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.