When Examiners Reopen Prosecution …

by Dennis Crouch

Gilbert P. Hyatt v. Andrei Iancu (Supreme Court 2019)

The following is a fairly typical pattern within the USPTO:

  • After final rejection, applicant files a PTAB appeal notice and brief;
  • Rather than pursue its side of the appeal, the Examiner withdraws the pending rejections — and then re-opens prosecution with a new set of rejections.

Although few cases go through this more than one cycle.  Gilbert Hyatt has long been an exception — both in terms of how he treats the PTO and how he is treated by the PTO.

Going back to the my typical pattern above — note that the Manual of Patent Examination Policy (MPEP) expressly permits cycling by the examiner, although it requires SPE approval:

The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief.

MPEP § 1207.04.

Hyatt’s petition to the U.S. Supreme Court argues that a patent applicant has a right to appeal — and that this examination cycling violates his statutory rights.  In particular, Hyatt points to 35 U.S.C. § 134 and § 6.

134(a). An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.

6(b). Duties.—The Patent Trial and Appeal Board shall— (1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).

In a remarkably parallel situation from the early 1900’s the U.S. Supreme Court held that mandamus was appropriate where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904).

Thus, Hyatt’s Question Presented:

Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.

This is a well presented case and you can read the brief here: [USSCPetitionforWritofCertiorari]

107 thoughts on “When Examiners Reopen Prosecution …

  1. 17

    All of these issues would be non-issue if the USPTO adopted the EPO’s summons to oral proceedings practice.

    But the USPTO will never do that for two reasons: 1) the truly and honestly believe they are entitled to get it wrong as many times as they want; and 2) they need to be able to re-open an unlimited number of times for exactly the reason others have noted – to be able to never allow certain applications that they do not want to allow regardless of the lack of evidence.

    Those are the reasons the PTO is fighting this case tooth and nail.

    1. 17.1

      Who needs the EPO when we already have the APA?

      What we DO need is for the existing mechanisms to be enforced.

      With teeth.

  2. 16

    Make room Edison, Wright brothers, Tesla, Watt, and Bell; Gil Hyatt will soon join you and a handful of others in the history books as one of the greatest inventors of all time.

  3. 15

    Gil Hyatt will never be able to enforce any of his junky inequitably obtained submarine applications and he will die and he will be forgotten. Good riddance.

    Anyone who doubts this is living in a fantasy world and probably believes that “self driving” busses will be all over our freeways next year.

  4. 14

    The fact is that if you win an appeal at the PTAB the examiner is fairly out there with their arguments.

    The examiners should definitely be penalized for brining cases back into prosecution.

    1. 14.1

      As noted below by PiKa, your “definitely” is definitely not “definitely.”

      That is not to say that gaming the system with new rejections/art that could have been brought earlier is something that should escape penalty.

      It is to say that an avenue to bring an application out of appeal and back into examination should not be foreclosed.

      What if we were to provide that it is the applicant’s choice to return to an examination mode?

      After all, the examiner DOES have opportunities to respond to everything on the record before the point that an appeal is actually engaged (PiKa is NOT correct on that point below).

      Going TO appeal is a move to take the application outside of the examiner’s domain. Once that happens, then the examiner SHOULD lose a certain amount of power over the application.

      Also possible is that the appeal result could be a “remand” back to examination mode. This too would provide what many would consider a legitimate path, as opposed to the one now existing at the whim of an examiner.

      The problem – if I may redirect the focus – is on the nature of the return to examination. As is, the fact of the matter is that THAT path is uncontrolled and has evidence of abuse.

      1. 14.1.1

        PiKa points of the applicant not clearly explaining the problem is absurd.

        The fact is that the examiner is making the argument. If they don’t feel it is strong enough to win an appeal they should not be making the argument to begin with.

        Plus, there is massive abuse of returning cases to prosecution with often the SPEs being the ones to tell the examiners to return the case to prosecution.

        1. 14.1.1.1

          with often the SPEs being the ones to tell the examiners to return the case to prosecution.

          I’ve actually seen cases (not mine, but a partner’s case) in which the examiner herself sua sponge engaged in a new search after a successful appeal, and provided a “new art” rejection. Tellingly, the Image File Wrapper captured the dates of the post-appeal search as well as the later date of the SPE approval to reopen the case.

          As is well known (witness SAWS), the Office does NOT abide by 37 CFR 1.2 for basing “exclusively on the written record in the Office” for certain select “internal” actions of the Patent and Trademark Office.

          1. 14.1.1.1.1

            “I’ve actually seen cases (not mine, but a partner’s case) in which the examiner herself sua sponge ”

            (Gotta love auto-correct. I may have to change my name again!)

            “… engaged in a new search after a successful appeal, and provided a “new art” rejection. Tellingly, the Image File Wrapper captured the dates of the post-appeal search as well as the later date of the SPE approval to reopen the case.”

            Your partner should have screamed to high heaven at the PTO. SPEs do not have authority to reopen after an applicant wins an appeal.

            1. 14.1.1.1.1.1

              He did.

              One problem though was that finally the after appeal art search was decent, and he had to engage in order to make sure the patent application remained valuable.

            2. 14.1.1.1.1.2

              That is right that TC has to approve reopening. I’ve had cases allowed based on a weak dependent claim because it is so hard to reopen after an appeal.

              1. 14.1.1.1.1.2.1

                Even if it were to have been the TC (instead of just the SPE), the dates showed that there was a de facto reopening prior to the approval.

                And as I mentioned, the partner had to engage because the examiner had finally done a decent enough search job that should have been done at the get-go.

                This is something that should go towards an “examination quality” metric, but likely has no meaningful impact on any measure except dissatisfaction with the Office and unnecessary innovator expense.

  5. 13

    An interesting fact assertion in this cert petition:
    “According to an analysis of 2017 data, the PTO used MPEP § 1207.04 to block 2,200 appeals in which the applicant had filed an appeal brief, out of 15,800 total, or about 14 percent. 4 “

  6. 12

    Not to excuse the execrable PTO delays of Hyatt applications, but he could have attacked that in APA suits many years before he finally did. Some people do not seem to realize that the longer Hyatts applications are in litigation like this the longer Hyatt’s patents will run, and be able to be sued on! Because almost all of these applications are under the old patent term law, running 17 years from issue date, whenever that occurs. And, he has reportedly extensively amended thousands of his claims, presumably to cover subsequent commercial products of others. There is no U.S. “late claiming” doctrine left.
    It would indeed be desirable to see a clear limit set on the number of times an examiner can stop a PTAB appeal by withdrawing an application for further prosecution, but this is no knight in shining armor leading the charge.

    1. 12.1

      And BTW, the prosecution laches defense that sank many Lemelson submarine patents may not work with Hyatt patents when they issue, due to the recent Sup. Ct. laches decision, and the fact that Hyatt did not use serial application continuations like Lemelson [Hyatt could not do so without triggering current patent term law for those applications, which would end them].

    2. 12.2

      Note, for example, this section of the APA and it’s words “unreasonably delayed”:
      5 U.S.C.
      § 706. Scope of review
      To the extent necessary to decision and when presented, the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. The reviewing court shall –

      (1) compel agency action unlawfully withheld or unreasonably delayed; and
      (2) hold unlawful and set aside agency action, findings, and conclusions found to be –
      (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law;
      (B) contrary to constitutional right, power, privilege, or immunity;
      (C) in excess of statutory jurisdiction, authority, or limitations, or short of statutory right;
      (D) without observance of procedure required by law;
      (E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute; or
      (F) unwarranted by the facts to the extent that the facts are subject to trial de novo by the reviewing court.
      In making the foregoing determinations, the court shall review the whole record or those parts of it cited by a party, and due account shall be taken of the rule of prejudicial error.”

      1. 12.2.1

        It is a good point. What the PTO does when they have decided that you will never get a patent is the following. Always delay every response to you as much as possible. Reject with art. You file Non-final. They delay as much as possible. You get a final OA. Now the final either cites new art of not. You appeal. They bring back into prosecution with new art. When they delay as long as possible, just a few rounds of this can go on for years.

    3. 12.3

      You are, of course, only getting half of the story.

      1. 12.3.1

        What half of the story has not been told?

        Why has that half not been told?

    4. 12.4

      this is no knight in shining armor leading the charge.

      Yet again:

      Sinner or saint, his “personal virtue” is NOT at issue here.

    5. 12.5

      Not to excuse the execrable PTO delays of Hyatt applications, but he could have attacked that in APA suits many years before he finally did.

      Exactly right. Hyatt is not a sympathetic figure, but we should try to think clearly about the issues at stake here, and not get distracted by the particular foibles of this particular plaintiff. No sane patent system should allow for the possibility that the PTO might stall a given application indefinitely with procedural chicaneries like those that have been applied to Hyatt’s applications.

      For my part, I would like to see the en banc CAFC take up Hyatt’s appeals and declare that prosecution laches bars Hyatt’s applications. One way or another, however, Hyatt deserves his day in actual court. The PTO should not be able to give him the run-around indefinitely so as to keep him from an appealable final decision.

      1. 12.5.1

        No sane PTO should have allowed for Hyatt to do what he did. All these apps and their file histories should be public knowledge decades ago.

      2. 12.5.2

        For the record, the USPTO still permits all kinds of insane applicant games to be played “under the covers”.

        1. 12.5.2.1

          Your cognitive dissonance is noted.

      3. 12.5.3

        Hyatt… could have attacked that in APA suits many years before he finally did.

        I would like to see the en banc CAFC take up Hyatt’s appeals and declare that prosecution laches bars Hyatt’s applications.

        Upon re-reading my post, I see that I did not develop my theme quite as thoroughly as I might have liked. What I should have said is that precisely because the APA remedy was available to Hyatt for years before he brought his present suits, he should be deemed to have forfeited these applications under the doctrine of prosecution laches.

        The SCotUS said in SCA Hygiene v. First Quality Baby Prods., 137 S. Ct. 954 (2017) that because the patent statutes provide a six-year window for infringement, laches cannot cut one off from the right to assert a claim within that six-year window. Very well. Mutatis mutandis, the same should apply to the applicant in prosecution. The patent statute (at the time that Hyatt filed) provided for a seventeen-year window for asserting a claim. If you wait beyond that seventeen-year window to bring your APA suit to move the USPTO off the dime, then you forfeit your right to those claims under laches.

        1. 12.5.3.1

          Greg, you are off.

          There is no Mutatis mutandis for ungranted claims.

  7. 11

    >>Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.

    I think it does. As I said I had one case that I am sure was one of the secret cases the PTO decided never to allow. Many years in prosecution and many thousands spent by the client.

    I was never allowed to appeal. It was always brought back into prosecution. I think it was 12 or 14 years. (And I was told by the examiner that the PTO would never allow this case. He told me that it didn’t matter how many references I beat that they would come up with new references. And they did.)

    1. 11.1

      I think had I been allowed to the PTAB or the CAFC that I would have won. But I never did win. It was transferred and continued after many, many years.

      1. 11.1.1

        I was in a similar situation. I got to the PTAB once, though, with only one rejection remaining, and they added more references and more rejections. I chose to reopen. The examiner kept adding more references/rejections each time I tried to appeal thereafter. I could not get out of the endless loop, unless I filed for mandamus. The Office wore the applicants down.

        1. 11.1.1.1

          So you went to the PTAB and then they just used different references?

          (what was funny about mine is that the examiner that had kept it in prosecution for like 8-14 years was promoted to SPE. The junior examiner that took it over must not have known not to talk to me. He told me directly that the now SPE told him that this would never be allowed and that no matter how many references I defeated that they would always have more.)

  8. 10

    Gil is in fact one of America’s most important inventors of the 20th century.

    That the Patent Office continues to deny him the patents he has clearly earned is, frankly, obscene.

    No American inventor deserves to be treated this way.

    If the government doesn’t want him to have that which he has earned, just buy up all his patents and apps for 100 million or so.

    They can take it out of Trump’s foolish border wall funds.

    1. 10.1

      Gil is in fact one of America’s most important inventors of the 20th century.

      Definitely he’s a critical figure in the
      (blessedly) miniature pantheon of wealthy bald @ h0les who decided to stick their middle fingers deep into the center of the US patent pie “because it was there.”

      But he’s not an “important inventor” and he never will be.

      This has been another episode in Facts That Make Patent Maximalist Heads Explode. Tune in next time when we repeat the classic episode “Giles Rich Couldn’t Write A Statute To Save His Life.”

      1. 10.1.1

        Tune in next time when we repeat the classic episode “Giles Rich Couldn’t Write A Statute To Save His Life.”

        You do realize that your feelings on this are an admission against your interests, right?

        You do not get to change the statute because of your feelings of the author – the statute may have had Judge Rich helping pen it – but it is nonetheless the words of Congress. You know, the actual branch of the government authorized by the Constitution to write the statutory law that is patent law.

    2. 10.2

      Sinner or saint, his “personal virtue” is NOT at issue here.

      No American inventor deserves to be treated this way.

      Much more on point.

  9. 9

    Even if SCOTUS hands the PTO its rear on a platter, which is what will happen if cert is granted, the PTO will continue to flout the law in every conceivable way, not just against Hyatt, but against everyone.

    Night Writer is right: until individual examiners or higher-ups are made to pay, the PTO will continue to shirk its duties, costing applicants megabucks every year.

  10. 8

    Hyatt seems to be a grifter that tries to cheat any system he encounters. I say we confiscate all his money and property and give it to people actually willing to contribute their fair share.

    1. 8.1

      Sir Thomas More and a Man For All Seasons comes to mind.

      That, and being thankful that OSitA is not in charge of actual law.

      1. 8.1.1

        The tricoteuse also come to mind.

        1. 8.1.1.1

          You presume a righteousness nowhere near earned.

          The women you speak of had a legitimate grief, acted boldly on that legitimate grief (without offending any Rule of Law), and thus were deemed heroes.

          That you think of yourself in such lofty terms bespeaks a severe disconnect with reality and with history.

          1. 8.1.1.1.1

            …unless you want to only refer to their end days and the sullenness of their idly sitting by as the blade dropped again and again….

            But even then, your reference is not clear.

  11. 7

    I mean you could appeal, but the whole point to the appeal is to get the rejection withdrawn, so if the rejection is already withdrawn that will be a pretty short appeal. It’ll just get bounced back to the examiner, and then have to be reopened via the director approval.

    1. 7.1

      And at least then the applicant can call the director and give him an earful of whatnot.

      And director-permitted reopens happen far less often than examiners reopening after brief filing.

      1. 7.1.1

        All true, and that is your call to make, if you want to file an appeal, you surely could do so. I forget the technical requirement to file an appeal with the fed circ but you might can do that as well.

        But if we’re talking about Gil, sorry but the examiners are probably taking their orders from, or with the blessing of, a director.

        1. 7.1.1.1

          …because THOSE orders fully comply with 37 CFR 1.2 and any such actions are of course being based solely on the written record, right 6?

  12. 6

    Why 80-year-old inventor Gil Hyatt says patent office is waiting for him to die.

    The PTO isn’t alone, Gil!

    Maybe at least just leave us all alone and spend the money you “earned” with your invalidated patent on a nice quiet island somewhere. Or do something positive with it. Maybe a huge donation to a nice charity that serves the homeless or something like that. You only have one life to live, after all. Why become known as “the bald @h0le who never invented anything and who never stopped sueing people”? Seems like a weird life choice.

  13. 5

    Meanwhile, cert. denied today for the St. Regis Mohawks’ appeal from the CAFC’s holding that tribal sovereign immunity does not preclude IPR review.

    1. 5.1

      Wow how shocking!

      I’m sure the Very Serious People will be along soon enough to tell us the derp ramifications of that failure. Probably after they are finished investing in Uber, which is the greatest company ever.

      LOL

      1. 5.1.1

        ?

  14. 4

    The examiners should receive huge penalties for bringing something back into prosecution. Basically, what is happening is they are being lazy. The applicant (almost always) tried through interviews to explain their case and spent time explaining it in writing before the appeal. The examiner is then using this as a backstop to having to spend time to understand tough cases.

    It costs our clients a lot of money. This is the type of behavior that should be severely penalized.

    1. 4.1

      “The examiner is then using this as a backstop to having to spend time to understand tough cases.”

      Gonna need some proof there bruh. And if it is that hard to explain/understand why not explain it to them?

      I work in one of the most complex arts and I’ve never seen a case that is so complex that can’t be explained and understood in less than 30 minutes with someone that knows what they’re talking about doing the explaining. Generally that is less than 3 even in tough cases once the facts in the reference and any ancilliary facts are explained along with the spec.

      1. 4.1.1

        6,

        While you ask for proof, you offer none, and if one takes your counter point as given, then there would be ZERO appeals even attempted.

        Prudence dictates that your views cannot be correct.

        1. 4.1.1.1

          “nd if one takes your counter point as given, then there would be ZERO appeals even attempted.”

          I’m not following you on that one. My “counter point” that you’re referring to I guess is this:

          “I work in one of the most complex arts and I’ve never seen a case that is so complex that can’t be explained and understood in less than 30 minutes with someone that knows what they’re talking about doing the explaining. Generally that is less than 3 even in tough cases once the facts in the reference and any ancilliary facts are explained along with the spec.”

          That doesn’t imply that no appeals will take place. Not at all, there can be disagreements about the facts, claim construction etc. And there are plenty of appeals that take place re those. Though I myself haven’t seen one in like 5 years because now that I know what game attorneys are playing it isn’t hard to avoid appeals. You know, if you’re willing to work VOT.

          I’m also not sure why I would need to offer any “proof”. He’s the one making the assertion that examiners are avoiding merely spending time to UNDERSTAND cases. That’s absurd for the most part. Most examiners are perfectly willing to try to “understand” a case in so far as you want to explain it. To the extent that attorneys and applicants would like the office to try to go and conduct its own investigation into the subject matter and what all is being discussed in the spec’s disclosure and how it relates to the prior art, that sometimes causes an issue. The office is under no such obligation, save to the extent that it obliges itself (which is not much), and this can sometimes cause a huge problem in prosecution, esp in tough to understand cases. Practically routine in my art actually amongst the more plebean examiners, I see it all the time from the “international searching authority” be it EU or US etc. Saw one just this morning where the examiner missed a limitation and probably just didn’t understand what it was talking about very well. Saw it two or three times more this month at least.

      2. 4.1.2

        6, you are making my case. You are telling me nothing is that complicated. I agree. The burden is on the examiner to understand not the applicant to explain.

        1. 4.1.2.1

          “The burden is on the examiner to understand not the applicant to explain.”

          Absolutely not bruh. You need to read the rules. The examiner should try to understand, sure thing. But there definitely is no “burden” to “understand”. In fact, that situation is explicitly excluded from being a clear error for examiners. For good reason.

          1. 4.1.2.1.1

            In fact, that situation is explicitly excluded from being a clear error for examiners. For good reason.

            most definitely not true – clear error is easily shown if an examiner is not understanding either the application or the cited art. This is a requirement under the Graham Factors, and one that most definitely does not get a “free pass” when the examiner botches it.

            You should know better than that, 6.

            1. 4.1.2.1.1.1

              …if you have doubts, talk to your union rep and your new contract about the possible “negative hits” that may come from not applying the Graham Factors properly in rejections. Let me know what you are told.

            2. 4.1.2.1.1.2

              “This is a requirement under the Graham Factors,”

              I loled at ur ignorance.

              1. 4.1.2.1.1.2.1

                First reply caught in the “count” filter, but tell me 6, where is the error in my bringing forth the Graham Factors that your analysis must obtain to?

                Are you really trying to say that an Examiner error in getting the basic Graham Factors wrong is something that an Examiner is not held accountable to? That an Examiner can be clearly wrong when it comes to the predicates of applying the law of obviousness and not be held to be in clear error?

                You are approaching maximum Malcolm Accuse Others here by suggesting that I am the one in ignorance here.

                Talk to your SPE (and your Union Rep) about how many times you can get the basics of the Graham Factors wrong without incurring performance penalties.

                For you to suggest otherwise is even more ludicrous than your past position about not having to have to read the application.

                1. I loled at your ignorance of the graham factors, and also your illegal smuggling operation of some new “requirement/burden to understand” into said factors. Nothing more, nothing less.

                2. You lolled incorrectly.

                  Nothing more, nothing less.

                  As I stated: please show my error in your duty to properly apply the Graham Factors and the consequences for you if you do not do so.

                  There is NO “smuggling” going on here. There is only for you to come to an understanding that what I post is in fact true.

                  It is not true because I post it – I post it because it is true (I am not the one devising this setup).

      3. 4.1.3

        Maybe that’s the way you work. But how to explain this from too many of your fellows?

        Note I’m not exactly known for examiner bashing around here, but I see way too much of this:

        OA1, Response1, argue TUV, WXYZ.
        OA2, final, go ahead and do AF argue TUV, WXYZ just to trigger the AA.
        Appeal Brief argue TUV, WXYZ exactly as twice argued before.

        Examiner reopens.

        Are you telling me that [b]now[/b], only after the 3rd repetition of the same exact argument, it suddenly makes sense to the examiner?

        1. 4.1.3.1

          “Examiner reopens.

          Are you telling me that [b]now[/b], only after the 3rd repetition of the same exact argument, it suddenly makes sense to the examiner?”

          Depends on the situation. You don’t see what all happens behind the scenes. Could have been a thousand things that happened. Either they had the conference and the conferee brought up something and/or said they should reopen, or they talked to someone before the conference and that person said to reopen, or perhaps they did just notice something on 3rd go around, sometimes people are pushed for time sending out a final (or any type of action). In fact, that is all the time.

          1. 4.1.3.1.1

            You don’t see what all happens behind the scenes.

            See 37 CFR 1.2.

            Anything not properly on the record has NO BUSINESS going on “behind the scenes.”

            This is precisely why the Office scurried so quickly to drop SAWS when the deniability of that program disappeared.

            Of course, when the Office announced that they were dropping the program, they let slip that SAWS is but one of many such illicit programs.

            1. 4.1.3.1.1.1

              Um sure it does, internal deliberations happen all the time. They are routine and expected.

              1. 4.1.3.1.1.1.1

                Your reply does not address my comment.

                ANY action on the merits of the application MUST be captured in the written record. THAT is the thrust of 37 CFR 1.2.

                It was clear that SAWS – once the cat got out of the bag – clearly violated that and was VERY quickly dropped.

                Yes, there was an early attempt to even label SAWS as some mere “internal deliberation” but that excuse did not take and was dropped prior to the SAWS being shuttered.

    2. 4.2

      I don’t agree with you Night. If an Applicant does not clearly explain the errors of the Examiner before the appeal brief is filed, there is no reason to impose penalties to the Examiner.

      1. 4.2.1

        The burden PiKa is supposed to be on the Office not the applicant.

        And let’s remember that you can only appeal what is rejected twice by the Examiner.

        1. 4.2.1.1

          “The burden PiKa is supposed to be on the Office not the applicant.”

          Not some made up “burden to understand”. The office has enough burdens lol, you don’t get to make up new ones.

          1. 4.2.1.1.1

            This is not something that applicants have made up 6 – revisit the Graham case (or any case that discusses the Factors there).

          2. 4.2.1.1.2

            6, the 1952 Patent Act starts with an applicant shall be entitled to a patent unless…

            1. 4.2.1.1.2.1

              “6, the 1952 Patent Act starts with an applicant shall be entitled to a patent unless…”

              Which magically imposes a burden on the patent office to understand xyz brand spankin new tech? Are you daft man? The patent act entitling someone to a patent does not impose literally magical requirements on people, either in the administration or on the applicants.

              To be clear, the office has to put down its reasons for denying the patent in writing, and then this new thing called prosecution begins wherein the applicant gets a chance to explain themselves more fully if there is a lack of understanding of their new invention. And then prosecution proceeds. There is no magical requirement on the office to understand the spec, or even the references. The office does the best it can.

              1. 4.2.1.1.2.1.1

                Which magically imposes a burden on the patent office to understand xyz brand spankin new tech?

                No magic at all.

                Look at your marching orders as to what it means to examine an application.

                Even logically (you might try that) – how are you to examine something if you do not understand what that something is?

                This is covered near the part that I have provided to you in the past 6 – the part that showed how wrong you were when you attempted to say that you did not even have to read the application.

                wherein the applicant gets a chance to explain themselves more fully if there is a lack of understanding of their new invention

                LOL – my what a pretty dance – that “if there is a lack” thing – if the case is NOT that you have that duty, how is it that this part could even come into play? (hint: the point you wish to deny is a condition precedent).

                Your notion of “best it can” — where in the world are you getting that?

        2. 4.2.1.2

          The problem Night is that the Applicant can add new or better explained arguments in the appeal brief. I could agree with you that the Examiner could be penalized if the brief content was previously presented to the Examiner.
          Note also that a claim can be rejected twice, each time based on different prior art. So the Examiner may not have had a chance to review the Applicant’s arguments rebutting the second rejection. The “twice rejected” requirement is insufficient to show that the Examiner is inefficient.

          1. 4.2.1.2.1

            Good points here PiKa.

          2. 4.2.1.2.2

            PiKa, first the applicant does not want to file an appeal, in general. The clients don’t like them and we risk looking bad if we lose. An appeal to the vast majority of attorneys is something we try to avoid. The attorney has all the motivation in the world to try to get their point across prior to an appeal.

            I’ve won about 80 percent of my appeals that have gone to the PTAB, but still I took a hit for the 20 percent that I lost. Basically, the client feels like you cheated them of all that money and time.

            In all of my appeals I have not used different arguments, but merely refined the arguments I had already made. I did in reply briefs possibly add some new arguments to refute the examiner.

            Plus, I’d bet that examiners add new arguments far more than applicants. That has been my experience.

            1. 4.2.1.2.2.1

              You should take no hits for the 20% of lost, that is literally the standard appeals error rates as supposedly reported by those that report such.

              1. 4.2.1.2.2.1.1

                You try telling that to a client 6. They are not happy.

                One pulled their work from me after I lost an appeal.

                1. Sounds like a cr@ppy client. You should be glad they are gone. Gives you more time to find better clients.

    3. 4.3

      Night Writer, examiners are penalized when they reopen in that they won’t receive any further counts/work credit from that application until one of the following happens: 1) an examiner’s answer is written, 2) the case is allowed, or 3) you file an RCE. While you might not think that’s a penalty, doing a “free” non-final and final after having to reopen is a fairly significant penalty given the production quota system examiner have to work under.

      1. 4.3.1

        I agree that is a penalty. But, look at it from the attorneys side. We had to pay a fee and write an appeal brief. Those together can cost the client anywhere from $4K – $14K.

        And writing an appeal brief is more work than another non-final office action.

      2. 4.3.2

        That you think you are being penalized when you have to correct your incorrect work tells us all we need to know about you.

    4. 4.4

      There’s nothing about “understanding” that is at the root of the problem. Examiners don’t re-open because of a lack of “understanding.” They understand everything they need to understand: the production system. When they re-open after seeing the same arguments verbatim from the applicant three times in a row (non-final, after final, and appeal) it’s because they were playing the game of trying to get first class tickets on the RCE gravy train and applicant called their bluff. ALL OF THE EXAMINERS are betting that applicant will not call their bluff and will instead file an RCE in the hopes of “working with the examiner.” And the odds are in the examiners’ favor. And they know it. So that’s why they re-open, not because they don’t “understand” a “tough case.”

      1. 4.4.1

        I agree AAA JJ that is a large part of it.

      2. 4.4.2

        Any “I don’t understand” should be made evident in a first action, asking with particularity those things with which the examiner does not understand.

        If, on the other hand, the examiner thinks that he understands but is getting things wrong, – then that is (and should be) a strike against the examiner.

  15. 3

    Does Mr. Hyatt realize he can file an appeal as his first filing after he receives the first office action after the examiner reopens prosecution?

    1. 3.1

      He has been filing appeals on these cases for 20 years. They just keep reopening prosecution. That’s why its at the Supreme Court.

      1. 3.1.1

        If you look at the prosecution history, he first files a response. This is a waste. He can use the same appeal fee for each appeal when the Examiner reopens.

        1. 3.1.1.1

          I think its important to present the argument to the Examiner first to get the Examiner’s response position on the record and then challenge that before the Board. So, I don’t think its a waste of time at all. Its the PTO that’s wasting time.

          1. 3.1.1.1.1

            Because Gil Hyatt cares about the content of the response?

            LOL

            1. 3.1.1.1.1.1

              No. Because you appeal the decisions of the Examiner, its useful to get those on the record as fully as possible before you appeal to the board.

              1. 3.1.1.1.1.1.1

                its not necessary.

  16. 2

    The case (Steinmetz) is an excellent read, albeit with some very different patent issues than the current Hyatt matter.

    In other words, while there is overlap with what Hyatt seeks, the context is not coextensive.

    One of the items that caught my eye in the Steinmetz case (on a tangent to the Hyatt effort) is:

    A distinction between the process and the means employed for using it was recognized. It was said:

    “The patent for the art does not necessarily involve a patent for the particular means employed for using it. Indeed, the mention of any means, in the specification or descriptive portion of the patent, is only necessary to show that the art can be used, for it is only useful arts — arts which may be used to advantage — that can be made the subject of a patent.

    Granted this was pre-1952, but the change from Congress IN 1952 set out 35 USC 101 to have two (and only two) rather low bar items:
    1) the invention be claimed in at least one of the statutory categories, and
    2) the invention be concerned with utility of the Useful Arts.

    ALL else that has been attempted to be “plugged into” 101 is muckery.

    1. 2.1

      “Arts which may be used to advantage”.

      Bildo thinks that isn’t “void for vagueness”? LOL

      1. 2.1.1

        Breadth is not vagueness.

        Your cognitive dissonance and wanting to have an anti view is noted.

        1. 2.1.1.1

          The “art” of writing instructions is an “art” that “can be used to advantage”.

          So processes of writing instructions are eligible for patenting? And presumably the instructions themselves, as well?

          Who know that the 1952 Congress was so radical and anti-First Amendment? I guess those were mostly the same lead-poisoned white d@ddies who felt it necessary to stamp our currency with odes to their deity because they were afraid of “commies”. Maybe that explains everything.

          You tell us, Bildo. You’re a very serious person and totally not a hypocrite.

          1. 2.1.1.1.1

            Yet again you want to go down a vapid road (writing), when I have provided to you a simple and direct explication of the exceptions to the judicial doctrine of printed matter — to which your only response is to run away, jamming your fingers in your ears, clenching tight your eyes and chanting to yourself so as to cut off any chance that reason seeps into your mind.

            As to “and anti-First Amendment?” – you yet again mouth the words, but FA1L to provide any actual cogent First Amendment argument. You appear to think that your expressed feelings suffice.

            They do not.

            As to “white d@ddies,” your attempt at injecting ISMs is beyond banal. And just as beyond banal is your mindless ad hominem nonsense.

            Try saying something meaningful and on point.

            For a change.

            1. 2.1.1.1.1.1

              you want to go down a vapid road

              Translation: “I refuse to answer the obvious questions that undercut my simpleton’s view of reality and which demonstrate to the world what an unbelievable hypocrite I am when it comes to these matters.”

              Keep dancing, Bildo! Oh, and it helps if you pull the foot out of your mouth first.

            2. 2.1.1.1.1.2

              your attempt at injecting ISMs

              Also known as “don’t ever highlight those well-known historical facts about our white dominionist d@ddies and their lead-poisoned br@ins.”

            3. 2.1.1.1.1.3

              As to “and anti-First Amendment?” – you yet again mouth the words, but FA1L to provide any actual cogent First Amendment argument.

              I tell you what, Bildo: find five other adult attorneys who are struggling with understanding why handing out patents on “instructions” raises First Amendment issues and I’ll re-type the “cogent argument” in terms that even a born-yesterday d 0 0 fus like yourself can understand. You can probably find at least five people fitting that bill over at Big Jeans place. Run along now!

            4. 2.1.1.1.1.4

              Your translation is off (clearly) and evidences your number one meme of Accuse Others.

              Your ISMs are non-sequiturs and have ZERO bearing on the patent law issues at hand.

              You continue to think that the mere pronouncement of your feelings provide (somehow) a cogent legal argument.

              They do not.

              Try again (or perhaps more accurately, try for the first time).

          2. 2.1.1.1.2

            “commies”

            MM doesn’t afraid of no commies!

            Until he’s in the gulag. Looking for a tasty rat to eat.

            1. 2.1.1.1.2.1

              6,

              That’s the “Internet tough guy/rules don’t apply to Malcolm” coming through.

              Until he’s in the gulag…” There is NO indication that even under those conditions, that Malcolm would do anything but proclaim his feelings make him King. He is not capable of getting out of the way of his own feelings.

              1. 2.1.1.1.2.1.1

                “There is NO indication that even under those conditions, that Malcolm would do anything but ”

                Gotta listen to Yuri bruh.

                Take the Yuripill. Yuri says that leftists get mad when they don’t actually come to power, because hur dur stalinist/leninist authoritarians have to take over any given commie system to make it halfway work because it is a huge slave state w/ everyone enslaved to the state, and then the leftists try to revolt, and then they’re lined up against the wall n shot. I don’t remember which Yuri vid it was in, in this one he says something similar to that but doesn’t go that much into detail. If you like learning about commieisms underbelly you gotta watch all the yuri vids.

                Anyway indication is that he’d try to revolt, and get shot.

                link to youtube.com

                1. Your “Yuri” reference may speak to some typical leftist.

                  My observations of Malcolm are based on his displayed tendencies here over the course of 14-15 years. He is NOT a typical leftist.

                2. …quite in fact, I posit that he is an extreme embarrassment to typical leftists – seeing how often he has his arse added to him.

  17. 1

    It’s Hyatt.

    By this, I mean that the archetypical meaning of the phrase “ad hominem**” will no doubt show up by those of weak mental fortitude.

    **attacks in the person rather than the actual issue that that particular person presents.

    But let me take the opportunity to present a different (non-attack on the) “person-related” aspect: the Knowles “101” amicus is currently in the news, and that amicus presents one blade of the Kavanaugh Scissors: the Schein holding.

    The other blade of the Kavanaugh Scissors comes courtesy of Hyatt, and appears in the oral arguments of the Supreme Court case of California Franchise Tax Board v. Hyatt.

    Anyone inte11ectually honest enough to recognize the Gordian Knot created BY the Supreme Court should be intrigued by the potential of eliminating that Gordian Knot with the Kavanaugh Scissors.

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