How NOT to Respond to an Office Action

By Gene Quinn
September 29, 2016

Blue route sign, STUPID

On September 19, 2016, a pro-se inventor filed an Office Action Response that will go down in the annals of Patent Office history right up there with the Are You Drunk Examiner? response filed several years ago.

The Remarks section of the Office Action Response starts off much as you might expect, but quickly gets confrontational. The inventor did not like being told that his claims would violate the laws of Physics, which lead to a two-page discussion about the ambiguity of the term “laws of Physics.”

Interestingly, the inventor took issue with something that would have been an interesting argument but for him going completely off the rails. Apparently, if the inventor is correct, there is an International Search Authority opinion that the claims cover an industrial application. The inventor wanted to know how and why an Alice rejection could be given if that is the case. The inventor asked the examiner to provide an explanation as to why there was complete and total disagreement with the ISA? An interesting question. The inventor closes with this thought: “Or is it the Examiner did not bother reading said opinion?”

As harsh as asking the Examiner whether they did not read the ISA opinion may seem, that too would be an interesting and unfortunately honest question, had the inventor not ultimately gone completely off the rails. Indeed, at times it can feel like patent examiners are either not paying attention, not reading or just pushing garbage out the door of the Office. But what this inventor did here is NOT the solution. There are avenues to pursue at the Office when a patent examiner is ignoring the rules and law, and there are all kinds of strategies to maneuver applications around, inside the Office, to more friendly examiners in Art Units that actually work for the Patent Granting Authority. Taking matters into your own hands and telling the examiner off as if you are arguing with a NY taxi driver who just side-swiped you as they cut you off, is not a winning strategy!

Whatever one might think of patent examination quality, there is absolutely no call for using foul language to berate examiners in an Office Action Response. It is one thing to point out that it seems clear that an examiner has not read what the applicant has submitted, but it is quite another to call the examiner and the examiner’s supervisor a “f**king a**hole.”

Where things really got off the rails is in the Office Action Remarks under the section heading Grievances. All of the words below are spelled out and can be read in the Remarks to the Office Action Response. I am choosing to use asterisks here, although it won’t take much imagination to figure out what was actually written. The inventor writes:

You and your f**king, a**hole boss cost me thousands of dollars in unnecessary legal costs due to your gross negligence, willful misconduct, failure to obey the law and failure to follow USPTO reviewer’s guidelines, which lead to me having to end any legal support in fighting against you pieces of s**t as well as putting me in a gigantic finance hole that has taken me two and one-half years to dig out from. I am hereby demanding the following be carried out immediately whether you f**king like it or not dip s**ts!

a. You and your f**king, a**hole boss are to recuse yourself from the review of this application immediately.

b. Given the above remarks, which show you and your f**king a**hole boss to be incompetent, incapable, have zero character or integrity, and are fraudsters, you and your f**king s**hole boss are to immediately issue a Notice of Allowance on patent application 13/835,937.

c. You and your f**king a**hole boss are to immediately provide me with those states you qualified for the bar, so I can move to have your law license revoked and any other retribution I deem necessary!

d. A grievance and complaint will be filed with the USPTO Commissioner’s Office demanding you and your f**king a**hole boss be terminated, forfeit any and all pensions and benefits as well as claw back 5 years of your salary.

e. Under no circumstances should you and your f**king a**hole boss contact me, I will considerate it a threat against my person and an act of harassment, which will result in the notification of appropriate authorities.

f. I will not address the remaining claim rejections until you and your f**king a**hole boss are removed from reviewing or having anything to do, in any way, shape or form with this application.

There are patent examiners that can and do inspire this level of venomous hatred. Whatever the wrong perpetrated by the examiner ceases to matter, however, when a response like this is filed. No one who could have helped will lift a finger, and this inventor is finished at the Office. This is not the way to proceed. Maintaining decorum at all costs is absolutely essential. A response like this does nothing to help, period.

Interestingly, the Application cited by the inventor — 13/835,937 — is not the application where this response was filed. This response was filed in Application No. 14/390,168. Application No. 13/835,937 was to the same inventor, but that case was abandoned on April 2, 2015 for failure to timely respond to a Final Rejection.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 36 Comments comments.

  1. Name withheld to protect the innocent September 29, 2016 10:52 am

    Ah. The pro-se applicant has only said (what I’m guessing) many attorneys wish they could say from time to time. However, that is what we signed up for when chose to be professionals — we act that way.

  2. EP=EPR September 29, 2016 11:24 am

    If his invention actually worked (for communicating information between two entangled systems at a distance) it would be Nobel prize in Physics winning. The examiner probably should have explained why it didn’t work better but I’m not sure if it would have mattered.
    https://en.wikipedia.org/wiki/No-communication_theorem

  3. John White September 29, 2016 12:17 pm

    As a child, your parent likely told you: if you have nothing nice to say, don’t say anything at all. Sage advice, that does not become defective or alter with age! Decorum and respect are a necessity at the PTO. Period.

  4. Gene Quinn September 29, 2016 12:44 pm

    John White is exactly right. Whether this inventor had legitimate grievances or not, this is not the way to approach anything, period. Effective representation never requires personal attacks.

  5. Evren September 29, 2016 2:23 pm

    The inventor appeared convinced he’d solved the no communication theorem in this 17 minute video I dare any of you to watch all the way through without falling asleep.

    https://vimeo.com/107502715

  6. Ken September 29, 2016 3:35 pm

    I agree that the behavior is of course unacceptable, but I could see how a “pro se” party would be truly shocked at a system operating in a way that no private organization could ever get away with – and without any accountability. People often tend to assume things work relatively justly, unless they have been sufficiently exposed to the reality (as most of us have in this case, to the point of almost numbness).

    [I recently won an appeal where the examiner simply refused to even *articulate* a rejection for most of the claims. The answer brief was the first time many of the claims were ever even mentioned individually AT ALL, and even then only in a sweeping/conclusory way that I knew 100% would either have to be remanded or reversed. The APJs reversed, but didn’t even so much as mildly reprimand the examiner. Lots of time and money wasted, with no accountability at all.]

  7. Mike September 29, 2016 4:02 pm

    Which application did you say this response was filed in? I can’t seem to find it in 13/835937 or 14/390168 on PAIR. I would like to see the full response.

    Thanks

  8. Gene Quinn September 29, 2016 4:18 pm

    Ken-

    Would you be willing to point me to an Application No?

    I can’t help you with the Office and PTAB not holding examiners accountable, but I’m happy to do what I can to push the accountability issue. The difficulty is finding good examples of what we all know is happening.

    -Gene

  9. Gene Quinn September 29, 2016 4:21 pm

    Mike-

    Not sure why you can’t find this one in PAIR. I just looked it up again. See:

    http://www.ipwatchdog.com/wp-content/uploads/2016/09/Screen-Shot-2016-09-29-at-4.20.02-PM.png

    -Gene

  10. TiMFr September 29, 2016 5:47 pm

    While the file wrapper is there, the actual response appears to have been removed.

  11. Gene Quinn September 29, 2016 6:34 pm

    TiMFR-

    OK. I can explain that. You may recall this issue came up with the “Are You Drunk Examiner?” response also. There is a rule (CFR something) that allows the Office to deny the filing of anything that is disparaging. What tends to happen is things get uploaded and placed in PAIR automatically. As soon as the problem is identified it is removed from the file. This is perfectly within the authority of the Office.

    I can assure you it was there. I downloaded it from PAIR, and this has been widely sent throughout the Office from Examiner to Examiner internally.

    -Gene

  12. Quality Control September 29, 2016 8:03 pm

    I also can’t see Applicant’s response in the record. However, If you read the final rejection in the parent case (13/835,937), you can see what the inventor was upset about. In response to Applicant’s argument the examiner only wrote “it is determined that the 101 rejection does not require the Examiner to establish a prima facie.”

    The only rejection in the final rejection was a 101 where the examiner simply wrote “Claimed invention(s) is determined to be “not working””.

    Even though it does appear to be “not working”, the examiner’s insistence on the record that he doesn’t have to do his job is…[insert Applicant’s colorful language here].

  13. Anon September 29, 2016 8:15 pm

    Gene,

    Any chance of providing a “png” of that item?

    You know, for professional evaluation and all… 😉

  14. robert September 30, 2016 12:24 pm

    That was too funny.

  15. Barbara September 30, 2016 1:24 pm

    Is the inventor Donald Drumpf or a close relative or business associate per chance?

  16. Gene Quinn September 30, 2016 2:06 pm

    Barbara-

    That’s not fair to Donald. He says many… many… many… offensive things, yes, but I’ve never heard him use that type of language.

    -Gene

  17. William Morriss September 30, 2016 4:41 pm

    This is so sad.
    Reading through the “grievances,” I see a man who thought he had a million dollar idea, but was broken by a system which told him his idea was worthless for reasons that appeared be a combination gibberish and lies. His response says he was able to get out of the “gigantic financial hole” he got into fighting the patent office, but I can’t help but think about what sacrifices he (and maybe his family, if he has one) had to make in order to do so. I suspect that’s something he was thinking about when he wrote his response.
    Of course, no one forced him to spend himself into a “gigantic financial hole,” and not every application should issue as a patent. However, I hope the examiners who circulated this response took a moment to think about what might have driven the inventor to write it and whether it’s really necessary for people to be driven to that level of desperation to promote the progress of science and the useful arts.

  18. Lloyd September 30, 2016 5:40 pm

    Gene,

    As an ex-examiner who also defended some specious examiner actions for the union and an attorney for 38 years, the applicant struck some serious nerves. Whether the applicants comments are relevant in this case is unknown but many examiners throw actions off their desks from time to time with less than their best efforts costing corporations and the small inventor a ton of money. Moreover, supervisors when called upon seem less prepared and unwilling to do anything other than to support the previous action particularly with pro se inventors. Examiners should show the public much more respect.

  19. Gene Quinn September 30, 2016 5:49 pm

    Lloyd-

    Thanks for your comment.

    Unfortunately, once the applicant goes down this path having a serious discussion is no longer possible.

    Unfortunately, those who are faced with recalcitrant examiners tell me their stories all the time. Then when I ask for an Application No. so I can take a look they refuse because they don’t want me to write about it. I think the behavior you explain is widespread. I’m happy to write about what is in the public record, but it is impossible for me to scour PAIR randomly looking for cases.

    I agree with you. There are a lot of actions just pushed out the door that are extremely low in quality and at least some supervisors don’t care. What a mess!

    -Gene

  20. Anon September 30, 2016 6:42 pm

    Gene,

    You do know that there really is a “blacklist” mentality within the Office, right?

    Not that that should be a driver above common courtesy and professionalism, but it will explain at least some of the reluctance to be identified as the attorney “making a ruckus.” Sadly, petty retribution is part and parcel of some of the “shadow” workings of the Office.

    You may not recognize me if you are an actual examiner, given how brusque I can be on this forum, but this forum is most definitely a different type of forum that exists between applicants and the Office. This is much more a rough and tumble, hard-nosed, no holds barred forum – and it needs to be. Note for example, Mr. Snyder and his repeated proclivities – even after having been banned for ignoring the rules of decorum here. Those who are anti-patent have no compunction for using the basest of rhetorical measures, and SOME degree (and I am definitely not saying to sink to the level of their prevarications) of “rough language” and rough treatment is useful – sometimes, that is the only thing these people understand. Yes, with some people, you really do need to shove a fork in their eye for them to get a point.

    Happily, you do an excellent job of policing the blog and eliminating those who have no care at all about facts or the law or what people have actually stated.

    A tip of the hat and a thank you for that.

  21. Gene Quinn September 30, 2016 10:09 pm

    Anon-

    I’ve been told repeatedly by those in senior management there is no such thing as a blacklist and any reference to a blacklist is pure fiction.

    I bring it up from time to time because I believe otherwise.

    Nevertheless, I still need the information to push the issues. I occasionally stumble across things. You probably recall in the July series where I rolled up my sleeves I specifically included a note that I received absolutely no assistance from one applicant or his attorneys. That was 100% true. I found it on my own just looking around for craziness. I didn’t reach out because I didn’t want to be talked out of writing about the nonsense. But I do believe there is a blacklist.

    As for policing, I do what I can. I understand the nature of things, and try and always follow the same rules. Regulars get a lot of latitude, everyone can have a bad day, but pushing baseless propaganda without facts… thats another matter entirely.

    Cheers!

    -Gene

  22. Fran Barker October 1, 2016 3:38 pm

    I really think it would have been worthwhile for this guy to read a copy of ‘How to win friends and influence people’ by Dale Carnegie before he set out to write that response!!! Nobody in their right mind would react in a positive way when they’re being spoken to like that. Yes it’s frustrating when you get an Office action, but there are much more professional ways and means to conduct yourself. I think that guy should take a walk outside to have a word with himself!

  23. Ken October 1, 2016 6:32 pm

    One day I might file an application as if I were pro se inventor using a nom de guerre that I know isn’t allowable just so I can write a response like that!

  24. Ken October 1, 2016 6:44 pm

    Would be well worth the filing fee!

  25. Barbara October 2, 2016 10:41 am

    Gene, Donald actually does say these things. HC ads in the midwest simply put footage on of him saying these and other offensive things and show children watching him. Very effective. This inventor was similarly disrespectful, unprofessional, and offensive, and should not be surprised that no one at the PTO wants to help him, let alone, listen to him anymore.

  26. Neil T October 2, 2016 12:40 pm

    Gene,

    Your posting is not unexpected.

    However, you really need to address the broader issue with the PTO, viz. the current ‘wholesale,’ unreasonable rejections by Examiners under Alice.

    I personally can attest that, whereas my examiner previously would listen to may arguments and consider my remarks on the same invention which he previously granted, he now simply recites a random list of cases “untethered” from my specification and claims to reject my continuations all but admitting that “his bosses have told him he MUST reject all applications and let the PTAB take care of things” BEFORE he’s even read the claims or remarks.

    And, from discussions with others, this is PERVASIVE throughout certain PTO art sections.

    No offense, but posting on your Website, is preaching to the choir.

    You NEED to make the public and Congress aware of this situation by sharing articles about this real problem DIRECTLY with: ‘The Hill’ Editorial Department: jennifery@thehill.com and opinion@thehill.com; and “Gretchen Morgenson, Assistant Business and Financial Editor, New York Times” 1 (800) 698-4637 Gretchen.Morgenson@nytimes.com;

  27. Gene Quinn October 2, 2016 1:07 pm

    Neil T-

    It may come as a shock to you, but reporters at the Hill, POLITICO, NY Times, Seattle Times and many, many other publications read IPWatchdog.com. It will obviously come as a surprise to you that IPWatchdog.com is well read on Capitol Hill. We receive traffic every month from the Senate server, the House Server, the Office of the President of the United States. We are read in the Commerce Department and pretty much every Department within the federal government. We have traffic every month from US Courts, K street firms, and every major corporation and law firm in the United States.

    It may seem that IPWatchdog.com is preaching to the choir, but not factoring in the copyright infringement that I know is widespread (i.e, articles sent via e-mail that I can’t know who reads or how many times they are read) our readership is now at 241,000 unique individuals a month. That goes way beyond the choir.

    So… when I say it would be useful to be pointed to applications of interest where there is unacceptable and unexplainable nonsense going on I know who will read it. So I’m doing my part… and we do push every article out as far and wide as possible. Of course, it would be very helpful for the many others in the industry who are similarly well connected to do the same. It would also be useful to be pointed to hard evidence rather than just hope I stumble across things in the 600,000 or so applications that are filed each year.

    -Gene

  28. SN October 3, 2016 4:35 pm

    It is often helpful in such situations to conduct an examiner interview and try and establish a relationship with the Examiner. We (examiners and attorneys) are warriors on paper, but the interview allows us an opportunity to frankly discuss the rejection of the application and arrive at a solution. Unfortunately, the office seems gung ho on everyone receiving a 101 rejection no matter how absurd (I recently received one for an IP router – I told the examiner if I handed her some ethernet cables, I’d like to see her do the calculations and route the packets).

  29. Urko October 4, 2016 9:24 pm

    What happened to the “Ombudsman” office? Might have helped.

    “Faster-than-light?” Doesn’t that require a wormhole? Someone ask “Montgomery Scotty” ..

  30. SN October 5, 2016 10:12 am

    Here, the problem is that the action is not legally sufficient. This action should have been a combination 112 enablement with the corresponding 101 rejection based upon lack of utility (not an Alice rationale). See MPEP 2107. Things that don’t follow the rules of physics as generally understood in the art of endeavor lack utility. While the theory of quantum entanglement provides for Einstein’s “spooky interaction at a distance,” I doubt the skilled artisan would interpret the spec as containing reproducible instructions to accomplish this. Applicant should have gotten proper rejections, but the end result would be the same: no patent.

  31. anonymous October 6, 2016 6:42 pm

    Interestingly, this response is not available on public PAIR. Is public PAIR censored?

  32. Gene Quinn October 6, 2016 7:26 pm

    Anonymous-

    Yes. It is censored. I don’t have the rule in front of me at the moment, and really need to find it again, but there is a rule in the CFR that allows the USPTO to refuse entry of filings that contain disparaging comments to a patent examiner or USPTO official. This would certainly qualify. To my knowledge the only two times that rule has been activated during my relevant practice career is here and in the “are you drunk examiner?” response situation, both of which lacked even a modicum of decorum necessary for appropriate discourse (IMHO).

    -Gene

  33. Gustavo M October 12, 2016 5:03 pm

    37 CFR §1.3 Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.

  34. Megan October 14, 2016 9:50 am

    I love it. “whether you like it or not”, “unrespectfully submitted”… I had a similar case, an independant inventor who took it upon himself to call up the Examiner and tell him he didn’t understanding anything about mechanics (for his perpetual motion machine of course). Funny, still waiting for the first action on that case…

  35. Jeff L. October 25, 2016 3:12 am

    Gene wrote, “there are all kinds of strategies to maneuver applications around, inside the Office, to more friendly examiners.” I’d be interested in your recommendations here. My efforts in filing related patents aiming at a different art unit often end up in the hands of the same examiner.

  36. Matthew A. Culver October 26, 2016 7:06 pm

    I watched the video posted above by Evren for about the first two minutes until I learned that this person filed his patent application 1st without building the device…..big mistake. You absolutely have no idea of what you’re doing if you think you’re going to make something on the 1st try that absolutely works. No way. The patent examiners knew this. They probably get a lot of these every year.