AF amendments and appeals

[JimIvey]

First, not every patent application is quite so time-sensitive.

Second, back in the day (pre-Dudas), I had cases that went like that.  One went even faster:

• File application.
• a few months later, file Petition to Make Special along with Prelim. Amendment to overcome art discovered in preparation of the Petition.
• a few weeks later, petition granted, all claims allowed.

I'm not seeing that anymore.  Here's a counter example involving an interview (during Dudas).

• Office Action received.
• Within a couple months, interview in which agreement was quickly reached.  The couple months was used to set up multiple interviews to justify the trip from the West Coast.
• Within 1 week, paper filed in accordance with the agreement reached in the interview.
• A few weeks later, call the examiner and ask if the filing is in order.  Told she won't be able to look at it for 6-8 weeks.
• 8 weeks later, call examiner as instructed.  Told she won't be able to look at it for 6-8 weeks.
• 8 weeks later, call examiner as instructed.  Told she won't be able to look at it any time soon.
• 2 years later, a new, final Office Action on entirely new grounds from a new examiner.

And, I'll just note that my comment about the seriousness of this work is in response to a comment that "good ol' 103" would be used to delay prosecution if a particularly good reference couldn't be found.  That's very worrisome and, in the context of me watching clients wither and go out of business, very disturbing.

And, patents sacred?  Really?  Like the Shroud of Turin?  You realize there's over 7 million of them, right?  They're not that sacred.

Regards.

[DogDayPM 9er9er9er]

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.

Guess it depends.  Maybe you're in-house and have a docket of 400-500 U.S. cases to prosecute, and let's say on average each has been filed in 15 countries.  According to your client ca. 20% of the docket is "time sensitive".  I'm lucky if I manage to get to the time sensitive cases in 3 mos for an NF and 2 mos for AF responses.  Because no matter what is going on with time-sensitive prosecution, the litigations are the really time-sensitive stuff anyway.

If you're out-house, then you snatch up those rejections to time-sensitive cases as soon as... the corporate client's docket clerk manages to get them to you (usually w/in 2-4 weeks of the mail room date).  Or you set up your own watches at the PTO, EPO, etc. and get it yourself a couple of weeks earlier.  And in any event you turn out a proposed response ASAP that you know the in-house reviewer is going to sit on until shortly before the due date.  If you're lucky that is.

Agree with your other comment about "if I know something isn't allowable", as seen from the other side of the fence.  I'm always bumping into art when working on a project completely unassociated with a particular patent case, but which (once I've bumped into it) should be cited in said particular case.  Then I lose the blasted sticky note and forget about it until filing a response in that case.  That's when I have an "oh crap" moment and end up wasting an hour or two searching based on my vague recollections, until I find it and can cite it along with that response.

[Examinerguy]

First, not every patent application is quite so time-sensitive.

Which is why I bolded and italicized, "If an application is very time sensitive." I've done more than 1000 cases in my career and maybe 3 or 4 have responded in an accelerated manner as mentioned above.

And, I'll just note that my comment about the seriousness of this work is in response to a comment that "good ol' 103" would be used to delay prosecution if a particularly good reference couldn't be found.  That's very worrisome and, in the context of me watching clients wither and go out of business, very disturbing.

In my opinion many references can be used to reject an application. In fact, very rarely is a perfect 102 rejection found for the full claimed invention. Just because there is better art out there that is a 102 doesn't make a "gold ol' 103" a bad rejection; nor is it meant to delay prosecution. 

And, patents sacred?  Really?  Like the Shroud of Turin?  You realize there's over 7 million of them, right?  They're not that sacred.

Sacred is how we have to treat them as examiners because we never know which ones will affect a company. On the flip side to your above argument, if I grant a patent to competitor A, competitor B may be put out of business (losing jobs, money, etc.). So if we know for a fact that there is art out there...do you think we should fill out the allowance paperwork?

[JimIvey]

So if we know for a fact that there is art out there...do you think we should fill out the allowance paperwork?

If the examiner "knows" there's prior art out there, get it and put it on the record so the applicant can amend the claims and get some sort of valuable protection or drop the application and move on to something else.

In short, whatever you "know for a fact", put it on the record.  If you can't put it on the record, then you don't know it for a fact.  Don't reject cases in view of phantom art.

Regards.

[Examinerguy]

If the examiner "knows" there's prior art out there, get it and put it on the record so the applicant can amend the claims and get some sort of valuable protection or drop the application and move on to something else.

In short, whatever you "know for a fact", put it on the record.  If you can't put it on the record, then you don't know it for a fact.  Don't reject cases in view of phantom art.

Jim, I feel you are purposely leaving out the premise of what the argument was based on. Let me copy and paste it for you...

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.

Therefor, the examiner cannot find the art, but knows it is out there. Trust me on this, it is a conversation I have had numerous times with examiners. I've had examiners give me the paragraph number of a case they have read, but can't find again for the needed limitation. The scenario is even more prevalent for NPLs.

[Obviously]

Examinerguy:

What do you do in a situation where you use an arguable 103 b/c you cannot find the good art you "know" is out there and the applicant calls you out on it by appealing the 103?  Do you then spend the time to actually find it, and advance prosecution, so just gin up some new 103 based on relatively poor art?

[Examinerguy]

Examinerguy:

What do you do in a situation where you use an arguable 103 b/c you cannot find the good art you "know" is out there and the applicant calls you out on it by appealing the 103?  Do you then spend the time to actually find it, and advance prosecution, so just gin up some new 103 based on relatively poor art?

Two parts to your question.

1.) If the 103 is arguable that means it has merit as a rejection. If the rejection was not arguable and 100% wrong, then the 103 was improper and I would open up prosecution again. By the way, being wrong doesn't mean the board told me I was wrong...as we all know the board doesn't always see either sides point of view clearly enough, or have enough time to make the proper decision (all of the time).

2.) "Do you then spend the time to actually find it, and advance prosecution"  As stated before, I have already spent time trying to find it. Every round of prosecution I will attempt to find it up to the time that I am allotted to do so. However, unless I'm overturned at the board, I will use the "arguable" 103 assuming it holds merit.

[Isaac]

1.) If the 103 is arguable that means it has merit as a rejection.

I contend that this is not the proper standard of review by the examiner.  The examiner is supposed to weigh the evidence supporting his position and that of the applicant and determine by *a preponderance of the evidence* which position is correct.   A rejection is to be maintained only when it is more likely than not that the examiner is correct.  That means that in some cases the examiner should back off of an arguable rejection.  (See MPEP 706, "UNIFORM APPLICATION OF THE PATENTABILITY STANDARD")

I also agree that it is impossible for an examiner to actually behave in such a manner.   An examiner who does so is going to be second guessed incessantly and charged with error by someone who weighs the evidence differently.  Further, formal review at the Board is far more deferential to the examimer and cannot enforce the standard stated in the MPEP.

[Examinerguy]

1.) If the 103 is arguable that means it has merit as a rejection.

I contend that this is not the proper standard of review by the examiner.  The examiner is supposed to weigh the evidence supporting his position and that of the applicant and determine by *a preponderance of the evidence* which position is correct.   A rejection is to be maintained only when it is more likely than not that the examiner is correct.  That means that in some cases the examiner should back off of an arguable rejection.  (See MPEP 706, "UNIFORM APPLICATION OF THE PATENTABILITY STANDARD")

I agree and act as such in a normal situation. However, we are speaking about the specific case when the examiner knows a specific piece of art that he/she cannot readily find again. The MPEP can say all it wants, but if I know there is something out there that I have read that reads on applicants claims, I will use the weaker rejection until I can find the art in later prosecution. The weaker rejection is the strongest rejection I can formulate at that time.

[Obviously]

Application purgatory indeed.

[JimIvey]

Jim, I feel you are purposely leaving out the premise of what the argument was based on. Let me copy and paste it for you...

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.

Therefor, the examiner cannot find the art, but knows it is out there. Trust me on this, it is a conversation I have had numerous times with examiners. I've had examiners give me the paragraph number of a case they have read, but can't find again for the needed limitation. The scenario is even more prevalent for NPLs.

I'm fully aware of the context.  Your rejection is based on your memory, and your memory alone (yeah, there's the "good ol' 103" rejection, but the missing 102 reference appears to be the real reason for rejection throughout this discussion).  And, your memory is infallible, unlike everyone else's memory.  Have you ever cited a 102 reference that the applicant was able to overcome by argument or amendment?

I think you're overlooking the fact that, with the all-important 102 reference in hand, the applicant can amend or abandon (or -- heaven forbid -- persuasively point out why the 102 reference isn't applicable).  But, as it stands, the examiner will find no argument/amendment persuasive as long as the primary reference remains hidden from the applicant and can't be directly addressed.

Consider the counter-situation.  Let's say that the entire rejection is based on one killer 102 reference.  I have proof that the reference is not a valid reference.  Perhaps the publication date is mis-printed on it and it wasn't published until years later.  Or perhaps it reports research that was fraudulent (completely faked).  Just imagine the reference is not a valid reference and I have proof.  Except that I don't.  I know I've seen it.  I know what it says.  I just can't find it.

So, I file a sworn statement that I've seen this proof, I remember it's content, but I can't find it.  And, just for the sake of argument, assume I'm right. 

Do you remove the 102 reference?  If patents really are sacred, they should be allowed when allowable.  This hypothetical application is allowable.

How do I explain to my client that the case remains rejected in view of a reference that can't be found and that, until the reference is found, it will not be allowed and that, until then, we'll be faced with rejection after rejection and nothing we say will be persuasive?

If you can't reject properly, don't reject improperly.  In this situation (of the lost reference), I would much rather that prosecution was delayed until the reference is found -- it's less delay than prosecution centered on red herring art. 

And, like what most people do when they can't find something, after a reasonable amount of time, the examiner should proceed as if the missing art doesn't exist.  It's the right thing to do.  Anything else is Gitmo for patent applications.

Regards.

[Examinerguy]

Do you remove the 102 reference?  If patents really are sacred, they should be allowed when allowable.  This hypothetical application is allowable.

How do I explain to my client that the case remains rejected in view of a reference that can't be found and that, until the reference is found, it will not be allowed and that, until then, we'll be faced with rejection after rejection and nothing we say will be persuasive?

If you can't reject properly, don't reject improperly.  In this situation (of the lost reference), I would much rather that prosecution was delayed until the reference is found -- it's less delay than prosecution centered on red herring art. 

And, like what most people do when they can't find something, after a reasonable amount of time, the examiner should proceed as if the missing art doesn't exist.  It's the right thing to do.  Anything else is Gitmo for patent applications.

Regards.

I understand completely that it is a hard pill to swallow. It is completely unfair and provisions should be made to give the examiner more time to find that missing reference. However, if an examiner gets a 100 claims in an application or 1, he/she still has the same amount of time to find (search) and reject/allow all of the limitations. I would not go on indefinitely rejecting. But I would give myself until the RCE to find the missing reference. From an examiners perspective, to allow immediately when the examiner knows the reference is out there is tough. Whats worse is if the reviewer who reviews your allowances finds the reference...then that reviewer questions everything you deem allowable (making your life hell when allowing things in the future). 

[Robert K S]

if an examiner gets a 100 claims in an application or 1, he/she still has the same amount of time to find (search) and reject/allow all of the limitations.

Yeah, this is another thing that needs to change.  As others have pointed out, it amounts to theft of the extra claims charges.  Nothing for something, and checks for free.

Kappos should spend his time thinking about and advocating for this issue rather than starting a blog to cheerlead for S.515.

[ChrisWhewell]

I understand completely that it is a hard pill to swallow. It is completely unfair and provisions should be made to give the examiner more time to find that missing reference. However, if an examiner gets a 100 claims in an application or 1, he/she still has the same amount of time to find (search) and reject/allow all of the limitations. I would not go on indefinitely rejecting. But I would give myself until the RCE to find the missing reference. From an examiners perspective, to allow immediately when the examiner knows the reference is out there is tough. Whats worse is if the reviewer who reviews your allowances finds the reference...then that reviewer questions everything you deem allowable (making your life hell when allowing things in the future). 

I've seen quite a few things in the past and once in a while an inventor will describe what they believe is an invention, but after considering it, I sense or know there is a reference out there (sometimes in a related but different field) that I too can't put my finger on at the time.   Sleeping on those a day or two can help recollecting its location.  Did that recently by providing prior art to an inventor as the result of a quick search he didn't ask for, that impacted the course of his thinking.  I knew the potentially pertinent reference was out there, but wasn't able to deliver it until a week after initially recalling its existence.  These pesky human limitations....

[Isaac]

I understand completely that it is a hard pill to swallow. It is completely unfair and provisions should be made to give the examiner more time to find that missing reference.

The problem here is of course compact prosecution.  The applicant cannot really advance prosecution with out knowing the true reason that his claims are not allowable, and the examiner must stonewall until the applicant's opportunity to properly amend the claims is gone.  Further under the new rules placing RCEs on the special new docket, I'd expect the examiner to put off picking up this kind of case even after an RCE is filed.

Hopefully this scenario does not happen too often.