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March 20, 2010

Debunking In Re Keller

Thanks in large part to KSR, it has become harder to obtain a patent grant in recent years. It is one thing when an Examiner makes a ruling based on sound logic and reasoning to reject an applicant's claims; that is their burden and their duty.  But it is quite another when a rejection is based on nothing more than a poor misapplication of the law, under the pretense of the MPEP. Of increasing related consequence is the misapplication of In re Keller 642 F.2d 413 USPQ 871 (CCPA 1981). - A guest post by John M. DeBoer.

Allowance Downtrend

Figure 1 illustrates the continuing downward trend of allowances by the USPTO.

The largest delta in allowance rate occurred in 2007, which coincides with the year of the KSR Int'l v. Teleflex Inc., 127 S.Ct. 1727, 1739, 75 U.S.L.W. 4289 (2007). Between 1975-1999, the allowance rate fluctuates from about 60-70%; the allowance rate from 2000-2009/2Q has dropped nearly asymptotically from 71% to 41%.

The downward trend started pre-KSR, so it is clear that there are more factors at work than just a single Court opinion. Sure, post-KSR, it is obvious to combine the tine of a fork with a jack hammer to fix the Hubble telescope while performing a space walk because of common sense or that doing so leads to predictable results. Instead of sound reason and rational findings, rejections today under §103(a) sound a lot like "it would be obvious to combine the teachings of reference A and B because, as the Examiner, I conclude it would be obvious." Is this really the clear articulation of reasons the Examiner is required to provide?

The Office Action

MPEP 2142, citing Court text from KSR, states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious." The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."

In receiving an office action, there stands a good chance of receiving a §103(a) obviousness rejection for one or more claims. Today, as compared to pre-KSR, it is even more likely that the rejection is one that has only been made because of the way KSR is being used by Examiners (i.e., very liberally).

Response

There are any number of ways to formulate a response to an office action. There may be procedural and/or substantive arguments, and some even go well beyond a reasonable amount of courtesy to be wary of the tone used to return communication to the Examiner. Some would suggest that "being nice" to the Examiner increases the chances of obtaining allowable claims. Really? That is what new practitioners need to be skilled in: the art of nicety? I digress.

While this may not always be the case - and frankly, in the practice of law, most things are not always the case - most practitioners have tried some form of this rationale along the way in their career:

1) amend an independent claim to include an element or limitation not taught or suggested by the prior art;
2) explain to the Examiner that reference A does not teach the element/limitation;
3) explain to the Examiner that reference B does not teach the element/limitation; and
4) argue the claims are patentable over the references for a number of reasons, including that the references do not teach all of the elements and limitations.

The prior art (in combination or otherwise) need not teach or suggest all of the claim limitations explicitly. MPEP 2141(II)(C)(III): "Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations, however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art."

It is a tried and true strategy for a response to include arguments directed toward each reference, and rationally explain why the invention as claimed should be patentable. Moreover, arguments in a response are not precluded from stating that none of the references, separately or in combination, teach the invention as claimed. After all, the MPEP expressly states, "[t]he reply [to the office action] must present arguments pointing out the specific distinction believed to render the claims patentable over any applied references." (MPEP 2141(II)(C)(IV))

Two months later, a final action shows up that states nothing more than what was recited in the first office action, with an added blurb of "can't attack references individually" followed by a citation to In re Keller (or its counterpart, In re Merck). Examiners currently use OACS software that provides boiler plate language from the MPEP, including Form Paragraph ("FP") 7.37.13, which states "[i]n response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references."  The case law cited in support of the FP are In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); and In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

 KSR and In re Keller, especially when misapplied, are a lethal combination that may leave an application on life support, if not terminate it.

In Re Keller

It is one thing to get an office action based on sound logic and reasonableness - this is the way our system is supposed to work: logic & reasonableness. But now comes the Examiner's new friend (and apparent sword), In re Keller.

One of my recent replies read, "Applicant does not disagree with the well-established principles set forth by In re Keller." Instead of the Examiner's misapplication of this case (which has a specific fact pattern that would arguably not apply 99% of the time), the following is suggested:

1) In re Keller (and In re Merck, for that matter) stands for the proposition that, where a combination of references expressly (or impliedly) teach all the limitations of the claimed invention, then a rejection under 35 U.S.C. § 103 cannot be overcome by attacking the references individually;

2) the rejections for obviousness were based upon a combination of at least one primary reference and a single secondary reference (In re Keller at 422-423);

3) nonetheless, the critical aspect that seems to now be overlooked is that the only rebuttal evidence of non-obviousness submitted by the parties was in regard to the single secondary reference (emphasis added).

Looking closer at the facts In re Keller, the Appellant requested reissue of U.S. Patent 3,557,796 because of newly discovered prior art previously not examined during the initial prosecution. The Examiner rejected claims under 35 U.S.C. § 251 because of an insufficient reissue declaration, and also rejected claims as obvious under 35 U.S.C. § 103. In making the obviousness rejection, the Examiner relied upon the teachings of two primary references, each one combined with a secondary reference. In response, the Appellant submitted evidence of non-obviousness to rebut the prima facie case of obviousness established by the Examiner that consisted only of a single affidavit that was only in regard to the secondary reference. (In re Keller at 422-23).

 The CCPA affirmed the Board's decision that, under the facts of the case, one cannot show objective evidence of non-obviousness by "attacking references individually" when the rejection is based upon a combination. (In re Keller at 425-426) In other words, the rebuttal evidence that consisted only of a single affidavit that only attacked the single secondary reference was insufficient evidence of non-obviousness to overcome the rejection.

Accordingly, it stands to reason that if you respond to an office action with even a smidgen of rebuttal evidence in regard to each and every reference cited by the Examiner, In re Keller should not even come into play. Where none of the references teach or suggest a particular limitation of the claimed invention, each of the references can be attacked individually to show that the combination fails to support a prima facie case of obviousness. Thus, by attacking the references individually, one can show that the combination does not amount to a prima facie case of obviousness. When the Examiner does nothing more than respond with FP 7.37.13, the Examiner has misapplied the law.

To confront the problem, practice preemption. It stands to reason this practice may be received with vigor by the Executive branch.


Copyright © 2010 by John M. DeBoer. Mr. DeBoer is a registered patent attorney for Matthews, Lawson, Johnson & Payne, PLLC. The views expressed in this article are those of the author and do not reflect the views of Matthews, Lawson, Johnson & Payne, or any of its clients. All rights reserved.

Posted by Patent Hawk at March 20, 2010 12:41 PM | Prosecution

Comments

I often get those types of BS responses. My argument is often along the lines of using the Graham (approved by KSR) factual inquiries, which include:

“Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained."

Typically, what I see is that the Examiner is relying upon reference A to teach X limitation and reference B to teach Y limitation of the claimed (X + Y). However, B does not teach Y, in which I'll argue that point.

My responsive argument to the Examiner citing FP 7.37.13 is that Applicants have performed a proper Graham analysis and that since the Examiner is relying solely on B to teach Y (and not the combination of A and B), then Applicant's arguments as to the examiner failing to properly determine the scope and content of the prior art and, likewise, failing to properly ascertain the differences between the prior art and the claims.

FYI -- I went looking for the Graham factual inquiries (instead of paraphrasing from memory), and I quickly jumped onto the MPEP to find it. This is the following from MPEP 2141:

The factual inquiries enunciated by the Court are as follows:

(A) Ascertaining the differences between the claimed invention and the prior art; and
(B) Ascertaining the differences between the claimed invention and the prior art; and
(C) Resolving the level of ordinary skill in the pertinent art.

Can someone identify the problem? I know what it is, and it makes for a sad commentary about the USPTO that, in the own manual, they've screwed up one of the most important (and widely used) pieces of caselaw.

Posted by: Passing through at March 21, 2010 6:07 AM

From my perspective, the ONLY time I use In re Keller (using here the fact pattern established by Passing through) is when I use a combination of Ref. A (to teach limitation X) and Ref. B (to teach limitation Y) and the attorney/applicant responds with an argument that Ref. A fails to teach limitation Y (which is clear, as I've stated as much in the office action).

Wondering on my end, how often do you guys see it applied as Passing through suggested?

It seems as if it would be such an easy teaching point internally for the PTO to clarify how to properly apply this particular piece of case law.

Posted by: hotelingexaminer at March 21, 2010 8:30 AM

I'm just glad that the downward trend continued even on throughout the new Director taking over. Now you'll have to find something else to blame it on beside this nonsense "reject, reject, reject" blather people have made up.

Try PGpubs if you want a villain. Also, cases are going abandoned nowadays at an astonishing rate. It's almost as if when companies don't have infinite money to fight then applications are actually rejected. *Gasp* whoda thunk it?

"Some would suggest that "being nice" to the Examiner increases the chances of obtaining allowable claims. Really? That is what new practitioners need to be skilled in: the art of nicety?"

Yes. Ya jackas.

"Where none of the references teach or suggest a particular limitation of the claimed invention, each of the references can be attacked individually to show that the combination fails to support a prima facie case of obviousness. "

Sorry son, that's not tha truth. If neither reference, or the combination, shows your limitation then you may argue thus. There is a difference between that and saying that if neither reference individually shows your limitation then that is a proper argument.

Get it through your head, or appeal your nonsensical approach to viewing combinations of references.

"Thus, by attacking the references individually, one can show that the combination does not amount to a prima facie case of obviousness. When the Examiner does nothing more than respond with FP 7.37.13, the Examiner has misapplied the law."

If you think so, then appeal so I can lol when you lose. I look forward to seeing Hawk do a piece on your *stunning* loss at the CAFC in a few years :)

"My responsive argument to the Examiner citing FP 7.37.13 is that Applicants have performed a proper Graham analysis and that since the Examiner is relying solely on B to teach Y (and not the combination of A and B), then Applicant's arguments as to the examiner failing to properly determine the scope and content of the prior art and, likewise, failing to properly ascertain the differences between the prior art and the claims."

You sir are what is known in the trade as a "tard".

"(A) Ascertaining the differences between the claimed invention and the prior art; and
(B) Ascertaining the differences between the claimed invention and the prior art; and
(C) Resolving the level of ordinary skill in the pertinent art."

I loled.


Signed,

A tired of arguing this nonsensical point with morons of the first degree of moronitude homeless person on the side of I-95.

Posted by: 6000 at March 21, 2010 8:46 AM

>Wondering on my end, how often do you guys
>see it applied as Passing through suggested?

All the time. Not in the rejection itself. In the "Response to Arguments" after I've argued that A doesn't teach my claimed widget and neither does B.

>ONLY time I use In re Keller is when ...
>applicant responds with an argument that
>Ref. A fails to teach limitation Y (which is >clear, as I've stated as much in the office
>action).

Some practitioners think you only need to rebut exactly what the Examiner alleged. Other practitioners think you need to specifically state A doesn't teach, B doesn't teach, in order to properly handle the rejection.

I'd say the practitioners you're talking about are in the second category. I'm in the middle.
I usually don't "argue" A in this case, and instead say "Office Action admits that A does not teach", followed by an explanation of why B doesn't' either.

Posted by: Karen G. Hazzah at March 21, 2010 11:04 AM

>If neither reference, or the combination,
>shows your limitation then you may argue thus.
>There is a difference between that and saying
>that if neither reference individually shows
>your limitation then that is a proper argument.

I'm pretty sure I disagree with you. But I think it's important to clarify "limitation" here.

Suppose the limitation in question is "a green widget". If the Examiner relies on Ref #1 for teaching a "widget", and on Ref #2 for teaching a "green wiki", then the allegation is really that the combination teaches "green widget." [Even if the Examiner didn't explain this well.]

In such a case, you do need to address *the combination* because the Examiner is relying on the combination for teaching "green widget". Arguing "A doesn't teach a green widget and neither does B" is insufficient.

The green widget scenario is uncommon in my experience. What I typically see is a widget+wiki scneario.

My claim is to "a widget; and a wiki connected to the widget". The rejection alleges: A teaches the widget; A doesn't teach the wiki but B does.

In this case, I argue that B doesn't teach the wiki, and the Examiner admits that A doesn't teach the wiki. End of argument. I do *not* "argue the combination" because the Examiner has used the combination only for combining individual elements, each of which is allegedly taught by a single reference.

Posted by: Karen G. Hazzah at March 21, 2010 11:15 AM

"In such a case, you do need to address *the combination* because the Examiner is relying on the combination for teaching "green widget". Arguing "A doesn't teach a green widget and neither does B" is insufficient. "

So actually you agree with me.

The rest of your post might be true but that is not what the OP was talking about. His entire post was about how he disagrees with your statement that I just quoted above.

"a widget; and a wiki connected to the widget"

How is a wiki connected to a widget? A wiki is a webpage right? How does one attach a webpage to a widget? Let's set that issue aside for a moment.

"In this case, I argue that B doesn't teach the wiki, and the Examiner admits that A doesn't teach the wiki. End of argument. I do *not* "argue the combination" because the Examiner has used the combination only for combining individual elements, each of which is allegedly taught by a single reference."

I suppose it might be proper if the wiki is in fact not found in Ref. B. I'd have to see this to be sure, but from what you tell me, it seems ok. Although, I rarely see this situation which you are stating that you see often. But then again, I can usually tell if Ref. B really does teach a wiki before I send out the rejection.

Posted by: 6000 at March 21, 2010 12:37 PM

"You sir are what is known in the trade ..."

Classic Examiner analysis -- all puff and no substance.

What is wrong with the analysis that you cited? Unless you can CLEARLY articulate what is wrong with it, then you are just flapping your gums with little more than wind coming out.

If 6000 explicitly writes in the Office Action that "A teaches X" and A does not teach X, then it is a proper argument. Case closed, error established, In re Keller be damned, Examiner reversed.

To answer hotelingexaminer, I would say that I've seen this caselaw cited (improperly) at least 20-30 times.

"I loled."
Me, I shook my head. If the people writing the MPEP cannot get it right, should we really expect Examiners to get it right?

Posted by: Passing through at March 21, 2010 5:08 PM

>If 6000 explicitly writes in the Office Action
>that "A teaches X" and A does not teach X, then
>it is a proper argument. Case closed, error
>established, In re Keller be damned, Examiner
>reversed.

Agreed that, under those facts, your response because it establishes error.

But ... if by "error established" you mean to imply that you'll win on appeal, I disagree. The following analysis is based on my reading BPAI cases every week.

If you appeal and the Board agrees that A does not teach X, but also finds that B teaches X, then you'll lose. Despite the fact that you demonstrated reversible error and that the Examiner never alleged that B teaches X.

Two, sometimes you can infer that the Examiner is *really* relying on the *combination* even though he says *explicitly* that a single ref teaches X. In this situation, you might choose to go ahead and argue the combination even though that's not required. You might do so because you plan to appeal, because if the Board finds the combination teaches, you'll lose even if that's not what the Examiner alleges.

Posted by: Karen G. Hazzah at March 22, 2010 8:28 AM

Looking in from Europe, and being somebody who prosecutes engineering cases, in which the claim typically recites linked technical features (islands) A+B+C+D, it is more or less inevitable that a good search will find each of ABCD (as such) in the technical field, already published, and quite likely that the Examiner can find also ABC and ABD.

So, all this stuff about the reference not disclosing a C or a D doesn't help me much. But I still know that ABCD is not obvious. The challenge I face is to get the Exr to see it that way too. I know how to do that at the EPO, but not (yet) at the USPTO.

Posted by: MaxDrei at March 22, 2010 9:36 AM

I'm with you, Karen. You've got to be looking at what the appeal will do for your client.

I think in the planning stages of an RTOA to 103 rejections it’s important to understand precisely where you are. There are 3 possibilities for each claim:

P1: the examiner has not made a prima facie case and the claim is patentably distinct over the cited art.

P2: the examiner has not made a PFC, but the claim is not patentably distinct over the cited art anyway.

P3: the examiner has made a PFC, but the claim is patentably distinct over the cited art.

P4: the examiner has made a PFC, and the claim is not patentably distinct over the cited art.

OK, so my math sucks. There are 4 possibilities.

Your main decision is: are you going to argue lack of PFC (procedure), or are you going to argue patentable distinction (merits), or are you going to argue both?

Of course, until the PFC is made you have no burden to rebut the merits of the rejection. Forget that – that thinking costs your client too much money. I never argue just lack of PFC, however, I almost always include it because examiners almost never make a PFC.

If the examiner fails to state that one of the elements or limitations is disclosed by any reference, that’s a PFC issue. Keller should have nothing to do with that. But if the OA points out how each element/limitation is met by at least one reference and you disagree, then that’s a merits argument and you’d better take a holistic approach in your rebuttal, like Karen suggests.

If you argue lack of PFC, you’ll almost always be right. Rarely do I see a 103 rejection I can’t rip for lack of PFC. But if lack of PFC is the only argument you make, the examiner will dork you again in the final OA and you’ll have to appeal to at least the BPAI. The most you can hope to achieve at that point is a remand. You cannot get a rejection reversed merely on the grounds that the examiner did not make a PFC. So now you’ve spent $5000 of your client’s money on appeal fees and briefs and you’re back to a non-final OA, which very likely will also flunk the smell test. Round and round and round we go, where we stop nobody knows.

So, when P1 occurs, I argue lack of PFC and I add a statement that I don’t waive the PTO’s burden to make a PFC but in the interests of prosecution I’m setting forth arguments as to why the art in the combination does not disclose the claim. In addition to arguing lack of PFC, I argue lack of any evidence in the record that elements A, B, and C are disclosed by the cited art. After that I forget about how the examiner parsed out the asserted disclosures. For whatever element is not disclosed by the art, I argue that none of the art discloses it. And I DO NOT AMEND. Now, when you get to the BPAI you have grounds for seeking not just remand, but also reversal of the rejections.

OTOH, if I get P2 situation – a 103 rejection that does not make a PFC but I can see that the rejection would be valid if the lazy examiner had made the PFC – or if the examiner says reference Z shows element A, when clearly it does not, but reference Y does – I don’t jerk around with the PFC arguments. I amend the claim or drop it. (I might add some limited PFC arguments to the RTOA, but only enough to reserve the argument for appeal.)

Basically, if the cited art discloses all of the elements/limitations of the claim, who cares what the examiner said? Unless you have nonanalogous art, or very, very strong secondary factors in your favor (which is rare), do your client a favor, amend the claim or drop it and forget the examiner's procedural screw-ups.

Posted by: Babel Boy at March 22, 2010 10:17 AM

All-

Thank you very much for the lively discussion. I wish I had more time to elaborate on additional and/or other aspects related to this topic, but regrettably I do not.

@6000: your missing the point seems to illustrate the point. My argument is based on amending a claim, such that the claim (at least arguably) no longer contains elements/limitations taught by reference A and reference B. I then state such in the response.

If it is your contention that this is an improper response because a reply "cannot attack references individually," with corresponding citation to In re Keller, I would firmly state that you have misapplied the law. You are right in that I can appeal. Therein lies the problem: it shouldn't even come to an appeal. Instead, the rebuttal evidence should be properly considered. Moreover, nowhere in In re Keller is there language that says, “an Applicant is precluded from attacking references individually” – such a position is futile and short cited.

This is exactly the problem I talked to Patent Hawk about – get a non-final rejection based on an overly abusive reliance on KSR; get a final rejection based on complete failure to understand the law and/or guidance of the MPEP.

Posted by: John M. DeBoer at March 22, 2010 2:37 PM

"This is exactly the problem I talked to Patent Hawk about – get a non-final rejection based on an overly abusive reliance on KSR; get a final rejection based on complete failure to understand the law and/or guidance of the MPEP."

My question here is, how does one define or quantify "overly abusive reliance on KSR" when there isn't really any guidance anywhere (that I'm aware of, beyond common sense)?

Posted by: hotelingexaminer at March 22, 2010 6:17 PM

"your missing the point seems to illustrate the point."

You never made the point you proceed to tell us about in this post.

This was the situation you presented:

"It is a tried and true strategy for a response to include arguments directed toward each reference, and rationally explain why the invention as claimed should be patentable. Moreover, arguments in a response are not precluded from stating that none of the references, separately or in combination, teach the invention as claimed. After all, the MPEP expressly states, "[t]he reply [to the office action] must present arguments pointing out the specific distinction believed to render the claims patentable over any applied references." (MPEP 2141(II)(C)(IV))

Two months later, a final action shows up that states nothing more than what was recited in the first office action, with an added blurb of "can't attack references individually" followed by a citation to In re Keller (or its counterpart, In re Merck)."

The hypothetical 1-4 you mention don't actually seem to be the course of action you took in your actual example.

No wonder you're so failtastic at practicing, you can't even make your point in a guest post that you have all the time in the world to write.

Here's a hint at how to not fail your way through your career:

If the examiner recites something such as this in error then pick up your telephone and ask him how Keller is at all relevant to the instant claims (which I assume from your incomplete example have substantial additional limitations) that you argued that one or the other reference doesn't show x where he never even alleged x was in either one of them in the first place. When he or she is at a loss, then ask if they could give you a call back in a few days with the answer, because you're interested to know. If he or she explains how it is relevant in an erroneous fashion then identify where the error takes place and gently suggest that perhaps that part may not be the correct interpretation. Put forth your own and see if they'll bite. I know, I know, persuasion is time consuming. Sometimes it can take all of 20 whole minutes!!!!!!!!!!!!!! Can you imagine? Taking 20 minutes to do something that you'd otherwise have to spend billable hours straightening out in writing? Somehow I bet you can.

Also, one other way to not be so failtastic is to stop using the "form paragraphs" that your partner gave you when you started and start writing a persuasive response to each OA. One that you should look to drop immediately is the one that recites that "x reference doesn't show y limitation (that was never in the claim before hur hur hur) therefore the rejection is not valid". It's a misrepresentation even if you choose to believe otherwise. Say something like "x reference doesn't show the newly added limitation y". Say anything that shows you know how to use your brain to persuade the other party. And before you deny using that failtastic form paragraph, don't even bother, I know you goober types.

"If it is your contention"

It's not. It is however my contention that you're horrible. Probably just as bad as the examiner(s) that sent you those blurbs in error. Maybe worse. Probably worse actually. Take some pride in your work. And your guest posts for that matter.

"Instead, the rebuttal evidence should be properly considered."

What rebuttal evidence? I must have missed it in your big arse jumble of nonsense that didn't even make your point. Or your post restating your point. Telling someone that there is a new limitation (or even less limitations than before? what specifically is in your exemplary amendment? we're left guessing) and that it isn't found in a reference has nothing to do with rebuttal evidence. Are you even familiar with what the term "evidence" means? Arguments are not evidence. It looks to me like your examiners aren't the only ones that don't understand legal principles.

O, and let's be clear, I was an arse here because of this snide nonsense:

"That is what new practitioners need to be skilled in: the art of nicety?"

The answer, again, is yes. You also need to be good at explaining things to examiners in terms that their perhaps less educated minds can comprehend. You'd probably make a huge start by making your examples clear. You'd probably gain some huge insight into your own work if you asked your coworkers (the good ones) if the things you put in your responses weren't garbage. Be sure and tell them that you want the truth, even if it hurts.

All that wintastic advice is free of charge.

I'm through talking to you until you make sufficient changes in your own work, and posts, to warrant any more of my attention to your (likely lost) cause.

I am going to spend a substantial amount of time loling at you and all the rest of the clueless "well why did the office do x horrible thing to me? It must be because they don't understand tha lawl!!!!" Of course, I was already doing that, so don't feel too bad.

Posted by: 6000 at March 22, 2010 6:29 PM

"Therein lies the problem: it shouldn't even come to an appeal."

Going to appeal isn't the worse thing in the word. Most my appeals never get as far as an Examiner's Answer. There are some issues that the BPAI will screw you on (e.g., claim construction). However, where the prior art doesn't teach what the Examiner says it does, then you might as well just go for it. Again, most of the times, it'll get reopened or the Examiner will call and ask you to amend the claims to put the application in condition for allowance.

Although I hate an Examiner's reliance upon form paragraphs, you have to appreciate their position. Like 6000, the've been indoctrinated with the reject, reject, reject mentality, so they use anything at their disposal. Like 6000, they don't really understand what the case law really means, but they are good at cutting and pasting. I'm sure certain SPEs love to see those form paragraphs so certain Examiners just get conditioned to use them whenever possible -- relevance be damned.

I was thinking about this today -- for my clients, I really hate the incompetency at the USPTO. However, if Examiners were any good and they allowed what should be allowed and rejected what should be rejected on proper grounds, I would probably be a lot poorer than I am today -- or else, I would be drafting a lot more applications and doing a lot less patent prosecution.

Bad Examiners, like 6000, have put a lot of money in my pockets. I guess I should be a little grateful.

With that in mind
.
.
.
.
.
HEY 6000, THANKS A BUNCH!!!!

Posted by: Passing through at March 22, 2010 8:10 PM

hotelingexaminer is a good example of why the U.S. should go to an non-examined system. YOU do the search, YOU write the claims, and YOU defend them (without the presumption of validity, which is just this side of worthless (see, e.g., KSR, slinging mud at the presumption of validity in light of pathetic examination)with the garbage I'm seeing out of the examining corps). Isn't that what happens anyway? Clients want the $5k patent that withstands the $10M attack. Why do we even bother examining patents, especially considering the absurdly low quality coming out of the US Office? Just fire the examiners. OK- maybe keep a few on payroll to do check applications for formalities- for a fee, and those that can't keep clients/applicants happy get fired (just like attorneys/agents).

Want to improve your chances in litagation? Pay a competent examiner or two, or three (presumably not a former lifer or short-timer at the USPTO) to do a proper, reasonable, rational, and legally defensible examination of your claims prior to publishing them. Spend as much or as little as you want on the search- depending on the importance of your claims.

Posted by: FormerEngnr at June 1, 2010 5:30 PM

Mr. FormerEngnr,

We had a registration system once. It was scrapped as worthless. Do you really want to repeat history?


Mr. John M. DeBoer,

May I make a suggestion? This is a quote by the Patent Hawk at http://www.patenthawk.com/blog/2010/05/alternative_programming.html#more :

"They can drive you crazy if you take examiners seriously, which you should never do. You might as well argue with a fence post for all the good it will do, trying to overcome all that "official notice" loopy combo hand waving. Everybody knows career examiners are as bright as bricks. You can't argue with hardened mud. Try it with 6000, see where it will get you."

Mr. 6000 has shown a complete disregard for understanding anything but his own view of what should be, and will tell you his view (and keep telling you it) even after you have asked him to stop. He is the absolute worst kind of examiner (load, boorish, and absolutely no sense of what law is or should be) and gives tarnishes the profession which I still like to believe to be a noble and worthwhile one.

I would also kindly point out a request I made on an earlier thread that I am looking for an answer from someone actually trained in the law.

Please see http://www.patenthawk.com/blog/2010/05/misguided_missile.html

I extend the invitation to you and would look forward to your earnest reply.

Posted by: Pedantic Pete at June 1, 2010 7:24 PM

First, I apologize for attributing a post to hotelingexaminer that was posted by 6000. I am used to the author being at the top, rather than the bottom, of the post.

Do I want to repeat history? Not at all. Hopefully we could learn from history and improve on our present system where 1000 applications are examined, 400 are issued, and only a few (let's say 3) are litigated. If you were accused of infringement, what's the fist thing you'd do? Challenge validity, perhaps? If we extrapolate low-quality examinations to zero-quality examinations, what happens to the presumption of valididy and how is this substantially different than a no-examination system (apart for the costs to applicants)?

Regarding your question about the executive-judicial amalgam, I understand your question but don't have an answer. However, I would like to point out that similar cross-branch amalgams occur regularly in other areas.

Posted by: FormerEngnr at June 2, 2010 10:53 AM

Thanks FormerEngnr,

I too wonder about the presumption of validity and basing that presumption on the ability of the applicant to search.

I think the most immediate impact would be the chasing away of the small inventor. Large entities can much more readily afford intensive search and prior art clearances. My guess is that the patent world would revert to a Sport of Kings, were the effort/risk/reward balance to change that drastically.

The biggest impact though would be to my fellow examiners. A registration system is basically a self-examining system. There would be no need for the cadre of examiners (and the supporting structure). I would like to think that POPA would become involved if talks ever got serious about such a registration system change.

Posted by: Pedantic Pete at June 3, 2010 3:42 AM

I'm a European entrepreneur that stumbled across this (very useful) blog.

I've invested everything I have including remortgaging my home to pay for my patents - mostly on the US version. Reading the comments here I am shocked.

I previously saw a Youtube video of a USPTO examiner rapping about what fun it is rejecting applications. I dismissed that as a one-off bad apple but now I read the immature and unprofessional comments by 6000.

It's as if the USPTO is staffed by the intellectual equivalent of thugs that rip-off little old ladies and film the act on their new mobile phones to show their friends. "Hee, hee. LoL. OMG..."

How many bad apples does it take to infect the whole barrel I wonder? There must be examiners who are ashamed to work at the USPTO. Hopefully not too many of them resign.

As Pedantic Pete said above, working as an examiner should be a noble and worthwhile profession. Until now I had great respect for them.

Posted by: penniless_entrepreneur at August 25, 2010 4:13 PM

penniless_entrepreneur:

We all pay for our education. Some more than others.

The USPTO is as competent and resilient to corruption as your average bureaucrat, cop or politician. (Stopping there so as not to continue in an endless list of professions, extending beyond what is euphemistically termed "public service".) Corruption is a function of power, so your average examiner may be just north of clueless, but has limited power to waylay commercially valuable inventions (i.e., rejections into appeal are the examiner's purview of irritation). The "responsibility" of scotching deserved patent protection is left to higher ups. The more valuable your invention, the more PTO pendency becomes a black hole of non-ROI while the rest of the commercial universe whizzes by.

Good luck. You'll need it.

Posted by: Patent Hawk at August 25, 2010 4:43 PM

While the new KSR guidelines have little bite, it is clear the 'tone' is directed toward poor examiner habits that have developed post-KSR, particularly with respect to rejections under 103.

As an ex-Examiner, I know for a fact that the current count/get-a-disposal&RCE mindset plays a part in how Examiner's operate. Hopefully the new Guidelines, as well as changes in the count system will start to shift the pendulum back toward the middle of the patent-negotiaton process. It has skewed way to far.

With respect to the main OP, I received 2 erroneous 'Keller' form paragraphs in July-August. Not much changed there.

Posted by: John M. DeBoer at September 8, 2010 9:35 AM