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February 18, 2010

Relatively Stiff

Yousef Daneshvar filed a patent application claiming : "an apparatus for dressing a wound. The invention features a 'relatively stiff support' that is secured over the wound using one or more 'relatively stretchable straps.'" The BPAI rejected Daneshvar's claims as anticipated and obvious over 5,779,657. Daneshvar had to go to the CAFC to get PTO incompetence overturned.

In re Daneshvar (CAFC 2009-1475) non-precedential

All of the rejected claims require a strap that "comprises relatively stretchable material that directly attaches to the attachment means . . . ." The Board held that the '657 patent discloses that limitation because it teaches that the straps can be elastic and that the straps can be directly attached to the support by an attachment means such as Velcro. Dr. Daneshvar argues that the claim language requires the straps to contain a material that is both stretchable and capable of directly attaching to the attachment means, and that the record does not show that the Velcro components disclosed in the '657 patent have both of those properties.

We agree with Dr. Daneshvar. The Board did not reject Dr. Daneshvar's argument that the claim language dictates that the relatively stretchable material must directly attach to the attachment means. Under that construction, if the '657 patent is to anticipate claim 11 it must disclose a material that is both stretchable and capable of attaching directly to the attachment means. The Board found that two separate strap embodiments in the '657 patent disclosed that element: a strap made of the loop-type Velcro described in the patent, and a strap made of elastic material having an end piece of Velcro. Those findings, however, are not supported by substantial evidence in the record. While the '657 patent teaches a strap incorporating a loop-type material and also describes a strap having elastic components, the '657 patent does not disclose a strap made of a material that is both stretchable and capable of attaching directly to the attachment means.

Truth-impaired government attorneys at the PTO tried to cover patent board laxity, but the CAFC panel wouldn't have it.

Regarding the '657 strap embodiment in which the strap is made of loop-type Velcro, the '657 patent does not disclose that the Velcro material is stretchable. The government argues that the Board could properly conclude from the '657 patent that the loop-type Velcro itself constitutes "relatively stretchable material." The Board, however, did not find that the '657 patent described the Velcro as being stretchable. It simply stated that the '657 patent taught that the strap may be stretchable and that the strap may contain Velcro. Yet while the '657 patent teaches both elastic and inelastic straps, it does not indicate that Velcro is an example of elastic material.1

1 The government's citation to a commercial pamphlet describing Velcro is of no assistance because the pamphlet was not shown to be evidence of record.

Another careless factual error by the board was overruled, along with dismissing BPAI imagination as a basis for rejection.

Because the '657 patent does not describe loop-type Velcro as being "relatively stretchable" or Velcro end pieces that are integral with and a part of the strap, and because the Board pointed to nothing else in the record to fill those evidentiary gaps, we hold that the Board erred in affirming the anticipation rejection. Moreover, because the Board's obviousness determination was based entirely on its anticipation ruling, the Board's error on anticipation undermines its obviousness determination as well. Thus neither ground of rejection can be sustained.

Its lips for suggestion sealed by law, all the CAFC could do was reverse and remand.

At this stage, we are limited to reviewing the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194 (1947); In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007). Our decision addresses only the grounds employed by the Board, on the record before it, for affirming the examiner's rejections; beyond that limited holding, we do not direct the manner in which the agency should proceed on remand or indicate how the issue of patentability should ultimately be resolved. See, e.g., In re Lister, 583 F.3d 1307, 1317 n.4 (Fed. Cir. 2009). Accordingly, we reverse the Board's decision and remand for further proceedings.

Posted by Patent Hawk at February 18, 2010 10:42 AM | Prosecution

Comments

"At this stage, we are limited to reviewing the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194 (1947); In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007). Our decision addresses only the grounds employed by the Board, on the record before it, for affirming the examiner’s rejections; beyond that limited holding, we do not direct the manner in which the agency should proceed on remand or indicate how the issue of patentability should ultimately be resolved. See, e.g., In re Lister, 583 F.3d 1307, 1317 n.4 (Fed. Cir. 2009). Accordingly, we reverse the Board’s decision and remand for further proceedings."

In other words, add a secondary reference before you get to the CAFC guys.

Lot o trouble about nothin'. Some hypothetical patent apps, (certainly not in reference to this guy!) have the feeling that he has an entitlement to an obvious invention. A lawlyer probably told him this.

Some patentees, certainly not spoken in reference to this one!, do good work paying lots of money to get a 103 when they probably could have just asked for it from the primary.

Posted by: 6000 at February 18, 2010 1:25 PM

This case illustrates that 35 USC 102 is worthless.

Posted by: Jules at February 18, 2010 7:53 PM

"Some hypothetical patent apps, (certainly not in reference to this guy!) have the feeling that he has an entitlement to an obvious invention. A lawlyer probably told him this."

Unlikely -- the lawyer probably told the client that this has obviousness problems and the client wanted to go ahead anyway. A client that is willing to go to the CAFC during prosecution is a client that REALLY wants the patent.

Cnce the BPAI screwed the pooch by affirming a bad rejection, the attorney was just doing his job.

The USPTO's problem is that just because they think something is obvious they can cobble together any combination references, say "I'm done," and then wash their hands of the matter.

This isn't McDonalds and you aren't making hamburgers. These are legal proceedings. Half-ass jobs just don't cut it.

Unfortunately, it takes going to the CAFC to straighten these things out.

Posted by: Passing through at February 19, 2010 9:19 AM

You're preachin' to the choir, Passing. . . preachin' to the choir.

CAFC:
"Moreover, because the Board's obviousness determination was based entirely on its anticipation ruling, the Board's error on anticipation undermines its obviousness determination as well."

Obviousness ruling based entirely on anticipation???? WTH is going on there?

I'll tell you what. I have just received a first OA in which the boob Group 1700 examiner makes an unfounded 102 rejection by completely ignoring at least two limitations that make the invention patentably distinct from the art. Ho hum, just another standard OA and just another examiner senselessly and irresponsibly burning off the client's money with no accountability whatsoever.

But the really annoying part is this dolt's 103(a) rejection of the same claims on the same single reference. The 103 rejection says:

"Accordingly, the claims are anticipated by the reference. In any event the claims would also be obvious over the reference since anticipation is the epitome of obviousness."

And that, friends, is the sum total of the 103(a) rejection. I haven't read the Daneshvar case yet, but it appears that this is the same type of 103 rejection entered against Daneshvar.

If these mono-neuornal examiners were in the private sector, they would a) get sued for malpractice, and b) get the boot.

I'm still waiting for Kappos to send me a recruitment letter. Why should I try so hard to be competent and thorough when I can work for the PTO?

That's not a rhetorical question. I would genuinely like someone to answer it.

Posted by: Babel Boy at February 19, 2010 9:58 AM

Babel Boy,

Thanks for the comment.

Many prosecutors, myself included, have repeated tales of examiner incompetence that reflect USPTO management indifference and neglect of examination on the merits. What is most stunning is the effort gone through by the PTO to defend the indefensible.

It is precisely because there is no accountability that this can go on endlessly ad nauseam. More succinctly put, good enough for government work.

The damage to the economy of not granting patents to meritorious inventions may be worse than letting a few junkers slip through. After all, the junk can be cleansed, but not granting patents on merit defeats the entire patent system.

Posted by: Patent Hawk at February 19, 2010 1:13 PM

The guy's a fighter, I'll give him that. Had his own art cited against him, and finally overcame the rejection. I can only imagine what he had to go through. I wonder what the PTO will do next, issue the patent, or make a 103 with that pamphlet?

Posted by: Jules at February 19, 2010 2:14 PM

I hear you, Hawk.

But I'm not so willing to dump it all on management. A lot of this crap is just plain laziness, incompetence, and gaming the system by the grunt examiners.

I talked to that examiner today and his excuse for the "anticipation is the epitome of obviousness" grounds for 103 rejection was that he does it all the time. Period.

So this is another case where I would like to introduce amendments and move the case forward but I can't. I'll file a prima facie response and leave the claims exactly as they are so the examiner can't file a final with new grounds of rejection. If he doesn't budge and enters the same rejections, whether or not final, I draft an appeal brief on the "epitome" rejection and all the others and then he has to re-open prosecution and file a proper OA to avoid getting chewed apart in appeal.

It's frickin' idiocy I'm tellin' ya'.

Posted by: Babel Boy at February 19, 2010 5:06 PM

Babel Boy: "I'm still waiting for Kappos to send me a recruitment letter. Why should I try so hard to be competent and thorough when I can work for the PTO?

That's not a rhetorical question. I would genuinely like someone to answer it."

Since you asked, I'll be happy to oblige:

1. You have a conscience. You believe in doing what's right because you believe in contributing to the greater good of society by doing what's right, instead of greedily looking out only for your own self interest.

2. You value your reputation as a professional.

3. You take pride or satisfaction in providing a quality service or product to your clients or customers. You would be embarrassed if your work product fell short of expectations, even if you were the only one that found out.

Posted by: Defector at February 19, 2010 6:19 PM

I have a stoopid question. What is a PTO Examiner supposed to say about obviousness, when the claimed subject matter lacks novelty?

I guess the Examiner can't simply say nothing because, otherwise, once the novelty point is clarified to the benefit of Applicant, it's too late then for the Exr to assert that the claim is obvious over the already cited art.

But when that art evidently deprives the claim of novelty, how does one start to formulate a reasoned obviousness objection?

Posted by: MaxDrei at February 20, 2010 2:56 AM

Babel Boy (or anyone who knows),

What is a prima facie response?

Thank you.

Posted by: Newbie at February 20, 2010 8:59 AM

"I guess the Examiner can't simply say nothing because, otherwise, once the novelty point is clarified to the benefit of Applicant, it's too late then for the Exr to assert that the claim is obvious over the already cited art."

The mad one ... yet another example where you show your lack of knowledge about the USPTO. As 6000 likes to say, there is nothing that forces him to allow anything. If the Examiner wants to reopen with an obviousness rejection, the Examiner can. He may have to jump through a few hoops, but no rejection is ever "too late."

If the Examiner thinks that the novelty rejection is tenuous. The Examiner can always reject the claim under 35 USC 103 in the alternative. I don't see it all the times, but I do see it.

However, the times I do see it, the Examiner's obviousness analysis is little more than "if reference A doesn't teach X, then it would have been obvious." Again, they do the minimal possible to get the action pass the SPE (or primary) and out the door.

This exemplifies the flaw in the count system at the USPTO, the second pair of eyes, and the short-term thinking of many examiners. Doing the least amount of work gets you rewarded more quickly than doing a more thorough examination or (heaven-forbid) allowing claims. Also, who wants to allow clams in an environment where the likelihood of a negative consequence to the Examiner is much higher when allowing claims than putting out a crappy rejection.

Posted by: Passing through at February 20, 2010 10:37 AM

Well thanks, Passing. Stranger and stranger. So the normal objection is: "if reference A doesn't teach X, then it would have been obvious.". All I can say to that is, if the Exr doesn't believe his own novelty objection, why should anybody else? With that old "X" line, the Exr's just called down a load more tedious and unnecessary work on to his head, hasn't he? I think he just worked that out, don't you?

By the way, why is it such a crime for an anonymous poster to reveal his ignorance? It upsets you so much that you have to label me mad. How come?

Posted by: MaxDrei at February 20, 2010 11:18 AM

"How come?"

I call it like I see 'em. Besides, you have a history of asking questions that most sane people wouldn't ask.

"if the Exr doesn't believe his own novelty objection, why should anybody else?"

Have you ever heard of arguing in the alternative? Pretty common here in the US.

Posted by: Passing through at February 20, 2010 5:59 PM

"What is a prima facie response?"

Apparently, Babel Boy only feels the need to make arguments that at first glance appear to be persuasive, but upon a preponderance of the evidence, may be less than convincing.

Posted by: Perfesser at February 21, 2010 5:41 PM

"And that, friends, is the sum total of the 103(a) rejection."

Gee Perfesser, you think you might actually answer the question actually put forth instead of talking yourself into a circle?

Let's start with "prima facie" and why the Office fails at establishing a prima facie case. What elements must be established before the burden shifts? Does the burden shift if the examiner lists, but does not establish, the proper elements (note that it appears that the examiner failed even at merely listing the elements - how did this get approved by a SPE? - Office habit: merely stating conclusory statements without proper back-up)?

Posted by: Gilligan at February 22, 2010 4:43 AM

Thanks, Gilligan. Agreed.

Sorry, Newbie, that I can't get back sooner about prima facie.

In the case I was talking about, for instance, the rejection is obviously invalid because the all of the elements of 102 have not been met. That is not to say the claims are not anticipated, it's just to say the examiner has not carried his burden.

And, of course, for the 103 rejections saying nothing more that "anticipation is the epitome of obviousness" does not establish the elements of a 103 rejection. IOW, a prima facie case has not been made for either type rejections and the burden has not been shifted to me to rebut the substantive issues such the allegation that the prior art shows any of the claimed elements.

So I argue, essentially, that the rejection is flawed, not that the claim is good. This, of course, doesn't move the case forward at all. It's a waste of everyone's time but is necessary because the examiner wants to play hide-the-ball.

If I amended any claims in my response, even to correct a typo or 112 issue, the examiner will tidy up the art rejections, enter new grounds for rejection, and make the second OA final on the theory that the new rejections were required due to the amendments.

Now I have to respond to the substantive issues that should have been raised in the first OA but I am operating under the restrictions of a final OA. This bait and switch tactic is used by at least 50% of the examiners I have ever dealt with.

So, if faced with a first OA that fails to make a prima facie case for any rejection, the smart response is to refuse to take the bait. Do not amend. Make a record of why the rejections are bs. If any claim is then rejected with the same bs rejection, go straight to appeal, even if the second OA is not final.

Failure to make a prima facie case is generally pretty obvious and easy enough to brief, and these hide-the-ball examiners are not likely to tangle with you in front of the BPAI over these clear issues. So they have to re-open prosecution and write new claims.

Sounds like a waste of the client's money, and it is. If you win your hide-the-ball case at the BPAI, all they do is remand for the examiner to clean up his/her act. You still have to deal with any substantive issues.

But if you start amending claims in the face of hide-the-ball rejections, the long term harm and cost to the client is much worse. So many of these CAFC cases are decided on the basis that the patentee amended his claims right into a state of uselessness. The reason this happens is because the patent practitioner thinks it's better to suck up to the examiner and get whatever garbage he can so long as it has a US patent number on it. Who cares about 10 years down the road? The malpractice statute of limitation will be expired by then.

What really pisses the examiners off is to file the appeal brief after a non-final OA. If the examiner files a non-final and leaves any hide-the-ball rejection in play, go straight to to appeal, not just on the prima facie grounds but on the substantive rejections, too.

Usually in my appeal briefs I argue that the prima facie case has not been made, so there is valid record for rejection. Then I argue, just to push the case forward, that even if the prima facie case had been made, the art doesn't disclose the elements/limitations. If I prevail, then I might get more than a remand.

Speaking of pissed off examiners, during a phone interview with an examiner who was spouting just absolute rubbish, I indicated I was going to ask her supervisor to review the case. She told me that if I did, she was going to tell every examiner in her group and I would never get a patent from that group again.

Would love to hear any others' stories of black-listing threats. And any suggestions of how to handle such threats.

Posted by: Babel Boy at February 22, 2010 10:03 AM

"This bait and switch tactic is used by at least 50% of the examiners I have ever dealt with."

Maybe you should have tidied up your claims before you saw the search report? :)

If you're wrong in what you consider to be your rejection I see no reason for the examiner to be right about what the necessarily best art is or the best application is thereof.

Do you? Mistakes are being made on both sides it looks like to me.

Posted by: 6000 at February 22, 2010 10:32 AM

Max

There is a fine point in the nexus between 102 and 103 but anyone, including the courts, who says that anticipation is the epitome of obviousness, doesn't know their butt from their elbow.

102 and 103 rejections require two entirely different types of analysis. 102, for instance, is evaluated element-by-element and limitation-by-limitation compared to a single reference, and 103 is (or should be) evaluated on a "subject matter as a whole" basis.

The most confusion comes in a single-reference 103 rejection, which are getting more and more common as examiners get lazier and lazier. When properly applied, it means that although the single reference does not disclose all of the claimed limitations, it does disclose all of the elements and it would be obvious to PHOSITA to add the missing limitation(s). KSR is a fine example.

Presuming the single reference discloses all of the elements, then either the single reference discloses all of the claimed limitations or it doesn't. If it does, the only proper rejection is 102. If it doesn't the only proper rejection is 103. The examiners often reject in the alternative because they are either too stupid or too lazy to make that call. It is just another version of hide-the-ball, unless the examiner sets out all of the Graham/KSR factors, which they never do.

Also, I like to make a point not subscribed to by many. Elements and limitations are distinct. Elements are physical structure, denoted by nouns. Limitations are descriptions of the structure denoted by adverbs, adjectives, or adverbial or adjectival phrases.

My argument is that in a single-reference 103 rejection (or any 103 rejection) the prior art must disclose all of the elements -- i.e., all of the structure -- and the examiner is permitted to add only limitations (obvious descriptions of the structure).

If one piece (or 3 pieces) of PA discloses all 10 of the claimed structural elements, the limitation that can be added by the PTO is the way those elements were combined by the applicant. Then the argument becomes whether the combination of the elements, taken as a whole, was obvious. The combination is the limitation. And that's a fair discussion to have.

But if no PA cited by the examiner discloses claimed element A, then the examiner is not at liberty to concoct element A from thin air or drag it in from non-analogous art and say "Lookee here what I found (or imagined)."

I'm not saying this is the way it works. I'm suggesting this is the way it should work.

Posted by: Babel Boy at February 22, 2010 10:40 AM

"She told me that if I did, she was going to tell every examiner in her group and I would never get a patent from that group again. "

LOLOLOL

The tip I might suggest is to ask her to calm down and explain that you were going to stop acting like a jackarse and calmly and professionally ask the spe to review the rejection and ask what her objection would be to that if the rejection is nice and tidy. Then go from there depending on what her answer is.

Bottom line is, nobody cares if you talk to a spe, they care if you're being a jackarse. Which you no doubt were being.

And what "ball" is supposedly being "hidden" in this "hide the ball" nonsense. The only person who can even "hide" any "ball" is the applicant in that he hides what he truly believes to be his invention.

Oh, and btw, what are the "restrictions" which you must operate under for during a final OA? I wasn't aware that there were any.

You seem to have made up substantial nonsense to make your own life miserable babel, then you blame it on some examiner somewhere in some wierd manner of transference.

Here's what I see likely happening. Babel files outrageously badly written (112 issues) very broad claims (likely to the point of reading on a subclass or two). His actual invention is fairly specific and he has "fall back" positions coming out the wazzoo. The app is 20+ pages long (avg) and has 50 claims. He gets a restriction, down to 20 claims. He gets an OA citing some art that likely reads on his claims (maybe, maybe not). He then responds that no wai does that art read on his inventioners because xyz is not disclosed!!!!!!!!!!1111 The examiner says ok, what's this xyz in the reference? Babel says well that't not MY XYZ!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!11111111111111111111 The examiner asks why not? Babel says BECAUSE ITS NOT A PRIMA FACIE CASE THAT'S WHY NOT!!!!!!!!!!!!!!! Things devolve from there. I hear about this nonsense all the time. It's rather amusing to observe from a noninterested standpoint.

Posted by: 6000 at February 22, 2010 10:45 AM

"Elements and limitations are distinct. Elements are physical structure, denoted by nouns. Limitations are descriptions of the structure denoted by adverbs, adjectives, or adverbial or adjectival phrases."

That's dmb :( Why not just stick to the standard vocab?

Posted by: 6000 at February 22, 2010 10:49 AM

Babel it is kind of you to expound your philosophy of elements and limitations. I'm sure there is basis in the US caselaw for it but it leaves me, as an outsider, baffled. Is it not an arbitrary accident of claim drafting, whether any particular technical feature in the claim gets labelled as an element or a limitation? And if not, are you not with your elegant philosophy doing no more than building castles on what is, in reality, sand?

Posted by: MaxDrei at February 22, 2010 11:53 AM

Babel,

You present an interesting discussion on claim elements and limitations, but such discussion is probably better off directed to an audience that understands and appreciates the finer art of US claim drafting. This is not likely to be found with 6000 or MaxDrei.


As to the nonsense and counter hypothetical put forth by 6000. Do you really expect anything of substance from this poster? His track record is absolutely abysmal. I would be genuinely surprised if he has ever posted correctly on any matter of law or dealings with the USPTO.

You are, of course, completely correct with the ability to “go final”. Such was undoubtedly an express aim in the RCE gravy train heyday. First Actions On the Merit over the last several years have been absolutely worthless. Any time an amendment was needed (and this was done very begrudgingly), I would expressly point out the source of the amendment within the specification and remind the examiner that his guidance dictated that his first search was to have covered the specification and the claims and as such, no new search was to be considered warranted by the amendment.


A possible suggestion, not that this would save you from blacklisting – which by the way I have heard is true, would be to cordially invite the examiner to put his threat in writing. Of course, another possibility – depending on your location and the possible local legal rules - is to tape record every conversation with the Office. I would personally inform the examiner that such is done for “quality and training purposes” at the start of any call.

Perhaps a more subtle move would be to involve the Supervisory Primary Examiner to discuss the law from an experience standpoint, and providing the examiner with a chance to augment his training with some direct hands on experience from a more seasoned Office person.

Of course, I am assuming that you are ever polite, as business conducted with the Office is mandated to be so (I am sure that Attorneys are aware of this – examiners, on the other hand – well, let’s just say their knowledge of the law, rules and guidance that they are supposed to adhere to under administrative law can be severely lacking).

Posted by: Thurston B. Howell, III at February 22, 2010 12:50 PM

"Of course, another possibility – depending on your location and the possible local legal rules - is to tape record every conversation with the Office. I would personally inform the examiner that such is done for “quality and training purposes” at the start of any call."

LOL gl with that Thurston III.

"Of course, I am assuming that you are ever polite,"

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL, wait wait, LOLOLOLOLOLOLOLLoL

Posted by: 6000 at February 22, 2010 3:09 PM

"Of course, another possibility – depending on your location and the possible local legal rules - is to tape record every conversation with the Office. I would personally inform the examiner that such is done for “quality and training purposes” at the start of any call."

LOL gl with that Thurston III.

"Of course, I am assuming that you are ever polite,"

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL, wait wait, LOLOLOLOLOLOLOLLoL

Posted by: 6000 at February 22, 2010 3:09 PM

"Here's what I see likely happening. Babel files outrageously badly written (112 issues) very broad claims (likely to the point of reading on a subclass or two) ... He gets an OA citing some art that likely reads on his claims."

Classic 6000 analysis -- makes up shit as he goes along and cannot put forth a consistent analysis – sounds like a lot of examiners I deal with. First, the claims are so broad that they read on a subclass or two, but the examiner is so incompetent that he can only produce a reference that "LIKELY" reads on the claims.

FYI – I've learned that I've been put on a "list" in one particular art unit. Of course, the particular Examiner who mentioned this is facing his third Appeal Brief after he has reopened after the prior two Appeals. Four Office Actions and the claims are unchanged since the day the application was filed. A whole lot of work for not many counts. No wonder he (and the rest of his group is unhappy). They want practitioners to bail them out with RCEs – hoping that they'll be able to find the best reference the third or fourth time around. I, like Babel Boy, don't play those games.

As for the "outrageously badly written (112 issues)," I prosecute a lot of applications I didn't write. My guess is about 10-20% of the first actions include 112 rejections. Of those that aren't the generic antecedent basis issue rejections, my guess is that I successfully traverse, without amendment, 95% of the 112 rejections. Of course, I could amend, but why make the likes of 6000 think he is smarter than he actually is? You are rewarding bad behavior. Instead, I argue, and almost always, the examiner backs down. This is particularly the case during appeal. 112 rejections are jettisoned all the time after the appeal has been filed.

Another thing, while I'm thinking about it, if an examiner screws up really bad, I don't raise that issue with the examiner, I just go straight to the SPE. Oftentimes, you'll find out that the examiner is not particularly liked by the SPE either. Arguing with an examiner is usually a waste of time. First, most of the time, they don't have the authority to do anything anyway. They were told to reject the claim, and they are following orders. Other times, they were told the reason why to reject something, but they didn't understand, and they are trying to explain (as best as they can remember and as best they can comprehend) this rationale – and usually doing a poor job of it. Most of the time, the examiner just doesn't have a handle on the law.

Posted by: Passing through at February 23, 2010 8:08 AM

Thurston and Passing, thanks. Some good practice ideas.

The only time I announced I was taping an interview so I would have a clear record, the examiner screwed up into the ceiling and refused to talk. Dishonest people are like that. They don't want a true record of their crap. I went to the SPE and, whew!, he really screwed up into the ceiling. I can still remember his words -- "Nobody is ever going to record one of my examiners!" I don't think this point is settled. At least I don't know of any cases or suits.

Now I generally record my side of the conversation and try to repeat everything they say for the tape. "OK, Ms. X, as I understand your point, once you reject under 102, that automatically includes a 103 rejection. Is that your position?" So you get a good record, but without lighting fires under these idiots. Rarely do I talk to an examiner that I don't file a phone interview summary. My side is recorded so I can blow off PTO dolts like 6000 who always argue unprofessional conduct on the part of the lawyer.

In the black-list case, I went to the Director of the unit. He, or someone, reviewed all of the claims -- I think there were about 20. Only two had been originally allowed. After the review all of the claims were allowed EXCEPT the two the examiner allowed. That says everything you need to know about the examiner.

I was amazed to find that there is no fixed disciplinary office or procedure for complaining about examiner misbehavior. I have not yet filed a formal written complaint, but some discipline is going to happen, even if it takes a mandamus from USDC. It's not that the examiner is threatening my livelihood; it's that she is interfering with my clients' right to patent protection. Sounds to me that that should be a violation of some federal law.

Posted by: Babel Boy at February 23, 2010 9:40 AM

"That says everything you need to know about the examiner."

Or the director.

"I was amazed to find that there is no fixed disciplinary office or procedure for complaining about examiner misbehavior. I have not yet filed a formal written complaint, but some discipline is going to happen, even if it takes a mandamus from USDC. It's not that the examiner is threatening my livelihood; it's that she is interfering with my clients' right to patent protection. Sounds to me that that should be a violation of some federal law. "

Be glad it is just interfering with your client's supposed "right" to patent protection. Next it could be your life.

Best to let sleeping dogs lie. But be sure to let us know how this turns out and about the security of your break lines.

Oh, and for the record, I'm not arguing "unprofessional conduct" on the part of the lawlyer, I'm arguing incompetent conduct.

Posted by: 6000 at February 23, 2010 12:35 PM

"I'm arguing incompetent conduct."

Says the guy who was interviewing for a position at a law firm, what, 2-3 years ago? How did that work out for you?

Really, you can tell a bad examiner when they walk into the room, to quote a fun movie ... "I can't stand it any longer. It's the smell, if there is such a thing. I feel saturated by it. I can taste your stink and every time I do, I fear that I've somehow been infected by it."

lolol

"Next it could be your life."
whoooo ... such tough talk. Are you for real, or are you some redneck caricature?

BTW -- Babel Boy, interesting suggestion on the taping. If you aren't taping the other person, you aren't taping a conversation, and there is nothing wrong about taping yourself.

Posted by: Passing through at February 23, 2010 1:06 PM

I am a real life redneck. Or at least I was, before I became more cityfied. Everyone should know this already.

Either way though, it certainly isn't always a "redneck" that ends up doing something rash because of another's reckless behavior.

"Says the guy who was interviewing for a position at a law firm, what, 2-3 years ago? How did that work out for you?"

Interviewing for a position for which I was 1. not actually qualified for very well at all since it was blatantly outside my field, and 2. was not very interested in once I learned what they had planned went fine if you will recall JD.

"Babel Boy, interesting suggestion on the taping. If you aren't taping the other person, you aren't taping a conversation, and there is nothing wrong about taping yourself."

You're also playin' with fire. You'd better check up on the applicable laws in the subject juridictions, those things carry jail time sometimes.

Posted by: 6000 at February 23, 2010 2:54 PM

"You're also playin' with fire. You'd better check up on the applicable laws in the subject juridictions, those things carry jail time sometimes."

I find it amusing when you confirm your bonafides as an examiner -- i.e., not understanding law.

The laws regard recording conversations. A recording of a conversation requires the recording of both sides. Otherwise, you aren't recording a conversation -- you are recording a monologue. The key point is you are not recording the other person and you give yourself consent to record yourself.

The law is easy -- when you actually think about it. However, as I noted above, examiners rarely think. They just do what they are told.

Posted by: Passing through at February 23, 2010 6:16 PM

Has anyone seen the Perfesser? He went off looking for an actual answer as to why the Office fails at establishing a prima facie case with mere conclusory statetements. He was saying something about SPE's signing any 'ol thing...

Posted by: Gilligan at February 24, 2010 5:16 AM

6000:
"Be glad it is just interfering with your client's supposed "right" to patent protection. Next it could be your life."

6000:
"You're also playin' with fire. You'd better check up on the applicable laws in the subject juridictions, those things carry jail time sometimes."

You know, the evidence is growing to overwhelming proportions that we are all being punked by a teenager with too much time on his hands, a testosterone problem, and access to an online edition of MPEP.

Somebody pass 6000 the zit medication.

Posted by: Babel Boy at February 24, 2010 9:27 AM

Thanks for the help, Babel Boy.

More than I expected, and greatly appreciated.

Posted by: Newbie at February 25, 2010 8:58 PM