Allowance Rates for Art Units Examining Business Methods

By Gene Quinn
January 8, 2013

One of the criticisms of the PatentCore database in the past was that the database was not a complete representation of the case files at the USPTO and gave a false impression. I never personally found that persuasive given that even when the database first became public there were approximately 1.5 million application files within the database. Still, many patent examiners scoffed at the notion that this data was accurate.

If I were a patent examiner that hadn’t issued patents for years I wouldn’t want anyone to know that either. Similarly, if I were a Supervisory Patent Examiner (SPE) in an Art Unit that routinely only issued patents after a long drawn out appeal process that resulted in the Board overturning the rejections I wouldn’t want the public to know about that either. Sadly, this type of gaming exists at the Patent Office. There are examiners who only rarely issue patents and Art Units that openly tell patent attorneys that they don’t issue patents unless ordered to do so by the Board. Knowing that this happens, which is supported by hard data, makes it impossible to tolerate the anti-patent zealots who routinely opine about just how easy it is to get a software or business method patent issued. Really? You have to be kidding!

Anyone who knows anything about how the Patent Office operates knows that there are many places within the Patent Office that it is virtually impossible to obtain a patent even on a truly new and exceptional invention. For crying out loud, sometimes it is even difficult to get examiners to look at the pictures int he application. On an application in the business method space where I am an inventor I am facing a bogus 112 rejection for inadequacy of disclosure for something that is shown (and labeled) specifically in 2 different figures and discussed at length in 2 different paragraphs. Really? I realize that examiners don’t have a lot of time to examine patent applications, but when you wait for many years to even get to the front of the line for examination it is truly disheartening to have to tolerate the games played at the USPTO.


Thanks to a more complete PatentCore database it will now it will be exceptionally difficult for patent examiners, or anyone for that matter, to challenge the adequacy of the data or conclusions drawn therefrom. For a very long time statistical analysis of Art Units and patent examiners had to through necessity rely on at most several hundred randomly selected files.  But now PatentAdvisor includes coverage of 6,472,046 published pending, granted and abandoned applications extending back to the date patent applications began to publish under the American Inventors Protect Act of 1999. The database also has many thousands of applications from before that time as well.

Given this greatly expanded coverage of cases I thought it might be interesting to once again take a look at Class 705 to compare the data today with the data available during the winter of 2012.


February 2012

The information in the table below was published on February 22, 2012.  See Is there a Systematic Denial of Due Process at the USPTO? The percent allowed was reached by taking the number of cases allowed and dividing by number of cases allowed plus the number of cases abandoned (which is represented in the “Total” column).  Pending cases were not considered.


January 2013

The PatentCore database is far more complete than it was even just 12 months ago. The table below shows data acquired by search run on January 7, 2013.  Again, the percent allowed is reached by taking the number of cases allowed and dividing by number of cases allowed plus the number of cases abandoned (which is represented in the “Total” column).  Pending cases were not considered.


Art Unit 3689

With more data the overall allowance rate of most of the Art Units in the business method area rose, some significantly. For example, based on the cases then in the PatentCore data base in February 2012, the allowance rate of Art Unit 3622 was 5.6%. With much more complete data, the same search run on January 7, 2013, shows that the overall allowance rate of Art Unit 3622 is 51.8%.

Art Unit 3689, however, continues to lag significantly behind the others in Class 705 in terms of allowance rate. In February 2012, based on the then available cases loaded into the system the allowance rate was an abysmal 4.5%. Now with three times the number of cases the overall allowance rate is a slightly less abysmal 6.3%.

The extremely low allowance rate in Art Unit 3689 is exceptionally difficult to reconcile with an overall allowance rate of 59.8% in the Art Units assigned to examine business method patents. The next lowest allowance rates go to Art Unit 3685 at 24.2% and Art Unit 3688 at 25.0%, which themselves seem to be outliers but still allow patents at a rate that is 4 times that of Art Unit 3689.

It is even more difficult to reconcile the outlier status of Art Unit 3689 when you factor in the entities that dominate Art Unit 3689. We are not talking about your average independent inventor here. The top assignees with applications in 3689 according to PatentAdvisor are:

  1. International Business Machines
  2. Microsoft Corporation
  3. Fujitsu Limited
  4. American Express
  5. General Motors Corporation
  6. Oracle International
  7. SAP AG
  8. Bank of America

These are not small companies. These companies know how to obtain patents. IBM is year after year the top patenting company in the world, yet they have the same issues obtaining patents from Art Unit 3689 as everyone else.

Obviously, what is going on inside of Art Unit 3689 needs deeper review.



The data available via PatentAdvisor is voluminous. You can break it down beyond Art Unit to look at the statistics for each individual examiner. In fact, the database has information on 14,087 different patent examiners, which is rather remarkable since according to the Patents Dashboard there are currently 7,789 patent examiners.

It is unfortunate, and hard to believe, but there are places within the USPTO that seem extraordinarily reluctant to issue patents. According to the data available through PatentAdvisor, of the 128 cases that proceed to appeal beyond simply filing a Notice of Appeal, 75 cases result in an applicant victory and only 53 result in an applicant loss, which means applicants are successful on appeal 58.6% of the time. Armed with that information I suspect you would probably approach prosecution differently.

PatentAdvisor allows for more strategic prosecution and management of patent applications and patent portfolios. If you are faced with a patent examiner who never issues a patent without the filing of an RCE that would be useful information. If you are dealing with an Art Unit that will require you to appeal to have any realistic chance of obtaining a patent then filing those sequential RCEs to make the examiner happy will only lead to unnecessary expensive and many years of delay.

In any event, whether you are a company trying to develop a better prosecution strategy or a law firm that wants to better be able to represent clients, you should at least take a look and see how you might be able to use the information.  Sign up for a free 2-day trial of PatentAdvisor and give it a whirl.


The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 33 Comments comments.

  1. Anon January 8, 2013 12:16 pm

    Can you say “deprivation of due process?”

    Wait, I think you already have.

  2. JNG January 8, 2013 12:32 pm


    Here’s your poster boy for the abuses in AU 3689:

    Check out his stats on PatentCore: something like 10 cases out of 300 allowed in the past 5 years, almost all because he was taken on appeal and reversed. While he used to have a reasonable examination record, apparently his discerning eyes have not seen patentable subject matter in more than 5 years.

    For a good example of his out of touch rejections, check out his “Answer” in the appeal filed in SN 10/771,094; along with his reliance on off-the-wall “references” (like the Acid Rain Program regulations from the 70s) its a marvel of fact-free arguments – his main technique is to wave his hands and pronounce everything “obvious.” Since the BPAI takes 3 years to rule on everything, he knows his bad behavior can’t be circumvented.

  3. Stan E. Delo January 8, 2013 1:10 pm


    I think I would go one further and call it an unwarranted Federal (public) taking of my personal property (rights), but I suppose that is somewhat debatable in this situation. Folks like the one JNG mentions should be sent packing, at the very least to a different art unit that has a different SPE. Come to think of it, might it be possible for the Ombudsman program to do something about it in egregious cases?


  4. Stan E. Delo January 8, 2013 1:24 pm


    After looking at the link you provided, all I can sa y is Good Grief!! Dozens and dozens of medical and surgical applications just thrown in the scrap bin…. I wonder how many improvements in medicine never happened because of this examiner?


  5. Stan E. Delo January 8, 2013 1:53 pm

    Oops! The list was of allowed patents, correct?

  6. John Darling January 8, 2013 2:00 pm

    The “business method” art units were staffed with volunteers. Nobody wanted to examine those cases. And the PTO didn’t have anybody with the “technical” expertise to examine (e.g. Mr. Ruhl goes from examining surgery and tampons and diapers to examining “business methods”). All of the volunteers were aware that one requirement of the job, in exchange for the higher hours per case than what they were getting in their old art, was that any application identified by the typical mid-level-(mis)manager (e.g. SPE, QAS, TC Director, etc.) as “never going to see the light of day” was to be rejected a million ways from Sunday, regardless of how silly the rejection, and only issued if reversed by the Board.

    In other words, these examiners have these allowance rates because that the allowance rates their (mis)managers want them to have. They are simply the tools that the (mis)managers use to accomplish those rates.

  7. Chris Holt January 8, 2013 5:39 pm

    Actually, the news for Group Art Unit 3622 is not so good. Here is a breakdown of their history of allowances:

    As you can see, about 2000 of their allowances show up as occurring before the year 2000…and only granted cases were published during that period. A more accurate grant/abandonment ratio would be in the range of 800/2500. So I would not let them off of the hook yet.

    And the real story with GAU 3622 in my mind is less about what they are doing and more about what they are not doing. Check out this build-up of cases where an RCE has been filed but the next office action has not yet issued:

  8. Been there done that January 8, 2013 6:46 pm

    Ah. The business method art units. In units 3680-3690, woe to the lawyer that bothers to read the MPEP or regulations, and would deign to ask an examiner in 3680-90 to follow it — or worse yet, complains to a SPE and asks the SPE to enforce a plain black-and-white command from the MPEP. When the law would require an examiner to do some work, to think, to write out an explanation that would move an application along? Heck no, if the law requires five minutes more work before clocking up a count, the law can go fly a kite. These art units are run like Mafia extortion or protection rings — nothing moves without vigorish, counts for doing work that should have been done long ago.

    The Supreme Court described the situation in Oestereich v. Selective Service System Local Bd. No. 11, Cheyenne, Wyo., 393 U.S. 233 (1968). Vietnam-era draft boards would punish young men who exercised rights like college deferments, religious exemptions, requesting reclassification, and the like, by moving them up the list for the draft. The Supreme Court wrote:

    There is no suggestion in the legislative history that, when Congress has granted an exemption and a registrant meets its terms and conditions, a Board can nonetheless withhold it from him for activities or conduct not material to the grant or withdrawal of the exemption. So to hold would make the Boards free-wheeling agencies meting out their brand of justice in a vindictive manner. …

    We deal with conduct of a local Board that is basically lawless. It is no different in constitutional implications from a case where induction of an ordained minister or other clearly exempt person is ordered (a) to retaliate against the person because of his political views or (b) to bear down on him for his religious views or his racial attitudes or (c) to get him out of town so that the amorous interests of a Board member might be better served. In such instances, as in the present one, there is no exercise of discretion by a Board in evaluating evidence and in determining whether a claimed exemption is deserved. The case we decide today involves a clear departure by the Board from its statutory mandate. To hold that a person deprived of his statutory exemption in such a blatantly lawless manner must either be inducted and raise his protest through habeas corpus or defy induction and defend his refusal in a criminal prosecution is to construe the Act with unnecessary harshness.

  9. Charles Wieland January 9, 2013 7:49 am


    I’m not sure you can draw such dark conclusions based on these numbers. By design, AU 3689 gets a disproportiionate number of unusual cases, and many are really at or over the edge. If you want to trash these examiners, then you are going to have to dig in a little deeper than listing some of the assignees. Even the big guys occasionally throw an application against the walls of the PTO to see if they stick. In fact, it would seem more likely that they would be willing to (and should) test the bounds.

    I know the SPE, and I see in her only the finest qualities of a person and an examiner, one of them being strength of character. She isn’t going to be intimidated by this post.

    Statistics usually only tell you where to look and anomalies usually tell you that there is a story behind the numbers. In this case, there is a better explanation than saying there are bad actors afoot.

    “There are three kinds of lies: lies, damned lies, and statistics”. (attributed to Disraeli) Of course you are not lying, but the point of the quote is that it is easy to draw the wrong conclusion if you only look at the numbers.

    Thanks for your blog – always thought provoking.

    All the best,

  10. Raymond Van Dyke January 9, 2013 10:22 am


    This is a growing problem, not just limited to the ranks of BMPs. Most of software is under challenge in this way, which includes medical imaging and other critical innovations. I am personally contending with a recalcitrant examiner flouting the rules with such an innovation. And taking the case to the Board and winning does not even guarantee obtaining a patent with the claims won.

    After watching Frontline last night, about the history of Michelle Rhee’s tenure in the DC school system, perhaps we need a person like that to critically evaluate examiners. Just as the education of young minds is critical to the future of our great nation, so too is getting the valuable innovations of countless Americans, individuals and corporations, fairly through the patenting process. Even though a large majority of examiners are good public servants fairly applying the rules, there are a number in the ranks that are not.

    Bringing information about art units and even particular examiners to the fore is useful for innovators and their attorneys to factor such resistance within the process into the cost of the patenting endeavor. With the large PTO fee increases, we should be getting top-notch service and fair adherence to the rules. Sadly, for some rogue examiners in the Office, it is business as usual – blanket denial of patents. Michelle Rhee would have a solution for that.

    Ray Van Dyke

  11. Chris Holt January 9, 2013 11:07 am

    Chad –

    I agree with you completely….statistics can be misleading. Let’s go beyond the allowance rate in 3689 for a moment. Let’s look at their year-over-year balance of patented cases…versus abandoned cases….versus pending cases. Here is that graph:

    A couple of things to note here. First, look at all of the cases that are STILL pending. Note that pending cases are shown in this graph as being assigned to the year in which they were filed. Personally, I think this plays into the extremely low allowance rate. There are dozens upon dozens of applications filed before 2005 that have STILL not reached a final conclusion. It stands to reason that applicants often give up in this art unit (thus having a negative impact on the allowance rate).

    There have only been about 101 applications EVER allowed by 3689. Let’s look at how long it has taken to get a patent in those cases. Here is data relevant to that question:

    Note that these are AVERAGE times to obtain a patent. Thus, on average it takes more than six and one-half years to get a patent in 3689. Again….that is on average. Here is a table showing that if you file an RCE in this unit, you very well maybe looking at waiting 2 years for the next office action:

    Next, let’s look at how many of the 101 allowed applications required an appeal before grant. That data is here:

    Yes, it is true. More than half of the cases ever allowed required an appeal. In fact, if you dig a little deeper, you find that 15 of the appealed cases included multiple cycles through the appeal process during the same prosecution cycle. And it is also important to consider this:

    Applicants are winning the appeals at the Board almost all of the time.

    One thing that has seemed odd to me when it comes to 3689 is this:

    This leads me to believe that applicants are not fighting TOO hard or TOO long before they give up. But I think that is due in large part to this:

    On average applicants are waiting 5 years before abandoning the application. And they are only getting a couple of office actions and maybe one RCE into prosecution before they give up.

    I agree that the SPE here is not a bad person. I personally have never bought into the theory that she is commanding a “no patents allowed” policy. I give her the benefit of the doubt. I think maybe they they are so far behind that it has become nearly impossible to grant any patents. Is it her fault? Are they drawing out the process on purpose? I don’t know…and I refuse to speculate on those kinds of things. But I do know this. The facts show that this art unit is very very broken. Regardless of whether or not good inventions are being refused patents wrongly by way of practical procedural refusal to grant rather than substantive refusal, corporations are pouring millions of dollars down a black hole here.

    Should the patent office not be telling them about the statistics in the art unit where have been assigned rather than allowing them to keep wasting their money? Maybe the PTO should say….sorry…your app has been assigned to 3689….you probably won’t get a patent…and if you do….it is likely to require at least sever years of prosecution…and will more than likely require filing a notice of appeal.

    I give the patent office the benefit of the doubt….I always do. Let’s schedule a webinar and I will show you page after page of analysis demonstrating where they are doing a great job. But it is really hard to defend them when it comes to 3689. I can tell you this, though. I have dug into ALL of the other art units. And there are only a small handful that behave like 3689. So rest assured that this situation is not indicative of the performance of the rest of the USPTO.

    – Chris Holt

  12. John Darling January 9, 2013 1:50 pm

    Nothing is going on in AU 3689 that management doesn’t know, and approve, of.

  13. JNG January 9, 2013 1:51 pm

    Chris’ numbers back up what a bunch of us know from first hand experience with this art unit. It is dysfunctional. The typical case proceeds as follows:

    1) 101/103 first office action rejection based on references A, B
    2) amendment/response
    3) final rejection with cut and paste from first OA: ignore arguments in amendment, or, at most, give one line response
    4) file appeal
    5) final OA withdrawn, go back to step #1 – new rejection based on references C, D

    repeat ad nauseum until Applicant gives up

    its not just a matter of rejections, even after entering the appeal cycle, they try to game the process as well, by:

    a) withdrawing the last office action, and replacing it with a new one where the Examiners “invent” new rejections rather than face the music on the bogus rejections on the record;

    b) making the new rejection “Final” even though it is based on new references – this bogus action is done b/c they know a Petition will not be heard for several months and as a practical matter the applicant has limited options and can’t afford to have the clock running against him;

    c) even after being reversed by the BPAI, “inventing” a new rejection based on another set of references that have never been seen before

    mind you, all of these tricks may be practiced in other art units as well, but make no mistake, this is SOP for this group – and I don’t believe its possible that all these Examiners exhibit this same behavior… by accident

  14. Ron Katznelson January 9, 2013 2:11 pm

    Chad: “By design, AU 3689 gets a disproportionate number of unusual cases, and many are really at or over the edge.”

    What does “by design” mean? I looked at the definitions of subject matter in subclasses assigned to AU 3689 and at a few applications classified therein and could not discern any particular feature that would distinguish them from other matters examined by other AU’s with Class 705 responsibility. I am not saying there is no such feature – perhaps you can elaborate on this rationale so we can all understand it. I am very interested in the implied concept that a particular subject matter – not an attorney who drafted the application or an examiner who examines it – is the source of illusive patentability. For example, are final rejections in AU 3589 predominantly under §101 as opposed to the share of such rejections in Class 705 generally? If so, that important fact would go a long way to back up your assertion. If not, however, what makes an attorney who drafts applications in Class 705 tend to “throw an application against the wall of the PTO to see if they stick” only in subclasses assigned to AU 3689? Is there a “subject matter”-specific urge that possesses attorneys all over the country to “throw an application against the wall of the PTO”?

    Chad, you may be on to something here, but I do not quite know what it is. Can you please elaborate?

    Chris Holt, thanks for your excellent analysis above. You might want to explore two additional explanatory factors for the unusual allowance rates for Class 705 Art Units: (1) Generate a scatter plot of allowance rate in each AU against fractions of applications finally rejected under §101 in the respective AU. A negative correlation with high significance would tend to support Chad’s “subject matter” mechanism hypothesis. (2) The definition of “All abandon” in Gene’s current table is unclear – does it contain all abandonments including those made at the time of an RCE filing? Or are these only Terminal Abandonments – those made without having filed an RCE. This distinction is important because every RCE is also accompanied by an abandonment of the preceding application – high abandonment rates may not necessarily mean anything other than high RCE rates. While high RCE rates are also a troubling indicator, it is not an indicator of low grant rate. It is important to exclude pre-RCE abandonments in order to remove the lengthy examination “negotiation” and prosecution effects in this analysis. That said, AU 3689’s unusually long delays are also bad news.

  15. Chris Holt January 9, 2013 3:32 pm

    Ron –

    As to your first point, this is not exactly what you said but here is some interesting data regarding the use of Section 101 rejections by Art Unit 3689 in first, non-final and final office actions:

    As to your second question, Gene’s data generally does NOT count an abandonment when an RCE is filed. We track each application to its ultimate disposition and assign the granted or abandoned designation at that point. So, the answer is no, the number of abandonments is not artificially high for that reason.

    Please consider exploring With a free trial, you can see the complete statistical breakdown of AU 3689….and every examiner in it….the same for essentially any other art unit. We also have similar data available for law firms, corporations, and attorneys.

    Our organization is not about pointing fingers at the patent office…we are about providing useful facts for the benefit of EVERYONE in the patent acquisition ecosystem.

    Come check us out!

    – Chris Holt

  16. Ron Katznelson January 9, 2013 8:01 pm

    Thanks for posting these results and clarifications on abandonments. From this result it is clear that as an application moves through prosecution in AU 3689, §101 rejections decline while §103 rejections increase, making final rejections in this AU dominated by obviousness rejections (97.3%) rather than eligible subject matter rejections (21.3%).

    I therefore repeat my question to Chad: please explain your statement above – by what “design” does AU3689 receive “a disproportionate number of unusual cases”? What is different about subclasses /302-303, 305-312, 329 and 80 compared to all other subclasses of Class 705 that makes these applications “unusual” and unpatentable?

  17. Stan E. Delo January 9, 2013 11:25 pm


    I tend to think that the access to the data provided might very well help the USPTO to find potential problems that it might be difficult for them to find on their own otherwise, because they obviously have a lot of irons in the fire these days. With the advent of the new PTAB program, it might provide better feedback about what might need fixing, and a direct loop within the Office. They currently have about 7,800 examiners to manage last I heard, so perhaps they could use a little help from others in the IP community at large to help them get things right..

    Just the time delay of needless rejections is a major problem for smaller entities, and very expensive and damaging to their chances for success. Since the patent office seems to be really listening these days, it might be a good time to press the issue, especially if it is rationally presented. I really hope Teresa Rea becomes the next permanent Director, as she seems to have a very good handle on the ongoing improvements.


  18. Gene Quinn January 9, 2013 11:31 pm


    Take a look at:

    I do think that with such a low allowance rate it is appropriate to ask questions. Either something is amiss in 3689 or they are doing a great job and the rest of the Office should operate like them. It has been a while since I looked at the appeals from 3689 that lead to a patent grant, but when I did in January 2012 (see above link) it seems that the Board was unimpressed with the rejections. So I am not just basing questions about 3689 on the numbers. The numbers suggest there is reason to look deeper, and when you do look deeper I think reasonable people have more questions. In other words, digging deeper seems to only suggest that the numbers are rather accurate.

    As far as your comment about intimidation… First, I don’t know when accurate reporting became intimidation. Second, I’m not trying to intimidate anyone. The facts are the facts and I’m just pointing them out. While people like to say that liars figure and figures lie, I prefer to look at the statistics associated with 3689 and realize that they show an exceptionally long prosecution road that results in issued patents after pursuing appeals. There seems little evidence to suggest that filing RCEs and continuing to try and convince examiners of the merits of claims is a strategy worth pursuing. That type of information seems critical to have as a client or as a lawyer representing clients who are in 3689.

    If I were representing client in 3689 I would recommend providing at least some well written, narrow claims in addition to broader ones. Get good claim scope, proceed through prosecution as quickly as possible (perhaps Track One acceleration) and then forego RCE filing and proceed straight to appeal. That will cut years off the prosecution, although it will still take an unfortunately long time to wind through the appeal backlog.


  19. John Darling January 10, 2013 10:04 am

    There is nothing going on in AU 3689, or 3622, or any of the other “business method art units” that PTO management does not know about, approve of, or actually direct take place. Nothing.

  20. Gene Quinn January 10, 2013 11:49 am

    John Darling-

    We will have to agree to disagree I’m afraid. Certainly the USPTO knows about Art Units with low allowance rates, but the communications from the 10th floor to the examiners has been quite clear. They want patents to issue. Rather than saying no the policy is to say yes. Find something that can be patented if there is anything that exists rather than forcing RCE after RCE and then lengthy appeals. The overwhelming majority of patent examiners and Art Units have received that message. There have been pockets of resistance within the Office to the message though.

    I also think it is rather naive to think that the USPTO approves of rejections that the Board then finds to be specious.


  21. John Darling January 10, 2013 12:14 pm


    Really enjoy your site, and thanks for all the great work you do against the anti-patent zealots, but yes, on this one, we will have to agree to disagree.

    If you want to test my theory though, please do get together a nice portfolio of apps that have gone through the ringer in AU 3689 or any other “rogue” AU, or even examiner (e.g. plenty of new non-finals with equally irrelevant prior art and “mooting” of applicant’s arguments, notice of panel decisions instructing applicants to proceed to the Board that are then inexplicably re-opened when the brief is filed and the rejections are nothing more than the same recycled rejections from 2 or 3 OA’s ago, or brand new prior art never before seen, but from the same subclasses that have already been searched 2, 3, 4 times, or cases re-opened with new art after summary Board reversals, etc.) and take those examples to the highest level of PTO management that you can get to agree to meet with you, and I guarantee this is what will happen:

    Whoever you’re meeting with will nod their head in agreement with you that all of the applications you bring to their attention are less than exemplary of what the MPEP directs, and they’ll assure you that they take your concerns very seriously, and will investigate them thoroughly, but ultimately it’s the PTO’s responsibility to ensure that only valid patents get issued, and if there are any changes that need to be made in AU 3689 they will make them. They will thank you for your time and bringing the situation to their attention, they will usher you from their office, and then nothing, absolutely nothing, will change in AU 3689.

    I’m speaking from personal experience.

  22. Chris Holt January 10, 2013 4:36 pm

    The embedded links that I posted above in my previous comments will eventually expire. Should anyone desire to see the images/stats after expiration, I am posting them on my own blog in a format that won’t expire. You can find that here:

    – Chris Holt

  23. Gene Quinn January 10, 2013 4:48 pm

    John Darling-

    Time will tell what, if anything, happens.


  24. EG January 10, 2013 7:13 pm


    I hear you on the how the “typical case proceeds.” The scenario you show is what I call the ol’ “shift the basis for rejection” or “keep creating new strawmen” ploy. That ploy makes it dfficult to really get the issues joined so you can point out to the Board on appeal that the Examiner really has no basis for rejecting the claimed invention, and is simply “making up rejections” as the prosecution proceeds to keep the applicant from ever getting favorable resolution. It’s no fun to deal with and extremely frustrating and expensive for the client/applicant.

  25. Anon January 10, 2013 10:01 pm

    Is there a way of showing that the Examiner is duffing his duty? Perhaps by examining the examiner’s work trail (his search terms). If it cna be shonw that he is merely rehashing work already done, or is negligent in searching (by inappropriate term?), would such a document trial be effective in showing willful malfeasance?

    I haven’t heard of this being done, and my course of action is usually getting on the SPE’s case, or arranging an interview to try to nip th erunaround, but it sounds like excessive runaround should show itself in the papertrial.

  26. EG January 11, 2013 7:05 am


    I’ve had a situation like you describe, and fortunately the only one I can recall, at least in recent memory. And going to the SPE is what do, and you’ve got to be careful doing so. As you’re probably well aware, complaining to the examiner’s boss isn’t going to win you “brownie” points with that examiner (especially if the SPE is the one who’s condoning this behavior).

    Really way back, in my early patent prosecution days, we were warned you could be “blacklisted” by the Examining Corps (with no verifiable way to prove you were being “blacklisted”) as a troublemaker by complaining too much about an examiner’s alleged “malfeasance.” The PTO even had a program for a while where you could point out the examiner’s “malfeasance” anonymously. With some trepedation, I did so in two eggregious instances, and in reply to both, the PTO told me I was correct in my assertions of “malfeasance,” but I couldn’t detect anything happening to the examiners in either case.

  27. John Darling January 11, 2013 11:01 am


    I’m shocked. 🙂

  28. Anon January 11, 2013 1:01 pm



    I too have heard of this blacklist, and I do carefully approach the SPE, typically inviting the examiner to be a part of that call. I have always conducted business with the office in a cordial, even friendly manner, but that does not mean that I am indirect or lacking force. I am sure that you are aware that in such contexts, ‘polite’ does not mean ‘pushover.’

    It is interesting to note though, that if there is a ‘blacklist,’ that such a list would likely violate the law (or at least the directive) that all business is to be conducted in writing. I say that not being convinced that such does not happen anyway (given the very visible fact that business has routinely been conducted not in writing (or at least not in writing and on the record). By this, I mean the process and results of the Gestapo like second set of eyes ‘quality’ project, and the ‘extra’ reviews that allowances (but not rejections) received. At least with the (premature) implementation of the (deemed illegal) claims and continuations flag, the record indicates when a particular application was subjected to such scrutiny.

  29. Stan E. Delo January 11, 2013 2:16 pm


    I have run into something like this in my profession occasionally. Usually it arises from a dispute of opinion about how something should be done, generally with someone who I make nervous or who just dislikes me for whatever reason. There is never a list, per se, just a few words exchanged with management, so there is never any record of it. I just won’t get the next job that comes in, and you can generally tell why by the way the other people on the project tend to react when they see you again.


  30. EG January 12, 2013 2:45 am


    Thanks for your further comments. Whether “blacklisting” violates the law (it should), the fact remains that the reason it can happen is because the members of the Examining Corps are protected by a professional union. That some members of the Examining Corps might “hide behind” the union label for such a practice doesn’t make it right (definitely not right), but I and you also know what the reality is. I also want to make clear that most of the examiners I’ve dealt with appear to be on the “up and up,” and try do their job conscientiously, even if some them might appear to me at times to take positions that can only be characterized as “arbitrary and capricious” (I’m sure some examiners think the same of me which is only fair).