The notable changes to the rules are: (1) The Board will presume that an appeal is taken from the rejection of all claims under rejection unless cancelled by an amendment filed by appellant (final Bd.R. 41.31(c)); (2) the Board will take jurisdiction upon the filing of a reply brief or the expiration of time in which to file such a reply brief, whichever is earlier (final Bd.R. 41.35(a)); (3) the requirements to include statements of the status of claims, status of amendments, and grounds of rejection to be reviewed on appeal and the requirements to include an evidence appendix and a related proceedings appendix are eliminated from the appeal brief (final Bd.R. 41.37(c)); (4) the Board may apply default assumptions if a brief omits a statement of the real party-in-interest or a statement of related cases (final Bd.R. 41.37(c)(1)(i) and (ii)); (5) for purposes of the examiner’s answer, any rejection that relies upon Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated as a new ground of rejection (final Bd.R. 41.39(a)(2)); (6) an appellant can await a decision on a petition seeking review of an examiner’s failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief (final Bd.R. 41.40) and thereby avoid having to file a request for extension of time in which to file the reply brief; and (7) the examiner’s response to a reply brief is eliminated.

“Dear Speaker Boehner, Senators Reid and McConnell, and Rep. Pelosi:

We are writing to ask that you prevent the passage in this Congress of patent legislation that hampers U.S. competitiveness and threatens American jobs by undermining property rights. With our economy in crisis and millions of Americans out of work, this is the wrong time to jeopardize our recovery by passing legislation to remove incentives for innovation and commercialization of new products and processes.

Now being discussed is so-called “patent reform” legislation, like that offered by Rep. John Conyers and Senator Leahy in the 111th Congress, which would cripple most of America’s smaller inventors, research consortia and universities, and even the larger industrial firms that depend on patents. Downgrading patent rights — which are fundamental property rights — will hamper innovation and domestic manufacturing. Unfortunately, some Members of Congress are poised to move ill-considered patent legislation through the House and Senate this year. Diminishing patent rights would be dangerous to the future of our economy and our country’s global leadership, and must be stopped.

The Federal Government does many things that exceed its constitutional authority and hamper our free- enterprise system. In contrast, issuing patents is one of the few things specifically mentioned in the Constitution. According to Article 1, Section 8: “The Congress shall have Power . . . [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Founders understood that protection of intellectual property was vital to innovation and progress. President Washington urged the first Congress of the United States to pass laws encouraging American innovation. James Madison wrote in the Federalist Papers, “The utility of this power will scarcely be questioned.” Yet, today it is being threatened in the Senate and the House – at the behest of a minority of large technology companies.

Sadly, the Federal Government has fallen down in its patent responsibilities and has become a bottleneck to genuine innovation. According to the United States Patent & Trademark Office (USPTO), the average patent applicant must wait 25 months before his or her application is first acted upon. The logical remedy to this problem is to fully fund the USPTO, allowing it to set user fees and keep them to run USPTO efficiently and effectively, rather than letting them be diverted to other parts of the government. In recent years, approximately $700 million originally allocated to the USPTO has been used for general government spending, causing a huge backlog of approximately 720,000 patent applications. This is the situation that must be reformed immediately.

Instead, some in Congress – again following the lead of several large IT companies — want to make it easier to infringe patents, easier to challenge patent rights in administrative proceedings and in the courts, and more expensive for inventors to defend their patents. By creating a new, expensive procedure to challenge the validity of a patent throughout its life, the benefits to patent-holders become far less certain. Incentives to seek patents are severely weakened, and venture capitalists face much higher risks when backing new ideas. The cumulative effect of such “reforms” would be to raise barriers to innovation and dis-incentivize commercialization of those ideas. Changes along these lines will certainly not help us to remain economically competitive in the world economy, which is why officials in China and India have hailed the proposed “reforms” as helpful to their economic interests.

Additionally, some of these so-called reforms have been proposed in the name of “harmonization” with foreign law. Frankly, this notion is misguided. Our competitors should have to “harmonize up” to our superior intellectual property regime, rather than our having to weaken our patent system and “harmonize down” to their levels. Does the United States really need to be “harmonized” with a calcified European system or the impossibly unfair Japanese system, not to mention the Chinese system, where intellectual property theft is a way of life? Such “patent reform” will lead to the plundering of American intellectual property and the loss of American factories and jobs to overseas competitors.

The proposed reforms really benefit large, established corporate market players at the expense of U.S. economic growth. Start-up companies drive innovation and job creation. About one-third of all patent applications are made by independent inventors, small companies, universities, and nonprofit research groups. Some larger IT companies, however, which ironically benefited greatly from the current patent system when they were start-ups, fear having their market positions disrupted or constrained by new ideas outside their control. They want current law rewritten to make challenges to patents easier and more frequent after they are granted.

This phony, market-distorting “patent reform” is bad for America. We ask that you stop any such legislation from reaching the floor and protect the property rights enshrined in the Constitution. Our nation’s economic future depends on your cooperation.”

Phyllis Schlafly
Eagle Forum
Kevin L. Kearns
US Business and Industry Council
Morton Blackwell
Chairman, Weyrich Lunch
Colin A. Hanna,

The inventor is highly educated and well respected in the area of technology of the invention.  The inventor has several other patents in this area of technology and is over 65 so we filed a Petition to Make Special.  The company is a typical start-up that is looking to raise additional financing in order bring the invention to the market.  Having an issued patent would provide a huge boost to their fund raising efforts.  This funding would provide jobs and the technology will save billions of dollars a year to the U.S. economy.  This is exactly the sort of company that drives employment in the U.S. according to the Kauffman foundation.  Their study showed that all net new jobs in the U.S. are created by new companies – to see the study click here.  High paying, high quality jobs are mainly created by companies with new technology.

I was concerned that the Ombudsman Program may not be able to help me, since it is clear that it is not designed to circumvent the normal examination process.  The essence of the problem was failure to follow the requirements for compact prosecution.  In the first telephone interview, I explained that our technology was able to cut a channel in the substance without creating enough heat to change the state of the material surrounding the channel.  All the prior art not only generates enough heat to change the state of the material it is a goal of the prior art to generate this heat and cause the change in the state of the material.  During the first telephone interview, the Examiner and the SPE told me the claims were just TOO BROAD.  Of course, no such rejection exists under the law and the Ombudsman program should be able to deal with this issue.  While Jon Dudas may have thought this was valid rejection, he was not a patent attorney and his ignorance of patent law and technology would fill whole libraries.  In an attempt to work with the Examiner, I added additional structure to the claims.  Some of this structure made it even more clear that we were not heating the material and changing its state.  I was told that the changes looked good and it was likely we would receive a Notice of Allowance, but they could not make any promises.  The next Office Action cited a new reference that again purposely generated enough heat to change the state of the material.  This process was repeated three times.  This sort of switch and bait process where the applicant amends the claims based on an interview to only be shot down in the next Office Action became standard under the Dudas’ regime.  In many cases, the only reason the applicant agreed to the amendment was to obtain allowance, not because they agreed with the Examiner.  These amendments to the claims should be considered contingent on allowance.  Otherwise they should be withdrawn.

Only once was a prior art reference not in the category of purposefully generating heat while cutting to change the state of the material, but it was even more irrelevant to the invention.  Then we filed a Notice of Appeal with a request for a Pre-Appeal Conference.  The result of the Conference was to reopen prosecution with another reference that again purposely generated enough heat to change the state of the material.  That was when we decided to try the Ombudsman Program.

I sent my issue into the Ombudsman form and was quickly contacted by an Ombudsman.  Our telephone conversation was very cordial and they said that they would contact the SPE.  This process took awhile because it was around the holidays.  Eventually, I received a call from the SPE.  The SPE has not reviewed the case, they had no idea of the issues involved, and instead of listening to me they quickly starting arguing about the case.  The SPE even went so far as to call our invention “MAGICAL” because the claims state that we generate essentially no heat during the cutting process.  This was not only rude it is wrong.  I have a MS in physics and I clearly understand that any frictional engagement is going to generate heat.  However, we have viewed this procedure with an infrared camera with sensitivities down to 1/10^th a degree and the surrounding material does not appear to heat up at all.  The phrase about generating essentially no heat is clearly true and is in context of the prior art which generates enough heat to change the state of the material.  In order to change the state of the material it must be heated around 32 degrees Celsius above its standard operating temperature.  The most likely reason we do not generate any measurable amount of heat in the cutting operation is that the cutting tool starts at ambient room temperature, which is below the operating temperature of the material being cut, and the material is relatively soft so the cutting process takes very little time and does generate much frictional heat.  In the end, all I got was another useless interview the SPE.  I could have done this without contacting the Ombudsman.

Conclusion – Is it worth it to use the Ombudsman Program?

1) It is possible I asked too much of the Ombudsman Program, but I should have told this in the initial conversation with the Ombudsman.

2) The Ombudsman program should be able to at least demand that Examiner and SPE comply with the requirements for compact prosecution.  This is a procedural issue which is the type of issues the Ombudsman Program is suppose to deal with.  It is also a huge problem with Examiners trained under the Dudas’ regime.  The Ombudsman should be able to demand that the Examiner and SPE clearly explain why they keep citing new art with each new Office Action.  If the Examiner and SPE cannot explain this to the satisfaction of the Ombudsman, the Ombudsman should have the authority to demand that no new art be introduced in the case.

Note that the excuse by Examiners and SPEs that changes to the claims required an additional search is usually not valid.  The Examiner is suppose to perform their search based on the specification, not the claims.  None of the changes to the claims in this case in anyway change the basic thrust of the invention.

3) I have another case where an Office Action after the Appeal has raised the same issues that were decided on Appeal.  This would be a perfect case for the Ombudsman program to demand the Examiner and SPE comply with the law and not reargue issues already decided, but based on my present experience I doubt I will contact the Ombudsman program.

4) It would be nice for the PTO or anyone reading this to post any successes they have had with the Ombudsman Program so that we all know what issues they are capable of solving.

The USPTO now has a Data Visualization Center, shows the allowance rate and well as a number of other useful metrics updated monthly.  Another important metric is total pendency time (traditional) which stands at 35.4 months.  This means that if you file a patent application, on average it will take almost three years for it issue.  Another interesting metric is actions per disposal.  This is the number of Office Actions the average application receives before it is allowed, abandoned, or appealed.  This has declined to 2.42.  The total number of actions that an applicant has to endure is particularly important for small entities and independent inventors.  However, this number does not include appeals.  I have had clients that have gone through numerous appeals without any resolution of the issues in the last eight years.  The absurd treatment of these clients’ patent applications would not be captured by this metric.

This is my second post on the nonobviousness standard for patents (35 USC 103).  The earlier post focused on the practical questions that an inventor and his attorney face when negotiating with the Patent Office (PTO).  This post attempts to provide a rational approach to the nonobviousness requirement.

Once it has been determined that a patent claim is novel, step 10 in the flow chart, there are only two things that can make the invention nonobvious.  One is a new result and the other is a new combination that has provides same result in the prior art.  At step 12, we determine if the invention has a new result.  For instance, Edison’s light bulb had a new result of a high resistance filament.  This result is important because it makes it possible to build an economically feasible power system to power Edison’s light bulb.  A new result may be a solution to a problem in the prior art (low resistance light bulb) or new feature that is useful in the art.  If the invention has a new result, then the next step is to determine if the new result is merely aesthetic at step 14.  If the result is merely aesthetic such as changing the color of a car, then the invention is nonobvious, step 16.  If the new result is not just an aesthetic change, then the invention is nonobvious, step 18.  It does not matter how many references or whether the references come from the same art area as the invention, the invention is nonobvious.  In the case of Edison’s light bulb, all the elements were known and Joseph Swan had the same elements in his light bulb, except Swan’s filament was low resistance.  The point of patents is to protect the investment in new technologies.  If an invention is novel and it has a new result, then it is nonobvious and any attempt to combine references to recreate the invention is just hindsight.

If the invention does not have new result, then it is determined if the invention is a legitimate design around at step 20.  A goal of patent law is to diversify the technology base by encouraging alternative designs.  If an invention is novel and a legitimate design around of an enforceable patent then the invention is nonobvious.  For instance, if Edison claimed a light bulb with a carbon filament and another inventor created a light bulb with a metal filament that has essentially the same result he should obtain a patent.  This is true even if the PTO can find two or more references in the same art area that show all the elements.  If the invention is not a legitimate design around, then it is determined if the invention is nonobvious under the teaching, suggestion, motivation test.  For instance, assume Edison claims a light bulb with any material that has high resistance as the filament, but only discusses a carbon filament.  Then another inventor invents a light bulb with a metal filament having essentially the same properties as Edison’s light bulb.  If nothing in Edison’s patent or a combination of patents in related technology teaches, suggests, or motivates a person to use a metal filament, the inventor should obtain a patent.

The obviousness standard has proven elusive to define.  I have attempted to provide a more rational approach to this problem.  I would greatly appreciate your comments.

The only potentially bad news in the article is the statement that the patent office faces severe financial problems.  This may mean higher fees in the future.  Please read the full article at http://www.jsonline.com/business/54199852.html

Patent law describes every invention as a combination of elements and connections.  For instance, a bicycle would be described as combination of a frame, connected to wheels by axles and a transmission system between one the wheels and set of pedals.  Under patent law your invention is defined by the “claims.”  A claim is a written definition of your invention, such as the description of a bicycle above.  In order for your “invention” to be novel, you claim must define a novel invention.  It is not enough for you to just describe a novel invention, you have to write a claim that defines a novel invention.

Since every invention is a combination of element and connections, so is every patent claim.  Because of the conservation of matter (matter and energy) you cannot creates something from nothing.  In addition, if you applied for a patent suggesting you had a “totally new” item in your invention you would receive a rejection from the Patent Office (USPTO).  Assume your “totally” new item was called “Novel-X”.  Since the examiner at the USPTO would not know what “Novel-X” is, they would reject your patent application as “indefinite” under 35 USC 112, second paragraph.  This part of the statute states: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 USC 112, second paragraph.

Novelty is defined as a claim that defines a set of elements and connections that are not found in any one reference.  This does not mean the elements and connection are not individually known.  If the patent office or court cannot find a single prior art reference with the same set of connections and elements combined in the same way, it is clearly a new item.  In the words of the law, “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.”  In re Paulsen, 30 F.3d 1475, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).

The key points to remember are:

Inventions are combinations of elements and connections.

Every invention is a combination of known elements and connections.

Your invention is defined by the claims of your patent.

The Patent Office has to find the same combination of elements and connections combined in the same way in a single reference with an earlier date than the filing date of your invention in order to reject your invention as not novel.

One: Change the way examiners are evaluated.  According to my understanding, productivity count or points are a major part of an examiner’s performance review.  The examiner gains points for reviewing a new case, when an applicant files a RCE (Request for Continued Examination) and if the case is allowed or abandoned, among other activities.  This system encourages “churning” where an examiner will force the applicant to file a RCE in order to obtain an allowance to increase their points.

My suggestions are a productivity scoring system that discourages churning and a 360 degree review that includes the opinions of attorneys and applicants that work with the examiner.  The scoring system should be reworked to value quick disposal of cases.  This would mean eliminating the counts for RCEs and perhaps include a count related to how fast a case was resolved.

Two: The USPTO is located in Arlington Virginia, next to Washington D.C., where the cost of living is expensive and the 9000 government employees have little significance to the state of Virginia.  By having USPTO west in Denver, Portland, Seattle, Austin, Minneapolis, etc. or some combination thereof, examiner retention rates are likely to significantly increase, since the cost of living is lower.  The pool of qualified, English speaking applicants for patent examiners would increase, since the USPTO has admitted they have a hard time keeping examiners who are not from the northeast.

The USPTO mission is about promoting technology and it makes sense that the USPTO should be located near the centers of technology, not the center of political power.  By having the USPTO near great centers of innovation, examiners are more likely to have a better understanding of the underlying technologies they examine.  Locating the USPTO in multiple congressional districts increases the likelihood it will remain fully funded.

According to Brian Lucas , a Patent Attorney in the U.K.:

The UK Patent Office was moved from central London to Wales (which, as far as I was concerned) was in the middle of nowhere.

At the time, I thought this was a terrible decision but I now realize that it was one of the best administrative decisions I have seen.

In particular the Central London Patent Office was facing staffing difficulties and I frequently had dealings with temporary staff who had little or no experience of the patent system and who were rarely able to help me. Once the Patent Office moved to Wales I rapidly found that I was dealing with a stable group of highly experienced, extremely knowledgeable and very friendly people who are an absolute pleasure to work with.

We, in the UK, are truly blessed to have such a group of people to work with.

Three: Ensure that quality reviews are balanced and include speedy resolution of cases as part of the definition of quality.  The second pair of eyes process is probably the single biggest factor in the longer pendency times in the last decade.  As an examiner comment on a blog stated, it was easier under the Dudas directorship to reject an applicantion than risk a quality review error.  The examiner notes quality reviews only occurred when they generated an allowance.  Clearly, this system was designed to discourage allowances and increase pendency times.

How would you reduce pendency times?

ALLOWANCE RATE

I believe that the allowance rate is artificially low, although not due to churning…at least not exactly.

I am a current examiner. Under Dudas, the PTO pursued a policy of “increased patent quality”. The way that the PTO enforced this quality initiative was by reviewing office actions. Not reviewing all office actions, mind you, but only reviewing allowances.

Unfortunately, the PTO failed to see the problem that they were setting up. An examiner is then left with two choices:

1) An examiner could generate rejections without ever incurring quality review, or
2) An examiner could generate an allowance that would be scrutinized by quality review and possibly find themselves assessed a quality review error.

So, it has been safer for an examiner to always reject…at least until very recently. There has been some loosening of the allowance quality review rules in recent weeks as it appears that “reduced pendency” is the new key motivation under Obama.