Anonymous Examiner

As an examiner, I find all this to be garbage. An interview to focus the issues does not make the case easier to allow–IT MAKES IN HARDER TO REJECT. Narrower claims require more detailed rejections and arguments. I am not a primary examine, hence, I have ZERO authority to allow cases! It can take me days or weeks to get the SPE or the primaries in my art unit to let me allow a case. Allowing a case is NOT one hour’s worth of work, more like an afternoon or even a day. I am required to do ALL the mandatory subclass searches again, do the double-patenting searches again, and do the interference searches. I also double check for proper enablement and support for the claims in the specification and keep a marked-up copy of the claims for myself just in case the goons in OPQA try to threaten me with a bad allowance so I am not doing “forensic examination” trying to figure out why I allowed a case months ago after I have pretty much forgotten about it and moved on. It’s called second pair of eyes. One primary told me that 99% of all software is obvious. Another primary told me that only 10% of all applications in class (such and such where I work) are allowable because everything has already been done. Another primary told me the same thing about another class we work on–10% allowable. Most of the other primaries in my area only allow 20-30% of cases. Since second pair of eyes was instituted in my art unit a couple of years ago, my allowance rate has gone down by at least 50%, and my pendency has gone up commensurately because the applicants won’t take no for an answer and I can’t get the cases allowed. Also, DO NOT try to bully me by filing appeals or threatening to do so. I will send the rejection up or allow the case. I will VERY seldom reopen. I write quality rejections, I find the best art, and I am pretty good at getting the applicants to narrow down the claims in light of the best art. So when I do allow a case, it it because there is no legal rejection left to be made. I find that the applicants who really have something realize it and work with me to get the cases allowed. The ones who don’t really have something are the ones who write the appeal breifs, which I am more than happy to answer. The applicant’s with the allowable subject matter do not want the uncertainty and delay of an appeal; these people are reasonable enough to work with me to get the claims to allowance. The ones that do not have anything give me the hardest time. Also, RCEs are NOT easier; they are HARDER! The claims in my art are so broad, that doing the first rejection is easy. The RCEs are an order of magnitude harder because I have to search deeper and broader to find prior art after they have amended around some references, and put together more detailed rejections and arguments. RCEs are NOT a gravy train! Do you really think I like looking at the same cases over and over again? Get real! You practitioners have NO ideas the pressure we are under! Don’t cancel all the claims and write new ones, because I’ll go final every time! The PTO is truly the most bizarre work environment I’ve ever been in. Your garbage may work on primaries in a hurry for quick counts, but it won’t work with me.

Rebuttal

Thank you for your comment. I find it informative, however I am unclear on what part of my post you disagree with, and why. Appeals and interviews are really just a normal part of prosecution, which however can be especially effective when dealing with certain kinds of Examiners.

Can you clarify what you mean when you say an interview does not make a case easier to allow, but rather harder to reject? From an applicant’s standpoint, aren’t those two things analogous?

I understand your frustration with the second pair of eyes system. It frustrates me as well. Sometimes an Examiner will tell me straight out that his or her SPE will not let them allow the case, yet it is difficult or impossible for me correspond directly with the SPE.

Appeal briefs are not intended to bully Examiners. I never write an appeal brief if I would not be comfortable with the case going to appeal. The point is that many practitioners deliberately avoid appeals even when the Examiner appears to be clearly erroneous. Strategically, that may be a mistake. I file plenty of RCEs and amendments, and always try to work with Examiners, but I file plenty of appeals as well, and am successful in doing so. If you do not reopen cases on appeal, you are one of the very few. I have had cases that were reopened four times consecutively.

As far as RCEs, you appear to be saying an RCE is harder for you because it is harder to reject the case. First of all, I understand that sometimes the claims get amended in an unexpected way, but if you had done a thorough search initially you would not have to conduct a completely new search after an RCE. Doing just enough of a search to find one reason to reject an application is not a best practice for an Examiner and lengthens prosecution.

Second, other Examiners do not feel the same obligation to produce a quality rejection as you apparently do and often respond to RCEs with Office Actions that look like they took about an hour or two tops. Your art unit/situation also may be different from the norm. As a prosecutor, I am exposed to a much larger number of Examiners than you probably are. Examiners encourage RCEs and initial actions should be the most difficult for an Examiner. The three point play of requiring an RCE before allowance is very common.

It seems like most of your frustration is regarding the production system and second-pair-of-eyes system of the USPTO. I share your frustration. Nevertheless, working within this system, there are things that can help an applicant to achieve allowance when difficulties are encountered.