Over the past several days I’ve been writing about the abysmal and embarrassing allowance rates for the E-commerce Art Units in Technology Center 3600 at the United States Patent and Trademark Office. One Art Unit in particular, Art Unit 3689, has so far in 2016 allowed only 1.3% of applications (3 patents issued with 232 patent applications abandoned). While they are by far the worst Art Unit in TC 3600, they are not the only Art Unit with ridiculous and unacceptably low allowance rates.
In a recent article I made the statement that one of the three patents that Art Unit 3689 issued was issued only issued after the Patent Trial and Appeal Board ordered the patent issued. This drew ire from some in the patent community because technically the Board does not order patent examiners to issue patents. After a decision by the Board, jurisdiction transfers back to the patent examiners to effectuate the decision of the Board. Specifically, 37 CFR 41.54 says:
“After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant’s right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte reexamination proceeding may require, to carry into effect the decision.”
The problem? In Technology Center 3600 there seems to be a disturbing trend where the Board reverses patent examiners on every issue and yet no patent is issued. Instead, patent examiners conduct new searches, which the MPEP 1214.04 tells them they are not supposed to do, and Greg Vidovich, who is Technology Center Director for 3600, authorizes the reopening of prosecution. How is this possible?
37 CFR 1.198 says:
“When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.”
The Director seems to have delegated this responsibility to Technology Center Directors. See MPEP 1002.02(c).
37 CFR 1.198 is for the extraordinary situation where there is something that has come to light at the last minute that raises significant questions about a claim or claims that were subject to a Board decision. The purpose for Rule 1.198 is not to allow patent examiners and Technology Center Directors to endlessly prevent the issuance of patents at all costs and under all circumstances. But in TC 3600 Rule 1.198 seems to be used for the purpose of harassing patent applicants that have successfully prevailed on appeal to the Board.
What is happening in TC 3600 is prosecution is being re-opened for the purpose of issuing Alice rejections. With the help of readers, so far I’ve found eleven (11) separate cases  over the last 10 months where prosecution was re-opened by Greg Vidovich, Director of TC 3600, after the Board issued a decision completely reversing the examiner on every rejection of every claim. In each case the Vidovich authorized re-opening of prosecution simply to issue Alice rejections.
Of course, Alice v. CLS Bank was decided in June 2014, so this is not a new development. It is also not “a particular reference or reference” that indicates nonpatentability, as seems to be required by MPEP 1214.04 in order for re-opening to be appropriate in the first place.
It would seem that Director Vidovich is doing everything in his power to prevent the issuance of patents. This is extremely troublesome.
Those familiar with the Patent Office are no doubt familiar with the concept of compact patent prosecution, see MPEP 2103, which is intended to move prosecution of applications along in an efficient and streamlined manner with issues being addressed all at once by examiners. Examiners are also allowed to raise new grounds of rejection as late as an Examiner’s Answer. See 37 CFR 41.39(a)(2). The Board is also able to raise a new ground of rejection in their opinion as well. See 37 CFR 41.50(b). The entire point is to streamline prosecution and make it unnecessary for endlessly looping back to decide issues in series when they could, and should, be decided in parallel. Efficiency be damned, what is happening now in a systemic and routine way is TC 3600 waits for a decision from the PTAB and then, never having had any intention of ever issuing a patent regardless of the PTAB decision, comes up with yet another reason to reject the claims. This fundamentally frustrates the purpose of an appellate system and makes fools of applicants who believed in fairness of the PTO process.
It seems that TC Director Vidovich believed the Board decisions in these cases needed to be ignored and these applications had to be denied. But if the Alice problems are so serious and so significant that the extraordinary measure of re-opening prosecution and not effectuating the decision of the Board is being made, why didn’t the Board notice the Alice problems and issue their own new ground of rejection? The Board has the right to remand cases to the examiner, see 37 CFR 41.50(a)(1), so why didn’t the Board remand the decision to the examiner for consideration of Alice? Does TC Director Vidovich think he knows Alice rejections better than the Board? Does he think the Board is unfamiliar with Alice? Does Vidovich have reason to belief the Board is unaware of their power to remand to an examiner, or of their authority to enter a new ground of rejection? When you ask those questions out loud they sound absurd. It seems rather clear that these patents are going to be denied at all costs whatever it takes, even if that requires ignoring a Board decision and re-opening prosecution despite the lack of a new reference or references.
When the TC Director re-opens prosecution the applicant then has to go back into prosecution, or can move forward to appeal to the Board. But what good is an appeal when the TC Director has demonstrated that even if the appeal is successful prosecution can be re-opened and more bogus rejections made? What good is going back into prosecution with the same unreasonable examiner that has just had each and every rejection of each and every claim reversed? There is no relief for applicants, which is not how the system is supposed to work.
By re-opening cases TC Directors can effectively prevent patent applicants who have been victorious on appeal to the Board from ever being given the opportunity to reach an Article III court, which has to be unconstitutional. That’s right, all the USPTO has to do to prevent an Article III court from ever reviewing an examiner decision is make the decision so obviously awful that the Board reverses and then re-open prosecution. There is nothing to appeal from a Board decision when you are completely victorious, and when you keep getting pulled back into prosecution over and over again eventually the applicant just gives up, which is almost always what happens.
Review by an Article III court, which is supposed to be an applicant right, is effectively prevented by recalcitrant examiners working together with TC Directors. I find it difficult to believe that judges of the Eastern District of Virginia would find such a systemic and coordinated deprivation of process and gerrymandering of the appellate process to be within the powers of an Executive Agency. Perhaps at some point some will file a mandamus and we will find out.
Clearly, the rules of the system are set up to make examiners subordinate to the Board, not the other way around. The Board is supposed to have the final word and examiners are supposed to effectuate the decisions of the Board. See 37 CFR 41.54. Yet, it seems that the Board is inferior to the examiner and TC Director.
Only in the most extraordinary cases is prosecution supposed to be re-opened. It is NOT an extraordinary case when the Board had the ability to notice whether the claims they were reviewing contained patent eligible subject matter. It is not an extraordinary case where the Board had full knowledge of the claim and the Alice decision and still chose NOT to order a remand. If any group of people is acquainted with Alice it would be the Board, and the Board in these cases did not see fit to issue any patent eligibility rejections or remand to the examiner. That being the case TC Director Vidovich should bear a heavy burden when ordering the re-opening of cases. That he would have decided differently, or he would have issued a new ground of rejection, or he would have remanded to the examiner had he been the sole decision maker cannot be the standard. Such a standard would give him dictatorial power that isn’t enjoyed by any judicial official on any level. It also nullifies the work of the three Administrative Patent Judges who issued the decision.
It seems clear that Art Unit 3689 has no intention of issuing patents. It also seems clear that even a reversal on all grounds by the Board will not stand in the way of denying patents at all costs. Thus, the Board is completely impotent. Those running TC 3600 don’t like software patents and they don’t like business method patents. They seem to be of the opinion that neither are patent eligible despite the fact that Congress, the Federal Circuit and the Supreme Court have all said that both software and business methods are, in fact patent eligible.
For a long time I’ve suggested that if you get stuck in an Art Unit where the allowance rate is abysmally low you just need to get through the first round of prosecution and appeal the case to get to the point where legal arguments, logic and fairness have a chance of prevailing. Unfortunately, the sad truth is the Board has no authority over patent examiners because the Board is subordinate to TC Directors. A Board decision reversing an examiner is merely advisory, at best. The ultimate decision making authority at the Patent Office on whether to issue patents resides in the TC Center Director.
Getting to appeal and prevailing should mean a patent issues. Instead, it means yet another pair of eyes, the eyes of the TC Director, need to be satisfied first. Indeed, it seems that the only pair of eyes that matter are the TC Director, which makes the entire appeal process just one huge waste of time and money.
The appeals process is a charade, at least when you are appealing unreasonable rejections of examiners in TC 3600. Why bother appealing to the Board in the first place? In TC 3600 appeals should really be taken directly to the TC Director, who apparently has the final say anyway. Sure, there is the illusion of an independent body (i.e., the Board) that will resolve errors made by examiners, but if you are victorious the TC Director just pulls you back into prosecution to deal with that examiner who was jerking you around for years in the first place. You just can’t ever escape. So why not recognize the reality of the situation and appeal to the TC Director?
This can’t be the way the system is supposed to work. Functionally preventing applicants from reaching an Article III court can’t be constitutional. Why bother having a Board if the examiner in conjunction with the TC Director can still refuse to issue a patent anyway? The Board is obviously completely impotent and appealing examiner rejections is an utter waste of time.
Re-opening these cases was an abuse of power plain and simple. Will the Patent Office do anything about what is going on in Technology Center 3600? Time will tell, but it is becoming increasingly impossible to believe that senior management of the Office is not well aware of the fundamental unfairness applicants in TC 3600 face. It is also becoming increasingly difficult to believe they do not at least tacitly authorize the behavior.
 These are the cases located so far where TC Director Greg Vidovich has re-opened prosecution after the Board reversed the examiner on all grounds. It seems that re-opening prosecution where there is a complete examiner reversal is the rule, not the exception, in TC 3600.
- Application No. 12/429,881
PTAB Decision – March 28, 2016
Office Action reopening prosecution – June 30, 2016
- Application No. 12/416,078
PTAB Decision – March 11, 2016
Office Action reopening prosecution – June 17, 2016
- Application No. 12/128,098
PTAB Decision – February 11, 2016
Office Action reopening prosecution – May 19, 2016
- Application No. 12/630,866
PTAB Decision – December 15, 2015
Office Action reopening prosecution – March 30, 2016
- Application No. 11/760,701
PTAB Decision – November 3, 2015
Office Action reopening prosecution – March 11, 2016
- Application No. 11/708,429
PTAB Decision – October 13, 2015
Office Action reopening prosecution – March 23, 2016
- Application No. 11/754,676
PTAB Decision – September 16, 2015
Office Action reopening prosecution – February 8, 2016
- Application No. 12/412,688
PTAB Decision – September 15, 2015
Office Action reopening prosecution – January 11, 2016
- Application No. 13/031,645
PTAB Decision – August 3, 2015
Office Action reopening prosecution – December 3, 2015
- Application No. 10/382,276
PTAB Decision – April 27, 2015
Office Action reopening prosecution – August 10, 2015
- Application No. 12/119,593
PTAB Decision – March 26, 2015
Office Action reopening prosecution – September 4, 2015