Reopening Prosecution – Rather than Allowing Appeal

In his petition for writ of certiorari, Gilbert Hyatt asks:

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

This section of the MPEP allows a patent examiner to “reopen prosecution to enter a new ground of rejection” in response to a patentee filing an appellate brief.  Hyatt argues that this approach violates the right to appeal under 35 U.S.C. § 134 and § 6(b).  When I previously wrote about the case, I noted a “remarkably parallel” case from 1904 where the Supreme Court authorized mandamus action where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904).  The Supreme Court in that case also wryly spells-out the justification for restriction practice — “to obtain more revenue” for the Patent Office.

In its newly filed responsive brief, the USPTO agrees that after having its claims “twice rejected . . . the applicant is entitled to appeal that rejection. . . [However], contrary to petitioners’ assertion, that procedure does not deprive any patent applicant of his right to review by the Board.”

[Supreme Court Docket Page]

The PTO draws a distinction with Steinmetz because it was related to a refusal to allow an appeal with regard to restriction practice — rather than repeated reopening of prosecution.

= = = =

My take here is that the PTO should be able to reopen prosecution when it acts reasonably.  A mandamus action or APA lawsuit should be available if the agency acts otherwise.

350 thoughts on “Reopening Prosecution – Rather than Allowing Appeal

  1. 23

    Pretty funny that random examiner completely disappeared after his “examiners have a presumption” post.

    I’m sure he’ll be back with more nonsense that predictability is the reason PHOSITA combines references.

    1. 23.1

      Standard Operating Procedure…

      … otherwise known as “Drive-by Monologue” or in the case of the “come-back-later-and-repeat-the-same-nonsense”: Internet Style Shout Down.

      It would actually BE something if people actually had to address the counter points presented to them before they were able to merely disappear and then return with the same claptrap as if no one had said “boo.”

  2. 22

    TP: “PTAB decisions in contested cases such as IPRs do not contain standard of review terms, because those panels are not sitting as appellate tribunals.”
    But often cited in IPR decisions is 35 USC 316(e) “Evidentiary Standards- In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”

    1. 22.1

      Dear Paul —

      Are you asking a question? It sounds like your simply confirming the observation.

      “Preponderence of evidence” is a first instance standard of proof term. Appellate standard of review terms like “clear error,” “de novo,” “substantial evidence,” etc. would be out of place in the IPR and PGR statutes.

      David

  3. 21

    I’ve been trying to post this for 48 hours, and it keeps getting caught in some blocker. So it’s a little out of time sequence. Let me try breaking it into two parts.

    The PTO is so far in the wrong in so many ways in the Hyatt case…

    Preface: the Hyatt case is another instance of what I’ve been trying to teach the patent bar in my recent articles—there are lots of cases that are losers when argued on patent law grounds, that become winners when argued on administrative law grounds. Hyatt is another example.

    1. No agency may use guidance to raise legal hurdles against the public. None. Never. The most an agency can do with guidance against the public is “interpret,” and that only vis-à-vis “genuine ambiguity” (I had used the term “active ambiguity” in my articles). The Supreme Court just reminded us of that again a few weeks ago, in Kisor v. Wilkie link to supremecourt.gov MPEP § 1207.04, the rule at issue in Hyatt, goes beyond any “interpretation.” The rule is entirely made up out of whole cloth. It has no antecedent “ambiguity” in any statute or regulation. MPEP § 1207.04 is therefor entirely invalid — not procedurally invalid, facially invalid. Instead of this simple, easy-winner administrative law argument, Hyatt raised only exotic patent law arguments. I don’t understand. Maybe he’s fonder of fighting than winning.

    2. An agency may not enforce any rule (guidance or anything else) against the public until the rule is published in the Federal Register, as required by 5 U.S.C. § 552(a). The first time the PTO ever published anything plausibly relating to § 552(a) was in January 2018 (and even that notice didn’t comply with statute). Mr. Hyatt’s facts predate that publication, and therefor no provision of the MPEP can be cited against any applicant for anything the applicant did before January 2018. Another simple-dimple argument that Hyatt didn’t raise. (And the statute of limitations has never begun to run either—another issue that made the difference between winning and losing that Hyatt didn’t raise.)

    3 Dennis said: “My take here is that the PTO should be able to reopen prosecution when it acts reasonably” Well, yes, of course. But absolutely NO in the sense Dennis means. “Reasonably” means “in conformance with the Administrative Procedure Act,” doesn’t it? (Dennis, you ought to know better.) The PTO is completely off base and self-interested here—as the PTO does in everything else relating to Gil Hyatt, or administrative law protections for all other applicants. I’ve talked to enough PTO senior lawyers to be able to report that not only is there no knowledge of the APA among the PTO’s senior lawyers or PTAB APJs, they truly do not care to know or learn about, let alone follow, any law that gets in the way of production counts.

    Let’s see if I can get part 2 through.

    1. 21.1

      David,

      You might be running into the “George Carlin” filter: an unpublished list of “bad” words that have been enacted (somewhat unevenly at that) in order to “promote” civility in the comment section.

      As you may witness, that effort fails in being both over-inclusive and under-performing.

      At a minimum, the trigger list should be explained in enough detail to avoid the inadvertent tripping (as you can also witness, this is especially exasperating when the word is buried somewhere in a detailed post).

      I have noticed that leading articles themselves do not face this filter (in the past, I have had cut and paste direct quotes from the lead article BE the tripping point).

      Perhaps, you could have Prof. Crouch turn your considerations into its own lead article…?

    2. 21.2

      Part 2 of 3 (or 21.2) —

      4. The discussion between AAA JJ and RandomGuy @ 18.3 about burden of proof… In an ex parte appeal, the examiner stands in exactly the same evidentiary shoes as a petitioner in a PTAB IPR/PGR trial. The PTAB regularly screws this up (much more often than they get it right). I touch on this in the “Part 3” article cited below—search for “Quist.” I hope to fully develop the issue in an article about this, which I hope will publish around the end of the year.

      5. Greg DeLassus writes @ 6.1.1.1.1.1.2 and 1.2.1, “The PTO’s bad faith is less egregious than Hyatt’s, but neither side is really covering itself in glory here.” I disagree. As I was working on an amicus brief for Hyatt at the Federal Circuit and cert at the Supreme Court, I read some of the Hyatt file histories that had became public. Hyatt is an inventor of some great inventions, but as a patent agent—to avoid triggering a filter, why don’t I let you pick your own favorite and most extreme word. In contrast, the PTO has run roughshod over the law, up one side and down the other. The PTO’s papers—including by the Chief APJ and Deputy Director—range between apparently-intentional, walled-off ignorance and willful defiance of law. If it weren’t for sovereign immunity, the PTO would be penalized, and several of its lawyers would be disbarred. The PTO’s explanations for its procedural improvisations against Hyatt are utterly preposterous. Incompetence is not commensurate with a “basically lawless agency meting out its own brand of justice in a vindictive manner” (to quote the Supreme Court in Oestereich v. Selective Service System Local Bd. No. 11, 393 U.S. 233, 237 (1968)).

      The PTO should stop breaking the law. The PTO should hire at least one lawyer that combines a shred of ethical decency with a molecule of competence in the Administrative Procedure Act with power to override short term financial interests of individual PTO employees. The shortest path for the PTO is to just follow the law. Treat Hyatt like any other applicant—he’s got the same due process and equal protection rights as anyone else. Give Hyatt the well-founded rejections that he is entitled to, instead of giving him such a rich supply of opportunities for recreational litigation over truly evil abuses. Remove every source of frustration except his own actions. And for any claims that have no well-founded rejections, then allow the claims.

      Part 3 coming after the filter calms down.

      1. 21.2.1

        Summarizing your multi-part (and richly crafted) positions would make an excellent article in its own right for this blog.

  4. 20

    A. Lincoln @ 18.3.1.1.ad infinitum —

    Just to be clear, I am agreeing with your clown suit hypothetical (and disagreeing with your skepticism of your own hypothetical).

    I need to refine my statement a little. A PTAB decision would not acquire binding authority against anyone except the very parties to the decision (including PTO employees) merely on the PTAB’s own authority. That happens only when that PTAB decision gets some kind of agency-wide vetting and consensus and issues with (at least apparent) authority of the Director — the authority to supervise PTAB employees is the Director’s (and that only when the Director acts as the Director, not as a member of the PTAB), not the PTAB’s.

    And importantly, a PTAB decision can’t acquire force of law adverse to any member of the public, except for interpretation of a “genuine” ambiguity (the Supreme Court’s term of art). (No gap-filling, only interpretation of ambiguity.) Against the public, an agency must go through full notice-and-comment rulemaking (in many cases, because of a separate notice-and-comment provision of the Paperwork Reduction Act, which essentially fills in the “procedural” exemption in the APA). A number of PTAB decisions that are designated precedential — MasterImage 3D, Nehls, Miyazaki, McAward — are just plain illegal.

    There are a lot of interacting laws that create exceptions-to-exceptions-to-exceptions-to-exceptions. I spent over a year trying to disentangle it all, and that’s my article at link to ssrn.com I was very gratified when, two weeks after that issue of AIPLA Q.J. mailed, the Supreme Court decided Kisor v. Wilkie, and did a wonderful job of agreeing with me. :-)

    My amicus brief on Proppant IPR2018-00914 paper 30 (or the article form at link to ssrn.com ) is instructive on the PTAB’s misunderstnding of POP.

    1. 20.1

      Again, thanks David – your effort is indeed reflected in your writings and serve to contrast the Ends that our historical pseudonym friend appears to want (the bottom line point that AAA JJ was providing).

      To that point, and distinct from the actual focus of your admin law focus, would you care to take a step back and “lift” the provisios that you added at 19 (taking into account Article III decisions and accepting at face value the fact that anew and de novo are synonyms)…?

      1. 20.1.1

        Anon —

        I don’t understand your question. Also recall that I have a day job. I gave you the URL so you could do your own work. It’s all very subtle, and it took a year of writing to get it all right, and I don’t want to think that hard about it again for this comment thread.

        I have real skepticism about the assertion that “anew” and “de novo” are “synonyms” Courts are pretty persnickety with words! It seems to me that if the CCPA/FedCir really meant to lock down “de novo” they would have used the word “de novo.” I think I agree with AAA JJ that that’s what they probably meant, but it’s more than curious to me that that’s not what they wrote.

        1. 20.1.1.1

          No probs – the URL is excellent, and this is not really a “my question” as much as it is resolving the difference between AAA JJ and A. Lincoln/T. Pain.

        2. 20.1.1.2

          “Anon —”

          “I don’t understand your question.”

          “Also recall that I have a day job. . . [Y]ou could do your own work.”

          Anon gets that a lot.

          1. 20.1.1.2.1

    2. 20.2

      “A. Lincoln @ 18.3.1.1.ad infinitum —

      Just to be clear, I am agreeing with your clown suit hypothetical (and disagreeing with your skepticism of your own hypothetical).”

      I don’t think I expressed skepticism of my own hypothetical, but if I did, it was unintentional.

      I’m sure you’re aware that under the current SOP the Director, acting as the Director, must approve the “precedential ” designation of any Board opinion. Also, under the current SOP, the Director may sua sponte “un-designate” any Board precedential opinion as no longer precedential. I’m guessing you would have a problem with that un-designating procedure.

      1. 20.2.1

        Dear A Lincoln —

        OK, I take you at your word about clown suits.

        Read SOP2 again — page 4 couldn’t be clearer. When on POP, the Director acts in his role as a member of the PTAB panel, not as the Director. I discuss this in my “Precedential opinion” article, link to ssrn.com and my Proppant article link to ssrn.com

        (And more importantly, who cares what that SOP2 POP nonsense says — it’s just guidance, promulgated without notice and comment. That kind of rulemaking authority can only be created by statute. SOP2 is as ultra vires and as brazen a display of agency disregard of law as an agency statement can be.)

        Of course the Director as Director can freely undesignate — why not. Intra-agency housekeeping rules has been a power of any agency head since 1789.

        1. 20.2.1.1

          “Of course the Director as Director can freely undesignate — why not. Intra-agency housekeeping rules has been a power of any agency head since 1789.”

          That’s the part I thought you might have a problem with. It’s intra-agency, but hasn’t the public been put on notice?

          1. 20.2.1.1.1

            but hasn’t the public been put on notice?

            Are you purposefully using that phrase out of its context of notice and rule-making?

            Or was your baiting obtuseness “unintentional?”

            1. 20.2.1.1.1.1

              In view of the adage of old dog/new tricks, let me share the following vignette:

              Person 1 (reaching down to pet a dog near person 2): Does your dog bite?

              Person 2: No.

              Person 1: Ouch! (As the mangy dog clenches down mightily on Person 1’s extended hand). Hey, you said that your dog does not bite.

              Person 2: That is not my dog.

        2. 20.2.1.2

          “Read SOP2 again — page 4 couldn’t be clearer. When on POP, the Director acts in his role as a member of the PTAB panel, not as the Director.”

          But the _current_ SOP page 4 says “The Precedential Opinion Panel members are selected by the Director.” A mere member of a PTAB panel does not select who is on the panel. That would be the Director, acting as the Director.

          1. 20.2.1.2.1

            Excuse the thinking in practical terms, but I don’t follow why a precedential opinion (under the current “ultra vires” SOP?) would not have at least apparent authority of the Director acting as Director and not a Board member. In the _extremely_ unlikely event the Director does not choose his panel in accordance with the result he wants, he would simply not make the opinion precedential (and could even “un-designate” the opinion the same day).

        3. 20.2.1.3

          “And more importantly, who cares what that SOP2 POP nonsense says — it’s just guidance, promulgated without notice and comment. That kind of rulemaking authority can only be created by statute. SOP2 is as ultra vires and as brazen a display of agency disregard of law as an agency statement can be.”

          So why am I being directed to read SOP2 again?

          1. 20.2.1.3.1

            A. Lincoln —

            @ 20.2.1.2 — the Director appoints panels, true. There are lots of areas of law where the power to appoint is entirely different than the power to act. This is one of them. Once the Director appoints himself to a panel, he’s just “one of the guys.” In re Alappat, 33 F.3d 1526, 1535 (Fed. Cir. 1994) (“[A]lthough the [Director] may sit on the Board, in that capacity he serves as any other member.”). All PTAB panels are created equal.

            @ 20.2.1.2.1 — look at the statute (or the PTAB is Not an Article III Court Part 3 Article, which extensively footnotes this exact point). The PTAB has no rulemaking or policy making authority. Policy making is in the hands of the Director and Secretary of Commerce. When the Director puts on his PTAB hat, he takes off his rulemaking and policymaking hats.

            @ 20.2.1.3 – Why should you read SOP2? Because you asked the question about it. Within the hypothetical counter-factual world posited by your question, SOP2 has some legal weight, and (once you understand the two previous points) the text of SOP2 answers your question.

            @ 20.2.1.1 — I don’t understand the “notice” question. Can you ask it differently or provide some context? “Notice” is just one of many components of a valid rulemaking. Notice is a necessary condition for an agency to bind the public, but not a sufficient one (see my PTAB is Not an Article III Court Part 1 and Part 3 articles. link to ssrn.com “Notice” hasn’t been implicated by anything else we’ve discussed here, so I don’t understand the question.

            David

            1. 20.2.1.3.1.1

              “All PTAB panels are created equal.”

              “Created” equal? Not really. Alappat is a case in point. As I’m sure you know, the panel was packed by the Commish to get a certain result. The Commish was on the panel. But Alappat did not concern a decision on whether or not to make a Board case binding authority on the Board.

              “When the Director puts on his PTAB hat, he takes off his rulemaking and policymaking hats.”

              That’s the point of 20.2.1.2.1. The Director may convene a PTAB panel and get a result. But then he’s no longer on a panel.
              He puts on his “rulemaking and policymaking hats” when deciding whether to make the opinion precedential. Maybe he gets a little help (or not) in writing the opinion, but under the current SOP he’s the sole decider.

              With respect to “public notice,” it seems a published, precedential Board decision would put the public on notice at least to the same extent as the MPEP, which gets used against the Office from time to time. I can imagine a few avenues for an unhappy appellant to explore if, for example, a Board panel did not follow the standard of review set forth in Frye (although it would probably be fixed in-house).

              1. 20.2.1.3.1.1.1

                A. Lincoln —

                On the effect of having the Director on a panel, if you want to dodge the issue, we can terminate the discussion. Until you put on your thinking cap and think about what I wrote, there’s no point in discussing it further. I responded to you directly. If you want to show reciprocal respect, I’ll continue to discuss. If you want to zig-zag off the topic you specified after I give you a cite contrary to your position, then this can be the last time I write to you. I operate on “three strikes you’re out” with people that don’t think clearly before writing — 20.2.1.3 was one, this is two.

                it seems a published, precedential Board decision would put the public on notice at least to the same extent as the MPEP” That analogy is pretty good. Which is to say, as a general rule, both are enforceable against the Office, and neither is enforceable against any member of the public (both with very narrow exceptions). The precise scope of which is which is much more complex than warranted in a blog comment, which is why I took the trouble to write it out in detail in the Precedential and Informative Opinions article, link to ssrn.com I commend that to your attention, and hope you’ll read it before asking me to respond again.

                David

                1. Dodging issues, being coy and playing games is what my shifty historical pseudonym friend is all about.

                2. Fraud Iancu is a notorious li@r and makes up irrational b.s. so his Examiners can avoid the law. What does the David Boundy Employment Act say about that sort of thing?

                3. Translating Malcolm:

                  “Wah, the Director has made the unassailable observation that the Common Law rewriting of 35 USC 101 has created as Gordian Knot of an irreconcilable contradictory mess.”

                  He is “bad” because he has told his examiners that they cannot join in and write Common Law.

                  (It’s a ‘one-bucket,’ cognitive dissonance thing)

                  Maybe, Malcolm, if you ever get control of your feelings, you may venture forth with a cognitive post concerning admin law that you might actually ask of David and learn something.

                4. What are the chances that Malcolm has not bothered at all to read ANY of David’s admin law articles?

                  200%?

                  300%?

      2. 20.2.2

        I don’t think I expressed skepticism of my own hypothetical, but if I did, it was unintentional.

        You would have been more accurate if you stopped after the first three words, as your intention (clown suit) speaks for itself as to your own sardonic level.

        And instead of trying to play “gotcha” with David and your musings of what the Director does (as Director) versus David’s point of when the Director appoints himself to act as PTAB judge (instead of appointing himself as Director on a panel of PTAB judges), why don’t you break your lay Z habits and read (and yes, I do mean read to understand) David’s links?

        1. 20.2.2.1

          Case in point example of your “gotcha” gamesmanship: instead of not recognizing that David’s point of the role of the Director as self-appointed on a panel of PTAB judges (to deliberate on a case) is NOT as a Director, you could have pointed out that any panel of PTAB judges that are convened for a matter — not to adjudicate on any particular case, as judges — but rather, to meet and set policy, is more akin to the Director acting as Director and elevating the judges so convened to be his policy-making assistants.

          With this distinction established, the point that the Director (on that type of panel) is very much still acting as the Director could be made without snark, and without the “gotcha” games.

          1. 20.2.2.1.1

            …and (yet again) at a substantive point, I see that my shifty historical friend has done what he suggested I do and has slinked away.

            AND he has (yet again) done so without recognizing the superiority of the counter points presented to him.

            What an ungrateful wretch.

  5. 19

    To wade into the dispute between AAA JJ and Thomas Pain @ 18.3.1.1 et seq —

    OK, so let’s give Thomas his best position, that no Federal Circuit case uses the word “de novo.” And let’s pooh-pooh AAA JJ’s assertion of “synonyms.” Fair enough.

    But Frye indisputably does speak of “de novo” and “burden of proof” favoring the applicant.

    Whatever else, an agency statement that, by its terms, limits agency discretion and creates rights in favor of parties before the agency, issued with agency internal vetting (such as authority of the agency head), does bind agency personnel. There are at least a half-dozen Supreme Court cites on that point, many cited in David E. Boundy, The PTAB is Not an Article III Court: Precedential and Informative Decisions, 47 AIPLA Q.J. 1 (June 2019), available at link to ssrn.com

  6. 18

    “The examiner has a presumption in his benefit when he’s being appealed on fact issues,…”

    It’s statements like this that destroy any credibility you work so hard to establish with your lengthy posts and silly analogies. Not that I ever found you credible.

    1. 18.1

      In response to the usual nonsense from Random Examiner at 8.2.1

      1. 18.1.1

        Careful there AAA JJ, as you are going to offend the sensibilities of “I use my real name” Greg DeLassus, who holds Random out as some paragon of blog interaction virtuosos.

        1. 18.1.1.1

          I think Greg is the best commenter on this site. His ability to ignore the ad hominem is admirable. Not that I agree with everything he posts, but his positions are well thought out, and he’s not afraid to reconsider his position or acknowledge mistakes in his posts. This blog would be better off with more Greg’s.

          1. 18.1.1.1.1

            You are too kind. The late Ned Heller was the very best commenter on this site, and his erudite contributions are much missed. Ron Katznelson has the ability to take over Ned’s title, except that the good Mr. Katznelson so rarely participates.

            1. 18.1.1.1.1.1

              “The late Ned Heller was the very best commenter on this site”

              Perhaps.

              “Ron Katznelson”

              I unironically loled irl.

              1. 18.1.1.1.1.1.1

                I unironically loled irl.

                I am gratified to know that I brought that little bit of joy into the life of one of my fellow human beings today.

            2. 18.1.1.1.1.2

              Remember that Ned Heller finally came around to my position that Mark Lemley is highly unethical. Why? Because Lemley took an opposing position to Ned’s and Ned had to delve into the details of Lemley’s unethical positions.

              (* And we all know that I am the best commentator by far. *)

              1. 18.1.1.1.1.2.1

                Mr. Heller was particularly pliable when it came to his interests being impugned.

                Do you remember when he labeled 6 as a genius, just because 6 agreed with Ned?

                But Ned’s biggest problem was that he would partake in a conversation only so far and then disappear – often at the point that he could not sustain his position (and noting that often his position was one of advocacy for an active client — which is a bit of a no-no if you take a gander at the posting rules available somewhere on this blog).

          2. 18.1.1.1.2

            Well there goes your credibility…

            1. 18.1.1.1.2.1

              There does go his credibility…

              1. 18.1.1.1.2.1.1

                Chalk it up to the “Liberal Left” comment below.

    2. 18.2

      “Destroy any credibility” seems too harsh to me, but I agree that 8.2.1 was not RandomGuy’s best work. Indignor quandoque bonus dormitat Homerus, as Horace observed.

    3. 18.3

      According to the pontifications of AAA JJ: “There’s plenty of better precedent than Frye. The APA. Warner. Oetiker. Etc.”

      The APA is not a “precedent” and the cases you cite do not concern internal PTO procedures as does Frye. You really want to talk about credibility?

      1. 18.3.1

        You are correct, the APA is not precedent, it is statute. So it’s even better than precedent.

        Muh bad.

        As for your concern with whether the cases I cited “concern internal PTO procedures as does Frye,” all I can say is that when it comes to factual issues during examination, Warner and Oetiker and a list of precedents as long as your arm decided by the PTO’s supervising court, and not its internal board of review, all clearly state that the examiners, the Board, and the PTO get no presumption, and in fact have nothing but the burden. So while it certainly was nice of Mr. Kappos to assign himself to the panel it really wasn’t necessary. And if you’re citing Frye instead of Warner, Oetiker, et al. then you’re doing it wrong.

        1. 18.3.1.1

          You’re right, you are bad. Cite a Supremes or Fed. Cir. precedential opinion that requires the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo. I assume it must be in Warner and/or Oetiker. Cite by page, please. Or quote the specific language. Or (even better!) cite a statute! By sub-section. Thanks.

          1. 18.3.1.1.1

            “Cite a Supremes or Fed. Cir. precedential opinion that requires the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo.”

            That’s your big take away from Frye? If you didn’t know that before Mr. Kappos held your hand and explained it to you, you’ve been doing it wrong for a long time. There was never any doubt before Frye that the Board was required to review all contested factual issues de novo. That’s why the paragraph spanning pages 9-10 of the Frye decision cites Oetiker for support.

            Duh.

          2. 18.3.1.1.2

            “I assume it must be in Warner and/or Oetiker. Cite by page, please.”

            In reviewing the examiner’s decision on appeal, the Board must necessarily weigh all of the evidence and argument. Oetiker, 977 F.2d at 1445.

            Did/do you not understand that is de novo review?

          3. 18.3.1.1.3

            You may also want to read Piasecki, which J. Newman wrote in 1984, 27 years before Frye.

          4. 18.3.1.1.4

            And Rinehart (35 years before Frye):

            Though the tribunal must begin anew, a final finding of obviousness may of course be reached, but such finding will rest upon evaluation of all facts in evidence, uninfluenced by any earlier conclusion reached by an earlier board upon a different record.

            You are aware that “anew” and “de novo” are synonyms, right?

            1. 18.3.1.1.4.1

              Such a target-rich environment. Where to begin?

              “That’s your big take away from Frye?”

              You should take from Frye that the Board-precedential opinion requires more than does the law. That’s why it’s a Board-precedential opinion. Else, why not just follow the CCPA/Fed.Cir./Supreme cases?

              “In reviewing the examiner’s decision on appeal, the Board must necessarily weigh all of the evidence and argument. Oetiker, 977 F.2d at 1445.”

              What is that word you do not understand but use a lot? Oh, yeah, “preponderance.” The Board of course must weigh all the evidence and argument to ensure the preponderance standard has been met.

              “Did/do you not understand that is de novo review?”

              No, I did/do not. Do you have a cite for that?

              1. 18.3.1.1.4.1.1

                “You should take from Frye that the Board-precedential opinion requires more than does the law.”

                Really?

                What does the law require?

                What “more” than the law does Frye require?

                1. “What ‘more’ than the law does Frye require?”

                  Requires that the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo.

                2. Really? Frye says “Hey law, the PTAB requires more than the law requires”…?

                  What is the pin cite?

                  (The self-reference aught to be a hoot)

                3. “What is the pin cite?”

                  Look it up. It’s getting pretty late in the US. I’m going to bed.

                4. Oh,
                  Don’t run away, mr. “Give me a cite.”

                  Where is that self-referential cite that you claim exists?

                5. Good morning from America, Green anon.

                  “Where is that self-referential cite that you claim exists?”

                  Huh? I claimed no such thing. It’s really quite simple. When a PTAB-precedential opinion is more restrictive than what is required by statute, regulation, or reviewing courts, that Board-precedential opinion requires more than does the law. And BTW, it restricts the Board and nobody else. Because you will not find those legal principles in Wikipedia, I understand your confusion.

                6. “Requires that the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo.”

                  Thank you for attempting to answer at least half my questions. I guess.

                  Let me rephrase: Before Mr. Kappos came down from Mt. Sinai with the stone tablets with Ex parte Frye inscribed on them, what did the law (e.g. the APA, 35 USC, controlling precedent) require the BPAI/PTAB to do when reviewing contested findings of fact?

                  And if the law (see above) required less than de novo review, how does Frye (which is PTAB precedent, which is less than CCPA/Fed. Cir. precedent) allow the APJ’s to ignore the controlling precedent (e.g. Piasecki, Rinehart, Oetiker, etc.) of its supervising court(s)?

                7. “When a PTAB-precedential opinion is more restrictive than what is required by statute, regulation, or reviewing courts, that Board-precedential opinion requires more than does the law.”

                  Do you have a cite for that?

                8. Bottom line, there was no controlling precedent before Frye that fixed the ex parte appeal standard of review at the Board. The law before and since (e..g., Piasecki, etc.) is not to the contrary of Frye, so the Board has freedom to operate within its own rules. Contrast that with the current Director, who is promulgating statutory subject matter guidelines that are contrary to law.

                  “Do you have a cite for that?”

                  As we speak, Green anon is diligently searching Wikipedia.

                9. “Bottom line, there was no controlling precedent before Frye that fixed the ex parte appeal standard of review at the Board. The law before and since (e..g., Piasecki, etc.) is not to the contrary of Frye, so the Board has freedom to operate within its own rules.”

                  Piasecki is controlling. Rinehart (8 years before Piasecki) is controlling:

                  “When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over…. An earlier decision should not, as it was here, be considered as set in concrete, and applicant’s rebuttal evidence then be evaluated only on its knockdown ability. Analytical fixation on an earlier decision can tend to provide that decision with an undeservedly broadened umbrella effect. Prima facie obviousness is a legal conclusion, not a fact. Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself…. [A] final finding of obviousness may of course be reached, but such finding will rest upon evaluation of all facts in evidence, uninfluenced by any earlier conclusion reached by an earlier board upon a different record.” 531 F.2d at 1052.

                  Rinehart is very clear, “…the tribunal must begin anew,…”

                  As I noted above, “de novo” and “anew” are synonyms.

                  So your conclusion that the ex parte appeal standard of review was not fixed before Frye is wrong.

                  When applicant contests findings of fact, the Board must “begin anew.”

                10. “The law before and since (e..g., Piasecki, etc.) is not to the contrary of Frye, so the Board has freedom to operate within its own rules. ”

                  Also wrong.

                11. Bottom line, there was no controlling precedent before Frye

                  Do you have a cite for that?

                  It’s quite simple, you allege some affirmative holding without providing a citation. All that I am doing (and I see now that AAA JJ has joined me) is play your game and ask you for a cite to back up your affirmative statement.

                  This has nothing to do with me OR Wikipedia, as this has only to do with you.

                  Besides, as you recall on the specific and actual use of Wikipedia, I slammed you with a follow-up from with a direct citation from the Nobel web site. Your wanting to bring that up as some type of put-down is rather self-flagellating of you.

                12. “As we speak, Green anon is diligently searching Wikipedia.”

                  I take it you don’t have a cite for your position.

                  Didn’t think so. But thanks for confirming.

                13. Contrast that with the current Director, who is promulgating statutory subject matter guidelines that are contrary to law.

                  Lol – you want to jump from the frying pan into the fire, eh?

                  You are aware that the Common Law law scrivening of the courts is ITSELF contradictory, and thus contrary to itself, eh?

                14. Well AAA JJ,

                  Down below I volunteered to answer our shifty hitstorical pseudonym friend here by giving him what he asked of you — a cite showing that anew and de novo are synonyms.

                  The ungracious b@stard never even said “thank you.”

                  Instead, he just retreated into his ‘Malcolm’ mode.

                15. AAA JJ, in reviewing an obviousness rejection, determining if “prima facie obviousness” has been established _in the first instance_ is part of the Board’s job. Moreover, it should be apparent from the very language you quote from Rinehart, such as “earlier board,” that it does not address the PTO-internal standard of review at the Board with respect to an examiner’s rejection. And the examiner is not a “tribunal.” Further, the Fed. Cir. does not review examiner’s rejections in ex parte prosecution. It reviews final agency decisions by the Board (which become the Director’s decisions when defended by the Solicitor).

                  Comparing the evaluation and weighing of evidence in an obviousness inquiry to standard of review on appeal is comparing apples to horses, or pigs to oranges.

                16. “Comparing the evaluation and weighing of evidence in an obviousness inquiry to standard of review on appeal is comparing apples to horses, or pigs to oranges.”

                  That’s a nice strawman.

                  The Board is not an Article III appellate court. So comparing the evaluation and weighing of evidence by an Article I agency’s internal tribunal to the standard of review an Article III appellate court gives to that agency’s final decision is comparing apples to horses, or pigs to oranges.

                  Read Rinehart and Piasecki. The law before Frye was and is clear: contested findings of fact require de novo review i.e. the fact finder, whether the examiner or the Board, must start over, or begin anew. No inferences are to be drawn from the previous findings and conclusions, and no presumptions are to be made from the previous findings and conclusions. When the burden of production is shifted to applicant and applicant provides rebuttal arguments and/or evidence, the fact finder (again, examiner or Board) must start over. That is de novo review.

                17. “Besides, as you recall on the specific and actual use of Wikipedia, I slammed you with a follow-up from with a direct citation from the Nobel web site.”

                  Who will ever forget that devastating slam! You cut and paste from something other than Wikipedia! A direct citation! A DIRECT citation! I only mentioned Wikipedia because it became apparent that your understanding of the doctrine of equivalents was based on a mistake in Wikipedia. You cannot learn all of US patent law from Wikipedia and Google searches.

                  “Down below I volunteered to answer our shifty hitstorical pseudonym friend here by giving him what he asked of you — a cite showing that anew and de novo are synonyms.”

                  I never disagreed, or asked for a cite, that anew and de novo are synonyms. Please point to where I did so. You may cut and paste the quote, if necessary.

                18. “When the burden of production is shifted to applicant and applicant provides rebuttal arguments and/or evidence, the fact finder (again, examiner or Board) must start over. That is de novo review.”

                  I’m sorry, but it should be a very simple concept. That is not de novo review. The examiner does not have a standard of review for his/her self. The Board does not have a standard of review for its own decision in the first instance.

                19. Maybe I can help. From your Rinehart quote: “Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself…. ”

                  A simple example. Examiner says that reference A at col. 10, lines 33 through 40 teaches that all widgets are triangular. That finding of fact is part of the Examiner’s prima facie case of obviousness. The Board might accept that finding if it is not clearly erroneous. That makes sense, because the examiners usually have specific knowledge of the art that the Board does not.

                  But after Frye the Board does not review that finding for clear error. If the finding is contested, the Board gives no deference to the examiner’s finding and makes its own determination as to whether col. 10, lines 33 through 40 teaches that all widgets are blue. The examiner’s finding in support of prima facie obviousness has not changed; only the standard of review has changed. “Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached.” The fact on which the earlier conclusion was reached did not change. The standard of review of that finding of fact changed.

                  Apples to horses, pigs to oranges.

                20. The second occurrence should be “teaches that all widgets are triangular.” I changed blue to triangular because of how non-functional recitations seem to set people off.

                21. Wow, my shifty historical friend is flailing about wildly.

                  Who will ever forget that devastating slam! You cut and paste from something other than Wikipedia! A direct citation! A DIRECT citation! I only mentioned Wikipedia because it became apparent that your understanding of the doctrine of equivalents was based on a mistake in Wikipedia

                  False on a number of “Black and White” points.
                  First, the slam was in the original Nobel discussion. That made you ultra-butts0re. You THEN tried to put words in my mouth and use the “Wikipedia” thing as a putdown in the ensuing thread on doctrine of equivalents. NOWHERE in that thread did I use Wikipedia or even indicate any such use. In fact, I pointed out your error in making that ASSumption. It was clear that you were still reeling from the smackdown on the Nobel item, as I had invited you to support your own position with ANY citation – and you simply could not do so. It was ONLY I had provided you with time aplenty to support your own ramblings and that you did not, that I supplemented my original citation with the additional citation. This was NOT (as you so egregiously attempt to portray): NOT a matter of mere cutting and pasting, as I directly pointed out how the citation supported my point (the opposite of YOUR actions in not supporting at all your blatherings).

                  So, As a matter of “who will ever forget?” the answer, my self-flagellating shifty friend is that NO ONE will forget if YOU keep on pretending that your snide “Wikipedia” reference is anything but a slam ON YOU.

                  As for the “give me a cite” – yet again, this is merely US playing YOUR game (and playing it much better than you). For whatever reason, instead of accepting the point that AAA JJ made in regards to the two words being synonyms, you merely played the doush and pretended the two were somehow different (and the difference was on point to your ramblings because you were playing your silly games) Just look at your next post: “I’m sorry, but it should be a very simple concept. That is not de novo review.” The thing is that this IS a simple concept and one that YOU are simply not understanding.

                  The examiner’s finding in support of prima facie obviousness has not changed; only the standard of review has changed. – YOU are not grasping that the EXAMINER cannot take the rebuttal points as if those rebuttal points are AGAINST his first conclusion. Instead, the EXAMINER is to (anew) look at all the evidence, his starting evidence AND the contested portions, and (anew) develop his findings.

                  (and your half-change and little snipe on functional versus non-functional is also quite hilarious – at your expense. Maybe it is not volleyball that you are attempting to play with a softball, maybe it is racquetball (see post 15.1.1.2.1.2.1).

                  Lastly, see above as even David comes by to smack you upside your pretty little head.

                22. When a PTAB-precedential opinion is more restrictive than what is required by statute, regulation, or reviewing courts, that Board-precedential opinion requires more than does the law.

                  AAA JJ asks “Do you have a cite for that?”

                  David E. Boundy, The PTAB is Not an Article III Court: Precedential and Informative Decisions, 47 AIPLA Q.J. 1 (June 2019).

                23. Wow, shifty, you are BAD at this.

                  requires more than does the law

                  You do realize that by citing Boundy you are defeating your own proposition, right?

                  Boundy establishes UNDER THE LAW (albeit Admin Law) that the Agencv is bound. This is NOT “more than,” but merely “IS” what the law requires.

                  And that’s not even having you understand the rebuttal from AAA JJ (who DOES provide citations for you).

                  It really is amusing to see you flail so badly.

                24. Interesting you would advocate that the PTO Board and Director can make new law, Blue anon. I’m not sure Mr. JJ would agree.

                25. you would advocate that the PTO Board and Director can make new law

                  Nope, not at all.

                  You really do not get this, do you? The law that is binding ON THE OFFICE (and not that the Office is making new law) is Admin Law.

                  Further, as AAA JJ ALREADY put to you in regards to the APA – hint, admin law (see above at the post at 9:09 AM):

                  Before Mr. Kappos came down from Mt. Sinai with the stone tablets with Ex parte Frye inscribed on them, what did the law (e.g. the APA, 35 USC, controlling precedent) require the BPAI/PTAB to do when reviewing contested findings of fact?

                  I am MORE than sure that everyone still following along (if they are being inte11ectually honest) will agree with me over you.

                  You are simply wrong here – and deliriously so.

                26. Maybe this will help you, Blue anon. Suppose a Board-precedential opinion sets forth that if the panel does not wear clown suits at the oral hearing of an ex parte appeal then the appellant automatically wins. The APA did not require that agency personnel wear clown suits. But maybe the APA now requires, because of the agency’s public decision, for appellant to win if the Board does not wear clown suits. However, the agency’s decision to bind itself does not make new law. So you see, the restriction regarding clown suits set forth in the Board-precedential opinion requires more than does the law. It is more restrictive than what the APA — the law — required. If the new restriction were to be considered “law” then the Board has made new law.

                27. Please Pardon Potential repeat due to Count Filter interference:

                  The APA did not require that…

                  You are not understanding admin law and how the APA works.

                  May I suggest that instead of jumping to the Boundy item for citation, that you DO THE LEGWORK and read, comprehend, and integrate the points about admin law into your understanding.

                  At this point, my lambasting you is merely fun, and you simply have too much work to do to increase your understanding. You need to understand Boundy’s points as to HOW the APA DOES work to bind the Agency (what may help you is to understand in Boundy’s writings when the Agency ALONE is bound, and when the applicant merely can take advantage of the Agency binding itself – then compare this to how you may be thinking of “writing law” and having the administrative agency do something that IS BINDING ON THE APPLICANTS.

                  Spend some time doing this before your next “gotcha” attempt. Everyone will be better off, but especially you.

                28. “ The APA did not require that…” “You are not understanding admin law and how the APA works.”

                  You are seriously contending that the APA did require that Board personnel wear clown suits?

                  “May I suggest that . . . you . . . .”

                  At last, the usual signal that you have no substantive response and nothing of substance to add. You came close to actually addressing merits there for a bit.

                29. I am seriously contending that you do not understand admin law and how the APA works, not just on its own, but on how the mechanism of agency binding works.

                  May I suggest that you engage Dave Boundy at the top of the thread.

                30. “I am seriously contending that you do not understand admin law and how the APA works, not just on its own, but on how the mechanism of agency binding works.”

                  How does admin law and the APA work, Green anon, not just on its own, but also how the mechanism of agency binding works?

                31. A. Lincoln @ July 28, 2019 at 4:42 pm —

                  Yes. That’s exactly how it works. If an agency makes a rule that purports to govern PTO employees, and imposes no obligations on any member of the public, then that’s exactly it. The agency binds itself, and no adverse consequence may flow to any party before the agency.

                  Read my article, the section on Accardi v Shaugnessy. Also my notice-and-comment letter on the section 101 guidance from early 2019.

                  That’s why the Director can bind the examining corps (and the PTAB) with the new section 101 guidance, but not the courts.

                32. “Thank you David – your admin law stuff is stellar.”

                  So, at long last, Green anon, you understand admin law and how the APA works, not just on its own, but also how the mechanism of agency binding works.

                33. My shifty friend:

                  So, at long last,

                  Sorry but no, as it has never been in question as to whether or not MY understanding was at issue.

                  Note PLEASE that David is addressing you and CORRECTING you.

                  Pedantic gamesmanship by you here is clearly revealed in the black and white of the direct words on this page.

                  As I have already noted, if you want to “engage” David on the particulars, why not do this at the top at David’s post 19?

                34. Maybe I can help.

                  You say “Note PLEASE that David is addressing you and CORRECTING you.”

                  But your designated expert says:

                  “A. Lincoln @ July 28, 2019 at 4:42 pm —

                  Yes. That’s exactly how it works.”

                  Conclusion: you are effing insane.

                35. You have difficulty with sardonic comments, don’t you?

                  Rather surprising really, given your propensity for gamesmanship.

                36. My last comments on this topic.

                  “Maybe I can help.”

                  Based on what you posted, nope.

                  “A simple example. Examiner says that reference A at col. 10, lines 33 through 40 teaches that all widgets are triangular. That finding of fact is part of the Examiner’s prima facie case of obviousness. The Board might accept that finding if it is not clearly erroneous. That makes sense, because the examiners usually have specific knowledge of the art that the Board does not.”

                  Nope. That is not the law. Never was the law. And never will be the law. The law is clear: any contested findings of fact require the fact finder, whether it be the examiner or the Board, to start over. To evaluate all of the evidence and arguments anew to determine if the claims are unpatentable by a preponderance of the evidence. That is the law.

                  “But after Frye the Board does not review that finding for clear error. If the finding is contested, the Board gives no deference to the examiner’s finding and makes its own determination as to whether col. 10, lines 33 through 40 teaches that all widgets are blue. The examiner’s finding in support of prima facie obviousness has not changed; only the standard of review has changed.”

                  Nope. The review required by the Board was not changed by Frye and has been the same at least since Rinehart, and even before then. The Board is not to give any “inference of fact” or “presumption of unpatentability” to any fact found by the examiner or conclusion reached by the examiner. The Board is to independently weigh all of the evidence and arguments of record and determine if the claims are unpatentable by a preponderance.

                  “The fact on which the earlier conclusion was reached did not change. The standard of review of that finding of fact changed.”

                  Nope. For the third time.

                  So for A. Lincoln and T. Pain, my question is very simple: what is this “more” that the Board is doing since Frye that the Board was not doing, or supposed to be doing, before Frye? (Hint: answering, “Well, doing a de novo review” is NOT the answer to the question.)

                  Peace out.

                37. Where do you guys get this stuff? Did’ja know, AAA, that the Board can adopt the Examiner’s findings? see, for example, Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034 (Fed. Cir. 2017).

                  “As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings. ‘It is commonplace in administrative law for a reviewing body within an agency to adopt a fact-finding body’s findings. On judicial review, the adopted material is treated as if it were part of the reviewing body’s opinion.’ In re Cree, Inc., 818 F.3d 694, 698 n.2 (Fed. Cir. 2016) (emphases added) (citations omitted). The PTAB is no exception. See In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it ‘did not expressly make any independent factual determinations or legal conclusions,’ because it had ‘expressly adopted’ the examiner’s findings by stating that it ‘agree[d] with the examiner’s well reasoned, well stated[,] and fully supported by citation’ findings (alterations modified) (internal quotation marks and citation omitted)).”

                38. The referenced statement in Brana reads:

                  “The Board’s decision did not expressly make any independent factual determinations or legal conclusions. Rather, the Board stated that it ‘agree[d] with the examiner’s well reasoned, well stated and fully supported by citation of relevant precedent position in every particular, and any further comment which we might add would be redundant.’ Ex parte Brana et al., No. 92-1196 (Bd.Pat.App. & Int. March 19, 1993) at 2-3. Therefore, reference in this opinion to Board findings are actually arguments made by the examiner which have been expressly adopted by the Board.”

                  Not surprising at all that it’s your last comments on this topic.

                39. I agree with AAA JJ here, abd I believe A. Lincoln and Thomas Pain are confusing a couple different things.

                  The PTAB sits essentially as a tribunal of first instance. (They “review” in the same sense as a section 145 district court “reviews” — there is a predecessor tribunal, but the court applies a first instance burden of proof against the PTO, to a preponderance, not a standard of review.) Standard of review terms, such as “clear error,” are a misfit and only lead to confusion.

                  Sure, the PTAB can “adopt” findings of an examienr. Perfectly good technique for a tribunal of first instance. (Judge Luckern of the ITC used to write his decisions by copying and pasting from the party briefs — the most extreme form of adopting findings proposed by a party!)

                40. “So for A. Lincoln and T. Pain, my question is very simple: what is this ‘more’ that the Board is doing since Frye that the Board was not doing, or supposed to be doing, before Frye?”

                  Frye is pretty self-explanatory as to fixing a non-deferential standard of review. The opinion came about because Kappos felt pressure to, in some way ,”service” the “stakeholders” to underscore the fact that the Dudas era was over.

                  Filing an ex parte appeal to the PTAB does not guarantee a re-examination or a do-over. The relevant statute says that the Board shall “review adverse decisions of examiners.” It is the decision below under review; there’s nothing even close to your ‘independently weigh all of the evidence and arguments of record and determine if the claims are unpatentable by a preponderance.'” Besides, even in examination, the particulars of cases such as Piasecki rarely occur because it is rare for an attorney to supply rebuttal evidence. As cases such as Icon Health make clear, attorney arguments are not evidence.

                41. Mr. Boundy, I do know that burdens of proof and standards of review are separate concepts. I also understand that you do not think, for example, that examiners make “findings,” and that you have been critical of both the PTO and the Federal Circuit. We have quite a few naive readers here. You might flag for us when its your position you’re advocating and not necessarily that of the PTO or its reviewing court.

                42. Dear Thomas Pain —

                  I believe the de novo, preponderance of evidence burden of proof I discuss here is the standard set by statute and the Federal Circuit. The Federal Circuit hasn’t said so in so many words, but they’ve certainly hinted at it very strongly, it’s the way it works at all other agencies I know of where the first-level decision maker has the non-lawyer informality of examination at the PTO, and I know of nothing contra.

                  When I’m projecting beyond existing case law, I try to be honest about it. For example, if you take a look at the Part 3 article, you’ll see I clearly labeled some of my views as an “emerging trend” on which there’s no current square holding. (Fortunately, the Supreme Court agreed with me only three weeks after the article published.)

                  The Federal Circuit basically gets it right — especially Judges Plager, Moore, and O’Malley. Judges Hughes, Chen, Taranto, and Dyk could usefully spend time on my SSRN page link to papers.ssrn.com It’s the parties that make the wrong arguments that I have criticized most harshly. Courts can only work with what the parties give them.

                  David

                43. Mr. Boundy, there’s one remarkable Federal Circuit case — not so remarkable that I remember the name, but it was around the turn of the millennium — where the District Court supplied its enumerated findings of fact. Its conclusion of law was that the invention would have been obvious. The Fed. Cir. accepted each fact as not clearly erroneous. But the Fed. Cir. concluded that the invention would not have been obvious under the requisite clear and convincing standard.

                  The examiner can be considered as a finder of fact. For example, according to the Fed. Cir., what a reference teaches is a question of fact. If the examiner says “reference A teaches Y,” that is a finding of fact. That finding might be reviewed by the Board deferentially (e.g., for clear error) or de novo. But _that_ review is to establish what the facts are — what the evidence is — before determining if the requisite preponderance of evidence standard has been met. The facts must be established before weighing.

                  The Board in an ex parte appeal is internally reviewing the decision of a quasi-judicial official, not using the give-and-take procedure appropriate for examination. I know you disagree, but that’s the alternative view.

                44. I feel like Michael Corleone.

                  “Did’ja know, AAA, that the Board can adopt the Examiner’s findings?”

                  I’m well aware of that. But the Board adopting the examiner’s findings is not the same as the Board applying a standard of review (e.g. de novo, clear error, substantial evidence) to the examiner’s findings.

                  “Frye is pretty self-explanatory as to fixing a non-deferential standard of review.”

                  Thanks for not answering my question. My position is that Frye changed nothing. Your position is that Frye changed the way the Board reviews contested findings of fact, and in fact now requires the Board’s review of contested findings of fact to be “more” than the law requires. When I ask you, “What is the Board required by Frye to do in its review, and what is this ‘more’ than the law that is required by Frye?” your answer is, “It’s self explanatory.” If it’s self explanatory then you shouldn’t have any problem explaining it to me. But you don’t. Maybe because you can’t.

                  As to your assertion that Frye somehow “fixes” a “non-deferential standard of review” can you cite any case at all that even remotely suggests that the Board, before Frye, was allowed to apply a deferential standard of review to the examiner’s findings of fact?

                  “Filing an ex parte appeal to the PTAB does not guarantee a re-examination or a do-over.”

                  Never said it did. But I hope you got your jollies beating that straw man.

                  “The relevant statute says that the Board shall ‘review adverse decisions of examiners.’ It is the decision below under review; there’s nothing even close to your ‘independently weigh all of the evidence and arguments of record and determine if the claims are unpatentable by a preponderance.’”

                  As the court instructed the PTO in Oetiker, “…the conclusion of obviousness vel non is based on the preponderance of evidence and argument in the record.” 977 F.2d at 1446. “..and arguments in the record.” The Board has to consider and weigh applicant’s arguments. (See J. Plager’s concurrence in Oetiker, “…the only question is whether, on the whole record, the applicant has met the statutory requirements for obtaining a patent.” Id. at 1449.)

                  “Besides, even in examination, the particulars of cases such as Piasecki rarely occur because it is rare for an attorney to supply rebuttal evidence.”

                  The particulars of cases such as…? You’re funny. I’m sure you’re one of those examiners who loves to reject claims with “rationales” like “Change in shape is obvious. See In re BoilerplatecasefromtheMPEP” without overly concerning yourself about the “particulars” of the cases you cite. But you’re gonna split hairs on Rinehart in this forum. Nice.

                  Rebuttal evidence includes cites to the applied references. Rebuttal evidence is not limited to declarations and secondary considerations.

                  Your attempt to “distinguish” Rinehart, Piasecki, Oetiker is rather unpersuasive.

                  “As cases such as Icon Health make clear, attorney arguments are not evidence.”

                  You’re also one of those examiners I see. As you may be aware from MPEP 2145I, attorney arguments don’t replace evidence only when evidence is required. If the examiner cites a portion of a reference as allegedly disclosing a claimed feature, and the applicant argues that that portion of the reference does not disclose the claimed feature, the examiner is not free to ignore the argument because “it’s just attorney argument and not evidence and attorney argument can’t take the place of evidence.” You have to consider ALL of the arguments applicant makes. And so does the Board. (See, again, Oetiker. Id.)

                  “If the examiner says ‘reference A teaches Y,’ that is a finding of fact. That finding might be reviewed by the Board deferentially (e.g., for clear error) or de novo.”

                  Do you have a cite for that? Again, can you cite even one case where the PTO’s supervising court(s) held that the Board was allowed to apply a deferential review to the examiner’s findings of fact?

                  So I will ask you again:

                  1) What does Frye require the Board to do when it reviews the examiner’s findings of fact that are contested by applicant? (Again, answering “Do a de novo review” is not an answer.)
                  2) How is what Frye requires “more” than what the law requires? (If you could explain what the law, or rather what you think the law, requires that would be helpful too.)

                  “Not surprising at all that it’s your last comments on this topic.”

                  How’s the view from the peanut gallery?

                45. Thomas Pain @ July 31, 2019 at 5:26 pm

                  First, there are very few analogies between Court/Court review that tell much about Board/examiner review. The PTAB is Not an Article III Court. If you’ve done any deep analysis of the matter under either Federal Circuit law or other circuit’s cases about other agencies, I don’t know how any broad analogy could be supported.

                  TP: “The examiner can be considered as a finder of fact.”

                  Not in any sense that the term of art “finder of fact” usually carries, at least none that I can think of.

                  TP: “But _that_ review is to establish what the facts are — what the evidence is — before determining if the requisite preponderance of evidence standard has been met. The facts must be established before weighing.”

                  That’s dead wrong. The correct standard of proof has to be chosen first, because the whole point is to influence “establishing facts.” If you apply the steps of establishing a level of proof and fact finding in the wrong order, then you get reversed per se. Leatherman Tool at the Supreme Court about five years ago is a good example,

                  TP: “The Board in an ex parte appeal is internally reviewing the decision of a quasi-judicial official”

                  I’d like to see a cite for that. I don’t thik it’s true, I don’t know of any support for it, and (of what I know) it’s not true for any other agency where the lower-level tribunal is an informal adjudication by non-lawyers. The Federal Circuit has been pretty clear that the PTAB acts as a fact-finder of first instance, applying a “preponderance” standard. (The terms “anew” and “de novo” are both red herrings — they’re standard of review terms. The relevant concept is standard of proof)

                46. Thomas Pain @ July 31, 2019 at 5:26 pm

                  I realized I slightly mis-spoke (mis-wrote) — let me correct.

                  TP: “The examiner can be considered as a finder of fact.”

                  TP: “The Board in an ex parte appeal is internally reviewing the decision of a quasi-judicial official, not using the give-and-take procedure appropriate for examination.”

                  The first sentence is true, to the extent it describes the relationship of examiner and applicant during § 131/§ 132 “regulation time” examination.

                  But it’s not true in the context of § 134 “overtime” appeal. In an ex parte appeal, the PTAB acts essentially as a first-instance finder of fact, evaluating the evidence against a preponderance standard. The examiner is no more than an advocate, or a filter that identified the most-relevant evidence. The PTAB gives the examiner no deference whatsoever — in fact, the preponderance burden favors the appellant.

                  In re Sun, 31 USPQ2d 1451, 1453 (Fed. Cir. 1993) (nonprecedential) (citations omitted): The examiner bears the burden of presenting at least a prima facie case of anticipation. Only if that burden is met, does the burden of going forward shift to the applicant. Once a prima facie case is established and rebuttal evidence is submitted, the ultimate question becomes whether, based on the totality of the record, the examiner carried his burden of proof by a preponderance.

                  In re Swanson, 540 F.3d 1368, 1377, 88 USPQ2d 1196, 1203 (Fed. Cir. 2008) (“In PTO examinations … the standard of proof [is] a preponderance of evidence”)

                  In re Kahn, 441 F3d. 977, 989, 78 USPQ2d 1329, 1338 (Fed. Cir. 2006) (“the Board need only establish motivation to combine by a preponderance of the evidence”)

                  In re Glaug, 283 F.3d 1335, 1338, 62 USPQ2d 1151, 1153 (Fed. Cir. 2002) (“patentability is determined by a preponderance of all the evidence”)

                  In re Epstein, 32 F.3d. 1559, 1564, 31 USPQ2d 1817, 1821 (Fed. Cir. 1994) (“Preponderance of the evidence is the standard that must be met by the PTO in making rejections”)

                  In re Kumar, 418 F.3d 1361, 1366, 76 USPQ2d 1048, 1050 (Fed. Cir. 2005)

                  Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (en banc, precedential)

                  TP: “But _that_ review is to establish what the facts are — what the evidence is — before determining if the requisite preponderance of evidence standard has been met.”

                  That’s dead wrong, 180º backwards. Do you see why? (Are you a lawyer?)

                47. [Mr. Boundy quoting]”TP: ‘The Board in an ex parte appeal is internally reviewing the decision of a quasi-judicial official”

                  [Mr. Boundy]: “I’d like to see a cite for that. I don’t thik it’s true, I don’t know of any support for it, and (of what I know) it’s not true for any other agency where the lower-level tribunal is an informal adjudication by non-lawyers.”

                  Mr. Boundy, it’s an undeniable fact that in an ex parte appeal the Board is internally reviewing the decision of an examiner. See 35 usc 6(b)(1). Not my words, but those of the PTO’s reviewing court, say patent examiners are quasi-judicial officials. Western Electric Co. v. Piezo Technology, Inc., 860 F.2d 428 (Fed. Cir. 1988). Shouldn’t you have flagged your disagreement with the Federal Circuit?

                48. AAA JJ: “Rebuttal evidence includes cites to the applied references.”

                  Wrong, wrong, wrong. Attorney arguments are not evidence. That’s also in Icon Health & Fitness (and many other Fed. Cir. cases). Read. Please.

                49. AAA JJ: “Rebuttal evidence includes cites to the applied references.”

                  Mr. Boundy, do you think that is consistent with the law of the Federal Circuit?

                50. [Mr. Boundy quoting] TP: “But _that_ review is to establish what the facts are — what the evidence is — before determining if the requisite preponderance of evidence standard has been met.”

                  [Mr. Boundy] “That’s dead wrong, 180º backwards. Do you see why? (Are you a lawyer?)”

                  I’m guessing we went to different law schools. I was told that finding of facts came before the conclusions of law.

                51. Thomas Pain @ August 1, 2019 at 1:24 am

                  Do you see that you misquoted yourself? Establishing a burden of proof is not a “conclusion of law.’

                  There’s your third strike. I enjoy coaching and mentoring those who don’t know my field well. I have no time for those who refuse to learn, and get snarky at the precise point of own error. Communication with you is futile, and I won’t try further.

                52. Very much rather unsurprisingly, my shifty historical pseudonym friend has burned through his allotment from David of three strikes — in one topic on one thread.

                  As revealed previously, ‘ol shifty is more interested in gamesmanship (such as engaging pedantically I order to invoke this blog’s Count Filter) rather than any actual inte11ectually honest dialogue.

                  It is not inconceivable that reaching that three strike limit will be viewed by Shifty as a “win,” because that’s one less person that will be trying to keep Shifty honest.

                  Say: La Vee.

                53. Dear Thomas Pain —

                  I apologize. The party with two strikes is A. Lincoln. Your count is now one.

                  Things work like this (reflected in the typical layout of any opinion of any tribunal) —
                  1. establish standard of proof, standard of review, etc.
                  2. examine the evidence against that standard
                  3. find facts based on the comparison of evidence to the relevant standard (stated in a jury verdict form or a “findings of fact” section)
                  4. apply the law to state “conclusions of law”

                  Establishing the standard of proof or burden of proof has to come first. Those standards are not “conclusions of law.”

                  Think about it practically. God is never available to testify to “absolute truth.” We have to use the tools available to imperfect human reasoning as applied to imperfect observation and incomplete evidence.

                  Going beyond what I see in your written communications, I’m going to infer that you misunderstand the word “fact” as it applies in legal proceedings. Everything in this area starts from the practical reality that a tribunal seldom has ice cold “facts” served chilled with a side of lemon. The tribunal is presented with evidence, almost always incomplete and imperfect with confounders and conflicting experts, and has to draw inferences from that evidence. Those inferences are what we call “facts” in legal proceedings.

                  So now do you see how your discussion of 12 hours ago is 180º backwards?

                  Use this as a teachable moment. Both with respect to me and with respect to AAA JJ. (And with respect to respect.) I think AAA JJ is a little off as well (mixing standards of proof with standards of review — it’s self-confusing to use the language of one to analyze the other), but he’s a lot closer to correct than you are.

                54. whew, and S. Morse does not have any strikes yet…

                  Hey Shifty, did you not have even one more that you have used…?

                55. Mr. Boundy, you haven’t answered any of my questions and seem to be veering off into snark, but out of courtesy I’ll try to address some of _your_ concerns.

                  Findings of Fact – yes, inferences drawn from the evidence, such as, Reference A teaches this. I see I was imprecise in typing “establish what the facts are — what the evidence is,” which caused confusion. It should have read “establish what the facts are – what the evidence shows.”

                  I agree that “de novo” is a standard of review term. The term appears in Frye, in relation to a contested finding of fact by the examiner. Frye uses the words properly as a standard of review term. PTAB decisions in contested cases such as IPRs do not contain standard of review terms, because those panels are not sitting as appellate tribunals.

                  In an ex parte appeal, what you call the standard or burden of proof is trivially easy to “establish.” It’s already there, under black letter law. Unpatentability must be shown by a preponderance of the evidence. Meaning, the claims must be shown to be more likely than not unpatentable.

                  But patentability is determined on the _totality_ of the record. That “preponderance” in relation to the ultimate question of patentability concerns weighing the evidence, not the individual elements. Reference A is evidence. Although “preponderance” can be used to refer to individual facts or pieces of evidence, it would be nonsense to say that Reference A has a “preponderance” when determining patentability. Jury instructions in civil cases use the term “preponderance of the evidence” in relation to proving a “fact” but also use the term for determining an outcome when considering all the evidence together. In the latter case, relative weight may be attributed to an individual item when weighing all the evidence together. For example, ex parte appeals rarely have an expert’s declaration, but sometimes have an inventor’s declaration. That declaration is evidence, but might be entitled to little weight in favor of patentability because it is, by definition, self-serving.

                56. Thomas Pain @ August 1, 2019 at 1:19 pm

                  Not bad. Some nitpicks at the edges, but within the range of what one expects to read in blog comments, that’s right.

                  It contradicts significantly what you’ve written before, but as it stands, it’s correct. Thank you for taking the time and care to read and think before writing. That moves things along much more smoothly.

                  Inventor declarations are entitled to more weight than most examiners give them (they’re not self-serving when considered in the broader context — one atom of innocent error can render the entire patent family unenforceable, so there’s an immense incentive to be right) (and when I use a declaration, it’s because the examiner has no substantial evidence–it’s pretty irritating for an examiner to blow off the only extant evidence) but to the degree you discuss it here, there’s nothing objectionably wrong.

                  The statement I objected to was this —

                  TP: But _that_ review is to establish what the facts are — what the evidence is — before determining if the requisite preponderance of evidence standard has been met.

                  No. Preponderance of evidence is the standard, and it comes first, and influences “establishing what the facts are.” Opposite order from what you wrote. But I think your August 1, 2019 at 1:19 pm post retracts that error. And with that retraction, we can move on.

                  It seems you’ve basically come to agree with AAA JJ. Different words, but same destination: the PTAB should review the examiner de novo for preponderance of evidence. I pointed out the analogy, the PTAB in an ex parte appeal stands in basically the same first-instance posture as a district court in a § 145 “review” or most other intra-agency second-level tribunals, which likewise re-apply “preponderance of evidence” de novo. (Whether the PTAB follows the law or not is another discussion.)

                  Does that wrap it up?

                  Thank you.

                  Go and sin no more.

                57. Thomas Pain @ July 31, 2019 at 10:01 pm

                  TP: “Mr. Boundy, it’s an undeniable fact that in an ex parte appeal the Board is internally reviewing the decision of an examiner. See 35 usc 6(b)(1). Not my words, but those of the PTO’s reviewing court, say patent examiners are quasi-judicial officials. Western Electric Co. v. Piezo Technology, Inc., 860 F.2d 428 (Fed. Cir. 1988). Shouldn’t you have flagged your disagreement with the Federal Circuit?”

                  Actually, at least the way you wrote it, it’s eminently deniable. Perhaps each of the two sentences is true. But the juxtaposition leads to a falsity. You’ve taken two completely unrelated points of law and tried to glue them together to support further inferences. They don’t fit that way.

                  The only meaning of “quasi-judicial” that I know of is in the context of a party in a judicial review action seeking the deposition of an agency employee. Morgan v. U.S., Citizens to Preserve Overton Park, and as you note, Western Electric. The term “quasi judicial” has nothing whatsoever to do with intra-agency review.

                  The term “review” is indeed used in 35 U.S.C. § 6. But the term “review” is so broad that it doesn’t answer any useful question.

                  I asked a question earlier, and I’ll ask it again—it will help me frame future answers to be more helpful to you. (a) Are you a lawyer? Admitted in what state (some states are very odd on civil procedure and evidence matters)? Any federal courts? (b) Are you a PTO employee?

                58. Mr. Boundy, I reside in a jurisdiction where lawyers sometimes put two sentences together. The cases such as Western Electric define examiners as “quasi-judicial” due to the nature of their work, which work is the same regardless of whether some party wants something in a cause of action. If it had never occurred to you that an ex parte appeal at the PTAB is an internal review of the decision of a quasi-judicial official, you may thank me now or you may thank me later.

                59. No surprise (at all) that Shifty answers NO questions and instead plays the game of “residing in a jurisdiction” with a NON-law over generalization that implies that David’s legal point is somehow impossibly wrong…

                  Do you really want to pet that dog, David?

                60. Dear Mr Pain @ August 1, 2019 at 6:01 pm —

                  TP: “I reside in a jurisdiction where lawyers sometimes put two sentences together.”

                  Ah. So you are not admitted in any jurisdiction, only a resident.

                  Lawyers understand that to put two sentences next to each other, they have to have some logical or legal connection to each other. If they don’t, it’s just misleading to juxtopose them in a way that implies a consequence that doesn’t exist. Would we agree on that?

                  TP: “The cases such as Western Electric define examiners as ‘quasi-judicial’ due to the nature of their work”

                  I don’t dispute that examiners are “quasi-judicial” based on the nature of their work, at least insofar as they have immunity from deposition. Our discussion is about the consequences that flow from the label. Please don’t change the subject. The label “quasi-judicial” affects immunity from certain law suits, immunity for compulsory testimony, and a few other similar immunities. Interestingly, a half hour of searching while my dinner baked didn’t turn up any conseuqence of the label “quasi-judicial” relating to intra-agency review. The statutes I found only refer to ALJs (and GS-15-and-up competitive service employees), not to examiners. (I am not an expert in the classifications of Title 5 — if I’m wrong please correct me.)

                  I know of not a single case in which the label “quasi-judicial” has any consequence for intra-agency review. Can you point me to one?

                  My second question was, are you a Patent Office employee? The only people I know who misattribute properties to the word “quasi-judicial” are PTO employees.

                  TP: “If it had never occurred to you that an ex parte appeal at the PTAB is an internal review of the decision of a quasi-judicial official, you may thank me now or you may thank me later.”

                  I am completely fine with juniors who don’t know stuff, but want to learn. Half the fun of being a lawyer is mentoring junior associates. But I have a big problem with those that don’t want to learn, and blame me when I’m the messenger of that error, and get snarky with me for trying to help them see a bit more clearly.

                  Your count is now two.

                61. “Lawyers understand that to put two sentences next to each other, they have to have some logical or legal connection to each other. If they don’t, it’s just misleading to juxtopose them in a way that implies a consequence that doesn’t exist. Would we agree on that?”

                  I agree to the extent that some lawyers like to mislead.

                  “I know of not a single case in which the label ‘quasi-judicial’ has any consequence for intra-agency review. Can you point me to one?”

                  No. Where did I say there was such a case?

                  Some say: Rebuttal evidence in ex parte prosecution includes cites by an attorney to the applied references.

                  Do you think that is consistent with the law of the Federal Circuit?

                  Your count is now 2.543.

                62. TP: “Some say: Rebuttal evidence in ex parte prosecution includes cites by an attorney to the applied references.” Do you think that is consistent with the law of the Federal Circuit?

                  Yes. Universal Camera “evidence that fairly detracts” and all that. Well, to nit-pick, it isn’t the cites that are rebuttal evidence, it’s the material cited to.

                63. TP August 1, 2019 at 8:47 pm : “No. Where did I say there was such a case?”

                  TP August 1, 2019 at 6:01 pm: “If it had never occurred to you that an ex parte appeal at the PTAB is an internal review of the decision of a quasi-judicial official, you may thank me now or you may thank me later.”

                  The count reaches three. I will not be responding to you further.

                64. One of the anons say: No surprise [snark snark yada yada yada].

                  Please go amuse yourself. The adults are having a conversation.

                65. “Yes. Universal Camera ‘evidence that fairly detracts’ and all that. Well, to nit-pick, it isn’t the cites that are rebuttal evidence, it’s the material cited to.”

                  So what does Universal Camera say about statements made by an attorney during ex parte examination?

                66. Shifty quips:

                  Please go amuse yourself. The adults are having a conversation.

                  What a riot? Shifty is having his arse handed to him, first by AAA JJ, then by me, then by David, as his gamesmanship is being routed at every turn, and he wants me to “go” and amuse myself?

                  Why would I need to go anywhere? Your propensity for self-flagellation in your “adult conversations” is beyond amusing.

                  You seem to want to think that you are somehow still correct here.

                  Delicious.

                67. Shifty,

                  should_ be able to read a statute

                  You confuse “read” — as in surface read — with “read and understand.”

                  THIS is why David deconstructed your game of merely throwing two sentences together, because while in a larger general sense, doing so is of course correct, in the more particular sense of the context of the discussion on legal matters, David is correct, and YOU are wrong.

                  This is merely one of the games that you play, and it really is NOT all that clever. I suppose it “works” well enough for you in your discussions with fellow examiners when you gather around the break room, but when you deal with actual attorneys who even have a fleeting interest in engaging you, your games falter ever so quickly.

                  I do wonder though – did you make it into law school (and then wash out), or did you not even make it that far?

                68. Thomas Pain says to David Boundy, “If it had never occurred to you that an ex parte appeal at the PTAB is an internal review of the decision of a quasi-judicial official, you may thank me now or you may thank me later.”

                  To which Mr. Boundy asked, “I know of not a single case in which the label ‘quasi-judicial’ has any consequence for intra-agency review. Can you point me to one?”

                  To which Thomas Pain fessed up, “No.”

                  Can’t make this stuff up.

                69. AAA JJ,

                  NOT only is there NO lack of trying by our Shifty friend, his making things up is NOT limited to this rather well-drawn out thread, and most nearly every comment he ventures forth has been shown to be easily challenged.

                  It’s as if he really does think that he can make up anything at all and because he can post it on the internet, it “must be true.”

                70. AAA, what is your case cite for the statement:

                  “In an ex parte appeal, an examiner stands in nearly the same shoes as petitioner’s attorney in an IPR/PGR proceeding. Both are simply advocates, neither is a subordinate tribunal with any claim to deference.”

                  ?

                71. Not satisfied with the extensive beatdowns that he has received to date, our pal Shifty wants to play the Br’er Rabbit game of “I need a case cite for everything.”

                  Too funny.

                  Hey Shifty, do YOU have a case cite for the opposite position that you may want to hold?

                72. I didn’t make that statement.

                  Still waiting for you to cite one case, just one, that even remotely suggests that the Board’s review of an examiner’s findings and conclusions can include any deference.

                  One.

                  Just one.

                  As for your bluster about the Board’s review of an examiner being a review of a “quasi-judicial official” (ooooohhhhhhh!!!!!!!) if you could, as requested by Mr. Boundy, cite one case, again just one, that suggests that that has any effect on the Board’s review please also cite the case.

                  What are the odds that you’re going to respond with cites?

                  (Hint: I’m thinking of a big round number.)

                73. “’In an ex parte appeal, an examiner stands in nearly the same shoes as petitioner’s attorney in an IPR/PGR proceeding. Both are simply advocates, neither is a subordinate tribunal with any claim to deference.’”

                  AAA say: “I didn’t make that statement.”

                  Never said you did. That’s from one of those vanity press papers Boundy was desperate for us to read. Lot’s of statements like that with absolutely no citation to any authority. If there was an authority, it would have been cited.

                  I know of not a single case in which the label ‘stands in nearly the same shoes as petitioner’s attorney in an IPR/PGR proceeding’ has any consequence for intra-agency review. Can you point me to one?

                74. AAA say: “To which Mr. Boundy asked, ‘I know of not a single case in which the label ‘quasi-judicial’ has any consequence for intra-agency review. Can you point me to one?’

                  To which Thomas Pain fessed up, ‘No.'”

                  Mr. Boundy knows there are hundreds of such cases and I’m not inclined to do his work for him. I didn’t realize that the naive (AAA) could be so easily hood-winked, though. I invite you to browse the PTAB decisions for the word “quasi-judicial.” See, for example, the decision in Appeal 2011-006439, reexamination 90/007,233 (6/29/2011) , slip op. at 30-31.

                  You and the anons should go amuse each other when the adults are having a conversation.

                75. should go amuse each other when the adults are having a conversation.

                  TOO funny, coming from the guy who has had his arse handed to him by every one engaging him on this thread, and his non-stop gamesmanship exposed at every turn.

                  and I’m not inclined to do his work for him

                  Even funnier – given as ‘Ol Shifty has been shown repeatedly to be La Z or ig n0r ant or both. Shifty, you are not inclined to do YOUR OWN work, so it goes without saying that you are not inclined to do David’s work (and even funny at that, is that you then want to criticize the work that David HAS done with your banal “demand a cite for everything” game).

                  You are the farthest thing from “grown-up” here. And certainly what you are doing is NOT by any stretch of the imagination having a conversation.

                76. “Still waiting for you to cite one case, just one, that even remotely suggests that the Board’s review of an examiner’s findings and conclusions can include any deference.”

                  Already have. Ex parte Frye. Sorry you do not understand it.

                77. It’s clear why you are working at the PTO. And you’re painfully aware that your schtick won’t translate anywhere else.

                78. “It’s clear why you are working at the PTO. And you’re painfully aware that your schtick won’t translate anywhere else.”

                  Not clear what it is you’re responding to. The two cites you asked for? Or the adult conversation you did not understand?

                79. You’re either 1) an examiner who went to law school and was not confident enough to leave the comfy confines of a job that has no accountability other than churning out counts or 2) a washout from a law firm.

                  Enjoy.

                80. Still not clear what it is you’re responding to. General angst about choosing the wrong career?

                81. Shifty,

                  It is beyond clear that you are holding the wrong end of the stick here.

                  That you seem to actually enjoy these beat downs is why the self-flagellating comments fit you so well.

                82. ” self-flagellating ”

                  Now I get it. The tell when you remember being found out about getting DOE wrong from a mistake in Wikipedia.

                83. Shifty attempting a really BAD game now with the historically contradicted “The tell when you remember being found out

                  The only actual “found out” was YOU being exposed for making things up.

                  Again.

                  And the funny thing is that YOU were the one that made a fuss over things being in black and white, and that very black and white history is what shows you to be wrong.

                  Again.

                  Hilarious.

              2. 18.3.1.1.4.1.2

                Dear Mr Pain @ August 1, 2019 at 6:01 pm —

                I’m fascinated by this, so I’m still reading.

                1. There’s a huge respect in which examiners are not quasi-judicial employees — supervision.

                Cases close to the issues we’re talking about mention statutes that protect ALJs from intrusive oversight or influence by agency heads. E.g., 5 U.S.C. §§ 554(d), 3105, 3321, 4301, 7521; Butz v. Economou, 438 U.S. 478, 513 (1978). But they only protect ALJs, not line “quasi-judicial” employees.

                Examiners are at the opposite end of the spectrum — the Commissioner is obligated to “manage and direct all aspects of the activities” of examiners. 35 U.S.C. § 3(b). There’s no analogous independence statute for examiners.

                2. The label “quasi judicial” is not an all-or-nothing unitary thing. For example, some quasi-judicial employees can deduct legal education expenses, but patent examiners can’t. Martin v. Commissioner, 1965 TC Memo 188 (T.C. 1965)

                The upshot. You’re wrong. Just dead wrong. Your count remains at two.

                1. Statutes for ALJ protection: not relevant to patent examination.

                  “1. There’s a huge respect in which examiners are not quasi-judicial employees — supervision.”

                  That’s an interesting point. There was a time (maybe 1888 to at least to circa Western Electric) when the powers delegated from the Commish made a primary examiner, essentially, the Patent Office. But now, supervision.

                  You’re not dead wrong. I’m upping your count to 2.10.

                2. “Examiners are at the opposite end of the spectrum — the Commissioner is obligated to ‘manage and direct all aspects of the activities’ of examiners. 35 U.S.C. § 3(b). There’s no analogous independence statute for examiners.”

                  Not to pick a nit, but statutes are kinda important. That’s not 35 usc 3(b). It says the Commissioners shall be responsible for the management and direction of “all aspects of the activities of the Office that affect the _administration_ of patent and trademark operations, respectively (emphasis added).” But the examination functions are delegated from the Director. The Director shall “define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.”

                3. A lawyer _should_ be able to read a statute, so I’m afraid your count has fallen to 2.837.

                4. Pardon the double post – the nesting has become cumbersome…

                  Shifty,

                  should_ be able to read a statute

                  You confuse “read” — as in surface read — with “read and understand.”

                  THIS is why David deconstructed your game of merely throwing two sentences together, because while in a larger general sense, doing so is of course correct, in the more particular sense of the context of the discussion on legal matters, David is correct, and YOU are wrong.

                  This is merely one of the games that you play, and it really is NOT all that clever. I suppose it “works” well enough for you in your discussions with fellow examiners when you gather around the break room, but when you deal with actual attorneys who even have a fleeting interest in engaging you, your games falter ever so quickly.

                  I do wonder though – did you make it into law school (and then wash out), or did you not even make it that far?

  7. 17

    Before the USPTO allegedly stopped granting patents to Gil altogether, Gil obtained the patent for the microprocessor and successfully licensed it for hundreds of millions of dollars. It took Gil 20 years and personally drafting and filing an appeal to the Federal Circuit to obtain that patent.

    If you’re interested in learning more about Gil Hyatt’s fascinating story, check out my recent Clause 8 podcast with him: link to clause8.co

    1. 17.1

      Why should we celebrate a later invalidated patent?

        1. 17.1.1.1

          4,942,516.

          There’s a patently-o post with a side note regarding the patent.

          “Gilbert Hyatt is known for receiving a broad patent on the microcontroller. (That patent was later invalidated in an interference with TI). Before the patent was invalidated, Hyatt received $70 million+ in royalties.”

          link to patentlyo.com

    2. 17.2

      You did a podcast on that Hyatt microprocessor claim and never mentioned the public reports that TI proved in an interference that they had invented it first?

      1. 17.2.1

        I quit reading after the “hundreds of millions of dollars.” Fake news.

  8. 16

    Greg DeL—us:

    Why then do we imagine (if the question were ever squarely put to the Court) that the patent act might be tanked on the grounds that it extends protection beyond that which is necessary to “promote the progress of… the Useful Art”?

    I’m not sure that anyone is/was imagining that. The current issue is whether the term(s) “utility” or “useful” in the patent statute (e.g., as used in existing section 101, or as used in the proposed “revisions” to 101 where the terms are “defined” circularly) have meanings different from the basic dictionary definitions.

    It’s a critical question because when the patent system is abused (which it inevitably will be, Greg, if whining entitled and insufferably greedy @ h0les like you get their way) for the purpose of protecting, e.g., “new” facts, “new” inferences, “new” logic, “new” information, “new” correlations, “new” natural phenomenon (by virtue of preventing third parties from observing the natural phenomena), the First Amendment will come into play. At that point, a mere “rational basis” for limiting my First Amendment rights will no longer suffice to justify your disgusting statutory “revision.”

    Of course, you’ll also have to find representatives in Congress willing to spit in the faces of their constituents who (like most normal people who aren’t self-dealing @ h0le patent attorneys like you, Greg) are not going to enjoy being sued for, e.g., making inferences, using logic, etc.

    Note that all of that fighting could be avoided by simply growing up and trying to write a decent statute. But no! @ h0le has to @ h0le. And Greg you are definitely one heck of a greedy @ h0le. Noonan? Bigtime @ h0le. Big Jeans? Gaping @ h0le. Pretty sure Dennis and Jason got the stink on them, too, just for sitting on their hands for years and watching this happen without the faintest attempt to use their tenured brains to inject some thought into the issue. Life is choices, after all. Like I said: no question about how this plays out at the end of the day. Either the patent system itself is totally revamped, or you don’t get your patent on “making an inference in this context.” Mayo v. Prometheus will never be overturned because it requires overturning basic reasoning essential to the patent system, and it involves taking a huge s–t on human decency which even this cr@ ppy country isn’t ready to do.

    1. 16.1

      the First Amendment will come into play

      Mouth that FA some more Malcolm – while we STILL wait for you to present an actual cogent First Amendment argument.

  9. 15

    Bored (taken from the next post): That is why design patent law has a functional doctrine, while utility patent law does not.

    Last time I checked, “utility patent law” has a “doctrine” sometimes referred to as the “printed matter doctrine” which is a subject matter eligibility test that requires testing the “functional” relationship of certain elements in a claim to certain other elements in a claim. Note that the doctrine’s application is not limited to “printed” matter. It certainly could be applied (and undoubtedly has been applied) to address the patentability (as in utility patent) of “designs printed on a manufacture.”

    So again: what does the term “functional” mean in the context of these two systems?

    1. 15.1

      and undoubtedly has been applied) to address the patentability (as in utility patent) of “designs printed on a manufacture.”

      What a
      L
      I
      E

      It’s not like the exceptions to the judicial doctrine of printed matter have been shown to be one of your constant source of untruths and obfuscations or anything like that….

      1. 15.1.1

        Consider the following utility patent claim:

        “A wagon, wherein said wagon comprises [description of non-obvious design] imprinted on one side of the wagon.”

        The wagon is useful. It’s new. It’s also non-obvious, because it comprises a non-obvious element. 112 is satisfied.

        Does anyone besides Bildo the Br@inless Sh-tstain see a problem with this claim? If so, what is the problem?

        1. 15.1.1.1

          Considered that “following” of yours…

          And it is asinine.

          Maybe reply with something cogent?

          1. 15.1.1.1.1

            “Maybe reply with something cogent?”

            “cogent” means wrong?

            Do. you. see. a. problem.with. the. claim. ?

            Just curious.

            1. 15.1.1.1.1.1

              I. see. a. problem. with. Malcolm’s. asinine. supposition. that. wagon. on. its. own. is. new. and. nonobvious. even. before. Malcolm. attempts. his. obfuscation. with. printed. matter. – don’t. you.?

              1. 15.1.1.1.1.1.1

                Read again. The wagon is not alleged to be new and non-obvious “even before.”

                1. The wagon is useful. It’s new. It’s also non-obvious, because it comprises a non-obvious element.

                2. See reply at 9:22.

                  You really should do some of your own legwork here, my shifty historical pseudonym friend as you appear to be doing nothing more than your usual lazy and/or ig n0r ant commenting.

                3. Reply at 9:22: “The wagon is useful. It’s new. It’s also non-obvious, because it comprises a non-obvious element.”

                  And what is that non-obvious element?

                4. Congrats my shifty friend – your attempt to eliminate by engaging the count filter has silenced my green avatar.

                  You selected the post at 9:21, and NOT the post at 9:22.

                  Try again.

                5. The “post” at 9:22 is a link to somewhere else.

                  You say: “The wagon is useful. It’s new. It’s also non-obvious, because it comprises a non-obvious element.”

                  So the question is: What is that non-obvious element?

                6. (Pardon the Potential rePeat)

                  Yes, it is a link to somewhere else. What of that?

                  As I have already noted, my lazy shifty friend, you really need to do some of your own legwork.

                7. “Yes, it is a link to somewhere else. What of that?”

                  I didn’t appreciate that my shiftless snowflake friend would consider “what is that non-obvious element?” to be such a killer question.

                  For a moment I thought one of the anons was going to actually attempt to defend the merits of one of his statements. Silly me. Sorry for wasting everybody’s time.

                8. For a moment I thought one of the anons was going to actually attempt to defend the merits of one of his statements. Silly me.

                  Everyone makes mistakes now and again. The important thing is to learn from them.

                9. Hmmm,

                  And I thought that “High Road” Greg professed to NOT being able to see any of my posts…

                  Was that (gasp) a
                  L
                  I
                  E
                  ?

                10. “And I thought that “High Road” Greg professed to NOT being able to see any of my posts…”

                  You are the poster child for faulty empiricism yet again, Blue anon. He obviously saw and commented on my post. That does not mean he saw any of yours.

                11. My shifty historical pseudonym friend, my retraction/modification got caught up in your “deplete the posts – hit the Count Filter” game.

                  It’s up to the editors to release that post.

                12. Not sure how “awkward for you” fits…

                  But your “game” is clear and this is but another example of how the Count Filter is games by those like you who are more interested in obfuscation than in actually discussing items on the merits.

                  Say: “La Vee.”

                13. “more interested in obfuscation than in actually discussing items on the merits.”

                  You funny. So the question on the merits is: What is that non-obvious element?

                14. That is NOT the question on the merits. The question on the merits is why is Malcolm’s “pet” claim asinine.

                  The linked item explains this.

                15. “That is NOT the question on the merits.”

                  In response to a query, you make up your own questions for yourself? So here’s another question on the merits: What is that non-obvious element? The linked “item” does not “explain” this.

                16. So here’s another question on the merits:

                  Still not on point.

                  Maybe you should try to grasp the larger picture. It actually may be easier for you (and we both know that your penchant for being la Z goes well with “easier”).

                17. You want softball when the game is volleyball…

                  Yet again, take a step back and look at the big picture.

                18. You of course know that I do not slink.

                  That would be your specialty.

                  My how you flail in the sun light.

                19. “You of course know that I do not slink.”

                  You would appear to be so much smarter if you did. BTW, What is that non-obvious element?

                20. Ok, I looked at the big picture.

                  So, What is that non-obvious element?

                  Do not be afraid.

                21. Oh, there’s no fear on my part – and the colloquial use of “look at” means to look at and understand.

                  You are not there yet, as when you are there you would not be the doush that you are (well, ok, you might still be that doush, but you would understand the answers that I have already given to you).

            2. 15.1.1.1.1.2

              This is a ridiculous discussion. The design is non-functional and thus any elements reciting the design need not be considered.

              1. 15.1.1.1.1.2.1

                any elements reciting the design need not be considered.

                And why is that? That “legal reasoning” (dissecting a claim) is nowhere in the patent statute. 103 states the exact opposite, in fact. Was there some judicial activist decision that created this exception to the rule against “claim dissection”? If so, where did that decision come from and what was the rationale for creating the exception?

                The design is non-functional

                Indeed. But there’s no rule against reciting a non-functional element in a claim. Think a little harder. You’re getting warm!

                1. You ask why when all of this has already been explained to you.

                  You ran away from that explanation, so your questions here only show bad faith from you.

                2. I can’t remember the cite for the non-functional elements not needing to be considered. But there is precedent for this.

                  It has been a long, long time since I’ve dealt with this issue.

              2. 15.1.1.1.1.2.2

                “The design is non-functional and thus any elements reciting the design need not be considered.”

                So non-functional recitations need not be considered. Huh?

                1. ASCII-encoded source code in assembly language for a specific processor, the ASCII-encoded characters residing on a magnetic disk. The source code need not be considered?

                2. I do not think that it was In re Seid.

                  In re Seid, 161 F.2d 229 (C.C.P.A. 1947)

                  Are you thinking of this pincite:

                  The particular shape and arrangement of the upper part of the body in appellant’s figure, including the arrangement of the arms, are also emphasized by counsel for appellant. Those matters, as the board properly held, relate to ornamentation only and have no mechanical function whatsoever. They cannot, therefore, properly be relied on here, as the appealed claims are not directed to a design but are structural claims.

                3. I asked you.

                  Was that the pincite that you were thinking of when YOU suggested the case?

                4. A. Lincoln–the source code is functionally related to the processor.

                  If there is a design added that is non-functional it is also obvious.

                5. “A. Lincoln–the source code is functionally related to the processor.”

                  There is no “processor,” NW. The code resides on a magnetic disk. In what way is the code functionally related to the substrate (i.e., magnetic disk)?

                6. In what way is the code functionally related to the substrate (i.e., magnetic disk)?

                  In the way that matters: the substrate serves to functionally give life and support to the “writing” such that the writing fits into the exceptions to the judicial doctrine of printed matter.

                  Really, my shifty historical pseudonym friend, had you bothered at all with the easier larger picture, you would not need ask such silly questions (as well, lacking such functionality, software would not be a mere design choice of wares for the computing arts, and no one would bother with software and we wouldn’t be having this lovely conversation.

                7. “the [magnetic disk] substrate serves to functionally give life and support to the ‘writing’ such that the writing fits into the exceptions to the judicial doctrine of printed matter.”

                  I’m sure NW must have a better answer. But in your estimation, does paper “functionally” give “life and support” to the “writing” on it? Why or why not?

                8. A. Lincoln

                  Would you consider a gear claimed alone to be non-functional? Or a component. We both know that software is a component.

                9. Before you shift to “just paper,” do you first understand my answer?

                  (Thinking that Night Writer must “have a better one” indicates that you do not)

                  Do you understand what the exceptions to the judicial doctrine of printed matter are and why they exist?

                10. “Would you consider a gear claimed alone to be non-functional?”

                  No.

                  “Or a component.”?

                  Depends on the component.

                  It was too tough a question for Green anon. NW, in your estimation, does paper “functionally” give “life and support” to the “writing” on it? Why or why not?

                11. Ah, my shifty friend, you claim “too tough for someone else” as you are the one that shirks the point at hand to be understood before you attempt to shift.

                  I’d insult you with a comparison to Malcolm’s Accuse Others meme, but instead let’s just have you stay on point for a moment, eh?

                12. As for ONE answer to your question on mere paper and writing, check out: in re gulack 703 f.2d 1381 link to casetext.com

                  (or you might be more familiar with the MPEP at MPEP 2111.05 Functional and Nonfunctional Descriptive Material [R-08.2017]

                  USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Id. at 1384, 217 USPQ at 403;

                  You are welcome.

                13. Depends on the component.

                  I see where you want to prevaricate, but do you have a cite for this view that it depends on the component?

                  (After all, you seem to think that having a cite for most anything is somehow required — even a cite for the equivalence of “de novo” and “anew” (in regards to your gamesmanship with AAA JJ above at 18.3.1.1.4.1 – See also link to thesaurus.com — for your cite)

                  You are welcome.
                  Again.

                14. You could learn a lot from NW, anons. When it’s too tough a question, just slink away. One does not make such a fool of one’s self.

                15. As it is quite clear that you are the f001 here — your silence on the points I present, while engaging in the mindless Malcolm meme of Accuse Others — it is quite delicious to see you so.

                  So thanks for that. Come again soon.

                16. Still silent, my shifty friend?

                  Malcolm’s memes do not work for him, why in the world would you think that they would work for his little toy jester?

                17. “Still silent, my shifty friend?”

                  Noop, my shiftless snowflake friend. Just waiting for Night Wiper’s answer.

                18. You are silent as to my questions to you — which do not depend on Night Writer coming all the way back to this thread (a thread that you have mucked up tremendously, AND have had your arse handed to you by nearly every one deconstructing your game-playing here).

        2. 15.1.1.2

          MM, I wish you were wrong on “non-obvious”. I mean, why should a “non-obvious design” confer patentability? Utility patents are not a reward for creativity in wallpaper design. Creativity in wallpaper design is not evidenced by the number of patents held by the designer.

          In other words, what do you say to the notion that just as “new” has a special meaning in the context of patentability, so does “non-obvious”?

          I allude, of course, to the situation in Europe, where the only kind of inventiveness that “counts” towards patentability is the kind that manifests itself in the form of a combination of technical features that solves a “technical” problem. Your wagon is new, useful, enabled, but not non-obvious because it offers no solution to any problem under the sun that is “technical”.

          1. 15.1.1.2.1

            We’re talking about US patent law, in which case the claim has a f@tal subject matter eligibility issue because it illegally protects an ornamental design in the prior art context of an old wagon.

            The analytical steps for reaching this conclusion are indistinguishable from the steps used in the EP to tank the claim: identify the prior art, see what is “new” in the claim, and assess whether the “new” matter is ineligible for utility patent protection on it own terms (e.g, is it an abstraction, information, logic, etc, (in which case it is also non-technical)).

            1. 15.1.1.2.1.1

              … protects an ornamental design…

              Cf

              … following utility patent claim… It’s also non-obvious, because it comprises a non-obvious element

              As I said – the set-up here is asinine. Malcolm sets up a straw man in complete disregard for counter points LONG put in front of him, pretending that the topic has not ever been broached — and resolved.

              ALL that he is doing is playing the @$$.

              1. 15.1.1.2.1.1.1

                Yes, I am making an @ss out of you, Bildo.

                1. I grant that THAT may be what you “think” (or feel) that you are doing — but you would be sadly mistaken in those thoughts and feelings — the actuality is that YOU are the @$$.

                  As usual.

                  You have offered nothing new – and ALL of your tripe has been countered a very long time ago.

              2. 15.1.1.2.1.1.2

                Malcolm sets up a straw man in complete disregard for counter points LONG put in front of him

                In fact, I set up a simple hypothetical claim to prove my point that there is (at least ostensibly) a “‘functional” doctrine'” in utility patent law. That “doctrine” is recognized by intelligent people everywhere (e.g., attorneys, judges, etc., — pretty much everybody except the patent maximalist crowd) to be a subject matter eligibility “test” in disguise and it works to prevent the claiming (and protection thereby) of “new” non-“functional” abstractions (including ornamental designs) scrivened into the context of otherwise eligible but old (i.e., in the prior art) non-abstract subject matter.

                None of this is difficult conceptually for most people with at least average intelligence. Heck, I’m 100% sure that even Dennis Crouch understands it perfectly even if he is too afraid to discuss the issue himself (kind of strange for a tenured professor but … we live in strange times).

                1. What a rant.

                  Your biggest problem (on this topic) is that you yourself simply get things wrong ALL THE TIME when it comes to the utility patent world and the exceptions to the printed matter doctrine.

                  I made this extremely easy on you by laying out (in direct and simple English terms) a Simple Set Theory explication and invited you to discuss that explication (in an inte11ectually honest manner).

                  You outright refused to engage.

                  In other words, and to be colloquial:

                  You
                  Ran
                  Away

                  And you are still running.

                  For all of your bluster then and even calling out others as “too afraid,” it is YOU Malcolm that have been afraid all along.

                  No surprise then really to see you use your number one meme of Accuse Others, even as you avoid the points that I have long presented to you.

            2. 15.1.1.2.1.2

              MM, you claim that the approach at the EPO is “indistinguishable”. I disagree. I think I can distinguish it.

              Determining whether or not a particular feature in the claim is “new” relative to the entirety of the art is unfair to the inventor. The EPO does not do that.

              Instead, the EPO (in its obviousness enquiry) compares the claim with one single disclosure within the art, namely, D1, the most promising, most realistic prior art starting point for a PHOSITA who is deemed to be addressing the subjective technical problem identified in the specification as filed. Into the characterizing part of the claim goes the feature that delivers novelty over the disclosure of D1.

              Consider your wagon claim in the EPO 2-part c-i-t form. All features are in D1 (a prior art wagon) except the design on its fabric walls. But it turns out that the design is of itself not new. An embodiment of it covers the walls of a hotel ballroom in mid-town New York City. But on the wagon, advancing westwards across the North American prairie, it camouflages the wagon unexpectedly effectively and so protects the wagon surprisingly well from surprise attack by air-to-ground missiles fired by the indigenous peoples of the prairie.

              The prior published design is ornamental. Is it an invention to paint a known wagon with a known ornamental design? It is not the design as such that is the invention. Rather, it is the combination of technical features recited in the claim as a whole. What matters is whether that claimed combination solves a technical problem and whether the state of the art contained a hint or suggestion to solve the problem with the claimed feature combination.

              1. 15.1.1.2.1.2.1

                … or for a more realistic example, we can go with blue racquetballs…

                1. For the benefit of other readers, that hypo is as follows:

                  Inventor discovers that racquetball players can discern the flight of the ball against the white wall of the court fractionally faster if the ball is blue (rather than the conventional black). The claim reads: Racquetball ball, characterized in that its colour is blue.

                  The application as filed identifies the problem as how to pick up the flight of the ball faster, and includes comparative data to render it plausible that the claimed subject matter solves that problem.

                2. Thanks MaxDrei,

                  I hit the racquetball into the court here partly because Malcolm had a conniption the last time this topic was raised with a “mere color” example of a “functionally” driven item being a “surface effect.”

                  Also, while your example was indeed colorful, it was a touch beyond the “everyday” and some of our less imaginative friends may not have been able to follow along.

                3. My memory fails me. Was it not Random Guy who most vociferously resisted the notion that a blue squash ball might be patentable?

                  Good of you to jump in, anon, in case readers were not getting my hypo. Mind you, I’m not sure anybody is left now, who is following our dialogue. Not even MM. Never mind though, eh.

  10. 14

    Dennis said: “My take here is that the PTO should be able to reopen prosecution when it acts reasonably

    Dennis and the commenters below appear to miss the main point here; I have written about PTO diverting appeals away from the Board in 2010. See link to bit.ly.

    This is not about the PTO not acting “reasonably” – it is about the PTO rewriting the statute. MPEP § 1207.04 does not operate to merely reopen prosecution — it requires the examiner to make a new rejection. Following the close of prosecution (application under appeal), an examiner cannot reopen prosecution without a new ground of rejection. This new rejection is in addition to the at least two that were made as required by the “twice rejected” statute in § 134(a) before the appeal brief is filed. Therefore, any and all appealed applications subject to the operation of MPEP § 1207.04 cannot but have at least three rejections before the appeal can reach the Board. The PTO thus contravenes the statute in § 134(a) by rewriting it as “An applicant for a patent, any of whose claims has been at least thrice rejected, may appeal…. Neither we nor the PTO get to decide what is “reasonable” – Congress did it for us in § 134(a).

  11. 13

    Probably a dumb question, but why does Hyatt want to get to PTAB anyways? Is he hoping that the reversal=allowance tradition will hold in his case?

    1. 13.1

      Maybe it does not hold, but he has no hope otherwise. He might lose at the PTAB, or he might lose at the CAFC, or he might lose at the SCotUS. If he does not at least get to the PTAB then he has already lost, for all intents and purposes.

      1. 13.1.1

        Let’s say he wins a full reversal at PTAB. The PTO at that point will issue the same new rejections they would have issued if they managed to reopened before PTAB. Same result, a few extra years prosecution.

        1. 13.1.1.1

          Ben,

          There are procedural differences in re-opening prosecution after appeal and an examiner effectively removing appeal with the self-re-opening.

          For bl00dy sake, read the linked brief at post 8.

          1. 13.1.1.1.1

            Could you point to the procedural differences? All I see is the PTA issue, which is not relevant (Post 13: “why does Hyatt want to get to PTAB”)

            1. 13.1.1.1.1.1

              Can you read the brief, first?

              1. 13.1.1.1.1.1.1

                I skimmed it earlier in response to your comment. I suppose I should have said “All I see in the brief is the PTA issue”. Also, I’m assuming you’re referencing the brief at 7 rather than 8 as stated.

                1. I am referencing the brief throughout.

                  Please do not skim and read the full brief conscientiously.

                2. It didn’t occur to me that this was another one of those times where you “see” concepts in a document that no else sees, and then dance around requests to specifically identify the concept in the document.

                  I am sincerely embarassed for thinking you might have had a point here.

                3. Ben, seriously?

                  YOU are the one that seems to not be able to see, and you want to try to spin this as being a “me” thing…?

                  Criminy. Read the brief. It is exceptionally well written.

                4. Lol – obviously Malcolm does his Derp Dance with his typical mindless ad hominem.

                  Had you bothered at all with the brief (even skimming it), you would have recognized how off Ben is here.

                  Maybe — just maybe — you can try to inform yourself before you aim for having more posts deleted for being inappropriate…

            2. 13.1.1.1.1.2

              Reopening of an appeal only requires the supervisory patent examiner to sign off.
              Issuing a new rejection after the ptab has overturned an examiner requires TC director to sign off.
              in my experience SPEsAre quite willing to sign off on reopening. directors only if you have a perfect 102. May not be the case in this TC with this inventor.

              1. 13.1.1.1.1.2.1

                “May not be the case in this TC with this inventor.”

                I think we can be confident that whatever TC Director oversees the Hyatt Unit would do exactly what the PTO Director said to do responsive to a PTAB reversal.

              2. 13.1.1.1.1.2.2

                This of course is discussed in the excellently written brief that I provided a direct link to.

                The brief that Malcolm clearly has not bothered to read, the brief that (let’s upvote Malcolm in the DISQUS days) Ben merely only deigned to skim, and to whose inane comments Mr. High-Road-Inte11ectual-Coward Greg snipes from the sidelines with a “lessons learned” smart-@$$ comment.

                This is not a coincidence that my detractors struggle with a point so clearly evident, and cannot get out of their own way.

  12. 12

    A win for the tax-cheat Hyatt is a loss for everyone else.

    1. 12.1

      This is the type of inane “follow-on” comment that is generated by the Malcolm blight of focusing on ad hominem.

      Squirrel, look up Sir Thomas More.

  13. 11

    Just out of curiosity, has anyone experienced a D.C. judge attempting to withdraw his or her final decision to raise a new issue after an appeal is filed?

  14. 10

    “Odd thing to admit if they delay is intentional and continues to this day.”

    It looks like you’re focusing on whether the Office is presently delaying prosecution while Greg appears to be talking about whether the Office has ever delayed prosecution.

    1. 10.1

      11 was meant to be a response to 1.2.1.1

    2. 10.2

      They could have played reopen-reject-appeal forever…

      I am not following you. What do you mean “could have.” That appears to be what they are doing.

      I took that as an assertion that the office is still doing it (i.e. these appeal withdrawals are intentionally delaying prosecution).

  15. 9

    There is supposed to be patent term adjustment for successful appeals. Did any of the briefs address the Patent Term Adjustment considerations of 1) merely reopening prosecution as though the appeal never happened (which is what the PTO advocates for) versus 2) a PTAB decision which dismisses and remands the appeal back to the examiner for further prosecution? Both approaches end up at the same procedural posture, but the PTO approach seems to have the danger of depriving a patent applicant of patent term adjustment for appealing an erroneous rejection.

    1. 9.1

      I take your point about the PTA implications, but that subject is outside of this case. Hyatt’s applications are all from before the existence of PTA. If any of them issue, it will issue with 17 years of term from grant, no more, no less. Nothing about successful or unsuccessful appeal will change that.

      1. 9.1.1

        Yes, but I saw nothing explicitly in the Federal Circuit opinion or implied by its reasoning that limited the decision to only be applicable to those types of applications. If the Federal Circuit decision stands as is, it will be settled law that the examiner can reopen prosecution after an appeal brief has been filed regardless of whether it deprives the applicant of deserved PTA or not.

        1. 9.1.1.1

          The link to the brief that I posted at 8 touches upon PTA as a collateral issue in regards to the evolution of a secondary Quid Pro Quo vis a vis compact prosecution (and explains why the prior path of maintaining an appeal when a new rejection was added during appeal processing or returning to the realm of the examiner for continued prosecution was the choice of the applicant).

          Those paying attention here (instead of being cloyingly polite) should easily recognize the bureaucratic and nigh despotic “we do what we want to do” tones of the examiner posting with the pseudonym of RandomGuy as part and parcel of the problem.

          The plain fact of the matter is that the administrative agency is self-serving in these conditions as opposed to actually being efficient and accountable.

          As the brief illustrates, it would be a Red Herring to focus merely on the character of the particular person fighting the uncontrolled Office tactics that effectively pre-empts a completion of the right of appeal.

          Further, it is no accident that the blog’s single biggest blight once again shows his cognitive dissonance by being against patentees (his supposed clients) and basing his views on a character attack (ad hominem).

          1. 9.1.1.1.1

            “the administrative agency is self-serving in these conditions”

            I think you meant all conditions. Gubmit as repeat phenomenae (non-standard double plural).

  16. 8

    As a kind-of-related note – There should be a pilot program where Examiners are notified of oral hearings and time given to prepare and participate in them if they so wish. I’m sure attorneys would relish the ability to debate non-lawyers and hard-science people, and Examiners would be able to show the strength (or lack thereof) of command of the material.

    1. 8.1

      It’s extremely rare for an examiner to request it, but the rules and procedures allow the examiner to present arguments at an oral hearing (MPEP 1208, “PARTICIPATION BY EXAMINER”). A follow-up by the examiner might be indicated because there have been times at the Board (BPAI and maybe PTAB) where the administrators tended to ignore or overlook such requests. I think examiner participation would always be helpful for the panel.

      1. 8.1.1

        It’s extremely rare because there’s no mechanism for the examiner to be informed of anything. If you write down which of your applications have been appealed and randomly check them occassionally you’ll see notices about oral hearings, but I don’t think they ever say exactly when they are. Regardless, you’d have to check your appeals yourself.

        There’s a ton of automated systems that would be capable of generating a web conference, sending an email and confirming your attendance or lack thereof, I don’t understand why they aren’t used.

        1. 8.1.1.1

          “It’s extremely rare because there’s no mechanism for the examiner to be informed of anything.”

          Not exactly. The public (including the examiner) is informed of hearing schedules at least a month or two in advance. USPTO website, PTAB page under “Hearings” and “Hearings Schedule.”

      2. 8.1.2

        I’m an examiner. I have tried that, followed the MPEP requirements, and yet I was denied the ability to participate. Thankfully there was no need as the Applicant’s attorney hadn’t actually read the final rejection or the examiner’s answer, and at least one of the judges had, resulting in the rejection being affirmed and some hilarious exchanges in the transcript of the hearing I read later.

        1. 8.1.2.1

          Even if not arguing, in virtually all cases the examiner is free to sit in the hearing room as a member of the public. It’s an unfortunate truth that in ex parte hearings, too often, the PTAB panel knows the record better than the attorney. In hearings for post-grant proceedings, the level of advocacy is uniformly excellent.

          1. 8.1.2.1.1

            It’s an unfortunate truth that in ex parte hearings, too often, the PTAB panel knows the record better than the attorney.

            Do you have a cite for that “truth?”

            In hearings for post-grant proceedings, the level of advocacy is uniformly excellent.

            Did you mean to contradict yourself, or is your version of “excellent” along the lines of your first (attempted) denigration?

            1. 8.1.2.1.1.1

              Anon, these two generalized observations are not necessarily inconsistent. Too many ex parte PTAB appeals [even among the minority requesting oral arguments] are inadequately funded and/or have attorneys with little judicial oral argument experience, vis a vis post-grant proceedings that almost all have had large funding, extensive briefing, and attorneys experienced in contested cases and oral argument practice, because they are contesting the validity of patents of known financial importance.

              1. 8.1.2.1.1.1.1

                Paul -in context – Shifty is wrong.

                YOUR insight may well be different, but your insight is NOT how Shifty posts.

              2. 8.1.2.1.1.1.2

                PFM, I agree with your assessment as to why there’s a difference in advocacy levels, and in addition, in contested cases, the attorneys tend to be more careful because they’re up against several experienced, adverse counsel who are eager to point out any errors. I was providing that perspective to the examiners, who would not necessarily know about the differences in the proceedings, but then, neither do the anons.

                1. I was providing that perspective to the examiners, who would not necessarily know about the differences in the proceedings, but then, neither do the anons.

                  Total B$.

                  If you were, Shifty, maybe you could have spelled out the difference as did Paul, instead of — as YOU did — make a bland and on its face contradictory statement.

                  ESPECIALLY if (as you now claim), you were trying to teach examiners who would not recognize multiple levels.

              3. 8.1.2.1.1.1.3

                A further add, there was a time a few _experienced_ ex parte counsel did not care they were not prepared because nobody knew. Now, though, a court reporter and a transcript.

                1. That’s a pretty tall accusation (not the lead rod which is the ethical angle)…

                  Do you have a cite for these “facts” of yours, Shifty? Or are you merely mouthing things that sound good to you?

                2. You and I and everybody else know, slow cousin grey anon, you’re unable to answer what a “lead rod” might be or how it might in this universe relate to some “ethical angle.” So, . . . Bye.

                3. “rod” —> weird auto correct for “aim.”

                  Not that this correction will prompt you to actually respond on point, given the number of points put to you on this thread alone in which the “Black and White” here show you merely slinking away, my shifty historical pseudonym friend…

                  But hey, instead of being on point to the substance, why not lob a mindless insult (or perhaps more accurately, a mindless attempt at an insult) at the person making the post, since the game of mindless ad hominem is a favorite of yours…? )

                4. … and the ethical angle of making unsubstantiated accusations that merely sound good to you is SOOOO difficult to figure out, isn’t it? If you really have a difficult time figuring that out in this universe, may I suggest that figure it out BEFORE you denigrate anyone.

    2. 8.2

      The misinformation and obfuscation here from Random is the implication that the only “hard science” people are the examiners and that the patentee side would prefer a more “slimy” battle of law.

      Random misses with the FACT that the topic is one of BOTH Law and “hard science,” and that the patentee side has both.

      1. 8.2.1

        The misinformation and obfuscation here from Random is the implication that the only “hard science” people are the examiners and that the patentee side would prefer a more “slimy” battle of law.

        There’s nothing slimy about it. The examiner has a presumption in his benefit when he’s being appealed on fact issues, and often is not a lawyer. Of course a lawyer would want to force the examiner to defend on the law on his feet. Just like a faster baseball team prefers to play in a large park against a power team – neither is “right,” one just has a natural advantage.

        1. 8.2.1.1

          The examiner has a presumption in his benefit when he’s being appealed on fact issues…

          Is this correct? A “presumption” is nothing but a mechanism for assigning evidentiary burden. To say, then, that there is a “presumption” in favor of the examiner on a disputed fact question is to say that if an examiner say “X” without citing any evidence to back it up, and the applicant responds to the Board without citing any evidence, but says merely that “the examiner’s assertion of [X] is unsupported by any actual evidence,” that the Board is obliged to sustain the examiner’s fact finding. Are you aware of any case that holds this? The assertion sounds wrong.

          1. 8.2.1.1.1

            “The examiner has a presumption in his benefit when he’s being appealed on fact issues…

            Is this correct? ”

            No. The Board precedential opinion of Ex parte Frye — Kappos was on the panel — clarifies that in an ex parte appeal the contested aspects of the rejection are subject to de novo review.

            1. 8.2.1.1.1.1

              Thanks. That is a very helpful answer to my question.

            2. 8.2.1.1.1.2

              Thanks. That is a very helpful answer to my question.

            3. 8.2.1.1.1.3

              There’s plenty of better precedent than Frye. The APA. Warner. Oetiker. Etc. But it was nice of Mr. Kappos to leave us Frye.

            4. 8.2.1.1.1.4

              “Ex parte Frye ”

              The most hilarious patent prosecution comedy of errors on all sides ever. Always good for an lol to look at the pros history.

        2. 8.2.1.2

          You misapprehend my use of the word “slimy.”

          Certainly, there IS nothing slimy about knowing and applying the law. It is your insinuation though that applicants merely have the “law” part while examiners de facto have the fact part that I was drawing attention to.

        3. 8.2.1.3

          “Just like a faster baseball team prefers to play in a large park against a power team – neither is ‘right,’ one just has a natural advantage.”

          You don’t know anything about baseball either.

    3. 8.3

      They would never show up unless there is a count to be had.

      1. 8.3.1

        +1

    1. 7.1

      “And the Patent Office’s fee structure likewise does not offer
      management incentives to ensure that every round is as
      complete and efficient as possible.”

      Gil is very right on the money here. It’s almost comical how much they seem to want the worst OAs sent out possible to try to save money on the front end (because if they actually require full stupendously great OAs from everyone then they’ll have to up hours per BD, or else lose many an examiner, both of which actions which will apparently cost them millions that applicants in some arts don’t want to pay at present according to the higher ups). And that might be the correct choice to make for now, but long term that’s going to have to be changed most likely.

  17. 6

    The crux of the matter is: what does “acts reasonably” entail?

    Does reasonableness include an unfettered and unending ability to re-open, for any reason whatsoever? Or should this challenge by the examiner herself be held to a type of “or could have been” estoppel that the Congress has seen to put upon non-administrative challenges?

    Does the “good” of being able to re-open (for example, to alleviate woes that Greg identifies) swallow the “better” of forcing an examiner to be conscientious the first (or first several) times through? Sure, it may “be reasonable to on rare occasions have a second bite at the applied. or, heck, even three strikes (and your out), but NONE OF THAT is actually being defended. What IS being defended is the notion of unlimited – and for any reason whatsoever – re-openings.

    That being said, the brief of the government does paint a different picture (as one would expect).

    Interestingly, the government states with a straight face: “And in light of the current procedures and resources committed to resolving Hyatt’s patent applications, any such assertion would be too speculative to establish Article III standing. The petition for a writ of certiorari should be denied.

    Correct me if I am mistaken, but has not the District Judge chastised the USPTO for the LACK of showing ANY progress (at all) in the same view of those “resources committed to resolving”…?

    And then (again ) at pages 16-17 the Government CLAIMS that their tactics ARE providing a “facilitate[d] effective examination of the relevant patent applications.”

    Further, the Government’s arguments on things “equivalent” (pages 11-14) just does not hold water. What is at issue is the effective ability to forever forestall Appeal Review. NO amount of “equivalence” has piled higher and deeper can justify that result as that result — on its face — carries NO sense of reasonable restraint.

    As to “relying on existing checks” – the mechanism the Government advocates, yet again, the plain facts of the matter clearly show that such a mechanism DOES NOT WORK.

    1. 6.1

      Does the “good” of being able to re-open (for example, to alleviate woes that Greg identifies) swallow the “better” of forcing an examiner to be conscientious the first (or first several) times through? Sure, it may “be reasonable to on rare occasions have a second bite at the applied. or, heck, even three strikes (and your out), but NONE OF THAT is actually being defended.

      Good, as that is the vast majority of reopenings, including this one.

      What IS being defended is the notion of unlimited – and for any reason whatsoever – re-openings.

      True, but let’s put it in context here – Nobody is suggesting that so long as the Office has a good-faith basis for asserting a rejection, that that rejection cannot EVENTUALLY be asserted. Specifically, nobody is arguing that the the Office couldn’t 1) allow the appeal to go through and 2) issue a new ground of rejection after the Board reverses the appealed rejection. Given that nobody is arguing that the Office can’t do that, the context really reframes the question as “If the office has a good faith basis for issuing a different or better rejection, why should the rule be that the Board waste time and resources to decide a legally moot point?”

      Interestingly, the government states with a straight face:

      What is more likely to be true based on the public record – that Hyatt has been diligently trying to prosecute his claims for 25+ years and only now feels he has lost enough hundreds of millions of dollars that he is fed up; or that Hyatt is seeking to force the appeals to go forward because he doesn’t want any applications subject to the “elect a reasonable number of claims” requirement from a few years ago?

      As to “relying on existing checks” – the mechanism the Government advocates, yet again, the plain facts of the matter clearly show that such a mechanism DOES NOT WORK.

      This conclusion, of course, relies upon your view that the Office is intentionally delaying prosecution, correct?

      1. 6.1.1

        Let’s dissect this in reverse, Random.

        This conclusion, of course, relies upon your view that…

        No. Absolutely not – not in the least bit. AS I MENTIONED, the conclusion follows from the plain facts of the situation.

        doesn’t want any applications subject to the “elect a reasonable number of claims” requirement from a few years ago?

        Are you inserting an illegal move to limit claims – after the prescribed claim count fees have been paid, AND wanting THAT to serve as some type of “righteous” position (or leastwise, as an indictment for not pursuing what an applicant HAS A RIGHT to pursue)…?

        That’s two strikes on you being nothing but an arse.

        True, but let’s put it in context here

        A foul tip and then a third strike. The admission of truth is something that you probably just could not find a clever dig at, but then you misfire by attempting to “put in context” when WHAT you are actually doing is moving the goal posts and taking things OUT of context. Your whole “after appeal” path has other considerations NOT IN PLAY in the immediate circumstance. Further, and as I indicated to Malcolm, you should take the time to read the brief that I linked to at post 8. It is a painstakingly detailed explication of the gamesmanship at issue here (AND at issue regardless of the particular person bringing the matter to the courts).

        Try taking that brief in an inte11ectually honest manner and learn something.

        Good, as that is the vast majority of reopenings, including this one.

        You are not even in the ball park now.

        1. 6.1.1.1

          No. Absolutely not – not in the least bit. AS I MENTIONED, the conclusion follows from the plain facts of the situation.

          You don’t know the plain facts of the situation, as the prosecution is not in the open. What you do have is self-serving *factual allegations* by Hyatt, and a series of arguments over a series of court cases by the office on summary judgement saying “*Even if those facts are true* we can still do what we did.” You don’t know the actual facts of the situation.

          Are you inserting an illegal move to limit claims – after the prescribed claim count fees have been paid, AND wanting THAT to serve as some type of “righteous” position (or leastwise, as an indictment for not pursuing what an applicant HAS A RIGHT to pursue)…?

          There’s nothing illegal about it. That’s already been adjudicated. The office has the power to compel actions for orderly prosecution. He LOST that issue, and now he’s trying to backdoor achieve the same result by attacking longstanding practices in a manner that, if he were to win, would hurt every other patent applicant.

          You don’t understand it because you don’t have a clear picture, but you’re on the offices side on this one.

          WHAT you are actually doing is moving the goal posts and taking things OUT of context.

          Hardly. The Office has the power to keep rejecting until it doesn’t want to any more so long as the rejections are an attempt to carry out its examination mandate. The office *does not have to,* and shouldn’t be asked to, apologize for that. The office’s argument that it has the authority is entirely proper (which, by the way, is why it won in court – small issue of who is appealing whom here – but that matters to, you know, lawyers) but its even more proper HERE, where it’s manifestly clear the office is trying to advance examination.

          Your whole “after appeal” path has other considerations NOT IN PLAY in the immediate circumstance.

          You lack a full view of what is in play and what is not.

          Further, and as I indicated to Malcolm, you should take the time to read the brief that I linked to at post 8.

          You should take the time to read the prosecution history.

          It is a painstakingly detailed explication of the gamesmanship at issue here

          On this, we are in agreement. Just not by which party is engaging in it.

          1. 6.1.1.1.1

            You should take the time to read the prosecution history.

            Are the file wrappers open? I thought that they were still confidential?

            1. 6.1.1.1.1.1

              Are the file wrappers open? I thought that they were still confidential?

              They are still confidential. That’s the point I’m making – there’s a lot of absolutism going on here when we don’t know what the facts are. There are factual allegations coming out from one side, and the other side is prohibited by law from exposing facts beneficial to its side.

              Basic legal theory tells you why the jury isn’t supposed to be deliberating when only one side has presented its case.

              1. 6.1.1.1.1.1.1

                So your advice is to do something I cannot do and my advise is something that you can — and should — do.

                Do you understand that?

                Most all your other statements are also false – it at least misleading – for a number of reasons. I will let you figure out why (as you no doubt will not, and instead will merely claim “one-sided” no matter WHAT is actually in the public record (as limited as that public record is, THAT still DOES contain facts, even as you want to suggest otherwise).

                1. So your advice is to do something I cannot do and my advise is something that you can — and should — do.

                  No, my advice is to not speak until you know what you’re speaking about. Your inability to remedy your lack of knowledge simply suggests you shouldn’t speak. This falls under the rubric of staying silent and being thought a fool or opening your mouth to remove all doubt. *You know that you do not know what you are talking about* and yet here you are, telling me you know the facts and you know who is right when you must be aware of the fact that you cannot possibly know that. I simply cannot fathom how you must be aware that you don’t know the prosecution history, and yet you’re sitting here forming conclusions about fault with respect to the prosecution history. What are you using, gut instinct? Flipping a coin?

                  Let me give you a very simple example:

                  Greg links a case where the district court faults PTO delay in part because the examiners followed compact prosecution. The court reasons that the law does not require compact prosecution, and the examiners could have avoided delay by not practicing compact prosecution.

                  Let’s take that fact for what it is – Let’s assume delay in Hyatt’s case was improper. Let’s further assume the delay could have been abated by allowing the examiners to not practice compact prosecution in some situations. Taking just those two facts in the record – 1) that delay occurred and 2) that uncompacting prosecution may have alleviated office delay – one might conclude that the office could better serve the public by uncompacting prosecution if it would avoid delay.

                  Is that the proper lesson to take from the situation? Is that the solution that the office should apply? Or might you, oh I don’t know, maybe want some more facts before you blindly call for a change that would hurt 95% of applicants? Might it be that the delay, while regrettable for Hyatt individually and certainly something that allows him to point to something which seems like the office is out to get him, is not only business-as-usual, but a general good for the office to do? (Unsurprisingly, uncompacting prosecution will always allow for quicker responses. You can’t issue a second rejection without first issuing a first rejection)

                  So no, the fact that there exists some bad tree doesn’t mean the forest is bad, or even that the tree, if seen from another angle, might not appear good. You just don’t know. Stop trying to lecture like you know. You’re making a fool of yourself.

                2. This falls under the rubric of staying silent and being thought a fool or opening your mouth to remove all doubt.

                  You would do well to heed your own advice – and recognize that what I speak of IS of the FACTS that are present. You are simply incorrect in thinking that the FULL prosecution history is necessary to draw conclusions about the facts of a certain set of actions THAT HAVE BEEN PUBLIC. This is just not so.

                  You seem to want to run and hide and make NO move whatsoever when it is clear that there is a very real issue afoot.

                  Then again, as I recall, you wanted to see “NO HARM” in the SAWS program.

                  As for “lecturing when you do not know” — YOU really need to follow your own advice on that accord as most ALL of your “legal lecturing” is entirely based on concepts that you clearly do not grasp (and your lack thereof is ONLY filled with your own personal selective bias filtering).

                  The f001 here is not me.

              2. 6.1.1.1.1.1.2

                Are we really disagreeing? There are two possibilities here: (1) Hyatt is an innocent victim of abuse by the PTO; or (2) Hyatt is (at least in part) at fault for the egregious delay in these applications. Obviously, from the fact that I am calling for these apps to be rejected for prosecution laches, I do not believe (1). In other words, we are both agreed that the PTO is not totally at fault here.

                If, however, you mean to say that the PTO is not at all at fault here, that dog will not hunt. The PTO has already conceded that nine years of the delay here are the PTO’s own fault.

    2. 6.2

      has not the District Judge chastised the USPTO for the LACK of showing ANY progress (at all)

      Has Hyatt dropped or amended any of his pending claims?

      If so, that’s progress.

      Try to remember the context, Bildo: Gil Hyatt is a notorious combed-over t-u-r-d who made most of his money off a junk patent and a con game related to that junk patent. He has nothing to offer the world. He’s a selfish, narcissist p-r-*-c-k that only a glibertarian c-l0-wn like yourself would bother to spend five seconds defending. Everything else here is just theatre.

      1. 6.2.1

        Yet again, MM, you should read the brief I linked to at 8 and recognize what Sir Thomas More had to say about your “brand” of providing legal protection.

        As an attorney, or at least as you profess to BE one, you should be ashamed at how you would promote the mere character of a person seeking legal redress as in any way determinative of the proper redress.

  18. 5

    >>My take here is that the PTO should be able to reopen prosecution when it acts reasonably.

    The current practice at the PTO is not great. Basically what is going on is that supervisors are looking at what is going on (or the primary examiners) and if it seems they are going to reamed at the Board they reopen. The problem with this is that they are using a lazy method of getting their work done. The applicant is being forced to do the work of writing the appeal brief and then not getting the benefit of the PTO reviewing the appeal brief.

    1. 5.1

      [S]upervisors are looking at what is going on (or the primary examiners) and if it seems they are going to reamed at the Board they reopen. The problem with this is that… [t]he applicant is being forced to do the work of writing the appeal brief and then not getting the benefit of the PTO reviewing the appeal brief.

      Exactly right. I have just a few further observations to add:

      (1) Regrettably, what you describe above is the economically rational approach for the PTO to take. That is to say, if the applicant files a notice of appeal (at which point, s/he must pay the notice of appeal fee), and then the PTO reopens prosecution, the PTO has just increased the revenue from a given application without appreciably increasing costs associated with the application. As we all know, the notice of appeal fee is not refunded when prosecution is reopened following a notice of appeal. This is, in other words, a net gain to the PTO fisc.

      (2) Presumably, the most straightforward way to deal with this suboptimal situation would be to increase the search & examination fees paid at the front end of the filing process. They could then take the notice of appeal fee down to $0, so that there would no longer be a financial incentive to force an applicant into the appeal process.

      (#) In fact, I think that it is pretty clear that the PTO is charging too little for filing a patent application. It would be better for all (the PTO, the applicant, the public domain) if the PTO tried to set filing fees to a “profit” maximizing level. I do not know what that price is at present (and obviously it would change over time), but I think that it is pretty clear that this price (whatever it is) is higher than is presently being charged. The PTO should assign a committee to do the economic modeling to figure out what is a “market” price for a U.S. patent grant, and adjust the filing fees to that price.

      1. 5.1.1

        1) “is the economically rational approach for the PTO to take.

        ALL THE MORE REASON to rule against the Office here.

        2) “Presumably,… increase the [__] fee“.

        NO. “Presumably” the most straightforward way to deal is to NOT ALLOW THE B$. There is zero need for “increase the fees” to do that.

        #) What you “think” has been shown time and again to NOT have much value or relation with reality. In the present context, the Office runs a zero-sum game. In fact, with diversion, it can be MORE FORCIFULLY stated that the Office has been charging TOO MUCH. There already is a “market” price for the work.

      2. 5.1.2

        Greg, the government should not up the cost of patents. The PTO by its nature is a monopoly and supposed to be working for the people. It should be operating on a basis of being most efficient and adding costs to the patent system to bloat a government agency is ludicrous and goes against every economic principle for an efficient economy.

        1. 5.1.2.1

          Night Writer,

          I do hope that you recognize the Pharma influence on Greg’s thinking (sport of kings style solution).

          After all, Greg has proudly “whipped it out,” and his bias is more than evident (you know, because Greg posts with his ‘real name’ and all).

          1. 5.1.2.1.1

            It is odd to me (being old) that people behave like Lemley and Greg. I grew-up in an era was being an ethical moral person was considered more important than anything else in life.

            1. 5.1.2.1.1.1

              I cannot attribute the following comment to Lemley, but Greg is most definitely infected with a high degree of Liberal Left moral relativism.

              He really does NOT think that his stance, his views, or his mode of arguing are remotely unethicial or lacking morals.

              That’s the funny thing about Greg – he desperately wants to take the high road, and yet consistently shows (and basks) in the fact that BECAUSE he is so proud as to be “using his real name,” he does not realize that he has established that he just does not know what he is talking about when it comes to the computing arts.

              Couple the fact that he is an inte11ectual coward (refusing to actually engage on the merits with anyone
              “who has offended him” – and offense may well be merely showing that Greg is speaking out his @$$ – with his cloying over-politeness to those that he WILL engage with (notably Random), and you have a very unhealthy “dialogue” between two people who have no business trying to influence others.

              Greg sees nothing wrong with his advocating in areas that he has shown that he lacks knowledge of. He is perfectly content to play his Pharma mouthpiece role. He is perfectly content to ignore the counterpoints that show his particular desires are NOT what the law (as written by Congress, or even as re-scrivined by the courts) IS.

              He (apparently) views maximizing THAT Pharma role and desired philosophical Ends as being perfectly enough to satisfy any and all “ethical and moral” obligations.

              And while certainly serving his clients with ardor in that role — in and of itself — does NOT implicate ethical and moral issues, there are certainly concerns when his advocacy goes broader than that, and he turns and tries to throw computing under the bus with his advocacy of feelings and wants as to the proper legal level of a/any “In The Art” in relation to 35 USC 112 (and of course, the ripple effects of the same a/any “In The Art” when it comes to 101/102/103.

        2. 5.1.2.2

          The PTO by its nature is a monopoly and supposed to be working for the people.

          Right, for the people. Not the patent applicants, the people. The PTO—as an agency of the U.S. government—has an obligation to all citizens, not merely those who do business in its offices.

          It should be operating on a basis of being most efficient…

          Yes, but there is nothing “inefficient” about charging a market price. Quite the opposite. Charging a below market price is inefficient.

          … and adding costs to the patent system to bloat a government agency is ludicrous…

          Once again, I agree. You are taking up an argument against a position that I never advanced. I am not in favor of charging more merely to fund more lavish retirement parties for senior PTO leadership, or to create a slush-fund for Pres. Trump’s hush money payments. Fees should be set according to “profit”-maximization. Expenses should still be constrained to that which is consistent with maximum efficiency of operations. In the unlikely scenario where this leads to an impossibly large operating surplus, the excess can be returned to the general treasury. I am not taking up an argument in favor of “bloat.”

          1. 5.1.2.2.1

            Charging a below market price is inefficient.

            Just to expand on this point a bit, it is worth noting that it is impossible, in the final analysis, to charge anything less (or more) than a market price. There are other ways than dollars that a customer can pay, and if you try to keep the dollar price lower than the market rate, then the price will simply increase along some other taxable dimension (usually wait times).

            For example, when the Venezuelan government caps the price of bread, this does not lower the overall price. The total amount of bread available for sale does not increase, it just gets distributed differently. When the price in bolivars is set at the market price, then the rich and the middle class can get bread, while the poor go hungry. When the price in bolivars is set below the market price, the unemployed can now afford bread, so they get in line at the bakery and the wait time increases. Now instead of the unemployed poor going hungry, the working poor and the middle class goes hungry (because the unemployed have time to wait in line, along with those hired by the rich to wait in line, while those who have jobs but not enough income to hire a line-sitter must do without the bread). The total market price never goes down, it merely gets reallocated into different currencies, thus effecting a redistribution according to who has the alternate currency to pay.

            In the same way, if the PTO charges less than a market price in the filing fee, that does not mean that the price is “lower.” It merely means that all applicants pay along some other dimension (time and/or quality of examination). My point is that—given this trade-off—all parties (the applicants, the examiners, and the public) would be better served by raising the dollar price (with its corresponding benefit along the time and quality dimensions).

            Reasonable minds can disagree about where is the optimum point along this multi-factor trade-off, of course.

          2. 5.1.2.2.2

            Yes, but there is nothing “inefficient” about charging a market price. Quite the opposite. Charging a below market price is inefficient.

            You may not even be aware of the fact that you are presuming a cost structure not present, Greg.

            Not surprisingly, this is just another area that your “whip it out” creds show that you are speaking from your @$$.

          3. 5.1.2.2.3

            Charging a below market price is inefficient.

            To expand on this a bit, it is not actually possible to charge a price below (or above) the market price. Rather, there are several different currencies in which one can pay for a good or service, and if one tries to set the dollar price below the market rate, then the market will simply increase the price in another currency (usually time). This will have the effect of redistributing the good or service away from those with dollars and toward those with more of the other currency (not always a bad outcome), but will not actually lower the total price.

            For example, right now the government of Venezuela caps the price of bread. This does not actually increase the supply of bread (in fact, it does the opposite). This means that instead of rationing bread according to who has bolivars sufficient to pay for the scarce bread, the bread gets rationed according to who has the time to wait in the long lines for the bread. Under a regime where the total price is set in bolivars, the rich and the middle class would have bread, while the poor (both working poor and unemployed) would go without. Under the price cap regime, the rich (who can pay people to wait in line) and the unemployed poor have bread, while the middle class and the working poor go without. One way or the other, however, the total price of bread does not go down—it is merely reallocated to another “currency” and the bread is rationed out to those who can pay in the new currency instead of those who were able to pay in the previous currency.

            Just as setting the price of bread below the market (i.e., dollar profit-maximizing rate) does not actually lower the price, so too setting the price of patent examination does not actually lower the price. It merely means that the price gets paid in another currency (or the quality of the good purchased gets diminished).

            Given these trade-offs, my point is that all parties (the applicants, the examiners, and the public) would be better off in a system in which we paid more in dollars and less in delay. Reasonably minds can disagree, of course. If the community as a whole prefers to take set the trade-off in terms of poorer quality examination or more delay in exchange for lower fees, that is not an inherently crazy idea. I think that the overall policy equilibrium would be better set at a higher fee/higher quality/less delay point along the trade-off spectrum.

            1. 5.1.2.2.3.1

              Assuming there is “market price” including both PTO fees and costs associated with the application delay… the rather low percentage of track one applications seems to indicate that the PTO fees are very close to the market price.

              I suspect most of the “tension” in the system is relieved through reduced quality. And that is particularly perverse because quality is not always proportional to value for the buyers.

              1. 5.1.2.2.3.1.1

                The price of an application with track one is more than three times as much as the price without. I am not sure that we can really infer that the demand for higher-price-for-less-delay is really tapped out just because the demand for triple-the-price-for-less-delay is demonstrably low. It is not possible to sketch a Laffer-curve with only two data points.

                I suspect most of the “tension” in the system is relieved through reduced quality. And that is particularly perverse…

                Agreed. The public is the entity that suffers the most from poor quality examination. The public should right demand that the price be set higher, both to fund better quality examination (to better serve the public’s interest) and to discourage low quality filings from entering the system in the first place.

                1. Game of Kings – what could go wrong with that?

                  Never mind that the US system was expressly set up NOT to mimic the then current high cost systems of ROW – small facts that Greg might want to know (to offset his Pharma influence)

                2. …Laffer Curve…?

                  Laffer Curve is defined as “supposed relationship between economic activity and the rate of taxation that suggests the existence of an optimum tax rate that maximizes tax revenue.

                  Greg’s “real name, “whipped out” credentials simply do not support him making up economic theories that drive his wild imaginations as to how patent law IS or even SHOULD BE.

  19. 4

    I’ve said it before and I’ll say it again: The USPTO needs to adopt the EPO’s summons to oral proceedings practice.

    1. 4.1

      Not a bad idea. Meanwhile, am I ever glad that I am not the attorney who would appear on Hyatt’s behalf for those oral proceedings. Talk about a hot seat!

    2. 4.2

      Not sure about that. If you end up at oral proceedings before the Exam Division you have already lost, even before the proceedings begin. Oral proceedings = does the accused wish to say anything before we pass sentence?

      But EPO Rule 137 would cut out a lot of the to and fro of prosecution; especially Rule 137(3) (4) and (5) and most especially Rule 137(3) EPC. You get one free go at amendment and, after that, you are dependent on winning the “consent” of the Examining Division to your wished for claim amendment. At the EPO. you have to get it right first time. Unless you want to file another divisional.

      link to epo.org

      1. 4.2.1

        Dear Max, as a former examiner who was several times drowned with hundreds of pages of auxiliary requests exactly 1 month before the scheduled OP, I feel that you’re being slightly disingenuous. Rules 137 and 116(1) are mostly paper tigers. To be on the safe side you really want a good substantive reason to reject a request, which means that you have to dive into the documents. My nightmare was that the applicant wouldn’t show up at the OP, and that a decision had to be taken on grounds for which there had been no written exchanges (regardless of what the case law says). I had EDs where the other two members cared more about finding any excuse to cancel the OP (it eats up their time without any production points) above anything else. And the resident Aktenzähler too. :-(

        If you want to compare US and EP law, the relevant provision in the EPC would be Art. 109(1), Interlocutory Revision:

        If the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision.

        I.e., if the arguments traversing the objections are justified, or the new requests moot the standing objections, then you’re stuck into reopening the procedure. The applicant prevailed.

        (There is case law defining what you can or can’t do if there are allowable lower ranking requests, but that’s another story).

        Contrary to the US procedure as I understand it from the MPEP, at the EPO the ED cannot add anything to the case as it goes to the board. If you don’t rectify the decision, then it must stand on its own to further scrutiny.

        Art. 109(2) EPC:

        If the appeal is not allowed within three months of receipt of the statement of grounds, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit.

        Recently in T2370/16, an appellant made a big fuss about the first instance examiner attending the OP before the board as a silent spectator. All that whining didn’t help.

      2. 4.2.2

        “Not sure about that. If you end up at oral proceedings before the Exam Division you have already lost, even before the proceedings begin. Oral proceedings = does the accused wish to say anything before we pass sentence?”

        Not really interested in what the examining division does. What I want is to get out of the examining division, either with an allowance (which is rare as you correctly note) or a guaranteed review by the Board of Appeals. In 20+ of dealing with my European colleagues I have never had a case go through oral proceedings, be “finally rejected” and then had the appeal yanked back by the examining division to re-open the prosecution. Never.

        I’ve had umpteen cases re-opened by U.S. examiners in the past 20+ years. In fact, at least half my appeals never got/get to the BPAI/PTAB. The examiners either re-open or allow. Can’t complain too much about the allowances, but can still complain (why wasn’t the application allowed without the appeal?). I’ve even had pre-appeal panel decisions that conclude “Proceed to the Board” re-opened after filing the brief. The FR notice that set up the pre-appeal pilot program claimed such occurrences would be rare. I can assure you from personal experience they are not.

        I don’t fear an oral proceedings style system in the USPTO because I would worry that I’ve already lost with the examiners. I know I’ve already lost with the examiners (because they are crossing their fingers for first class tickets on the RCE gravy train in their Christmas stockings). I want an oral proceedings style system in the USPTO because 1) I know the rejections are garbage, 2) I know the examiners know the rejections are garbage, and 3) I want my appeal decided. If examiners knew they couldn’t re-open, they would be forced to abandon the game of “RCE chicken” they love playing so much.

        Don’t file RCE’s. Just appeal. It’s cheaper and 50+% of the time the rejections are withdrawn. And the examiner has to do all of the work after re-opening for ZERO counts. Nothing, and I mean nothing, motivates examiners to make a credible rejection or allow the claims like having to work for ZERO counts. It’s the only time many of them actually do any decent quality work. So let’s have a system that takes away their ability to do lousy work and get rewarded for it.

        1. 4.2.2.1

          “Don’t file RCE’s. Just appeal.”

          If only. From where I sit, it looks like there are some attorneys riding the RCE gravy train too.

          1. 4.2.2.1.1

            True. Lotsa attorneys too afraid to appeal and have clients willing to file 2, 3, however many, RCE’s to get anything they can get. Not a bad deal if you can get it.

          2. 4.2.2.1.2

            BTW, an EPO style oral proceedings system would also prevent abuse by attorneys on the RCE gravy train. So it would be a win-win.

  20. 3

    Please, Dennis. We have to file a mandamus action to get our patents? After 10 years of prosecution and appeals? This is a scam perpetrated on independent inventors who lack resources to obtain their rights. We will die before we get a patent on a “pioneering” invention, and certainly cannot build a business when it costs orders of magnitude in excess of our revenues and takes 20+ years to obtain and enforce a patent.

    1. 3.1

      We have to file a mandamus action to get our patents?

      I agree that this hardly seems fair, but sometimes that is just how the system work. Some applicants need to appeal their rejection to the CAFC, at considerable expense. Some need to appeal to the ED Va, at even more considerable expense. Some need to appeal to the ED Va and then to the CAFC at truly staggering expense. Then, some others need a mandamus to the CAFC to move the PTO off the dime.

      In a perfect world, the PTO would always get both the law and facts right. In a world run by people instead of angels, however, some small number of cases will require mandamus. Regrettable, but also inevitable.

      1. 3.1.1

        In a perfect world, the PTO would always get both the law and facts right.

        Clearly we need to replace Examiners with robots who use that “artificial intelligence” technology that Night Wiper keeps ranting about. Everything will be so much better then! Just like how friendships were improved so much after Facebook.

    2. 3.2

      We will die before we get a patent on a “pioneering” invention, and certainly cannot build a business when it costs orders of magnitude in excess of our revenues and takes 20+ years to obtain and enforce a patent.

      Maybe you just s-u-c-k at building a business, Balloon Boy. Learn to manage your finances a little better.

      1. 3.2.1

        ….How much did he just win in judgement?

        Or does being vindicated by judgment not register in that “attorney” part of your brain….?

        Instead — as usual — you opt for the mindless, empty, and ultimately DUII ad hominem….

  21. 2

    My take here is that the PTO should be able to reopen prosecution when it acts reasonably. A mandamus action or APA lawsuit should be available if the agency acts otherwise.

    Agreed.

    In other news, it appears that Gil Hyatt still needs to get a life.

    1. 2.1

      Heed your own advice.

  22. 1

    My take here is that the PTO should be able to reopen prosecution when it acts reasonably.

    No one can object to “act[ing] reasonably.” I agree that it seems strange to argue—as Hyatt does—that there is a statutory prohibition on the PTO re-opening prosecution after the applicant files a notice of appeal. If the examiner or SPE notices (after a notice of appeal has been lodged) that there is a defect in the rejection, it is in everyone’s best interest (applicant and PTAB alike) that prosecution be re-opened to build a sustainable record (and perhaps clear up the remaining rejections, clearing the way for allowance), rather than make all parties march all the way through the years-long appeals process just so that the PTAB can announce “there was a procedural defect in the record here, so the rejection is reversed, but here is a new rejection with which you can start all over again for another couple years.”

    That said, in this case it is hard to accept that the PTO is “act[ing] reasonably.” It seems clear that the PTO is trying to stall these claims out until Hyatt gives up or dies. The PTO really needs to bite the bullet and reject these applications on prosecution laches grounds. That is fair to Hyatt and to the public. The current stall-&-prevaricate approach might be a good defense of the public domain, but it makes a mockery of Hyatt’s due process rights.

    1. 1.1

      It seems clear that the PTO is trying to stall these claims out until Hyatt gives up or dies.

      Thank goodness Gil Hyatt never engaged in stalling tactics of any kind. It’s so hard for super wealthy people to have their voices heard, after all.

      1. 1.1.1

        Your ISM is noted – Sir Thomas More would like a word with you as to your ethics (or lack thereof).

    2. 1.2

      It seems clear that the PTO is trying to stall these claims out until Hyatt gives up or dies.

      Those Office actions noted the “confluence of multiple factors” that had made examination of Hyatt’s applications “unmanageable,” including the
      number of related pending applications, the length of each specification (or written description of the invention) and the number of applications incorporated by reference, the number of claims, and the multiplication
      of claims over the course of prosecution. The Office actions instructed Hyatt to (i) select a number of claims from each of his 12 “famil[ies]” (i.e., groups of related applications with nearly identical specifications), not to exceed 600 claims per family absent a showing that more claims are necessary; (ii) identify the earliest possible priority date and supporting disclosure for each selected claim; and (iii) present a copy of the pending claims to the USPTO.

      Assuming (as you apparently do) that the Office is acting in bad faith, this is an odd manner for them to go about it, isn’t it? They could have played reopen-reject-appeal forever, why generate a new issue for them to get sued on that they could possibly lose?

      Hyatt’s 400 pending applications average more than 280 claims each, with some containing more than 400 claims…In 2012, 12 full-time USPTO patent examiners worked solely on Hyatt’s applications.

      Wow, they are REALLY selling this fake examination thing, huh? They should have given em to me, I could’ve knocked out 110,000 deficient rejections in about five minutes.

      The PTO really needs to bite the bullet and reject these applications on prosecution laches grounds.

      Where’s the statutory authority for that?

      1. 1.2.1

        Assuming (as you apparently do) that the Office is acting in bad faith…

        I balk at the word “assuming” here. I begin from the assumption that the PTO is acting in good faith, but like all assumptions, this is subject to re-evaluation in the face of evidence. I have concluded (not assumed) that both sides of this farce are acting in bad faith. The PTO’s bad faith is less egregious than Hyatt’s, but neither side is really covering itself in glory here.

        They could have played reopen-reject-appeal forever…

        I am not following you. What do you mean “could have.” That appears to be what they are doing.

        Where’s the statutory authority for [prosecution laches]?

        You have me there. There is no precise statutory section to provide that the statutes—written in English—should be interpreted according to historically standard English grammar. In the same way, there is no precise statutory section to provide that the U.S. code is to be interpreted according to the background assumptions of the common law. Both are just something that “everyone” knows, without the rule having to be codified in statute.

        1. 1.2.1.1

          I am not following you. What do you mean “could have.” That appears to be what they are doing.

          Above in response to 7 you say that you believe both sides are at fault here. Let’s assume that from a base viewpoint that we could not be at the situation we are in without some fault on both sides.

          But then let’s talk about what the office is currently doing (In response to your statement that “That appears to be what they *are* doing”). So I assume by this statement that you have to recognize some amount of the following chain, which is the only chain I can reasonably think of:

          1. The Office issued a patent to Hyatt
          2. The patent was found invalid
          3. The office was incredibly upset about 1-2.
          4. Rather than take it out on the examiners, or the examining corp as a whole, the office decided that they were going to take it out on Hyatt
          5. Rather than take it out on Hyatt in a plausibly deniable way by perhaps whispering to slow walk his prosecution or something, the office decides to expressly create an art unit for the sole purpose of improperly rejecting Hyatt’s claims, which it staffs with 12 sole-purpose examiners and a SPE at a cost of over a million dollars a year, making it undeniably clear the exact dollar amount of their corruption
          6. None of the examiners or spe appears to have any problem with this
          7. The corruption continues flagrantly and unabated over the tenures of what? 5-6 different directors and acting directors?
          8. The office decides to poke the bear by issuing non-standard examining requirements that provokes a lawsuit for no particular reason given that it had successfully been giving Hyatt the runaround for what? 15 years at this point?
          9. When Hyatt valiantly stands up for himself, the office brings in the general counsel who, rather than blowing the whistle, proceeds to join in on this pointlessly illicit act for no particular reason at great personal cost?

          Right? That’s the only chain I can think of that explains the current situation. For you to believe that the 12 examiners are intentionally currently preventing allowance of valid claims, you would have to believe that there are 12 examiners willing to do so, that they’re colluding in such a blatant manner that at a minimum the SPE would have to be involved, and that higher ups not only approved but specifically organized the office to do so, and who kept paying to keep it going over multiple litigations where multiple people were directors. This corrupt practice includes, at a minimum, some 20-30 people including several presidentially-appointed-level people, attorneys under ethics obligations, and a dozen people who must be aware they drawing a paycheck to daily commit mail and wire fraud. That’s the natural implication of the statement “That appears to be what they are doing.”

          I think one needs only look at the most recent 101 guidance to see the office’s opinion about possibly issuing invalid claims. As for being motivated to take out an inventor the office dislikes, I’ll repeat what I constantly say for myself or for anyone else in the examining corp – While you may think your claims are important, when I finish with your claims I reach into a stack that is, for all intents and purposes, infinitely large, and pull out more claims to work on. *If* one were to consider Hyatt’s claims a mistake or Hyatt to be a particularly annoying person, one would have to weigh that against the immovable wall of the fixture that is the PTO. If you think the office is going out of its way to pick a fight with Hyatt, you’re mistaken about how much we care about particular inventors or attorneys. Hyatt is no Edison, but even Edison is dead – the office still lives.

          In the same way, there is no precise statutory section to provide that the U.S. code is to be interpreted according to the background assumptions of the common law. Both are just something that “everyone” knows, without the rule having to be codified in statute.

          You’ve seen some laches cases right? I think there was one that 22 years of delay was not unreasonable? So rejecting for laches is asking Hyatt to sue you again.

          If, however, you mean to say that the PTO is not at all at fault here, that dog will not hunt. The PTO has already conceded that nine years of the delay here are the PTO’s own fault.

          Odd thing to admit if they delay is intentional and continues to this day. As I quoted above – the average number of claims in Hyatt’s applications are over 280. If the examination were not particularly organized against Hyatt (i.e. these were just random cases on random examiner’s dockets) it is entirely understandable how 9 years of delay happened. If you told me you would give me four hours of credit to do an amendment where nothing was amended, versus doing an amendment where 280 claims were amended, I’d be interested in delaying work on the Hyatt claims as long as I could too. That’d be improper, but it’s far from the kind of organized resistance you’re suggesting the office is carrying on right now.

          1. 1.2.1.1.1

            That’d be improper, but it’s far from the kind of organized resistance you’re suggesting the office is carrying on right now.

            You have evidently confused me for some one else, somewhere else on the internet. I am not contending that the PTO’s impropriety here goes any further than that which you just conceded to be improper. As I intimated above, I do not think that we actually disagree here.

          2. 1.2.1.1.2

            I’d be interested in delaying work on the Hyatt claims as long as I could too. That’d be improper, but it’s far from the kind of organized resistance you’re suggesting the office is carrying on right now.

            You are evidently confusing me with some one else, somewhere else on the internet. I am not contending that the PTO is engaged in any worse impropriety than that which you have just admitted to be improper. As I intimated above, I do not believe that we are really disagreeing here.

            1. 1.2.1.1.2.1

              I guess we’re not…

              To me, one examiner deciding to, e.g., turn in some other work this biweek and not the work of someone being rude to them is “wrong” but not a problem, and certainly not indicative of a systemic problem that should draw a lawsuit.

              The only way that 12 examiners all act in unison over a period of years to deny claims is if a higher up orders them to (i.e. they let the result dictate the examination rather than vice versa), who themselves must have higher up approval. Systemic corruption.

              Those are two entirely different levels of action in my book, and it’s hard for the former to constitute waiting for Hyatt to give up or die in my mind. But I suppose they both fall under the extremely broad rubric of things that the office could do wrong so as to be partially at fault.

              1. 1.2.1.1.2.1.1

                and not the work of someone being rude to them

                A strawman — NO ONE but you Random is making that argument.

                You appear to be going into the weeds here on the concept of “examination mortgaging.” Put away your strawman and grasp the arguments that ARE being put in front of your face.

                It is truly amazing how much effort you are pumping into this situation and trying to NOT see how the Office needs to be made accountable. This mindset is very much part of the problem with the Office.

          3. 1.2.1.1.3

            As for being motivated to take out an inventor the office dislikes… – While you may think your claims are important, when I finish with your claims I reach into a stack that is, for all intents and purposes, infinitely large, and pull out more claims to work on.

            I do not doubt that this is how you look at the Office’s work. The existence of the SAWS program, however, is objective proof that senior leadership does not share your outlook on this point.

            1. 1.2.1.1.3.1

              Greg,

              Your point is far too muddled here in your attempts to be (cloyingly) over-polite.

              You really do no one any favors with this “style” of writing.

          4. 1.2.1.1.4

            [Y]ou would have to believe that there are 12 examiners willing to do so, that… the SPE would have to be involved, and that higher ups not only approved but specifically organized the office to do so, and who kept paying to keep it going over multiple litigations where multiple people were directors. This corrupt practice includes, at a minimum, some 20-30 people including several presidentially-appointed-level people, attorneys under ethics obligations…

            The same could be said of SAWS. The PTO has already discarded its credibility in resting on the “we would never do something so palpably inconsistent with our legal obligations” argument.

            1. 1.2.1.1.4.1

              Worth reminding everyone who first DENIED the existence of SAWS, then sought to minimize its effects….

              Also worth reminding everyone that when the Office itself finally fessed up to the (shadow) existence of that program, and in conjunction of “shelving” that program due entirely to the negative perception, that the Office made an admission on the record that SAWS was but one of many such illicit and “off-the-books” programs under which examination was being carried out — in violation of 37 C.F.R. 1.2.

            2. 1.2.1.1.4.2

              Random Examiner’s pearl clutching about “systemic corruption” would actually be funny if he really believed the bs he was shoveling so furiously.

              1. 1.2.1.1.4.2.1

                The scary version is that Random really does believe the B$ that he shovels.

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