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

[MaxDrei]

Prospector, you ask a question, namely, why aren't EPO Examiners like 6K. Try reading the other thread, Bytes 43. Isn't the answer there? EPO Exrs receive submissions from reps who are proud patent attorneys, yet who never went to law school, and aren't attorneys-at-law. Makes a big difference to job satisfaction at the PTO, just who is writing the submissions on behalf of the inventor.

[Lurking Prosecutor]

You know, I have noticed that a lot of my easy allowances come from primaries...

[beentheredonethat]

6k -
As everyone has wasted time explaining the basics to you, I'll just say they are right and your arguments are mostly silly and were decided decades ago. The only thing your posts reveal is that - you are intentionally ignrant and arrgant and worst of all - you don't know what you don't know. You've drunk the kool-aid and it is probably irreversible. That is sad and disappointing.

As a simple example, anyone who knows anything about statutory construction and burden of proof need only look at the start of 102 - "A person shall be entitled to a patent unless" to know that the PTO carries the burden - i.e., unless you carry the burden, applicant gets a patent. Of course, you'll stick with your silly interpretations, so this is probably like trying to teach a pig to sing. BTW - this is one big reason the PTO and the patent squatters wanted to slip a 102 preamble change into patent reform.

Same thing for the dead horse issue about official notice not being actual evidence of record. Your "analysis" would get an F on an evidence and/or administrative law exam.

Funny thing is that every law school class has someone like you. He spouts about how the law should be, how he understands it better than all the dumb people, and how the cases should be read differently (yes, it's almost always a "he"). Pontification and arrgance are the touchstones. Some time second semester (or for the truly obstinate, second year), he gets a lot quieter. Everyone knows it's b/c his grades let him know he wasn't half as smart as he thought he was. I suggest you look up phrases such as "gunner bingo" if you don't believe me.

[johng]

Why did it take you guys so long to tire of 6k? I was "disciplined" by someone here many months ago for pointing out this guy's blatant disregard of the law and fundamental and pathological misunderstanding of his profession. It seemed you guys took perverse pleasure in using his as the tool that he is. I hope you've learned YOUR lesson well and start ignoring his posts.

[MaxDrei]

DoneThat: Perhaps I'm even thicker than 6K because I didn't understand your reference. So I googled "gunner bingo". First hit I got was "In Praise of Zeal" by some NY law professor, writing in Law.com. Found it to flatly contradict your rant, and vindicate 6K. I always hesitate before I call somebody else thick. They might be smarter than I have realised. Perhaps you agree with me, that rants reveal more about the ranter than the rantee? Now tell me, what makes you so sure that English common law is superior to the Roman law which most everybody else uses, and which squeezes out the tiresome behaviour that 6K finds so irksome? Instructive is to see how English common law is changing for the better, now that it's under the umbrella of Roman law mainland Europe. As Tony Blair just said, the world's centre of gravity is on the move. Eastwards. 6K has grasped it, others not yet.

[Malcolm Mooney]

"As a simple example, anyone who knows anything about statutory construction and burden of proof need only look at the start of 102 - "A person shall be entitled to a patent unless" to know that the PTO carries the burden - i.e., unless you carry the burden, applicant gets a patent."

This argument has been trotted out here for the rubes a billion times. If the world was as simple as its proponents appear to believe, one should be able to file their claims and start suing people the next day. After all, the PTO has not yet met "its burden" of disproving the validity of the claims.

But that's not how the system works. Is the system unconstitutional?

Go ahead. Make me laugh.

[e6k]

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

I'm only pissed because I see lawyers try to defend the bs they like to pass off as prosecution on here. Frothing at the mouth because of lost time etc when it's the pto's "fault" and glossing right over the only "real" cancer eating the system. Overclaiming and the instances where time is intentionally wasted. Prosecutors make mistakes, we make mistakes, but the other is just plain inexcusable.

"The only thing your posts reveal is that - you are intentionally ignrant and arrgant and worst of all - you don't know what you don't know."

Who are you? Donald Rummie? Trust me, if they're decided then fine, show me the case/memo and I'll hush. You're right, I just got into this gig a short time ago and I can't devote my entire week to its study. Deliver for me, all wise anon of the patent world. Anon always delivers, except on this board, where anon can be relied upon to not deliver.

"102 - "A person shall be entitled to a patent unless" to know that the PTO carries the burden - i.e., unless you carry the burden, applicant gets a patent."

I just explicitly said that you are technically "entitled" to a patent in that event. Now you need to read past 112 to the part about when a patent is issued by the PTO. Do you need me to recite the statute for you or are you capable of making it past 112 and finding the section yourself? I guess only gunners ever make it past the basics. Go get your book of 35 USC prole, you apparently haven't finished.

I'd bother with the rest of you, but I'm getting too far into flaming so I'll spare the board. For all you bingo winners, "I'm feeling Lucky": http://www.law.com/jsp/article.jsp?id=1090180199000. Surely we can share a lol together.

[MarcusTheGreater]

Of all the above discussions, refile the pat app seems to be the answer. 45 yr ago, Examiners were expected to maintain about a dozen appeals in his docket. Win/loose 50/50. This simple expedient provided the Examiner with the knowledge that His practice of Patent Law coincided with the entire patent office corps. Thus the Bd Appeals essentially established the Examiners concept of patentability. Patent Law Practice was fun until the wizz kids took over. Not any more. Past 80 & what a joy to be retired.

[Lurking Prosecutor]

6k,

While I don't agree with the practice of intentionally overclaiming, I know why attorneys do it and I don't know why you care so much. It should make your job a lot easier.

I'd rather overclaim a bit then have to narrow the claims during prosecution than explain to my client why I DIDN'T try to claim something more broadly and now their patent doesn't capture the infringer.

I also don't understand how overclaiming is a cancer eating at the system. An applicant overclaims? Reject them until they narrow the claims down to something patentable. How is this a cancer? It's a time waster, but aren't the applicant's PAYING for this examination? The USPTO has got to be the only entity in the world that wants to punish those who seek to pay to use its services.

The true cancer eating at the system is SPE's who refuse to allow cases where even the examiner can't come up with a proper rejection. The true cancer is Dudas and those who pass rules that punish the applicant and make it more and more difficult to get the patents that applicants are entitled to. (please note that i said "the patents that applicant's are ENTITLED to." this doesn't mean every patent should be granted, this means that when the examiners can't formulate a PROPER rejection using 102, 103, and 112, the patent should be allowed) The true cancer is examiners and pto employees like yourself who hold applicants and attorneys in such contempt. The true cancer are those who want to outlaw software and business method patents because, hey, a 101 rejection is a lot easier to make than a 102/103 so it'll help clear out the backlog.

Did i mention that applicants PAY for their applications to be examined? why do you care how many are filed or how crappy some might be? if they're crappy, reject them.

6k, you better stay at the pto for your entire career, because you'd go absolutely nowhere in law school and you'd get fired from any other job where you held your customers in such contempt.

[e6k]

"6k,
While I don't agree with the practice of intentionally overclaiming, I know why attorneys do it and I don't know why you care so much. It should make your job a lot easier."

Did you see the guy who posted, upthread I believe, about how examiners used to get a sht ton of allowances and it made making production much easier? Guess what, the no. of allowances went down, but the production req's didn't go up. Allowances="easy money" shall we say. Further, I take issue with it because it is the backlog. Not merely "it causes" the backlog. Overclaims ARE the backlog.

Let's be clear, the PTO does not want to "punish" anyone for "seeking its services". The PTO does not appreciate people using them as a private search firm and a government agency all rolled into one. We are the gov. agency portion only, if you're not smart enough to be find out, at least nearly, what your invention is, then hire someone to do it for you from the private sector, we don't have time for your bsing around we have too many people in line. We are not a for profit, or even nonprofit, organization that wants "customers".

As a personal note, rejecting overclaims until they resemble what they invented is uncalled for, and causes my person much distress when trying to determine, well, would this combination be obvious? Sure, I can TSM all day long, but as you well know some combinations just aren't reasonable. Where do I draw the line? Did I just sign something into being that shouldn't be and might cause someone no end of trouble down the line?

"he true cancer eating at the system is ..."

All of those are in RESPONSE to your overclaiming. Cut the cancer out and the symptoms go away. How do you even reconcile saying that dudas or spes or examiners reluctance to allow is not in direct response to them knowing that the claim is an overclaim? It's on its face blatantly present that it is. What other purpose besides stopping bad patents do you believe is served by the reluctance to allow? Nothing? YOU"RE RIGHT! Like all attorneys you require a lot of hand holding to get through the basics. Have you ever met Dudas? Why do you think he's such a bad guy? He's just a guy doing the best he can to operate the PTO in a manner conducive to best practices. I.e. allowing good patents and not allowing bad ones.

"Did i mention that applicants PAY for their applications to be examined?"

You seem to think that just because you're paying for something that it entitles you to behave however you want. Go to a nudi bar sometime, I can assure you it doesn't there. And it sure as hck doesn't in the much more reputable grounds of the pto.

"6k, you better stay at the pto for your entire career, because you'd go absolutely nowhere in law school and you'd get fired from any other job where you held your customers in such contempt."

Once again, I love the apps themselves, but I would look with disdain upon attorneys around me who lead those apps into overclaiming simply to do that. The whole reason for switching is to demonstrate how you don't have to be an arse and f the system up to prosecute a patent.

[Mary Prosecutor]

Mr. e6k:

What do you mean by an "overclaim"? Do you mean a claim which is unpatentable based on prior art?

[Lurking Prosecutor]

E6k,

How can you say that overclaims ARE the backlog? Have you reviewed all 500k+ applications in the backlog to know this?

Using the pto as a private search firm? ISN'T A SEARCH PART OF WHAT APPLICANTS PAY FOR?

SPE's refusing to allow is knowing it is an overclaim... when their examiners cannot make a proper rejection? When they can't find a 102 and where their 103 rejections are disparate references that are not properly combinable? Shouldn't the fact that an examiner cannot make a proper rejection after 3 RCE's and an appeal show that, hey, maybe the claim IS patentable and NOT an overclaim?

If you want to compare the PTO to a nudie bar, the PTO would be a nudie bar that punishes customers for coming in every day, that comes up with ways to make the people standing in line outside go away.

I still can't believe that you don't realize that the current practices of the PTO are f'ing up the system, much moreso than overclaiming attorneys are.

[Telemachus]

FR 73, 112, 32929 col. 3 top of page,

"...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."

It says nothing about the petition having to be acted on before an appeal can take place.

Other significant waiver provisions that I do not understand are the waiver of arguments that are already of record. How can the PTO impose a page limit yet require that you essentially restate every argument you've ever made???

Dudas (or whoever is holding the puppet strings) at their finest. There are a few other areas that show the contradictory spirit of the rules that have been emanating from the Dudas PTO.

Oh, and I love the part about the sanctions. Just what is "dilatory" anyway? It sounds like a feminine care product.

[Telemachus]

With regard to the waiver provisions:

I don't see how the BPAI can ignore the prosecution record.

The waiver provisions with regard to arguments already of record are, well, I'm not even quite sure what word to use.

Its one thing to waive an argument you COULD have made but didn't. Its another thing entirely to work a waiver by inaction of an argument that is already of record. Its as if to say the record is meaningless on appeal and that the BPAI is not bound by the record.

That just can't be right.

[e6k]

"Mr. e6k:
What do you mean by an "overclaim"? Do you mean a claim which is unpatentable based on prior art?"

Prior art, being not properly "tied" or some other thing to satisfy 101, or things that are not enabled by the spec as originally filed, all of these. And likely more. To put it bluntly, ineptitude/ignorance on the part of the drafter. I personally see more ignorance than ineptitude, but I hear other AU's see more ineptitude. Ignorance I will add, that would cost them about 3 minutes to cure 50% of in many instances.

"How can you say that overclaims ARE the backlog? Have you reviewed all 500k+ applications in the backlog to know this?"

What, precisely, do you think that has been happening over the last few years? Show me a randomly selected pre pub. Select it at random. Hck, select it at random from some drafter you think highly of. I will show you an overclaim. I will probably be able to show this without EAST and having only google. To up the ante, I will do it in less than an hour. Why do I feel confident making this claim? Because of one simple thing. The odds. The odds are so stacked in my favor that I'm barely even sticking my neck out. Show me four randomly selected apps. The odds go overwhelmingly in my favor that I can show an overclaim in 3/4 in less than 4 hours. Why is this? It is because this is BY DESIGN, it is not a mistake on the drafters part. Lawyer after lawyer gets on here and admits to it. I see it in my everyday experience. It is a philosophy: Overclaim and amend around whatever the examiner can find, let the volume of art/incompetence/unluckiness of the examiner on that day work for us. The people with stamps know the game, they are not stupd. At least on the whole.

If this were horse racing the odds I would win this contest would be ~1 to 100.

Based on the above, I can say with some certainty that if the overclaiming patents were not filed AT ALL, then the backlog would probably be gone within five years. If they were toned down to not being overclaiming it would probably result in around 10 years. What does that tell you? Overclaims contained in patents are the backlog. At our current capacity we could handle all the work put before us no problem without such claim practices that are popular today.

"Using the pto as a private search firm? ISN'T A SEARCH PART OF WHAT APPLICANTS PAY FOR?"

You're not getting it sparky. Take a seat and present your hand. Intentionally overclaiming with the intention of amending around whatever art is shown to you is using the PTO as nothing but a search firm for the first go around, it is not a good faith attempt to claim something you actually believe to be an invention. It's a bad faith attempt to claim something you think MIGHT be an invention. This practice needs to end. You are paying for the search to cover the costs of the search, which must be done, you're not "paying us to search". In other words, we do not have a choice to search or not, it is not your payment which is inducing us to search, it is the statute.

No, I do not give two shts about if it has been done that way for 200 years. I think that the comment from the old timer shows why that was acceptable back then and is becoming less so now. Dam wizz kid lawyers.

Here's something interesting. My sister had an idea for an invention she told me on the phone. I don't mind tell you what it is, since in literally 10 seconds I had 102b art on what she intented to claim.

http://www.google.com/search?hl=en&q=disposable+female+urinal&btnG=Google+Search

Now, lets say she was some hot shot industry person and they went to a law firm, would your firm have done a 10 second google to help that woman out? Or would you just say, "well, I never seen it, it must be inventionlol".

"Shouldn't the fact that an examiner cannot make a proper rejection after 3 RCE's and an appeal show that, hey, maybe the claim IS patentable and NOT an overclaim?"

I will give you that is often indicative and I'm sure that, even though you may not have about it, they are considering that in that case. A lot goes on you never hear about you know. In either case, if the SPE is still reticent to allow, it is likely because he feels he could 102 it in a few hours himself if he put his mind to it and that the junior examiner just scks. He's probably right. Junior examiners sck sometimes, that's life.

[Malcolm Mooney]

Question: "How can you say that overclaims ARE the backlog? Have you reviewed all 500k+ applications in the backlog to know this?"

Answer: What, precisely, do you think that has been happening over the last few years? Show me a randomly selected pre pub. Select it at random. Hck, select it at random from some drafter you think highly of. I will show you an overclaim.

---------------

No doubt.

This has been another edition of easy answers to silly questions.

It's always a mystery to me why people who may actually have a point to make pretend to be totally ignorant of basic facts. In this case, the basic facts is that applicants routinely claim more than they know they are entitled to. Why? Clients and inventors like it that way because (1) they have a better chance of suckering in a naive licensee and (2) every once in a while you hit the jackpot because e6k needs to leave early to cook spaghetti for his girlfriend.

[MaxDrei]

Malcolm Mooney as ever sums it up in a few words. But at the EPO his explanations for over-claiming don't fly. So now we know: there's good logical commercial business reason routinely to over-claim at the USPTO, but no reason so to do, at the EPO. Have a nice day at the office, 6K. Have a nice day, EPO readers.

[keener]

"Funny thing is that every law school class has someone like you. He spouts about how the law should be, how he understands it better than all the dumb people, and how the cases should be read differently (yes, it's almost always a "he"). Pontification and arrgance are the touchstones. Some time second semester (or for the truly obstinate, second year), he gets a lot quieter. Everyone knows it's b/c his grades let him know he wasn't half as smart as he thought he was. I suggest you look up phrases such as "gunner bingo" if you don't believe me."

Uh, maybe you should google "gunner bingo", hot-shot, because that one kind of backfired on you.

[beentheredonethat]

http://cursedwithambition.blogs.com/cursed_with_ambition/2005/08/gunner_bingo.html

http://oldcowhand.blogspot.com/2005/10/law-school-gunner-bingo.html

[pds]

Since 6K appears to be in love with the term "overclaim," let me inject another phrase into the vernacular … the "over-rejection."

An aside first …. immediately above, 6K stated that an overclaim can also involve 101 issues. Yet again, 6K evidences his extreme ignorance of the USPTO's treatment of 101 issues. Since Beauregard, State Street Bank and ATT, there has been little change in 101 jurisprudence as to the majority of the types of claims being rejected under 101. Only recently have signal claims and "mental step-implemented" method claims have been addressed. However, the USPTO has been all over the place in their pronouncements as to what they believe is ok under 101. If the USPTO reacted more to the Federal Circuit than the court of public opinion, most 101 rejections issued over the last 10 years would never have been issued. However, the USPTO keeps monkeying with how to apply 101, despite the clear guidance of the Federal Circuit in Beauregard, State Street Bank and AT&T.

Back to the "over-rejection," as defined herein, the "over-rejection" is a rejection by an examiner that will be subsequently withdrawn without amendment. If a dependent claim is placed into an independent claim, and the examiner subsequently allows the independent claim, then an "over-rejection" occurred as to the dependent claim. In my recent experience, of the last 200 or so office action I have received (probably less than a year's worth), I would guess that 80-90% include at least one over-rejections.

If 6K would dare to look into the mirror (I'm guessing he is afraid of mirrors for some reason), he would realize that the USPTO is equally if not more culpable in the backlog with their policies that foster the "over-rejection" in the belief that the default and preferred procedure is to reject a claim, no matter the merits.

[pds]

"In this case, the basic facts is that applicants routinely claim more than they know they are entitled to. Why? Clients and inventors like it that way because (1) they have a better chance of suckering in a naive licensee and (2) every once in a while you hit the jackpot because e6k needs to leave early to cook spaghetti for his girlfriend."

True to form, MM would rather be sarcastic than to write something serious. Attorneys "overclaim" because (i) they are working with imperfect information and (ii) it is likely malpractice to underclaim. Most attorneys have some feel for the prior art. However, as I've noted before, it is impossible for an attorney to know all of the prior art (for example, how can someone know about the application that was filed thirteen months (or 13 days) before the filing of their application and will become prior art once published?). As such, a good attorney will claim up to what he/she think the client could be entitled to. To do anything else invites a lawsuit against the attorney after the client's application issued with narrow claims and the client is unable to go after copyists because the attorney didn't try for broader claims.

The difference between the overclaim and the under rejection is that the attorney is working with imperfect knowledge, and as a result, cannot write a perfect claim. The overclaim occurs when the examiner applies prior art that the attorney/inventor was not aware of or the examiner construes claim language in a manner not anticipated by the attorney.
On the other hand, the examiner who over-rejects has everything he/she needs before him/her and still screws up the rejection.
There are legitimate excuses for overclaiming. There are, however, few excuses for "over-rejecting" beyond inexperience and/or laziness and/or incompetence.

I don't mind an examiner overlooking a claim feature because claims can be very complicated and tricky. However, I do mind an examiner sticking with a loser argument after I've pointed out exactly how bad of an argument it is.

[The Mad Prosecutor]

All this talk about overclaim is a red herring. I doubt that many prosecute different than I - arguably overbroad independent claims, narrower dependent (and other independent) claims.

At most, at very most, if at all, the "overclaim" should result in one additional office action. Then the attorney sees (used to, anyway) the art cited, which claims are indicated as allowable, etc., and determines what the response should be.

It is painfully obvious to all those with eyes to see, the growing backlog is due to the Patent Office's tendency to pick an issue to make hay of (112, 101, etc.), and then issue ridiculous office actions where every claim is rejected on this basis. Then, the Office changes their interpretation of the issue two or three times during prosecution, further enhancing the backlog. Tie that to ridiculous assertions of obviousness ("it doesn't matter if the prior art teaches away, or if the principle of operation is changed, or the device is no longer usefull for its intended purpose, I can pick and choose these features from the prior art, so therefore it is obvious") - that is the backlog. It lies entirely, 100%, with the Patent Office.

[e6k]

"most 101 rejections issued over the last 10 years would never have been issued."

So ... you agree with me that it is possible for an overclaim to include issues under 101, except you'd like to add that this doesn't happen very often. Thanks, but make yourself clear ok?

"Back to the "over-rejection," as defined herein, the "over-rejection" is a rejection by an examiner that will be subsequently withdrawn without amendment. If a dependent claim is placed into an independent claim, and the examiner subsequently allows the independent claim, then an "over-rejection" occurred as to the dependent claim. In my recent experience, of the last 200 or so office action I have received (probably less than a year's worth), I would guess that 80-90% include at least one over-rejections."

I agree, probably at least one over-rejection. Then again, they're hard to spot many times when you're looking at the reference from the point of view of the POSHITA rather than someone who has know knowledge of the prior art what so ever (apparently the people that fall into this catagory are 1. apps and 2. their reps). So, overall, you're probably looking at 30-40% overrejection rate. This is keeping in mind even in those 30-40% that the rejection probably merely needed 103 supplementing. Oh, and let's not forget, perhaps the attorney brings up a good argument that went unseen by the examiner. It's not up to us to argue against what position we believe we see the art supports. Not that it doesn't happen, we usually leave that up to you.

"Attorneys "overclaim" because: bulsht that is destroying the system"

I agree. Reforms that are needed are reforming malpractice standards and AQS's. There, all done, we solved the backlog.

And hey, pds, I agree that you'll be working without a complete picture of the art even with a Good AQS. But, it's a lot better than 0 which is what I see most applicants prefering.

"However, I do mind an examiner sticking with a loser argument after I've pointed out exactly how bad of an argument it is."

Usually this comes in two forms, 1. Sticking with a weak position 2. Sticking with a position the examiner still believes is solid because the attorney wrote down his arguments in lawyerese. As to 1 we're obliged to do this usually. As to 2 I see this all the time, the attorney will send in some "argument" that I can sum up in one sentence and spreads it out for two pages until it no longer even resembles an argument and is instead just accusations of what the art teaches and what the claim says. Usually providing no "interpretation" of what they're trying to say the claim says. When this happens, I've been able to sort things out but I could see how someone who wasn't inclined to read your piece over and over until it makes some iota of sense might not get what you were arguing.

Overall, it boils down to you can accept us making a mistake, but what you can't accept is your failure to persuade us. I agree, that's unacceptable. For such an educated mind to fail to persuade someone who is making an effort to understand the other sides position is quite ... unacceptable.

I will give you though pds, in the "instance 3" where you've had an interview and genuinely tried to break it down piece by piece and they're still not getting it then it is a bad thing. However, if their spe is on their side then the reasonableness of your position has to be somewhat called into suspicion. At that point its not just a matter of someone defending a bad position to perhaps cover up shoving the app out the door, it's them defending a position suggested by the art, even if it is weak. As already stated, we're then a fair bit obliged to take that position.

To bottom line it for us though pds I don't think you will disagree that this sums it up.

Your position:

App/rep ignorance is ok, and should be ok.
Office mistakes are ok, and should be ok.
the Office sticking to mistakes is never ok.

My position:

App/rep ignorance is ok, and should not be ok, thus a change in the statute is in order. From the results of the analysis of the stalled legislation it is clear that the congress was persuaded of this as well as the president.
Office mistakes are ok, and should be ok.
the Office sticking to mistakes is not ok except when the applicant has failed to persuade the office, in which case it is always ok. Thus, it falls to the app/rep to persuade the office.

[e6k]

"At most, at very most, if at all, the "overclaim" should result in one additional office action."

So now one additional office action as the norm is ok? From what I hear that is the usual way things go, if the app doesn't mind bringing up a dep.

"It is painfully obvious to all those with eyes to see, the growing backlog is due to the Patent Office's tendency to pick an issue to make hay of (112, 101, etc.), and then issue ridiculous office actions where every claim is rejected on this basis."

Well, in that case then why doesn't congress simply amend the statute such that any examiner that issues a wrong rejection is fired? Is congress against you too? Are the american people against you by association? Or, perhaps is it not so painfully obvious? And in fact might it not also be not even apparent and you're just paranoid? Might it also be that the powers that be are making decisions based on things that are painfully obvious? Finally, might it be painfully obvious that overclaiming is the problem?

[Malcolm Mooney]

"I'd rather overclaim a bit then have to narrow the claims during prosecution than explain to my client why I DIDN'T try to claim something more broadly and now their patent doesn't capture the infringer."

If that's an honest explanation, you should get some training in client management. Sheesh.

[keener]

beentheredonethat: Your links to blogs written by those too-cool-for-school people I would never hire (assuming they graduate) basically prove my point.

Have fun playing bingo at the back of the class while the rest of us learn (which involves speaking up).

http://www.law.com/jsp/article.jsp?id=1090180199000

[Malcolm Mooney]

pds: "In my recent experience, of the last 200 or so office action I have received (probably less than a year's worth), I would guess that 80-90% include at least one over-rejections."

And you appeal all of them to the Federal Circuit, right? Because getting every last drop of claim scope if the most important thing ever for your impossible-to-please litigious clients, right?

"Attorneys "overclaim" because (i) they are working with imperfect information and (ii) it is likely malpractice to underclaim."

It is likely malpractice to underclaim? Huh. So if I decide to pursue a picture claim in an application to quickly obtain protection for the specific composition that my client undoubtedly invented, that's malpractice?

Can you tell us, pds, where a prosecutor has ever been sued for malpractice for obtaining patent claims that were too narrow? I'd like to hear more about these cases. Surely there must be some notable cases to justify your paranoia. You realize, of course, that filing claims that are unpatentable and too broad is also a waste of money. Isn't that malpractice? Filing claims that are so broad they plainly and unambgiuously cover, e.g., radar or some other ancient technology, is a violation of Rule 56. Isn't violating Rule 56 malpractice?

I'll just repeat what I've said before: anybody who believes that applications containing absurdly broad facially invalid claims are "rare" is lying, deluded, ignorant or all three. As e6k said, just pull out ten newly published parent applications at random and you've entered the World of Bullcrxp. I don't understand what is to be gained by denying this.

[The Mad Prosecutor]

"Can you tell us, pds, where a prosecutor has ever been sued for malpractice for obtaining patent claims that were too narrow?"

Malcolm:

From this blog:

"In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J’s attorneys found that the patent was narrowly drafted and refused to take a license. In 2005, the Immunocept sued its patent attorneys for malpractice."

[The Mad Prosecutor]

To clarify, "[f]rom this blog" means the one you are presently reading. Also, it is common knowledge that claims of malpractice for supposed errors during prosecution are increasing. Thus, even if no example could be given (which is was), it would have been an eventuality.

[SF]

I like the MM-noted approach: file narrower, picture claims for the commercially released products to quickly cover them. You can always file broader claims (in the US) later if you haven't written an unduly narrow specification.

I would add that, if your client wants to "overclaim" to cover arguably obvious claims, try them in a continuation if that's your client's wish. But just explain the likelihood of the obviousness rejection and the post-rejection need for evidence of secondary considerations, amendments, etc. If your client wants to "overclaim" anticipated claims, give them the anticipating art and ask them what's the difference.

[Malcolm Mooney]

"In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J’s attorneys found that the patent was narrowly drafted and refused to take a license. In 2005, the Immunocept sued its patent attorneys for malpractice."

http://www.liebertonline.com/doi/abs/10.1089/blr.2007.9885

Tough luck for Immunocept. But let's also recognize that there is a difference between underclaiming to capture specifically the valuable aspects of an invention versus shooting oneself in the head by using the term "consisting of" instead of "comprising" (particularly when the term "consisting" does not even appear in the specification ... weird).

Sadly the prosecution history is not available.

If that's the only case you can point to, I stand by my proposition that malpractice fears do not justify claims that are puffed out like one of George Constanza's jackets. As SF points out, there are very easy ways of proscribing the worst sorts of client behavior. I hasten to add that not all "obvious" claims are merely "arguably obvious." Some are just obvious, like a giant zit on one's nose.

[CliveFenster]

With all requisite apologies for the threadjack:

Regarding appeal briefs and a page limit, what's the current thinking on the need to re-present an argument that applies equally to the first and second sets of rejected claims? Can I trust the panel to have read and remembered that section from the first pass? Or should I repeat it anew for the second/third sets of claims? I've seen both.

I pulled my most recent appeal brief. 41 claims in three sets appealed, 4 grounds (all 103(a)), 4 references in all manner of different combinations. Grounds and Arguments sections reformatted to 14-point, double-space ... 40 pages. (And I *was* trying to be terse, but I had to reassert an argument the Examiner had stepped over without addressing as well as try to argue why a 132 Declaration was directing rebutting and why it should have been considered (and wasn't).)

[pds]

MM

I have no problem with you counseling clients to claim less than what they might be entitled to.

As for me, I'm going to present claims that are as going to be as broad as I believe have a chance at being patentable. I will also be presenting dependent claims (i.e., similar to your "picture claim"), which allows me to kill two birds with one stone.

Lesson to 6K .... dependent claims do have value.

Anyway, keep counseling your clients the way you are. Far be it for me to come between a potential couple million dollar malpractice judgement and one of my all-time favorite trolls.

BTW: if your firm employs a good malpractice carrier, they should be giving you tips on the types of mistakes to avoid and what have gotten attorneys in trouble before. Apparently, you must be missing those meetings/handouts.

It is comments like yours that bring a smile to my face.

[an examiner that is probabaly e6k]

"Lesson to 6K .... dependent claims do have value."

Why you take so much pride in reiterating to me things that I understand I will never know. Of course they have value, they are the illigitimate backbone on which your overclaiming philosophy is founded.

Btw, I've had a few reps already that went for the picture claim up front and wanted to claim the overclaim later. I felt strangly compelled to allow the case, even going so far as to put forth an argument for the uncombinability of two references which I could have glossed over. I even felt compelled to cite art that nearly locked them into the picture claim anyway, without bringing in limitations from the rest of the device at least. They've got more subject matter to get to though and I'm sure DIV's will be coming my way soon enough.

You my be surprised at how much faster you prosecution as a whole goes if you change the way you practice PDS. Starting off on the wrong foot by overclaiming at the get go is probably shooting you in the foot more than you guess based on your alleged prosecution histories.

[pds]

"You my be surprised at how much faster you prosecution as a whole goes if you change the way you practice PDS. Starting off on the wrong foot by overclaiming at the get go is probably shooting you in the foot more than you guess based on your alleged prosecution histories."

Sorry ... save your breath for MM. He's the one who appears willing to not zealously represent his client before the USPTO within the bounds of the law. If, based upon the facts before me, I believe the client can legitimately present claims as to certain subject matter, I will present those claims. If, in hindsight, with the benefit of the examiner's search (which is paid for by applicant) those claims appear to be overbroad, I will NEVER lose any sleep over it.

6K ... your problem is that you just don't understand the role of the examiner in the PROCESS. The PROCESS doesn't begin and end with the applicant with the examiner serving as the referee. Instead, the examiner is part of the PROCESS. Once this concept finally works its way through your dense head, you'll understand that the examiner is supposed to work hand-in-hand with applicants as to defining the correct line between what is patentable and what is not.

I'll give you credit for having a desire to learn more than the average examiner. Unfortunately for you, you showed up during a time in which the USPTO (led from the top) has shown great distaste for inventors and inventions. The anti-inventor propaganda that you've been fed since the day you started has blinded you to the way the system should work.

[an examiner that is probabaly e6k]

c[_] <- Empty Cup of QQ Tears

c[▄] <- Typical overclaimers supply

c[▓] <- PDS's daily amount generated

The system is changing within my lifetime PDS. As will most things. This country will be as unrecognizable in 50 years as it was in the 90's to those in the 40's. As for the system though, you barely escaped it changing in the last year. They got a bit overly greedy.

[John Prosecutor]

If instead of stealing Applicants' Patent Office fees (which Congress did for many years a number of years ago) those (stolen) fees had been invested in recruiting, training and retaining new examiners, especially in the new technologies, and updating the examiners' search tools, we would not be in the bind we are today.

[pds]

6K ... by the time the system changes, you'll be still on this board spouting about how you knew change was coming 20 years ago, and I'll be on my yacht in the Caribbean sipping on something sweet and alcoholic.

What you lack is perspective … common among newbies. Step foot outside your office (likely without a window) into the real world, understand real-world issues, and gain a little experience to put everything into perspective and you should be a changed man. It is easy to be an asshole in your 20s. Lots of people are … its comes with the age.

Unfortunately for you, however, it seems that bitter know-it-alls in their 20s typically end up being bitter know-it-alls in their 40s and 50s because nobody likes to be around a bitter know-it-all, so although they progress quickly through the ranks, they quickly meet a ceiling because nobody with any pull wants to deal with them.

Karma will take care of you ….

BTW: What is with the 3rd ID now? Are you getting banned so you have to use a new ID?

[L'examiner]

"As for me, I'm going to present claims that are as going to be as broad as I believe have a chance at being patentable." - pds

I have no problem with that. The applications that cause problems are the ones where every single limitation is extrapolated to infinity resulting in some big sprawling mess with art all over the place. Typically the art covers some aspects that fall within a perfectly reasonable interpretation of the broad claim but far afield from the actual invention. Because of poor description and lack of coherent deps, amending usually runs into written description problems, and prosecution is a painful, drawn out process.

That's is what I call overclaiming, not merely broadening beyond the bounds of the preferred embodiments. "Overclaim" all you want, but write some good deps, so I can point to allowable subject matter and wrap it up quickly.

[curious]

L'examiner -- good for you for examining the dependents and indicating which are allowable when the independents are not allowable. That was the way examiners did it many years ago but I have not experienced it recently (in the past five years or so). And it made/makes for quicker prosecution.

[pds]

"L'examiner -- good for you for examining the dependents and indicating which are allowable when the independents are not allowable. That was the way examiners did it many years ago but I have not experienced it recently (in the past five years or so). And it made/makes for quicker prosecution."

I agree 100% and three cheers for L'examiner.

[e6k]

"If instead of stealing Applicants' Patent Office fees (which Congress did for many years a number of years ago) those (stolen) fees had been invested in recruiting, training and retaining new examiners, especially in the new technologies, and updating the examiners' search tools, we would not be in the bind we are today."

The thing that some people don't seem to ever understand is that the gov. offers its services at whatever cost it deems appropriate. Mayhap the congress feels like the quid pro quo is out of wack and all patent apps shall now pay the US an extra 1000 dollars for the right to exclude, up front. It is entirely up to them what happens. It is at their discretion that the "at cost" fees stay in place and there is much talk of the PTO attempting a power grab for the control of fees. I'm personally rather let down in Ms. Peterlin for not getting that done.

"6K ... by the time the system changes, you'll be still on this board spouting about how you knew change was coming 20 years ago, and I'll be on my yacht in the Caribbean sipping on something sweet and alcoholic."

I notice a lot of talk about caribbean and drinking and a conspicuous lack of womenz. While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time.

I'm just mixing it up a bit with my ID's. I do e^6k sometimes. Whatever. And let's be honest, I'm a bitter know it all who irl is willing to accept the way things are and abide by the rules handed down from above. Railing for change online and even irl is different than insisting upon it irl. You simply must know the difference between trolling on the net and trolling irl ( http://www.google.com/search?sourceid=navclient&ie=UTF-8&rls=GGLD,GGLD:2004-30,GGLD:en&q=trolling+irl ). Trolling too much irl is bad, and can even get you killed in some instances. Don't get me wrong, I'm not trying to say that my comments here are all bs I'm making up just for a laugh, but let's be honest, almost all of what we post on here is just trolling in the purest, most broad, sense of the term.

L'examiner seems to be a frenchie, funny enough the french have a horrible rep in my AU for something similar to what he seems to be talking about. Allegedly it seems we have to rewrite your whole application for you before we even examine it because it's all a big jumble of crp that we can't even hardly sort out. You guys must have some wacko guys drafting for you because writing up a patent, even in my art, isn't rocket science.

[Lowly]

E6k,

Drafting a quality application together with claims that will be construed properly in litigation is a very detailed process and a skill that takes years to develop. It is not as easy as you may think. (I also doubt that you understand what makes a quality application or not, given your zero exposure to litigation)

However, I do agree with you that many foreign drafted applications, particularly french, are god awful.

[e6k]

"Drafting a quality application together with claims that will be construed properly in litigation is a very detailed process and a skill that takes years to develop."

I agree, it's hard to get everything perfect. That's why when attorneys ask me how to amend the claims I tell them that I'll give them the jist of what it needs to say then they can get back to me with the wording they like. But that doesn't mean there's any excuse for writing it worse than a 6th grader would. So perhaps I should change that to, "getting the basics of an application in is not rocket science". They could at least endeavor to get the basic jist of the invention across clearly. Screwing up is one thing, consistently royally screwing up is another. PDS was telling us about this phenomena when it occurs in examiners actions.

[weary lexicographer]

"They could at least endeavor to get the basic jist of the invention across clearly."

The word you're looking for is "gist." Further, modifying "gist" with "basic" is almost certainly unnecessary. The "basic essence" of something is likely the same as its essence.

[pds]

"I notice a lot of talk about caribbean and drinking and a conspicuous lack of womenz."

Congratulations 6K, going after someone's possible sexual orientation ... a new low, even for you. Unfortunately, I still think you have a lot more "lows" in you.

[somebody]

pds,

You missed this little misogynistic tidbit from 6k:

"While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time."

I'm sure we haven't seen the bottom yet.

[The Mad Prosecutor]

I think that E6k tried to make a joke that did not go over well. I think it is easy to misinterpret because some of the readers do not agree with his point of view. Nonetheless, I will give his comment the "broadest reasonable interpretation" and interpret his remarks as not intentionally offensive.

[somebody]

Mad,

He's not entitled to the benefit of the doubt on this one. These are not the first comments of this type that he's made. I seem to remember his rather offensive ruminations on the supposed attributes of Asian women (which were in response to a rant about the JPO by everybody's favorite doomsday manic depressive Gideon Pope). Those weren't funny. Nor are his recent comments.

[RQ]

God forbid that anyone be **offended**. Heavens, that would be just **terrible**!

If you're going to point out the allegedly misogynistic comment made by e6k, perhaps you'd also like to address the fact that pds's comment about "going after someone's possible sexual orientation" implies an inferiority of one sexual orientation to another. Ruh Roh.

Alternatively, we could drop the whole PC routine.

[somebody]

You're as pathetic as 6k.

[RQ]

Right, because you're in a position to judge others.

See? I can do meaningless one-liners too. You can continue getting your panties in a bunch over ill-considered comments on the internet (just dreadful, I know), or we can drop the righteous indignation and discuss, you know, law.

[somebody]

you're directing me to discuss, you know, law?

but you have no issue with 6k's totally uncalled for comments?

you're right, i am in a position to judge others. including you.

[e6k]

"Congratulations 6K, going after someone's possible sexual orientation ... a new low, even for you. Unfortunately, I still think you have a lot more "lows" in you."

What a remarkable lack of comprehension. It might only be matched by my alleged misunderstanding of statutes etc. If by going after your "sexual orientation" you mean that I'm saying you're so old that you're through fiddling around with women ... then yes, I completely am. It was a slightly misogynistic remark that followed, not unlike ones made routinely by guys my age. This is not calling you gey, though as we can see you're not bright enough to get it. If you prefer I can just call you gey so that you can grasp what I've said.

As to my opinion on the asian ladies, as Sienfeld remarked, paraphrased, "Is it really racist if you're racist for the race in question?" Indeed I'm so racist against asian girls that I've dated two ... right. But yes, technically I am racist towards asian women, in that I often prefer them. The demeanor which I refered to in previous threads happens to be just the way I like it thanks. Come to think of it, the french girls I've met are chill too. Even so, "buy me this" "buy me that" "I want to have babies" "let's get married" "if we're not getting married we should see other people too" etc manipulative bs is annoying at best, and more wearisome than PDS's prosecutions tactics at worse. I need to date some lawyer chics, making good money on their own, so they don't need mine, they might want a career more than a lot of children, and they'll be the one wanting a prenump. I know a few, but like the girl doctors I know, they're not that attractive.

[weary lexicographer]

"...they'll be the one wanting a prenump."

A prenump? Sounds fun. Where do I get one of those?

e6k, you had a chance here to act like an adult. You blew it.

[somebody]

"It was a slightly misogynistic remark that followed, not unlike ones made routinely by guys my age."

i wasn't aware the PTO was hiring 13 year olds.

[RQ]

'somebody': Oh, you're just too witty for me. I'm afraid I'll have to concede. Please, judge away.

e6k is a troll. You know, I know it, and he's even admitted it. Knowing this, why would you pay his off-topic nonsense (and allegely "totally uncalled for" comments) any attention - going so far as to specifically point out the most offending parts? If that's not playing right into his hands, I'm not sure what is.

As for the "totally uncalled for comments" themselves, I take the well-known position: whether I agree or disagree with what someone says, I absolutely defend their right to say it. Which, incidentally, is why I took particular issue with your indignation - how *dare* anyone say anything offensive! I'm tired of that nonsense. Outside of outright slander/libel, there's really no excuse for chilling effects in any form, and PC is one of the worst offenders.

[e6k]

"e6k, you had a chance here to act like an adult. You blew it."

Lol, you mean kind of like on the first day I was here? If I was here to act responsibly then I would behave accordingly.

"i wasn't aware the PTO was hiring 13 year olds."

I wasn't aware you have never known any normal 20 something guys. Maybe you've never been outside or had any friends? I assure you, I'm one of the more tame ones.

You know weary I would bother with you, but since the only thing that is weary about your role as lexicographer is how it makes those around you feel I chose not to.

RQ, you don't seem to get it do you? I appreciate the support, but you aren't very familiar with what a troll post is are you? You're trolling with that post you just made.

gtg for awhile gang, got some counts to get done today. End of the quarter you know, need to see if I can allow some cases or something :) Probably can't :(

[somebody]

"I wasn't aware you have never known any normal 20 something guys. Maybe you've never been outside or had any friends? I assure you, I'm one of the more tame ones."

That doesn't reassure me.

[Leopold Bloom]

"Outside of outright slander/libel, there's really no excuse for chilling effects in any form, and PC is one of the worst offenders."

That's nonsense. Conscience, as well as good manners, might be "chilling," but I, for one, would prefer that people have them, and exercise them.

e6k's right to act like a child doesn't extend to immunity from criticism. "Political Correctness" is insisting that others are required to be offended along with you, not simply speaking up for yourself.

[please call godwin]

Can I invoke Hit ler and ki ll this thread? It looks like we've deg enerated far far away from the original topic into personal name-call ing.

[Lionel Hutz]

RQ,

Chilling effect? Really? No one is legally stopping you from saying anything. If they criticize you for your comments, then you can either reflect on what they said or you can choose to ignore it, but be a man for god's sake.

And PC is not an ideology. First, as Leo pointed out, if you say something I believe to be offensive, I can call you out for being offensive. Why should my speech be curtailed? That includes my right to say "that's inappropriate," or "should not say that"

Most "PC" behavior comes from mandated from corporations or businesses trying to reach wide audiences without offending them, and the rest usually comes from independent advocacy groups.

Regardless, be as racist or misogynistic as you like, just don't get PO'ed when people tell you they don't like it and you should shut the f$%^ up.

[RQ]

lolwut?

... hmm, doesn't have the same effect when you aren't a 20-something.

Leopold: First of all, there's a distinct difference between one person exercising restraint (which I find more palatable than the ephemeral concepts of "conscience" and "good manners", but I'll get to that in a moment), and having others restrain that person. My point is that political correctness is too often wielded as a censoring tool in place of substantive discussion of sensitive issues. Race is obviously Exhibit A here, but gender isn't far behind. One of my kid cousins, then of high-school age, told me that one of the principals in his school district was forced to apologize for stating that black and hispanic students were underperforming their white and asian counterparts - despite the fact that the hard data showed that this was absolutely the case in all of a number of objective metrics: GPA, number of honors/AP classes taken, SAT/ACT scores, etc. You see the same thing in public discourse - whenever anything is attributed to race or gender, the speaker/writer is immediately shouted down on the basis of bigotry without any consideration on the merits. This is nonsense, and societally dangerous.

I promised I'd get back to "conscience" and "good manners". Who is the arbiter of what good manners and conscience are? Whose philosophy do we use? Which culture? Would you be in favor of silencing blasphemers?

And as for your last comment - labelling something as "racist", "sexist", etc. is exactly a requirement that other people be offended along with you. Similarly, by labelling e6k's comment as "misogynistic", 'somebody' was suggesting that everyone ought to be offended by that comment.

Godwin: Quirk's Exception holds that Hit ler must be invoked in an actual argument to have any effect.

[Just an ordinary white rabbit(TM)]

Now I'm in the white pwace.
How many times do I have say ---

Hey Guys, Why can’t we all Just get a long? Why can’t we channel our extra energy against Piracy Director Dufas and his main minions, the “Coalition for Patent Piracy” and its miserable members, e.g., (¢¿©isco), and any other Patent Reformers who have been screwin’ with us patent professionals by, e.g., rejections, returns, rejections, returns ad infinitum and would foist many other frustrations and levies on patent attorneys and their inventors alike, and threaten our very livelihoods.

[RQ]

Lionel: sorry, didn't see you there. If you read your post, particularly the last line, you'll notice that it applies to all parties. Specifically, I'm not "legally restraining" anyone else from saying anything (exactly as it should be), and further, "be as _____ as you like, just don't get PO'd when people tell you they don't like it and you should shut the f$%^ up".

[Lionel Hutz]

RQ,

One, the last comment was me, not Leo.

Two, I have never heard of anyone having to apologize for saying that black or hispanic students underperform white students. If there were a statement that they underperform because they are black or hispanic, that would be something I could see him being chastised for. Otherwise, I agree that there was no reason for the principal to apologize. I would verify that story.

Three, how would my referring to E6K as racist (even though I actually did not label anyone anything) be any different than his implying another guy was gay?

[Lionel Hutz]

RQ,

It's this general PC bogeyman of (mainly) Christian, white males I object to. It's a reaction to a combination of (1) the irrational fears of others, and (2) people lashing out because others make them feel uncomfortable.

[RQ]

Lionel: I was replying to Leopold in that post. My reply to you came later, which I think you missed in much the same manner as I missed yours.

Oh, I verified that story, exactly because it was so ridiculous. This was almost a decade ago, so I don't remember the exact wording of the original comment or the apology, but suffice to say that the parents were in uproar. Nowadays, it may not seem like a particularly questionable issue because of the body of evidence available, but it was apparently far less acceptable at that time - or at least at that place.

Your last comment is telling. The difference is obviously that 'racist' has an inherently negative connotation, whereas 'gay' does not.

[somebody]

"Similarly, by labelling e6k's comment as 'misogynistic', 'somebody' was suggesting that everyone ought to be offended by that comment."

Never said that. I said that we probably haven't seen the lowest of 6k.

I was offended. If you weren't, that's your problem, not mine.

BTW, I "labelled" 6k's comments misogynistic because they were. As were his previous comments. And his comments in response to my comments.

"Who is the arbiter of what good manners and conscience are?"

I am. As are others who read and post here. But we're not restraining anybody. We're merely letting those who post offensive comments know that their comments are unappreciated and unwelcome.

"whenever anything is attributed to race or gender, the speaker/writer is immediately shouted down on the basis of bigotry without any consideration on the merits. This is nonsense, and societally dangerous."

What exactly were the "merits" of 6k's comments? Please, do tell.

[CliveFenster]

Riveting as it is discussing whether pds is straight and what role political correctness and the First Amendment have on this private blog, I'll try again:

Regarding appeal briefs and a page limit, what's the current thinking on the need to re-present an argument that applies equally to the first and second sets of rejected claims? I'd like to be able to trust the panel to have read and remembered that section from the first pass; but I've also seen briefs where appellant re-presented the arguments anew for the second/third sets of claims. The new page limit makes the first approach difficult if not impossible. Does anyone have experience with the second approach?

[RQ]

Somebody: Obfuscation. Labelling a comment as "racist" doesn't explicitly state that everyone ought to be offended either. Let's just say that the implication is rather strong.

You missed the point of my question on good manners and conscience - neither of these is objective. What happens when your collective disagrees (worse - what if you're the *only* person that finds something offensive)? Restraint, as everyone knows, doesn't have to be physical, legal, or absolute. In this case, I would agree that you alone have minimal restraining effect, but it's the entire mindset of 'how dare anyone say anything offensive' that I was specifically addressing.

Finally, you'll have to excuse me for sidestepping your question on the merits of e6k's comment, because it is far too obvious a trap. Let's just say that his comments are not in good form for appeal.

[Malcolm Mooney]

Hit-ler would have liked this thread.

[e6k]

"We're merely letting those who post offensive comments know that their comments are unappreciated and unwelcome."

If it wasn't unwelcome, unappreciated, and hopefully offensive then why do you think I would have made it in the first place? I dare say I don't need you to point any of those things out for me.

Jebuz guys, I make a comment that started out as a jab to pds implying that he couldn't get any women to go with his boat/beach/booze, implying that even if he had beach/booze then he still wasn't on top of the world. Then it subsequently morphed into one saying that I might actually admire him if he didn't have any by choice. This happened because as I was saying the first sentence it dawned on me that perhaps the addition of women to the mix were not necessarily a positive thing because they are often annoying, but even so I figured I would probably enjoy a few around. I'm no more woman hating than your avg. guy annoyed with his women.

That's all, that's it. End of story. We can move forward and you can get on with bashing the appeals rules now.

The best reason to not insult anyone with lawyers around: being spared having to sit through the discussion about why it was bad or wasn't bad. Move on already.

[somebody]

RQ,

I see your point. Your example of the principal is a fine one. However, in that case the principals comments were mislabelled. I agree that shouldn't be done.

In this instance though, 6k's comments were exactly what I said they were. I did not mislabel his comments in an attempt to get others to be offended. They can be offended, or not, all on their own.

I also understand his comments may have been an attempt to make a joke. I was just letting him know he's not funny.

Well, he's funny when he discusses the law. But in that context, he's not trying to be funny. Or maybe he is. Who knows.

"I'd like to be able to trust the panel to have read and remembered that section from the first pass."

Clive, I think the answer to your question is: what is the value in re-presenting the arguments? If the APJ's weren't buying it the first time around, what makes you think they're gonna buy it simply by repeating it?

Draft the brief. Get out your copy of Strunk & White, do some serious editing. Pull every word processing trick you know. If you still need more than 30 pages, file your petition.

[Lowly]

"Good times, except no new grounds :(" - E6k

I just noticed this. It's good times at the PTO when asinine rules that punish applicants are promulgated, eh? WAHOO.

[RQ]

"You can continue getting your panties in a bunch over ill-considered comments on the internet (just dreadful, I know), or we can drop the righteous indignation and discuss, you know, law."

Funny, I actually said that.

Well, I feel like a dunce. "Do as I say, not as I do ..." and all that. Ah, the bitter taste of hypocrisy.

Anyway, my sincere apologies to all involved; I'm done with this. Time for some deep reflection on self-control.

[somebody]

"gtg for awhile gang, got some counts to get done today. End of the quarter you know, need to see if I can allow some cases or something :) Probably can't :("

So how many counts did you score between 3:53 and 5:49 PM?

[Lionel Hutz]

RQ,

In response to your last comment, I don't give a crap if people want to misinterpret what I was saying. However, for your edification, e6k was using the implication perjoratively, the implication tself is not inherently perjorative. Similarly, Canuck can be an insult if used in a derogatory sense, but there's a comic starring a Canadian superhero named Captain Canuck as well.

It's all in how the words are used. The exact same words in two different contexts can vary greatly from very offensive to not at all.

[Lionel Hutz]

And you were right, I did miss your earlier post. Sorry.

[e6k]

"So how many counts did you score between 3:53 and 5:49 PM? "

Sadly none, I was hoping this amendment wasn't as full of sht as I thought it was on perusal. Sadly, it looks like I was right, as usual. So, I got to start a new case after finaling.

[Warming Effects]

Truth be told, with all the talk about the 1st amendment, I'm surprised everyone passed up the key inquiry: what was so gravely wrong with e6k's original comment? The exact statement is reproduced here for convenience:

"While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time."

The statement consists of the following statements:
1. Women are annoying.
2. He (that is, e6k) applauds those who would prefer not to be around women.
3. He personally finds attractive women "sufferable" and occasionally nice to have around.

Statement #2 directly follows from #1 - if you find anything annoying, you obviously would not enjoy its presence, especially not on your Caribbean vacation. Statement #3 is fair on its face - attractive women may indeed be nice to have around. Thus, the only potential challenge is of assertion #1. However, "annoying" is an entirely subjective assessment. Given that e6k is presumably a 20-something male straight out of college, his assessment fails to surprise me. From his statements, his experience comprises women of the "buy me this, buy me that, let's get married today" variety. Opinions of women built from experiences such as these are not likely to be flattering. If there is blame to be assigned, to whom do we assign it?

[Lowly]

E6K, you must be the most skilled examiner in the entire office. You're always right, your rejections are never overcome, and you never make mistakes!

and of course nothing patentable ever comes across your desk...

thankfully all examiners aren't as perfect as you, because i still get cases allowed.

[Lionel Hutz]

Warning effect,

For myself, I did not read E6K's comments, so I have no idea if they were wrong or not, and frankly I did not care. I just h@te these "tyranny of PC" ninnies.

[e6k]

"and of course nothing patentable ever comes across your desk..."

Come now, that's not true. I have something like ~6 allowances to my name. That's 2 years in. Over 150 patents examined. One of them probably not a good one. I allow stuff, and I'm hardly perfect.

I say I probably shouldn't have allowed that one case because he submitted a DIV with very similar claims and I just couldn't resist spending a little extra time on it. Lo and behold right as the search was coming to an end, a perfect basis for a 103. Only 30+ hours of searching in all told, including the parent. I could have used that art to 103 the first case as well most likely, but, alas, we will never know. Hopefully it being on record in the child will do enough good that the app won't be too zealous with the parent.

[2600examiner]

I have 16 allowances in 16 months at the PTO. I'd say most of them aren't too valuable (but I suppose you never know). I'll probably end up with well over 30 after 2 years.

[MaxDrei]

6K writes that only 6 of the myriad cases passing over his desk over a 2 year period received a Notice of Allowance. For an EPO practitioner that's a startling statistic. With PSA in the EPO, most reps get most apps through to allowance, despite the determined efforts of the EPO's finest. My hunch: imposing PSA on the Examiners of the USPTO would improve the quality of the claims allowed but also, paradoxically result in a surge of allowances. But then again, maybe not. The aggregate "quality" of what's filed at the EPO is higher. Look at any patent family print out, for the filings out of just one priority filing, somewhere in the world. One finds an A publn for each country in the family. Except for the USA. Where typically there are of the order of 10 to 20 patent publications. So an EPO examiner has a x10 greater chance of writing a Notice of Allowance. 60 in two years sounds about right.

[Lowly]

6K, only 6 allowances out of 150 applications. What happened to all other 144 applications? Abandoned? Appealed and therefore not decided yet?

For some reason, I suspect that you deal with electrical arts. If so, your allowance rate is really low... It's usually software and business methods where the examiners are hardasses who won't allow anything.

[Lowly]

especially business methods. i don't think i would ever counsel a client to try. the prevailing attitude at my firm is don't bother with business methods, you won't get a patent.

[The Mad Prosecutor]

Max:

I don't think you fully understand the problem - when the Patent Office carefully applied TSM, the allowance rate was well above 60, 70%. In these post KSR days, coupled with unofficial mandates from management to severely restrict allowance, the allowance rate is 44% and drastically falling. It has nothing to do with the non-use of PSA (again, I worked doing concurrent prosecution in the U.S. and dozens of other patent offices throughout the world - in each case, I modified my TSM advantage/disadvantage into problem/solution terms, and received allowances in those foreign patent offices).

[Lowly]

Mad Prosecutor,

I'd like to see the allowance rate broken down by art unit. I think it's somewhat artifically brought down by the PTO's violent hatred of software and business methods which probably have allowance rates less than 10%.

[The Mad Prosecutor]

Lowly:

While there is much truth in what you say, I have also seen a large drop in allowance rates for mechanical and electrical cases. Especially mechanical - the Examiners state "no unexpected results" without performing any analysis and realizing that KSR does not apply (MPEP 2143 is a good place where the Examiner should, but does not, start). Further, the Examiners think that regardless of whether the reference teaches away, etc., as long as there are "no unexpected results," the analysis ends there.

[MaxDrei]

Prosecutor, I'm sure I don't fully understand the problem. I read this blog in an effort to understand it better. I write stuff to provoke others into writing, so I can learn even more. Thanks for the answer.

[johng]

Well said Mad P. We are dealing with a cartel at the PTO. Except this cartel is moooronic because it only causes harm and does not cash in like the smart, and even mediocre criminals.

[e6k]

"For some reason, I suspect that you deal with electrical arts. If so, your allowance rate is really low... It's usually software and business methods where the examiners are hardasses who won't allow anything."

I agree, and I agree because those examiners aren't finding sht for art, as most of you allege on here everyday. A rough but fairly accurate breakdown is thus:

135 applications reviewed (I had meant to say ~150 before, my bad, still I believe you will think the allowance rate to be low).
7 applications allowed. I have made around 7 non-finals one of which was later expressly abandoned, and all but three of which is now past RCE. I issue non-finals generously, i.e. anytime when there is any reasonable doubt as to if I laid the case out appropriately.
Over 60% of applications amend after non-final, of the ones left out, about 32% are amended after final, the rest are appeals or allowances.
Of the 60% amended after non-final some 90%+ will go on to be finaled.
In the end I've had 1 appeal filed, and 3 appeals conferences, the appeal went forward and should be affirmed as it seems solid, and two of the appeals conferences had the spe's/conferees suggesting that I reopen/allow because they were not convinced, one on a procedural issue, and one on an issue of art. The rest are either pending their filing of an appeal or have RCE'd and have been counted as a new case. I have recieved at least 15 RCE's (probably more like 20-30) and have 3 abandonments. There are many finals that are solid that are pending and should be RCE's shortly.

I recieved 5 RCE's in the last 3 weeks (takes 1-2 to show up in Edan after they snail mail it) and that is just the tip of a huge final iceburg that hit months ago and should have replies back within 3 months at the latest.

In any case, I've got to start allowing more things, not because there aren't proper rejections to be made, but that rejecting this sht properly takes so much more work than what I'm supposed to be putting in.

[e6k]

Oh, and when I say something is finaled, it doesn't mean that they just need to move up some deps to have it allowed since I've indicated IN AN OA probably ~5 applications as having allowable subject matter in a dep if it was moved up. So far, I haven't had anyone take me up on an offer in an OA, but then again most of those 5 haven't come back yet.

[Malcolm Mooney]

"In any case, I've got to start allowing more things, not because there aren't proper rejections to be made, but that rejecting this sht properly takes so much more work than what I'm supposed to be putting in."

Dennis, can you take this quote and put it permanently at the top of the page? I think it will save us all a lot of time over the long run.

[Lowly]

6k,

I continue to argue all the time even though some dependents were indicated as allowable. I'll continue unless I'm convinced that I have no valid argument. I've appealed where I have dependents with allowable subject matter (although that may be somewhat dangerous).

Why roll over and give up if I'm right? When I say I'm 'right' I mean that the art flat out doesn't say what the Examiner claims it does, even under the broadest unreasonable interpretation used by the pto. Or, the examiner has combined references that are not at all properly combinable.

You really seem to be suffering from the examiner bias of "nothing is patentable." Everything seems obvious in hindsight.

[The Mad Prosecutor]

When I first started at the Patent Office, I did think I failed when I couldn't reject all the claims. It took some time for me to realize that my failure to find something in the prior art was not necessarily a failure - it might just mean that something was patentable. It takes time for examiners to learn that obviousness is more than just finding all the disparate pieces in the prior art.

The problem for practitioners is that KSR, which many (especially new) examiners believe requires a conclusion of obviousness when all the disparate pieces are found in the prior art, was decided at a time when so many new examiners are being brought in. Think about it - perhaps KSR would have had much less of an effect during prosecution if the Patent Office was doubling in size at the same time.

[Malcolm Mooney]

"Everything seems obvious in hindsight."

Not true.

[John Prosecutor]

I am not and have never been an examiner but have been a patent prosecutor for many many years. IMO rejecting properly does/should not take long, just some good searching and good combinations of prior art with a few sentences of explanation. Rejecting improperly (over-rejecting) is what must take time, trying to creatively cobble references together and figure out how to justify combining them, and when worst comes to worst, discounting the novel or non-obvious elements/limitations using some bogus 112 rejection or using the rejection du jour which is to call that element/limitation which is in the body of the claim an "intended use" or "functional" limitation and thereby accord it no patentable weight, i.e. ignore it in the patentability determination.