« Strapped | Main | Lexicography »

December 21, 2007


USPTO management is pushing rule-crack on examiners, who are smoking it. Rule-crack: crystallized infractions homeopathically processed so that they don't even exist in CFR form. Before rampant rule-crack ingestion, the majority of examiners were randomly competent at best. Engendering curmudgeonly denial of due process, rule-crack is spawning egregious intellectual property theft.

Gary Odom (aka Patent Hawk) has been a pro se prosecutor for over seven years, with a couple dozen applications through the mill. Personal experience has been that the examiner bozo bus was always a wee crowded, but now, even decent examiners are going bad from rule-crack. So nitpicky, so unwilling to lift a finger.

As an example from last week (I've amassed quite a collection), an after-final admonishment, filed with a notice of appeal. Didn't bother with a petition that would have just been pouring energy down a rat hole.

Respectfully, examiner's final rejection on the second action was improper, a violation of MPEP 706.07(a).

706.07(a) Final Rejection, When Proper on Second Action
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The §112 rejections were new, not necessitated by claim amendments nor prior art, and so, if they were to be brought, should have been presented in a non-final office action.

Further, the §112 rejections are unfounded. This is a continuation of a granted patent; evidence that another examiner thought very similar claims of merit, amply supported by the specification. Two granted patents, and an unknown number of applications, cite the parent as prior art. Certainly it is the substance of the disclosure that merits such citations. Examiner rejects all claims under §112 ¶ 1, but then only selectively cites dependent claims as failing. In other words, examiner did not even substantiate a reasonable basis for such sweeping rejection, particularly of the independent claims.

Hal Wegner of Foley & Lardner reported Thursday:

The often stressful, antagonistic relationship between Examiner and attorney that has bubbled forth in recent years has apparently infected the highest levels of patent practice at the PTO - the PTO Board of Patent Appeals and Interferences.

From a Senior Partner at a Major Law Firm to his Colleagues:

Many of you have experienced rejected appeal briefs over the past year on the silly ground that you failed to attach a blank (non-existent) "Evidence Appendix" to the brief, or that there was not a separate heading for each independent claim in the summary section of the appeal brief. (Yes, the appeal rules do provide for an evidence appendix for "any evidence" but they don't say that you must attach a blank page if there is no evidence to submit.)

Now the PTO does not even care what its own regulations say. Attached is a notice of non-compliant appeal brief rejecting the brief because there is not a summary of certain DEPENDENT CLAIMS (with citations to portions of the specification and figures) that were separately argued in the brief. When we called the PTO (including a supervisor) to point out that Rule 41.37(c)(1)(v) only requires a summary of each INDEPENDENT CLAIM, and for ONLY those dependent claims that are alleged to recite means-plus-function limitations, we were told that the PTO's new position, confirmed internally at the PTO, is that because the reasoning behind the rule is to allow the Board to easily find subject matter in the specification, a summary of any dependent claims argued separately must also be provided, even if they do not recite means-plus-function limitations. Of course, rather than try to fight this ridiculous position by way of petition (which would probably sit in the petitions office until the case went abandoned), the only solution is to file an amended appeal brief.

Comments and experiences solicited.

Posted by Patent Hawk at December 21, 2007 1:10 AM | Prosecution


The business method art units (3620's) are simply the worst. They have no regard for the law whatsoever. As was noted on this site, and others, feel free to review 09/077,337 and 09/193,787. The PTO's handling of these cases, and others, is simply disgraceful.

There needs to be a house cleaning at the PTO.

Posted by: JD at December 21, 2007 6:09 AM

The current appeal rules (37 CFR 41) are an absolute mess, and completely exalt form over substance. For example, if you don't use the exact title format set forth, you're brief can be bounced. The requirements (both written and unwritten) for summarizing the claimed subject matter in a brief are beyond absurd, and especially how the "form" is enforced.

There is also no internal consistency between the appeal rules and the other rules of practice. One interesting faux paux we've noticed that the current appeal rules require reference to page and line number, even though current applications use paragraph numbers.

And the new appeal rules proposed are even more dreadful, ill-advised and draconian in putting all the burden on the appellant, but not equivalent burden on the Examiner or the Examiner's Answer.

That's my 2 cents.

Posted by: EG at December 21, 2007 7:42 AM

1. When an examiner tells you something like this, it is very important to ask who the examiner consulted with, and then to call that person for confirmation. In my experience, more than half the time, there was no "consultation." Of the remainder, usually the examiner has misstated the issue to the "conferee," so the answer you got does not apply to the question you asked - in many cases, where the supervisor did in fact opine, the scope of the advice to the examiner was much narrower than the ruling the examiner passes on to you.

Be very polite, but very firm - have the examiner agree that he/she wouldn't think it fair to have you present the examiner's case in a dispute, and you don't think it's workable to have the examiner present your case. You want to be sure that the correct question was asked. You want to be sure that you received the precise answer, and its basis, so that you can meet the requirements of the law precisely.

It's especially valuable to press these issues if you are a repeat player in an art unit. You'll only have to do it once or twice per examiner - either the examiner will become much more careful and analytically rigorous once you demonstrate a record of follow-up, or you will get a new examiner. Don't escalate close cases, only clear black-and-white ones, but do escalate the easy ones.

2. Use interview summaries to document anything out of line. Write up the conversation as close to verbatim as you can. File it, get it in the record. Then call the SPE. Don't be afraid to escalate to the T.C. Director if the SPE blows you off. If the T.C. Director won't take the law seriously, escalate to the Office of the Commissioner: the folks that get detailed there tend to be lawyers who have enough respect for the rule of law to take these kinds of issues seriously, if you have them documented in the record.

3. If the examiner was telling the truth, then senior officials of the PTO broke the law and are violating their oaths to "see that the laws are faithfully executed." Fifth Amendment due process forbids agencies from having unwritten, changeable-at-will rules. Lightfoot v. District of Columbia, 339 F.Supp.2d 78, 88 (D.D.C. 2004) sings a long hymn to agency due process and written, predictable principles. By telephone, be very polite, but very firm: make the examiner show you where it exists in writing, or demand that the examiner withdraw the requirement. Escalate by phone.

4. If the examiner was telling the truth, then senior officials of the PTO are disobeying the President. Executive Order 13,422 and its associated implementation bulletins from the White House forbid agencies from maintaining caches of "secret" rules. Documents promulgated without notice-and-comment are only binding on agency employees, and may not bind the public. 72 Fed. Reg. 3432 (Jan. 25, 2007, http://www.whitehouse.gov/omb/inforeg/eo12866/fr_notice_eo12866_012307.pdf); “Final Bulletin for Agency Good Guidance Practices” (OMB Memorandum M-07-07, January 18, 2007, http://www.whitehouse.gov/omb/memoranda/ fy2007/m07-07.pdf); and “Implementation of Executive Order 13422 (amending Executive Order 12866) and the OMB Bulletin on Good Guidance Practices” (OMB Memorandum M-07-13, April 25, 2007, http://www.whitehouse.gov/omb/memoranda/fy2007/m07-13.pdf).

In my experience, issues of unpredictable procedure and "the PTO does not even care what its own regulations say" are the overwhelming cause of the PTO's "rework" and "backlog." Too many PTO personnel do not understand the fundamental principle that the law is what is written down, it's not what I remember from training years ago, and it's not what my boss tells me. (In a conversation with John Doll about a year ago, he made clear is view of the principle: he stated that if I wanted him to follow the words of 37 C.F.R. instead of his personal impression of PTO policy, I'd have to "take it to a federal district court." His words.) Because there is no agreement on basic principles, final agreements are much more difficult than they should be.

Posted by: Points to Ponder at December 21, 2007 8:10 AM

From Hal Wegner via email -

The original note struck a responsive chord amongst members of the patent bar. Here is a typical response from someone known to be to be extremely level headed, cool, diligent and careful.

Truly "a case of a case of nit picking gone berserk."


Comment from "X": " The PTO bounced one of my appeal briefs three (3) times for the common reasons mentioned below. However, the last time was on the grounds that I didn't phrase my headings according to the PTO's liking. Fortunately, I'm not an idiot and so I barely managed to rewrite the subject headings resulting in my fourth attempt to pass muster; the brief finally went to the Board.

" One of the funny aspects of my aggravating and expensive endeavor was a ' What gives?!! '" phone call I placed to the appeals specialist who bounced my last 'non-compliant' brief. He was incredibly polite and actually sounded apologetic, like he was being made to bounce the brief. I wouldn't be surprised... "

Posted by: Patent Hawk at December 21, 2007 1:28 PM

You will find the patent bar version of the 37 CFR 1.105 useful in many contexts. It is commonly known as a Freedom of Information Act (FOIA)Request. I have actually begun to implement the same in my practice. It makes individuals watch the ps and qs, because failing to accurately respond raises the spectre of criminial liability. You could ask questions such as who was resonsible for this decision. Who was responsible for that decision etc. I stronly recommend it. The one drawback is that the application must be published and, of course, you must obtain persmission from the owner of the application.

Posted by: me at December 21, 2007 3:01 PM

Most examiners avoid or at least delay work at all costs. Think of it kind of like a game of poker. Why not play, when you are always dealt aces? Examiners are given the upper hand with endless rules and regulations to fall back on. What's easier, bouncing an appeal brief or writing an examiner's answer? Why do today, what we can push off until tomorrow? (Ignore that compact prosecution bug buzzing in your ear) Although, in most cases, the examiner will eventually write an examiner's answer, they certainly do not need to write it today. Better yet, maybe the examiner will luck out and the case will go abandoned. Until this attitude of procrastination and avoidance ends, applicants will continue to be dealt two-seven off-suit.

Posted by: Jordan Kuhn at December 21, 2007 3:32 PM

Limitation of actions or statutes of limitations. These should be of paramount importance to those who willingly violate laws. For long after the political ideology under which protection is garnered for these unlawful acts wanes, the cause of action for the injury that results will remain.

Posted by: me at December 21, 2007 4:20 PM