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June 24, 2008

Tele-Cost

In their June newsletter/sobfest, POPA reiterates concerns over proposed changes to the PTO telework program. The proposed changes would eliminate the one-hour-per-week in office requirement for examiners, but would require examiners to cover all costs when traveling to the PTO headquarters on an "as needed" basis. POPA's concern: malicious supervisors interpreting "as needed" as "as wanted".

From the June newsletter:

The USPTO is lobbying Congress to approve legislation, currently part of Senate bill S.1000, which would extend the authority for the General Services Administration to approve experimental travel expenses test programs for six years. This legislation, while only appearing to directly affect the General Services Administration, would allow the USPTO to change hotelers' duty stations to their home offices, thereby negating the weekly required in office hour, yet not reimburse them for their travel expenses -transportation, lodging and meals-when they are required to come to the USPTO headquarters on an "as needed" basis.

On the surface, this appears reasonable, although not necessarily the best course of action considering current pendency issues. But now for the kicker:

If a supervisor doesn't like an employee, all he or she has to do is require the examiner to repeatedly return to USPTO headquarters for "training" or "counseling" or "review," etc. The examiner will be left facing a Hobson's choice of paying considerable travel expenses or finding a new job. Hoteling examiners will find themselves with a financial sword hanging constantly over their heads.

Previous Patent Prospector telework coverage: One Forward, Two Back; I Swear Tele-Works; If I Were the Dude....

Posted by Mr. Platinum at June 24, 2008 7:11 AM | The Patent Office

Comments

See I just don't know about that, I guess my bosses just aren't asholes.

Posted by: e6k at June 24, 2008 7:41 PM

My client and I were flying from the West Coast to the USPTO to interview a number of cases. One of the examiners told us that since he works from home now he no longer conducts personal interviews.

Posted by: patent prosecutor at June 25, 2008 6:37 PM

also since many of the senior examiners now work from home, how are the newbie examiners going to get the hands-on mentoring and feedback which they need

Posted by: patent prosecutor at June 25, 2008 6:39 PM

I'm an examiner that soon will be working from home in the DC area.

About Interviews: I'm kind of torn about this one. Interviews are a job function but (1) I think that an examiner has discretion in granting interviews and (2) I have yet to attend an interview in which an in-person presence has added anything of value to the experience.

If an Applicant is going to haggle about claim wording, I find proposed amendments via email/fax as doing the same thing. Usually when the attorney and inventor come into the office they give me a whole presentation about stuff that isn't claimed and, quite frankly, serves no purpose in moving the case to allowance. (e.g. "I don't care about your 150-step flowchart as the steps of the flowchart are not claimed and the claims do not even reference the flowchart's content.")

About Training: This is a problem. Most of the senior people are going home and training is falling onto the SPEs and the more junior examiners. A SPE has his own job functions outside of juggling training for 5 or 10 examiners. Junior examiners don't have the experience. The PTO believes that senior staff can still conduct training via video-conferencing and email exchanges...but something is kind of lost in the mix.

Posted by: Examiner B at June 26, 2008 7:41 AM

I respectfully disagree, Examiner B. Often times, an Examiner and an Applicant will be on parallel paths, not understanding where the other is coming from -- viewing the prior art or the invention differently. (e.g., one treating the "handling assembly" as being shown in the lower right of FIG. 6 and the other in the lower left). Papers can be exchanged for years without the misunderstanding being fully appreciated. For the examiner, this may not matter -- they get credit for all of the frustrating RCE's the applicant files and they do not have to spend the time conducting a personal interview.

But the interview (in my nearly 30 years of experience) can cut through the fog and get the application more quickly in condition for allowance, which is good for the Applicant and the public.

Posted by: patent prosecutor at June 26, 2008 6:24 PM

Further, Examiner B, and referring to your 150 step flow chart example, the Applicant may think that he has the critical steps claimed. Maybe he is wrong in so thinking or maybe when he points to the relevant steps in his flow chart and explains it to the examiner, the examiner will then understand. Or maybe the examiner will explain why the steps are not shown and the examiner and applicant (counsel) can work out acceptable claim language. In the past year I have conducted maybe 10 personal interviews and five of them have been productive and made my trip back east worthwhile. In years past, the percentage was probably closer to 80% as the Patent Office has become more difficult.

Posted by: patent prosecutor at June 26, 2008 6:30 PM

Examiner B

I agree that something gets lost. "The PTO believes that senior staff can still conduct training via video-conferencing and email exchanges...but something is kind of lost in the mix."

It is much more productive (no matter what the IT people say) to actually sit down next to someone with all of the papers and drawings in front of them and explain something -- whether it is a senior examiner with a newbie examiner or a senior patent prosecutor with a newbie patent prosecutor.

I would imagine that there some of the comraderie is lost too when you very very rarely see coworkers.

Posted by: patent prosecutor at June 26, 2008 6:33 PM

At any rate, the PTO is giving examiners the hard sell on telework, so it will increasingly become a fact of life. Once they get rid of the one-hour rule I imagine you will start seeing examiners working from outside the DC area.

In my experience, even though hoteling employees are supposed to be just as available as they would be if they were across the hall, in reality they might as well be working on Mars.

Regarding interviews, I can't think of a specific instance where an in-person interview was particularly useful versus a phone interview, but when you deal with a limited group of attorneys on a regular basis, I think it's helpful to meet them in person at some point, if only to assure each other that you're really not that evil :)

Posted by: Examiner Y at June 26, 2008 10:27 PM

The PTO is pushing telework IMHO because it means fewer offices, and thus lower overhead.

In the long term, it means, as commented above, that new examiners do not get the support and training that they need, because the experienced examiners are not around; and the retention problem continues to grow.

Current PTO management is not concerned with long term. Heck, they can't even manage the short term.

Posted by: IMHO at June 26, 2008 10:38 PM

Regarding In-Person Interviews:
I work in business methods (yes, one of those examiners). Perhaps our applications are more nebulous or more prone to word-games than other technology areas but in my limited experience (several years) in-person interviews have not been very fruitful. I guess other people's experiences may differ.

I can understand if people are gathered around a schematic or looking at the gears of a machine (i.e. something concrete) but in our area it comes down to sitting around a table and debating the definition of broad terms utilized in the claims.

Usually, the applicant in my area will use very broad terms in his claim limitation and I, as an examiner, take a broad interpretation of those terms. During the interview, the applicant will argue that when he said "the broad term" he meant "the very narrow meaning." I'll ask him to amend the claims to account for that very narrow meaning. He'll refuse. And then we duke it out at the board. ARGH!

Relocation:
Knowing current teleworking examiners, they have already begun migrating outside the DC area. Examiners have already relocated to Pittsburgh (4 hours away) and southern New Jersey (3 hours away). The consider the once-a-week roadtrip as just the cost of living outside the area.

Posted by: Examiner B at June 27, 2008 9:57 AM

Examiner B

Business method applications are treated as a different animal in the PTO (as you know better than I do). PTO doesn't want the bad publicity of issuing one that shouldn't have been issued. While in the early days with very little printed prior art and an inexperienced examination corps the more rigorous examination was justified, I don't think that it is now.

I agree, generally speaking, that personal interviewing applications with complicated gearing or the like is more productive compared to telephone interviewing than are applications with business method flow charts. [That was an awkward sentence, I apologize.]

Is the Board providing business method examiners with any helpful guidance?

Posted by: patent prosecutor at June 27, 2008 6:08 PM

I can't believe what I am reading here. You SOB's get to work at home, and you are refusing to interview? GD, when I was a primary (I rarely had interviews, but sometimes they were warranted), I would have given my left arm to work at home, and coming into the office, maybe every two months for a couple of days, would not have cramped my style at all. I can't believe you spoiled brats. The Ramone's said it best: beat on the brat, beat on the brat, beat on the brat with a baseball bat oh yea!

Posted by: Former Primary at June 28, 2008 1:04 PM

i.e., I rarely had interviews requested - a sign you are doing your job right.

Posted by: Former Primary at June 28, 2008 1:09 PM

Former Primary -- there is some truth to your statement that rarely having interviews requested is a sign you are doing your job right.

Posted by: patent prosecutor at June 28, 2008 11:55 PM

Board Guidance:
As to Patent Prosecutor's question, the Board is not really giving us any useful guidance. Or at least that is my impression.

Management dispenses their official interpretation of Board/Court decisions which, at least to me, seem to be based less on precedent and more on management's interest to mold business methods to suit their personal desires.

Case in point, a new interpretation of 101 was dispensed last month which appears to backpedal to the "technological arts test." Management phrases it slightly differently but it comes down to the same thing. Now a method must be tied to an apparatus or system for performance of said method.

As To Interviews:
In regards to Formerly Primary, I have no problems with the in-person interview. I rarely have interviews (maybe 6 to 12 a year) to be totally honest. Just don't see much much coming out of them when I have them.

Posted by: Examiner B at June 29, 2008 8:14 AM

B, when I say rare, I mean something like one or two every year or two. To broadly say nothing usually happens is only from your perspective. Many other things can be gleaned from a personal interview.

During a personal interview, I like the eye-contact-when-I-ask-a-question/request-ignored situation. Or the this-examiner-is-unreasonable-and-will-never-come-around-or-help that sometimes becomes clear during an interview, and where a primary may be summoned at request. I also use these occasions to visit my old friends who still work there, or to otherwise put a human faces in the processes.

Posted by: Former Primary at June 29, 2008 8:27 AM

Former Primary -- how has the PTO examination process changed since you left the Office?

Posted by: patent prosecutor at June 29, 2008 9:44 AM

patent prosecutor (these may seem obvious, but I WAS THERE for a long time and can verify):

#1) The people in charge seem to have everyone afraid to allow anything.

#2) They re-open after appeal more often because of #1.

#3) #1 has created a culture of rejection.

#4) Primary examiners do not have the authority they once had, i.e., the very fundamental core of their position has been gutted.

#5) They have less respect for well established procedure and the law.

After #1, every other one (including the blow-off of the value of interviews) logically follows.

Posted by: Former Primary at June 29, 2008 2:25 PM

In response to Former Primary, not much has changed.

#1 still true. Although, in the past five years management has gone from terrified by allowances to merely being skiddish.

#2 still true.

#3 still true. There are additional hurdles to get something allowed rather than rejected, even after an examiner decides to issue an allowance. These extra hurdles encourages an examiner to reject rather than to allow.

#4 definitely true. Allowances are further reviewed by a "second pair of eyes" (their term for quality reviewers) which may think that the primary has not searched enough or overrules the primary's decision. So a primary is no longer a primary, just a marginally more senior examiner.

#5 may still be true. In my area, management is constantly re-interpretating the law/court cases and dispensing their official interpretations to examiners. Personally, their interpretations read more as how they would like the the law to be rather than what the law actually is.

Posted by: Examiner B at June 29, 2008 3:18 PM

Thank you Former Primary and Examiner B for your comments.

While I have never been an examiner, I have been in private practice since the very early 80's and have found the past five years to be the most frustrating. PTO management has done a great job of pitting examiners and applicants against one another. Before (at least it was my experience) examiners and attorneys worked together to get the inventors the scope of protection they deserved, and I would compromise where it was in my clients' best interest. Now I compromise, and I still get off-the-wall 112, 102 and 103 rejections.

(1)One rejection which really gets under my skin is where the examiner takes the limitations in the body of the claim which distinguish over the prior art and deems them to be "functional" or "intended use" limitations and therefore accords them no patentable weight. On the contrary, these limitations are clearly structural (and clearly define over the prior art). I point out at great length that the MPEP and the case law do not support such rejections, but the examiners ignore my arguments. Is there a PTO internal memo on this legal point? (I am busy this weekend preparing Appeal Briefs on this issue.)

(2) Another rejection which is frustrating is where the examiner just finds all of the elements of the claims in various unrelated pieces of prior art and cobbles them together for an obviousness rejection and states that the reason for such cobbling is the very advantage of my clients' invention as set forth in the specification. Clearly improper hindsight, and clearly improper even after KSR.

Any comments?

Posted by: patent prosecutor at June 29, 2008 3:43 PM

(1) There hasn't been a memo concerning functional or intended use language since I have been here but I have posted some stock responses/case law that I have seen examiners use.

Intended Use:
* Examiner asserts that the recitation of the intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987).
* Examiner asserts that it has been held that the recitation that an element is "adapted to" perform or "is capable" of performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138 (CCPA 1946).

(2) At least in business methods, they have encouraged Examiners to take the KSR ruling and run with in. Although, an Applicant might think it is hindsight, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, reconstruction is proper." In re McLaughlin, 170 USPQ 209, 212 (CCPA 1971).

For myself, if I can limit myself to very few prior art references (max of 3) and make a common sense argument that it would have been obvious, I reject. In my area, it's not hard to do as most of the time the motivation is merely to automate a manual process.

Posted by: Examiner B at June 30, 2008 5:10 AM