Posts Tagged: "TC 3600"

In the years after the Alice decision, it had seemed as though examiners in the business method art units felt as though their hands were tied with respect to issuing applications. Even if they had recommended an application for allowance, it was often sent back by quality review with an indication that a patent-eligibility rejection should be made or maintained. However, in early 2017 – at least with respect to a handful of applications – examiners’ perspectives seem to have changed, where they were more willing to work with the applicants to find eligible claim material and/or suitable arguments to be put on the record that would suffice for an allowance… While we note that the business method allowance prospects still remain substantially below those in other Technology Centers, the beyond-doubling of this statistic is of practical significance.

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming arguments and claim amendments to address Alice v. CLS Bank rejections…. If you happen to face an Alice v. CLS Bank rejection or are sorted into an art unit that experiences a high volume of Alice v. CLS Bank rejections, consulting the prosecution history of successful cases in Public PAIR can prove fruitful for identifying analogous claim limitations and arguments that may help stimulate your thinking in forming a successful strategy for patentability.

In many of the decisions, the examiners and appellants had an opportunity to make arguments based on Alice before the PTAB reached a decision. Yet, the outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection. As indicated above, the reversal rate for a § 101 rejection in December 2016 based on Alice was less than 9%. Equally worrying for potential appellants is that some decisions introduced a § 101 rejection even when prior art rejections were reversed. The PTAB seems to have stopped the practice of urging examiners to review the claims for compliance under § 101 in light of Alice, and, instead, has become more active in introducing § 101 rejections on their own.

Robert Bahr, the Deputy Commissioner for Patent Examination Policy, responded that “hindsight is great,” and went on to explain that they thought that the rejections that were being appealed to the Board would stand and there would not be a need to bring the cases back and issue Alice rejections. “These are sort of judgments calls you have to make,” Bahr explained. “Sometimes it works out for you and sometimes it doesn’t.”

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look in the mirror and take care of its own internal business. If the Patent Office is truly interested in quality they should take steps to address low quality patent examination, which is unfortunately too common… Having a complete record means that the Office needs to record what is being done and by who, period. No secrets. No more decisions made behind closed doors by unknown actors.

First, this type of circular “logic” is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial exception (which in this case is an abstract idea) because the additional elements add no more than the abstract idea. In other words, the examiner says there is nothing significantly more than the abstract idea because there is nothing more than the abstract idea. The Alice equivalent of this “how dare you ask me, I’m your mother” simply says what you’ve claimed is abstract because it is abstract, period. Clearly, a conclusory rejection like this without any real explanation does not satisfy the examiner’s prima facie burden to articulate a valid reason to reject. After all “because” is not a reason.

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert. This sounds quite similar to second pair of eyes review, which wreaked enormous havoc on the patent system over a decade ago. Second pair of eyes review was one of the primary reasons why patent pendency got out of control and the backlog of patent applications grew to well over 1 million unexamined patent applications. It seems to have returned under the guise of Alice.

Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time to file a Reply Brief has run. See 37 CFR 41.35(a). What this means is the patent examiner, in order to frustrate the applicant’s ability to have the Board hear a case, can simply refuse to file an Examiner’s Answer and instead reopen prosecution. This happens all too frequently in some Art Units.

Delay, frustrate, harass and ignore patent applicants. Issue frivolous rejections if necessary, but reject at all costs. If the Board issues a complete reversal just reopen prosecution. Eventually the patent applicant will get the idea and abandon the application. TC 3600 seems to be fighting a very successful and coordinated war of attrition against applicants.

So an applicant waits years on appeal to get relief from frivolous rejections, achieves a complete and total victory, and their reward is another bogus rejection from the same examiner who has been harassing them for years. It is no wonder many applicants just give up. If this were happening anywhere else in the world we would ridicule the system as fixed or rigged… How ironic, and sad, is it that the PTAB has the authority to invalidate issued patents in post grant proceedings but has no implementing authority with respect to its decisions completely reversing even frivolous examiner rejections. This is yet another reason the PTAB is appropriately characterized a death squad. The only power the PTAB seems to have is to take rights away from property owners (i.e., patent owners).

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… 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 has 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.

Upon closer review things are much, much worse than I previously reported. The problem is also far more widespread. Using LexisNexis Patent Advisor®, I looked at the E-commerce Art Units, this time focusing on what has happened over the past 18 months. Focusing on this segment of post-Alice prosecution the allowance picture is utterly atrocious… Only 12 patents were issued by Art Unit 3689 in 2015, while 365 applications went abandoned, which corresponds to an allowance rate of 3.2%. So far in 2016 there have been only 3 patents issued by Art Unit 3689, while 232 patent applications have gone abandoned, which corresponds to an allowance rate of 1.3%.

This new post-prosecution pilot program feels a lot like rearranging the chairs on the Titanic. Unless and until the Patent Office does something about recalcitrant patent examiners this effort may wind up being much ado about nothing… If you look at Art Unit 3622, which handles applications dealing with incentive programs and coupons, and compare it with Art Unit 3688 and Art Unit 3682, both of which also handle patent applications relating to incentive programs and coupons, you see the same alarming trend. These three Art Units that handle the same type of patent application yet have allowance rates of 9.5%, 29.2% and 63.2%. Something seems seriously wrong and is screaming for investigation.

The disparity between the art units is confused even more so when we consider the total number of Alice rejections in each art unit, rather than just counting the total number of applications receiving an Alice rejection. Doing that, we can see that, while 3622 and 3623 have almost equal numbers of applications with Alice rejections, 3623 actually has more in total. This means that applications in that art unit are more likely to receive multiple Alice rejections and take longer to prosecute.