Inspector General’s Hyperbolic Report Distracts From Improving Patent Quality

By Matt Levy
September 8, 2016

Reality checkThe Office of the Inspector General for the Department of Commerce recently released a report, “Analysis of Patent Examiners’ Time and Attendance,” alleging significant time and attendance abuse by patent examiners. This report seems to be intended to generate headlines rather than identifying real problems. In fact, the OIG missed a real problem that was right under their noses, specifically an extremely poor network infrastructure. According to the OIG’s own data, network outages caused more than triple the time loss of the “abuse” the OIG identified.

More importantly, the OIG’s report misses the point. Nearly everyone agrees that the quality of patents being issued is a problem, but the OIG didn’t consider patent quality at all. The OIG’s proposed solution of forcing examiners to produce more quickly is hardly a recipe for quality, particularly when examiners report that they don’t currently have enough time to do a thorough job.

In contrast, the Government Accountability Office recently issued two reports on improving patent quality. The GAO looked at internal procedures and surveyed examiners in order to identify some of the real causes of poor patent quality. The GAO had a number of important recommendations for improving patent quality; the distraction of this “fraud” may mean that we waste a real opportunity to make some positive changes.

If there is something good to come from the OIG’s report, it’s that there is a need for better direction and supervision of examiners. But the focus of that supervision should be on consistency of examination and producing high quality patents. The abuse that the OIG identified is fairly small-scale, but poor patent quality is a major drag on the economy. That’s where we should be putting our efforts.

The OIG’s Report Exaggerates the Extent of Abuse

Here’s the OIG’s summary:

For the 9-month period, the OIG reviewed specific work activities of approximately 8,100 patent examiners and identified 137,622 unsupported hours. This equates to a one-year average of nearly 180,000 unsupported hours. For the 15-month period, the OIG analyzed work activities for roughly 8,400 examiners and identified 288,479 unsupported hours.

Those numbers sound big. But they omit something important: how many hours were actually claimed? That is, what portion of claimed hours are unsupported? In order to find part of that answer, you’ll have to look at footnote 21 on page 9 of the report:

This number represents 1.6% of the total computer-related examining time. The total number of hours associated with computer-related activity over the 9-month period is 8,673,490.

Over 9 months, examiners are accused of fraudulently claiming less than 2% of hours worked. It’s disturbing that the OIG chose to bury that context in a footnote; if the OIG has no agenda, why not be up front about the scale of the problem? (For the 15 month period, the OIG notes that the percentage was about 2% as well.)

There’s probably even less time loss than the OIG claims. The review did not track voluntary overtime and it failed to account for people shifting time from one day to another.

“Voluntary overtime” is time examiners work but don’t claim. This happens fairly frequently, particularly with examiners who are just starting out or who are struggling to meet their production goals. Production is based on the number of “counts” generated per examining hour. Some number of counts are awarded for issuing office actions, allowing a patent, a request for continued examination being filed, an application being abandoned, and so on. Each examiner has a certain number of “balanced disposals” (BDs) per bi-week she must get in order to reach 100% of production; the total number of BDs required per bi-week varies by the examiner’s pay grade and technology area.

One major implication of this system is that, for a set number of BDs, working more hours means less production. Suppose, hypothetically, an examiner had to get 4.5 BDs per bi-week; that’s the 100% production level. Each bi-week has about 70 hours of examining time, but let’s say that this hypothetical examiner only has 3.5 BDs after examining for 70 hours. To hit 100%, the examiner is going to have to work overtime; we’ll assume it will take another 20 hours of work to get that last BD.

If the examiner works paid overtime, that creates a problem. The examiner would claim 90 hours of work to produce 4.5 BDs; but in 90 hours, the examiner is expected to produce more than 4.5 BDs. She’s expected to produce 5.79 BDs in 90 hours. That means that instead of being at 100% of production, which is fully successful, she’d be at around 77% production, which is unacceptable.

On the other hand, if she simply works extra hours without claiming them, she produces 4.5 BDs in 70 hours of claimed time, even though she actually worked 90 hours total. That gets her a fully successful rating, even though it costs her 20 hours of voluntary (i.e., unpaid) overtime.

For those examiners who are just fully successful (95-102% of production goal), marginal (88-94% of production), or unacceptable (below 88% production), there is a strong disincentive to claim additional hours. Rather, there’s a strong incentive to work voluntary overtime in order to get production up.

How much is voluntary overtime used? According to a survey by the GAO, nearly 70% of examiners worked voluntary overtime just to keep up with their production requirements. That’s significant. It’s a shame the OIG ignored voluntary overtime completely, because it’s time that the USPTO gets for free.

There are also examiners who end up working more than 12 hours on a given day. They may have extra responsibilities that take more time, like primary examiners. Or they may need to make deadlines for docket management, or may have personal reasons for needing free time on another day.

These examiners have two options: donate that extra time to the office or claim it on another day when they have fewer hours. While it might be noble to donate the time, it isn’t unreasonable to want to claim the time somehow.

The OIG’s methodology, however, completely misses this. Suppose an examiner works 14 hours on Thursday and 10 hours on Friday and claims 12 hours for both days (because you can’t claim more than 12 hours for any one day). The examiner has actually worked 24 hours. But the OIG’s review did not credit more than 12 hours on any one day. The OIG would only credit 12 hours for Thursday and 10 hours for Friday, flagging 2 hours as “unsupported,” even though every single claimed hour was actually worked. Even though a rule may have been broken, that’s not fraud in the sense of claiming time that wasn’t worked.

How common is this? We have no idea, because the OIG didn’t account for it.

The OIG did identify a group of 415 examiners who accounted for 43% of the unsupported hours over the 15 month period. That group is only 5% of the examiners reviewed. There’s no excuse for real abuse, but this hardly an across-the-board problem.

The OIG could have said that 95% of examiners averaged about 38 minutes of unsupported time every bi-week, which isn’t bad when you consider that the average American worker doesn’t work 34 minutes out of each workday according to the National Bureau of Economic Research. But that doesn’t generate headlines.

Instead, the OIG used large numbers out of context to make it look like it had uncovered some massive amount of waste.

The OIG Missed the Problem of Poor Network Infrastructure

Moreover, there is a real problem with lost time that the OIG failed to identify. Specifically, the poor network infrastructure at the USPTO costs a significant amount of lost time, far more than the OIG identified. The OIG actually identified system-wide network outages in Appendix E of the report. Over 15 months, the total outage time listed by the OIG comes to 106 hours and 45 minutes.

The network outages affect all examiners, not just a few. If we multiply the 8,399 examiners in the OIG review times the total time lost, we get 869,593 hours lost for all examiners. That’s more than 3 times the alleged unsupported hours the OIG found. Using the OIG’s cost figures, that’s $55.2 million in lost work. (This doesn’t include individual computer or network problems.)

How is this loss of time not the headline? If 5% of examiners allegedly claiming unworked time amounting to 288,479 hours is worth a Washington Post story, surely network outages affecting all examiners and causing more than 3 times as much lost time is worth some attention?

Of course, network infrastructure is not as sexy as alleged fraud. Still, if we’re going to work on real problems, it seems like we’ll get more bang for the buck from fixing the USPTO’s network than from punishing all examiners for the actions of a few. Abuse doesn’t have to be tolerated, but it does little good to overreact and ignore real work that needs to be done.

The GAO Made Important Recommendations on Improving Patent Quality

The Government Accountability Office recently released two reports covering patent quality vs incentives and research capabilities that show why the USPTO issues poor quality patents in the first place. The big problem is that the USPTO has been focusing on quantity, not quality, for many years. Under Director Michelle Lee, there has been a new drive to improve patent quality, but it’s been hampered by procedures and systems put in place long before she arrived.

The GAO found there is no consistent definition of patent quality at the USPTO. Without such a definition, it’s nearly impossible to develop standard practices to produce better patents. As a result, examiners have no clear performance measures with respect to quality — just very specific production goals to meet. No wonder they focus on production goals.

It turns out part of the reason for the lack of a “patent quality” performance measure is the USPTO’s outdated information technology infrastructure. I’ve met with USPTO officials, and they expressed frustration that they simply could not gather the data they need. It’s just not in the system and there’s no easy way to capture it. To the USPTO’s credit, it is developing a new system, and enlisted the Department of Commerce for expertise as well. Still, that new system is a way off.

Furthermore, it’s not easy to do a complete job when you’re under a lot of time pressure. The GAO found that 70% of patent examiners say they don’t have enough time allocated to do their jobs thoroughly. The GAO found a number of factors contribute to this time pressure and make it more difficult to improve patent quality.

First, patent clarity is a big problem. The GAO estimates 90% of examiners always or often encounter broadly worded patent applications, and two-thirds of examiners say this makes it difficult to complete a thorough examination. But even though patent clarity is a real problem, patent examiners, particularly in software, are discouraged from forcing applicants to fix unclear claims. To see what I mean about clarity, here’s an example from the GAO quality report (p. 9):

[O]ne claim for a cardboard coffee cup insulator begins by referring to “a recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container.”

That kind of language is not exactly easy for laypeople – or even patent lawyers — to read. Patent examiners have the ability to reject claims as unclear or poorly specified using what are called Section 112 rejections. But the GAO found that there is actually substantial pressure to avoid using Section 112 rejections. About 42% of examiners surveyed said that they felt at least a little pressure to avoid 112 rejections, and over a third of those examiners felt moderate to a lot of pressure.

Another issue for examiners is that there’s no limit to the size of a patent application. A patent claim is the text that describes what the inventor can block others from doing. It’s critical that each patent claim be clear, new, and not just an obvious variant of something else. But many patent applications have dozens of claims to examine, and a patent examiner gets the same amount of time to examine an application with 100 claims as an application with just 1 claim. This is true even though the applicant pays extra to have more than 20 claims in the patent application.

To make things worse, the USPTO cannot get rid of patent applications except by issuing them as patents. An applicant can choose to abandon an application, but it doesn’t have to. If it wants, an applicant can keep the patent application going forever by just paying more fees and filing requests for continued examination. Examiners get a fixed amount of time per application, no matter how many requests for continued examination they have to deal with.

Eventually, the sheer volume of applications on an examiner’s docket will create pressure to allow applications just to get some breathing room. Indeed, the GAO found that around 45% of examiners felt at least some degree of pressure to allow more patents.

There’s more in the reports, which are well worth reading.

The GAO reports shine light on some areas where the USPTO can make a big difference in patent quality, and the GAO’s recommendations should be adopted in full. The current administration is showing a strong desire to improve quality. It will take time and a lot of work, but it’s crucial to innovators and the U.S. economy that this effort succeeds. We won’t get there if we get distracted by the OIG’s search for a scandal.

The Author

Matt Levy

Matt Levy is the former Patent Counsel at the Computer and Communications Industry Association (CCIA), where he handled legal, policy advocacy, and regulatory matters related to patents and wrote the Patent Progress blog. He is now a consultant on patent policy issues and patent litigation.

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 16 Comments comments.

  1. Anon September 8, 2016 9:28 am

    This article is, with all due respect, crap.

    Just because you may have wanted the report to focus on something else does NOT diminish what the report DID focus on.

    This article is worse than those trying to obscure the very real fraud by “averaging” the infractions over all examiners. This article is trying to NOT even bother with the very real problem uncovered.

    Yes, there ARE other things wrong as well. But such simply does not lessen the wrongs uncovered here. Like those who would attempt to minimize the Star Chamber antics of SAWS-like programs, those that try not to see very real problems are PART OF the problem.

  2. Frederick September 8, 2016 10:40 am

    Thank you for the article; I did not know about the voluntary overtime issue at all, and you raised some very interesting points about the GAO’s analysis that I had not heard before. Also you mention the GAO report found that examiners are under pressure to not make 112 rejections–we see these in pretty much every office action in TC 1600, so I wonder if that pressure is limited to other practice areas.

  3. Curious September 8, 2016 3:57 pm

    I won’t take credit for the following quote, but I thought it was apt. The quote was in response to one of Mr. Levy’s other posts on this website:
    This puff piece is written by none other than … wait for it … the guy who represents the largest cabal of innovation robbers and patent pirates the world has ever known

    The big problem is that the USPTO has been focusing on quantity, not quality, for many years. Under Director Michelle Lee, there has been a new drive to improve patent quality, but it’s been hampered by procedures and systems put in place long before she arrived.
    LOL — Lee has been focused on finding as many ways to reject applications as she possible can because doing so helps Google et al., (i.e., the serial infringers of the world).

    I’ve made this point before, and it is worth making again, but making your policy goal being “preventing bad patents,” then you’ve instituted the wrong goal. The proper goal would be to “find the correct line between what is patentable and not patentable.” Based upon the first goal, the Examiner always achieves this goal by not issuing any patents (regardless of whether the rejection was deserved or not). This means that inventions for which patent protection should be available or not being patentable. However, using the second goal, Examiners will deservedly reject some applications and deservedly allow other applications. There may always be some gray middle ground, but if you are working with the second goal in the mind, the default approach is to always reject.

    Since Lee came to the USPTO, she’s always been harping on “bad patents” (not surprising since that is what she was doing when she was head of patents and patent strategy at Google). If you listen to the likes of Google & Facebook, every patent they’ve ever been sued on is invalid. They don’t have many patents of their own to protect, so being anti-patent is a business decision, but I digress. Getting back to Lee and her pronouncements about patent quality, Examiners react accordingly and will err on the side of patentability — exactly what the anti-patent crowd wants.

  4. Curious September 8, 2016 4:22 pm

    patent examiners, particularly in software, are discouraged from forcing applicants to fix unclear claims
    That is complete and utter BS.

    [O]ne claim for a cardboard coffee cup insulator begins by referring to “a recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container.”
    That kind of language is not exactly easy for laypeople – or even patent lawyers — to read.

    LOL — that language was incredibly easy to understand. I also find it amusing that you are all aboard the complaint about “broadly worded patent applications” yet you blanch when faced with very specific and narrowly worded claim language. You cannot have it both ways.

    But many patent applications have dozens of claims to examine, and a patent examiner gets the same amount of time to examine an application with 100 claims as an application with just 1 claim. This is true even though the applicant pays extra to have more than 20 claims in the patent application.
    Complain to the USPTO. Applicants pay extra when they introduce extra claims. It is the USPTO that dictates how much credit an examiner gets.

    To make things worse, the USPTO cannot get rid of patent applications except by issuing them as patents. An applicant can choose to abandon an application, but it doesn’t have to. If it wants, an applicant can keep the patent application going forever by just paying more fees and filing requests for continued examination. Examiners get a fixed amount of time per application, no matter how many requests for continued examination they have to deal with.
    Cry me a river. Your bio mention that you are an inventor. It took 10 years for the USPTO to grant your patent, I’ve seen the USPTO hold up patents even longer. Once you file the RCE, the patent term on those patents keeps get eaten up for every day that the patent hasn’t issued. As such, those patents that go through lengthy prosecution almost always have significantly reduced patent term. Also, examiners LOVE requests for continued examination (RCEs). RCEs are sweet nectar from the gods for an examiner. It is far easier for the Examiner to re-examine a patent that they already read and understand and for which they’ve already reviewed the prior art.

    Eventually, the sheer volume of applications on an examiner’s docket will create pressure to allow applications just to get some breathing room.
    LOL — when was the last time you prosecuted?

    the GAO found that around 45% of examiners felt at least some degree of pressure to allow more patents
    I want to see what question was actually asked of the Examiner. I can easily see how a particular question could result in a misleading statement. Also, I suspect that the GAO didn’t talk to any examiner’s in TC 3600 (business methods). If they did they would find that 100% of the Examiners there felt considerable pressure NOT to allow any patents. I know of many, many Examiners in that Tech Center that haven’t allowed a patent in close to 2 years.

    Gene — I know you like to be fair and balanced, but this guy’s stuff is really bad.

  5. Benny September 9, 2016 9:28 am

    Curious,
    Claim languague clarity IS a real problem, and the example in the article is pretty mild compared with some of the applications I’ve seen (but had difficulty comprehending). How about “ground engaging rotary propelling device”? (true example). Can you guess what that is? I’ve even seen a claim that was so poorly written that it was actually impossible to reduce to practice, since it mentioned a completely sealed enclosure with gaseous access through an opening (can’t be open and sealed at the same time – this error was pointed out by a competent attorney), but it went past the examiner to grant
    Take a look at the time stamps on examiners search results pages and check how much effort goes into searching. I’ve seen one application with just 3 minutes between the first and last time stamp. Problems with patent quality? You bet.

  6. Curious September 9, 2016 2:40 pm

    ground engaging rotary propelling device
    That is found in US Patent Publication No. 2003/0125943 and regards swimming pool cleaners. I’ve seen a few automated swimming pool cleaners in my day, and after reading the specification, I know exactly what it refers to. IN the context of a submersible device, a “rotary propelling device” could refer to a propeller. However, the term “ground engaging” distinguishes what is being claimed from a propeller. The case law makes it quite clear that a term being hard to understand without the benefit of the specification doesn’t make it indefinite.

    I’ve even seen a claim that was so poorly written that it was actually impossible to reduce to practice
    Reduction to practice is based upon the specification — not the claims. Claims are meant to distinguish the invention from the prior art — not describe how to make and use the invention.

    it mentioned a completely sealed enclosure with gaseous access through an opening (can’t be open and sealed at the same time
    Maybe not at the same time, but the language could be OK if it referred to two different states of the device. A wall is “completely sealed;” a window is “open;” and a door is configured to transition from one state (i.e., open) to a different state (i.e., closed). Hence, a claim to a door could refer to something being both open and sealed.

    Claims use words, and words, by their very nature, are imprecise. I remember the case of Frigaliment Importing Co. v. B.N.S. International Sales Corp in contracts class in law school (aka, the “chicken” case). In it, they determined that the term “chicken” didn’t necessarily mean some people thought it meant.

    I recall looking at a defendant’s response in a litigation involving a patent that I prosecuted. In it, they alleged 112 2nd paragraph problems as to ALL of the claim terms. Mind you, almost of them were terms that most 10 year olds wouldn’t have a problem understanding. However, they still kicked up dust over those terms — because they could.

    Take a look at the time stamps on examiners search results pages and check how much effort goes into searching.
    An entirely different issue from claim language clarity.

    BTW — for those that are interested, an embodiment of a “ground engaging rotary device” is a rotating cylindrical body having flexible fins/flanges that extend perpendicularly from the circumference of the body. These fins/flanges are spaced radially about every 10 degrees or so. A pair of these devices would be placed on two ends of the cleaning robot. As each cylinder rotates, the fins grab onto the side of the pool (think of the fins like the legs a circular centipede).

  7. Benny September 9, 2016 3:07 pm

    Curious,
    Most people – even attorneys – would write “”wheel”. I’ve actually seen the word “wheel” used in patent claims.

  8. Anon September 9, 2016 3:36 pm

    Benny,

    The point that you failed to grasp was that claims, belonging to a legal document (as opposed to an engineering document) are intended differently than how YOU want to read them (or have them written).

    There is nothing wrong with this (per se), and you should already know this from previous feedback to your past whining on this blog.

  9. MrFox September 9, 2016 4:10 pm

    “Curious September 8, 2016 4:22 pm

    patent examiners, particularly in software, are discouraged from forcing applicants to fix unclear claims
    That is complete and utter BS.”

    No, it isn’t B.S.
    Examiners highly discouraged in the training academy from doing 112 2nd rejections and if you are an Examiner who does do them, you will eventually start getting ‘errors’ from review with NO reasoning behind the error and when you HAVE to spend a couple of hours responding showing the rejection was proper, the reviewers ALWAYS respond ‘error is proper because error is proper’……which is kind of like conclusory statements saying ‘That is complete and utter BS.’ without any evidence or logical arguments.

    Examiners in some fields are pressured to allow applications that they believe should be rejected ‘since the Applicant has spent so much time on it’. But please just say ‘TC3600’, in fact just yell it, and hold your breath, and kick the ground, and this some how invalidates all other arguments right?

    But perhaps you are correct in your arguments and statements, the issue is you didn’t provide any proof or reasoning as to why….which is what is seen on about 80% of responses to office actions.

    Benny, I have seen it too, It is upsetting, to say the least, to spend a couple days searching and when look at a related application that might have some pretty similar art and see it has been allowed after 2 searches that took 10 minutes as the Examiner looked through a total of 3 references. The sad part is, the system is rigged against rejections since you will always have a possibility of an error on a rejection [usually due to reviewers being unable to understand the art] but NEVER on an allowance, no matter how terrible a job is done.

  10. Curious September 9, 2016 5:22 pm

    Most people – even attorneys – would write “”wheel”. I’ve actually seen the word “wheel” used in patent claims.
    It isn’t a wheel … sorta of a wheel … but not a wheel. However, once you’ve used the phrase “wheel,” you are locked into whatever baggage may be associated with that term. One can find an example of it here:

    http://cyclehood.com/types-of-automatic-pool-cleaners/beautiful-modern-beauteous-automatic-pool-cleaner-design-ideas-with-aquafirst-ne3290-cleaner-large-types-of-automatic-pool-cleaners/

    To follow up on anon’s point, patent claims are not an engineering drawing or description. Just because you think it might be easier to say one thing, it may not be the best approach because the (easier) terminology you are employing might have limitations that you didn’t anticipate.

  11. Benny September 10, 2016 4:19 am

    Curious,
    Thats an interesting product — being an apartment dweller I’m not a prospective customer. At first glance, though, it looks as though the doctrine of equivalence wold kick in if I tried to argue that the round thing the animal moves on is patently distinct from a wheel.

  12. Curious September 11, 2016 12:15 pm

    Examiners highly discouraged in the training academy from doing 112 2nd rejections
    I cannot speak to that because I don’t work at the USPTO (perhaps you have personal knowledge?). However, I’ve seen hundreds and hundreds of 112 2nd paragraph rejections — trust me, they are still getting made. However, except for antecedent basis issues, I would say that 95% of the rejections were cr-ap (for a variety of reasons). Maybe there is a good reason why they are supposedly being discouraged.

    Examiners in some fields are pressured to allow applications that they believe should be rejected ‘since the Applicant has spent so much time on it’.
    Evidence of this? I recall you asking me for “proof.” I have prosecuted well over a thousand applications, and I have took over the prosecution of hundreds of applications that were originally prosecuted by other firms. I’ve seen little to no evidence of examiners caving in just because of the length of prosecution. If anything (based upon my review of prosecution histories by other firms), the longer the application is being prosecuted, the much more narrower the claims become. Perhaps an examiner feels sorry for an application after a dozen or so office actions and allows the application — but if so, I’m reasonably sure that the claims are so narrow that it will be near impossible to infringe them (the expression ‘no harm, no foul’) coming to mind.

    please just say ‘TC3600’
    I will. I’ve had much more than a handful of cases pass through that TC. I’ve done independent research on my own regarding certain examiners and art units in that group. I’ve talked to former examiners in that TC. All the evidence I’ve gather indicates to me that, in TC3600, examiners are actively encourage to reject ALL applications. I’ve stumbled across some examiners with 10 years of experience in which 80-90% of their allowances were a direct result of a reversal by the Board. What surprised me (well, sort of) was that I found several instances of that kind of record without even trying hard.

    the issue is you didn’t provide any proof or reasoning as to why
    LOL … please explain that to your fellow examiners why, after reproducing (word-for-word) a 15 word clause of my claim and then inserting thereafter (see paragraphs 0077, 0078) doesn’t quite cut it. I’ve seen examiners cite the same paragraphs in a reference (which happens to span 4 pages of text) for every limitation of a lengthy independent claim. There are no better experts at failing to provide analysis, proof, reasoning, evidence than examiners — really, you need to look at the work product of your compadres — it isn’t a pretty sight.

    the system is rigged against rejections since you will always have a possibility of an error on a rejection [usually due to reviewers being unable to understand the art] but NEVER on an allowance, no matter how terrible a job is done
    Get a transfer to TC3600 — you’ll be embraced. You’ll be forgiven for all your past sins. So long as you continue to reject applications, you’ll be in everybody’s good graces. Reversed at the Board, its OK, they’ll permit you to do a new search and you’ll have the added benefit of adding in an Alice rejection. You can easily go years without allowing an application.

  13. MrFox September 11, 2016 7:37 pm

    @ Curious

    First, if I say something occurs at the office without showing any proof, it is because SWIM doesn’t feel like being fired for giving you proof on it, although I only asked for proof of statements you made regarding others, not yourself, since you make a lot of accusations about others with no apparent backing. When I made a statement that said ‘Examiners have’ or ‘Examiners experience’ I will make it easier for you from now on by saying SWIM, which is why I didn’t include any proof.
    I decided to post on here because I noticed the constant posts that appear to make sweeping generalizations about the whole office based on TC 3600, which makes up an incredibly small percent of applications and examiners, for the most part.

    Now, directed to the 112 2nd issue, you originally stated that it was BS that Examiners were discouraged from making 112 2nd rejections, I said it wasn’t BS since SWIM has experienced this even when 112 2nd rejections should be applied. I also noted that doing 112 2nd rejections are almost never to an examiner’s advantage because reviewers never properly explain and never give a a proper response when SWIM appeals an ‘alleged error’ besides stating the alleged error was proper because otherwise they wouldn’t have gave an error.

    You then in response said ‘ However, I’ve seen hundreds and hundreds of 112 2nd paragraph rejections — trust me, they are still getting made. However, except for antecedent basis issues, I would say that 95% of the rejections were cr-ap (for a variety of reasons). Maybe there is a good reason why they are supposedly being discouraged.’ which does not address whether ‘patent examiners, particularly in software, are discouraged from forcing applicants to fix unclear claims’ which you stated is “BS”. So I’m guessing that either you agree with the statement and said this because you have no actual argument or proof otherwise or maybe you forgot to actually address this? Because I’m not sure how ‘rejections were cr-ap’ means Examiners weren’t discouraged from rejecting unclear claims. Perhaps you could explain this to me?

    Next, You asked for evidence that Examiners are being pressured to allow claims, just saying SWIM had firsthand experience where those were the actual words used by a SPE and primaries in completely different cases. I’m sorry SWIM didn’t tape record it for you, but SWIM doesn’t care about that enough to lose their job for it, sorry.
    However; I am quite certain, no one at the office would tell you that ‘the Applicant spent a lot of time and money on it’ [i.e. no SPE or primary is going to allow a case and let you know that was the reason it was allowed] and the examiner probably won’t stick it in the reasons for allowance either, so maybe that is why you haven’t seen this? Although, about the longer the application has been prosecuted, SWIM had a few cases go up to their 6th RCE because after every rejection, the Applicant deleted the limitation they added in the previous amendment and added a different one (usually a couple of words) so SWIM had a few cases that actually ended up being broader as prosecution went on. Of course, SWIM ended up getting their old SPE on their back because the case ‘should have been allowed a long time ago because that is too many RCEs’. Nothing to do with the claim limitations or the prosecution history, nope, just ‘too many RCEs’ no matter the reason for the RCEs. SWIM has had claims after a dozen or so office actions that still read on the original 102 reference, so I don’t think the number of Office Actions somehow makes a case more narrow and in condition for allowance and I would caution you from making the assumption.

    Now onto this one-
    “please just say ‘TC3600’
    I will. I’ve had much more than a handful of cases pass through that TC. I’ve done independent research on my own regarding certain examiners and art units in that group. I’ve talked to former examiners in that TC. All the evidence I’ve gather indicates to me that, in TC3600, examiners are actively encourage to reject ALL applications. I’ve stumbled across some examiners with 10 years of experience in which 80-90% of their allowances were a direct result of a reversal by the Board. What surprised me (well, sort of) was that I found several instances of that kind of record without even trying hard.”

    I don’t really know anything about that art unit besides what I read on here, but my WHOLE reason for saying that was, you appear to be making sweeping generalizations about the whole office based on a very small TC. I don’t know what goes on there, but I do know most of the things said about it don’t apply to the TCs that SWIM has worked in, so if you want to have a discussion on here instead of appearing to just troll the office, then you should probably realize most of the office IS NOT in TC3600 and holding your breath and saying TC3600 to someone in TC2100 or TC2400 does not magically make them into a TC3600 examiner. I know you see some trees, but there is a whole forest out there. Perhaps TC3600 does do all the things you say and maybe even more, but SWIM doesn’t deal with them, SWIM hasn’t worked with them, and their experiences are not any way related to them, so to just say TC3600 in a discussion as a ‘magical’ cop out to a question is not having a discussion, is not a very grown up response, and will make most people realize that to even discuss things with you is not worth their time.

    Next-

    “the issue is you didn’t provide any proof or reasoning as to why
    LOL … please explain that to your fellow examiners why, after reproducing (word-for-word) a 15 word clause of my claim and then inserting thereafter (see paragraphs 0077, 0078) doesn’t quite cut it.”

    Ok, let me see if I can explain this. If you want to have a discussion or even an argument, saying ‘Well I’ve seen other people who aren’t you do this’ so I don’t have to, is the SAME THING you are badmouthing the office about isn’t it? So, are you saying, because SWIM’s fellow examiners do something, you should do it also to people who aren’t even the people doing it?
    I’m confused, are you just saying that you didn’t provide any reasons because you can’t? Or because one time someone acted like a child to you so you feel the need to act like the child person now? Although, if we are playing this game, I will mention that on 50% of all responses by the Applicant, SWIM has had to use the ‘No Remarks pointing out patentability’ FPs. Generally a response by an Applicant looks like this, Reference says A. The claim says Aprime. Should be allowed. However, the MPEP says you have to compare and contrast the teachings of the reference to the claimed limitations, which is done maybe 30% of the time. Simply saying, ‘look, different words’ is not a response. I would even say 10% of all responses SWIM gets, say Reference A doesn’t teach claim limitation X even though a completely different reference was used to teach it. Which is kind of bad considering I haven’t seen many Examiners sending out rejections for the wrong claims.

    Finally-
    “the system is rigged against rejections since you will always have a possibility of an error on a rejection [usually due to reviewers being unable to understand the art] but NEVER on an allowance, no matter how terrible a job is done
    Get a transfer to TC3600 — you’ll be embraced. You’ll be forgiven for all your past sins. So long as you continue to reject applications, you’ll be in everybody’s good graces. Reversed at the Board, its OK, they’ll permit you to do a new search and you’ll have the added benefit of adding in an Alice rejection. You can easily go years without allowing an application.”

    Does the response mean you agree with my statement that the system is rigged against rejections? Because you don’t appear to disagree.
    But if the reason SWIM was going to transfer to TC3600 because SWIM got reversed at the board, then SWIM doesn’t have any reason to transfer to TC3600 then because SWIM would have to be reversed at the board first.
    Although in software, Alice is one of the best things ever to happen to patent applicants since OPQA hands out errors now for any 101 rejections unless they are for non-transitory issues or unless they almost match exactly the same for post-Alice case examples that are on the USPTO website. SWIM got an ‘alleged error’ for doing a 101 rejection for a claim that consisted of the single step of receiving data, SWIM’s rationale was, since the data isn’t used for any reason in the claim and isn’t defined in the spec to be used for any particular purpose, it can be considered non-functional descriptive matter and therefore would be performing steps commonly performed in the art since a receiver is a commonly used item AND additionally because ‘receiving data’ would be pre-emption every receiver in the world because someone would be infringing simply by transmitting your data to them [if you consider the data a limitation instead of non-functional, if you consider it non-functional, it would be transmitting them ANY data] whether they wanted to receive it or not. SWIM got an error for this, the reason for the error was it didn’t match word for word with an Alice example and because the reviewer said so. SWIM brought this up in a meeting with the quality people assigned to SWIM’s art unit, and was told if SWIM didn’t want errors, SWIM shouldn’t do 101 rejections. SWIM hasn’t done a single one, except for non-transitory, since. So yeah, examiners are discouraged from doing those rejection…just a bit.

  14. Curious September 11, 2016 8:05 pm

    First three paragraphs — sounds like a typical “Response to Arguments” section to me … a whole lot of writing and nothing said.

    you appear to be making sweeping generalizations about the whole office based on a very small TC
    No. 3600 is the worst of the worst. 2100/2400/2600 are still pretty bad. I was in the mechanical arts for quite some time before I transitioned to the computer arts. I was amazed as to how badly the examination was in the computer arts.

    because SWIM’s fellow examiners do something, you should do it also to people who aren’t even the people doing it?
    I see you are confused as to the difference between my blog comments and the examiner’s duty to follow 35 USC and 37 CFR.

    are you just saying that you didn’t provide any reasons because you can’t?
    You originally wrote “you didn’t provide any proof or reasoning as to why.” Talk about indefinite statements — “as to why” what?

    I will mention that on 50% of all responses by the Applicant, SWIM has had to use the ‘No Remarks pointing out patentability’ FPs
    One of those, I see. All we need to identify is examiner error. If you don’t make a prima facie case, we do not have an obligation to respond. When 50% of the time you make no effort to understand the response, it tells me a lot about your level of engagement. No wonder you are worried about how reviewers will treat your office actions.

    the MPEP says …
    The MPEP is not the law. Wow … you haven’t figured that one out yet. I mean seriously, that is pretty bad.

    you don’t appear to disagree
    I didn’t respond — because I choose not to address an issue (i.e., what happens when an office action gets reviewed) for which I don’t have reliable evidence to base an opinion on. That is not the same as not disagreeing. I hope your responses in OAs are more persuasive than this.

    OPQA hands out errors now for any 101 rejections unless they are for non-transitory issues or unless they almost match exactly the same for post-Alice case examples that are on the USPTO website
    LOL … I mean seriously … you are killing it. Have you thought of taking up a career in comedy. ROFL. I’ve seen dozens and dozens and dozens of office actions cite to Cyberfone and SmartGene (to name a couple) — in ZERO instances was the application of that (nonprecential) case law even close.

    it can be considered non-functional descriptive matter
    LOL — printed matter doctrine applies to information useful and intelligible ONLY to the human mind. Read In re Lowry. You (like most of the USPTO) cannot figure that one out.

    the data isn’t used for any reason in the claim and isn’t defined in the spec to be used for any particular purpose
    I suspect that there was a reason at least in the specification — however, your skim reading of the specification didn’t spot it.

    if SWIM didn’t want errors, SWIM shouldn’t do 101 rejections
    Odds are that if you are not in 3600 or biotech, then you probably shouldn’t be doing 101 rejections.

    So yeah, examiners are discouraged from doing those rejection…just a bit
    I would phrase it as “examiners are encouraged to follow the case law.” However, since you seem to be having a problem with the case law, then some QAS has decided to remind you of that.

  15. MrFox September 19, 2016 4:12 pm

    @ Curious

    Thanks for responding to nothing besides showing how truely useless any discourse with you is. Your response is truely pathetic and shows the sad state of registered attorneys. When you resort to correcting grammar, you show everyone your true colors, and those colors reveal a very sad image. I hope you get some help.

    “you appear to be making sweeping generalizations about the whole office based on a very small TC
    No. 3600 is the worst of the worst. 2100/2400/2600 are still pretty bad. I was in the mechanical arts for quite some time before I transitioned to the computer arts. I was amazed as to how badly the examination was in the computer arts.”
    AND “because SWIM’s fellow examiners do something, you should do it also to people who aren’t even the people doing it?
    I see you are confused as to the difference between my blog comments and the examiner’s duty to follow 35 USC and 37 CFR.”
    AND
    “I will mention that on 50% of all responses by the Applicant, SWIM has had to use the ‘No Remarks pointing out patentability’ FPs
    One of those, I see. All we need to identify is examiner error. If you don’t make a prima facie case, we do not have an obligation to respond. When 50% of the time you make no effort to understand the response, it tells me a lot about your level of engagement. No wonder you are worried about how reviewers will treat your office actions.”
    AND this truely sad one,
    “the data isn’t used for any reason in the claim and isn’t defined in the spec to be used for any particular purpose
    I suspect that there was a reason at least in the specification — however, your skim reading of the specification didn’t spot it.”
    [so somehow this genius knows exactly how an application was examined! AMAZING!!]

    What the heck are you answering here? This isn’t an answer. It is just you trying to be insulting because you are incapable of producing an intelligent thought and you figure insulting people will make others not realize how you lack any talent or knowledge? What is wrong with you? Seriously, you can’t pull a hypothetical out of your butt to avoid answrring something. EVERYTHING you say follows the same pattern, “Well, you, the examiner, probably does X [which is bad], so that is why I am doing such a crappy job!!” You said I probably don’t do a good job so I suck, so that is why you don’t have to do your job. It is truely pathetic.

    Seriuosly, here’s another example-
    “OPQA hands out errors now for any 101 rejections unless they are for non-transitory issues or unless they almost match exactly the same for post-Alice case examples that are on the USPTO website
    LOL … I mean seriously … you are killing it. Have you thought of taking up a career in comedy. ROFL. I’ve seen dozens and dozens and dozens of office actions cite to Cyberfone and SmartGene (to name a couple) — in ZERO instances was the application of that (nonprecential) case law even close.”

    What the heck are you answering? I said X occurs, you say well when Y occurs it using Z… Do you respond to Office Actions using the prosecution history of an unrelated case? NO WONDER you have so many issues with the office! You see, when an Examiner rejects claims using a reference X et al, you have to respond to those claims and the art the examiner cited. You can’t respond to claims in another case and make up your own prior art. I know this seems crazy and what not, but ask around, you will find out that it was true the WHOLE TIME!

    You don’t know me, so don’t act like you do, scum.

    Finally, the one thought where you actually did discuss something-

    “it can be considered non-functional descriptive matter
    LOL — printed matter doctrine applies to information useful and intelligible ONLY to the human mind. Read In re Lowry. You (like most of the USPTO) cannot figure that one out.”

    This is completely wrong. In re Ngai states
    “As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” ”

    As you can see here, you have no real clue as to what you are talking about. No, to be non-functional descriptive material, the limitation doesn’t have to be ONLY useful and intelligent to a human mind. If what you believe was the actual rules then a claim which only said
    ” A device configured to transmit the numbers 87672318618235689372568, then 8937210897892378942713, then 8374091374837029.” would be a patentable claim.

    Also, saying one of my comments was indefinite makes you sound like a ponce.

  16. Zeegun Thurman December 11, 2016 5:34 pm

    There are a lot of issues here – first, people who seem to be ‘fighting’ for us little guys are actually sweeping things under the rug… further, they are operating under false pretense to FURTHER steal from us…. email me and we can talk more ZeegunThurman AT yahoo (add the .com)