While you make some good points I must comment on some of them to give some perspective from my view as a former patent examiner who started back in the 1970s and, after a hiatus, is back on the "other side" as a patent agent.
The essence of my complaint with your comment is the tone that posits the poor, poor PTO against the greedy and corrupt politicians and applicants. While I agree that, at least as that applies thoroughly to the politicians there is plenty of blame to laid at the feet of the self perpetuating PTO management, the so-called permanent bureaucracy, who survive and select their successors from political administration to political adminstration, from Congress to Congress.
The production system, set up in 1960s as "goals" and given real teeth with the introduction of the Performance Appraisal Plan formulated in response to Carter's Civil Service Reform effort assigns an average "expectancy" in each art area against which examiners are measured (anything less than 90% is unsatisfactory; falling below that generates first an oral warning to get it above by three months; failing that a written warning with another thre months; failing that, being fired) the achievement is an average; examiners are not measured on an individual application basis, so an examiner is free to allocate his/her production requirment as he/she sees fit. Obviously if more time is spent on more difficult cases, less time must be spent on other cases, simple or not. Examiners get credit toward their production for each first action on the merits (FOAMs) and each action in the nature of a disposal (allowance, abandonment, examiner's answer for an appeal). Examiner's can write off some time for specified tasks, but all remaining time is "examining time") and is figured in calculating production. And, if the applicant appeals, the examiner writes an examiner's answer to the applciant's appeal brief and gets a disposal count. The case goes up to the board and returns after decision; if reversed or affirmed in part the examiner passed the case to issue but gets no further count; if affirmed it just gets noted and sent to abandoned files (court appeal is possible but that is very rare).
Because measuring things like search adequacy, rejection/allowance judgement are somewhat subjective but metrics sucha s production, workflow standards are objective and that meeting or exceeding the latter contribute to the "good" of reduced pendency management of the patent examining corps has be, at a fundamental level, been based on these metrics. Any issues with quality primarily arise from outside pressure, which management responds with all kinds of initiatives such as "quality review" or "second pair of eyes" but nothing to do with really improving search effectiveness or giving more average time pre case so that the best prior art is likely to have been developed in most of the applications.
Currently outside quality criticism (cat pointer, swinging on swing) have lead to a reject,reject, reject mantra, which has had the effect of lots of crap rejections being cranked out; lots of cases have been pending even longer because lots of non-final rejections comming from newbies who are not finding good art and just keep sending out easily refuted rejections after being goaded by supervisors to get better art and to keep making new (yet still junk) rejections. Management is in a trap of their own making from decades ago and now they can't even dig themselves out of it despite an unprecedented hiring orgy which scoops up lots of low production newbies, many of whom don't last more than two or three years. And, in any case, most managers doen't realize this, and just insist that examiners are lazy, incompetant dolts who (with the rare exception of those promoted into management) can't meet their simple, common-sense demand to just crank out thoroughly search and argued actions in the time allotted, preferably less so as to reach the Office goals for reducing pendency. Although all top civil service managers came from the examanin
Just as a point of correction - All utility patents issued from applications filed on or after June 8, 1995 have a term of 20 years from the earliest effective filing date, which replaced the earlier 17 year term which began on the date the patent actually issued. The "effective filing date" is either the actual filing date or the earliest filing date of any application on which the subject application ( the one maturing into the patent) claims a benefit (e. g. "continuations", "divisions"). There are a few extensions that can occur either for drug patents on drugs whose sale is delayed by FDA approval and, more recently, for excessive delays in prosecution in the PTO.
This is a common misconception. This will not defeat someone else who conceives and files for a patent later in the US. From 35 USC 102:
A person shall be entitled to a patent unless-- ...
(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. (Emphasis added)
You need to actively work on it and have reduced it to practice (the latter which is satisfied by filing a patent application). Your triumphant opening of the envelope might garner you bragging rights, but no destructive effect on the patent rights of others.
Production is measured in units called "balanced disposals" which is the average, over any period of measurment (bi-week, quarter, fiscal year) of the number of first actions on the merits (N) and the number of disposals (D, which are allowances, abandonments, or examiners answers on appeal). For each of the various art areas a historical expetancy X is assigned as so many hours per balanced disposal. the office wide expectancy for this is a bit over 20 hours per balanced disposal for a hypothetical GS-12 examiner. For examiners at other grades/authority levels this is adjusted by a factor as follows: GS-5 0.6 GS-7 0.7 GS-9 0.8 GS-11 0.9 GS-12 1.0 GS-13 1.15 GS-13 1.25 (partial signatory authority) GS-14 1.35 (full signatory authority, primary examiner) GS-15 1.45 (full signatory authority, primary examiner expert)
There are not many GS-15s; the typical top for "lifers" is GS-14 primary examiner. A primary has to really crank out work and make sure their production does not fall below 95% of their expectancy or bad things be gin to happen. 4 quarters of 90% and you're out the door. Many supervisors press examiners to not produce below 100% even if they are above 95% (fully sucessful in the production element of their performance appraisal plan)
...10% bonus if a 130% efficiency rating is maintained for the 4 quarters...
If you enter as a GS-5 your production quota is 60% of the nominal GS-12(100%) production quota for the expectancy assigned to the docket that you will be working in (varies by art). By the time you make Primary Examiner (GS-14) you have to crank out 135% of the GS-12 expectancy. That's a factor of 2.25 more. In a recent GAO Report recent hires who are leaving the PTO in droves cited "outdated production goals" as one of the leading reasons for leaving, and they weren't meaning too much time. For decades a management culture built on principles of ever tightening production, stricter date goals as the core of what was demanded. If quality and completness suffered it was ignored if nobody outside the Office noticed.
When the outsiders start to notice quality problems ( as has happened in the last few years)the response has been to increase "quality review" and orders to reject more and more, even if prior art references are crap, rather do anything to relax the production pressure wich might result in the finidng of better prior art and more thorough rejection of features tht might slip through.
The result of this is that management has painted itself in a corner; if they relax goals, the backlog will increase even more, but if they are maintained or even increased the hemorrhage of new hires will similarly increase. There is just no quick fix out of this. Any substantive change will require a stark change in management culture. Good luck with that.
The article has the facts wrong. The actual appellate decision on the merits was made one year ago, and not by the 10th circuit, but by the Federal Circuit court. The when the case returned to the District Court, the defendants moved for attorneys fees and costs. The current sanctions were made by the district court judge. If the plaintiffs and their attorneys appeal, it will go back to the CAFC, not the 10th circuit.
It's not a question of Capitalism, but one of government - specifically failing to properly allocate the resources needed to do the job. This was detailed in a recent gao report - patent examiners simply have too much production pressure to reliably and consistently discover and consider the best available prior art. This was already a problem when I started in the PTO way back in the '70s and only has intesified as production pressure has increased plus tasks not directly related to prior art search and action formation has been heaped on the examining corps.
Note that this scheme of running the PTO has festered over 4 decades and several administrations and Congresses both Democratic and Republican. No reform proposals I am aware of seems to address this fundamental problem, or seem to gloss over it (e. g. opposition? that time will have to be compensated; if examiners are forced to absorb it there won't be any remaining to examine anything).
Maybe because it hasn't issued as a patent - It has not been examined, it's a patent application that has been published. The article title is inacurate using "patented"
Actually, I've heard that this would not take pressure off examiners, but just the reverse. Current continuation practice (I lump in RCEs with continuations) effectively give examiners more time to work on a given disclosure since the continuations give the examiner the same two counts plus the benefit of an already developed prosecution history; properly used this enables the examiner to devote more time on the application. I read about one experienced examiner who counts on this and allocates her time to do a more thorough search and first action, leading either to allowance on the second action or a justified final rejection. If the applicant wants to present a claim which has not been vetted beforehand, or is not clearly allowable without a further search, or might require a new rejection not of record, entry is refused, applicant files an RCE and so the prosecution continues.
Take away the supply of RCE "counts" leaves the examiner to have to make up production just on new applications meaning there is less time, on average, to learn the case, make the search, etc. The result will be less effective time to work on each disclosure as the harsh production requirment starts to bite, leading to less quality.
This rule change (Along with the IDS changes that are due Real Soon Now) will not have any improvment on patent quality, and will even drive lesser quality if examiners are effectively forced to spend less time per application, not to mention the administrative fallout of more rules and proceedures to follow that don't contribute in any meaningful way to patent quality
But not by much. The application had been rejected several times until the applicant added the limitation that the cooling system be in a separate box from the box containing the computing system. I don't know the prior art, but this doesn't seem like such a big deal, but adding this limitation was the basis for allowing the application.
This very probably the case, as reading the board's full decision shows. However, after browsing over the long and contorted prosecution of this application, and considering the huge number of claims to consider it's clear that there was not enough time to do a proper job to meet the level of discussion and discourse required by the Board.
I have no idea if the examiner was given extra time to work on this application, but this is unlikely, or, if given, would hardly be enough to cover the work required. PTO management is fanatical about meeting production goals and meeting dates to crank out responses. Assuming that the business methods get among the most time to work on an application would mean a Primary Examiner would be expected to average getting out the equivalent of one full prosecution in about 40 hours that counts everything from when the examiner first sees the application until it sent off as an abandonment, allowance, or an appeal. the applicant here filed a Request for Continued Examination, so the examiner got another "balanced disposal", meaning that he had about 80 hours to get this out. Of course, the time is accounted on each application, but extra time spent on one application must come at the expense of working on other applications.
Give the spotlight that this application has been under I bet management will come down hard on the examiner, probably charging him/her with an "Action Taking" clear error, if not others. They will scold employees for not doing a sufficieent job, but will will continue to hold them to production standards. Therein lies the main reason the quality of work from the PTO is often very poor.
Gee, it looks like there will be dueling perpetual motion machine demonstrations tomorrow. Joeseph Newman has been promoting a "Gyro power" machine for decades. I first became aware him while working in the Patent and Trademark Office back around 1980 where his patent application was rejected, the rejection being affirmed on appeal.
One thing that bothers me about this is that this examiner mad at least one comment on a board or mailing list that, IMHO, exceeded what is prohibited by PTO policy. Although the post has the typical disclaimer as a personal opinion and not an official PTO position it still violates this policy.
Although he appears to be defending the work of others (either on this application or others; the record shows lots of examiner reassignments on this one) it still comprises lots of statements concerning "the validity or invalidity" of a specific, or related group of application(s), and that's a no-no. There might be a lessened burden if he was not a PTO employee at the time he made the comment, but it would still be dicey to comment on any specific application in which one had a contribution, or on which one had obtained "inside information." I know I've been out of the PTO for over a decade and a half and I would never comment on any application that I had examined or had a substantive participation.
Inventors: Doyle; Michael D. (Wheaton, IL) Assignee: Eolas Technologies, Inc. (Wheaton, IL) Appl. No.: 09/481,984 Filed: January 11, 2000
CROSS-REFERENCE TO RELATED APPLICATION
This application is a continuation of and claims the benefit of U.S. Provisional Application No. 60/115,502, filed Jan. 11, 1999, the disclosure of which is incorporated herein by reference.
Inventors: Beezer; John L (Redmond, WA), Silver; David M (Redmond, WA), Zeman; Pavel (Kirkland, WA) Assignee: Microsoft Corporation (Redmond, WA) Appl. No.: 10/870,472 Filed: June 18, 2004
This application is a continuation of and claims priority from application Ser. No. 09/465,081, filed Dec. 16, 1999, now U.S. Pat. No. 6,826,725, issued Nov. 30, 2004, the content of which is herein incorporated by reference in its entirety.
Thus, Eolas is entitled to a filing date of Jan. 11, 1999 and Microsoft is entitled to a filing date of Dec. 16, 1999. Thus Microsoft filed about 11 months later, but before any Eolas patent issued. Microsoft would be the Junior Party in an interference, and would have the burden of proof of prior invention.
Well, Mr. Best apparently originally patented or invented a radiant heat apparatus in the 1960's (too lazy to do a search) for drying paint which would have expired no later than December 31, 1986 (17 years after being issued as patents did until June 8, 1995 after which it was changed to 20 years from the effective filing date (with some special extensions). As far as I have been able to research the patent at issue is 4,321,857, which issued on March 30, 1982 and thus expiring on March 30, 1999, not 2000. Searching under the name "Willie Best" brings up 17 issued patents, 14 of which are of utility type.
It is, apparently, this patent that expired, not the original concept that applied to paint drying.
You were correct in intent, but this is not a "terminal disclaimer" but, rather a affidavit used to "swear behind" the date of a prior art reference. The applicant must show reduction to practice or conception with dilligence and must attach evidence (such as lab notebooks) similar to that which would be entered in an interference, except that all dates may be redacted out of the documents, with the inventors asserting (under the criminal penatalies for false oath or declarations) that all relevant dates were before the prior art date.
This will overcome a rejection based on 35 USC 102(a) type prior art, but not prior art applicable under 35 USC 102(b), the so called "statutory bar" that applies if the effective filing date of the application is more than one year after the prior art date.
If the invention is disclosed in a single document (printed publication, patent) with the requisite date, it anticipates the claimed invention under one or more provisions of 35 USC 102 (lack of novelty). It is only when no one prior art reference discloses the claimed invention that the question of obviousness under 35 USC 103 arises, usually requiring at least one additional piece of prior art to support it. It is technically true that a claim rejected/invalidated for lack of novelty under 35 USC 102 implicitly fails also under 35 USC 103 as obvious, since anticipation is the "epitome of obviousness".
I just read the syllabus (technically not legally binding; the actual opinion is, but there's almost no effective difference) of the opinion, and the SCOTUS basically shot down decades of Court of Appeals for the Federal Circuit and predecessor Court of Customs and Patent Appeals case law, bringing back the previously SCOTUS decided Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 17-18 as the solid basis for determining obviousness. Assuming the CAFC doesn't try to weasel out of this like they originally did around Graham ( or around Benson for software) this will have a potentially huge impact in the scope of claims issued by the PTO, or if a patent even issues in the first place. Much will depend on how PTO management interprets the decision and what guidelines are given to examiners, at least in short run until some appeals hit the CAFC.
Once again the SCOTUS has reigned in the CAFC which, as the most frequent appellate decider of patent law, gets to decide what the patent law is for years at a time, with only the relatively infrequent SCOTUS decisions permitting correction. Today is one of those infrequent occurances.
As another ex-examiner I agree with the points you have made. I took a quick look at the prosecution of this application. There were three non-final rejections made before the application was allowed. The examiner spent a good deal of time in laying out rejections under 35 USC 102 (anticipation) and 35 USC 103 (obviousness), using a two column format with the claim limitations in the left column and relevant sections from the prior art in the right column. The applicant made essentially no substantive changes to the claims and just asserted that examiner didn't show what was asserted. I think the examiner made a big mistake in the second and third rejections of failing to respond to the arguments made by the applicant in the amendments; this was noted by the attorney in the last amendment after which the application was allowed.
There are three things one must keep in mind in figuring out exactly what is covered by a patent. Fundamentally it is the claims that measure the invention, not the title or abstract, or random pieces of the specification. However, the language and terms in the specification must be interpreted in light of the description given in the specification. So, if a term in a claim is an "object library", for example, it wpould be interpreted as this term is discussed in the description. Finally, and relevant to the failing pointed out in the previous paragraph, the scope of the claims is further qualified by the back and forth of the comments and arguments made by the examiner and the applicant. If the applicant tries to avoid a rejection by arguing that a prior art reference feature is not covered by some limitation in the claim the applicant will be bound to this interpretation in any infringement action should a patent be issued. One of the purposes of making rejections, even if it might not be spot on a limitation is to flush out and clarify such possible ambiguities. This is particularly applicable here where an examiner decides to allow a claim previously rejected with no further limitation added. If an applicant is going to squeeze through a narrow "hole" in the prior art not coverable by an obviousness rejection it is important to make sure it is as narrow as possible. By failing to engage the attorney's arguments in the following rejections here the examiner weakened this aspect of prosecution. Instead it looks pretty much like set arguments back and forth, with the examiner essentially saying "OK, I give up, you win" with no further comment.
Fianlly, I see that a continuation has been filed, but, so far, has been stripped to just claim 1 of the issued patent (with one misspelling). There will clearly be a preliminary amendment filed with claims applicant wants to prosecute, but have no idea what this might be.
This year's version of the legislation are identified as S 1145 and HR 1908 for those who want to track the progress (or lack thereof) of these bills on Thomas.
I'm not sure I understand you. In the current US system you have one year from the date the invention is described in a publication, in public use or one sale in the US to file or you lose patent rights (35 USC 102(b)); this is a "statutory bar." The publication, use, or sale can be by the inventor or others; the result is still a statutory bar.
It's the case where others have known about or used the invention in the US, or patented or described in a printed publication anyplace before the invention by the inventor where the inventor may be able to go back beyond the filing date (35 USC 102(a)). The date of invention is presumed to be the filing date, but can respond to a rejection based on 102(a) prior art by filing a showing under Rule 131 (37 CFR 1.131) to "swear behind" the reference(s).
Of course, there's one other situation where date of invention comes into play; that's where two or more inventors claim the same invention, and an interference exists; in this case 35 USC 102(g) usually comes into play and the claim(s) are awarded to the earlier inventor, subject to some other requirements.
Is this covered in by statute, rule, or even the MPEP? A quick online search didn't come up with anything of the Office requiring a working model. Relevant portions of the MPEP appear to 706.03(a) and 2107 et seq.
It's more complicated than that. This is a divisional application of another application which has issued as a patent. Furthermore, they filed another divisional application which also has been published.
Divisional applications are made when the examiner determines that more than one invention is claimed in an application and requires the applicant to elect one of the inventions to prosecute on the merits. The claims to a non-elected invention(s) are not examined in that application and must be cancelled if the elected claims are allowed, but may be presented in a new application which will get the benefit of the filing date of the parent application if filed before its issue or abandonment date. Any claims in a patent issuing from a divisional application are immune to an attack of double patenting over the claims of the parent patent if the divisional was filed in response to a requirement made by an examiner.
The disclosures of all the applications/patent here are all the same, since no new matter is added in the divisional application (theoretically they could do so, but such added matter would not be entitled to the filing date of the parent application); the differences among the applications is in what is claimed, and, as with any patent/application, the claims define what the invention is, not the title, abstract, etc. The terms used in the claims are, however, interpreted in light of the description in the specification.
Slashdot Mirror
While you make some good points I must comment on some of them to give some perspective from my view as a former patent examiner who started back in the 1970s and, after a hiatus, is back on the "other side" as a patent agent.
The essence of my complaint with your comment is the tone that posits the poor, poor PTO against the greedy and corrupt politicians and applicants. While I agree that, at least as that applies thoroughly to the politicians there is plenty of blame to laid at the feet of the self perpetuating PTO management, the so-called permanent bureaucracy, who survive and select their successors from political administration to political adminstration, from Congress to Congress.
The production system, set up in 1960s as "goals" and given real teeth with the introduction of the Performance Appraisal Plan formulated in response to Carter's Civil Service Reform effort assigns an average "expectancy" in each art area against which examiners are measured (anything less than 90% is unsatisfactory; falling below that generates first an oral warning to get it above by three months; failing that a written warning with another thre months; failing that, being fired) the achievement is an average; examiners are not measured on an individual application basis, so an examiner is free to allocate his/her production requirment as he/she sees fit. Obviously if more time is spent on more difficult cases, less time must be spent on other cases, simple or not. Examiners get credit toward their production for each first action on the merits (FOAMs) and each action in the nature of a disposal (allowance, abandonment, examiner's answer for an appeal). Examiner's can write off some time for specified tasks, but all remaining time is "examining time") and is figured in calculating production. And, if the applicant appeals, the examiner writes an examiner's answer to the applciant's appeal brief and gets a disposal count. The case goes up to the board and returns after decision; if reversed or affirmed in part the examiner passed the case to issue but gets no further count; if affirmed it just gets noted and sent to abandoned files (court appeal is possible but that is very rare).
Because measuring things like search adequacy, rejection/allowance judgement are somewhat subjective but metrics sucha s production, workflow standards are objective and that meeting or exceeding the latter contribute to the "good" of reduced pendency management of the patent examining corps has be, at a fundamental level, been based on these metrics. Any issues with quality primarily arise from outside pressure, which management responds with all kinds of initiatives such as "quality review" or "second pair of eyes" but nothing to do with really improving search effectiveness or giving more average time pre case so that the best prior art is likely to have been developed in most of the applications.
Currently outside quality criticism (cat pointer, swinging on swing) have lead to a reject,reject, reject mantra, which has had the effect of lots of crap rejections being cranked out; lots of cases have been pending even longer because lots of non-final rejections comming from newbies who are not finding good art and just keep sending out easily refuted rejections after being goaded by supervisors to get better art and to keep making new (yet still junk) rejections. Management is in a trap of their own making from decades ago and now they can't even dig themselves out of it despite an unprecedented hiring orgy which scoops up lots of low production newbies, many of whom don't last more than two or three years. And, in any case, most managers doen't realize this, and just insist that examiners are lazy, incompetant dolts who (with the rare exception of those promoted into management) can't meet their simple, common-sense demand to just crank out thoroughly search and argued actions in the time allotted, preferably less so as to reach the Office goals for reducing pendency. Although all top civil service managers came from the examanin
Just as a point of correction - All utility patents issued from applications filed on or after June 8, 1995 have a term of 20 years from the earliest effective filing date, which replaced the earlier 17 year term which began on the date the patent actually issued. The "effective filing date" is either the actual filing date or the earliest filing date of any application on which the subject application ( the one maturing into the patent) claims a benefit (e. g. "continuations", "divisions"). There are a few extensions that can occur either for drug patents on drugs whose sale is delayed by FDA approval and, more recently, for excessive delays in prosecution in the PTO.
This is a common misconception. This will not defeat someone else who conceives and files for a patent later in the US. From 35 USC 102:
...
A person shall be entitled to a patent unless--
(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. (Emphasis added)
You need to actively work on it and have reduced it to practice (the latter which is satisfied by filing a patent application). Your triumphant opening of the envelope might garner you bragging rights, but no destructive effect on the patent rights of others.
Production is measured in units called "balanced disposals" which is the average, over any period of measurment (bi-week, quarter, fiscal year) of the number of first actions on the merits (N) and the number of disposals (D, which are allowances, abandonments, or examiners answers on appeal). For each of the various art areas a historical expetancy X is assigned as so many hours per balanced disposal. the office wide expectancy for this is a bit over 20 hours per balanced disposal for a hypothetical GS-12 examiner. For examiners at other grades/authority levels this is adjusted by a factor as follows:
GS-5 0.6
GS-7 0.7
GS-9 0.8
GS-11 0.9
GS-12 1.0
GS-13 1.15
GS-13 1.25 (partial signatory authority)
GS-14 1.35 (full signatory authority, primary examiner)
GS-15 1.45 (full signatory authority, primary examiner expert)
There are not many GS-15s; the typical top for "lifers" is GS-14 primary examiner.
A primary has to really crank out work and make sure their production does not fall below 95% of their expectancy or bad things be gin to happen. 4 quarters of 90% and you're out the door. Many supervisors press examiners to not produce below 100% even if they are above 95% (fully sucessful in the production element of their performance appraisal plan)
When the outsiders start to notice quality problems ( as has happened in the last few years)the response has been to increase "quality review" and orders to reject more and more, even if prior art references are crap, rather do anything to relax the production pressure wich might result in the finidng of better prior art and more thorough rejection of features tht might slip through. The result of this is that management has painted itself in a corner; if they relax goals, the backlog will increase even more, but if they are maintained or even increased the hemorrhage of new hires will similarly increase. There is just no quick fix out of this. Any substantive change will require a stark change in management culture. Good luck with that.
The article has the facts wrong. The actual appellate decision on the merits was made one year ago, and not by the 10th circuit, but by the Federal Circuit court. The when the case returned to the District Court, the defendants moved for attorneys fees and costs. The current sanctions were made by the district court judge. If the plaintiffs and their attorneys appeal, it will go back to the CAFC, not the 10th circuit.
It's not a question of Capitalism, but one of government - specifically failing to properly allocate the resources needed to do the job. This was detailed in a recent gao report - patent examiners simply have too much production pressure to reliably and consistently discover and consider the best available prior art. This was already a problem when I started in the PTO way back in the '70s and only has intesified as production pressure has increased plus tasks not directly related to prior art search and action formation has been heaped on the examining corps.
Note that this scheme of running the PTO has festered over 4 decades and several administrations and Congresses both Democratic and Republican. No reform proposals I am aware of seems to address this fundamental problem, or seem to gloss over it (e. g. opposition? that time will have to be compensated; if examiners are forced to absorb it there won't be any remaining to examine anything).
Maybe because it hasn't issued as a patent - It has not been examined, it's a patent application that has been published. The article title is inacurate using "patented"
Actually, I've heard that this would not take pressure off examiners, but just the reverse. Current continuation practice (I lump in RCEs with continuations) effectively give examiners more time to work on a given disclosure since the continuations give the examiner the same two counts plus the benefit of an already developed prosecution history; properly used this enables the examiner to devote more time on the application. I read about one experienced examiner who counts on this and allocates her time to do a more thorough search and first action, leading either to allowance on the second action or a justified final rejection. If the applicant wants to present a claim which has not been vetted beforehand, or is not clearly allowable without a further search, or might require a new rejection not of record, entry is refused, applicant files an RCE and so the prosecution continues.
Take away the supply of RCE "counts" leaves the examiner to have to make up production just on new applications meaning there is less time, on average, to learn the case, make the search, etc. The result will be less effective time to work on each disclosure as the harsh production requirment starts to bite, leading to less quality.
This rule change (Along with the IDS changes that are due Real Soon Now) will not have any improvment on patent quality, and will even drive lesser quality if examiners are effectively forced to spend less time per application, not to mention the administrative fallout of more rules and proceedures to follow that don't contribute in any meaningful way to patent quality
But not by much. The application had been rejected several times until the applicant added the limitation that the cooling system be in a separate box from the box containing the computing system. I don't know the prior art, but this doesn't seem like such a big deal, but adding this limitation was the basis for allowing the application.
This very probably the case, as reading the board's full decision shows. However, after browsing over the long and contorted prosecution of this application, and considering the huge number of claims to consider it's clear that there was not enough time to do a proper job to meet the level of discussion and discourse required by the Board.
I have no idea if the examiner was given extra time to work on this application, but this is unlikely, or, if given, would hardly be enough to cover the work required. PTO management is fanatical about meeting production goals and meeting dates to crank out responses. Assuming that the business methods get among the most time to work on an application would mean a Primary Examiner would be expected to average getting out the equivalent of one full prosecution in about 40 hours that counts everything from when the examiner first sees the application until it sent off as an abandonment, allowance, or an appeal. the applicant here filed a Request for Continued Examination, so the examiner got another "balanced disposal", meaning that he had about 80 hours to get this out. Of course, the time is accounted on each application, but extra time spent on one application must come at the expense of working on other applications.
Give the spotlight that this application has been under I bet management will come down hard on the examiner, probably charging him/her with an "Action Taking" clear error, if not others. They will scold employees for not doing a sufficieent job, but will will continue to hold them to production standards. Therein lies the main reason the quality of work from the PTO is often very poor.
-Ex Examiner
Mmmm, how did other females treat her?
Gee, it looks like there will be dueling perpetual motion machine demonstrations tomorrow. Joeseph Newman has been promoting a "Gyro power" machine for decades. I first became aware him while working in the Patent and Trademark Office back around 1980 where his patent application was rejected, the rejection being affirmed on appeal.
Oh, what to do, what to do, London or Phoenix?
One thing that bothers me about this is that this examiner mad at least one comment on a board or mailing list that, IMHO, exceeded what is prohibited by PTO policy. Although the post has the typical disclaimer as a personal opinion and not an official PTO position it still violates this policy.
Although he appears to be defending the work of others (either on this application or others; the record shows lots of examiner reassignments on this one) it still comprises lots of statements concerning "the validity or invalidity" of a specific, or related group of application(s), and that's a no-no. There might be a lessened burden if he was not a PTO employee at the time he made the comment, but it would still be dicey to comment on any specific application in which one had a contribution, or on which one had obtained "inside information." I know I've been out of the PTO for over a decade and a half and I would never comment on any application that I had examined or had a substantive participation.
Except you missed a few things...
Inventors: Doyle; Michael D. (Wheaton, IL)
Assignee: Eolas Technologies, Inc. (Wheaton, IL)
Appl. No.: 09/481,984
Filed: January 11, 2000
CROSS-REFERENCE TO RELATED APPLICATION
This application is a continuation of and claims the benefit of U.S. Provisional Application No. 60/115,502, filed Jan. 11, 1999, the disclosure of which is incorporated herein by reference.
Inventors: Beezer; John L (Redmond, WA), Silver; David M (Redmond, WA), Zeman; Pavel (Kirkland, WA)
Assignee: Microsoft Corporation (Redmond, WA)
Appl. No.: 10/870,472
Filed: June 18, 2004
This application is a continuation of and claims priority from application Ser. No. 09/465,081, filed Dec. 16, 1999, now U.S. Pat. No. 6,826,725, issued Nov. 30, 2004, the content of which is herein incorporated by reference in its entirety.
Thus, Eolas is entitled to a filing date of Jan. 11, 1999 and Microsoft is entitled to a filing date of Dec. 16, 1999. Thus Microsoft filed about 11 months later, but before any Eolas patent issued. Microsoft would be the Junior Party in an interference, and would have the burden of proof of prior invention.
Well, Mr. Best apparently originally patented or invented a radiant heat apparatus in the 1960's (too lazy to do a search) for drying paint which would have expired no later than December 31, 1986 (17 years after being issued as patents did until June 8, 1995 after which it was changed to 20 years from the effective filing date (with some special extensions). As far as I have been able to research the patent at issue is 4,321,857, which issued on March 30, 1982 and thus expiring on March 30, 1999, not 2000. Searching under the name "Willie Best" brings up 17 issued patents, 14 of which are of utility type.
It is, apparently, this patent that expired, not the original concept that applied to paint drying.
Eh, I'm late to this discussion. Anyway....
You were correct in intent, but this is not a "terminal disclaimer" but, rather a affidavit used to "swear behind" the date of a prior art reference. The applicant must show reduction to practice or conception with dilligence and must attach evidence (such as lab notebooks) similar to that which would be entered in an interference, except that all dates may be redacted out of the documents, with the inventors asserting (under the criminal penatalies for false oath or declarations) that all relevant dates were before the prior art date.
This will overcome a rejection based on 35 USC 102(a) type prior art, but not prior art applicable under 35 USC 102(b), the so called "statutory bar" that applies if the effective filing date of the application is more than one year after the prior art date.
If the invention is disclosed in a single document (printed publication, patent) with the requisite date, it anticipates the claimed invention under one or more provisions of 35 USC 102 (lack of novelty). It is only when no one prior art reference discloses the claimed invention that the question of obviousness under 35 USC 103 arises, usually requiring at least one additional piece of prior art to support it. It is technically true that a claim rejected/invalidated for lack of novelty under 35 USC 102 implicitly fails also under 35 USC 103 as obvious, since anticipation is the "epitome of obviousness".
I just read the syllabus (technically not legally binding; the actual opinion is, but there's almost no effective difference) of the opinion, and the SCOTUS basically shot down decades of Court of Appeals for the Federal Circuit and predecessor Court of Customs and Patent Appeals case law, bringing back the previously SCOTUS decided Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 17-18 as the solid basis for determining obviousness. Assuming the CAFC doesn't try to weasel out of this like they originally did around Graham ( or around Benson for software) this will have a potentially huge impact in the scope of claims issued by the PTO, or if a patent even issues in the first place. Much will depend on how PTO management interprets the decision and what guidelines are given to examiners, at least in short run until some appeals hit the CAFC.
Once again the SCOTUS has reigned in the CAFC which, as the most frequent appellate decider of patent law, gets to decide what the patent law is for years at a time, with only the relatively infrequent SCOTUS decisions permitting correction. Today is one of those infrequent occurances.
As another ex-examiner I agree with the points you have made. I took a quick look at the prosecution of this application. There were three non-final rejections made before the application was allowed. The examiner spent a good deal of time in laying out rejections under 35 USC 102 (anticipation) and 35 USC 103 (obviousness), using a two column format with the claim limitations in the left column and relevant sections from the prior art in the right column. The applicant made essentially no substantive changes to the claims and just asserted that examiner didn't show what was asserted. I think the examiner made a big mistake in the second and third rejections of failing to respond to the arguments made by the applicant in the amendments; this was noted by the attorney in the last amendment after which the application was allowed.
There are three things one must keep in mind in figuring out exactly what is covered by a patent. Fundamentally it is the claims that measure the invention, not the title or abstract, or random pieces of the specification. However, the language and terms in the specification must be interpreted in light of the description given in the specification. So, if a term in a claim is an "object library", for example, it wpould be interpreted as this term is discussed in the description. Finally, and relevant to the failing pointed out in the previous paragraph, the scope of the claims is further qualified by the back and forth of the comments and arguments made by the examiner and the applicant. If the applicant tries to avoid a rejection by arguing that a prior art reference feature is not covered by some limitation in the claim the applicant will be bound to this interpretation in any infringement action should a patent be issued. One of the purposes of making rejections, even if it might not be spot on a limitation is to flush out and clarify such possible ambiguities. This is particularly applicable here where an examiner decides to allow a claim previously rejected with no further limitation added. If an applicant is going to squeeze through a narrow "hole" in the prior art not coverable by an obviousness rejection it is important to make sure it is as narrow as possible. By failing to engage the attorney's arguments in the following rejections here the examiner weakened this aspect of prosecution. Instead it looks pretty much like set arguments back and forth, with the examiner essentially saying "OK, I give up, you win" with no further comment.
Fianlly, I see that a continuation has been filed, but, so far, has been stripped to just claim 1 of the issued patent (with one misspelling). There will clearly be a preliminary amendment filed with claims applicant wants to prosecute, but have no idea what this might be.
This year's version of the legislation are identified as S 1145 and HR 1908 for those who want to track the progress (or lack thereof) of these bills on Thomas.
I'm not sure I understand you. In the current US system you have one year from the date the invention is described in a publication, in public use or one sale in the US to file or you lose patent rights (35 USC 102(b)); this is a "statutory bar." The publication, use, or sale can be by the inventor or others; the result is still a statutory bar.
It's the case where others have known about or used the invention in the US, or patented or described in a printed publication anyplace before the invention by the inventor where the inventor may be able to go back beyond the filing date (35 USC 102(a)). The date of invention is presumed to be the filing date, but can respond to a rejection based on 102(a) prior art by filing a showing under Rule 131 (37 CFR 1.131) to "swear behind" the reference(s).
Of course, there's one other situation where date of invention comes into play; that's where two or more inventors claim the same invention, and an interference exists; in this case 35 USC 102(g) usually comes into play and the claim(s) are awarded to the earlier inventor, subject to some other requirements.
Is this covered in by statute, rule, or even the MPEP? A quick online search didn't come up with anything of the Office requiring a working model. Relevant portions of the MPEP appear to 706.03(a) and 2107 et seq.
And here's evidence supporting your assertion.
It's more complicated than that. This is a divisional application of another application which has issued as a patent. Furthermore, they filed another divisional application which also has been published.
Divisional applications are made when the examiner determines that more than one invention is claimed in an application and requires the applicant to elect one of the inventions to prosecute on the merits. The claims to a non-elected invention(s) are not examined in that application and must be cancelled if the elected claims are allowed, but may be presented in a new application which will get the benefit of the filing date of the parent application if filed before its issue or abandonment date. Any claims in a patent issuing from a divisional application are immune to an attack of double patenting over the claims of the parent patent if the divisional was filed in response to a requirement made by an examiner.
The disclosures of all the applications/patent here are all the same, since no new matter is added in the divisional application (theoretically they could do so, but such added matter would not be entitled to the filing date of the parent application); the differences among the applications is in what is claimed, and, as with any patent/application, the claims define what the invention is, not the title, abstract, etc. The terms used in the claims are, however, interpreted in light of the description in the specification.