Hyatt v. USPTO: Mandamus Action Requesting an Impartial Administrative Review

Gilbert P. Hyatt v. USPTO and Iancu (E.D. Va. 2018) (Hyatt – Mandamus Action Complaint)

Hyatt has filed a new mandamus action against the USPTO as the next step in the 40+ year battle over his microcomputer patent applications. Hyatt has over 300 patents applications pending before the USPTO.

According to the complaint, “Most of Mr. Hyatt’s applications have been pending for over 20 years, with about a dozen pending for over 35 years and three applications pending for over 40 years.”  The complaint details:

[In the 1990’s then Commissioner Bruce] Lehman and other PTO officials falsely branded Mr. Hyatt a ‘submariner’ and unlawfully decided that the PTO would never issue him another patent. . . . Having made that decision, the PTO proceeded to carry it out. It acted almost immediately to withdraw from issuance four patents either issued or in the final stages of being issued to Mr. Hyatt—actions in which the PTO has acknowledged the unusual participation of Commissioner Lehman and other senior PTO officials. It applied unlawful secret procedures (since acknowledged  by the PTO) to block the issuance of applications that examiners found patentable. Internal PTO documents reveal that these unlawful procedures prevented issuance of at least several patents to Mr. Hyatt. It put more than 80 of Mr. Hyatt’s pending administrative appeals on ice for up to a decade before terminating them by reopening prosecution and restarting the examination process from scratch. It secretly used what PTO officials called “Shadow Art Units,” “Phantom Art Units,” and “parking lots” to stow Mr. Hyatt’s applications and take them off the books. And it delayed actions across the board, with a degree of creativity that bespeaks the PTO’s enmity for Mr. Hyatt: issuing suspensions amounting to over a millennium of aggregate delay; secretly assigning his applications to management personnel who do not examine applications; dismissing his petitions imploring the agency to act on the false basis that his applications were already being expedited; leaving approximately 100 of Mr. Hyatt’s applications for a single examiner to process in his personal time, without pay; and manipulating its reporting systems to hide its failure to act on Mr. Hyatt’s applications. All the while, PTO officials spread the word high and low throughout the agency that Mr. Hyatt was a “submariner” and that he would never get another patent, poisoning the well against him.

More recently, the PTO created the “Hyatt Unit . . . “for the purpose of miring all of Mr. Hyatt’s applications in administrative purgatory until Mr. Hyatt gives up or dies.”

The Hyatt Unit began its work by restarting prosecution from scratch, throwing out years of work and enormous effort by Mr. Hyatt in the process. It blanketed Mr. Hyatt in what its leader described as a “boatload” of hundreds of burdensome Office Actions in just a few months, forcing him to scramble to make any response. And now it is in the process of systematically abandoning and rejecting his applications, piling on numerous, overlapping rejections on every patent claim and entering frivolous “objections” that take years to correct due to the PTO’s refusal to decide his administrative petitions for relief on a timely basis or at all. . . The Hyatt Unit has never allowed a single one of Mr. Hyatt’s claims in its more than-5 years of existence.

Finally, in an attempt to eliminate all of Hyatt’s claims, the PTO asserted prosecution laches against all of Hyatt’s applications.  That approach has seemingly now failed with a 2017 district court decision rejecting the PTO’s prosecution laches case.

In this action, Hyatt is looking for several forms of relief — perhaps most pointedly is a mandamus action from the court ordering the PTO “expeditiously to conduct a fair, impartial, and timely examination of his applications in accordance with law, to allow patentable subject matter, to issue patents claiming such patentable such subject matter upon payment of the issue fee, to provide timely action on Mr. Hyatt’s petitions, and to permit Mr. Hyatt to obtain timely final agency action on rejections from the Appeal Board.”

In addition, Hyatt is requesting compensation for post-GATT patent applications whose potential term have expired due to PTO delay and issuance of those patents.

= = = = =

The complaint is an interesting read, but was filed partially under seal (based upon a protective order from a prior case), including the following paragraph:

===

A separate proceeding is ongoing in DC Federal Court  Hyatt v. Iancu, Nos. 05-2310, 09-1864, 09-1869, 09-1872 (D.D.C.).  In a recent briefing, the PTO explained its contention regarding the bulk of Hyatt’s patents:

Mr. Hyatt filed a patent application in 1984 that describes, in over 650 pages of text and figures, a system for manipulating images on a screen by rotating, sliding, and zooming. His explanation includes something that he called a “window” that is in the computer’s memory and is not visible to the user. Mr. Hyatt amended his claims a number of times and, fifteen years later, in 1999, filed the claims that are now at  issue. By 1999, the term “window” had taken on a much different and more valuable meaning in computing and to the general public. Mr. Hyatt’s claims now recite a type of window that is visible on the user’s screen, can be overlapped to run multiple applications at once, includes interactive features such as menus and icons, and allows the user to interact directly with the display monitor by, for example, clicking on a pull-down menu or choosing a menu option. Those claimed inventions are not described in Mr. Hyatt’s original specification, and that lack of written description means the claims have correctly been rejected by the USPTO and should also be rejected by this Court.

USPTO Proposed Findings of Fact and Conclusions of Law [04e9202c-6214-442a-998d-3b74156ca79b]

= = = =

Example claim (1984 priority date):

Claim 131. A process comprising the acts of:

generating background image information;

generating a first window of three dimensional perspective image information;

overlaying the first window of three dimensional perspective image information onto the background image information;

generating a second window of three dimensional perspective image information;

overlaying the second window of three dimensional perspective image information onto the background image information overlapping with the first window of three dimensional perspective image information; and

displaying a background image overlaid by a first window of three dimensional perspective images and overlaid by an overlapping second
window of three dimensional perspective images in response to the background image information overlaid with the first window of three dimensional perspective image information and in response to the background image information overlaid with the overlapping second window of three dimensional perspective image information.

87 thoughts on “Hyatt v. USPTO: Mandamus Action Requesting an Impartial Administrative Review

  1. 10

    I do not buy the USPTO’s broad “windows” claim allegation – it is a smoke screen. The Office is apparently doing to Mr. Hyatt what it does in other bogus 112 rejections I observed – puts up a straw man by mischaracterizing the claim and then knocks it down by a fallacious written-description rejection. The excerpt from the USPTO argument to the district court posted above demonstrates that the USPTO ignores Mr. Hyatt’s specific claim limitations and alleges that he claims a “window” that “can be overlapped to run multiple applications at once, includes interactive features such as menus and icons, and allows the user to interact directly with the display monitor by, for example, clicking on a pull-down menu or choosing a menu option.” But none of these features are included in Mr. Hyatt’s claim illustrated above. If they were, the USPTO would have rejected the claims under 102/103 given the extensive interactive “windows” prior art in 1984. This USPO straw man tactic may intimidate certain applicants in prosecution, but I don’t believe the district court will fall for this nonsense.

  2. 9

    It would appear that by unfairly branding Hyatt as a submariner (despite the lack of any legal authority to outlaw submarines), the PTO created the greatest armada of submarines, the US Patent system has ever seen.

    That is often the kind of result that stems from the misapplication of laws to prevent perceived “abuses” for which there no laws to prevent, instead of just applying the law, fairly and justly, until Congress changes the law to something else.

    1. 8.1

      it’s rather well-known that the Xerox Star had a windows interface as early as 1981.

      If Judge Moore didn’t use one in college, then it didn’t really exist.

    2. 8.2

      And, that Xerox Star Wikipedia article very appropriately hotlinked by Anon Y. Mous even conveniently cites as references some actual publications well before the Hyatt 1984 priority date. The PTO “Hyatt Examination Squad” should also visit the San Jose Computer Museum, or at least give them a call.

      1. 8.2.1

        If they have good prior art – cite it!

        But they have to examine the cases, not sit on them and play games to prevent them actually being examined.

        I doubt Hyatt will ever get before the Supremes in this matter, but if he does, I will look forward to reading Justice Gorsuch’s skewering of the PTO.

        1. 8.2.1.1

          they have to examine the cases, not sit on them and play games to prevent them actually being examined.

          Golly gee I wonder if Gil “Couldn’t Invent His Way Out of a Paper Bag” Hyatt might have considered some alternative strategies to speed up the rate at which his awesome claims were examined? You know, instead of “playing games” and filing ten trillion claims.

          1. 8.2.1.1.1

            MM, are you making the shocking suggestion that the entire applications delay since the 1984 priority filing date was NOT entirely the fault of the PTO?
            [Levity aside, it surprises me that this whole mess has not already turned in a PTO public relations disaster. These are not Hyatt’s first D.C. suits against the PTO.]

            1. 8.2.1.1.1.1

              His “suggestions” are far more insidious than that.

              To Malcolm, the rule of law need not apply to anyone that he FEELS may be some sort of “bad actor.”

              His rants constantly attempt to shift focus away from the actions/inactions of the Office.

              As AM notes, if the Office gets away with bad behavior with this person (who has had the means to fight back), what of all the others who may also be treated improperly, but do not have the means to fight back.

              He wants to turn this into a (true) personal attack, quite indifferent as to where the focus should be at: on the Office.

              1. 8.2.1.1.1.1.1

                “To Malcolm, the rule of law need not apply to anyone that he FEELS may be some sort of “bad actor.””

                I think you mean “to any leftist”. Remember, he’s ha ting on Hyatt because of his sex/gender and race.

                1. Malcolm:

                  Because Gil Hyatt is such a shining example of a good faith actor. Rich, white and oh-so-manly!

                2. Malcolm,

                  I am sure that you realize that was a DIRECT QUOTE of your post below.

                  Then try to realize that the reason I put your quote here was because it FIT what 6 stated.

                  Your rejoinder then, is empty and quite misses the point here.

                  Maybe try just a little bit next time.

      2. 8.2.2

        For a little more background on those who have not followed Gilbert Hyatt’s prior patent activities, this is the same person that years ago, among other long-pendency applications, actually obtained a broad issued patent claim covering all microprocessors, which patent collected a lot of money and which took a long time and a TI interference to dispose of.
        Also, it took until 2007 for another decision on Hyatt applications practice. As reported by the IPO: “USPTO Rejection Based on “Prima Facie” Inadequate Written Description Upheld — Hyatt v. Dudas, Director, Patent & Trademark Office 2006-1171 — On June 28 in an opinion by Chief Judge Michel, the Federal Circuit upheld an action by the USPTO initially rejecting patent claims of famed Gilbert Hyatt on the basis of a “prima facie” showing of an inadequate written description requirement. The USPTO examiner followed a procedure sanctioned by the Manual of Patent Examining Procedure. At one stage of the prosecution, Hyatt substituted 1,100 new claims based on the same specification. The examiner asked Hyatt to explain where in the specification certain combinations of elements could be found.”

        1. 8.2.2.2

          “actually obtained a broad issued patent claim covering all microprocessors, which patent collected a lot of money and which took a long time and a TI interference to dispose of.”

          We have a winner. The TI interference was the time Mr. Hyatt was sunk by a deeper submarine. Gary Boone had submarine applications going back to 1971, beating Hyatt by several years.

          “I invented the microprocessor, for a little while. . . .” But received mucho dinero in the while.

          1. 8.2.2.2.1

            “I invented the microprocessor, for a little while. . . .” But received mucho dinero in the while.

            How dare you bring this up. You must be jealous!

          2. 8.2.2.2.2

            Technically, TI did not have a “deeper submarine” than Hyatt’s, they had an earlier filed microprocessor application that they had converted to a 35 USC 1.293 “Statutory Invention Registration” publication which retained interference potential. [This option was eliminated by the AIA.]

            1. 8.2.2.2.2.1

              Technically, I don’t think it is correct to say that Boone “had converted” to an SIR. Boone first requested converting his application to an SIR during the interference proceeding, in response to Hyatt’s motion for unpatentability on the ground of double patenting. Mr. Hyatt was surprised by a deeper submarine when Boone provoked the interference.

  3. 7

    The addition to the story (in the main post) belabors one small – but critical – point:

    Why is it taking a law suit from Hyatt in order to force the Office to examine (to a point where a proper appeal COULD occur) that makes up the “answer” (finally) being dragged out of the Office?

    It’s not as if that SAME answer could have been provided by the Office decades ago.

    This little factoid says MORE about the Office than it ever could about Mr. Hyatt. Even if taken as true, the “answer” does not answer HOW and WHY the Office has acted as it has for decades.

    No matter the “attempted narrative,” the point remains: the administrative body has abrogated its job.

    The real questions may be more interesting: why? at whose direction? (as Paul points out, this appears to be under many directors, which may bring up the point that it is an inside job under the director level that is propagating the Office malfeasance), and the question of all questions when covert actions are uncovered: who knew, when did they know, and how deep does the ensuing cover-up go?

    1. 7.1

      who knew, when did they know, and how deep does the ensuing cover-up go

      Golly gee whiz if you are concerned about this kind of thing maybe focus on the g@ ping @ h0le and crook sitting in the White House instead of Gil “Inventor of Nothing” Hyatt’s b@ loney.

      Just sayin.

      1. 7.1.1

        Yeah, since he has been president for the past 35 years while this has been happening. Do you even bother turning on your brain anymore?

    2. 7.2

      Checking each element of each of many much later added application claims for 112 enablement support [and absence of “new matter”] in the original specification has not exactly been a normal PTO examination forte, or even stressed with examiners until quite recently. It has especially been a problem in massive long-pending application prosecution files handed down from one examiner to another. [Remember some of Lemelson’s?]
      The high fees for excessive numbers of claims now deters most applicants from that practice. But those willing and able to pay for excessive claims can take advantage of the fact that the PTO does not reward or pay examiners for dealing with excessive numbers of claims. Especially not for checking for 112 support for all of many much later added new claims, and finding sufficiently old prior art.
      Such unique applications need to be assigned to examiners who will get paid for their greatly increased workload per application, and apparently that is what the PTO finally, belatedly, did, as I had urged years ago.

      1. 7.2.1

        Even if assigned to a special examiner in this way, that doesn’t explain the lack of actions in ANY of Hyatt’s cases.

        This is a disgusting abuse of power. But as I noted earlier, it’s standard practice for the PTO, Hyatt’s situation is merely the most egregious example.

        One additional point: by not acting on Hyatt’s applications, the PTO is punishing the public, because eventually some of these old cases WILL issue as patents, long after they should have been granted and expired, and well after the technologies covered by the patents have been adopted as mainstream, with terms of 17 years from grant.

        1. 7.2.1.1

          “Even if assigned to a special examiner in this way, that doesn’t explain the lack of actions in ANY of Hyatt’s cases.”

          Are you under the impression the Office hasn’t issued Hyatt any actions recently? Or are you referencing the period before the Hyatt AU was formed?

          1. 7.2.1.1.1

            I don’t know that there IS a special AU for Hyatt. Paul Morgan postulated that there is.

            I know that the last patent issued to Gilbert Hyatt was granted on April 29, 1997. No. 5,625,583.

            As Mt. Hyatt is no neophyte when it comes to the patent system, it is inconceivable that in the subsequent 21 years, with dozens of pending applications, not ONE of them was allowed and proceeded to grant. There clearly has been an effort by the PTO to suppress Mr. Hyatt’s applications.

            I am skeptical about whether or not the courts will do anything to redress this injustice. I am certain that they will do nothing that will result in the persons responsible for this abuse compensating Mr. Hyatt for his wasted time and money, not to mention lost licensing opportunities.

            1. 7.2.1.1.1.1

              The special examination team for Hyatt applications is asserted in the subject litigation documents.

            2. 7.2.1.1.1.2

              “I don’t know that there IS a special AU for Hyatt. Paul Morgan postulated that there is.”

              The filing that’s the basis of this post acknowledges the Hyatt unit, and complains about the “hundreds of burdensome Office Actions” that were issued after the Hyatt Unit started up.

            3. 7.2.1.1.1.3

              AM it is inconceivable that in the subsequent 21 years, with dozens of pending applications, not ONE of them was allowed and proceeded to grant

              It’s always been interesting to observe that the patent maximalists types most obsessed with “innovation” also have the smallest imaginations.

              The fact is that it’s eminently “conceivable” that a pile of junky word salad never results in a patent grant. Every attorney knows this. Why on earth would anyone suggest otherwise?

              1. 7.2.1.1.1.3.1

                Nice strawman, Malcolm – I know of no one that suggests otherwise – Why on earth would you engage with such an obvious strawman?

          2. 7.2.1.1.2

            Ben,

            Given SAWS and the like, I am curious as to why you focus on “issued actions” when the complaint is more than merely “not issuing actions”…

            Clearly, issuing actions in bad faith is part and parcel of the complaint. In fact, an “issued action” that purposefully does not advance prosecution IS one of the administrative tactics that have prevented these applications from being finally resolved for decades.

            You work in the Office – you cannot be that clue1ess.

            1. 7.2.1.1.2.1

              Because Gil Hyatt is such a shining example of a good faith actor. Rich, white and oh-so-manly!

              It really is the crime of the century that the patent office would treat such an incredible person so poorly.

              Excuse me now while I burn myself alive to protest this terrible injustice, beyond doubt among the most nightmarish events in the past 100 years.

              1. 7.2.1.1.2.1.1

                …and there you go again – missing the point.

                The point is NOT how Gil Hyatt is or how you feel about him.

                The point is that the administrative agency is not acting appropriately.

                NO ONE is trying to make the point be the point that you want to make – try to stay focused on the actual point here.

        2. 7.2.1.2

          Your point is certainly valid that by “not acting on Hyatt’s [old 17 year from issue patent term] applications, the PTO is [was] punishing the public”

          1. 7.2.1.2.1

            For Hyatt’s sake, I’m glad that these cases are pre-GATT. If the PTO were to pull this stuff now, they could burn up the 20-year term so that the patents would be stillborn – even with patent term adjustments.

            And if the PTO can do this to Hyatt, it can do it to anyone.

            1. 7.2.1.2.1.1

              if the PTO can do this to Hyatt, it can do it to anyone

              But instead many millions of patents have been granted without incident.

              Please pull your head out of your behind.

              1. 7.2.1.2.1.1.1

                Accuse others much?

                As to your “logic,” examples of proper behavior- no matter how many -do not and cannot serve as ANY type of “ends justify the means” that you may want to attempt to turn this into.

                Even – and US jurisprudence would put it: especially – seemingly “bad actors” are not an excuse for the government to misbehave.

                Your “logic” is the same as the Bush/Rumsfeld “they deserve to be tortured” logic. Showing (yet again) that Malcolm is the Trump of these boards.

        3. 7.2.1.3

          by not acting on Hyatt’s applications, the PTO is punishing the public, because eventually some of these old cases WILL issue as patents

          LOL

  4. 6

    Buried in the 621? paragraphs of the Hyatt lawsuit complaint [for which the mandamus request is just one small part] is the following paragraph for the alleged LEGAL basis of the suit:
    “12. This is an action seeking (1) specific relief in the form of refunds under the
    Administrative Procedure Act (“APA”), 5 U.S.C. §§ 701–706; (2) monetary relief under the Fifth Amendment’s Takings Clause, U.S. Const. amend. V; (3) an order under the APA Case [1:18-cv-00546-TSE-MSN Document 1 Filed 05/07/18 Page 8 of 91 PageID# 8] setting aside the PTO’s unlawful policies regarding Mr. Hyatt’s applications; (4) an order under the APA and writ of mandamus under the All Writs Act, 28 U.S.C. § 1651, directing Defendants to act on Mr. Hyatt’s applications in accordance with law; (5) a declaration under the Declaratory Judgment Act, 28 U.S.C. §§ 2201–02, finding that Mr. Hyatt is entitled to receive a patent on the ’263 Application; (6) an order under the APA and writ of mandamus under the All Writs Act directing Defendants to issue such patent upon Mr. Hyatt’s compliance with any prerequisites to issuance. The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1361.”

    1. 6.1

      Will be interesting to find out how many, if any, of these applications where appealed to PTAB decisions?

  5. 5

    Those of us who prosecute patent applications before the USPTO for a living know that the PTO’s treatment of Mr. Hyatt is merely the extreme case of what happens when an agency isn’t held accountable; but in fact that PTO plays these kinds of games all the time with all patent applicants. The PTO routinely ignores its own Rules and deliberately misleads applicants about alleged administrative deficiencies in their applications, to say nothing of covering for examiners who are l.a.z.y and/or in.com.pe.tent and who, as a result, waste applicants’ time and money as well as patent term.

    It’s a shame that US courts are unwilling to hold US agencies accountable for unconscionable behavior like this, let alone to hold the individuals responsible personally liable for damages. This is precisely the kind of abuse of the individual by the state that the Founding Fathers sought to prevent.

    1. 5.1

      that PTO plays these kinds of games all the time with all patent applicants.

      I guess the PTO must just really like me because my clients tend to get the patents they deserve, pretty much without fail.

      Serious question: do you snort a fair amount of cocaine or methamphetamine? I’m just curious how one arrives at the perpetual state of entitlement and paranoia displayed by you and your cohorts over at Big Jeans’ Place.

      1. 5.1.1

        But, there have been some serious general problems with PTO application objections that are non-appealable, yet also cannot be effectively petitioned from, by PTO petition decisions delayed until after the maximum applicant response period allowed before automatic application abandonment.

        1. 5.1.1.1

          Apparently, only those deserving such action ever receive such action, so….

          in Malcolm’s eyes, the Ends justify the Means.

        2. 5.1.1.2

          Paul,

          I think there is at least some argument that such objections could be appealed under the APA, either to a district court without a PTAB appeal, or to the Fed. Cir. following a Board decision.

          With respect to the former, it seems like there is an argument that an erroneous objection in a final office action is subject to judicial review under the APA, and that venue would be appropriate in a district court under the federal question statute (28 U.S.C. § 1331) or the mandamus statute (28 U.S.C. § 1361).

          The APA provides that “final agency action for which there is no other adequate remedy in a court are subject to judicial review” and that “[e]xcept as otherwise expressly required by statute, agency action otherwise final is final for the purposes of this section whether or not there has been presented or determined an application … for any form of reconsideration, or, unless the agency otherwise requires by rule and provides that the action meanwhile is inoperative, for an appeal to superior agency authority.” 5 U.S.C. § 704.

          I believe that the traditional doctrine of exhaustion of available administrative remedies doesn’t apply, as the Supreme Court has made clear that “where the AP A applies, an appeal to ‘superior agency authority’ is a prerequisite to judicial review only when expressly required by statute or when an agency rule requires appeal before review and the administrative action is made inoperative pending that review.” Darby v. Cisneros, 509 U.S. 137, 154 (1993).

          37 CFR 1.181 indicates that “The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings”. Thus, it seems clear that this is not a case where “the administrative action is made inoperative pending that review.” Darby at 154.

          Alternatively, with respect to the latter case, it seems like such an issue could be appealed as part of an appeal from a Board decision. The APA indicates that “[a] preliminary, procedural, or intermediate agency action or ruling not directly reviewable is subject to review on the review of the final agency action.” 5 U.S.C. § 704.

          Although a Board may take the position that any procedural errors have to be brought by petition to the Director, it seems like there is a strong argument that this actually reinforces the position that these procedural errors could be appealed to the Fed. Cir. under the APA as part of the appeal of a Board’s affirmance of an examiner’s rejection even if there was never a petition filed.

          JCD

      2. 5.1.2

        because my clients tend to get the patents they deserve, pretty much without fail.

        operative words being YOUR feeling of what they deserve (and taking a W I L D guess that your claims are three page long ultra-picture claims), it’s no wonder you are “so liked.”

        And do we really have to deal with your d r u g ad hominem and 0bsess10n over Quinn (yet again)?

      3. 5.1.3

        You’ve obviously never prosecuted more than a handful of applications. Statistically, if you prosecute enough, you’ll see some of these shenanigans. I had an examiner THREE times agree to allow my case during interviews, and each time the case was instead rejected under the SAME ART. The patent did finally issue, but only after about 2 years and thousands of dollars wasted on these pointless and unfounded rejections.

        1. 5.1.3.1

          Yes, that can happen, especially with an examiner that has to get SPE approval for allowance and the SPE will not give it.
          But one can appeal from a claim twice-rejected even if it is not a “final” rejection.

          1. 5.1.3.1.1

            The appeal route is easily defeated by “issuing actions” reopening prosecution.

            1. 5.1.3.1.1.1

              The subject question was about plural rejections on the “SAME ART.”

                1. Yes, unfortunately, the SAME REJECTION using the SAME ART but maybe moving a few words around can be used to defeat the appeal route.

                  In our case, though, we kept getting the rejection, calling the examiner, and the examiner would agree to allow it if we’d put our arguments on the record. So we would. and the cycle repeated 3 times. we didn’t want to appeal because it is costly and very time consuming and not a whole lot better odds.

                2. thanks temprand – you provide another “inoculation” against the appeal as panacea fantasy.

          1. 5.1.3.2.1

            No, seriously, if you’ve prosecuted enough, you get used to things like:
            – examiners calling with examiners amendments, then calling the next day (or after you’ve authorized it) to withdraw the offer.
            – a BRI that nobody in their right mind would come up with, like calling a metal layer an insulating layer because the metal has some insulating properties.
            – rejections with only nonsensical 112s, where the rejection goes final with those same nonsensical 112s, the examiner is forced to reopen at pre-appeal, and the same nonsensical 112s are STILL THE ONLY THING in the office action.

            You know, things like that that people who do prosecution see enough to get frustrated at the Office, even if it is a statistically small number of examiners doing this, it is enough that no matter how good of an attorney you are, you can’t avoid these situations.

            1. 5.1.3.2.1.1

              temprand,

              you are assuming that Malcolm would take issue with ANY of these things.

              Quite in fact, for at least one – the BRI example – we have seen Malcolm agree with that “that nobody in their right mind would come up with” position.

              Malcolm routinely evinces positions that illustrate his disdain for patents and those would seek patents. The cognitive dissonance that this must create is evident in his posting “swagger” – for 13 years now.

            2. 5.1.3.2.1.2

              – examiners calling with examiners amendments, then calling the next day (or after you’ve authorized it) to withdraw the offer.

              This has never happened to me that I can recall. But it’s not something I would particularly remember because (you might want to sit down for this) Examiners are human beings.

              – a BRI that nobody in their right mind would come up with

              Very rare, in fact. The mistakes I’m used to are the mistakes that someone would make if they were under a deadline and trying to make sense of a complicated technical reference. In other words: forgivable mistakes (and far better than a defensible BRI which forces me to amend).

              rejections with only nonsensical 112s, where the rejection goes final with those same nonsensical 112s, the examiner is forced to reopen at pre-appeal, and the same nonsensical 112s are STILL THE ONLY THING in the office action.

              Never happened to me.

              But remember: I’m in the grown up art unit. I don’t practice in the wild west where practitioners have convinced themselves that fake structure is real structure.

              1. 5.1.3.2.1.2.1

                Never happened to me“…

                Gee must not exist then (sort of what you Accuse a certain judge of, eh?)

    2. 5.2

      AM, if you want targets for the Hyatt mess, I suggest adding the appointments of some completely patent clueless PTO Directors by the prior Republican president. I believe you will find that PTO Hyatt application prosecution avoidance goes back to their time period? Subsequent PTO director inherited this mess and the Hyatt lawsuits.

  6. 4

    Those of us who prosecute patent applications before the USPTO for a living know that the PTO’s treatment of Mr. Hyatt is merely the extreme case of what happens when an agency isn’t held accountable; but in fact that PTO plays these kinds of games all the time with all patent applicants. The PTO routinely ignores its own Rules and deliberately misleads applicants about alleged administrative deficiencies in their applications, to say nothing of covering for examiners who are lazy and/or incompetent and who, as a result, waste applicants’ time and money as well as patent term.

    It’s a shame that US courts are unwilling to hold US agencies accountable for unconscionable behavior like this, let alone to hold the individuals responsible personally liable for damages. This is precisely the kind of abuse of the individual by the state that the Founding Fathers sought to prevent.

    1. 4.1

      This is precisely the kind of abuse of the individual by the state that the Founding Fathers sought to prevent.</i

      LOLOLOLOLOLOLOLOLOLOLOLOL

      Try to believe it, folks.

      1. 4.1.1

        It’s admitted to be an extreme case, Malcolm.

        Pull your head out and open your eyes to see the underlying point at issue here:

        an administrative agency not held accountable.

        Whether or not you like Mr. Hyatt, or even think him to be an A___ or not, THAT is just not the issue here.

        The issue is an Office that has NOT done its part for decades.

  7. 3

    235-236:

    “[Referring to a notice of non-compliance based on one of the Requirements] the PTO has adopted Hyatt-specific policies for forcing his applications into abandonment. Forced abandonment is a serious and severe penalty in which an application ceases pendancy therefore cannot mature into issuance. Abandonment terminates an application.

    Is there an arguement for this even approaching truthfulness?

    1. 3.1

      If no petition is granted, which is what they’re saying happened, then that seems about right. Though the wording is needlessly dramatic.

      1. 3.1.1

        There wasn’t a petition responsive or related to the action they referenced in that section.

    2. 3.2

      Given SAWS and the like, I am curious as to why you find a lack of “even approaching” truthfulness…

      You work in the Office – you cannot be that clue1ess.

    3. 3.3

      Your position being that application abandonment can be never forced because the applicant can always file an appeal or a continuation? Good question.

      1. 3.3.1

        …applicants are never worn down or run out of money because the Office refuses to do their job…

        Oh wait

    4. 3.4

      The point of Mr. Hyatt’s “forced abandonment” is that if he were to file a continuation claiming 35 usc 120 priority of greater than 20 years (e.g., 30 years, 40 years) — there will be no patent. There would be no patent term left if/when issued.

      1. 3.4.2

        Yes, but he could have appealed. This is not an applicant having to give up for lack of money or attorney support.

  8. 2

    Hyatt complaining about “burdensome office actions” is like Mango Hairb@ll complaining about fake news. The hypocrisy is beyond belief.

    Also worth noting again is that Congress has still not taken steps to sharply curb the ability of rich malicious ah0les to create chaos via PTO swamping/flooding strategies.

    1. 2.1

      “Also worth noting again is that Congress has still not taken steps to sharply curb the ability of rich malicious ah0les to create chaos via PTO swamping/flooding strategies.”

      Sounds more like something the PTO should deal with using its own inherent powaz of procedure.

      1. 2.1.1

        Not sure if I understand you correctly, 6 – you want the Office to apply “procedural” powers to effect substantive rights…?

        Tafas did not happen that long ago…

        1. 2.1.1.1

          “to create chaos via PTO swamping/flooding strategies.”

          “Not sure if I understand you correctly, 6 – you want the Office to apply “procedural” powers to effect substantive rights…?”

          We already have a lot of procedural powers that effect substantive rights if you’re creating chaos up in the office etc. last time I checked. They just don’t get utilized but rarely.

          1. 2.1.1.1.1

            Hmm,

            You really should review the Tafas case before you reply.

            (you know, to keep things in context and all)

    2. 2.2

      The hypocrisy is beyond belief.

      Says the site’s biggest hypocrite – bar none.

      Stultifying.

    3. 2.3

      Re “swamping/flooding,” a 2014 Patently-O had a PTO report that “Hyatt has 399 pending patent applications that include a total of over 100,000 claims [more than 251 claims per application if evenly distributed] that apparently all have a pre-URAA (1995) filing date.” [I.e., will have 17 years patent terms no matter how long they were pending if not re-filed.]
      Many of those more than one hundred thousand claims were reportedly added during prosecution.
      What the PTO should have done to prevent excessive number of claims per application is to apply MPEP 2173.05(n) and its case law.
      This complaint indicates there are now post-URAA Hyatt applications pending as well, and of course pendency affects patent term for those.

      1. 2.3.1

        …fyi

        MPEP 2173.05(n): Multiplicity [R-11.2013]

        (refers to 37 C.F.R. 1.75 Claim(s).
        (a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
        (b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
        *****

        Where, in view of the nature and scope of applicant’s invention, applicant presents an unreasonable number of claims which are repetitious and multiplied, the net result of which is to confuse rather than to clarify, a rejection on undue multiplicity based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, may be appropriate.

        As noted by the court in In re Chandler, 319 F.2d 211, 225, 138 USPQ 138, 148 (CCPA 1963), “applicants should be allowed reasonable latitude in stating their claims in regard to number and phraseology employed.

        The right of applicants to freedom of choice in selecting phraseology which truly points out and defines their inventions should not be abridged.

        Such latitude, however, should not be extended to sanction that degree of repetition and multiplicity which beclouds definition in a maze of confusion.

        The rule of reason should be practiced and applied on the basis of the relevant facts and circumstances in each individual case.” See also In re Flint, 411 F.2d 1353, 1357, 162 USPQ 228, 231 (CCPA 1969). Undue multiplicity rejections based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be applied judiciously and should be rare.

        If an undue multiplicity rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate, the examiner should contact applicant by telephone explaining that the claims are unduly multiplied and will be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

        Note MPEP § 408. The examiner should also request that applicant select a specified number of claims for purpose of examination. If applicant is willing to select, by telephone, the claims for examination, an undue multiplicity rejection on all the claims based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be made in the next Office action along with an action on the merits on the selected claims. If applicant refuses to comply with the telephone request, an undue multiplicity rejection of all the claims based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be made in the next Office action.

        Applicant’s reply must include a selection of claims for purpose of examination, the number of which may not be greater than the number specified by the examiner. In response to applicant’s reply, if the examiner adheres to the undue multiplicity rejection, it should be repeated and the selected claims will be examined on the merits. This procedure preserves applicant’s right to have the rejection on undue multiplicity reviewed by the Patent Trail and Appeal Board.

        However, Paul, if I am not mistaken, this path has already been attempted.

      2. 2.3.2

        Interestingly enough (since the MPEP has no force of law, I naturally investigated that “one layer up on the legal ladder” – the Rules under 37 CFR.

        A bit of a tangent, but worth noting (given its current use at what, under 1% of ALL claims – ?), 37 CFR 1.75 Claim(s) continues at section (e):

        (e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

        (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,

        (2) A phrase such as “wherein the improvement comprises,” and

        (3) Those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

        In other words, our old friend, the Jepson claim format.

        What appears to be missing here is the caveat of “where the nature of the case admits” includes the discretion of the inventor (and her scrivener) and the fact of the matter that judicial muckery (read that as patent pr0fan1ty) has driven that “the case admits” down to its record low levels.

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