Patent Office Insights from Two Former Examiners

“Do not argue for the sake of argument. Not all rejections are perfectly framed….. While it is important for the examiner to properly reject any claims, as a patent practitioner, you want to reduce the amount of time an examiner has to spend on issues that will not advance prosecution.”

https://depositphotos.com/77590300/stock-photo-keys-with-word-insight-on.htmlIn the United States patent system, patent applications are handled by two separate, yet equally important, groups: the patent practitioners, who prepare and prosecute applications on behalf of inventors or their assignees; and the patent examiners, who examine the applications for the United States Patent and Trademark Office (USPTO) for patentability under U.S. patent law.

Ryan Potts worked at the USPTO for over seven years, including several as a primary examiner, before joining Lando & Anastasi. Rob Lichter worked at the USPTO as a junior patent examiner before becoming a law firm associate. The following is a list of tips and insights to understanding and interacting with U.S. patent examiners.

1. Most examiners are not legal experts.

Having a legal background is not a requirement for being hired as an examiner, though many examiners do acquire law degrees before or while working as examiners. USPTO examiners have diverse educational and experiential backgrounds, from bachelor’s degrees through multiple PhDs and as little as no industry experience to multiple decades in industry. Because examiners often do not to have extensive legal backgrounds, an applicant’s arguments that are related to the technology described by the claimed subject matter tend to be more persuasive than arguments that simply attack the legal basis of a rejection.

2. Pick your battles.

Limit your arguments to issues that you believe will move the application towards allowance – do not argue for the sake of argument. Not all rejections are perfectly framed. Due to time constraints placed on examiners, they may make weaker arguments than they would otherwise if allowed more time. While it is important for the examiner to properly reject any claims, as a patent practitioner, you want to reduce the amount of time an examiner has to spend on issues that will not advance prosecution. For example, if a feature of a dependent claim is rejected based on being an obvious design choice rather than relying on prior art, don’t force the examiner to find a prior art reference that discloses the feature. Unless you believe that feature is patentable, it is not a good use of the examiner’s time to find the reference. By taking a reasonable approach, and letting the examiner know when he or she is right about something, you will improve your credibility.

3. Build professional relationships with examiners.

Keep in mind you may interact with the same examiner for different patent applications. If you have multiple applications pending in the same technology space, there is a chance some or all of the applications will be docketed to the same examiner. The docketing of the applications depends on factors such as the number of applications, when they are filed, and the number of applications active on the examiner’s docket. Continuation applications are more likely to be docketed to the same examiner as the parent application. Learning an examiner’s preferences (such as preferred claim structure) or tendencies can help you tailor an office action response to increase the likelihood the application will pass through to allowance. Keeping a professional tone in all correspondence is very important as there is a fine line between zealous advocacy and unprofessional behavior.

4. Show-and-tell: help the examiner understand how the invention works or what it really is.

An examiner interview can help an examiner understand an invention, particularly when you can show a prototype of the claimed invention or other visual aids to improve the examiner’s understanding of the claimed patentable features. A patent application begins with a technical description of the technology that is then translated into a legal document. When the examiner first picks up an application, sometimes the multitudes of different embodiments, figures, and legalese can make them lose focus on the big picture of an invention. Some examiners find in-person interviews more helpful than video conferences because it is easier to point to passages in the application or prior art references and to analyze any visual aids presented. Rather than walking through a patent application line by line, try rephrasing technological concepts and summarizing the big picture whenever possible. Even sharing a PowerPoint presentation with the examiner or a website link that describes the technology in rich detail can help foster a good conversation about the inventive concepts.

5. Tell a story about the invention.

Examiners are insulated from business considerations and how the inventor or assignee arrived at the claimed invention. The examiner might appreciate an explanation of the technical landscape: what came before this invention, how it improves upon previous solutions, how it might be useful in other fields, etc. There are people (inventors) attached to every patent application, and sometimes the future of their company may depend on a patent that issues with robust claims. While examiners are encouraged to streamline prosecution and to move cases towards allowance or abandonment rather than let applications drag on through multiple requests for continued examination (RCEs), putting the invention in the proper context can lead to progress towards allowance of meaningful claim scope faster than a dry battle of written arguments.

6. Discuss claim interpretation issues in an interview.

If a response is being submitted without claim amendments, an interview is particularly helpful. A response with only arguments tends to put an examiner on the defensive. Conducting an interview in these circumstances can help clear up any claim interpretation issues. Rather than talking past each other, you might reach an agreement that previously objected-to claim language is acceptable or you might find a simple rewording that satisfies both the applicant and the examiner. Despite one’s best intentions, sometimes well-crafted written explanations about what the words in a claim mean and what they are being mapped to in the prior art can be lost on an examiner. Instead of arguing about how broadly a word or phrase in a claim can be interpreted, start by describing what that word or phrase means in the context of the invention, and then discuss what is a reasonable interpretation of the claim language. Remember to interview early in prosecution because examiners get more time to consider a response to a non-final office action than a response to a final office action.

7. Understand the count system: the USPTO’s work product expectations from the examiner.

Examiners have required work product (e.g., office actions and allowances) production goals, called ‘counts,’ for every quarter and fiscal year. In a given round of prosecution, each application is worth a fixed number of counts until it is disposed (e.g., allowed, abandoned, or a request for continued examination is filed). The proportion of this fixed number is divided amongst the following in descending order of counts: first action allowance, first action non-final office action, disposal after final action (e.g., abandoned after a final action, RCE after a final action, or allowed after a final action), final office action, and an advisory office action. Typically, these counts are 2, 1.25, .5, .25, and 0 respectively. A second action non-final in the same round of prosecution (e.g., in the case of examiner error requiring a new action) is worth 0 counts.

Depending on current USPTO policies (which may vary quarterly), RCEs may reduce the total number of counts after the first round of prosecution. For example, in a second round of prosecution, the typical counts may be adjusted to 1.75, 1, .5, .25, and 0, respectively. The point here is to keep the examiner’s count system in mind when planning a response. For example, when drafting a patent application, make its written description and figures as clear as possible, thereby avoiding objections to application formalities and giving the examiner more time to focus on searching for the best prior art and evaluating the patentability of the claims. Helping the examiner understand early in the process why the claims are allowable may move the application to allowance earlier in prosecution, resulting in a windfall of counts for the examiner. That’s a win-win scenario for both sides of prosecution.

8. Keep an eye on the calendar.

The time of year, the quarter, and the week may significantly impact an examiners ability to be receptive. Examiners are loosely evaluated bi-weekly; however, the exact date for evaluation in these periods can fluctuate from year to year. Generally, it does not hurt to ask an examiner if they have a production deadline coming up. Doing so may help practitioners find more optimal times to connect with the examiner. The ends of the quarters, and particularly the end of the fourth quarter, tend to be busy times for examiners. This may work to an applicant’s advantage if an examiner is initiating an interview to authorize an examiner’s amendment in preparation for a notice of allowance, or to a disadvantage if, for example, an examiner does not immediately have time for an applicant-initiated interview request.

9. Know the USPTO hierarchy.

Junior examiners report to primary examiners, who all report to supervisory examiners (SPEs). Depending on the size of the art unit, each art unit has at least one SPE.  Typically, each art unit has many primary examiners. When conducting an interview, there is value in having a primary examiner or a SPE present. Primary examiners and SPEs have signatory authority, meaning they can sign off on claims as being patentable.  In contrast, junior examiners must get approval from a primary examiner or a SPE prior to indicating that claims are patentable. To determine whether an examiner is a primary examiner, see whether the words “primary examiner” appear in their signature line at the end of the office action. Becoming a primary examiner is a two-part process (called the “signatory program”) which can take well over a year if the examiner passes both parts of the signatory program on the first try. After passing the first part, an examiner will not have “primary examiner” next to their signature but can mail non-final office actions without needing SPE/primary approval.

10. Only contact an examiner’s supervisor before reaching out to the examiner if there is no other option.

Nobody likes it when their expertise or authority are being questioned by going to the supervisor. Examiners may be less receptive to arguments against their objections and rejections if they were not contacted first (as is typical in practice). Always try first to reason with the examiner assigned to the application. Even if an examiner realizes they’re in the wrong, they still may be open to suggesting productive amendments in the next response to avoid having to send out a new office action for no credit, which does not help the examiner with those production requirements from point number 7 above. However, in cases where an examiner fails to address substantive arguments or maintains a rejection based on an error (in the practitioner’s point of view), for example, then contacting their SPE is probably more productive than going straight to the appeal process after a final action. Some examiners have very little interaction with their SPE and sometimes need a refresher on legal concepts. This may be particularly helpful in areas of the law that seem to be continually changing, such as issues relating to patentable subject matter.

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The Author

Robert Lichter

Robert Lichter is an attorney at Boston intellectual property law firm, Lando & Anastasi, LLP. focuses his practice on a wide range of services including preparing and prosecuting utility and design patent applications, counseling clients on a range of intellectual property-related issues, and providing technical guidance as it relates to the fields of mechanical engineering, medical devices and electromechanical systems.

For more information or to contact Rob, please visit his Firm Profile Page.

Robert Lichter

Ryan Potts is a patent agent at Lando & Anastasi, LLP. brings several years of experience as a Primary Patent Examiner at the United States Patent and Trademark Office to his patent prosecution practice with L&A’s Electronics and Computer Technology & Software Groups. At the USPTO, Ryan focused on image analysis technologies, including artificial intelligence, pattern recognition and data compression, and he achieved Masters’ level equivalency in the art related to image analysis.

For more information or to contact Ryan, please visit his Firm Profile Page.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 60 Comments comments. Join the discussion.

  1. Xtian July 21, 2020 2:59 pm

    Authors, you state: “obvious design choice rather than relying on prior art, don’t force the examiner to find a prior art reference that discloses the feature.” So what is your advice on how to combat a non-supported design choice rationale for obviousness?

  2. patent guy July 21, 2020 3:10 pm

    This is way, way too deferential to examiners.

    I’ve personally prosecuted 600+ applications through first action to issuance over the past 10 years or so. For the first 450 or so I largely followed the advice listed above as mandated by my supervising partner. “Poor examiners don’t have time to do their job and are very very fragile, so let’s bend over backwards to accommodate them and treat them with kid gloves and we’ll eventually get what we want. Or if not they’ll like us enough to maybe give us what we want in a continuation filing.”

    This resulted in unnecessarily narrow claim scope and a ridiculous number of RCEs, costing the clients (no joke) hundreds of thousands of dollars unnecessarily.

    Once i got out from under that nightmare I pivoted closer to the other end of the spectrum. Short and sweet arguments and a cordial relationship with the examiners. Stood my ground and significantly increased my use of the appeals process. The result? Shorter time to issuance, broader claim scope, fewer RCEs, fewer continuations, and lower cost to the client.

    Examiners have a job to do, make them do it. If you’re concerned that they may allow a claim that’s “too broad” (ignoring the fact that you wrote that claim to begin with) then make sure to pay attention to your dependent claims (something I find many patent prosecutors don’t do (to their detriment)).

  3. AAA JJ July 21, 2020 5:43 pm

    This is the typical “try to work with the examiner” nonsense that many terrible practitioners peddle. Do what Rule 111(b) requires and if the rejections aren’t withdrawn then appeal.

    Clients don’t care about the examiner’s counts. Neither should you.

  4. AAA JJ July 21, 2020 5:56 pm

    “…an applicant’s arguments that are related to the technology described by the claimed subject matter tend to be more persuasive than arguments that simply attack the legal basis of a rejection.”

    This is drivel, not insight. There is only one argument to be made: the rejection is improper because (fill in the blank).

    Explain what is required for a legally proper rejection. And then explain why the rejection does not meet the requirement(s). That is the only argument to be made. There are no “technical arguments” and there are no “legal arguments.” There are only arguments that set forth why the rejection is improper.

    Most examiners have no idea what is required for a proper rejection. All they know is what to write to get their OA signed. Because that is all they are taught and all they learn.

    Your response should do for them what their primaries, and their SPE’s, and their do-nothing, know-nothing, brain dead QAS’s do not, and cannot, do for them: educate them. They are NEVER going to learn what a legally proper rejection is from any of those people. They are only going to learn it from you. Don’t fail them. Or your clients.

  5. AAA JJ July 21, 2020 5:57 pm

    “For example, if a feature of a dependent claim is rejected based on being an obvious design choice rather than relying on prior art, don’t force the examiner to find a prior art reference that discloses the feature.”

    I pity your clients.

    Ugh.

  6. Anon July 21, 2020 6:40 pm

    I concur with pg @2 and AAA JJ (generally).

    I am cordial and professional – and expect (even demand) the same from the examiner. I will work WITH the examiner as long as the examiner is willing to actually do the work that she is supposed to do.

    But I brook no dallying or frolics into the unsubstantiated. If an examiner wants to ‘play attorney’ with court cases, I will play that game — and win.

    Technical, legal, whatever. Bad examination is bad examination period, and my clients deserve my best.

  7. concerned July 21, 2020 9:47 pm

    I have not had a good experience with my examiners. The first one admits I should get the patent, then I mysteriously get a second examiner. I hope the first examiner bowed out to maintain his integrity, that I would respect.

    I administered law in my career and I would be ashamed to write the nonsense I have been getting. Rejection on an imaginary process that does not exist and was not proven to exist. Only addressing 3 of the 14 meaningful limitations, claiming process is routine, conventional and well understood (in what universe?), etc.

    No one had to kiss my a** to get a fair and proper administration of the law. Nor should I play patty cake with the examiner to get a fair and proper patent prosecution.

    Do your job according to law.

    I

  8. Joe Williams July 21, 2020 9:48 pm

    @anon #6
    Succinct prosecution needs to be defined by the fee revenues of both law firms and USPTO departments weighted on economic impacts (both use hours as base unit). Take existing service professional transaction costs and define the nash equilibriums under coase…

    How many hours are law firms active in patents, encouraging (any department) associates to allocate toward pro bono already?

    I think the path forward is attacking incentives only if cooperative.

    Once we have an equation there, the unit economics considered when allocating time may be simpler to compare.

    You get what you pay for.

  9. MaxDrei July 22, 2020 6:02 am

    A revealing Comments thread, as usual. Just as to a man with a hammer everything is perceived as a nail, so economists can’t help but see everything in terms of incentives. Perhaps some patent attorneys too? But in human interactions (like prosecutor and PTO Examiner, or like younger family members caring for an aged and infirm member) motivation counts for more than incentive, and is a very different beast. These two author Examiners are spilling the beans on what motivates them to “do their job”. What “incentives” were they given, and what “motivations” drove them, I wonder, to write the piece?

    I think that one should be grateful to them, and Gene, for commissioning and publishing the piece.

    And one should think more about the interests of the clients, in negotiating smooth and successful passage of the client’s cases through the USPTO.

    I’ll say nothing about examiners at the EPO and what motivates them. But examiners are much the same, I would say, the world over.

  10. Anon July 22, 2020 6:25 am

    Mr. Williams,

    Near as I can tell, your answer is not directed to anything that I stated.

    If all that you are saying is that efficiency matters, then I would say that effectiveness matters first.

    Your “you get what you pay for” suffers a serious error when you start talking about examiners and their internal metrics as opposed to an examination under the law that was paid for by my clients. You err in view of the structure of the engagement, as examiners are NOT engaged on a “per hour” basis.

  11. Night Writer July 22, 2020 7:04 am

    This is one side of it. The carrot. You have to have the stick too. The stick is exposing a bad rejection on appeal or to their supervisors. Plus if you do what examiners want then they will almost always find a way to reward themselves with an RCE.

    The PTO, by the way, has a document that categorizes all the arguments applicants make and lists them in order of how likely they are to be upheld by the board. The most persuasive argument is that reference A does not disclose what the examiner says it discloses–by far.

    Also, what I’ve found is you have to be careful in explaining the technology to the examiners as what they will do is then use that explanation to go and get new art and build the invention with 5 or 6 references.

    I will note that it was different before TSM was overturned, before KSR and Alice.

    It used to be long, long ago that the examiners and the attorney would have a professional conversation and if the examiners did have a pretty solid case with a TSM then they would allow it. There was no pandering to the examiners. What the cases mentioned above have done is put all the power into the fact finders hands.

    In fact, I can hardly believe how arrogant examiners are now. They expect you to pander to them to get an allowance. This is completely different than it was 20 years ago.

    Note that this is also the case with federal district judges too as they can proclaim anything invalid under Alice. It has turned into a corrupt little favor system of begging people rather than standing up for the law.

  12. MaxDrei July 22, 2020 8:18 am

    That’s an amazing contribution at # 11 from Night, about the value of a TSM approach to obviousness. My viewpoint is that of an EPO prosecutor and, here, the established and unassailable obviousness law is a species of TSM.

    What Night recalls of Examiner-prosecutor dialogue under TSM at the USPTO is today’s ongoing reality at the EPO. Thank goodness for that, I say.

  13. Mark Nowotarski July 22, 2020 9:23 am

    “Not all rejections are perfectly framed….For example, if a feature of a dependent claim is rejected based on being an obvious design choice rather than relying on prior art…”

    I have often found that the rationale presented in an office action does not fully capture why an examiner is rejecting a claim. For example, if an examiner rejects based on “design choice” without prior art, why didn’t the examiner alternatively allow the claim?

    An interview often allows an examiner to express the full rationale. Once that is obtained, then the best way forward becomes clear.

  14. NYC patent attorney July 22, 2020 10:39 am

    I find that it helps to be friendly, but argumentative with examiners and to tell them respectfully when I think they are wrong and would lose on appeal. I also like to let them know that I love filing appeals, but that it is my client’s decision and I prefer that my client not have to spend the money. Some friendly, nice examiners have a higher standard for patentability than the PTAB, and need to lose some appeals to recognize the proper reasonable standards of patetability. For these examiners, I don’t think it is at all helpful to have them like you. It is very clear to me that a few examiners I work with frequently do not like me at all (partly because I’ve told them they were going to lose appeals, and then they did), but it has never hurt my chances or speed of getting a patent with these examiner. In fact, it is very clear that it has helped me.

    In summary, figure out the level of reasonableness of an examiner, by talking to the examiner and seeing how they act with respect to what they told you over the phone, then act accordingly. It does not help being differential to an unreasonable examiner, it just sticks your clients with narrower claims and often higher costs due to a large number of office actions.

  15. Eric Mirabel July 22, 2020 11:20 am

    I see the “don’t argue the law with the Examiner” maxim here and oft-stated elsewhere. I would say instead: argue the law as set forth in the MPEP (which they have to follow), and cite the MPEP as the source.

  16. Anon July 22, 2020 2:26 pm

    Mr. Mirabel,

    Do not fall for that trap, as the MPEP is not binding law (and plenty of places are actually wrong on the law).

    You may feel better with double citations — the actual law and then in addition a citation to the MPEP section. But make no mistake, even as examiners are not attorneys, WE are, and we ARE dealing with legal documents in a legal process.

  17. Evan Pert July 22, 2020 3:26 pm

    Thank you for the article and the comments.

    I agree with Eric Mirabel: Consider the MPEP as the only source for legally based arguments that can actually result in allowance. As the authors point out, examiners are generally highly technically skilled, yet are often not legally or linguistically well trained. They are taught by the MPEP from day one.

    While purly legal arguments can be and often are reasonable for a rejected claim, amending the claim,
    yet still capturing requisites of the invention, and THEN arguing a technical point differentiating from cited prior art is far more likely to result in allowance than anything else. Why not reach out to the inventor to help identify a differentiating feature? Can you suggest a “Reasons for Allowance” to the Examiner? (MPEP 1300). They need one.

    What if the examiner found a patent for a suspension system of a car that had all the limitations of a rejected claim except “a windshield”? Will you make a legal argument against the examiner’s taking of Official Notice in a 103 rejection?

    The “counts” that AAA JJ dismissed are actually relevant to the practitioners methodology, in my opinion. Nobody will benefit by having the examiner disfavor them…and remember them…and show long-winded, unconvincing, or silly responses to other examiners in their area.

    Keep in mind, the USPTO is not “first come, first served.” The examiner’s docket doesn’t need to be done in any order. Many examiners “cherry pick” cases off their dockets to “make production” for the bi-week. A “dog case” will likely be put aside until a deadline.

    As a side note, from the article, I add that an Ex Parte Quayle action (rarer) gives 1.5 counts, Not important, yet a count is. A “count” represents a particular Examiner’s TIME allotted for a given case in a given Class (category). A “count” for a given technology (Class) represents an adjusted time a GS-12 examiner is allotted for that Class they are working.

    At the disposal of each new patent application, an examiner will have earned a total of 2 counts, known as a “Balanced Disposal (BD).”

    The most important emphasis of the article, in my opinion, is about respecting the limited TIME a particular examiner gets for doing a given application. A master “list” of BD hours for a GS-12 for each Class is not available anywhere, inside the PTO or publicly.. Examiners and SPEs and practitioners can “ask around” is all. For example, while one Class gets a base 20 hours/BD, another Class may get 30 hours/BD. Another Class is as low as 15 hours/BD. For a GS level other than 12, the base hours/BD for a GS-12 in a given Class is adjusted up or down by a “factor”…like dividing the base hours/BD for a GS-12 by 1.35 for the hours/BD of a GS-14 Primary Examiner.

    The base hours/BD per Class for a GS-12 was established inside the PTO in the 1970s and has never changed. So how does this matter to patent practitioners?

    Again, TIME is the most limited resource of the examiner. If you present an independent claim that can be rejected at the examiner’s first glance, in their head, the inventor should’ve known it, and you’ve lost credibility; the examiner now expects you to be a TIME drag and expects a painful prosecution….

    What about a truckload of useless IDS references? The applicant pays more, but the examiner gets no additional time. It’s wrong and inefficient.

    Bottom line:. If you want to make more money off your client, drag out prosecution and steal TIME from the examiner.

    Each examiner fills out a time sheet every two weeks that must cover the BD hours allotted for their particular Class and GS level, or “production” for that examiner is below 100% for that biweek.

    So…if the examiner rejects a claim as “an obvious design choice” why argue (stupidly) about the truly OBVIOUS: A waste of TIME. If the feature is not believed obvious, use the MPEP to argue legally if you want,.yet if your arguments aren’t clearly connected to the MPEP, the battle is lost before the examiner sees it. It’s usually better to argue technically than legally. Why not ask the inventor what makes that supposedly obvious limitation worthwhile to the public over prior art?

    The TIME allotted for each examiner Class is presently out-of-date. It is unclear when, if ever, the USPTO will reevaluate these arbitrary time allotments based on State-of-the-Art and differing complexity of prior art in the 1970s. To decide BD hours per Class, a “survey” of examiners back in the seventies was taken when computers were new (huge BD still today) and no automated examiner search tools were available.
    While there was a manual search for patents back then, there were far less references to search and rejections were less detailed. I guess the PTO figures “it all balances out” today because of automation in searching. Many examiners feel overwhelmed and tend to “push back” on time wasters. It’s human nature.

  18. Night Writer July 22, 2020 4:09 pm

    @14 and !5 NYC patent attorney and Eric.

    Both have great advice. I agree 100 percent.

  19. Evan Pert July 22, 2020 5:06 pm

    It is so easy to miss the point. Examiners aren’t inclined to help practitioners who don’t make their job easy. The MPEP is the path. Technical differentiation from prior art is what the examiner is looking for. Believe it or not. I worked at the USPTO 19 years as a Primary Examiner. If all you have a legal arguments, the examiner loses all respect for you. The truth hurts.

  20. Anon July 22, 2020 5:19 pm

    Evan Pert,

    You speak like a bureaucrat – as if making the examiners job is the de facto primary driver.

    You simply could not be more wrong.

    I will leverage “timing aspects” — but make no mistake, any such leverage is based on the driver of my client as opposed to the ease of the examiner. Quite in fact, leveraging DIS-ease is every bit as viable an option as the ease that you would desire. Your ‘comfort’ is just not the goal, not should it be.

  21. NYC patent attorney July 22, 2020 8:46 pm

    Evan Pert – as patent attorneys our job is to get our clients reasonable claim scope that actually protects their inventions. We do not get paid to get respect from examiners. Can you imagine an attorney saying the following to a client?

    “Well, the Examiner is completely wrong legally, but we have to stick to technical arguments because otherwise the Examiner will not respect me. Maybe we should narrow the claims to get a patent, even though it is too narrow to provide any actual protection with respect to your competitors.”

    If so, you are out of your mind, and you miss the point of the job of a patent attorney.

    Evan, did you ever lose an appeal based on an attorney’s legal arguments? If so, did you continue examining applications by ignoring the same legal arguments that resulted in you losing the appeal? If you answered yes to both of the above, then your opinion is worthless.

    I have won dozens of appeals with legal arguments, and I continue to make them to examiners. If the examiner is blatantly wrong legally, and the client does not want to narrow the claims, I keep appealing and winning, getting my clients broader protection than I would by getting examiners to like or respect me.

  22. A July 22, 2020 11:28 pm

    My job is to ensure my client gets the protection they are allowed under the law, not to make the examiner feel better about themselves or to make their job easier. To the extent these interests align, I do everything I can to help the examiner (i.e., all the things discussed above). But I won’t sacrifice my client’s rights because the examiner isn’t comfortable reading legal arguments or can’t articulate a legally required rationale within their allotted time. That doesn’t mean pushing arguments for claim limitations that will certainly lose when given the appropriate attention, but it does mean forcing the examiner to fully support every rejection there is a reasonable argument against.

    And certainly there are times when an applicant is willing to forego claim scope for an easier/shorter/cheaper path toward allowance. That can make sense for many business reasons, and if that’s what they want then I can help make that happen. But I make sure they’re fully informed when making that decision.

  23. A July 22, 2020 11:34 pm

    @NYC: “Evan, did you ever lose an appeal based on an attorney’s legal arguments? If so, did you continue examining applications by ignoring the same legal arguments that resulted in you losing the appeal? If you answered yes to both of the above, then your opinion is worthless.”

    I’ve caught a handful a number of examiners doing this. Each time, I respond by citing the appeal they lost and quoting the board’s admonishment of the very argument they make in the rejection. They’ll back off quickly in my case, but what about all the others?

  24. concerned July 23, 2020 5:30 am

    Evan Pert:

    Does the MPEP direct the examiner to make unsubstantiated arguments, ignore the evidence, dismiss USPTO from Bahr, make up fictitious processes, look at only 20% of the meaningful limitations?

    My first examiner states my application is patentable in the telephone interview and then I mysteriously get a new examiner. Is that MPEP protocol?

  25. Night Writer July 23, 2020 6:16 am

    @21 NYC Patent Attorney

    You are definitely right that legal arguments should be used and are part of the stick. I usually win appeals (75%) and the board will listen to legal arguments. It all comes down to whether or not you have recourse or not and we still do.

    There is a misconception in some of these comments. The MPEP is the prosecutor’s best friend. We do not have to follow it, but the Examiner’s by executive order have to follow whatever it says. So it is law to an examiner and suggestions to the patent applicant.

  26. AAA JJ July 23, 2020 7:11 am

    Evan’s “insights” are worse than drivel.

  27. Evan Pert July 23, 2020 11:49 am

    Thank you all for your patent attorney insights. It has been said by some that examiners & practitioners are like cats & dogs. Luckily, some cats and dogs get along. I find it surprising to see negative e-motion in comments to me.

    In my opinion, there is certainly no productive place for emotion in patent prosecution. Logic.

    Legal arguments can indeed be logical as we all must know. Yet, if you can’t find a connection to the MPEP, in your arguments, the PTO will readily deem the approach as illogical. The appendix of the MPEP includes 37 CFR and 35 USC, and the examiner is taught from day 1 that the guidebook to interpreting the laws and rules of patent examining IS the MPEP. You were tested on it to pass the exam for Registration to Practice before the USPTO.

    In my opinion, as nonsensical as it may sound, technical arguments are better for winning over the PTO, as conveyed in the article.

    I, as a Primary Examiner for over 15 years, never needed to ‘fight’ legal arguments because I always relied on Prior Art.

    I did not lose any appeal on legal arguments and worked well with practitioners talking about differing technicalities of the claims over prior art, rather than laws, to arrive at a claim amendment agreeable to the client.

    If a practioner obtains an allowance with legal arguments alone, it means the examiner failed to find adequate prior art for the rejection… So go for it any way you want. The inventor is “entitled to a patent unless…”.

    If your client wants prosecution to move as smooth and quickly as possible, though, the article gives good advice.

    If, however, you need or want to make your money unethically from purposeful obfuscation, adversity and conflict throughout prosecution, creating more billing for your client, then drag it out and ignorantly or selfishly consider the article as drivel.

    There’s all kinds of approaches to getting a patent. Yet, patent claims can more readily be invalidated by technical disclosure in prior art that wasn’t presented during examination, than by “legal arguments.”

    Peace,

  28. Eileen McDermott July 23, 2020 11:56 am

    To all here: IPWatchdog does not police or censor comments, we’re a small staff and don’t have time to closely monitor all conversations. If you see a comment missing, please refresh your browser, or wait a while – sometimes they need to be manually approved before posting. If your comment included entirely irrelevant personal or potentially libelous attacks, racist or sexist remarks, it may have been removed if I caught it. Gene is not hovering and censoring comments – I am in charge of this and I am not a lawyer and have zero biases toward examiners versus lawyers, etc. So when in doubt, refresh!! 🙂

  29. concerned July 23, 2020 12:34 pm

    Evan Pert:

    Did you ever admit in an Office Action twice that the claims solved a problem of 6 decades that has escaped every working professional and experts, then continue the rejection by citing a fictitious process and ignoring the evidence on the official record?

    The process you state is a process that has not been followed in my prosecution. I find the process very disturbing. My attorney calls the rejection arguments non-responsive.

  30. AAA JJ July 23, 2020 12:48 pm

    “If, however, you need or want to make your money unethically from purposeful obfuscation, adversity and conflict throughout prosecution, creating more billing for your client, then drag it out and ignorantly or selfishly consider the article as drivel.”

    You have zero understanding of what is involved in representing clients.

    And your accusation is typical of examiners who are ignorant of the role of applicant’s attorney.

    You should STFU now.

  31. NYC patent attorney July 23, 2020 12:54 pm

    Evan Pert – thank you for taking the time to respond. I was not trying to personally attack you, I was just inviting a more detailed and insightful discussion over your comment “If all you have a legal arguments, the examiner loses all respect for you” – which I found to be a pretty strong overstatement, probably because you have not personally experienced the wide variety of examiners that exist at the PTO.

    Legal arguments come into play most often with speculative obviousness rejections that lack a factual basis and/or rational underpinning and involve improper hindsight bias, and issues with respect to inherency. While all patent attorneys should very well understand that technical arguments should always be the number one option, these types of legal arguments often come into play when there are no convincing technical arguments.

    If you have never lost an appeal on legal arguments, then you probably did have good enough prior art that the above types of legal arguments did not usually apply to your rejections. You also then do not seem to fit the category of unreasonable examiner that relies on speculative art and improper hindsight bias. Your views on what is obvious might align closely with the PTAB, but there are tons of examiners out there than have heightened legal standards, and I do not want or need their respect.

    I find your statement “you need or want to make your money unethically from purposeful obfuscation, adversity and conflict throughout prosecution, creating more billing for your client” to be a little absurd. Nobody on this message board mentioned anything deserving of that. I take pride in fast resolution of cases with claims that are as broad as reasonably possible, and legal arguments and appeals are a necessary tool to achieve this. I very very very rarely file 2 RCEs. I interview with Examiners and draft dependent claims or varying scope to avoid a 2nd RCE – if I have not reached agreement with the Examiner at that point, I am confident I will at least win on some good dependent claims, and I appeal. I never drag on prosecution.

    And another advantage of legal arguments is that they won’t come back and bite you with claim interpretation issues in litigation in the same way technical arguments can. There are multiple layers that patent attorneys have to consider.

  32. Anon July 23, 2020 2:00 pm

    In a bit of irony, my post has vanished into the oblivion of a “Page Has Moved” response to the submission.

  33. Jam July 23, 2020 3:04 pm

    An easy way to tell if your examiner is a junior examiner is whether there are two signatures or one signature on the last page of the action. One signature generally means your examiner is a primary examiner with signatory authority. Two signatures generally means your examiner is a junior examiner and a primary or supervisory examiner also had to sign off on the action.

  34. Claim Rejector July 25, 2020 11:21 pm

    It’s a bigger error to allow an application than to reject it. Some of you attorneys would fight tooth and nail to try and patent “A gravity time machine.”

  35. Anon July 27, 2020 2:03 pm

    CR,

    That is simply NOT your call to make. You are charged with evaluating an application under the law.

    Nothing more.

    If you are an examiner, I would suggest that you talk to your supervisor about your improper bias.

  36. Arcturius July 28, 2020 2:27 am

    Mmmm…AAA JJ, Pert’s dissection and takedown hit a little too close to home, did it? If you pop off that quickly on an internet message board, it naturally begs the question as to whether you’re entirely capable of rational engagement…probably not.

    Also, pro-tip: threatening to go to appeal or waving an appeal victory at an examiner doesn’t actually do anything to the examiner. 1) They don’t care if you appeal (it gets the “troublesome” application off their docket for 2 years) and 2) if you win the examiner just allows the case and cites the PTAB’s decision.

    It doesn’t actually matter to them, so you’re better off trying to work with them, within reason, as opposed to raging out, trust me, you just turn into a meme then.

  37. AAA JJ July 28, 2020 9:10 am

    “…talk to your supervisor about your improper bias.”

    Unfortunately, in the way examiners are reviewed and evaluated it is the proper bias for examiners to have. They suffer no negative consequences for being wrong when rejecting a claim that should not be rejected.

  38. NYC patent attorney July 28, 2020 12:06 pm

    Arcturius – I have mentioned appealing in interviews and had examiners explicitly tell me they do not want to go to appeal, so it certainly works with some examiners. And appealing very frequently causes examiners to negotiate allowable subject matter in a manner they previously would not. I keep track of appeal outcomes – for the last 20 of my appeals that have been resolved (not counting the full reversal I just received today) – 13 of the 20 cases have resulted in the Examiner pulling the rejection, and 11 of those 13 have resulted in an immediate allowance. So yes, contrary to what you assert, examiners act differently when an appeal is filed. Of the remaining 7, 6 of the 7 resulted in a reversal of all or a majority of the rejections, and the other 1 resulted in a reversal of a dependent claim – which the client was happy with. So 100% positive results for my clients.

    With respect to being a meme to the examiner – do you think a patent attorney cares? I care about the 20 out of 20 positive results for my clients. I have no doubt that patent attorneys and their clients have cracked jokes at your expense. Do you care? I would not think so.

  39. AAA JJ July 28, 2020 2:23 pm

    If, however, you need or want to make your counts unethically from purposeful obfuscation, adversity and conflict throughout prosecution, creating more expense for the applicant, then try all the shenanigans you want.

    But I, and other good practitioners, know that when appealed, the game playing examiners fold like cheap suits.

    Can’t put a dollar value on the satisfaction of having an examiner sent out of the appeal conference with orders to re-examine the case from scratch.

    For zero counts.

  40. Guss Fring July 29, 2020 1:10 am

    Anon 35,
    You say it’s not my call to make then say i’m charged with evaluating an application. Sounds like my call to make. Examiners are BS filterers. After a while in this job, one doesn’t even need to read the spec to know a claim will be rejected. That’s not bias, it’s experience and meeting productivity goals. “A gravity time machine.” 101 REJECTION ALL DAY

  41. Anon July 29, 2020 12:55 pm

    Guss,

    You absolutely missed the point there.

    Not surprising, given the bureaucratic, fiefdom like attitude that you are exuding.

    Yes, please go ahead and reject those “gravity time machines” all day long — under proper application of the law, rather than those feelings of which you seem so (inappropriately) proud of.

    The minute you get lazy and do NOT reject “all day long” — but appropriately — is when you have the likes of AAA JJ celebrating your having to do the job correctly in the first instance – at zero counts.

    In the meantime, try to learn what your job actually is — and that you do NOT have a role “guarding any fields of rye” in the Salinger sense.

  42. ipguy August 1, 2020 4:15 am

    @#23 A
    “I’ve caught a handful a number of examiners doing this. Each time, I respond by citing the appeal they lost and quoting the board’s admonishment of the very argument they make in the rejection. They’ll back off quickly in my case, but what about all the others?”
    Let me say upfront that I’m a former Examiner and it has provided many insights into dealing with Examiners over the years. Based on my experience, your statement is very true, and I believe this is at least one of the reasons why the PTO doesn’t want its website to have the functionality of being able to search PTAB cases by Examiner name. There are just too many instances of Examiners repeating the same mistakes over and over and over. During an After-Final interview with an Examiner and his SPE, we were discussing a rejection with a particularly flawed rationale. The SPE wouldn’t let the Examiner say a single word to defend his rationale, and kept jumping in to say that the rejection’s rationale was “perfectly sound.” With that, I “pulled out” a PTAB decision where that Examiner had been reversed by the PTAB on the issue of the same flawed rationale. Rather than deal with it, the SPE immediately accused me of ‘abusing his Examiner’ and shut down the interview. Nevertheless, I received a call a few days later from the Examiner offering to allow the case if I agreed to a rather innocuous Examiner’s Amendment.
    As was pointed out, there are no negative consequences for an Examiner when they are reversed by the PTAB. After all, the Examiner had the support of their SPE and/or Primary to file an Examiner’s Answer (forget the Pre-Appeal Conference as, in my experience, it is a joke). The PTO has no interest in helping Examiner’s learn from their mistakes, and I doubt that POPA would ever allow Examiners to be penalized for getting reversed by the PTAB.
    When I speak with an Examiner, I always work into the conversation that I’m a former Examiner. Sometimes, there is an immediate change in the tone of the conservation as the Examiner realizes that you are someone who has stood in their shoes at one point.

  43. Gus Fring August 1, 2020 8:10 pm

    Anon 41,
    The PTO is currently conducting training that will be soon implemented. The purpose of which is to protect examiners from adversarial practitioners like yourself. And yes, part of my job is to guard the gates from nefarious actors like you.

  44. AAA JJ August 4, 2020 3:02 pm

    ” There are just too many instances of Examiners repeating the same mistakes over and over and over.”

    They are not repeating the same mistakes over and over. They are taking the attitude of “I don’t want to allow this, even though I know my rejections are improper, so let the Board issue it.” Which is exponentially worse than repeating the same mistake over and over.

    And I was an examiner for nine years so I know this goes on. Quite a bit actually.

  45. ipguy August 4, 2020 4:14 pm

    With nine years as an Examiner, I don’t doubt you’ve just about seen it all from the Office-side of things. Yes, there are definitely a number of Examiners who “just know” that something isn’t patentable, and they’ll drag out prosecution until the applicant either appeals or gives up. There are many Examiners, however, who might change their ways if the Office placed even minimal value on improving the quality of rejections by doing a post-mortem on why the PTAB reversed the Examiner, and the lessons the Examiner needs to take away from the reversal. What would be interesting to see would be how a PTAB panel reacts to Applicant’s citing prior PTAB decisions where the Examiner being appealed was reversed for reasons similar to those at issue in the appeal before that panel.

  46. AAA JJ August 5, 2020 9:38 am

    https://www.mriplaw.com/blog/9oxoawlu1nge0as7ho67cdxczspmmn

    I worked with the QAS of the case in this article back in the day when he and I were examiners in the same Group/TC. He’s a moron. And beyond lazy. Knows full well these garbage “design choice” rejections are improper and will be reversed. But sends them up anyway. Because getting reversed, over and over (and believe me if you review the last 10, 20, 50 appeals this jerk has signed off on you will be amazed at the level of unprofessionalism) is seen as an indicator of “quality” and not incompetence. Which is crazy, but that’s the perverse mindset there. The attitude is, “We did a quality job because we rejected it. But the Board reversed. The APJ’s don’t know anything about this technology.”

    That’s exactly how it goes. Anybody who tells you differently is lying.

  47. ipguy August 5, 2020 3:32 pm

    @46
    Well said.
    Out of curiosity, during your nine years, did your SPE, SPRE, QAS (or even Patent Academy trainers) ever explain why the level of ordinary skill is not explicitly determined for obviousness rejections?

  48. AAA JJ August 6, 2020 9:58 am

    Never had any discussions during my time at the PTO on resolving the factual inquiry into the level of ordinary skill in the art. The case law says no explicit findings necessary if the applied prior art reflects an appropriate level. It’s not something I argue in obviousness rejections much, as it’s really not an issue unless there is a good argument for a lack of reasonable expectation of success. It is something I argue in every non-enablement rejection I get.

  49. ipguy August 6, 2020 4:02 pm

    @48
    I’ve actually found it to be a useful prosecution tool when argued correctly. Mainly, because Examiners are not trained by the USPTO to deal with an actual legal argument. Bare assertions that the Examiner didn’t determine the level of skill are brushed aside by Examiners (and those bare assertions should be!). You have to make a showing that the Examiner isn’t entitled to get away with an “implicit” skill level determination because they haven’t met their burden of proof in demonstrating the prior art reflect an appropriate level of skill.
    After nine years at the USPTO, you likely know full well just how the USPTO loves to twist what case law says. MPEP 2141.03(II) provides:
    If the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level. Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001).
    By the way, the Chore-Time court acknowledged that it was ERROR for there to have been no skill level determination. The question it was addressing was whether it was REVERSIBLE error. That’s a factor that just doesn’t come into play in ex parte prosecution in the same way. Chore-Time involved a patent litigation, and not patent prosecution, and reversible error would require all the time, trouble, judicial resources, and effort of a trial being wasted because the case would need to be re-tried.
    The Examiner is required to demonstrate that the prior art reflects an appropriate level of skill in the art. However, an explicit analysis (as required by KSR; see MPEP 2141(III)) of how the prior art cited by the Examiner in the rejections allegedly reflects an appropriate level of skill in the art is, in my experience, never made by Examiners in their Office Actions. The Examiner has the initial burden of proof in demonstrating that the prior art cited by the Examiner reflects an appropriate level of skill in the art. To my knowledge, Examiners are not trained by the USPTO to explain why each of the prior art cited in the rejections allegedly reflects an appropriate level of skill.
    And, as you point out, the level of ordinary skill in the art isn’t just limited to obviousness rejections.

  50. AAA JJ August 7, 2020 2:37 pm

    Given the Fed. Cir.’s refusal in In re Jung to require the examiner to actually provide the BRI the examiner is using on the record, I think it’s a long shot that the court would require to make an explicit finding of the level of skill in the art. In the vast majority of applications it’s just not necessary. IMO.

    “And, as you point out, the level of ordinary skill in the art isn’t just limited to obviousness rejections.”

    More importantly, the level of ordinary skill is the same regardless of which section is being applied. If I had a nickel for every OA I received that included a 112(a) and/or (b) rejection that assumes PHOSITA is a blithering idiot and a 103 rejection that assumes PHOSITA is a multiple Nobel prize winner I would have a lot of nickels.

  51. ipguy August 7, 2020 4:52 pm

    I agree it is a long shot. Unfortunately, I haven’t had to appeal to the BPAI/PTAB in over ten years so I haven’t had the chance to make the argument in a long time. The last time I appealed, it was to the BPAI, and the Board dodged my skill level determination arguments by ruling in my client’s favor on other grounds. The Examiner got reversed, and then allowed the case so that was the end of it.
    I also agree there are applications where skill level determination is not really necessary in the obviousness context because the level of skill in that area is generally very high (e.g., biotech applications) and where it doesn’t come up in the context of obviousness rejections because there are generally only anticipation rejections in that area (e.g., circuits). However, as you point out, skill level isn’t limited to just obviousness. It just goes to show what a farce skill level determination (as practiced by the USPTO) can be since the Examiner is supposed to already know the level of skill in the art when it comes to 112 issues. If there are only 112 rejections, and no prior art cited in rejections, how is the Examiner supposed to have determined the level of ordinary skill implicitly?
    As I recall, there was a case that said the Examiner had to be consistent with the level of ordinary skill throughout the Office Action. If I can find it, I’ll post the name of the case here.
    Speaking of which, if the level of ordinary skill is implicitly defined by the prior art cited by the Examiner, when the Examiner drops or adds a reference, then doesn’t that potentially impact the implicitly-defined level of skill in the art? If the level of skill is supposed to be a constant that provides an objective lens through which the prior art is viewed, then doesn’t changing the “ingredients” that make up the implicitly-determined level of skill in turn potentially change that implicitly-determined level of skill. If the level of skill is supposed to be a constant, the level of ordinary skill can’t vary from one Office Action to another. It’s one thing for Examiners to be given wider latitude when it comes to BRI, but skill level during prosecution should be the same as skill level during litigation or post-grant proceedings.

  52. Mark Nowotarski August 8, 2020 9:52 am

    To the examiners and former examiners above, particularly those that remote work: To what extent do you consult with other examiners in your art unit? For example, if your SPE gives you feedback on a new priority in examination (e.g. greater emphasis from QAS on 112(a)), are there trusted peers you share that feedback with so that they will get a heads up on what the SPE is looking for?

  53. Anon August 8, 2020 11:23 am

    Well, I am glad that I took the time to ‘page down’ this morning and catchup with the excellent conversation between ipguy and AAA JJ — thank you both.

    As for my bureaucratic, fiefdom, examiner friend Gus “Claim Rejector” Fring, your blowhard ways are rather amusing.

    Please. tell me about this ‘training’ that you are about to receive that will set the world aright against the scourges of attorneys who happen to know the law and are seeking APPROPRIATE patent protection. Let’s note that I reject your strawman of “gravity time machine,” as well as note that you ARE required to examine under the law rather than that ego-driven ‘protection’ theme that you seem to have fallen in love with.

    So do tell exactly what ‘protection’ you need from a practitioner like me that is ‘adversarial.’

    And what exactly is ‘nefarious’ about my advocacy, and which ‘gate’ is it exactly that you think that you are guarding?

    You should be aware that you are coming across as very Holden Caulfield here.

    That’s not very compelling for you, and actually reinforces the points being discussed here on “BAD” examiners.

    Maybe that training entails that you do your job correctly in order to avoid provoking adversarial and nefarious practitioners….

  54. gus fring August 10, 2020 7:53 pm

    Anon 53, you’ll find out about the training after the new fiscal year. The protection that examiners need is from patent troll attorneys like you.

  55. Anon August 11, 2020 7:21 am

    Again, my friend, you mouth feelings without any substance.

    What exactly is this notion of yours about “protection” from “patent tr011 attorneys?”

    You use buzz words — and most likely use them incorrectly, which makes what you are trying to say to be incomprehensible.

    Is this training if the nature of training examiners to properly use legal terminology and terms of art so that the examiners can actually express themselves?

    I would welcome such training immensely!

  56. some dude August 15, 2020 1:10 am

    My 2 cents, maybe I am a former examiner too?

    1. Most examiners are not legal experts: True, but it doesn’t take an abnormally big brain to understand law. Cite something and I can either tell you why it doesn’t apply to you or accept that you’re right. Any examiner not considering those types of arguments are bad examiners, period. Personally, I feel that not being a legal expert actually makes it harder to reject something (e.g. based on some precedent I wouldn’t know about). But, if an examiner applies the MPEP *correctly*, then there is no (or there shouldn’t be any) case law a practitioner can correctly cite to overcome a rejection.

    2. Pick your battles: I’ve gotten a fair share of appeal briefs (a minuscule number in light of all applications I’ve examined). Some I allowed on the spot (as is, or with examiner’s amendment), but the vast majority was affirmed by PTAB. I swear that on more than a few I felt bad for applicant, for having to waste money on the appeal. Here is were you pick your “battle” though: Examiners don’t get extra time for preparing large responses (be it appeal or just under normal prosecution).. Argue every limitation, every reference, and we would be busy responding to every single argument, but after that, we would move on because we had to move on. Argue something small and examiners can respond to it and additionally, have the time to look at the spec and see if something can be done about it. I’m not saying there is something allowable in the spec every single time, but most of the time there is something that can make a reference disappear. For me it was always the case that the references I cited in the initial action were the best I could come up with, so throwing one out always weakened rejections and that is how you could eventually get to allowance. Are there bad examiners that even with extra time won’t help? Sure there are, but this is your time too. A bad examiner won’t care about how much you write, they’ll come up with any BS they can and waste everyone’s time regardless. The good examiner will help when possible. Ideally you should *know* your examiner, but unless you’ve worked with them before you wouldn’t know. Write lengthy responses all the time and you’ll never know who was good or who was bad.

    3-5: Pretty useless. If your examiner doesn’t understand invention, it should be clear from a bad rejection. Go straight to PTAB if that is the case.

    6. Discuss claim interpretation issues in an interview: A million times, YES! Use your tools, pick up the phone, call, and be smart about it. Sadly most interviews go like “hey, I added this, what do you think, examiner? […] Let me know if you have any other suggestions”, which usually leads to “new search/consideration required”, and a new reference on rejection. Instead, add some substance to it, and don’t just explain what the invention is, like point 4.. Explain what’s different from the art and/or how you are trying to differentiate. If you tell examiners where you want to go, they can help you get there (e.g. You: “Examiner, I’m trying to say this in the claim […]” Examiner: “Well, under BRI, the word you’re using can be something else, does the spec further define it?”).

    7-8: Useless. Some examiners do endload, but that is horrible practice. Focus on your deadlines instead

    9-10: Except for first or second year examiners (i.e. a minority), useless, unless you need to report something.

    @Mark Nowotarski: From the beginning, I always consulted pretty much everything with people that started around the same time I did, perhaps because we knew each other in real life so it was easier to interact. Telework did not seem to affect that because even prior to teleworking we’d always talk on the phone or chat using internal tools. We would only meet in person to talk about other unrelated things. I have a feeling that with the COVID thing going on new people are going to have a tough time building those connections since they’ll be remote from the start.

  57. Mark Nowotarski August 17, 2020 11:35 am

    @somedude. Very interesting that the connections you make early in your career, when everyone is working in the office, persist after you all telework. Typically (pre covid), how long does an examiner work in the office before qualifying for teleworking?

  58. Anon August 18, 2020 11:10 am

    some dude,

    One minor nit: “ But, if an examiner applies the MPEP *correctly*, then there is no (or there shouldn’t be any) case law a practitioner can correctly cite to overcome a rejection.

    This is a fallacy and presupposed that the MPEP has the force of controlling law as opposed to the actuality that it is the other way around.

    In discussions past, there have been examples in which the MPEP is simply not correct (as written and as applied). It is precisely in such instances that a proper citation SHOULD overcome the ‘correct’ (to examiner viewpoint at least) MPEP application. This is also exactly why being an attorney shifts the power to the applicants. Examiners – while as you admit ‘are not legal experts,’ ALL examination is done under the law, and the MPEP is a guide, but is NOT the law.

    This also feeds other discussions on how to interact. Some like to think that only MPEP citations are necessary. Some like to think that only (proper) legal citations are necessary.

    The latter case is accurate, not the former. Going beyond ‘necessary,’ I will often double cite and explain the difference in the legal citation and why that position is superior.

  59. ipguy August 18, 2020 12:46 pm

    “there have been examples in which the MPEP is simply not correct (as written and as applied)”

    See, for example, how the MPEP alleges that KSR modified the analogous art test. The issue of analogousness never came up in KSR.

  60. AAA JJ August 31, 2020 8:41 am

    “See, for example, how the MPEP alleges that KSR modified the analogous art test. The issue of analogousness never came up in KSR.”

    This.

    The MPEP is wrong on the case law way more often than it is correct (which is not very often).

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