Breaking through the culture of Examiner v. Applicant at the USPTO

By Raina Haque
July 28, 2016

USPTO administration building, Alexandria campus.In my previous article about STEPP training, I touched on a serious point— the controversy and confusion as to the extent of legal analysis examiners are authorized to do.  As the comments from attendees of the course and even of the last post’s comments section show, too often something smells fishy at the USPTO.  Common complaints are: (1) examiners never responding to office actions; (2) examiners misapply holdings; and (3) some inexplicable vendetta against the applicant/invention.  These complaints are hopefully based on a minority of cases, yet it seems every patent practitioner (whom I will refer to as external stakeholder) has a story of examiner absurdity to tell.

At STEPP training, the USPTO administration and Supervisory Patent Examiners (SPEs) did not deny that there were problems.  One SPE admitted that with any group of thousands of humans, there’s going to be some unfortunate variations in professionalism.  The USPTO knows this, and thus has some avenues for external stakeholders to consider using to address the concerns of weird and wild examination.  But before we get to that, let’s briefly discuss the standards the USPTO uses to evaluate patent examiners.

The examiner’s role, according to the training documents from STEPP training, is to issue patents and act as an advocate for the public.  For the duties related to issuing patents, examiners are to (a) make appropriate objections (b) make only reasonable rejections and (c) help the applicant identify allowable subject matter.  For the duty related to “acting as an advocate for the public” the examiner is to ensure development of a clear and complete file wrapper record.  For the determination of compensation, examiners are evaluated according to four elements: (1) the quality of their examination; (2) their productivity (the amount of work an examiner performs in a specified amount of examining time with consideration given the complexity of the subject matter of the patent application and the examiner’s experience level); (3) docket management (issues related to compact prosecution); and (4) stakeholder interaction.

Though any one of these elements merits a treatise, the remainder of this article briefly touches on stakeholder interaction.

The USPTO states in the training materials that “the stakeholder interaction elements is an objective measure of the ability to provide appropriate service to external customers in areas such as returning telephone calls, reviewing and responding to emails, utilizing voicemail systems to reflect work schedules and planned absences, and directing customers to the appropriate points of contact.”

The major activities of stakeholder interaction are broken down further, and they relate to responsiveness to communications from external stakeholders (within one business day), cooperation in directing external stakeholders to appropriate offices and personal, and decorum in official communications.  The training materials direct examiners to display professionalism to external stakeholders by “conducting all interviews and/or other contacts with external stakeholders as scheduled with adequate preparation, and in a courteous manner.  Further no interview and/or other contact is arbitrarily or capriciously refused by the examiner.”  Another stakeholder interaction activity is providing search consultation and other assistance to the public and peers. (Examiners are allowed and encouraged to assist the public in “conducting a search, short of rendering patentability advice or opinion as to whether an application should be filed.”  Call one up and test it out!  This may be a good alternative for a cost-conscious inventor who is still in concept phase.)

So far, so good, right?  Yet, somehow a culture of Examiner v. Applicant has evolved.[1]

There doesn’t seem to be much in examiner training to pit them against external stakeholders.  No evidence there of USPTO-endorsed nefarious agenda!  Examiner training directives regarding external stakeholder interaction are in-line with what the stakeholder should reasonably expect.  Sometimes, the examiner is the one turning the other cheek; the SPEs know that sometimes when the attorney/agent for the applicant is advancing nonsensical arguments, it’s due to the demands of a client.

Looking back at STEPP training, there is one point that was telling in, well, how little was told.  One attendee, a patent agent, asked about the low patent grant rate from TC 3600.  The USPTO speaker didn’t respond, but another attendee mentioned that some companies perform linguistic analytics on drafts of patent application to give a measure of the likelihood that a patent application will end up in a TC 3600 examiner’s hand.  The USPTO SPEs didn’t respond to that, but they did chuckle along with the rest of the trainees.

The discussion sooner after turned to ways to report or remedy the perception of bias during patent examination.  An applicant may request that the examiner’s supervisor (or SPE) attend interviews.  The applicant may also speak directly to the SPE, though it’s encouraged to not call the SPE just because the examiner hasn’t returned a communication in any time that is less than a business day.  For egregious behavior, the applicants can and should report to the USPTO Ombudsman.

The Enhanced Patent Quality Initiative is piloting a program for external stakeholders to air their concerns.  This program is known as the Post-Prosecution Pilot (P3).  Within two months after final rejection, applicants may apply to the P3 program.  If selected, the applicant will be able to make a 20-minute oral presentation to a panel of examiners to present appealable (but not petitionable) “matters or arguments directed to the outstanding record or the patentability of the amended claims as proposed.”  The panel of examiners will then be excused from the conference, and the applicant will be informed of the panel’s decision (final rejection upheld, allowable application, or reopen prosecution) as to the disposition of the patent application in writing.  Note that a filing of appeal will terminate the P3 process.

Sunlight is the best disinfectant, and patent practitioners should continue to write about interactions with the USPTO.  We remember, however, that many examiners are truly thoughtful and mindful of the ultimate goal of protecting the public by granting valid patents.  We patent practitioners should remember (1) our relationship with the USPTO is one to foster for our client’s sake; and (2) to not direct frustration with unprofessional examiners to the USPTO as a whole.  Let’s not throw out the baby with bathwater.  We should use avenues of remedy and recourse for egregious reasoning and publicize reasoning used by examiners, but we should also commend the USPTO for measures they take to correct problems within.  We all need to be mindful to stay professional— if you’re generally caustic with the USPTO or patent practitioners, you are helping no one, least of all your practice.

_______________

[1] I wonder if the use of the word “prosecution,” so often associated with criminal procedure, primes this unnecessarily adversarial patent prosecution culture.  Perhaps we should call it “Patent Prosecution” less and “Patent Application Examination” more.

The Author

Raina Haque

Raina Haque is the founder and lead patent attorney of Erdos Intellectual Property Law + Startup Legal. She is a former software engineer with a focus on parallel computing and artificial intelligence applications in fields ranging from bioinformatics to fintech. She advises authors, inventors, startups, and small to midsize businesses. She is among the first few attorneys to work with blockchain and crypto ventures. Her firm is leading the North Carolina Bar Association's efforts to guide attorneys through the crypto venture and blockchain space. Currently, she also teaches a course on legal innovation at Wake Forest School of Law.

For more information, or to contact Raina, please visit her Firm's Website.

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. Anon July 28, 2016 9:49 am

    Is there not a natural conflict of interest between the examiner in her role of advocate of the people and her role of helping the applicant obtain a patent insofar as what the applicant wants?

    That is, the applicant wants the absolute viable maximum patent coverage possible (the optimized value situation).

    Can the examiner naturally want that same thing? Does the role of the “advocate of the people” NOT gear towards the opposite of the spectrum towards a minimal allowance of patent coverage?

    After all, does not “the public” get more when the applicant gets less?

    I think that not recognizing this inherent dynamic is a bit too Pollyanna. Human nature, being what it is, will always want “free” what it can “get away with.” Add into that mix the other philosophical forces battling over the patent-landscape, and the thought of somehow this not being a battle seems more than just a little silly (well intentioned, no doubt, but silly nonetheless).

  2. Anon July 28, 2016 9:58 am

    That being said, I do applaud the notion that direct and professional communication is best.

    To me, this does mean that I am a slave to “politeness” or that am somehow not as zealous in pursuing the best possible outcome for my clients.

    Often, on the forum of the Internet, a lower level of decorum is not only found, but since the battle for the public mind is at stake, and the public mind is NOT guided by proper court decorum, “guerilla warfare” is necessary. One can draw an analogy to this country’s fight for independence and the British complaint that our military tactics were “uncivilized.” They could not understand (or at least pretended so), why we would not engage in the “honored” line to line fighting against a foe that would have obliterated us on those terms.

  3. Curious July 28, 2016 10:05 am

    Is there not a natural conflict of interest between the examiner in her role of advocate of the people and her role of helping the applicant obtain a patent insofar as what the applicant wants?
    I’ve read/heard the “advocate of the people” line (or something similar) a few times over the years. However, there is nothing in the law that supports that mission statement. The job of the USPTO (and hence, the Examiner) is to follow the law — e.g., issue valid patents that comply with 35 USC 101, 102, 103, 112 et al. The issue of whether the grant of said patents is (in the Examiner’s opinion) in the best interest of the public has already been taken out of the USPTO/Examiner’s hands. The grand bargain between inventors and the public has already been laid out in the US Constitution and Congress has drafted the laws by which that grand bargain is to be instituted. All the USPTO has to do is follow the law.

    Anytime and I mean ANYTIME the question of “is the issuance of this patent good for the public?” comes into the mind of someone at the USPTO and the answer to that question impacts their decision making, then they have engaged in improper policy making. The powers that be in Tech Center 3600 have certainly engaged in that type of improper policy making by forcing examiners to issue 101 rejections on nearly every application over the past couple of years.

    If people don’t like the law, there is a proper way by which to address it — contact your local Congressman or Congresswoman. The USPTO acting on their own accord in an attempt “advocate of the people” is improper when it is inconsistent with the law. The ends do not justify the means.

  4. Anon July 28, 2016 1:10 pm

    Another read – and another fault:

    There doesn’t seem to be much in examiner training to pit them against external stakeholders. No evidence there of USPTO-endorsed nefarious agenda!

    There was no “evidence” of SAWS either -until there was. And as if anyone needed reminding, the Office “slipped up” when it pulled SAWS by revealing that SAWS was but one of some unknown number of similar shadow efforts.

    Also, it appears that the author here may be too young to remember the Dudas era “quality” graph and how – with no external change to inputs, the allowance rate all of a sudden plunger from its historic near steady state of about 75% down into the 40s (and IIRC, into the 30s). It even took a new director coming in to publicly announce that “Quality does not equal reject.”

    One cannot see “nefarious” if one has their eyes closed.

  5. Curious July 28, 2016 2:09 pm

    There doesn’t seem to be much in examiner training to pit them against external stakeholders. No evidence there of USPTO-endorsed nefarious agenda!
    The absence of evidence is not necessarily evidence of absence. The culture of the USPTO is not something that needs formal training to institute. Corporate (or government — let’s just call it “large organization”) culture is almost always unwritten.

    There will always be tension when A says “X” and B says “not X, but Y” — even if they are striving for the same goal. Consider the difference between the message sent by the following two ‘hypothetical’ mission statements:

    (1) We must protect the public against bad patents
    (2) We must work with applicants to identify the proper line between what is patentable and what is not patentable

    Based upon mission statement (1), an examiner likely leans toward not issuing a patent since any issued patent could be a bad patent. Also, if the examiner doesn’t issue any patents at all, then the mission has definitely been accomplished. Also, any comment made by applicant could be considered as being contrary to the mission statement and, hence, adversarial.

    Based upon mission statement (2), the examiner is charged with finding the right line to draw between what is patentable and what isn’t patentable. Thus, the examiner should look just as hard identify what is patentable as he/she looks to identify what isn’t patentable. Since applicants’ comments are consistent with at least part of that goal, then they are considered less adversarial by the examiner.

    Under Dudas and Lee, I suspect something like mission statement (1) was being employed, and under Kappos, something like mission statement (2) was being employed.

    In TC 3600, their mission statement is “the only good patent application is an abandoned patent application.”

  6. JAMES K. POOLE July 28, 2016 3:37 pm

    Re citation of case law, I’ve been advised by some SPE’s recently that citation of cases may be ineffective, since few examiners are lawyers or legally trained. They suggested emphasis on the factual/technical aspects of prosecution. I suspect that they avoid the effort of analyzing legal issues. However, as most lawyers know, if the facts are against you, you may need to argue the law! Too few examiners are familiar with the principle that an applicant is entitled to a patent, provided the requirements are met.

  7. Curious July 28, 2016 3:43 pm

    I’ve been advised by some SPE’s recently that citation of cases may be ineffective, since few examiners are lawyers or legally trained.
    If one (as an attorney) wants a better understanding of the law and wants to know how to write a good appeal brief, then one (as an attorney) better learn how to make and use legal arguments. Practice makes perfect and making those arguments before examiners is great practice. Also, if you do decide to appeal later on, you already have those arguments on the record and ready to be inserted into your appeal brief — a win-win situation.

    Patent prosecution is the practice of law — don’t ever forget it if you want to be a great patent attorney.

  8. Anon July 28, 2016 5:46 pm

    My mentor would cringe at the thought of creating a legal record in a half-a__ manner.

    The immediate reader may be a patent examiner (who, by the way is charged with examining the legal document known as a patent application to see if it passes the legal requirements of earning an allowance), but make no mistake, what you put on the record during prosecution STAYS on the record for the life of the patent – throughout ALL the legal phases that patent may see.

    Any SPE telling you not to address the legal matters should be shown the door.

  9. Michael P July 29, 2016 2:10 am

    Why doesn’t this article place any of the blame on Applicant? I encourage you to analyze the endless amounts of garbage coming into the office from fortune 500 companies with “top tier” attorneys. I dare you to examine a national stage entry originating from Korea/Japan/China/France/Germany/etc.

    Much of the fighting between applicant and examiner stems from gross negligence by the individuals who are supposed to be the experts in patent prosecution.

    I’m not implying that there aren’t bad examiners…there are plenty—but there are at least an equal ratio of bad prosecuting attorneys.

  10. Gene Quinn July 29, 2016 10:50 am

    Michael P-

    You say: “I’m not implying that there aren’t bad examiners…there are plenty—but there are at least an equal ratio of bad prosecuting attorneys.”

    Sadly, I suspect you are correct.

    Although not this article in particular, my recent thread of articles has focused on the problems with examiners because the USPTO ignores them as if they do not exist. The patent quality initiative seems all about blaming applicants and attorneys for poor quality. There is no doubt that there is poor quality coming into the Office, but the Office seems uninterested or unable to do anything about the pockets of dreadful quality within its own ranks. Worse, they seem uninterested in even having a discussion.

    Patent quality needs to be a two way street. From where I’m standing the discussion seems one-sided and misleading. So I don’t disagree with what you are saying. I just think it is time for the USPTO to be an honest broker in this discussion rather than continue to protect the same examiners and same Art Units year after year.

    -Gene

  11. Curious July 29, 2016 1:24 pm

    Why doesn’t this article place any of the blame on Applicant?
    Employ a little common sense. The vast, vast majority of interactions an average patent attorney (prosecuting patent applications) has is with examiners — not other patent attorneys. As such, our experience is with examiners — not other patent attorneys (a good tip for effective writing — write about what you know). Additionally, while I have seen some work by other patent attorneys (and I believe that a good portion of it is not good), it is difficult to judge the arguments unless you review the entire case — as task rarely performed unless you have to.

    As for the quality of the inventions, remember, the job of the inventors is to say: “I am an expert in my invention, and this is my invention, this is what I think is patentable.” The job of the Examiner is to say “I am an expert in the prior art, and based upon what I’ve read of your invention, this is where we can draw the line between what is patentable and what is not.” An attorney’s job is to tease out, from the inventor, more details/aspect of the invention and put it on paper as well as help the Examiner find that line between patentable/unpatentable.

    You also have to realize that the job of an attorney is to be a zealous advocate for their client. Even if the argument may only be effective 10% of the time, but the client wants me to make that argument, then I make that argument. You may think that is “garbage” but that is sometimes part of our job. Personally, while I prefer to make only rock-solid arguments, the closeness of the prior art, the fuzzy edges of the law, and my client’s disclosures sometimes prevents that from happening.

  12. Anon July 29, 2016 1:46 pm

    Gene,

    The point that runs me the wrong way is that the Office needs to be concerned with ITS system and things under ITS control.

    The quality of the inputs is NOT one of those things.

    Did the Office not learn from the Tafas escapade?

    The Office system should be able to properly and efficiently process the inputs – BOTH the “good” inputs and the “bad” inputs.

    Any system that does that will have quality output no matter what the input.

    The “bad” inputs will take care of themselves through the existing natural market forces. The problem right now is that the Office is so completely messed up in its processes that even “bad” inputs are simply not processed well. There was an example provided “on that other blog” of what on its face was a ridiculous granted patent. Several typical “blame the applicant” types bemoaned the poor input, while neglecting several critical facts.

    Facts such as the application gained more than six and a half years of Patent Term Adjustment for the Office failing to meet its timeliness guarantees.

    Facts such as it is not possible for an applicant to FORCE to issue a “bad” patent.

    Several moaned about the applicant “taking advantage” of something or other (the general tone of whining is present, but specific details of what otherwise fully legal process was “abused” and how – are lacking).

    The bottom line for this “bad” patent is that a proper system would have efficiently rejected the patent application on the first pass.

    Listening to people whine about the “bad inputs” completely misses the point about the Office and the critical need for the Office to have robust and effective systems – no matter what the input looks like.

    If the Office ever got into the business of preparing inputs, THEN such would be a proper focus.

    But that part of the equation is not a part of the Office system and control.

    That part of the equation – for good or for bad – is controlled under the more free enterprise system.

    IF the Office had its own processes in order, such that “bad” applications were not masked with horrid Office inefficiencies, THEN the market would be able to correct itself.

  13. Prizzi's Glory August 1, 2016 3:18 am

    test

  14. Prizzi's Glory August 1, 2016 3:41 am

    @anon#1 asks the following.

    Is there not a natural conflict of interest between the examiner in her role of advocate of the people and her role of helping the applicant obtain a patent insofar as what the applicant wants?

    One must first understand who “the people” is for whom an examiner is supposed to advocate.

    The letter that the Acting Director of the USPTO sent to Congress during consideration of the Innovation Act shows that USPTO top management does not consider itself an advocate for the public but wishes to act ultra vires on behalf of big corporations and big capital.

    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.”

    In Rea’s particular bureacratese the phrase “manufacturers and innovators [not inventors]” refers to large US corporations and possibly the big investors that hold shares in these corporations. The interests or settled expectations of these groups are to be protected.

    To protect settled expectations the USPTO carries out fake examinations in which Administrative Patent Judges like Dixon, Hughes, and Frahm violate federal law by lying on official US government documents (a criminal act as grave as perjury, 18 USC 1001) and by conspiring to lie (18 USC 371) under the orders of USPTO top management (more violation of 18 USC 371) in secret conspiratorial programs like SAWS, use of which name seems to have been terminated. SAWS-like programs seem to have involved an even larger group of USPTO personnel in criminal conspiracy.

    Dixon, Hughes, and Frahm (apparently 101 experts) are probably not the only APJs or PTO officials that should be disbarred and tried for federal crimes. I will investigate how many TC 3600 appeals these judges have reviewed.

    The fake examination and subsequent fake PTAB review are analyzed in the following web document. Although the document deals not with TC 3600 but with TC 2400, the writer believes that TC 3600 procedures were followed. (See SAWS Procedures After Termination of SAWS.)

    The case of the 07/773,161 is valuable, for it opens a small crack to see how far the USPTO is willing to cross the boundary into illegality in dealing with patent applications that in the minds of USPTO top management would represent illegitimate patent rights.

    Gene has addressed Michelle Lee’s concept of “legitimate patent rights” in What are Legitimate Patent Rights and Who are Legitimate Patent Owners?

    Dixon, Hughes, and Frahm upheld the examiners ridiculous 112 rejections and created a new fake 101 rejection for the two CRM claims during the 07/773,161 Appeal, which was not made public in the FOIA reading room even though the ‘161 Application was public — apparently an effort at cover-up.

    In this way the Examiner’s Final Rejection was upheld. Without the new bogus 101 rejection prosecution could have resumed because an examiner is not supposed to finalize on indefiniteness rejections. (I think the relevant MPEPs make this restriction on finalization, but I welcome correction if I am wrong.)

    In this affirmation of the Examiner, the APJs made an obvious lie on an official government document (a serious federal crime) — possibly because the Examiner went off-script in the false examination. There is some reason to believe that the Examiner Steven HD Nguyen may have been chastised for going off-script.

    I wonder whether this procedure of reopening prosecution after reversal of all rejections is meant to decrease APJ exposure from criminal acts during the review of an appeal.

    For the interested, below (next comment) are the Examiner’s bogus 101 rejections. I think they are similar to many of the rejections that have been applied in TC 3600, but in this case they are applied to a statutory networking device, which is a type of hybrid bridge router. After the claims, I have included one of the CRM claims (Claim 40 which is in fact a device claim drafted as a CRM claim), and the new bogus 101 rejection that the APJs introduced and that goes against everything in MPEP 2111.02. The APJs ignored basic English grammar and punctuation (matters of law) to make this new bogus rejection.

  15. Prizzi's Glory August 1, 2016 3:42 am

    Claim Rejections – 35 USC § 101

    6. 35 U.S.C. 101 reads as follows:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    7. Claims 1-2 and 5-41 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claims 1-2 and 5-41 are determined to be directed to an abstract idea. The rationale for this determination is explained below:

    8. for patent-eligibility purposes, it is important not to just look at the type of claim but also to the underlying invention. Bancorp Servs. LLC v. Sun Life Assurance Co, 103 USPQ2d 1425, 1432 (Fed. Cir. 2012), citing CyberSource Corp. v. Retail Decisions, Inc, 99 USPQ2d 1690, 1697 (Fed. Cir. 2011]. “[T]he form of the claims should not trump basic issues of patentability” such that “a machine, system, medium or the like may be equivalent to an abstract mental process for purposes of patent eligibility.” Bancorp at 1432.

    9. The present invention enables a user to selectively group input/output devices into one or more logical bridges and to selectively connect the bridges with one or more logical routers. See Substitute Specification at page 5. In particular, the specification describes that two software routines, depicted in FIGS. 8 and 12, enable a user to configure a bridge/router as desired. See Substitute Specification at page 7. These routines are used to create and fill the fields of the data structures shown in FIGS. 9-11, which control the current configuration of the bridge/router. See Substitute Specification at page 7. The configuration routine described in FIG. 8 allows the user to select all of the user-selectable configuration values contained in the data structures of FIGS. 9-11 and store these values in memory. See Substitute Specification at page 8. The present invention allows the bridge to operate at data link layer and the router to operate at network layer. See Substitute Specification at page 21. Therefore, the claims involve the use of an abstract idea: associating input/output devices of a network device to bridges/routers and using the association to permit a bridge/router to operate at a particular software level. Accordingly, it must be determined whether the claims incorporate sufficient meaningful limitations to ensure the claims are more than a drafting effort designed to monopolize the abstract idea itself. See Mayo-Collaboration Servs. v. Prometheus Labs, Inc. 132 S. Ct. 1289, 1297 (2012). These limitations must amount to more than “well-understood, routine, conventional activity.” id at 1298.

    10. Independent claims 1, 17-23 and 38-40 each recite “at least one processing unit” and “memory” for implementing the functions of the device. Such hardware components are routine hardware found in any general purpose computer. As stated in the specification, the claimed functionality could be implemented using any combination of programmable devices and memory. See Substitute Specification at 7. While the claimed invention requires the use at a digital computer to operate, any general purpose computing system will do. Implementation of an abstract idea “on a general purpose computer is not a meaningful limitation where there was ‘no substantial practical application except in connection with a digital computer.'” SAP America, Inc. v. Versata Development Group, Inc, 107 USPQ.2d 1097, 1110 (PTAB 2013), citing Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). Since the abstract idea has no practical application except with a general purpose computer, the recitation of general purpose computer components (processing unit and memory) represents well-understood, routine, conventional hardware that fails
    to provide sufficient meaningful limitations on the abstract idea.

    11. Further, each of the independent claims also recites “a plurality of input/output devices.” As described in the specification, known LAN/WAN devices can be used to implement the claimed input/output devices. See Substitute Specification at 6. Such devices are conventional components in network devices for communicating with other network devices. In order for a network device to communicate with other network devices, it must necessarily contain input/output devices. Components that must be used to implement the abstract idea itself are well-understood, routine, conventional components and do not provide a meaningful limitation on the abstract idea. See Mayo, 132 S.Ct. at 1299 (stating “steps that must be taken in order to apply the laws in question” are “well-understood, routine, conventional activity”). Therefore, since a network device that would implement the abstract idea necessarily contains an input/output device, the input/output device is not a meaningful limitation beyond the abstract idea itself.

    12. The independent claims also recite the processing unit creating/generating data structures and responding to the data structures. Such limitations, however, are conventional, routine activities “that are a consequence of implementing the abstract idea.” See SAP America, 107 USPQ.2d at 1111. As such, they do not reflect meaningful limitations beyond the abstract idea itself.

    13. Independent claim 17 also includes the additional limitation of a user interface for accepting the user selected configuration information. However, all general purpose computers require same type of interface to interact with the user. As described in the specification, the user interface can be implemented with a “standard terminal” having a screen and a keyboard. See Substitute Specification at page 7. As detailed above, the recitation of general purpose computer components does not place a meaningful limitation on the abstract idea. Incorporating such well-understood, routine, conventional activity class not place a meaningful limitation on the abstract idea.

    14. Because independent claims 1, 17-23 and 38-40 are directed to no more than a patent-ineligible abstract idea, independent claims 1, 17-23 and 38-40 are directed to non-statutory subject matter. Further. dependent claims 2, 5-16, 24-37 and 41 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the
    claims are not directed to an abstract idea. In particular, the additionally recited limitations are directed to data stored in the memory and, therefore, do not provide meaningful limits on the abstract idea to reduce it to a practical application.

    Here is a Computer Readable Medium (CRM) claim that received a new 101 rejection from the APJs. (I am not sure how to indent best for readability.)

    40. (Currently Amended) For use with a network switching device having a plurality of input/output devices, a non-volatile computer memory storing software instructions that direct a processing unit to configure the network switching device and to operate the network switching device once configured, the software instructions including:

    at least one [a] configuration routine that:

    defines one or more logical bridges, wherein each of the one or more logical bridges includes one or more ports that provide one or more connections to a logical bridge,

    selectively associates each of said input/output devices with a selected one or more of said logical bridges, and

    creates one or more data structures that represent which input/output devices have been associated with each logical bridge; and

    at least one [a] bridging routine that responds to said one or more data structures by creating said one or more logical bridges with which one or more input/output devices have been associated to operate as one or more separate media access control level bridges including, and having a port for, each of the input/output devices represented as being associated with such logical bridge by said one or more data structures,

    whereby execution of the configuration routine creates the one or more data structures and execution of the bridging routine operates the one or more separate media access control level bridges.

    The APJs upheld the Examiner with the following bogus 101 rejection.

    With respect to independent claim 40, we find this claim to be broader (different) than independent claim 23 (reciting a configuration routine and bridging routine in the body without any associated hardware devices). We find the preamble of claim 40 sets forth a device, but the body of the claim, as a whole is directed to “software instructions” without any recitation of tangible or non-transitory medium. We find Appellants’ general arguments to be unpersuasive of error in the Examiner’s finding that claim 40 is directed to an abstraction and non-statutory subject matter. Therefore, we find claim 40 to be directed to software per se which is an abstract idea. Consequently, we sustain the Examiner’s rejection of independent claim 40 as directed to non-statutory subject matter.

  16. Curious August 1, 2016 7:52 am

    We find the preamble of claim 40 sets forth a device, but the body of the claim, as a whole is directed to “software instructions” without any recitation of tangible or non-transitory medium.
    That is an ignorant (and the term “ignorant” is used properly) APJ that is looking for the recitation of “non-transitory medium” because that is what they are trained to do based upon the fact-fiding abomination of ex parte Mewherter. What this APJ doesn’t realize is that the phrase “non-volatile computer memory” is a universally-accepted alternative to “non-transitory medium.”

    Apparently, the APJ doesn’t realize that the phrase “software per se” means software ALONE (note to APJ, look up what “per se” means). Clearly, the claim recited a computer memory. Hence, the claim is not directed to software ALONE. They must have scraped the bottom of the barrel to fill out the ranks of the Board. Excuse me for being harsh, but $%^& like this is inexcusable.

  17. Prizzi's Glory August 1, 2016 2:56 pm

    @Curious#16, I dug up the FOIA documents on Dixon, Frahm, and Hughes. These are not ignorant APJs. If you click on the link, you will find that Dixon is a 101 trainer. He knew he was giving a bogus affirmation to the Examiner just as he and the other APJs knew they were lying on an official US government document when they claimed to have read the documents relating to the appeal. Dixon, Huges, and Frahm were ordered under SAWS-like procedures to give a bogus affirmation and to lie despite US law, and they did. There is serious corruption at the heart of the USPTO, and it creeps into the federal court system when a District Court or the CAFC defers to the USPTO.

  18. Prizzi's Glory August 1, 2016 3:44 pm

    test2

  19. Gene Quinn August 1, 2016 5:38 pm

    Prizzi-

    Your last comment got caught up in moderation. 2 or more links in a comment and the comment needs approval. Multiple links is one of the hallmarks of a spam comment message. I think we do an excellent job fighting spam comments (knock on wood), but occasionally things get caught that deserve to be let through.

    -Gene

  20. Curious August 2, 2016 12:35 am

    Prizzi:

    Out of curiosity, I followed your link and reviewed the Appeal Brief and Decision on Appeal. In the Decision, the rejections under 101, 102, and 103 were all overcome — congratulations. However, you lost under 112 1st and 2nd paragraph? Those are almost universally the easiest arguments to make.

    The first thing that struck me when I read the brief is its lack of focus. For example, complaining to the Board about alleged Examiner misconduct is a waste of time. The personal attacks on the Examiner is rarely going to win you any friends at the Board, who are looking to find any excuse to affirm the Examiner. Although I may include personal attacks in my briefs, I always edit them out before the last draft. Take the high road — argue Examiner error and not Examiner incompetence. The Board will only reverse on identified Examiner error — a discussion of anything else is likely a waste of time.

    The SUMMARY of the invention spans pages 2-26 of the Appeal Brief and ends at Footnote 110!! Do you seriously believe the Board is going to read all of that? See 37 CFR 41.37(c)(iii) — you only need to discuss the independent claims (dependent claims only if they are mean plus function). However, it appears every single claim was mentioned. If I was a member of the Board, I would have been bored silly by this “Summary.”

    For the 112, 1st paragraph rejection: (i) identify the Examiner’s analysis, (ii) set forth the law regarding establishing a written description rejection, (iii) succinctly identify error in the Examiner’s analysis. Instead, of spending 24 pages on the Summary of Claimed Subject Matter, I would have created a 2 column chart showing the disputed claim language on one side and the supporting language (in the specification) on the other side. Make is EASY on the Board to say — “oh yeah, I see where this language is supported in the specification.”

    Why weren’t there any claim groupings associated with the arguments? By not specifically identifying the groups the Board was able to address only one out of your eleven(??) independent claims and they got to choose which one.

    Also, the Brief needed to do a better job of breaking up the arguments and laying them out in a neat and ordered way. I really dislike reading arguments when I’m not sure when one argument ends and the next argument begins. You can never have enough headings in your Appeal Brief: headings for separate claim numbers; headings for claim limitations; headings for separate arguments. If you force the Board to hunt and search for a response to each of the Examiner’s rejections, they’ll more than likely just throw up their hands and affirm.

    Frankly, I read your diatribe against the USPTO, and while I’m naturally inclined to believe that the Board wronged you, many of your wounds were self-inflicted. A written description rejection can easily be cured by more closely mirroring the language of the specification.

    Some suggestions on the claim language — avoid run-on clauses like you have in claim 1. Break up the language into manageable (and easily describable) chunks. Dependent claims should be short and sweet. Don’t use the dependent claim to describe intricate aspects of the invention — use the dependent claims to add a single layer of detail that (i) won’t make it too hard to establish infringement and (ii) will making it harder for the examiner to find prior art.

    Avoid “one or more” language. Don’t try to capture all possible infringement within one claim. How many times is only a SINGLE logical bridge going to be defined? Pick an embodiment that you know that (i) will be infringed in a large percentage of instances and (ii) that is the easiest to distinguish over the prior art and craft your claims to that embodiment.

    Present some method claims. I find method claims are best for software-implemented inventions, It is so much easier to understand (from the claim) what is going on when the invention is claimed as a method.

    I’m not going to comment much on the 112, 2nd paragraph rejection but to say how could you not overcome that tripe of a rejection(s)? The Board rarely affirms 112, 2nd paragraph rejections. I’ve read a few of the arguments made against the multitude of different rejections, and much of these arguments are comparable to what the Examiner wrote — conclusory statements with little (to no) accompanying analysis. In a battle of conclusory arguments, the Examiner almost always wins that battle (e.g., see sentence that crosses pages 19 and 20 of the Decision “Since Appellants elected not [sic] provide any useful commentary beyond criticism of the Examiner, the Appellants have not shown error in the Examiner’s conclusion.”).

    I could have added a laundry list of other criticisms, but it is time for me to sleep.

  21. Prizzi's Glory August 2, 2016 7:44 am

    @curious#20, I have a long day ahead that in fact was supposed to have started about 45 min ago. I acknowledge that you put a lot of work into your comment, and I will reply at length this evening, but are you really suggesting that a senior APJ and expert in 101 cooked up a bogus “ignorant” [your term] 101 rejection and lied on an official US government document (a Federal crime as grave as perjury) about reading the documents relating to the Appeal because the Appeal Brief was not sufficiently respectful of the Examiner?

    I have right, title, or interest neither in the patent application nor in Realvirt, LLC, but I did check the transmittal letter and look up the biography of the lead patent prosecutor. (See below.) He seems to be someone that would know what is appropriate in an Appeal Brief.

    Abraham Hershkovitz
    H&A INTELLECTUAL PROPERTY LAW, PLLC
    2847 DUKE STREET; ALEXANDRIA, VA 22314
    Phone: (703) 370-1010 E-mail: ahershkovitz@haaiplaw.com

    Abe Hershkovitz, the Administrator of the Firm, is a former Director of the USPTO Office of Petitions. He worked at the USPTO for over 27 years, beginning as a Patent Examiner, Expert Primary Examiner in automotive technology, and eventually as the Director of the Office of Petitions, where he was involved with setting policy-related guidelines at the USPTO, and oversaw a staff charged with rendering over 10,000 decisions per year on petitions (procedural disputes between applicants and the USPTO). In this capacity, he worked closely with his counterpart on the PTO Trademark side to apply and promulgate regulations in a consistent manner, whenever possible, between patent operations and trademark operations at the PTO.

    After he left the USPTO in 1999, Mr. Hershkovitz worked at a law firm for almost five years before forming the Hershkovitz & Associates Patent Agency in 2003. He has lectured frequently to Bar Associations and international IP organizations on various topics of patent laws and regulations and procedural tips in patent prosecution before the USPTO.

    Mr. Hershkovitz is retained by many large law firms and corporations to assist them with more complex situations before the USPTO, petition-related work, and to serve as an expert witness in litigated cases. He also works closely with many Intellectual Property firms in Europe and Asia, where he travels frequently to visit clients and client firms in South Korea, Taiwan, Japan, Australia, the Philippines, China, Germany, Switzerland, France, England, Hungary, Romania, the Czech Republic and Israel.

  22. Prizzi's Glory August 2, 2016 7:58 am

    It appears a post gets caught in moderation if there is an explicit linked URL (via href) and email address turned into a link by the blogging software.

  23. Curious August 2, 2016 12:12 pm

    Prizzi: What about that biographs evidences experience handling appeals before the Board? Administering the disposition of petitions is not appeal work. Also, there is no “lead patent prosecutor” in most instances. The person who signed the response is typically the person who prepared it.

    There are at least a couple of locations where one could find the number of Board decisions that are associated with a particular law firm. From the sources I have checked, I found a scant few. Let me put it this way, I know people that handle more appeals in a month than the law firm (as a whole) has handled in several years of published data. I’m sure that the attorneys who prosecuted the application were competent. However, it is clear from the Brief that they were unfamiliar with the Rules.

    are you really suggesting that a senior APJ and expert in 101 cooked up a bogus “ignorant” [your term] 101 rejection and lied on an official US government document (a Federal crime as grave as perjury) about reading the documents relating to the Appeal because the Appeal Brief was not sufficiently respectful of the Examiner
    I’m suggesting that that they probably “looked” at the piece of paper — i.e., “wow — that is a pretty piece of paper with marginally useful (and mostly useless) statements about the claims that isn’t going to help me decide the issue.”

    Realize that APJs and Examiners are human, and being “human” comes along with a lot of baggage (both good and bad). They are also government employees that are graded upon the volume of work they put out. They also tend to stick up for each other — a great many APJs are former Examiners. With this in mind, what happened to this appeal is not surprising in the least.

    The way I would put it is the following: When appealing, making it very easy for the Board to reverse the Examiner. Identify the examiner error, explain why it is examiner error, and directly address the Examiner’s arguments to the contrary. I don’t think the appeal brief did that very well. Moreover, given that the Board overturned the 101, 102, and 103 rejections as well as overturned some of the written description rejections after the Request for Rehearing, I VERY HIGHLY doubt that the Board was out to sink this application.

  24. Prizzi's Glory August 3, 2016 10:53 am

    @Curious#23 is trying to rationalize APJ behavior that almost certainly constitutes a serious felony.

    The ‘161 Application file folder seems to provide the smoking gun of USPTO criminality and corruption that goes right into Director Michelle Lee’s office.

    Curious is deflecting and has yet to explain the lie made by APJs Dixon, Frahm, and Hughes with respect to reading the documents for the Appeal decision.

    Curious does not seem to understand why I am so outraged by the crimes of Dixon, Frahm, and Hughes. Or perhaps he does if he works at the USPTO and is participating in the cover-up and damage control that I am seeing.

    The APJs violated 18 USC § 1001 (a crime as grave as perjury) and conspiracy under 18 USC § 371. The conspiracy extended at least as far up as the Office of the Director Michelle Lee according to Gaudry’s SAWS FOIA documents. (The SAWS Analysis document goes into detailed timing of events in the CAFC as well as in the Director’s Office and gives links to relevant documents.)

    Why is this crime so serious? The USPTO is the critical nexus of the US economic, political, and legal system.

    These documents, on which APJs Dixon, Hughes, Frahm lied, are given deference by the federal district and appellate judges, who depend on the APJs to have actually read the documents that they claim to have read and evaluated. The official government documents created by APJs help determine the disposition of billions of dollars in a given year.

    Every document and judgment by these APJs, who almost certainly were not the only APJs involved in the conspiracy, are now tainted with criminality from the day they began to serve as APJs until now. This taint spreads into the district and federal appellate courts to corrupt the US political and economic system. All the involved cases should be reopened and reviewed.

    Dixon, Hughes, and Frahm and whoever (right up the chain of command) ordered them to commit their crimes should certainly be charged and arrested.

    It would be worthwhile to consider a temporary shutdown of the USPTO during an official investigation.

    While the name of the SAWS program may have changed and the procedures seem to have been tweaked so that felonies of APJs are harder to detect, Gene’s series of articles indicates such programs seem to continue secretly and unlawfully at the USPTO.

    The USPTO seems to have used the exemption of 5 U.S.C. § 552(b)(2) to avoid disclosing all but the most superficial information about SAWS and similar programs. Guess what! The exemption can’t be used as a cover for corruption or criminality within a US government agency.

    BTW, I agree with this comment.

    I VERY HIGHLY doubt that the Board was out to sink this application.

    I doubt that the APJs knew why they were being ordered to commit crimes. The decision to sink the ‘161 Application under the SAWS program came from within the Director’s office. The APJs were just cogs in the mechanism of USPTO criminality and corruption.

    As for insufficiency of respect for Examiner Steven HD Nguyen, who seems to have been another cog in this mechanism of corruption and criminality, I have checked. Hershkovitz was involved in the production of every prosecution and appeal document and did the final review for each. Ron Cahill, Partner, Chair, Intellectual Property Litigation Practice Group, Executive Committee of Nutter McClennen & Fish LLP was also heavily involved in creating the patent prosecution documents. These guys know how to deal with the Board and with Examiners.

    Curious has yet to explain why APJ and 101 expert Dixon would reverse Nguyen’s ridiculous 101 rejections only to fabricate an “ignorant” [Curious’ term] 101 rejection even if he were offended by alleged lack of respect for Nguyen, about whom Dixon probably cares absolutely nothing.

    Without this “ignorant” bogus 101 rejection, prosecution of the ‘161 Application would probably have resumed because rejections are not supposed to be finalized on indefiniteness.

    Note that the 101 rejections were all the sorts of 101 rejections associated with CBMs or detect and infer claims while the 112 rejections were all typical of the sorts of 112 rejections associated with biotech and pharma or with overreaching method claims as seen in Lizardtech except for those associated with idiomatic English, with which Examiner Steven HD Nguyen seems to have difficulty.

    The claims of the ‘161 Application, which described a statutory packet-switching device, were either device claims or CRM claims, which were really device claims.

  25. Curious August 3, 2016 5:50 pm

    Or perhaps he does if he works at the USPTO and is participating in the cover-up and damage control that I am seeing.
    Dude … do you even f-ing read this blog? I’ve been an extremely harsh critic of the USPTO (and the Board) on this blog for years.

    The difference between you and I is that you’ve probably experienced prosecution in only a handful of applications whereas I’ve seen thousands of file wrappers and hundreds of decisions by the Board. I’ve seen decisions that are MUCH WORSE than the decision in the application we are discussing. Actually, I would say that the decision in this application is probably better than MOST of the decisions I’ve seen. The Board actually reversed a good number of the rejections and probably would have reversed more if better arguments were made.

    Unlike you, I’m not whining and crying about a USPTO conspiracy against me or my clients. I am a firm subscriber to Hanlon’s razor (look it up).

    Without this “ignorant” bogus 101 rejection, prosecution of the ‘161 Application would probably have resumed because rejections are not supposed to be finalized on indefiniteness.
    Huh? The 101 rejection was on a handful of the pending claims. Also, do you have a cite that “rejections are not supposed to be finalized on indefiniteness”? I’ve never heard of such a rule. Also, there was nothing preventing the applicant from resuming prosecution — a simple RCE (maybe a CPA??) would have accomplished it. Also, overcoming the 101 rejection by amendment is an INCREDIBLY EASY thing to accomplish.

    One of the differences between sophisticated clients and unsophisticated clients is that the sophisticated clients understand the general incompetence that pervades the USPTO and don’t work themselves up over every bump in the road. Unsophisticated clients, however, get worked up over everything little thing that doesn’t go their way and think that the USPTO is out to get them. What I’ve told my smaller clients, when they think that the USPTO is out to get them, is that “I doubt it, the USPTO treats everybody the same way — badly.”

    You need to focus your criticism inward and ask yourself why hasn’t a patent issued when the Board agreed that the prior art doesn’t anticipate (or render obvious) the claimed invention. You got 95% of the way there and you couldn’t close the deal? That isn’t the USPTO’s fault.

  26. Prizzi's Glory August 5, 2016 1:51 pm

    @Curious#25, I have no doubt that Hanlon’s razor was invoked when Woodward and Bernstein were investigating the Watergate Break-in. Guess what! There are laws against criminal conspiracies because sometime there are criminal conspiracies, and the archetypal criminal conspiracy (Watergate Cover-Up) took place in the executive branch of the US government. The USPTO belongs to the executive branch, and it is not improbable that the ‘161 Application will be Watergate for Michelle Lee and her top management.

    Note that incompetence and criminal conspiracy are hardly incompatible. In fact, an environment of incompetence is highly beneficial to the development of criminal conspiracy.

    Is Curious a lawyer? I find it hard to imagine a lawyer so unconcerned that the APJs Dixon, Frahm, and Hughes committed felonies in upholding the Examiner’s final rejection of the ‘161 Application. This sort of criminality from the PTAB bleeds into the federal courts. It is hard to imagine crimes more corrosive of the US legal, political, and economic system than those committed by Dixon, Frahm, and Hughes.

    For the record I have been doing patent prosecution since the early 80s. I was briefly involved with developing the written description of the ‘161 Application in 1991. Lately I have been more involved with the financial industry and financial IP along with fintech, investing, and trading patents. Hence, both the overlap of my concerns with those of Gene and also my sensitivity to conspiracy and to corruption within organizations whose decisions involve huge amounts money.

    The patent prosecutors are not my clients except that they asked me to take a look at the case because they knew I had concerns about possible criminality in the USPTO and because I had a brief association with the ‘161 Application long ago.

    I don’t understand why Curious harps on the Board’s reversal of bogus rejections when the Board created a bogus (“ignorant” according to Curious albeit perhaps less obviously fake) in order to kill prosecution of the ‘161 Application.

    Curious is either a participant in a USPTO cover-up or simply ignorant of the rules and regulations (heaven help Curious’ clients if he really has such). The ‘161 Application is pre-GATT (and 25 years old). RCE is not available in this case.

    BTW, here is MPEP 2173.

    D. Open Lines of Communication with the Applicant – When Indefiniteness Is the Only Issue, Attempt Resolution through an Interview before Resorting to a Rejection

    Examiners are reminded that interviews can be an effective examination tool and are encouraged to initiate an interview with the applicant or applicant’s representative at any point during the pendency of an application, if the interview can help further prosecution, shorten pendency, or provide a benefit to the examiner or applicant. Issues of claim interpretation and clarity of scope may lend themselves to resolution through an examiner interview. For example, the examiner may initiate an interview to discuss, among other issues, the broadest reasonable interpretation of a claim, the meaning of a particular claim limitation, and the scope and clarity of preamble language, functional language, intended use language, and means-plus-function limitations, etc.

    An interview can serve to develop and clarify such issues and lead to a mutual understanding between the examiner and the applicant, potentially eliminating the need for the examiner to resort to making a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The examiner is reminded that the substance of any interview, whether in person, by video conference, or by telephone must be made of record in the application, whether or not an agreement was reached at the interview. See MPEP § 713.04; see also 37 CFR 1.2 (“The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.”). Examples of 35 U.S.C. 112 issues that should be made of record after the interview include: why the discussed claim term is or is not sufficiently clear; why the discussed claim term is or is not inconsistent with the specification; why the discussed claim term does or does not invoke35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (and if it does, the identification of corresponding structure, material, or acts in the specification for a 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation); and any claim amendments discussed that would resolve identified ambiguities.