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May 10, 2008


The phrase "with all due respect" is common to arguments traversing claim rejection. But how much respect is due for utter breakdown of "examination on the merits"? This is not a rhetorical question.

Obviously, civility should not be transgressed. Incompetence is no excuse for incivility. That said, one afraid to state the obvious is merely afraid. Fear is not becoming. Even in an attorney. Especially in an attorney. Show some backbone.

In my most recent reply to non-final office action on one of my own patents, in preface to traversal under §103(a):

In the interest of compact prosecution, applicant replies to the most glaring oversights, preserving elaborated argumentation for the inevitable appeal.

The closing passage:

Examiner failed his basic examination obligations under 35 U.S.C. §131 and MPEP 706.02(j).

USPTO examination has become a bad joke, bringing disgrace to the examiner corps. In the past few years, applicant repeatedly receives careless rejections such as this. Still, thanks for not piling it on.

With rare exception, every application must now go to appeal. See you there next round.

Posted by Patent Hawk at May 10, 2008 9:35 PM | Prosecution


Ballsy, but I'm sure not all out of place.

Posted by: Federally Circuitous at May 11, 2008 10:15 AM


The real problem is the thousands of examiner newbies that have been hired in the past 3-5 years. They don't know any other system of examination other than "Quality = Reject, Reject, Reject." Even if we get rid of the current (mis)management, we are left with legions of useless examiners. They will all have to be re-educated. That is going to be a very long process.

Posted by: JD at May 12, 2008 5:46 AM

Funny, I put in comments like that about amendments made by the attorney. Perhaps it is examination as well as claim drafting that is going down the toilet due to the volumes of each being produced? Especially considering the increase in the size of the cadre of examiners and prosecutors in relation to the size of the increase in the amount of work being produced?

Also, JD is partially right, but as he is no doubt aware, he goes too far with a good point.

Posted by: e6k at May 25, 2008 3:48 PM