Prosecution reopened: Examiners stop applicants from appealing

By Gene Quinn
July 20, 2016

Ask patent attorneys who routinely represent clients in TC 3600 about the biggest problems they face and one of the recurring answers you will hear relates to examiners preventing an appeal. Certain examiners, it seems, simply will not let you get to an appeal. But how is that possible?

37 CFR 41.31(a)(1) says:

“Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in §41.20(b)(1) within the time period provided under §1.134 of this title for reply.”

It would seem that Rule 41.31(a)(1) says that every applicant has the right to appeal and there would seem to be nothing the examiner could do to prevent the applicant from appeal. Well, not exactly.

Stop!Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time to file a Reply Brief has run. See 37 CFR 41.35(a). Applicants have a right to file a Reply Brief in response to an Examiner Answer. See 37 CFR 41.41. What this means is the patent examiner, in order to frustrate the applicant’s ability to have the Board hear a case, can simply refuse to file an Examiner’s Answer and instead reopen prosecution.

Unfortunately, the reopening of prosecution after the applicant has filed an appeal brief happens all too often, particularly in TC 3600.

Just focusing on Art Unit 3689, I’ve located at least a dozen instances [1] over just the last several years where the applicant filed an appeal brief and prosecution was reopened. In each of these cases the Supervisory Patent Examiner (SPE) authorizing reopening of prosecution was Janice Mooneyham. This list is not exhaustive. I also located numerous other examples where this same pattern occurs in other Art Units in TC 3600 as well. [2] However, this phenomenon is not observed in all Art Units in TC 3600, which suggests this tactic is supervisor dependent and not a TC wide policy. For example, recent examples of reopening after an Appeal Brief was filed could be found in Art Unit 3628.

One of the most egregious cases of reopening prosecution after an Appeal Brief was filed comes from Art Unit 3622 in Application 13/838,714. The Appeal Brief was filed on May 28, 2014, which was less than one month before the Supreme Court’s decision in Alice v. CLS Bank. On August 14, 2014, the examiner notes that prosecution is reopened in light of guidance received as the result of Alice, which seems reasonable. What is inexplicable, however, is the fact that the examiner also objected to the drawings, objected to the specification and asserted new 102 rejections. There is nothing in Alice that could have possibly lead to the examiner realizing an objection to the drawings was now all of the sudden appropriate. If there were a problem with the drawings and/or the specification the examiner should have noticed well before this point. This type of harassing action sends a clear message to the applicant — no patent will issue under any circumstances, period.

Another example that strikes me as particularly egregious is what happened in Application No. 12/586,574. In this case an Appeal Brief was filed on January 31, 2013. Then over seven (7) months later prosecution was reopened with new grounds of rejection being asserted on September 18, 2013. Prosecution again moves forward, with another Appeal Brief being filed by the applicant. This time a new ground of rejection is raised in the Examiner’s Answer on December 2, 2014, being approved by TC Director Greg Vidovich. With multiple appeal attempts being thwarted by new grounds of rejection who can blame the applicant for abandoning the application, which happened on September 16, 2015.

What makes many of these cases particularly worrisome is the fact that, at least in Art Unit 3689, the Office Actions reopening prosecution typically conclude that the arguments made in the applicant’s Appeal Brief are moot because they do not apply to any of the new references or new rejections being made. Well of course the arguments in the appeal brief would be moot when the examiner came up with all new rejections! So after unreasonable rejections and refusing to deal with the applicant the examiner moves the goal posts and in a rather condescending way brushes off the applicant’s Appeal Brief.

Do patent examiners understand that preparing and filing an Appeal Brief takes time and costs money? This game may be funny to them, but it is anything but funny to the applicant involved. It is anything but funny to those who are doomed to deal with TC 3600.

Also particularly troubling is the fact that the reopening of prosecution can occur against any applicant, with applications filed by Google, General Motors, General Electric, Target, Hewlett Packard and other multinational corporations all being reopened in this way. In one case, Application No. 10/548,255, prosecution was reopened two separate times after two separate appeal briefs were filed! The applicant, Koninklijke Philips Electronics, filed two separate appeals briefs only to have prosecution reopened both times.

In all by the most recent example of Art Unit 3689 moving the goal posts after the filing of an Appeal Brief (i.e., Application No. 13/794,814), which had prosecution reopened just days ago, the applicant gave up. How can you blame applicants for giving up? Delay, reject, frustrate and prevent the Board from reviewing frivolous examiner rejections. This isn’t how the system is supposed to operate.

When an examiner reopens prosecution in this manner the applicant is told they can either engage in prosecution again, which some did for a while, or they can file a new appeal right away. Filing another appeal brief right after prosecution was reopened when your last appeal brief was completely ignored doesn’t exactly seem like a wise or worthwhile strategy. But then again neither does prosecuting an application once an examiner you believe has been unreasonable, in an Art Unit with a reputation for being unreasonable, has just prevented your reasonable grievances from being addressed by the Board.

Many in the industry have felt that examiners reopening prosecution after the filing of an Appeal Brief is to prevent the Board from reviewing the ridiculous rejections given to applicants, and to artificially depress the applicant’s rate of prevailing on appeal. If you ask me the problem goes farther than that. Given everything we know that happens in TC 3600, with prosecution reopened even after a complete reversal by the Board, a 1.3% allowance rate in Art Unit 3689 this year, and applicants forced to wait upwards of 14 months for any action after a complete victory at the Board, it is hard to see this strategy as anything other than a strategy to prevent applicants from obtaining patents in the ongoing war of attrition being waged against applicants by TC 3600.

Observing behavior and commenting on that behavior can sometimes have a way of changing the behavior. After all, as Justice Brandeis famously said, sunlight is the best disinfectant. But wouldn’t it be great if the Patent Office changed this “us against them” mentality and started issuing patents rather than harassing applicants relegated to the dungeon that has become TC 3600?

I’m not going to hold my breath, but the applicants on the cases listed below may understandably be hoping for the best. I’ve discovered these twenty-three (23) applications currently in Art Unit 3689 where the applicant has filed an Appeal Brief and the application has yet to have prosecution reopened or an Examiner’s Answer filed. It will be interesting to watch these applications over the next several months (or longer). Will prosecution be reopened in any of these cases where an Appeal Brief has been filed? If so, how many?

  1. Application No. 14/263,668             Appeal Brief filed June 6, 2016
  2. Application No. 14/047,279             Appeal Brief filed June 16, 2016
  3. Application No. 13/724,297             Appeal Brief filed June 15, 2016
  4. Application No. 11/736,661             Appeal Brief filed May 31, 2016
  5. Application No. 13/965,988             Appeal Brief filed May 23, 2016
  6. Application No. 12/410,363             Appeal Brief filed May 12, 2016
  7. Application No. 13/630,290             Appeal Brief filed May 5, 2016
  8. Application No. 13/155,951             Appeal Brief filed April 29, 2016
  9. Application No. 12/760,285             Appeal Brief filed April 28, 2016
  10. Application No. 11/865,593             Appeal Brief filed April 25, 2016
  11. Application No. 11/531,652             Appeal Brief filed April 15, 2016
  12. Application No. 12/016,255             Appeal Brief filed April 8, 2016
  13. Application No. 11/843,975             Appeal Brief filed April 8, 2016
  14. Application No. 13/085,399             Appeal Brief filed April 6, 2016
  15. Application No. 12/636,258             Appeal Brief filed April 4, 2016
  16. Application No. 11/835,679             Appeal Brief filed April 1, 2016
  17. Application No. 12/765,947             Appeal Brief filed March 11, 2016
  18. Application No. 13/067,330             Appeal Brief filed March 1, 2016
  19. Application No. 13/415,803             Appeal Brief filed February 29, 2016
  20. Application No. 11/195,578             Appeal Brief filed February 29, 2016
  21. Application No. 12/039,215             Appeal Brief filed February 18, 2016
  22. Application No. 13/655,004             Appeal Brief filed January 25, 2016
  23. Application No. 13/422,949             Appeal Brief filed January 11, 2016

It seems that when the applicant has received frivolous rejections on an application prosecution is reopened after an Appeal Brief is filed. In cases where the examiner and SPE feel confident that the Board will affirm the examiner the case is allowed to go forward to the Board. Time will tell which category these applications fall into based on whether an appeal is allowed to go forward or whether prosecution is reopened, thereby thwarting review by even an impotent Board that has its reversals ignored with great frequency by the TC Director.

_______________

[1] An illustrative list of cases where SPE Mooneyham reopened prosecution in Art Unit 3689 after the applicant filed an Appeal Brief is listed below.

  1. Application No. 13/794,814
    Prosecution reopened for new grounds of rejection on July 11, 2016
  2. Application No. 12/986,521 (Google)
    Prosecution reopened for new grounds of rejection on February 20, 2015
    Application abandoned on October 1, 2015
  3. Application No. 11/944,828 (General Motors)
    Prosecution reopened for new grounds of rejection on August 1, 2014
    Application abandoned on May 31, 2016
  4. Application 10/548,255
    Prosecution reopened for new grounds of rejection on May 16, 2014
    Prosecution reopened for new grounds of rejection on February 15, 2011
    Application abandoned April 15, 2016
  5. Application No. 13/229,530
    Prosecution reopened for new grounds of rejection on May 20, 2014
    Application abandoned on January 15, 2015
  6. Application No. 11/757,185
    Prosecution reopened for new grounds of rejection on February 27, 2014
    Application abandoned on October 2, 2014
  7. Application No. 11/423,658
    Prosecution reopened for new grounds of rejection on October 23, 2013
    Application abandoned on July 2, 2015
  8. Application No. 11/864,275
    Prosecution reopened for new grounds of rejection on February 13, 2013
    Application abandoned on October 9, 2014
  9. Application No. 12/118,807 (General Electric)
    Prosecution reopened for more detailed rejection on December 19, 2012
    Application abandoned on February 19, 2014
  10. Application 11/927,961
    Prosecution reopened for new grounds of rejection on September 11, 2012
    Application abandoned on October 24, 2013
  11. Application No. 11/808,263
    Prosecution reopened for new grounds of rejection on August 30, 2012
    Application abandoned on March 14, 2013
  12. Application No. 11/861,817
    Prosecution reopened for new grounds of rejection on December 15, 2011
    Application abandoned on September 10, 2015

 

[2] Here is a list of other cases where prosecution was reopened in elsewhere in TC 3600 after the applicant filed an Appeal Brief is listed below. Omitted are situations where the appeal brief was filed shortly before the Supreme Court issued its decision in Alice v. CLS Bank, with reopening solely for new 101 Alice rejections. This illustrative list is not an exhaustive list by any means.

  1. Application No. 13/668,989
    Prosecution reopened for new grounds of rejection on September 8, 2015
    Application abandoned on March 23, 2016
  2. Application No. 13/210,294
    Prosecution reopened for new grounds of rejection on April 21, 2015
    Application abandoned on November 4, 2015
  3. Application No. 12/140,649
    Prosecution reopened for new grounds of rejection on December 16, 2014
    Application abandoned on October 30, 2015
  4. Application No. 11/552,796
    Prosecution reopened for new grounds of rejection on December 14, 2014
    Application abandoned on March 23, 2016
  5. Application No. 11/918,620
    Prosecution reopened for new grounds of rejection on December 5, 2014
    Application abandoned on January 4, 2016
  6. Application No. 13/838,714
    Prosecution reopened for new grounds of rejection on August 14, 2014
    Application abandoned on March 2, 2015
  7. Application No. 13/491,449
    Prosecution reopened for new grounds of rejection on July 24, 2014
    Application abandoned on February 6, 2015
  8. Application No. 13/407,622
    Prosecution reopened for new grounds of rejection on July 7, 2014
    Application abandoned on January 22, 2015
  9. Application No. 13/269,360
    Prosecution reopened for new grounds of rejection on July 7, 2014
    Application abandoned on January 23, 2015
  10. Application No. 13/125,725
    Prosecution reopened for new grounds of rejection on April 8, 2014
    Application abandoned on November 17, 2015
  11. Application No. 12/403,826
    Prosecution reopened for new grounds of rejection on January 29, 2014
    Application abandoned on August 8, 2014
  12. Application No. 13/269,774
    Prosecution reopened for new grounds of rejection on January 13, 2014
    Application abandoned on October 20, 2014
  13. Application No. 12/586,574
    Prosecution reopened for new grounds of rejection on September 18, 2013
    New ground of rejection also given in Examiner Answer December 2, 2014
    Application abandoned on September 16, 2015
  14. Application No. 12/840,099
    Prosecution reopened for new grounds of rejection on July 18, 2013
    Application abandoned on August 13, 2014
  15. Application No. 12/905,469
    Prosecution reopened for new grounds of rejection on October 7, 2013
    Application abandoned on December 14, 2015
  16. Application No. 12/881,528
    Prosecution reopened for new grounds of rejection on September 20, 2013
    Application abandoned on September 29, 2014
  17. Application No. 13/398,600
    Prosecution reopened for new grounds of rejection on September 4, 2013
    Application abandoned on October 1, 2014

 

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 26 Comments comments.

  1. SpivOl July 20, 2016 8:15 pm

    “If there were a problem with the drawings and/or the specification the examiner should have noticed well before this point.”

    So IF there is a problem with the drawings, 102 grounds of rejection, are you saying that those shouldn’t be put forward?

    It seems like this article is mistaking one thing for another. In order to take the position Gene has – that it’s unreasonable to reopen and provide a new grounds of rejection, we must first posit that the new rejection is improper.

    This isn’t inherently the case.

    What I see this article more as is a battle cry against poor examination to begin with. Sure, some cases are reopened frivolously, but in order to prove that, Gene would have to respond to every office action in that category. Something he isn’t going to do. So in order to be correct his underlying thesis – that the rejections are improper – must always be correct. If this isn’t the case, then he’s arguing NOT against unreasonable reopening, but against unreasonable examination.

    Which means he needs to get in line.

  2. staff July 20, 2016 10:29 pm

    ‘examiners preventing an appeal’

    There is a much simpler way to gauge the health of the American patent system -look at the applications filed by, patents issued to and number of infringers sued by inventors and small entities. Across the board all have plummeted over the last 10 years for 3 simply reasons. It is now too hard, too slow and too expensive for us to get and enforce our patents. Enough said. The time for action is now while there is still an economy and middle class left to save. Is the Patent Office ran, or controlled by invention thieves? The American patent system and American jobs are in crisis. When Chinese and large multinational 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

  3. Gene Quinn July 20, 2016 11:42 pm

    SpivOl-

    You say: “So IF there is a problem with the drawings, 102 grounds of rejection, are you saying that those shouldn’t be put forward?”

    RESPONSE: Please wake up! Ignorant comments like yours really don’t do anything to forward discussion.

    By further way of response allow me to say what SHOULD be obvious, but which apparently escapes you. If there were problems with drawings it SHOULD have been noticed by an examiner during prosecution and not for the first time only after an appeal brief is filed. So yes, what I’m saying is if an examiner can’t be bothered to notice a problem with drawings in an application they are SUPPOSED to have read and considered until that late in the game then the examiner should be estopped from raising the problem.

    You say: “In order to take the position Gene has – that it’s unreasonable to reopen and provide a new grounds of rejection, we must first posit that the new rejection is improper.”

    RESPONSE: No, but given your comments I don’t expect you to understand. Heck, you are probably one of the examiners who is screwing with applicants and fighting this war of attrition against them. Reject, force them to file an appeal brief, then reject again, and again and again. That is a fair process. No need to do a thorough job like the MPEP requires and come up with all rejections at once. After all, you guys are examiners and get to do whatever you want to do. You are the cat and applicants are the mouse. I get it.

    You say: “he’s arguing NOT against unreasonable reopening, but against unreasonable examination.”

    RESPONSE: Oh, so you did understand something!

    You say: “Which means he needs to get in line.”

    RESPONSE: Oh, that makes sense. I guess I’m not entitled to write about facts. I just have to “get in line” and take it, presumably the way patent attorneys and applicants are supposed to just suck up and deal with poor examination and manipulative tactics. That is brilliant!

  4. Anon July 21, 2016 1:05 am

    Without going into specifics, it seems like another stall/deny tactic is to reassign the application to a new examiner post-appeal brief. I’m not sure if it’s to game an internal PTO deadline, but it’s resulted in a nearly one year long delay in one TC3600 appeal post-appeal brief.

  5. Jordan Bauman July 21, 2016 2:22 am

    Gene, thank you for this series. But, I have to admit that this set or articles has made me angry and depressed. This is simply NOT the way that the system is supposed to be.

  6. Mark Summerfield July 21, 2016 6:30 am

    Keep at it, Gene. This is really important stuff. The commenters asserting that there are ‘reasonable’ explanations have their heads buried in the sand. For those of us outside the US, with limited power to advocate for our clients, your efforts represent a beacon of hope.

  7. Curious July 21, 2016 10:04 am

    Examiners reopen after appeal ALL THE TIME. Of all the things that Gene has written about recently — probably not the worst thing that could happen to an applicant. At least the examiner has admitted an error. However, the error is something that should be avoided in the first place.

    What is funny is that a great percentage of times the new cited art is worse than the old cited art. I suspect that the Examiner was told (by the SPE) to reopen because “this shouldn’t be patentable” and couldn’t find a better reference.

    I know government employees that are extremely diligent at what they do and are grossly underpaid for what they do. As such, I get offended when people talk about lazy and incompetent government employees. However, my thoughts quickly bring me back to the USPTO, and I cannot help but nod my head at those comments. I suspect that a great many employees at the USPTO strive to do a great job. However, the system sets them up to fail. Between an inflexible system that doesn’t recognize that different applications require different levels (amounts) of examination, SPEs that don’t provide meaningful review of work, a management that has an anti-patent agenda, among a host of other problems, the system is not conducive to consistent quality work.

  8. Gene Quinn July 21, 2016 10:28 am

    Jordan-

    You and me both. As I started uncovering more and more I became really depressed. This is NOT how things are supposed to happen, yet all of these things I’ve found are in the public record for everyone to see — including PTO management. It certainly seems that the system is nothing more than a charade… at least when you get certain actors who see their job as preventing a patent at all costs.

    -Gene

  9. Gene Quinn July 21, 2016 10:31 am

    Mark-

    Thanks. I plan on following up on this series. I already have my next article in the early forming stages. I think it is about time I expose the “typical” Alice rejection. I’m getting sick and tired of the “head in the sand” crowd rather ignorantly pretending that Alice rejections are good rejections. They are circular at best: You are rejected because your claim is abstract because you are claiming something that is abstract.

    So time for another body blow to the apologists.

    -Gene

  10. AC July 21, 2016 11:15 am

    I wonder (hypothetically because it will never happen) whether things would change if Examiners and SPEs had to take count hits for reopening prosecution or losing an appeal (e.g., each loses a count or a partial count).

  11. Gene Quinn July 21, 2016 11:23 am

    AC-

    I like that suggestion. I’d like to come up with a list of recommendations to try and make things better… not that the USPTO would ever implement anything that would fix this situation. In TC 3600 the problems have gone on for many years and no one seems to care (unfortunately).

    Any other suggestions anyone?

    -Gene

  12. Eric Berend July 21, 2016 1:50 pm

    Yes, Gene. I believe it is high time that a ‘landmark’ case be brought forth, with a complaint that reaches the valid legal basis of recognizing illicit conduct on whichever level which bears a correct relationship to the foundation U.S. Constitutional establishment of both patent and administrative law.

    It cannot be inappropriate nor impossible to have absolutely no legal recourse to challenge invalid policy or misconduct, in these circumstances. When a U.S. agency implements what appears to be a giant racket; and, there exists evidence of willful misconduct and deliberate violations of the applicable laws on the public record; how could that not constitute a cause of action in a Constitutionally appropriate venue (Article I/III/etc.)?

    Given the wide swath of the industry already harmed by this conduct, it shouldn’t be impossible to bring a suit for a Writ of Mandamus binding upon the U.S. Commerce Dept.; and then, when the USPTO inevitably refuses to obey the Court order, follow that up with a class action or petition praying for exemplary damages that names not only the Agencies or other U.S. government entities involved, but also personally naming the people whose actions, acting in their official capacity yet in direct contravention of purpose and legislative authorization, have routinely and deliberately caused such enormous harm to so many inventors and the U.S. economy itself.

    IIRC, the blanket immunity from prosecution enjoyed by U.S. government personnel acting in the capacity of their appointed positions, becomes void when there is demonstrated evidence of their violating the policies and procedures that underpin said immunity. Such immunity, of course, has always been intended to hold any possible liability in the entity of the government organ or agency, so that said personnel are protected from personal liability in the performance of their duties according to that agency’s authorized policies, protocols and procedures.

    Doesn’t that make such apparently willful disregard for said authorized constraints, a basis for lifting the veil of prosecutorial immunity? Particularly, when the appropriate administrative remedies have been pursued and found wanting? Even if this is insufficient to overcome criminal immunity, could this not be applicable to civil prosecution, at least?

  13. David Stein July 21, 2016 2:10 pm

    Thanks for this article, Gene.

    I’ve had a few cases where a raft of new grounds of rejection were suddenly introduced into the case, mid-prosecution: 112p1, 112p2, objections the claims, objections to the figures, objections to the abstract… even objections to the *title*.

    In several of these instances, the choice seemed clearly vindictive. Something occurred during prosecution that the examiner didn’t like – including filing an appeal brief and involving the examiner’s supervisor – and the result was that the examiner spent a bunch of time articulating every possible way to refuse the application, and threw the proverbial kitchen sink into the application to bury it.

    (Also consistent in these situations – disappointingly so – is that “kitchen sink” office actions frequently present very poor 102/103 rejections. Either the prior art is cited against the claims in casual and blanket fashion, or the examiner has chosen to double down on prior art that we’ve already shown to be inapplicable or badly misconstrued. If only the examiners had sunk all of that “kitchen sink” time into finding better prior art, it would’ve benefited both of us!)

    I did have one case that may resemble the situation that you raised above. One enterprising examiner chose to seek help by posting the application pseudonymously to the Internet and asking for prior art. Of course, this tactic is wildly condemned by PTO administration (even in cases like mine, where the examiner waited until a few days after the application published), and the examiner acknowledged it as an error during an interview. Nevertheless, the following office action presented several new grounds of rejection/objection.

    Here’s the examiner’s off-the-record explanation: “This case has become somewhat high-visibility, so I need to be extra-careful to raise every relevant source of complaint before considering allowing it.”

    As you may imagine, that suggestion was rather grating, since we were being forced to pay for the examiner’s unsupported action. We did manage to traverse those hazardous issues and reached an allowance, but still…

  14. Gene Quinn July 21, 2016 2:14 pm

    David-

    Thanks for your comment. It certainly does seem that there is a lot of vindictive examination at the USPTO. It is unconscionable (using that word a lot lately relating to the USPTO) for an examiner to raise late objections to the title!

    -Gene

  15. ac July 21, 2016 2:19 pm

    Gene,

    As a followup suggestion – only because the PTO is increasingly interested in “quality” issues, why not provide a forum for feedback from stakeholders (i.e., patentees) for individual employees (Examiners, SPEs, etc)?

    I, like others, have extensive war stories about good Examiners and those about whom we roll our eyes over drinks and say “you think that’s bad? Well, let me tell you about this one time…”

  16. Gene Quinn July 21, 2016 2:56 pm

    AC-

    Tell me a little more about what you are thinking. Would this forum be run by the USPTO?

    -Gene

  17. Steve July 21, 2016 3:51 pm

    I had this happened to me. The examiner even issued the exact same office action.

  18. ac July 21, 2016 4:22 pm

    Gene,

    If such a forum were run, I would think it would have to be run by the USPTO. In my view, it would have to have a mandate to look into egregious Examiner conduct (such as that pointed out in your numerous articles) and take disciplinary action against the Examiner and supervisor(s) as necessary. It would also need to provide feedback to the complaining party as to the action taken in resolution of the issue and a justification of that action.

    Who watches the watchmen would be appropriate here.

  19. Prizzi's Glory July 22, 2016 9:13 am

    In re #18, I am not sure that we are seeing examiner misconduct. We may be watching a carefully choreographed dramatic fiction meant to distract from secret USPTO policy developed and directed at the top of the USPTO management hierarchy.

    The issue that should concern all Americans is summarized in the letter that the Acting Director of the USPTO sent to Congress during consideration of the Innovation Act.

    In the letter the then acting USPTO director Teresa Stanek Rea expresses concern that granting certain patents might “disrupt the settled expectations of manufacturers and innovators working in the patent’s related field of technology.”

    The history below shows that the USPTO is acting unlawfully and criminally to implement ultra vires a policy that certain organizations may successfully obtain patents while others are too disruptive to be allowed to have patents.

    In other words the USPTO is making innovation solely a prerogative of big corporations and of big capital. Over a long time period nothing could be more corrosive of the US political, economic, and social system.

    The history of the 07/773,161 Application shows highly coordinated abuse of process. SAWS procedures seem to have been followed long after SAWS was supposed to have ended.

    https://drive.google.com/open?id=0B73ewaPLaegFQkNacTV3UnpxUXM

  20. Jundong Ma July 23, 2016 12:29 am

    Gene, very good article. I also observed that the Examiner routinely reopens prosecution after the panel decision notice issued on a pre-appeal brief request for review (PABRFR), which can happen time after time. To me, including an option called “reopening prosecution” as one of the possible panel decisions only invites abuses of that option. That option basically admits the Examiner made an error, but implying that the Examiner/SPE still believes that the application cannot be issued, but without any evidence proving same. That just does not make any sense, and runs contrary to the principle that the Examiner/SPE/USPTO got to prove its case of unpatentability, not speculate same. Giving an Examiner an option of “reopening prosecution” only invites him/her not to do a complete job in the first place, which is contrary to the principle of compact prosecution. That option should be scrapped off completely! Even “reopening prosecution” option has to be maintained, then there should be a procedure during which the Examiner is required to demonstrate why the newly discovered reference is HEAD AND SHOULDER above the previously cited reference, or the case should be allowed!

  21. Anon July 23, 2016 10:30 am

    Prizzi’s Glory,

    SAWS was ended. What you may think you see as SAWS procedures continuing to be followed are not SAWS.

    That being said, the problem with SAWS did not go away with the Office public announcement of ending SAWS.

    This is because the Office volunteered an admission that should have been seized by the public and additional scrutiny should have been applied. The public abandonment of SAWS was done in the hopes that attention would go elsewhere, and that ploy has largely succeeded.

    To wit, that (most likely inadvertent) statement was the admission that SAWS was merely one of some unnumbered like-situated Star-Chamber like programs being run undocumented (at least to the public) and uncontrolled, completely outside of the purview of both the public and those directly affected by such programs (which violates the law in and of itself, given that ALL examination is supposed to be done solely on the written record).

    Your argument is not with SAWS.

    Your argument is with the Office that employs the reasons why SAWS was antithetical to justice and the law in the manner of shadow politics unknown and unknowable to those being affected.

    It should also be to no one’s surprise that many of the vocal apologists for the SAWS and SAWS-like programs are exactly the same ones who have an anti-business method and anti-software patent agenda. These generally are also the same ones who would champion an unrestricted Supreme Court to not be held by statutory law, circumscribing the Constitutional chain of command for authority of patent law.

    These are not coincidences.

  22. Prizzi's Glory July 24, 2016 8:19 am

    @Anon in re #20. I think I sometimes have difficulty with understanding Anon’s sarcasm.

    If I call the Mafia, la cosa nostra or la fratellanza siciliana, it’s still the Mafia.

    My argument is not really directed to SAWS although it is obvious that that SAWS organization, data bases, and procedures persist albeit perhaps under a new name.

    I am more aghast that APJs are blatantly lying in their decisions, which are official documents and inputs into court proceedings (35 USC § 141 & 35 USC § 145), in which the CFAC or the District Court of the Eastern District of Virginia defers to the USPTO and specifically to these lies, which are the equivalent of perjury.

    Thus the APJs, who are identified in my document on page 12 and whose names are: JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, should not merely be fired and disbarred. They should be in jail.

    The point is critical to the issues that Gene raises because Dixon, Hughes, and Frahm seem to make a good number of decisions of § 101 eligibility, and they seem to decide without actually reading the documents on which the decisions are supposed to based.

    On page 13 I noted the following, which starts with a passage from the PTAB decision.

    We have read each of the Examiner’s rejections, responsive arguments and each of Appellants’ claims, contentions, and Appellants’ responses to the Examiner’s rejections and responses to arguments. We find Appellants’ colorful commentary regarding the level of skill in the art to be unnecessary and unsupported by the relevant prior art teachings and relevant evidence at the time of the invention. Appellants have had ample time in the prosecution to provide relevant evidence of the proper interpretation of the claimed invention and have chosen to rely upon undated evidence that was not in existence at the time of the claimed invention. Therefore, the proffered evidence cannot form a valid basis to show error in the Examiner’s findings and conclusions.

    Because it is hard to understand how the three APJs could have missed the examiner’s withdrawal of rejections if they had “truly read each of the Examiner’s rejections, responsive arguments and each of the Appellants’ claims, contentions, and Appellants’ responses to the Examiner’s rejections and responses to arguments,” the conclusion is inescapable that the APJs criminally violated 18 U.S.C. § 1001 : Statements or entries generally and committed a crime that federal prosecutors generally consider as grave as perjury. Because they acted in concert, they may also have criminally violated 18 U.S.C. § 371 : Conspiracy to commit offense or to defraud United States. Quite probably all PTO employees and officials that have participated in the SAWS program were/are in criminal violation of 18 U.S.C. § 371. If APJs lie about reading the documents relevant to an appeal, the whole PTAB appeal process is cast into doubt.

    If I understand the procedures correctly from the FOIA document, the criminal conspiracy extends right into the office of the Director of the United States Patent and Trademark Office (USPTO).

    The first page of my document addresses the logic that supports ongoing USPTO criminality.

    https://drive.google.com/open?id=0B73ewaPLaegFQkNacTV3UnpxUXM

  23. SpivOl July 24, 2016 12:03 pm

    Gene says:

    “So yes, what I’m saying is if an examiner can’t be bothered to notice a problem with drawings in an application they are SUPPOSED to have read and considered until that late in the game then the examiner should be estopped from raising the problem. ”

    Which would be a fair point…if it weren’t a blatant suggestion for disparate treatment due to some other infraction. If it’s a problem it’s a problem. Period. What you’re arguing for is special treatment because of being appealed. You’re going to deny that, but that’s what you’re saying – because I was appealed and the examiner was reversed, things that are incorrect with the action should be ignored.

    That’s pure sophistry.

    I was an examiner, but now I’m an attorney, which gives me the benefit of have a perspective you don’t have – what the examiners deal with, and let me tell you one thing Gene, very clearly, you’d better make sure you’re not standing in a glass house when you throw these stones. I’ve seen the submission attorneys make, the arguments they make, and I have to say, the ability of your blinder to block out reality is really impressive.

    @15 – in a perfect world that would be a great idea. Kind of like a grade card for examiners the way attorneys have to live up to standards. In reality though, all you need to do is go through some of Gene’s comments here and you can quickly see that that grading would devolve into just another way to harass the examiner into an allowance because, according to Gene, not using every tool in the box isn’t “zealously” representing your client (never mind that 1) many states have removed that term from the oath specifically because of Gene’s attitude, and 2) there’s more to effective prosecution than coming out swinging. Cleverness is rewarded, which is probably why Gene uses quantity instead)

  24. Gene Quinn July 24, 2016 1:11 pm

    SpivOl-

    You say: “Which would be a fair point…if it weren’t a blatant suggestion for disparate treatment due to some other infraction.”

    Not really even sure how to respond to you. Your comments suggest you really don’t understand what is going on or any of the associated issues. How you could say I’m the one suggesting disparate treatment is utterly ridiculous. The Patent Office is treating similarly situated applicants very differently, which is the definition of disparate treatment.

    You say: “I was an examiner…”

    Really? You don’t say.

    You say: “let me tell you one thing Gene, very clearly, you’d better make sure you’re not standing in a glass house when you throw these stones. I’ve seen the submission attorneys make, the arguments they make, and I have to say, the ability of your blinder to block out reality is really impressive.”

    I like the way you try and make it seem like I’m a bad actor. Of course, I have nothing to hide and I don’t engage in prosecution games, so I don’t live in a glass house. Trying to paint me in that light is nothing more than fraud. Talk about someone blocking out reality!

    You say: “go through some of Gene’s comments here and you can quickly see that that grading would devolve into just another way to harass the examiner into an allowance…”

    That is rich. Applicants are the ones getting harassed and yet you have the gall to suggest that what I’m writing about and professing is that patent attorneys and applicants harass poor examiners into allowing. You really are quite clueless and obviously don’t understand what is going on.

    I don’t believe you are an attorney. You are still an examiner and just upset that this series is shining light on the harassing games played by examiners like you. Sickening if you ask me.

    -Gene

  25. Prizzi's Glory July 24, 2016 6:26 pm

    BTW, in #22 I meant CAFC and not CFAC. Aren’t spell checkers wonderful?

  26. Anon July 25, 2016 9:36 am

    Prizzi’s Glory @22,

    Perhaps you are “hav[ing] difficulty understanding Anon’s sarcasm” because you are looking for sarcasm where there is none.

    My post was plainly worded and without sarcasm.

    I invit you to read it again, without the apparent defensiveness that you brought with you.

    I do recognize the extra point that you are now supplying with a concern of APJs and their involvement with what you may consider to be “blatant lying,” but please remember that I was responding (on point) to your post before you shared this new concern.