E-Commerce Art Units: Where Patent Applications Go to Die

By Gene Quinn
July 14, 2016

Stop making excusesRecently the United States Patent and Trademark Office (USPTO) announced an initiative to streamline patent prosecution by adding an opportunity for patent applicants to work with an examiner panel after a final rejection and before needing to file an appeal or request for continued examination (RCE). Any new tool for patent applicants to get to “yes” more quickly and without being required to needlessly wait for years for additional consideration is welcome. However, new tools such as the post-prosecution pilot program will do nothing to help applicants who are forced to deal with examiners who simply refuse to issue patents. Unfortunately, there are pockets of these recalcitrant examiners at the Patent Office.

Several days ago I wrote about the extraordinarily low allowance rates of Art Units 3689 and 3622. I’ve received feedback suggesting that the allowance rates I reported, 7.1% and 9.5% respectively, seem too high based on the common experience of what patent practitioners witness in those Art Units, at least since the Supreme Court’s ruling in Alice v. CLS Bank. I also received a tip recommending that I specifically take a closer look at Art Unit 3683 because the allowance rate I reported — 64.6% — is certainly not correct, at least not correct for 2016.

Upon closer review things are much, much worse than I previously reported. The problem is also far more widespread. Using LexisNexis Patent Advisor®, I looked at the E-commerce Art Units, this time focusing on what has happened only over the past 18 months. Focusing on this segment of post-Alice prosecution the allowance picture is utterly atrocious. [1]

The chart that appears below shows the number of patents issued, the number of patent applications abandoned and the corresponding allowance rate for E-commerce Art Units at the Patent Office during 2015 and so far during 2016.

 

E-commerce Art Units at the USPTO. 2015-2016 Allowance rates.

E-commerce Art Units at the USPTO. 2015-2016 Allowance rates.

 

Clearly, things are getting worse, not better, in E-commerce Art Units at the Patent Office.

As you can see, only 12 patents were issued by Art Unit 3689 in 2015, while 365 applications went abandoned, which corresponds to an allowance rate of 3.2%. So far in 2016 there have been only 3 patents issued by Art Unit 3689, while 232 patent applications have gone abandoned, which corresponds to an allowance rate of 1.3%. Of the three patents that were issued one was issued because the Patent Trial and Appeal Board overruled the examiner’s final rejection and ordered the patent issued. See Ex parte Jacob A. Shipon. The PTAB found that the examiner erred with respect to the 101, 103 and 112 rejections, or in other words pretty much erred across the board.

In my previous article I compared Art Unit 3689 with Art Unit 3628 because both Art Units handle cases that patent applications that relate to business processing, cost/price and reservations. While the recent allowance rate for Art Unit 3628 is very low, it remains over 5 times the allowance rate of Art Unit 3689, which is extremely difficult to reconcile given that they examine the same type of application. As the chart below shows, in 2015 Art Unit 3628 allowed 60 patents while 353 applications went abandoned, which corresponds to an allowance rate of 14.5%. So far in 2016 there have been 18 patents granted by Art Unit 3628, while 192 patent applications have gone abandoned, which corresponds to an allowance rate of 8.5%.

While we see a notable difference in allowance rates between similarly situated Art Units examining the same type of patent applications, what is most alarming is that allowance rates in almost all of these Art Units are down rather dramatically in 2016 compared with 2015.

While we can hypothesize (and perhaps disagree) why allowance rates have dropped dramatically in 2016, everyone should be able to agree that the 1.3% allowance rate in 2016 for Art Unit 3689 is wholly unacceptable. An allowance rate of 1.3% demands investigation by the Patent Office, or by the Commerce Department Inspector General.

Obviously, the stories about patent examiners simply not issuing patents are very real.

Conclusion

Given the devastation brought on the patent community by certain patent examiners and the indifference of the Patent Office, patent applicants and their representatives absolutely need to seek every advantage possible. If patent examiners in certain Art Units, like Art Unit 3689, are not going to issue patents then applicants must do whatever possible to stay out of those Art Units. While that may not always be possible, creative drafting techniques could help steer you from one Art Unit with an utter disdain for patents to an Art Unit where you at least have a chance. Thus, until such time as the Patent Office decides to solve the problem of recalcitrant patent examiners tools like LexisNexis PathWaysTM, which allow applicants to know which art units a patent application is likely to be assigned to even before it is filed, are absolutely essential.

Writing patent applications so you won’t be sucked into the black hole that is Art Unit 3689 can help, but let’s face it, the statistics for all E-commerce Art Units are pitiful and getting worse even a full two years post-Alice. To call this depressing is an understatement. How is it possible that a patent examiner, who is supposed to be hired to issue patents, can actually keep their job when they refuse to issue patents?

UPDATE:

For follow-up articles on this topic please see:

____________

[1] My previous article reported allowance rates based on all allowances since 2000. Focusing on a post Alice time frame of all of 2015 and 2016 to date reveals starkly different numbers that show the magnitude of the problem facing applicants innovating in the e-commerce space.

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 108 Comments comments.

  1. step back July 14, 2016 8:47 am

    Gene,

    Now you earn the title of investigative reporter.
    Congratulations.

    This is something that an appropriate “oversight” committee of the US Congress should immediately convene hearings on!

  2. Gene Quinn July 14, 2016 9:24 am

    Thanks Step.

    I agree. The Commerce Department Inspector General should open an investigation immediately, and Government Oversight should hold hearings. Patent examiners keeping their job without any consequence when they refuse to issue patents is a scandal.

    -Gene

  3. John Darling July 14, 2016 9:39 am

    “Of the three patents that were issued one was issued because the Patent Trial and Appeal Board overruled the examiner’s final rejection and ordered the patent issued.”

    The PTAB has no authority to “order” an examiner, or anybody else at the PTO to issue a patent.

    Gene, again, these are not “recalcitrant” examiners. They are examiners who are simply following orders from the unaccountable GS-15’s (again, QAS’s, SPE’s, “subject matter experts,” “business practice specialists,” “appeal specialists” (who has zero understanding of appeals), etc.) The GS-15’s take their marching orders from the TC Director(s) who take their marching orders from the various associate commissioners (or whatever their titles are). The reason the PTO doesn’t “do something” about these “recalcitrant examiners” is because those examiners are doing exactly what they are told to do. By the PTO.

  4. Paul Morinville July 14, 2016 10:16 am

    Googled, bamboozled and misled.

  5. Gene Quinn July 14, 2016 10:31 am

    John-

    I don’t agree with you that the PTAB has no authority to order a patent to issue. Perhaps it is a semantic disagreement, or perhaps it is an issue that needs a lot more discussion. Certainly, if the PTAB were only to reverse the examiner on dependent claims the application would need to go back to the examiner and some examiners do continue to give applicants a hard time despite the PTAB ruling. At times when attorneys have contacted me to tell me they were dealing with what they believed to be a recalcitrant examiner I recommended appealing and amending the appealed claims into independent format so any PTAB decision would be dispositive.

    I agree with the first half of what you say about QAS and SPEs exerting their authority over the examiners under their supervision. I also think it is rather undeniable that some within the political wing of the Patent Office has made speeches that have expressed the Google, Cisco, JC Penney view of the world with respect to software patents. I do think we need to be careful when we talk about these examiners doing what they are told to do by the PTO. There are some within the political wing of the Patent Office (based on my observation) and most (if not nearly all) within the career ranks of senior management that just want examiners to do what they are supposed to do, which is allow or deny based only on the facts of the applications in front of them. That is why when you read what the guidance to examiners it seems rather sensible and middle of the road.

    Having said all of this, there is a really problem with certain Art Units. Art Unit 3689 has been a problem for many years. There is unfortunately probably little the Patent Office can do given the HR restrictions on the federal government, which makes it virtually impossible to fire a federal employee. Remember, Examiner A who falsified 700 hours of time was not fired — he quit. Short of reassigning recalcitrant patent examiners to undesirable jobs so they will quit I don’t know what can be done in any short order. Over the longer term these examiners should receive negative evaluations, no promotion, no bonus and should be reassigned to other Art Units at a minimum.

    -Gene

  6. Curious July 14, 2016 10:32 am

    The reason the PTO doesn’t “do something” about these “recalcitrant examiners” is because those examiners are doing exactly what they are told to do. By the PTO.
    Bingo. Hence my suggestion, found in Gene’s other article, that every examiner in 3689 be fired as well as every supervisor that supervises them — all the way up the chain of command. The Examiners are not going off the ranch — they are doing exactly what they have been told to do. They were just following orders.

    Gene — just a minor quibble. I think you need to clarify what you mean by “allowance rate.” When I think of “allowance rate,” what comes to mind is that the percent of patent applications that will ultimately be allowed. What you presented is a ratio of allowances to total applications disposed (i.e., applications allowed + applications abandoned).

    Just a suggestion, but a fun chart would be the following:
    Vertical Axis: Allowance % (as you’ve calculated it)
    Horizontal Axis: Year (going back about 5 to 10 years)
    Lines for 3600 (just business methods), 2100, 2400, 2600 (i.e., the other “computer arts” tech centers).

  7. Anon July 14, 2016 10:42 am

    Reading this brings a flash of memory back to me of then as not yet confirmed leader of the USPTO Miss Lee sitting in front of members of Congress after the Alice decision and “artfully dodging” a direct question as to whether Miss Lee would make sure that innovations in the form of software would still receive patent protection.

    To John’s point, any wayward GS-15 is not – and cannot be – alone and acting in a vacuum.

    At some point by the Truman-esque phrase of “the buck stops here” must come into play [and yes, that phrase is meant on several different levels].

  8. Curious July 14, 2016 10:44 am

    I don’t agree with you that the PTAB has no authority to order a patent to issue.
    JD is correct. The Examiner can always reopen prosecution (see MPEP 1214.04). I used to tell clients that it happens maybe 1 in 20 times after a reversal. However, in 3600 (business methods) over the last year or so, it has been 100% of the time after a reversal (or affirmance-in-part). I’ve read hundreds and hundreds of Decisions on Appeal — I’ve never seen the Board “order” an examiner to issue a patent.

    There is unfortunately probably little the Patent Office can do given the HR restrictions on the federal government, which makes it virtually impossible to fire a federal employee.
    As you subsequently noted in your response, employees can be reassigned. If there are certain SPEs/QAS that are gumming up the works, they can be transferred to positions where their influenced can be muted. There are always ways for large organizations to remove people from positions without firing them. Given (from my personal experience) that the problem in 3600 has been going on for at least a decade , there must be some people in power at the USPTO that are perfectly happy with the outcomes you detailed in your article.

  9. John Darling July 14, 2016 10:52 am

    “I don’t agree with you that the PTAB has no authority to order a patent to issue.”

    I understand you disagree, but you’re wrong. The PTAB has no authority to “order” an examiner to allow an application. None. There’s nothing in 35 USC, 37 CFR, or any binding precedent that gives the PTAB, or its predecessor the BPAI, that authority. None.

    “Perhaps it is a semantic disagreement, or perhaps it is an issue that needs a lot more discussion.”

    It’s not a semantic disagreement. And it doesn’t need a lot more discussion. It doesn’t require any discussion. The PTAB has no authority to “order” an examiner to allow an application or issue a patent. None.

    “Certainly, if the PTAB were only to reverse the examiner on dependent claims the application would need to go back to the examiner and some examiners do continue to give applicants a hard time despite the PTAB ruling. At times when attorneys have contacted me to tell me they were dealing with what they believed to be a recalcitrant examiner I recommended appealing and amending the appealed claims into independent format so any PTAB decision would be dispositive.”

    PTAB decisions reversing the examiner are not dispositive. Examiners can, and do, and have, re-opened prosecution after being reversed on every single ground of rejection that was decided. It’s happened to me. And there’s nothing you can do about it. Except start all over again.

    “Having said all of this, there is a really problem with certain Art Units.”

    While they may be a problem for applicants, they are not a problem for the PTO. Why? Again, because the examiners in those art units are doing exactly what they are told to do. Do you really think the PTO doesn’t know what’s going on in those art units? Of course they do. Because they are calling the shots in those art units.

    “There is unfortunately probably little the Patent Office can do given the HR restrictions on the federal government, which makes it virtually impossible to fire a federal employee.”

    They’re not going to fire examiners for doing exactly what they are told to do.

    “Short of reassigning recalcitrant patent examiners to undesirable jobs so they will quit I don’t know what can be done in any short order. Over the longer term these examiners should receive negative evaluations, no promotion, no bonus and should be reassigned to other Art Units at a minimum.”

    The examiners in those units likely volunteered to be in those units. Because they get learning curves for their production requirements. And all they have to do is write exactly what their SPE/QAS/primary/etc. tells them to write to reject the claims. So they’re certainly not going to be reassigned. Or given negative evaluations. Or fired. In fact, they’re all most likely getting “outstanding” ratings in both their production and “quality” elements of their PAP. And bonuses. And promotions.

    What is going on in those art units is exactly what the PTO wants going on in those art units. The PTO is very aware of what is going on because they are calling the shots.

  10. Reason July 14, 2016 11:25 am

    When you argue based on raw percentages, you’re making the same mistake that people make when they argue against “bad” patents. The arguement is based on your feelings, rather than 112, 103, ect. A 5% allowance rate tells us nothing.

    The argument that needs to be made is based on relative reversal rates at PTAB. Can you show that 3689 is reversed significantly more than 3627 or the tech area as a whole? How does e-commerce fair at PTAB relative to 2600? Your posts have hinted at this subject, but I haven’t seen a comprehensive set of data.

  11. Gene Quinn July 14, 2016 11:25 am

    John-

    I was trying to be respectful and give you the benefit of the doubt, but if one of us is wrong it is you, not me. Obviously, the PTAB has authority over examiners and they overrule examiners and patents are issued. To suggest that the PTAB cannot overrule an examiner and the examiner is bound by the Board ruling is ridiculous. When the Board makes a ruling it is binding, that is the way the system works. That you have allowed examiners to do things that they are not allowed to do and haven’t taken action to stop that doesn’t mean that examiners are not bound by the Board. To suggest, as you are, that the Board is merely advisory on the examiner is utterly ridiculous.

    I notice in your comment you did not respond to what I wrote about the difference between the Board overruling an examiner on a dependent claim and the Board overruling an examiner on an independent claim. Examiners have no authority to reopen prosecution when they have been overruled on an independent claim. So you can say I’m wrong all you want, but I’m not wrong.

    Yes, I’ve heard that patent examiners have gotten cases back from the Board and done a new search. Again, patent examiners have no authority to do that. The MPEP specifically says that examiners do not have the authority to do that. If you allowed the examiner do to that it sounds like that is your problem. Too many patent attorneys allow examiners to get away with doing things they clearly do not have authority to do because they want to preserve some non-existent relationship.

    What is your evidence that Patent Office management has instructed patent examiners not to issue patents? If you have evidence please put it out here for everyone to see. If you are speculating then please make clear that you are speculating without any evidence.

    -Gene

  12. Curious July 14, 2016 11:28 am

    As I commented on in response to Gene’s previous article, with 8200 examiners and about 300K patents issued in 2015, the average examiner issues about 36 patents/year (although this number should be higher for reasons I already discussed).

    The USPTO’s website lists 27 examiners for 3622. With 42 patents issued in 2015, this means that the average examiner in 3622 issues 1.5 patents/year. 17 examiners are listed for 3689. With 12 patents listed as being issued in 2015, this means that many of those examiners in 3689 did not issue a patent in 2015. In fact, my research has shown that some of the listed examiner in 3689 have never issued a patent. The art unit with the highest rate of issuance is 3627, which apparently has 15 examiners in the art unit. Thus, each examiner, on average, issued 15 patents/year in 2015. However, that is still far below the 36 patents/year that the average USPTO examiner issued in 2015.

  13. Gene Quinn July 14, 2016 11:46 am

    Curious-

    1214.04 talks about a reversal that does not place the case in condition for allowance. If the examiner is reversed on only independent claims then the case is in condition for allowance.

    1214.04 also says that examiners are not supposed to do a new search. I’ve seen cases where after an appeal examiners do a new search in order to reopen prosecution. That is not allowed. The attorneys I’ve talked to don’t want to argue that a new search is not allowed, they don’t want to go to the Ombudsman or call the Commissioner’s Office, or do anything to get relief from the examiner doing something that procedurally they are not allowed to do. The reason I hear is because they don’t want to upset the examiner or the Art Unit or the SPE out of some desire to maintain a relationship. Of course, there is no relationship. In these Art Units there is nothing but an extraordinarily hostile relationship between examiners and applicants. There is no relationship to preserve when an examiner has been overruled by the Board and does what they are not supposed to do in order to continue to find ways to say no patent for you.

    I’d love to hear if anyone has ever seen a TC Director authorize the reopening of prosecution after a complete reversal of independent claims only. I don’t think that has ever happened. If independent claims are all that are appealed and independent claims are all that are reversed there is nothing left for the examiner (who cannot do a new search) to do except to issue a notice of allowance.

    So does the PTAB order a patent issued? No. Can you as the applicant or representative appeal and have the PTAB decision be final and dispositive? Yes.

  14. Reason July 14, 2016 11:48 am

    Curious,

    At the minimum, you analysis must be scaled for balanced disposal crediting. No one receives more time than e-commerce, and many receive much less.

  15. John Darling July 14, 2016 11:50 am

    You are wrong. Examiners are not “bound by the Board ruling” as you state. If the Board reverses every ground of rejection, when the case is sent back to the examiner the examiner can make all new grounds of rejection (obviously they cannot re-enter the ground(s) that were reversed). There is nothing you can do to prevent that. Nothing.

    “I notice in your comment you did not respond to what I wrote about the difference between the Board overruling an examiner on a dependent claim and the Board overruling an examiner on an independent claim.”

    That’s because there is no difference. Examiners are not “bound” by the PTAB’s ruling. If they get approval of their TC Director to re-open prosecution after a PTAB decision they can enter any ground(s) of rejection they want (as long as it’s not the same as the rejections that were reversed, i.e. as long as it’s not res judicata).

    “Examiners have no authority to reopen prosecution when they have been overruled on an independent claim. So you can say I’m wrong all you want, but I’m not wrong.”

    They need the approval of the TC Director. But that’s not hard to get.

    I notice that you didn’t provide any authority from 35 USC or 37 CFR or binding precedent that supports your contention that examiners are “bound” to issue patents in response to PTAB decisions. I would suggest to you that’s because there is none.

    “Yes, I’ve heard that patent examiners have gotten cases back from the Board and done a new search. Again, patent examiners have no authority to do that. The MPEP specifically says that examiners do not have the authority to do that.”

    Right. Because examiners, and SPE’s, and TC Directors, always follow the MPEP. And if you believe that, please give me a call, because I have some lovely beach front property I’d like to sell you. In Nebraska.

    “If you allowed the examiner do to that it sounds like that is your problem. Too many patent attorneys allow examiners to get away with doing things they clearly do not have authority to do because they want to preserve some non-existent relationship.”

    I didn’t “allow” the examiner to do it. Nor did I “allow” the examiner to “get away” with it. My colleagues and I did every thing we could to prevent the examiner from doing it. And we certainly didn’t do either of those things to “preserve some non-existent relationship.” For you to suggest that I would do that is insulting.

    Feel free to send me an e-mail and I will tell you the serial number of the case.

    “What is your evidence that Patent Office management has instructed patent examiners not to issue patents?”

    Uhm, how about the fact that those AU’s have had those allowance rates for years and years and years? Do you seriously believe that PTO management is completely unaware of the allowance rates in those AU’s? Why do you think that particular “appeal specialist” was put in place in that TC? Ask around. You might find some of the answers to the questions you’ve got.

  16. Appearance of ... July 14, 2016 11:54 am

    And this is why I use this alias on ipwatchdog! Clearly, this is policy from the top. In effect a secret section of the MPEP.

  17. Curious July 14, 2016 11:58 am

    Examiners have no authority to reopen prosecution when they have been overruled on an independent claim.
    Under M.P.E.P. 1214.04 (Examiner Reversed):
    If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC Director’s approval is placed on the action reopening prosecution.

    You are correct in that the Examiners have no authority (by themselves) to reopen, but that doesn’t mean they cannot get authority.

    Despite this same sections admonition that “The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references,” I’ve seen file wrappers that clearly indicated that the examiner performed another search. When I pointed this out to the examiner (who happened to be in 3600), their response was “of course I can reopen prosecution if I find better prior art.”

    By way of example, the following applications had Board (complete) reversals dated from 2015-2016 in art unit 3689. The data is laid out by application number, date of decision on appeal, and examiner’s response, and current status of application.
    12119593 (03/26/15) — Non-final OA issued 9/4/15 (Alice 101 rejection) — abandoned
    10382276 (04/27/15) — Non-final OA issued 8/10/15 (Alice 101 rejection and art reject) — under final rejection
    12128098 (02/11/16) — Non-final OA issued 05/19/16 (Alice 101 rejection) — response not filed
    13560232 (03/01/16) — Notice of Allowance (a marginal business method application)
    12416078 (03/11/16) — Non-final OA issued 06/17/16 (Alice 101 rejection) — response not filed
    12429881 (03/28/16) — Non-final OA issued 06/30/16 (Alice 101 rejection) — response not filed

    In browsing 2014 decisions, I found the same thing happening. Paul Morinville can vouch for at least one of those applications as it happened to him in 2014.

  18. John Darling July 14, 2016 12:00 pm

    “1214.04 also says that examiners are not supposed to do a new search. I’ve seen cases where after an appeal examiners do a new search in order to reopen prosecution. That is not allowed. The attorneys I’ve talked to don’t want to argue that a new search is not allowed, they don’t want to go to the Ombudsman or call the Commissioner’s Office, or do anything to get relief from the examiner doing something that procedurally they are not allowed to do. The reason I hear is because they don’t want to upset the examiner or the Art Unit or the SPE out of some desire to maintain a relationship.”

    No, it’s because there is no remedy. If the examiner is reversed on every ground and re-opens, you cannot respond to the new OA by simply saying that the examiner was not supposed to do that. The rejections are on the record. And you have to respond to them.

    But as you seem to think that there’s something that could be done, please enlighten us all as to what you would do. And then I’ll tell you why what you would do won’t work.

    “I’d love to hear if anyone has ever seen a TC Director authorize the reopening of prosecution after a complete reversal of independent claims only. I don’t think that has ever happened. If independent claims are all that are appealed and independent claims are all that are reversed there is nothing left for the examiner (who cannot do a new search) to do except to issue a notice of allowance.”

    Send me an e-mail. I’ll send you the serial number of a case in which it happened to me. And there are one or two more where I saw it happen to others. I’ll have to troll through my notes, but I’ll find it/them.

    “So does the PTAB order a patent issued? No.”

    That’s what I’ve been telling you.

    ” Can you as the applicant or representative appeal and have the PTAB decision be final and dispositive? Yes.”

    Only if the examiner, or the person, or people, who are telling the examiner what to do what it to be “dispositive” and issue the application. If they don’t, then they’ll find a reason to re-open. And there’s nothing you, yes even you Gene, can do about it. Nothing.

  19. Curious July 14, 2016 12:08 pm

    I’d love to hear if anyone has ever seen a TC Director authorize the reopening of prosecution after a complete reversal of independent claims only.
    See above. These examples were complete reversals — I omitted anything with affirmances-in-part. I’ve seen it happen probably a dozen times over the years. In 3600, almost 100% of the time over the last couple of years.

    At the minimum, you analysis must be scaled for balanced disposal crediting. No one receives more time than e-commerce, and many receive much less
    No sure why. From my experience, the highest percentage of Office Actions with the most thread-bare analysis comes out of the e-commerce art units. Also, I’m not finding a greater percentage of Non-Patent Literature (NPL) being cited, so I doubt think they are doing more exhaustive searches.

    Life must be easy street in those art units. You never have to justify allowing an application. Any rejection is a “good” rejection. If you lose at the Board, you just keep reopening. All that and increased time per disposal? If it wasn’t for those danm attorneys complaining about their applications, it would be the perfect job. No wonder why these examiners don’t want to rock the boat and do their job by issuing legitimate patents.

    BTW, and let me reiterate this point, this has been going on in 3600 (business methods) for at least a decade.

  20. John Darling July 14, 2016 12:08 pm

    Deleting my posts, huh? Coward.

  21. John Darling July 14, 2016 12:10 pm

    “BTW, and let me reiterate this point, this has been going on in 3600 (business methods) for at least a decade.”

    Right. And according to Gene, PTO management is completely unaware of it.

    “Why don’t they do something?!”

    Too funny.

  22. Gene Quinn July 14, 2016 1:10 pm

    Curious-

    Examiners are not supposed to do a new search. Do examiners do new searches? Yes. Examiners that refuse to issue patents do many things that they are not allowed to do. In those cases where examiners clearly did a new search did you contact the Ombudsman? Did you contact the Commissioner for Patents?

    Thank you for the list you’ve provided. I’ve checked one out so far and see clearly that the examiner was reversed, that the examiner was reversed on independent claims, that the examiner did a new search, and that there is no record of the TC Director authorizing the reopening of prosecution. You will be reading more about this topic soon.

    -Gene

  23. Gene Quinn July 14, 2016 1:15 pm

    Actually, I do see that the TC Director for 3600 — Greg Vidovich — did authorize the reopening of the case because he believed the claims were directed to non-eligible subject matter.

  24. Gene Quinn July 14, 2016 1:31 pm

    John (and everyone)

    My apologies. Things are far worse than I realized. There is an awful lot going on in TC 3600 that is unexplainable and utterly sickening really. Examiners are NOT supposed to do new searches after a reversal by the Board, but that is happening it seems as a matter of routine practice. Cases are being reopened and new grounds of rejection are being given. It seems in TC 3600 a Board decision is, in fact, nothing more than advisory at best.

    More to follow in the coming days.

    -Gene

  25. Patent Investor July 14, 2016 1:45 pm

    Gene,

    Can you please send an autographed copy of these stories to Justice Breyer?

  26. staff July 14, 2016 1:51 pm

    ‘Given the devastation brought on the patent community by certain patent examiners and the indifference of the Patent Office’

    Inventors wish it was only PTO ‘indifference’ we had to deal with. Many view PTO management as an enemy who is openly hostile against us -depriving us of our property rights and destroying our businesses. Are agents of large multinational invention thieves thieves running the Patent Office? Inventors will tell you they are and in this case perception alone is enough to cause a crisis.

    But the problem is far worse for inventors and small entities than other applicants. If we have to fight to GET our patents, we go out of business. Big companies are far better positioned for a lengthy and expensive fight. That’s in part why small entity applications and issued patents have plummeted and appear to be at an all time low in the single digits, whereas historically small entity patents have generally ran about 50-60% of issued, but have been as high as 80% (see our position statement).

    The other part is post issue reviews. The same rule applies here. If we have to fight to KEEP our patents, we go out of business. The patent system is now far more stacked against us. There’s a reason why America’s inventors are no longer inventing and why America now can’t find a job. Small entities create the lion’s share of new jobs. The patent system is in crisis and so is America.

    For our position and the changes we advocate to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

  27. Gene Quinn July 14, 2016 3:10 pm

    John Darling-

    First, I didn’t delete your posts. Your posts went to spam.

    Second, if you think I’m a coward you obviously don’t know me.

    Third, I never said that PTO management isn’t aware of what is going on. In fact, I’ve written that despite the fact that they are aware of what is going on they do nothing about it. So if you are going to keep the conversation honest (something you obviously are not interested in) then try and keep to the facts and stop lying.

    Fourth, obviously you are not familiar with the MANY career managers at the Office who want to do something. Obviously, you are not privy to the examiners who contact me and are upset by the fact that certain SPEs and QAS are running wild over the Office and applicants.

    Fifth, I never said respond to an Office Action by pointing out that the examiner doesn’t have the authority to do a new search. What I said is go over the examiner’s head. If you don’t have the guts to do that and go to the Ombudsman or the Commissioner’s Office then you really shouldn’t be representing clients in this space.

    Sixth, as far as having to respond to an Examiner, if the examiner is told to withdraw the Office Action you don’t have to respond. Why you choose to ignore the reality that you can get relief by going over the examiner, SPE and TC Director is beyond me, but hey, if you find it useful to pretend that the Ombudsman or Commissioner has no authority over the examiner that is up to you. Those of us who know differently are not going to be persuaded by your fear to use behind the scenes process, which DOES work.

    Seventh, the fact that you refuse to use all the tools available to you to get an examiner to follow the rules and not do things they have no authority to do does NOT mean that I would be so impotent. You seem to allow yourself to get bullied and then want to pretend that there is nothing you can do about it. I keep telling you there is something you can do about it, but you don’t believe me. Of course, you will never try what I suggest because everyone is afraid to contact the Commissioner to let him know when an examiner is doing something that the rules clearly prohibit.

    Finally, if you are not going to contact the Commissioner to let him know that examiners are doing something the rules clearly prohibit then stop complaining like a petulant child. It is nothing but juvenile to refuse to go to the Commissioner with what is going on and then malign the Commissioner and other career officials because they refuse to do anything. Yes, they know the Art Units that have ridiculously low allowance rates but if unlawful activity is not brought to their attention by applicants that is on the applicants. The Commissioner and his Office can’t be expected to know what happens in every single case in an Office made up of 8100 patent examiners.

    -Gene

  28. Curious July 14, 2016 3:11 pm

    In those cases where examiners clearly did a new search did you contact the Ombudsman? Did you contact the Commissioner for Patents?
    No. If I contacted the Ombudsman or Commissioner regarding everything Examiners did wrong with the applications I have worked on, they would be forced to give me my own office at the USPTO along with a phone number and mailstop to save everyone’s time. Once the search has been performed and the prior art cited in a rejection, it is water under the bridge at that point.

    Obviously, the head of the Tech Center signed off on these applications being reopened. Well, I’ve always been dubious about that. Their “electronic” signature is on the document, but putting anyone’s electronic signature on a document is effortless. Regardless, the practice of reopening prosecution (based upon prior art and/or 101 rejections) has long been sanctioned in 3600.

    If you want to find more applications, the easiest way I’ve found is the following. First, go to the USPTO PTAB search page. https://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp

    Next, in the “Search Document Text” box, the following search terms: “reversed” and “[whatever art unit]” You’ll get a list of applications. Instead of individually opening up the documents, it is easier to take the application numbers and put them in PAIR. From there, you can easily check the file history to see whether the Decision was reversed, affirmed-in-part, or affirmed. If it is listed as “reversed,” then all the independent claims were reversed. You’ll also be able to see if the examiner reopened.

    Things are far worse than I realized.
    That’s just the way it is in 3600. Just when you think they could stoop no lower, you find out that they have.

  29. Anon July 14, 2016 3:27 pm

    Gene,

    It must have been about five years ago or so a senior attorney I was working with ran into this exact same problem (not in the subject art units).

    The examiner literally laughed at counsel when counsel protested about the new search.

    The examiner then proceeded to obtain approval for the search – months after the fact.

    The person giving approval simply stated “the examiner found better art,” and refused to do anything.

    In that case the art was in fact better – it was overcome, but it was better art.

    The reason why I share this is that this attitude of “what the PTAB (and prior) says is merely optional” extends through many art units.

    There very much is a star-chamber effect going on within the Office. Was not the SAWS debacle a clear presentation of that fact?

  30. Gene Quinn July 14, 2016 3:38 pm

    Anon-

    The problem here is the new search being done is gratuitous. The rejections are Alice rejections. They do not require a new search and there is no new prior art. The Board reviewed the claims and has the authority to institute a new ground of rejection. Presumably the PTAB is familiar with Alice and with patent eligibility. They did not issue their own Alice rejections and saw no patent eligibility issues even worth mentioning. The examiner is allowed to go to the TC Director if they know of new art without needing to do a new search. Here the examiner and presumably the TC Director did not know of new art, they didn’t want to issue the patent because of a new ground of rejection. This type of harassment is inappropriate and not in compliance with the rules.

    Curious-

    I understand that you can’t run to the Ombudsman or Commissioner every time, but when what the examiner is doing is something that is not allowed procedurally, as in the cases you cited earlier, I can’t see a more appropriate situation.

    I do agree with you though. Just when you think TC 3600 can’t stoop any lower they set the bar even lower.

    -Gene

  31. John Darling July 14, 2016 3:45 pm

    “I never said that PTO management isn’t aware of what is going on. In fact, I’ve written that despite the fact that they are aware of what is going on they do nothing about it. So if you are going to keep the conversation honest (something you obviously are not interested in) then try and keep to the facts and stop lying.”

    And I’ve explained to you, about 3 or 4 times now, that the reason “they do nothing about it” is because “what is going on” is exactly what they want to be going on. At some point you’re just going to have to understand that that is the answer. Otherwise you’re going to spend the next 5, 10, 15 years asking, “Why doesn’t the PTO do something about this?!”

    “…obviously you are not familiar with the MANY career managers at the Office who want to do something. Obviously, you are not privy to the examiners who contact me and are upset by the fact that certain SPEs and QAS are running wild over the Office and applicants.”

    I have many friends at the PTO. I worked there for 9 years. Still play golf with several of my friends from the PTO. They are in all areas of the PTO, and they range from primary examiners hotelling to APJ’s on the Board to folks in OPLA. I’m well aware of what goes on there. As, if not more, aware than you.

    “…I never said respond to an Office Action by pointing out that the examiner doesn’t have the authority to do a new search. What I said is go over the examiner’s head. If you don’t have the guts to do that and go to the Ombudsman or the Commissioner’s Office then you really shouldn’t be representing clients in this space.”

    In the application I referred to, again just send me an email and I’ll send you the serial number, we wrote a letter to the Commissioner. Had it signed by the president of the company. Not a small company by any means. And the response we got from Mr. Godici was along the lines of, “Yeah, well we agree that the examiner shouldn’t have done that, and the TC Director probably shouldn’t have approved the examiner doing that, but it was done and you have to respond.” So yeah, I have the guts to “go over the examiner’s head.” There’s a whole lot of examiners with my footprint on their skulls. And I happen to be representing one of the biggest applicants at the PTO. In case you hadn’t noticed.

    “…as far as having to respond to an Examiner, if the examiner is told to withdraw the Office Action you don’t have to respond. Why you choose to ignore the reality that you can get relief by going over the examiner, SPE and TC Director is beyond me, but hey, if you find it useful to pretend that the Ombudsman or Commissioner has no authority over the examiner that is up to you. Those of us who know differently are not going to be persuaded by your fear to use behind the scenes process, which DOES work.”

    You’re going to use a “behind the scenes process” to get an OA withdrawn? An OA that was issued after a Board decision and is entered into the public record (i.e. PAIR)? Right. And tell us all how many times you’ve had issued OA’s of any kind withdrawn with one of your “behind the scenes processes.” Any serial numbers of these miraculous OA withdrawals you’ve achieved with your “behind the scenes” processes would be fascinating to review.

    “…the fact that you refuse to use all the tools available to you to get an examiner to follow the rules and not do things they have no authority to do does NOT mean that I would be so impotent. You seem to allow yourself to get bullied and then want to pretend that there is nothing you can do about it. I keep telling you there is something you can do about it, but you don’t believe me. Of course, you will never try what I suggest because everyone is afraid to contact the Commissioner to let him know when an examiner is doing something that the rules clearly prohibit.”

    I’ve never been bullied by an examiner, or failed to use any legal means to achieve my clients’ ends. Ever. And I’ve called the ombudsman, TC Directors, and SPE’s plenty. Left my footprints on plenty of those skulls too.

    But for those who are too fearful to use these awesome “behind the scenes” processes to get OA’s withdrawn, please enlighten all of us as to what legal procedures can be used to get an examiner to withdraw an OA. Please cite anything from 35 USC or 37 CFR that an applicant could use to achieve that result. Any examples you can provide would be fantastic.

    “…if you are not going to contact the Commissioner to let him know that examiners are doing something the rules clearly prohibit then stop complaining like a petulant child.”

    You’re the petulant child in this discussion, Gene. You claimed that the PTAB has the “authority” to “order” examiners to issue patents, and I corrected you. Then you attacked me. Talk about petulant.

    Feel free to review 35 USC 6(b) and let me know where it says that the PTAB has “authority” over examiners and can “order” them to issue patents. And I’m still waiting for you to cite anything from 35 USC or 37 CFR or any binding precedent that even remotely suggests that the PTAB has “authority” over examiners to “order” them to issue patents. I’m ready to review anything you’d care to cite.

    “It is nothing but juvenile to refuse to go to the Commissioner with what is going on and then malign the Commissioner and other career officials because they refuse to do anything.”

    I’m not “maligning” anybody, Gene. You are. I’ve told you that those AU’s have the allowance rates they have because that’s what the PTO wants. How is that “maligning” them? Even you seem to understand that those GS-15’s were appointed to those TC’s and those AU’s for a reason. You just refuse to believe that the reason is: to keep the allowance rates down. You’re still writing articles about “Why isn’t the PTO doing anything about these recalcitrant examiners?!”

    Talk about juvenile.

    “Yes, they know the Art Units that have ridiculously low allowance rates but if unlawful activity is not brought to their attention by applicants that is on the applicants.”

    It’s not unlawful. That’s what I’ve been telling you all day. It’s completely lawful. The MPEP is not the law. If the TC Director approves re-opening after a total reversal by the PTAB, then the OA is “lawfully” issued. And there’s no legal process, or “behind the scenes” process, that’s going to get that OA withdrawn. What do you not understand about that?

    “The Commissioner and his Office can’t be expected to know what happens in every single case in an Office made up of 8100 patent examiners.”

    No, he can’t. And when you send him a letter, or call him on the phone, and tell him your heart breaking story about how an examiner got totally reversed by the PTAB, and instead of allowing the case, re-opened and sent you a new OA, you’re going to hear exactly what I heard when it happened to me and I complained: “That’s too bad. Your response is due three months from the date of the Office Action. If you want to keep the application pending, file a response.”

    If you think you’re going to get any different result than that, you’re simply delusional.

  32. Jim July 14, 2016 3:52 pm

    I think the problem lies in the fact that examiners aren’t lawyers. Look at the trademark side and you see a smooth operation. Here on the patent side you have examiners straight out of college who barely speak English working from home in their pajamas … Examining patents that affect our entire economy. What could go wrong!

  33. step back July 14, 2016 4:10 pm

    I can’t see a more appropriate situation [to run to Ombudsman or Commissioner for

    Actually Gene, …
    Technically one is supposed to run to the Petitions Office to get relief from non-appeallable actions of the examiner. But good luck with that one. If you want to open another Pandora’s box, talk about the Petitions Office. Better yet, don’t. You really don’t want to point the spotlight on that infestation of unspeakable insects. It will flood this website with horror stories.

  34. Gene Quinn July 14, 2016 4:37 pm

    John-

    You arrogantly said: “And I’ve explained to you, about 3 or 4 times now, that the reason “they do nothing about it” is because “what is going on” is exactly what they want to be going on.”

    RESPONSE: You have “explained” nothing. You have concluded a lot. You have provided no evidence. Note, your naked conclusions no matter how arrogantly you say them are NOT evidence.

    You said: “I have many friends at the PTO. I worked there for 9 years. Still play golf with several of my friends from the PTO. They are in all areas of the PTO, and they range from primary examiners hotelling to APJ’s on the Board to folks in OPLA.”

    RESPONSE: And I too have many friends at the PTO. Like you, I have friends who are examiners and former examiners, I know some who are on the Board and who are formerly on the Board. I would say I have friends who are in OPLA and who are formerly in OPLA. I would also say I have friends at various levels of senior management well. So if it makes you feel better to believe you are more connected than I am at the USPTO then please go right ahead and foolishly mislead yourself into believing that nonsense.

    You said: “And I’m still waiting for you to cite anything from 35 USC or 37 CFR or any binding precedent that even remotely suggests that the PTAB has “authority” over examiners to “order” them to issue patents.”

    RESPONSE: The relevant rules seem to be:

    37 CFR 41.50 (a)(1) says: “Affirmance and reversal. The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.”

    37 CFR 41.50 (b) says: “New ground of rejection. Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, and designate such a statement as a new ground of rejection of the claim.”

    37 CFR 41.54 says: “After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant’s right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte reexamination proceeding may require, to carry into effect the decision.”

    37 CFR 1.198 says: “When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.”

    MPEPE 1214.04 says “If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection.”

    There is no authority under the rules for TC Directors to reopen prosecution. Rule 198 give the Director (not the TC Director) the authority to reopen prosecution to overrule the Board. Perhaps that makes sense given that the Director is a statutory member of the Board. A TC Director, however, is not a statutory member of the Board. So when a TC Director authorizes the reopening of prosecution it may be consisted with the MPEP, but as you point out the MPEP is not binding. The law and regulations are binding.

    So if you choose to allow TC Directors to reopen prosecution without doing anything about it that is between you and your client. Obviously, when a patent examiner and a TC Director are doing something for which there is no authority that would be a situation where an advocate should speak up.

    -Gene

  35. John Darling July 14, 2016 5:14 pm

    Wow, you’re flailing. Badly. I don’t see anything in what you cited that could even be remotely interpreted as suggesting that the PTAB has “authority” over examiners and can “order” them to issue patents. It’s not there. In any of that which you cited. Feel free to try again though.

    “There is no authority under the rules for TC Directors to reopen prosecution.”

    You can’t possibly be serious with that. Can you?

    35 USC 3 (3) OTHER OFFICERS AND EMPLOYEES.— The Director shall—
    (A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and
    (B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.

    This is pretty basic stuff, Gene. You really should know it.

    You think the Director of the PTO can’t delegate the authority to re-open prosecution after a PTAB decision to a TC Director? If so, you’re more clueless than I thought.

    Still waiting to hear about any process, legal or one of these awesome “behind the scenes” deals that you’re so sure would work, that would get a lawfully issued OA withdrawn and the applicants obligation to respond magically removed. In the event it happens to one of your clients, and I hope it doesn’t, do feel free to tell them, “Hey, don’t sweat it, I’ll make a phone call and get this Office Action withdrawn.” Please let us all know how that works out for you.

    And let’s return to this nonsense of yours:

    “Fourth, obviously you are not familiar with the MANY career managers at the Office who want to do something. Obviously, you are not privy to the examiners who contact me and are upset by the fact that certain SPEs and QAS are running wild over the Office and applicants.”

    No, I’m not “privy” to the examiners who contact you. Do you really think you’re the only one having off the record discussions with examiners about the goings on at the PTO? You sure are full of yourself.

    But you can drop the whole “You obviously aren’t privy to all of the insider gossip that I know about” schtick with me. It’s not fooling me. Or anybody else.

    “RESPONSE: You have ‘explained’ nothing. You have concluded a lot. You have provided no evidence. Note, your naked conclusions no matter how arrogantly you say them are NOT evidence.”

    You’ve had the evidence all along. It’s the allowance rates of the AU’s in question. Unfortunately, you’ve concluded, wrongly, that the allowance rates are low because of “recalcitrant examiners” who are “unlawfully” rejecting patent applications. And you keep writing articles asking “Why doesn’t the PTO do something about this?!” My guess is that you’ll be writing these articles for another 5, 10, maybe 15 years. At some point you’re going to have to consider the possibility that your hypothesis (“It’s these darned recalcitrant examiners!!!!”) is wrong. But seeing as you’ve been writing these articles for several years now, maybe you won’t.

    Finally, let’s return to this supreme bit of nonsense from you:

    “Sixth, as far as having to respond to an Examiner, if the examiner is told to withdraw the Office Action you don’t have to respond. Why you choose to ignore the reality that you can get relief by going over the examiner, SPE and TC Director is beyond me, but hey, if you find it useful to pretend that the Ombudsman or Commissioner has no authority over the examiner that is up to you. Those of us who know differently are not going to be persuaded by your fear to use behind the scenes process, which DOES work.”

    Cite me one case where you called the ombudsman or the Commissioner and had an OA withdrawn, and didn’t have to respond to it.

    One case. Should be fairly easy for you as you clearly seem to think you’ve actually done it.

  36. Curious July 14, 2016 5:15 pm

    John D & Gene Q:

    You are on the same team — working against the same villains. Focus your anger and hostility against those that have wronged us — not one another.

    Just my 2 cents …

    BTW — while Gene’s presence on the internet has long been known, I can vouch that John D has been doing his part, speaking out against the wrong-doing at the USPTO on the “other” website for quite some time, until ad hominem attacks against him (and perhaps his clients?) by the scourge known as MM likely forced him to stop using his real name several years ago.

  37. IPdude July 14, 2016 5:18 pm

    It seems pretty simple to me. The policy is set by Google and executed by their proxy, M. Lee, and the USPTO. This is in line with the type of patents that served as a nuisance to the big machine. Google has done a great job lobbying/buying Congress and POTUS (now including Clinton). You can be upset with examiners all you want and think they don’t get it, but they are executing a plan set in place by the higher ups. Citizens United paved the way for big corporations to control the political process. The business of monetizing patents is highly political. There you have it. Time to accept Google’s victory. Pro-patent parties need to do a much better job lobbying to see change in 5-10 years (hope not that long).

  38. John Darling July 14, 2016 5:42 pm

    I don’t consider the examiners in those AU’s to be villains. They are just doing what they are told to do to keep their jobs. They need to work. To support themselves, their families, whatever. The idea that they should be “investigated” or “reassigned” to undesirable jobs so they will quit, or given negative evaluations, no promotion, no bonus and reassigned to other Art Units at a minimum, as has been, IMO repugnantly, suggested here. They are not the villains.

    The villains are the unaccountable GS-15’s in these AU’s and TC’s (i.e. the ones who get to say to the examiners, “You can’t allow that” but never have to sign any OA, or make themselves available for a phone call or interview) that are the villains. But even they are “just following orders.” The fact that they’re doing it for GS-15 money with zero production requirements and zero accountability to applicants makes them particularly odious, at least to me. The only thing I think should happen to them is to be sent back to the examining corps.

    I’ve been at this a long time. As that character Al Pacino played said, “I been around you know.” And I’ve seen a lot of nonsense come out of the PTO. Stuff it’s hard to believe sometimes. But I’ve never seen a “behind the scenes” process get an OA withdrawn. Ever. Pretty sure I’m not ever going to see it either.

    I still post on some of the “other” sites. Patently-O less so. It’s pointless. The paid shills have reduced the value of that blog to nothing.

  39. Night Writer July 14, 2016 5:45 pm

    From my experience with appeals, usually they get allowed when you win, but sometimes the TC director and Examiner reopen. Never seen anyone stop that. If you can stop that, then I’d like to know how so I can do it in the future.

    From my discussions with examiners in the “business methods” art units, they can’t allow cases because of the quality committees. I’ve lived through this for years now. I have had examiners explain exactly how it all works and how they can’t allow cases anymore. One examiner I worked with for years before Alice and he explained to me what they were doing to his job–no more allowances ever. I’ve also spent hours arguing with the TC of 3600 trying to get cases allowed.

    To my mind, this is a top down problem. I’ve spent a couple of hours talking to business method examiners this week. This is miserable for them too.

  40. John Darling July 14, 2016 5:47 pm

    “Never seen anyone stop that.”

    According to Superman here he can do it. You must be a 98 pound weakling, Night.

    /sarcasm

  41. Curious July 14, 2016 6:04 pm

    According to Superman here he can do it. You must be a 98 pound weakling, Night.
    To quote a very popular Disney movie and accompanying song … “Let it go … Let it go”

    The villains are the unaccountable GS-15’s in these AU’s and TC’s
    … and those that don’t hold them accountable. I agree that many examiners are not the villains and they are doing what they are being told to do. However, there is a number of them that appear to be more than happy doing a pi$$-poor job and collecting their checks. It is one thing to give a 101 rejection using boilerplate and about 15 original words in their analysis because they were told this application MUST have an Alice rejection, and giving prior art rejections that don’t even pass the sniff test because the art is so far off and the claim constructions are so strained.

    An examiner can still put together well-reasoned 101 and 102/103 rejections. However, from my long experience in dealing with 3600, many of them don’t care enough to do that.

    IMHO … the ENTIRE culture needs to be changed in 3600, and I believe that will require that those in positions of power in 3600 need to be shifted to other art units (and/or reassigned to examining positions) and quality supervisors need to be put into place.

  42. Night Writer July 14, 2016 7:57 pm

    I’ve argued with the top people in 3600. They think it is all junk.

  43. The board July 14, 2016 8:00 pm

    Ex Parte Frye by David K himself:

    Our decision is limited to the finding before us for review. The Board
    does not “allow” claims of an application and cannot direct an examiner to
    pass an application to issuance.

    page 15 of the board decision.

    http://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/prec/fd09006013.pdf

  44. JDright July 14, 2016 8:07 pm

    JD bro, you’re right about what you’re talking about here but you don’t have to be a dck about it.

  45. JNG July 14, 2016 8:38 pm

    I don’t mean to brag or anything, but I defy ANYONE to show me a more f***ed up prosecution than I’ve been given in 11400053 in AU 3621. I took over the case from another prosecutor, and within about a year we had an interview with the Examiner, who was reasonable on the phone, and suggested amendments to put the claims in condition for allowance.

    So we did that, and all h*ll broke loose. The first thing we get is a 112 rejection, and another 103 rejection. We responded to that by pointing out we could predate the reference. The Examiner proceeds to send us not 1 but 2 separate
    “requests for information” under 1.105, because he insists we have somehow convinced him that the invention was “publicly used” by virtue of the materials having a copyright notice. I explain to him and show him caselaw that a copyright notice is just a statement claiming rights in a work, not an indication of publication, to no avail.

    He rejects the declaration, so we appeal. That was 2013. 6 months after we file the appeal brief, he then calls me on the phone to tell me how wrong we are on the merits of the case, and that his supervisor agreed it was a slam dunk. Fine I said, file your brief and we’ll got to it!

    A few months later, he … reopens prosecution, with yet another 105 request, and a bunch of new rejections. We go round and round again until finally we appeal AGAIN which is where we are now.

    I purposely left out many details because you have to read the record to believe the amount of BS we got from this guy. He makes stuff up, invents his own interpretations of caselaw, and believes all the CAFC relevant holdings are basically only suggestions. My client has just run out of $ and patience dealing with this clown and may have to abandon the case after 12 years of prosecution.

    Ok, I’ve laid down the gauntlet, lets see someone top that one!

  46. Gene Quinn July 14, 2016 8:51 pm

    John D-

    The fact that you don’t believe that the Commissioner or Ombudsman can help is evidence that you don’t know nearly as much as you think you know. The fact that you don’t want to use all the tools at your disposal to represent your clients is rather telling. Why not give it a try? Why not contact the Ombudsman? Why not contact the Commissioner? I guess it is just easier to pretend I don’t know what I’m talking about and then tell your clients (incorrectly) that there is nothing else you can do.

    Clearly, the intent of the regulations is for the patent examiner to acquiesce to the decision of the Board. Why else have a Board? To suggest that the Board is merely advisory and there is nothing you can do to deal with recalcitrant examiners reopening prosecution even as they violate the terms of 1214.04 is nonsense. Why have rules if the rules don’t matter?

    I feel sorry for your clients. They clearly are not getting very good representation given that you are not willing to mix it up. Perhaps you are too friendly with the examiners and too afraid to ruffle feathers. Sad really.

    -Gene

  47. John Darling July 14, 2016 8:57 pm

    I told you we sent Godici a letter of complaint and he did nothing.

    Still waiting for one serial number where you got an Office Action withdrawn with a phone call.

  48. Gene Quinn July 14, 2016 9:00 pm

    Night Writer-

    You say: “From my experience with appeals, usually they get allowed when you win, but sometimes the TC director and Examiner reopen. Never seen anyone stop that. If you can stop that, then I’d like to know how so I can do it in the future.”

    So far everyone here that has said they know of no way to stop this from happening has also admitted that they have not attempted to contact the Ombudsman or contact the Commissioner for Patents. John D, for example is making fun of me although he admits that he just goes along with the reopening because he can’t think of anything that would work. I offer a solution and he makes fun as if it couldn’t ever work. Of course, he can’t know because he has never tried.

    There is a very, very limited scenario in which reopening is even authorized under 1214.04. The rules I cite above clearly say that the decision of the Board is to be effectuated by the examiner if the case is in condition for allowance. The rules do not give the examiner any ability to do a new search, and the MPEP says a new search cannot be done. There are all kinds of things going on that are not allowed. This is a process, not substance. There is relief available for process irregularities from the Ombudsman and/or the Commissioner’s Office.

    Patent examiners and Tech Center Directors refusing to issue patents after successful appeals is something that district court judges, particularly in the Eastern District of VA, would find alarming. If ever there were a situation where a writ of mandamus were appropriate it would be in this case. You cannot have an appeals process within an agency and then have inferior employees overruling Administrative Judges. That is not how the process is supposed to work.

    There are many things that attorneys can attempt. It seems that many attorneys are not willing to do whatever can be done and instead just claim that nothing can be done and nothing will work. How can you know if you refuse to try?

    -Gene

  49. John Darling July 14, 2016 9:07 pm

    By the way, still think the Director of the PTO can’t delegate authority to a TC Director to re-open after a Board decision?

    You don’t know jack. You’re now back pedaling with this “the intent of the regulations is for the patent examiner to acquiesce to the decision of the Board” after I corrected your idiotic statement that the Board has “authority” to “order” examiners to issue patents. You look foolish. Because you’re a fool.

  50. John Darling July 14, 2016 9:09 pm

    A writ of mandamus from the EDVA? What are you smoking?

  51. Gene Quinn July 14, 2016 9:21 pm

    John D-

    I get it. You are scared. I understand that you are afraid to actually represent your clients. Real attorney sometimes have to mix it up to actually represent their clients. Attorneys like you are afraid to use all the tools at your disposal. I get it. I hear all the excuses. Heck, anyone who can read can see all the excuses you’ve made here.

    What is sad is that attorneys like you let your clients down time and time again. It is really unethical to just sit back and watch your client get screwed and then pretend that there are no options. But it is beyond arrogant to then take to the Internet and proudly proclaim, as you have done here, that you are not going to try and do anything because you just know (because you just do) that nothing will work because you are such good friends with so many patent examiners and members of the Board. Perhaps your problem is you are to friendly with the examiners and all too willing to allow your clients to get screwed. I guess it brings you more billable hours. Pathetic.

    -Gene

  52. Gene Quinn July 14, 2016 9:26 pm

    John D-

    Yes. A writ of mandamus is where you file a lawsuit in federal district court challenging the actions of an agency because they are doing something that they don’t have the right to do.

    Why have a Board if their decisions don’t matter? Why have rules that say examiners are to effectuate the Board decision if they can simply ignore the Board decision?

    Clearly, the reason to have a Board is to overrule examiners. If you don’t understand that then you are a lost cause. If you are wiling to let your clients get dragged through Art Unit 3689 and win on appeal and still not get patents then good for you I suppose. But why would anyone ever hire you if you are too afraid to mix it up and actually fight for the rights of your client and demand that they not be jerked around without any reason or authority?

    TC Directors can’t have the authority to ignore the Board. If that have that authority it is clearly unconstitutional.

  53. John Darling July 14, 2016 9:30 pm

    I’m in-house. I don’t have to bill hours.

    Please give us all the serial number of one case where a “real attorney” like you had to ” mix it up” to “actually represent” your client. I’m sure it would make for fascinating reading.

    Please also give us some case cites of all these writs of mandamus you’ve gotten issued. I’ll look them up in PACER.

  54. John Darling July 14, 2016 9:37 pm

    You understand that a writ of mandamus is an equitable remedy, right? And you can’t get equitable relief unless you can establish that your remedy at law is inadequate? And you can’t do that while you still have all your administrative remedies at the PTO?

    Why don’t you ask Gil Hyatt how his case against the PTO went?

    Did you pay attention at all in law school?

  55. step back July 14, 2016 9:41 pm

    JD@47

    I had such a case but am not going to give S/N because that would blow my online cover. When you mention Godici you’re close. It was one of his people that did it. Then again I’ve also had more recent top brass at PTO blow me off on another meritorious case. Basically, we (QAS) looked at it and everything examiner did is all good, now go away. You can’t always get what you want, even if you try sometimes.

    See Rolling Stones lyrics at yoo tube /watch?v=j7leQB_Oe_k

  56. Gene Quinn July 14, 2016 9:44 pm

    John D-

    Are you always such an ass? Just curious.

    Why don’t you tell us why you are so afraid to try and call the Ombudsman? Why are you afraid to call and talk to the Commissioner for Patents? Are you scared? Do you need me to hold your hand?

    I never said I had a writ of mandamus issued. But unlike you, I’m not afraid to file things and make phone calls to actually represent my clients.

    As for the Ombudsman program, like pretty much everyone who has tried to use it, I’ve found it useful. I don’t need to prove anything to you. Everyone who has actually used the Ombudsman program knows it is useful. Of course, since you are afraid to talk to the Ombudsman or the Commissioner you’ll never know.

    -Gene

  57. Gene Quinn July 14, 2016 9:52 pm

    John D-

    So you can’t file a mandamus if you have a remedy at the PTO? So the examiner ignores the PTAB and the TC Director reopens prosecution after a complete reversal and after the Board didn’t see any Alice issues and you are just supposed to appeal to the Board again so that the examiner and TC Director can once again ignore the Board. I guess under your theory your adequate remedy at the PTO is to continue to participate in a never ending game where the TC Director and patent examiner can continue to overrule the Board. So I guess administrative hell without ever an ability to get to federal court means you have an adequate remedy.

    Anyone that knows anything about the ED VA would realize this type of administrative gaming of the system would be something the judges would have little tolerance for. And if you doubt that perhaps you should ask GlaxoSmithKline or Dr. Tafas.

    As far as calling me Gil Hyatt, that is a low blow and uncalled for. The fact that you are not willing to even pick up the phone and make a phone call to stand up for your client and try doesn’t make me a nut. It makes you are very bad lawyer and it makes you extremely unethical. When making a phone call is too much work you should find different work.

    -Gene

  58. John Darling July 14, 2016 9:57 pm

    You’re the ass in this conversation, Gene. I told you I’ve spoken to many of the ombudsmen, SPE’s, and TC Directotrs yet you keep claiming that I’m “afraid to.” In other words, you’re just lying. I also told you numerous times that we sent a letter of complaint to Godici. But you keep claiming that I just “go along” with re-opening. More lying from you.

    And you’re going to file a lawsuit for a writ of mandamus if you get a reversal and the examiner re-opens? Who’s the pathetic ass running up the client’s bill with that ridiculous windmill tilting, you or me? Whose clients need sympathy?

    Pot, meet Kettle.

  59. Gene Quinn July 14, 2016 9:58 pm

    John D-

    As far as mentioning Nick Godici, you do realize he hasn’t been at the patent office for over a decade, correct? So the last time you tried to get any relief from a case being reopened is over a decade ago and you are some kind of expert? LOL. What a joke.

    My mistake. I thought you were serious and paying attention! We have been talking about 3689 where there seems today to be an institutionalized practice of reopening practice in nearly 100% of cases after a complete reversal by the Board.

    Reopening cases is supposed to be extraordinary, it is supposed to be done by the Director. The MPEP says it is supposed to occur when the examiner knows of prior art without doing a search. It is being abused and not used when the examiner knows of prior art, but instead it is being used as a matter of course to issue Alice rejections where the Board, who could issue their own rejection did not see any Alice rejection to make.

    What a joke.

  60. Gene Quinn July 14, 2016 10:05 pm

    John Darling-

    Nick Godici is not the Commissioner for Patents and hasn’t been the Commissioner for Patents for over a decade.

    You believe the Board is not binding and is merely advisory and the final authority at the PTO is the TC Director. That is nonsense, but hey, obviously you are entitled to be both wrong and ignorant if you want to be.

    Yeah, I’m the one running up the bill on clients by continuing to participate in an examination process that is rigged because even when you win the examiner prevents a Notice of Appeal. Oh wait… that describes you. I’m the one trying to come up with strategies so the client can actually get a patent, which under your strategy doesn’t happen.

    So go ahead. Continue to try and work through those Alice reactions that come after you’ve been victorious on appeal. I’m sure you will be able to convince those examiner friends of yours that you are right and they will come to their senses. Of course, after you don’t you can just appeal, win again, and then still get the patent refused and prosecution reopened again and again because, after all, in our system an Administrative appellate tribunal has no authority over the front line decision makers. I believe that lesson was day 1 of Admin Law, correct? Or was Day 1 that the agency can prevent you from ever reaching a federal court by the applicant continuing to win on appeal and having nothing to appeal to a federal court because they won and just had an inferior officer deny the patent anyway. LOL.

    And you have the audacity to say I don’t know what I’m talking about? You should have a lawsuit against your con law professor and your admin law professor, you obviously learned nothing.

  61. John Darling July 14, 2016 10:09 pm

    So Alice rejections are being entered as a matter of course after reversals. Do you honestly believe that nobody has picked up the phone and complained about that? If that actually worked don’t you think you’d be able to find one case where somebody tried that and was successful?

  62. John Darling July 14, 2016 10:16 pm

    The Board is not binding. Why don’t you read Mr. Kappos’s decision in Ex parte Frye? There’s a link to it above.

    Never said the TC Director was “the final authority at the PTO.” Is that how you get your jollies, beating straw men?

  63. Gene Quinn July 14, 2016 10:18 pm

    John D-

    You ask: “If that actually worked don’t you think you’d be able to find one case where somebody tried that and was successful?”

    As I’ve explained, and you apparently ignored or didn’t believe, the attorneys I’ve talked with don’t want to call the Ombudsman or the Commissioner because they don’t want to upset the examiner, SPE or TC Director. They don’t want to upset the apple cart or contaminate any “relationship,” which obviously doesn’t exist to be preserved.

    I guess they are like you. You tried once to contact Nick Godici while he was Commissioner or Acting Director 15 or 16 years ago (maybe more) and that makes you an expert and makes it useless to do anything but say “ah shucks… nothing we can do about this systemic violation of 42.54… I guess if examiners don’t want to effectuate the Board decision we will just have to appeal again… darn.”

  64. Gene Quinn July 14, 2016 10:26 pm

    John D-

    You can say you never said the TC Director is the final authority, but that is (of course) what you are saying. Anyone who says that prosecution can be reopened by the TC Director despite a complete reversal by the Board is saying that the TC Director has authority to review the Board decision. That is the only way to rationalize what you are saying the rules allow. That is, of course, why your reading of what the rules allow is nonsense.

    Reopening cases is supposed to be extraordinary, not routine. It is rather shocking that you don’t understand that. Do you at least understand that by reopening the case the TC Director is preventing the applicant from getting to an Article III court? That is why this process cannot be used routinely, as it is being used (it seems) in TC 3600.

  65. Night Writer July 14, 2016 10:31 pm

    @48 Gene. I will try what you said next time. @45 JNG: You win that is bad.

  66. Gene Quinn July 14, 2016 10:50 pm

    Night-

    I hope it works. What I can say is I’m going to do my part.

    All of this vehement agreement among those of us on the same side have me worked up. I’m working on my next article presently. I’m going to see if we can blow this up and see where it goes.

    As for mandamus, I’m not stupid. I understand the chances. I also understand politics, optics and PR. Examiners and TC Directors refusing to issue patents even when an applicant prevails at the Board would be horrible optics. The story needs to get out and I’ll do my part.

  67. Night Writer July 14, 2016 10:52 pm

    I can tell you I have been to the PTO and argued with the top people of TC 3600. They think all business methods are junk.

  68. Gene Quinn July 14, 2016 11:43 pm

    Night Writer-

    Yes. The top poplin TC 3600 are the problem (or so it seems). As long as you fight on their terms within TC 3600 we are never going to win.

    Perhaps I’m naive. Perhaps I’ve drank the Kool-Aid, but I do think there are many career people higher on the food chain than those in TC 3600 that would be mortified to know just exactly how things run there.

    The thing I hear all the time is this: If I don’t know about a problem how can I possibly correct the problem. I understand in a lot of Art Units not wanting to go outside to create hard feelings, but with TC 3600 and the E-commerce Art Units there is simply no relationship to preserve. They think every application should be a rejected application. The E-commerce Art Units in TC 3600 need to be smashed and TC 3600 rebuilt from top to bottom.

  69. Alex in Chicago July 15, 2016 12:24 am

    Don’t worry Gene, these examiners are just saving your clients money in the long run. By refusing to issue the patent the examiners dispossess them of the notion that they have an enforceable patent. Which we all know is untrue for about 80% of the possible Fed. Cir. panels they will get!

  70. Curious July 15, 2016 7:32 am

    Perhaps I’m naive. Perhaps I’ve drank the Kool-Aid, but I do think there are many career people higher on the food chain than those in TC 3600 that would be mortified to know just exactly how things run there.
    How can they NOT know what is going on? They’ve got dashboards for everything, and I’m sure that is only the tip of the iceberg in terms of the amount of data they collect. Like any large organization, I’m sure they measure the heck out of just about everything. I have no doubt that all the data that you are presenting in your articles has already been available to all the top people in the USPTO for a very long time. If the people at the top are saying that they don’t know what is going on, they are either lying or incompetent.

  71. Curous July 15, 2016 7:55 am

    On to JD’s and GQ’s “discussion.” Again, I urge you two to be civil. Nothing good comes out of the tone of the comments you presented. You are professionals (and using your real names) — act like it.

    As to the substance of the argument, the quote from Ex parte Frye should clear it up. The Board cannot force an examiner to allow claims. As for the MPEP, it is neither the Rules nor the Code. While examiners should follow it, they oftentimes don’t and there isn’t much we can do about it.

    Gene — don’t forget that you are “special.” Type in “patent blog” in Google’s search engine, and your website comes up second. You’ve interviewed many of the key players at the USPTO. When you call the Commissioner or the Ombudsmen, you are very likely to get better treatment than the average patent attorney. As such, don’t be surprised if other attorney’s experience dealing with the higher ups at the USPTO is different than your experience.

    Also, JD accused you of misrepresenting his position. I took notice of that because you did exactly the same thing to me several years ago (when you and I were discussing your interjection of partisan politics into your blog). That caused me to drop off this blog for a couple of years. I know you are passionate about this, but your argumentativeness gets the better of you sometimes. I recall when you had Mark Cuban responding to some of your posts. Instead of engaging him in a civil conversation, you really ripped into him on all fronts. I thought that was an opportunity lost to seriously engage an influential member of the other side.

    Speaking of the other side. They are much better funded, they are tapped into the masses (see EFF et al.), and they are already in positions of real power at the USPTO. If we are going to save greatest driver of innovation that the world has ever seen (the US patent system), we should maintain a united front and stop jumping down each other’s throats.

  72. GGF July 15, 2016 8:22 am

    So much for the oral arguments before the Supreme Court in the Alice case suggesting that the decision will only affect a handful of cases.

  73. Night Writer July 15, 2016 8:31 am

    I don’t think 3600 could be doing this without the support of the director and assistant director. I worked with one of the former top people at the PTO on a case I had. He was helping me to try and get it allowed. I think the top people know how to control TC directors.

    I also think the people in the 3600 art units are doing exactly what the top people want them to. But in typical bureaucratic fashion, the top people deny it and pretend they don’t know so the crxp doesn’t fall on them.

    In my opinion, the only way to beat this is through the law. The only way to beat them down is to take cases to the board and then the Fed. Cir. The only hope really is the fed. cir. reversing to slowly beat them in place. But, I don’t see this happening.

    At the core of the problem right now is there really isn’t any law. Alice isn’t law, but equity. It basically says that any judge can invalidate a patent because they don’t like it. And as long as we have no laws in the country, the 3600 art unit is going to be able to do whatever they want.

    Google is the other thing that is going on. As long as all this money is pouring in to weaken patents, it is hard to imagine things improving.

  74. Gene Quinn July 15, 2016 9:41 am

    Night Writer says: “[I]n typical bureaucratic fashion, the top people deny it and pretend they don’t know so the crxp doesn’t fall on them.”

    Curious says: “As such, don’t be surprised if other attorney’s experience dealing with the higher ups at the USPTO is different than your experience.”

    Perhaps that is the case. I have been told repeatedly that if things are going on that are abnormal and process is not being followed that I should encourage attorneys and agents to contact the Ombudsman and the Commissioner’s Office. I’ve been told that if they don’t know of a problem they cannot do anything about it. I’ve believed what I’ve been told.

    A systemic ignoring of PTAB decisions is a problem. The system is clearly set up so that the PTAB decides and then examiners implement that decision. We have compact prosecution, examiners being able to raise new grounds of rejection as late as an Examiner’s Answer, and the Board being able to raise a new ground of rejection in their opinion. The entire point is to streamline prosecution. What we have happening now in what appears to be a systemic and routine way is TC 3600 waits for a decision from the PTAB and then, never having had any intention of ever issuing a patent regardless of the PTAB decision, comes up with another reason to reject. That fundamentally frustrates the entire system. If this is not a problem that the Commissioner’s Office needs to be made aware of so they can do something to stop it then there is no point alerting the Commissioner’s Office to anything.

    Another article to come. We will see what shakes out, if anything.

  75. Paul Morinville July 15, 2016 9:51 am

    The Supreme Court has patent law so screwed up that ironically, the googled patent office may really be your last best hope.

    If your invention gets a final rejection, it may be wiser to appeal and burn the next three years waiting for the appeal to be decided. If you win and the application goes back into examination and then you get a second final rejection, just appeal again. (this is what is going on at the googled PTO)

    You should get the time you lost in appeal added to the patent term adjustment so the screwed up patent office effectively allows you to buy time in hopes that a few Supreme Court Justices die. After all, there is a very slight possibility that their replacements might put the patent system back under the law.

  76. Mark Nowotarski July 15, 2016 10:39 am

    Curious @ 17, Gene @74
    Back in February I was preparing for an appeal of a 101 rejection in a business method art unit (3620, 3680 or 3690). I did a search on PTAB 101 decisions in those art units to see what the administrative judges were reversing. I found 7 cases between July of 2015 and January of 2016 where the board reversed a 101 rejection as part of a complete reversal. None of the 101 reversals, however, included an analysis under the two part Alice Mayo test. The board was mostly reversing “machine or transformation” rejections using BiIski. In one case (serial number 13031645), even though the board reversed the 101 rejection, they also included a foot note suggesting that in the event of further prosecution, the examiner “may wish to review the claims” in light of Alice.
    In every one of those seven cases, the examiner’s next action was a new 101 rejection based on the Alice Mayo test. All of the new rejections were signed by the art unit directors (Vidovich and Rinaldi).
    My inescapable conclusion is that the appeals process is broken. The only way it can be fixed is if the director of the patent office knows about it and wants to fix it. Until then, there is no evidence that the appeals process provides any relief to an applicant with a 101 rejection in a business method art unit.
    Here’s a list of the cases.
    Serial number decision date art unit Technology Director
    12630866 12/15/2015 3623 E. Commerce Greg Vidovich
    11760701 11/3/2015 3626 E. Commerce Greg Vidovich
    11708429 10/13/2015 3629 E. Commerce Greg Vidovich
    12412688 9/25/2015 3626 E. Commerce Greg Vidovich
    11754676 9/16/2015 3621 E. Commerce Greg Vidovich
    12144538 8/18/2015 3694 Finance Renaldi Rada
    13031645 8/3/2015 3686 Business Methods Greg Vidovich

  77. John Darling July 15, 2016 10:57 am

    “The only way it can be fixed is if the director of the patent office knows about it and wants to fix it.”

    They know about it. And they don’t want to fix it.

  78. Anon July 15, 2016 12:16 pm

    John D may be abrasive and even an ass – but he is 100% correct in every single thing that he has said about the Office protocols.

    I do realize that personal feelings have flaired here (from more than one person).

    But when push comes to shove, being right comes out above “being nice.”

    Gene – I recognize in many of your views about the Office that you are erring on the side of “being nice” and believing that the Office would not stand for doing things in the wrong manner.

    That is just not so, and your optimism, while “polite” is just not warranted.

    It is easy to see that John’s vitriol comes from actual battle scars. Some of that is indeed incindiary when your own propensity for taking personal affront is thrown in the mix. But when I put aside the person to person snipes, the basic issue remains: the Office is completely out of control and this simply must be known all the way to whomever the phrase “the buck stops here” applies to.

    And since the Office does reside in the executive branch, and there does appear to be political ties to what is going on, I would dare say that a criminal probe would not be out of order.

  79. Night Writer July 15, 2016 1:01 pm

    @76 Mark, so not one 101 overturned and not reopened.

  80. Night Writer July 15, 2016 1:02 pm

    @78 Anon: the problem is what they are doing is really not out of scope of Alice. Alice is an invitation to any fact finder to invalidate or not issue claims ’cause they don’t like them.

  81. John Darling July 15, 2016 2:25 pm

    Take a look at 09/193,787. The October 8, 2003 Board decision is mislabelled as “affirmed” but the examiner was in fact reversed. Totally. The examiner re-opened with an OA dated July 28, 2004. Check out the name of the TC 3600 Director who authorized that re-opening. He was good buddies with a certain “higher up” who also happened to have the initials JD. And that JD was running a little reign of terror called “second pair of eyes” and “reject-reject-reject” that we all remember. Many of his disciples and acolytes are still there at the PTO. Running the show today.

    See also 09/077,337 from that same applicant.

    Now please tell me that the PTO hasn’t known all along about re-openings after a Board reversal in TC 3600. And then we can talk about that beach front property in Nebraska that I think you’ll love.

    This has been going on for 10+ years. It’s been approved of, and authorized, by the “MANY career” PTO officials that the self-important blowhard who runs this site is “privy” to in his oh-so-awesome “behind the scenes” processes. But he tells us that “Perhaps I’m naive. Perhaps I’ve drank the Kool-Aid, but I do think there are many career people higher on the food chain than those in TC 3600 that would be mortified to know just exactly how things run there” and assures us that “I’ve believed what I’ve been told.”

    I was following the progress of these cases for about 8 or 9 years, ever since the attorney prosecuting mentioned them in public comments he submitted.

    But Gene is shocked, shocked!!!!! I say, to find out that in TC 3600 being reversed by the Board is just another minor annoyance to the PTO and those there that feel the law is whatever they say it is.

    Time to wake up, Gene. Sleepy time is over.

  82. John Darling July 15, 2016 2:32 pm

    “John D may be abrasive and even an ass – but he is 100% correct in every single thing that he has said about the Office protocols.”

    Gee, Anon, thanks. I’m touched. Truly.

    Are you the “anon” from PO?

  83. Mark Nowotarski July 15, 2016 2:34 pm

    Night Writer@76,

    That is correct. I could not find a 101 reversal issued between July ’15 and Jan ’16 in art units 3620, 3680 or 3690 that was not reopened with another 101 rejection.

    I did find two other 101 reversals in art unit 3600 but neither of these were in the business method art units. These did get notices of allowance.

    Serial number decision date art unit Technology Director
    12695145 10/23/2015 3668 Vehicle Controls Renaldi Rada
    10141033 9/22/2015 3645 Miscellaneous Kathy Matecki

    The first case, 12695145, was for a method for establishing an online marketplace for software distributed to multiple devices. It had an Alice analysis in the reversal.

    The second case 10141033 was for a method of petroleum prospecting based on weather patterns. It was rejected based on lack of utility. The board reversed.

    Both have since issued as patents.

  84. Gene Quinn July 15, 2016 2:51 pm

    John D-

    The the truly insufferable jackass you are, you once again engage in misleading to make yourself seem correct. You give a single example and then say: “Now please tell me that the PTO hasn’t known all along about re-openings after a Board reversal in TC 3600.”

    The question is not whether this happened in one case, or a few cases, in the past. The question is whether this is happening in a systematic way in 100% of cases, which is what seems to be happening. Perhaps you are right. Perhaps the Office has instructed TC Directors to ignore the Board and reopen 100% of cases where examiners have been completely reversed. But a single example from the past does not prove that senior management know that it is happening in 100% of cases today.

    Seriously, your exaggerated conspiracy theories make you sound like a junior associate completely unfamiliar with even basic human nature and simple concepts of evidence.

    -Gene

  85. John Darling July 15, 2016 3:04 pm

    DELETED and John Darling banned.

  86. Mark Nowotarski July 15, 2016 4:17 pm

    Gene @84

    I think the reopening is systematic, but it’s not 100%. In the past I looked at 44 reversals in art units 3620 and 3680 (Vidovich). These were handed down in the year after Alice (August ’14 to July ’15). I just went back to see how they were doing.

    15 of the 44 were allowed on the next office action and have issued as patents. 27 (61%) were reopened, mostly with 101 rejections under Alice.

    Of the 27 that got a rejection after a reverse, 1 has since been allowed, 6 have been abandoned, 12 are still under prosecution, and 8 (30%) have been appealed again.

    I think the instructions to the examiners are very simple. If a case comes back with a reversal, give the claims the 2 part analysis. If they fail, reopen prosecution. The director will approve.

  87. Night Writer July 15, 2016 5:46 pm

    @85 I hope you aren’t banned. @83 Mark, thanks. I have some appeal briefs to write for AU 3600, so I am going to take a look at those.

  88. step back July 15, 2016 6:20 pm

    Night Writer @87

    Dang. You had to go and remind me! I was momentarily in a state of blissful ignorance (and denial). I too have to write an appeal brief for one of the aforementioned notorious AU’s. After having interviewed the examiner recently, it appears my chances of success are somewhere south of no chance in h311. 🙁

  89. Gene Quinn July 15, 2016 8:58 pm

    Mark-

    I have no doubt that the instructions to examiners are to do the 2 part Alice test and to reopen. The problem with that is that the Board has the authority to remand to the examiners and to issue a new ground of rejection. So if the Board does not remand to the examiner and does not issue a new ground of rejection there should be no reopening of prosecution. Otherwise, the appeal to the Board is just a meaningless exercise.

    The new appeals rules were intended to streamline the appellate process. What is going on is a war of attrition against applicants by TC Director Vidovich. I find that wholly unacceptable. Something needs to be done. If something is not done then appealing to the Board is a waste of time. Appeals should be taken to TC Director Vidovich who seems to have the only real authority.

    -Gene

  90. The APA Matters July 15, 2016 10:05 pm

    Folks — for those not yet already doing so, we all need to start including in our arguments, briefs, and petitions the fact that the patent office lacks the legal right to deny (or retroactively cancel) any claims based on the alleged failure to meet 101 eligibility requirements; when they do so by relying in whole or in part on the undefined terms “abstract” and “something more.”

    Unlike as is the case with Article III Courts, the Patent Office is legally bound to the requirements and limitations of the Federal Administrative Procedures Act (APA).

    Such claim denials (and cancellations) are clearly and unquestionably arbitrary, capricious, an abuse of discretion, and otherwise not in accordance with law U.S.C. §706(2)(A)

    What do you think would happen if the criminal justice system worked this way … where guilt, innocence, and – when guilty – punishment was based not on specific criminal code definitions … but instead by analogizing one (alleged) crime / punishment to some other allegedly same or similar crime / punishment?

    Cries of bloody murder would be instantly shouted across America. And rightly so.

    While the courts can currently get away with the undefined “abstract” and “something more”, the patent office can not.

    Stop letting them do so.

  91. Night Writer July 16, 2016 10:33 am

    @89 that sounds great Gene. I am going to try it, but in my practice about 1/3 of the time when I win an appeal the examiner reopens.

    The other big abuse right now is making office actions final. I had an example recently where I claims A or B. The examiner found A admittedly. I amended to only B. The examiner makes it final and admits on the phone that he only looked for A and then stopped. So, costing my client a few thousand dollars because of his laziness.

    And the big problem with holding the examiner’s feet to the griddle is that with Alice and KSR they can pretty much allow or not allow whenever they want.

  92. Night Writer July 16, 2016 10:35 am

    @88 step back. The examiners I talk to tell me I should file the appeal that they can’t allow it. They admit these things in moments of weakness. They must have told the examiners that they are promised transfers to other art units after they kill their art units. I have had many, many discussions with the examiners all through the Alice implementation.

    This has nothing or almost nothing to do with examiners.

  93. step back July 16, 2016 1:27 pm

    @92 Night Writer,

    That’s been my experience too. I talk to the examiners. They’re doing what their bosses tell them to do and I don’t blame them. They want to keep their job. The PTO is not a democracy. It’s an autocracy from the top down. If you needed a job and were assigned to TC 3600 you would do the same thing.

    The deal for all upper and middle management is plausible deniability.
    If your department gets caught doing sh*t then it’s never your fault. The lower peons did it without authorization. It’s never upper management’s fault. The buck stops down there.

  94. step back July 16, 2016 1:32 pm

    @90 Admin Procedure Act matters.

    I fully agree with you.
    That said most examiners never heard of the APA or any of the laws or case opinions we throw at them. They do what their bosses tell them to do. Keeping the job comes first. What’s right or wrong, well argue that one when you get to the Supreme Court (assuming your client can afford all that).

  95. Curious July 16, 2016 5:17 pm

    I had an example recently where I claims A or B. The examiner found A admittedly.
    A good reason to avoid that type of language in the independent claims. I’ve seen language like that in claims that I did not draft but prosecuted — the examiner almost always just finds one of the options — not all. I would have tried to find a term “C” that describes a genus that includes “A” and “B.” You can then put “A” and “B” into the dependent claims.

    The key to avoiding final office actions is: (i) don’t amend — argue instead or (ii) pull a dependent claim into the independent claim. If you do either of those, the Examiner cannot go final if they come up with a new reference(s). If you have any other amendment, the Examiner is all-but-guaranteed to go final.

    That said most examiners never heard of the APA or any of the laws or case opinions we throw at them.
    While APA arguments are nice (I’ve made plenty of them), they get little traction with Examiners and the Board. You basically have to be prepared to go the Federal Circuit to make the argument effective. I’m not saying don’t make those arguments but realize their short-comings.

  96. Night Writer July 16, 2016 8:12 pm

    @90 APA matters

    I agree. Imagine an Alice type of trial. The judge goes back and says sure looks like he is guilty. Not much exculpatory evidence. I don’t like the guy. Bye. Bye. Crazy. The reality is too that these giant balancing tests are really equity and mean the judge can do whatever they want.

    Also, you know I have an excellent record predicting the outcome of these cases. One rule of thumb I use is that if the SCOTUS can push more power to the dist. ct. judge while still reserving the power to reverse them if they feel like it, then they will. The SCOTUS has a clear record of removing rights from the individual.

  97. Jean Quim July 22, 2016 1:29 pm

    Anything come of these posts yet?

  98. Gene Quinn July 22, 2016 4:33 pm

    Jean-

    Not that I’m aware. I have not heard from the USPTO either.

    -Gene

  99. Paul Morinville July 22, 2016 4:38 pm

    The USPTO has not attempted to answer? That amazes me. I would think they would want to address these very serious concerns.

    Do they not care?

  100. Greg Goeddtel July 23, 2016 1:53 am

    @99

    If the USPTO had to answer every single lawyer/applicant who complained in a blog/email/article/whatever about not getting the patent they want when they want it, the USPTO would examine even fewer patents than they do now.

  101. FRANK LUKASIK July 23, 2016 8:50 am

    The Patent Office Gazette stopped publishing “EXPIRED PATENTS”. This was part of the petition in “Lucree v. U.S. No. 14-1340 which was dismissed. The other changes helping corporations are part of Googles Patent Attorney..

  102. Richard K July 23, 2016 10:59 am

    @95

    “The key to avoiding final office actions is: (i) don’t amend — argue instead or (ii) pull a dependent claim into the independent claim. If you do either of those, the Examiner cannot go final if they come up with a new reference(s).”

    I’d be careful the way you phrase that because it comes across like the simple act of not amending (which is basically what you’re stating) keeps them from going Final, not that not amending when their art is incorrect keeps them from going Final.

    I’ve seen first year associates arrogantly argue incorrectly against a dead-on reference and call the SPE after the Examiner went final anyway. Got nowhere, obviously. What they did get, however, was more valuable than money – an education in how to be political when the guy on the other side knows more than they do. They paid for that stunt, which I don’t really have a problem with. Intransigence isn’t simply an affliction confined to Examiners the way Gene seems to make it out to be.

    You have to be correct first, then you can play those strategies…and that goes for both sides.

  103. Appearance of ... July 23, 2016 5:24 pm

    Sallah: Indy, why does the floor move?
    Indiana: Give me your torch.
    [Indy takes the torch and drops it in]
    Indiana: Snakes. Why’d it have to be snakes?
    Sallah: Asps… very dangerous. You go first.

  104. Paul Morinville July 25, 2016 1:13 pm

    Greg @100. The article and the comments are not simply some inventor or lawyer bit ching about the USPTO. Rather these are accusations that go to the very purpose and integrity of the PTO as well as the very real probability of misconduct and corruption of PTO management.

    They are leveled on IPWatchdog, the most read patent blog on the internet not some obscure back alley website.

    With the allowance rates in the PTO at the current levels it just doesn’t matter if they have to put a few on hold to answer this series of posts. Fixing this is a much higher priority.

    It is required of a government of the people to answer the people.

  105. Neil Thomas August 4, 2016 3:18 pm

    Gene, I can’t find some of the Art Units you list on the PTO website; http://www.uspto.gov/patents-application-process/classes-arranged-art-unit-art-units-2914-3715

    e.g. 3687, 3688,

    I must be doing something wrong.

  106. Gene Quinn August 4, 2016 5:49 pm

    Neil-

    You aren’t doing anything wrong. I can’t explain why, but some Art Units are not listed there. That list seems rather old and not updated, or at least incomplete. Those “missing” Art Units do exist though.

    -Gene

  107. Mark Nowotarski August 4, 2016 7:06 pm

    Neil,

    You can see the art units management at http://www.uspto.gov/patent/contact-patents/patent-technology-centers-management#3680

    You can see what examiners are in those art units by going to the USPTO employee locator at http://portal.uspto.gov/EmployeeSearch/ and typing in the art unit (e.g. 3687) into the organization field.

  108. Urko October 4, 2016 9:59 pm

    About the OMBUD and Commish .. every case can be different .. but when I’ve hit a “wall” .. I call them .. they’ve been helpful. (Of course, my bro’s on staff at the House Budget Committee, but that’s another story ..)