Assistant Examiners and Patent Term Adjustment

Newly minted patent examiners play the role of "assistant examiners" at the US patent office. The work of assistant examiners is reviewed by primary examiners, and both are reviewed by supervisory patent examiners as well as quality control specialists.

Of the roughly 160,000 utility patents issued in the past year (June 29,2008 – June 29, 2009), about 37% were examined by an assistant examiner with the remaining 63% handled by primary examiners working alone. This proportion varies according to Technology Center.

Technology Center		Patents Issued 6/29/2008 - 6/29/2009	Percent Handled by Assistant Examiners
1600	Biotechnology and Organic Chemistry	11,667	38%
1700	Chemical and Materials Engineering	16,857	28%
2100	Computer Architecture, Software, and Information Security	16,217	47%
2400	Networking, Mulitplexing, Cable, and Security	3,370	55%
2600	Communications	23,758	42%
2800	Semiconductors, Electrical and Optical Systems and Components	50,812	36%
3600	Transportation, Construction, Electronic Commerce, Agriculture,	18,098	34%
3700	Mechanical Engineering, Manufacturing, Products	18,018	30%
4100	Training Academy	372	98%

 

For applicants who appreciate delay, patents that were handled by assistant examiners are more likely to be eligible for patent term adjustment due to patent office delay. (This results hold true for each technology center). 80% of patents handled by assistant examiners were awarded some PTA while only 72% of those handled solely by a primary examiner. This translates to an expected PTA of 12 months versus 9 months respectively.

Only applications filed after May 29, 2000 are eligible for a patent term adjustment. More than 99.5% of patents issued thus far in 2009 have a PTA qualifying filing date. Over the past four years, the percent of patents with some patent term adjustment has been steadily rising over time.

Notes:

"The patent term adjustment (PTA) provisions of the American Inventors Protection Act of 1999 (AIPA) allow for term adjustment: (1) if the USPTO fails to initially act on an application within fourteen months of its filing date; (2) if the USPTO fails to respond to a reply or appeal by applicant within four months of the reply or appeal; (3) if the USPTO fails to act on an application within four months of a Board of Patent Appeals and Interferences (BPAI) or court decision in an application containing allowable claims; (4) if the USPTO fails to issue a patent within four months of the date the issue fee was paid; (5) if the USPTO fails to issue a patent within three years of its filing date; (6) if issue of a patent was delayed due to imposition of a secrecy order; (7) if issue of a patent was delayed due to an interference proceeding; or (8) if the issue of a patent was delayed due to successful appellate review. This PTA smorgasbord requires the USPTO and applicants to monitor numerous events during the prosecution of the application to determine the appropriate term adjustment, and often results in applicants obtaining patent term adjustment despite the fact that the patent has an unadjusted term of longer than seventeen years from grant.

The purpose of the patent term adjustment provision in the AIPA was to guarantee that diligent applicants would still have a patent term of at least seventeen years from grant under the twenty-year patent term system. If the USPTO issues the application within three years from its filing date, any patent term adjustment operates to overcompensate the patentee. PTA should be limited to the situations in which the USPTO delayed processing or examination of the patent and this delay resulted in the application pending before the USPTO for more than three years." Via USPTO

Comments

[Leopold Bloom]

"Less than 99.5% of patents issued thus far in 2009 have a qualifying filing date."

This seems like a pretty unremarkable statistic. Unless it's actually the case that MORE than 99.5% have a qualifying filing date.

[DDC Note - This typo has been corrected in the post]

[labman98]

"Newly minted" is a bit of a gliib simplification. It takes 3 to 7 years for a newly hired Examiner to become a Primary. There is also an intermediate step where your "newly minted" Examiner is allowed to sign independently non-Final office actions.

[Just Visiting]

I followed the link to the PTOs position statement regarding patent term adjustment. The PTO wants to do away with some of the patent term adjustment mandated in 154(b) because the calculation is too hard, and they don't think patentees deserve it. Incredible.

[me]

And...

What is the conclusion here? Isn't it that we need to better value real examination and quality searching and somehow increase the number of examiners who stay?

[MaxDrei]

No surprise, that the art units handling computer-implemented inventions are those with the most newbies. Over the last ten years, the rate of increase in the number of filings is highest in these technical fields. Factor in the common lament of all employers "These days, you just can't get the staff" and is it any wonder that CII Examiners are struggling, and CII Applicants are tearing their hair out? I think it's the same at the EPO, isn't it?

[Arnold]

"What is the conclusion here?"

Expect 37% crappy rejections for the forseeable future.

[Paul F. Morgan]

Is this further evidence of the widely held view that the PTO "second pair of eyes" review has been increasing the backlog with too many inappropriately added rejections, or is this just normal, historical, SPE supervision of new examiners?

[Les]

Dennis -
While I'm sure that you are correct procedurally, the frequency with which improper omnibus rejections, in appropriate final rejections based on new grounds which were not necessitated by amendment or ids and unjustified 103 rejections (no motivation to combine suggested or the suggested motivation being completely specious), land on my desk would indicate that no one is reviewing anything.

[Noise above Law]

Les,

Perhaps you are assuming that such items would be caught in the review.

Perhaps such transaction ARE being reviewed and found to be acceptable to those doing the review.

Is it published anywhere what the criteria or standards of the second set of eyes review entails?

[Malcolm Mooney]

"No surprise, that the art units handling computer-implemented inventions are those with the most newbies."

Yup. Also less educated than the chem/bio assistants.

[XMNR]

"The work of assistant examiners is reviewed by primary examiners, and both are reviewed by supervisory patent examiners as well as quality control specialists."

It should be noted that each action written by an assistant examiner is reviewed (and signed) by a primary.

SPE (unless they are the primary) and QA review is much more limited -- "second pair of eyes" for allowances and enough review for performance management for SPEs and only audits of actions for RQAS.

It is not like each action written by a junior is reviewed three times.

[Noise above Law]

XMNR,

Is the Office still indulging in the type II error propagation by second eyeing all allowances? Wasn't this put on hold due to the, ahem, budget constraints?

[Hecky's: It's the Sauce]

Office is not reviewing all allowances. For a while they were doing rolling reviews of art units. This might have been in my TC (1600, biotech) only - just not sure about other TCs. Basically for a 2-week period *all* actions coming out of an art unit were reviewed. The idea was to see if there were consistent mistakes or broad trends that could be fixed by training. For example, is art unit X consistently missing 112/enablement issues, or are they consistently doing 103s where they should be 102 (or should be allowable).

Don't know if that program of rolling reviews is ongoing still or not.

[XMNR]

"Is the Office still indulging in the type II error propagation by second eyeing all allowances? Wasn't this put on hold due to the, ahem, budget constraints?"

The "second pair of eyes" has always been transparent to me.

When it started I was a junior and all my allowances were reviewed by my SPE anyway, so no difference (primaries were required to have an "allowance conference" prior to allowing a case).

Since then, the conferences have been eliminated. I am led to believe (but have never had anyone in management explicitly spell out) that all allowances are counted and then reviewed (by SPE, QAS, I don't know) and then mailed if they "pass". This seems plausible to me as allowances seem to linger a little longer on the "Counted not Mailed" tab than other actions.

I have never had an allowance bounced back to me after counting because whomever didn't like it, so I can't confirm the process. I've never questioned exactly what happens since I see it as a reasonable role of SPEs and QASs to review my work on an audit basis. Type II error propagation? Maybe, but I'm also led to understand that rejections are reviewed on an audit-basis as well.

Word on the "street" is that there is going to be a shift (or already has been) from end-of-process (allowance) review to in-process (rejection) review. Is this a response to the hubbub over crappy rejections? A way of encouraging allowances and therefore fees? Beats me.

Also, I have not heard anyone from management encouraging allowance of non-allowable subject matter, but then again I have never been told to not allow something I thought was allowable (except as a junior and then over what I feel were legitimate differences in opinion on the art/claims). I have also never heard a manager make a blanket statement that "nothing is allowable" or "this one will never issue" the like. I certainly don't mean to say this doesn't happen, maybe I just work in a charmed art unit.

My allowance rate is up as of late, but I attribute that more to everyone getting comfortable with KSR and to applicants being currently more willing to make significant amendments after a rejection rather than get into an "argue and RCE" cycle. Is this due to applicant's budget constraints? I guess so, but don't know for sure. Bad for my counts from RCEs, but good for the backlog.

[XMNR]

"Office is not reviewing all allowances."

I have to concur with this - I just had an allowance go from "counted not mailed" to "mailed" in a matter of hours. If someone post-reviewed it, they did is really fast.

[Noise above Law]

Thanks XMNR,

Another pleasure dealing with a non-6 type.

[6]

JD, we were talking about claims that could be rejected under one reference one way, another reference another way, and a whole slew of different ways in between them.

Observe:

http://techdirt.com/articles/20090628/1533475384.shtml

Imagine every patent that has 15 102/103's against it getting one of those.

[JohnDarling]

I'll wait to read Mr. Niro's reply.

[Noise above Law]

A bit off-thread, but no good place to post this:

Playing around with the numbers provided for the USPTO daily intake versus what was expected provides some rather shocking projections. Let's just say the the Congressional action so far is a small drop in a staggering bucket of red.

If the Office revenues continue to drop at a similar rate of decline during the second half of the year as has happened in the first half, the emergency action on the behalf of Congress will seem quite meaningless to the necessity of furloughs or even down right layoffs.

Consider: even with all of the cutbacks in programs, overtime and the ilk, the Office needed emergency funding in the first half of the year that saw a 14.7% miss on revenue (137.8 million calculated from an estimated 802.3 million versus a projected 940.1 million). The bailout loan to be repaid being roughly half of the miss seems a bit inconsequential if the boat isn’t turned around IMMEDIATELY.

If the rate of revenue drop continues at the SAME PACE, the miss will widen in the second half to a 27.5% miss, or a 21.2% miss for the full year (402.9 million calculated from an estimated 1,500 million versus a projected 1,903 million). The required end of year bailout, assuming no more cuts would need to be 6 times as much already given, or five times more if the current bailout is for upcoming needs rather than current needs.

IF the rate of revenue drop doesn’t accelerate.

IF Congress is willing to provide all of these funds.

How deep would the cuts go if Congress says “no more”? How deep if Congress ponies up half?

[6]

"If the Office revenues continue to drop at a similar rate of decline during the second half of the year as has happened in the first half, the emergency action on the behalf of Congress will seem quite meaningless to the necessity of furloughs or even down right layoffs."

That is why there are further plans to lobby congress for "bailout" if it should come to that. They still owe us millions (billions?) of dollars for all the years they took our fees and put them into the gen. treasury.

How's about that sandwich that you were going home to make?

JD that's fine if you want to wait to hear Nero respond, but remember, the issue is not whether or not Nero will come back with both guns a blazin' (which he obviously will) and potentially overcome the rejections, but is rather whether or not:

1. Such things happen to applications
2. Such things happen regularly
3. That attorneys don't want a 100 pg OA to deal with, complete with 15 art rejections in every app they file, and neither does the applicant (In fact, from what I've seen, they don't even like a 15 pager)
4. The office doesn't have the time or resources to present such OA's regularly

justifies many of the reopenings which take place.

I still maintain that it does in very many of the cases.

And I maintain that the fact the EU people like to simplify prosecution is irrelevent in so far as their business is their own, and also that your evidence relating to such practices is largely anecdotal and doesn't fit well with my own anecdotal evidence.

[Malcolm Mooney]

From the link that 6 posted:

*****The smackdown here is rather complete. On top of reaffirming the 19 reasons for rejecting the remaining claim, the examiner added more reasons to reject it for being obvious and anticipated by other inventions. Also, it appears that GPH/Niro tried to do something similar to last time, in that they also submitted some new claims to be added (claims 18 - 21), but the examiner smacked those down as well, as attempts to "broaden the scope" of the patent. On top of that, the rejects scolds GPH/Niro for mischaracterizing what the patent office has said and even using a "biased" expert witness with "flip-flopping declarations."*****

Instead of scolding, Niro should simply be disbarred. He's a scumbag. But he's not unusual. The only thing unusual about this case, as alluded to by 6, is that the PTO pulled out the guns.

If you aren't a Sunner or patent rights fundamentalist drinking your own kool-aid, probably a solid third of what presently gets allowed by the PTO can be demonstrated to be invalid without an enormous expenditure of time.

That's quite an error rate. And it's the only one that the public cares about.

[Interesting statistic]

"If you aren't a Sunner or patent rights fundamentalist drinking your own kool-aid, probably a solid third of what presently gets allowed by the PTO can be demonstrated to be invalid without an enormous expenditure of time."

That is a damning statement about the quality of the USPTO examiners.

However, I'm confused about the conditional statement you used. If what gets allowed can be demonstrated as being invalid without an enormous expenditure of time, it shouldn't matter if the person is a Sunner(?), patent fundamentalist, Swahili, or Greek Orthodox Christian.

[Malcolm Mooney]

"it shouldn't matter if the person is a Sunner(?), patent fundamentalist"

Oh, but it does. If you sincerely believe that "everything under the sun" is patentable or that every application contains a patentable invention or that the "presumption of validity" means that one cannot opine on the validity of the patent, then you will find it very difficult to see the problem. In fact, you're more likely to believe that the biggest problem with the PTO is that patents aren't being granted quickly enough or that there are too many "bad rejections."

[MaxDrei]

The blog delivers yet another gem:

Sunner: patent fundamentalist, one who asserts that i) everything under the sun made by man is has inherent patentability and ii) every claim "duly issued" by the USPTO is to be presumed valid, which is to say that the only thing strong enough to deprive this speeding bullet of its k1lling power is evidence of its invalidity that the brain of an average juryman perceives not only to be "clear" but also to be "convincing".

How did we ever manage so long, without this invented word "Sunner"? Judging from this blog, there are a lot of Sunners out there.

Too much sun addles the brain though, doesn't it?

[Buy Dissertation Online]

Blogs are so interactive where we get lots of informative on any topics nice job keep it up !!

http://www.ukdissertation.co.uk/buy_dissertation.htm

[patent shmatent]

A sunner is someone who thinks that the Supreme Court actually meant
"Likewise, Einstein could not patent his celebrated law that E=mc^2; nor could Newton have patented the law of gravity; that is, unless they claimed use of the law in an airplane restroom, in which case it would be fine."

[broje]

"'If you aren't a Sunner or patent rights fundamentalist drinking your own kool-aid, probably a solid third of what presently gets allowed by the PTO can be demonstrated to be invalid without an enormous expenditure of time.'

That is a damning statement about the quality of the USPTO examiners."

Depends. Was the original poster saying that every claim in a third of all patents is likely to be found invalid at trial? Or was the poster saying that a third of all patents have at least one claims that is likely to be found invalid at trial?

I think the latter is more accurate and, in fact, the number is more like 70% of patents have at least one invalid claim. But I think that is not such a big deal. It is certainly a much better result than cheating two-third of applicants out of at least one claim that they rightfully deserved, or cheating a third of applicants out of a patent entirely. Trying to further diminish the number of invalid claims that are issued is not worth the effort, the expense, and the consequences on the motivation of patent applicants. Further, the recent examination practice has been overly strict, and I am glad to hear that Examiners are being instructed to allow more cases because the PTO is just the first filter.

[Paul F. Morgan]

The only even close to objective statistics on the percentage of issued patents that have some, or all, invalid claims are the PTO reexamination statistics. They are quite high. But that is not a fully valid criticism of the original USPTO application examinations, because it normally represents the results of a far more costly prior art search by the reexam requestor, and far more art review time, than the USPTO application/examination fees [which are vastly lower than the EPO's] could ever justify.
Which is appropriate, since there is no logical reason for the USPTO to charge the public, and spend, billions of additional dollars on the more than 95% of patents that will never ever be asserted against anyone.

[JohnDarling]

"Instead of scolding, Niro should simply be disbarred. He's a scumbag."

So says this site's most anonymous whiner. The one who's always first to complain about "ad hominem" or "personal" "attacks."

You're a joke.

[6]

"A sunner is someone who thinks that the Supreme Court actually meant
"Likewise, Einstein could not patent his celebrated law that E=mc^2; nor could Newton have patented the law of gravity; that is, unless they claimed use of the law in an airplane restroom, in which case it would be fine.""

LOLOLOLOLOL

[Malcolm Mooney]

""Likewise, Einstein could not patent his celebrated law that E=mc^2; nor could Newton have patented the law of gravity; that is, unless they claimed use of the law in an airplane restroom, in which case it would be fine."

ROTFLMAO! Brilliant.

[6]

"But I think that is not such a big deal."

I agree Broje, without that seventy percent, practically no patent litigation would go on. And without patent litigation, no new caselaw comes out and lawyers don't make as much money. Not only is it not a big deal, but it would be a crying shame if such were not the case!

" Trying to further diminish the number of invalid claims that are issued is not worth the effort, the expense, and the consequences on the motivation of patent applicants."

I'm not 100% sure I can agree with you there. Perhaps we should enact a portion of U.S.C 104 to say "In addition to the above requirements, claims may not be issued if they are ridiculous". Not expensive at all. Subjective examination ftw.

[Les]

Noise -
The Manual of Patent Examining Procedure indicates that the items I mentioned are not appropriate. If the "review" is not at least to verify compliance with said MPEP, what is it for?

[Malcolm Mooney]

Did you read the rejection, JD?

We all practice law in different ways. I can assure you that I and the attorneys I respect have never received such a response from a judge or the PTO. Do you think that's a coincidence, JD?

There is "zealous advocacy" and there is something else that is not so easily defended. Some of us choose not to go there.

[broje]

*********"The only even close to objective statistics on the percentage of issued patents that have some, or all, invalid claims are the PTO reexamination statistics. They are quite high. But that is not a fully valid criticism of the original USPTO application examinations, because it normally represents the results of a far more costly prior art search by the re-exam requester, and far more art review time, than the USPTO application/examination fees [which are vastly lower than the EPO's] could ever justify.
Which is appropriate, since there is no logical reason for the USPTO to charge the public, and spend, billions of additional dollars on the more than 95% of patents that will never ever be asserted against anyone. "**********

Agreed. Having recently attended a CLE that included statistics, I recall that 90% of cases were to found to have at least one valid claim. But the question is, do re-exams fairly represent the majority of patents? Since re-exams have to have a substantial new question of patentability (SNQ) in order to occur, isn't it reasonable to think that those patents undergoing re-exam represent the most likely to be found invalid? Would it be useful to look at the number of failed attempts to establish an SNQ? So re-exam statistics would seem to paint a much darker picture of the validity of issued patents than is warranted. And still, even if one were to think that all patents are as likely to be invalidated as those undergoing re-exam, the statistics are still not particularly alarming.

[JohnDarling]

I can't say I read every word of the 164 pages. Of course, if you took out the 97 times the examiner inserted the form paragraph about "attacking the references individually" it would have cut down the OA considerably and maybe I could have gotten through more of it.

I doubt Mr. Niro needs, or even wants, the respect of an anonymous jerkoff troll like you.

I don't know him and I don't have enough facts to call for his disbarment. Neither do you, I'll wager.

So if you want to anonymously hurl insults around, go right ahead. But do us all a favor and stop whining like the little cry baby you are every time somebody takes a shot at you.

[Paul F. Morgan]

Broje, patents are picked for reexaminations because the are, or about to be assered, not because they are obvious cadidates for claim invalidations. But I can provide one other statistic, which is the roughly 90% rate of finding highly material uncited prior art by professional serachers [but including prior products, not just patents or other publications] against more than 100 patents asserted against one major company over serveral years. [But the majority of those patents were of Japanese origin.]

[Malcolm Mooney]

"So if you want to anonymously hurl insults around, go right ahead."

Dick Cheney sucks.

[Boss12]

Point #1:

Professor, an "assistant examiner" is an examiner who is NOT a Primary Examiner. Thus, an examiner who has been examining patent applications at USPTO for 15 years and who is NOT a Primary Examiner is an "assistant examiner."

Accordingly, your statement that "Newly minted patent examiners play the role of 'assistant examiners' at the US patent office" is only partially correct.

Point #2:

The following is in response to those patent attorneys who complain about "crappy rejections."

I examine the computer software art, and the percentage of "crappy" patent applications coming across my desk is incredible.

Poorly-written descriptions of inventions, ambiguous terms used in the poorly-written descriptions, crazy-broad claims (using the ambiguous terms), applications written in non-idiomatic English (submitted by English-speaking "patent attorneys") . . . I could go on and on with examples of "crap."

Accordingly, Point #2 is: it works both ways.

As an aside:

The quality of the art rejections that a patent examiner writes into his Office Action just might be based on the quality of the associated patent application.

Question: If the patent application is crap, then does the Applicant have the right to expect the best possible art rejections?

My answer: F no. If the Applicant doesn't care enough to submit a 24K Gold patent application, then why should I give him 24K Gold art rejections?

I always base the quality of my art rejections on the quality of the patent application. Crap in, crap out. Gold in, gold out.

Food for thought . . .

[curious]

Boss12 writes: "Question: If the patent application is crap, then does the Applicant have the right to expect the best possible art rejections?"

The answer is yes.

If the examiner does not care to issue a decent and proper prior art rejection (no matter what the quality of the application), then he/she should find another job.

(I frequently receive crappy insufficient disclosures from clients, but I don't attach a declaration and cover sheet and file it. I work with the client to prepare and file a good patent application. Frequently the clients are very difficult and more often than not these days I have to "eat" some of my time.)

[don't bother]

"I could go on and on with examples of 'crap.'"

Serial numbers, please.

[Robert K S]

Can anyone make sense of the examiner's argument against claim 18 on page 7? It seems to be arguing that a dependent claim does not import all the limitations of the independent claim upon which it depends. 37 C.F.R. 1.75: "Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim."

Can anyone make sense of the argument against claim 19 on page 10 of the action? "However, the general statement that 'the present invention is directed to devices and methods for transmitting, retrieving and storing both compressed and non-compressed data responsive to a query' do [sic] not provide adequate support for transmitting 'compressed' and 'non-compressed' data in response to a single query as the invention disclosed as a whole is directed to 'compressed or non-compressed' data in response to a single query."

I haven't read over the whole thing, but I hope for the examiner's sake there are some rejections in there that don't seem so much like grasping at straws.

RKS

[Boss12]

To "don't bother:"

Coming right up. (Of course, it won't be a patent application on my docket.) Won't take but a few minutes . . .

[Malcolm Mooney]

"Serial numbers, please."

What is the serial number of that patent application with 958 claims, including some that read on sonar? I recall that it was filed by a former partner and "patent expert". That's one of my favorites.

But you can just go on over to 12:01 Tuesday and scroll through the archives. Plenty of garbage there. Tip o' the iceberg.

[Malcolm Mooney]

"I haven't read over the whole thing, but I hope for the examiner's sake there are some rejections in there that don't seem so much like grasping at straws."

You can sleep easy tonight, my friend.

[Boss12]

To "don't bother:"

I just posted a few serial numbers and clicked on the "Post" button WITHOUT saving my text. Now, the serial numbers are gone forever.

I'll tell you what . . . post the name of your law firm (or your name), and I'll find some "crappy" patent applications being handled by your firm (or by you).

[6]

Robert,

Yes, he made claim 18's scope larger than previous claims in any way. No no in reexam.

Yes, "transmitting" is not in claim 17, in claim 17 you basically have "receiving", thus the claims have been again enlargened in a way. No no in reexam.

Those particular rejections, at least from the description provided by the examiner, are far from grasping at a straw.

[Boss12]

To "curious:"

You're right to edit "crappy" applications before filing them at the USPTO.

However, you're wrong that "crappy" applications deserve "golden" art rejections.

If the applicant does not care to file a decent and proper application (no matter how much money he/she has to spend on filing/prosecution), then he/she should NOT file a patent application.

Additionally, money spent on the "front end" (i.e., filing a well-written application that recites claims patentably distinguishing the invention from the art) will save lots of money during prosecution.

Spend some money now (before you file), or spend lots of money later (during prosecution) . . . it's the Applicant's choice.

[broje]

**********does the Applicant have the right to expect the best possible art rejections?

My answer: F no.***********

This is the kind of attitude I have come to expect from Examiners in the software art units. This is what I have been talking about.

[Anon E. Moose]

Les: "the frequency with which improper omnibus rejections..."

I've seen this as well, beginning roughly fiscal 09Q3. One recent final rejection cited new art, threw up two "clearly anticipated' rejections and a third OBISS (Obvious Because I Said So) rejections over one of the two reference and no other art. One paragraph was all it took to move the case of Examiner Blowhard's amended docket. Clearly backlog reduction at the expense of integrity.

But its all good when they allow the case three years from now (already three years in prosecution) and after the applicant needlessly pisses tens of thousands of dollars down the drain -- No harm done!

[Noise above Law]

"But do us all a favor and stop whining like the little cry baby you are every time somebody takes a shot at you."

but, but but, JohnDarling, that's gratuitous.

[Robert K S]

6 says: "Yes, he made claim 18's scope larger than previous claims in any way."

Um, how? Saying that he did is a contradiction of the quotation to 37 C.F.R. 1.75 that I cited to above: "Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim."

RKS

[curious]

Boss 12 says: "However, you're wrong that "crappy" applications deserve "golden" art rejections."

First, I don't know what a "golden" art rejection is.

Second, no matter how "crappy" you may think the application is, it is entitled to a solid examination and solid office action(s).

That is your job.

[appealho]

As comical as "Boss 12" seems, he is more the norm than the exception at the PTO. I know because I was there many years. I hope that Kappos deals with this major cultural flaw in the examining corps.

[6]

"Second, no matter how "crappy" you may think the application is, it is entitled to a solid examination and solid office action(s).

That is your job."

Says whom?

I don't even see that nonsense in the MPEP.

Entitled. LOL. You're also "entitled" to a patent amirite? LOLOLOLOLOLZ. Curious, you bring the laughs.

[6]

Claim 17 from nero essentially reads:

1. a method comprising:
a. identifying query via means and inputting query to remote query means
b. transmit query from query means to remote server via in/out means
c. receiving a response to the query at the remote query means from the remote server via in/out means.
d. displaying a presentation corresponding to the response on output means

wherein said response is compressed prior to receipt at the remote query means and wherein the now compressed response is decompressed at the remote query means using an asymmetric decompression technique corresponding to an inverse operation of the technique used to compress the response.

then claim 18 says

18. the method of claim 17 wherein said response is first compressed and then attached to information specifying the method of decompression prior to transmittal to said query means.

do you notice how part c in claim 17 does not include a step of "transmitting a response"? It only has "receiving a response". Are we then to presume that there is a "transmitting or recieving a response" limitation at the beginning of (c)? Or is the transmission only supposed to be an additional limitation? We'll never know because in the ordered list, transmission of the response never shows up. Thus, the examiner alleges (not me) that claim is inappropriately broadened, because it might now read on things which it wouldn't have before.

Amateur method claim drafting. I see this mess all the time. They could do better with claim 18.

As a side note, I'd like to point out how amateurish Nero's claim 17 is written. Look at the wherein clause, it has (e) before it. "wherein" and all the steps with "ed" on the end of the words are not method steps ya jackas.

I wonder if there was an additional 112 2nd just for putting (e) before "wherein". Does the wherein clause have to happen after all the previous steps are completed? What about since the wherein clause itself designates what it is talking about as happening prior to a previous step?

I have to wonder if he let a recent grad draft his response for this case?

[curious]

6 says "You're also "entitled" to a patent amirite?"

You are wrong, unless the application complies with all sections of the statute.

[An Examiner]

RKS: "Can anyone make sense of the argument against claim 19 on page 10 of the action?"

The concern comes with the use of the terms "and" and "or".

If you disclose "returning A or B in response to a single query", you do not inherently provide support for "returning both A and B in response to a single query". At least, that's what I think the argument is.

[Bierbelly]

But its all good when they allow the case three years from now (already three years in prosecution) and after the applicant needlessly pisses tens of thousands of dollars down the drain -- No harm done!

Posted by: Anon E. Moose
------------------------------------------------

We've been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart.

[broje]

*******"We've been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart."********

That's simply unheard of. Redacting the dates in the Exhibits is standard practice.

Did the Declaration contain a statement that all dates redacted from the Exhibits predate the "Effective Date?"

Patent term adjustment for Examiner error unjustifiably forcing Appeal or even additional Applicant responses is not enough. There should be bonus term or refund of some fees or something like that.

[don't bother]

"We've been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart."

What are you fighting about? You filed the 131 Declaration. The examiner refused to withdraw the rejections. Just appeal.

[curious]

don't bother says "Just appeal"

There are about 12,000 cases ahead of you at the BPAI. It will take years to get a decision.

[?]

Ok, so can anybody explain to me why a document with all the dates redacted should be considered proof of a specific date? I'd prefer some sort of logical rational but i doubt there is one so I'll accept a legal basis instead.

[Jules]

I'm not an expert, but I'll do my best...

A sworn statement regarding the date is sufficient because such statement is considered true. A date is simpler than other things, such as proving conception for the claimed subject matter, which is a more complicated determination the examiner must make.

[6]

"We've been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart."

That seems like a fairly simple issue to take up with the SPE/director. Your failure to find your phone on your desk and the appropriate phone numbers is your own fault.

I had to deal with that issue a few years ago and didn't fight it when some folks told me it is fine.

[curious]

Wonder why the PRIMARY examiner did not pick up the phone and double check the matter with his SPE/director, when he had an insistent applicant.

[curious]

I wonder why the PRIMARY examiner did not pick up the phone (or walk down the hall) and double check the matter with his SPE/director, when he was dealing with an insistent applicant.

[don't bother]

"Ok, so can anybody explain to me why a document with all the dates redacted should be considered proof of a specific date?"

Because the applicant includes a declaration that all the statements are true (i.e. "The dates that have been redacted are prior to the effective date of the prior art reference(s)") and if later proven not true (e.g. during a litigation when the documents will be discoverable without the dates being redacted), the patent will be unenforceable and the declarant subject to other penalties.

And it is not proof of a "specific date." It is proof that conception and reduction to practice occurred prior to the effective date of the reference(s). That is all applicant is required to show during prosecution. Applicant is not required to prove any specific date(s) before the reference(s).

[?]

"A sworn statement regarding the date is sufficient"

In that case why bother with the document in the first place. If the sworn statement by it self is not enough, I don't see how a document intentially withholding the information helps.

[6]

Np WCG the site just has some delay here lately.

ESD's, Rader took a rather left field position, and I wouldn't count anyone except Newman buying it. Linn won't. Michel won't. Moore might based upon her previously written works but I think upon further inspection she will also not take Rader's position. The rest are up for grabs. Toss in Bryson and Prost and Rader's party starts off at a -2 person disadvantage.

But, with Rader citing lines like "the "critical feature" of a procedural, non-subtantive rule is that "it covers agency actions that do not themselves alter the rights or interests of parties, although it may later the manner in which the parties present themselves or their viewpoints to the agency" (which is precisely what the new rules attempts to do) to supposedly support his position by reciting the following "the issue is therefore one of degree ... our task is to identify which substantive effects are sufficiently grave" he's not likely to gain much support from his fellows. The rules are blatantly not "sufficiently grave" if the CAFC has confidence in its own ability to judge IC due to issues with ESD's.

I believe if the attorney had spent some time discussing with Rader about how he certainly must have confidence in his and his fellows ability to apply the law to IC situations then perhaps he would have been more persuaded since his main issue (so far as "substantiveness" of the rules goe) appears to be with the insufficiency of the ESD "way out".

He might also have gone a step further and asked Rader how a burden is being shifted when this is an entirely different type of burden than those addressed in the prior cases and which are currently in existence.

I also find it rather hilarious how, in Rader's dissent, he says on the one hand that whether or not a rule is substantive or procedural under the APA notice and comment guidelines is completely irrelevant to this case, and then goes on to try to use that same guideline to determine it as being a substantive rule later.

Always a good listen:

http://oralarguments.cafc.uscourts.gov/mp3/2008-1352.mp3

The DC wants the rules dead either way so they'll end up dead. Now this is just about the office preserving its rulemaking authority, and perhaps enlargening it.

[Yo Quiero Taco Bell]

"Says whom?

I don't even see that nonsense in the MPEP.

Entitled. LOL. You're also "entitled" to a patent amirite? LOLOLOLOLOLZ. Curious, you bring the laughs."

Entitled? The applicant has PAID for a real examination and a real office action. I think that makes the applicant entitled.

[Noise above Law]

but, but, but Yo Quiero Taco Bell, the applicant hasn't "truly" paid for what the real examination and real office action actually costs...

There 6, I have furnished your non-sequitor response for you. See, I can be nice.

[Jules]

"In that case why bother with the document in the first place. If the sworn statement by it self is not enough, I don't see how a document intentially withholding the information helps."

If by "the information" you mean the date itself, I don't have a definitive answer for you. The answer by "don't bother" provided a more detailed explanation than I did.

I want to clarify, some documentation that is provided with dates redacted provides other information that may not be redacted. For example, proof of conception (a prior clear description of the claimed invention) which matches directly to the claim(s) at issue must be clearly visible within the evidence and not redacted.

[Jules]

There are heavy penalties for falsifying information or lying under oath. Someone mentioned them in another thread...

"felony perjury, 18 USC 1001, and five years and/or $250,000. Every declaration you've seen should mention the possibility of fine, imprisonment, or both, as well as that statutory section concerning fraud and false statements. See 37 C.F.R. 1.68."

[Jules]

And don't forget, the entire critical period for diligence must be accounted for by "affirmative acts or acceptable excuses". The MPEP explains it quite clearly, and provides a ton of examples as to what an "acceptable excuse" is or is not.

[Bierbelly]

That seems like a fairly simple issue to take up with the SPE/director. Your failure to find your phone on your desk and the appropriate phone numbers is your own fault.

-----------------------------------------
6, that's what we finally had to resort to. I always hesitate to go to the SPE right away when the Examiner makes a clear error that he or she should recognize and have an opportunity to correct without oversight. But in this case, after nearly two years (I got the case relatively recently), I had to resort to the SPE route.

[Boss12]

To "curious:"

You state: "Second, no matter how "crappy" you may think the application is, it is entitled to a solid examination and solid office action(s).

That is your job."

As a member of the Patent Bar who submits a patent application at the USPTO, it is YOUR job to:
- write the Specification so that it describes the invention using "FULL, CLEAR, CONCISE and EXACT terms" (35 USC 112, 1st paragraph);
- write claims "PARTICULARLY pointing out and DISTINCTLY claiming" the invention (35 USC 112, 2nd paragraph);
- write claims so that the claims "DIFFER SUBSTANTIALLY from each other" (37 CFR 1.75(b));
- write claims that "conform to the invention AS SET FORTH IN . . . THE SPECIFICATION" (37 CFR 1.75(d)(1));
- write claims using terms that "find CLEAR SUPPORT or ANTECEDENT BASIS in the description so that the MEANING of the terms in the claims may be ASCERTAINABLE by reference to the description" (37 CFR 1.75(d)(1));
- write claims that recite statutory subject matter (35 USC 101);
- write claims that recite novel subject matter (35 USC 102); and
- write claims that recite non-obvious subject matter (35 USC 103).

As I previously stated, I examine many patent applications in the computer software art where the Applicant (and the Applicant's attorney/agent) has exerted minimal time and effort to perfom the above-listed actions.

Free advice to all patent attorneys/agents: after your claims have been twice rejected, if you believe your claims distinguish your invention from the prior art that I've cited in my last Office Action, then you should appeal to the BPAI.

Because I will thoroughly enjoy crushing you at the Board . . .

[curious]

Boss12 -- I restate: no matter how "crappy" you may think that the application in front of you is, it is entitled to a solid examination and solid office action(s). Applicant has paid for this. And this is the job which you are getting paid for.

If the application does not comply with any of the statutory sections which you have quoted then reject it.

As far as appealing to the BPAI goes, see http://www.patentlyo.com/patent/2009/06/timeline-of-the-bpai-backlog.html .

The PTO is not doing its job of providing Applicants with timely appeals which especially can be important for products with short commercial lives.

[6]

"Applicant has paid for this. "

I restate for 12: Applicant has paid for 1/4 of this. Anything extra they get is gravy being given to them by patentees.

"The PTO is not doing its job of providing Applicants with timely appeals which especially can be important for products with short commercial lives."

Perhaps they should bump me up to the Board.

[6]

Thanks for the assist noise, I need you to be more vigilant though. Too many people coming in feeling "entitled" etc. for one man to handle.

[curious]

6, are you saying that when applicant pays his filing fees he is not entitled to a solid examination and solid office action(s) because part of the PTO budget comes from maintenance fees (which are paid by former applicants).

[6]

"6, are you saying that when applicant pays his filing fees he is not entitled to a solid examination and solid office action(s) because part of the PTO budget comes from maintenance fees (which are paid by former applicants)."

I'm not saying he is or isn't. He may be, but no authority I know of has declared it to be so, so it is premature to state such a thing. Perhaps someone knows of such a statement from an authority?

The authorities that I'm aware of that have loosely touched upon the subject, in joking manner perhaps it might be said, have stated a comparison for us wherein we make chryslers as opposed to chevys or some such comparison analogous to cars that implies we always make less than quality products and that is what is expected of us.

[Boss12]

curious -- I restate: as a member of the Patent Bar, it is your job to rewrite a "crappy" patent application into a "solid" (i.e., well-written) patent application. Your client has paid for this, and this is the job that you are getting paid for.

If the attorney/agent submits a "solid" application, then I will work with the attorney/agent to get the claims in condition for allowance as quickly as possible.

If the attorney/agent submits a "crappy" application, then I assume that the attorney/agent is not seriously pursuing a patent.

When I examine a patent application, regardless of whether the patent application is "crappy" or "solid," I always:
- study the Specification and Drawings, so that I completely understand the disclosed invention and so that I can formulate a search strategy to find the best prior art;
- properly interpret the claims in light of the disclosure, so that I completely understand the claimed invention;
- find the best prior art; and
- base my 102/103 rejections on the best prior art.

Here's the difference between Office Actions for "solid" (i.e., well-written) applications and "crappy" (i.e., poorly-written) applications:
- When I write the 102/103 rejections for a "solid" application, I provide clear and thorough explanations of how the claims read on the cited prior art (because the patent application is written clearly and thoroughly).
- When I write the 102/103 rejections for a "crappy" application, I provide enigmatic and abbreviated explanations of how the claims read on the cited prior art (because the patent application is written in an enigmatic and abbreviated manner).

As you can imagine, the attorney/agent for the "crappy" application often fails to recognize the relevance of the cited prior art with respect to the recited claims, since the attorney/agent (I assume) does not exert the time and effort to read and fully understand the entirety of the disclosed subject matter in the cited prior art.

Bottom line: Submit a "solid" application, and I will work with you to get the claims in condition for allowance. Otherwise . . .

[curious]

I would like for PTO management to publish a memo commenting on this two tier treatment of patent applications which Boss12 and many other examiners provide applicants.

[Boss12]

I would like for the Patent Bar to publish a memo commenting on why some patent applications are poorly-written and some patent applications are well-written (i.e., two tiers of quality).

The Applicant is in complete control of whether the patent application is poorly-written or well-written. It's your choice curious . . .

[curious]

If the application is written so that it does not comply with one of the statutory sections and cannot be amended so that it does, then the Applicant does not get his patent. The Applicant is thereby punished.

It is the Applicant's choice.

[broje]

Company A and Company B are in competition. Company A and Company B each have x amount of money to spend on seeking patent protection.
Company A files y patents. Company B files 13y patents. 1/2 of Company A's patents issue. 1/5 of Company B's patents issue. How screwed is Company A?

[I wonder]

"Bottom line: Submit a 'solid' application, and I will work with you to get the claims in condition for allowance. Otherwise . . ."

I sometimes wonder if most examiner's realize that they are government employees and are subject to the multitude of various law/rules governing their actions.

I also wonder if the term "due process" means anything to most examiners.

The actions undertaken by Boss12, IMHO, is a violation of the Fifth Amendment to the US Constitution. He should be glad he is anonymous.

One of the classes I enjoyed most in law school was constitutional law. Although I knew I would never practice in the area, I gained a much greater appreciation for our system of laws and all the protections provided to the average citizen by that system.

What Boss12 describes is exactly the type of thing that we, in the United States, criticize "lesser" countries for -- selective treatment, meted out by beareaucrats, of it's citizen's rights based upon some subjective measures.

Boss12 should be ashamed to be a US citizen.

[MaxDrei]

You know, I Wonder, your:

"What Boss12 describes is exactly the type of thing that we, in the United States, criticize "lesser" countries for -- selective treatment, meted out by beareaucrats, of it's citizen's rights based upon some subjective measures.

Boss12 should be ashamed to be a US citizen."

is a worthy impulse, but you're panicking unnecessarily. Was it the CAFC or was it SCOTUS, that cautioned Applicants to "Be careful what you ask for"? And isn't there some saying or other from those who use computers, something about if you feed rubbish in then it's inevitable that only rubbish will come out. Stop and think for a minute what the job of examining rubbish must be like, and what you would in the end find yourself doing, were you to be doing Boss12's job. Those who take the trouble to file quality applications are entitled to a full measure of Examiner attention. Goes without saying. Those who file rubbish should receive from the PTO in proportion to what they gave it.

If you can write instead "it is" then it's "it's". Otherwise it's "its". OK?

Boss12 seems to me like a worthy American, trying to do his level best to serve the Great American Public in a difficult and demanding job. Probably doing a great deal more to serve his/her country than you, I shouldn't wonder.

Readers, this thread shows once again the attitude that makes US patent law so special: the idea that, if I can only force rubbish past the PTO then I've got a monopoly right that will repel most every challenge to validity. Other countries factor into their patent law an appreciation that validity can only be tested seriously and fairly in inter partes proceedings, when the attacker can don the mantle of the PHOSITA just as convincingly as the patent owner. No wonder there is so much acrimony between Applicant and PTO Examiner, only in the USA.

But then of course, if post-issue, it's a jury that will decide on the validity of a high tech claim, I can well understand the reluctance to switch to a preponderance standard for, that way, chaos ensues.

Only sayin'.

[Noise above Law]

"Stop and think for a minute"

...Coming from MaxDrei:

Hilarious.

[Jules]

You get what you give... there's a principle for you.

[MaxDrei]

Noise, again, thanks for the compliment. I try to keep readers entertained. Your comment would suggest that, at least in your case, I'm succeeding.

I put it to you that the vehemence with which you assert that my "logic" is flawed is in direct proportion to the trouble you have to come up with any argument against what I write. Hilarious, don't you think?

[appealho]

Hey Jules and Jim and Boss12

If we submitted perfect applications, WTF would we need you for?

[Jules]

Please don't lump me with everyone else based on one statement. I did not say you must submit a perfect app. I know everyone has different capabilities. You are perfectly entitled to submit low quality applications.

[I wonder]

"You get what you give... there's a principle for you."

You'll sing a different tune if ...

... the next time you walk into the DMV, they refuse to renew your driver's license because the way you look.

or

... the next time you get pulled over for speeding 5 mph over the limit, the cop doesn't like the car you drive and decides he is going to jail you for 7 days.

Your principle only works for those who decide what you get and are ripe for abuse.

It is a sad state of affairs at the USPTO when federal employees, who have taken an oath to uphold the laws of the United States of America, willingly flaunt them.

[I wonder]

BTW, one difference between a professional and a grunt employee is that a professional will provide a high level of service regardless of the professional's opinion of the person to which the service is being provided. A grunt, on the other hand, does just enough to get by and will let his personal feelings cloud his judgment.

Perhaps one of the first thing the new Commissioner should do is to require each of the employees at the USPTO take a course of professionalism.

[Jules]

"BTW, one difference between a professional and a grunt employee is that a professional will provide a high level of service regardless of the professional's opinion of the person to which the service is being provided."

Excellent. I could not agree more.

[Noise above Law]

MaxDrei,

"...the vehemence...is in direct proportion to the trouble you have to come up with any argument against what I write"

No, the vehemence comes easy with the crap that you post without care or regard to what you are actually saying. Arguments against crap are easy. Arguments against well-thought intelligent postings are challenging and thus more rewarding. Try to T_H_I_N_K.

You are self deluding if you "think" that what you post is legally challenging or causes me any trouble except for my dealing with avoiding stepping in the excrement of your posts.

I wonder,

you state "It is a sad state of affairs at the USPTO when federal employees, who have taken an oath to uphold the laws of the United States of America, willingly flaunt them."

I would think that the posts from 6 must put you on suicide watch.

[MaxDrei]

Noise: I stand corrected

(which, coincidentally, is what the man in orthopaedic shoes said to Alan Partridge)

[don't bother]

"As I previously stated, I examine many patent applications in the computer software art where the Applicant (and the Applicant's attorney/agent) has exerted minimal time and effort to perfom the above-listed actions."

And you know this, how? Is there anything more hilarious than an examiner who has never written a patent application in their life commenting on the quality of a patent application?

"Because I will thoroughly enjoy crushing you at the Board . . ."

LOL

I love the examiners who boldly proclaim in interviews, and elsewhere, "Go ahead and appeal, I've never lost."

Right. Because you re-open every time.

Please post some serial numbers of your "crushing" examiner's answers so that we can all marvel at your mighty prowess.

ROFLMAO