I wish to end this please, I post here because I find I enjoy the reading and best I’m here with people that understand the Law to a degree I don’t, so I learn something from time to time. The question of “”how “details of rules fog the point in some cases”.”" is a point made by a man I knew (dead ’91), he had many published works and the reading was not for everyone (me included). His point was, “you must break rules sometimes even though others may not understand it”. He made this clear with an example that may at first seem odd, he said, “as we have found lost language(s), no rules to go by, we have had to make that understanding through other means when our own understanding (rules) offer nothing.” So, “details of rules fog the point in some cases” ?, is that if the rules are a filter, you may find they have “fog” the point, the meaning, to a degree it is lost to you the reader. I talk to people and they say things in ways I have to re-write it in my head, if you know what I mean, never thinking to tell them about it. I fail to see that you cannot understand anything I have written if I understand your claim right ?, the fact that I do put many points opinions together, that one may have some problems following what is not a single point or meaning ..and yes, I may just not follow the “rules” everytime: Understanding is an art, not learned.

Thanks for the input, I always enjoy talking to people.

Thanks, I think.

You are correct in that even with following the rules of English, there are posts that simply do not make sense (posts by 6 immediately come to mind).

I am not certain how “details of rules fog the point in some cases”. How does following the rules of English copntribute to the fogging of the intended statement (perhaps the lack of understanding the rules, but that’s a different issue)?

Never-the-less, I am interested in what you are trying to saying and still would like to understand what you meant with your run-on sentence, running at full speed with “therefore shapes”. You do seem to have an earnest thought that you want to share, and I appreciate that you seemingly take my criticism as it is intended – not to stifle, but to promote.

Hello, I read all the time where people’s thoughts are written by the “rules” and somehow the thought just gets lost and fails to get across anyway. I read without “filters” because people are people, I find I enjoy reading more because details of rules fog the point in some cases keeping me from making that try to understand. I again thank you for the input, I enjoy it as well even though the point is not written clear.

Please try to formulate your thoughts a little more coherently.

For example, diagram the following sentence: “The wrong here is innovation in this context I outline above has nothing to do with “new” or “different” ; the fact is one does not learn nor grow in the world in a vacuum, therefore shapes our ideas information in such a way we are sharing without knowledge of it and questions claims of innovation.”

What do you mean to say? At “therefore shapes” you open the spigot and all your thoughts rush out. If you want to make an impression that you have something to share and care that your idea will be taken seriously, spend some time putting your thoughts together. Write what you want to say on a piece of paper and review it before you post. I am sure your perspective has value, but your writing is getting in the way.

let’s not forget that in most instances allowance is reviewed by the supervisor. plus, there’s quality assurance. further, there never was proof that there was a problem with lax issue standards. in the end the PTO screwed inventors, is still screwing them, and there is no end in sight.

It is really refreshing to hear an examiner who gives thought to how long to search and when to stop. Perhaps there are many like you, but the past few years has really been a dark period and that has lead to a lot of skepticism on the part of patent attorneys.

I know a lot of senior examiners who have retired, and a lot of them tell stories about this type of thing. One in particular explains that when he was young he asked the same questions, and then when he was a SPE those under him would ask him the same thing. The answer he got, and the answer he gave was at some point if you cannot find something you need to issue. Many examiners think it is their job to reject, but the law is really set up to presume a patent is entitled. That is why 102 explains a patent shall issue unless… With a functioning quota system you would have guidance. You search and work until you hit a certain time limit and if you haven’t found anything by then you should issue. Mistakes will be made, but it is not your job to find everything and anything. Whether we like to admit it or not, examiners are doing the best good faith job of due diligence they can within time restrictions and search limitations. You are looking for a needle in the haystack, or a couple needles that can be pulled together in the case of obviousness.

The best thing you can do (in my opinion) is become the best searcher you can. Learn to use the real world resources, and not just the search software. Combine search techniques and realize the role you play is vital to our system. If you find stuff reject, otherwise get to the end of your time (with enough left to go through the allowance procedures) and then issue. Not issuing and holding back because you know there is something out there is detrimental to the industry, and to the US economy. Patents are needed to raise capital from investors, which can be used to expand and employ individuals. So those who reject, reject, reject at all costs are really harming the US economy for no good reason and ignoring the law.

I wish you well, and I hope you become a frequent contributor here at IPWatchdog.com.

Thanks.

-Gene

Thanks for your responses to my post. PL, I can’t really argue with your assessment that final rejections are easier to get signed than allowances. I agree with you–maybe more scrutiny should be given to final rejections. LIke you said, in theory, finals have more scrutiny because only SPEs and Primaries can sign off on them, but, as you mentioned, finals just don’t get nearly as much scrutiny as a NOA. For what it is worth, though, the Primaries in my AU do a good job of showing the junior examiners like myself of how to work with attorneys in getting a case allowed.

I do have to say though that sometimes, particularly in my AU, that the first set of claims is so broad that I give a rejection that reads on claims but sometimes isn’t that close to the “real” invention. If I can find the “real” invention I certainly use that to reject or at least cite it in the pertitent art section. I try to search the invention in the spec but sometimes, if the disclosure is extremely long, I can’t really search all the possible embodiments. I know it’s a bit of a game because the Applicants feel like there is meat on the table if they get a first action allowance–so, they go broad anticipating a first action rejection. The second amended set of claims may or may not be the “real” invention but it usually gets around the cited art. Thus, while the Applcant may have “something” he/she hasn’t really claimed the disclosed invention in the spec. Thus, the claims are still broad enough to go final.

This process is part of the problem, but I don’t really blame the Applicants or the Examiners because this is how the system is set up. In a perfect world I guess the Applicant would claim what he invented and then the Examiner would thoroughly search the art come back with a rejection or an allowance or suggested amendments. This is what the First action interview pilot is supposed to do, but I don’t know if it has been successful or not.

Gene: I understand your point that “leaving no stone unturned” is problematic and not practical. That is one of the frustrations of this job frankly. How long do I search? When do I stop? It is sometimes tough to decide because, especially in the software arts, there always could be a website, open source code, or newsgroup post floating out there that could be a possible 102. Plus, frankly, I think it is difficult to really “know the art” in software becasue of the rapid pace at which innovation takes place on the Internet and with software in general. This doesn’t excuse bad rejections, but it is something that I think about when looking at a case. Having said that, I don’t have a problem trying to get something allowed if I can’t find it after a thorough search.

Thanks for the feedback.

Thanks for the reply. In my experience most (maybe 75%) of examiners I speak to are intelligent, professional, and happy to discuss the situation at the USPTO. I don’t consider examiners to be the bad guys.

Something you said was very interesting though, “If I think something is allowable, I have to convince a primary or my SPE.” Yes, this is exactly the problem. If an examiner wants to issue a final rejection, he doesn’t have to take any additional steps. I know that in theory the SPEs are supposed to monitor their unit’s final rejections, but I also understand that in practice the SPEs have too much to deal with these days to have time for this. An examiner also told me that he once tried to discuss a case with his SPE and his primary to have it allowed, and they both told him to reject it and they were also very condescending to him about it and made him feel like he was doing something wrong.

As far as the problem of bad patents, yes I agree with you 100% that having people threaten lawsuits or litigate based on bad patents is harmful to our system. It is also harmful when inventors or startups with a “good” application can’t make money or get funding because they can’t get their application allowed because of USPTO attitudes. So, yes, the USPTO has to find the appropriate balance between the two.

When an examiner has to take extra steps to allow an application (which can also hurt the examiner’s record due to the second pair of eyes) but needs no extra steps to reject (and which also won’t harm the examiners record), then that protocol seems biased to me. My suggestions to the USPTO are to 1) implement some procedures to formally review final rejections (I have some right now on my desk that would be a huge embarassment to the USPTO); and 2) the SPE’s and primary examiners should be careful not to be condescending to examiners when they want to allow something. If they don’t feel a case is allowable, they should say something to the examiner like, “thanks for bringing that to our attention. It’s not ready to allow yet, but you may want to give the applicant a call to discuss amendment X which may move things forward.”

I don’t want to speak for Patent Leather, but I think I might be able to explain a little.

The cries of so many in the industry, particularly the high-tech sector, cannot be taken seriously. There is no problem with patent trolls in reality. If someone comes to you with a crappy patent and says I want you to license you say no. If they sue you then you defend the lawsuit. If you look at what is going on in the high-tech sector, they complain about trolls and then lose at trial and pay damages based on patent claims they could not invalidate and because there was infringement. Everyone needs to look past the pleas, because they are pure BS. You simply cannot cry about getting sued all the time and how unfair it is when you are an infringer of valid claims.

The high-tech sector is well aware of reexamination and viable strategies, which they refuse to employ. They would prefer to be able to cry to Congress that they are being held up than go back to the Patent Office and have you all say “nope, this patent is good.” When there is a valid argument to make reexamination is the overwhelmingly smart choice, and statistics show that in reexam a lot of claims are lost or altered. So why don’t high-tech folks use it given it is overwhelmingly successful and far cheaper than litigation? Because they know the “patent trolls” have good patents.

The other thing to consider is that on the front end of an invention it just doesn’t make sense to leave no stone unturned. If that were the requirement innovation would come to a screeching halt because literally millions of dollars would need to be spent investigating prior art and examining every application. So the system is set up to do the best possible job within the parameters of what is reasonable.

Lets not forget that 98% of patents relate to inventions that make no money. This gets thrown around all the time as proof patents don’t matter, but 2% is a huge success rate when you are talking about the potential riches possible. How many wouldn’t buy a lottery ticket if the percentage of winning was 2 out of 100? Notwithstanding, 98 out of 100 losers do not justify leaving no stone unturned during searching and examination. It is all about cost-benefit.

You sound like you are the type of examiner that we need more of. Examiners who care and see their role as vital (which it is) is essential if we are going to dig out of this mess. Unfortunately, the stories of bad customer experiences thanks to examiners is rampant. There are a lot of good folks in the PTO, and a lot of folks who unfortunately are impeding positive outcomes. There are no doubt patent attorneys who also impede, which may be why an antagonistic relationship between the bar and examining corps continues to be bad. Under the previous regime my feeling was that examiners were tainted because Dudas kept saying every chance he could that patent attorneys and patent applicants were the problem, and never saw the PTO as a major player in the problem(s).

Keep up the good work. We need an examination system, but one that understands that a invention is a wasting asset. Reasonable search and examination in a reasonable time will spur innovation and if a bad patent or two get out there reexamination can handle it. If a stupid patent gets out there, we can laugh and poke fun, but those will never be problematic because they are never licensed and never used to sue.

-Gene