PTO Implements Final BPAI Appeal Rules

The PTO has announced implementation of “final rules” that govern the procedure of ex parte appeals before the PTO’s Board of Patent Appeals and Interferences (BPAI).  A year ago, I commented on the rise of of “technical rejections” of appeal filings. Most of these involved issues such as failing to list non-appealed claims; failing to include an appendix page (even if you have no appendix); and the use of a section headings that varied (in form but not substance) from the required heading. In my 2007 sample of 720 appeals, I found that a full 25% had been rejected as ‘defective’ based on these formalities. [Link]

With this large number of defective briefs in mind, the BPAI developed the new rules:

A major objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board, along with the resulting delays in application and appeal pendency. The requirements of the amended rules are believed to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required, thereby minimizing, if not eliminating, a need to hold appeal briefs defective.

In reality, the new rules appear to significantly increase the number of formalities.  This increase in formalities will likely increase the time required to prepare an appeal. The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.

Some changes:

1. The most substantive change may be the requirement that non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI. “Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered.”
2. Instead of filing a summary of the invention, the applicant must file “a claims analysis.” This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed.”
3. 30 page limit for the Grounds of Rejection, Statement of Facts, and Arguments. (14 point font).
4. A complete appeal brief will include each of the following (in the correct order):
• Statement of the real party in interest,
• statement of related cases,
• jurisdictional statement,
• table of contents,
• table of authorities,
• [reserved],
• status of amendments,
• grounds of rejection to be reviewed,
• statement of facts,
• argument, and
• an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section.
5. new grounds of rejection are no longer permitted in an examiner’s answer,
   the examiner’s response to a reply brief is eliminated,
6. petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,
7. petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and
8. a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

Appeal Rules PDF

Comments

[pds]

Repost from earlier (this is a better place to put the comment).

I spent awhile reading the comments section .... what a joke. They take the time to address minor issues and give short shrift to many of the important questions.

This is the new requirements for the Examiner's Answer:

§ 41.39 Examiner’s answer.
(a) Answer. If the examiner determines that the appeal should go
forward, then within such time and manner as may be established by the
Director the examiner shall enter an examiner’s answer responding to the appeal brief.
(b) No new ground of rejection. An examiner’s answer shall not include a new ground of rejection.

One of the problems I saw with the original proposal was that a considerable amount of new requirements were being placed on appellants yet none on the examiner (despite the benefits associated with the new changes also being applicable to the examiner). Apparently, they decided they were going to eliminate even more requirements from the examiner's answer. Their rationale, which I won't reproduce, is also a joke.

The kept most of the cr@p in that they initially proposed. I could go on and on and on, but it is useless at this point.

I will, however, make one more comment in that their ecomomic analysis as to how much additional expense this will impose in a joke. For example, on page 32969 (third column at end), the statement that the statement of facts section will not add to the appeal brief preparation cost and in many cases it will be a small cost savings. That section alone is going to suck up a lot of my time. Miss a fact necessary for your argument and you are screwed.

[e6k]

Good times, except no new grounds :(

[the mad prosecutor]

My list of terms will include "allowance" since the PTO seems not to understand what this word means ....

[David Boundy]

The "no new grounds in Examiner's Answer" rule is a sham.

The new Appeal Rule 41.39(b) provides "No new ground of rejection. An examiner’s answer shall not include a new ground of rejection." First of all, this is illegal - it is not a "logical outgrowth" of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO's Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply.

Since 2001, the PTO has regarded rules of procedure as expendable, to be ignored when constraining PTO action but enforceable when applicable to constrain applicants, and Due Process is a quaint relic of some forgotten past and foreign legal system. This Notice of Final Rulemaking appears to continue the trend..

[Brois]

14 point?!?

Can I use the Comics Sans font?

[Gideon Pope]

Well, isn't this a nice, how do you do!

What yuh gotta love about the PTO is they are right outta 1984 with the "chocolate rations have been raised to 12 ounces" announcement as they hand you your 8 ounce ration!

It's absolutely beautiful.

I really hope they are laughing about it behind closed doors.

Tearing up from laughter, hunched over, one hand on their belly, the other on their coconspirator's shoulder, attempting vainly to fight through the laughter and say, "we told 'em it was to LOWER kick backs from the Board! Ahhhhahhhahahhh!"

Another day, another thousand dollars. The motto of the Patent Attorney.

e6k=DC=MM

[e6k]

"I really hope they are laughing about it behind closed doors.

Tearing up from laughter, hunched over, one hand on their belly, the other on their coconspirator's shoulder, attempting vainly to fight through the laughter and say, "we told 'em it was to LOWER kick backs from the Board! Ahhhhahhhahahhh!""

I loled, and I'm also going to starbucks for 12 oz of bannana nut chocolate chip cake.

[Doodleboop]

I like "non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI" So you file your petition(s) and wait the six months to a year before the PTO realizes your petition hasn't been "assigned" to be worked on. Mean while, your time to appeal goes bye-bye.

Also I like, 30 page limit at 14 point font. Is the a double spacing requirement, font type requirement, boarder requirement, print only on front page requirement? 'Cause if not and I need the space, yea, I'm writing in Comics Sans font.

And what about "This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed." Does this create estopple? Sometimes my limitation is supported in many places in the specification and sometimes in the penumbra (basically, whatever a patentee litigator can successfully argue is include within the limitation is included in the limitation).

[Brian]

I like that no new rejections are allowed during appeal. I don't understand the complaints about that part of the new rules. What am I missing?

Also, I've thought for a long time now that the PTO needs to require claim charts in office actions. The claim charts should map each claim element specific locations in the cited reference(s). I've only had one examiner give me a claim chart in the office action, and it made it so much easier than usual to understand the examiner's position. I'm disappointed to see that the PTO seems to be moving in the opposite direction by easing the answer requirements.

[e6k]

"I like "non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI" So you file your petition(s) and wait the six months to a year before the PTO realizes your petition hasn't been "assigned" to be worked on. Mean while, your time to appeal goes bye-bye."

SUBSTANTIVE SIDE EFFECT SOMEONE CALL JUDGE C! THIS RULE IS SUBSTANTIVE IN NATURE! SOUND THE ALARM!

"Does this create estopple?"

One can only hope.

"I like that no new rejections are allowed during appeal. I don't understand the complaints about that part of the new rules. What am I missing?"

That patent attorneys will bich and moan about literally anything changing about the process, no matter how in their favor it is.

[curious]

exactly how is this new process in "our favor" e6k?

[MIchael Valentive Smith]

6K, in this one the attorneys are right. The office is messing around with b$, piddly $h1t like this when there are a lot bigger problems to take care of in the office.

How about solve the soaring rate of IPR errors? It is around 15%+ and is the biggest cause of all the problems (backlog, low production, etc.) Get examiners doing a 1st action correctly & a lot of the other problems will be taken care of.

This type of rule package is like rearranging deck chairs on a sinking ship.

MVS

[e6k]

"Get examiners doing a 1st action correctly & a lot of the other problems will be taken care of."

So, if we made the world perfect then the world would be perfect? I agree with you on that one. Coming back to our imperfect world, you and I both know how to mostly solve IPR's, make it easy to allow cases and eliminate QR. You really believe that this is what caused the backlog? Did you not see the increase in filings matched by an increase in dependent claims matched by trainers teaching newbies to do everything by the book matched by stupider sht than ever being submitted as overclaims?

You could be right about the rearranging, but it still presents substantial benefit to the applicant.

"exactly how is this new process in "our favor" e6k?"

If the examiner knows he cannot add any new grounds of rejection then he will be less likely to not reopen as soon as you send in your after final. Of course, this was apparently already against the rules, so idk if it actually helped you or not.

[e6k]

I should add, "if not, hahahahahaha".

[Steve M]

Time for another lawsuit.

[Steve M]

Time for another lawsuit.

[Boris]

"new grounds of rejection are no longer permitted in an examiner’s answer"

e6k:
The issue is that no one believes this will be enforced. Hell, I have had the Appeal Board come up with totally new reasons for rejection (If the Board's new reasons 1st appear in their ruling, I don't get to answer them do I? I get blind-sided.)

The relationship between the attorney's and the PTO has deteriorated to the point that we no longer trust the PTO to even pretend to follow its own rules.
I don't demand perfection, just a good faith effort to follow your own rules.
Nor do I understand where this bad faith rule making/following comes from. I see no logical reason for the PTO to act with such animosity.

[Federally Circuitous]

I love the logic in the introduction: the number of appeals rose in 2007, so there must be a problem with the appeals rules that needs fixing. Hey, John Dufas: how about fixing the friggin' examination process so that applicants get a fair shake in front the examiners and aren't compelled to appeal in order to get the examiners to actually read the application and the prior art, so that applicants can get the claims they deserve?! And what if I've got 30 claims pending, and I need to appeal all of them - how the heck am I supposed to relate to those in 30 pages of double-spaced 14-point font? And if my petition to resolve some other issue hasn't been decided yet, what do I do - appeal, or file a petition for an extension, at the risk of that petition being denied long after my deadline to appeal has expired?

Dufas is either evil incarnate, or the reincarnation of Franz Kafka.

[T]

Federally Circuitous got it exactly right.

They are imposing a 30 page, 14 point, double line space limit on my appeal of a 45 page final office action, charging me over 1000 bucks for the honor and forcing me to consume a large chunk of the page limit saying things I don't want or need to say!.

All to get their mistakes and crappy workmanship corrected. The real goal is to make appeal pointless so people will just go away.

Were there any hints in the comments filed that someone is preparing to sue? Mr. Boundy perhaps?

[TMA]

"how about fixing the friggin' examination process so that applicants get a fair shake in front the examiners and aren't compelled to appeal"

Is so right! Unfortunately, this sort of reasoning seems to be the common thread behind many recent proposed changes by the USPTO. Circular reasoning, avoiding the underlying issues, dismissing applicants rights at a simple waive of their hands.

I don't see this being very different than the enjoined rules in that it affects substantial rights, and it is a disproportionate "solution" to demonstrably the wrong problem all together.

[T]

Brian-
"I like that no new rejections are allowed during appeal. I don't understand the complaints about that part of the new rules. What am I missing?"

What you are missing is that this really isn't a new limit on examiners. It is a new limit on applicants. Examiners can still present new ground of rejection. They just have to reopen prosecution to do it.

What has been removed is the opportunity for the applicant to proceed with the appeal and have a board of people that might know what they are doing decide the issue.

So, paying the appeal fee and meeting all the onerous appeal brief requirements is the new toll to get the examiner to actually pay attention to your arguments and provide an appropriate coherent response.

[T]

e6k-

RE:

""exactly how is this new process in "our favor" e6k?"

If the examiner knows he cannot add any new grounds of rejection then he will be less likely to not reopen as soon as you send in your after final. Of course, this was apparently already against the rules, so idk if it actually helped you or not. "

Is this true? What is the incentive for the examiner not to wait and see if the applicant files an appeal brief and reopen prosecution then?

[hp]

When an Examiner "re-opens prosecution"... they have already chewed up all the applicant's time/money on a lark/grudge only actually doing their job when forced to by an applicant that happens to actually have the time/money to follow through. How many of those are there?

Viewed in this way, an appeal is nothing but a bribe for what the application fee has already paid for: competent review of the application according to the rules.

This is even more onerous than the continuation rules debacle.

30 pages of 14 point font? so the typical BAPI judge is a senile Mr. Magoo that can't remember what he just read?

They have no shame. None.

[the mad prosecutor]

I, as do many others, understand that the Office's main objective at this point is to simply wear applicants down. The rules continue to do in fact what could not be done by statute-reduce the backlog by dissuading applicants from trying to obtain patents.

[the mad prosecutor]

e6k, I feel sorry for you and your brethren. There was a time when examiners actually received counts for three quarters of their cases, as allowances. That made the job much easier.

[teacup]

"how the heck am I supposed to relate to those in 30 pages of double-spaced 14-point font?"

Arial Narrow

"Dufas is either evil incarnate, or the reincarnation of Franz Kafka."

Um, let's not slander one of modern literature's greats, mkay? Thanks a bunch. Though, I would like to see how far we would go with the adjective Dudas-esque.

[Hank Rearden]

This is the height of laziness and incompetence.

Appellant has to point out where they first argued a particular point? WTF does that have to do with the merits of the argument?

Let's hope Translogic gets decided correctly. Maybe we can have all of these lazy APJ's thrown out.

[Lowly]

I just don't understand the PTO. These rules are obviously to discourage applicants from filing appeals.

Why is the PTO so violently anti-patent?

To the "sky is falling" people, though, I'd like to say it's not quite as horrible as it seems. I'm still regularly getting cases allowed. It's more difficult than it used to be, and generally takes at least one RCE, but it's still doable.

[Ptomonger]

I thought it was a little unusual that the PTO put off the effective date for six months. Seems a long way off, particularly when you compare it to the 3 months they set for the continuation/no. of claims rule set.
Any insights on why they "cut us a break" for six months?

[The Mad Prosecutor]

Lowly, it is true that there are allowances to be be received. However, the fact is that the U.S. Rejection Office, for the first time in recent history, rejects more applications than it allows. About 8 or 9 years ago, the allowance rate was about 75% - it is now 44%. If the trend continues, or the allowance rate decreases, patent filings most likely will decrease, which can can lead to a decrease in worth of companies, which can lead to a decrease in research and development, which can lead to etc. . . .

I have attended more than one interview in the past quarter, in different art units, where the Examiners indicated by mandate (official or otherwise) the allowance rate is roughly 10%. These Examiners don't realize there is a very delicate balance, and that too low an allowance rate can literally ruin the patent system. With, I believe, further dire economic consequences. We are on the brink or the start of a U.S.-led worldwide recession. Now is not the time for this continued nonsense from the PTO.

I work in a larger law firm. I can *already see* the slow down in the filings and prosecution. If the clients continue to see little return on their patent filings, what is the natural consequence? Less filings, spend their money somewhere else. That is bad for the firm, for industry, for the country, for the world.

[pds]

"Any insights on why they "cut us a break" for six months?"

No idea, but if I have an appeal to be filed that comes even close to that date, I'm filing it before the rules go into effect.

Another thing to consider is exactly how long before cases that meet the new rules will actually be decided by the BPAI. Based upon my experience, examiner answers usually don't get issued until 3-4 months after the appeal has been filed. Add another 2 months for the reply brief, and maybe another 2 months for the reply brief to be noted. After the reply brief has been noted, it is about another 2-4 months before the appeal is actually docketed. Once docketed, it'll be another 12-16 months from the date of docketing before it is decided by the BPAI. Of course, this doesn't take into account any notice of non-compliant appeal briefs.

This means that it'll be around the beginning of 2011 before we start seeing decisions out of the BPAI that will give us practitioners an idea as to what is considered acceptable and what is considered deficient by the BPAI. Once the evidence is in, we practitioners (as a whole) will have a better idea as to what the BPAI is looking for. This means that that bugs will be shaken out of the system sometime around 2013.

Of course, this assumes that people will be filing appeals at the current pace. If the continuation rules package dies the death it should, people may be less inclined to appeal. However, if the likes of 6K continue to roam the halls at the USPTO with the mentality of "reject, reject, reject = quality," then filing an appeal may be applicant's best opportunity to get allowable claims.

[SF]

Anyone can thoughtlessly write a rambling, throw-everything-against-the-wall brief. The page limit is a good start in forcing applicants to write a tight brief, which requires clear thinking that, under the current rules, really hasn't been necessary.

[Eurodisnae]

Some things almost – almost – make you sorry for the USPTO.

This isn’t exactly on topic, but it does illustrate the real problems the USPTO has to deal with, which further points up the poverty of their response to the challenges they face.

As of now, Microsoft have 8948 granted US patents and 12815 published US patent applications. Here’s claim 1 of recently published 20080134132:

1. A method comprising: identifying an opportunity associated with designing software; providing an arbitrator/communicator who is to serve as an intermediary between an object/component driven element and a situation/scenario driven element composed of individual who are to use designed software; assembling the object/component driven element, wherein said object/component driven element includes individuals who design software; developing a metric associated with development of said software and against which design activities are to be measured; seeding one of said elements with an idea associated with the metric; and iteratively translating and communicating results from one element to another until the design process is terminated.

Here’s what I think it means:

A product design is developed by bouncing ideas/proposals/results between a user group and a design team until a satisfactory design is obtained or the project is abandoned. Communication between the design team and the focus group is mediated by an intermediary because they don’t talk the same language. The on-going product development is judged against some kind of benchmark. The design process is initiated by giving either the focus group or the design team some sort of idea that is somehow associated with the benchmark. The product is a software product.

Is that really what patents are for?

Here's claim 1 of 20080134338:

1. A method comprising: mapping a visual invariant to a program invariant; and discovering inputs to GUI logic that includes a user actions and a execution context to cause the program invariant to be violated.

Now here's claim 1 of 20080133976

1. A method comprising: mapping a visual invariant to a program invariant; and discovering inputs to GUI logic that includes a user actions and an execution context to cause the program invariant to be violated.

Oh they're different all right: the second one contains one less grammatical error than the first.

Wait, here's 20080127341
1. A method comprising: mapping a visual invariant to a program invariant; and discovering inputs to GUI logic that includes a user actions and an execution context to cause the program invariant to be violated.

Now surely, filing three separate patent applications with identical independent claims is a clear abuse of the system. If it’s a common practice, which wouldn’t be apparent to anyone but the applicants and the USPTO, it maybe explains certain ones of the Tafas/Dudas claims rules. And you can’t just outlaw identical claims because the same people that are filing them could perfectly easily draft variations on a theme, so you end up with a generalised rule that's hideously cokmplicated and impacts perfectly legitimate applicant behaviour...

If you ask me, the Illuminati are out to break the patent system by stealth.

[e6k]

"If the trend continues, or the allowance rate decreases, patent filings most likely will decrease, which can can lead to a decrease in worth of companies, which can lead to a decrease in research and development, which can lead to etc. . . ."

You really believe that allowed patents are a "good" thing for the country. I love it. So rich. Let's be very clear, the only thing that the country gets out of the deal that is an issued patent is disclosure of the invention to the public usable in 20 years. The pseudo monopoly that is set up is NOT good for the public at large, as recognized by economists for sea to shining sea. Couple publishing at 2 years with a 2+ year pendency and few nonpub requests and who's making out like a bandit?

Also, fewer filings on "inventionlols" that aren't worth a tiny bit of extra trouble is hardly going to make the economy go down. As has been said a million times before, even the staunchest resistance by the PTO isn't going to stop the next big thing (or even medium or small thing) from getting a patent. Go cry in a corner for all the "inovationlol" that could *possibly* be lost by having a slightly more difficult time at the board.

[The Mad Prosecutor]

E6k, I would think it goes without saying that intellectual property is developed in those areas where meaningful, strong protection is available. If such protection is not available in the U.S., there will be less development. This means less money spent on research and development, which means lost jobs, etc. I would think one would have to purposefully ignore what is apparent to argue the contrary.

[e6k]

"Of course, this assumes that people will be filing appeals at the current pace. If the continuation rules package dies the death it should, people may be less inclined to appeal. However, if the likes of 6K continue to roam the halls at the USPTO with the mentality of "reject, reject, reject = quality," then filing an appeal may be applicant's best opportunity to get allowable claims."

Come now pds, you know as well as I do I only reject things that have problems under the laws.

Either way pds, we both know your work is of such outstanding quality that no board would ever dream of not reversing the horrible horrible ol' examiner's decision 100% of the time regardless of any rules. I don't really see what you're concerned about.

[pds]

"I would think one would have to purposefully ignore what is apparent to argue the contrary."

Bingo ... you win the prize for today.

As for 6K, he's already won the lifetime award for extreme ignorance.

[Yet still another bleeding anon]

Lowly, it is Numpty fever! End of times.

[pds]

"Come now pds, you know as well as I do I only reject things that have problems under the laws."

The problem is, which we all recognize (except for you), is that your knowledge of "the laws" is woefully incomplete and/or misguided.

I don't doubt that the vast majority of examiners who issued final office actions in my cases believed they were following the law. However, after my appeal brief, I have had around 50 (five - zero) cases reopened in the last 2 years or so. Of these cases that were reopened, probably 90% contained arguments that were previously presented. What all of this means is that my clients are being subject to bogus rejections that reduce the useful life of their patents and add to the cost of obtaining a patent.

I'm not going to get into the number of allowances (or offers for allowable subject matter) I have gotten after appealing either. A substantial number of the allowances I get is because of the appeal.

These funds, which are being wasted on responding to bogus rejections, could be used to fund R&D or obtain patents on other ideas. Remember, more patent applications mean more disclosure (which you say is good), even if the application doesn't mature into a patent.

The new set of Appeal Brief rules just adds to the cost of filing an Appeal Brief without addressing why the number of appeals being filed is growing. Instead of forcing examiners to do a better job in their examination, which narrows issues and leads to quicker and more focused prosecution, the new rules just make applicants jump through more hoops.

[T]

SF-

Re:"Anyone can thoughtlessly write a rambling, throw-everything-against-the-wall brief. The page limit is a good start in forcing applicants to write a tight brief, which requires clear thinking that, under the current rules, really hasn't been necessary."

An arbitrary page limit, with out any consideration of how many claims are at issue and how many ridiculous rejections are applied against those claims and how long the rejections themselves are, while at the same time requiring that ALL the errors in the office action be identified and while playing a game of gotcha... is the definition of arbitrary and capricious.

[T]

Eurodisnae-

Re:"Now surely, filing three separate patent applications with identical independent claims is a clear abuse of the system."

I don't know what game is being played with those applications. Probably the specs were being filed in a rush because of a bar date and the intention was/is to file preliminary amendments in at least 2 of them to introduce different claims. The specification likely discloses separate inventions and if all the claims were introduced in one application, the examiner would have issued a restriction requirement, so Microsoft was/is trying to avoid the hassle and extra fees of filing divisionals by filing separate applications themselves.

In any event, it is hardly an abuse of the system to pay 3 filing fees for the same set of claims. The system should be dancing in the street to be paid 3 times for the same job.

Maybe Microsoft was hoping to get 3 separate prosecutions as an experiment expecting different results to make a point about ab arbitrary examination process...

[SF]

T: If the rejections are ridiculous, it shouldn't take many words to point that out. If there really is a need for more pages (e.g., lots of claims), the USPTO provides the ability to petition for more pages. Somehow litigators have been able to deal with page limits. Why can't prosecutors?

[The Mad Prosecutor]

To further one of T's points, I have in the past filed continuations and divisionals with the same claims, claims that issued in the parent application, claims that were rejected in the parent application, etc. After having establised copendency, the preparation of the preliminary amendment began.

Of course, 35 U.S.C. 101 prevents multiple patents from issuing with the same set of claims. Further, the doctrine of obviousness-type double patenting prevents claims from issuing which are obvious variations of one another. Still further, Applicants are obliged to disclose the identity of related cases.

[left coast]

This story helps me understood a bit better why so many Office Actions are issuing. About two and a half years ago the client and I traveled back East to interview examiners who were "handling" our applications. One of the examiners -- a primary -- told us (off the record) that his boss had told him that the invention was not patentable (no matter how it was claimed or what the prior art was) and that a Notice of Allowance should never issue. Since then we filed a pre-Appeal Brief, which caused the final rejection to be withdrawn and a new OA to issue including new references cobbled together again rejecting the claims. We responded. New rejections issued. We responded pointing out the claim limitations which were not taught by the prior art in each of our four independent claims, providing a paragraph or two explanation for each. We just received a final rejection wherein the examiner simply said that all of his prior rejections were repeated and only responding to our arguments for one of our four independent claims. The examiner is just following his boss' earlier instructions to never issue a Notice of Allowance. If I had any hair left, I would pull it out.

[Befuddled]

I just don't get it... why are the procedural safeguards for due process simply being ignored? Seems an applicant can be put in an endless and expensive loop before ever reaching BPAI. Since all adminstrative remedies would not have been exhausted, an applicant may never get a fair hearing on the merits of his or her case before the CAFC.

I for one believe the rules for getting to the BPAI should be no more stringent than the rules for getting to the CAFC.

So, who is going to file the next suit to block this self-serving set of rules? (The biotech industry did its part, now its time for the software, electronics industry to step up to the plate; after all, I am prosecuting your applications and am generally receiving poor quality examinations which stand no chance without a robust and available appeals process.)

[somebody]

These rules are simply BPAI's attempt to stem the rising tide of appeals that are the inevitable result of the open sewer quality of Office Actions gushing forth from an examining corps whose entire training can be summarized by "quality = reject, reject, reject."

[e^6k]

"These rules are simply BPAI's attempt to stem the rising tide of appeals that are the inevitable result of the open sewer quality of Office Actions gushing forth from an examining corps whose entire training can be summarized by "quality = reject, reject, reject." "

Obviously, but even so, q=r^3 comes from "an invention is something I can word differently than the prior art lolz" instead of attorneys taking the system seriously. I notice that q=r^3 goes right out the window when the representative gets down to business in the majority of cases. You send us something stupd and you may very well get something stupd back, push for something stupd and you might hit a brick wall of procedure. Better bring your wrecking ball. As even Dudas implicitly has pointed out, q=r^3 is basically based on in its absence garbage in = garbage out.

[e^6k]

Also, how can you call it self-serving. The pto wants to get rid of the backlog and bpai contestations, what's the quickest way to do that? Just allow sht left and right. Problem is, we have too much stupd sht that would get through so we can't go with door no. 1.

[T]

SF:

If an examiner points to 12 columns of text in a cited document and says it says A, when it does not, does one simple say in the Appeal Brief: It does not either, and pray that the Board reads all 12 columns and comes to the right conclusion, or must one provide some summary of each paragraph and explain why each paragraph doesn't say A and that when taken together, they don't say A?

In Litigation, both side deal with the same constraints. On appeal, I might have to argue with a 45 or more page office action...

[StoopidQ]

e6k,

The problem is not that sending in something stoopid results in something stoopid back, it is, as pds and others have repeated pointed out, that sending in *anything* results too often in getting something stoopid back.

And yes, there will always be attorneys trying to get something patented that should be unpatentable (note: at the direction of their client). However, under the current rules, there is much more actual incentive for examiners to game the system in the ways noted above.

The PTO is the only entity I have ever seen that, given more people are willing to pay for its services, decides that this is a bad thing.

Just my $.02.

[somebody]

"Obviously, but even so, q=r^3 comes from "an invention is something I can word differently than the prior art lolz" instead of attorneys taking the system seriously. I notice that q=r^3 goes right out the window when the representative gets down to business in the majority of cases. You send us something stupd and you may very well get something stupd back, push for something stupd and you might hit a brick wall of procedure. Better bring your wrecking ball. As even Dudas implicitly has pointed out, q=r^3 is basically based on in its absence garbage in = garbage out."

So if it's stoopid, how hard is it to reject? If it's stoopid, why do 50+% of appeals result in re-opened prosecution?

Is it your position that it's too hard to stoopidly reject something stoopid? Are you stoopid or something? Or is stoopid is as stoopid does?

[SF]

T: I don't doubt that there may be situations (such as those which you note) where it's difficult, if not impossible, to meet the page limit. If you really need more pages, you can ask for it. I believe, however, that longer briefs too often reflect an attorney's poor thinking or a CYA attempt to throw everything in the brief. The USPTO shouldn't refrain from setting a page limit just to accomodate such.

[T]

SF -
Throwing everything in the Brief is a REQUIREMENT of the new rules. See page 32938 right most column of the Fed Reg....must address all points....

[T]

SF-
And its not a matter of just asking for more pages, it a matter of paying another outrageous $400 fee, all for an appeal I should not have to be making to correct errors that should not have been made. Its like paying a mechanic a second time to repair a repair that was made incorrectly. Something I'm sure you feel is reasonable and appropriate and are happy to do.

[SF]

"Something I'm sure you feel is reasonable and appropriate and are happy to do."

Try thinking of the initial brief as having a $400 discount for keeping your brief under 30 pages and, perhaps, you won't be so miffed that you have to pay the regular price for briefs over 30 pages.

[SF]

"Throwing everything in the Brief is a REQUIREMENT"

Noting all points of disagreement is a requirement. Making every possible argument (including barely-passing-the-laugh-test arguments) isn't. Ironically, the CYA-"No Argument Left Behind" strategy typically backfires because it undermines credibility and fails focus the Board's attention the key issues.

[e6k]

"Try thinking of the initial brief as having a $400 discount for keeping your brief under 30 pages and, perhaps, you won't be so miffed that you have to pay the regular price for briefs over 30 pages."

Here is a man familiar with gov.

My other post is lost to the TCP network error that plagues me.

[Brian]

"I just don't get it... why are the procedural safeguards for due process simply being ignored? Seems an applicant can be put in an endless and expensive loop before ever reaching BPAI."

Well, and I think that the endless loop can potentially continue even if you reach the BPAI and get a complete reversal. It seems that the wording of 41.54 doesn't necessarily require an examiner to issue a notice of allowance if reversed. Instead, the examiner could conduct further search and issue a new office action. As long as the rejections reversed by the BPAI aren't repeated, then arguably the office action is still "consistent with the decision by the Board." I recently read about an application in which this very scenario was playing out.

[anonymous]

" Instead, the examiner could conduct further search and issue a new office action."

It happened to me. Win on appeal. The examiner, with SPE's mandate not to allow case, rejects based on new primary reference (which showed nothing more than the original primary) and new secondary references (which showed nothing more than the original secondary references).

[e6k]

"I just don't get it... why are the procedural safeguards for due process simply being ignored? Seems an applicant can be put in an endless and expensive loop before ever reaching BPAI."

This is a consequence of obtaining not being a right. When you can wrap your head around that one you will be free. I will let you in on a little secret, if you ever tire of the PTO, you can take your app straight to the DC.

Good luck with that :)

[e6k]

"It happened to me. Win on appeal."

Perhaps one day it will dawn on you that your job is not merely to "get the applicant the broadest coverage to which he is entitled" but to "get the applicant the broadest coverage that it will appear, on examination, to the person making the decision, that the applicant is entitled to". When you have fully digested this, you will be an excellent rep.

Always remember, there's always the DC :)

Anyone have any no's on the rates of patents being "issued" by the DC?

[anonymous]

We talk about 14 point and 30 pages. It is beyond belief. Only govt could get away with that. What if:

1. atty. and examiner see the other side of the argument, but both think they are on the right side of 50/50 - the atty. can choose to send it straight to appeal.
2. atty. thinks it is a clearly erroneous rejection: a) pre-appeal request, 10 pages, best argument of broadest ind. claim, cost: $1000. b) if conferees think rejection is good to send to the board you don't get your $1000 back and if you win at the board your case is allowed c) if conferees say "reopen" you get your $1000 back - you shouldn't have had to pay for it anyway.
3. Streamline the process: you can only argue the broadest ind. claim - if you win - allowed. If you lose, abandon or RCE with claim amendment or CAFC.

[Telemachus]

Seems like Dudas hasn't figured out that promulgating rules is not the same as passing laws (I learned that in my first year of law school). Does anyone know exactly what his role was in, for example, passing the AIPA? (listed on his Bio) This guy is in over his head. Its times like these we need folks with a few gray hairs running the show.

[Telemachus]

Regarding the petition issue, it seems like the petition need not be decided upon, but only "timely filed" Does anyone else read it differently?

[Michael Valentine Smith]

e6k,

Why are you arguing on this one? For this, the attorneys are right. The rules are simply a run around and not going to help anything at all.

The stats they give a fairly accurate (if anything, they may be optimistic).

Pre-appeals get reopened around 50% of the time (what the reports don't tell you is that if the case is allowed, it usually isn't counted as "reopening", so the # going to appeal is even smaller than the reports say).

Also, a substantial % of cases appealed are reopened or allowed rather than going to the board (don't have the #s off-hand).

If an examiner goes to final, they should be prepared, and willing, to go to appeal. If they are not, they shouldn't be making the final.

There are 2 primary reasons for this.
1) A lot of finals that should not have been made in the 1st place. Largely because too many SPEs (and some primaries) are afraid to allow anything. They think if they don't allow things, they won't get an error (1d10ts!). That is a good part of the reason the IPR error rate is around 12-15% & kickback on IPR cases from OPQA is a lot higher than that.

2) Too many "permanent" members on pre-appeal panels (either a TQAS or SPE) regularly decide to reopen and the examiner has to fight to be able to go to appeal. If you attorneys see a pre-appeal form not signed by the SPE AND another SPE/TQAS, you know that the home SPE felt strongly the rejection was right & the "permanent" member was one of those that feel all rejections should be reopened on matter what.

As for reopening after appeal, this "should" not be happening regularly, but it does. The rejections have to be signed by the TC director and get their OK. Some will all the time; some never.
Personally, unless the proposed rejection is a knock-out 102 (and WHY didn't they find it earlier??), the case should be allowed to issued. Doing otherwise, is not doing our job & it wasting our time & the applicant's time & money.

MVS

[Telemachus]

By allowing a case to go to appeal, and then reopening the case without preparing an examiners answer, the examiner buys some additional time. The applicant is in a worse position since the examiner could have just issued a new non-final action, and now the applicant's don't have a solid record regarding the arguments presented against the final rejections. I guess if prosecution is reopened, the applicants' arguments are deemed persuasive by default.

But what a crock. The new rules have not fixed this problem, the examiner still "decides if the appeal should go forward." Meaning they can reopen. I think if a case is reopened, the appeal fee should be refunded.

[Analogyguy]

With the second office action as final action, limitations on the number of continuations, removing motivation from obviousness (KSR), etc. they squeezed us upward like a tube of toothpaste towards appeal. Thus, the number of appeals rose in 2007. Now for the pincer movement, they are putting a cap on the toothpaste tube of appeal. You can't go forward, you can't go upward, ... checkmate to the PTO and down goes practitioner! Down goes practitioner!

[Malcolm Mooney]

"And its not a matter of just asking for more pages, it a matter of paying another outrageous $400 fee, all for an appeal I should not have to be making to correct errors that should not have been made. Its like paying a mechanic a second time to repair a repair that was made incorrectly. Something I'm sure you feel is reasonable and appropriate and are happy to do."

California's got the most of them
Boy, they got a host of them
Swear t'God they got the most
At every business on the coast
Swear t'God they got the most
At every business on the coast
They got the Flakes

Flakes! Flakes!

They can't fix yer brakes
You ask 'em, "Where's my motor?"
"Well it was eaten by snakes . . ."
You can stab 'n' shoot 'n' spit
But they won't be fixin' it
They're lyin' an' lazy
They can be drivin' you crazy
Swear t'God they got the most
At every business on the coast
Swear t'God they got the most
At every business on the coast

.... RIP FZ

[Yet still another bleeding anon]

Tears began to fall, the writing's on the wall!

[Mother of Invention]

Say what you like about MM, but he's got pretty good taste in music...

[T]

SF-

Re:
"Noting all points of disagreement is a requirement. Making every possible argument (including barely-passing-the-laugh-test arguments) isn't. Ironically, the CYA-"No Argument Left Behind" strategy typically backfires because it undermines credibility and fails focus the Board's attention the key issues."

Read the Boards concluding remarks that include a comment like --Applicant did not argue X. Therefore, we don't have to consider it.-- once, or get sued for malpractice for not making an argument that you could have once--, then talk.

...your other comment about thinking that the Appeal fee is really 1400, discounted to 1000, overlooks the $1000 outrage, doesn't it?

By the way, is there any guarantee that after paying the $400 "petition" fee that the extra pages will be allowed? I don't see that in the rules...

[T]

Telemachus -

Where do you see an indication that the petitions need only be filed? The language I recall is --decided before appeal--. If you see something different, it would be a great relief if you would point out the page/column and top, bottom or middle..

[Yet Another Anon]

"Read the Boards concluding remarks that include a comment like --Applicant did not argue X. Therefore, we don't have to consider it.-- once, or get sued for malpractice for not making an argument that you could have once--, then talk."

In patent prosecution, can an argument be waived if the applicant does not raise it? If you didn't raise an argument, and the board comments that you didn't raise the argument, can't you just file a continuation and then raise the argument? After all, the argument has not been considered, so why can't the examiner consider it for the first time in the continuation?

[JohnDarling]

"Why are you arguing on this one? For this, the attorneys are right. The rules are simply a run around and not going to help anything at all."

True dat.

"If an examiner goes to final, they should be prepared, and willing, to go to appeal. If they are not, they shouldn't be making the final."

Even more truer.

"A lot of finals that should not have been made in the 1st place."

Da most truest of all.

"If you attorneys see a pre-appeal form not signed by the SPE AND another SPE/TQAS, you know that the home SPE felt strongly the rejection was right & the 'permanent' member was one of those that feel all rejections should be reopened on matter what."

So if the examiner and the home SPE think it should go up, how does the opinion of the QAS overrule? Aren't two votes for sending up more than one vote for re-opening?

"As for reopening after appeal, this 'should' not be happening regularly, but it does."

Correction: this "should" not be happening EVER.

All fixed.

[SF]

"get sued for malpractice for not making an argument that you could have"

So it's no longer the rules that justify throwing in all arguments, its your own a$$? ... lol ... are you once bitten, twice shy?

We serve the client best by making good arguments, not all arguments. But if you are uncomfortable identifying (or unable to identify) what arguments are good and what arguments are a waste of time or if you have a client that has unmanageable, unrealistic expectations, sure CYA, but also be sure to get them involved in the process to help them own the appeal strategy. But you better keep those waste-of-time arguments very brief because they'll only distract and annoy the Board.

[e6k]

"Doing otherwise, is not doing our job & it wasting our time & the applicant's time & money."

This is why I'm arguing this MVS. The above about time and applicant's time and money is not your concern. Not at all, zero, zilch, nada. Then you have allowed your job to be defined by the apps and their representatives. Your "job" is to examine the application and IF it appears on examination that they are entitled to a patent then you pass it to issue. That's a big mother fin IF. Just because someone on the board doesn't agree with you that you have them with your rejection doesn't mean that it all of a sudden appears on examination that they are entitled to a patent. In my cases, I have plenty of rejections that could possibly be appealed, and then sitting right over here on the sidelines is about 100+ more pieces of EASILY found art that I could get at least the ind. with. We all have cases like this, and there is no reason to put all 100 ref's on the record because they hardly even pertain to the "inventionlol" they pertain to the "overclaimlol". Even so, I could be appealed, and I could be reversed. Anything could happen, though it be unlikely.

Frankly, when I leave the office I would ha te to know that there are people who are supposed to be in charge of signing into existence potential restrictions on what I can and cannot make who were afraid to say "ok, maybe I was wrong, and maybe I need to do a more complete job on this app or get a second opinion from someone else as to what I should be doing".

Bottom line for you MVS, obtaining a patent is not a right, and never should be made such. An individual in this country should never have that type of unrestrained power, that is why we have trusted and appointed official agencies to USE THEIR JUDGMENT as to if it is an appropriate patent to be issued.

Don't get me wrong, that does not mean we are to "abuse" our "powers". Never try to say that failing to issue a patent that it does not appear to you, on examination, that the applicant is entitled to is an abuse of power. It is what you are there to do if the situation calls for it.

JD is as always here to tell us about what should and should not be happening by officials entrusted with the power to make the decisions for themselves. Thanks, but we've got it under control. Btw, the appeals specialist I do believe can overrule them. It's up to them to convince the appeals specialist, kind of like it's up to you to convince the examiner.

"checkmate to the PTO and down goes practitioner! Down goes practitioner!"

I loled.

[SF]

6k wrote, "Perhaps one day it will dawn on you that your job is not merely to 'get the applicant the broadest coverage to which he is entitled' but to 'get the applicant the broadest coverage that it will appear, on examination, to the person making the decision, that the applicant is entitled to.'"

That dawning came along time ago -- you shouldn't assume otherwise. We often take what we can get and then, if there really is something valuable left on the table, reboot with a continuation and new arguments.

But if the person "making the decision" is unreasonable in his/her interpretation of the art and his/her arguments and that person will only allow commercially insignificant claims, it's my job to appeal.

[JohnDarling]

"Thanks, but we've got it under control."

So 760,000+ cases in the backlog and 32+ month pedency is under control.

"Just because someone on the board doesn't agree with you that you have them with your rejection doesn't mean that it all of a sudden appears on examination that they are entitled to a patent."

You're beyond ridiculous.

BTW, on your big "secret" about taking an app directly to the USDC for DC, do you never tire of displaying your ignorance? Please actually read section 145 before posting such silliness.

[T]

SF-

If you recognize that the the person making the decision can be unreasonable:

"But if the person "making the decision" is unreasonable in his/her interpretation of the art and his/her arguments and that person will only allow commercially insignificant claims, it's my job to appeal."

Why do you expect me to be able to guess which arguments might be persuasive to said unreasonable decision maker?

[SF]

"Why do you expect me to be able to guess which arguments might be persuasive to said unreasonable decision maker?"

... because I was talking about appealing to the Board from an unreasonable decision-maker (i.e., the examiner) and was talking about choosing arguments for the Board.

[put it on the record]

--In my cases, I have plenty of rejections that could possibly be appealed, and then sitting right over here on the sidelines is about 100+ more pieces of EASILY found art that I could get at least the ind. with. We all have cases like this, and there is no reason to put all 100 ref's on the record because they hardly even pertain to the "inventionlol" they pertain to the "overclaimlol". --

There's plenty of reason to cite the 100+ pieces of art for the record. First, if there is overclaim, you're signalling that fact to the applicant. Second, applicants like it when the examiner puts a lot of art on the record because if/when a patent issues, the presumption that you considered that art is helpful to the patentee.

Do you tell the applicant what you're willing to allow? If so, good for you. If not, why not? Most applicants are happy to take what an examiner is willing to give them and then file a continuation or divisional.

I suspect the reason the 100+ pieces of art are not put on the record is because they don't apply to the claims.

I appreciate the majority of my examiners who are willing to cite all art they feel is relevant to the claims (overclaimed or not) and make the rejections they feel are warranted. Granted, I won't agree with all five 102(b) rejections and I dislike the 103(a) rejections that are combinations of seven references (not kidding), but I prefer it to the hide-and-seek game seemingly advocated here. The more I read Patently-O, the luckier I think I must be compared to everyone else.

[yes it does... or should]

--Just because someone on the board doesn't agree with you that you have them with your rejection doesn't mean that it all of a sudden appears on examination that they are entitled to a patent.--

I disagree. An examiner is supposed to make the best rejection they can. If your best rejection doesn't hold up at the Board, why do you think your second-best rejection would hold up at the Board?

The problem identified in the comments is that an examiner can prevent the BPAI from ever seeing the application by continually reopening the application. This fact does not hasten examination for anyone, and makes it appear that an examiner is incompetent or has no good case (i.e. the appearance of impropriety). How can this problem be resolved?

[Michael Valentine Smith]

e6k, "put it on the record" and "yes it does... or should", above, are basically correct in what they are saying. And you are incorrect. Make your BEST rejection(s). If you are reversed at the board, your 2nd best will also go down. And you SHOULD cite all the most relevant prior art. Whether it is 1 ref or 100.

And wasting time & money of applicant's is our concern when IT IS OUR FAULT!! If they are wasting their money for what they are doing, it is THEIR business. When we are causing the waste because of our mistakes & inefficiencies, that IS a problem we all should be aware of & try to avoid. And continuous reopenings, etc. are OUR fault.

MVS

[JohnDarling]

"The problem identified in the comments is that an examiner can prevent the BPAI from ever seeing the application by continually reopening the application. This fact does not hasten examination for anyone, and makes it appear that an examiner is incompetent or has no good case (i.e. the appearance of impropriety). How can this problem be resolved?"

This is not a problem in the eyes of PTO (mis)management. In fact, it's their strategy.

[pds]

6K ....

I know you become familiar with the MPEP only upon urging by those of us who have actually read it, so here is another little tidbit for you:

MPEP 706.02:

I. CHOICE OF PRIOR ART; BEST AVAILABLE
Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where:

(A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim;
(B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration.

Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.

If you lose on your "best" reference before the board, you shouldn't have recourse to the other 100+ pieces of prior art. If you've done your job properly, when applicant goes to the BPAI, the BPAI will decide the issue on the best arguments/art presented by the examiner. Thus, if the examiner is overturned, the case should proceed to allowance unless some piece of art shows up that could not have been cited earlier (i.e., an application with a filing date earlier than the application published between the time of the last rejection and the decision on appeal.)

Not citing the best prior art, getting reversed on appeal, and then citing the better prior art (that you knew about) after the decision on appeal is abuse of discretion in my book.

[e6k]

"e6k, "put it on the record" and "yes it does... or should", above, are basically correct in what they are saying. And you are incorrect. Make your BEST rejection(s). If you are reversed at the board, your 2nd best will also go down. And you SHOULD cite all the most relevant prior art. Whether it is 1 ref or 100.

And wasting time & money of applicant's is our concern when IT IS OUR FAULT!! If they are wasting their money for what they are doing, it is THEIR business. When we are causing the waste because of our mistakes & inefficiencies, that IS a problem we all should be aware of & try to avoid. And continuous reopenings, etc. are OUR fault."

Let's take this one at a time.

"Make your BEST rejection(s)"

I do make the ones I think are best, it doesn't mean that ones I think are least best aren't more persuasive to someone else, especially if I've given up getting deps and am free to bring the full force of the art against the ind without regard to deps what so ever.

"your 2nd best will also go down"

My 2nd-100th best will often get merely the ind and/or a few deps. If you think I'm going to write up a rejection based on all those you're out of your mind. I have indicated however that something is very commonly known (not taking notice) and provide more than one ref's in hopes that the applicant will see reason. If they do not, then that's on them. It's not my responsibility to convince them, not to say that might not be helpful. It's my responsibility to put forth what I consider to be a prima facie case. End of story.

"And you SHOULD cite all the most relevant prior art."

You just said "all" and "most relevant" in the same sentence, perhaps you could narrow it down to "all" or "most relevant". I choose "most relevant".

"are OUR fault."

Hardly our fault, it is their responsibility to put forth an application that will, on examination, appear to be entitled to a patent if they desire a patent.

"When we are causing the waste because of our mistakes & inefficiencies, that IS a problem we all should be aware of & try to avoid."

I never said we shouldn't try to avoid those. What I said was, that their time/money is not your concern. Doing your job properly is your concern. The two things are separate, though sometimes related. Applicants waste time/money all the time ON PURPOSE without any help from me, my making a mistake is hardly responsible for the phenomena and is but a drop in the bucket. A bucket filled to overflowing with applicant's wasting time. Cutting my time wasted down from the miniscule amount present to 0 would cause the backlog to go from 700000 or whatever to 6999998 at best. Let's assume all examiners did this, we're down to 6990998 or so. Man, that's the way to solve the problem! Turn the PTO into a perfect institution! Let's be so concerned with doing that that we might bring it up in conversation! In fact, let's be so concerned with lowering the problems by oh, say a half that we bring it up! Nevermind that the backlog will have nothing but a mere scratch put in it even if we achieve that goal.

You can go on and on all day, but the fact of the matter is, your argument for a utopia pto will never get around the sheer volume of time wasted by applicants trying to "get around art that they didn't know of" etc. Ignorance of the art is no excuse, just like mistakes are no excuse in our proposed utopia. Zero, none, no argument at all. You're wasting my time with your overclaims, get serious, look into the matter yourself if you're ignorant of the art. Oh, but e6k new art might always pop up, or oh, but e6k it's the office's responsibility to search! Shove it eh? I didn't say it doesn't or wasn't. What I am saying is that overclaiming to the unreasonable extent seen in my day to day existence is a colossal waste of time that making the PTO perfect in terms of errors would never come close to offsetting. And further that we live in an imperfect world, filled with imperfect people that do change their minds based on the situation around them. Live with it.

There is no possible want for the BPAI to see the case if the examiner is reopening JD. The only thing BPAI can even do is make the examiner reopen. If he does that on his own then what purpose would be served by getting the app to the BPAI? Further why on earth would you want that to happen considering our current system where you don't get auto allow after reversal?

For all you people out there in lala "best rejection" land, let's have an example.

Claim 1. A method of making Compound X comprising providing component Z through a nozzle onto Y.

Now, over here we have reference A that teaches a method of making Compound F by providing component E through a nozzel onto Y.

Ref B shows a method of making Compound X by providing Z by paint brush onto Y.

Ref C shows a method of providing the genus which Z belongs to onto other things through a nozzle.

Which is the best rejection? A ivo B (or B ivo A?)? B ivo C? If you got overturned on A ivo B would you necessarily not want to put forth B ivo C later? Vice versa? These kinds of questions ABOUND in the patent arena. I can literally make these types of rejections all day for the ind's I get.

If you're actually arguing in favor of no new grounds of rejection after reversal you're out of your mo fin mind, or you're looking out for your own best interests, or both.

One last thing MVS, cont. reopenings aren't always "our fault" as you well know sometimes the examiner can be overruled by people he doesn't have day to day access to, but who might be "better" in terms of determining if the rejection is correct or not. And it's not "the office's fault" any more than it is "the examiners fault", it is an inherent "problem" with institutions which spread out power at different levels. Solve that problem and get back to me, the world would like to know the answer.

[e6k]

Oh, and lest I leave you with the wrong impression, yes, sometimes I make additional rejections, and I certainly try to cite the best art, and usually give more than what I've used to reject. But you can forget it if you think I'm going to cite all the art that pertains to their overclaim for my own shts and giggles. Not. Going. To. Happen. I want to dissuade the practice of overclaiming, not be like "hahaha, good one, do it again in your next application/response please"!

You'll excuse me while I get ready for work on my "day off".

[Meanderthal]

Has anyone seen a PTO sample appeal brief? If so, please post the link...

[put it on the record]

"I do make the ones I think are best, it doesn't mean that ones I think are least best aren't more persuasive to someone else, especially if I've given up getting deps and am free to bring the full force of the art against the ind without regard to deps what so ever."

Why aren't you free to bring the full force of the art at the beginning?

Does giving up getting the dependent claims mean you've allowed them or not?

At what point do you decide the BPAI isn't going to change its mind and allow the claims?

Applicants don't have to cite references that are merely cumulative; is there such a rule re: the USPTO? Does anyone have an idea how to stop the appeal-reopen wheel?

"The only thing BPAI can even do is make the examiner reopen. If he does that on his own then what purpose would be served by getting the app to the BPAI? Further why on earth would you want that to happen considering our current system where you don't get auto allow after reversal? "

Good point re: BPAI remedies. The answer is that if the best rejection doesn't pass muster with BPAI, the examiner is supposed to allow the claims, not send it back to money-and-time limbo. The examiner already did his part. Even Dudas shouldn't quibble with the BPAI's decisions.

"Which is the best rejection? A ivo B (or B ivo A?)? B ivo C?"

Make both rejections. One examiner I am familiar with generally finds five good references, then makes ten 103(a) rejections out of various combinations of them. In this thread, we patent attorneys aren't complaining about examiners making bad rejections, we're complaining about examiners making good rejections only after appealing to the BPAI.

"But you can forget it if you think I'm going to cite all the art that pertains to their overclaim for my own shts and giggles. "

It's not for your giggles that you cite the art. It's for the public record (to show what the public can do) and for the applicant's benefit. If you've got the trump card prior art, just go ahead and show it. Please.

I want to be shown the best, knock-em-dead, art you have because if it ever goes to litigation, the opponent will certainly show the best art to me. I want to save my client the money s/he is spending on patent prosecution if the resulting patent will be worthless. I want it on paper what the examiner looked at because it will save time in the long run deciding whether there is better art out there. I want to be able to go to the client and say, "here's the art the examiner found, it's killer, now we need to plan on how we will protect your investment another way."

What I don't want is for the examiner to decide that the resulting patent will be very narrow in scope and therefore not worthy of getting a patent. Even narrow scope is worth something.

Give me the art. Don't be selfish or greedy and hoard it for yourself. Give it to the public, and the applicant, by putting it on the record.

Take your day off, e6k. If you're not going to give me your work product, what's the point?

[e6k]

"It's not for your giggles that you cite the art. It's for the public record (to show what the public can do) and for the applicant's benefit. If you've got the trump card prior art, just go ahead and show it. Please. "

And if I don't what then? Hmmm?

"Why aren't you free to bring the full force of the art at the beginning?"

The load of horsesht you like to call "deps".

You want some extra art right? Well I'll tell you what, how about you stop outsourcing the act of "not being a dumarse" to the pto? After you get done doing that we'll talk. There's only one party in the room that is wasting huge amounts of time by not being prepared and relying wholly on the other party to prepare them. Thankfully, it seems congress has recognized this, now if they'll drop the damages junk then we can get this to be mandated.

I've said it 100 different times in 100 different ways but for your benefit here it is one more time.
Stop. Relying. On. The. PTO. We are not here to serve you we are here to fulfill the role of an administrative agency. What service we provide is gravy, not the potatoes.

"Make both rejections. One examiner I am familiar with generally finds five good references, then makes ten 103(a) rejections out of various combinations of them. In this thread, we patent attorneys aren't complaining about examiners making bad rejections, we're complaining about examiners making good rejections only after appealing to the BPAI."

This says it perfectly, you want more than what you are "entitled" to. Which is fine if I feel like giving it that day. But I will tell you what, allowing examiners to make "rejections" without item to iteming any but the one they feel is "best" would go a long way, but no, the examiner has to hold your hand on any rejections made.

BTW, you claim this examiner exists that routinely does this. Don't mind if I ask for a ser or two or name do you? He's not you, it won't give away your secret identity. I'd like very much to see which art it is that receives more production time than they really need. After all, this guy writes up extra, he must be sitting pretty making 125%.

BTW, in case you didn't hear, we have a thing that is "for the public record (to show what the public can do) and for the applicant's benefit." it's called the patent archives. You can find much of it here:

http://www.google.com/patents?hl=en

I just cited 90% of the relevant art for you for every case you will ever prosecute. Look through it. No, seriously, look through it. Matter of fact, look through it before you send any horsesht overclaim to me ok? Do me a favor, then we'll talk about me doing you favors.

Sht, I already did you a favor, you're welcome.

[anon]

"You can find much of it here:

http://www.google.com/patents?hl=en

I just cited 90% of the relevant art for you for every case you will ever prosecute."

Sweet. This will really simplify those pesky IDS's. Thank you, e6k.

[The Mad Prosecutor]

E6k,

It seems that everyone, except you, understands what the Patent Office's role is. We are entitled to a patent unless the Examiner can reject the claims, as many have said numerous times. That means we are under no obligation to do anything except request a patent, until you show us why we are not entitled to it.

I, and everyone else on the board, believe your understanding is fundamentally wrong. Of course, that must mean that you are the voice of reason and the other 99% of us are mistaken. . .

[The Mad Prosecutor]

E6k, did you hear about the new law passed to benefit patent examiners?

"135 U.S.C. 102 - Upon the filing of a request, a person is entitled to a $10,000 payment unless the IRS can show that the person has never worked as a patent examiner."

Unfortunately, for you, the person in charge of "examining" your request is IRSAgent6k. He denied your first request for the payment based on his finding that because in 1998 you worked as something other than a patent examiner, you are not entitled to the payment. You appealed his rejection, and the board found that he had not met his burden.

This is not a problem for IRSAgent6k, however, since he not only has additional information that you were not employed as a patent examiner in 1998, he has similar information for 1999, 2000, 2001, 2002 . . .

I'm sure it doesn't bother you at all, though, since it is not your "right" (whatever that means) to receive the payment.

Is this fair?

[pds]

6K

In case somebody else hasn't said it or been unable to get it past the useless spam filter on this message board. You are an ignorant ass.

You epitomize what everybody hates about the government .... the belief that the government works for their own purpose and not for the people.

A suggestion ... never go into private practice. Your disdain for the people who make your job possible is something you could never hide. If hired, you would be the person that the partners hide from the client at all costs. They'll let you write applications and perhaps prosecute them, but they would never let you anywhere close to a client.

[Mark Nowotarski]

I looked at the statistics of appeals a while ago and I was struck by the fact that prosecution reopens after an appeal brief have been growing at +20% per year whereas examiner's answers to appeal briefs have been growing at only 3% per year.

In 1998 there were 3,235 examiner replies and only 698 prosecution reopens after an appeal brief. In 2005 there were 4,120 examiner's replies (3%/yr growth) and 3,370 prosecution reopens (22%/yr growth).

Does this mean that appeal briefs on average are getting better; or that examination on average is getting better.

[chomps]

--"Why aren't you free to bring the full force of the art at the beginning?"
The load of horsesht you like to call "deps". --

Um, your original post mentioned bringing the full force of the art against the independent claim because you'd given up on the dependent claims. Saying you don't bring the full force because of the dependent claims contradicts your original reasoning.

--Stop. Relying. On. The. PTO. We are not here to serve you we are here to fulfill the role of an administrative agency. What service we provide is gravy, not the potatoes."--

In that case, I would prefer just the potatoes. Your gravy is too lumpy and salty for my taste.

If you're not here to provide the potatoes, what are you here for? I'm not asking examiners to bow and scrape, I'm asking them to do what they're paid for - examine the claims and tell the applicant what they find. Don't play hide-and-seek, don't play gotcha.

--we're complaining about examiners making good rejections only after appealing to the BPAI."
This says it perfectly, you want more than what you are "entitled" to. --

I'm not entitled to good rejections on my first office action? Do you really believe this? You must have been typing too fast; no examiner is this ignorant.

--I'd like very much to see which art it is that receives more production time than they really need. After all, this guy writes up extra, he must be sitting pretty making 125%.--

I appreciate the gender bias in your statement; the USPTO employs female examiners too. It's TC 1600/1700, the unit that the BPAI affirms most often (i.e. they make good rejections). It's a crowded field of art, so I suspect the examiner can spend less time searching and more time preparing the combinations.

Also appreciating the 125% and the "extra" assumption. Perhaps this examiner is merely happy with 100%. Perhaps the examiner is taking the time to do the job right and give "all" that's required, not "extra". Perhaps the examiner is very experienced or very close to retirement.

--A suggestion ... never go into private practice. Your disdain for the people who make your job possible is something you could never hide. If hired, you would be the person that the partners hide from the client at all costs.--

Follow this advice. My experience is that if the partner can't show you to the client, they don't hire you in the first place.
Alternatively, go to law school first. As one author put it, you aim to be educated coming out, not going in.

--Does this mean that appeal briefs on average are getting better; or that examination on average is getting better.--

I suspect both. First, if original office actions are getting worse, appeal briefs can be "better" because they have more to work with. Second, if "better" examination means the examiner is willing to reopen, this is enhanced by the fact that the original office action was worse. I understand examiners don't get extra time to write reply briefs, so this is also an incentive to reopen. I suspect most examiners are not of the wear-the-applicant-down view so they don't go around the appeal-reopen wheel.

[e6k]

"I, and everyone else on the board, believe your understanding is fundamentally wrong. Of course, that must mean that you are the voice of reason and the other 99% of us are mistaken. . ."

How can I make myself more clear? I said exactly that you are currently under no obligation to do anything. And I also said that congress has finally wised up to the fact that you need to take some small portion of responsibility to not be wholly ignorant of the art when applying.

Oh and let me be clear, I also say that you are obliged implicitly to make it appear to whomever (examiner, board, CAFC, SC) that you are entitled to a patent. If it does not appear you are entitled to one then nobody (courts or pto) is under any obligation to give you one. I'm not sure how much clearer the statute can be, or maybe you never got past 101/102/103/112? Oh, and do not forget cases that have been to the CAFC only to be shot down by judicial notice. They are a rarity for sure, but none the less, if you cannot make it appear that you are entitled to a patent then you will very likely not receive one. I'm not sure how much clearer the caselaw/statutes can make this. Any one of your 99% who believes differently apparently cannot read past 112 and/or any caselaw.

[e6k]

"You epitomize what everybody hates about the government .... the belief that the government works for their own purpose and not for the people.

A suggestion ... never go into private practice. Your disdain for the people who make your job possible is something you could never hide. If hired, you would be the person that the partners hide from the client at all costs. They'll let you write applications and perhaps prosecute them, but they would never let you anywhere close to a client."

PDS I hardly disdain the people who "make my job possible". I in fact love the types of people who are doing the actual inventing in my field. I have met quite a few of them. Including some that are preeminent "innovators". Strangely, they are about 1000x as skilled as I am in the art, yet they submit patents for things that even I can see are obvious. But in truth it's not them who are doing the submitting. The inventors themselves I'm glad to work with and protect specifically what they invented. It's cutting through layers of bs that SOME, but not all, of your kind create unnecessarily that pisses me off. Nothing else, and you know this.

You can go on all day about how I'm "ignorant" and may very well be correct, but at the end of the day unless you can educate me as to why I am, in explicit, rather than some trumped up implicit terms, then it doesn't matter.

And you dam well misunderstand who "the people" are here: "the belief that the government works for their own purpose and not for the people." We serve Americans as a whole by determining, based on our judgment, and our judgment alone, which applications appear to be entitled to a patent. Never forget, as you routinely do, that in your quid pro quo THERE IS ANOTHER SIDE and they want to get their "money's worth" from their granting a certain scope of exclusive right. To that end they created an expert agency in stead of one that just rolls over and rubber stamps whatever bs you see fit to put on paper.

"Is this fair?"

Let's talk about fair for a minute. Is it "fair" to the person who is practicing a completely different device/process in secret to then be "caught" by an "inventorlol's" overclaims to an entirely different device that just happen to cover the first device? Is it "fair" to the office to have "inventorlols" just throw claims at them with no regard as to what might actually be patentable? Is that fair when the applicant is allegedly completely ignorant of the art in which they are allegedly working where they have made an exceedingly complicated design only possible to be dreamed up by a trained mind? Is it "fair" to the accused when presented with a patent that slipped through with even the slightest bit of overclaim, which was built in by the apps rep, left in? Does them merely being a manufacturer in this country make that FAIR? Please, spare me the "fair". Life's not fair. Get over it. In your example your role is simple, convince the IRS agent or take him/them to court. You can do nearly the exact same thing for your patent but hardly anyone does. I wonder why that is? I guess because the costs associated are much higher, closer to what the actual costs of a thorough examination probably are.

While we're on that subject, is it "fair" to the examiner who is taken aback by some Brilliant arguments made by the rep and then has to make a nonfinal at afterfinal? Is it "fair" that the app had 6 months to put together something brilliant to get around the rejection while the examiner had a few hours to see all 10000000 ways of looking at the piece of art? Fair? Well, it hasn't happened to me so much yet, so I can't say for certain, but according to some on here it happens every day. Fair? Fair? Anyone? Someone in the back?

This system hasn't been "fair" since the 70's. You want to know why I'd like to be on the other side of prosecution? Because you have such a TREMENDOUS advantage that you fail to take into account when you come here to cry about losing some small portion of.

As an aside, the IRS still owes me 1k dollars from a few years back. Still haven't sent me the stupd form that I'm supposed to sign to get a new check. I should call them again, and again, and again. But they work for me right? Right? Riiiiight. Bush works for me and you right? HAHAHAHAHA.

Chomps- Briefly:
Deps, i.e. the definition of why making the most convincing rejections of the ind are not practicable.
Gravy, i.e. the "extra", potatoes, i.e. what you get as a baseline.
Check it out, second common definition of guy
http://en.wikipedia.org/wiki/Guy
for such an educated guy you seem to not have a very good grasp on what is being said. But, then again, that's probably a good trait for an attorney, it allows you to "play dmb" easier, since you're probably not really playing. At least I can rest assured that my trip through law school can't be that hard, people like yourself made it through. Oh, and hey, I'm glad to hear that you know of an examiner in a very crowded field that probably has enough art in "his" shoe in "his" office to reject your humongous overclaim 7 different ways in a few hours. That example most likely reflects more on you, or the drafter, than it does "him".

[Lurking Prosecutor]

6k, I used to think of you as merely misguided and having drank too much of the koolaid that Dudas has been passing out.

Now I see that you are mean, nasty, spiteful, ridiculously cocky, think you know everything, and bring complete and utter shame to the PTO, the federal government, and this country.

You are for an incredibly rude awakening if you go to law school, although I'd urge you not to because you'd likely bring shame to whatever state bar you joined.

Why is it that the EPO examiners on this site aren't frothing at the mouth in anger like you are?

[Michael Valentine Smith]

"chomps", agree with pretty much all you say. But there is one point I need to correct.

You said "I understand examiners don't get extra time to write reply briefs, so this is also an incentive to reopen. I suspect most examiners are not of the wear-the-applicant-down view so they don't go around the appeal-reopen wheel."

In actuality, the examiner does get a count for writing an examiner's answer (it is a disposal; same count as an allowance). For reopening or sending out non-finals after the 1st one, there is no count.

And, I do think most "examiners" don't want to go the 'appeal-reopen wheel". They run into the problem, often, from SPEs or primaries that do not want to allow things. (The reject = quality mantra someone here keeps bringing up).
The thing is with this mentality is that it is misplaced and ill considered (as well as wrong). They base this mentality on not wanting to get errors from OPQA so that the allowance error rate will be low. Thing is, OPQA only pulls, on average ONE ALLOWANCE per examiner per year (some may get 2, some none). The odds of any given case even getting pulled for review is small. They should not let this irrational fear mess with their duty, but they do. And the examiner has little recourse but to make the rejections until they become a primary (& then we have to hope they don't get the same mentality).

MVS