« Another Round | Main | Fishy »

July 7, 2009

Unappealing

The USPTO is doing its bit to boost patent prosecutor income while dashing applicant hopes. Thanks to unprecedented rejection rates, appeal filings have spiked 70% this year: 10,870 appeals this fiscal year to 6,385 last year. The PTO cites "controlling case law" as the reason. Appeals are the most expensive bit of prosecution, running to thousands of dollars, with complex appeals costing tens of thousands. The fruits of appeal have soured - in fiscal 2008, 44% of appeals resulted in issuance, down from 66% five years ago, and 71% in 2000.

Posted by Patent Hawk at July 7, 2009 7:54 PM | The Patent Office

Comments

What is the "right" number of appeals to allow? Seems to me that the PTO is getting kinder to Applicants in general. Wasn't it far crueller (or negligent, or asleep at the switch) of the PTO to indulge the "hopes" of individual Applicants who didn't have a decent case? Raising unrealistic expectations, encouraging losers to spend crazy amounts of money on dud patent applications. You know, that sort of thing. Haven't you got to be "cruel" to individual Applicants, in order to be "kind" to society? Or do you always let the kids have everything they crave?

Posted by: MaxDrei at July 7, 2009 10:08 PM

MaxDrei,

Another of your crap posts, albeit baited by the tone of Hawk's article

The Office shouldn't consider "cruelty" or "kindness". Apply the Law and let the chips fall.

THe underlying and unstated point here is that the Office's power grabs and potential rules have had the unintended consequences of channeling applicants, and more specifically applicants' representatives into the higher risk (more money for equal or less chance of success) path in pursuit of patents. There can be no doubt that the reject-reject-reject mentality that the Office equated with "Quality" is the prime driver, creating the "Noise" that these types of statistics show.

Posted by: Noise above Law at July 8, 2009 3:27 AM

Noise, you write "Apply the law...." as if you've in one stroke disposed of any difficulty. But what if the law isn't clear? (And at the moment it isn't at all "clear", is it?)

How does a PTO Examiner "apply" that steaming pile then? Smear it all around? You're well-versed in the subject. Maybe you'll tell us all now?

For the time being, I don't yet see what is so iniquitous about a PTO that rejects bad applications and is driven by notions of "quality". Since the EPO upp-ed its effort on quality control, its work product has got better (and more consistent). Meanwhile, most everybody who disagrees with a rejection decision from an EPO Examiner files an appeal, and there are a lot more EPO Examiners now than there were 10 years ago. Would you say there is a pendulum swinging inside the USPTO that isn't swinging inside the EPO, and the main reason is that the PTO is subject to the courts whereas the EPO isn't?

Posted by: MaxDrei at July 8, 2009 4:21 AM

The "fruits" have appeal have not necessarily soured. It's important to keep in mind that most (80%+) appeals are reopened for prosecution before any action by the BPAI--the same outcome as a total reversal of the examiner. These prosecution reopenings are not accounted for in the PTO/BPAI stats.

Posted by: anonfornow at July 8, 2009 4:42 AM

In the EPO, an ex parte appeal case also gets interlocutory review by the Examining Division, and goes on up to the Board of Appeal only if the Examiners are unmoved by it, which is indeed the case in the overwhelming majority of cases. Thus, to a European audience, your 80% figure is mind-boggling. It rather suggests that the USPTO uses the costs of preparing and filing an appeal as a way to force Applicants into good behaviour. But, what other way does the PTO have at its disposal, to achieve this end?

Posted by: MaxDrei at July 8, 2009 5:01 AM

There you go again, Noise. I agree with MD.

Previous law being applied, e.g. the TSM test, was too strict of a test. It enabled the USPTO to be "kind" to applicants, and let them get away with crap patents. New law, e.g. KSR, rejects the strict TSM test as the only test. Now applicants get the "cruel" treatment. And lets not forget all the art available with PGPUBS. Examiners intuitively know there is a lot of art out there that they *might* not find.

Posted by: Jules at July 8, 2009 5:29 AM

"It rather suggests that the USPTO uses the costs of preparing and filing an appeal as a way to force Applicants into good behaviour. But, what other way does the PTO have at its disposal, to achieve this end?"

What kind of twisted logic did you employ to come up with that statement?

Posted by: Shaking my head at July 8, 2009 5:30 AM

"New law, e.g. KSR, rejects the strict TSM test as the only test. Now applicants get the 'cruel' treatment."

If only what you said was true. The fact of the matter is that the average examiner ignores KSR. The type of rejections that get made are almost identical to the type of rejections that were made prior to KSR.

Occassionally, one will throw out some of the "catch phrases" that were mentioned in KSR (e.g., combining prior art to yield predictable results, simple substitution, applying a known technique, based on design incentives or other market forces) yet few of them actually know that underlying law supporting those rationales. As such, most examiners ignore the statement within KSR that "rejections on obviousness grounds cannot be sustained by merely conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."

When it comes to the BPAI (and I have seen this time and time again), they love to use KSR to affirm a rejection. The problem, however, is that the examiner never provided the "articulated reasoning ...." that is required under KSR. To overcome this inconvenient problem, the BPAI waves it hands, recites some of the catch phrases from KSR I discussed above, and voila ... Examiner affirmed. KSR has simply done away with those inconvenient requirements for "findings of fact" and "analysis" that used to be the source of many Appellant arguments.

Posted by: Shaking my head at July 8, 2009 5:46 AM

"Previous law being applied, e.g. the TSM test, was too strict of a test. It enabled the USPTO to be 'kind' to applicants"

While I'm thinking of it ... the USPTO paid lip-service to the TSM test, pre-KSR, as much as the USPTO pays lip-service to KSR, post-KSR.

Posted by: Shaking my head at July 8, 2009 5:50 AM

Shaking my head,

TWIST: The USPTO is the arbiter of all that is good and proper. They can do no wrong.
NON_TWIST: The BPAI is not a true judicial branch body - they are employed by the Office and are beholding to the Office Agenda.
TWIST: “Quality” no matter how defined by the USPTO is all that matters.
TWIST: The USPTO will employ all means – legal and extra legal to enforce its Agenda, including violating presidential directives and defying OMB guidelines on rule making.
As for logic – that’s a vacuous lot from both the USPTO and MaxDrei.

MaxDrei has fallen into old habits of posting crap and seeing what happens. Of course, Law neophytes such as Jules will readily agree with MaxDrei, as Jules has shown all the grasp of law that 6 has, but does not have the level of sarcasm and tenacity to make a really good train wreck.

My dear Max,
The Law is indeed clear in most regards. What causes the majority of noise that is complained about is the obfuscation caused by the Office trying to bend the Law to suit its preconceived agenda and its varying, but never correct, definition of “quality”. As for the quality of your posts, I call them as I see them – you are in the habit of simply unloading what’s on your mind without thinking through what you are posting. I would hope that the stuff between your ears would be engaged prior to your putting your fingers on the keyboard. If the issue were as you say – the PTO that rejects bad applications and is driven by notions of "quality" – then the uproar wouldn’t be as vociferous or consistent. The issue is that the PTO DOES reject good applications, DOES let bad applications through and DOES makes up the notion of “quality’ only to suit its agenda. IF (and a mighty big if at that), the Office actually aligned “quality” with…, why… Quality, then you wouldn’t have my dulcet tones ringing in your ears when you make thoughtless posts (or at least, the volume would be reduced). If your mind boggles at the 80% appeals figure, it is only because you haven’t been paying attention. Pay attention and think before you post – that is all I ask.

As for the quest you have with the EPO/Courts, you are again tilting at your favorite windmill and trying to make the USPTO and the EPO run by the same rules. They aren’t. They won’t.

Posted by: Noise above Law at July 8, 2009 6:10 AM

Dear Readers: When obviousness depends on subjective opinion and evidence of secondary indications, I expect there to be large numbers of appeals, and large numbers of appeal cases going back into prosecution. I think Applicants and Examiners are victims of judges who can't lay down a test for obviousness that "works" at the mundane level of examining tens of thousands of individual applications for a patent.

And it's the Presumption of Validity that attends the act of grant which makes the mix inflammatory.

Noise, I agree that EPO Rules don't work at the USPTO, and vice versa. Let's agree to throw harmonisation out of the window. I agree I post to incite responses. Otherwise, where's the fun?

I haven't got time to think any more, before I post. If I get it wrong, I can rely on you to correct me, whereby I learn something useful.

Posted by: MaxDrei at July 8, 2009 7:05 AM

but MaxDrei, I'm running out of toilet paper.

Plus, it is actually easier to learn if you use your brain before you post - don't be lazy, that's no way to learn.

Posted by: Noise above Law at July 8, 2009 8:27 AM

Shaking, my twisted logic goes as follows:

1. 80% of appeals go back into prosecution

2. So, something in the appeal must have been effective, to change the mind of the Exr

3. What could it be? Maybe thoughtful argumentation why the claimed subject matter is not obvious.

4. Exactly what the PTO needed all along, to justify a Notice of Allowance.

5. So, forcing the Applicant to appeal serves the purpose of squeezing out of Applicant, for the first time, a convincing presentation on obviousness (which, if presented earlier, would have done the trick).

If you would now do me the favour of explaining where that logic is flawed I will (once again) learn something.

Till then, I will wonder whether, short of appeal, attorneys hold back on the convincing argumentation for fear of putting on the written record something that can be used against their client in litigation but, once they have paid the appeal fee, write it anyway, so as not to fail their client, also on appeal. It's good for the billed hours too.

Posted by: MaxDrei at July 8, 2009 8:44 AM

MD -- I think it's even simpler than that. The reject-reject-reject mentality of past years has now begun to catch up to the USPTO. After seeing repeated Office Actions containing little or no evidence that the examiner has even thought about the invention, applicants are appealing IN ORDER TO GET THE APPLICATION EXAMINED IN THE FIRST PLACE. That's what I'm doing, anyway.

The 80% rate of reopening examination after an appeal may just be evidence of this trend. "Oh, I guess this applicant is actually serious. I'll have to look at this one."

One way of looking deeper into this problem (hint, hint, Dennis!) is to look at the issues being appealed, and how they have changed over the last 10 years. For instance, I am now filing appeals in applications where the only issue is a single-reference obviousness rejection where the reference doesn't disclose all the claim elements, and there are no examiner's arguments regarding how the claims are obvious in view of the reference! And yes, the examiner usually (but not always) re-opens examination when I file that Appeal Brief. To get at the "quality of the rejection" problem, a study would need to look at the issues on appeal as of the time of filing the Appeal Brief (not the Notice of Appeal).

Posted by: Patent_Medicine at July 8, 2009 9:04 AM

"So, forcing the Applicant to appeal serves the purpose of squeezing out of Applicant, for the first time, a convincing presentation on obviousness."

Under US law, the Examiner has the initial burden of presenting evidence of obviousness. As such, it isn't the Applicant that gets squeezed for the first time, it is the Examiner that gets squeezed -- i.e., "put up or shut up." In a large number of those instances, the Examiner caves.

One can present the most convincing arguments ever to an Examiner -- ones that would bring Justice Scalia to his knees weeping -- however, until you force the issue (i.e., appeal), the Examiner has little incentive to consider those arguments. In fact, the Examiner's incentive is to make the response Final and hope or the RCE gravy train to roll in.

It isn't the arguments that convinces the Examiner to reopen. In the vast majority of instances, the arguments being presented are he same arguments that the Examiner previously considered and dismissed .... instead, after attempting to convince their own bretheren (in an appeal conference) that the rejection is proper, the Examiner was shot down and told that the Examiner's rejection is sufficient.

The problem with the USPTO is that instead of allowing the application after being told that the rejection was insufficient, the Examiner goes back and attempts to fix deficiecies that the Examiner should have corrected at the outset. This wastes the resources of both the USPTO and Applicant.

Posted by: Shaking my head at July 8, 2009 9:07 AM

"I will (once again) learn something."

You will learn something once you attempt to apply critical analysis to your thoughts and assumptions.

You hope to convince the US patent community that the EPO has the better solution, but when you, time and time again, establish that your analysis is fundamentally flawed, why would anybody ever take you seriously?

Write seriously and people will take your writings seriously. Write like a fool or someone who just wants to "incite responses," then people with give your writing the weight it is due -- which is little.

Posted by: Shaking my head at July 8, 2009 9:14 AM

Shakin says : "The problem with the USPTO is that instead of allowing the application after being told that the rejection was insufficient, the Examiner goes back and attempts to fix deficiecies that the Examiner should have corrected at the outset. This wastes the resources of both the USPTO and Applicant."

...which makes my point about the Presumption of Validity. The PTO has no business allowing crap claims to issue. The manifest "inefficiencies" are quite clearly caused by the Exr not doing a thorough search in the first place. Now, why's that? Is the workman at fault? Or his tool? Or a lot of both?? Or maybe the Applicant, with his multitude of independent claims??? If so, what's to be done about it. Kappos to the rescue, methinks.

Posted by: MaxDrei at July 8, 2009 9:23 AM

Noise, here's my tip. Please give my writings no weight at all. Don't even read them. Your time is too precious to be spent replying.

The consensus is that the EPO does searching better than the USPTO.

Posted by: MaxDrei at July 8, 2009 9:29 AM

Oops. Sorry Noise. It was Shakin I was intending to address in that last posting.

But it proves your point doesn't it. There I go, sending before thinking, yet again. Good job I'm using a pseudonym.

Posted by: MaxDrei at July 8, 2009 9:32 AM

"KSR has simply done away with those inconvenient requirements for "findings of fact" and "analysis" that used to be the source of many Appellant arguments."

Good thing too eh? Appeal numbers were going way up.

"The problem, however, is that the examiner never provided the "articulated reasoning "

That's not a "problem".

"Under US law, the Examiner has the initial burden of presenting evidence of obviousness."

I don't think you get it bucko. In max's argument, the examiner already presented this. The only reason that their reasoning might be off is in the face of some convincing reasoning otherwise. Which it is up to the applicant to provide.

"One can present the most convincing arguments ever to an Examiner -- ones that would bring Justice Scalia to his knees weeping"

Scalia would never bow to your petty blah blah blah it's not obvious! I totally have support! And other ridiculous nonsense I see every fin day. Don't flatter yourself. He'd turn the law back to "flash of genius" before he'd do such absurdity.

"however, until you force the issue (i.e., appeal), the Examiner has little incentive to consider those arguments"

Other than an immediate count amIrite?

"It isn't the arguments that convinces the Examiner to reopen"

Good thing you were in those appeals conferences with me! Otherwise you couldn't explain in such absurd terms what apparent "convinced" me to reopen.

"In the vast majority of instances, the arguments being presented are he same arguments that the Examiner previously considered and dismissed .... instead, after attempting to convince their own bretheren (in an appeal conference) that the rejection is proper, the Examiner was shot down and told that the Examiner's rejection is sufficient."

Wait a minute, it wasn't the arguments? It was ... the arguments?

You apparently don't have any clue as to what it is, or why the examiner's rejection was deemed INsufficient. And this while I just got through laying it all down just the other day.

"The problem with the USPTO is that instead of allowing the application after being told that the rejection was insufficient, the Examiner goes back and attempts to fix deficiecies that the Examiner should have corrected at the outset."

That's not a problem. That's a feature. And one you should be dam glad to have. If you want to uninstall it, simply double click on your congress.

"This wastes the resources of both the USPTO and Applicant."

It "uses" them, it doesn't necessarily waste them. Don't get your terms mixed up bucko.

Posted by: 6000 at July 8, 2009 9:42 AM

"The PTO has no business allowing crap claims to issue."

Pointing to a different windmill this time. Everybody agrees that "crap claims" should not be allowed. However, an Examiner rejecting claims based upon unsustainable rejections is the issue, and the two are not directly related.

Try to stay on point.

Posted by: Shaking my head at July 8, 2009 10:49 AM

6000

Nice incoherent response. Exactly what I would expect from an Examiner.

BTW - a job that isn't done right the first or second time and takes a third time is "wasting" resources. No wonder the USPTO cannot do their job write, they've got examiners who cannot understand basic English or know enough to open up a dictionary when they are confused as to a term.

Posted by: Shaking my head at July 8, 2009 10:57 AM

Max,

Here is my tip - stop posting until you give what you post some thought. If you ever truly want to learn, you have to start to think. It will make for better questions not just for you but for the larger blogosphere as well.

And as Shaking mentions, when you post without regard to your credibility, you have none. Do you really want to kill your messages when you DO want them to be taken seriously? (indeed I was going to point out that I am not Shakin – but you figured that out – it’s a start).

Also, your “point” on the presumption of validity is crap. While you are correct that the Office has no business in allowing crap claims to issue, there is a separate point than the presumption of validity than the Office doing its job correctly. The presumption is critical to what it means to have a patent. This does require that the Office performs its job as it is supposed to do. All the more reason why I am so vocal when the Office neglects that job in pursuit of its law-changing, power grabbing agenda. As I understand your position on the presumption of validity, patents would have no presumption of validity. Why bother at all with a patent then? Why not have a registration system without examination – instant backlog dissolution. One slight problem: the LAW. Even though it will involve thinking, I will let you figure out why that is a problem.

Posted by: Noise above Law at July 8, 2009 11:50 AM

It's a good thing that there has never been one single case that wasn't done right the first time that has ever gone out the USPTO's doors. Otherwise, you might have some basis for alledging the slanderous accusations you make against the job the USPTO does.

Posted by: 6000 at July 8, 2009 12:09 PM

Noise, you know good and well that Max's calories are more valuable than yours. It's hardly a crime for him to exploit yours.

"The presumption is critical to what it means to have a patent. "

So I guess before the presumption was made statutory all patents were missing something critical.

"Why bother at all with a patent then?"

To exclude others from making, using and selling? The same reasons that were good enough for the first hundred some years of the patent system's existence in this country?

Posted by: 6000 at July 8, 2009 12:21 PM

So, Noise, to the Presumption. Let us define terms. A claim of an issued patent is valid till the adverse party proves it's not. An embodiment accused of infringing isn't an infringement till the patent owner proves it is. That's the default, all over the world except in the USA, where "preponderance" is the standard for infringement but (assymetrically, anomalously and agregiously) "clear and convincing" it is, in the USA, for proving invalidity. That (The Peculiar Presumption) is the prize for blasting crap claims past the Exr at the USPTO. There's the root cause of all the unpleasantness between prosecutors and Exrs. The mischief, and the damage to society, is compounded by letting owners of such crap claims intimidate people with them, and then walk away unpunished by a "loser pays" rule when, millions of dollars later, the claim fails at the CAFC.

Posted by: MaxDrei at July 8, 2009 1:06 PM

Some interesting comments up top, but then followed with the usual flaming wars. This is a pity because there could be newbies to the patent game who are trying to learn something useful here.

An important thing to understand when going up on appeal to the BPAI is that the USPTO is an "administrative agency" and thus subject to the administrative agency act (APA) including the need for "substantial evidence" having been entered on the "administrative record" to support the conclusions reached by the Board. See 5 USC section 706. (No, that's not a typo. It's Title 5 not Title 35.)

If you are about to file a Notice of Appeal and the stuff in the above paragraph sounds like Greek to you, then there is a good chance you will lose on appeal because you do not understand the rules of the game you are playing. Before you file that Notice of Appeal, stop and learn about the above stuff. (Hint, Google it.)

KSR certainly has increased the number of appeals where Applicant loses. However, not understanding the rules of the game during administrative agency appeal also helps to reduce the rate at which Applicants succeed on appeal.

Posted by: step back at July 8, 2009 1:09 PM

"applicants are appealing IN ORDER TO GET THE APPLICATION EXAMINED IN THE FIRST PLACE. That's what I'm doing, anyway."

ding! Exactly.

Posted by: Anon at July 8, 2009 1:27 PM

"ding! Exactly."

You're trying to tell me that the board allowed you to appeal when you hadn't even been twice rejected?

Posted by: 6000 at July 8, 2009 2:28 PM

step back,

Thanks.

Posted by: Noise above Law at July 8, 2009 6:01 PM

There's a difference between being EXAMINED and being "twice rejected".

I remember one case where the applicant was rejected about six times, and then the Director took the Examiner off the case (after a 181 petition) because he (the "Examiner") hadn't yet examined it. (One of the rejections cited the "flash of genius" case.)

Here's a case that wasn't "examined" even though it was rejected. The rejection is wholly fictitious, the secondary reference shows none of what's particularly alleged (the Examiner merely pasted the claim language into the rejection, and made up column and line numbers):

http://www.nipra.org/10084163.pdf

Posted by: niRPa at July 8, 2009 6:11 PM

"You're trying to tell me that the board allowed you to appeal when you hadn't even been twice rejected?"

Where did you get this? I neither said nor implied anything of the sort.

Posted by: Patent_Medicine at July 9, 2009 4:27 AM

"There's a difference between being EXAMINED and being "twice rejected"."

Um, wrong. Or are you trying to tell me they twice rejected you over no references or official notice?

That first one is a nice anecdot and the second one appears to have been examined. Your assertion otherwise is nigh on ludicrous. OA's don't write themselves and references don't cite themselves.

"Where did you get this? I neither said nor implied anything of the sort."

You said it hadn't been examined. Two rejections are required for you to be able to appeal. You appealed, thus, implicitly you have been twice rejected. If you got two rejections that case has been examined. Your assertion is thus false.

You're right that perhaps I shouldn't have gone so far as to extract that implication. You're telling me that you inappropriately appealed? I'll believe anything you tell me, I'm going to give you the benefit of the doubt. But I don't see any way for a registered attorney to have appealed improperly before having been twice rejected. I could see a pro se doing that, are you a pro se?

Posted by: 6 at July 9, 2009 8:20 AM

6K the "second one" wasn't "examined" by that "Examiner" in any real (non-governmental) sense of the word. The only two rejections in the Office action (112 for using "substantially" in the claims, and a completely fictitious 103) had ZERO merit under law or regulation.

The "Examiner" did get a count for it, though. So that may be what you mean by "examined."

The second Examiner (no quotes) allowed the case with no amendments whatsoever to the original language (other than my doubling the claims). The only thing the "examination" by the first Examiner produced for the record was a delay... and more claims, thank you.

Posted by: niRPa at July 9, 2009 9:31 AM

Oh, ...and the second Examiner did update the status of the parent case, by Examiner's Amendment.

Posted by: niRPa at July 9, 2009 9:36 AM

"If you got two rejections that case has been examined. Your assertion is thus false."

Don't confuse the words "rejection" and "examination." Just because one gets a rejection does not necessarily mean that the application was examined.

For exammple, just because MaxDrei or 6000 type something into a commputer and post it on a message board, it doesn't mean that a human brain was somehow involved in the process.

Although one could assume that one follows the other, this is not inherent.

Posted by: Shaking my head at July 9, 2009 11:01 AM

"The second Examiner (no quotes) allowed the case with no amendments whatsoever to the original language (other than my doubling the claims). The only thing the "examination" by the first Examiner produced for the record was a delay... and more claims, thank you."

I was going to address how this likely happened, but I'm cutting down on my post lengths here lately. Wasting too much time stating the obvious that nobody wants to see.

Posted by: 6000 at July 9, 2009 12:17 PM

Hey you. Still Shaking your head there. Tip: stop it. It can damage the brain. And you wouldn't want that now, would you?

Come to think of it, chronic head-shaking can reveal something about the state of the brain inside. And apart from your shaky logic, your keyboarding d-d-d-digit seems a bit shaky as well. Should you not go and see a doctor?

Posted by: MaxDrei at July 9, 2009 12:19 PM

"Don't confuse the words "rejection" and "examination." "

You can't write a rejection without having:

1. Reviewed the case to some extent
2. Having reviewed the art/claims and have some reason to reject
3. Having written the rejection

Coincidentally, these happen to be the steps of examination.

"Although one could assume that one follows the other, this is not inherent."

Your hyperbole is less than funny and even less correct.

If your application wasn't examined then sue the PTO for examination of your application rather than appealing. Oh, what's that? You don't want to?

Posted by: 6000 at July 9, 2009 12:20 PM

The epitome of 6:

"less than funny and even less correct."

They say that even blind squirrels...

6, the shorter your posts, the better -please take it to the extreme.

Posted by: Noise above Law at July 9, 2009 2:02 PM

Oh and Nirpa, sorry about that, it appears a much earlier response to you never got posted properly. Ma bad.

Posted by: 6000 at July 9, 2009 3:44 PM

It is fairly easy to rattle the monkey cages of both 6000 and MaxDrei.

Posted by: Shaking my head at July 9, 2009 4:27 PM

Shaking - they provide sooo much rope.

Posted by: Noise above Law at July 9, 2009 5:46 PM

Only "fairly" easy, Shaking? I'm surprised at your modesty.

Where we disagree is that you think I'm the one in the cage, and you're outside it. The way I see things, it's exactly the opposite.

So, we're both happy. That's nice.

Noise, I'll take that as a compliment. As we both know, providing verbal "rope" for others to work with is exactly what I'm about here.

Posted by: MaxDrei at July 9, 2009 10:36 PM

Yes, Max, "play the fool" is something you have learned well.

(Please see earlier comments about "credibility")

Posted by: Noise above Law at July 10, 2009 2:24 AM

"You can't write a rejection without having:

1. Reviewed the case to some extent
2. Having reviewed the art/claims and have some reason to reject
3. Having written the rejection"

This is easily your funniest post ever.

If I had a nickel for every OA I received where the examiner didn't do 1. and/or 2., I'd be comfortably retired. Lighting my cigars with 100 dollar bills.

Oh, and let's face it, 3. is nothing more than cutting and pasting (or maybe, if the examiner is really feeling particularly energetic that day, typing some nonsense along the lines of, "Smith shows the invention substantially as claimed, see the abstract..."), calling up some form paragraphs, inserting some misspellings, hitting the print icon, signing your name, and then heading off to the PTO fitness center. Or a movie.

(I love that "Smith shows the invention substantially as claimed..." line in OA's. I though "substantially" was indefinite. LOL)

Shall I describe the truly hard work that goes into reviewing such garbage? Okay, because I know y'all love it when I do.

Our scene opens in the SPE's office at about 11:50 AM on a "count Monday." We cut to a stack of red folders, all full of the record breaking quality OA's turned in by the juniors. The SPE picks up an OA, casually flips through the 5 or 6 pages for 3-4 seconds, concludes, "Well, I don't see any claim indicated allowable. This is absolutely outstanding work!!!! I gotta sign this right away!!!!! Where's my pen??!!!! One more count towards my fair share!!!!! And my bonus!!!!!!!"

That's about it. In a nutshell.

You're welcome.

Posted by: JohnDarling at July 10, 2009 6:52 AM