by Dennis Crouch
The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence. Id. (authored by Judge Wallach).
The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings. Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace. The old model of broad-as-possible clearly has deficiencies. To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.
The ’218 patent relates to an adaptive alarm system for use with pulse oximetry sensors in patient monitoring. A common problem is nuisance alarms generated when oxygen saturation briefly goes outside preset limits. This patent aims to improve alarm management by making the thresholds adaptive based on the patient’s current SpO2 levels and trends. Basically, an alarm threshold is calculated based upon a patient’s recent SpO2 levels rather than based upon an objective predetermined standard. Key adaptive alarm functions are:
- The alarm threshold changes over time based on the patient’s recent SpO2 level
- But, the threshold offset shrinks as SpO2 drops closer to a minimum – making it more sensitive to drops when the patient’s readings are already low.
Sotera petitioned for inter partes review (IPR) challenging the claims as obvious over a combination of prior art references including U.S. Patent Nos. 7,079,035 (“Bock”) and 6,597,933 (“Kiani”), along with PCT Publication WO 2009/093159 (“Woehrle”). The Board instituted review and ultimately ruled all instituted claims obvious based on these references.
On appeal, Masimo first argued the Board misconstrued the claim limitation “trigger a second alarm based on . . . exceeding the second alarm threshold” in finding obviousness over Bock/Kiani. The Board had treated the requirement as a “condition precedent”, but ruled that the claim does not require that exceeding the threshold directly triggers the alarm. On appeal, the court found this consistent with the plain claim language under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and the specification.
We agree with the Board that the plain meaning of “based on” and “threshold” in claim 1 are both broad, and this broad claim language does not exclude the use of additional alarm thresholds or other conditions to trigger an alarm. Further, claim 5 depends from claim 1 and provides for an additional condition in the form of a time delay, and Masimo does not dispute that the meaning of “based on” allows for additional conditions for triggering an alarm. We also agree with the Board that disclosure of an embodiment in the specification that does not include any additional thresholds or conditions for triggering an alarm does not support reading such a limitation into the claim.
This intrinsic evidence thus supports construing “based on” and “threshold” broadly — a ruling that was key to upholding the Board’s obviousness determination.
Masimo also challenged the Board’s interpretation of “predetermined” in certain claims as referring to a predetermined formulaic calculation rather than a fixed value. Again, the Federal Circuit upheld the Board’s construction as entirely consistent with the adaptive alarm thresholds described in the claims.
Ben Katzenellenbogen from Knobbe argued for the patentee appellant. Rudy Telscher from Husch took the other side. The IPR case here relates to the parallel litigation still pending in Masimo Corp. v. Sotera Wireless, Inc. and Hon Hai Precision Industry Co. Ltd., Civil Action No. 3:19-cv-01100-BAS-NLS (S.D. Cal.). In that case, the patentee Masimo asserted nine patents, all of which were challenged in IPR petitions. The PTAB granted 8 of those and cancelled all the challenged claims. Parallel appeals are still pending in several of the others. The infringement litigation has been stayed pending outcome of the IPRs.
Re the below discussion asserting that US PTO application average examination time is still only 26 hours, note that in contrast the total amount of publication and patent technical art is reportedly more than doubling every ten years.
So what? That art has been merely key-word searched for decades now, plus, that is exactly the type of bolus that the buzz-worthy “AI” engines can chew through in minutes.
Or were you trying to make some other point?
anon is occasionally correct about things and he is at multiple points here. The office is entirely capable of doing its job, but it does require examiners to not follow management’s exhortations about our outside “stakeholders.” I, for one, am entirely happy to let someone file 3, 4, 5 RCEs and just bang their head against the wall.
Many examiners are not. That’s because many (all non-lawyers who don’t appreciate the adversary system, I assure you) examiners think it is their job to get the applicant to patentability. The “job” as anon continually points out is to pass on the patentability of claims put before you, not to become an advocate against the public by deciding that something in the specification that you are not being paid to search is allowable. If you go in thinking that something is allowable, of course you won’t find it.
There is some mistake on anon’s part, though due to his outsiderness more than anything else. The examiner’s primary job is to comply with office procedure, not to follow the law. The translation of the law into procedure is above the pay grade of the standard examiner, as most examiners are not lawyers and would be incapable of complying with caselaw even if they wanted to. It makes as much sense to ask an examiner to apply law that contradicts office procedure as it does to ask the federal circuit to overrule the supreme court.
It is unsurprising that claims issue that get overturned by judicial exception analysis, as the office has explicitly stated it doesn’t want examiners to make all of the judicial exception rejections that might be valid, so it is unsurprising when one is punished for following the law (rather than the procedure) that you don’t get results that comply with the law.
You’re going to miss a lot of judicial exception rejections and a lot of 112a rejections in computer software because virtually every computer software claim is drafted to violate 101 or 112a and the office does not want to pick that fight. 103 is a closer issue, but suffers from the same problem that forms the basis of this post –
Most dependent claims are not drafted to provide multiple levels of abstraction with respect to the primary feature. Rather most dependent claims are drafted to keep the main feature as vague as possible, but to find what ancillary conventional features can be added to the claims to force additional references to be added. When an applicant uses one dependent claim to claim a wired network connection and a second dependent claim to claim a wireless network connection, the purpose of those claims is not to assert that wired/wireless connections would be nonobvious (indeed, the fact that they are put in as different embodiments shows the fact that they are simple substitutes) it’s to see if the references that are used for the rest of the claim happen to also include the words “wired” or “wireless” in the hopes that a new reference is needed to close in on the “magical” number of four references for nonobviousness. Is it the office’s fault that there’s a magical number of references? Of course it is, as there’s no basis in law for that. Is it the lawyer’s fault that they exploit a legally irrelevant standard? Of course it is. But surely anon will ignore his compatriot’s unethical behavior of exploiting an irrelevant standard to their client’s detriment in order to win their fees because the nonlawyers in the office should know the law better than their lawyer opponents.
Perhaps the office should do better, but the fault is not entirely the office’s, and any blame-placing only on the office presents a skewed view of the situation.
I am much (MUCH) more than merely “occasionally” correct.
And once again, you are confused between the metrics of your job and what your job IS – under the law.
And 6 below is also confused.
Examiners, as members of the administrative agency in the executive branch have a first duty of enforcing the law. Quite aside from ANY metrics, your charge is to examine patents under the law. That does not mean only claims – and you are also incorrect as to your notion of not guiding applicants to allowable material.
Bureaucrats are going to bureaucrat…
You’re funny!
Dazzle us NS II with more of your errant “analysis.”
Oh, that’s right, you only like to jump on the wrong side of patent issues that I happen to chime in.
When was the last time you actually contributed to a conversation in any meaningful manner?
Ever?
The examiner’s primary job is to comply with office procedure, not to follow the law. The translation of the law into procedure is above the pay grade of the standard examiner, as most examiners are not lawyers and would be incapable of complying with caselaw even if they wanted to. It makes as much sense to ask an examiner to apply law that contradicts office procedure as it does to ask the federal circuit to overrule the supreme court.
This is ill-phrased. The job of the examiner is to follow the law. One hopes that the guidance provided by the examiner’s higher-ups is consistent with the law. The job of an attorney is, in part, to correct the examiner/patent office when they misapply the law. One would hope that when an examiner is confronted with a discussion of the law that does not comport with what he/she has been taught, that the examiner would have a mechanism to ask their higher ups (or quality specialists) for clarification on the law.
Your last analogy is terrible — it conflates “office procedure” with supreme court law. Office procedure is not the law. The MPEP is not the law — it says so itself in the Foreward (“The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.”)
As an aside, the day the office universally (and consistently) follows “office procedure” is the day the Rapture starts.
It is unsurprising that claims issue that get overturned by judicial exception analysis
That is because there is no test. There is only the application of subjective phrases that no one really knows the true meaning of. When you don’t have bright line tests, you have fuzzy line tests. This means that one person’s line may be very different than another person’s line. Consequently, the Federal Circuit may disagree with how the USPTO drew the line.
virtually every computer software claim is drafted to violate 101 or 112a and the office does not want to pick that fight.
One, you don’t understand 112a then — most examiners do not. I had a examiner many years under his belt lose badly at the board on a 112a issue because he frankly has never even read the MPEP on the subject. As for 101, look at the claims in DDR Holdings an explain to me how those claims can be patent eligible and how many other claims are not. Compare those claims with the claims deemed invalid in Yu v. Apple.
Also, while I understand that most people talk about the exceptions with regard to 101, let’s try to remember that the judicial exceptions are only very, very loosely tethered to the statutory text of 101. It is 100% made up judicial law that has been very poorly explained by the judiciary.
Rather most dependent claims are drafted to keep the main feature as vague as possible, but to find what ancillary conventional features can be added to the claims to force additional references to be added.
LOL. You really don’t understand how patent prosecutors draft claims. There are no CLE classes or inhouse classes as to how to obfuscate the “main feature” within a patent claim. Claim drafting is an art that is passed down from attorney to attorney. Some attorneys do it well — other’s not so well. Our job is to get claims that distinguish the invention over the prior art as well as meet the other requirements of 35 USC (and those judge-made exceptions). Good attorneys will also consider potential infringers and how they could design around the claims yet still practice what could be considered the “invention.” This leads to culling, from the claims, unnecessary specifics that while fleshing out a claim (something examiners like) also serve to make the claim easily infringed (something inventors don’t like). We serve the client so good attorneys avoid that kind of claim language.
indeed, the fact that they are put in as different embodiments shows the fact that they are simple substitutes
Not necessarily. You are describing a very superficial type of analysis. For example, one approach could be patentable and the other may not. Perhaps a wired connection would be obvious but a wireless connection would not be obvious and only the specific combination described by the inventors makes that possible, and this combination provides certain benefits not available in a wired connection. Perhaps those benefits are described in the specification but either the examiner overlooked that description or did not even bother to read the specification.
it’s to see if the references that are used for the rest of the claim happen to also include the words “wired” or “wireless” in the hopes that a new reference is needed to close in on the “magical” number of four references for nonobviousness
What you are described must be an old wives tale told at the USPTO because no patent attorney I have ever talked to has described this as a consideration when drafting claims.
exploiting an irrelevant standard to their client’s detriment in order to win their fees
Almost 100% of our clients pay their bills regardless of the outcome. If they don’t, they cease to be clients in fairly short order. We want patent allowances for the sake of our clients. An RCE and other round of prosecution puts thousands of dollars in my pocket. However, as a professional that has a duty to my client, that consideration never comes into play. I want to conclude prosecution as soon as possible. Examiners really don’t appreciate how we, as attorneys, operate in the real world.
Perhaps the office should do better, but the fault is not entirely the office’s, and any blame-placing only on the office presents a skewed view of the situation.
Our job is not to do your job. While I would like to help you do your job, in most instances, that help is not wanted. Examiners don’t want to know what the law is — like you said, they just want to please their SPE and follow office procedure. Can inventors/attorneys make your job more difficult? Sure. However, that doesn’t excuse you from doing your job. Does the Federal Circuit make it yard for you to do your job? Absolutely. In that case, it should be on USPTO management to lobby Congress (and the Courts via amicus briefs) to rewrite the law that allows you to do your job more efficiently while still following the Constitution’s mandate of promoting the progress of science and the useful arts. In this regard, I see very few initiatives by the USPTO going to Congress.
For example, the USPTO should be going to Congress regarding 101 and explaining to them just how hard to the current set of laws is making it to examine patents. They can describe the inconsistencies in the language. They can present statistics about how application of this has wasted XXXX thousands of examination hours, which takes away from examiner’s ability to examine patents under other sections of the law. There is so much the USPTO management could be doing to help the process but they are sitting on their hands.
“They can present statistics about how application of this has wasted XXXX thousands of examination hours, which takes away from examiner’s ability to examine patents under other sections of the law.”
You’re saying that the PTO should respond to new resource demands by begging congress to change the law, a request virtually gaurenteed to be denied, when congress has already empowered the PTO to adjust fees.
Congratulations. You’re officially a pretzel.
You’re saying that the PTO should respond to new resource demands by begging congress to change the law, a request virtually gaurenteed to be denied, when congress has already empowered the PTO to adjust fees.
You’ve misread what I wrote. The USPTO should be going to Congress and testifying that 35 USC 101 is a disaster to administer for X number of reasons and it needs to be clarified. The USPTO can then provide, as a basis for instituting the change, statistics that show just how much time is used to examine applications under 101 today as compared to say 10 years or 20 years ago. My guess is that time went from under a couple percentage points of time (e.g., 2% or less) to something closer to 20% or more.
And it really doesn’t matter how much the USPTO adjusts its fees. Its not going to help them examine 101 any better because the law, as set forth by the courts, is hopeless irreconcilable. One can easily pick from one set of Federal Circuit cases or another set of cases to arrive at some preordained determination (patent eligible or not). Consequently, whether something is patent eligible (or not) or not is based upon what cases the particular person making the judgement (examiner or judge) chooses to rely upon. More money isn’t going to fix that.
“ One can easily pick from one set of Federal Circuit cases or another set of cases to arrive at some preordained determination (patent eligible or not). Consequently, whether something is patent eligible (or not) or not is based upon what cases the particular person making the judgement (examiner or judge) chooses to rely upon.”
Life is so hard for b o t to m – f e e d e r s desperately trying to patent “new” logic and information in different prior art contexts. Boo hoo hoo.
Yet again, Malcolm, you are invited to abstain from any innovation that you would deny innovation protection to.
Else, kindly STFU (or engage on the merits – and we both know you just won’t do that).
As Popeye would say ….Ghaghaghagha. This is the very last day you will ever control me.
You STFU
The USPTO can then provide, as a basis for instituting the change, statistics that show just how much time is used to examine applications under 101 today as compared to say 10 years or 20 years ago.
This is a pretty transparent attempt to enlist the PTO to sign on to your policy goal, which just isn’t the PTOs job.
Since you clearly have no knowledge on this let me explain – When I started in the office before Alice was decided, a primary examining my type of applications was given 26 hrs to examine the application. After Alice that number was changed to….26 hrs. Today that number is – you guessed it – 26 hrs. In other words, the statistical evidence you assume exists does not. Nor would it, as the office guidance essentially makes judicial exception rejections heavily disfavored.
…. “as the office guidance essentially makes judicial exception rejections heavily disfavored.>/i>”
So droll — let’s finish that thought with exactly why the 2019 PEG was set out for examiners.
Hint: it reflects my correct posts on the Gordian Knot of 101 patent (mis)jurisprudence.
Hint: it reflects my correct posts on the Gordian Knot of 101 patent (mis)jurisprudence.
Whatever your thoughts on actual 101, the office 101 is pretty cut and dry. There’s a limited number of exception boxes to fit something into, a limited number of practical application exceptions, a clear-cut standard for conventionality/significantly more and plenty of guidance examples to analogize to. The office even had a pilot program where you didn’t even have to argue back in response until after final. The office makes it exceedingly easy to have 101 argument. It takes a fraction of the time that proper 103 argument does.
There’s a limited number of exception boxes to fit something into, a limited number of practical application exceptions, a clear-cut standard for conventionality/significantly more and plenty of guidance examples to analogize to.
Wow … you are really reaching here. First, a good portion of the USPTO doesn’t even bother to apply the guidance, and if they do, it is done very, very inconsistently. Second, there are only a handful of guidance examples that cannot even begin to hope to cover even a small percentage of the tens of thousands of different technologies that are being examined. And most of those examples are VERY NARROWLY INTERPRETED by Examiners.
The office even had a pilot program where you didn’t even have to argue back in response until after final.
That was a waste. I cannot think of any reason why a client would do something like that.
The office makes it exceedingly easy to have 101 argument. It takes a fraction of the time that proper 103 argument does.
I find the opposite. Because 101 rejections are so art dependent and art unit dependent, I have to make a great multitude of different arguments in the hope that one pushes the right buttons of the 101 quality specialist that is helping the examiner on a particular application. A 103 argument is pretty straight forward. Does the reference teaches what it supposedly teaches? Has the examiner articulated a rational underpinning for the combination?
Wt, it is classic Random: trying to dig his way out of the hole that he dug himself into.
The epitome of examiner oaf-ness – the height of Mount S.
This is a pretty transparent attempt to enlist the PTO to sign on to your policy goal, which just isn’t the PTOs job.
The PTO’s job is to grant patents that meet the requirements of the law. If the law is so confusing that patents issued by the USPTO cannot consistently overcome 101 attacks in the courts, then that is a USPTO problem. Consequently, the USPTO has the ability to ask Congress to clarify the standard.
Unlike 102/103, there is no ‘hidden prior art’ to justify a 101 rejection that could have been made but wasn’t. As such, there is no justification for an attack based upon 101 (or 112) in the courts after a patent has issued. The underlying facts haven’t changed. As such, the USPTO should be looking for a very high rate of their issued claims being deemed in the courts as meeting the requirements of 101 and 112.
While it is up to Congress to determine what is patent eligible and what is not, the USPTO can lobby for more easily-to-apply standards that reduce their own errors.
Since you clearly have no knowledge on this let me explain – When I started in the office before Alice was decided, a primary examining my type of applications was given 26 hrs to examine the application. After Alice that number was changed to….26 hrs. Today that number is – you guessed it – 26 hrs. In other words, the statistical evidence you assume exists does not.
Two different pieces of data. I’m sure the USPTO has (or can readily obtain) a breakdown of how frequently certain rejections were made for various periods of time (e.g., now versus 10 years ago or 20 years ago). I’m also sure the USPTO has (or can readily obtain) an estimate of how long an Examiner spends on an examination based upon the distribution of rejections being made. Since the time to examine hasn’t changed, it is an easy argument to make that the difficult in applying 101 has made for worse examination over the long run because Examiners don’t have as much time to examine under 102/103.
Nor would it, as the office guidance essentially makes judicial exception rejections heavily disfavored.
Heavily disfavored? What alternate reality do you live in?
Ransom has always inhabited his own reality where he both “rejoices” in not being an attorney (and not understanding the law) AND disregarding the number one direction of patent examination (under the law) while blaming attorneys for B A D patent grants — all the while writing as if he were smarter than everyone else.
The epitome of height of Mount S, indeed.
Early 6: “watch as I get patent law and my job wrong.”
Current Random: “Hold my spritzer.”
The job of the examiner is to follow the law. One hopes that the guidance provided by the examiner’s higher-ups is consistent with the law.
This simply is not true. The examiner is given a job that includes quality metrics, and quality metrics are met by compliance with the MPEP. The MPEP explicitly does not track the law. Have you ever gotten a best mode rejection? The office explicitly says it does not do them. Is your 101 rejection an argument on caselaw? Not for years it hasn’t been.
There’s no tension in this. The office doesn’t hire lawyers, and it doesn’t seek the nonconformity of allowing examiners to disparately interpret the law. It seeks uniform compliance using standard rules. It is, of course, the goal of the agency to comply with the law, but that goal is not absolute and neither the office nor the courts pretend it to be.
Your last analogy is terrible — it conflates “office procedure” with supreme court law.
The analogy is not that procedure is law, the analogy is that the examiner’s position under the procedure is the same position the federal circuit has with supreme court procedure – it constitutes binding guidance. You will get just as far asking an examiner to ignore the MPEP as you will getting the federal circuit to ignore supreme court precedent – you may find the odd person who skirts the rule, but generally if you don’t like the controlling language you have to take up with the controllers, not the implementors.
That is because there is no test. There is only the application of subjective phrases that no one really knows the true meaning of. When you don’t have bright line tests, you have fuzzy line tests. This means that one person’s line may be very different than another person’s line.
There’s no bright line standard for obviousness either. Regardless, whatever you think of the test the point is the office doesn’t apply the same test the federal circuit does, so you shouldn’t be surprised the two bodies arrive at different answers.
You really don’t understand how patent prosecutors draft claims. There are no CLE classes or inhouse classes as to how to obfuscate the “main feature” within a patent claim. Claim drafting is an art that is passed down from attorney to attorney.
I assure you I’ve seen far more claims than you have, so I am pretty confident my statement about dependent claims is correct. Regardless of how it arises, dependent claims rarely are used for insulating against overbreadth on the main feature and are more commonly used to add additional legally-pointless features.
This leads to culling, from the claims, unnecessary specifics that while fleshing out a claim (something examiners like) also serve to make the claim easily infringed (something inventors don’t like).
Very rarely will you see four or even three layers of “culling” as you say, that occurs in claims (i.e. rarely will you see 4, depends from 3, depends from 2, depends from 1). Rather you will get maybe two layers and then a broad, shallow base of additional features that have no real relationship to the main functioning of the invention. I don’t know if that is what you are referring to when you call them “unnecessary specifics” but if it was, that is not it.
Perhaps a wired connection would be obvious but a wireless connection would not be obvious and only the specific combination described by the inventors makes that possible, and this combination provides certain benefits not available in a wired connection.
If the invention was enabling a wireless communication in a situation where wireless was not previously available, that would be the independent claim and there would not be competing dependent claims. Dependent claims with wired and wireless variants makes clear that the type of connection is irrelevant to the utility of the independent claim. This isn’t biochem, there aren’t unexpected results.
What you are described must be an old wives tale told at the USPTO because no patent attorney I have ever talked to has described this as a consideration when drafting claims.
I routinely have conversations with patent attorneys who want to demonstrate movement by causing the citation of an additional reference, even if I tell them that I know of the reference and that it will still be a rejection. I can think of only three reasons for this:
1) They recognize (correctly) that the office will call something nonobvious when the number of cited references gets too high, despite the law saying that the number of references is irrelevant, i.e. they trade upon the office not applying the law
2) They don’t know (1) – which they ought to know the law but whatever – but believe this procedure to be legally correct because they’ve learned it through osmosis, i.e. they’re not unethical, they’re just as legally uneducated as the average examiner
3) They dont know or dont care about (1) or (2) but want to show the client they are causing “change” to justify their billing, which is a low-level form of unethical behavior when they are aware it is legally irrelevant change
I actually suspect almost all attorneys fall into (1) or (2), and frankly I can’t even say that there’s anything wrong with that. I don’t necessarily think it is unethical to follow a course of action which will result in your client getting rights and kicking the proverbial can of validity down the road, especially when the alternative would be to intentionally not take rights offered to your client, which just sounds like a tailor made case of malpractice.
We want patent allowances for the sake of our clients.
Just to be completely clear here, since you seem to be somewhat askew in what I am saying – I 100% believe you want allowances for the sake of your clients. I am far more murky about whether you want *examination and by that I mean true, legal examination, prior to allowance.
Our job is not to do your job…Examiners don’t want to know what the law is — like you said, they just want to please their SPE and follow office procedure.
But your job is to do your job, right? And you doing your job requires you to ensure that the office is analyzing the claims according to law. So your job requires you to take it up with the service supplier to make sure that the services you’re paying for are properly aligned. Telling someone who lacks the authority to modify their job or frankly to even really understand your complaint that they need to do something to your satisfaction isn’t plausibly remedying any issues for your client. It’s not doing your job.
Nobody would dispute that if a court is considering invalidating your claim that its your job to argue for the proper analysis of that claim. Nor would anyone suggest that you argue it to the clerk rather than the judge just because the clerk happens to prepare the papers following the judge’s command. So it seems weird to me that you think that its not your job to argue for proper analysis of that claim to the PTO, and it also seems weird that your argument is directed to the PTO’s agent rather than the PTO’s commanding body.
The Examiner’s job is to follow written procedure because individual examiners are not empowered with authority to make freestanding judgments according to their own interpretation of caselaw. An examiner is correct to not want to know the law, because its not our function to depart from binding procedure.
While I would like to help you do your job, in most instances, that help is not wanted….For example, the USPTO should be going to Congress regarding 101 and explaining to them just how hard to the current set of laws is making it to examine patents. They can describe the inconsistencies in the language. They can present statistics about how application of this has wasted XXXX thousands of examination hours, which takes away from examiner’s ability to examine patents under other sections of the law.
You may not believe this, but I am entirely agnostic on what the law is. I’m even largely agnostic on what the office procedure is. That’s because I, unlike several of the lawyers here, am not in any way confused about whether I have remotely enough resources to find the “right” answer to any question, let alone whether a right answer truly exists. You’ll spend millions of dollars on well-trained legal minds and experts, and the opposition will do the same, and it’ll be a coin-flip on validity and appellate review may come down just the other way.
I think its adorable that you think that you, a single attorney, could “help” to find the right answer when put up against that. You are – and I say this with respect but sincerely – *unqualified to find the right answer, and I know that because a multitude of you with a judge’s help often come to the wrong answer. You need only scroll back to find a mass of your colleagues who constantly mispredict how a case will come out or complain about one judge or another’s logic.
You pay for 26hrs of one person with a database. It would not surprise me if they make inaccurate rejections 10-20% of the time and inaccurate allowances 90% of the time. It would also not surprise me that if you started to “help” those inaccuracies would only increase. I am also fairly certain that if the office changed its procedure to more closely align with the law the examination time would massively increase and the accuracy would not appreciably move. This is because you have neither the time nor the money to engage in actual examination. I hate to suggest I know your motivations more than you but trust me – you don’t want real examination, it would put most of you out of business. The office doesn’t depart from the law just for sh*ts and giggles, it does it because it maximizes the goals of the public by trading off an extremely marginal loss in accuracy for a huge gain in resolution speed.
Now I personally believe that it’s right to because most applications aren’t ever worth anything so its largely irrelevant if they’re not examined as accurately as possible. The office best serves its function as a coarse filter to remove worthless claims and place other claims in marginally better form for lawyers to argue over, because you can’t afford us to be as accurate as possible. But if you wanted to go the other way I wouldn’t much care. I care very little whether I spend 260hrs arguing over the claims in 10 applications, or 260hrs arguing over the claims in one application, or even 260hrs arguing over a single claim. Nor do I care whether I’m arguing over 103 or 112 or 101. And for the people on the other side who complain about pendancy and backlog I wouldn’t have a problem spending 260hrs bulk-stamping “Allowed” on claims either. I don’t care what the standard is because – and this I bet you will easily believe – I don’t care whether you end up with claims or not. The *policy of who gets claims how much they are scrutinized is above the examiner’s pay grade. I just do the best analysis I can according to the standard I’m told to apply with the amount of time and resources allotted. When I am done with your claims I close the file and reach into a stack that for all intents and purposes is infinitely large and draw another set of claims to argue about tomorrow. I understand for you it’s a winning/losing situation, but for me its irrelevant if I allow sixty claims in a day or spend all month arguing over the finer points of a single claim element.
But regardless of whether you believe you can achieve or even want more accurate examination policy, you absolutely are wrong to direct your complaint to the examiners rather than the policy writers. If YOU don’t like how little an allowance translates into protectable rights and that causes tension or problems for your client then I totally understand why YOU would go to congress, but *I got paid before Alice and I got paid after Alice and I’ll get paid if Alice gets written into oblivion, same with Amgen, same with Ariad. I happen to fully agree with the logic in all three cases (which leads me to believe you’d be unhappy if you got what you’re arguing for here), but if my boss were to tell me to toss them in the dustbin tomorrow I will gladly do so. But I will tell you that if you want someone who simulates legal analysis, you’re going to need to hire lawyer-engineers, not just engineers. That won’t be free. If you want to simulate the prior-art finding of an infringement action you’ll need to pay for a lot more than 26 analysis hours. That won’t be free. The office can’t even keep up hiring of engineers on its current pay schedule. You’re going to price yourself right out of clients. But that’s a you decision. I totally support whatever decision you make and you can get the higher-ups to buy into. I’ll examine however they tell me to.
“I routinely have conversations with patent attorneys who want to demonstrate movement by causing the citation of an additional reference, even if I tell them that I know of the reference and that it will still be a rejection. ”
Yeah that’s routine. At least once or twice per biweek for me that is happening, often explicitly like you say in interviews but other times you can tell that’s what is happening.
“I can think of only three reasons for this:
1) They recognize (correctly) that the office will call something nonobvious when the number of cited references gets too high, despite the law saying that the number of references is irrelevant, i.e. they trade upon the office not applying the law”
That’s correct that once the number of refs is high it is likely non-obvious but that is in compliance with the law on account of how daft the posita truly is under the court’s creation of the posita. Literally it’s a man like 2 years out of school (and not more than 4) in many arts. Basically just a baby in the art. This being because they cannot be an expert, which is reached around year 4.
“2) They don’t know (1) – which they ought to know the law but whatever – but believe this procedure to be legally correct because they’ve learned it through osmosis, i.e. they’re not unethical, they’re just as legally uneducated as the average examiner”
Nah it’s legit legally. They just believe on the record before them that the claim is not obvious and not anticipated. If the office thinks otherwise they want to make the office show that work. And they’ll pay for it. Personally I think the fee should be double in such situations (or whatever) but at present it remains just as is.
“3) They dont know or dont care about (1) or (2) but want to show the client they are causing “change” to justify their billing, which is a low-level form of unethical behavior when they are aware it is legally irrelevant change””
Nah usually not that I doubt, rather it is literally the client that wants to put forward the most broad fantasy claim they can and see if the office can correctly reject it or not (basically just baiting a bad rejection), or they just want to kick the can down the road a bit (buy time on the ol 6 mo timer) or some other thing.
“which just sounds like a tailor made case of malpractice.”
Not malpractice if that’s what the client wants to do derp.
“Telling someone who lacks the authority to modify their job or frankly to even really understand your complaint that they need to do something to your satisfaction isn’t plausibly remedying any issues for your client. It’s not doing your job.”
Indeed you have to go full Karen, but they won’t. Cause they won’t be able to get mgmt to do what they want, so they try to bully the “cashier”.
“The Examiner’s job is to follow written procedure because individual examiners are not empowered with authority to make freestanding judgments according to their own interpretation of caselaw. An examiner is correct to not want to know the law, because its not our function to depart from binding procedure.”
Debatable, a bit of a grey area at this point in history. In theory we’re supposed to be, but in practice we aren’t of course, at least most of the time.
“You pay for 26hrs of one person with a database.”
Pretty sure I get like 18hrs.
“The office can’t even keep up hiring of engineers on its current pay schedule.”
I thought we were all good on hiring lately.
^^^ WAY too many words on something you clearly have no c1ue about.
It seeks uniform compliance using standard rules. It is, of course, the goal of the agency to comply with the law, but that goal is not absolute and neither the office nor the courts pretend it to be.
You really need to find another job. You are part of the executive branch, and the job of the executive branch is to implement and enforce the law — not meet quality metrics. Your comments are cringeworthy to the nth degree.
You will get just as far asking an examiner to ignore the MPEP as you will getting the federal circuit to ignore supreme court precedent
LOL. I’ve had examiners tell me that they ignore the MPEP. Guidance documents are not the law. The MPEP is a very imperfect attempt by the patent office to create “Cliff Notes” for examiners. That point aside, I find that most Examiners have a very loose familiarity with the MPEP anyway so it is really a moot point. They cannot follow something they don’t even know (or understand).
I think its adorable that you think that you, a single attorney, could “help” to find the right answer when put up against that.
Adorable or not, if you’ve read the MPEP, you are (admittedly) bound by my work product. Its not particular hard as the USPTO doesn’t exactly attract a lot of top talent. Sure, there will be some that are looking for an easily lifestyle, but the best attorneys are going to find their way to private practice because that is where the money is at.
So it seems weird to me that you think that its not your job to argue for proper analysis of that claim to the PTO
Nice strawman. No one ever made that argument.
You need only scroll back to find a mass of your colleagues who constantly mispredict how a case will come out or complain about one judge or another’s logic.
That’s a failure of the Federal Circuit. The law should be predictable.
It would not surprise me if they make inaccurate rejections 10-20% of the time and inaccurate allowances 90% of the time.
I find inaccurate rejections 80-90% of the time. 112 rejections are wrong about 90% of the time. The prior art rejections are lousy — based upon made up findings and misinterpretation of the prior art. This is understandable as there is little negative consequences for making a bad rejection.
I don’t care whether you end up with claims or not.
That’s you. However, don’t confuse your beliefs with how the USPTO, as a whole, operates. I have encountered a number of examiners who will not allow anything unless they are forced to by the Board. I come across examiners who make absolutely lousy 112 rejections (a lot of them happen to be in 3600) who make rejections that have zero basis in the law or the MPEP. TBH, if Examiners were actually to follow the letter of the MPEP, the Office Actions would be 5x as long as they are now.
I understand for you it’s a winning/losing situation
I don’t win or lose. My client does. Regardless, my clients are sophisticated so they know when they’ve been scr wed by the system so winning or losing doesn’t fall on me. Also, they have a stack of hundreds/thousands of other applications to work with, so losing one or ten or a hundred isn’t a big deal. I’m here (commenting on these blogs) because I’m passionate about (and believe in) the patent system. I do care.
you absolutely are wrong to direct your complaint to the examiners rather than the policy writers
Who said I haven’t complained about the policy writers? My complaints against examiners are different.
I happen to fully agree with the logic in all three cases
There is no “logic” in these cases — there is only poorly thought out policy-making dressed up as logic.
But that’s a you decision.
We don’t set the fees. You do. Not our decision to make.
Absolutely D E A D on with every point, Wt.
Also, every point previously supplied to Random, and most all supplied to him by me.
In that case, it should be on USPTO management to lobby Congress (and the Courts via amicus briefs) to rewrite the law that allows you to do your job more efficiently while still following the Constitution’s mandate of promoting the progress of science and the useful arts.
“Congress is not doing its job to write clear laws. PTO management is not lobbying for administrable laws. They are bad at their jobs.”
let’s try to remember that the judicial exceptions are only very, very loosely tethered to the statutory text of 101. It is 100% made up judicial law that has been very poorly explained by the judiciary.
…There is no “logic” in these cases — there is only poorly thought out policy-making dressed up as logic.
“The Supreme Court is bad at their job.”
That’s a failure of the Federal Circuit. The law should be predictable.
“The Federal Circuit is bad at their job.”
Guidance documents are not the law. The MPEP is a very imperfect attempt by the patent office to create “Cliff Notes” for examiners.
…Who said I haven’t complained about the policy writers?
“The function of an examiner is to follow the law, and following the MPEP does not result in following the law. The policy writers at the PTO are bad at their jobs.”
I have encountered a number of examiners who will not allow anything unless they are forced to by the Board. I come across examiners who make absolutely lousy 112 rejections (a lot of them happen to be in 3600) who make rejections that have zero basis in the law or the MPEP.
“Examiners are bad at their job.”
How fortunate that patent law has Wandering Through as the sole light in the darkness, hahaha.
I particularly like this flow of logic:
So it seems weird to me that you think that its not your job to argue for proper analysis of that claim to the PTO
Nice strawman. No one ever made that argument.
[Three paragraphs later]
I don’t win or lose. My client does. Regardless, my clients are sophisticated so they know when they’ve been scr wed by the system so winning or losing doesn’t fall on me.
[Three more]
But that’s a you decision.
We don’t set the fees. You do. Not our decision to make.
Gee, if only the client had someone who they could hire whose job it was to make sure that the system doesn’t scr w them by demanding their statutory rights to a proper analysis of the claims.
You are part of the executive branch, and the job of the executive branch is to implement and enforce the law — not meet quality metrics.
If the client found a competent one of those they wouldn’t have to accept systemic scr wing, they could use the judiciary to force the executive agency to comply with the law. Do you…do you not know how to file a case in district court? I can get you a pamphlet.
the best attorneys are going to find their way to private practice because that is where the money is at.
Oh – you should call one of them up, I bet they can help you.
Imagine being an inventive entity that gets scr wed and has an attorney that can allegedly point to a publicly available document that causes systemic scr wing, but the attorney does not force the agency to fix the failure to provide your statutory rights. Instead they just convince you to accept the violation of your rights while pocketing your money and complaining about everyone else. Is protecting your clients’ rights not part of your job either?
You really need to find another job.
Perhaps yours – after all, the clients deserve to have someone do it.
Look you seem to be unable to connect the dots so I will spell it out for you: You are wrong in your facts and in your law, but lets assume for the moment you’re entirely correct. If my job is to follow the law, but my agency writes policy that does not comply with the law and demands that I comply with the policy instead, and one’s client is harmed by this agency procedure, it seems like a pretty simple cause of action for any competent attorney. The problem is that you (and anon before you) lack the courage to test your bloviations. When I follow some “illegal” policy (the illegality is always nebulous other than it results in your clients not getting allowances due to the examiner or the office being malicious or incompetent) and you don’t take the issue into your own hands but instead come here complaining – begging or cajoling me and other examiners to maybe, possibly take favorable nonpolicy action rather than using the courts to demand the legally compliant policy that is owed your client – it betrays that you think you lack the acumen to prevail on what you believe to be a meritorious cause of action.
If the MPEP is not the law then you have a mechanism available to you to force the striking of noncompliant MPEP sections. Lawyers strike illegal government action all the time. Either way it is unquestionable that the proper legal procedure is to adjudicate the issue in court against agency attorneys (who can provide competent argument to agency policy) to provide consistent rules for every applicant, not to try and convince individual nonlawyer ground-level examiners to break from the MPEP by following your legal guidance rather than the public’s. BRI claim construction was challenged as not complying with the law and that attorney lost but at least he had the courage to settle the issue in court rather than keyboard jockeying against nonlawyer examiners. Imagine being so afraid of arguing one time against an evenly-trained opponent that one will multiply their work by making arguments multiple times against untrained opponents in the hope that they might achieve scattershot justice for some fraction of their client base. Sad.
Random climbs to his peak of Mount S — in so many ways, not the least of which is his supposition that I somehow have not successfully challenged improper examiner applications of ‘rote’ MPEP use.
I have done so more times than I can count. Typically successful in both educating the examiner (some of those times sadly requiring the step of a pre-appeal conference).
His “I am just following orders” mindset – while no doubt symbolic of the typical bureaucrat, remains a point of him simply not understanding what his job actually is.
And it is even more sad that even while ‘rejoicing’ in his non-understanding of law (ahuck ahuck, examiners are not attorneys), the fact of the matter is that he must examine UNDER THE LAW (contrast with ‘under the guidance’), AND he – no doubt – has attorneys explaining to him just what that means.
Re: “I, for one, am entirely happy to let someone file 3, 4, 5 RCEs and just bang their head against the wall. Many examiners are not.’
There are good reasons not to have a docket control system that does encourage such extensive application pendency delays. In particular, it allows applicants to keep changing claims to cover years later actual products of others that they could not have been aware of before fully massively committing to production and marketing if they did not infringe the published application claims.
Are you confusing (and conflating) RCEs and Continuation practice there Paul?
“There is some mistake on anon’s part, though due to his outsiderness more than anything else. The examiner’s primary job is to comply with office procedure, not to follow the law. The translation of the law into procedure is above the pay grade of the standard examiner, as most examiners are not lawyers and would be incapable of complying with caselaw even if they wanted to. It makes as much sense to ask an examiner to apply law that contradicts office procedure as it does to ask the federal circuit to overrule the supreme court.”
That is a scary, but honest, paragraph. Maybe it is time to require that patent examiners be lawyers like trademark examiners?
Honest as nothing to do with being correct.
That he think that this is somehow “above his pay grade” is a veritable stain on the patent office.
This is exactly the attitude that must be expunged as it prevents any actual improvement in examination quality.
“The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims …”
Shocking no one. Absolutely no one.
But the good CAFC news is . . . oops, sorry; my mistake.
There is no good news. None whatsoever.
The amount of attorneys and their assistants that have no cell service in 2023 while trying to use cell phones is truly terrible. Seriously, ATT or Verizon, pick one.
Some amusing discussion below about an alleged “decline in quality of patents” that are presently being granted. Really? Worse than the patents that were regularly being granted pre-Bilski/Mayo/Alice? I highly doubt that.
It has ALWAYS been the case that the quality of what comes out of the PTO is directly related to the quality of what is going into the PTO. Applicants who file on vaporous abstract nonsense (now with “generative” “AI” wowowow!) and/or who refuse to engage with and understanding the prior art and the law before filing will ultimately get exactly what they deserve (a worthless piece of paper) and nothing else.
[shrugs]
Mindless drivel and a complete lack of understanding of what quality examination means:
“It has ALWAYS been the case that the quality of what comes out of the PTO is directly related to the quality of what is going into the PTO.”
Let me guess Malcolm, you never had a job in the “real world.”
Proper output under quality examination results in granted patents under the law — absolutely detached from quality of input.
Further, low quality input should be easier to dispatch under a system of quality examination.
I certainly understand that quality examination can be a tough job. But the “c r a p in” cases (and to your writings, that would be most all cases outside your own bucket) are NOT a tough job under quality examination.
We’ve taken over plenty of doozies written by other firms (at the client’s bequest, mind you), and done our level best of sow’s ear alchemy, but YOUR emotive rants simply show that he massive cognitive dissonance of you working in a field — creating protectable personal property — that is in deep conflict with your Sprint Left desires.
MM bro, are you keepin eyes on SWEDEN? Based Sweden is going to CALL IN THE ARMY to defeat GANGS (yes, the GANGS of SWEDENLOL). Based Sweden is also making CHILD ASSASSINS great again bro! Apparently their laws were not designed to deal with literal CHILD ASSASSINS. They just didn’t foresee CHILD ASSASSINS. lolololol.
link to yahoo.com
#multiculturalism #religionofpeace #endhatepermanently
MM doesn’t know why Chicago keeps producing hard right wing economists. My girl right here lays it out.
link to tiktok.com
“MM doesn’t know why Chicago keeps producing hard right wing economists.”
Where do right wing reactionary full of cr @p authoritarian a h o l e s come from? And why do so many of them hang out at patent blogs (lol) whining about how persecuted they are, whining about “wokeness”, and wringing their hands over all these uppity women and colored people. It’s a real mystery.
… as opposed to left wing “
reactionary full of cr @p authoritarian a h o l e s ”…?
Pop history question for you Malcolm: which wing of authoritarianism has caused more death and destruction (FAR more) over the last two hundred years — left or right?
It’s not even close.
Also: which wing relies MORE on identity politics?
Hint: same wing – and it’s not a good look for you.
… and of course, Malcolm disappears when reality is presented to him.
¯\_(ツ)_/¯
In an IPR why doesn’t the PTO adopt the patent owner’s request for a narrow (and reasonable) claim construction? If they are disclaiming subject matter while clarifying the scope of the claims, everyone wins. It is absurd and chaotic for the PTO to insist on a broader construction in order to invalidate their own work product.
Because that amounts to letting a patent owner rewrite its claims in an IPR. From Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022):
We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process.
“A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process.”
Would it?
Why?
Is not the aim to have a “correct” patent? Or is your aim the obliteration of any patent?
Just another example of why merely being a litigator is “not even making the whiffle ball team.”
Seeing as how I was quoting from a recent Federal Circuit case (another example of your habit of selectively reading), you could have looked up the case in question and found that the court spends another page explaining why that’s the case.
Professor Crouch posted about Cupp Computing, and you ranted extensively about the AIA in the comments: link to patentlyo.com
Presumably, you did so without actually reading the decision in question. And, for everyone else’s convenience, here are the key quotes explaining why:
“If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured.”
“We hold only that a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in that proceeding. This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination.”
“Moreover, Congress created a specialized process for patentees to amend their claims in an IPR. CUPP’s proposed rule would render that process unnecessary because the same outcome could be achieved by disclaimer.”
“Nullifying Congress’s amendment process would be particularly perverse because Congress protected the public in ways that CUPP’s disclaimer rule would not. Congress gave accused infringers “intervening rights” protection for substantively amended claims, ensuring that such claims have only prospective effect.”
You may not like the rule, but permitting the PTAB to disregard Patent Owner arguments regarding claim scope is the correct outcome: the Board then focuses on the correctness of Patent Owner’s arguments instead of having to be bound by them. And if the Patent Owner wants the Board to be bound by its new statements regarding claim scope, it can amend the claims.
Selective reading….?
Maybe if you wanted to present a point you would do so and not expect others to rummage through your links for it.
Regardless, I was asking you – not the court.
You are capable of independent thought and expressing WHY you might be inclined to think that some (other not present) reasoning is compelling for you, eh?
(Things you learn when you actually DO make sports teams, perhaps…)
… and here, the notion of prospective rights is not orthogonal to the point that you seemed miffed about.
It seems that your response and the cites address a slightly different case. I’m not arguing for patent owners to change the meaning of their claims, only to clarify. If it passes 112 there is still a reasonable dispute over the meaning, the sensible policy is to allow the patent owner to provide the desired clarification.
Also the cited holdings only affirm the current PTO policy. I am suggesting the PTO should modify that policy, which would also be affirmed under APA. I’m aiming for what is best, not what is allowed.
The underlying reasoning is persuasive, however. If Patent Owners wish to have the final say on the scope of the claims, they can change the claim language. And they have perfectly adequate mechanisms for doing so.
Absent the Patent Owner deciding to amend the claims, I don’t see why parties to a proceeding (be in the examiner, the Board, a Petitioner, etc.) should be bound by a Patent Owner’s arguments about claim scope in that same proceeding. The idea that the PTO has to accept a Patent Owner’s claim interpretation when faced with a specific invalidity theory has the effect of permitting the Patent Owner to be both a party and an adjudicator in that proceeding.
The current setup, evaluate a Patent Owner’s arguments for correctness in the instant proceeding and bind the Patent Owner in subsequent proceedings, works quite well.
You seem quite content to want binding in one direction.
Then again, you are most likely not even aware of the binding that occurs during prosecution, now are you?
¯\_(ツ)_/¯
I’ve won cases based on prosecution disclaimer, so I’m well aware of it. At claim construction,* it’s a pretty high bar (as it should be), and generally only comes into play when prosecution counsel says more than they need to. Skilled drafters are smart enough to not fall into the trap.
You seem to be missing that claim amendments are a thing. If a patentee wants to change claim scope post-issuance, it has the tools to do so.
*you probably don’t know this because you’re too busy patting yourself on the back for being a prosecutor, but claim construction is a proceeding during litigation where a Court/PTAB panel/ITC ALJ resolves disputes about the meaning of claim terms.
I am missing no such fact of the possibility of amendments.
You though seem intent on showing just why you could not even make the whiffle ball team.
You really want to make a snide comment about prosecution amendments in the context of a post grant litigation setting?
Stop and think before you write.
By the by, my very first mentor was BOTH a litigator and an active prosecutor. My background includes your ‘skill set,’ and I most definitely can say that the reverse is not true.
You really want to make a snide comment about prosecution amendments in the context of a post grant litigation setting?
The IPR process expressly allows for a patent owner to amend the claims. It even allows for a patent owner to make those amendments contingent on the Board finding the original claims unpatentable (i.e., amend these claims if you don’t accept the claim construction argument being discussed here).
I’m not seeing anything from you addressing the substance of my posts.
No – the IPR does not provide amendment as a matter of right (as exists in prosecution).
You keep on wondering why you never even made the whiffle ball team…?
What you are suggesting will lead to patent applicants drafting vague and broad claims with the idea that they can narrow them during an infringement hearing in order to specifically target an accused infringer while making it hard to invalidate. That is a terrible policy.
And patentees already have the option to narrow through a
I think you reach too far. No one is saying that other legal requirements (such as 35 USC 112) are made to disappear.
If AI is supposed to, and should be, providing better and cheaper prior art searches, why are so many patent applications still being originally filed with shotgun or blunderbuss claims written as if no claim-material prior art exists? If they think the U.S. examiner will do all their prior art claim narrowing by requirements for them, they are wrong.
? This is a reissue application with about 500-ish cited references.
The bigger issue is that USPTO can’t produce a high quality (i.e., IPR-survivable) patent given two chances.
Does the expression “caveat emptor” have wide currency in the USA? Also at the EPO, these days, one has the impression that Patent Offices see their job as performing a superficial scan, proportionate to the fee paid by Applicant for examination of patentability, all the while expecting the Applicant to be careful what they ask for.
It seems to me increasingly pointless to call upon the PTO to “Do your job”. They differ from Applicants, more and more, in their perception of what their “job” really is.
Remonstrations with the PTO, from outside the PTO, that “quality” means issuing patents that withstand validity attacks, increasingly fall on deaf ears, as far as I can gauge.
It all reminds me of the days in UK prior to 1978 and the EPC, when the Office was obsessive about clarity (definiteness) but did not examine at all for obviousness. That was left to the judgement of the Applicant. When the EPO was set up, many UK attorneys lamented that it was futile to suppose that a PTO Examiner could ever do a satisfactory job of examining for obviousness.
Let’s just nip that EPO-Uber-Alles
C
R
A
P
in the bud.
“Does the expression “caveat emptor” have wide currency in the USA?”
The currency of what is paid – as set by the Office – is a patent fully vetted and TO BE valid.
The presence and level of the presumption of validity has been tied to this — and aside from your slinging feces at the wall (yet again), Max Drei, YOU KNOW THIS (in no small part because I have told you nigh countless times now).
“It seems to me increasingly pointless to call upon the PTO to “Do your job”. They differ from Applicants, more and more, in their perception of what their “job” really is.”
Wr0ng – 180 degrees.
That they may ‘feel’ that their job is something other than what is set by law is EXACTLY more reason to call upon the PTO to (and let’s get the emphasis right):
Do their
F
N
job
If you are going to insist on being a presence on US Patent Law blogs, have the courtesy of at least trying, Max Drei.
“It seems to me increasingly pointless to call upon the PTO to “Do your job”.”
The point of such exhortations is not to produce any change, but rather to relieve the speaker of responsibility.
No one believes that you can buy 20 ribeyes for $20. And no one believes that the patent office can fund a thorough examination with the current fee structure.
But it’s important to blame someone else when you’re a “20 ribeyes for $20” purchase liaison.
Pure and utter b011ocks, Ben.
The responsibility at point IS examination quality.
Practitioners (those doing the exhorting) have zero responsibility for examination quality.
The Office is fully able to set what (you) would consider to be ‘appropriate fees.’*** It would not be too difficult of an exercise to go through the budget, base costs on a (different) agreed upon examiner pay rate and throughput expectation and roll up (even making minor modifications for post grant time escalations, entity size and the rest), and set the Office total budget accordingly, as the Office is NOT a profit center and is ENTIRELY funded by practitioners.
No matter how you feel about your internal metrics, you are still tasked to examine fully under the law.
This is ONLY about you and you not doing your job.
*** to your (fallacious) analogy, the Office is selling what it is selling. That they turn around and have your metrics different is a YOU problem.
“The Office is fully able to set what (you) would consider to be ‘appropriate fees.”
That’s not true, it’s corporate captured. And no doubt there are a lot of attorneys, maybe not patent prosecutors, but attorneys, who are in on that corporate capture.
You know this. You just keep dancing around it.
“It would not be too difficult of an exercise to go through the budget, [and make changes]”
No sht, they’ve already told you why they don’t. The system as is is already considered “fine” something they don’t want to try to “fix” if it ain’t broken. And they’ve explicitly already said they’re corporate captured. What you can’t grok about this nobody can understand.
6 provides the explanation (“corporate capture”) for the decline in quality that I wrote at 2.1.1. So don’t be misled by any corporate spokesperson who laments that PTO examination “quality” is declining.
As it-girl (that’s it and not IT) Mandy Rice-Davies famously said of Lord Astor in the witness box under x-exam in the Profumo trial many years ago “Well, he would, wouldn’t he?”
Don’t waste your time trying to convince the guy selling maps to a “20 ribeyes for $20” truck that he has any responsibility for people throwing good money at bad meat. He knows it’s true and he doesn’t care.
You keep on being upset that practitioners merely want what is offered at the price being offered.
That’s not a good look for you.
“What you can’t grok about this nobody can understand.”
You’re trying to convince the 1820s “human merchandise” auctioneer that his hands aren’t clean.
The thing is, he’s already defined the world so that only the owner has any culpability.
Grok’ing is one thing. I completely grok the notion of capture.
But as noted above at 7.1, “capture” is NOT your job.
Do your
F
N
job.