Is there a Systematic Denial of Due Process at the USPTO?

By Gene Quinn
February 26, 2012

Art 4Last week I spoke at the 6th Annual Patent Law Institute hosted by the Practising Law Institute.  The topic of my presentation was largely a “dealer’s choice” if you will, with the segment being billed as PLI Authors: Hot Topics in Patent Prosecution. I spoke at the New York City location and Jeffrey Sheldon, author of How to Write a Patent Application.  With me being able to pick whatever prosecution topic I wanted, I decided to focus on Track 1 as a strategy to deal with Art Units where patents seem to go to die, which allowed me to discuss what I was finding from PatentCore relative to the Art Units that handle business method patents.  See Business Methods by the Numbers and Appealed Patent Allowances.

After my presentation, as you might expect, I was approached by a number of patent attorneys.  Story after story it was the same thing I have heard from so many others — depressing tales of not being able to get a patent.  One particularly egregious thing I heard was from a patent attorney who told me about a conversation he recently had with a SPE from one of the business method art units.  I don’t know which Art Unit, and frankly I didn’t ask, although it is probably easy enough to narrow down the Art Unit.  This patent attorney told me that the SPE said: “we just don’t issue patents unless the Board orders us to.”  If that is in fact what was said and is in fact what is happening then there is a systematic denial of due process at the United States Patent and Trademark Office, and that is wholly unacceptable.

Another thing I heard from a different attorney was that a patent examiner he recently spoke with told him: “no one wants to be the one to issue the 1-click patent.”  The reference is, of course, to the patent obtained by Amazon.com on the 1-click functionality.  The claims of the 1-click patent were found to be invalid, and it seems that there is fear within the patent examiner ranks.  I can understand that, but that is not a reason to deny patents.  The law presumes the applicant is entitled to a patent, saying that the applicant is entitled to a patent unless there is a valid reason to reject.  In order to not allow patents bogus rejections are frequently put forth.  This type of behavior does seems systematic in certain areas within the Patent Office.

Before going any farther allow me to update my earlier posted — Business Methods by the Numbers.  In that article I said that there were 10 Art Units assigned to business methods, which is what I found to be the case as I was searching through the Patent Office webpages explaining which Art Units have responsibility for patents in class 705.  That turns out to be erroneous.  I received an anonymous tip almost immediately telling me that there are actually 20 Art Units that are assigned to business method patents, but I couldn’t confirm that independently or find out which Art Units until just the other day.  There are indeed 20 Art Units assigned to business method patents.  See Technology Center 3600 List of Contacts.

Armed with this information I went into PatentCore to find out what the allowance rates and appeals rates are.  The table below is from data collected on Wednesday, February 22, 2012.

Art Unit Allow Aband. Allow % After Brief Brief % After BPAI Reversal %
 3621  534  742  41.8%  118 of 534  22.1%  29 of 118  24.5%
 3622  56  946  5.9%  8 of 56  14.3%  7 of 11  63.6%
 3623  304  853  26.3%  13 of 304  4.3%  13 of 15  86.7%
 3624  222  458  32.6%  18 of 222  8.1%  6 of 26  23.1%
 3625  582  871  40.0%  75 of 582  12.9%  36 of 106  34.0%
 3626  173  858  16.8%  20 of 173  11.6%  12 of 24  50.0%
 3627  471  1091  30.2%  68 of 471  14.4%  27 of 101  26.7%
 3628  284  634  30.9%  51 of 284  18.0%  28 of 65  43.1%
 3629  271  962  22.0%  28 of 271  10.3%  17 of 46  37.0%
 3682  2091  888  70.2%  44 of 2091  2.1%  15 of 84  17.9%
 3684  80  105  43.2%  16 of 80  20.0%  12 of 19  63.2%
 3685  85  233  26.7%  33 of 85  38.8%  17 of 40  42.5%
 3686  125  285  30.5%  21 of 125  16.8%  12 of 24  50.5%
 3687  182  271  40.2%  41 of 182  22.5%  20 of 48  41.7%
 3688  81  386  17.3%  22 of 81  27.2%  18 of 30  60.0%
 3689  25  535  4.5%  16 of 25  64.0%  13 of 17  76.5%
 3691  283  553  33.9%  30 of 283  10.7%  16 of 59  27.1%
 3693  389  911  42.7%  43 of 389  11.1%  12 of 63  19.0%
 3694  345  487  41.5%  42 of 345  12.2%  12 of 56  21.4%
 3695  151  257  37.0%  17 of 151  11.3%  8 of 32  25.0%

There are several Art Units that have at least some information that makes you scratch your head and wonder why it is that things could be so bad. Art Unit 3622 has an allowance rate of 5.9%, with 8 of the 56 patents they have issued in the PatentCore collection being issued only after the filing of an appellate brief, but that means that only 14.3% of the patents issued were issued after an appellate brief was filed. The allowance rate is low, but that percentage being issued after an appellate brief doesn’t seem alarming, although the reversal rate of 63.6% is quite high.

Art Unit 3623 has an allowance rate that is reasonable for business method patents, although lower than ideal probably. Only 4.3% of the patents they issue are issued after the appellant files an appeal brief. The reversal rate at the Board is extremely high though at 86.7%. Similarly, Art Unit 3684 has a good allowance rate at 43.2%, but the reversal rate on appeal is 63.2%. It doesn’t seem that either of these Art Units force applicants to appeal to get a patent, but the reversal rate is cause for concern, as it is with Art Unit 3688. This bears further investigation to see what may be the cause.

Then we have Art Unit 3689, with an allowance rate of 4.5% and 64% of the patents they issue only being issued after the filing of an appeal brief. Combine this with a 76.5% reversal rate and there seems to be a real problem here. How can one business method Art Unit have a 70.2% allowance rate and another have a 4.5% allowance rate? Something is seriously wrong.

On top of all of this, applicants in Art Unit 3689 are doubly screwed thanks to the way the Patent Office handles Requests for Continued Examination. Once upon a time an RCE would go backwards in the queue to roughly the front of the line. Now it goes backwards much farther than that. The Office has rearranged the backlog from being high for applications not yet having a First Office Action to applications where there is an RCE filed.

I recently spoke with a patent attorney who has several cases in Art Unit 3689 and he was told that one long standing RCE is still many months from being considered, which will mean by the time the RCE is considered it will have been pending for over 2 years!

You just can’t have an Art Unit that refuses to issue patents and a Patent Office policy that lets RCEs lag for over 2 years.  The RCE is nearly the universal choice of applicants who are prevented from obtaining a patent, for whatever reason.  So if it takes 3 years to get a First Office Action, which is common in the business method space, and you spend 1 year prosecuting and then you file an RCE and wait 2 more years you now have had an application pending for 6 years.  If you are in Art Unit 3689 those 6 years are wasted because it certainly looks like they rarely issue a patent without being ordered to do so by the Board.

In the United States everyone is supposed to enjoy the same rights and privileges, and this concept manifests itself in the ideal that everyone is entitled to equal treatment under the laws. As the United States Supreme Court has explained, the Fourteenth Amendment requires that all persons similarly situated shall be treated alike, under like circumstances and conditions, both in the privileges conferred and in the liabilities imposed. When those who appear similarly situated are nevertheless treated differently, the Equal Protection Clause requires at least a rational reason for the difference in order to assure that everyone is being treated fairly.  In addition to what seems to be arbitrary and capricious denial of due process, there is most certainly unequal treatment among applicants at the USPTO.  How else can you explain on business method Art Unit with an allowance rate of over 70% and one with an allowance rate of 4.5%.  The fact that Patent Examiners and SPEs are openly admitting that they won’t issue patents is simply intolerable and an affront to the entire system.

I cannot see any justification whatsoever, let alone a rational justification, for some applicants being handled by Patent Examiners that simply refuse to do their job.  They work for THE PATENT OFFICE, not the No Patent For You Office.  They are supposed to work with and engage applicants in an effort to do justice, which means they are to issue patents when that is required.

The fact that entire Art Units seem to be ignoring the mandates of senior PTO management is one thing, but ignoring the law and denying adequate process and fair treatment raises the issue to a Constitutional concern.  Patent Examiners are being directed to work to find allowable matter and, if appropriate, issue patents.  That is their job and if they don’t want to do it then they should resign and allow the Office to find those who are interested in properly discharging the duties of their position.

Obviously, this issue is enormous and it seems unlikely that senior USPTO management will be able to wave a magic wand and fix it, although they certainly should try.  So what do you do to deal with rogue examiners and rogue Art Units?  If you have your application in Art Unit 3689, some other Art Unit with an extremely low allowance rate or in front of an examiner that simply refuses to issue patents you must resort to Track 1.  Yes, the fee is $4,800 to accelerate, or $2,400 if you are a small entity, but you will save a lot of money in the long run.  You will get a final decision on the merits within 12 months, but likely within 6 months given how the program is moving forward now.  The USPTO is extremely proud of Track 1 and I suspect they are keeping a very close eye on those cases, so the likelihood of funny-business should be low.  But even if the no-patent-for-you types examine your Track 1 application, continuation or RCE at least you can get to the appeal stage all the quicker.  Save yourself the hassle of an examination that will go no where, unnecessary thousands of dollars in legal fees and simply accelerate and then go to the Board where you have close to an 80% chance of success.  Use the procedure to  your advantage and minimize those examiners who simply refuse to issue patents.

Is there a silver lining to this story?  Yes.  It seems that everyone agrees that the problems with rogue Art Units is in the first line of management.  I hear from anonymous young examiners, and young examiners who will remain anonymous to you but who I know.  These young examiners seem deeply committed to the patent system and want to issue patents but are told by their SPEs that they have to come up with rejections and if they cannot find a valid rejection to just make something up.  They are troubled and speak out behind the scenes.  So if the USPTO can fix the problem of those first line managers who simply seem to hate patents and the patent system the future looks bright.  Those new, young examiners really seem to care.

So here is a word of encouragement to those young examiners who do care and are being told to do things they know is wrong.  Hang in there!  The patent system needs you!  The fact that you care and are troubled by the denial of patents that should rightfully be issued suggests to me that you are exactly the type of Patent Examiner we need.  Don’t give up. Things will get better.  This and other data coming to light thanks to PatentCore will certainly lead to reforms over time.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 63 Comments comments.

  1. Mark Nowotarski February 26, 2012 8:22 am

    Gene,

    Business methods is certainly a tough art unit. Here are a couple of tips for helping your getting your patent allowed in a timely manner:
    1. Talk to the examiner. If a rejection doesn’t appear make sense, there’s something about it that rejection you don’t understand. Give the examiner a call and try to identify what that something is.
    2. Take it one step at a time. If you’ve got a claim rejected for five different reasons, pick the easiest one to address and fix that first. I personally make sure that I address the 112 2nd paragraph rejections first (claims aren’t clear). There’s no point in addressing novelty, obviousness or statutory subject matter until the examiner understands what is being claimed.
    3. Communicate via email. Business method examiners seem more open that most to email communication. So if an examiner has a concern about some particular wording in a claim, you can forward new wording to the examiner and ask, “does this address your concern?” If so, then great. If not, then go back to tip 1 and talk to the examiner to try and find out what you’ve missed.

    These tips may help you get your business method patent a lot faster.

  2. Brian Fletcher February 26, 2012 9:11 am

    Gene – great insight as always. I think interviews can help the process, especially if the examiner’s supervisor can get involved.

    One point though, is that Amazon’s “1-Click” patent isn’t totally dead. During a reexam that started in 2006, the patentability of claims 6-10 was confirmed. Claims 1 and 11 (the broadest claims) were determined to be patentable as amended. Claims 2-5 and 12-26, dependent on an amended claim, were also determined to be patentable. In 2010, the revised patent was confirmed.

  3. PTOExaminer February 26, 2012 10:14 am

    I believe it is possible to petition to have an application transferred to a different examiner (maybe even to a different TC if you can argue that it is incorrectly classified?).

  4. Gene Quinn February 26, 2012 11:19 am

    Mark-

    Agreed. Unfortunately, however, there seem to be some Art Units that simply refuse to issue patents even when good applications with appropriate claims are submitted and attorneys are willing to do what is necessary to get an issuance.

    At the PLI patent institute I even had one patent attorney who is a former examiner tell me that he went to the examiner on a case and said “look, I understand the drill, I was an examiner myself. Just tell me what I need to do and we will do it.” He was told that there was nothing he could do because they just don’t issue patents. It seems that is the standing policy.

    -Gene

  5. Gene Quinn February 26, 2012 11:20 am

    Brian-

    Thanks for the information.

    It is easy to make fun of the Amazon 1-Click patent, that is until you actually read it. Sure, the concept might be old, but the application goes well beyond the simplicity that those who only read the title or see the innovation think is being patented.

    Cheers.

    -Gene

  6. Gene Quinn February 26, 2012 11:21 am

    PTOExaminer-

    Thanks for the information. I will look into this.

    Cheers.

    -Gene

  7. USPTO_Current February 26, 2012 2:12 pm

    Hi,

    I’m an examiner in the mechanical arts. Everything you described is 100% accurate. On multiple occasions I’ve approached my SPE with an allowance question (after a week of searching), only be told to reject the application. Why? Because the claim wasn’t longer than a “pencil.” Or they didn’t like the way it was written. Or they had a “gut feeling” that is wasn’t allowable. Not once did my SPE stop and take the time to read the application and consider the art of record. This frustrating exercise seems to go on ad infinitum. When the attorney calls and asks for an explanation, the only thing I can tell him is that my SPE doesn’t want me to allow. So, the attorney then has to decide between two equally unfair choices: (1) he can file the RCE and wait up to two years for the examiner to issue the same rejection; (2) he can file for appeal and wait longer for a board decision. As a junior examiner, I’m frustrated and helpless. If I go to the director, I’m a pariah. My suggestion to you is to keep pounding the PTO with the data supplied by PatentCore. Those numbers are pretty scary.

  8. American Cowboy February 26, 2012 4:21 pm

    Gene,why? Why do they choose not to issue patents?

  9. Mark Nowotarski February 26, 2012 4:36 pm

    “they just don’t issue patents”

    I find that this also becomes clear through the interview process. If I know early on that agreement with an examiner is not likely, then I’m in a much better position to counsel the client on the advisability of an appeal. We (the examiner and myself) can then focus on getting the case in the best shape possible for the appeal instead of an RCE.

  10. Paul Cole February 26, 2012 4:54 pm

    Unfortunately my recent experience which is in the chemical arts reinforces what has been said in this post. Whilt the present efforts are welcome, I think it would require an independent board of enquiry to sort out what is wrong and impose better and more business-like procedures. Reduction in the length and thickness of the Manual of Patent examining Procedure, and more straightforward instructions would be a step in the right direction. And if there is no broad agreement in the US as to what is/is not an inventive step, how are examiners expected to check for it?

  11. J N Gross February 26, 2012 5:51 pm

    Gene

    If you want a perfect example of PTO gamesmanship in these art units, take a gander at serial no. 09/560,203 in PAIR, where they’ve been torturing my client for almost 12 YEARS with no end in sight. Things looked fairly normal at first, with a NF issued 2.5 years after filing. There was some back and forth, we filed an RCE in September 2003 and had an interview in March 2004 to discuss the case. After (actually) reaching agreement on allowable subject matter, the original Examiner unexpectedly moved on from the case, and the new Examiner gave us a brand new rejection on the same art. FIASCO.

    From there things deteriorated rapidly. We got a restriction requirement out of the blue in 2005, followed by a surprise section 105 request, which, if you are not familiar with, is a huge pain in the a**. After yet another round of amendments, office actions, etc., we just reached our limit and filed a NOA in March 2007. The case is STILL on appeal.

    Take a look at the Reply Brief filed 12/2/2009 to understand the depths of frustration in this filing. This case should have been issued 8 years ago after the discussion with the first Examiner.

  12. Mark Nowotarski February 26, 2012 5:52 pm

    “And if there is no broad agreement in the US as to what is/is not an inventive step, how are examiners expected to check for it?”

    Paul,

    I think you’ve hit the nail on the head. It’s not just business methods. Many other art units are finding it increasingly difficult for examiners and applicants to reach agreement on what is and isn’t obvious. Applicants are unable to convince examiners that something is not obvious. Examiners are unable able to convince applicants that something is obvious. As a consequence you get rejection/response/rejection/response……and an ever growing backlog.

  13. Gene Quinn February 26, 2012 6:16 pm

    JN Gross-

    I am sorry to hear about your difficulties, particularly after having an examiner indicate allowable matter. This is terrible.

    Would you have interest in writing an article about this case for publication on IPWatchdog.com?

    Thanks for reading.

    -Gene

  14. Gene Quinn February 26, 2012 6:19 pm

    Mark-

    You say: “focus on getting the case in the best shape possible for the appeal instead of an RCE.”

    That is exactly why PatentCore is so valuable for patent attorneys/agents and clients. If you are going to get stuck in an Art Unit or with an examiner that isn’t likely to allow a case that really opens up possible strategies to accelerate the case or refile to try and get into a different Art Unit. I still think that those in Art Units where patents aren’t going to issue should consider Track 1. At least you cut the nonsense and get to appeal quicker if nothing else.

    Cheers.

    -Gene

  15. Gene Quinn February 26, 2012 6:26 pm

    AC-

    It seems that certain SPEs philosophically work for the Patent Rejection Office, which is likely an outgrowth of the “patent attorneys/agents are evil” sentiment from senior management throughout the Bush Administration.

    I am going to write more about this, but for now I will point out that many (if not all) of the old-timers I know tell me that it is hard to allow a case and easy to reject. There are a lot of reasons, chief among them is the willingness to say “I am confident in my ability and I didn’t find anything, so ISSUE.” Examiners who are afraid of ridicule and not self-confident just don’t seem to want to issue. The fact that it is easy to reject and make up a nonsense argument also likely appeals to the lazy examiners who already philosophically work for the Patent Rejection Office. Finally, given the “no patent for you” attitude of the USPTO during the Bush Administration I wonder whether some ever developed the skill set necessary to allow claims. Another thing that makes allowing difficult is working to find agreeable, allowable matter. When you notice that you are dealing with a real invention that has patentable matter disclosed examiners should work with applicants to allow something. But how do you identify allowable subject matter when your entire skill set is only tearing apart claims?

    -Gene

  16. Gene Quinn February 26, 2012 6:32 pm

    USPTO_Current-

    Thanks for sharing your story. What you write is something I hear all the time from junior examiners. Please, please, please don’t give up. Things will get better and we need you and the so many other junior examiners that know what they are being told to do is wrong. As you progress and get authority it will be you folks that change the USPTO from the bottom up.

    Now, in the meantime, I do plan to continue to write about the issues. I believe senior management wants a different USPTO that is more in tune with you… the question is how do they get through to those SPEs that simply see their role as not allowing anything regardless of whether they have a reason.

    Finally, if you don’t want to approach Director Kappos, Deputy Rea or Commissioner Focarino, I understand. Please feel free, however, to continue to post your stories and if you want to e-mail me privately, even anonymously, I will respect your wishes and not let anyone know who you are.

    -Gene

  17. J N Gross February 26, 2012 7:04 pm

    Hi Gene – sure, I’d be more than happy to use my case as an example. The bizarreness of the case is exacerbated by the fact that we filed the Appeal Brief in October 2007, but the Examiner keeps referring incorrectly to the status of the claims under review. For example in the Answer filed in January 2008 he refers to the wrong set of claims. The BPAI has pointed this out twice now, but each time they do this it costs me several months in delays. You can see it took them until DECEMBER to point this out.

    To top it all all off, the BPAI has the nerve to refer to MY brief as defective LOL (see December 2008 ruling) because it does not match the Examiner’s incorrect characterization. This a poster child for the abuses going on.

  18. Gene Quinn February 26, 2012 8:07 pm

    JN Gross-

    Great. I would love to publish something on this and you know the situation best. This does sound extremely bizarre, almost unbelievable except that we know this type of this happens.

    You can reach me through the contact form at the bottom of this page. I will get back to you with my e-mail (so as to not publish it for the spiders and spammers):
    http://www.ipwatchdog.com/about/gene-patent-attorney/

    Thanks!

    -Gene

  19. PTOExaminer February 26, 2012 8:49 pm

    If I was a patent attorney and a SPE told me “we just don’t issue patents unless the Board orders us to” I would hang up and immediately call his/her boss (the TC Director), the TC Ombudsman, the Office of the Commissioner for Patents, and the PTO Director. I know it would be extremely time consuming but as a paying customer I would demand that every penny paid so far for search and examination be refunded (as per the SPE’s own admission that examination alone will never result in an allowance) or that the application be transferred to someone diligent and competent. (By the way, I don’t think the Board orders anyone to issue patents… for some reason many managers are under the impression that a reversal = order to allow).

    If I was a junior examiner and my SPE said to me “don’t issue patents unless the Board orders you to” I might contact POPA and the Ombudsman, maybe. There really isn’t much an examiner can do. Generally, examiners who clash with their SPE get transferred to another SPE in the same work group where they are closely monitored and are heavily reprimanded for every minor misstep; I would rather keep my job and wait for the day I become primary.

  20. Anton February 27, 2012 7:26 am

    As a foreign applicant in the chemical field we find it frightening just how totally unreasonable are some USPTO Examiners in our field. In some cases they appear to be even dishonest, because it is clear that they often do not read properly the citations or the arguments. We feel sometimes that much of the USPTO is moving towards Pakistani Office levels of performance. It certainly seems, that the safe course for the USPTO is to reject everything, and the only way to get anywhere is to appeal, in the hope that this will make the Examiner take a more reasonable stance.

  21. X Examiner February 27, 2012 9:25 am

    Thank you for this article. It reminds me why I left the PTO. Even after Kappos was appointed and atttempted to start a “work with applicant” mentality, my SPE would ask if I looked for any allowable subject matter, and when I told her what was allowable, she immediately shot me down. It didn’t matter that the art couldn’t support a rejection. She seemed to think that rationale alone, without evidence, was sufficient.

    The fact is that SPEs and examiners don’t have to answer for terrible rejections, and while stout hearts like USPTO_Current may feel frustration at the system, who knows how this examiner will feel or what they will do once they become primary. After three to five years of indoctrination, where all you hear is “Reject everything – Admit nothing,” where one’s production and survival depends upon whether they can appease an unreasonable SPE, and an ever-increasing production requirement, it can be very difficult to implement quality examination upon receipt of the authority.

    As an examiner, I sometimes wished that I could initiate an appeal proceeding, knowing full well the applicant deserved a second opinion from someone with authority.

    Good luck to everyone working with this system.

  22. AAA JJ February 27, 2012 10:36 am

    With respect to 09/560,203, the following link is informative:

    http://www.usptoexaminers.com/showreview.aspx?ExaminerID=5231

  23. Mark Nowotarski February 27, 2012 11:31 am

    Anton,

    Can you suggest some US chemical class/subclasses where prosecution is difficult and others where it runs more smoothly? Feel free to send me a note directly at mark.nowotarski@gmail.com if you would rather not post here.

  24. Brenda Speer February 27, 2012 12:47 pm

    Gene,

    Thank you for confirming what I have suspected for the past few years. The rejections I get continue to be more and more ridiculous. Equally frustrating is the fact that every second Office Action is FINAL, regardless of the circumstances, and which forces the inventor to endure more unnecessary delay and incur more unneccessary expense. It is the clients who suffer, especially individual inventors and small businesses, as many cannot afford to continue to do battle with the Patent Office, despite the merits of their inventions. It is past time for the Patent Office to change its mentality.

  25. J N Gross February 27, 2012 1:02 pm

    Brenda – my favorite is this new one: 1) I get a 103 rejection; 2) I amend the claims; 3) I get a new 102 rejection, now based on a different reference, and asserting that it qualifies as “Final” because my “amendment” narrowing the claim necessitated the new rejection. Query how a newly cited prior art reference could “anticipate” a claim NOW after the amendment but not BEFORE. You can petition against this bogus logic until you are blue in the face, by the time they get around to deciding it, you have to file another two amendments and an appeal.

  26. Stan E. Delo February 27, 2012 1:03 pm

    Current-

    Thanks for the news, as I have an application in the works that is primarily mechanical in nature. It also happens to be time sensitive in my case, so the old “no patent for you” soup Nazi attitude left over from a former clueless Director is Not acceptable at all. I tend to think a Track 1 approach like Gene suggested might be the best way for me to go. If the new fee proposal goes through, the fast track will be $4000, and with the new micro entity feature, I will be eligible for a 75% reduction if I recall it correctly, so for only $1000 I might be able to *buy* some attention to detail after the new fee schedule goes into effect. Even without the micro discount, $2000 sounds like a Very Good idea right about now.

    It’s really good to hear that there are folks like yourself at the other end of the wire! Thanks…

    Stan~

  27. Brenda Speer February 27, 2012 1:23 pm

    J N Gross,

    We share the same pain…I’ve gotten this same type of rejection, or variations of it that make no sense, repeatedly. Result is the same, denial of due process.

  28. Paul F. Morgan February 27, 2012 2:12 pm

    I also have heard from a non-primary examiner that his SPE would not allow any applications on the first action even if no valid rejection basis could be found. Statistics by art units on first action allowances by non-primary examines would thus also be interesting.
    Both that and rejection rates by art unit could be used to raise issues with PTO management. [Few patent attorneys are willing to make individual complaints for fear of generating grudges affecting allowances in other applications.]
    But as to rejection rates for “business method” applications, the PTO, examiners and SPE’s have good reason to be concerned about what to allow in such applications, given the unclear mess the law of what is patentable subject matter under 101 has been left in by the Supreme’s In re Bilski decision and the different recent 101 decisions of the Fed. Cir.

  29. AAA JJ February 27, 2012 2:38 pm

    The rejections of primary concern in 09/560,203 are not under section 101. The examiner is rejecting claims 1-102 under section 103(a) over a combination of 5 references. Clearly a shotgun rejection. So vague that in and of itself it fails to satisfy the notice standard recently clarified in In re Jung. It is a total garbage rejection.

    What is going on in Ms. Coggins’s TC needs to be investigated. This is not the only application in which these shenanigans are going on.

    Another thing that needs to be looked at is every Rule 105 request that is issued. These requests are usually done as nothing more than harrassment of the applicant and an attempt to delay prosecution of the application. They should not be included in any OA unless they have been reviewed by somebody in OPLA or some other group (e.g. Office of Patent Examination Policy).

    What the patent bar and applicant community can do is NOT file RCE’s. You are simply throwing patent term away with that “strategy.” Appeal every rejection that is eligible for appeal (i.e. twice rejected) and includes rejections that are clearly improper. This behavior by the “reject, reject, reject” crowd of SPE’s is not going to be dealt with if the patent bar and the applicants continue to reward this behavior with RCE’s. Stop filing RCE’s. Now.

  30. AAA JJ February 27, 2012 3:26 pm

    For more shenanigans from the business method art units, look at 09/193,787 and 09/077,337 (which has a PTA of 1584 days).

  31. J N Gross February 27, 2012 4:25 pm

    AAA – depressing that in ‘787 there was zero PTA after all that effort! They screwed up that one well too, my lord what a mess they made.

  32. Stan E. Delo February 27, 2012 4:42 pm

    So perhaps it is time to sweep up the peices and try to glue them back together again? In my opinion that is where real innovation comes from.

  33. AAA JJ February 27, 2012 5:31 pm

    I always pre-appeal. If I get a panel decision that instructs us to proceed with the brief, I file the brief. And if I get anything other than an examiner’s answer, I call the TC Director and complain loudly.

    As much as I respect Mr. Kappos, in his recent interview with Gene he stated that examiners re-opening in response to a brief is not a “rampant” problem. In my opinion, he was either being naive, at best, or completely disingenuous, at worst. It is “rampant” in certain TC’s, and if the PTO kept track of re-openings by TC’s (which they may do, but simply don’t publish the data) the usual suspects would quickly be identified.

    Certainly any re-opening after a pre-appeal that includes a panel decision instructing the applicant to file a brief, which is then filed, such be subject to some real scrutiny. And by real scrutiny, I don’t mean the typical “sign off” by a TC Director (a la Ms. Coggins in 09/560,203), I mean by somebody much more qualified.

    The usual garbage you hear when an examiner re-opens is that applicant came in with arguments that were not previously presented. This is the excuse offered by the examiners in the vast majority of re-openings. It is nothing but lies.

    Any time an examiner wants to re-open after an appeal brief, or to enter a new grounds of rejection in an examiner’s answer, the examiner should be required to identify any allegedly new arguments from applicant. And applicant should be given an opportunity to respond. The matter should be decided by somebody far more qualified than the average run of the mill, sign anything put in front of them, TC Director.

    Finally, the applicant and/or applicant’s representative should be permitted to appear in person before the deciding official. And the useless QAS’s, “appeal specialists,” and other know nothing, do nothing managers that are behind the scenes telling the hapless examiner that they can’t allow the application, but can’t send the rejections of record to the Board, should be REQUIRED to attend the meeting and answer for themselves to applicant and/or rep and to the deciding official.

  34. David Boundy February 27, 2012 5:56 pm

    AAA JJ (and others so afflicted) — please contact me. Google David Boundy Patent Cantor. If we present our voices together, I have a way we will be heard loud and clear.

  35. Stan E. Delo February 27, 2012 10:07 pm

    Very well said Triple A for the most part, but perhaps it misses a few points here or there. What can you do if the appointed examiner happens to be one of the Dudas era appointees, that has been accumulating their mind set for about 10 years or more? I still think that shuffling the art units might be worth a try, as it allows everyone to keep their jobs, and hopefully breaks some arguably *bad habits* at the same time. Lord knows that American inventors need intelligent examiners now more than ever. Maybe with an influx of new talent as exhibited by Current_ the examining corps will have to reconsider what their job really amounts to. Are they there to help or hinder inventors? Not patent attorneys or agents, but inventors. Patent Attorneys didn’t invent practical airplanes dangnabit, the Wright brothers did!

  36. Stan E. Delo February 27, 2012 10:44 pm

    To really eliminte the problem, you would probavly have to fire about 20% of the corps, which is very obviously not practical at all right about now. With both David and Terry on board though, why not try to fix things very completely while we have the chance to do so?

  37. Anton February 28, 2012 6:08 am

    Response to 23.

    Hallo Mark, thank you for your comment. I can not point to particular classes where things go well and other where they do not. We deal with a wide spectrum of chemical subject matter, and we seem to encounter difficult examiners in all of it. In WW1 at Verdun, Général Pétain said (they shall not pass). It seems to us that there are many Pétainistes in the USPTO. We find that it is possible generally to have a reasonable (and reasoned) discussion with EPO Examiners and come to an agreement regarding allowable subject matter. This seems very difficult with the USPTO.

  38. Mark Nowotarski February 28, 2012 9:38 am

    I’d like to open this up to any examiners that might be sitting in (or even USPTO management).

    What are your frustrations? Is there something about an obviousness determination that the collective patent bar just doesn’t get?

  39. examiner-xyz February 28, 2012 10:59 am

    Hard to evaluate other examiners since we only see our work and therefore cannot speak for them. We do however see a lot of different attorneys work I would say the same is true but reverse for the attorneys, they know their work but see lots of different examiners work. I am sure that the folks writing in to these blog posts do fine work, they obviously care but they are not everybody. There are some attorneys doing crappy work out there and there are some examiners doing crappy work too it appears. I would venture to guess that some of the prolonged prosecution is due to every increasing places to search and the broadness of some of the BM claims. Some examiner’s probably do not want to allow for fear of missing a good piece of art somewhere that they did not find due to the truly limited time allowed for searching. On the other hand some of the extended prosecution is the attorneys fault for failing to claim the actual invention (or not even knowing what it is) until pushed to the wall. Some attorneys file the most ridiculous broad claims to begin with. An examiner in all likelihood is not going to spend their limited time searching the entire spectrum when they can search and make a rejection in an hour on stupid broad claims. The applicants need to pony up and claim the most specific limitations they will possibly take from the beginning….do it in combination with the broad claims when filing. I am sure if I were to take a look at other examiners work I would find good and bad work….the 10-20 attorneys who comment on this blog should do the same with other attorneys works. Also, the fact of the matter is that lately 103 rejections have been bolstered by the courts (predictable results ring a bell?) …the 103 standard shifted slightly and the examiners are using it and perhaps in some cases pushing it. The applicant’s expectations from the way things had been may not have caught up.

  40. Gene Quinn February 28, 2012 11:58 am

    examiner-xyz-

    Thanks for taking the time to comment.

    I agree with you. I am not one to blame examiners, and typically don’t. From time to time I will get inventors and businesses want me to look over a file because they cannot get a patent. So far whenever I have been asked to look I scratch my head not at the examiner’s work product, but at the attorney or agent work product. So there is certainly folks on both sides of the aisle that contribute to inefficient examination.

    With PatentCore it is now a lot easier, however, to see where pockets of resistance are at the USPTO to the “find allowable subject matter if it exists” policy.

    Cheers.

    -Gene

  41. Chris Holt February 28, 2012 12:00 pm

    Very interesting discussion…

    From my perspective, the question is how can the incredibly complex system that is the patent office be effectively reformed in a manner that will vastly improve the likelihood that ALL applicants will obtain better patents sooner…and at a lower cost. And how can this reform happen sooner rather than later? It is my opinion that patent law reform and even patent office administrative policy changes are quite limited in terms of their potential to achieve the stated goal any time soon.

    What just might achieve the goal is a grass-roots movement originating outside of the patent office and focused upon promoting data awareness and data accountability. In the article right above these comments is a link to source data demonstrating an art unit with an effective allowance rate of around two percent! It is one thing to write an article about how you were treated unfairly during the prosecution of a single application…and an entirely different thing to write an article about a quite possibly broken division within the office. The latter article will (and probably has) triggered some sort of investigation…and quite possibly may lead to an actual correction…to the benefit of all applicants in that division.

    The fact of the matter is that there is incredible variation from one examiner to the next, and there is incredible variation from one art unit to the next. The data in the PatentCore system enables you to know right away how that variation might be impacting you…or the case that you are working on….or your client. Referring to the data is not “cheating the system” but instead is establishing an effective framework for clear and efficient interaction between the examiner and the applicant.

    The variation in the patent office is natural and healthy in some circumstances, and poisonous and destructive in others. You will discover and be able to effectively address variation in the latter category simply by integrating the PatentCore system into your decision making processes. We are improving the tool every day in order to help guide your patent prosecution decisions, or to help you evaluate the performance of your outside counsel, or to help you actively search for areas where patent office policy reform is needed so that you can publish an article, etc.

    Operating in this manner will help you (or your client) and ultimately everyone else get better patents sooner…and for less money. This is true because the patent office will inevitably adapt to knowing that we have the data. Their negative behaviors will change. Their positive behaviors will continue. The system will evolve to everyone’s benefit. The backlog will shrink!

    Accordingly, I think it is time for the era of trial-and-error patent prosecution to come to an end. There is no need in this day and age to be satisfied with with the inefficiency of such a system. By subscribing to the PatentCore system, you can help make this happen. If our numbers get large enough, perhaps even the patent office will decide to use the tool or something as a basis for focused training, etc.

    The act of acquiring a subscription to PatentCore.com means more than simply purchasing access to a database of patent office information. It means joining a community of users committed to reforming the system such that everyone will get better patents sooner…and for less money. Some have questioned our profit motive but, rest assured, that all proceeds are currently being invested in making improvements to the system for the benefit of the entire community of users.

    Okay, I’m getting off of the soap box. 🙂

    – Chris

  42. Stan E. Delo February 28, 2012 12:56 pm

    Chris-

    When you create a new type of tool or weapon, so to speak, it is probably inevitable that some might consider it to be somewhat dangerous. And rightly so…. Did you know that the invention of the chain saw was inspired by the behavior of powder-post beetles that had been doing their thing for probably several millions of years? Here’s to evolution in action, and I can’t help but wonder how many really useful inventions have been discarded because some grumpy or over-worked examiner just decided not to allow something just because they could. It is reasonably certain that folks are listening, and for them not to use a kewl new tool like yours would seem to be remiss to me.

    Stan~

  43. J N Gross February 28, 2012 1:26 pm

    Just to add a little more perspective: I’ve been working in a patent office since 1981, and have my reg number from 1991 so I consider myself kind of an old timer.

    When I started out in this field, we were taught to present a range of breadth in the claims, loosely defined as the spectrum between what we thought was pie in the sky to what we thought was the minimum useful coverage for the client’s business. As such, we did see first OA rejections, but they were typically not the kind I see….today. Back then there was some reasonable give and take, and there was an effort by Examiners (it seemed to me anyway) to try and find common ground. It was unusual not to have SOME kind of allowable subject matter defined by the final OA.

    About 8 – 9 years ago I started noticing a trend (at least in e-commerce areas) where there was a rejection of all claims, no matter what the breadth of claims presented. It morphed into a kind of “reject at all costs” game that placed a premium on “inventing” reasons to reject. I don’t profess to know or understand why this change of policy came about, but it had a devastating effect, IMO, on the credibility of Examiners and the relationship with applicants.

    Now its become a game of attrition and guesswork, because you can’t represent clients fairly in that kind of environment. After filing 200/300 cases and seeing the above, one certainly adapts. One starts to file more appeals! That’s why the PTO is now considering adding a significant price hike to appeals: it wants to “discourage” applicants from this route.

    So the solution is apparently not to fix examination and have it done the right way, but, rather, to prevent an expose of the behavior by penalizing applicants complaining about it to a higher authority in the PTO. Its hard not to look at this cynically.

  44. Mark Nowotarski February 28, 2012 2:35 pm

    Examiner-xyz

    Thank you for your response.

    So if I understand you correctly, one aspect of an obviousness determination that the patent bar as a whole just doesn’t get (at least from your perspective) is that according to recent court decisions, if a claimed invention has predictable results, then it’s obvious.

    Did I capture that correctly? Is there more to say? Do others wish to chime in? Are they seeing the same thing?

    Another thing the patent bar as a whole doesn’t get is that examiners are not going to spend a lot of time searching the entire spectrum of prior art to reject a ridiculously broad claim when an hour or so is all they need to find a specific rejection.

    Did I capture that correctly as well?

  45. Stan E. Delo February 28, 2012 5:52 pm

    Hi Mark-

    I usually try to do a Very extensive Patent search while the invention is still in the napkin sketch phase. That way I can be way ahead of an examiner that is probably only allowed about 2 hours to *examine* the “prior art”? Once I get around to machining an extremely tough Aluminum Nickel Bronze casting though, I would like to be reasonably certain that I am not just wasting my time in doing so. This stuff really matters, and it’s about time that somebody happened to notice it.

    A tip of the hat to David,Terry, and Peggy!

  46. Blind Dogma February 28, 2012 7:39 pm

    Another thing the patent bar as a whole doesn’t get is that examiners are not going to spend a lot of time searching the entire spectrum of prior art to reject a ridiculously broad claim when an hour or so is all they need to find a specific rejection.

    Did I capture that correctly as well?

    Mark,

    the short answer is “NO”. Now if such a rejection was proper and held up to a rebuttal, then maybe you woudl have captured something correctly.

    As it is though, the complaints simply are not about “Gee, the Office fairly rejected my extremely broad claim.” Sorry, but your trying to lead this discussion into the land of straw should be cut off.

    One wonders why you seek such “balance” in the conversation?

  47. Stan E. Delo February 28, 2012 8:04 pm

    Gee whizz mr blind dogma, but my answer would be an emphatic NO. Sorry if I have seemed to drifted astray from the chosen path, but at some point you will either have to go fishing or cut bait. If you happen to be wealthy it becomes a bit Academic I suppose, but who here is actuallly wealthy?

  48. Stan E. Delo February 28, 2012 8:12 pm

    I herewith rest my case.

    Stan~

  49. examiner-xyz February 28, 2012 11:05 pm

    @Mark
    I would have to answer ..no…to your specific questions. You seem to be putting your own slant on it and picking and choosing. Not unusual though I see it all the time. I think I was pretty specific in not trying to group the attorneys together and not as you say “as a whole” .
    As far as “predictable results” is concerned—you and everyone else know what I am talking about…I was trying to be brief.
    As far as the time spent on searching broad issue—well I think Mr. Dogma covered that fairly well.

    It would be interesting to see in a random sampling of some of these protracted cases how many times the claims were amended in response to an examiner’s office action. In my opinion (which I am sure counts for very little with you) any response where the applicant amended. the claims—should be considered that the examiner/the office has done a reasonable job. I can think of no other reason why an applicant would amend his claims. Is there one? It is at this point that any pendency time should count against the applicant and not the PTO. Why should the office be made to look bad with long pendencies which are not their fault and are perhaps the fault of a poorly claimed invention. Also any time over the SSP should count against applicant and not the PTO. Perhaps 2 clocks should be used one for crappy examiner work and one for crappy applicant work.
    Everyone here loves to jump on the poorly done office action…as they should…but what about crappy claims and poor prosecution. Why does the PTO have to add that to their pendency time which make them look bad. The way prosecution is done in my art is like a bad game of liar’s poker. As Mr.Gross above says applicant’s normally don’t present a range of breath of claims. I am saying they should. Make me work. If they did I bet pendency would start to go down.

  50. Mark Nowotarski February 29, 2012 7:53 am

    Examiner-xyz,

    Thanks for the clarification. The reason I ask is that I’m working on a guest post on how pendency in different art units has changed over time. There have been some dramatic trends over the past 10 years and I was trying to see what the underlying causes might be.

  51. AAA JJ February 29, 2012 10:19 am

    “I can think of no other reason why an applicant would amend his claims. Is there one?”

    There are several. At this point given the state of both the RCE and BPAI backlog, Applicants faced with improper rejections amend in the hopes of gaining an allowance without having to wait 2, 3, maybe 4 years for a resolution. I have an application where the examiner’s interpretation of a claim term vis-a-vis a reference is clearly unreasonable. We claim a widget connected to element A. The reference has a widget connected to element B. Doesn’t meet the claim. The reference has a thingamajig connected to element A, so the examiner tells me, “I’m interpreting the thingamajig as a widget.” I tell the examiner that the interpretation is unreasonable as it is not consistent with our use of the term “widget” and is not consistent with the reference’s use of the term “widget.” I point out 5 or 6 other references that all use the term “widget” consistent with our use and consistent with the applied reference’s use. The examiner tells me, “Well, if you amend the claim to say a widget that does X I’ll agree the reference doesn’t meet the claim.” I ask, “Why should I amend when you’re interpretation is unreasonable? The weight of the evidence is that you’re clearly misinterpreting the term.” At that point the SPE interjects with, “Well, that’s our interpretation and if you don’t like it you can take it to the Board.” Why should I have to pay $1,200 in appeal fees, and wait 2 or 3 years for the Board to decide the issue? And in 75% of the cases in which a pre-appeal and/or an appeal brief is filed, the examiner re-opens.

    So what are my options? I tell the client, “You’re entitled to this claim as is. Let’s appeal. ” The client agrees. I spend what amounts to basically another application filing fee on a Notice of Appeal and Appeal Brief fees, and then time, and the client’s money, preparing an appeal brief that complies with all the rules (gotta summarize those claims because heaven forbid the APJ’s actually read the spec to gain an understanding of the claims), and then file the appeal. Two possible results: 1) the examiner comes back and says, “Oh, okay, you were right all along. I’m re-opening. Here’s a new OA. The new reference doesn’t have a widget connected to element A, but I’m interpreting the watchamacallit of the reference as your widget.” Great. 2) 3 years later we get a Board decision reversing the examiner. And then 4 months after that we get a new OA with a new rejection signed off on by some asleep at the switch TC Director.

    Still think Applicants only amend when the examiner does a “reasonable job”?

  52. Ex-Patent Examiner February 29, 2012 10:20 am

    First, I concede that I have not read the thread of comments above mine, but I would like to note that this is not just a problem with “rogue art units.” There are rogue SPEs with similar mentalities.

    My last SPE was one such SPE, and it is the reason I left the PTO to pursue private practice.

    I find it ironic that the PTO is such a numbers crunching organization—I’ve had friends fired for having 93% production instead of the required 95%—but no one (my TC director included) batted an eye when I had a year under this SPE with 0 allowed claims. The the contrary, I had many cases with my previous SPE where I had allowed claims and my “new” SPE reversed me and made me reject those claims over the same art (the closest prior art!) I had already written a statement of allowance over. Obviously, I did not have signatory authority, so my SPE’s opinion was necessary. In general, his belief that was if he could establish a prima facie case, his burden was met and that meant indefinate rejections unless the board reversed him. In short, he was unable to be a fair judge after he had established a prima facie case. It was devastating to applicants and to my morale, but there was nothing I could do. I complained to countless primaries who seemed to agree that is very improper, but my director would not move me to a different art unit.

    Moral of the story: there are many area of the PTO that have do not follow procedure and therefore deny applicants due process, which beyond entire art units include SPEs and examiners all over the office.

  53. examiner-xyz February 29, 2012 10:55 pm

    @AAA JJ

    You said there are several but only gave one reason. What are the others?

    To answer you—-yes—- It is my experience that applicants amend most of the time due to a reasonable or good rejection—your story not withstanding.

  54. AAA JJ March 1, 2012 12:02 pm

    My experience is quite different. Most of the amendments I make are unfortunately the result of having to appease some examiner or SPE so that they can continue to labor on under the delusion that they’ve done a reasonable job and so my client doesn’t have to wait 3 years for the Board to tell the examiner that their rejection is garbage, or to have the rug pulled out from under my client after they spend lots of time and money appealing just to have the examiner ‘fess up to a cr#ppy rejection and re-open, rather than embarrass themselves at the pre-appeal or appeal conference.

    But there are several other reasons. Here’s a few:

    1) Prior art uncovered by an EPO, JPO, etc. examiner (all of whom have searching skills far, far superior to U.S. examiners) requires amendments to the claims, because even though the U.S. rejection is based on ridiculous prior art being stretched beyond recognition, if the patent is litigated the accused infringer will find the good art from the corresponding foreign application(s).
    2) Non-publication prior art requires amending the claims. I have an application being opposed in a foreign patent office on the basis of a competitor’s actual product that was on sale before our filing date. The U.S. examiner’s references and rejections are typical nonsense, but again, the claims have to be amended as the foreign opposition will be discovered by any accused infringers.
    3) The U.S. examiner is just completely missing the boat. The typical U.S. OA rejection is the result of the examiner doing a text search and then concocting some Rube Goldberg type combination out of the top 2 or 3 search results to try to meet the claim. I’ve gotten plenty of A in view of B rejections that were ridiculous, but upon actually reading reference B it turns out it’s a credible anticipatory or obviating reference. But because the examiner is only interested in the one sentence or paragraph in which the search terms are found, and doesn’t bother to read the reference or make any attempt to find out what it actually discloses, the rejection is A in view of B. I could very easily blow that rejection out of the water, but somebody competent will probably figure out how good reference B is. Not really helpful to the client to get the claim simply by noting how terrible the A in view of B rejection is.
    4) Obviousness-type double patenting rejections are another reason. I’ve never seen one that even came close to making a prima facie case (i.e. one in which the examiner actually notes all the differences between the claims and then provides a credible reason why the differences would have been obvious). What I usually get is garbage like, “Well, the claims in the application are just broader than the claims of the patent.” Super. Great analysis. So if there are claims that aren’t rejected under OTDP, I might put them in independent form so as not to throw away years of patent term just to appease some knucklehead examiner who thinks it’s “their job” to enter an OTDP rejection in every single application an Assignee has pending.

    I could go on. But I doubt you’d be persuaded by any of it. Please keep on believing that the only reason Applicants amend is because of the record breaking outstanding quality work being done by the U.S. examining corps. It would break my heart to be the one who bursts your bubble.

  55. examiner-xyz March 1, 2012 2:30 pm

    I think those are valid points though I take exception to the EPO in gerneral being better searchers. They do have better databases and more time and no ODP or 102a/e to bother with. I do agree with you on the ODP rejections. I have seen some in my own art unit that are just plain wrong.
    However, as you stated in the beginning—“My experience is quite different”. Am I to take your experiences and disregard my own and conclude that all examiners are making bad rejections and attorneys only amend due to lack of funds and utter frustration? I still think not. Perhaps we both need more data.

  56. AAA JJ March 1, 2012 2:53 pm

    I don’t need any more data. I’ve prosecuted thousands of applications and the percentage of amendments that I make because the examiner did a “reasonable job” is on the order of 10% or so. A lot of it, too much in fact, is done to “play the game” with the examiner. The old, “Hey, throw me an amendment so my SPE will think my rejection was good and I can allow it because I ‘built a record’ and forced you to amend” bullshirt. If that’s what you consider a “reasonable job” than, yeah, I guess you’re all doing a reasonable job over there. If you deny that’s the game being played, then sorry, you’re either lying or you’re not paying attention.

    EPO examiners are better searchers. They find D1 the first time out and they stick with it throughout the prosecution and D1 remains D1 unless there is an amendment that so alters the scope that the examiner is forced to bring in something else. At that point you’re probably looking at a 123(2) objection, so the applicability of the prior art becomes rather secondary.

  57. JExaminer March 1, 2012 3:42 pm

    Hey, I’m another junior examiner that was under a anti-allowance SPE (I have since transferred). My allowance rate dropped precipitously under her. I work in a broad art area that often requires searches in other classes than my own and she used that to her advantage. She would read claims for two seconds and then look at the drawings. If it looked like something she had seen before, she wouldn’t want to allow it.

    Additionally, everytime I wanted to allow something she asked me to contact multiple other primaries in various art units, flip search multiple barely related subclasses, ask for a series of 112 2nd amendments. I think she was trying to break me down just so I would write a shitty rejection just to get it out the door rejected (as opposed to allowed). She was the worst.

    She also consistently delayed prosecution. In one case, after searching and asking the attys to amend (to which they graciously complied), a process that took the whole two months, after finally reaching agreed-upon allowable subject matter, she all of a sudden decided that there was a series of written description problems on the claim language filed THREE MONTHS PRIOR. In good news, that case is coming back (under a new SPE) and being allowed with my original Examiner’s amendments.

    When I accused her of being anti-allowance, she said no I let you allow those two. One was an extremely precise composition case (no pictures for her to refer to) and the other was a patent prosecution highway case. So basically a bullshit response.

  58. Stan E. Delo March 1, 2012 5:31 pm

    One thing that has occurred to me few times is that it might take a bit of time and effort to change habits that have been developed over decades, in many cases. I have seen that sort of thing in some of the larger companies that I worked for. Many times just changing their duties a little bit AND who they have to work with on their team can make a world of difference. Maybe changing the art units they work in to a similar area of art with a different SPE? At some point they are either going to have to get things done though, or perhaps they might have to go elsewhere.

    Be aware that I not talking about folks like yourself xyz… You seem to be a part of the solution by talking things like this over very candidly. Looks as if the PTO has 1500 new examiners incoming pretty promptly, so the whole climate at the Office might start changing fairly rapidly. It must be a very daunting to try to figure out what 5000 Examiners are doing and why… Sorta like trying to herd cats, or even worse yet, inventors!

  59. AAA JJ March 1, 2012 5:50 pm

    The PTO needs to identify these “reject, reject, reject” and “build the record” SPE’s and reassign them to the mail room. It shouldn’t be that difficult to identify the outliers in terms of such factors as: 1) actions per disposal; 2) affirmance/reversal rate at BPAI; 3) allowance rate; 4) RCE backlog; 5) meeting date goals; 6) re-openings in response to appeal, etc. I mean, this ain’t rocket science. Gene’s posted some statistics that are pretty telling. I mean, you got an SPE running an AU and the rejections being sent to BPAI are getting reversed at a 86% clip???!!!!!! AU’s with 2% allowance rates???!!!!!! Identify these terrible “managers” and have them report to Mr. Kappos’s house for lawn mowing, gutter cleaning, and hedge trimming duty. Stop tap dancing around the issue and solve the problem.

  60. Stan E. Delo March 1, 2012 8:31 pm

    JE-
    One of the things I have heard is that there will be pretty extensive training sessions for incoming examiners, so hopefully that will help. Also I believe a majority of the new hires seem to be either patent attorneys or agents, if I recall it correctly. Letting a Senate staffer run the PTO for so many years was a very serious mistake. Now we have to try to fix it.

    Some of the legal talent incoming might also be very useful in trying to figure out what Congress is actually trying to say in the language used in the AIA, and to try to fix it as much as they dare. Fix it now, or wait for about 4 years until the courts *might* have figured out the language in any really useful manner. If you fix it up front, it would seem to reduce a lot of very expensive guessing about what *might* happen.

    Stan~.

  61. PatentAttorney February 17, 2013 9:14 pm

    Gene,

    My experience prosecuting before art unit 3689 comports with your analysis above. Certain examiners in that unit have very strict views that are outside the law as defined by the Federal Circuit.

    Do you have any suggestions on how to write an application to avoid unit 3689? The relevant MPEP sections appear to be 903 – 903.08(e), which suggest that the claims and the relevant prior art are the key factors in the PTO’s classification and assignment to technology center. Any pointers beyond that?

    Also, any idea of whether a petition to change technology centers based on misclassification might succeed? I honestly think one of my applications is misclassified, and have some good arguments to support that contention. Any experience on that front?

    Thanks for your articles on this subject, which I’ve found fascinating.

    Patent Attorney