Board of Patent Appeals and Interferences (BPAI)

Eight Reasons: I am undergoing a project to better understand the role of the Board of Patent Appeals and Interferences (BPAI).  There are several reasons why BPAI is now receiving more limelight than ever. Here are eight such reasons: (1) every proposed patent reform bill includes an expanded role for a patent administrative court, such as the BPAI; (2) as various technology centers make patents more difficult to obtain, more cases are appealed to the administrative court; (3) under the proposed rule changes to limit continuation applications, more cases will likely be appealed; (4) as the value of patent rights continue to grow, important cases will continue to be challenged; (5) the publication of patent applications means that BPAI decisions can now also be immediately published; (6) the current large batch of examiners without much experience requires a serious check on potential abuses of naiveté; (7) under Judge Fleming, the BPAI has begun to open up to more public input and scrutiny; and (8) BPAI decisions are now available via Google search and Westlaw search.

BPAI is a Busy Court: It is important to recognize that the BPAI is deciding 3,500 cases every year. Thousands more are ‘settled’ prior to a BPAI decision either because the patent examiner withdrew a rejection (and likely re-opened prosecution) or the patent applicant filed a continuing application or abandoned the case. The BPAI usually sits in three-member panels, although there are occasionally ‘stacked’ panels for important cases such as Lundgren or Bilski.  In my one-year sample, over seventy different Administrative Patent Judges (APJs) authored opinions. 

As part of my initial study, this week, I created a database of information on recent BPAI decisions and coded them by issues discussed.  My database is derived from decisions available on Westlaw. Consequently, it is missing some decisions. In particular, Westlaw decisions do not include appeals associated with unpublished patent applications.

The table below looks at board decisions for each technology center. The relative numbers are interesting — showing a low affirmance rate for rejection of business method cases (TC 3600) and a high affirmance rate for chemistry cases (TC 1700). The BPAI offers its own calculation of these numbers based on all of its decisions that are roughly parallel. [LINK]
(Note, the table does not add-up to 100% because I excluded decisions to remand and deny rehearing).

Independence of the BPAI: One serious question about the competence of an internal patent appeal board is whether that body can act independently from the examining corps. Most of the BPAI judges are former examiners and they all work for the PTO Director. Although not conclusive, the above numbers give me some cause for hope that the BPAI does act independently. Over the past several years, many of the art units of TC 3600 has been notoriously difficult on applicants (especially e-commerce and business method groups). The BPAI’s low affirmance of rejections from that technology center may indicate that the Board has taken an independent stand against overzealous rejection practice.  There are many other explanations, including some selection bias or difference in quality of attorneys. In addition, there is a skew of judges — i.e., Judges with a technical background related to a particular technology center are more likely to judge cases from that technology center. The BPAI rightfully does this to ensure that every case has at least one administrative patent judge (APJ) who is prepared to understand the technology at issue.

Issues on Appeal: Far and away the most decided issue is that of nonobviousness. Almost 80% of decisions involved a discussion of nonobviousness and 30 U.S.C. 103(a).  Unfortunately for patent applicants, nonobviousness decisions were also the most difficult for applicants to win. In my study, decisions involving Section 103(a) were affirmed 63% of the time; decisions involving anticipation under Section 102 were affirmed 55% of the time; and decisions involving Section 112 were affirmed 52% of the time. As more issues are added to an appeal, the chance of affirmance goes down, and the chance of a split (reverse-in-part) decision goes up.

As might be expected, split decisions tend to be longer than others: 4500 words for split decision vs. 3500 words other decisions.  If a short decision arrives at your desk, you may assume it is a remand.

Notes:

• BPAI Website
• Patently-O: BPAI Informative Opinions
• Patently-O: How long does a BPAI appeal take?
• Patently-O: BPAI Appeal Statistics
• Patently-O: Pre-Appeal-Brief Conference 

Comments

[CaveMan]

Dennis, please don't forget the cases that don't make it to the BPAI because of a successful pre-Appeal Brief request for review was submitted. The pre-Appeal Brief request is a powerful tool for applicants who want one last chance to consolidate their position and force the Examiner to undergo the scrutiny of supervisors and peers. Unfortunately, often times, the pre-Appeal Brief request is the first time the Examiner has really sat down and taken a hard look at the case. Not surprisingly, the result is often allowance or reopening of prosecution. Personally, I am batting .1000 on mine - even where obviousness issues are present.

[Chuck Burpee]

Why do the percentages for each TC not add up to 100%?

[huh]

Caveman, are you batting 1.000 or 0.1000? Not sure if that's a typo. Because I'm about 0.1000 on my pre-appeal brief requests for review.

[Dennis Crouch]

Chuck Burpee: The table includes outcomes of Affirmed, Reversed, & Split. The TC percentages do not add to 100% because there are other potential results from the board, including "Remanded" and "Rehearing Denied."

[Retired Examiner]

When I first became and examiner back in the mid '70s, I was told that a good examiner would be reversed by the Board about 1/3 of the time. The reasoning was that about 1/3 of the appealed cases were cases in which the examiner had a good rejection and should have never been appealed based on the art, but were being appealed for other reasons; these should be affirmances. The other 2/3s are cases in which there was a genuine basis for disagreement on the obviousness, and so about 1/2 of these should be affirmances, the other 1/2 reversals, because reasonable people can, and do, disagree on the judgement of obviousness. If an examiner, it was said, had a reversal rate much lower than 1/3, then they were allowing too many close calls, if much higher then they were taking too many cases on appeal on weak rejections. The numbers above seem to still basically reflect this wisdom.

[Lowly]

Huh,

In what situations are you using pre-appeal briefs? I will file one when the examiner is 100% dead wrong and my success rate has been fairly good.

Lately it seems all we do is lose on a full appeal, no matter how good our argument and no matter how awful the examiner's argument, and it's better to rely on pre-appeals, rce's, and examiner interviews to get what we can for the client.

[CliveFenster]

Dennis, thank you for the research and breakdown. In a former life, we were reluctant to appeal (consumed to much time and money); now, the reticence is gone. Good to have the snapshot and trends for what are fairly uncharted waters.

I've only had one Pre-Appeal Brief Request not result in a reversal (partial or complete). That one is now on appeal, as is another case with a highly related point of contention. (Didn't bother with the Pre-Appeal Brief Request there, although in hindsight I probably should have.)

[I almost want to name names]

I have huge problems with a couple 3600 art units myself, and I'm not talking business method units. I am always grateful when applications get classified to 3700 instead. Why must 3600 be so unreasonable?

[Lee Hollaar]

Some more things to add to the eight reasons the BPAI has become more important:
(9) The Board has learned to write their opinions with clear findings of fact and conclusions of law, so that Zurko deference is given to their factfinding when the CAFC reviews their decisions. Before, their opinions often read like office actions.
(10) Also under Judge Fleming, they added the "informative opinions" that get around the old requirement of agreement by at least half the APJs, so that the Board can develop a body of (at least semi-) precedential law.
(11) With the new Federal rules essentially getting rid of "unpublished" opinions by allowing their citation in other cases, the CAFC may summarily affirm ("36") cases where it generally agrees with the BPAI and doesn't want to write a new opinion that could be misconstrued. And with such a summary affirmation by the CAFC, there is a good argument that a nonprecedential BPAI opinion is now Federal Circuit law, to be followed by the Board and the examiners.

[young patent examiner]

In reference to the 6th reason that Dennis cites, a recent announcement about how great the Patent Training Academy is (yeah right) disclosed that since January 2006, 1400 new examiners have graduated from the academy with another 760 currently enrolled. So, that means 2160 new examiners hired since Fiscal Year 2006. In the announcement, it also states the Patent Corps is now over 5550 examiners. But, I read that and immediately thought, 2160 of 5550 examiners have 2 years or less of experience. Now, that is scary.

Also, when I was hired in 2005 (the last incoming "class" before the Academy began), they told us that there were 5000 examiners, including the 900 or so who were hired in that year (FY2005). So, they've gained a net 550 examiners after hiring 2160! I know that some people retire, too, but that certainly leads me to believe that there needs to be more pressure put on the office for retention, rather than just for hiring. It doesn't help to hire 1200 people and have 500 of them quit within the first year.

[Lowly]

Why is there so much turnover among examiners? For someone with just an undergraduate degree, the pay isn't bad. I know plenty of engineers who recently started at LESS than the amount examiners make.

[XRet]

"Why is there so much turnover among examiners? For someone with just an undergraduate degree, the pay isn't bad. I know plenty of engineers who recently started at LESS than the amount examiners make"

There's more to life than money. Many consider the job to be a Kafka-esque nightmare.

[anon]

"According to our survey of patent examiners, 67 percent, regardless of their tenure with the agency, agree with union officials that the agency’s production goals are among the primary reasons they would consider leaving USPTO. Moreover, we estimated that 62 percent of patent examiners are very dissatisfied or generally dissatisfied with the time allotted by USPTO to achieve their production goals. According to our survey, 50 percent of patent examiners are also very dissatisfied or generally dissatisfied with the way in which the agency’s production goals are calculated, and a number of respondents noted that the production goals are outdated, have not changed in 30 years, and some technologies for which they evaluate applications had not even been discovered at the time the agency’s production goals were set."

http://www.gao.gov/new.items/d071102.pdf
[GAO report on USPTO hiring/retention/backlog problem]

[coast]

"Many consider the job to be a Kafka-esque nightmare"

Please explain -- and please post your suggestions for making it less of a nightmare. Thanks

[anon]

@ coast: read the report I linked above. Particularly, the charts on pages 31-36 are pretty informative.

[Curious]

Dennis:

Have you had the chance to talk to PTO officials as to why they do not change the production goals?

[Malcolm Mooney]

"According to our survey of patent examiners, 67 percent, regardless of their tenure with the agency, agree with union officials that the agency’s production goals are among the primary reasons they would consider leaving USPTO."

Golly, this sounds very similar to the complaints of many patent prosecution associates. Could it be that it is extraordinarily difficult to function at a high level, day in and day out, processing and coherently responding to issues arising from diverse and (in some cases) highly technical applications, knowing that some of it is important, some of it is pure crap, and any misfire will cost you your vacation?

Monetary compensation certainly eases the pain but, as noted above, there are limits.

[JohnDarling]

"Have you had the chance to talk to PTO officials as to why they do not change the production goals?"

The reason they don't change the production goals is simple: 60+% of the examining corps is getting a bonus for doing 110+% of their required production. What's the argument that examiners need more time? 60+% can not only do the required production, they can do, at a minimum, 10+% more.

Once an examiner has a pipeline of cases built up from which they can draw (i.e. milk) RCE count after RCE count, production is relatively simple. Search the case once (haphazardly, if you're feeling particularly motivated), issue a garbage first Office Action, ignore all of the amendments and/or arguments presented by applicant and issue a garbage final rejection, cross your fingers and hope they file an RCE. Even if they do appeal, take a minor hit and re-open and issue a rejection that is even sillier than the one that was appealed. Cross fingers again. Try to get 4, 6, maybe even 8 counts out of every single application.

The newbie examiners who leave are the ones who don't have the intestinal fortitude to build up the pipeline necessary to run this scam on a daily basis.

The RCE gravy train is pretty easy to ride. Once you've run fast enough to catch up to it and jump on. Those newbies who left weren't fast enough to get on. That's all.

[curious]

from what I can tell, examiners are not in it for the money, though they expect to be fairly compensated. They want to be treated with respect and work in a productive collegial environment and have some personal/family time. With their technical degrees and good academic records, they can easily find other jobs (and many have). Since it is very expensive to recruit and train new examiners only to have them leave in a couple of years before they start becoming productive, good management would make the adjustments (institute more realistic production goals) to retain them.

(I am sorry I forgot that the PTO problems are caused by patent attorneys "gaming" the system and not by poor PTO management.)

[JTS]

One thing left out of this discussion is how many "appeals" end up with the PTO withdrawing a rejection before the appeal enters BPAI jurisdiction and is considered by the Board. Anectodal evidence is that there is a large percentage of appeals that end up being self-reversed by the examiner. Similarly left out: cases where the examiner allows the application in view of the appeal before there is any decision. I'd wager that for every appeal brief that gets a decision, there are 1-2 other briefs that lead to allowance or self-reversal.

Leaving out these dispositions really changes the conclusion. If cases are counted as "reversals" of the rejection, then the affirmance rate drops A LOT.

Word from the inside is that BPAI judges are told to go to any lengths possible to uphold the examiner; there is heavy institutional bias toward the examiner's finding of facts, claim interpretation, etc. On the other hand, I haven't seen many boldly unreasonable holdings from the BPAI. Anyone have experience with really poor BPAI decisions?

In 2100 and 2600, it's good to see better reversal than the ~30% of previous years. Read some recent appeals in these art units and you'll see that a lot of junk apps filed early in the decade are coming to the BPAI to die, as they should.

[Lowly]

everyone should lighten up and read patent number 6055910.

[huh]

Lowly,

I file a pre-appeal brief request when I have done at least two RCEs and think the Examiner is wrong. However, as I have not yet received any decisions from the Board on the ones I've appealed, I don't have any support for my belief that the Examiner is wrong.

[huh]

Lowly,

Perhaps I should also mention that I do a lot of work in the 1700 TC.

BTW, funny patent. At first I thought it was a new toy from Hasbro.

[Lowly]

A co-worker passed that one along to me and it was too darn funny to not share with others. I could only imagine meeting with a client who wanted to patent that.

Ah, 1700. I do very little work in that area. I like using pre-appeals to force an examiner to sit down with his supervisor and explain the ridiculous position that he has been sticking to.

[examiner#6k]

"Why is there so much turnover among examiners? For someone with just an undergraduate degree, the pay isn't bad. I know plenty of engineers who recently started at LESS than the amount examiners make." Um yeah, I thought about doing that myself, but 49k in a town where your rent is 500 compares very nicely to the tax-eaten 65k in a town where your rent is 1200, and you have to pay to park your car, gas is 3.15 (usually I try to get it at 2.90 when it dips, or I go out o town) etc. etc. You guys know of the cost of living differences in DC, I was living decently on FOURTEEN THOUSAND DOLLARS before I moved here. The taxed portion is not non-negligable. Bottom line is, the pay is nothing special at best and arguably worse.

"Please explain -- and please post your suggestions for making it less of a nightmare. Thanks" I've got to jump in right here. Punish by penalty of death asserting something you know to be obvious as an application or amendment (or even leaving off of the IDS a great deal of ref's used in the creating of the "combination"). And second, limit remarks attorney's can make to very specific statements instead of having to wade through 4 pages to read "the reference doesn't show x feature" or, "it would be unreasonable to combine a with b". Third, and most importantly, no dependent claims and 5 max ind. claims. (you can add 1000 dep's in after allowance if you so choose, we don't care). And four, make a pre-first action interview, and possibly an admission on the record of what the applicant knows to be already in the art, mandatory. Five, eliminate the 2nd pair of eyes. Either the third or the fourth one being implemented would likely eliminate the backlog and have all examiners pretty happy even with the production system. Also, obviously you could ease up on the production system and make us feel like we accomplished something worthwhile in the alloted time instead of the alloted time + weekend. Some arts are fine, some aren't.

"Have you had the chance to talk to PTO officials as to why they do not change the production goals?" Um he hardly needs to, they're in place to ensure that we produce at least a set amount, and to judge who gets awards and promo's. Mainly to ensure we produce x amount.

Good post though Denise, though perhaps I disagree with you on one point, the needing a check for the young examiners, that should fall to the people reviewing the work, but frankly, they only bust us for something HUGELY wrong. Otherwise, they want us to learn the way they did, having our ass handed to us by the attorney. I haven't really had this happen yet, but I've had many times his arguments were blatantly the truth so I learned not to do things a certain way. Lunch is over, gtg.

[CliveFenster]

"Golly, this sounds very similar to the complaints of many patent prosecution associates."

But a firm can justifiably charge more for a longer and/or more complex invention write-up. Estimates and final costs routinely vary technology, length of the specification, number of claims, ... Do examiners find the same slack in their system?

[Lowly]

6k,

Why do you think that attorneys and inventor knowingly file patents that are obvious? Have you ever spoken with an inventor? You seem to think that some engineer locked away in a lab knows every patent that has been published or issued, and every paper that has been published, on a topic. I have no clue why you think that the attorney/inventor is withholding prior art from you. For every patent I write, I spend some time searching and disclose what I find.

Why do you think that attorneys want to get patents that will be found invalid in litigation? I want to get the broadest protection for my clients that will be upheld in litigation. I want the examiners to have the best art out there.

Not allow attorneys to argue as they see fit? Are you serious? I need the freedom to be able to explain why I think that you're wrong.

[Veteran Attorney]

"Otherwise, they want us to learn the way they did, having our ass handed to us by the attorney. I haven't really had this happen yet"

Seems to me it happens several times a day on this site.

[Michael Valentine Smith]

RE: "'Otherwise, they want us to learn the way they did, having our ass handed to us by the attorney. I haven't really had this happen yet'

Seems to me it happens several times a day on this site."
from "Veteran Attorney"

I really get sick of you attorneys acting like you never make mistakes. Most of the time it looks like you never even proof-read the amendments that you file.

I was just reviewing a case that is a good example. attorney amended the claims, including changing dependencies of some of them (none cancelled). In the process, he really messed up all of the antecedents for because of the amendments and change of dependencies. Now, the examiner not only has to do the art but has to go back & try to figure out what the attorney meant and make all the necessary 112, 2nds. All because the attorney was too lay/incompetent/rushed (choose the right one).

Are the attorneys at fault for all of the backlog & problems with prosecution? No. But you guys are responsible for your fair share of it. About time you all start to admit it. Most seem in denial (though, I have to admit that "johndarling" has admitted that attorneys are enablers in the whole RCE/count process in another thread).

MVS

[Veteran Attorney]

MVS,

I wasn't referring to any "mistakes" of a clerical, grammatical, spelling, syntax (I could go on, but you get the point) nature that 6k may have made in any of his posts. I was referring to the overwhelmingly large number of comically uninformed statements that he makes on a regular basis.

Even you have to admit, 6k doesn't know what he's talking about.

VA

[SF]

"(you can add 1000 dep's in after allowance if you so choose, we don't care)"

What art unit are you in?? Every time I've tried to add dependent claims after a notice of allowance, they refuse to enter them without juicing the applicant for an RCE.

[Lowly]

MVS,

If I filed an amendment such as you describe, I'd expect to be fired by the partners here. I'm sorry that you have to deal with shoddy work.

However, I get shoddy work from Examiners all the time. Poor grammar, misspellings, incorrect citations (ie. they cite to paragraph 17 but what they quoted was actually from 23), misspelling the name of the reference, etc.

[examanonym]

"Have you had the chance to talk to PTO officials as to why they do not change the production goals?"

The reason they don't change the production goals is simple: 60+% of the examining corps is getting a bonus for doing 110+% of their required production. What's the argument that examiners need more time? 60+% can not only do the required production, they can do, at a minimum, 10+% more.

Once an examiner has a pipeline of cases built up from which they can draw (i.e. milk) RCE count after RCE count, production is relatively simple. Search the case once (haphazardly, if you're feeling particularly motivated), issue a garbage first Office Action, ignore all of the amendments and/or arguments presented by applicant and issue a garbage final rejection, cross your fingers and hope they file an RCE. Even if they do appeal, take a minor hit and re-open and issue a rejection that is even sillier than the one that was appealed. Cross fingers again. Try to get 4, 6, maybe even 8 counts out of every single application.

The newbie examiners who leave are the ones who don't have the intestinal fortitude to build up the pipeline necessary to run this scam on a daily basis.

The RCE gravy train is pretty easy to ride. Once you've run fast enough to catch up to it and jump on. Those newbies who left weren't fast enough to get on. That's all."

This is a complete joke. Ever since the office initiated second pair of eyes hardly any examiner does more than 95%. This argument is for an old time under different management. Without allowances it is impossible to 110% no matter how many RCE's we get. Oh and I'm lucky if I get 1 RCE per bi-week so I would like to see where this gravy train is. Fact is that it doesn't exist and there many, many legit reasons why RCE's are needed. Moreover, I won't enter anything after final because we have absolutely no time to look at it. Furthermore, anything submitted after final could have been submitted before final and in that case you should have to file an RCE.

Your argument is old and rediculous.

[Michael Valentine Smith]

"Lowly",

I agree with you about a lot of the stuff that comes from the office as well (though I do not consider obvious misspellings & grammar in the same category as clearly wrong references or really bad claim language messed to the point of near incomprehensibility or straight translations from a foreign application). One (the later) effects the substance & validity of the patent, the other (the former) is a nuisance for whomever is trying to decipher the action or response, but does not really effect the validity of the patent that issues.

When I see cases that the examiner is citing bad art or citing sections that clearly do not teach what the claim says, etc. I kick it back for correction (I am NOT talking about 2nd pair of eyes BS review - that needs to go for morale as well as production & probably quality improvements as well.). If it is held as a "error" or not depends on the issue (& the TC), but hopefully the examiner will learn from it & not make the same mistakes in the next case. Kickbacks for grammar or misspellings, on the other hand, are probably a waste of time, however.

MVS

[Lowly]

MVS,

Blame the clients for straight translations from a foreign application. A lot of foreign clients want the cases filed as is. I do some of these (although I do get to clean them up a little), and I would love to get to spend more time fixing them up and making them more readable. Unfortunately, the client does not want this and will not pay for it. It's not my fault.

[JohnDarling]

"Ever since the office initiated second pair of eyes hardly any examiner does more than 95%."

Your argument is new, false, and ridiculous.

[examiner#6k]

http://youtube.com/watch?v=jAJYMgX4JuU

Hey guys didn't mean to interrupt our all important discussion, but I know there's a lot of Barack supporters around, take a glimpse.

"Oh and I'm lucky if I get 1 RCE per bi-week so I would like to see where this gravy train is."

Yeah, same with me, although strangely, I haven't written but like 3 2nd non's and 1 of those has now gone to a very tight 3rd non (I finally found the needed art for one thing) that I gave him out of sympathy because he amended after the 2nd non but I figured I'd give it to him since I did a bad first action.

At the same time, my buddy down the hallway gets 3 RCE's on his easy as pie art now just about every week. It may be that he put in like 3 extra cases from PTA through now, but his RCE train got going a lot faster than mine is and 3 extra couldn't make up the difference. What they tell me is that I'm supposed to do 3 amendments (and supposedly get 3 disposals from amends I did 6 months ago) and 3 non-finals per bi-week. If I mess up, then I have to do a 2nd non. In that event, I have to work harder the bi-week that one comes up the amended docket. However, reality has shown no MORE than a high of a one time 2 RCE's in one bi-week, and AT LEAST 3 finals per bi-week, AS WELL AS 5+ (avg) non-finals to be issued. I'm banking on the fact that at some point all my good work HAS TO BE REWARDED. It just hasn't started happening. It "should" start happening around the turn of year 2 at the very latest. The harder your art is I suppose the longer it takes to get responses back.

Heck, at the rate I currently produce I should be an "expert" primary level. It's supposedly 8-10 counts per bi-week ON A BAD WEEK. If not for holiday leave taken out, and my working it, I would be a count or two behind.

"I do a search ... I want the examiners to have the best art out there ... I need freedom"

Those are the most particularly funny cases I have. You're cases are the minority. Very rare cases indeed, LONG IDS, no priority so you know the app (nearly? always bigcorp) is just giving them to you. Now, these cases are good because they have very narrow claims to start out with and are thus more likely to be allowable (because he's seen some art). However, it turns out on nearly all of them (so far) that they boil down to an obvious combination (of likely 2 ref's on the IDS). The cases are really nice because, even if you horribly fail in your search, you already have art hah. Oh, and btw, I don't mean you can't say what you like, but ffs, keep it short and leave out the bs.

Just like in my amendments, every last point you guys make could be easily squelched by my citing but a few more ref's (of my own applications I've handled) nearly 100% of the time.

If you'll excuse me, I just finished my coffee and I'm about to go bust someone with a 112 over an amendment not supported by the spec. Question, should I even bother searching such a case?

MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec, 1 of every 10 WILL NOT HAVE SUPPORT. And no, nobody lets us send "Your reply was incomplete" notices, because, strangely enough, THE ATTORNEY'S DON'T LIKE IT. I suppose they like to pay RCE fees instead. Yeah the caps I'm yelling. Yeah, supposedly the job gets so easy after a few years. But really, lets start examiners out working the exact same as they will be at GS14, that's a great system. Change the system for gods sakes.

[examiner#6k]

Since when does you're = your? Doh, yeah misspellings I hardly count against the apps unless it makes a word that's indecipherable or they have a lot. I mean seriously, this is a for fun site, they're submitting a legal document requesting a "monopoly" over the american people.

[examiner#6k]

Since when does you're = your? Doh, yeah misspellings I hardly count against the apps unless it makes a word that's indecipherable or they have a lot. I mean seriously, this is a for fun site, they're submitting a legal document requesting a "monopoly" over the american people.

[CaveMan]

Huh,

Looks like a typo. I have not lost a pre-appeal brief request yet. But I don't always file one. The only time to do it is when you are extremely confident in your position, or when your client asks you to.

As for RCEs, I would say there is a perverse incentive in both the Examining Corps and law firms to file RCEs. Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons.

[CaveMan]

Re: 6,055,910 reminds me of Dan Akroyd's old SNL skit as toy maker Irwin Mainway.

His company's extremely dangerous products included "Bag O' Glass", "Bag O' Vipers", "Bag O' Sulfuric Acid", "Mr. Skin Grafter", "Pretty Peggy's Ear Piercing Kit", "Doggy Dentist", "Chancellor Tron's Secret Police Confession Kit", "Johnny Switchblade Adventure Punk", and "Chainsaw Teddybear". Mainway also defended certain Halloween costumes such as a military outfit that included an actual working rifle ("very popular in Detroit!"), an entirely black and non-reflective uniform called "Invisible Pedestrian" (which had a warning on the package that read "NOT FOR BLIND KIDS"), an airtight plastic bag that was to be affixed over the head with a rubber band called "Johnny Space Commander Mask," and an oil-soaked costume called "Johnny Human Torch", which came complete with an oversized lighter.

[bierbelly]

"Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons."

I, on the other hand, cringe at first action allowances. It usually means either (1) the examiner didn't conduct a search, or (2) didn't bother to read the refs I sent in. Also, there's usually not enough time to get the International Search Report before the patent issues. Not good for validity.

[examiner#6k]

"(2) didn't bother to read the refs I sent in." Basically, Bier willfully chooses to claim what is in the IDS.

"Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons." Of course, and so would examiners, for time reasons. And so would the Office because of backlog reasons. And so would the Everyman living in America. But unfortunately, we get people like Bier, so we have to be very wary of such things.

[TJ]

Dennis,

How does the BPAI affect the fact that "the current large batch of examiners without much experience requires a serious check on potential abuses of naiveté"?

If an applicant abuses the naive examiner, the undeserving patent issues and the case will never be appealed.

[Clive Fenster]

TJ says: "If an applicant abuses the naive examiner, the undeserving patent issues and the case will never be appealed."

Doesn't the SPE review any allowance before the Notice is mailed? Presumably, the SPE isn't naive. Doesn't second-set-of-eyes do their level best to kill allowances before issuance-- I mean, perform a quality review to ensure only the most solid reasoning underpins the allowance rationale?

[Dennis Crouch]

TJ -- The BPAI only serves as a one-way correction mechanism: Correcting against new examiners who may set the patentability bar too high. In my recent experience, new examiners appear more likely to follow PTO policy favoring rejection as opposed to being duped by a patent attorney.

It is important that the BPAI be able to stand somewhat above the fray and apart from PTO policy of the day. Rather, the Board should favor a stable approach to deciding cases according to the law.

[examiner#6k]

"Seems to me it happens several times a day on this site."

Hey look, someone caught me pwning VA on video:

http://i10.photobucket.com/albums/a110/No_Scoope/laser_cat_head-1.gif

Alright alright it's not the best footage, and the camera kind of dips there at the end, but it was the best I could find on short notice.

[examiner#6k]

Hah hah, and my last encounter with pds, bloom, fen, etc. NSFW depending on where you work and their policy on owning people old school:

http://leonidasunstoppable.ytmnd.com/

Ok ok, I know I know let's keep it professional, that's it for the links. Examiners, that link will really get you in the mood to write an action btw.

[random.examiner]

Lowly @ 3:23 wrote:

"Why do you think that attorneys and inventor knowingly file patents that are obvious? Have you ever spoken with an inventor? You seem to think that some engineer locked away in a lab knows every patent that has been published or issued, and every paper that has been published, on a topic. I have no clue why you think that the attorney/inventor is withholding prior art from you. For every patent I write, I spend some time searching and disclose what I find."

Question for my fellow examiners: how many of you make rejections over applicants prior work? I do it all the time to the point it has become comical. I'm talking the words of the claim are straight out of a prior patent. Journal articles are another issue altogether as few patent attorneys submit those.

Question for attorneys: Do any of you look at your clients previous patents? Does that factor into your claim drafting AT ALL? A bar is a bar. Period.

I dont expect attorneys to search. I do expect a bare minimum recognition that something was done before your client did whatever you claim he/she did. Guess what? The best art is often their own! Look at it! You might have even drafted it!

Someone will be quick to pounce on the Office's responsibility to do an inventor search. I agree, and I do one . . . but why wouldn't you want those patent numbers published on page 1 of that patent to tell the world that your client really did something different than what they've done before?

Failure to give the office that art is just bad lawyering. I guess what I'm saying Lowly is you would be pretty shocked at what you find that Applicants really should know about and was not disclosed. I'm guessing most of your clients know if they have a patent or not. Why dont you ask them, and if they are improving something they did in the past, draft your claims accordingly and give me the reference on an IDS.

Of course you do I'm sure . . . its all those "other attorneys" that dont . . .

[Spell-o-matic]

Check your title again, Dennis - Board of Apeals?

[CaveMan]

While I report that institutional client prefer first action allowances for cost reasons, I side with bierbelly that I don't like them either... They give you a sense that you're leaving too much on the table.

[JohnDarling]

examanonym,

Go to page 5 (of 19) of Mr. Dudas's testimony before the House committe.

http://judiciary.house.gov/media/pdfs/Dudas080227.pdf

Who's ridiculous now?

[newbie]

2. Says 15.5% attrition in 0-3 years, but then later he says 1st year attrition is 15%, so does that mean more people are leaving their 2nd and 3rd year? That doesn't seem right, talk about convoluted. Anyways, I'm coming up on my 1st year as an exmainer, my class started with 17 and there are 15 of us left. Not much attrition there, but in my opinion we had one of the better trainers.

[CliveFenster]

random.examiner writes: "I'm guessing most of your clients know if they have a patent or not. Why dont you ask them, ..."

By and large, inventors have a poor grasp on "patentability". I've worked with inventors who felt that ONLY newly-created things were patentable (e.g. elements created in cyclotron) and that any new combination of existing things/concepts wasn't. "Only God works from scratch" held no water with them.

I've had other inventors who thought of patentability in the same terms as academic publishing: "smallest publishable unit".

It may well be that the attorney/agent learned of the prior work and believed the claims (as filed) to be patentable over them. But I do agree, an inventor search should be done by the drafter. How the inventor has characterized that work is one thing; what the publication actually discloses is another. For that latter determination, I put on my adversarial hat and view the prior work disclosure through the eyes of an examiner just itching to reject the still-in-draft-stage claims.

[JohnDarling]

newbie,

What does 5 say?

I rest my case.

[Lowly]

6k,

"MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec."

This is because we don't want to give future litigators ammunition which they can use to completely distort the interpretation of the claims.

Have you ever wondered why attorneys often only use direct quotes from the claims or spec (and often won't even quote to the spec) when arguing a point? We do that because we don't need some asshat litigator, 10 years down the road, completely twisting what we said when construing the claims.

A patent is pretty much worthless unless you can sue somebody with it or scare somebody with it into a licensing agreement.

[Lowly]

Random Examiner,

"Of course you do I'm sure . . . its all those "other attorneys" that dont . . ."

Of course YOU do a proper art search and never issue crap first office actions that completely mischaracterize the (crappy) art you found and give the claims in the broadest unreasonable interpretation that you can. ;)

I think it's safe to say there are crappy patent attorneys out there, and there are crappy examiners out there.

[curious]

POPA President Critical of USPTO During House Subcommittee Oversight Hearing

http://www.patentdocs.net/patent_docs/2008/03/popa-president.html

[Malcolm Mooney]

It's a pretty sad day when you see stuff like this:

ex6k "MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec."

Lowly "This is because we don't want to give future litigators ammunition which they can use to completely distort the interpretation of the claims."

Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously. That's beyond pathetic.

[Michael Valentine Smith]

"Lowly:, you said
"This is because we don't want to give future litigators ammunition which they can use to completely distort the interpretation of the claims.

Have you ever wondered why attorneys often only use direct quotes from the claims or spec (and often won't even quote to the spec) when arguing a point? We do that because we don't need some asshat litigator, 10 years down the road, completely twisting what we said when construing the claims."

This is the reason that the file history should (at least in general, if not completely) be inadmissible for future legal proceedings (be they infringement or invalidity, etc.) Even if they just did not let the reasoning for things being done be admissible (and let the facts be admitted. e.g., what was changed, what references were used, etc.) it would be a big improvement.

If we can do that, then I think we would see a big improvement in the relations between attorneys and examiners, as well as a decrease in the backlog (after-all, if you do not have to worry about your words coming back to haunt you, you may be more willing to point out your support for things & what the invention really is doing). Might even help overall quality (which, no matter what they say, is not very good.)

MVS

[Lowly]

"Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously. That's beyond pathetic."

You don't seem to understand. I could potentially be sued for malpractice if I did one of the things I said that I don't due and a patent was invalidated due to it.

I very much agree with MVS that the file history should be inadmissible. It's not that I'm adverse to giving the Examiner exact cites to where the support for my amendments are, and it's not that I wouldn't like to not be limited to the exact words of the claim when making an argument, it's that I'm afraid to do so (and rightfully so).

Blame the darn litigators ;)

[question]

Malcolm

yes, prosecutors often do not provide the complete arguments which they would otherwise provide for fear that the arguments would provide fodder for litigators later. Why is that statement "beyond pathetic"?

[Malcolm Mooney]

"This is the reason that the file history should (at least in general, if not completely) be inadmissible for future legal proceedings (be they infringement or invalidity, etc.)"

Wouldn't it be great if we could eat rocks? Like, if you were hungry, you could just go outside and grab a rock and munch on it. Yummy!

[Malcolm Mooney]

"yes, prosecutors often do not provide the complete arguments which they would otherwise provide for fear that the arguments would provide fodder for litigators later. Why is that statement "beyond pathetic"?

I don't know why "that statement" is beyond pathetic. I do know that I didn't make "that statement". You did. That's called a strawman argument. Look it up. It's pretty lame.

If you want to know what statement I made, you need to scroll upthread just a tiny bit and actually read what I wrote. You can even cut and paste the exact comment, word for word. That's a good way to break the habit of attacking strawman.

[examiner#6k]

"17 and there are 15 of us left. Not much attrition there, but in my opinion we had one of the better trainers."

LOL, yep, about the same for my class, except we lost 3 because one got fired as we transitioned (for sucking horribly). But, as we come into the 1.5 year turn we're now down 3 more which puts us at almost 50% gone (we had 13 to start with). We have one girl who has gotten near perfect on LSAT's she'll be leaving shortly, me and 2 other guys I know are about to pull the same thing. Of the ones who are left 1 pretty much hates the job (because she has a rough boss that ends up making her pull 20+ hours of overtime every bi-week, in her words, not mine, though, knowing her boss personally I'm surprised she gets off with a mere 20 hours extra) and can easily find employment elsewhere with her masters.

"examanonym,
Go to page 5 (of 19) of Mr. Dudas's testimony before the House committe.
http://judiciary.house.gov/media/pdfs/Dudas080227.pdf
Who's ridiculous now?"

Lol JD, ok, so lets assume that's true. I wonder why it is that examiners can have 60% of them doing 105% production (10%+95%). I'll tell you why, because, like me, the difference in 95 and 105 will turn out to be around 2-3 cases in a quarter. We'll happily stay all night instead of the long night for a few days to go ahead and get the promo (requires 106%). And then factor in the "old guys" who are apparently riding the gravy train and we see where the 60% comes from.

HOWEVER, lets not confuzzle this with people just happily exceeding their quotas no problem. If we look at Burdens testimony then we see quite quickly that it's over 50% (60%+ iirc) who pull overtime and/or use leave to make the 95%.

So, to say that "nobody does over 95%" is false yes, but to say "nobody does over 95% (in the time alloted)" while technically false, is obviously speaking as a generality, including the fact that they put in extra time to make the 95%+, and is true.

Considering all the facts, and the use of common language, JD be honest, who's looking more foolish now hmmmm?

I gtg talk to you guys later tonight.

[JustAnExExmr]

"newbie,

What does 5 say?

I rest my case."

Posted by: JohnDarling | Mar 05, 2008 at 10:48 AM

Page 5, "6. Patent Attrition", point #5 isn't the only point made in that testimony, and considered in a vacuum is even less logically compelling.

A few MAJOR points of context that shed light on "What 5 says" are:

-The linked testimony is not objective as it was given by the head of the USPTO and therefore biased to show exactly what you're purporting (that since so many examiners are able to make 110% production, obviously production quotas aren't out of date and are completely reasonable).

-That 110% production number doesn't factor in how many people left the office specifically because they couldn't currently make production or knew that such levels of production over a sustained period of time would be impossible.

-page 5 of the GAO's report from Sept. 2007 (http://www.gao.gov/new.items/d071102.pdf) clearly contradicts any claims that the majority of Examiner can get their production done in the time allotted. From what you can see, just because 60+% are getting 110% production, doesn't mean they are doing it in the time allotted. The years that I did bonuses, were not done in less than 41 hours per week. Even after I stopped doing bonuses (after realizing the rewards were not consistent with the enormous amount of effort required to get them), I was still working more than 40 hours a week to get just 100%.

In summary, the report by the GAO is more insightful and objective than Dudas testimony before Congress. My reasons for leaving the USPTO are pretty much right in line with what that GAO report says. Another reason I left that you and others might be interested in JD, is that I got tired of the spineless management who refused to stand by decisions they enforced. Specifically I'm talking about cases where I said "Look, Attorney argued my art (that you told me to stretch and apply) doesn't meet these claims after this amendment/in this Appeal Brief." Usual response: "Go find better art." As shocking as it may be to you, Examiners don't like the Appeal, Re-Open, Appeal, Re-open cycle any more than Attorneys do. My suggestion if this ever happens is to go to the source. Demand an interview with the Examiners Supervisor because they are usually the ones forcing that Examiner to apply specific art, but won't stand behind that art when Appeal time comes. Keep going up the chain if you have to (Supervisor, Appeal Conference Specialist, Director, whatever). I was never happier than when an Applicant's Representative requested an Interview with my SPE so I could show them how much my hands were actually tied.

JustanExExmr

[examiner#6k]

"It's not that I'm adverse to giving the Examiner exact cites to where the support for my amendments are"

Hah but before I go I have to grab this one. No, lowly, of course you're not. And of course the reason that each and every one of those 1 in 5 do not point me to the specification is because they are relying on "what is implied to one of ordinary skill" or "what is implied to one of ordinary skill by the drawings (which aren't to scale at all)". Yeah right, you guys are scared to death of pointing to it, because you know I'll slap yo bia arse with a 112 faster than I can read your whole "Arguments". To date, I have had 2 people I "let off" because it was reasonably inferable, and 3 people I've busted with a 112. 2 of the 3 did not get an action on the "merits" of the amended limitations because they were "indistinguishably indefinite" or something like that.

Fine with me, pay your RCE fees and make yourself look REALLY dumb come litigation time.

Don't pretend I don't know why you do this too, because you'd rather put in a one word limitation relying on what's implied rather than put in the 50+ word limitation "picturesquingly?" describing exactly what your spec actually says and definitely implies to one of ordinary skill (this is the limitation that comes in after RCE lolz).

gtg, ttyl.

[Lowly]

6k,

I have yet to receive a 112 rejection of my amendments. Why? Because I *DO* check to see that they are supported by the specification. I have had quite a few patents allowed based upon one or two word amendments, by the way.

[pds]

MM ... you are beyond pathetic.

Classic MM .... instead of answering the question's question, you change the subject. Classic troll behavior.

"that statement" made by question was very comparable to your declaration, in which you ended with the comment "[t]hat's beyond pathetic." A strawman argument is based upon a misrepresentation of an opponent's position.

Question did not misrepresent your position (i.e., "Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously) by stating "yes, prosecutors often do not provide the complete arguments which they would otherwise provide for fear that the arguments would provide fodder for litigators later."

Both statements refer to the practice of not providing complete arguments to an examiner, and both statements refer to using litigation as a justification/excuse.

One would think that people would stop responding to your comments. Unfortunately, there are always new people on this board who don't realize that trying to engage MM in a coversation is comparable to wrestling with a pig ... the pig enjoys a good romp in the mud, but the pig-wrestler is left tired, covered in filth, and ultimately accomplishing nothing.

[bierbelly]

"(2) didn't bother to read the refs I sent in." Basically, Bier willfully chooses to claim what is in the IDS.

"Institutional clients, on the other hand, would largely prefer first action allowances for cost reasons." Of course, and so would examiners, for time reasons. And so would the Office because of backlog reasons. And so would the Everyman living in America. But unfortunately, we get people like Bier, so we have to be very wary of such things.
-----------------------------------

I never claims what's in my IDS, but I do provide what are, IMO, the BEST references, from which a competent examiner could undoubtedly string together some BS rejection for a FAOM. Instead, what I see in a typical FAOM is the examiner finding some reference which is completely unrelated to the techonolgy, and proffering some BS logic as to how it could be modified to be our invention.

Perhaps I'm making a mistake? I should provide a first, independent claim which undoubtedly invokes the best reference, and work from there. At least the Examiner would start on the right track, instead of searching for BS.

[JohnDarling]

"The linked testimony is not objective as it was given by the head of the USPTO and therefore biased to show exactly what you're purporting (that since so many examiners are able to make 110% production, obviously production quotas aren't out of date and are completely reasonable)."

So you're telling me that Mr. Dudas lied to a House committee? You're telling me he doesn't have the personnel records that establish, as a matter of fact beyond contravention, that the PTO paid bonuses to these 60% of the examining corps in FY 2006?

Those are some pretty serious allegations.

So why doesn't PTO (mis)management adjust the hours/BD? Here's all you need to know:

1) According to PTO (mis)management, in FY 2006, 60% of the examiners could not only do 100% of their production, they could do, at a minimum, 10% more.

2) According to PTO (mis)management, in FY 2007, the examining corps examined a record breaking number of applications.

3) According to PTO (mis)management, in FY 2007, the examining corps performed all of its functions with record breaking quality.

4) According to PTO (mis)management, the attrition amongst newbies is due to a) personal reasons, and/or b) the "millenial" generation issue (i.e. those in the 20 something generation view all jobs as essentially temporary, and don't expect to work at some place their whole careers and get a gold watch). Those that do stay beyond 3 years, however, become RCE gravy train riding lifers. Hooray for the RCE gravy train.

That's all you need to know.

"From what you can see, just because 60+% are getting 110% production, doesn't mean they are doing it in the time allotted."

Of course they're not doing it in the time allotted. They're doing the extra 10% to get a bonus. So examiners have to work extra to get a bonus? Welcome to the real world. It can be a pretty scary place.

Not much shocks me. I worked at the PTO. I'm well aware that PTO (mis)management, including upper, mid, and lower levels, is populated by a bunch of spineless, legally ignorant stooges. In my experience, I've found that going up the chain of stooges rarely resolves any issues.

"Even after I stopped doing bonuses (after realizing the rewards were not consistent with the enormous amount of effort required to get them), I was still working more than 40 hours a week to get just 100%."

While that may have been true for you, and you apparently got fed up enough to leave over it, as the facts clearly show, the attrition rate for examiners who make it past 3 years is rather low. So as long as PTO (mis)management gets "enough" recruits to make it from raw newbies to die-hard lifers, they figure they're doing all right.

You and I know it's nonsense, but we were smart. We got out. :-)

[Malcolm Mooney]

"Question did not misrepresent your position"

Uh, yes he/she did. And if you can't see why after I spelled it out for you both, you are retarded, high or simply a liar, in addition to your bizarre obsession with me.

[bierbelly]

Being able to make your numbers in the PTO depends on a lot of things. New examiners have a particularly tough time (at least I did) unless they inherit someone else's amended docket. I was lucky enough to be assigned a bastard docket that no one else wanted and wasn't very active. No amended cases, not enough new cases coming in, complicated by the fact that it was a composition docket, but most of the actual "inventions" were the polymers used in the compostions...so I had to search not only the composition, but the polymer too.

Add to that the fact that my SPE was a **ick, and like was said above, would tell me to go find better art rather than permitting me to allow a case. I bolted after 2 years.

[Lowly]

What's with the whining about having to work more than 40 hours to meet your goals? There is no way I can possibly reach my minimum monthly billables working only 40 hours a week. You don't see me crying over it. Welcome to having a white collar job.

[JohnDarling]

"So, to say that 'nobody does over 95%' is false yes, but to say 'nobody does over 95% (in the time alloted)' while technically false, is obviously speaking as a generality, including the fact that they put in extra time to make the 95%+, and is true.

Considering all the facts, and the use of common language, JD be honest, who's looking more foolish now hmmmm?"

So examanonym's statements were 1) false, 2) technically false, and 3) obviously speaking in generalities, but I'm supposed to be the one looking foolish?

Your logic never ceases to amuse.

[JustAnExExmr]

"What's with the whining about having to work more than 40 hours to meet your goals? There is no way I can possibly reach my minimum monthly billables working only 40 hours a week. You don't see me crying over it. Welcome to having a white collar job."

Posted by: Lowly | Mar 05, 2008 at 03:33 PM

This argument employs false logic, namely that the job of an attorney is equivalent to the job of an examiner. I urge you to attend the next gathering of a large amount of Examiners (such as a POPA meeting) and tell them that, particularly when most of the examiners (from what the GAO report says) are working large amounts of non-paid time in order to do the work they are only getting paid 40 hours a week to do.

An Attorney working more than their billables to bill at their rate is not equivalent to an examiner working more than 40 hours in order to make 40 hours of production. Vastly different pay scales, different degree requirements, and different professional responsibility requirements. More importantly, you as an applicant's representative, have the choice to tell your applicant how much time it took and bill them for that amount. Examiners have no choice in the matter. Their production requirements were determined at a time when the average length of a subclass was a couple hundred patents at most, rather than in the thousands. When the height of technological innovation was the start of the microchip, airbags barely existed, television was analog if even color...

Further, it's incongruous to design production requirements , advertise salary rates for those production requirements and then spring upon the masses that all along those were just minimum benchmarks and you expect those benchmarks to be met regardless of the hours worked. Fortunately, Congress designed production based upon an hourly system and type of technology. Unfortunately, it's 3 decades (or roughly a couple of industrial ages) out of date.

[Curious]

Good points JustAnExExmr -- it is not a fair comparison

[JohnDarling]

"This argument employs false logic, namely that the job of an attorney is equivalent to the job of an examiner. I urge you to attend the next gathering of a large amount of Examiners (such as a POPA meeting) and tell them that, particularly when most of the examiners (from what the GAO report says) are working large amounts of non-paid time in order to do the work they are only getting paid 40 hours a week to do."

Isn't POPA the organization that constantly tells the examiners that they do the same job as the attorneys, but just get paid less?

I seem to remember a steady stream of newsletters from POPA decrying the fact that first year associates in law firms were making as much, if not more, than GS-15 examiners.

My reaction to that "news" was "so what?" If you want to make as much as a first year associate, become a first year associate.

Problem solved.

[Lionel Hutz]

MM wrote "It's a pretty sad day when you see stuff like this:

"ex6k "MVS, you want to talk about crap amends? 1 of every 5 of mine will not tell where support can be found in the spec."

"Lowly "This is because we don't want to give future litigators ammunition which they can use to completely distort the interpretation of the claims."

"Someone is trying to defend the practice of NOT providing the Examiner with cites to the specification that support proposed claim amendments? And using litigators as an excuse? Geez, Lowly, get a life. Seriously. That's beyond pathetic."

Who the hell cites to the written description? I assume the examiner has read my description (or at least will upon seeing my amendment).

[JohnDarling]

http://www.popa.org/pdf/newsletters/2001_02.pdf

[Malcolm Mooney]

See MPEP § 714.02 and § 2163.06 "when filing an amendment an applicant should show support in the original disclosure for new or amended claims."

In spite of this, Lionel writes: "I assume the examiner has read my description (or at least will upon seeing my amendment)."

Assume all you want. You know what they say about assuming: you make an ass out of you and your client when you get that Final Office Action.

Properly done, the risk of damaging a patent's scope or validity by pointing out the support in the specification for a claim amendment is zilcho. Either you have the support or you don't. Frankly, it looks better for the patentee in litigation if it appears that they weren't trying to hide the ball. That fact, of course, is obvious to most patent attorneys who have participated in or watched the challening of a patent's validity in court.

[Lowly]

Honestly, US examiners are not bad about the 112 rejections. They usually will actually read the written description to find the support, and they will allow things that are implied in the written description to be incorporated into amendments. Most 112 rejections I've seen were deserved.

European examiners on the other hand... if those exact words, in that exact order, were not used in the written description, forget about it. it doesn't matter that someone of NO skill in the art would understand the written description to impliedly disclose X, if X isn't there, you will not be allowed to amend to include X.

[anonymous]

"European examiners on the other hand... if those exact words, in that exact order, were not used in the written description, forget about it."

In the US, you can focus on the detailed description and the drawings and, if the claims aren't ideal, no worries because section 112 is toothless. EPO is very, very strict. If you're going to file in Europe, you better warn the client about the additional $3K-$5K in claim drafting costs needed to prepare the alternative claims, multiple dependencies, etc. because if the words ain't in there, you won't get to claim it.

[anonymous]

... in a related question (for MaxDrei or others), we already have the Fed Cir's railroad case where a provisional didn't have 112 support, but is anyone aware of a US provisional that was shot down for priority purposes in the EPO?

[Malcolm Mooney]

"is anyone aware of a US provisional that was shot down for priority purposes in the EPO"

Not sure what you mean exactly but I've certainly seen EP prosecution histories where claims were denied or found invalid during opposition as not finding support in the earliest priority document.

[examiner#6k]

"so I had to search not only the composition, but the polymer too." Split that son of a right down the middle with a combination/subcombination no questions asked? Unless they put it all in one claim, then yeah it might be a biggy. But, hey, that's a good example of the complexities of the arts increasing, a specific structure made by a specific composition made of a specific polymer. All of the three are "well-known" (in three ref's) now we have to string them all together.

As to if you think their bs stringing together of references produced a prima case or not, well that's up to you. If they didn't, you know the drill. If they did, you also know the drill. Fact remains, you're claiming exactly what you can tell they'll make a rejection of later, and undoubtably you can probably tell WHY (the motivation) they'll cite as their reason for doing so. Overall, you seem to be an admitted overclaimer, pure and simple, except you feel the statute 103 is "totally bs man".

"What's with the whining about having to work more than 40 hours to meet your goals?" Are you fin kidding me? You also started out at your job where you have to work over 40 hours making 150 Thou dollars too didn't you? Don't give me this "qq I went to lawschool and have bills", or "I'm so much smarter than you examiners and am well trained in the art of writting bs". Guess what? You're getting paid nigh on well double what we are, and you're choosing to work there, there are law firms where you don't have to work as much. We can't just move to the next firm and examine applications at 40- hours per week (and get paid 4k less) if we feel like it. Let's be clear, the pay here is Not special compared to jobs Which do not require 40+ hours. Welcome to the real white collar working world, where in demand people prefer jobs that allow them to not be stressed out everyday, and actually start, support, and go home to see a family.

Just like bier, we're bouncin' on outta here. Look for me on this board in a few years on the other side of the conversation spouting "103 is sooo bs man, those ref's aren't combinable!" "You examiners complain too much, just examine the application, apply the "law", and allow my bs claim already" "Man, why do examiners never cite me any good art and make me argue their rejections?"

[examiner#6k]

JD, why haven't you convinced Congress to allow you to kick arse and take names here in the PTO? You that stuck on your private practice?

And as to you last comment to me, yeah, I'm sure my logic does have you befuddled, it's really hard for a lawyer to see beyond the one reference that you've cited into the broader realm of things that are (like the other testimonies from the same hearing). You did nothing but call him out on not wording his point well, which is what most lawyers arguments seem to boil down to, since they're obviously smart enough to understand what the other person is saying regardless of how poorly they said it. All I'm saying is stop wasting your time and ours erecting straw men and address the actual issue I'm quite sure you're aware is at hand. It appears you did this later, but only very superficially to Just an Ex Examiner.

And oh yeah, the problem with your examiner world view is that nearly every last examiner that the office wants to stay is perfectly capable of becoming a lawyer. On my worst sick day of my life I'd make a 150 on those weak arse bias you guys call LSAT's. Only the terrible examiners that you ha te will be left to send you garbage actions. So, you heard the man examiners lets all just become law students, scrw it, leave this examining job to illegal immigrants with no degree whatsoever.

I'm pretty much lost in the rest of the convo right now and have an action to type so see you later.

[TalkinOutofTheirButt]

Again Dennis you are talking out of your butt. You have no idea what goes on with anything at the Patent Office. All you can do is sit there in that frozen tundra called the state of Missouri and flap your lips like a horse neighs. It is amazing what people do that have so much time on their hands that they have nothing better to do than draw up conclusions from data that they admit is not at all conclusive. They only reason that I am piping up is because there is nothing good on television at the moment. If there were I would be rather looking that mind numbing imagery, then the this mind numbing thing called a blog and the internet. I have better things to do with my time than sit here and pontificate on things that have nothing to do with the concerns and issues vast majority of the world's population (finding food, shelter, and clothing).

[random.examiner]

MM @ 3/4 2:33 "Could it be that it is extraordinarily difficult to function at a high level, day in and day out, processing and coherently responding to issues arising from diverse and (in some cases) highly technical applications, knowing that some of it is important, some of it is pure crap, and any misfire will cost you your vacation?"

MM @ 3.5 6:10: "Assume all you want. You know what they say about assuming: you make an ass out of you and your client when you get that Final Office Action.

Properly done, the risk of damaging a patent's scope or validity by pointing out the support in the specification for a claim amendment is zilcho. Either you have the support or you don't. Frankly, it looks better for the patentee in litigation if it appears that they weren't trying to hide the ball."

MM, Preach on! Some of your best posts.

CliveFenster @ 3/5 10:24 "By and large, inventors have a poor grasp on "patentability"."

I was getting at the case where Claim 1 says "A widget comprising A, B, and C." Applicants patent from 10 years ago says "The widgets of the instant invention have A, B ,and C." I've found this situation literally dozens of times - if not a patent, then a journal article (and for claims 2-20). I think you got it, but just clarifying.

Lowly @3/5 11:50 "Of course YOU do a proper art search and never issue crap first office actions that completely mischaracterize the (crappy) art you found and give the claims in the broadest unreasonable interpretation that you can. ;)"

Well, I try to do a good search, etc. I have a lot of cases go abandoned, and have plenty of claim sets look like hamburger when I'm done with them. I'm just pointing out for every newbie examiner out there that you guys trash on these boards, there is plenty of crap being shoveled by reg no.s in the 30,000 range.

[Also Anon]

"See MPEP § 714.02 and § 2163.06 "when filing an amendment an applicant should show support in the original disclosure for new or amended claims.""

Excuse my ignorance, but where exactly did you get this quote from? It does not appear in either of the sections you cited. The closest that I found was "Applicant should therefore specifically point out the support for any amendments made to the disclosure." (MPEP 2163.06(I)) That section is generally referring to the abstract, specification and drawings only. And yes, I know that technically claims are part of the specification, but not the way the MPEP is using specification in this section.

[question]

I will help my buddy Malcolm

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2163.htm

2163 II 3 (b)

[bierbelly]

"I was getting at the case where Claim 1 says "A widget comprising A, B, and C." Applicants patent from 10 years ago says "The widgets of the instant invention have A, B ,and C."

Good story. When I was an examiner, I had like 5 different cases which clearly belonged together, but had been separated obviously so the attorney (corporate) could make his numbers. I found art from the 1940s which disclosed precisely the same composition, just made in a different way. 5x rejections + 4x double patenting rejections. 5 abandonments! When I left the office, I went to a law firm that represented same corporation, and picked up the foreign prosecution of the same case! Dilemma.

[bierbelly]

Oh, forgot. The 1940s prior art was from the same corporation.

[JohnDarling]

"You did nothing but call him out on not wording his point well"

Wrong. I clearly told examanonym that his/her statement was false.

And in the later post I provided the EVIDENCE that the statement was false.

The fact that you can't understand that is not surprising, given that you are an examiner.

"So, you heard the man examiners lets all just become law students"

You should regard every day at your job as an opportunity to learn something (more) about the law.

Again, I'm not surprised you don't understand that.

[JohnDarling]

Last time I checked, the MPEP did not have the force of law. And even if it did, "should" ain't exactly "must."

Why is it that European examiners don't need applicants and practitioners to hold their hand and point out support for amendments? You don't even have to to use underlining and bracketing to show the changes to the claims. Somehow, EPO examiners just "get it." Same with the duty of disclosure. None in EPO. EPO examiners just "get it."

Are U.S. examiners so incompetent that they need so much baby sitting by applicants and practitioners? Maybe we can get the EPO examiners to come over here and baby sit our examiners.

[bierbelly]

IMO, examining is a pretty well-paying, cushy job for an entry level scientist or engineer. Want to be paid like an attorney? Get a law degree. Stop whining if you don't have the drive.

[Invisible Guy]

JohnDarling, for the 200th time says: "The reason they don't change the production goals is simple: 60+% of the examining corps is getting a bonus for doing 110+% of their required production. What's the argument that examiners need more time? 60+% can not only do the required production, they can do, at a minimum, 10+% more."

John, many SPEs will make your life a living hell if you do not have 110% production. For many examiners, 110% is the minimum acceptable production. By calling 100% the minimum production and calling 110% an award production, and then forcing examiners to do 110%, that is the Office's cover for refusing to give more time. Trust me, for many examiners, 110% is not optional.

[anon]

"Want to be paid like an attorney? Get a law degree. Stop whining if you don't have the drive."

True - - there are many patent attorneys from sh1t law schools making plenty of money out there - - it's really not that hard.

[Malcolm Mooney]

"Excuse my ignorance, but where exactly did you get this quote from?"

From the section you cited (I muffed the cite by grabbing the internal cites). Here is the entire passage 2163(II)(A):

*****"There is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at 96; however, with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). ******

Typically vague MPEP poop. Regardless of how strictly you want to read it, I think it goes without saying that, in practice, failing to indicate where in the specification (or originally filed claims) one can find support for a new amendment is begging the Examiner to spank you. At the very least, you are just forcing him/her to waste his/her precious time. Is that a good idea?

(thanks to Question for also providing the cite)

[patentsoldier]

"We hold that § 2163.04(I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection." Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).

MPEP 2163.04(I)(B), in turn, states:

A simple statement such as "Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation '____' in the application as filed." may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.