The Impotence of the Patent Trial and Appeal Board

By Gene Quinn
July 17, 2016

PuppeteerOver the past several days I’ve been writing about the abysmal and embarrassing allowance rates for the E-commerce Art Units in Technology Center 3600 at the United States Patent and Trademark Office. One Art Unit in particular, Art Unit 3689, has so far in 2016 allowed only 1.3% of applications (3 patents issued with 232 patent applications abandoned). While they are by far the worst Art Unit in TC 3600, they are not the only Art Unit with ridiculous and unacceptably low allowance rates.

In a recent article I made the statement that one of the three patents that Art Unit 3689 issued was issued only issued after the Patent Trial and Appeal Board ordered the patent issued. This drew ire from some in the patent community because technically the Board does not order patent examiners to issue patents. After a decision by the Board, jurisdiction transfers back to the patent examiners to effectuate the decision of the Board. Specifically, 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.”

The problem? In Technology Center 3600 there seems to be a disturbing trend where the Board reverses patent examiners on every issue and yet no patent is issued. Instead, patent examiners conduct new searches, which the MPEP 1214.04 tells them they are not supposed to do, and Greg Vidovich, who is Technology Center Director for 3600, authorizes the reopening of prosecution. How is this possible?

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.”

The Director seems to have delegated this responsibility to Technology Center Directors. See MPEP 1002.02(c).

37 CFR 1.198 is for the extraordinary situation where there is something that has come to light at the last minute that raises significant questions about a claim or claims that were subject to a Board decision. The purpose for Rule 1.198 is not to allow patent examiners and Technology Center Directors to endlessly prevent the issuance of patents at all costs and under all circumstances. But in TC 3600 Rule 1.198 seems to be used for the purpose of harassing patent applicants that have successfully prevailed on appeal to the Board.

What is happening in TC 3600 is prosecution is being re-opened for the purpose of issuing Alice rejections. With the help of readers, so far I’ve found eleven (11) separate cases [1] over the last 10 months where prosecution was re-opened by Greg Vidovich, Director of TC 3600, after the Board issued a decision completely reversing the examiner on every rejection of every claim. In each case the Vidovich authorized re-opening of prosecution simply to issue Alice rejections.

Of course, Alice v. CLS Bank was decided in June 2014, so this is not a new development. It is also not “a particular reference or reference” that indicates nonpatentability, as seems to be required by MPEP 1214.04 in order for re-opening to be appropriate in the first place.

It would seem that Director Vidovich is doing everything in his power to prevent the issuance of patents. This is extremely troublesome.

Those familiar with the Patent Office are no doubt familiar with the concept of compact patent prosecution, see MPEP 2103, which is intended to move prosecution of applications along in an efficient and streamlined manner with issues being addressed all at once by examiners. Examiners are also allowed to raise new grounds of rejection as late as an Examiner’s Answer. See 37 CFR 41.39(a)(2). The Board is also able to raise a new ground of rejection in their opinion as well. See 37 CFR 41.50(b). The entire point is to streamline prosecution and make it unnecessary for endlessly looping back to decide issues in series when they could, and should, be decided in parallel. Efficiency be damned, what is happening now in 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 yet another reason to reject the claims. This fundamentally frustrates the purpose of an appellate system and makes fools of applicants who believed in fairness of the PTO process.

It seems that TC Director Vidovich believed the Board decisions in these cases needed to be ignored and these applications had to be denied. But if the Alice problems are so serious and so significant that the extraordinary measure of re-opening prosecution and not effectuating the decision of the Board is being made, why didn’t the Board notice the Alice problems and issue their own new ground of rejection? The Board has the right to remand cases to the examiner, see 37 CFR 41.50(a)(1), so why didn’t the Board remand the decision to the examiner for consideration of Alice? Does TC Director Vidovich think he knows Alice rejections better than the Board? Does he think the Board is unfamiliar with Alice? Does Vidovich have reason to belief the Board is unaware of their power to remand to an examiner, or of their authority to enter a new ground of rejection? When you ask those questions out loud they sound absurd. It seems rather clear that these patents are going to be denied at all costs whatever it takes, even if that requires ignoring a Board decision and re-opening prosecution despite the lack of a new reference or references.

When the TC Director re-opens prosecution the applicant then has to go back into prosecution, or can move forward to appeal to the Board. But what good is an appeal when the TC Director has demonstrated that even if the appeal is successful prosecution can be re-opened and more bogus rejections made? What good is going back into prosecution with the same unreasonable examiner that has just had each and every rejection of each and every claim reversed? There is no relief for applicants, which is not how the system is supposed to work.

By re-opening cases TC Directors can effectively prevent patent applicants who have been victorious on appeal to the Board from ever being given the opportunity to reach an Article III court, which has to be unconstitutional. That’s right, all the USPTO has to do to prevent an Article III court from ever reviewing an examiner decision is make the decision so obviously awful that the Board reverses and then re-open prosecution. There is nothing to appeal from a Board decision when you are completely victorious, and when you keep getting pulled back into prosecution over and over again eventually the applicant just gives up, which is almost always what happens.

Review by an Article III court, which is supposed to be an applicant right, is effectively prevented by recalcitrant examiners working together with TC Directors. I find it difficult to believe that judges of the Eastern District of Virginia would find such a systemic and coordinated deprivation of process and gerrymandering of the appellate process to be within the powers of an Executive Agency. Perhaps at some point some will file a mandamus and we will find out.

Clearly, the rules of the system are set up to make examiners subordinate to the Board, not the other way around. The Board is supposed to have the final word and examiners are supposed to effectuate the decisions of the Board. See 37 CFR 41.54. Yet, it seems that the Board is inferior to the examiner and TC Director.

Only in the most extraordinary cases is prosecution supposed to be re-opened. It is NOT an extraordinary case when the Board had the ability to notice whether the claims they were reviewing contained patent eligible subject matter. It is not an extraordinary case where the Board had full knowledge of the claim and the Alice decision and still chose NOT to order a remand. If any group of people is acquainted with Alice it would be the Board, and the Board in these cases did not see fit to issue any patent eligibility rejections or remand to the examiner. That being the case TC Director Vidovich should bear a heavy burden when ordering the re-opening of cases. That he would have decided differently, or he would have issued a new ground of rejection, or he would have remanded to the examiner had he been the sole decision maker cannot be the standard. Such a standard would give him dictatorial power that isn’t enjoyed by any judicial official on any level. It also nullifies the work of the three Administrative Patent Judges who issued the decision.

It seems clear that Art Unit 3689 has no intention of issuing patents. It also seems clear that even a reversal on all grounds by the Board will not stand in the way of denying patents at all costs. Thus, the Board is completely impotent. Those running TC 3600 don’t like software patents and they don’t like business method patents. They seem to be of the opinion that neither are patent eligible despite the fact that Congress, the Federal Circuit and the Supreme Court have all said that both software and business methods are, in fact patent eligible.

For a long time I’ve suggested that if you get stuck in an Art Unit where the allowance rate is abysmally low you just need to get through the first round of prosecution and appeal the case to get to the point where legal arguments, logic and fairness have a chance of prevailing. Unfortunately, the sad truth is the Board has no authority over patent examiners because the Board is subordinate to TC Directors. A Board decision reversing an examiner is merely advisory, at best. The ultimate decision making authority at the Patent Office on whether to issue patents resides in the TC Center Director.

Getting to appeal and prevailing should mean a patent issues. Instead, it means yet another pair of eyes, the eyes of the TC Director, need to be satisfied first. Indeed, it seems that the only pair of eyes that matter are the TC Director, which makes the entire appeal process just one huge waste of time and money.

The appeals process is a charade, at least when you are appealing unreasonable rejections of examiners in TC 3600. Why bother appealing to the Board in the first place? In TC 3600 appeals should really be taken directly to the TC Director, who apparently has the final say anyway. Sure, there is the illusion of an independent body (i.e., the Board) that will resolve errors made by examiners, but if you are victorious the TC Director just pulls you back into prosecution to deal with that examiner who was jerking you around for years in the first place. You just can’t ever escape. So why not recognize the reality of the situation and appeal to the TC Director?

This can’t be the way the system is supposed to work. Functionally preventing applicants from reaching an Article III court can’t be constitutional. Why bother having a Board if the examiner in conjunction with the TC Director can still refuse to issue a patent anyway? The Board is obviously completely impotent and appealing examiner rejections is an utter waste of time.

Re-opening these cases was an abuse of power plain and simple. Will the Patent Office do anything about what is going on in Technology Center 3600? Time will tell, but it is becoming increasingly impossible to believe that senior management of the Office is not well aware of the fundamental unfairness applicants in TC 3600 face. It is also becoming increasingly difficult to believe they do not at least tacitly authorize the behavior.

_______________

[1] These are the cases located so far where TC Director Greg Vidovich has re-opened prosecution after the Board reversed the examiner on all grounds. It seems that re-opening prosecution where there is a complete examiner reversal is the rule, not the exception, in TC 3600.

  1. Application No. 12/429,881
    PTAB Decision – March 28, 2016
    Office Action reopening prosecution – June 30, 2016
  2. Application No. 12/416,078
    PTAB Decision – March 11, 2016
    Office Action reopening prosecution – June 17, 2016
  3. Application No. 12/128,098
    PTAB Decision – February 11, 2016
    Office Action reopening prosecution – May 19, 2016
  4. Application No. 12/630,866
    PTAB Decision – December 15, 2015
    Office Action reopening prosecution – March 30, 2016
  5. Application No. 11/760,701
    PTAB Decision – November 3, 2015
    Office Action reopening prosecution – March 11, 2016
  6. Application No. 11/708,429
    PTAB Decision – October 13, 2015
    Office Action reopening prosecution – March 23, 2016
  7. Application No. 11/754,676
    PTAB Decision – September 16, 2015
    Office Action reopening prosecution – February 8, 2016
  8. Application No. 12/412,688
    PTAB Decision – September 15, 2015
    Office Action reopening prosecution – January 11, 2016
  9. Application No. 13/031,645
    PTAB Decision – August 3, 2015
    Office Action reopening prosecution – December 3, 2015
  10. Application No. 10/382,276
    PTAB Decision – April 27, 2015
    Office Action reopening prosecution – August 10, 2015
  11. Application No. 12/119,593
    PTAB Decision – March 26, 2015
    Office Action reopening prosecution – September 4, 2015

 

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 79 Comments comments.

  1. John White July 17, 2016 9:20 am

    Excellent article! This is true investigative reporting. Well done. The PTO can no longer push this off as “nothing to see here”. If the management at the PTO is comprised of those whom I believe it is – this will be stopped forthwith. An “extraordinary” remedy cannot become routine. It loses all relevance.

  2. Appearance of ... July 17, 2016 10:34 am

    John @1

    Unfortunately, if the management at the PTO is composed of those whom I believe it is, this practice will continue.

    Occam’s razor suggests that the simpler explanation is usually preferable. Here there is a simple unifying assumption that explains everything.

    Put alternatively, if something looks like a duck, walks like a duck, quacks like a duck, then the hypothesis that it is a duck should be examined.

  3. Curious July 17, 2016 10:41 am

    Gene — I like the title. When I get a chance, I’ll post some more applications for your list

  4. step back July 17, 2016 10:57 am

    How can you talk about the PTO stonewalling inventors without mentioning Hyatt? Or SAWS?

    http://www.law360.com/articles/663030/uspto-can-t-avoid-apa-suit-from-inventor-rankled-by-delays

    “Final agency action on plaintiff’s 80 patent applications has now been delayed so long — twenty years — that it seems likely that the value of plaintiff’s purported inventions has been impaired. … The case is Gilbert P. Hyatt v. U.S. Patent and Trademark Office, case number 1:14-cv-1300, in the U.S. District Court for the Eastern District of Virginia.”

  5. John Faro July 17, 2016 11:16 am

    Have you ever considered the filing of a Petition for a Writ of Mandamus, and the exception to exhaustion of administrative review, under the US SC decision in Thundef Basin

    File your petition to invoke the supervisory authority of the Director, and when it is denied, file the Petition to Fed Cir – the PTO has become a “runway” agency with no oversight at the top

    It’s not rock science – Just do it

    John Faro

  6. Ternary July 17, 2016 11:30 am

    Great article with absolutely fascinating supporting documents. Really, read them as examples of government’s “gotcha” rulings. I am flabbergasted by some of the allegations in the re-opening office actions. Applause to the applicants and firms who provided the cases. Naming names and cases is the only way to stand-up against this continuing Alice madness. The USPTO in a most bizarre, Byzantine anti-patent form.

  7. JNG July 17, 2016 12:40 pm

    I think you’re understating the problem too, because a lot of the Examiners in 3689 are too lazy to write an Examiner’s Answer, or don’t want to be embarrassed to have their poor work exposed. So instead they engage in a Kafkesque serial reject/appeal/reopen practice where you can never get a decision on the merits because it is constantly moving target. A typical example of this is 13/355,392 – I can’t get the Examiner’s error reviewed, because they can simply keep doing re-dos. As you can see, on the re-do they try to double down on the rejections to make it even less likely that you will fight them.

  8. Gene Quinn July 17, 2016 1:09 pm

    JNG-

    Thanks for the citation to your case. I’ve been on the road this week. I’ve had some time to dig into things, but not as much as I would have liked. There are many more avenues to follow in this story. Examiners continually preventing an applicant from getting to the Board on the merits is one of the avenues I will be following over the next week or two.

    -Gene

  9. Bemused July 17, 2016 1:21 pm

    Gene,

    Good on you for calling out TC Director Vidovich by name. Nothing wrong with letting folks know who is causing a particular problem at the PTO.

    If Director Vidovich has any issue with being publicly outed, I presume that he can contact you with a request to post his side of the story and that you would give him ample opportunity to respond on this blog.

    Call me jaded but I doubt any such request will be made by Director Vidovich.

    Bemused

  10. Gene Quinn July 17, 2016 1:27 pm

    Bemused-

    I would be happy to publish a USPTO response to this article, or any other article in this series. Sadly, there seems to be much more to write.

    -Gene

  11. Curious July 17, 2016 2:28 pm

    I’m still in the process of gathering data, and I’ve only checked art units 3622 and 3623. However, I’ve been able to identify 12 other instances (not included in Gene’s list) in which prosecution was reopened after a full reversal at the Board. Another disturbing trend I’ve identified as that there are many decisions in which the Board has been reversed in which the Examiner has not taken any action — even after many, many months after the reversal. The worst is an application that was reversed 14 months ago.

    I’ve only looked at decisions dated from 2014 through April 1, 2016 (I assume any decisions dated after that are too recent for the examiner to act on).

    I’ll post the relevant data sometime tonight.

  12. Curious July 17, 2016 4:12 pm

    The art units I looked at were 3622-3626 and 3688-3696. This leaves 3627-3629 and 3682-3687 unaccounted for. I searched for decisions from the USPTO own search engine, which I have found, in the past, to be incomplete. The Decisions on Appeal I identified were either a complete reversal (with no new grounds of rejection) or an affirmance-in-part, in which the inventor did not amend the claims. In either instance, the expected response would be for the examiner to issuance a Notice of Allowance.

    The Decisions I looked at were dated 3/1/2014 through 4/1/16. I assumed anything after 4/1/16 would likely not have an examiner action yet. The number of Decisions on Appeal that met the above criteria was 71. Of the 71, 13 are still waiting action by the examiner despite all being at least decided at least 3 ½ months ago. Most have been awaiting examiner action for 4-5 months.

    Of the remaining 58 Decisions, 5 were allowed and 53 were reopened. 5 of the 53 that were reopened are already found in GQ’s list.

    Other interesting tidbits. 2 applications received Notice of Allowances after the Board reversed, but those allowances were subsequently withdrawn. A handful did not include TC director signatures. Additionally, in art units 3691-3965, Rinaldi Rada was the one who signed off. As such, Greg Vidovich is not the only TC Director signing off on these.

    GQ – if you want the application numbers (and other relevant data), just email me (the email I include in my comment works) Obviously, the number of decisions is too great to post. Prior to 3/1/2014 if the examiner was reversed, there was a high likelihood that a Notice of Allowance would issue. Coincidence or not, Michelle Lee began her stint as Director of the USPTO on 1/13/2014.

  13. Ternary July 17, 2016 5:23 pm

    In all cited examples: any invention involving (not even claimed) an optimized process that achieves some potential (even not articulated) economic benefits is assumed by its nature to be directed to an abstract idea and as non-patentable.

    Accordingly, Alice indeed swallows a whole class of inventions. It seems not to matter that humans only (without computers) would never be able to achieve these results. Everything comes back again to the definition of an abstract idea and probably to the concept of optimization. The refusal or ineptitude of SCOTUS to define an “abstract idea” continues to power anti-patent forces.

    I would strongly suggest that inventions that optimize a process in a manner that is novel and non-obvious should be patentable subject matter and are currently driving the global economy in combination with computing devices.

    As argued before, this is a matter for clarification by Congress, not for the Courts or the USPTO, as it is key to segments of our economy. If Congress decides that these inventions are non-patentable, so be it.

    It is hard to believe that director Vidovich is operating in this highly charged, hierarchical and politicized USPTO environment without receiving at least some tacit encouragement from its leadership.

  14. Curious July 17, 2016 5:37 pm

    Accordingly, Alice indeed swallows a whole class of inventions.
    The Supreme Court decision in Alice makes no such statement. It has been the USPTO’s flaunting of the Supreme Court’s warning, in Alice, that “we tread carefully in construing this exclusionary principle lest it swallow all of patent law … an invention is not rendered ineligible for patent simply because it involves an abstract concept” that leads to your observation. The USPTO has not been treading carefully.

    Because the Supreme Court has yet to give us guidance as to how one can determine whether or not a invention is “directed to” an abstract idea without anything more, we can only use past decisions as guidance. The USPTO (and TC 3600) treats these past decisions as broadly as possible in order to shoe horning just about every application within their tech center into the facts of these decisions. Granted, some of the examiners attempted an analysis in the office actions (in which prosecution was reopened). However, a great many of Office Actions I reviewed involved rejections with a couple sentences of original analysis with the rest being boilerplate. It is hard to tell whether the examiner just didn’t care to attempt to put forth a reasoned analysis or the examiner realized that he/she didn’t have a reasoned analysis to put forth so he/she put the least amount of effort into they could to satisfy the wishes of their higher-ups.

  15. Ternary July 17, 2016 6:58 pm

    The common boilerplate language indicates a concerted and shared effort in the Office. I have dealt with at least 2 cases where the Examiner explicitly told that he was not going to allow under Alice, no matter what we were going to submit, as this was not going to pass the SPE. He actually suggested filing continuations to keep the cases alive in the hope of future policy changes in a couple of years. From that perspective he was realistic and helpful.

    I do not see this as individual actions of Examiners out of indifference or sucking up to superiors. This looks like being based on direct orders from above. After repeat of similar rejections/wording in a technology group, including Curious’ analysis in @14, a trend may be suspected and should be called out as in this post. See the earlier mentioned duck in @2.

    Even if this is merely a rogue group then it is still covered by Alice, legally nothing wrong with that. And it still swallows a whole class of inventions of computer based optimization processes.

  16. Night Writer July 17, 2016 9:35 pm

    One thing too is that I am starting to see 101 come into other art units. I wonder if our Google director is trying to expand the 3600 into the other art units. Basically, I think her purpose is to weaken patents by any means at her disposal. Thanks Obama.

    My guess is they are testing 101 in the other art units to figure out how to use it to burn the system down.

  17. Night Writer July 17, 2016 9:37 pm

    And to be clear, I am seeing the same type of claims I have been writing for 15 years suddenly be killed with 101 in art units that I have never seen 101 before. The SPEs ask for draconian amendments that would make the claims nearly worthless.

    So, I think this expanding.

  18. Luis Figarella July 18, 2016 6:40 am

    Gene:

    Said before, but let me say it again, FANTASTIC investigative reporting. Facts, facts, facts, Sgt. Gene “Friday”.

    If you are one of the lucky constituents having a House/Senate Judiciary member, please send them a copy of the article?

    May I remind everyone that the Senate Judiciary Committee members are;
    Chuck Grassley, Iowa, Chair.
    Orrin Hatch, Utah.
    Jeff Sessions, Alabama.
    Lindsey Graham, South Carolina.
    John Cornyn, Texas.
    Mike Lee, Utah.
    Ted Cruz, Texas.
    Jeff Flake, Arizona.

    …and the House are;
    Bob Goodlatte, Virginia, Chairman (113th)
    Jim Sensenbrenner, Wisconsin.
    Lamar S. Smith, Texas.
    Steve Chabot, Ohio.
    Darrell Issa, California.
    Randy Forbes, Virginia.
    Steve King, Iowa.
    Trent Franks, Arizona.

  19. Ely Erlich July 18, 2016 6:41 am

    Also in the mechanical field!

    Even though we are not subject to all of the same rejections, there has definitely been an increase in the never ending office actions. We overcome the prior art only to have completely new art cited in a following (often final (!)) action. Some European colleagues of mine (mechanical patent attorneys) also recently noted to me they had seen the same thing during prosecution at the USPTO.

    It certainly seems to be part of a trend.

  20. KenF July 18, 2016 8:25 am

    Gene,

    They’re just not working hard enough…… ?

    NIce job calling it for what it is, and putting a name out there so he has to have some public accountability.

    Ken

  21. anonymous July 18, 2016 8:57 am

    This series is appearing to be increasingly personal on your part, yet despite other commenters referring to this as “investigative journalism,” I haven’t seen any disclaimers on any possible conflicts of interest on your part, the way an actual journalist would do. I have some questions:

    1. Have you ever filed for a patent for yourself in TC 3600? If so, how many times have you done so, and what were the outcomes?
    2. Have you ever filed for a patent for a client in TC 3600? If so, how many times have you done so, and what were the outcomes?
    3. Do you have any personal experience with the TC Director you mention? If so, please disclose the nature of those exchanges/interactions, to better illuminate your readers and allow us to put your words in context.

    Thank you in advance for answering these questions, ideally with the same level of detail you have applied to this series.

  22. Lost In Norway July 18, 2016 9:26 am

    Gene, this is some of your best work! I’m not sure it will do any good, but we are owed an explanation as to why the TC directors have so much more power than they are supposed to.

    Simple question: what can we do? Is there anyone we can take our issues to? They have broken procedure, haven’t they? Prosecution was reopened without grounds and new searches done. Any recourse at all would be appreciated. Is this a question of petitioning the director and hoping for the best?

    This makes me and an applicant feel helpless.

  23. Gene Quinn July 18, 2016 10:08 am

    anonymous-

    It is interesting that you choose to focus on me rather than the facts. I’m laying out facts for everyone to see and yet you think it is me with the agenda?

    I’d be happy to answer all your questions, but I certainly don’t feel compelled to answer anything to anyone who chooses to remain anonymous and use a fake e-mail address in order to post a comment. If you care to repost your questions with your real name and a real e-mail address so I and others can see what YOUR bias and YOUR agenda is then I will answer your questions.

    -Gene

  24. Gene Quinn July 18, 2016 10:11 am

    Lost in Norway-

    Patent applicants and attorneys are obviously not going to get anywhere with examiners, SPEs or TC Directors in 3600. More astonishing (and sickening) details to follow this week (and probably into next week too).

    I do believe the people in the Commissioner’s Office want to know when there are irregularities of process occurring. I would encourage everyone who is trapped in the TC 3600 death spiral to reach out to the Commissioner. This is not a one-off problem. The problems are systemic.

    I understand that you feel helpless. As I’m uncovering all of this garbage I’ve been depressed. The realization that the system is nothing more than a charade being manipulated by actors who hate patents in TC 3600 is depressing.

    -Gene

  25. Chris Gallagher July 18, 2016 10:13 am

    Step Back’s comment at #4 above confirms that although its volume has suspiciously increased, when patent applications can be stalled for 20 years, (see Gilbert Hyatt v USPTO) something is rotten in Alexandria. Great job Gene.

  26. Appearance of ... July 18, 2016 10:30 am

    Possibly relevant to this issue:

    The latest (July 14) update of the USPTO interim guidance on subject matter eligibility has now updated the guidelines to reflect the July 5 “Rapid Litigation v. Cellzdirect” case (biotech), but has not updated the guidelines to reflect the earlier June 27 “Bascom v. AT&T” (software) case.

    In my opinion, Bascom introduces a more formal, 35 USC 103 like process onto step 2 of the Alice test, and thus makes it a bit harder to reject software patents on the basis of subject matter eligibility.

    Will the USPTO interim guidance materials continue to ignore the Bascom case? This would be an interesting good faith test right here.

  27. Gene Quinn July 18, 2016 10:31 am

    Ely-

    If you see anything out of the ordinary please feel free to send me an Application No. to look at in Public PAIR.

    -Gene

  28. Prizzi's Glory July 18, 2016 10:32 am

    Obviously SAWS continues in secret.

    And don’t assume that we are seeing any sort of thwarting of the goals of PTAB judges.

    A careful reading of the SAWS FOIA documents provides more than enough evidence that PTAB judges were fully part of the unlawful SAWS conspiracy.

    The practice Gene describes deals with the problem caused by upholding an examiner’s rejection of a patent. The Applicant might resort to 35 U.S. Code § 145, in which the judge can authorize a patent without any remand to the USPTO.

    In re #12, take a look at Sensitive Application Warning System. Note that the announcement is dated March 2.

  29. Gene Quinn July 18, 2016 10:39 am

    Appearance-

    Agreed. If the USPTO does not soon update the eligibility guidance to take into account BASCOM that will speak loudly and clearly.

    -Gene

  30. step back July 18, 2016 10:48 am

    @25 Appearnce of xyz

    Please stop giving implicit legitimacy to the fakery invented by SCOTUS out of thin air.

    There is no there there to begin with.

    There is no magic, direction-detecting compass-ometer to be hover Ouija style over a board of claims for determining from spiritual inspiration what each claim is “directed to”.

    There is no mythical balance scale for weighing in search for the ephemeral something significantly more.

    The whole thing is a farce.
    But then again so are the curmudgeon science hating King Tut abacus men of Mount Olympus.

    http://patentu.blogspot.com/2016/06/spirit-town.html

  31. Jeff July 18, 2016 11:40 am

    See also application serial number 12/493,405 where the examiner was reversed on all points and prosecution was reopened. Vidocivh signed as TC director of 3600.

  32. Edward Heller July 18, 2016 3:09 pm

    Gene, if I understand your report correctly, the identified applications were found patentable by the PTAB, but on remand, the examiner in each case entered Alice rejections. Further, the applications all involve business methods.

    Let us just say, that I am not surprised at this.

    From my understanding of the case law, most business method applications do not involve improved data processing methods that would be otherwise patentable under Bilski/Alice/Enfish. They simply manipulate business method steps, albeit, novel and unobvious, and recite computers generically. These kind of claims will normally fail the Alice, etc., test. If the claims in the applications under examination do fail Alice, the PTO has a legal duty to reject them.

    Now, if I am wrong in this in that the examiner conducted new searches and raised new prior art on remand, without entering an Alice rejection, then I would totally agree with you that there is an abuse of process going on here. I think any applicant would have a administrative procedure suit the correct the situation not unlike that filed by Hyatt.

    But I do not think that is the case here.

    With a properly entered Alice rejection, the applicant can either respond to it or merely immediately appeal to the PTAB. Depending on their decision, they should have access either to the courts in a 145 action or in an appeal to the Federal Circuit.

  33. Prizzi's Glory July 18, 2016 3:12 pm

    According to the SAWS TC3600 FOIA documents, Vidovich, Hirshfeld, Focarino, & Faile, and Lee have all been heavily involved in (at least) unlawful SAWS procedure. Without their removal and the removal of a large number patent officials heavily involved in the SAWS conspiracy, there is no reason to expect any real change at the USPTO.

  34. Prizzi's Glory July 18, 2016 3:13 pm

    BTW, Focarino retired shortly after the alleged termination of the SAWS program.

  35. Night Writer July 18, 2016 3:19 pm

    @32: Ned: They simply manipulate business method steps, albeit, novel and unobvious, and recite computers generically.

    I see Ned is up to his witch recitations for the day. So, now a “novel and unobvious” method and/or computer is not eligible under 101. Man oh man. It never ends with these judicial activist. See Newman’s concurrence in Bascom for an intelligent discussion regarding the interaction of 101 and 102/103. It is nice to read from a rational thinker like Newman and get away from the medieval thinking of the likes of Ned.

  36. Curious July 18, 2016 3:38 pm

    most business method applications do not involve improved data processing methods that would be otherwise patentable under Bilski/Alice/Enfish
    Except that Bilski and Alice never mention “improved data processing methods” as being patentable. Instead, they described what isn’t patentable — abstract ideas directed to fundamental, long-standing economic practices.

    They simply manipulate business method steps, albeit, novel and unobvious, and recite computers generically. These kind of claims will normally fail the Alice, etc., test
    Sorry No. There is no Alice “test” beyond what I described above. If an invention directed to something that is very similar to that found in Bilski (this is pretty much the extent of the analysis within Alice), then it isn’t patent eligible. While plenty of people want to read more into Alice, the Alice decision just doesn’t support it.

    Why do you continue to feel the need to misrepresent the case law on this blog? Go to Patently-O and misrepresent it all you want — misrepresentations of the law are de rigueur there.

    With a properly entered Alice rejection, the applicant can either respond to it or merely immediately appeal to the PTAB. Depending on their decision, they should have access either to the courts in a 145 action or in an appeal to the Federal Circuit.
    And the merry-go-round begins. How long will it be until they receive satisfaction? They waited 3-4 years after the appealed office was issued before they got a decision by the Board, they’ll wait the same amount of time to get a second decision by the Board and considerably longer to get something out of the Federal Circuit. While certain large clients may be OK with this, this type of dilatory practice will undoubtedly cause many applicants to give up entirely on their application and/or the US Patent System — no doubt the goal of many of those in power at the USPTO.

  37. Dale B Halling July 18, 2016 3:47 pm

    Thank you for this important and courageous article Gene. I have had a several of this type of cases. This nonsense started with the evil Jons (Jon Dudas and John Doll). Honestly these people should be thrown in jail for purposely ignoring the law and the constitution. Unfortunately, they are almost untouchable.

  38. Dale B Halling July 18, 2016 3:49 pm

    Stepback – excellent point

  39. staff July 18, 2016 4:22 pm

    ‘The Impotence of the Patent Trial and Appeal Board’

    Inventors will tell you the problem is far worse. Take a look at who was just appointed.

    http://www.uspto.gov/about-us/news-updates/david-ruschke-appointed-patent-trial-and-appeal-board-chief-judge

    In the inventor community his former employer has a reputation as a repeat infringer. In every patent infringement case filed involving them since 2014, they have always been the defendant. We are told they are also one of the biggest filers for PTO post issue reviews. How can this not be a conflict of interest? This is yet another reason why the Patent Office cannot be trusted to review issued patents. Add to that the fact that the present director is a former head of patents for a company who has an even worse reputation in the inventor community as a repeat infringer and has been a central figure in the disintegration of America’s patent system. Just how out of touch or corrupt IS PTO management?

    Inventors are up in arms and clamoring for a clean sweep at the top. We need a director and upper management who is not in league with large infringers, or at least has substantial ties with and appears to still be working for. Even the mere perception is as good as reality in such a crucial position for America’s economy. Permitting such a flawed process to illegally and unjustly strip inventors of their property rights is a disgrace. Upper PTO management must go. One has to now wonder just how deep the apparent corruption at the PTO goes. Inventors and their attorneys will tell you the PTO frequently rejects patent applications that are allowable -certainly those of inventors and small entities. If we have to fight to get or keep our patents, we go out of business. No doubt this suits large invention thieves and their paid puppets just fine. How can this not be a restraint of trade, or even a RICO situation? Surely our friends in Congress and the courts will now take notice of how bad things have become. The propaganda of multinational invention thieves is destroying the patent system and property rights in America. When thieves win, America loses.

    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

  40. Edward Heller July 18, 2016 4:24 pm

    I took a look at the PH for the first decision listed, the one for 12/428,881 owned by Rockwell Automation of Milwaukee. The appeal was noticed on May 28, 2013, fully a year before Alice. It is not surprising at all that the examiner’s entered an Alice rejection on remand.

    Gene’s complaint is that the PTO did not withdraw applications before the PTAB when Alice came down instead of letting the PTAB enter its decision. I think this only delayed things a bit, which is compensable in restored term.

    The claim in this case is

    1. An energy demand management and services system, comprising:
    at least one processor coupled to memory retaining instructions carried out by the processor, in operation, for:

    an acquisition component that, in operation, obtains at least one utilization data element initially generated in an industrial automation controller via a communication network, wherein the utilization data elements are instances of discrete data pertaining to at least one of sustainability, energy consumption, or emissions by at least one of
    manufacturing elements or facility elements, and wherein the utilization data elements include various granularities of data types represented therein;

    an analysis component that, in operation, employs the utilization data elements to at least one of forecast the sustainability, energy consumption, or emissions, determine at least one trend for the sustainability, energy consumption, or emissions, or identify logical data relationships for the sustainability, energy consumption, or emissions;

    an optimization component that generates and automatically implements at least one suggestion for improving sustainability, reducing energy demand, or reducing emissions based on at least one of the utilization data elements, forecasts, trends, or logical data relationships; and

    an interface component that, in operation, displays
    representations of at least one of the utilization data elements, forecasts, trends, or relationships.

    The board reversed because the examiner ignored the requirement for “various granularities.” I actually, do not know what granularities means in this context. Perhaps it is enough to save the claim under Alice.

    But the main problem with the claim is this: it is presented at such a high level of abstraction that it could not possibly pass Alice step 2.

  41. Gene Quinn July 18, 2016 4:26 pm

    Edward Heller-

    What good does immediately appealing to the PTAB do when it is clear that even a successful appeal will be met with reopening of prosecution?

    If there were Alice problems with these claims the Board should have noticed and either entered a new ground of rejection or remanded to the examiner, both of which they have the power to do.

    Your mistake is you believe these bogus Alice rejections to be proper. 101 is a threshold inquiry. In many (if not most) of these cases the Board overturned the examiner on 112. I’m not sure how an application can have adequate 112 support and still not pass muster under 101 as an abstract idea.

    As for the recitation of computer generically, the CAFC in Enfish explained that the fact that the method is carried out on a general purpose computer cannot mean that the method is patent ineligible.

    As for the PTO having a duty to reject these applications, that is garbage. The PTAB reviewed the claims, saw no problems. Examiners and TC Directors are not supposed to be Super APJs. They are supposed to be inferior to the APJs in the appeals structure and only in the most extraordinary of cases is 41.54 supposed to be ignored at the expense of 1.198. To suggest otherwise makes appeals a complete waste of time and nothing more than advisory, which they sadly are in TC 3600.

  42. Edward Heller July 18, 2016 4:33 pm

    Gene, good point there about the PTAB and Alice.

    Second, I fully agree with you that the PTO cannot simply keep applications pending by finding new art on remand. That seems to violate both the rules and basic due process. An APA suit might be appropriate.

    But, cases seem to have been appealed before Alice came down. What the PTO is doing is entering Alice rejections on remand. They do not seem to be searching for new prior art.

    This is, in my view, not improper. I doubt that an district court would disagree with the PTO on this.

  43. Gene Quinn July 18, 2016 4:35 pm

    Ed-

    Wait for tomorrow’s article… and Wednesday’s article. The article for tomorrow is scheduled and I think will be jaw dropping. I’m nearing completion on my article for Wednesday, which again I think will continue to only add to the mounting evidence that something is seriously wrong in TC 3600.

    -Gene

  44. Curious July 18, 2016 4:50 pm

    But the main problem with the claim is this: it is presented at such a high level of abstraction that it could not possibly pass Alice step 2.
    Except Step 1 now requires more than just some (easy to find) identification of an abstract idea that can somehow be tied to the claims (see Rapid Litigation Management v. Cellzdirect). Personally, I think Step 1 is where the better arguments lie. Once you’ve gotten to Step 2, everything is arguable conventional.

    You think that claim is “directed to” an abstract idea? Then put forth your Step 1 analysis. What is the abstract idea to which claim 1 is directed?

    The PTAB reviewed the claims, saw no problems.
    Since I’ve reviewed many decisions on appeal (see my comment in Gene’s other article) as to this very issue, I can say that the PTAB has not been shy about instituting new grounds of rejection under 35 USC 101. The fact that the PTAB could have instituted a new grounds but did not should be telling.

    They do not seem to be searching for new prior art.
    Obviously, you don’t know &^%$. Every instance in which I identified an application that was reopened and cared to look (I didn’t care to look at them all but it wasn’t the data I was collecting) I saw in the file wrapper an indication that the examiner performed another search.

  45. Gene Quinn July 18, 2016 5:16 pm

    In response to Curious-

    “I saw in the file wrapper an indication that the examiner performed another search.”

    I am seeing a lot of new searches also. It strikes me as odd why you would need a new search just to issue an Alice rejection, and doing a new search is prohibited by 1214.04 anyway. My only guess is that new searches were being done in an attempt to find something, anything, to use to further reject the applicant, MPEP 1214.04 and office policy be damned!

  46. Curious July 18, 2016 5:42 pm

    office policy be damned
    The office policy in TC 3600 is the only good patent application is an abandoned patent application.

  47. Alex in Chicago July 18, 2016 11:39 pm

    Curious, if you indeed think the law is the way you stated in post 36 you are doing a serious disservice to your clients, borderline malpractice. The law is in no way near the state that you describe it.

    Also, Gene, I find your faith in the PTAB recognizing Alice-eligible/ineligible claims endearing, but it is sadly misplaced. They seem hardly competent at that task.

    Lastly, performing searches is part of section 101 Alice rejections. Plain and simple. Alice step two asks the whether “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” If you do not resolve what the PA is, you cannot possibly determine whether an element or combination of them amounts to the”something more” SCOTUS requires. Also, honestly, any search done prior to an appeal is stale by the time an examiner receives the response. With improved classification and search algorithms in EAST re-doing searches post appeal should be a matter of course prior to allowance. Its the other art units that are being stupid on that front.

  48. Curious July 19, 2016 12:46 am

    The law is in no way near the state that you describe it.
    I’m working with what the Supreme Court stated in Alice. What are you working with?

    Curious, if you indeed think the law is the way you stated in post 36 you are doing a serious disservice to your clients, borderline malpractice.
    Clearly, you don’t understand what is meant by “malpractice.” It has a specific meaning that a lawyer would know. As such, I doubt you are a lawyer. Also, I suspect my clients are far more sophisticated and well-informed about the law than you are.

    you cannot possibly determine whether an element or combination of them amounts to the”something more” SCOTUS requires
    You cannot possibly determine whether an element or combination of them amounts to “something more” than the abstract idea until SCOTUS explains what is mean by an “abstract idea” to which the claims are directed. Remember, SCOTUS declined to define what they mean by “abstract idea.” If you don’t know what is an “abstract idea” (at least how SCOTUS defines it), how do you know if you have significantly more than the abstract idea?

    With improved classification and search algorithms in EAST re-doing searches post appeal should be a matter of course prior to allowance. Its the other art units that are being stupid on that front
    Obviously, we are dealing with an examiner. As for the other art units, perhaps they are following the MPEP — you know the part in MPEP 1214.04 which states “The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.” I know the MPEP is merely optional in 3600 (particular if it supports Applicant’s arguments) — except, of course, when it supports the Examiner’s rejection in which case it is akin to the Bible or the Ten Commandments written by the hand of God.

  49. Lost In Norway July 19, 2016 4:56 am

    WHY don’t they want to issue patents? I wonder if Vidovich has ever given a statement. It’s an issue for the director if there never going to be patentable subject mater in an art unit. It’s not the job of Director Vidovich to run their own person fiefdom.

    You do the job you are assigned to the best of your ability.Once issued it’s someone else’s problem (3rd party review). I’m trying, I really am, but I can’t understand what 3600’s problem with patents are. I can’t imagine that this behavior would stand in an engineering art unit. In fact, that’s a good question. Is it only in the art units that can use Alice that this happens in?

    Gene, I really look forward to your further articles on this. It is so important that something so broken is fixed. They are playing with inventors money and possible success, which is the exact opposite of what the USPTO should be doing.

  50. Easwaran July 19, 2016 6:33 am

    Gene, thanks for focusing on this issue. There are clearly very large problems. I just wanted to quibble with one theme I’ve seen raised recently about Board practice, which you recently mentioned in post 41:

    “If there were Alice problems with these claims the Board should have noticed and either entered a new ground of rejection or remanded to the examiner, both of which they have the power to do.”

    The problem with the first suggestion, of course, is that Alice rejections are premised on underlying factual findings. The Board should NOT be in the business of making factual findings absent evidence supporting those findings, and we already know the Board should only rely on the record before it. For this reason, I think the Board should essentially never be making new Alice rejections unless somehow the facts underlying those rejections (e.g., the evidence demonstrating that an idea is a fundamental economic practice, or the prior art demonstrating the conventionality of the combination including the additional elements) are already on record.

    The side effect of this procedure, of course, is that it suggests that it will be proper procedure (sometimes) to issue new rejections following Board decisions (e.g., when the Alice framework was never previously applied but the claims would fail the analysis). Remember, though, that re-opening after Board decisions wouldn’t be as large of a problem without the incredible appeal backlog, so I’d say on this particular issue, the primary culprit is the understaffing of the Board (which greatly exacerbates the problems caused by the poor quality of rejections in these art units).

    The problem with remanding cases is that it likely wouldn’t solve the issue of delay, because in reality what would happen is that we’d deal with a 2-3 year wait before the remand. And if the Board were to sift through every appeal for potential remand after Alice was issued, that would cause even longer delays in appeals having other issues.

  51. Easwaran July 19, 2016 6:56 am

    Lost in Norway asks: “WHY don’t they want to issue patents?”

    This is, of course, the fundamental question. I’ll give my own perspective, and FYI, I used to examine applications in AU 3689 before leaving for private practice a number of years ago. The heavy thumb on the scale against allowance was one of the reasons I left the USPTO.

    The only guess I have is that it is human nature to have a long memory for criticism. Back in the 2000s, there were routine condemnations of business methods patents by the broader media (not necessarily the patent-specific media), focusing for instance on the Amazon One-Click patent, and whatever outrage-of-the-day was released by blogs such as Ars Technica or the like. And the problem is that subject matter experts who frequent those websites can sometimes identify prior art that did not occur to the patent examiners. Although it was not always the case that patents were issued improperly (the Amazon One-Click patent still lives, as far as I know), the folks in the business methods areas were very embarrassed by the issuance of some patents having clear prior art discovered after the fact.

    So many of the people who are in charge had their outlook on business methods patents shaped by this bad press, and they are constantly fearful that other art is out there, even if they can’t find it. As a result, the SPEs and more senior examiners who were around then (or who have trained under those who were around then) are very cognizant of their “duty” to protect the public from “bad” business methods patents even when there is the appearance of allowability of a claim. To put it simply, there is a heavy skepticism about any invention in this area. Unfortunately, people who have never been attorneys or applicants have no way to properly weigh this perceived duty against the harm they inflict on patent applicants by improperly rejecting claims, because the public outrage for rejection is not in proportion with the outrage for some allowances.

    Although I worked there for several years, I’m really just speculating here, because who can know what someone else actually thinks? But it’s my best guess.

  52. Curious July 19, 2016 7:59 am

    So many of the people who are in charge had their outlook on business methods patents shaped by this bad press, and they are constantly fearful that other art is out there, even if they can’t find it. As a result, the SPEs and more senior examiners who were around then (or who have trained under those who were around then) are very cognizant of their “duty” to protect the public from “bad” business methods patents even when there is the appearance of allowability of a claim.
    You are probably correct is this assessment. That being said, their job is to follow the law — not ignore the law in order to save the USPTO from some future (but not guaranteed) embarrassment. The proper response to post-issuance found prior art is to provide the USPTO will better search tools. Clearly, search tools for prior art today are much, much better than they were in 2000. However, this mindset still remains.

    This is why I believe much of 3600 needs to be disbanded and reformed. A complete change in culture needs to created. Much of the computer-implemented inventions could be shifted to 2100.

  53. Night Writer July 19, 2016 8:22 am

    Does anyone know of a good seminar on patent claim drafting? There used to be one that you had to have 10 years experience to take.

  54. Night Writer July 19, 2016 8:28 am

    @52: To my mind, the whole problem is the SCOTUS. They have abandoned laws for equity. They want a system where there is no laws, but only procedure and judges deciding the outcomes of cases with appellant courts always being able to overturn. That is what they are building with the case law of overturning the Constitution.

    You know, when you think about it, what they are doing is maximizing the power of the judiciary but invalidating statute after statute and turning it into an equity test (giant balancing test often with just a judge deciding).

    But, if you think about you realize that the only way to crush people like the 3600 cancer is with courts of LAW. Courts of equity will never be able to mold human behavior other than just making us all afraid of the law and the power the courts wield.

    Pretty sad really that we are no longer a nation of laws. I think Alice is a prime example.

  55. Gene Quinn July 19, 2016 9:18 am

    Alex in Chicago-

    You say: “Gene, I find your faith in the PTAB recognizing Alice-eligible/ineligible claims endearing, but it is sadly misplaced. They seem hardly competent at that task.”

    My point was simply that if any single group is acquainted with Alice it would have to be the Patent Trial and Appeal Board. They seem all too well acquainted with Alice, or at least their version of Alice where the patent applicant or patent owner seems to typically get the short end of the analysis.

  56. Night Writer July 19, 2016 9:37 am

    The basic problem is that Alice is not law, but an equity solution that enables a judge to invalidate pretty much any claim they feel like invalidating.

  57. Alex in Chicago July 19, 2016 2:37 pm

    I’d agree with you Gene, but these units all appear to have separate instructions. If a Alice rejection (in name) is overturned by the board, I think very few will inevitably be overturned. Your stats aren’t quite granular enough for me to really figure out whether that has happened or not. I’d think the board is getting through the first wave of Alice rejections that actually cite the case right about now, based on their typical delay.

    I was once an examiner, but left as soon as practicable because of the massive difference between what ideally should happen at the PTO, and what does. Probably less than 1/3 of SPEs know what the rules of obviousness are, its likely that these entire sets of AUs got director-level instructions to investigate all applications, even on remand, for Alice. The SPEs are unlikely to even know how to apply Alice, let alone to have the ability to read it.

    Moreover, the mantra + the quota system likely turns their examiners into Alice-bots, because Alice is basically a short-cut 103 rejection, and that is the law as written by SCOTUS, not a USPTO problem. If I was in the kind of an AU with the option, I probably could have tripled my output by issuing Alice rejections instead of doing real PA searches.

    But, I will say the MPEP is wrong in 1214.04 . There is no statutory support for non-renewal of a search and the PTO has a duty to clients to ensure that claims issued will be bolstered against Ex-Parte and Inter-Partes re-examinations which are much worse than receiving a new non-final OA.

  58. Edward Heller July 19, 2016 2:40 pm

    Night@54, I wholly agree. Law requires clear rules. Scalia often said that balancing factors was not law.

    Yes, in a sense, Bilski/Alice is not law. But neither is 103 to the extent it ultimately relies on the “opinion” of some expert witness. There is no objectivity when the ultimate decision is based on “common sense.”

  59. Gene Quinn July 19, 2016 2:51 pm

    Alex in Chicago-

    You say: “There is no statutory support for non-renewal of a search and the PTO has a duty to clients to ensure that claims issued will be bolstered against Ex-Parte and Inter-Partes re-examinations which are much worse than receiving a new non-final OA.”

    I think what you are saying is that the PTO has an obligation to reopen prosecution after a complete reversal by the Board when the examiner thinks there are other grounds that continue to merit rejection. I disagree.

    The applicant is left to rot waiting for an appeal for 3 to 4 years. It is unconscionable that these applicants were left to wait for an appeal decision where there was absolutely no intention of issuing the patent even if there was a complete reversal. These types of delay tactics represent a war of attrition against applicants. These tactics normally work, with applicants generally giving up and abandoning cases because it is clear that whatever they do, no matter whether they prevail, regardless of the frivolous rejections, the examiner will simply reopen prosecution. It is really quite sickening if you ask me.

  60. Edward Heller July 19, 2016 6:43 pm

    Gene, speaking of “left to rot waiting,” at least some patent term might be restored. But then consider reexaminations that have been known to extend for more than a decade, the entire time the patent being unenforceable. What matters that the claims might ultimately be confirmed, or that new or amended claims be added. The delay alone destroys the patent. The existence of reexaminations is destructive.

    Now, even though IPRs are faster, they are conducted with no presumption of validity, and where the same panel decides both to institute and the final decision, effectively asking the patent owner to convince the panel that they were initially wrong. A hard task as witnessed by the rate patents die in IPRs. The backers of IPRs fully intended they be a killing field.

  61. Anon July 19, 2016 8:33 pm

    Mr. Heller, whenever you start to complain about the loss of the presumption of validity, I cannot help but return to the sticks in the bundle of property rights discussion.

    Your own complaints align with the views that I have expressed concerning sticks that have been taken.

    I merely have asked you at what point that that taking occurs.

    That point occurs at the initiation point – completely separate from ANY further adjudication on the merits. You suffer THAT loss at THAT point. THAT loss, THAT taking has a material effect (as your own complaints seem to indicate that belief). THAT taking occurs (per the recent court ruling) with NO Article III court review, and certainly, THAT taking occurs with zero recompense to the patent holder. And lest we forget, THAT taking occurs at the undocumented “reasoning” of the political body of an officer of the executive branch.

    You refuse to even take one step in that discussion, and for the life of me I cannot figure out why. For someone who is so adamant that a patent is a property right, you seem to not want to admit basic characteristics of property at law (the concept of sticks in the bundle of property rights). For some unknown reason you insist instead on a “All or Nothing” view of what a taking means.

  62. Night Writer July 20, 2016 7:45 am

    OT, but does anyone know of a good claims drafting seminar only for people with lots of experience?

    (I am a person with a fake name and fake email address. My biases are that I work for a large law firm and do a lot of prosecution.)

  63. Alex July 20, 2016 10:18 am

    “But if the Alice problems are so serious and so significant that the extraordinary measure of re-opening prosecution and not effectuating the decision of the Board is being made, why didn’t the Board notice the Alice problems and issue their own new ground of rejection?”

    The rumor around the office is that the PTAB doesn’t actually want to take a position on Alice because it’s still be pseudo-lititgated (eg. DDR and that new one are constantly changing how to analyze it). So they throw it back to the TC to make the Alice rejection.

    I disagree with Quinn here that reopening for Alice isn’t an “extraordinary” reason, mainly because it determines if the patent is statutory or not, which is the definition of “extraordinary”

  64. Gene Quinn July 20, 2016 10:34 am

    Alex-

    You can disagree with me all you want, but clearly the reopening for Alice is an abuse of discretion. Whether you want to admit that is irrelevant.

    The Patent Office cannot allow an applicant to rot on appeal for 3 or 4 years only to have the Board decision have no effect. These examiners and TC Director Vidovich had absolutely no intention of ever issuing these patents. Alice was decided YEARS before these cases were reopened for prosecution. They are making a mockery out of the system. The fact that you are OK with this and believe that harassing applicants in this fashion is appropriate speaks more about your and your philosophy than anything else.

  65. Edward Heller July 20, 2016 12:26 pm

    anon@61, I hear you that the filing of an IPR is somewhat of a disaster to a patent owner, and can drop his company’s stock price like a rock. Still, it is the existence of IPRs that is the problem, not the filing of IPRs. The existence of IPRs by itself has dropped the value of patents by two thirds.

    But, if you would like to present your views to the Supreme Court, I urge you to file an amicus brief when our petition for writ of certiorari has been granted.

    We file our reply brief today.

  66. mike July 20, 2016 12:39 pm

    I don’t remember reading any appeals in which the PTAB reversed 112, 102, or 103 rejections and issued an Alice rejection as a new ground of rejection. I have read a great number of appeals in which the PTAB suggested that if prosecution were reopened, the Examiner should consider whether the claims should have been rejected under 101 in view of the Alice decision. One specific example from today:

    “In the event of further prosecution, including any review for allowance, we
    invite the Examiner’s attention to the question of whether the claims are
    patent-eligible under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
    Int’!, 134 S. Ct. 2347, 2355-56 (2014). Regarding at least method claim 31,
    but for the recitation of a processor, a question arises as to whether a person
    would be capable of performing the contested steps or acts as mental steps,
    or with the aid of pen and paper. See Cy her Source Corp. v. Retail
    Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
    processes can be unpatentable, even when performed by a computer, was
    precisely the holding of the Supreme Court in Gottschalk v. Benson”).
    Moreover, “a method that can be performed by human thought alone is
    merely an abstract idea and is not patent-eligible under§ 101.”
    CyberSource, 654 F.3d at 1373. We have decided the issues before us. We
    leave further consideration of this § 101 issue to the Examiner.”

  67. Curious July 20, 2016 1:57 pm

    I don’t remember reading any appeals in which the PTAB reversed 112, 102, or 103 rejections and issued an Alice rejection as a new ground of rejection.
    I jumped onto the Board’s search engine and typed as a search term:
    3600 and “new grounds” and 101

    It only took me the third result (Appeal No. 2013-009746) to find a decision in which claims 15-23 were reversed (claim 24 was affirmed) but new grounds of rejection (Alice 101) was entered as to claims 15-24. From the time I read your comment to the time I posted this — probably 3 or 4 minutes.

  68. Gene Quinn July 20, 2016 2:52 pm

    Mike @66-

    Did you actually read the article and look at the supporting documents? I don’t know how you could have looked at the documents I provide and reach your conclusion, which is erroneous.

    See Application No. 12/429,881 (Board reverses on 102 and 103 and prosecution reopened on June 30, 2016 for Alice rejections).

    See Application No. 11/754,676 (Board reverses on 101, 103 and 112 and prosecution reopened on February 8, 2016 for Alice rejections).

    See Application No. 13/031,645 (Board reverses on 101,103 and 112 and prosecution reopened December 3, 2015 for abstract idea rejection not citing Alice).

    See Application No. 12/119,593 (Board reverses on 101, 102, 103 and 112 and prosecution reopened September 4, 2015 for Alice rejections).

    There are just examples from the documents I cited in the article. I’ve left out all the single issue 103 reversals that then lead to Alice rejections.

    Clearly, what you say you haven’t ever seen happen has happened multiple times even with this very small representative set.

    -Gene

  69. Sam July 20, 2016 4:39 pm

    It is interesting you have written about this director. I do believe more detailed investigation needs to be done here. It’s true that PTAB decisions are re-opened for adding Alice rejections when the cases weren’t remanded even. Yet there is even more to this. But first, it’s not all the examiners who are doing the bad job. I believe it’s possible that a lot of these Aloce decisions are management and this director. It seems he may have pulled issued/allowed applications and forced examiner’s to do 101 rejections. This is after my colleagues and I had worked with examiners to find ways to overcome the Alice rejections (with amendments and solid case law arguments) which even examiners agreed with. After talking to the examiners it seems they are then forced to come up with arguments and rejections they themselves disagree with. This TC director could possibly be preventing even Applicants and examiners to come to a resolution on Alice. It looks like this director prides himself with low allowance rates using Alice, has a personal issue with every single application coming into 3600, and/or maybe there is a lack of understanding computing and software engineering arts. A little research revealed that Vidovich was a mechanical examiner and a spe in a mechanical art unit (you can search and find applications he has worked on in the past before he was director – see Google patents for a quick search). Yet he was made a TC director of computing/software/business method art units. He has had limited experience dealing with 101s throughout his career especially in the art unit/units he is made in charge of now. Possible power trip issues here and maybe even abuse of authority in this case by this director over PTAB, examiners, and applicants. But I would like a thorough investigation on what is actually going on and why are even allowances being pulled. Clearly there would be no incentive for examiners to work with applicants and attorneys as they know it’s safer to keep rejecting then to be reviewed and overturned by the director, and then to deal with rejecting a case they agreed overcame 101. attorneys have also have read up and worked with Alice decision and the subsequent cases that came and further genuinely worked with experienced examiners. Unclear why this director has not been questioned on his practices by management and how he is more qualified then anyone else to make final calls on 101.

    Second the PTAB is not at all doing its job either. Looking at the above cases and reviewing a few more, it is apparent they don’t provide much explanation in their decisions as they should. Their reasoning and proper analysis is to guide examiners and it seems one cannot see as such. They seem to make quick decisions and leave further analysis open. I am all for winning at the board but it’s true we cannot, as of now, avoid the re-openings. But if PTAB did a thorough job and not give unexplained decisions, I believe the director and examiners will be more bound to that decision. The PTAB could have easily stated that the application(s) passes 101 as they should know the current state of things. Yet they have refused to mention it all when passing decisions (and it’s 3 of them working on one case). The PTAB practices also need to be investigated and written about as incompetency is replete there too. But maybe it’s not incompetency and everyone just wants to pass the decison buck around and the applicant is stuck with the examiner as their only way out (who in turn, as it seems,have no concrete authority to work with applicants). I feel that maybe a new external hire director should be made in charge of TC 3600 which could provide a refreshing outlook for both applicants and maybe even examiners alike. Maybe this is just wishful thinking…

  70. Anon July 20, 2016 7:19 pm

    Mr. Heller @ 65,

    Once again, you opt out of a conversation. Why is that?

    Further, for obvious reasons of maintaining anonymity, I will not be filing a brief. However, there is nothing stopping you from taking the conversation that I am attempting to have with you and (if you are granted cert) having that very same conversation with the Court.

    Of course, it then would behoove you to actually flesh out that conversation (perhaps not with me on a public forum – but at least engage in the concepts).

  71. Alex July 20, 2016 7:57 pm

    @64

    Well, no, Quinn, if you’d read what I said I didn’t support any abuse of the applicant.

    What I find interesting is this: “Alice was decided YEARS before these cases were reopened for prosecution. They are making a mockery out of the system. ”

    There are two implied positions here

    1) that because Alice was decided years ago, that means that it’s not valid to reopen if the application is deserving of a rejection
    2) that reopening for a Alice rejection is a “mockery” of the system

    You can’t possibly be suggesting that if a patent application has a valid, blatant 101 Alice issue, that it shouldn’t be reopened to make that rejection.

    At least I hope that’s not what you’re saying.

  72. Gene Quinn July 20, 2016 11:32 pm

    Alex-

    First I did read what you wrote. Second, you need to wake up and start reading… and trying to comprehend… what it is that I’m saying.

    What you are saying is it is appropriate for applicants to sit and wait for 2 years AFTER Alice has been decided and then have prosecution reopened once they where completely victorious. So for those 2 years AFTER Alice that they were just sitting there on appeal the examiners and TC Director knew full well they were not going to issue the patent regardless of the Board decision. That is DISGUSTING. This is particularly sickening given how often prosecution is reopened in TC 3600, period. Perhaps you saw the article today about how often prosecution is reopened thwarting appeals. See:

    http://www.ipwatchdog.com/2016/07/20/prosecution-reopened-examiners-stop-applicants-appealing/id=71087/

    I’m not really sure why you can’t understand that the Board has the authority to issue a new ground of rejection, which they do do. They also have the authority to remand to the examiner. The did neither, which means they did not see any Alice problems.

    Finally, you imply that the problems with these patents are “blatant 101 Alice issues.” If they were so blatant why didn’t the Board issue their own ground of rejection or at least remand?

    Really, your logic (or lack thereof) is troubled to say the least. Making counterfactual statements and then pretending they support you and make me wrong isn’t very becoming. It makes your position look weak and looks like you really don’t understand what is going on here.

    -Gene

  73. Night Writer July 21, 2016 7:01 am

    Maybe what the board should have done after Alice is said that the law has radically changed and given everyone on Appeal an option of re-opening prosecution immediately with a free response from the Examiner regarding 101. The details of the procedure would have to be worked out, but basically giving them the right to demand the Examiner provide new arguments with Alice for 101.

    Seems like the real problem is that the SCOTUS radically changed patent law with case law. In other words, it is pretty clear what the SCOTUS did was unconstitutional and the problems at the board are just one of the many consequences of this.

  74. KenF July 21, 2016 9:58 am

    Been out for a few days, so haven’t followed closely lately.

    For anyone who still doesn’t think folks at the PTO play games, let me offer this. I just filed an appeal in a case where the Examiner seems to be doing just that. The central issue on appeal is what it means for a gaming machine to be “being played.” (Yes, that seemingly easy-to-understand concept, which has not been given any sort of special meaning in the spec’n, is under appeal.) Trying to show by comparison to other adjudicates cases that the Examiner’s position is overstrained and untenable, I cited to the recent case of In re Imes, in which case the examiner’s position that transferring data between devices using a flash drive constitutes wireless communication — a concept we all understand quite clearly in this modern era of WiFi, cellular transmissions, etc. — was held to be “inconsistent with the broadest reasonable interpretation in view of the specification.” The Examiner’s response in my case? “Re. ‘wireless communication’, addressing the phrase “being played” is the key part of the argument, not ‘wireless communication’.”

    So either the PTO has as a primary examiner someone who is incapable of understanding the point of an argument that relies on comparison, or we have someone who just thinks prosecution is supposed to be a game of “catch-me-if-you-can.” In my experience with primaries, who often think they can do no wrong, it is, unfortunately, frequently the latter…….

    So all this nonsense we see coming out about quality patents, well, forgive me if I scoff at it…….

  75. KenF July 21, 2016 9:58 am

    Follow-up:

    There have been 9 actions and 4 RCE’s in this case. Enough is enough

  76. mike July 21, 2016 3:02 pm

    Curious @67, Gene @68 –

    I’m sorry, it appears that neither my observation nor the thrust of my argument were as clear as I thought they would be. I did not intend to imply that I had searched the appeals database and could find no 101 new rejections applied by the board. However, I skim several new appeal decisions a week as light reading when I have a few minutes, and although I couldn’t remember any specific 101 new rejections off the top of my head, I was struck by the number of times that, although the PTAB did not designate a new ground of rejection under Alice, they appeared to recommend that if prosecution were continued, an Examiner would be a fool not to issue an Alice rejection if prosecution were reopened. And so they do.

    I agree with Gene @64 that reopening prosecution only to issue a boilerplate Alice rejection is at least harassment, if maybe not technically an abuse of discretion. However, it seems that, in contrast to Gene @72 (concluding that if the PTAB saw Alice issues they would issue their own rejection), the PTAB decisions are written in a way to actively encourage Examiners to seek out new Alice rejections in many if not most reopened prosecutions. If I were a patent examiner, I would certainly take the sense of these decisions to indicate that I should ALWAYS be looking to apply an Alice rejection on reopening prosecution, whether the PTAB mentions it or not.

    This is just one more way to make patent prosecution prohibitively expensive and encourage applicants to leave with nothing.

  77. Alex July 23, 2016 2:51 am

    @72

    Then your problem is with the cowardly PTAB not issuing a new grounds of rejection when they know what the examiner is going to do because they *told* the examiner to do it.

  78. Another Anon August 29, 2016 2:10 pm

    Gene,
    Here are some more appeals where the examiner was reversed on 102/103, but prosecution was reopened, by Greg Vidovich as TC director, with only a 101 rejection.
    12/275,232
    11/898,482
    12/623,015
    Also see 12/366,322.

  79. Prizzi's Glory September 1, 2016 1:57 pm

    I read through the ‘232 Application. Registering refers to updating or adding data to a database. A database is a well-defined non-volatile structure in a computer memory. Human minds alone are unable directly to add data to a well-defined structure in a computer memory. Adding data to a database or updating a database requires I/O and is therefore not effectively computable in the sense described by the last non-final rejection, which must be considered goobledygook and gratuitous.

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