this thread is saying more time is required for in the modern day.

                5. So…

                  “expert at the procedure of”…

                  Well that explains the expertise of cutting and pasting…

                  ;-)

              2. Bob,

                Your reply is unseemly.

                Perhaps instead of getting bent out of shape, you should instead recognize what “anecdotal” actually means.

                Your statement does not reach the point that you think that it does.

                (It just does not matter that you want to label the anecdotes to be “anecdotes from experts” – calling examiners experts does NOT change the nature of what you have).

                1. Can you provide the definition of anecdote that you’re using which includes randomly sampled population surveys?

                2. Anecdotal is that which is based on “stories” – as opposed to verifiable facts.

                  Opinion – even “expert” opinion is not facts.

                3. A randomly sampled survey is by definition not anecdotal. The individual data points may be anecdotal, but individual data points are inherently annecdotal. The value of the survey as evidence is far greater than AAA JJ’s unsupported opinion.

                4. What would be interesting is to compare the amount of time European examiners, who find much better prior art, get for searching the exact same applications that U.S. examiners are floundering around with and crying like babies that they need more time to search. My guess is that we’d find out that European examiners probably get around the same amount of time. And like I said, find better art.

                5. 6,

                  The procedure for the courts treatment of experts is vastly different than what is the topic here. If anything, your comment helps prove my point, so thanks for that.

                6. A randomly sampled survey is by definition not anecdotal.

                  Sorry Bob, but that is complete h0gwash that you just made up.

                  Merely claiming “by definition” does not make it so – not in this context.

                7. AAA JJ, the EPO searches cost more as well. But I think the average skill level of the European Examiner is way up there vis-a-vis the US examiner. They have to know three languages, after all.

                8. Ned says that EPO Examiners have to know three languages. Indeed, the three EPO official languages, English French and German. Bear in mind that a high proportion of them come from an EPO Member State with a language other than English, French or German. They therefore function in four languages. at least. On top of having a degree level specialisation in the science or technology they examine.

                1. I merely meant they know what it is they do. But yes, they do appear to know how to cut and paste…. which is not trivial when your source documents are .pdfs…

    2. “Kappos gave them more time and it did nothing, absolutely nothing, to improve the quality of OA’s being issued.”

      You say that, but it has “staunched the flow” of declining quality so to speak. Be clear, I personally know primaries that are, right now as we speak “just allowing things” because they don’t have sufficient time to literally quickly look through all that they deem appropriate to look over (and they are right to do so, and they are right that more likely needs to be looked over). The ballooning of art is in overdrive thanks to the overclassification methodology of the CPC, coupled of course with increasing filing rates and publication rates outside the patent office.

      And remember, anytime yonder expert defers searching something that he thinks needs to be searched in his expert opinion quality does suffer, it’s just that nobody ever knows that it suffered except him, and even he isn’t sure of it (because the search action is foregone).

      This does not mean of course that OAs will magically become better written or reasoned or facts better found or claims will be better construed merely be giving more time. Only training and a change in culture (likely coupled with a dose of infinite knowledge for every examiner) would do that, likely coupled along with the improvements in the ability to search mentioned above.

      At this point, it is my hypothesis that the office is so behind that any increases as of today will likely be merely sufficient to “hold what you’ve got” in terms of quality.

      And just as an fyi, “beatings” aka consequences of whatever sort or whatever you’re proposing are unlikely to be helpful in your quest. You cannot “punish” people for poor quality who are not well trained enough to know better, or who are embedded in a culture mandating such. That’s just st up id and would make the leaders in charge simply be bad leaders. As to your suggestion about the fees, meh. I don’t know many people around here that give two hoots about fees. Plus, getting rid of PTA terms would do little to improve the quality of the action received, all it would do is ramp up pressure to send you a bad action faster. So then you can enjoy your bad/worse action that was delivered sooner (lulz).

      The more I look at the overall picture, the more it appears the only answer to truly address the problem “in full” is an “all of the above simultaneously” effort going all out with absurdly good leadership to change culture and implement everything, absurdly good instant training in all complicated legal matters that is instantly completely comprehended by all trainees, consequences for wrong actions that do not negatively reflect on the leaders and teachers, or even “the accused” all that much, increased guidelines for searching, and increased searching, and a few other things all of which is fantasy and would require personnel that literally do not exist on the face of the planet, and cannot realistically be created. And, all of which likely isn’t worth the costs.

      1. Not having sufficient time is NOT a proper reason for allowing anything.

        6, you continue to be wrong about a fundamental aspect of the job – continuing to confuse a management metric for measuring performance in the job with the job itself.

        1. “Not having sufficient time is NOT a proper reason for allowing anything.”

          Sure it is. When a primary’s search time is done, and the bare minimum searching is complete, the case is finished. That’s the way it has been forev, and the way it will always be.

          “management metric for measuring performance”

          It isn’t a mere “measuring device” id iot, it is a “requirement” of the position. Read the pap again.

          1. Read my post again 6 – note the difference between the job and performance measurements of the job.

            1. “note the difference between the job and performance measurements of the job.”

              How about instead I simply note that you’re and idi oto?

              1. How about you do as I ask instead of the empty name-calling.

                This place has rules against that, dontcha know?

                (although I see why you may be confused about that)

        1. I think implementing a middle round of prosecution is a plausible step in the right direction. But since it would dramatically increase processing time, don’t look for management to consider it until the backlog is gone.

          1. The backlog will never “be gone” because they don’t want it to be gone. We could easily have kept hiring more people such that all arts dried right up. But then you’d end up with a surplus of examiners. They’ve reached more or less equilibrium they’re happy with.

            Plus examining cases sooner than 8 mo or so after filing virtually assures there is “secrit art” that will be discovered on 2nd action in the updated search or not discovered at all if it is a first action allowance.

            1. My understanding 6 – from the perspective of a professed examiner on a previous discussion was that it was entirely an internal decision to stop using that “secrit art” – even though there is no logical or actual blockage TO use that “secrit art.” When I started, such “secrit art” WAS usabel and cited, typically with a notice that prosecution was “on hold” until the “secrit art” became public.

              1. “My understanding 6 – from the perspective of a professed examiner on a previous discussion was that it was entirely an internal decision to stop using that “secrit art” – even though there is no logical or actual blockage TO use that “secrit art.” When I started, such “secrit art” WAS usabel and cited, typically with a notice that prosecution was “on hold” until the “secrit art” became public.”

                I’m talking about recently made PGpubs that published between the issuing of a non-final and the applicant’s amendment (or the second action) or PGpubs that publish after a first action allowance that would have been relevant. Not any other type of secrit prior art that you might be thinking about.

                1. We are pretty much talking about the same thing – art that is not yet public at the time of examination but will (relatively) soon be.

                  When I started, that art very much was available to examiners within the Office. It was a poster who said that he was an examiner that explained that the Office – on its own volition – simply stopped updating that data source.

                2. I have no knowledge of such a source ever existing in so far as you’re saying they had a database of applications that were searchable (other than by direct serial number) that had yet to publish. If so, they may well have discontinued it. Either IT, budgetary or other issues may have caused that.

          2. The backlog is there in no small part because of the Office went on a binge of Reject-Reject-Reject.

          3. Bob, the way the examination process is actually structured is a major reason it fails.

            1. Another point that we agree upon Ned.

              There is a rather strange inertia about applying modern management theory to optimizing the Office processes though.

    3. Kappos did NOT give examiners more time. He changed the count system to reduce counts by .25 and .50 counts for RCEs, and then added 2.5 per balanced disposal (i.e. 1.25 hours extra per round of prosecution). The particulars of the count system aren’t important, but the net result of Kappos’ actions were that in more difficult arts like the computer related arts the examiners had a net loss average time per application to work on them, while examiners in the easy arts receieved slightly more net time per application.

      1. Yeah, right, “easy arts”.

        People in the software arts have almost 1.5x more time than people looking at art in semiconductors and methods. Where you practically have to have industry experience or a MS or higher to do the job proficiently (many examiners are very much in over their heads).

      2. An Examiner,

        Thank you for the more gentle tone throughout your several posts last night. And while I do appreciate it, I do wonder just how long you have been at the Office. Your viewpoints appear to be very subjectively biased, not only against software patents in particular, but also in a very “Office is not doing anything wrong” sense.

        For example, here you plainly contradict yourself about the “moving of deck chairs” with the Kappos time changes and both “get it wrong” as to additional time, as well omit a critical element that was being severely gamed (the RCE gravy train). The impact that you want to point to as a negative effect was instead a positive effect.

        Your tone is commendable, but your position is errant and you seem unaware of the complete picture.

        1. Yes but like the poster stated, he also took away time on RCE’s, so it balanced out to a net negative for some folks.

          1. Clearly, 6, increasing the time for searches while reducing the credit for RCE’s, seems intended to force patents to issue without quality prosecution.

            Kappos may be viewed in the end as one of the worst directors in U. S. history.

            1. Yeah I’m seriously not even sure what David K’s real “intention” was other than to have maybe fewer RCE’s (a situation most examiners have little control over because they’re horrible at drafting claim language for the applicant to take and are never helped in doing so and because it takes more time out of their day to do so).

              1. More of Ned’s asinine and out of touch conjectures.

                The sole purpose was to stop the RCE gravy train and force examiners to actually attempt to do their jobs in the first place, instead of two nonsense actions and THEN do their job.

                ANY net loss was geared – on purpose – to those in the Office abusing the count system and had NOTHING to do with trying to obtain non-quality grants.

                It is beyond preposterous the tales that Ned is fabricating. Absolutely beyond.

          2. Only for folks who “required” an RCE in every single application before they allowed it. And we know nobody over there is doing that.

            /sarcasm

  19. This has it partially right. Improve search.

    Want to improve quality:

    1) Improve search. Get it as good as at the EPO and patent quality will soar. The reality is that a good patent attorney will make the claims patentable over the cited art and the client usually wants this. So, get the right art in front of the patent attorney is 80 percent of the work.

    2) Get rid of 101 nonsense. Still after years not one claim has been illustrated to me that required Alice and the 101 nonsense. 103/102/112 are sufficient. Make claim scope clear. Scope of enablement. You can be invalidated for inventions inside your claim scope. That is all that is needed for a good running patent system.

    3) Get it. The problems are simple.

    1. Night, as to your Point 1, see me at 15.3.1.1. As to your Point 2:

      The EPO has done away with any real 101 eligibility filtering but it can do that only by its complementary approach to 103 obviousness. At the EPO, non-obviousness in technology supports patentability whereas non-technological non-obviousness does not.

      Do you see any sign in SCOTUS or Federal Circuit jurisprudence, of any attempt to distinguish between non-obviousness within the ambit of the useful arts and non-obviousness outwith the useful arts, such as in marketing or entertainment.

      1. Who says “marketing” or at least certain aspects of marketing are not within the Useful Arts?

        Methinks that your well known bias towards confusing “technological” and “Useful Arts” is in play again.

        The sad thing MaxDrei, is just how constant your posts make this conflating mistake.

        Can you please learn the difference and respect the US sovereign choice to NOT use “technological” as its foundation in eligibility?

  20. One of the highest rankings of all my entries in Google is that which I filed in the USPTO on patent quality.

    link to uspto.gov

    In that posting I emphasized the need for a common sense up/common sense down approach and equated the conclusion that was not reached in the famous In re Bigio case (this is not a toothbrush) with the Rene Magritte surrealist painting (this is not a pipe). Readers are urged to follow the link and view the two slides which I think say it all (and I hope have amusement value).

    The other thing which is desperately needed is clear and workable criteria for what is/is not patentable. For that we need not just the USPTO but also the courts. Under section 101 we have some recent improvement and it is to be hoped that it will be sustained.

    An immediate improvement that the USPTO could adopt is to review rejections as well as allowances. Unreasonable rejections waste resources that would otherwise be available for research and start-up enterprises, causing applicants to incur avoidable attorney costs and official fees for continuations/RCE’s whose main purpose is to artificially boost an examiner’s perceived productivity. Many examiners have a strange and unhelpful mindset, and a change in culture is needed.

    1. Except KSR is one of the worse SCOTUS decisions and is typical of a their out of touch nonsense. TSM was the way to go. It allowed for improved quality and objective measure. Moreover, more and more is published every years so that asking the examiners to find a TSM isn’t really much of a burden.

      KSR + Alice = court of equity. No law. You get whatever the judge feels like giving. Terrible.

      And, Paul, reality—Europe lives off of USA. The Europeans have a system where they live off of the inventiveness of the USA. That is just reality.

      1. When I was a young patent attorney and theropod dinosaurs were still to be found shopping in the John Lewis store in Oxford Street, Section 103 practice before the USPTO was reasonable and predictable.

        Broadly speaking, if you could show that the claimed features produced a new and unexpected result you could get allowance, otherwise not. We knew the game, the examiners knew the game and we worked together to obtain allowance. As the late Peter Rosenberg (a patent examiner and noted textbook writer) said: “Its not the difference but the difference the difference makes that matters.” This observation is also at the root of patentability before the EPO since technical problem is reconstructed from difference + new result.

        Inexplicably the US courts now treat new function as a secondary indicium which is on either a US or a European view a retrograde step. As a result many practitioners have lost the determination to exhaustively hunt for differences that lead to new function and support patentability.

        If you have got a new result then TSM is a good way forward, otherwise not.

        And for the avoidance of doubt we folk in Europe sometimes try to get patents in the USPTO and find objections of the In re Bigio type which are difficult to understand.

        Incidentally just consider the mayhem in the Rader household when Mrs Rader calls to her husband who is upstairs: “Could you bring me down my hairbrush, darling” and what arrives is a toothbrush.

        1. That is a really excellent point Paul about the new function. Bascom attempts to bring this back, I think.

          I think the reason that the anti-patent judicial activists have destroyed the new function patentability issue is that it goes very much against their attack on software.

          The US has gone crazy. We have regressed back hundreds of years in rationality. K Street buys reality and Google buys K Street and Google doesn’t want patents. I think Bernie Sanders would have turned it around for us, but it is not to be.

          1. (One thing that is missed on most people is that Jimmy Carter the great liberal was also a strong supporter of the patent system as a cure to the great malaise. I think Bernie Sanders could have been a great supporter of the patent system with some reforms.)

          2. Night, having a new or improved functional is exactly what Hotckiss v. Greenwood was about — synergism.

    2. Paul,

      Your view of the courts (and in context I take it that you do not mean the Supreme Court) as “lately improving” is far too short sighted.

      The bottom line (as evidenced in the massive cluster of the CAFC Alice en banc decision) is that “the courts” are nothing but a random luck of the draw of which judges are on your panel.

      There is NO uniform view “from the courts.”

      1. @ Anon

        I could not agree more. What is needed is an algorithmic and workable test, especially under section 103.

        In the US and the UK, however the statute merely recites unobviousness without any further definition. All technical and circumstantial evidence is therefore admissible and has to be weighed, and the statutory starting point for evolving an algorithmic approach is missing. That is why the EPO approach which is based on the PCT rules works so well, and the UK and US approaches which have no starting point to work from work less well and lead to confusion.

    3. Paul, thanks for the link. I especially enjoyed the discussion regard, “A method for optimizing….” Indeed, putting sets indefinite goals into a claim makes it almost unenforceable.

      1. The EPO Enlarged Appeal Board said in case G 1/93: “The ultimate
        responsibility for any amendment of a patent application (or a patent)
        always remains that of the applicant (or the patentee).”

        In my view this encapsulates an important and universal truth. Whatever the USPTO and other patent offices do, the ultimate responsibility for patent quality rests firstly on the inventor(s) and then on us as their advocates.

        1. This comment from Cole dovetails with the one from Night at #16. If you want to lift the quality of what issues from the USPTO, do two things:

          1. Attain a quality of search report at least as good as the EPO routinely manages to achieve. The USPTO should invest more in its search tooling.
          2. Bring it home to prosecutors that they are in breach of duty to their clients whenever they casually take claims to issue that are not patentable over the search references. A job for the courts.

            1. No Bob. Never heard of any particular “allocation” of time. I cannot imagine there is any.

              Instead, EPO Examiners are under increasing pressure from management to accrue enough disposal points to meet productivity targets. They get one point for a Decision to allow a case through to issue, and two for a Refusal Decision.

              Each such Decision has to be signed though, by all three Examiners in the designated “Examining Division”. This keeps rogue Examiners in check. I would think it helps also, to keep “Quality” high. Wouldn’t you too?

              1. Are the productivity targets for the office as a whole, “examining divisions”, or individual examiners? Any idea how much is expected from individual examiners?

                And why does the EPO consider a refusal to be more productive than a allowance? Genuinely curious. Is it just assumed that the refusal takes more time?

                Regarding panels keeping quality high: Not really. Around half the examiners at the USPTO need another examiner to sign off on their actions, and that review seems to be typically quite cursory.

                1. Yes Bob, two points because it takes double the time.

                  Points? Per individual Examiner. No idea how many, sorry. As far as I can make out, life as an EPO Examiner was not very stressful till the present President took over. All changed now though. For insights see the 200 comment thread in the IPKat blog to this item:

                  link to ipkitten.blogspot.de

                  Panel of three? Read Kahnemann “Thinking Fast and Slow” and Haidt “The Righteous Mind” to see how a full-grown bull elephant charging off in the wrong direction is more or less impossible to steer onto the correct path, except by corralling him between two other big elephants, one on each side of him.

                2. Not sure why the result of an examination would take double the time. The process is the same no matter the result, is it not?

                  Or are you saying that if an applicant faces a potential rejection, the EPO invests in additional processes to help find some redeeming and patentable subject matter…?

                3. How come a refusal decision takes double the time? It’s because a refusal decision has to be appeal-proof. The reasoning has to be good enough to leave the Board of Appeal no room to reverse. at the EPO, Appeal Boards are itching to put Examiners straight. and Managers itching to mark down Examiners whose decisions get reversed.

                  With a Decision to Allow, Applicant has no reason to pay the appeal fee and take his case to a Board of Appeal. So no need then, for bomb-proof exhaustive comprehensive unassailable reasoning in the Allowance Decision. So, ergo, its drafting takes much less time.

                  Do you still begrudge the Examiner a point more, for the work involved in writing a Refusal Decision?

                4. Not buying it MaxDrei.

                  ALL work – the process itself – needs to be “appeal proof.”

                  It is myopic to think that only the immediate “appeal by applicant” is important.

                  Such is just not understanding that the grant should be proper (in both directions).

                  How often have we heard that the Office stands in the shoes of the public? That public is not concerned with (or should not be concerned with) ONLY if the applicant will take issue with the result of the process.

                  As I have often stated – ANY type of rubber stamping is not appropriate – and that means – as at point here – either “Accept Accept Accept” OR “Reject Reject Reject.”

                  Optimizing the process is what needs to be kept in focus, and that process needs to be agnostic to the immediate applicant process and cover both rejections and grants equally.

        2. While what you say may be true in the larger sense of the entire picture, this quite misses the emphasis of quality on what the Office does.

          ALL emphasis on improving Office function STILL applies no matter what type of input (by the applicant) may occur.

          Lots of systems face certain levels of uncontrollable inputs, and your post here can very well lead (again) down the wrong path of focus and NOT focus on what needs to be focused upon: the processing system.

    4. >>An immediate improvement that the USPTO could adopt is to review rejections as well as allowances.

      The office does review final rejections as well as non-final rejections.

      The review may be crap, but they are not looking solely at allowances anymore.

        1. anon, I’m an examiner. OPQA (i.e. the quality review people) pull cases at random. Furthermore, SPEs are now required to review a number of cases for each primary over the course of a year There is no longer an emphasis on reviewing allowances. You can see this right here on patentlyo when they show the allowance rates graphed over time. The inflection point where the line rises is the point where they did away with the “second pair of eyes” review of allowances.

          1. An Examiner,

            I was not looking for anything “verbal.”

            Instead I was looking for something documented.

            As mentioned above, your more pleasant tone is appreciated; however, here too you exhibit a certain bias. Dropping a heavily anti-allowance program like the “second set of eyes” just is not the same thing as a directed program to actively review rejections.

            I also believe that you are very much mistaken about the inflection point, as the second set of eyes program continued well past the MAJOR inflection point of the purported end of the Reject-Reject-Reject era**,and there were other factors influencing deflection points (the aforementioned stoppage of the RCE gravy train for example).

            **as can be indicated by the SAWS debacle, of which SAWS was publicly admitted by the Office to be but one of a number of such shadow action types.

  21. Table 13 is ridiculous. Why are there so many people working VOT (like up to 30 hours a bi-week)? That is absolutely absurd.

    This sht should be criminal. Why doesn’t POPA take action?

    1. Less than 9% report doing >10.5 hours of VOT per week. That doesn’t seem so ridiculous. And people are notoriously bad at estimating their work week hours.

      1. You need to read the table again your number is wildly off.

        Below GS-13 (whole corps) (PER BIWEEK):

        16% of people do 0 hours of VOT.

        19% of people do 1-5 hours of VOT.

        20% of people do 6-10 hours of VOT.

        13% of people do 11-15 hours of VOT.

        11% of people do 16-20 hours of VOT.

        6% of people do 21-30 hours of VOT.

        7% do MORE THAN 30 hours of VOT per 80 hr bi-week. (this means they’re technically at around 70% production or a little bit less). That’s like them working nearly an entire extra week every bi-week.

        That’s 27% of people below GS-13 that do greater than 10 hours of VOT (the numbers are a little bit higher for GS13’s and maybe a little lower above GS13 when you can sign your own work). When frankly nobody should be doing hardly any. All that does is allow management to skew production requirements unrealistically.

        Also note that means 84% are working VOT. For literally no other reason than to support management having an unrealistic production requirement/goal so that everyone is stressed out (and majorly stressed at the end of quarter).

        1. There’s 55% doing less than 11 hours though, and of the remaining ones it’s not clear how many are doing it to maintain or are doing it to get ahead.

          1. “There’s 55% doing less than 11 hours though”

            That’s a good thing? That should just be illegal when it is “on avg”.

            ” and of the remaining ones it’s not clear how many are doing it to maintain or are doing it to get ahead.”

            It isn’t hard to figure that out if we had more of the office’s numbers.

            Even so, can look at the “above gs 13” at the primaries to see numbers that are reflective of people not trying to move up, but who can sign their own allowances.

        2. You didn’t have a GS qualifier in the post @14. :P

          I agree that the production system is unrealistic, and I think that the production system is the root of all evil at the Office.

          But I can’t get worked up over a relatively small percentage salaried employees working 10-15 hours a week of VOT. Especially if it passes after putting in a bit of time.

          1. “But I can’t get worked up over a relatively small percentage salaried employees working 10-15 hours a week of VOT. Especially if it passes after putting in a bit of time.”

            It doesn’t pass after putting in a bit of time. It only “somewhat” passes after putting out enough shi t ty work quick enough, that isn’t too shi t ty, so that you can sign your own allowances.

            If that is what you want to support, then fine. If it isn’t you should tell mgmt.

            1. Management is the sole beneficiary of the production system. I’m not interested in wasting my time trying to explain to the fox why he should leave the henhouse alone.

              1. Bob,

                I am not following your thoughts here.

                I got the point that you think the production system is the cause of all Ev1l, and now that the production system is only for the benefit of “management,” but the “fox” and “hen house” analogy does not make any sense.

                Who is the fox?
                What is the hen house?

                1. You’re right, it’s not clear. Somehow I mixed metaphors with only one metaphor.

                  I just don’t see how any non-legislative/executive action will cause our management to make their jobs harder. It’s futile to try to effect administrative change at the PTO.

                2. While I think I see that you are saying that “management won’t make management’s job more difficult,” there is a clear difference between that and the thought that it is futile to even attempt to fix things.

                  The “don’t bother” thinking just won’t cut it, and actually makes it more imperative (not less) that those on the bottom end – that is, examiners that have to work under management – take action to be heard. Otherwise, you run the risk of BOTH being CR@PPED on and being blamed for the CR@P that management should be blamed for.

                  (I also am not “forgetting” what 6 has posted regarding whistle-blowers and the danger of retribution, but there is an ombudsman and you do have a union). Also, you have a different federal agency asking for input and facts. The “throw up the hands and do nothing” route is just not acceptable.

                3. I don’t know bro, Lee is on her way out. She’s probably more amenable to changes now, and she’s not entirely unreasonable.

                4. Anon,

                  If you care so much, why don’t you apply and then work on the problem as an employee activist?

                5. Bob,

                  You mistake my posts here clarifying the topic as “caring.”

                  What I care about are my clients and that your problems are not artificially made to be their problems. Establishing clarity is one of the best ways of doing that.

                6. “The “don’t bother” thinking just won’t cut it, and actually makes it more imperative (not less) that those on the bottom end – that is, examiners that have to work under management – take action to be heard. ”

                  Lulz. So the “oppressed” should tots take action eh? While I agree anon, I’m not necessarily sure that my (or someone else) rousing a rabble will be helpful, a rabble might just simply burn down the PTO. And that doesn’t help anyone. You have to remember anon, most examiners don’t have a sophisticated knowledge of the setup at the office. For most people it’s just “there’s mah SPE” and “there’s the guy that will check any clear errors charged agin me” and oh yes “I heard about this lady called Lee”.

                  Though yes, I will be contacting POPA.

                  “Otherwise, you run the risk of BOTH being CR@PPED on and being blamed for the CR@P that management should be blamed for.”

                  Lulz, we can’t help it if people don’t know that mgmt takes all responsibility by law. And most examiners don’t even know that is the case.

                7. Though yes, I will be contacting POPA.

                  Just like I told you so long ago.

                  About time that you listened.

                8. Sure 6, let’s go with that (never mind that we had a conversation and you laughed at the suggestion of mine to contact POPA, but hey, you did as I suggested, even if you don’t want to admit it now)

                9. I didn’t necessarily contact popa about the subject you wanted me to ta rd. I contact them about which I please.

                10. Sure 6 – we’ll go with that (never mind that the subject I suggested – and the contact you talk about – happen to be the same thing as shown on this thread. Keep on denying that you listened to me – I understand that you have some kind of inverted “examiner cred” to maintain.

                  It will be our little “secrit.”

                  ;-) ;-)

        3. 6 admits to something that I have long tried to impress upon him:

          For literally no other reason than to support management having an unrealistic production requirement/goal

          Go back to the archives 6 and recall my past advice on this specific issue. And for something even funnier, read your own p00-p00ing responses.

      2. It’s not really estimating though, I mean we have to input our time card, and we know if we worked 10 hours that day or 11.

        I do agree it’s a problem experienced by a small number of the core.

        1. >>It’s not really estimating though, I mean we have to input our time card, and we know if we worked 10 hours that day or 11.

          The question I read asked:

          In the past six months, on average, about how much voluntary/uncompensated overtime have you worked per bi-week to meet your minimum production goal?

          Somehow I doubt most of the survey respondents remember their last 13 biweek’s worth of production time, much less their last 13 biweek’s worth of unrecorded VOT.

          1. “Somehow I doubt most of the survey respondents remember their last 13 biweek’s worth of production time, much less their last 13 biweek’s worth of unrecorded VOT.”

            You’d be surprised how well you remember putting in absurd numbers of VOT hours.

      1. Claims alone might be an improvement, but that is still very far from treating each application on its own merits (and not as some universal one-sized widget).

        As I have recommended in the past, each application should be graded on a spectrum of difficulty with a spectrum of time allotted. This may – or may not – correlate with any pure “number of claims.”

        1. anon, your recommendation can’t be easily quantified and implemented because if it’s not “some universal one-sized widget” then the difficulty is subjective. The ratings would have to be done by extra people, resulting in larger costs, and it would likely be subject to gaming.

          1. An Examiner,

            Your mention of gaming here is interesting.

            However, this process step has zero to do with any substantive right and all applications must still be fully examined.

            Especially compared to current processes (which you neglected to note some much more severe gaming to have had occurred), I am not sure what “gaming” you see that would be detrimental.

            As to “more expensive,” I will also disagree with you. You appear to not have a grasp on management theory, and I would simply point out the rather old improvement made by Henry Ford (specialization of tasks and assembly lines) that added tremendous numbers of people and achieved a much lower total cost system.

            The initial review and gradation process would of course be undertaken by the most technically competent people (not the examiners who will be examining) so there would be no “self-selection” inefficiencies introduced.

            You appear to be new here, so it is quite possible that you have missed my previous detailed explication of this suggestion. I am sorry that I did not earmark the post, and I am not sure how well the search archive function on the blog would be to find the earlier details.

          2. “The ratings would have to be done by extra people, resulting in larger costs, and it would likely be subject to gaming.”

            An algorithm that uses all of the data the PTO has (e.g. average application length, number of references in classes/subclasses in the required search based on classification, average number of refs cited in IDS’s, etc.) could be written to assign each application its own unique disposal time.

            Would it be perfect? No. But it would be better than the current “one size fits all” approach.

            1. I would even happily throw in the pizza for some grad students down at the local coffee shop to do this over the weekend.

              ;-)

              1. In the gubmit it costs 2x pizzas and takes 2x weekends.

                lol yeah right, in the gubmit it takes 1 million dollars and 4 years.

                1. Nonsense. Half a pizza would be fair. He just said the algorithm USES the data. He didn’t say how it uses the data, or that it uses it effectively. It could just hash the data into a number, and use that number as the seed for RNG call. Who needs the secret sauce in the world of patents?

            2. Do you realize there is no one-size-fits-all disposal time? Disposal times are based on technology area.

              1. Thanks Bob – so there IS a start towards a much better alignment. That actually strengthens my posts on the topic and one wonders why this is not more thoroughly implemented…

              2. “Do you realize there is no one-size-fits-all disposal time? Disposal times are based on technology area.”

                I know exactly how the production system works. There is a one-size fits all disposal time based on the classification. If the application gets classified in class XYZ than it gets whatever GS-12 disposal time that class gets. Regardless of whether it has a 10 page spec, or a 100 page spec. Regardless of whether it has 5 drawing figures, or 500 drawing figures. That’s a terrible system.

                Change it.

                1. You are a length 32 and this here pants is a length 24 – don’t worry, according to “Tailor Bob,” these fit you perfectly…

                  Oy vey

          3. “You appear to be new here, so it is quite possible that you have missed my previous detailed explication of this suggestion.”

            Because anon has it all figured out in his mind brain doncha know?

            1. You want to make fun of the fact that I have volunteered helpful suggestions while you just throw up your hands…?

              You are a real prize there 6.

          1. I’m assuming you’re not being sarcastic out of friendliness, not gullibility.

            To avoid being fired. If an examiner’s production is below 95% long enough they will be fired. VOT is not counted towards the denominator in productivity calculations.

            1. Maybe it should be…

              Or perhaps after a “learning curve” stage.

              Perpetually skewing the measurement system by not accurately reflecting “what it takes” is very much part and parcel of the problem.

              1. That would be a fascinating change.

                But it’ll never happen because it would induce problems for management.

              2. “Maybe it should be…”

                Then there would just be a bunch of firings. What’s the point? if they want a bunch of firings, then they should just do a bunch of firings.

                1. Think more than just one move at a time, 6.

                  A bunch of firings would do what….?

                  One possibility is that the firings are fought through your Union and -gasp – you might just get realistic timeframes.

                  Can they fire like, what, 84% of the people…?

              1. The Office does not treat it like piecework as we are required to spend 80 hours biweekly ‘at work’, separate from the 95% productivity requirement.

                And interviewees and new hires are extensively warned about the production system.

                1. “And interviewees and new hires are extensively warned about the production system.”

                  I certainly wasn’t, not until a few months in at least. And “warned about” and “informed that what the ‘production system’ really means is that mgmt benefits from unrealistic expectations every time they change the examination environment while your union sits by twiddling their thumbs” are two different things. One could not guess from generic “warnings” the nonsense going on at the PTO.

              2. “Then there is a better word for it than VOT. Maybe the job should be advertised as piece work.”

                Exactly. They be false advertising imo.

          2. So they aren’t fired. Unlike many federal agencies, Examiners at the PTO are occasionally fired for incompetence (measured solely by how much work is accomplished, not necessarily the quality).

          3. To meet your production quota people often have to do voluntary overtime. The production system really hasn’t kept up with the times. In the computer arts applications are written more and more in cryptic terms with was little details and examples as possible, while at the same time being directed to more and more complicated subject matter. Kappos changed the count system to actually give examiners in the more difficult arts less net time per application. The result is that voluntary overtime is almost impossible to avoid at some points during the year.

            1. This is a prime example of one of your posts that exhibit such a high degree of bias that it is simply not believable.

              As pointed out, the only “loss of points” was RCE-related and that was directly to counter the abusive RCE Gravy Train practices.

              All else in your post sounds like you are reading from a standard script.

              As I said, your tone is appreciated, but your content is just off.

  22. “9 If examiners feel pressure to complete their examinations quickly rather than thoroughly, it could have important implications for their prior art search efforts. In fact, as shown in figure 7, less than half of the examiners—an estimated 46 percent—were moderately or very confident that they found the most relevant prior art during the time allotted. However, when they included their additional voluntary overtime, the number of examiners who were moderately or very confident increased to an estimated 69 percent of examiners. ”

    Lulz, voluntary OT the only thing keeping quality even close to floating. For a gubmit job that’s ta rded.

    And they’re right. The amount of people I know being burned out by examining right now is ridiculous. And even they aren’t that confident in what they’re doing.

  23. “The March 2016 draft of the form also does not include questions that address whether the examiner searched foreign patent literature and U.S. and foreign nonpatent literature, as is required by the agency’s manual for patent examiners.”

    I have seen no such requirement.

      1. I actually do find quite a bit of foreign art via google but it’s generally worthless. Strangely. You’d think by now I’d find some good foreign art via google on occasion.

    1. I’m pretty sure it is in there. Dudas referred to it when he was trying to get applicants to do it for you….I remember ’cause he said it like… –whats the big deal, all you have to do is what the examiner’s do….. see the MPEP section such and such…

      1. It is innate to the requirements of 102/103. If there is foreign art that denies the grant of a patent under those sections, the examiner must clear the application under that section of law.

        If 6 has NOT been checking, then he has not been examining correctly.

        It’s as simple as that (we could also play on 6’s spin of “entitlement,” since the “unless” portion of that very entitlement is what generates what the examiner must do)

        1. Unfortunately, I don’t have months to spend on each application checking foreign databases, getting translations, etc. The extent of my foreign search is usually (1) any foreign reference cited in an IDS or in a counterpart application, and (2) checking the foreign box on EAST, which searches and translated foreign abstracts in the system.

          1. What it takes you to do your job right is not my problem.

            I never pretended that your job – done properly – is easy.

            But first, let’s appreciate that the law involving foreign patents IS a part of the examiner’s job (6 apparently thinks otherwise).

            AFTER that we could deal with the attempt to say “I don’t have time to do the job right” as if that was a universal excuse for NOT doing the job right won’t fly.

            In other words – the immediate point here is merely the fact that checking for the legal requirement of the foreign aspects IS a part of your job, and that if not even being done (quite aside from being done well), then the examiner is NOT doing their job.

        2. “If 6 has NOT been checking, then he has not been examining correctly.”

          No, I’m not supposed to be checking places I find to be preposterously unlikely to be helpful in finding references that are relevant and useful to prosecution and which can be searched in a reasonable amount of time. Foreign art meets all of those criteria with flying colors. First, they put all the drawings at the end, so it takes 20x as long as a normal ref to even look at, and second even if you find something that is somewhat seemingly relevant you then can’t read it, and finally, you can’t use it to make a rejection.

          If I think the foreign art is especially likely to have a good ref for a case then I’ll go through it.

          1. Once again you insert “your belief” into a place that is simply does not belong.

            You really should know your own job better, 6.

            1. “Once again you insert “your belief” into a place that is simply does not belong.”

              Anon you have literally 0 expertise in how to search at the office. Shut your flap id iot.

              1. “Nice” reply 6.

                Totally off point and comprising only vulgarity.

                You seem to miss the immediately critical point – and only lash out with ZERO substance.

                It appears that I have struck a nerve with you as to the lack of fully examining to the law that you are innately required to do.

                I am simply not sorry for being accurate here.

                Your reply should not be so “mad,” let alone “mad” at the messenger. I am not the one that wrote the law to which your examination must comply with.

                Your reaction here is that of a petulant child. I suggest that instead of getting “mad,” that if you disagree with what I am saying that you actually provide the point that you think that I am in error with, and leave out the emotional response.

                Thanks for helping to make this a better ecosystem.

    2. 6: ““The March 2016 draft of the form also does not include questions that address whether the examiner searched foreign patent literature and U.S. and foreign nonpatent literature, as is required by the agency’s manual for patent examiners.”

      I have seen no such requirement.”

      Have a glance at MPEP 904 and 904.02 in particular:

      When determining the field of search, three reference sources must be considered – domestic patents (including patent application publications), foreign patent documents, and nonpatent literature (NPL). None of these sources can be eliminated from the search unless the examiner has and can justify a reasonable certainty that no references, more pertinent than those already identified, are likely to be found in the source(s) eliminated. The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. The field of search should be prioritized, starting with the area(s) where the invention would most likely be found in the prior art.

      Having determined the field of search, the examiner should then determine what search tools should be employed in conducting the search. Examiners are provided access to a wide variety of both manual and automated search tools. Choice of search tools is a key factor in ensuring that the most relevant prior art is found during the search. The choice of search tools to be used is based on the examiner’s knowledge of the coverage, strengths and weaknesses of the available search tools that are appropriate for use in an examiner’s assigned art. For example, a search tool may cover foreign patent documents; but, if that coverage does not meet the examiner’s current search needs, this should be taken into consideration by the examiner who may choose to employ other search tools in order to remedy the deficiency.

      1. “When determining the field of search, three reference sources must be considered – domestic patents (including patent application publications), foreign patent documents, and nonpatent literature (NPL). ”

        Yeah bro, I consider them when determining the field of my searchs. Pretty much always I consider them to be of the lowest priority if any priority at all. Then I determine my field of search to not include them, or barely include them. But I can see how someone unfamiliar with what is going on could misinterpret what the MPEP is talking about there.

        1. I’m sure that you do. You said you have seen no such requirement.

          That’s why I posted it.

          1. There is no requirement to search there Les, all that is required is to consider it in determining where you plan to search. I do that of course.

            1. Two things 6,

              1) define “consider”

              2) What does your evidence of “None of these sources can be eliminated from the search unless the examiner has and can justify a reasonable certainty that no references, more pertinent than those already identified, are likely to be found in the source(s) eliminated.” look like?

              Thanks

              1. 1 link to google.com..69i57j0l5.2767j0j7&sourceid=chrome&es_sm=0&ie=UTF-8

                2 I see no requirement for the presentation of “evidence”. I see only a requirement to have and be able to justify a reasonable certainty that no references, more pertinent than those already identified, are likely to be found in the source(s) eliminated. I have such and am eminently able to justify such in the cases where it is eliminated.

                1. 1) so you just want to use the standard definition – ok.

                  2) I did not ask if you saw any requirement for presentation of evidence – I asked you what WAS your evidence. You saying so, well, that won’t cut it now, will it?

                  (all examination needing to be on the record and all, yours [or any – but especially yours] say-so is not – and cannot be – good enough)

                  But regardless, of any actual evidence (I am not really expecting anything in particular since said “on the record” stuff will be fact specific), you do (or should) realize WHY you need to have this, right? Here’s a hint: I have already told you why.

                2. “I asked you what WAS your evidence”

                  You cannot have “evidence” before you search for evidence you tw it.

                  “You saying so, well, that won’t cut it now, will it?”

                  Yes, it will. And always has.

                  I don’t know what the rest of your gibberish devolved into speaking about but it looks ta rded like usual.

                3. Your reply is non-responsive. The evidence is what you have in place that makes the foreign search capable of not being undertaken.

                  And no, your “Say so” will not cut it and never has cut it – remember that examination is on the written record.

                  The rest is pretty well easy to understand and very straight forward. I see you running away behind your usual excuse….

                4. “The evidence is what you have in place that makes the foreign search capable of not being undertaken.”

                  Who said anything about such a search not being “capable” of being undertaken? The MPEP didn’t mention such nonsense and neither did I. That’s you making that nonsense up.

                  “And no, your “Say so” will not cut it and never has cut it – remember that examination is on the written record.”

                  Tell that to mgmt who put the current system in place. If it’s good enough for them, then it’s good enough for everyone. We don’t put a written record of all internal decisions on the written record idi ot. And remember the beginning of 35 U.S.C anon.

  24. “According to USPTO officials, the agency has not identified specific reasons that account for differences between its classifications and EPO’s. ”

    I know why it is. Usually it is because the contractor/EPO guy knows the Sub-groups better because they’re used to the International classification. And also because the contractors and EPO guys are “classify happy” in that they just love to be comprehensive about their classifications and drop 1 application in a dozen sub-groups (which is proper but which PTO personel don’t even have time for, we’re used to finding a few subs that are relevant and going about our day doing our search, not spending 2 hours classifying one app).

    1. The EPO has a classifier position for each art who’s sole job is to classify documents, and CPC is based on IPC which is what they’ve been using all along. In contrast the USPTO outsourced the initial classification of PGPUBs long ago to “save money”, and then the examiner who issues the patent changes or adds any classifications when it issues. That examiner received only a few hours of training on CPC and is coming from the background of the USPC where people just put things where ever because it was so neglected and useless that no one cared. The result is that US examiners messed up the classifications so badly when the EPO and US systems were tied together that the EPO no longer accepts US CPC inputs for classifications and do the classifications themselves for their search tools.

  25. “GAO estimates that nearly 90 percent of examiners always or often encountered broadly worded patent applications, and nearly two-thirds of examiners said that this made it difficult to complete a thorough examination. Without making use of additional tools, such as a glossary of key terms, to improve the clarity of patent applications, USPTO is at risk of issuing patents that do not meet statutory requirements.”

    Here’s a clue: Read big thick stack of papers that accompanies the claims first.

    Predictable blowback from using BRI. When you examine claims untethered from the specification this what you get.

    What good will a definitions sheet do when you don’t bother to read the spec or view the drawings prior to searching?

    1. Merely reading the spec doesn’t generally help narrow down the search, because you still have to search the whole breadth of the overlarge claim. At least in my experience when this situation pops up.

      1. But if the Examiner read the spec, it might draw his/her attention to what the applicant believes to be the feature which makes the claim inventive.

        Instead, what happens regularly is that the Examiner cites a reference which doesn’t have that feature, arguing that it is a complete knockout under s.102.

        Then, in a subsequent interview, the attorney explains why that feature makes the claim novel, and that the reference doesn’t show it. But no agreement on patentability is reached at the interview, because the Examiner now realises that he needs to do another search for references with the feature concerned.

        By this time, of course, he doesn’t have enough time allocated to do a thorough search for the real invention as claimed. Hence the poor quality of many US patents.

        1. “But if the Examiner read the spec, it might draw his/her attention to what the applicant believes to be the feature which makes the claim inventive.”

          So what? That doesn’t mean the search gets smaller, which is what we’re discussing. The search stays the exact same size.

          “Instead, what happens regularly is that the Examiner cites a reference which doesn’t have that feature, arguing that it is a complete knockout under s.102.”

          How does that have anything to do with the size of the search?

          “But no agreement on patentability is reached at the interview, because the Examiner now realises that he needs to do another search for references with the feature concerned.”

          So he screwed up, so what? The search size stays the exactly same unless he just plain ol didn’t do a full search of the whole scope of the claim. And that is not at issue here.

          “By this time, of course, he doesn’t have enough time allocated to do a thorough search for the real invention as claimed.”

          If he doesn’t have enough time “by that time” then he never had enough time in the first place.

          1. Yes of course, but the Examiner missed it.

            Had he read the spec he would have realized that that was where he should focus the search. Instead he cites examples of the prior art acknowledged in the spec. And 6 complains about the breadth of the search he has to do.

            1. “Had he read the spec he would have realized that that was where he should focus the search”

              Right, he should “focus the search” on the disclosure so we can be really sure that the overbroad claim doesn’t issue. /facepalm

              1. No, he should focus the search on the features in the claim.

                The spec will likely tell him about one or more features in the claim that he shouldn’t ignore. That facilitates focusing the search.

                Instead, too often examiners just:
                (a) fail to read the spec,
                (b) as a result, miss the feature in the claim that the applicant says makes it novel and non-obvious,
                (c) waste their time conducting a broad search for prior art having all the other features of the claim but not that one,
                and thus
                (d) find prior art that is probably less relevant than stuff the spec already acknowledges.

                This is particularly true if the spec was drafted with Europe in mind. It’s likely to tell you a story about what the applicant knows to be prior art, what the problem is with it, and what the applicant has done to solve that problem.

                Sure, you still need to check that the claim is indeed limited to the feature(s) concerned. And you do need to search to see if the applicant is right about the prior art. But please, focus that search on the claim feature(s) the applicant is telling you about.

                And by the way, if you feel that the claim isn’t limited to the feature concerned with sufficient clarity, then please say so. A well-directed objection under s.112 will help both the applicant and yourself, by telling him what he could do to satisfy you. As an applicant, I’d like to work with you, I really would, but I can’t if you just ignore what my spec tells you.

                1. If you need an uniformed and wayward search to “focus the issues,” you are doing things wrong.

                2. “No, he should focus the search on the features in the claim.”

                  And then it goes absurdly broad. Which is the original problem. Je sus, you just keep talking yourself in circles and making up a hypothetical that is different from what is being discussed in the article. A hypothetical where the examiner tots brings the breadth on himself. That isn’t the subject of the article brosefus. In the article they’re addressing instances where IN FACT the claim is absurdly broadly written, not ignoring anything. And nearly everyone encounters a few of these, as reported in the article.

                  “As an applicant, I’d like to work with you, ”

                  Then do it up front and stop drafting your claims such that they require people to read your spec. Jes us, doing that isn’t rocket science. They’re probably going to make you do it anyway, as you have no doubt figured out, so just do it up front.

                3. 6, it appears that your uncanny failure to read what is presented to you applies not only to patent specs, but also to blog comments.

                  How many times do I have to say that the problem here is when the examiner ignores a feature which is in the claim?

                  How many times do I have to say that if he/she would only read the spec as a whole, it’s likely to point to that feature which is in the claim.

                  How many times do I have to say that we are not talking about a claim which is absurdly broad. We are talking about a claim which is limited to a specific feature. But the examiner misses it.

                  As a result, the examiner might think that the claim is absurdly broad. But the examiner is wrong.

                  Reading the spec would help him understand and focus his attention on features in the claim. Reading the spec would assist him to search the real invention, as specified in the claim. Reading the spec would result in a meaningful search directed to the features of the claim. A search that doesn’t have to be supplemented later when the applicant shows the examiner what the claim actually says.

                  And if after reading the spec the examiner thinks the claim language defining the feature concerned is not clear enough, it will advance the prosecution immensely if he just says so. He can help the applicant to work with him to get the claim language right. It’s in his own interest as well as the applicant’s.

                  In the latter case where there’s a lack of clarity, maybe the examiner would still have to make a broader search, but he will be able to note anything within the broad scope that would anticipate the narrower feature when clarified. If the applicant makes a clarifying amendment, there will be no need to make a supplementary search. You are supposed to try to anticipate possible amendments anyway, so that’s only doing your job properly. But you can’t anticipate the clarifying amendment if you’ve not read the spec.

                4. are supposed to try to anticipate possible amendments anyway, so that’s only doing your job properly. But you can’t anticipate the clarifying amendment if you’ve not read the spec.

                  6 has already (in this thread AND previously) been told this is part of his job.

                  His smarmy reply was that only he (or perhaps only he and a few others) have this “super power” to do this part of his job.

                  And this is only of late, since he has come around to what I pointed out to him in past discussions of the mandate of his job is to examine the ENTIRE application (not just the claims), and the very first step dictated to him by the MPEP is to read and understand the application.

                5. “How many times do I have to say that the problem here is when the examiner ignores a feature which is in the claim?”

                  You can assertate it 1000000000 times but it isn’t “the problem” that the article is talking about. It is a “different problem” that you yourself wish to discuss. And again, this is the last time I’m addressing it because I’m bored with your tangent topic.

                  “How many times do I have to say that if he/she would only read the spec as a whole, it’s likely to point to that feature which is in the claim.”

                  “How many times do I have to say that … it’s likely to point to that feature which is in the claim.”

                  “How many times do I have to say that … it’s likely ”

                  “it’s likely ”

                  Yes, I know you think it is likely. The article is not discussing that supposedly “likely” situation where it turns out to be the case that the examiner missed a limitation. And this is so regardless of how badly you want to force the article to be discussing those situations.

                  “He can help the applicant to work with him to get the claim language right. ”

                  Yes, he can, at his own expense, and if he has the knowledge to do so and be able to do so. Or the applicant can assume their statutory (under 112) congressionally mandated responsibility to properly claim the invention in the first place and not make the examiner have to fix it for them. Try that one on for size sometime.

                  “but he will be able to note anything within the broad scope that would anticipate the narrower feature when clarified”

                  Yes, sometimes. Though that presumes that he actually makes it all the way through this “broadened search” somewhere near in the time allotted and doesn’t just cut it off halfway after he has solid 102’s (as is explicit office policy to prevent this kind of waste from proliferating). And it also presumes that he keeps an eye out for the “special feature” to be amended in that the applicant had decided to leave in the spec before. And the later isn’t always possible because there are a 100 different special features the applicant could choose to move up at his pleasure. You can’t keep a stack of 100000 references around (or tag them all in east) from your search through 3000000 references.

            2. I don’t get your complaint. If it really was in the claim, and you weren’t reading it into the claim, you just won a second non-final. What’s the problem?

              1. “Winning a second non-final” is not doing the job right the first time.

                ANY time you are not doing the job right the first time you will be spending more overall time doing the job.

                That you don’t see the problem with that IS also part of the problem.

                1. “ANY time you are not doing the job right the first time you will be spending more overall time doing the job.”

                  Not necessarily (because the job may never get done completely correctly), but presuming you’re right generally speaking none of that has anything to do with the issue raised in the article or this goof ball’s suggestion to overcome it. You guys are just whining about someone messing up. Which has nothing to do with solving the issue of the search having to be way overly broad because of claim breadth (the issue raised). And reading the spec does not help in narrowing down that which must ultimately be searched for the too broad claim.

                2. Reading the spec is a goof ball suggestion? Well, thanks for that admission about how you go about your job.

                  The issue raised is not that the claim is way overly broad. It’s that when reading the claim, the examiner missed the salient claim feature that he/she should be searching for. So he/she thought it was way overly broad and misdirected the search.

                  Hence the common experience at interviews, where the examiner suddenly realizes what the invention is about, and announces that he/she needs to go back and do a further search.

                3. Not necessarily… but presuming

                  No 6 – necessarily and no presuming is required.

                  It is axiomatic.

                  You guys are just whining about someone messing up.

                  You are c1ue1ess about the issues under discussion.

                4. “Reading the spec is a goof ball suggestion? ”

                  No, you’re a goof ball. Who is bringing up a hypothetical that isn’t at issue in the article. And you’re bad at reading. I’m through discussing this tangent with you. It isn’t relevant to the article at all.

                5. It wasn’t me that first raised this tangent. If you didn’t wish to discuss it, why did you respond to it?

                  Bluto: “GAO estimates that nearly 90 percent of examiners always or often encountered broadly worded patent applications [….]

                  When you examine claims untethered from the specification this what you get.”

                  6: “Merely reading the spec doesn’t generally help narrow down the search,”

              2. As the applicant, my problem is that I needed to go to an interview to get a second non-final that addressed the real invention, rather than getting it the first time round.

                As a third-party competitor (and also as the applicant) my problem is that the Examiner isn’t allocated enough time to do a decent search the second time round, increasing the likelihood that a poor quality patent will issue.

                1. IPMan, the fault is the broad and indefinite claim as filed. See, post 10.5 for more on this.

                2. Wrong Ned – that is NOT a fault.

                  Applicants are advised to claim a spectrum of what they may be entitled to – including as broad as possible.

                  Your “fault-finding” is simply anachronistic and do NOT match your ethical duty for zealous advocacy for your client.

      2. Shouldn’t overlarge claims make searching easier? The pool of anticipating art should be…. well large…. for an over large claim.

        There are a lot more examples of –elements fastened together– than there are 11 x 10 mm bars of 316 stainless steel secured to one another with six 8-32 counter sunk titanium based copper coated Philips head screws arranged is a box-kite pattern.

        1. It makes it easier to find a reference which anticipates some small part of the claim scope. It makes it harder to find the most relevant prior art on the first search.

        2. Easier to search broad claims, but then in the amendment, you have no idea where Applicant will go with the scope. So your first, usually best search, is wasted as generally directionless.

          On that point, for most inventions I’ve examined, 10 pages of specification is more than enough to explain the invention. Beyond that, I can’t realistically “search the specification” as has been suggested on this board.

          1. You do know that you are – in the first instance – supposed to anticipate what might be patentable and what might be claimed, right?

            This too is part of your job. That your job may be difficult just is NOT the issue.

            1. “You do know that you are – in the first instance – supposed to anticipate what might be patentable and what might be claimed, right?”

              If only he had magical powers of foresight anon!

              It can be done, somewhat, but in most apps there are a near infinity of ways people could amend. Sometimes it is predictable (and only then if you’re genius like me), sometimes not.

              1. No magical powers necessary 6 – if you do the job as you are supposed to (and as I had told you in previous conversations about your “just do a search on claim key words” approach).

                1. “No magical powers necessary 6 – if you do the job as you are supposed to”

                  The job as “I” am supposed to does not “require” what you’re stating it requires. That is a “goal” and nothing more. Because the avg examiner can’t do it.

                2. I wish I could give you a one day tour and show you the realities of the job anon. You want examiners to read 50+ page applications for each minute detail, check for 101, 112 issues, and then search each minute detail from both the claims and every possible variation from the specification. You want them to search all US and foreign patent literature and you want them to search all NPL, reading various pieces of prior art all along the way. You want all this to happen in the 4 to 16 hours they’re given to do the first action.

                3. Stop trying to make your problems into my clients and my problems.

                  We have paid for a full examination under the law, and that is what we should get.

                  As I have previously explained, you appear to be conflating the metrics of job performance (the internal Office metrics) with the job that has been paid for.

                  Ned – with all due respect, bite me. Instead of the subtle “that’s just anon” try actually pointing out something – ANYTHING that I have misstated.

                4. “You want examiners to read 50+ page applications for each minute detail, check for 101, 112 issues, and then search each minute detail from both the claims and every possible variation from the specification. “

                  No, but it’s much easier to read the four- or five-page introduction, see what the applicant thinks is the invention, and check whether those features appear in claim 1. If they do, search for references with those features.

                  OK, what if claim 1 doesn’t define those features clearly enough, and you have to search a wide area containing references that might or might not include the unclear features? Ideally you would search the whole wide area, but realistically you might not have time.

                  Nevertheless, instead of just making a random stab in the dark, why not start with references within the broad area which do include those features, before moving on to the ones that don’t? Then, if time constraints mean you can’t cover the whole broad area and have to stop as soon as you find a 102 knockout, you won’t be taken by surprise when the applicant clarifies the claim. And you won’t have to go back and do a supplementary search later.

                  And if you think that claim 1 doesn’t clearly define the features which the applicant believes to be inventive, then for heaven’s sake tell him that that’s the problem he needs to address.

            2. I would love to see some of the applications you’ve drafted. I can see you – Client is only willing to pay for 20 hours to draft, but you take the full 200 hours it takes to make it absolutely perfect because, after all, that is your job. And you only expect to get paid for 1/10 of your time because, after all, you do your job regardless of whether you are paid. Right?

              1. What you would “love to see” has absolutely ZERO to do with the point at hand.

                With the point at hand, can you point to a single thing that I have misstated?

                This is not a matter of “what you would like,” or “gee, that’s really difficult.” This is a matter of straight up understanding what the job IS – and staying away from any conflation of the performance metrics of doing that job.

                Can you do that?

                (I think that you have your hands full without worrying about what is or what is not my job, since what is MY job is not so constrained as what is YOUR job, and I fully negotiate what my job is – and it is not what you think.

                Is that “unfair?”

                No. It IS different and I would expect you to recognize the plain fact that it IS different. Don’t like it? Feel free to quit the Office, invest the time and resources into becoming an attorney and put out your own shingle.

                In the meantime, make sure that you recognize that I have not misspoken once on the topic at hand.

                Thanks.

                1. Fear not, I have several years patent prosecution experience.

                  What I can’t grasp is how you don’t recognize that Examiners != The PTO.

                  You describe the job of the PTO, and then say that it is Examiners who are supposed to be doing all of that. No, Examiners do what they are told. If management can’t organize their employees to get the job done, that is management’s problem, not the Examiners. As a simple example, the Examiners don’t print the patents or maintain the IT systems that make patents publicly available. If printing stopped, or public accessibility was interrupted, would you blame Examiners? (probably, but that’s not the right answer).

                2. Anon doesn’t understand that management is who his beef is with (and that this is by statute). It goes entirely over his head because he doesn’t understand management or responsibility at all.

                3. That’s great temprand, but nothing but a non sequitur since we are discussing what is entailed in the job of examination.

                  See: 35 U.S.C. 131 Examination of application.

                  The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

                  (I never had any fear at all, by the way)

                4. That seems to

                  Try again – pay attention to the “examine” part.

                  Hint: YOUR job has to do with that part.

                5. Has to do with != defined by the statute.

                  Even for a conspiracy theorist and the patent equivalent of an ambulance chaser, this is an absurd reach.

                6. Bob,

                  You are trying too hard to not understand the simple fact that examiners examine – and that examiners must examine per the item that I provided to you.

                  This is really not that difficult (unless you are clenching your eyes really really really tight and just do not want to understand).

                7. >>You are trying too hard to not understand the simple fact that examiners examine – and that examiners must examine per the item that I provided to you.

                  The statute defines the duties of the director. Your attempt to read more into the statute is sad.

          2. “On that point, for most inventions I’ve examined, 10 pages of specification is more than enough to explain the invention.”

            Right. Usually the introduction would be the place to look for how the applicant sees the invention.

            “Beyond that, I can’t realistically “search the specification” as has been suggested on this board.”

            Nobody has suggested that you should “search the specification”, though 6 has misread it that way. (Maybe specifications aren’t the only thing he doesn’t read.)

            The suggestion is that before you search the claims, read the spec to see what features the applicant thinks are important. Next, check that those features are in the claim. Then, having correctly understood the claim, direct your search accordingly.

        3. “Shouldn’t overlarge claims make searching easier? The pool of anticipating art should be…. well large…. for an over large claim.”

          No. Because you’re supposed to search to find art to anticipate AND supposedly search for the more narrow art that will address what they should have claimed in the first place. So you essentially have to do one overbroad search and the actual narrow search. So two searches. Unless you just find some art for the claims and kick the can down the road. And even doing that doesn’t necessarily make the job that much easier because since the claim is so broad the search results can be massive that must be looked through (the anticipatory/great refs for the claims may well all be at the end of the search results).

          The reason people say this is because they’re used to a “search” being small to begin with, back when all the subs had 30 refs in each one lulz.

          1. Why doesn’t the narrow search cover the overlarge claim?

            If one searches for the stainless steel bars and counter sunk titanium screws, the found art is applicable to the “fastened elements” claim…

          2. “Why doesn’t the narrow search cover the overlarge claim?”

            Um because there is likely anticipatory art outside the narrow search? Duh?

            “If one searches for the stainless steel bars and counter sunk titanium screws, the found art is applicable to the “fastened elements” claim…”

            Presuming you find that in the context of the overall claim then that’s great les. That isn’t how it works in real life instances usually.

            1. “Um because there is likely anticipatory art outside the narrow search? Duh? ”

              Yes, but if you find the narrow, you don’t have to look for the broad.

              Remember, I said finding the broad should be easier and you said yeah, but you have to find the narrow too. So, look for the narrow and if you find it stop. If you don’t then look for the broad, which shouldn’t be a big deal, because its over broad and easy to find….

              Right?

              1. “Yes, but if you find the narrow, you don’t have to look for the broad.”

                That’s a big ol If Les. And, in my art at least, it pretty much never happens that you find 100% of “the narrow” because the whole shebang (i.e. “the narrow”) has a million different “features”. I don’t think in the time I’ve been here that I’ve ever found a 102 “for the whole thing that is disclosed in the spec”. Maybe a handful of times, and certainly there are several times where I find very close to “the narrow”.

                “So, look for the narrow and if you find it stop”

                Right, but you never find 100% of “the narrow” in my art (and probably most other normal arts that are complicated). So if we follow your path then we necessarily should have to go ahead and finish the whole “narrow” search, every single time, always chasing “the narrow”.

                “If you don’t then look for the broad, which shouldn’t be a big deal, because its over broad and easy to find….”

                Right so now we’ve done 2x searches, which was the original problem. Yay. (couple onto that the fact that, regardless of the “greatness” of your search, or the “completeness” thereof, you still have to overcome the other pitfalls of prosecution before the case can be “completed”, like confusion between the parties, claim construction nonsense etc. etc. on down the line that still will drag out prosecution).

                So… we could just do things the “easy” way, and do the broad search first hoping to find some art to squeeze out a “bad” rejection, get some counts, and kick the can ever down the road. And that way maybe we don’t have to work some VOT. Yay for no VOT having to be worked to support 2x searches! However, as we’ve seen recently, even this model of not having to do VOT is now failing.

                1. Well I agree that 20 hours, or what ever it is you get to produce an action is a ridiculously short period of time and furthermore, patent applications are not a one size fits all commodity.

                  An new drug or cold fusion application is likely going to take longer to examine than a new mouse trap or electric toothbrush and any system that allocates the same period of time to examine the mouse trap as it does the cold fusion method/device is clearly flawed.

        4. Les, the problem is not like claiming a large circle surrounding a smaller circle, the smaller circle being the claim that will eventually issue. It is the use of broad … indefinite … language so that what is searched might be a large circle twenty meters away from the invention.

          1. Ned,

            Once again – breadth is just not the same as indefiniteness.

            You are making a very basic mistake.

          2. I don’t follow you Ned.

            If the small circle is outside the other circle then two inventions are being claimed and they issue a restriction requirement and get a second fee.

            1. Les,” if the small circle is outside the other circle then to inventions are being claimed….”

              I do not think that the issue is that two inventions are being claimed. I think the problem is that the interpretation of what is being claimed, and what was intended to be claimed, is at variance and that is caused by the use of abstract language in the claims.

              1. What language is not abstract Ned?

                If my claim calls for fastening two components together with four screws, do you know how they are fastened or is “four screws” abstract?

                1. True, Les, but still the examination can go greatly askew depending upon the examiner’s understanding of what the claims mean. I was participating in a reexamination where the petition presented a quite reasonable case for anticipation/obviousness over a particular prior art reference that required an interpretation of “independent” in connection with clocks. The examiner interpreted the phrase to require that the clocks be physically spaced on an integrated circuit, when one would have expected an interpretation that the clocks not be electrically connected to each other in a way that their clock signals are synchronized in any way.

                  This interpretation by the examiner led to a basically irrelevant reexamination that had nothing to do with the claimed invention.

                  I think such wild interpretations can be expected if one uses obscure terms that have no well-defined meaning in the claims.

                2. Well Ned, I think you are correct that “one would have expected an interpretation that the clocks not be electrically connected to each other in a way that their clock signals are synchronized in any way,” and that either the examiner simply was not qualified to examine the application or was simply applying an interpretation that was not reasonable.

                  The fault dear Ned, was not in the claim language, but in the Examiner.

                3. Les,

                  Ned just wants to blame the applicant for everything.
                  It’s easier for him that way.

                  Heck, he would even make it malpractice based on the examiner not doing their job.

    2. Here’s a clue: Read big thick stack of papers that accompanies the claims first.

      The big stack of papers contains the same broadly worded language. It’s one of the chief problems.

      1. You are not recognizing that the point of the comment is BRI that does not take into context the entire application.

        This is reminiscent of the dialogue of awhile back between 6 and I, with 6 then claiming that he did not even have to read the application for his first search. He even claimed that his SPE taught him that “time-saving” trick.

        Of course, not doing the job right the first time never saves any actual time (a point that he apparently still does not get per his comment below)

        1. “This is reminiscent of the dialogue of awhile back between 6 and I, with 6 then claiming that he did not even have to read the application for his first search. He even claimed that his SPE taught him that “time-saving” trick.”

          Anon if you don’t stop lying about things that I supposedly said I’m going to report you and get you banned. Do you understand?

          1. Except for the plain fact 6, that what I say here is absolutely true.

            Yes, I would be embarrassed if I were you as well, but claiming this is a lie when it is not just won’t cut it.

    3. Along the lines of “breadth is not indefinite,” comes its sibling of “breadth is not lack of clarity.”

        1. Ned – great; you do realize that THAT is my point and your comments elsewhere do not survive your own comment here?

    4. I actually agree with “the claims are too broad” argument. Many cases we get from overseas (particularly, Europe) have incredibly broad claims, and the invention either doesn’t appear in the claims or is hidden. (This may be — at least in part — because they draft multiple-dependent claims and tend to have claims that depend from many other claims; we remove all of this and so instead of claim 10 being based on 1-9, claim 10 is based on claim 1. If claim 10 in combination with other claims is important, it’s out of context because of our removal of multiple dependencies.)

      The other thing we find about cases written in Europe is nothing is ever defined. I was conversing with an inventor the other day and he gave an example that completely clarified certain terminology and made the case much more understandable. Where was the example in the case as filed? Nowhere to be found.

      1. PatentBob, this seems at variance from what MaxDrei has been telling us about Euro-specs.

        But, it is also true that most American specifications today are written in a way to hide the ball.

        1. Ned,

          As I have pointed out to you in the past, your view of “hide the ball” is off because you just do not properly take into account the plain fact of patent profanity.

          For example, your view on the now dinosaur-like Jepson claim format – a format it appears that you would consider as being “legally required.”

          Your opinions – as quaint as they are – are simply out of touch with modern patent practice (across ALL arts).

    5. “…90 percent of examiners … encountered broadly worded patent applications … [and] two-thirds .. said that this made it difficult to complete a thorough examination…”

      Bluto, Here’s a clue: Read big thick stack of papers that accompanies the claims first. … Predictable blowback from using BRI. When you examine claims untethered from the specification this what you get.

      I think one of ordinary skill in the art should be able to read the claims, understand what they claim and know their scope without having to read the specification. If they are not filed that way, but it takes multiple office actions/RCEs to actually define what it is that is being claimed, the fault lies not in the examiner. If they issue with broad and indefinite language, the fault is in the PTO.

      To the extent such unnecessary back and forth drives up prosecution costs, clients need to understand where the problem lies and fire their attorneys. But it clear as day that with such widespread use of broad and indefinite claiming that there is a major, major problem with US patent practice, and the fault is in the patent bar. Such claiming practice makes it nigh on impossible to efficiently examine an application, and this must be a prime source of so-called junk patents that literally read on the prior art, and cover results, not inventions.

      Any Commissioner/Director worth his or her salt would do something about this. One cannot fix this problem by educating examiners. One must train/discipline practitioners as well.

      1. Ned, you are plainly off base with your view of “I think one of ordinary skill in the art should be able to read the claims, understand what they claim and know their scope without having to read the specification.

        Plainly.

        Read what the examiners are charged with: an examination of the application – NOT just the claims.

        Your attempt to place blame is squarely on the wrong people.

  26. “GAO estimates that nearly 90 percent of examiners always or often encountered broadly worded patent applications, and nearly two-thirds of examiners said that this made it difficult to complete a thorough examination. Without making use of additional tools, such as a glossary of key terms, to improve the clarity of patent applications, USPTO is at risk of issuing patents that do not meet statutory requirements.”

    Here’s a clue: Read big thick stack of papers that accompanies the claims first.

    Predictable blowback from using BRI. When you examine claims untethered from the specification this is garbage you get in return.

    What good will a definitions sheet do when you don’t bother to read the spec or view the drawings prior to searching?

    1. The “use a definition sheet” is a myopic and worthless suggestion.

      Any such “definition sheet” will be made up of words – words that will likely need their own “definition of the definitions in the definition sheet.”

      What the “gist” actually desired is a standardized nomenclature system. The problem of course is that any true innovation by its very nature just does not fit a standardized nomenclature system (and yes – this is true regardless of the art field).

  27. “USPTO officials we interviewed also told us that the number of documents in some CPC categories was greater than those in comparable categories under USPTO’s previous classification system.”

    Of course. This is because of their tar ded way they classify in CPC where, if the document (application) as a whole contains one of the things that is the classified sub-group then the whole document gets tossed there, not as a “cross” reference or anything like that, they just toss it right on in there like “WEEEEEE lets balloon the number of barely relevant refs in this sub”. Of course this is a recipe for exploding sub-groups. Though it is very comprehensive. Of course, if they used cross-referencing as a thing then it would be fine, but noooooo.

    1. ….and now that we have suuuuper shiiney compuuuuters, why do we need or care about CPC categories anyway?

  28. “To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should use the audits and supervisory reviews to monitor the thoroughness of examiners’ prior art searches and improvements over time.”

    That probably isn’t even called for except in some few places in the office. People already search just fine in the AU’s I’ve seen the searches happening in.

    “To ensure that examiners have sufficient time to conduct a thorough prior art search, USPTO should, in conjunction with implementing the recommendation from our patent quality report to analyze the time examiners need to perform a thorough examination, specifically assess the time examiners need to conduct a thorough prior art search for different technologies.”

    Yes, IN CONJUNCTION with making their recommendation on what the search guidelines should be. Absolutely. Setting a reasonable limit on this nonsense or else increasing the limit itself by a large amount is absolutely crucial.

    1. ….and maybe toss in a coupla minutes to read and understand the application and the documents found during the search to verify that the located words are being used in the same way…

  29. “To improve its monitoring of prior art searches and provide USPTO the ability to examine and address trends in prior art search quality at the technology center level, USPTO should develop written guidance on what constitutes a thorough prior art search within each technology field (i.e., mechanical, chemical, electrical), technology center, art area, or art unit, as appropriate, and establish goals and indicators for improving prior art searches.”

    That has been a long time coming. Fact is, I already search bare minimum like 4x + as much as the avg examiner in my field and my ol boss man is constantly wanting even larger searches which is somewhat weird (though he has gotten better about it of late for some reason). And I get very nice results as is. The non-uniformity between AU’s is ridiculous, borderline illegal, as the agreement with the union merely states “a search” (much like the MPEP). And the guidelines given in personal training state that a mere word search should suffice (it doesn’t in reality find the best art, but that is what SUFFICES) and indeed that is what it says in writing in places I believe also. And I agree with that. Maybe tack on like one full sub-group in the CPC that is most relevant and call your search golden. Do even more than that and you’re ahead of the game by miles. (obv go through inventor name, assignee, and interference).

    Fact is, when the PTO does develop such a thing, they’re going to be easy peasy (because they can’t be anything but that given the time) guidelines and my production will shoot through the roof when I trim my search down to just above them.

    1. 6,

      How do you feel about applying what the Supreme Court said in KSR?

      This if course, would mean searching F A R more than just pigeonholed and designated art units.

      Serious question by the way – snark free.

      1. I don’t know what you’re cryptically referring to in KSR dood.

        “This if course, would mean searching F A R more than just pigeonholed and designated art units.”

        I already do that, so idk what you’re talking about.

        1. This is why we cannot have nice things.

          My question was snark free and 6 blusters in reply about some “cryptic” reference.

          There was no cryptic reference as evidenced by 6 then giving a plain answer to my plain question: he says he searches outside of the specific class anyway.

          As mentioned in KSR, it is the problem being addressed and not necessarily the class that needs to be examined. This naturally means that if you are only searching by class, you are just not examining properly for obviousness.

          The mindset here of “search by class” is akin to the mindset of “search by keyword” – both are simply inadequate to do the job of examination.

          As I stressed to 6 in the old “you cannot just search by keyword when you are charged with examining the entire application” discussions, the examiner is charged with FIRST reading and understanding the entire application. Those trying to shortcut the process “to save time” DON’T save time.

          One problem that I am not seeing here is the attempted “one-sized-widget” approach. What time is “proper” will naturally depend on the application itself. Pretending otherwise is simply starting off in the wrong direction.

          1. >>This is why we cannot have nice things. My question was snark free and 6 blusters in reply about some “cryptic” reference.

            December 26th. Ebenezer Scrooge complains about how no one has built a monument to his philanthropy yet.

            1. What is your point, Bob?

              This is NOT the first time that I have tried to “play nice” and have my responses trampled – and is exactly why I stress the fact that the “actual” “rules” are the rules that are consistently enforced.

              As can be recalled from the DISQUS days and your constant upvoting of all the crassness that Malcolm ever spewed, your “opinion” on this matter is decidedly biased, and thus more than just a little suspect.

          2. The problem, conceptually, with searching, is that Examiners are trying to prove a negative. They are essentially signing off that nowhere in the world, at a certain point in time, was this claim known or obvious.

            That is, frankly, impossible.

            So instead we are left to deal with the question of “how confident is confident enough to allow a claim?”

            1. you know, temp, the validity of patents was not enhanced by opening prior art to the entire world, now was it?

              1. You know it makes no sense to extend prior art to the ROA because US patents only cover the US.

                1. The opening to the rest of the world…

                  Yet another thing “sold” as being good for the US innovation system.

                  (and no Ned, I STILL reject your definition of “innovation” as an abomination)

                2. Listen, anon, we both know the big companies essentially hired the IPO and the AIPLA and their “coalition” to push through the AIA. It did a lot more things than simple harmonization which could have been accomplished by simply resetting 102(a) to “before the application” and striking 102(g). Also resetting 102(e) like this:

                  A patent or a published application shall be effective for 102 purposes only from the date of its effective filing.

                  But no, the powers went out of the way to strip US inventors of their right to patent if the invention were known or the subject of a secret patent application anywhere in the world. Now the policy behind this could only be referred to as anti-American.

                  We need to repeal the AIA and perhaps have a do-over if we want to go to first to file. We also need to repeal all involuntary post grant proceedings.

                  But most of all, we need to be very wary of anything coming out of either the IPO or the AIPLA.

          3. “The mindset here of “search by class” is akin to the mindset of “search by keyword” – both are simply inadequate to do the job of examination.”

            Nah they’re very adequate in my art. I can assure you that attempting to search ‘”a problem” is very unhelpful in my art. In my art first you need the actual structure, then you look to see what is going on in the primary and secondary ref to see if there is anything about problems/motivations etc.

            “Those trying to shortcut the process “to save time” DON’T save time.”

            Actually we do sometimes. It may not in your softywaftie art but it does in the useful arts.

            1. 6, you have a patent claim written in English. How do you efficiently search the entire world for public uses/publications that are often not in English?

              1. Ned,

                Not sure if your question was in jest, but you do know that the foreign searches are done on translations of those foreign items, right?

              2. “How do you efficiently search the entire world for public uses/publications that are often not in English?”

                You don’t. This is why it is often said that the PTO focuses mostly on its own publications and the available NPL. Because that is true.

                But that being said, google does kind of pick up slack now adays, and citation searching helps cover that ground too.

            2. 6 – your post here is wrong in every way possible. Besides, I thought that you had already answered that you DO search as suggested by the KSR case – you appear to be caught in a contradiction…

              1. “Besides, I thought that you had already answered that you DO search as suggested by the KSR case – you appear to be caught in a contradiction…”

                Anon you literally cannot trust what “anon thinks 6 said” because you’re a ta rd and cannot understand the words that I write. If you don’t stop lying about “well 6 said this, and 6 said that” I’m going to report you and get you banned. Just say no to citing to what I supposedly said in your mind brain. If you want to quote me directly then it is fine. Try to keep it in context.

                1. It now appears that the only “cryptic” thing in our exchange about examining to meet what the Court laid out in KSR was your own response.

                  This is just not a “don’t trust what anon says” thing – quite the opposite (and yes, 6, I am not forgetting that I have busted you in outright L I E S in the past)

              2. Oh no! A conundrum. 6 explodes!

                Seriously, is this the best use of your time? Your posts make you out to be pretty important in the patent world. Maybe there is a floundering application you can go save.

                1. “Your posts make you out to be pretty important in the patent world. ”

                  Hardly. I came into the patent world without the “corporate skills” and “bureaucratic skills” (lack of pride in your work, not caring about tiny legalities hither and thither etc. etc.) needed to quickly excel in this environment. The whole environment is antithetical the environ in which I was raised and come from.

                  “Seriously, is this the best use of your time?”

                  Brosef I just got worn out by two young ladies. Can I not sit back, relax, watch some old school cosmos and bs on my interbuts?

                  “Maybe there is a floundering application you can go save.”

                  There’s always at least 10 of those bro. And an unending tide of more where that came from.

                2. LOL – not only do you continue to NOT focus on the actual discussion point, your off-focus comments plainly miss the mark.

                  I suggest that you leave the snide comments alone until after you establish that you can hit the target of the conversation.

                  And let me also repeat:

                  would “love to see” has absolutely ZERO to do with the point at hand.

                  With the point at hand, can you point to a single thing that I have misstated?

              3. Can I point to a single thing you misstated?

                Yes.

                As Bob noted above, you, yourself, even quoted the MPEP that it is the job of the DIRECTOR, not Examiners, that you have a problem with. But you continue on your tirade against Examiners, rather than take your beef to the Director.

                1. No.

                  As I replied to Bob, he was wrong and was not recognizing the “examine” part.

                  You rather missed that part as well.

  30. The fact is that the amount of prior art available with both the USPC and the CPC tools has grown gigantically (as I think I’ve mentioned before) since the CPC’s introduction a few years ago. But, there is no additional time to go through them. This is, I’m hearing around the way, burning people out, in addition to whatever quality issues are popping up. And the burning out will additionally affect quality. It’s great we have more art and all, but just doing a word search through it doesn’t cut it like 90% of the time, you have to actually go through all these new jumbo sub-groups. The whole point of moving to the CPC was so that the subs wouldn’t be so jumbo because people would curate them properly. WHOOPSIE, doesn’t look like that is happening.

    Just to present an avg case, I now have, on average, like 4 really good refs for cases. Used to be more like average was 1 or 2 really good refs. Even having to read through and evaluate with a fine tooth comb those 2 extra refs (per case) is somewhat of a burden, they can easily take an hour or two each. Tack that onto the additional search time it took to look for them and the whole thing is just blowing up up up.

  31. “GAO estimates that nearly 90 percent of examiners always or often encountered broadly worded patent applications, and nearly two-thirds of examiners said that this made it difficult to complete a thorough examination. ”

    Yes, that is how the patent system is perversely set up by generations of patent lawlyers. Perhaps for the best, or for the worst.

    “Without making use of additional tools, such as a glossary of key terms, to improve the clarity of patent applications, USPTO is at risk of issuing patents that do not meet statutory requirements.”

    Idk imo a glossary would do little to alleviate the problem, at least for my art. They’d just use broad definitions in the glossary. Plus, where they were forced to actually nail things down a bit if we forced them to make a glossary then they’d likely just use the words/phrases that they were going to use in the glossary definition in the spec/claims itself thus nullifying the glossary.

    1. so putting this 90% together with Malcolm’s usual diatribe, are we to take it then that 90% of the innovation belongs tot eh Oh Noes (gasp) software arts?

  32. “a quality patent as one that would meet the statutory requirements for novelty and clarity, among others, and would be upheld if challenged in a lawsuit or other proceeding.”

    That definition is at once perfectly sensible and completely impractical. Are we supposed to expect (and allow) examiners to reject patent applications because of what they think the law will be at some unknown future date when the resulting patent is litigated? Do we expect them to be able to divine the outcome of a claim construction appeal to the Federal Circuit?

    Further, the only patents we’ll ever know the quality of (by this metric) are patents that are litigated. Which are often patents for which there are good arguments on both sides regarding validity, otherwise there wouldn’t be litigation. Why should we judge examiners on the basis of the patents whose validity is the least predictable? Surely a better metric would be something like the percentage of the examiner’s issued patents that are never the subject of litigation (or at least never a decision on the merits), relative to the median for patents issued around the same time in that technology center?

    I don’t want to know whether an examiner gets lucky regarding the handful of patents they issue that are subject to litigation. I want to know which examiners issue patents whose validity is so unquestionable that they are never the subject of litigation in the first place.

    It’s true that many patents are not the subject of litigation not because they are obviously valid but because they are obviously worthless. But the problem of companies spending large sums of money to apply for worthless patents mostly solves itself. To the extent it’s a significant problem, it’s better addressed by increasing application fees.

    1. “I want to know which examiners issue patents whose validity is so unquestionable that they are never the subject of litigation in the first place.”

      If they’re doing that then they’re near certainly issuing illegal OA’s out their behinds. Which, btw, is the easiest (in terms of adminstrability), most practical way to ensure near 100% validity.

        1. Yes anon, he did. But the way you achieve a high percentage of GRANTED patents that are never litigated with huge certainty is to send out bad rejections that administratively end up making the applicant amend until the claim is very narrow. Then, it’s much less likely to go to court, or ever have anyone arguably infringe it for that matter.

          1. WOW – that is some serious NON-Quality thinking there 6.

            Let’s try again: granted patents that provide the protection that the law offers (you know 6 – that whole “entitlement” thing of yours).

            1. “WOW – that is some serious NON-Quality thinking there 6.”

              Yeah it’s super bad, but true.

              “Let’s try again: granted patents that provide the protection that the law offers ”

              You mean: granted patents that provide the BROADEST protection that the law offers. But nah, they won’t define it that way. I try to shoot for it myself, and most but not all of my bosses are on board with it. Still, the PTO and the federal gov has no impetus to try to issue the broadest patent claims possible. Their only impetus is the reverse of that.

              1. Your emphasis here is again part of the problem 6.

                You also still have the “just say no” taint.

                Let me repeat what a certain Director said when that director tried to turn the tide on the “Reject Reject Reject” era:

                Quality is not reject.

                This little conversation highlights one of the very real problems of the Office (in the comments above Paul Cole hits in this: improper rejections are EVERY bit a problem as improper allowances).

          2. Bingo.
            I see that regularly. Very expensive for the applicant to keep fighting the absurd rejections. More and more of my individual inventor and small company clients have decided to “opt out” of the patent system. Over time, I would expect others will see the same result. It’s trade secrets or design patents, or bust…. And, they are sorting out various publication schemes that will be effective to kill any latecomers to the same invention party.

    2. whose validity is so unquestionable that they are never the subject of litigation in the first place.

      Can’t have that when you have a patent core made up of non-lawyers, can you?

    3. James I like your train of thought, but the problem is the lag time between issuance and any potential litigation result is likely 10-25 years after the examiner examined the case. Even if the examiner was still examining 10-25 years later, that wouldn’t be an indication of their current quality, and even if you made the metric about the USPTO as a whole that would still be measuring what the quality was 10-15 years ago.

      1. Examiner’s can’t be tasked with anticipating when – years down the road – that the Supreme Court decides to blow the kneecaps off of some entire industry.

        For reasons which are seem totally political, and in many respect totally at odds with principles of physics and chemistry, the Supreme Court has felt a certain amount of political heat. So, they taken action – no doubt in part by litigation on patents which could have been easily killed under good 103 art, if not 102 knockouts, had better searching been conducted at either the examination or the litigation stage.

        The examiner’s job must necessarily be limited to review of the available evidence put in front of him/her, and the art which is uncovered in the time frame which USPTO management allows for such activity, given the available tools. More examination time would inevitably result in better art. Besides, many patents in the killing fields now were granted when search tools and databases were not what they are today. Small wonder that so many get crippled or killed. That’s not entirely an indication of poor quality as at time of grant – and is more likely an indication of time constraints and database constraints as at time of exam.

  33. Without making use of additional tools, such as a glossary of key terms, to improve the clarity of patent applications, USPTO is at risk of issuing patents that do not meet statutory requirements.

    More accurately, the PTO has already issued reams of ineligible or invalid patents and continues to do so on a weekly basis because it has (apparently) made no effort to place formal restrictions on the terms used to describe data or data processing logic. Hence the rise of disputes over the meaning of ridiculous, vaporous terms like “attribute value” and the ongoing farcical attempts to treat sets of abstract information processing rules as physical structures.

    1. To quote myslef….

      “What perception is created when such a helpful LEGAL discussion is not initiated and instead we have the perpetual drive-by Windmill chases?”

      …as Malcolm drives by again with his anti-software nonsense….

    2. >>because it has (apparently) made no effort to place formal restrictions on the terms used to describe data or data processing logic.

      The Office got slapped around when it last tried to limit the number of claims an applicant can put into an office action, and you think the Office can issue lexicographic rules?

      1. “Slapped around” is putting it nicely.

        Putting it plainly: what the Office tried to do was illegal.

      2. >>you think the Office can issue lexicographic rules?<<<

        No doubt they can.
        The public comments might be 99% negative.
        But, that won't stop a final rule being published.
        Only placing land mines in the comments and rulemaking records, with good evidence, to provide solid ammunition for an APA kill, will prevent such mischief.

        Good grief, patent applications are outrageously expensive to write now compared to 30 years ago, anyway – even on an adjusted dollar basis. Examiners don't read specs now. Why will more writing of claim charts and glossaries help? It will just add to cost and increase the number of words which can be used against the patentee in litigation. I've seen a few patents with some intelligent definitions. Not many. Most with such well developed boiler plate seem to be old fashion continuation application seeds (kinda trying to cover the waterfront depending on how various technologies develop), and nothing more, and a waste of time as to the currently claimed invention.

        The glossary and claim chart idea was dreamed up by someone totally unfamiliar with the patent application process, either from the patent prosecution or from the patent examination side. It seems to me this might be an issue that both sides can tell the GPO and the USPTO management to pound sand on…..

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