AF amendments and appeals

[DogDayPM 9er9er9er]

I've never experienced either but suppose it could be a good thing, if there were art-related questions it would be good to answer them now instead of having to file for a re-exam; I might be inclined to thank the examiner. Is it PTO policy that once such a decision is made internally, a phone call is made to the practitioner of the case promptly before the papers are even mailed ?  If not, that could be an improvement as I generally like to know ASAP changes on stuff like that. 

None of them were based on new art or on new questions of the old art.  They were based on SPEs being so terrified of making a mistake that their solution was, "No patents issue = no one can accuse me of a mistake".   In some of the units I was told they were under QC/2nd look.

There does not appear to be a policy of calling before hand.  Generally, we just get the notices.  In one of the cases withdrawn post issue fee, one of the Primary Examiners did take it upon himself to call me to apologize and to vent.  He was very frustrated by the situation since he was a 20+ year veteran and his "snot-nosed punk of an SPE" had previously sat on the allowance for almost 6 months before letting it mail, then after I mailed in the IFT a month after getting the NOA, the SPE demands it be yanked back into prod.  So you get that nice letter from the TC Director telling you you've been hosed again. 

[JimIvey]

Had a recent case in which a final was received, but allowable matter in the form of claims only objected to was present. 

Prior to Dudas, that was the norm.  Narrower dependent claims would be identified as allowable.  I sometimes include very narrow claims in hopes of getting some enforceable rights relatively early, but -- since Dudas -- I either get all claims allowed or none, never some.  And, I never get any claims allowed without appealing.  

In fact, back in the day, I used to think the allowing of some claims was a sort of "gaming" to get FWCs and CPAs (the grandfather and father of RCEs) and avoid appeals that required extra work for the same counts.  For example, I'd argue only the independent claims in the first Office Action (no need to rush prosecution pre 1995 and minimizing arguments to minimize prosecution history estoppel) and, on final, some of the dependent claims would be allowable and only objected to.  I think allowance has since been made particularly onerous for examiners, so it's just not easy to allow even very narrow claims -- at least in my technologies.

Re Isaac's note on the MPEP, yeah, my recollection was from many years ago.  In many cases, it's ridiculously easy to guess what an applicant might do in response to an amendment.  Suppose the spec makes a big deal of being able to work with multiple widgets, yet the claims all say "one or more widgets" and the cited art shows only one widget.  Can anyone here guess what the applicant (or its representative) is likely to do in that instance?  Is there truly any doubt?

Regards.

[klaviernista]

I've never experienced either but suppose it could be a good thing, if there were art-related questions it would be good to answer them now instead of having to file for a re-exam; I might be inclined to thank the examiner. Is it PTO policy that once such a decision is made internally, a phone call is made to the practitioner of the case promptly before the papers are even mailed ?  If not, that could be an improvement as I generally like to know ASAP changes on stuff like that. 

I have had cases withdrawn from issuance by the PTO a few times, and have never received an alerting phone call.   

[ChrisWhewell]

I've never experienced either but suppose it could be a good thing, if there were art-related questions it would be good to answer them now instead of having to file for a re-exam; I might be inclined to thank the examiner. Is it PTO policy that once such a decision is made internally, a phone call is made to the practitioner of the case promptly before the papers are even mailed ?  If not, that could be an improvement as I generally like to know ASAP changes on stuff like that. 

None of them were based on new art or on new questions of the old art.  They were based on SPEs being so terrified of making a mistake that their solution was, "No patents issue = no one can accuse me of a mistake".   In some of the units I was told they were under QC/2nd look.

There does not appear to be a policy of calling before hand.  Generally, we just get the notices.  In one of the cases withdrawn post issue fee, one of the Primary Examiners did take it upon himself to call me to apologize and to vent.  He was very frustrated by the situation since he was a 20+ year veteran and his "snot-nosed punk of an SPE" had previously sat on the allowance for almost 6 months before letting it mail, then after I mailed in the IFT a month after getting the NOA, the SPE demands it be yanked back into prod.  So you get that nice letter from the TC Director telling you you've been hosed again. 

I had an interview which resulted in agreement on acceptable language in an amendment, subsequently filed, but for which the next OA back was a rejection !!   My read is that they're concerned about Bilski; I suppose its good, I'd hate to have questions arise in six months when the decision comes out that my patent granted in Nov 09 may be invalid.  Nevertheless, at the time it can be frustrating. 

[DogDayPM 9er9er9er]

I had an interview which resulted in agreement on acceptable language in an amendment, subsequently filed, but for which the next OA back was a rejection !!   My read is that they're concerned about Bilski; I suppose its good, I'd hate to have questions arise in six months when the decision comes out that my patent granted in Nov 09 may be invalid.  Nevertheless, at the time it can be frustrating. 

Too funny, "an interview... but for which". 

I'm sitting here struggling to remember the last time an agreement on acceptable language was actually honored.

Hang on, still thinking.....

...maybe it was that time... ...nope, uh....


...hmmm, not that other time, neither....

...I'll get back to you on it.

[ChrisWhewell]

Ever had any claims rejected as being "too broad", but the Examiner refuses to cite any prior art ?

[JimIvey]

Ever had any claims rejected as being "too broad", but the Examiner refuses to cite any prior art ?

Yep!  I said, "'Too broad' means 102/103.  Show me the art." 

EXAMINER:  "I can't find it, but my supervisor won't allow the case and tells me the art is out there and to go find it."

ME:  "What happens if you never find that art?"

EXAMINER:  ...just a sad look....

<end of interview>

Regards.

[ChrisWhewell]

About 10 years back, I had a grand pooh bah call with such a rejection after I had thwarted two or three rounds of bogus rejections.  He spent what seemed like 15 minutes telling me about his many years of service and even about a gold medal he was awarded and other career highlights of the past XX years.   I pondered the relevance to my case.   He the proceeded to tell me he was rejecting my claims because they were too broad.  My voice raised, ever so very slightly after inquiring for art and none being identified, he detected it and raised his and wouldn't stop.  The call ended rather abruptly.  He didn't know who he was talking to, but, it wasn't a mild-mannered reporter from the Daily Planet at hangup time.

I sent the case to outside counsel so as to avoid future horn lockage - the issues were clear - there weren't any on the merits;  the original claims prevailed.  I was shocked - an attempt at rejection for breadth, but based on none of the patent laws, by a super senior awarded employee.   Sometimes I still ponder his motivations, for whom, and whether that mindset is rare.  Fortunately, we're permitted, er, required to be zealous.

[Examinerguy]

Yep!  I said, "'Too broad' means 102/103.  Show me the art." 

EXAMINER:  "I can't find it, but my supervisor won't allow the case and tells me the art is out there and to go find it."

ME:  "What happens if you never find that art?"

EXAMINER:  ...just a sad look....

<end of interview>
Regards.

I've been in this situation before. Sometimes I have even seen and read the art, but for some reason can't find it again.

[ChrisWhewell]

Imagine if you were a practitioner in that instance.     

 

[JimIvey]

Yep!  I said, "'Too broad' means 102/103.  Show me the art." 

EXAMINER:  "I can't find it, but my supervisor won't allow the case and tells me the art is out there and to go find it."

ME:  "What happens if you never find that art?"

EXAMINER:  ...just a sad look....

<end of interview>
Regards.

I've been in this situation before. Sometimes I have even seen and read the art, but for some reason can't find it again.

Then what happens?  Gitmo for patent applications?  Held indefinitely without proof of invalidity? 

I understand your supervisor has put you in a very difficult situation, but I wonder what really ought to happen..... 

I'll just respectfully note that the burden rests with the PTO to establish invalidity of claims in pending applications.  What should happen if the PTO can't meet that burden?  Here's a hint:  courts have the authority to declare allowed and issued claims invalid, so there's a backstop of sorts -- almost as if someone expects claims to get out of the PTO that probably shouldn't have gotten out in a perfect world.

Regards.

[Examinerguy]

Then what happens?  Gitmo for patent applications?  Held indefinitely without proof of invalidity? 

I understand your supervisor has put you in a very difficult situation, but I wonder what really ought to happen..... 

I'll just respectfully note that the burden rests with the PTO to establish invalidity of claims in pending applications.  What should happen if the PTO can't meet that burden?  Here's a hint:  courts have the authority to declare allowed and issued claims invalid, so there's a backstop of sorts -- almost as if someone expects claims to get out of the PTO that probably shouldn't have gotten out in a perfect world.

Regards.

No, but usually I will eventually find the reference. I just won't have it for that round of prosecution and will rely on good ol' 103.

[JimIvey]

No, but usually I will eventually find the reference. I just won't have it for that round of prosecution and will rely on good ol' 103.

If "good ol' 103" means a rejection under Section 103 that's a bit of a stretch of reason (i.e., without a reasonable basis), that's delay and money down the toilet.  If it happens more than 1-2 times in a row for a given application (reference just can't be found), then it really is Gitmo for patent applications.

I'm not accusing anyone here of knowingly rejecting under Section 103 without a reasonable basis, but I see it all the time.  And, the interview recounted above was one of those cases. 

I think it's good to keep in mind that, in some cases, these applications represent jobs for people.  Yes, some jobs really do hinge on the success of patent applications from time to time.  Some startups fail to close a round of venture financing because of the inability to show some progress in establishing the protectability of the technology at the core of the business model.  I've seen it happen several times.  Closing a round of financing often means hiring people to achieve the "deliverable" of the round.  Failing to close the round often means firing as many as you can while still remaining in business with a different business model or closing down altogether.

I don't say this to suggest examiners should allow everything to make more jobs.  Just don't take kicking back applications with weak rejections lightly.  For us on the outside, this is serious business with real consequences.

Regards.

[ChrisWhewell]

Has 37 CFR 1.104 (c) (2) been amended or deleted recently ? 

[Examinerguy]

I think it's good to keep in mind that, in some cases, these applications represent jobs for people.  Yes, some jobs really do hinge on the success of patent applications from time to time.  Some startups fail to close a round of venture financing because of the inability to show some progress in establishing the protectability of the technology at the core of the business model.  I've seen it happen several times.  Closing a round of financing often means hiring people to achieve the "deliverable" of the round.  Failing to close the round often means firing as many as you can while still remaining in business with a different business model or closing down altogether.

I don't say this to suggest examiners should allow everything to make more jobs.  Just don't take kicking back applications with weak rejections lightly.  For us on the outside, this is serious business with real consequences.

Regards.

Couldn't agree more. However, in my opinion a patent is something sacred. If I know that something isn't allowable I will have a hard time allowing it whether proper art can be found quickly or not.

On a similar note, I have a question for attorneys/agents. If an application is very time sensitive, why do attorneys wait 3-6 months to file a response? I very rarely get cases that an attorney/agent responds in a month to. However, I remember one case that went like this:

1.) Non-final rejection
2.) 2 weeks later, interview
3.) 1 week later, amendments
4.) 2 weeks later, final-rejection
5.) 2 weeks later, interview
6.) 2 weeks later, RCE
7.) 3 weeks later, Allowance.

By the way, I respond quickly to cases that are still fresh in my head. When an attorney files within 2-4 weeks of me submitting an action, I love to work on it as soon as possible.