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June 12, 2022

Comments

Regarding drawings, always file them as "non-black and white drawings", even if they're b/w and even if you're not going to petition and pay a fee for color drawings. That way, the PTO will save a copy of the originally filed drawings (I think in something called SCORE) that you'll be able to refer to later in case of discrepancy.

And you should poke around Carl Oppedahl's Ant-Like Persistence Blog, and join his listservs, for lots of discussion on this type of stuff. For example, a bunch of us signed on to a letter that Carl submitted last week to Andrew Faile at the PTO about the ill-considered .docx proposal. https://blog.oppedahl.com/?p=8218. I don't know if anyone from MBHB signed on.

Dan,

Thanks for the note. I was not aware of the letter and probably would have signed on. One thing that stands out is this statement:

"To date, the USPTO has not received notifications of any issues resulting from the filing of applications in DOCX format." The date of that statement is a Federal Register notice of August, 2020.

However, I wrote this article in January, 2020 identifying several reproducible errors in the USPTO's DOCX intake system:

https://www.patentdocs.org/2020/01/uspto-support-for-filing-in-docx-format-still-a-work-in-progress.html

After that article was published, USPTO reps called me and asked for help debugging their system. I provided an example file that triggered errors and a few days later the reps confirmed that they saw the errors as well and were working on a fix. That was the last that I heard.

Clearly, the left and right hands are not in communication.

Excellent suggestions Mr. Feigelson - with a possible exception (your mileage may vary) with any fee arrangement or similar expectations from clients.

The PTO no longer uses WebEx. It's now Microsoft Teams. Zoom will never happen since the government has largely banned its use (as have many corporations). Practitioners can also request an interview using the "Automated Interview Request" form, and don't need to try to chase down an examiner by phone.

Having the examiner provide claim construction (and thus BRI) for everything is a waste of their time. Assuming that they're doing their job, ALL of the interpretations is supposed to be the "plain meaning" as long as no special definition is provided. Unless the practitioner is awful at their jobs, they should be aware of what the plain meaning of the terms they've used would be.


CJ,

Thanks for the update regarding Teams. Looks like the USPTO switched over recently and that is a step forward.

I have to disagree, however, regarding claim construction. I have had too many experiences where an examiner did not apply BRI correctly and provided no indication of their proposed construction. Thus, their use of the prior art made no sense.

During an interview, the examiner then gives their construction but it is contradicted by the language and context of the claim itself as well as how the claim terms are defined and used in the specification. This is just wrong and wastes everyone's time.

Mike

The claim charts idea is worth all the others put together. I will add that one to my useless list of “if I were named Director…” initiatives.

CJ,

I am curious as to what informs your perspective.

If I were to hazard a guess, I would think that you are an examiner, and thus your perspective is one of guarding the time allotment that you have per count.

This may also explain that you do not see what most all of us practitioners see: rather than BRI (or even a basic application of what may constitute the factual underpinnings to the Graham Factors in any composed rejection), we see a preponderance of "key word" citations of prior art strung together merely because a word is used in the cited reference, and the examiner can string the references together in an obvious [sic] hindsight reconstruction of the claims -- regardless of what may or may not be -- in fact -- a reasonable broadest interpretation.

Us practitioners have coined this BUI (or Broadest Unreasonable Interpretation). Plain meaning is NOT "ANY" meaning, and claims MUST BE read in light of the specification.

It is critical to remember that we often have clients who direct us to write applications based on the understanding of the clients -- and that may not include your views of what terms may or may not include. This will (without a doubt) introduce variances in the meanings of terms, and thus (whether you like it or not) dictate that you must spend the time to understand the terms used BY reading and understanding the context of the application itself.

Yes, this will mean that your guarding your time may in fact BE inappropriate, as my clients do NOT spend their money (and have their expectations of what it means to have their application FULLY examined) based on the INTERNAL metrics of how you as an examiner may be measured.

@CJ

You might be interested or amused by my posting on hindsight bias:

https://www.ipwatchdog.com/2021/11/24/hindsight-bias-ovine-survey/id=140378/

I am told that owing to change of accent with region, the relevance of baa code is not apparent throughout the US. But if you live in a region where baa sounds sheepish and try my question on a range of people you will almost certainly find that the answer is not obvious in foresight, although it is clearly obvious in hindsight.

The 150 "limit" on abstracts is only a suggestion anyway.

Fresh case - and near the bottom of page 7 is especially pertinent:

https://cafc.uscourts.gov/opinions-orders/21-1969.OPINION.6-13-2022_1964183.pdf

Kotodama:

See MPEP 608.01(b), "The abstract in an application filed under 35 U.S.C. 111 may not exceed 150 words in length."

Mike

Dr. Borella, thanks for that quotation. I think you may be looking at an obsolete MPEP revision.

The latest revision states as follows:

"The abstract should be ... *preferably* within the range of 50 to 150 words in length." (emphasis added)

https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e44136

As you can see, the above language follows directly from the cited regulation, 37 CFR 1.72 ("The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length.").

In turn, the corresponding amendment to 37 CFR 1.72 was made in 2013. See https://www.govinfo.gov/content/pkg/FR-2013-10-21/pdf/2013-24471.pdf#page=36.

TGIF/Happy Father's Day!
-kd

I have definitely received spec objections directing me to shrink the abstract when it exceeds 150 words.

Good catch. When I googled "MPEP abstract" I was shown the 2010 version of the MPEP even though the header of the site implied that it was the 2019 version. Apparently the word "preferably" was added in 2015.

But Greg is right, I have received objections to abstracts over 150 words even after 2015.

Examiners can still object despite it being just a suggestion, certainly. That doesn't mean applicants are 100% required to follow the suggestion though.

-kd

I have received the opposite - an objection that the Abstract was less than 50 words.

I traversed, but the examiner insisted.

We had fun explaining that one to the client.

"That doesn't mean applicants are 100% required to follow the suggestion though."

I agree that they are not "100% required" to comply, but that is a battle that is *never* worth fighting. It is *always* more cost effective to make the amendment than to fight it. Therefore, Mr. Borella's is right that it would be an improvement to overall practice if the 150 word limit were excised from the MPEP altogether, not merely modified to a softer tone.

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