Classification System in need of some major restoration!

I would venture to "guesstimate" that about 60%-70% of the applications I examine do not have a specific subclass within the current patent classification system. Furthermore, it is well documented that 75% of the applications I examine include subject matter that didn't exist 10 years ago, let alone almost 30 years ago when the production expectancies for my technology were created.

How much sense does this make?

For example, I examine applications for anything that electrically stimulates the body for therapy (pacemakers, neural implants, cochlear implants, lead, electrodes etc.). You would think that Class 607 would have a subclass for "stimulating a peripheral nerve" or "stimulating the central nervous system (i.e. brain, brain stem, spinal cord)", but nope -- no such subclasses exist.

It's no wonder we've lost 12-14 Examiners in just over three years.


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In other news, it is the end of FY 2008 as of Oct. 1st. I gave up trying to attain the bonus for having 110% production about three weeks ago when I realized that I would probably finish just under that at about 108% unless I literally examined for 2 weeks straight, 24/7 without any sleep or rest. Good thing is that I can "relax" slightly and just focus on getting all of my amendments finished before the end of the year. Bad thing is that I miss out a nice chuck of change that I very much needed ... oh yeah, and busting my a$$ and working voluntary OT over the last two months turned out to be a huge waste of my time.

Oh and there is no break over here either -- When the new FY starts (the very next day), I will be on promotion cycle again and will have to produce at a level that is half way in between the GS-12 expectancy for my art and the GS-13 expectancy for 13 consecutive biweeks.

On goes the hamster running in her wheel ....

For some reason, this just ticks me off ...

... and I've failed to find any humor in the filing of a patent application for a "Method of filing a highly repetitive or a jumbo patent application and preparing a patent application".

Maybe it's because 1 out of every 4/5 applications I examine are highly repetitive and jumbo patent applications. I can not think of one instance in my entire career where my voluntary overtime needs were not at least partially due to some jumbo, repetitive, "spider-web" of an application eating up my time and throwing my production and workflow goals way behind.

These cases take a considerable amount of time to examine and I HATE them. They are usually a spider-web of 15-25 related co-pending applications, filed on the same day or within a few months of each other, where the applications have one or more common inventors and substantially similar specifications and claims. Or in a worse situation, the application I'm picking up for examination half-way through the biweek is a child or grandchild of one of those spider-webbed co-pending applications and about 30-35 other children or grandchildren of the co-pending applications have also been added into the mess. The worst jumbo applications are those that, in addition to creating such a massive spider-web of co-pendency and continuations, include 30+ claims and say oh, 10 pages of IDS or so.

Early this year, I thought I was seriously going to lose my mind when I had to complete a jumbo application under the gun of both the end of a quarter and being under review for a promotion. I was forced to work on the case for meeting a date-goal for my TC. I almost fell out of my chair when I opened the application and saw that the case had over 200 documents in its file wrapper before prosecution on the damn thing had even started!!

As I said, these types of cases eat up my time and I can never do as good a job on them as I can for other non-jumbo applications simply because I don't have enough time to comb through such a heap of repetitive, overlapping and spider-webbed information. Sometimes, when I am working on a jumbo, repetitive, spider-web of a case -- it takes me the entire time I'm given for half a disposal to just review the co-pending applications and their search histories if they are relevant, the parent/children applications and their search histories if they are relevant, and the applicant's cited prior art. Never mind conducting my own search!

I know there is a lot of ruckus out there in the IP world regarding the USPTO's Final Rule changes -- yadda, yadda, yadda -- and I'm not even going to even begin to get into all the reasons why I may or may not agree with the Final Rules (another blog for another day) ...

... but something needs to be done to curb such jumbo, repetitive, spider-web filing abuse. It doesn't just abuse the USPTO, it abuses the patent examiner! Gentle reminder, patent examiner's are human!!

Method Claims -- Nothing has really changed (or will)

There's been lots of buzzing in the IP blog-world about the Federal Circuit's recent Bilski case and how it's outcome "may" impact method claims. I'm a little confused by all this "buzz" and confusion. I've been making rejections under 35 USC 101 against claims that fail to recite a practical application of any recited "abstract idea" for the past two years. Although my primary examiner hasn't always agreed with my positions, the TQAS (read, "training quality assurance specialists") in my technology center have continued to agree with me and support me. [You can bet that I felt pretty smug last week after the Fed. Circuit's heard the oral arguments ... my primary has already asked me for some of my custom form paragraphs regarding judicial exceptions of "abstract ideas"].

In my opinion, with regards to any method claim, a decision in favor of the USPTO will not change anything (see MPEP 2106.IV.C-2106.IVC). Based on Supreme Court precedent, a claimed method must either 1) be tied to another statutory class or 2) transform underlying subject matter. If the claimed method is determined to be a statutory subject matter eligible process by meeting either 1) or 2), but the claim(s) include the recitation of an "abstract idea", then the claim(s) need to additionally recite a practical application of that idea in order to avoid rejection under 35 USC 101. For example, you can't claim "comparing A to B" if the claim doesn't recite that some sort of device performs that comparison or if the claim doesn't recite some use of that comparison to actually do something or transform something. I can compare "A to B" in my head, therefore it's an abstract idea and not patentable.

Example medical diagnostic method claim:

A method of diagnosing a patient as suffering from heart failure comprising:
a) acquiring a cardiac signal of the patient using at least one electrode adapted to be placed on a torso of the patient;
b) determining a measure of cardiac output from the cardiac signal;
c) comparing the measure of cardiac output to a threshold level of cardiac output; and
d) indicating that the patient is suffering from heart failure based on the comparison.

This is just an example claim (but trust me, I do see claims this broad!). Upon inspection, it quickly becomes evident that recited steps "b" - "d" are not tied to another statutory class of invention (such as an apparatus) nor does that step transform any underlying subject matter. This may be fixed by something similar to the following:

A method of diagnosing a patient as suffering from heart failure comprising:
a) acquiring a cardiac signal of the patient using at least one electrode adapted to be placed on a chest of the patient;
b) determining a measure of cardiac output from the cardiac signal;
c) comparing the measure of cardiac output to a threshold level of cardiac output; wherein a processor of a monitoring device receives the cardiac signal from the at least one electrode and is configured to execute said determining and said comparing; and
d) indicating on a display of the device that the patient is suffering from heart failure based on the comparison, wherein the processor is further configured to provide a visual indication to the display.

Now the steps are tied to an apparatus and practical applications of the abstract ideas (i.e. comparing, indicating) are included in the recited claim language. Simple fix, right?

So, what's all the confusion about?

Edit (6/23): I've clarified this posting and am coupling the adding the following article (http://hiphper.etricities.com/2008/06/23/case-in-re-bilski-federal-circuit-oral-argument/). My reason for making the post relates to my belief that the Federal Circuit will support the USPTO in deciding Bilski.

"Your SPE will make or break this job"

Words of wisdom my first office mate shared with me my first day out of initial training; now almost three years ago. At the time, I didn't really understand what her advice meant or implied and kind of just shrugged it off. Recently though, her words have been replaying over and over in my head. Kind of like when you get an annoying song stuck in your brain and you only know the chorus. Anyway, I've been a patent examiner for the USPTO for three years next month. I am now working under my third SPE. Each has been a whole different ball-game with a whole different set of rules. I could write an essay about each one, what they did or didn't do etc., but I will just try to summarize my experiences with them. My first SPE was fantastic, my second was mediocre, and my third and current SPE is nothing but a nightmare.


Lately, anytime a new examiner asks me how I like the job, I reply with this: "I love being a patent examiner, but I hate the conditions I do it in." Having a bad SPE on top of the the other issues or challenges I'm up against as a patent examiner had pushed my morale down to an all time low. I am tired of feeling like a hamster running in a wheel that is spinning in the opposite direction.

Long overdue update --

I testified against the Flat Goal Pilot implementation at a hearing last week (POPA vs. USPTO management something or other). I seriously felt like I was on an episode of Law and Order and my palms were sweating like crazy the whole time! The length of the questioning (almost two hours) did not help to calm my nerves either. After it was all over, the POPA president told me that I gave a very good testimony and that my situation was viewed as "very credible". I'm assuming that is in view of my past production, performance reviews, and promotion history. A decision will not be made about the merits of the Flat Goal pilot implementation until sometime this fall and even then, either side will have the opportunity to file an appeal. So, any chance of being compensated for all those hours of voluntary overtime I worked while on the pilot are a long ways off.

Anyway, I haven't posted in a few months because I've been so ridiculously busy. I just finished up the 2nd quarter of FY08 and received my promotion to GS-12 (finally). I was due for promotion the quarter before, but due to the time I spent on "Flat-Goal-Hell", my production was not high enough 13 consecutive bi-weeks until now. It's really unbelievable ... I was on "Flat-Goal-Hell" for two quarters and it took me another two whole quarters to get my workflow and production back to where I was at before I went on the horrid pilot.

But, I must get to work now. I have a busy day today, but I'll be back soon.

Upcoming topics: applying for a training academy "assistant" detail, telecommuting one day/week, and performing classification duties.

I think I might receive a subpoena to testify agains the flat goal!

At least that's the impression I got from an attorney I spoke with last week who is representing POPA. I went through all of my production reports since I started this job about 2.5 years ago ... that was a trip -- I had forgot how much paid OT I used to work ... I miss those paychecks, man! I haven't worked a single hour of paid OT since going on the Flat Goal Pilot or since getting off.

*Sigh*

I'm about to finish my first quarter back on the original production system. I'll finish at 110% production, 70% examining time and 0 hrs paid OT. I spent most of the quarter trying to catch up on all of my amendments that piled up while I was on the Flat Goal. Pain.In.My.Butt. Not to mention, my promotion to the GS-12 examining level has been delayed ... I won't receive promotion until March or April now. BS.

Haha ... and spreads a good message!

Is it that they are really incompetant ... or is it an act?

I am constantly getting responses back from attorneys that just befuddle me. I'm talking about the kind of responses that is so out there in left field or just plain ridiculous ... it just make me scratch my head as I stare at their low registration number wondering how on earth they've survived as a practicing patent attorney for this long ....

Example: I used Patent "A" in a single reference 35 USC 103(a) rejection against the claims of a current pending application. Patent "A" qualifies as a reference under both 35 USC 102(a) and 35 102(e) and it is commonly assigned to the same company as the current application. Attorney files a response that doesn't argue the rejection or modify the claims to get around the rejection -- all that is included is a statement under 35 USC 103(c) in an attempt to disqualify Patent "A". Now, it only takes a cursory reading of this section in the MPEP to see that 103(c) precludes the application of subject matter that qualifies as prior art only under 35 U.S.C. § 102(e), (f) or (g), and since Patent "A" is available under 102(a), such a response is not appropriate in this case.

Now why the attorney filed such a response puzzles me. Did he just simply make a mistake? Did he do it on purpose and if so why? To squeeze more money out of the client? Was he just simply not prepared to respond when he needed to? I just don't get it and because I see responses like this more often that I would like -- at least 3-4 times a bi-week -- it just gets to the point where I get annoyed because they are clear blatant errors that any competent attorney should be able to readily avoid without exasperating themselves too much. No matter what the issue is related to (affidavit/declaration practice, arguments, 102(e) reference issues) nothing could convince me that at least half of such errors are not made either on purpose or for some other "trolling" initiative.

I do understand that everyone makes mistakes and that's understandable. I, myself, make plenty of mistakes. Heck, sometimes I look at an Office Action I wrote on the first go-around and wonder if I was sleep-typing (think sleep-walking, but writing an Office Action instead) or just totally out of it. Sometimes, I look at a previously written Office Action and wonder if an alien had taken over my body that day .... granted, the number of second no-finals I have to write due to my own blatant errors in the first action come few and far between, but it still happens.

Anyway, back to what I was saying. I often wonder how the heck some of these patent attorneys are still making money and taking on new clients after I've dealt with them on more than one occasion for more than one application. Usually, these attorneys that file ridiculously off-base responses that are not persuasive -- or not even applicable to the situation -- are repeat offenders. I have this one attorney, whom I deal with weekly, that plays dumb in such an obvious manner and doesn't even try to hide her incompetence. Now, whether or not she's faking it, I'm not sure yet, but I wouldn't doubt it.

Now, what I'm complaining about here relates to procedural, prosecution-based things that I as an Examiner, get ticked off over. There's also the situation where the attorney lacks enough technical knowledge to prosecute effectively. Granted, this frustrates me too. Especially when I'm constantly arguing back and forth with the attorney about some scientific fact or engineering principle that proves that the prior art device inherently has some feature or inherently performs some function. This gets especially annoying when I have to go find some obscure text-book or other type subject-based-book that proves that what I've been saying since the first action (and we're now at pre-appeals conference) is indeed true and thanks-for-wasting-my-time-and-your-clients. However I feel about a patent attorney's technical incompetence though is probably nothing to how an inventor feels when they realize they've hired an attorney that isn't scientifically intuitive or that doesn't have a broad understanding of the technology. Russ Krajec writes a little bit about this topic here.

Also, I understand that there are probably plenty of attorneys out there who experience Examier incompetance too. As "Anon Coward" wrote on a Patently-O thread:

"What people who have only ever been an Examiner have in common with people who have only ever been an attorney, is the assumption that your colleagues are generally as diligent, intelligent, and ethical as they are. If you are an attorney, rest assured that as incompetent, unethical, or uncaring as a certain few Examiners can be, there are attorneys out there as equally incompetent, unethical, or uncaring. Vice versa for you Examiners."

Flat Goal

Generally viewed as a Raw Deal or a Nightmare by most Examiners, I am one of the few who can complain about this new Performance Appraisal idea where my complaints are not fabricated or forecast or related to what "might happen", but rather they stem from issues I personally dealt with and experienced for the last two quarters of FY07 ~ a.k.a. the longest 6 months of my life!

I went on the Flat Goal Pilot thinking that it would work out for me because I generally worked paid OT at 110% production, maintained my examining hours percentage between 75%-85% and knew that I would be starting part-time graduate courses in FY08. With the advertised flexibility, management made it sound like the program was the next best thing since sliced bread. My primary tried to talk me out of it, as did some other Examiner's in my AU, but I still wanted to give it a try.

Worst.Idea.Ever. It is very true that that Flat Goal increases production levels in a system that doesn't give adequate time for examining as it is (at least in my technology. For my first two years, I averaged between 110%-120% with about 10-20 hours of paid OT/biweek. Let me point out, that this is well above the average for Examiners in my technology and let me also point out that we've lost 10+ Examiners in the last two years. My technology has one of the worst attrition rates in the Office for a whole host of reasons that I won't get into within this post. On the Flat Goal Pilot, I barely achieved 110% without feeling like a hamster in a wheel and I picked over my cases (something I had never really done before) in order to get enough counts in. This tactic was ultimately what drove me to want lie out in the middle of the beltway over the course of the second quarter on the pilot on more than one occasion because I just kept getting more and more behind and my amendments just kept piling up.

I was also sick for 20 hours the first quarter of the pilot and had to essentially "make up" that time because those hours did not count as non-examining hours. It was really hard to gauge if I was making up the time appropriately due to not having a bi-weekly production report generated for my work. Also, I was on strong antibiotics that made me tired and cranky. I was technically not feeling well for a whole week, but not wanting to use a ton of sick leave, I only took 20 hours. Even still, you would never in a million years be able to convince me that being expected to produce when sick is a good idea -- or a fair one -- now that I've been through it. No way. Not gonna do it. I would rather go back to my college job of waiting tables in a major city where half the guests don't even tip as a full profession than be expected to produce when I'm sick.

Another worthy thing to note is that there has been a substantial increase in mandatory examiner training initiatives given the recent KSR decision, patent reform issues and the Final Rules package. The number of hours I have spent in training over the last year is twice the number hours I spent in training the previous year. Such a huge jump in training hours was not anticipated (by me) when I signed up for the pilot. So essentially, for the entire two quarters I was on the pilot, if I had been on the traditional production I would have been closer to 68-72% examining time NOT 80%!

I finished my second quarter of the pilot just over 80% of what I was expected to produce for that quarter. Had it not been a pilot, I would have received a written warning and probably would have ended up being terminated. Pretty Scary considering how well I actually do perform on the current outdated system that gives me less time than I need anyway. Needless to say, I was booted off the pilot -- but it didn't matter to me since I had been asking to get off of it since the first bi-week of that second quarter!!

It's been three bi-weeks since I've returned to the standard production system. I'm averaging 110% and finally starting to rack-up my workflow points again. I no longer feel like a hamster in a wheel -- and I even started grad school part-time. That's something. I'm taking two graduate level engineering courses, working 90 hours/bi-week and producing at 110% (70% examining time).

I told my SPE that if they made the Flat Goal a mandatory program, my two-weeks notice would be on his desk the very day management made the announcement. I am not a slave, nor a robot, nor a mindless drone who enjoys working for free. Thanks.

Telework @ the USPTO

I'm due for promotion to be a GS-12 in January and am hoping that since I've already passed the certification exam, I will be able to get put on the PHP early. Currently, the program is only for GS-13 Examiners, but I've heard through the grapevine, that there are special circumstances that might allow one to get on the program early. We will see. I really want to move outside of the DC area because the cost of living here is just nuts. I also might not have a choice in the matter soon because my fiance's job might be taking him to the west coast or to the New England area within the next year. Currently, if we moved and if I was put on the PHP, I would have to fly to DC twice a month (Saturday-Monday trips) to meet my "1 hour in the Office/week" requirement. According to this press release, that requirement might be going away in the future. Let's hope so.

Problems fueling the RCE train

I constantly read on other blogs that attorneys want Examiners to put forward the best art on the first action and that since we don't do that enough, that we are essentially "farming RCEs". Although this may be true in some instances -- or heck, even more often than not -- there are a variety of reasons why an Examiner doesn't (or is unable to) put forth the most relevant prior art against the claims on the first action.

1. Applicant files claims that are overly broad. Couple that with a jumbo specification detailing more than one embodiment and/or related invention and the Examiner has no idea which embodiment and/or related invention to focus the initial search on. Given that we are pressed for time, most Examiners don't waste time trying to figure out the direction the Applicant will go with an Amendment in these situations and we just reject with the first reference that reads on all (or most of) the claims. I have no sympathy for the Applicant in these situations. It does not take much to do a preliminary search yourself before filing to see if your claims are overly broad. I really don't have sympathy for large companies who participate in the practice of filing 20-30 applications on the same day, with the same jumbo specification, where each application has it's own set of overly broad claims that are just ever so slightly different. I view this as "Examiner Shopping" and it clogs the system and fuels the continuation/RCE insanity.

2. Applicant files a ridiculous number of claims that do not meet requirements for restriction or election of species. Examiners can not give the same quality of examination for an application with 80-100 claims as they do to applications with 20-40 claims. My usual tactic for cases with excessive claims on a first action is to find the best references I can in the time I am given that meets as many claims as possible. For the dependent claims that I can not find within 10 hours (leaving 2 to write up the Office Action), I either reject them as being obvious (with a reference, case law or some line of reasoning that stems from my general knowledge of the art) or I indicate them as being allowable. Excessive claims leads to long prosecution (i.e. a longer period of time going back and forth between Examiner and Applicant) and too many claims leads to 2nd, 3rd, 4th non-finals, non-substantial amendments, finals (improper or proper) and RCEs (needed or not needed).

3. Applicants file a large number of Applications with identicle and large specifications where the claims in each are very similar and/or obvious over each other. This happens very often in my art for some reason and I'm sure my art is not the only technology getting abused in this manner. We call it "Examiner shopping" and it can be a real pain for the office. It's basically a tactic large companies use to get the same invention reviewed by more than one Examiner in an effort to gain the largest circle of coverage. The new rules were definitely aimed at curtailing this practice because it clogs the system. This type of situation gets even worse when you have two competitors in the same field filing applications back-to-back in the same manner on similar inventions. That doubles the clog.

I'll add more later.

Good Morning!

Well, it's just before 5 AM and I'm off to Dunkins to get my morning coffee before heading into the office. I have homework due for a class this evening and since I'm leaving early to work on it with classmates this afternoon, I need to get in earlier than normal. Not to mention that I took yesterday off.

I took yesterday off because of the then-pending decision regarding GSK v. Dudas. Since I'm a junior and need to have all of my actions signed by my primary, it would have been rather pointless working on a new/amended application yesterday, posting it to be reviewed and then coming in today only to have to go back and scrap and/or change what I had done in view of the outcome of the hearing. (Read: I was pretty confident that the judge would rule in favor of GSK, thus no need to prepare actions in light of rules the office can't enforce).

Today, I'll spend my first hours writing up a Final Rejection for an application I inherited from an examiner that left the office. I spent a few hours on it Tuesday and have my references pulled together already. Applicant amended over the art used by the previous examiner, however, the claims are rejected in view of new art (that I probably would have used the first time around in prosecution, had the case been mine from the beginning). Total time spent on this case for me will equal about 10 hours. At my GS-level I get 12 hours/count, so this isn't too bad. Then again, most Finals I do for my own cases take under 4-5 hours and I will only be able to write-off a whopping 3 hours of non-examining time (other time) for doing work from an inherited case. Over the last 6 months I've worked on 11 inherited cases and this is the FIRST time I didn't have to issue a 2nd non-final rejection, so there's a relief.

Anyway, as to the preliminary injunction being granted, I'm relieved and glad that I can go back to work without having to worry about following stupid, confusing, lengthy, "guidance" flow charts for every single case I work on for the foreseeable future. Although I do think that the patent system needs fixing, I don't think that the Final Rules would have done anything but shift the problems around from one place to another. For example, management claims that the rules would fix the backlog, but in my opinion, all they would have done was move the backlog from the examining core to the Board of Appeals.

Ok, I'm off for now.

ExamineThis