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[patentatt]

Who enters claim amendments into the PTO system?

I have a final rejection that restates the claim language.  However, the restated claim language contains many errors.  It includes most of the newly added language, but doesn't delete a lot of language that was properly deleted in an amendment.  This results in different nouns bumping up against each other in a way that makes no sense.  But that didn't stop the examiner from writing it down or examining the case.

Question:

Who's fault is this?  The examiner's or the legal instrument examiner's?  Or both?

Or does the process of entering amendments, and writing Office Actions based on the entered amendments, work at the PTO?

[klaviernista]

Question:

Who's fault is this?  The examiner's or the legal instrument examiner's?  Or both?

Or does the process of entering amendments, and writing Office Actions based on the entered amendments, work at the PTO?

If the erroneous language is in the Final Office Action (and not the papers in which the amendment was submitted), it is the examiner's fault.  LIE duties do not extend very far past docket management and the examination of certain applicant filings (e.g., terminal disclaimers) for specific formalities.  They do not set up office actions or type them for examiners.  Rather, the examiner's use a tool called OACS (which, if I recall correctly, means "Office Action Correspondence System") to draft office actions and other communications.  Think of OACS as a highly customized version of MS Word.

If the examiner is a primary, his/her work is rarely reviewed.  As a result, sloppiness such as what you are seeing in your final OA is often not caught.  If the examiner is a junior examiner, his/her work must be reviewed by a primary prior to it being sent out of the Office.  If that is the circumstance in your case, you can attribute some of the blame to the junior examiner's SPE or his primary.

[patentatt]

Question:

Who's fault is this?  The examiner's or the legal instrument examiner's?  Or both?

Or does the process of entering amendments, and writing Office Actions based on the entered amendments, work at the PTO?

If the erroneous language is in the Final Office Action (and not the papers in which the amendment was submitted), it is the examiner's fault.  LIE duties do not extend very far past docket management and the examination of certain applicant filings (e.g., terminal disclaimers) for specific formalities.  They do not set up office actions or type them for examiners.  Rather, the examiner's use a tool called OACS (which, if I recall correctly, means "Office Action Correspondence System") to draft office actions and other communications.  Think of OACS as a highly customized version of MS Word.

If the examiner is a primary, his/her work is rarely reviewed.  As a result, sloppiness such as what you are seeing in your final OA is often not caught.  If the examiner is a junior examiner, his/her work must be reviewed by a primary prior to it being sent out of the Office.  If that is the circumstance in your case, you can attribute some of the blame to the junior examiner's SPE or his primary.

So the examiner enters the claim amendments?

I mean: at some point, somebody has to use OCR, or manual intervention, to enter the claim amendments that applicants submit.  Does the examiner do this?

The sloppiness in the OA is not a result of grammatical errors or misspellings.  It's a simple issue of the claim amendments not being entered correctly.  Whoever entered the amendments, the Examiner was working off of an updated claim set that was incorrect.

It sounds like the examiner does this.  That would be a huge pain in the ass and waste of the examiner's time.

[lazyexaminer]

Question:

Who's fault is this?  The examiner's or the legal instrument examiner's?  Or both?

Or does the process of entering amendments, and writing Office Actions based on the entered amendments, work at the PTO?

If the erroneous language is in the Final Office Action (and not the papers in which the amendment was submitted), it is the examiner's fault.  LIE duties do not extend very far past docket management and the examination of certain applicant filings (e.g., terminal disclaimers) for specific formalities.  They do not set up office actions or type them for examiners.  Rather, the examiner's use a tool called OACS (which, if I recall correctly, means "Office Action Correspondence System") to draft office actions and other communications.  Think of OACS as a highly customized version of MS Word.

If the examiner is a primary, his/her work is rarely reviewed.  As a result, sloppiness such as what you are seeing in your final OA is often not caught.  If the examiner is a junior examiner, his/her work must be reviewed by a primary prior to it being sent out of the Office.  If that is the circumstance in your case, you can attribute some of the blame to the junior examiner's SPE or his primary.

So the examiner enters the claim amendments?

I mean: at some point, somebody has to use OCR, or manual intervention, to enter the claim amendments that applicants submit.  Does the examiner do this?

The sloppiness in the OA is not a result of grammatical errors or misspellings.  It's a simple issue of the claim amendments not being entered correctly.  Whoever entered the amendments, the Examiner was working off of an updated claim set that was incorrect.

It sounds like the examiner does this.  That would be a huge pain in the ass and waste of the examiner's time.

What do you mean by "entered"? Do you mean who scans it into the image file wrapper record? Are you saying your paper was scanned incorrectly, leading the examiner to base his action on an incorrect (or unclear) paper?

Anyway, to answer one of your questions, the examiner has nothing to do with the scanning. That is done by contractors, and occurs before the examiner ever sees the case. The examiner will work off whatever is in the record, he doesn't make up the record himself. I guess I'm not really clear what else exactly you're asking...

[patentatt]

What do you mean by "entered"? Do you mean who scans it into the image file wrapper record? Are you saying your paper was scanned incorrectly, leading the examiner to base his action on an incorrect (or unclear) paper?

Anyway, to answer one of your questions, the examiner has nothing to do with the scanning. That is done by contractors, and occurs before the examiner ever sees the case. The examiner will work off whatever is in the record, he doesn't make up the record himself. I guess I'm not really clear what else exactly you're asking...

Let me clarify: I'm assuming, perhaps incorrectly, that during examination, the Examiner works with a text-editable and text-searchable copy of the claims.  For example, the errors in the OA that I mention above - these are clearly errors where the examiner has copied-and-pasted from some document, where the claim amendments were improperly entered.

Let me explain some more.  When attorneys work with claims that were previously amended, the first thing that we do is enter the claim amendments.  In other words, we prepare a clean copy of the claims, where, instead of having underlined words and struck-out words (for insertions and deletions in the amendment), instead we have a clean copy of pure words, as if the claim amendments were "entered."  That's what I mean by "entering" the claim amendments.  If the attorney is using "track changes" to mark the underlining and strikeouts in amendments, then the attorney "enters" the claim amendments by using "accept changes" in Microsoft Word.

I assumed, perhaps incorrectly, that examiner do something like this during examination.  In other words, I assumed that examiners have a text-editable and text-searchable version of the claims, and that they update this set of claims as amendments are made, just as attorneys do.  It would horrible if examiners just had to look at the Image File Wrapper, see what underlines and strikeouts were made to the claims, and then write an entire new Office Action by manually retyping whatever the new claim language is.

I really don't understand why this is so hard for others to understand.  "Entering" claim amendments - or "accepting" them - is a pretty simple and routine part of patent prosecution for attorneys.

1. don't examiners do something like accepting claim amendments?
2. don't examiners work with a text-editable and text-searchable set of the claims?
3. if they do, who updates the set of claims when amendments are made?

Any help is appreciated....

[jmegapac]

Let me clarify: I'm assuming, perhaps incorrectly, that during examination, the Examiner works with a text-editable and text-searchable copy of the claims.  For example, the errors in the OA that I mention above - these are clearly errors where the examiner has copied-and-pasted from some document, where the claim amendments were improperly entered.

Let me explain some more.  When attorneys work with claims that were previously amended, the first thing that we do is enter the claim amendments.  In other words, we prepare a clean copy of the claims, where, instead of having underlined words and struck-out words (for insertions and deletions in the amendment), instead we have a clean copy of pure words, as if the claim amendments were "entered."  That's what I mean by "entering" the claim amendments.  If the attorney is using "track changes" to mark the underlining and strikeouts in amendments, then the attorney "enters" the claim amendments by using "accept changes" in Microsoft Word.

I assumed, perhaps incorrectly, that examiner do something like this during examination.  In other words, I assumed that examiners have a text-editable and text-searchable version of the claims, and that they update this set of claims as amendments are made, just as attorneys do.  It would horrible if examiners just had to look at the Image File Wrapper, see what underlines and strikeouts were made to the claims, and then write an entire new Office Action by manually retyping whatever the new claim language is.

I really don't understand why this is so hard for others to understand.  "Entering" claim amendments - or "accepting" them - is a pretty simple and routine part of patent prosecution for attorneys.

1. don't examiners do something like accepting claim amendments?
2. don't examiners work with a text-editable and text-searchable set of the claims?
3. if they do, who updates the set of claims when amendments are made?

Any help is appreciated....

1. Examiners work from claims in the form of Image File Wrapper. Most examiners do use OCR to convert the images to text and work on them (after fixing OCR errors).
2. No. The capability is there, just not available to the examiners yet (i.e., beta).
3. Contractors. The submitted amendments are entered into PALM by the contractors. Examiners just pick the latest claim amendment in the form of Image Wrapper to work on.

In your case, the claims are most likely entered properly. The restated claim in the final rejection was written by the examiner, and the examiner likely made a mistake in indicating the amended language properly. However, the examiner's mistake has no bearing on what is entered officially. The amendment was already entered before the case was docketed to the examiner. I can think of a couple of situations where an examiner's action affects whether an amendment is entered or not: a) notice of non-compliant amendment; and b) entering or not entering an after final amendment. There may be others, but I can't think of any right now.

[lazyexaminer]

jmegapac pretty much covered it. The examiner just has the Image File Wrapper, basically the same thing you have in PAIR but slightly better. But it isn't searchable or editable. It can be OCR'd to copy what's there into say a word document for the Office action.

There's no central file somewhere where the claims exist--it's just that sheet in the IFW that you guys submitted. So the claims aren't "entered" except that the sheet that you file is scanned into the record. If the examiner makes his own copy that's on him, but that isn't in any way official, and if the examiner messes up when he makes that copy, or when he writes the action, it has no bearing on the record. It would seem in your case that the examiner simply messed up when copying the claims into his action. He probably OCR'd and didn't fix it, or just typed really sloppily.

And yes, all of that is quite annoying. For the first action I'd usually first OCR the claims into the action (and fix any errors in the OCR process, it has gotten better it seems but still isn't great). Even better, if the claims are already published you can copy from that (patents and application pubs are text searchable/copyable), again ensuring they are accurate and current. If the set is especially long and/or complicated I'll sometimes keep a separate document that is just the claims, but that's not usual. After amendments I'll often first change the claims in the action so they match the amendment and the action is working with the right set, and print out the marked up copy so I can easily see what's different. Other than that, depends on the case.

I will add that they are redoing this whole interface and part of the change will be to make the record searchable (and I assume copyable like a pdf, not OCR). I believe that testing will begin this month in the CRU, I'm curious to see what it is like.

Hope that helps

[klaviernista]

I really don't understand why this is so hard for others to understand.  "Entering" claim amendments - or "accepting" them - is a pretty simple and routine part of patent prosecution for attorneys.

Its hard for folks on the board to understand because the PTO does not enter amendments in the manner you have assumed.  Examiners literally look at a scanned image (in PDF form) of the claims as they were submitted by the applicant in the last response.  That means with the strikethroughs, the underlining, etc.  As others have mentioned, an examiner might choose to prepare a clean set of claims himself, but that is usually to help them perform their examination function.  It shouldn't end up in the record unless its made part of an office action, and if there are errors there it is simple enough to point them out and move on.

FWIW, when I was an examiner I rarely found it useful to spend time making a clean set of claims.  The only exceptions were when the applicant made so many amendments to the claims that it was difficult to parse through the claim language without seeing a clean copy.  I did incorporate the applicant's claim language into my Office Actions, but it was rarely the case that I felt that using OCR would make that process any more efficient.  This in part was due to the fact that OCR was a very new technology when I was at the PTO, and it did not work very well (particularly with respect to subscripting and superscripting).