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June 23, 2009

Unappealing

More than ever, patent prosecution is a gambler's game. As Admiral Adama in Battlestar Galactica observes: "sometimes you have to roll the hard six." In prosecution, facing an objectionable rejection, appeal. Professor Dennis D. Crouch has taken a cold-eyed look at rejection rates for BPAI appeals. Not a savory prospect. The hard six is a very hard roll, particularly when playing against Obzilla.

The rejection regime of the past few years has resulted in an appeal-all kickback from prosecutors. That regime is taking its toll on the BPAI. The number of appeals is expected to double in 2009 from 2008, to a record 6,400. Professor Crouch attributes "two factors have led to this short term dramatic rise in appeals: (1) an increase in rejection rate by patent examiners; and (2) attempts by the PTO to limit non-appeal avenues for achieving full claim scope."

Professor Crouch:

Most appeals from examiner rejections focus on two or more issues. [2.1 issues was the average.] Of those, the majority of rejections (61%) are affirmed and the remainder reversed. When more issues are presented, the case as a whole becomes more likely to be affirmed-in-part.

87% - 90% of cases decided an issue of obviousness. Only 4% of appeals consider neither obviousness nor novelty.

The Board is authorized to offer new grounds for rejection, and did so in about 4% of the cases in the hand-scored study. The most common new ground was for obviousness.

More than half of the appeal decisions (54%) focused solely on obviousness. The closest runner-up issue - anticipation - was an issue in 37% of the appeals. Other issues on appeal (each with a frequency of < 5%) included in descending frequency: written description requirement; indefiniteness, patentable subject matter, obviousness-type double patenting, and enablement.

The fact that the majority of issues involve obviousness spells trouble for applicants.

Biotechnology and organic chemistry (TC 1600) are an outlier: 18% of those BPAI decisions are focused on issues other than prior art.

The non-objective standard of KSR renders obviousness a pandemic killer. Otherwise, an examiner is far more often found wrong than right, a figure that indicates general examiner incompetence, for sticking with rejections that are not well-founded.

Obviousness rejections are more likely to be affirmed than are other types of rejections. Cases that discuss neither obviousness nor novelty are reversed in 74% of cases.

The outcome upshot is shown by Table 1. "10% of cases that were affirmed included one or more individual issues that were reversed." This occurred where an examiner piled on the rejections, both anticipated & obvious over multiple prior art references, and while reversing the most outlandish rejection, the Board need only agree with the examiner on one issue to down the application.

In the case of multiple issues, the BPAI tends to split the baby from the bathwater. "As more issues are presented, the likelihood of a split decision (affirmed-in-part) rises dramatically while the likelihood of the case being completely affirmed or completely reversed drops."

The good Professor points out that examiner error on rejected claims is but a partial story. The other side of the examiner error coin is allowing claims that should not have been. That appeal is more often than not heard in the courthouse.

Posted by Patent Hawk at June 23, 2009 3:25 PM | Prosecution

Comments

Hawk,

Perhaps the greatest light shown at Patently-O on this particular thread was that from Ron K.

One of his posts repeated here below for convenience:

Ron Katznelson said...
Dennis,
Great article, and an important dissection of BPAI decision issues.

One comment though. You say “the majority of issues (61%) are affirmed and the remainder reversed…. I find that the likelihood that a case is affirmed has increased over time (Jan 2008 - May 2009).”

This statement can be misleading because the actual percentage of appeals filed that are affirmed by the BPAI has declined in the last five years down to less than 15%. This is because the number of appeal briefs filed ballooned by a factor of four in that period and now, examiner’s rejections under appeal are found by the Appeal Conference to lack even the minimum merit for BPAI consideration in nearly four out of every five appeals filed. See the data in Figure 2 in my Appeal Rules PRA comments at
http://works.bepress.com/cgi/viewcontent.cgi?article=1054&context=rkatznelson

The growing workload demands on examiners, in part, results in increased final rejection rate. Because the USPTO selects the filed appeals that reach the BPAI, a progressively shrinking fraction of appeals have been cherry-picked over time for submission to BPAI. It should come as no surprise to see that, of the appeals REACHING THE BPAI, increasing fraction is affirmed. If one can analyze only 6,400 appeals out of 30,000 appeals filed per year, I would refrain from using phrases such as “most appeals from examiner rejections”, “the most common issue on appeal”, “the record-filing of 6,400 appeals in FY2008”, “appeal filed with BPAI”, etc. Unfortunately, applicant's are denied an administrative independent right of appeal in a majority of filed appeals.

Finally, I anticipate erroneous use of your results. Pronouncements citing your results, such as “an increase in affirmance rate at the BPAI indicates that USPTO examination quality has improved”, must be thoroughly questioned.

Reply Jun 22, 2009 at 02:13 PM

Posted by: breadcrumbs at June 23, 2009 4:48 PM

But this misses 1/2 of the story (aside from incorrect allowances).
How many cases were pulled, By The Examiner, back into prosecution?
This "reject, reject, pull back appeal, reject again" strategy is used how often?
It is often most frustrating because you lose time and money and really have no recourse (aside from Appeal from the new NFOA).

And there are the rare cases of where you file the Pre-Appeal & then Appeal Brief and then the Examiner allows.

I want a study that gives you the odds of an allowance after Notice of Appeal (NoA), new rejection, affirmed Appeal, remanded Appeal, etc.
This only tells me the story if the Examiner is confident enough to let it go to the Board.

Posted by: EvilDave at June 23, 2009 4:50 PM

You had me at Adama

Posted by: Frakkin' Lawyer at June 23, 2009 7:05 PM

Posted by: 6 at June 23, 2009 9:09 PM

"Unfortunately, applicant's are denied an administrative independent right of appeal in a majority of filed appeals. "

Btw, Hawk, a guy was upset the other day in our AU because an examiner reopened to even barely change the rejection. In fact, he didn't even change the grounds of the rejection, he just further explained the grounds of rejection originally applied. The guy complained that he was being denied the opportunity to appeal. You know what? My spe is 100% willing to let it go right straight on to appeal. So, that guy is going to appeal.

Next time you guys want to go to appeal, put a note in your response, you can sure as heck go. The truth of the matter is that when you get reopened after you file an appeal is that it likely wasn't the examiner wanting to reopen, it was the spe or the appeals guy (in my case it has been the appeals guy 2 out of 3 times that I had to reopen, don't get smart, I have 4 appeals going up to the Board, nearly unheard of for someone of my exp). And when they want to reopen, it isn't because they "want to reopen" it is because they believe the applicant genuinely takes issue with that rejection and wants it taken away, so they're willing to give that to the applicant. If the applicant genuinely wants to go to appeal and doesn't want the issue to be reversed, then they'll be 100% happy to help the applicant out and send it up.

But when you win on appeal, and the examiner reopens after appeal and rejects you again don't come crying to me.

Posted by: 6 at June 23, 2009 9:19 PM

6's comments ignore the real reason for reopening prosecution -- to preserve the TC/AU quality ranking. BPAI reversal rate is one of the few metrics Group Directors and SPEs are measured with, so it's not surprising that most appeals (80%) never make it out of the TC. Based on the patently-o stats, it looks like this policy has served the directors and SPEs well (at the expense of the public of course).

So, Group directors and SPEs are never "100% happy" to send *any* appeal up to the BPAI. Maybe 6 will start to understand how the PTO works after another few years in the corps.

Posted by: anonfonow at June 24, 2009 6:52 AM

“Winning on Appeal” resulting in reopening prosecution.

I was just talking with someone that this has recently happened to. Other than the appealed rejections, application was in condition for allowance. Board was fairly brutal to the Examiner, completely reversing of all examiner’s arguments and rejections based on multiple 103(a)’s. Reverse – not remand - Period.

A month after the Board decision is returned, the examiner does a new search on his own, finds additional (and still bogus) references, and proceeds to write up a new non-final office action. Examiner cuts and pastes the obligatory form paragraphs, including the paragraph that indicates Examiner can re-open prosecution only with written authority of the Director (sufficient cause being shown), and includes the acting director’s signature.

However, the only “sufficient cause” shown was a reference found in the new search, after the Board had rendered its verdict and after the examiner re-opened prosecution on his own. The Examiner went on a non-permitted fishing trip!

I am curious as to how often this seemingly illegal maneuver is carried out. By seemingly illegal, I mean that the director can permit an examiner to reopen prosecution only upon sufficient cause being shown [37 CFR 1.198], and since the action of the Patent and Trademark Office will be based exclusively on the written record in the Office. [37 CFR 1.2], this sufficient cause that the Director must use (and which must be on the written record) to evaluate whether to give permission to the examiner to reopen prosecution must be something available AND on the record PRIOR to the re-opened prosecution (permission to proceed with a certain action - reopen - must be obtained prior to the action takiing place). Otherwise, the poisoned fruits of the reopened prosecution itself are serving as the basis for permission to reopen – a dangerous circular argument and surely such actions violate 37 CFR 41.54. And just as clearly MPEP 1214.04 second paragraph is being ignored “The examiner SHOULD NEVER regard such a reversal as a challenge to make a new search to uncover other and better references.” (my emphasis).

If, as anonfonow points out, that Directors are directly affected by such decisions, there is even more reason to demand that the Office provide the pre-fishing trip, on the written record, sufficient cause that the Director used to permit the Examiner to proceed to reopen prosecution.

Posted by: Noise above Law at June 24, 2009 7:18 AM

"So, Group directors and SPEs are never "100% happy" to send *any* appeal up to the BPAI. Maybe 6 will start to understand how the PTO works after another few years in the corps."

Oh really? Well I guess that explains why mine and another guy's appeal will be going up.

I didn't ignore sht. If prosecution was reopened it was because the rejection just wasn't solid enough to present a decent chance of winning in the appeals guy's opinion. It's that simple.

Posted by: 6000 at June 24, 2009 11:27 AM

6: in your 9:19 post you stated that you had been forced to reopen prosecution 3 times and that 4 appeals made it past the conference to the BPAI. So, the greatest examiner in the history of the world still reopens prosecution in 43% of his appeals (compared to the 80% PTO-wide average).

Why doesn't your TC/AU send 100% of your appeals to the BPAI? Because your group management doesn't want to risk their bonuses.

Why does the PTO allow group directors and SPEs to behave like this? Because hiding appeals from the BPAI prevents the PTO from ever issuing a final decision that would be subject to judicial review (the APA requires exhaustion of all administrative appeal remedies before proceeding with a district court action).

Posted by: anonfonow at June 24, 2009 11:43 AM

"The Examiner went on a non-permitted fishing trip!"

Lol WUT? I can fish in my spare time all I like thanks. And so can he.

"[37 CFR 1.2], this sufficient cause that the Director must use (and which must be on the written record) to evaluate whether to give permission to the examiner to reopen prosecution must be something available AND on the record PRIOR to the re-opened prosecution (permission to proceed with a certain action - reopen - must be obtained prior to the action takiing place). "

In your dreams sweetheart. Feel free to take them to the DC.

"And just as clearly MPEP 1214.04 second paragraph is being ignored “The examiner SHOULD NEVER regard such a reversal as a challenge to make a new search to uncover other and better references.” (my emphasis)."

MPEP has no force of law. In fact, it doesn't even control half of the actions we perform with any regularity. Be glad that it doesn't, you'd be getting your amendments back all the time as being incomplete and sht like that if we did follow it to the T.

Posted by: 6000 at June 24, 2009 11:48 AM

While we're on the topic...

"Battlestar Galactica: The Son Also Rises (#3.18)" (2007)

Romo Lampkin: Everybody has demons. Them, Baltar, you, me. Even the machines. The law is just a way of exorcising them. That's what your father's father told me. You want to know why I hated him? Because he was right.

Major Lee 'Apollo' Adama: So you hated him because he was right, and I hated the law because it was wrong. Because of what... of what it put him through. I mean, he defended the worst of the worst. I remember reading about him. The outrage. Helping murderers go free. What I don't understand is why he put himself through all that abuse.

Romo Lampkin: You think he gave a flying frak? Joe Adama cared about one thing. Understanding why people do what they do. Why we cheat our friends, why we reward our enemies. Why we go to war, sacrificing our lives for lost causes. Why we build machines in the hope of correcting our flaws and our shortcomings. Why we forgive, defying logic and the laws of nature with one stupid little act of compassion. We're flawed. All of us. I wanted to know why, so I did what he did. I spent my life with the fallen. The corrupt. The damaged.

Romo Lampkin: [reading letter for Baltar] There's no greater ally, no force more powerful, no enemy more resolved, than a son who chooses to step from his father's shadow.

Posted by: Jules at June 24, 2009 12:33 PM

The PTO system is structured such that patent examiners (and their bosses) are encouraged to never or rarely allow meritorious applications. There is very little penalty for issuing bogus rejections.

Posted by: John Prosecutor at June 24, 2009 12:39 PM

"Why doesn't your TC/AU send 100% of your appeals to the BPAI? Because your group management doesn't want to risk their bonuses. "

Because the appeals guy does the attorneys job for them usually.

But maybe you're right, maybe there is some huge conspiracy to keep the appeals down.

Those numbers 4 to 3 aren't right, at least considering preappeals too. It is probably 4 to 4 in terms of appeals. The attorneys won two cases of the 4, and the appeals guys won the other two for the applicant without any assist from the attorney. Appeals program = buy a 2nd, 3rd, and 4th pair of eyes program before buying the 5-7th pair of eyes at the board.

Posted by: 6000 at June 24, 2009 1:03 PM

6000,

I see you commented on the MPEP section, naturally enough since we both know that section does not have the rule of Law (but does in fact rule examiner behaviour). You hand wave a response to the rule 1.2, and you seem to have overlooked one specific rule section in your reply: 37 CFR 41.54.

In other words, NO, you are not allowed to go fishing "on your spare time" all you want.

You also seem to not comprehend several specific words:
permit - as in, you need permission
upon sufficient cause - a valid reason is needed -"just because" is not sufficient.
based exclusively on the written record - just like your logic - this is absent.

Finally, aren't you forgeting that your "spare time" should be applied to a backlog?

Posted by: Noise above Law at June 24, 2009 1:18 PM

sweetheart, I'm permitted to search any case I want to at any given time. Abandoned cases, other people's cases, appealed cases, allowed cases, not yet filed cases, non-existant cases, cases that are purely in my mind, ANY CASE. I just can't reopen prosecution until the director says so.

If you feel so strongly about the issue, go to court. Be sure to post a vid of it here for me to lol @ u.

Posted by: 6000 at June 24, 2009 1:27 PM

6000,

You are overlooking one small, but important detail:

The act of searching is a part of prosecution. When a case is closed to prosecution, all acts of prosecution are no longer allowed. This is why you are probably glibly overlooking 37 CFR (I am giving you the benefit of the doubt), and the requirement for the examiner to obtain permission prior to engaging in any type of prosecution (including the act of searching).

Posted by: Noise above Law at June 24, 2009 2:52 PM

As for going to court,...

Since this is a friend's case, I have no standing in the matter to begin with, so even if the matter was ripe, it would not be up to me.

Posted by: Noise above Law at June 24, 2009 2:54 PM

Talk about "closing" and "reopening" prosecution in this context is sheer nonsense; and probably this talk was made up long ago by some unnamed examiner. It doesn't exist in the law. As long as the applicant "persists" with his or her rejected claims, the claims are being prosecuted. See 35 USC 132. When an applicant files an appeal, he, the applicant is "prosecuting" the claims. If an examiner withdraws an earlier rejection or gets reversed, that is not a re-opening of prosecution because persistence with prosecution was never stopped by the applicant. An examiner does not have unilateral power to "close" prosecution if rejected claims remain. (It's a different matter if all claims are allowed. Only then can the examiner declare prosecution to be closed.)

Posted by: step back at June 24, 2009 3:29 PM

"The act of searching is a part of prosecution. When a case is closed to prosecution, all acts of prosecution are no longer allowed. "

Says whom x2? Is that you saying stuff again?

"This is why you are probably glibly overlooking 37 CFR (I am giving you the benefit of the doubt), and the requirement for the examiner to obtain permission prior to engaging in any type of prosecution (including the act of searching)"

Even assuming that you're right, the "sufficient cause" is up to the sole discretion of the director.

Either way, there is no way you can stop an examiner from searching on their own free time via google and mailing the applicant a copy of the reference found anon. May as well not even try. Besides, the applicant himself wants only valid claims.

And yes, stepback, that has been my feelings on the issue as well. Except, even in the case of allowance, the applicant can always come in and disclaim things which basically means prosecution isn't ever really over, it just enters different statutory stages.

Posted by: 6000 at June 24, 2009 3:54 PM

6000,

Sure, I'll buy that the "sufficient cause" is up to the sole discretion of the director (but even that decision can be challenged). A key point that you have yet to acknowledge is that this sufficient cause MUST be of the written record. And this written record is before permission to re-open prosecution.

And you still do not comprehend "permit".

Why is this so difficult for you?


Step back,

Perhaps you should review the Appeal regulations, as you seem to want to constrain the discussion to 35 USC, but you need to look at 37 CFR to place yourself in the proper context. A good clue is that 6 agrees with you.

Posted by: Noise above Law at June 24, 2009 7:15 PM

"A key point that you have yet to acknowledge is that this sufficient cause MUST be of the written record."

You put words into the requirement in order to make it say that it has to be of record before the reopening occurs. Sorry, that's just not how it works. And even if the words actually did require that, that isn't how it is in practice. Sorry, it just isn't.

To walk you through this slowly consider:

§1.198 Reopening after a final decision of the Board of Patent Appeals and Interferences.

When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

That does not control when he can search. He could search all through the appeal. Or, perhaps the judges found some small feature lacking from the reference that was notoriously old in the art and the examiner knew of a reference off the top of his head to address that small limitation. In either event, he will then have plenty of cause to reopen. Or, in the alternative, his cause could simply be that the claims are very broad, and perhaps the director agrees with him and thus authorizes the reopening regardless of the examiner having any not yet considered evidence on hand.


"§41.54 Action following decision.

After decision by the Board, the proceeding will be returned to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the proceeding may require, to carry into effect the decision."

That simply says that action will need to be taken to carry into effect the decision. That action can be a lot of things, including fishing>reopening.


"Why is this so difficult for you?"

Because you are being purposefully obtuse, as usual :( Even when this sort of thing happens routinely, and you know there is no such issues as you're making out. A good clue here is that JD, Eugene, etc. aren't running to jump on your bandwagon, if there were such issues then I assure you they would. If you don't believe me on this issue, simply ask them. Or ask your supervising attorney.

In the end though NAL, you think we give a flying frak? I'm in your PTO reopening your prosecutions :) Plus, we make the rules don't we? If we want to change procedure etc, we can just change the rules. You're operatin' in mah procedural territory, be careful.

Posted by: 6 at June 25, 2009 3:34 AM

6,

Reading comprehension still eludes you.

You state "That does not control when he can search. He could search all through the appeal."
- Read again. In this particular case, the appeal was done and the Boards' answer had been delivered for a month.

“Or, perhaps the judges found some small feature lacking from the reference that was notoriously old in the art and the examiner knew of a reference off the top of his head to address that small limitation."
- Read again. In this example there was no such finding. As I said upthread, "Other than the appealed rejections, application was in condition for allowance. Board was fairly brutal to the Examiner, completely reversing of all examiner’s arguments and rejections based on multiple 103(a)’s. Reverse – not remand - Period."

I understand that the fact situation paints a grim picture for how you want to understand the situation, but please, stop trying to add new facts that are simply not there. Briar patch 6 – same old tricks.

“his cause could simply be that the claims are very broad, and perhaps the director agrees with him and thus authorizes the reopening regardless of the examiner having any not yet considered evidence on hand.”
- Again, you are ignoring the specific rules and the requirements of those rules – Broadness of claims is not a sufficient cause. Broadness of claims is not a concern on the record. There is NO sufficient cause being shown on the record for any reason to re-open prior to the fishing trip. Go back and read the situation again 6.

“That simply says that action will need to be taken to carry into effect the decision. That action can be a lot of things, including fishing>reopening.”
- Read again. The effect of the decision is that the application is in state for allowance. That is the ONLY thing the examiner is allowed to do. You ignore the rules I laid out for you with your hand-waiving and non-substantiated “including fishing>reopening” (which should read fishing=f(reopening) – another briar patch move).

“and you know there is no such issues as you're making out.”
- But there is – this situation is exactly as I have laid out.

"Why is this so difficult for you?" - Because you are being purposefully obtuse, as usual :(
- nothing obtuse about my position. My logic is clear and supported by the rules. Your position, well that’s quite a different matter, adding mis-facts and empty rhetoric while ignoring the rules.


“…we make the rules don't we? If we want to change procedure etc, we can just change the rules. You're operatin' in mah procedural territory, be careful.”
- my poor 6, the rules are made – whether the Office makes them or not is a red herring. The point, quite simply, is that the Office must follow the rules. Your briar patch obfuscations aside, you have not answered my post. You show no logic or no sustained argument regarding the rules as they exist today. The best you can do is try to add mitigating facts, which don’t apply and misleading rhetoric to hide the fact that you, the examiner, MUST have permission to reopen prosecution, which includes conducting a new search, after an appeal board decision as the fact pattern has been laid forth, and that permission must be based on sufficient cause as shown by the written record.

Posted by: Noise above Law at June 25, 2009 4:21 AM

6 and his opposites ignores the real problem with the Appeals process... the inability or unwillingness of the PTO to render a final administrative decision.

IIRC, w/o a "final administrative decision" that shows that ALL administrative avenues and resources are exhausted an applicant can't take the case to court. Of course, this a bit illusory as we all know clients are never willing to go to court.

But the problem remains, you can never get a final answer out of the PTO.
Dealing with the PTO is like a game of Wack-A-Mole.
There needs to be a way to get the PTO to commit to a rejection. To have them say, "This is the best we've got. If you can beat it, you win."
Not the current state, which is "This is what I got this afternoon. Beat it, and I'll come up with something else."

We both give lip-service to generating "quality patents" but the truth is PTO rejections have become arbitrary and capricious, and even worse meaningless.
Which I admit makes my job easier, as a well done rejection is the hardest things to argue against.
Prosecution estoppel, money and time hem the applicant in. The PTO can just play this game forever.

Posted by: EvilDave at June 25, 2009 5:08 AM

"A good clue here is that JD, Eugene, etc. aren't running to jump on your bandwagon"

I agree with NAL. Whether that means I'm jumping on the bandwagon, I'm not sure.

6 is simply blustering, NAL. I've had prosecution re-opened after a complete reversal by the Board in one application. The fuss we raised with the TC Director makes me think that particular idiot (Mr. O...) will probably think twice, maybe 3, 4 or 5 times, before agreeing to sign off on re-opening after a Board reversal.

6 is very fond of the idea that those of us in the patent bar should feel free to pick up the phone and call the PTO to resolve issues. I couldn't agree with him more. Feel free to pick up the phone every chance you get and call your local TC Director and let 'em know what's going on in your cases. I think you'll be pleasantly surprised at the reaction you get.

And if you aren't, remember that Rule 3 lets you place letters, written with decorum and courtesy, in the personnel files of those who can't find it in their heart to obey the Rules and the MPEP. If you think having a bad record at the Board hurts a SPE or TC Director's rating, imagine what a well drafted, and well supported, letter of complaint placed in their file does.

Gets their attention.

Trust me.

Posted by: JohnDarling at June 25, 2009 6:04 AM

"The fuss we raised with the TC Director makes me think that particular idiot (Mr. O...) will probably think twice, maybe 3, 4 or 5 times, before agreeing to sign off on re-opening after a Board reversal."

I didn't see you agree with her position, other than saying that you agree with her position. It seems to me that you just like the idea of her position being right and hope that it justifies your complaining. Even as you already know that what she presents is not legitimate.

Perhaps it was perfectly legitimate complaining, but not on her grounds. Reopening after a board reversal is completely follows the MPEP. If it makes you feel better, you can imagine that mystery man 6 sent your examiner the reference as I did for Wheeler.

Directors already think twice about reopening. Even before the board's decision.

If you don't mind showing me how to find these secret files I would be obliged JD.

Posted by: 6 at June 25, 2009 8:43 AM

More Briar 6 nonsense:

"Reopening after a board reversal is completely follows the MPEP."

Compare to previous 6 quote:

"MPEP has no force of law."


C'mon 6, stop running, and stop with the hand-waiving "that's not legitimate" non-arguments. Answer the direct points as posited under 37 CFR. Again, without the obvious briar 6 tricks of interjecting non-real "facts" such as mystery men sending references to examiners, the fact pattern is what it is.

Posted by: Noise above Law at June 25, 2009 8:59 AM

"the inability or unwillingness of the PTO to render a final administrative decision."

I render final decisions every week. Then you guys buy another, and another, and another consideration. The only "problem" here is that the statute permits so much appealing.

"There needs to be a way to get the PTO to commit to a rejection."

Agree to pay them enough to let me have 60 hours to dispose of your case. I'll write you up nearly every possible rejection (a practice which you will hate responding to anyway) and find every single reference that I'll ever search for. You'll get a final answer.

Note here that what I describe above is what happens in the majority of my cases as they go through 1 or 2 RCE's and my position is eventually overcome by amendments.


"- Read again. In this particular case, the appeal was done and the Boards' answer had been delivered for a month."

How do you know when he did additional searching? Oh yea, you don't.

"- Read again. In this example there was no such finding. As I said upthread, "Other than the appealed rejections, application was in condition for allowance. Board was fairly brutal to the Examiner, completely reversing of all examiner’s arguments and rejections based on multiple 103(a)’s. Reverse – not remand - Period.""

That doesn't mean the only thing wrong was not just perhaps one missing element.

"I understand that the fact situation paints a grim picture for how you want to understand the situation, but please, stop trying to add new facts that are simply not there. Briar patch 6 – same old tricks."

I'm not arguing just your example, I'm arguing your position on what the regulations require in total.

"Again, you are ignoring the specific rules and the requirements of those rules – Broadness of claims is not a sufficient cause."

By your own admission what "sufficient cause" is is entirely up to the director.

"Broadness of claims is not a concern on the record. "

Breadth of claims is a concern from day 1 of the record.

"The effect of the decision is that the application is in state for allowance."

LOL WUT? Show me where it says such lunacy.

"My logic is clear and supported by the rules."

Your "logic" relies on misreading the rules. Sorry. You're being obtuse as to your reading the rules in a manner in which they were never intended to mean. And if they were, then they should be amended by the office post haste to account for such an oversight.

"The point, quite simply, is that the Office must follow the rules."

When you get to decide what the proper interpretation of a rule is (as the office is entitled to do) you can get murder someone if the rule is not to murder people. Well, what that rule really means is not to murder people during the daytime, and I murdered someone at night. Subject to judicial review I'd imagine, so you should definitely take the murderer to court.

Posted by: 6 at June 25, 2009 9:00 AM

"Reopening after a board reversal is completely follows the MPEP."

I think NAL's argument is that, while Rule 198 allows re-opening, and sets the standard, the MPEP further defines when re-opening is permissible, and what examiner activities are permissible post-reversal, and that the standard must be followed, but probably isn't.

In the situation I described, I called the exmainer six months after the Board decision reversing all of the rejections. I asked when I could expect my notice of allowance. The examiner told me a new Office Action would be issued. I called the idiot TC Director and he told me, and two partners who were with me on speaker phone, "I'm gonna sign whatever the examiner brings me." It was clear he had no idea what the standard for re-opening was. And didn't care.

We put that "I'm gonna sign whatever..." quote in our Rule 3 letter. From the letter we got back from the Commissioner the idiot denied saying that, despite the fact that three members of the patent bar were listening to him rather attentively and all three wrote it down exactly as he said it. That TC Director is a lying sack of doo doo. Another knownothingdonothinguselessdeadweight amongst the legions of knownothingdonothinguselessdeadweights.

6, I don't know where they keep those files. If I did, I'd be down in the basement with Carl the janitor looking through them (was rewatching "The Breakfast Club" the other night, just an absolute classic).

Posted by: JohnDarling at June 25, 2009 9:03 AM

"From the letter we got back from the Commissioner the idiot denied saying that, despite the fact that three members of the patent bar were listening to him rather attentively and all three wrote it down exactly as he said it."

I appreciate the quote, but I'm afraid that without sufficient context I'm unable to support you whole heartedly on this particular issue.

"I think NAL's argument is that, while Rule 198 allows re-opening, and sets the standard, the MPEP further defines when re-opening is permissible, and what examiner activities are permissible post-reversal, and that the standard must be followed, but probably isn't."

If that were her whole opinion then I would probably agree. She goes one step further however and indicates that searching is not allowed prior to getting the director's approval. I must dissent as that is plainly nowhere forbidden, or even implicitly forbidden.

In re the file it's too bad that FOIA can get you everything except the important things.

Posted by: 6000 at June 25, 2009 10:06 AM

"She goes one step further however and indicates that searching is not allowed prior to getting the director's approval."

NAL is correct on that. The MPEP section she quoted explained it quite clearly: the examiner is not to view getting reversed as a challenge to do another search. If the examiner KNOWS of a particular prior art reference that is relevant, then prosecution may be re-opened. Of course, if the examiner KNOWS (i.e. has knowledge of) a reference, no searching is required, or permitted.

The MPEP does not have force of law. It does bind the PTO though. Or it should. Unfortunately the PTO is overrun with people who have no respect for the law. From the top down.

That idiot TC Director has a new, even more useless title/position now. He's a useless sack of crap. Perfect (mis)management material.

Posted by: JohnDarling at June 25, 2009 10:11 AM

"the examiner is not to view getting reversed as a challenge to do another search"

Not regarding something as a challenge does not equal the action in question being forbidden. I view regarding it as a challenge as a bonus that I could or could not live without. I believe that line is in there more so that the examiner doesn't keep searching because he beleives that it is his duty rather than restricting what he can (or even should) do. Certainly stronger language would be simple to use if that were the intention. Any rational person writting such a rule, or section in the MPEP, with such an intention in mind would plainly make it unmistakable rather than beating around the bush.

I should bring up that it often happens that I will find a reference for a case which I had done previously in searching for another case. Really, it happens more often than an outsider might think. A buddy of mine literally was about to allow a case, just got through talking to his spe about it, went back to his desk, picked up a new case, was searching that and found a great ref for the tiny missing piece of the other case.

By chance, did you know the old director Mindy? Know where she went?

Posted by: 6000 at June 25, 2009 1:09 PM

"I should bring up that it often happens that I will find a reference for a case which I had done previously in searching for another case. Really, it happens more often than an outsider might think."

I know that happens. Happens to us out here too. The instance of it happening on a case that has gone all the way to appeal should be rather rare though.

I don't know Mindy. Not sure if I've ever heard of a TC Director leaving the PTO except for retirement. Getting paid to do nothing is a pretty sweet gig. Why would anybody give that up?

Posted by: JohnDarling at June 25, 2009 1:28 PM

MPEP 1214.04 - The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.

"I believe that line is in there more so that the examiner doesn't keep searching because he beleives that it is his duty rather than restricting what he can (or even should) do."

You'd be wrong. It clearly says the examiner is not to consider a reversal as a challenge to conduct another search. It's fairly clear that the MPEP is not telling the examiner that reversal means his/her duty to continue the search is discharged. It means what it says: you were reversed, let it go.

"Certainly stronger language would be simple to use if that were the intention."

Hard to think of a stronger word than "never."

"Any rational person writting such a rule, or section in the MPEP, with such an intention in mind would plainly make it unmistakable rather than beating around the bush."

The PTO writes the MPEP. So we can pretty much rest assured it wasn't written by anybody that is rational. It was written that way for the exact reason I always say: the PTO believes they should have an unlimited number of opportunities to get it wrong. So when an examiner does exactly what the MPEP says he/she "should" never do, the knownothingdonothinguselessdeadweightidiot(mis)management class over there can tell the applicant, "Well, even though the examiner should not have done another search, the damage is done and we don't get paid to actually know or do anything, so all we can tell you is we're sorry, but that's the way it is over here. We're incompetent, lazy, corrupt, and generally useless, but we're the only patent office in town."

And they get paid for that!

Easiest gig in the entire world. I'm continually amazed by the people from the PTO who whine about how overworked and underpaid they are. Getting paid GS-15+ money to do absolutely nothing, and they're complaining.

Disgraceful.

Posted by: JohnDarling at June 25, 2009 1:57 PM

"It's fairly clear that the MPEP is not telling the examiner that reversal means his/her duty to continue the search is discharged. It means what it says: you were reversed, let it go."

I have to respectfully disagree. You're reading words into the sentence that do not exist. You start out good, with the part about the duty being discharged, but then you tack on some things that aren't there when stating what it means.

That's your right to believe that, and I won't refute it. However, I predict you'd have a tough time before Rader et al. with your expanded interpretation.

He'd ask you one question, "where, specifically, does it state "let it go"?". And you'd stammer, like so many other attorneys before him, "well, well, nowhere, but the intention is plainly ..." at which point he would cut you off and say "thank you, that is all". Let's be real JD, that kind of thing happens all the time, you know how he is. For kicks he might throw in a jab about the PTO getting to decide what the intention is since they're the agency that writes the rules and you know what the PTO attorney will argue the sentence means.

"Hard to think of a stronger word than "never.""

It's not hard to think of stronger words than "should not". "shall not" for instance. Or, perhaps simply have the sentence say, the examiner can reopen prosecution only relying on information already of record, or information found accidentally. Or, simplest of all, have the sentence say that the examiner may not search after the board renders a decision. All this mess about "a challenge" and ridiculousness could be safely taken out so as not to cloud the issue. Easy as pie to think of stronger wording to say what you're implying.

"So when an examiner does exactly what the MPEP says he/she "should" never do, the knownothingdonothinguselessdeadweightidiot(mis)management class over there can tell the applicant, "Well, even though the examiner should not have done another search, the damage is done and we don't get paid to actually know or do anything, so all we can tell you is we're sorry, but that's the way it is over here. We're incompetent, lazy, corrupt, and generally useless, but we're the only patent office in town.""

Indeed, but I believe that would be taking it a bit too far.

Idk man, I feel like they get paid simply to bear stress and put on a happy face, while occasionally making a decision.

"I don't know Mindy. Not sure if I've ever heard of a TC Director leaving the PTO except for retirement. Getting paid to do nothing is a pretty sweet gig. Why would anybody give that up? "

I think she might have been fired, forced to resign, or perhaps she found a position outside the PTO. She was the director of the academy when I first started. Divorced, 40ish, nice, and pretty hot. I talked to her a few times coming into and out of work etc, and saw her in a few meetings. Total crush on her lol. In any case, she was a total busybody, you know the type, filled with energy, so perhaps doing nothing wasn't her cup of coffee.

In any event, we'll have to agree to disagree, but NAL got her a bit of support. Go out there and get a bit more and take it to the courts gal, I'm sure you'll get a test case eventually.

Posted by: 6000 at June 25, 2009 2:39 PM

John Darling has it. “Unfortunately the PTO is overrun with people who have no respect for the law. From the top down.”

R-E-S-P-E-C-T. 6 doesn’t respect the Law. 6 doesn’t comprehend the Law. 6 doesn’t even comprehend that he doesn’t comprehend. Merely a loud boisterous fool, who cannot get out of the way of his own illogic.

Briar 6, with no answer to the facts presented, now spins it that he is “…not arguing just your example, I'm arguing your position on what the regulations require in total.”

One step at a time 6, the fact set presented challenges you enough. Let’s see you understand the 37 CFR rules in a specific context, before you try to understand them in a larger view. And remember – this is the CFR, and NOT the MPEP.


But let’s dispense with more 6 obfuscation:

"- Read again. In this particular case, the appeal was done and the Boards' answer had been delivered for a month."
How do you know when he did additional searching? Oh yea, you don't.

- um yea, I do. The search is of record and dated. That’s why it is presented as a fact. It is a fact of written record.

“That doesn't mean the only thing wrong was not just perhaps one missing element.”
“Breadth of claims is a concern from day 1 of the record.”

- Stick to the facts, 6. They are accurate for the case at hand. Your briar patch trick of introducing stray “possible” facts don’t belong to the discussion. “…one missing element” - not part of the written record. “Breadth of claims” - a red herring and like breadth, enablement, and the rest of the Law may be typical concerns throughout prosecution. But be clear – from B) below, prosecution was closed after the Board had ruled and Breadth of claims was not a concern at the specific point in time. How do I know? - Um, because that is the fact set from the written record.

“Your "logic" relies on misreading the rules”
- you have shown only hand-waving on 37 CFR. You have not shown how I have misread the rules, but only claim that I have. You have repeatedly avoided discussing such things as “permitted”. You have not addressed the context of the fact pattern and tried to weasel into some nebulous “any” situation. You have chosen to ignore that searching is an act of prosecution. My logic is clear and you see all the cards. The trick is for you to actually confront the truth of the matter. You do not seem capable of it, are you man enough to try again?

“She goes one step further however and indicates that searching is not allowed prior to getting the director's approval. I must dissent as that is plainly nowhere forbidden, or even implicitly forbidden.”
- Reading comprehension, 6. You even quote back the form paragraph where it is forbidden (and in the Rules, NOT the MPEP), but clearly cannot diagram a sentence. Sorry, it just IS.
- To walk you through this slowly consider (take as many breaks as your mind needs). I have posted this before, but will break it into baby steps so you can follow along:

§1.198 Reopening after a final decision of the Board of Patent Appeals and Interferences.

- A) When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review,
o The Board’s decision was final per the facts given.

- B) prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner
o Implicitly at this point – the prosecution of the proceedings are closed – how else would they be reopened or reconsidered? Explicitly, the only matter open was the matter under appeal. Outside of the matter under appeal, the application was in condition for allowance. How do I know? Um, because that is the fact set – per the written record. Further, “Reconsidered” – implicitly, this means the examiner is precluded from even thinking about this particular case after the Board’s final decision. Your statement about fishing anytime you want is clearly wrong. You CANNOT do what you want, when you want – fishing expeditions are NOT allowed.
- C) except under the provisions of § 1.114 or § 41.50 of this title
o So here are the explicit exceptions that do not require written authority, and which are not pertinent of the facts of this case.
- D) without the written authority of the Director,
o All other cases beyond the explicit exceptions do require written authority to do ANYTHING – as per B) above, prosecution is closed. Diagram the sentence “Starting Y will not be done without X”. Diagramming this basic English sentence, the clear logic is you must have X prior to doing Y.
- E) and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
o And even the authority conferred by the Director’s signature must have sufficient cause shown to the Director, that is, the Director has to see the sufficient cause prior to signing and thus prior to prosecution being reopened.

Let’s quickly jump to 37 CFR 1.2, in pertinent part:
- “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.”
o Thus, the action of the Office, in this case the Director signing his authority, will be based exclusively on the written record in the Office – that written record must capture the sufficient cause that the Director sees and decides upon the sufficiency thereof.

The written capture precedes the signature which precedes the authority to reopen which precedes the reopening which includes the new search. It is thus impossible logically that the fruits of the new search can serve as the written capture which shows the sufficient cause. I’ll bet even you can follow the linear line of logic in this fact set.

Reread once again, 6, the facts of the case. There is no written record between the Board decision and the written record of the new search. How do I know? Um, because these are simply the facts of the matter.

Now, after you understand the logic of the case presented, and after you acknowledge the error of your ways, then maybe we can have a cordial discussion of what the Law means with different sets of facts. I have laid out the facts so that you will not be tempted to jump into your briar patch. Let’s see if you can walk the straight line. Show yourself a little respect.

Posted by: Noise above Law at June 25, 2009 3:15 PM

"um yea, I do. The search is of record and dated. That’s why it is presented as a fact. It is a fact of written record."

I write up search reports after the fact all the time because EAST loses them. The fact that it has a date on it is a convienence, not the absolute honest to god, be all end all declaration of when the reference was found.

"They are accurate for the case at hand. Your briar patch trick of introducing stray “possible” facts don’t belong to the discussion."

Fine, no extra facts.

We're going to have to agree to disagree Noise, your whole position rests squarely on what the office or examiners "should" or "shouldn't" do according to the MPEP. A guidance document. If you feel strongly take it to court, tell Rader et al. about it and they'll make you whole again.

Just don't tell me I didn't tell you so before Rader laughs you out of court. All the logic in the world isn't going to save you when that happens.

"Outside of the matter under appeal, the application was in condition for allowance. "

Nice that you made that up all by yourself.

Tell it to Rader.

"How do I know? Um, because that is the fact set – per the written record. "

Did the OA include a setence that says "other than these issues, this application is in condition for allowance?" 100% chance the answer is no, isn't there?

" and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
o And even the authority conferred by the Director’s signature must have sufficient cause shown to the Director, that is, the Director has to see the sufficient cause prior to signing and thus prior to prosecution being reopened. "

How do you know the examiner didn't just go to the director and say "this claim looks broad, I'm pretty sure there is still art out there" and the director looked at the claim and said "ok, that's sufficient cause to me"? Then the examiner went and searched and found you a reference. How do you know that didn't happen? Answer = you don't.

"I’ll bet even you can follow the linear line of logic in this fact set."

Look NAL, I've understood it since you first portrayed it. But you made too many assumptions to arrive at it. Such as, searching ALWAYS being a part of prosecution. But not limited to that. In any event, you don't want to talk about the huge leaps you make to piece together your puzzle, because your puzzle crumbles if even one piece isn't there. Trust me, your biggest worry is the huge leap about "sufficient cause" and it needing to be based upon a reference, rather than upon the claims themselves. Remember, the PTO can interpret this rule practically however they like...

In any case, you're a funny gal, and you really have got it all figured out, now go, and get the courts to back you. While you're at it, see if you can do something about appeals specialists making me reopen my appeals based on issues not even of record.

You want to go to a show this weekend? You don't mind if another girl joins us do you? ;)

Posted by: 6000 at June 25, 2009 4:21 PM

6,

The short straight path was too difficult for you. I will take your continued reliance on inserting facts not of the record and purposeful misconstruing of my argument, as well as your lack of addressing 37 CFR as an affirmative agreement with my position.

Feel free to actually address my points if you can.

Posted by: Noise above Law at June 26, 2009 3:34 AM

"I believe that line is in there more so that the examiner doesn't keep searching because he beleives that it is his duty rather than restricting what he can (or even should) do."

Please explain how you interpret "The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references" as "the examiner doesn't keep searching because he beleives that it is his duty rather than restricting what he can (or even should) do."

I know I've criticized your reading comprehension quite a bit, but when you give me ammunition like this, can you blame me?

Posted by: JohnDarling at June 26, 2009 5:21 AM

"Please explain how you interpret "The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references" as "the examiner doesn't keep searching because he beleives that it is his duty rather than restricting what he can (or even should) do.""

That's not a direct interpretation. I said that was the reason the line was put in. It was put in to tell the examiner that there is no reason to feel that the courts are being arseholes and so he should just find new references to show that the patent app was bad either way, and to make it clear that there was no obligation to examiners that they should feel as if they're obligated to prove the court wrong by making another search.

Like I said, the line is not necessarily to be interpreted the way you want it to be, the plain language of it doesn't go so far as to prohibit the new search, it reinforces that, while the examiner *should* not take the reversal as insulting or a challenge to find better art or anything of that nature, nothing is prohibited.

If you feel differently, tell it to Rader and his buddies. I'm not the one that needs convincing, he is. I'm just standing here telling you that you have no basis in the rules or MPEP for your complaint. There MIGHT be a standing to complain if the examiner straight up tells you "I viewed the reversal as a challenge to find better art". Because you could say that the examiner did something that the MPEP said he shouldn't. Short of that, you don't have a prayer imho. And even then, your chances are analogous a snowflake's chances in hell.

NAL, I'm not adding facts in my last post, I'm pointing out that you have insufficient facts on which to base your complaint. That is, you haven't shown by any standard of evidence, that the examiner actually did what you assert he did. That is, your facts are not well supported. There are no "points" that stand unaddressed, you appear to merely have skipped over my addressing them.

In any event, about that show...

Posted by: 6 at June 26, 2009 9:08 AM

"That's not a direct interpretation."

Obviously.

"I said that was the reason the line was put in."

You'd be wrong.

Posted by: JohnDarling at June 26, 2009 9:41 AM

"NAL, I'm not adding facts in my last post,"

"How do you know the examiner didn't just go to the director and say "this claim looks broad, I'm pretty sure there is still art out there" and the director looked at the claim and said "ok, that's sufficient cause to me"? Then the examiner went and searched and found you a reference. How do you know that didn't happen? Answer = you don't."

please refer to 37 CFR 1.2(again, not the MPEP). Your supposition is not of the record, therefore, you are adding it. You want some possible "discussion" to serve as a matter of record for Office Action. 37 CFR (NOT the MPEP) forbids this. It is not an option.


"your whole position rests squarely on what the office or examiners "should" or "shouldn't" do according to the MPEP."

WRONG - I rested the logic on that particular post squarely on 37 CFR. Reading comprehension 6 - reading comprehension.

Maybe it would help you to draw up an outline and list point by point what you consider to be an assumption and what you consider to be a fact.

Posted by: Noise above Law at June 26, 2009 9:59 AM

"How do you know the examiner didn't just go to the director and say "this claim looks broad, I'm pretty sure there is still art out there" and the director looked at the claim and said "ok, that's sufficient cause to me"? Then the examiner went and searched and found you a reference. How do you know that didn't happen? Answer = you don't."

One would hope that the TC Director would say, "Well, thanks for coming in to my office and admitting to me that you did a half-a$$ed job on this application. I'll be sure to note it on your PAP in October. Not having to pay you a bonus for your 'outstanding quality' work will show the higher ups that I'm doing a great job cutting costs and saving money. More bonus for me."

Posted by: JohnDarling at June 26, 2009 10:04 AM

Wow, dude. You got smoked, by a chick no less.

Hey, I'll buy the first round tonight 6.

Posted by: Einstein drinking with 6 at June 26, 2009 2:05 PM

"Your supposition is not of the record,"

My point is that your supposition is not of record either. You are supposing that what I propose did not happen. That is not of record either way. You lack sufficient evidence to show that the necessary procedure was not followed. Failing you having some evidence, I imagine any court will presume that it was. Especially when the office comes in and says "it was followed".

""discussion" to serve as a matter of record for Office Action."

No I don't. I want the claims themselves to serve as a matter of record on which the reopening was based.

"WRONG - I rested the logic on that particular post squarely on 37 CFR. Reading comprehension 6 - reading comprehension."

Without the MPEP section you fall flat.


§1.198 Reopening after a final decision of the Board of Patent Appeals and Interferences.

"When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown."

You have already admitted this "sufficient cause" is at the director's sole discretion. It can presumably include, "the sky is blue, therefore I shall reopen this case". If the case was reopened, you can rest assured that sufficient cause was shown to him. Perhaps it was the breadth of the claims, a matter already of record. You simply have no evidence of wrongdoing here without the examiner having put you some down on the record. Did he? Or did he not? It is a crucial question which must be asked. You haven't added that as one of the facts just yet, so I don't know. However, I surmise that, when you get around to addressing this crucial fact, the resulting admission on your part will swing the case in my direction. Far in my direction.

"37 CFR 1.2"

"The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt."

This says that the concern must be of record. Maybe that's what it says. For this purpose I will grant you your view on this section. That means that "the sky is blue" as a reason can no longer be used. However, "I made a typo in the last office action" and "the claims are too broad and are a cause of concern to the office" are perfectly legitimate reasons based upon the record.

In your facts provided, you have not provided what the reason the director relied upon to make his decision was. I therefor presume you lack any facts pertaining to the subject. They are however crucial to a determination of misconduct on the part of the office.

"One would hope that the TC Director would say, "Well, thanks for coming in to my office and admitting to me that you did a half-a$$ed job on this application. I'll be sure to note it on your PAP in October. Not having to pay you a bonus for your 'outstanding quality' work will show the higher ups that I'm doing a great job cutting costs and saving money. More bonus for me.""

Perhaps he did, perhaps he didn't.

"You'd be wrong."

Perhaps, perhaps not.

Posted by: 6 at June 27, 2009 9:36 AM

"Failing you having some evidence, I imagine any court will presume that it was"

The record is as I portrayed. You now presume the court to presume evidence simply not of record. You imagine wrong.

Keep digging 6.

"...says "it was followed". "

"Says" - won't cut it - why don't you get it?
"For this purpose I will grant you your view on this section." - maybe, just maybe, you are starting to get it.


"Without the MPEP section you fall flat."
- WRONG - I don't need the MPEP section. The specific post in discussion (not the first) completely omits the MPEP and still destroys your position. It is YOUR argument that I am using the MPEP - I am not. I need not.

"It can presumably include, "the sky is blue, therefore I shall reopen this case"
- once again, stick to the facts presented. The matter of record does not contain "the sky is blue".

"You simply have no evidence of wrongdoing here without the examiner having put you some down on the record. Did he? Or did he not? It is a crucial question which must be asked. You haven't added that as one of the facts just yet"
- WRONG - I have given you the complete record, including the clear and unmistakable fact of the record that there is NO record between the decision of the Board and the record of a new search. C'mon 6, how many times will you try to slip in "facts" not there to support your position? Radar would give you one shot, your first, and the second time that you try, you'd be bounced. How many times in our discussion have you tried to do this?


"I made a typo in the last office action" and "the claims are too broad and are a cause of concern to the office" "
- neither of which are of record and both of which are, once again, added 6 "facts". Keep trying.

"you have not provided what the reason the director relied upon to make his decision was. I therefor presume you lack any facts pertaining to the subject."
- You presume incorrectly. All facts of record have been shared - that's why the beef - there is no reason pre-re-opening of written record for any reason the director relied upon to make his decision. The single only reason from the examiner is the result of the fishing trip. This was explained way back in the very first post - this is why I keep harping on you regarding your lack of reading comprehension. You are so eager to fortify your position, no matter how wrong it is, that you cannot read plain English without getting it wrong.

It is rather amazing that you asserted that I made too many assumptions when I laid out facts, and now, as the dawn of light peeks into your mind, how many times you type "I presume".

I "presume" that I will be warmly greeted with yet another of your inane responses.

Posted by: Noise above Law at June 27, 2009 11:46 AM

Listen NAL, you don't seem to be seeing the difference between me "inserting" facts, and in you having insufficient facts.

You have insufficient facts. End of story.

"there is no reason pre-re-opening of written record for any reason the director relied upon to make his decision."

The breadth of the claims is not a reason? The breadth of the claims was not of record pre-re-opening? Surely you jest in both instances. The reason not having been made of record is immaterial. Although, if you want it, you could call the examiner and ask what his reason for reopening was.

"The single only reason from the examiner is the result of the fishing trip."

I doubt very much that the action says as much. The action merely includes that reference as a grounds of rejection, you have implied that is the "sufficient cause" relied upon, and you have implied that it was newly found. Those implications do not necessarily follow from the fact that a reference not of record was used as a grounds of rejection. They are merely a possibilities. Very likely possibilities I will grant you, but they're not 100%, and 99.9% doesn't cut it here. The action doesn't say "The reason this prosecution was reopened was this reference, which was just now found in the latest search". Thus, the reason for reopening is unknown even though you pretend to know it as a fact.

Go ahead, ask him why he reopened, but don't be surprised when he says, "well, I've had about 15 references tagged in OACS since FOAM all of which are sufficient to reject the claims over", or "well, the claims seemed too broad to me and the director so he wanted me to search again and I found this reference". And when he does, watch your basis for complaint fly out the window.

"It is rather amazing that you asserted that I made too many assumptions when I laid out facts"

I'm surprised you could get even a 155 on the LSAT with skills like that. Let's talk about what presumptions or assumptions are adequately supported by your facts. Try this:

FACT:

"A reference, which was not made of record prior to a decision by the board, was used in an action after the board reversed the rejection"

PRESUMPTIONS MADE BY NAL:

"The reference is the only reason to reopen."

"The reference was found for the first time in the latest search"

"The latest search took place after the decision, and prior to the examiner having shown sufficient cause to the director"

QUESTION:

Is the fact sufficient to support all of the presumptions made?

ANSWER:

No. None of these presumptions are necessarily true based upon the facts given.

Why is that?

The reference may not be the only sufficient cause to reopen, for instance, it could have been the scope of the claims.

The reference may have been found at FOAM time and never made of record.

The latest search may have taken place after the examiner talked to the director about reopening, having given the sufficient cause of the breadth of the claims.

You need facts to support your presumptions. And you need all of your presumptions intact to have cause to complain. You have insufficient facts to support the presumptions. The fact you have merely makes it a possibility that your presumptions are true. That is insufficient to establish your complaint.

With these presumptions not being well supported, you are left to rely on the MPEP section.

Good luck to you. I'm going to sit by the pool.

Posted by: 6 at June 27, 2009 2:50 PM

6, you did not disappoint me with you inane reach of a reply. Yet again, you have failed to read and comprehend the fact situation that I do know and did present.

“Listen NAL, you don't seem to be seeing the difference between me "inserting" facts, and in you having insufficient facts. You have insufficient facts. End of story. “

- Um no, I have all of the facts – I have discussed this in depth with my friend. You, my oh-ever-so-wrong 6, are making ups facts because the situation paints you wrong and you just can’t bear to admit it. (well, you did admit you were wrong on 37 CFR 1.2, which was a start).


"there is no reason pre-re-opening of written record for any reason the director relied upon to make his decision." The breadth of the claims is not a reason? The breadth of the claims was not of record pre-re-opening? Surely you jest in both instances. The reason not having been made of record is immaterial.
- WRONG – and you had 37 CFR 1.2 in your hands. The record is the ONLY source for facts. Anything not on the record is immaterial. Your attempts to insert “potential facts” simply are not allowed by 37 CFR. Period. If the breadth of claims was material, it had to be of the record. Don’t forget 6, prosecution was closed – end of story – if the Examiner wanted something on the record, he had plenty of time to put it on the record.

"Although, if you want it, you could call the examiner and ask what his reason for reopening was."
- Not needed – see below.

"The single only reason from the examiner is the result of the fishing trip." I doubt very much that the action says as much. The action merely includes that reference as a grounds of rejection, you have implied that is the "sufficient cause" relied upon, and you have implied that it was newly found. Those implications do not necessarily follow from the fact that a reference not of record was used as a grounds of rejection. They are merely a possibilities. Very likely possibilities I will grant you, but they're not 100%, and 99.9% doesn't cut it here. The action doesn't say "The reason this prosecution was reopened was this reference, which was just now found in the latest search". Thus, the reason for reopening is unknown even though you pretend to know it as a fact."
- Oh so wrong 6. The examiner explicitly stated that the prosecution was being reopened because of a specific reference X known by the examiner. The search report by the examiner finding reference X is in the written record and dated one month after the return of the Board’s decision. NO OTHER RATIONALE IS PROVIDED either for re-opening or for the Office Action. I’d say that my portrayal of the facts is indeed 100% in order. NO PRESUMPTION required. These are the facts. Whether you doubt them or not is not material. I did not imply these as facts. I stated them as facts. They are the facts of record. Period. You are at it again presuming otherwise.
- Also, nice briar patch trick of trying to introduce “a reference not of record was used as a grounds of rejection” – Do you proof read what you write?


“Go ahead, ask him why he reopened, but don't be surprised when he says, "well, I've had about 15 references tagged in OACS since FOAM all of which are sufficient to reject the claims over", or "well, the claims seemed too broad to me and the director so he wanted me to search again and I found this reference". And when he does, watch your basis for complaint fly out the window. “

- One of the reasons why RULE 37 CFR 1.2 is in place is so that no one has to depend on he-said/she-said impossible-to-prove circumstances. You almost had the rule in your meager grasp. Try again. You will see that there will be no complaint flying out of windows based on what actions by the Office (including the DIrector) can be based exclusively on. Or does the meaning of that phrase escape you? "Exclusive" is a pretty straightforward word, and not from the MPEP.

Try understanding the rules before you confuse yourself over what is fact and what is presumption. That lesson is next.

Posted by: Noise above Law at June 27, 2009 5:02 PM

6, A lesson in facts:

"It is rather amazing that you asserted that I made too many assumptions when I laid out facts" I'm surprised you could get even a 155 on the LSAT with skills like that.

- That's funny - your lack of logic is legendary.


“Let's talk about what presumptions or assumptions are adequately supported by your facts. Try this:”

- Your statement of fact is a little sparse. I have fixed it for you:

This:
"A reference, which was not made of record prior to a decision by the board, was used in an action after the board reversed the rejection".

Becomes:
“A reference, which was not made of record prior to a decision by the board, and only made of record one month after the board decision which reversed (not remanded) all remaining rejections of the claims, was used to support the reopening of prosecution wherein the only item of record to support reopening was the fruits of the search ran after the board’s decision."


PRESUMPTIONS MADE BY NAL:

"The reference is the only reason to reopen."

- NOT A PRESUMPTION – this is stated by the examiner. It is the only written item of record.


"The reference was found for the first time in the latest search"

- NOT A PRESUMPTION – the reference is listed on the search report, which is dated one month after the return of the Board’s decision. It is the first time the reference appears anywhere in the written record.


"The latest search took place after the decision, and prior to the examiner having shown sufficient cause to the director"

- NOT A PRESUMPTION – The fruit of the search is the ONLY item of record. It is the only item offered as a reason to reopen prosecution. No other reason is offered. No other reason is on the record. Its date is one month after the board decision. Prosecution was closed at that time. Sufficient cause (on the record) MUST be shown PRIOR to reopening prosecution in order for the director to approve reopening prosecution. This is clearly outlined in my beginning posts, as well as in the post with baby-step straight-line logic, which you failed to comprehend – Reading comprehension 6 – try it.

So 6, all of what you think are presumptions are facts in the situation. I have not implied anything as fact that is not, indeed fact. I do appreciate your effort in listing what you think are presumptions and what you think are facts, even though the facts are as I have stated, and have been so since my first post. You can still call them presumptions if you want, but you will only be continuing to delude yourself.

As I keep saying, the fact pattern is as I have described it. I have made no presumptions.


Yet you persist:

“The reference may not be the only sufficient cause to reopen, for instance, it could have been the scope of the claims.”

- WRONG – this would have to be of the record prior to reopening. We have gone over this many times – the application was in condition for allowance except for the items under Appeal. There was nothing of record between the illegal search and the board’s decision. That is what the written record shows. And according to 37 CFR 1.2, that alone (the written record) is what the Director is allowed to go on.


“The reference may have been found at FOAM time and never made of record.”

- 6, consider yourself bounced. Remember 37 CFR 1.2? EVEN IF reference found at FOAM, the mere fact that it was not made of record clearly places it outside of what can be considered. What is the rule? 37 CFR 1.2 That is the Rule. – go back and read it again.


“The latest search may have taken place after the examiner talked to the director about reopening, having given the sufficient cause of the breadth of the claims. “

- WRONG - again you try to insert a “fact” not in the record. What an examiner SAYS after the appeal board has returned its verdict and the prosecution is closed is immaterial. Prosecution is closed. The record is closed. The Office can ONLY act on the written record. - 37 CFR 1.2 – go back and read it again


“You have insufficient facts to support the presumptions.”

- WRONG – I have the record. The record is where I obtain my facts – no presumptions required. It is you who constantly try to sneak in new or different things not of the record in order to make the situation fit how you want to read the rules. It is you who continue to fabricate presumptions out of thins air with no basis in the record and try to pass them off as legitimate actions. It simply doesn’t work that way. You are simply wrong.


“…you are left to rely on the MPEP section. “
- “Not - even - close, - Bud” (kudos’ to John Darling for the Breakfast Club link.

6, you keep on trying to put things in with “could have beens” – It is you, not me that continue to presume and continue to ignore the fact pattern as it is. Your attempts at presuming extra facts, which I keep telling you, are not there clearly shows that you have nothing left in your bag of tricks.

The briar patch has withered and the wind has turned it into a tumbleweed – there it goes across the vast empty desert of 6’s mind.

Posted by: Noise above Law at June 27, 2009 5:16 PM

"If the breadth of claims was material, it had to be of the record."

Breadth of the claims is ALWAYS material, and it is ALWAYS of record.

"if the Examiner wanted something on the record, he had plenty of time to put it on the record."

You already put it on record simply by filing the claims in the first place.

"The examiner explicitly stated that the prosecution was being reopened because of a specific reference X known by the examiner."

"Known to the examiner", not "found by the examiner after prosecution was closed". If that is verbatim, it just goes to show how weak your evidence is. You don't know how that reference came to be known by the examiner. But thank you for finally providing most pertinent information to this inquiry. Good thing for me you didn't have stronger facts. If you did, you might actually have won. Probably not though, because the office can always say "oh, well we also reopened because of the breadth of the claims", withdraw that action, and the reopening, and reopen based on the breadth of the claims, run the search, get the reference, and reject you again.

This is why procedural issues like this one are folly to fight.

"NO OTHER RATIONALE IS PROVIDED either for re-opening or for the Office Action."

He doesn't have to provide the rationale to you, he merely has to present it to the director. And he certainly doesn't have to write it down for the record. He can present that in private. And he has to base his rationale on something of record. Either a mysterious reference given to him by 6, or the breadth of the claims, or something else, perhaps a typo in the last action. Bottom line is, you don't know what the rationale was, and he isn't obliged to tell you. He probably would be generous enough to tell you though.

"NO PRESUMPTION required"

Even after adding that crucial factoid above, you're still making presumptions:

inter alia: "I presume the examiner first found this reference in the new search, since he included a search report dated after the board decision."

This is not supported by the facts. 6 could have dropped the reference on his desk and then he showed it to the director, reopened, ran a search in that area, refound the reference and then sent out the action.

"The search report by the examiner finding reference X is in the written record and dated one month after the return of the Board’s decision."

Are you sure that the reference wasn't also turned up in the previous searches? You have no facts to tell us either way. Your search report is evidence of squat except that he conducted a search. That is not evidence that he found the reference, for the first time, in that search.

"Also, nice briar patch trick of trying to introduce “a reference not of record was used as a grounds of rejection” – Do you proof read what you write?"

You already said that the reference on which the new rejection was based wasn't of record as of the time the board made their decision. At least I thought you said that.

When, precisely, was the first time the reference showed up in the record?

"One of the reasons why RULE 37 CFR 1.2 is in place is so that no one has to depend on he-said/she-said impossible-to-prove circumstances. You almost had the rule in your meager grasp. Try again. You will see that there will be no complaint flying out of windows based on what actions by the Office (including the DIrector) can be based exclusively on. Or does the meaning of that phrase escape you? "Exclusive" is a pretty straightforward word, and not from the MPEP."

I think you actually believe that the examiner must tell you what the "sufficient cause" to reopen was.

HAHAHHAHAHAHAHAHAHAHAHHAHAHAHAHAHAHAHAHAHHAHAHAHAHAHHAHAHAHAH

That's between him and his director. If he wants to tell you, then fine, but he doesn't have to and he certainly doesn't have to write it down. Our internal discussions do not have to be made of record. Such an implication from that rule is ludicrous. What's next? Do all my discussions with my spe about patentability have to have a transcript taken and put on the record?

Let me boil this down to two points for you:

You have no evidence directed towards when the reference was first found. The search report merely suggests that the reference was found then, it does not assure that it was.

You have no evidence directed towards what the "sufficient cause" was which he relied upon to convince the director.

That is, unless you'd like to add some further facts to the discussion.

You're too funny NAL. I've got to get ready to go, ttyl.

Posted by: 6 at June 27, 2009 5:51 PM

btw nal, something else just struck me.

if reference 7101929 (example) is shown directly in the search report, then that means he typed it in by hand. For instance the report might say 7101929.pn. which means "find specifically the patent 7101929". The reason we type them in by hand is to view them when we already know of them from somewhere else. It is likely that his spe, or a primary told him of the reference without him having first done a search. Or, he found it while searching another case, wrote down the number, and then plugged it in to look at the reference later when he viewed the board decision.

in other words, he likely already knew about the reference before searching if the report shows specifically the number of the patent.

The other reason he may have typed it in is he found it in google, and then put it in EAST to view it easier. Depending on your art, this is more or less likely.

Posted by: 6 at June 27, 2009 6:02 PM

6,

Your post is meaningless dribble and you still fail to account for the rules.

Or what I have told you.

"You don't know how that reference came to be known by the examiner. " I told you - it is in the results of the illegally run search report. I told you this many times.

"Are you sure that the reference wasn't also turned up in the previous searches? You have no facts to tell us either way." I did tell you the FACT that the reference FIRST showed up in the documented search report run after the board's decision and after prosecution was closed.

"You have no evidence directed towards when the reference was first found."
You mean other than the evidence as supplied by the examiner? (That's a Perry Mason moment for you). If you want evidnece of a made up fantasy date that is not part of the written record and thus (yawn - once again): Rule 37 CFR 1.2 - prohibits fantasy made up dates of when a reference was or was not found. There's a reason why the rule limits ALL action the Patent Office can take.

I don't need to type in yet again rule 37 CFR 1.2, for you have typed it yourself. I cannot make you understand what you refuse to understand.

Your blatent disregard for the rules has no logical response - logic will not work with fools. You can keep typing gibberish and keep hoping that I make a mistake in response, but that won't change either the fact pattern or that you are wrong in your understanding of the rules.

You love to use Judge Radar as an example. With a straight face try using your gobblygook suppositions of off the record imaginings and imagine what he would do with your off the record testimony. As much as you disrespect the Rule of Law, the judges will respect it.


BTW, back a few posts, the Rule was shown to cover "reconsideration" as well as "reopening". So even your lovely made up fantasy talks of off the record considerations are not allowed by rule. I realize that's a 6-trick to spring on you, but since you won't listen to reason, maybe you'll appreciate tricks.

Posted by: Noise above Law at June 27, 2009 7:01 PM

Again I reiterate the points above.

Furthermore, I note that this is not a fight worth your fighting. This is a routine matter and happens in just this fashion "all the time", it is not against the rules. And, even if some judge should get hoodwinked into believing that it was, then 1. the rules will be changed or 2. the office will simply close prosecution in your case, and then reopen it based upon the scope of the claims.

It is a lose/lose for you, so don't even bother.

But like I said, feel free to if you'd really like to, I'd love the lolz of hearing Rader destroy you at oral arguments saying the exact same things which I have here.

That's my final say on the matter. If you want to discuss it further, you can come to Alexandria tonight and I'll get you a drink or two. Bring Chisum and your copy of the MPEP.

Posted by: 6 at June 28, 2009 9:14 AM