Virtual Instructor Led Training (vILT): Writing Rejections

If you have time, I would recommend attending the USPTO’s Virtual Instructor Led Training (vILT).  The training is great background for patent prosecutors because it is typically identical to what is provided to patent examiners. The Office is working through a multi-part course on how it examines 35 U.S.C. § 103 and the next 2-hour course is called Obviousness Part 2: “Writing Rejections.”

  • How to establish a prima facie case
  • Rationale for combining prior art
  • Communicating a rejection

Although it is online, the PTO is still limiting enrollment because it is an interactive course.  For questions email vILT@USPTO.GOV or go to this link.  Part 1 covered obviousness rejections and you can see the materials here.  Part III will focus on “examining evidence.”

Meanwhile, consider attending the PTO’s symposium on cross-border trade secrecy on May 11.

-Dennis

33 thoughts on “Virtual Instructor Led Training (vILT): Writing Rejections

  1. 2

    When it comes to wearing down the opposite side, the advantage always rests with the Examiners.

    1. 2.1

      Hilarious.

      Step 1: submit claims that cover an entire sub-field of work going back 40 years w/ hundreds of 102 refs at min.

      Step 2: make small amendment that gets around 1 piece of art from that sub-field but requires lots of grunt work to find the particulars of the depending claims you don’t even care about and won’t take a patent on even if allowable.

      Step 3: file RCE, make another small amendment (you’re now down to only 98 anticipatory references for your independent claim(s)). Grunt work continues for claims you care nothing about.

      Step 4: make another small amendment you’re now down to 20 anticipatory references. Grunt work continues for claims you care nothing about.

      Step 5: Continue until you actually have no more anticipation rejections and now face 103’s, some depending claims are now allowable, but you don’t care.

      Step 6: Continue until you finally get a patent.

      It’s the fail your way to success model. And it definitely won’t wear down an examiner underfunded already. Nope. Never happens. Yeah, it’s like totally a super advantage there.

      1. 2.1.1

        Translation:

        Wah.

        Continue until you finally get a patent.

        And therein is the fallacy.

        The applicant can continue to pay ad infinitum, and such just does not change your job. Quite the opposite, if you do the job proper up front, then every subsequent action is necessarily easier. ALL the applicant EVER has is what is present at filing.

        Why in the world would an examiner EVER “wear down?”

        1. 2.1.1.1

          “The applicant can continue to pay ad infinitum, and such just does not change your job.”

          Right, but it changes whether or not the examiner is “worn down” derp derp herp herp.

          “Quite the opposite, if you do the job proper up front, then every subsequent action is necessarily easier.”

          Lol. That’s not how it works in my art.

          Here’s what you’re looking at anon. Irl broken down further.

          Step 1: submit claims that cover an entire sub-field of work going back 40 years w/ hundreds of 102 refs at min. There are so many anticipatory references that just to even tag them all is over a full day’s work, if not two+ in some instances (note you’re supposed to have done the search and sent the action in a dayish, and I’m not making this up, this is routine, it happened twice in the last biweek). You pick one, or a few, of the better 102’s (who can even say which is “the bestlol” as they all anticipate, and they’re all, or many are, close to the actual invention) to send an action. All depending claims might get rejected easily here, but only through broad interpretation generally speaking, or if they drafted them super broad. Otherwise it’s off to the races to do a goose chase for more art for depending claims (which remember, they care nothing about, hello “burnout” generation, and remember we’re into day 3 of a 1 day examination expectancy).

          Step 2: make small amendment that gets around 1 piece of art from that sub-field but requires lots of grunt work to find the particulars of the depending claims (at least some anyway) they don’t even care about and won’t take a patent on even if allowable. You probably need to find some new references to combine in for some depending claims here (remember, we’re well over the time expectation now, and remember, they don’t care anything about these depending claims as they’re doing the fail your way to success model in our hypo here, and in this discussion, which is fair common irl).

          Step 3: file RCE, make another small amendment (you’re now down to only 98 anticipatory references for your independent claim(s)). Note this makes things SUPER EZIER THAN BEFORE according to anon BY DEFINITION. Grunt work continues for claims you care nothing about. You definitely are needing to get some new refs here for depending claims or maybe some start being allowable, generally speaking (but remember they don’t care about them so it is irrelevant). Also you might try to put some claims in to a previously unclaimed species or other group that you hope they won’t restrict (THIS ALSO IS BY DEFINITION EZIER according to anon).

          Step 4: make another small amendment you’re now down to 20 anticipatory references. Grunt work continues for claims you care nothing about. Your total time now working on the application exceeds your expectation time by doubleish. Please note, that does not “wear down” an examiner lol, HOW COULD IT? Also, we’ll not consider burnout here lol!

          Step 5: Continue until you actually have no more anticipation rejections and now face 103’s, some depending claims are now allowable, but you don’t care. Perhaps by now actions actually are easier to send.

          Step 6: Continue until you finally get a patent. Total time over budget = 50 hours+ which didn’t cause any burnout at all 🙂 and nobody internally took any procedures to prevent themselves falling into burnout (like oh I don’t know, just issuing a patent) and there is no chance that such would wear down an examiner. WINKY!

          1. 2.1.1.1.1

            See 2.1.1.2.1

        2. 2.1.1.2

          “The applicant can continue to pay ad infinitum,”

          Theoretically, yes but, as a practical matter, clients make business/financial cost-to-benefit choices as to when the continued cost is no longer worth it for obtaining a patent.

          At some point, a client will say “enough”.

          1. 2.1.1.2.1

            Yes — but 6 still clings to his vacuous “logic,” which simply has no tether to reality.

            He keeps on thinking that somehow an Examiner “has to cave,” but affords NO cogent rationale for this decision.

            Bottom line is that if an examiner dutifully examines, protracted attempts by an applicant get easier to handle — the opposite driver of “being worn down.”

            1. 2.1.1.2.1.1

              “He keeps on thinking that somehow an Examiner “has to cave,” but affords NO cogent rationale for this decision.”

              Sure I did. Although I don’t call it “cavinglol”, because it isn’t always just “caving”. Anyway, the “cogent rationale” for people making the decision to do what you’re referring to as “caving” is called “lack of budget” and “humans avoiding burnout”. And “incentive to do the opposite of hard work”. It’s not exactly rocket science. If I proposed that to someone like jordan peterson or any of his psych buds they’d understand it immediately. I’m sure it is present in many many many industries. You personally not being able to accept it as a real thing in real life is the only issue here.

              1. 2.1.1.2.1.1.1

                ” is called “lack of budget” and “humans avoiding burnout”. A

                Neither of these are cogent reasons available to an examiner.

                You have no such budget, and you have no such recourse to “avoidance.”

                Thank you for proving my point.

                And “incentive to do the opposite of hard work”.

                LOL – that’s a given (from the start), given that examiners are bureaucrats. That is also simply not a cogent reason for “being worn out.”

                You personally not being able to accept it as a real thing in real life is the only issue here.

                And that is pure B$. That things “may be tough” is NOT the issue here, 6. You have a job to do, and that is examine. “Caving in” has no part of that job, and no amount of attempted rationalizing by you will ever make it so. You simply appeal to the wrong authority by trying to make this “it’s just human nature” thing.

                As to YOUR view that my view is a fantasy – sorry, but no, it is not. YOU get to deal with a singular snapshot and sum total of “stuff” that is made at filing. That is necessarily finite. IF you do your job as I have noted (and yes 6, I DO note that I have corrected you from your past view that you need not bother even reading the spec and could just do a key word search from the claims), then it is simply NO fantasy that continued prosecution is necessarily easier, as the finite starting point means that examination can only encompass a limited amount of material.

                THAT is reality. You do not get to make up your own reality here.

                1. “Neither of these are cogent reasons available to an examiner.”

                  Oh I assure you, they very much so are. Very very very much.

                  “You have no such budget, and you have no such recourse to “avoidance.””

                  LOLOLOL.

                  “LOL – that’s a given (from the start), given that examiners are bureaucrats. That is also simply not a cogent reason for “being worn out.””

                  Not sure how “being worn out” got into the conversation. Seems like moving goalposts. “Burned out” is different from “worn out”.

                  “That things “may be tough” ”

                  I never said “durh things are toughlol”. I said what I said, which is fundamentally different.

                  ““Caving in” has no part of that job,”

                  Not in your fantasy land anyway. Back in real life, I’m pretty sure it’s fair common, though it goes under a different guise most of the time, simply taking it easy on the examination (1/8th-as s ing it). This obviously leads to the same result as “caving”. But it’s much easier to get away with just not trying super hard.

                  “You simply appeal to the wrong authority by trying to make this “it’s just human nature” thing.”

                  I never stated it is human nature dmbfck. I said it is lack of budget and avoiding “burnout” (this being a distinct thing as discussed in the video I posted the other day). Neither of white are “human naturederp”.

                  “YOU get to deal with a singular snapshot and sum total of “stuff” that is made at filing.”

                  Right and in your fantasy we actually do deal with the whole of that “singular snapshot” at initial examination. But that’s not what happens in real life, never has been, never will be. It’s your personal fantasy. We’ve discussed it to death and you will never believe it, you hold it dear to your wittle heart and construct your worldview around it being correct, despite people telling you the opposite to your face. Then you get on here and tell us about how if only people examined to your fantasy then everything would only get easier (after a massive time/effort dump up front of about a week to a month per app, in your fantasy).

                  “IF you do your job as I have noted (and yes 6, I DO note that I have corrected you from your past view that you need not bother even reading the spec and could just do a key word search from the claims), then it is simply NO fantasy that continued prosecution is necessarily easier, as the finite starting point means that examination can only encompass a limited amount of material.”

                  Right, but that is a fantasy. Even presuming that we did your magical fantasy examination, it actually would be still not entirely the case that cases would only get easier through prosecution. That being as it is super easy to cause complications in prosecution that gobble up time. 1121st, 1122nd, new complicated to write 103’s, having to look deep into references for more details etc. etc. constantly make things harder in further down the line actions but you ignore all that in your fantasy. As I’ve had to repeat a gazillion times in response to your fantasy reality.

                  “THAT is reality. You do not get to make up your own reality here.”

                  I live this reality dmbfuck. This isn’t an academic exercise. It’s real life. When I send an action after a search with a bunch of 102’s in 10 hrs. Then address a tiny amendment repeating slightly modified grounds of rejection for a total time of 18-20 hrs for an app and then, on RCE, they amend the claims massively to be more tight, and it takes 10 hours just to write the 103’s for the next action, and then takes 10 hours to write the 103’s for the next action after that (and address some 112’s they introduced at 3rd action) then magically the after RCE prosecution “took longer”/”was harder”. How you have such trouble understanding this in your fantasy is near beyond me. It’s literally kindergarten tier math.

            2. 2.1.1.2.1.2

              “Bottom line is that if an examiner dutifully examines, protracted attempts by an applicant get easier to handle — the opposite driver of “being worn down.””

              In your fantasy. Your “logical fantasy”. Which we’ve discussed a million times and you still cannot handle being a fantasy that does not match reality.

              1. 2.1.1.2.1.2.1

                see above.

            3. 2.1.1.2.1.3

              As you said, the key being “dutifully examines”. Some Examiners are more dutiful than others. Some Examiners recognize that they don’t have the prior art and allow the application. Other Examiners “just know” the claims are too broad, and engage in an abuse of process that stretches references beyond reason with no negative consequences to their doing so.

  2. 1

    Will they bounce you from the class if you press them to explain why they don’t train Examiners to explicitly determine the level of ordinary skill in the art?

    1. 1.1

      I partook in the first session, and they did actually stress that THAT was to be done.

      1. 1.1.1

        Yeah, but how did they say THAT was to be done? Did they walk y0u through HOW that was to be done? If so, what did they say?
        I’ve never seen it done.

        1. 1.1.1.1

          The ‘how’ was an un remarkable following of the Graham Factors.

          It really does not have to be anything magical, and actually, in order to even reach a prima facie case, the examiner MUST do so.

          Sure, the examiner could be off in the following of the Graham steps, but at least then a meaningful response (under the law) could be achieved and the subsequent meaningful advance need not come after a (still present, albeit less attractive) gravy train RCE is reached.

          This is why my responses to a First Action On the Merits is most always very rigorous and without amendments (as possible). Brooking no game-playing lets the examiner know that you won’t put up with B$. At the same time, for good examiners (and I do get those too), interviews are indispensable, as they allow both cutting through any residual CRP as well as exploring how to work together to move forward.

          1. 1.1.1.1.1

            This is why my responses to a First Action On the Merits is most always very rigorous and without amendments (as possible).

            That’s the way to go. If you make any amendments, it’s just an excuse for them to give the usual BS that the amendment required a new search and so the next office action is final. With the rigorous arguments, it is remotely possible that the next office action will be another nonfatal.

            But what I meant was if the PTO gave specifics for how examiners determine skill level.

            1. 1.1.1.1.1.1

              It was more that a result be provided, and less how the examiner got to that result.

              I viewed it as not-just-a-baby-step in the right direction.

              1. 1.1.1.1.1.1.1

                … to clarify – a result with reasoning (the teacher actually recognized that the Office acts under the APA – I do wish that examiners would pay attention to these lectures!)

                1. “the Office acts under the APA”

                  The APA is an unconstitutional power grab by the legislative from the executive. Which we are starting to see more and more the repercussions from these days. The executive should only abide the APA on an advisory basis in order to “avoid dictatorship and central planning” and maybe these days “good governance”. Prove me wrong.

                2. Lol. Is that what you think the APA to be?

                  Too funny.

                  Try this one:

                  What’s worse than a whiny bureaucrat?

                  A whiny bureaucrat who is absolutely c1ue1ess about the law.

                  That would be you.

                  Prove me wrong

                  Do you have time to repeat 6th grade civics?

                3. Your response is unclear, 6.

                  Are you saying that you are incapable of grasping what 6th graders grasp?

                4. Anon: “I cannot prove you wrong and I think that you didn’t make straight A’s in 6th gradelol even though you did”.

                5. and another count filter….

                  Your comment is awaiting moderation.

                  May 10, 2022 at 2:15 pm

                  Thank you 6 for clarifying what you were trying to say.

                  THAT however only clarifies that you are making things up and miss the point here.

                  The answer you seek IS available at or about the level of a 6th grade civics class (they may have moved that to even lower grades).

              2. 1.1.1.1.1.1.2

                I wish I’d know about this in advance and attended just so I could have demanded more specifics from them. Of course, that would probably have resulted in my being bounced from the class.
                What result did they say they would provide? As far as I can tell from the Office Action I receive, Examiners say they determined the level of ordinary skill. They don’t say how they arrived at the result or even articulate what the level of ordinary skill is.

    2. 1.2

      We did not have any discussion on design patents or the effects of in re surgisel (102 or 103).

      1. 1.2.1

        No surprise there.

    3. 1.3

      You should take your complaint to the board, and then the CAFC when you lose at the board.

      1. 1.3.1

        Do you know how rare it is that you have a client willing to pay for an appeal to the CAFC after a negative decision by the PTAB? Even so, the PTAB can rule in your favor on other grounds and then what? Appeal a positive decision in your client’s favor to the CAFC?

        1. 1.3.1.1

          Not only is it far more rare than most examiners realize, it is the opposite of the old (and false) saw about “wearing down examiners.”

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