November Patent Quality Forum Series

The USPTO continues to move forward with its Enhanced Patent Quality Initiative (EPQI) and is hosting a set of five Quality Forum events over the next month in DC, Milwaukee, KC, Baton Rouge, and Portland. [Link]  See you soon!

Particular initiatives being discussed include:

  • Post-Prosecution Pilot: This ongoing pilot is part of the PTO’s continued search for compact-prosecution mechanisms.  After final rejection, the patentee offers a 5-page argument and then participates in a 20-minute conference with a panel of three examiners who then offer a written opinion.
  • Post Grant Outcomes Pilot: This pilot is now being implemented office wide and basically makes sure that AIA Trial Proceedings (including applicant arguments and submitted prior art) are given to examiners handling pending related applications.
  • Stakeholder Training on Examination Practice and Procedure: The training program is for non-examiners on patent office practice. Looks awesome – and would be exceptionally helpful for someone studying for the bar exam.
  • Clarity of the Record Pilot: Looking primarily for clear claim construction statements and also clear information provided in interview summaries


36 thoughts on “November Patent Quality Forum Series

  1. 4

    This effort to patch compact prosecution into something workable illustrates in spades that the whole idea of compact prosecution in the problem.

    1. 4.1

      It is not the notion of compact prosecution that is the problem.

      It is the slavish and sloppy performance of that notion coupled with the “you get what you measure” internal Office examiner measurement system that is the problem.

  2. 3

    Twelve posts in and Malcolm has already twice repeated his old stale script items that should have been buried long long ago.

    Yay “ecosystem” – the drive by Internet style shoutdown continues with Malcolm.

  3. 2

    Phillip Smith: A high-quality office action matches each noun in a claim to a particular reference number or element in the art

    That’s only true if the claims are “high quality.”

    Anybody aware of the type of scrivening typical of most “do it on a computer” applications knows very well that “matching each noun in a claim” to a particular reference number is a l0ser’s game. In this case, it would be the public’s loss.

    The simple fact is that most of the nouns and verbs in a typical “do it on a computer” junk claim are best completely ign0red because they are technologically empty and, as such, meaningless as “limitations.”

    But that’s not the game that the luvvers of the worst junk ever inflicted on any patent system want to play. And they must be coddled because, as they’ve told us over and over again, they will take their football and go home if they’re not coddled. And we’ll all be forced to live “like the Amish” until we come to our senses and give these rich entitled “do it on a computer” fraudsters what they want.

    1. 2.1

      Just so there’s on confusion, consider a claim to, e.g., “An improved programmable computer, wherein said computer is configured to store medical information, wherein said information comprises [….]”.

      See the stuff in brackets? There could be a trillion nouns and verbs there. Examiners should be ignoring every one of them.

    2. 2.2

      …and again with the dichotomy of “rich” and the form of innovation most accessible to the NON-rich….



          Not sure why you find that funny.

          Perhaps because your dissembling and duplicity is in the spotlight and you have nothing inte11igent to say….


            What’s funny is that it’s an absolutely ridiculous point (and that’s assuming that it’s true, which it isn’t) to bring up as a defense of software patents (?!).

            Our pre-existing patent statutes shouldn’t be warped willy nilly around whatever happens to be popular and easy for attorneys to milk. I know that your “David and Goliath” script demands that you pretend otherwise, so by all means go ahead and keep pretending.

            But at least you should make the minimal effort required to understand that most “innovation” isn’t patented, nor should it be. If some class of activity happens to be the easiest for the non-rich and (invariably) less educated in our society to “innovate” in, the last thing we want to do is tax that huge and every-growing class of people with a zillion patents that 99.999% of those people will never acquire or even seek. Get it?

            Pretty straightforward stuff.

            Oh but wait! Tell everyone a story about the awesome society you envision where nobody does anything except sit around in front of a computer, filing for patents on logic, and then searching for people to target for “monetization.” Go ahead! Preach it loud and proud. People will adore you.

            You’ve been feeling a lot of love for patent maximalism already these past few years, haven’t you? And the “pendulum is swinging back” towards even greater attorney love, right? Sure it is. All your friends are telling you it’s true, so it must be true. Because you’re all so important and serious.


              You see intowards manipulation in the very idea of software innovation.

              That is a YOU problem.

              It simply is not up to you to decide what innovation may or may not be patentable based on YOUR feelings.

              So instead of slinking back to your propaganda of “software is logic,” maybe you should just put your feelings (and your colossal ego of the fields of Rye in your mind) in check.


                You see untowards manipulation in the very idea of software innovation.

                Not at all. Like most people, I’ve written innovative software myself.

                It’s the idea of granting patents — US utility patents — on that kind of innovation that I find absolutely absurd for all kinds of excellent (and increasingly widely shared) reasons.


                1. Your feelings (and [shrugs]) are noted.

                  As well as the fact that such are not in accord with the law as written by Congress.

                2. Way to contradict yourself.. like most people… you have innovated… [in the form of innovation most accessible]

                  Maybe that shovel you clutch so dearly should be put aside…

    3. 2.3

      MM, might I suggest that if a claim is claiming anything “configured” to do anything, or the equivalent, that there is a very high potential that the claim is directed to nonstatutory subject matter or to an idea. I would suggest that the Office direct the examiners to delay a search on such cases until all 101 and/or 112 issue are resolved.

      But, in principle, I agree that you are more right than wrong here.

      1. 2.3.1

        Of course Ned, it happens to align with your own Windmill hunt (the dreaded “6-must-be-a-genius-because-he-agrees-with-me” syndrome on display again). No wonder that you enjoy Malcolm’s “swagger.”


          anon, I may have my Windmills. But you definitely have the Rich View that has vanished into history, Gone with the proverbial Wind.


            As I have noted to you many times now, Ned -my view is NOT the “Rich view,” but rather is the view of the Congress that enacted the Act of 1952.

            You should pay more attention to that Act.

      2. 2.3.2

        …and you do realize that ENTIRE statutory categories are nothing more than Protons, Neutrons, and Electrons “configured to” something, right?


          ENTIRE statutory categories are nothing more than Protons, Neutrons, and Electrons “configured to” something, right?

          In fact, “categories” are abstractions.

          Thanks for playing, “anon”! You’re a very serious person.

      3. 2.3.3

        That “or the equivalent” captures most of the innovation going on today, Ned, and is precisely why you are grouped with the anti-patent propagandists.

  4. 1

    Less emphasis on “post” anything and more emphasis on getting the job done right the first time through.

      1. 1.1.1

        To wit:

        What I like to call the “Cast of Characters Rule”…

        A high-quality office action matches each noun in a claim to a particular reference number or element in the art. (Marlon Brando) is to (Stanley Kowalski) as (element X of the prior art) is to (feature Y recited in claim 1).

        If the matching is not a perfect one-to-one, then some elaboration is included (e.g., “elements X and Y of the cited art, taken together, constitute the Z recited in claim 1”).

        This seems like an objective and easy-to-enforce measure of patent quality. We all know how antecedent basis works and it’s easy to identify the first instance of a particular feature. The Examiner should be asked to plant a flag stating clearly that “the particular feature corresponds to ________”. The Office shouldn’t mail something until the Examiner has completed this task for every recited feature. AT LEAST apply the Cast of Characters rule to the independent claims.

        Doesn’t require any further rulemaking either. See, e.g., 37 CFR 1.104(c)(2):

        “In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”


          Do you feel this rule is applicable to examination of method claims or do we need to modify it to include: (or gerund/verb)?

          What of modifiers…. if the claim element is: a golden wand, will citation to any old wand due? Is it acceptable to cite to a second document illustrating a golden ray of sunshine and assert that it would have been obvious to one of ordinary skill to make the wooden wand of reference A golden in view of reference B, the motivation to do so being: because shiny?


            if the claim element is: a golden wand, will citation to any old wand due?

            “If the claim element is to a list of videos, will citation to any list do?”

            Oops. I didn’t mean for reality to intrude in there. Let’s return to this awesome discussion about “golden wands” and “sunshine.”


              Your intrusion is banal – shall we again visit your volunteered admission against interests in your saying that you know and understand the controlling law of the exceptions to the judicial doctrine of printed matter (that “functionally related” aspect that makes your ad nauseum ad infinitum dissembling ever so transparent?)

              Do you need a hyperlink to my simple set theory explication (you know, in those short declarative English sentences you are always on about? Do you need me to repost the explication (again) on this side of the blog? What are the chances that if I do either, that you respond exactly as you have in the past and simply run away?


                “If the claim element is to a list of videos, will citation to any list do?”

                Keep huffing and puffing your nonsense, “anon.” The issue doesn’t go away just because you run away from it.

                And, yes, you are going to continue to l0se. Bigtime.


                1. What specifically is the “nonsense” that you feel that I am “huffing and puffing”…?

                  Please refer to what I have actually written.


                2. Increasingly I’ve come to believe that people for whom English is a poorly mastered second language really shouldn’t be let anywhere near a discussion about subject matter eligibility.

                  And, yes, that definitely applies to you, “anon.”


          Focusing on nouns as the basic unit of claim mapping only encourages examiners to match individual words in the claims to individual words in the reference without paying any attention to (a) the claim as a whole, (b) the underlying concepts, or (c) the context accompanying those words in the reference. That’s a bad habit that examiners are already well-trained in.


            Clearly, more than just “nouns” are not only permitted, but can be essential.

            Let’s stay (far) away from the simpleton’s error of mistaking one optional claim form as somehow (magically) being anything other than a mere option.

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